World Trademark Review Issue 43

June/July 2013

Trademark Toolkit: An innovative approach to financing

A number of crucial decisions must be made when considering whether to use your brand as collateral against corporate financing

Stefan Rüssli and Oliver Scherenberg


Working overtime – trademark counsel’s efforts to push brands up the boardroom agenda

Now in its fifth year, the WTR Global Benchmarking Survey takes the pulse of the industry. While it is true that the hard times are far from over, some positives have come out of adversity – not least a greater corporate appreciation of trademark value. But there’s still plenty of work to be done

The shape of things to come – the next 18 months in trademarks

The trademark landscape is consistently being shaped by political movers and shakers, consumer trends, industry organisations and wider influences. WTR gazes into its crystal ball to see who and what are likely to transform the trademark environment over the next 18 months

Get your head in the cloud

The cloud is an environment that trademark counsel need to monitor. Brand owners will still face the same clearance, prosecution, enforcement and priority issues they have historically faced – albeit in the cloud

WTR Industry Awards 2013

This year’s shortlist for the WTR Industry Awards spans the spectrum of trademark-related activity. However, if there is one common trait that our nominees share, it is the value that they are adding to their respective organisations

Creating consistency in Europe

Over the last 12 months, the European Court of Justice has provided several clarifications related to both registrations – in particular, the issue of specification of goods and services – and defences against claims for revocation on the grounds of non-use

Is the tide turning for trade dress decisions in Brazil?

A string of recent decisions suggests that Brazilian judges are wising up to trade dress infringement. Although damages are still modest, it is hoped that this will also shift within the next few years

The power of brands - understanding royalty rates

Ensuring that a brand is licensed correctly and that an appropriate royalty rate is in place is essential to secure the longevity and success of a business. Correct calculations are therefore critical

Trademark Toolkit: An innovative approach to financing

A number of crucial decisions must be made when considering whether to use your brand as collateral against corporate financing

A big year for rights holders in Canada

Significant developments in the last year – from case law that allows the registration of sound marks to a bill with important new anti-counterfeiting provisions – could affect the way that all rights holders do business in Canada

Beijing court issues breakthrough ruling on similarity

A groundbreaking verdict from the Beijing High Court could provide crucial guidance on assessing similarity between not only trademarks, but also the goods that they designate. The court found that while due attention should be paid to the official guidance, simple market facts should also be considered

Brand licensing in the US – advice for Chinese brands

If they are not already, Chinese brand owners are poised to expand westward into the lucrative US market. They will boost their chances of success by taking care to define and differentiate their own products and finding strong US licensees to partner with

Getting over confusion

Over the last year South Africa’s Supreme Court of Appeal has issued several decisions that consolidate an already solid body of trademark case law. There are indications that 2013 could also see it provide muchneeded guidance on tests for confusing similarity when dealing with similar goods and services

Michael Jordan, Apple and soft drinks – the trademark year in China

Trademark cases continued to make headlines in China during 2012. Malicious registrations of celebrity names, a multimillion-dollar settlement by Apple and the soft drinks case that sparked a national debate show that trademarks are still big business

Nike stirs up the opinions from 2012, which suggest discretion may well be the better part of valour

The Supreme Court’s affirmation of the dismissal of Nike’s own infringement suit after Nike had issued a broad covenant not to sue not only allowed the sportswear giant to sidestep an invalidation counterclaim, but also suggests a route whereby rights holders having second thoughts can withdraw to fight a different battle another day

Managing Sino-foreign joint ventures in China

Sino-foreign joint ventures are the best way to produce internationally branded goods for middleclass consumers in China. Although the relationship can be tricky to manage, some basic rules can make it harmonious and profitable for both partners

2012 Down Under – a sample of interesting cases for brand owners

Parallel imports, overseas brands and the registrability of building names came under scrutiny from the Australian courts last year. As some of these cases demonstrate, the application of even long-established trademark protection principles can evolve


Interflora v M&S: are the days of survey evidence over?

The Court of Appeal of England and Wales has handed down judgment in Interflora Inc v Marks & Spencer PLC ([2013] EWCA Civ 319). This decision – the second judgment of the court in this case on the admissibility of evidence from witnesses identified through surveys – seems to make it even harder to adduce survey evidence in trademark infringement cases.

ECJ: ‘third party’ under Article 9(1) includes owner of later registered CTM

In Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (Case C-561/11), the European Court of Justice (ECJ) has held that that a ‘third party’ under Article 9(1) of the EU Community Trademark Regulation (207/2009) includes the owner of a later registered Community trademark (CTM).

New opposition procedure comes into force

The Intellectual Property Laws Amendment (Raising the Bar) Act came into effect in Australia on April 15 2013. The most important change is the introduction of a new opposition procedure.

Google updates AdWords trademark policy

Google has revised its AdWords trademark policy to lift a restriction on using trademarks as keywords in a number of countries. Starting April 23 2013, it will no longer prevent advertisers from selecting third-party trademarks as a keyword in advertisements targeting Australia, Brazil, China, Hong Kong, Macau, New Zealand, South Korea and Taiwan. This means that Google’s AdWords trademark policy is now harmonised worldwide.

Bill C-56 introduces significant changes to Trademarks Act

The Canadian government has introduced Bill C-56 – the Combating Counterfeit Products Act – which proposes significant changes to the Trademarks Act and Copyright Act. The bill aims to “protect Canadian consumers, Canadian manufacturers and retailers as well as the Canadian economy from the health and economic threats presented by counterfeit goods”, and also provides for the registration of non-traditional trademarks.

Proposed reforms to EU trademark system published

The European Commission has published its proposals to amend the EU Community Trademark Regulation (207/2009), the EU Trademark Directive (2008/95/EC) and EU Regulation 2869/95/EC on the fees payable to the Office for Harmonisation in the Internal Market (OHIM). The proposals are designed to “make trademark registration systems all over the European Union cheaper, quicker, more reliable and predictable”.

Clearinghouse opens for business; first gTLD trademark disputes revealed

The Trademark Clearinghouse – the rights protection mechanism built into the Internet Corporation for Assigned Names and Numbers’ new generic top-level domain (gTLD) programme – has commenced operations.

Global View

United Kingdom The UK Intellectual Property Office has launched a consultation to obtain stakeholders’ views on the appropriate procedural changes for the introduction of a fast-track opposition procedure within the Trademark Tribunal. The consultation outlines proposals for the fast-track procedure and seeks views on the introduction of a refundable appeal fee for inter partes appeals to the appointed person. The deadline to submit comments is May 17 2013.


Raising the bar for Australian trademark law

The IP Laws Amendment Act is designed to boost IP protection across the board. Provisions aimed specifically at trademarks include an overhaul of the opposition process, improved border protection measures and the extension of legal privilege to trademark attorneys

Ethiopia welcomes long-awaited new trademark law

The long-awaited regulation for the Ethiopian Trademark Registration and Protection Proclamation means that work can begin on modernising Ethiopia’s trademark regime. However, there may be a few sticking points in the transition – not least the fact that the much-discussed IP Gazette has yet to launch

Driving jurisdictional consistency

What the draft agreement on a unitary trademark in Belarus, Kazakhstan and the Russia Customs Union may mean for brand owners

Country Correspondent

Trademark licensing and ownership issues

Recent Federal Court of Justice decisions have held that the validity of a sub-licence is independent of that of the original licence. Rights holders should thus take action to remain in control of their intellectual property

Trademark licensing and ownership issues

Understanding what trademark use means in Canada and how such use is best controlled by a notified licence agreement will help in retaining trademark rights in Canada

Trademark licensing and ownership issues

Licensing can add considerable value to a brand. But some pitfalls must be avoided

Trademark licensing and ownership issues

Italian jurisprudence is keen to protect licensors’ rights – the key is ensuring that attention is paid to licence agreements

Trademark licensing and ownership issues

Foreign companies seeking to license or assign trademarks in China should be aware of the country’s idiosyncrasies – such as the need to obtain the authorities’ approval for an assignment to be valid

Trademark licensing and ownership issues

The current practice of the Mexican Administrative Authority in connection with use renders the assignment of trademarks potentially risky

Trademark licensing and ownership issues

Those considering licensing in Poland should acquaint themselves with the country’s specificities – in particular, the issues surrounding rights assignment and termination

Trademark licensing and ownership issues

Finnish games producer Rovio is a prime example of successful licensing with its Angry Birds, using some unorthodox methods along the way

Trademark licensing and ownership issues

Those embarking on trademark licensing in Russia for the first time need to understand the legal framework and practical requirements before they can enjoy some of the benefits

Trademark licensing and ownership issues

While the legal framework governing trademark licensing in India has been liberalised, brand owners should remain vigilant when drafting their agreements

Trademark licensing and ownership issues

A licensing agreement in itself offers no guarantee of saving a trademark from the risk of abandonment. The licence must include specific quality control provisions

Trademark licensing and ownership issues

A checklist to follow when engaging in trademark licensing in Romania


A team effort – avoiding trademark troubles in advertising campaigns

Practitioners from China, Europe and the United States discuss the trademark issues involved in advertising, and how counsel can ensure that their voice is heard