WORLD TRADEMARK REVIEW Issue 50

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

Country correspondent

Anti-counterfeiting

Vietnam has developed substantive laws to fight the counterfeiting threat

Anti-counterfeiting

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

Anti-counterfeiting

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

Anti-counterfeiting

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

Anti-counterfeiting

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

Anti-counterfeiting

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

Anti-counterfeiting

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

Anti-counterfeiting

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

Anti-counterfeiting

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

News

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.

Features

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

Columns

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

Industry insight

Global view