WORLD TRADEMARK REVIEW Issue 40

Market Focus: BRICS

As Brazil, Russia, India, China and South
Africa (BRICS) continue their apparently
unstoppable economic march, demand is
increasing for the services of specialist
trademark lawyers with the expertise to
protect and enforce the intellectual
property of both domestic and
international companies

Features

Square pegs in round holes or the perfect fit?

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

Geographical indications and designations of origin: extending coverage to the wine sector

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

Does Louis Vuitton’s recent victory at the US International Trade Commission mark that tribunal as a viable alternative to district court?

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

Designing the future of brand protection

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

A sign of the times to come

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

Can a counterfeiting compromise be reached?

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

Trademark transfers: be a hero, not a bystander

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

TM Toolkit: Lessons in licensing

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

When reputation founders: protecting corporate reputation in a volatile environment

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

Transforming China from a manufacturing power to a brand power

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

Mission control: trademark strategies for non-profit organisations

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

News

Global View

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

Both sides welcome Second Circuit decision in red soles dispute

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.

Country correspondent

Protecting unregistered trademarks and other commercial signs

While protection can be granted without registration, as well as offering opportunities to brand owners,
unregistered protection is not without risk

Protecting unregistered trademarks and other commercial signs

While registration brings a number of advantages, brand owners in Canada can utilise the action of passing
off to protect unregistered rights

Protecting unregistered trademarks and other commercial signs

Protection for unregistered trademarks and other commercial signs is available in China. However, in each
case there will be skills and tricks to juggle possible legal grounds and the available evidence

Protecting unregistered trademarks and other commercial signs

In Russia, legal protection of commercial designations corresponds to international practice; in time, legal
practice will develop to the extent that all rights holders will be effectively protected

Protecting unregistered trademarks and other commercial signs

Mexico follows a ‘first in time is first in right’ approach. While a trademark registration is not mandatory in order
to use it or to initiate legal claims against third parties, it brings some important benefits

Protecting unregistered trademarks and other commercial signs

The system of IP protection in Italy is rigorous and effective – but rights holders need to adopt the correct
measures to protect their marks

Protecting unregistered trademarks and other commercial signs

In the United Kingdom the protection of unregistered trademarks hinges on the ability to prove goodwill.
While this can be difficult to establish, it is the one factor over which traders have the greatest control

Protecting unregistered trademarks and other commercial signs

With protection for well-known trademarks and unregistered trademarks now possible in Romania, case law
continues to develop

Protecting unregistered trademarks and other commercial signs

The Indian courts have gone beyond the text of the statutes to protect the worldwide reputation that any
trademark or commercial sign can acquire by virtue of its use, promotion or advertisement

Protecting unregistered trademarks and other commercial signs

Given the strong tradition for protecting unregistered trademarks in the United States, practitioners must
take a different approach to filing practices and enforcement from that adopted in first-to-file jurisdictions

Columns

The view online

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

Registration issues

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