WORLD TRADEMARK REVIEW Issue 45

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

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

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

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

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

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

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

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

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

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

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

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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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.

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

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

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

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