WORLD TRADEMARK REVIEW Issue 8

Changes to Korean trademark law underway

A number of key amendments to Korean trademark law came into force on July 1 2007. They broaden the scope of protection for trademarks and bring into effect a number of important practice changes

Country correspondent

The impact of recent Australian case law on colour marks

Non-traditional trademarks have been registrable in A
ustralia since the Trademarks Act 1995 came into force.
However, recent decisions of Australian courts indicate that many issues relating to the definition, scope and
enforceability of these highly coveted marks remain unclear

Non-traditional trademarks in Mexico

Although Mexican law appears not to recognize non-traditional marks, on closer examination certain types
of non-traditional mark enjoy full trademark protection in
Mexico, provided that they fulfil specific criteria.
Where the trademark law does not cover such marks, it
may be possible to find alternative protection under
other legal measures

Benelux approach to non-traditional marks

The Benelux countries, Belgium, the Netherlands and Luxembourg, have uniform trademark and design laws,
and a harmonized approach to the protection of non-traditional marks. As members of the European Union,
the practice of the Benelux countries in this area is also highly influenced by EU law

The tradition of non-traditional trademarks in Germany

Even before the implementation of the EU First Trad
emarks Directive in Germany in 1995, the German
courts and the Patent and Trademark Office had begun
to establish a tradition of registering and defending
non-traditional marks. However, the use of such marks has challenged German trademark practice and
raised new questions to be answered by the courts

Non-traditional trademarks in the Community trademark system

European Union

Modern EU trademark law offers, in theory, the possibility of registering shape, sound or colour marks,
but applicants will face hurdles such as graphical representation and proving acquired distinctiveness

The sound of unconventional marks in the United States

There are very few limitations, in principle, to what
can be registered and protected as a trademark under US
law. However, tests showing that the sign is a source identifier, is not functional and is distinctive must be met

Italy's cautious approach to non-conventional trademarks

Marilena Garis, Jacobacci & Partners, Italy

As in all EU jurisdictions, trademark law in Italy recognizes the registrability of shape, colours and sound
marks in principle, but case law so far indicates a
guarded approach to the registration of non-conventional
marks by the national IP office and the courts

Columns

Trademark managementFinding the right balance

The considerations involved in
challenging an infringer are varied and
the emphasis is constantly changing.
These variables encourage legal counsel
to keep abreast of legal and commercial
developments, and often media interest
as well

Brands from the FrontlineDomain name portfolio management - one company's perspective

Domain names are often managed by the in-house IP team along with trademarks, but their nature means that the best management solution for them may well be outside the trademark group

The view onlineUnsavoury practices

The practice of 'domain tasting' (ie, registering large numbers of domain names for a very short period of time and keeping those that generate revenue only), though innocuous on a small scale, has grown into a problem as single companies register more than 10,000 domain names a day, oten preying on popular brands

Features

Pioneers in progress

As numbers of applications for
trademarks at the US Patent and
Trademark Office continue to grow,
the Trademark Operation is faced with
numerous problems, such as delays
and inconsistencies. But embracing
new technology and working methods
is helping it meet the rising demand

The trademark experts

WTR
spoke to a number of leading practitioners in the
United States to find out who they rated as being
among the best in the trademark law business. Here are
the names that were mentioned most

Where to now?

The fight against counterfeiting and piracy
has found a place on the political agenda.
However, even an event as promising as the
Global Congress to Combat Counterfeiting
and Piracy can leave IP professionals with
the feeling that a lot is being said, but not
enough is being done

Industry Awards 2007

On May 1 2007 World Trademark Review
announced the winners of its inaugural
Industry Awards, sponsored by Thomson
CompuMark, for in-house trademark
teams at a ceremony in Chicago. The awards
are designed to recognize the vitally important
work done by in-house trademark counsel,
and identify the teams and individuals that
are performing their functions to the highest
possible standards. The following pages
feature profiles of the winners

Chicago medley

The International Trademark Association's annual meeting remains the must-attend event for the trademark industry. WTR asked afew delegates what they got out of this year's meeting.

The virtual INTA attendee

Tony Wilson
is a Vancouver franchising and trademark lawyer who
has written for the Toronto
Globe and Mail
Macleans Magazine
and
other publications. His regular humour column in
Bartalk Magazine
was a finalist for "Best Regular Column" by the Western Magazine Awards Foundation - something which he hopes might get the damn thing syndicated one day

European Court of Justice clarifies rules on comparative advertising

As part of a dispute between a Belgian brewer and
champagne makers over the use of references to
the appellation of origin 'champagne' in advertising, the European Court of Justice has clarified the scope of the term 'comparative advertising' and defined certain key terms in this field

Outsourcing: why would you do that?

The counsel now responsible for the management
of the Unilever trademark portfolio shares his views
on the trends, motivations, business rationale and
practicalities of outsourcing

Prosper or perish

General practice law firms are increasingly seeking to
muscle out the IP boutiques, while clients become ever
more demanding. Yes, the trademark services market
in the United States is as tough as ever

News

News

Roundtable

The view from down under

Australia is a wealthy, brand-focused country. For the well-prepared
trademark owner, this is very good news