WORLD TRADEMARK REVIEW Issue 6

TTAB rules changes still on the horizon

Those seeking to enforce rights in trademarks and
service marks in the United States often choose the
Trademark Trial and Appeal Board. It is a forum with
fewer procedural requirements and less rigorous rules
than federal courts, which means that, at least initially,
costs are nowhere near as high as those incurred
during federal litigation. However, some changes to
the Rules of Practice proposed by the board may
change the dynamics of such proceedings

Features

Dealing with the German boom

The German Patent and Trademark Office faces a
number of challenges, including a surge in applications
and the need to tackle backlogs. But senior staff are
confident they are up to the job

Stopping telemarketers stealing your customers

The UK High Court has shed some much-needed light
on the slightly dubious methods employed by
telemarketers that seek to piggy-back on another
brand owner's success by blurring the distinction
between themselves and the brand owner. The ruling
provides guidance on the extent to which such traders
are expected to go in distinguishing their products
and services from those of other traders to ensure they
stay on the right side of the law

Europe’s trademark powerhouse bounces back

Germany is an important player in the global economy
and the home of a significant number of high-profile
brands, but in recent years the market for trademark
legal services has slowed down. Now, however, it looks
like things could be improving

The European name game

The blurring of traditional distinctions between
trademark attorneys and lawyers in Europe means
finding the right person for the job can be a
confusing task. The situation is not helped by the
nomenclature that different professionals use

Learning to surf the licensing wave

Each company has a different trademark and brand story to tell. For the Extreme Group, which is just reaching its teens, the story is all about building through intensive licensing

IP infringement penalties ruling will have sweeping effect

Late last year, the ECJ issued its first judgment
regarding the penalties for IP infringement. The ruling
outlines the conditions for the imposition of
prohibitive injunctions against unauthorized use of
Community trademarks, and both the outcome and the
reasoning of the court will be of interest to rights
holders across the European Union

More than meets the iPhone

The dispute over the name iPhone has attracted a lot
of attention because of the fame of the parties
involved. Besides offering the entertainment of seeing
two giants locked in combat, the dispute provides
some worthwhile trademark lessons

Keeping your house in order

Brand owners tend to focus their fight against
counterfeiting on external actions. While this is
crucial, they should also make sure they take all
necessary measures internally to avoid giving a
helping hand to potential infringers

The road to victory in Shanghai

The decision by the Higher People’s Court of Shanghai to uphold claims brought by Starbucks against an infringer
for trademark infringement and unfair competition has thrown light on the long-standing conflict between
trademark rights and proprietary rights in enterprise names in China. The decision also demonstrates the Chinese
authorities’ determination to step up their efforts in affording greater protection to well-known foreign brands

Columns

The view onlineKeying under French law

Some internet business models, such as the
use of trademarks in keyword advertising,
collide with the law of certain jurisdictions.
This is the case in France, where the courts
have issued numerous decisions against
the providers of keying services

Trademark managementThe whole truth and nothing but the truth

The consequences of an applicant or
registrant making a material
misrepresentation of fact before the US
Patent and Trademark Office that it knew or
should have known was false or misleading
can be severe. If proven, the application
or registration will be deemed void in its
entirety. Thus, a clear understanding of
both how to avoid a claim of fraud and
how to deal with potentially problematic
applications or registrations is imperative
for any trademark professional

Brands from the frontlineBrands online: the importance of a domain name policy

As the Internet plays an increasingly
important role for businesses, it is crucial
that these develop a domain name policy
as part of their brand policy. And that
policy must provide not only registration
rules, but also management rules

Counterfeiting perspectivesTaking on Joe Public

Until consumers are convinced that
buying counterfeit goods is wrong, other
initiatives designed to halt the trade in
fakes are bound to fail

Industry insight

Industry InsightA better path to IP management: the top 10 trademark tips

Navigating the world of intellectual
property can be difficult and timeconsuming.
Improper trademark
management can distract from your core
business, result in wasted resources and put
valuable trademarks at risk. Corporations
and outside counsel need experienced
guidance and a clearly defined roadmap.

Country correspondent

Enforcement

Many countries have similar systems for the registration and enforcement of trademarks. However, there will
inevitably be differences, often borne out of the different jurisprudential bases on which these systems are
based. This article looks at trademark enforcement in Australia and highlights some aspects of the Australian
legislation which differ from the US system. It also examines the main border protection methods available in
Australia to trademark owners

News

News

Roundtable

Making sense of the Internet

A panel of experts discuss some of the problems that trademark
owners now face online and look ahead to what may develop over
the coming years