World Trademark Review Issue 49

June/July 2014

Inside track: how IPOS is supporting the trademark ecosystem

Daren Tang, deputy chief executive of the Intellectual Property Office of Singapore, charts the evolution of the office and explains why trademarks remain the workhorse of the registry

Trevor Little

Industry insight

Global view

For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, World Trademark Review’s regular email news service provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe


When the sums don’t add up

While some trademark teams have finally seen budgets improve over the last year, for many the situation remains straitened. The challenge for them is clear: ensuring that reduced spend and new enforcement approaches do not lead to significantly increased risk

When comparison steps over the line

With comparative advertising disputes on the rise, the need has increased for a statute that codifies and consolidates the fundamental principles, exceptions and defences to this form of marketing

How design patents complement trademarks in the fashion brands armoury

In the continuing battle against counterfeiting, fashion designers are increasingly turning to design patents to improve protection for their products. Such patents can act as a new weapon in litigation, provided that they meet certain requirements

China case law spotlight

In November 2013, WTR Daily reported on a Beijing higher court ruling which held that the distinctiveness of a trademark consisting of foreign words should be assessed on the basis of the general knowledge of the relevant public in China

Industry focus: the sweet smell of success for confectionery trademarks in the Middle East and North Africa

The Middle East and North Africa is a lucrative but competitive market for confectioners, with cases fought over the tiniest elements of packaging. Global brands should familiarise themselves with the similarities – and differences – between local regimes before diving in

Building clarification: Singapore’s year in trademark law

A round-up of selected decisions of the Intellectual Property Office of Singapore (IPOS) and the Singapore courts which offer useful guidance to both trademark owners and practitioners

The building blocks of change

A number of decisions in 2013 indicate significant progression in the trademarks debate in Brazil; it is to be hoped that these developments become sound foundations for future achievements

To outsource or not to outsource: how to decide

The relationship between rights holders and lawyers – whether in-house or part of an IP firm – has been transformed in the last few years by technological developments and shifting attitudes, causing some rights holders to question how best to manage their portfolios

Time to break some trademark rules in 2014?

The increasing practice of brand owners ‘verbing up’ their own marks and in some cases deliberately disrupting their own logos demonstrates that strong brands can be flexible, fluid and living

Trademark challenges in South Africa

With signs that the courts are adopting a more restrictive approach towards trademark rights, there have been some clear challenges for brand owners in protecting their marques

Wearable tech: technology – and IP – get a fashion makeover

The emergence of wearable-tech products has given rise to a number of legal issues, particularly in relation to data protection and privacy, but also with regard to how innovative companies can protect and enforce their rights in products

Preparing for the future

It is a time of great change in Canada, with key decisions and developments through 2013 paving the way for a broadening of the definition of trademarks and the augmentation of border enforcement

Inside track: how IPOS is supporting the trademark ecosystem

Daren Tang, deputy chief executive of the Intellectual Property Office of Singapore, charts the evolution of the office and explains why trademarks remain the workhorse of the registry

The Supreme Court turns its attention to trademarks

In 2013 the US Supreme Court took an unusual interest in trademark-related issues. While noteworthy, debate surrounding the Washington Redskins trademark grabbed the mainstream media headlines

How Chinese courts are ratcheting up damages awards for wilful infringement

While some feel that damages awards in China are still insufficient, recent cases show that the courts are becoming much more sophisticated in calculating damages and awards are increasing – especially in cases of wilful infringement

WTR Industry Awards 2014

The World Trademark Review Industry Awards 2014 – to be presented at an exclusive ceremony in the owners box at the historic Happy Valley Racecourse in Hong Kong, timed to coincide with the 136th International Trademark Association annual meeting – honour leading trademark teams and individuals across a range of business sectors. In this issue, we reveal the shortlist

From Superman to the legislature – trademark developments in Australia

A number of important practical takeaways can be identified when surveying 2013’s trademark decisions

Striving for clarity in Europe

Although trademark law in Europe was harmonised more than 20 years ago, recent decisions suggest that the ECJ is still deciding questions of interpretation of fundamental issues such as the meaning of ‘due cause’ and ‘bad faith’

Getting more bang for your buck

World Trademark Review asks a range of trademark counsel how they ensure they are maximising in-house trademark budgets


Excessive sunrise fees, delay to strings and cybersquatting levels: takeaways from ICANN 49

The US government’s announcement that it intends to transfer responsibility for Internet Assigned Numbers Authority functions to the internet community was one of the big talking points at ICANN 49, held in Singapore in March. However, other issues of significance for trademark owners were also discussed – not least the Trademark Clearinghouse’s (TMCH) revelation that it had delivered over 500,000 claims notices as of March 25, with 95% of the queries for trademark terms that triggered claims notices not being followed through to a live registration. According to the TMCH, the fact that around 475,000 applications were dissuaded from progressing to registration was evidence that “the deterrent is working”.

Enemy at the gates

US Immigration and Customs Enforcement’s Homeland Security Investigations and US Customs and Border Protection have released their counterfeit and pirated goods seizure statistics for fiscal year (FY) 2013. Some of the key figures are represented below.

Industry moves and mergers

Crowell & Moring LLP has announced the addition of partner Lora A Moffatt to the firm’s IP group at its New York office.

ECJ considers revocation of trademark due to inactivity of owner

In Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH (Case C-406/12) the European Court of Justice (ECJ) has ruled, on a reference for a preliminary ruling from the Austrian Supreme Patent and Trademark Court, that a trademark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the rights holder, it has become the common name for that product from the point of view solely of end users of the product.

National offices hit out at plans to abandon relative grounds examination

A number of national offices have expressed their opposition to the European Commission proposal that ex officio examination of relative grounds be abandoned.

ECJ tells OHIM and General Court to seek information of their own motion when necessary

In Office for Harmonisation in the Internal Market v National Lottery Commission (Case C‑530/12 P), the ECJ has clarified the approach that the Office for Harmonisation in the Internal Market (OHIM) and the General Court should follow when applying national law, and highlighted the importance of seeking information of their own motion.

Victory for Harley-Davidson in Screamin’ Eagle dispute

In H-D USA LLC v Berrada (2014 FC 207) the Federal Court of Canada has held that Harley- Davidson may sell its Screamin’ Eagle clothing in association with its well-known HARLEYDAVIDSON mark, despite another party’s trademark registration for SCREAMING EAGLE for retail clothing stores.

AG opinion boost for creative businesses

Advocate General Wathelet has issued his opinion in Karen Millen Fashions Ltd v Dunnes Stores (Case C‑345/13), stating that Article 6 of the EU Community Designs Regulation (6/2002) must be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression that the design gives to the informed user must be different from that given to such a user by one or more earlier designs taken individually and viewed as a whole, not by an amalgam of various features of earlier designs.


Setting a precedent with anti-dilution protection

A Chinese high court has set an interesting precedent focusing on principles of anti-dilution in a case involving the protection of well-known marks. The judgment also provides hints on the latest judicial guidelines with regard to the protection of well-known marks in China

Infringement from a digital wallet

After a slow start, digital crypto-currency Bitcoin is taking the world by storm. Amid concerns that virtual currencies pose a major money-laundering threat and a danger to national economies, World Trademark Review suggests that trademark counsel should also keep them on their radar

Trademark-related quotes, opinions and observations from around the globe

“Since the Philips/Nokia ruling (C‑446 and 495/09) in 2011, under EU law European Customs can check counterfeit goods transiting through the EU but can only stop them if there is a risk of these goods entering into the Single Market. This means in practice that customs are powerless against counterfeit goods on route to a third country, and must let them go, at the risk of these goods being illegally diverted back into the EU. The new provisions adopted today will allow Customs to stop trademark counterfeit goods even if destined to a country outside the EU, and will not affect the trade of legitimate goods under the EU’s WTO international obligations. Likewise, these provisions ensure that genuine generic medicines will reach their final destination. With this vote, the European Parliament signals that it is serious about stopping trademark counterfeits to protect consumers everywhere and that the EU should show leadership in the global fight against counterfeiting.”

What will the devolution of Scotland from the United Kingdom mean for IP rights?

As Scotland gears up to a referendum to determine whether it will break away from the rest of the United Kingdom, questions are being raised about what this will mean for IP rights – particularly if devolution leaves Scotland outside the European Union

Country Correspondent

Well-known and famous marks

Opposition proceedings in Italy are limited in order to exclude protection of extremely well-known trademarks beyond the concept of likelihood of confusion, but there are avenues open to trademark owners

Well-known and famous marks

The lack of lists of well-known marks and specific rules for determining whether a mark is well known has given examiners in Vietnam broad discretion in this regard

Well-known and famous marks

Well-known trademark status offers useful protection, but securing it in China can be an uphill battle

Well-known and famous marks

Trademark owners should apply to register their famous marks now, to be able to take advantage of the incoming customs regime

Well-known and famous marks

An overview of the regime for famous marks in the United States

Well-known and famous marks

Declarations for well-known trademarks are issued only after the Mexican Trademark Office has carefully studied all evidence submitted to it

Well-known and famous marks

Trademark legislation in the United Kingdom affords a unique and substantial degree of protection to wellknown and famous marks

Well-known and famous marks

Recent rulings show that the courts are pragmatic in giving due credence to the international character of trademarks and recognising their well-known status

Well-known and famous marks

Turkish law does not define a ‘well-known mark’, but such status is nonetheless available to rights holders and filing a separate application for well-known status before the Turkish Patent institute is recommended

Well-known and famous marks

Polish law does not set out regulations for famous trademarks, but protection is nonetheless available

Well-known and famous marks

Well-known trademarks are protected in Romania, but a number of court decisions have highlighted inconsistencies in approach

Well-known and famous marks

UAE law is clear in its protection of internationally well-known marks and has been interpreted at least once to favour internationally famous marks over local marks


Protecting your brand in the Web 2.0 environment

Global trademark practitioners offer practical guidance on the creation and execution of a resilient social media strategy