WORLD TRADEMARK REVIEW Issue 40

WTR’s second annual non-legal trademark services
survey assesses industry needs and asks whether –
against a backdrop of squeezed budgets, growing
workloads and an increasingly complex trademark
environment – service providers are meeting the
needs of their clients

Guidelines governing the protection of geographical
indications (GIs) and protected designations of origin
(PDOs) are in a state of constant flux. For some
industries – such as the wine sector – the picture is
complicated further by additional requirements. The
interplay between GI, PDO and trademark protection
makes it critical to stay on top of the latest regulations

While the ITC can provide significant injunctive relief
to holders of registered trademarks whose trademarks
are infringed, it is not for everyone. The selection of
the right forum will depend on a number of factors

INTA’s Design Protection Conference featured a
number of important lessons for trademark counsel
– not least ensuring that the need for IP protection is
not overlooked by corporate designers

Although it was held in one of the world’s oldest
cities, this year’s MARQUES annual conference was all
about looking to the future, with sessions tackling
trademark protection in the new gTLD environment,
the development of trademark offices and how
geolocation technology will pose unprecedented
brand protection challenges

The prevailing view among trademark owners is that
counterfeiting must be tackled without compromise.
But some academics are suggesting that brand owners
may have got the wrong idea about fakes

29 pointers on how to effectively achieve
the transfer of trademark rights

Licensing deals can provide trademark owners with
a much-needed revenue stream – but equally, a lot
can go wrong. WTR asked a range of practitioners to
provide their top tips for successful licensing and to
outline key jurisdictional requirements

While reputation and brand may appear to be
synonymous, the nuances have implications for
trademark and IP counsel seeking to protect clients’
interests – particularly when reacting to crises and
quantifying the impact of competitive incursions
on a brand

While China’s trademark system has significantly
helped the country’s economic development, changes
will be necessary if it is to continue to make a
significant contribution to the evolution of a
knowledge-based economy

For non-profit organisations, the redirection of surplus
revenues to achieve the organisational mission is
paramount, but equally important is an emphasis on
trademark protection. Failure to do so risks your
organisation falling foul of some of the problems that
have plagued others

For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, WTR’s regular email news service
provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe

In Christian Louboutin SA v Yves
Saint Laurent America Holding
Inc (11-3303-cv), the US Court of
Appeals for the Second Circuit
has held that a single colour is
protectable as a trademark for
fashion items in certain
circumstances – with
representatives for both parties
welcoming the decision.

Critics of new Malaysian legislation
suggest it will restrict the ability of brands
to interact with customers online.
However, there are strategies that rights
holders can employ to minimise risk

While there are benefits in assigning
trademark rights only in respect of certain
wares/services, in Canada this can prove
challenging