World Trademark Review Issue 50

August/September 2014

World Trademark Review’s 50 market shapers

To mark World Trademark Review’s 50th edition, we identify 50 of the people, companies, cases and bigpicture issues that have defined the market on which we have been reporting for the last eight years

Trevor Little

Industry insight

Global view


Olfactory marks revisited

While smell marks are protectable under EU trademark law, the requirement that signs be ‘graphically representable’ has proved a serious stumbling block to registration and one that is unlikely to be removed by the new proposed Community Trademark Regulation

Challenges to international brands under China’s new legislation

The revised Trademark Law has now come into force. While the law succeeds in modernising the registration process and strengthening enforcement, it simultaneously provides additional opportunities for hijackers

Do you wanna dance? Why branding agencies and trademark attorneys need each other

Trademark counsel and branding experts often seem to be on opposite sides – yet their combined knowledge and creative genius can provide significant added value by helping to develop and build stronger, safer brands, if only they can learn to work together

Defining and measuring counterfeit goods

Counterfeiting poses a real threat to companies around the world, but one that is not always clearly understood. Brand owners need to define the nature of the threat, tailor a response and measure their success in order to secure sustained funding

Inside INTA 2014

World Trademark Review highlights the practical takeaways from the 2014 International Trademark Association annual meeting

Industry Awards 2014

On May 13 2014, World Trademark Review announced the winners of its eighth Industry Awards at an exclusive ceremony at the historic Happy Valley Racecourse in Hong Kong. The awards are designed to recognise the vital work carried out by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest possible standards. Over the following pages we speak to the winners and explain why they were judged to be leading examples of industry best practice.

Comparison, overall impression and inconsistencies in design protection

A recent UK decision demonstrates that representations of a design in an application for registration can have a major impact on the scope of protection, especially when it comes to colour and surface ornamentation

Capturing the intangible

Most businesses know that trademarks are valuable assets; the challenge comes in quantifying that value and using it as a springboard for growth. Trademark valuations supported by regular IP auditing could be the answer

World Trademark Review’s 50 market shapers

To mark World Trademark Review’s 50th edition, we identify 50 of the people, companies, cases and bigpicture issues that have defined the market on which we have been reporting for the last eight years


Amazon’s bid for ‘.brand’ gTLD shot down

A resolution passed by the Internet Corporation of Assigned Names and Numbers (ICANN) New gTLD Programme Committee has effectively killed off Amazon’s application for the ‘.amazon’ generic toplevel domain (gTLD), as well as the related internationalised domain names in Japanese and Chinese. The resolution was based on advice from ICANN’s Governmental Advisory Committee (GAC).

OHIM reveals plan to extend “fast-track philosophy” to CTMs

In its 2013 Annual Report, the Office for Harmonisation in the Internal Market (OHIM) has revealed plans to extend the ‘fast track’ option – currently applied to Community designs – to Community trademarks (CTMs).

German court considers whether word mark can be infringed by 3D product shape

In Haribo v Lindt & Sprüngli (Case 6 U 230/12) the Cologne Court of Appeal held that Lindt’s gold-foil wrapped chocolate bear did not infringe Haribo’s word mark GOLDBÄREN (‘gold bears’).

Ireland to be first EU country to introduce plain packaging for cigarettes

Ireland is to become the first country in the European Union to introduce plain packaging for tobacco products.

Industry moves and mergers

New common practice regarding black and white marks

Within the framework of the European Trademark and Design Network, OHIM and a number of trademark offices in the European Union have agreed on a common practice with regard to black and white (B&W) or greyscale marks, as compared with coloured versions of the same sign.

Proving peaceful co-existence of marks in EU is “chimera”

The decision of the General Court in Asos Plc v OHIM (Case T-647/11) illustrates how difficult it is to demonstrate the peaceful co-existence of two marks in the European Union.


In their own words

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

Where your advertising spend is going

The last thing that any responsible trademark owner would want to do is to fund those infringing the intellectual property of others. But this may already be going on right under your nose

For the benefit of all

The latest trademark amendments will further improve Russia’s trademark regime

Country Correspondent


Vietnam has developed substantive laws to fight the counterfeiting threat


While the border measures in Saudi Arabia have proven to be more effective than those in the United Arab Emirates, the UAE market agencies tend to produce more consistent results than their Saudi counterparts


Italy has two legislative tools which can serve as a useful alternative to civil protection in certain cases: criminal prosecution and border measures


While effective steps and remedies are available to rights holders in the United States, anti-counterfeiting success requires vigilance and aggressive action


The Canadian government is stepping up efforts to halt infringing goods at the border


Dealing with counterfeiting in China is an uphill battle, but a strategic and well-thought-out action plan can help to alleviate stress and misunderstanding


Rights holders in Poland can protect their intellectual property through both civil and criminal proceedings


Mexican authorities should review not only the law, but also their interpretation of it in order to implement more efficient anti-counterfeiting policies


India has a robust legal framework for combating counterfeiting and piracy. However, much still needs to be done to simplify enforcement procedures