Features
As part of our annual OHIM focus, WTR polled the
office’s top filers to gauge their perception of its
performance and address some of the most pressing
issues in the European trademark industry – and
asked OHIM to provide an update on its activities
Trevor Little
It is estimated that approximately 96% of
Indonesians use social media, a rate higher than
any other country in the world. As well as offering
an important communication tool for brands, this
necessitates a tailored social media plan to protecting
a brand’s intellectual property, goodwill and
reputation in the country
Andrew Diamond
Paul Maier, director of the EU Observatory on
Infringements of Intellectual Property Rights (OHIM),
reflects on the first year of the Observatory, and
outlines the initiatives currently being undertaken
to support users
Paul Maier
Industrial design protection is progressively being
viewed as a core component of IP strategy for many
consumer-facing businesses. Trademark counsel have
a golden opportunity to add corporate value by taking
the initiative on design rights
Jack Ellis
TM Margellos, coordinator of the OHIM mediation
team, presents an update on the office’s mediation
service, launched two years ago
Théophile Margellos
In China, an effective anti-counterfeiting strategy
demands much more than enforcement of the law.
It is therefore crucial for luxury brands to track
enforcement trends and evolve their strategies
accordingly
Loke-Khoon Tan, Marcia Lee and Bertha Ho
In efforts to secure protection for their threedimensional
and colour trademarks, are trademark
counsel pushing the boundaries of trademark
protection?
Christopher Pett
India’s accession to the Madrid Protocol is the latest
development to focus brands’ attention on the
commercial opportunities in the market. However, a
number of critical trademark issues are involved in
selling or acquiring brands, investing in companies
and entering into licence arrangements in India
Adheesh Nargolkar and Shailendra Bhandare
Considering the most recent decisions, it seems that
selection of a geographical mark should be based not
only on the current position, but with one eye firmly
on the future
Rebecca Tew
When creating an anti-counterfeiting programme
for the region, factors such as the legal system,
the political, economic and social environment
and the infringer’s modus operandi are important
considerations
Gustavo Patricio Giay
Recent decisions have contributed to a shift in the
treatment of territoriality in US trademark law,
with US courts increasingly focusing on whether
foreign infringing activities have left a ‘dent’ in the
United States
Julia Anne Matheson and Anna S Balishina Naydonov
Nike has won global fame not only for its iconic
product lines and sponsorship deals with some of the
world’s biggest – and sometimes baddest – sporting
heroes, but also for its clever, controversial ad
campaigns and alternative branding strategies. Senior
trademark counsel Jaime Lemons reveals how she and
her colleagues navigate these issues, and more, for the
world’s leading sportswear brand
Sara-Jayne Clover
News
The fracture between the
Government Advisory
Committee (GAC) and
trademark owners over
geographic terms was apparent
during ICANN’s Durban
meeting in July.
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provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe
In Specsavers International
Healthcare v Asda Stores Ltd
(Case C-252/12), the European
Court of Justice (ECJ) has held
that colour is relevant to
the global assessment of the
likelihood of confusion and
unfair advantage.
The UK Intellectual Property
Office (IPO) has rejected
Société des Produits Nestlé SA’s
application for the registration
of a three-dimensional (3D)
shape mark representing
its Kit Kat chocolate wafer
product, except in relation
to cakes and pastries (Case
O-237-13).
In New Yorker SHK Jeans v
Office for Harmonisation in the
Internal Market (OHIM) (Case
C-621/11 P), the European Court
of Justice (ECJ) has held that
OHIM was entitled to take into
account additional evidence of
use filed by the opponent after
the original deadline for filing
proof of use had expired.
Following the release of a
study that considers the risk of
collision between applied-for
new generic top-level domain
(gTLD) strings and non-delegated
TLDs, the Internet Corporation
for Assigned Names and
Numbers (ICANN) has proposed
a series of mitigation measures.
The proposed third amendments
to China’s Trademark Law
have undergone a second
reading during the third
session of the 12th National
People’s Congress Standing
Committee. Although the draft
amendments were not made
available to the public, details
were posted on the National
People’s Congress website.
Columns
While Mexico is not bound to introduce
opposition proceedings as a result of
accession to the Madrid System, moves
are afoot that should result in substantive
reform to the Industrial Property Law by
the end of the year
Alonso Camargo Sordo
Interflora is good news, in terms of
AdWord strategy and enforcement, for
owners of major reputable brands and
particularly those with a history of
co-branding with other businesses
Rob White
Group buying sites are soaring in
popularity, but what liabilities do such
sites bear if the products on sale infringe
trademark rights?
Ito Eugene Low
Rights holders have critical roles to play
in establishing an environment that is
respectful of intellectual property, as close
public-private collaboration is essential
Eun Joo Min
Latin America has experienced
tremendous economic development in
the past decade, bringing about a marked
acceleration in trademark-related activity
throughout the region. Choosing the right
legal partner, however, remains key
Nicholas Richardson
Country Correspondent
Trademark owners enforcing their rights in Turkey should consider the following tips when formulating
their strategy
Ersin Dereligil
A number of options are available to brand owners seeking to enforce their rights in Canada
Mark Robbins and Megan Langley Grainger
It seems that everyone is talking about trademarks in China. Far and away the most common question
continues to be: is it really possible to enforce trademarks in China?
Aaron D Hurvitz
A number of factors have to be considered when creating an anti-counterfeiting strategy – but the law is
there to help
Mitain Patel and Akash Sachdeva
The Polish legal system offers different tools to protect IP rights – the key is striking the right balance
between prevention and speedy responses to infringement
Jaromir Piwowar and Katarzyna Melgies
The extraterritorial reach of the Lanham Act is a viable option against foreign infringers, with circuit courts
showing a trend towards broadening the scope of application
Lawrence R Robins and Kelly Donahue
Analysis of recent cases illustrate the effectiveness of the Italian system in the protection of designs, both
registered and unregistered
Simone Verducci-Galletti and Nicoletta Colombo
Working with law enforcement authorities and courts in India can be challenging, but by adopting the right
approach, clear results can be achieved
Ranjan Narula
Enforcement of trademark rights online remains a challenge and advertisers would be well advised to
observe the limits established on the use of keywords by Germany’s Federal Court of Justice
Axel Kockläuner
Despite the limitations of provisional measures in Mexico, when correctly planned and executed they can
prove an adequate tool to enforce IP rights
Xavier Hadad Rojas
Trademark rights can be enforced through prosecution or judicial proceedings, leaving rights owners with
a number of options to consider
Dragos M Vilau and Ionut Lupsa
The establishment of a specialised IP court has the potential to improve significantly both the quality of
decisions and the way that cases are handled on a practical level
Jukka Palm and Kristian Sjöblom
The enforcement options for trademark owners are constantly evolving. When considering approaches to
the resolution of a particular problem, rights holders should balance a number of considerations
Vladimir Biriulin
