WORLD TRADEMARK REVIEW Issue 42

Industry Issue: Are specimen-of-use requirements fit for purpose?

In its efforts to acquire – and resurrect – expired
trademarks, a California-based company is calling
for reform of the specimen-of-use requirements.
WTR speaks to practitioners and the US Patent and
Trademark Office itself to investigate whether the
process is broken or is alternatively based on a
commonsense approach

Columns

Boost for brand owners as appeals court clarifies when to count costs

The Court of Appeal has offered welcome
clarity on whether infringers may deduct
general overhead costs from an account of
profits in infringement proceedings. The
court ruled that these costs can be taken
into account only where they are properly
attributable to the infringing activity

Tablet teachings: learning points from the latest Apple v Samsung decisions

The Apple v Samsung tablet design disputes
have grabbed media headlines across
Europe. For trademark counsel, there are a
number of important takeaways

The final (?) conclusion of ONEL – one step closer to cracking the ‘genuine use’ nut?

The ONEL decision was much anticipated,
the issue of genuine use of a Community
trademark long being a hot topic of
debate. So is this the end of the discussion
or just the beginning?

Features

Putting a price on trademarks: trends in IP valuation and damages calculations

IP valuation is still a controversial issue, with a variety
of different methodologies and few hard-and-fast
rules. However, US courts appear to be taking a more
active role in helping to ensure that damages awards
more closely reflect the value of the infringed asset

People power? A survey of surveys

Survey evidence can be a potent weapon in trademark
cases. However, not all surveys are equal and none
is immune to criticism. Counsel must ensure that
surveys are properly designed and conducted so that
they can carry their points successfully

US litigation focus

In today’s cost-conscious corporate environment, litigation is
usually regarded as a last resort in the event of infringement –
but sometimes it is the only available solution. In such cases it is
important to ensure that you have the right strategy in place, both
to maximise the chances of success and to ensure that resources
are properly allocated. Over the following 23 pages, WTR presents an
examination of strategies and best practices as they relate to the US
litigation landscape.

A game of chess: defending a trademark infringement suit in the United States

Not every defendant is a wrongdoer, and there are a
range of tactics that counsel should consider when in
a defensive position

Brand values: the climb back is on

Corporate efforts to gain competitive advantage in
the midst of a difficult global economy have led to an
increased focus on brands – leading to an upswing in
brand value as a proportion of total enterprise value. As
with any race, however, there are winners and losers

Talking Point: The Onel decision

In Leno Merken BV v Hagelkruis Beheer BV (Case
C-149/11, December 19 2012) – often referred to as the
ONEL decision – the European Court of Justice (ECJ)
found that while use of a Community trademark
(CTM) in one member state could suffice to establish
genuine use in the Community, “all facts and
circumstances” should be considered. It ruled out
a de minimis rule and suggested that the bar for
showing genuine use within the Community will be
set somewhat higher than that for showing the same
in a specific member state. In addition to the detailed
analysis on page 12, WTR asked a number of legal
experts for their reaction to the decision

Trademark bullying: legitimate problem or passing fad?

Despite a lacklustre response to the US Department
of Commerce report on trademark litigation, bullying
is a real problem that disproportionately affects
small businesses, and is something that the whole
trademark community needs to address

Plain packaging for cigarettes – Australia leads the way, but will others follow?

While Australia’s Tobacco Plain Packaging Act is the
first of its kind, similar rules may be implemented
in other jurisdictions before long – and there are
even indications that plain packaging rules may be
extended to other sectors

On location: forum shopping in China

The prospect of litigating in China can be daunting to
say the least, and courts and judges across the country
vary widely in their trademark expertise. By following
a few select tips, brand owners can ensure that they
choose the best venues in which to enforce their rights

IKEA: flat-pack fantastic

Defending a multibillion-dollar global brand in the
online age is no easy task. IKEA trademark manager
Cecilia Emanuelson reveals how consistency and
tenacity are the keys to success, Swedish style

OEM and the concept of ‘reasonable use’ of a trademark

Recent civil decisions involving OEM and trademark
infringement have led some to speculate that China’s
courts may have departed from their earlier position
that OEM of branded goods does not constitute
trademark ‘use’. However, a review of the recent cases,
together with the Trademark Law and guidance from
the Supreme People’s Court, would suggest otherwise

Collateralising your trademark rights

The use of brands and trademarks as collateral is
becoming increasingly common. However, issues
such as publicising deals, valuing trademark
portfolios and the portability of trademarks
remain far from cut and dried

Looking hither and thither: choosing a forum for US a forum for US

Deciding where to file suit in the United States when
seeking redress for trademark infringement or unfair
competition, or defending against such claims, is a
tricky business. Fortunately, there is plenty of case law
to provide guidance for potential litigants in choosing
a forum

Country correspondent

Trademark prosecution and registration strategies

Adapting trademark prosecution strategies in light of IP Translator

Trademark prosecution and registration strategies

Registering trademarks in Romania is relatively straightforward, as long as the right approach is taken

Trademark prosecution and registration strategies

Does the creation of a specialised IP Court shift trademark prosecution towards litigation?

Trademark prosecution and registration strategies

It is a common misconception that trademark use without filing an application grants the user rights.
In reality, the first-to-file rule makes early registration a must

Trademark prosecution and registration strategies

With a rising number of trademark applications resulting in examination delays, it is crucial that brand
owners do all that they can to expedite prosecution of their applications

Trademark prosecution and registration strategies

Agile registration strategies are crucial in Russia, with foreign applicants required to be represented by
Russian trademark attorneys who are registered at the RPTO

Trademark prosecution and registration strategies

The rush for trademark registration means it is increasingly difficult to register marks in China.
However, a number of strategies can be implemented to maximise the chances of success

Trademark prosecution and registration strategies

Non-traditional marks present creative ways to engage consumers, but their registration can be complex
and present unique challenges for rights holders

Trademark prosecution and registration strategies

The Italian Patent and Trademark Office is taking great strides in its aim to make its offerings more efficient
and effective, not least through the introduction of an oppositions procedure

Trademark prosecution and registration strategies

Securing trademark registration generally entitles rights holders to enforce their rights against third parties
and pursue legal actions that would otherwise be unavailable

Trademark prosecution and registration strategies

Efforts continue to streamline the Canadian trademark system and bring it into line with international
practice, but it could still be some time before proposed amendments are implemented

News

Trademark Clearinghouse fees capped at $150 per mark

The new generic top-level
domain (gTLD) Trademark
Clearinghouse has revealed
that the cost of submitting
trademarks will be capped at
$150 per year.

Leaked documents provide insight into potential overhaul of EU trademark system

According to draft European
Commission proposals obtained
by WTR, the European trademark
system is set for a shakeup.
A renamed Community
trademark (CTM) and Office for
Harmonisation in the Internal
Market (OHIM), the abandonment
of examination on relative
grounds and reduced application
and renewal fees for CTMs are
among the potential changes.

Global view

Latest draft of revised Chinese Trademark Law released for public comment

Following two years of
consultation, China’s National
People’s Congress has released a
draft of the revised Trademark
Law for public comment.

Broad covenant not to sue negates jurisdiction over non-infringement and invalidity counterclaims

In Already LLC v Nike Inc (Case
11-982), the US Supreme Court
has held that a broad covenant
not to sue can be sufficient to
moot an underlying case or
controversy, thereby removing
the basis for jurisdiction for a
court to decide counterclaims
seeking to invalidate a
trademark.

ECJ rules on ‘genuine use’ of a CTM

The European Court of Justice
(ECJ) has issued its long-awaited
decision in Leno Merken BV AG
v Hagelkruis Beheer BV (Case
C-149/11), better known as the
ONEL case, which addressed the
requirement for ‘genuine use’ of
a CTM. The ECJ held that proof
of use of a CTM in one member
state can in principle, but will not
necessarily, be deemed sufficient
to prove genuine use in the
Community.

Google not liable for misleading and deceptive ads

The High Court of Australia has
held that Google did not engage
in misleading or deceptive
conduct merely by displaying
search results generated by
advertisers’ wrongful use of
third-party trademarks as Google
AdWords (Google Inc v Australian
Competition and Consumer
Commission ([2013] HCA 1).