WORLD TRADEMARK REVIEW Issue 45

Nike: the brand of champions

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

Features

OHIM users have their say on a year of change in European trademarks

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

Time to make your brand protection strategy more social in Indonesia

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

Observations from the Observatory

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

Grand designs for trademark counsel

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

Two years of progress in mediation

TM Margellos, coordinator of the OHIM mediation
team, presents an update on the office’s mediation
service, launched two years ago

The top 10 enforcement trends against luxury fakes in China

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

Measuring the boundaries of protection

In efforts to secure protection for their threedimensional
and colour trademarks, are trademark
counsel pushing the boundaries of trademark
protection?

Doing business in India: the dos and don’ts for brands

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

Are the indications good?

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

Creating a robust anti-counterfeiting strategy for Latin America

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

Standing ground: an analysis of territoriality in US trademark law

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

Country correspondent

Enforcement and litigation

Trademark owners enforcing their rights in Turkey should consider the following tips when formulating
their strategy

Enforcement and litigation

A number of options are available to brand owners seeking to enforce their rights in Canada

Enforcement and litigation

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?

Enforcement and litigation

A number of factors have to be considered when creating an anti-counterfeiting strategy – but the law is
there to help

Enforcement and litigation

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

Enforcement and litigation

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

Enforcement and litigation

Analysis of recent cases illustrate the effectiveness of the Italian system in the protection of designs, both
registered and unregistered

Enforcement and litigation

Working with law enforcement authorities and courts in India can be challenging, but by adopting the right
approach, clear results can be achieved

Enforcement and litigation

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

Enforcement and litigation

Despite the limitations of provisional measures in Mexico, when correctly planned and executed they can
prove an adequate tool to enforce IP rights

Enforcement and litigation

Trademark rights can be enforced through prosecution or judicial proceedings, leaving rights owners with
a number of options to consider

Enforcement and litigation

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

Enforcement and litigation

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

News

Clash between governments and mark owners at Durban meeting

The fracture between the
Government Advisory
Committee (GAC) and
trademark owners over
geographic terms was apparent
during ICANN’s Durban
meeting in July.

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

ECJ rules on genuine use and relevance of colour

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.

Cadbury prevents registration of Nestlé’s Kit Kat shape mark

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).

ECJ: OHIM has discretion to take into account additional evidence of use

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.

Further gTLD delays proposed as study reveals ‘risk to Internet’

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.

Latest Trademark Law amendments double maximum statutory compensation

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

Renewing efforts to establish trademark opposition proceedings in Mexico

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

The impact of the High Court ruling in Interflora v M&S

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

Group buying sites: a trademark perspective

Group buying sites are soaring in
popularity, but what liabilities do such
sites bear if the products on sale infringe
trademark rights?

Safety in numbers – working together to build respect for IP

Rights holders have critical roles to play
in establishing an environment that is
respectful of intellectual property, as close
public-private collaboration is essential

Market Focus: Latin America

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