WORLD TRADEMARK REVIEW Issue 5

Counterfeiters hit hard

On August 25 2006 a US district court sentenced two
Chinese nationals to 97 months and 87 months
respectively in federal prison – a rare instance in
which individuals convicted of trademark
counterfeiting have been sentenced to significant jail
time. Counsel for the plaintiffs tells the story of how
an ambitious and complex operation had a successful
outcome for the brand owners

Michael Holihan

Columns

Counterfeiting perspectivesMissing the point

As IP crime moves up the political
agenda, no one seems to be willing to
discuss the real reason why activities
such as counterfeiting are so attractive

Trademark managementPlaying with the oddities of the EU system

National trademarks within the European
Union supposedly offer the same level of
protection as the same sign registered
as a Community trademark, albeit for a
limited territory. But some oddities in the
system mean that, in the case of Benelux,
a national registration may offer more
possibilities than a Community one

Brands from the frontline

The tendency to use descriptive terms to
designate new products is something all
in-house counsel must work against, but
the problem is particularly acute in the
food industry, where marketeers justify
such use by saying that consumers want
to know where their food comes from

The view onlineKeying in on potential liability

The widespread practice of ‘keying’
(ie, selling keywords to advertisers) raises
trademark liability issues that remain
unresolved in most countries

Features

Why Mexico matters

Mexico has a developing market for legal services in
relation to trademarks, which has doubled over the past
10 years. Filings from foreign mark owners have been
the mainstay of business for many of the big players,
but the likely ratification of the Madrid Protocol and
other changes may see a change of emphasis

The changing face of CTM litigation

An ECJ decision issued in July 2006 has brought an end
to forum shopping in cross-border patent litigation in
Europe. There could be major consequences for CTM
owners too

A Russian revolution

Although IP laws were among the first statutes to
be adopted after the disintegration of the Soviet
Union, they did not work overnight. The local
economy needed to grow first and people needed to
get used to a new reality. But the perception remains
that the current situation still reflects the early days
of the new regime, even though significant progress
has been made in the field of IP protection

Securitization moves up the agenda

Two major US securitization transactions involving
sizeable trademark royalty components may finally
provide the impetus for the lagging IP securitization
market to take off

Building a strategy for shape mark protection

The LEGO Group has become the
leading producer of construction
toys worldwide thanks to its
famous rectangular plastic brick.
But protecting the shape of
the toy is proving tricky

Trademark law gets Brazilian treatment

The landscape of trademark practice in Brazil is
changing rapidly, with the national IP office constantly
adopting measures to try and improve trademark
prosecution – often with mixed results – and various
state and federal bodies moving up a few gears in the
fight against counterfeiting

Keeping up with the neighbours

Mexico is a big country so it is little surprise that it has
a national IP office to match. With four regional offices
and an unusually broad remit, the Mexican Institute
of Industrial Property is leading the way in protecting
and promoting the country’s trademarks

Roundtable

The truth about trademarks in China

Probably no country in the world has had its trademark regime more
heavily scrutinized than China. Even so, it can be hard to separate fact
from fiction. In this roundtable, four experts give it a go