WORLD TRADEMARK REVIEW Issue 41

Coca-Cola: ensuring that it’s always the real thing

Iconic bottles, secret recipes, billion-dollar brands –
they are all in a day’s work when you head up the IP
team at The Coca-Cola Company. Danise Lopes reveals
how she manages the IP challenges, and more, for the
world’s biggest beverage provider

Features

Unveiling the global TM protectors

The 2013 edition of the World Trademark Review
1000, released in January 2013, comprehensively
identifies the world’s leading trademark firms
and practitioners. In this preview, exclusive to
WTR subscribers, we identify the firms with the
highest number of rankings by jurisdiction and
by individual practitioner

Protecting shapes in the European Union: some tactical European Union: some tactical

Registering shape marks can be a strategic challenge,
with game-changing new decisions being handed
down all the time. But with the right tactics, rights
holders can successfully navigate this shifting
landscape and secure strong protection for shapes
and 3D marks

Design protection:the US perspective

Many creations that involve design can benefit from
the protection offered by design patents as well as
trademarks. However, how should practitioners –
particularly those outside the United States – decide
which types of protection to apply for, and when?

Sunbeam marks the start of a new day for trademark licences in bankruptcy

The standing of trademark licences in bankruptcy has
long been a murky issue. While the Seventh Circuit’s
decision in Sunbeam shines new light on the matter,
both licensees and licensors must still pay attention to
the fine print to make sure they are protected

Trademark toolkit: Working with Customs

Managing relations with Customs is key to successful
anti-counterfeiting actions. WTR asks local experts
from across Asia to provide practical guidance on how
to manage this relationship in their jurisdiction

Talking Point: industry developments 2012-2013

WTR asked a range of trademark professionals,
industry representatives and legal specialists
to highlight the issues that they felt were most
significant in 2012, either in their own jurisdiction
or internationally, and what they anticipate will be
major developments in 2013

Combining design and trademark rights to defend design creations

Using different combinations of IP rights can be
a good way to protect designs. However, deciding
which rights to use can be confusing. One strategy
entails blending design rights and trademark rights,
depending on how the design is to be marketed

Trademark law in Macau – a Portuguese legal regime inside China

Although Macau is one of two special administrative
regions in China, its IP laws have more in common
with the Portuguese regime. In particular, there are
some striking divergences between the two traditions
of which practitioners should be aware

Signs and wonders: how and why semiotics adds value to trademark design and protection

Understanding the complexity of brand identity
messages can both help protect the brand from
inflicting damage on itself and prevent others
from utilising ideas in the same way. Semiotics
is one of the fundamental building blocks to this
understanding

Drinking from a fire hose: future-proofing your internet strategies

With increasing numbers of apps available, new
social media sites launching on a regular basis and
the online world due to expand significantly – while
protection budgets remain tight – there are a number
of strategy shifts that brand owners should consider

Appellate Board provides a shield against genericide attack

India’s IP Appellate Board waded through tens of
volumes of evidence when a petitioner sought to have
the XEROX marks declared generic. The ruling provides
a number of strategic lessons for trademark counsel

A tale of three registries

A recent split between the trademark registries
in Australia and New Zealand on the one hand,
and OHIM on the other, with regard to confusing
similarity highlights how different working
methods can influence findings

Lend a helping hand: tips on interacting with Chinese Customs

Customs is the first port of call for rights holders looking
to protect their brands in China. Recording trademarks
and lists of licensees with Customs is crucial to any
anti-counterfeiting strategy but the hard work does not
stop there. Working with local customs is essential and
should be integrated into your brand protection strategy

Communicating trademark value to investors

While investors are well aware of the power of a strong brand, they may have little appreciation of the critical role that trademarks play in building brand value. Trademark counsel can help by framing their work in a way that investors will understand; but to do so requires a step into the unknown for many

Country correspondent

Internet issues (other than domain names)

While more public education over the consequences of infringement is required, a number of tools are
available to brand owners protecting their property online

Internet issues (other than domain names)

Trademark owners which believe that keyword advertising is causing them damage will face a number of
hurdles if they opt for litigation

Internet issues (other than domain names)

There are many obstacles to effective online law enforcement, with a lack of proper and specific regulations
to assist brand owners not helping the situation

Internet issues (other than domain names)

Although levels of online infringement remain high, foreign and domestic rights holders can look forward
to a bright future for both the monetisation and protection of their valuable content over the Internet

Internet issues (other than domain names)

The debate as to whether the harmonisation of law and technological developments, or consumer awareness
and education, is the route to meet online challenges continues. In reality, a combination is necessary

Internet issues (other than domain names)

Even where trademark law has not proved as helpful as rights holders might have hoped, clarifications
to the law have at least enabled them to establish procedures for detecting and responding to online
infringement of their trademark rights

Internet issues (other than domain names)

What to do when your trademark is being used on social media sites

Internet issues (other than domain names)

It is expected that in the foreseeable future, IP issues on the Internet will be no more complicated than
regular market infringement matters

Internet issues (other than domain names)

The virtual world of social media sites is no longer the new frontier of intellectual property, but has become
one of the normal arenas in which companies manage the legal issues arising from the unauthorised use of
IP rights

News

Warnings issued against 242 gTLD applications

The Governmental Advisory
Committee (GAC) has filed 242
early warnings to generic toplevel
domain (gTLD) applicants.
Early warning notices are not
formal objections: they are
issued where a gTLD application
is considered to be potentially
controversial or sensitive by
one or more governments.

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

M&S v Interflora: the end of witness gathering surveys?

In Marks and Spencer Plc v
Interflora Inc ([2012] EWCA
Civ 1501), the Court of Appeal
of England and Wales has
considered the practice of
adducing favourable evidence
of confusion from members of
the public in trademark actions
where such witnesses were
selected from a wider group
of survey respondents – or
‘witness gathering exercises’.

‘Third party’ under Article 9(1) includes owner of later CTM, states AG

Advocate General Mengozzi has
given his opinion in Fédération
Cynologique Internationale v
Federación Canina Internacional
de Perros de Pura Raza (Case
C-561/11), a reference for a
preliminary ruling concerning
the interpretation of Article
9(1) of the EU Community
Trademark Regulation
(207/2009).

ECJ clarifies position on use of mark in different form

The Court of Justice of the
European Union (ECJ) has
confirmed that use of a
trademark in a form that is
different from the mark as
registered is sufficient to prove
genuine use if the differing
elements do not alter the
distinctive character of the
mark, even if that mark itself is
registered.

Red Cross and IOC second-level protections given green light

The International Corporation of
Assigned Names and Numbers
(ICANN) board’s New Generic
Top-Level Domain (gTLD)
Programme Committee has
approved two resolutions aimed
at providing interim domain
name protections to certain
non-governmental and intergovernmental
organisations.

SPC considers whether OEM manufacturing for export constitutes ‘use’

In Ryohin Keikaku Co Ltd v
TRAB, China’s Supreme People’s
Court has held that evidence of
use of a trademark in original
equipment manufacturer (OEM)
manufacturing activities solely
for export was insufficient
to show that the mark had
been “used and achieved a
certain amount of influence in
China” under Article 31 of the
Trademark Law.

Columns

Changes in the pipeline

Proposed changes to Poland’s Industrial
Property Law would have a great impact
on the registration, and protection, of
designs

The time is NOW for special grounds?

The Court of Appeal of England and Wales
has found that while any derogations
to EU principles should be interpreted
narrowly, there must be circumstances
under which ‘special grounds’ apply or
the exception becomes meaningless

How marketers are leading the fight against phishing

WTR has previously reported on the disconnect that can occur between trademark counsel and marketing departments. Yet when it comes to phishing, marketer initiatives are setting the enforcement agenda