WORLD TRADEMARK REVIEW Issue 46

How trademarks are shaping Europe’s economy

The European Commission has published “Intellectual
Property Rights-Intensive Industries: Contribution to
Economic Performance and Employment in Europe”,
a study carried out by the Office for Harmonisation
in the Internal Market and the European Patent Office
into the economic impact of intellectual property
across the continent. Some of the key findings are
represented below

Trevor Little

Features

Watching the watchers

WTR asks users to have their say on how the nonlegal
trademark services industry is meeting their
needs, and asks vendors to respond to user concerns
and requests

Proving your worth to the board

The drive to cut costs has led some companies to
downsize their trademark team – or to dismantle
it altogether and transfer its responsibilities to the
wider IP or legal department. WTR asks three in-house
practitioners to consider the arguments for and
against a dedicated corporate trademark function

Navigating the Foreign Corrupt Practices Act in the IP Context

Although IP business practices have not been a
traditional area of Foreign Corrupt Practices Act
enforcement, a number of the high-risk areas apply
in the IP context. Counsel should thus take care to
establish procedures to mitigate such risks

Exploring the URS as a trademark enforcement option for new gTLDs

The Uniform Rapid Suspension system, and its
big brother the UDRP, are the key tools available
to trademark counsel to help to stem the tide of
infringement in new gTLDs. However, it is crucial to
identify the pros and cons of each – and follow the
rules carefully

Evicting the squatters: China amends Trademark Law

The latest amendments to the Trademark Law
introduce several key changes, including writing the
principle of good faith into the law in an attempt to
stamp out bad practices such as counterfeiting and
trademark squatting

MARQUES: looking ahead to new challenges

WTR presents the highlights from this year’s
MARQUES annual conference, which offered an
intriguing glimpse at the future of trademark practice

Singapore's IP Hub Master Plan - what does it mean for trademark practitioners?

The IP Hub Master Plan is designed to turn Singapore
into a global IP hub. While the main thrust of the
report is innovation and patent protection, some
recommendations in the report will also impact on
trademark-focused businesses

Brand commercialisation strategies for the Middle East and North Africa

Global brand owners are increasingly partnering
with Middle East and North African companies in
order to gain a foothold in these emerging markets.
However, such arrangements present pitfalls as well
as opportunities

Instant hit or long game? Anti-counterfeiting considerations in Asia

Counterfeiting syndicates in Asia are difficult to
identify, trace and dismantle, posing the question of
whether it is wiser to continue cracking down on illicit
activities as and when they are discovered, or to play
a strategic long game with the aim of shutting down
production at source. WTR investigates

Social media and IP infringement in India: preparing for action

As take-up of social media continues to rise in
India, rights holders are enthusiastically exploring
this new avenue for promoting brands. However,
they should also be aware that social media is
yet another platform on which their intellectual
property can be infringed

Commercialising trademarks in sub-Saharan Africa - a regional analysis

Africa is not a region for the fainthearted, but
considerable opportunities await the canny investor.
The quirks and challenges of this region make it vital
that local counsel be engaged to ensure that rights are
properly protected

Watch your mark – navigating the prohibitions on immoral, scandalous and disparaging trademarks

While a cheeky double entendre might once have been
allowed registration, a recent Federal Circuit decision
appears to signal that such days are over. Applicants
for borderline marks should consider all potential
interpretations, as well as the context in which their
marks might appear

Has the ECJ's expanded list of functions widened the scope of trademark protection?

While the dust settled on the L’Oreal v Bellure
decision some time ago, clarification is still needed
on recognised functions of a trademark. Without this,
there is a danger that the treatment of marks will run
contrary to the core purpose of trademarks as economic
tools in an effective competitive marketplace

Fighting the pirates

With the East African Community currently failing
to make a meaningful impact on the import and
distribution of counterfeit products, there are a
number of strategies available to brand owners to take
effective action in the fight against fakes

Columns

The Common Economic Space - an Eastern response to globalisation

The Customs Union – which includes
Russia, Belarus and Kazakhstan – has just
signed an agreement on a new unified
system for trademarks. The agreement
should make it easier and cheaper for
rights holders to register and enforce their
marks across member states

A year in the life of Nigeria’s online trademark filing system

It is over a year since the launch of
Nigeria’s online trademark filing system.
While supporters have praised the portal
for cutting waiting times, reports of
technical difficulties and resistance to
increased fees suggest that opinions
remain divided

Change or die

The future of brands and branding
might be hard to distil, but while the
fundamentals remain the same, it is
important that brands follow the latest
market trends

Market Focus: Eastern Europe

Central and Eastern Europe offer rich
potential for brand owners seeking
strategic growth opportunities, but
trademark protection needs to top the
agenda for those considering expansion
in the region. This issue we shine a
spotlight on Russia, Poland and Ukraine
– large, fast-developing markets ready
to be tapped by ambitious brand owners

Country correspondent

Non-traditional trademarks

Although Mexican law grants protection to some non-traditional marks, it requires updating in order to
meet modern demands

Non-traditional trademarks

Although some non-traditional marks are protectable in Vietnam, there are still concerns about their
registrability and enforcement

Non-traditional trademarks

Non-traditional marks are modern and in vogue, but the possibility of effective enforcement and the ability
to evidence proper use of a non-traditional mark are questionable in Russia

Non-traditional trademarks

A recent landmark decision, focused on the Carneval biscuit, offers important insight into the treatment of
product appearance in Finland

Non-traditional trademarks

Reflecting the current trend towards the use of less conventional signs, the Romanian trademark office is
open to the registration of non-traditional marks – with certain caveats

Non-traditional trademarks

Patent Office practice in relation to non-traditional trademarks has been relatively poor. However, it is
hoped that within the next few years, things will improve

Non-traditional trademarks

The requirements to demonstrate distinctiveness at filing, as applied by the Canadian Trademarks Office, pose a significant obstacle to the registration of non-traditional marks

Non-traditional trademarks

Although the non-traditional marks realm remains largely unexplored in China, there is a trend towards
broadening the scope of protection to include such marks

Non-traditional trademarks

Non-traditional marks are gaining acceptance in India, and trademark laws and procedures are evolving
with time. Overall, the future seems promising

Non-traditional trademarks

Conflicting views centre on how to represent non-traditional marks graphically so that they can be
registered with the Turkish Patent Institute

Non-traditional trademarks

If practitioners can avoid registration refusals based on functionality and lack of distinctiveness, the liberal
US regime for non-traditional marks provides brand owners with an opportunity to strengthen goodwill

Non-traditional trademarks

Non-traditional marks are afforded protection in Italy, but there are challenges to registration

Non-traditional trademarks

Non-traditional trademarks in Germany have two compounded problem areas compared with traditional
trademarks

Non-traditional trademarks

The issues that can arise around non-traditional trademarks are illustrated by high-profile disputes in the
UK confectionery sector

News

Cadbury loses colour purple mark

In Société des Produits Nestlé SA
v Cadbury UK Limited, the Court
of Appeal of England and Wales
has overturned a decision
of the trial judge allowing
the registration of Cadbury’s
trademark for the colour
purple in respect of its milk
chocolate confectionery.

ECJ clarifies nature of ‘consent’ under Article 5(1)

In Martin y Paz Diffusion SA
v Depuydt (Case C-661/11), in
a reference for a preliminary
ruling from the Belgian Court of
Cassation, the European Court
of Justice (ECJ) has clarified the
nature of ‘consent’ to use a
registered trademark under Article
5(1) of the EU First Trademarks
Directive (89/104/EEC).

Economic study proves value of IP

The European Commission
has published a study on the
economic impact of IP across
the European Union.

gTLD applicants clarify intentions; Google launches domain registry

Applicants for generic strings
have clarified their intended use
of the top-level domains (TLDs)
that they seek to operate. This
came a day after the Internet
Corporation for Assigned Names
and Numbers (ICANN) revealed
that some stalled applications
can proceed to delegation if the
applicant blocks certain secondlevel
domains while further
assessment is carried out. In
other gTLD-related news, Google
has launched its online domain
registry, Charleston Road Registry.

ECJ: Board of Appeal has discretion to consider late-filed evidence

In Rintisch v Office for
Harmonisation in the Internal
Market (OHIM) (Cases C-120/12
P, C-121/12 P and C-122/12 P), the
European Court of Justice has
held that the Board of Appeal of
the Office for Harmonisation in
the Internal Market (OHIM) had
correctly dismissed oppositions
filed by Bernhard Rintisch, even
though the board had erred in
assuming that it had no discretion
to take into account additional
evidence filed after the expiry of
the deadline set by OHIM.

Global View

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provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe

Amendments to Chinese Trademark Law approved

Following years of deliberation,
the Standing Committee of
China’s National People’s
Congress has finally
approved the amendments
to the Trademark Law. The
amendments will come into
force on May 1 2014.