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28 May 2010

European trademarks saved by new gTLD clearinghouse rule, but details sketchy

Trademarks that have undergone examination based only on absolute grounds of refusal will be welcomed into the Trademark Clearinghouse proposed for the new gTLD space, WTR has learnt. The news came from Kurt Pritz, senior vice president, services, at ICANN, who was speaking at a roundtable hosted this morning by the UK IPO.

27 May 2010

New domain name issues emerge at INTA meeting

The alarm bells over new gTLDs have finally been heard. The sell-out session at the INTA annual meeting on this topic filled the conference centre's biggest meeting room on Tuesday. "ICANN is so close to finalizing the proposed trademark protection mechanisms that we all need to assume it's going ahead," said Fabricio Vayra, senior counsel, intellectual property at Time Warner. "It will be a bad day for a brand owner who assumes it's not going to happen and it does."

26 May 2010

Leading in-house counsel honoured at WTR Industry Awards ceremony

Last night, WTR celebrated the best in-house trademark counsel in the industry at the fourth annual Industry Awards ceremony. Among those honoured were teams from Apple, Nokia, L'Oréal and MasterCard.

25 May 2010

The ever-changing world of trademarks - direct from the INTA annual meeting

The unofficial theme of this year’s INTA annual meeting is change. This theme may have taken two years to filter down to trademarks from a certain election campaign but boy has it arrived.

24 May 2010

As INTA kicks off, it's clear that trademarks are back

In hotel lobbies and conference centre hallways there is much more of a buzz this year than last at the INTA annual meeting. After two years of cutbacks, trademarks are definitely back. "Hats off to the programme producers," says Brian Banner, veteran trademark attorney who is in town to launch his new firm, H&A IP Law. "There really is something for everyone." Everyone who is interested in trademarks, of course. With 8,000 people in Boston for the meeting, that is a lot of people.

21 May 2010

Court applies smell-alike ruling, but is not happy about it

While the Court of Appeal for England and Wales has followed the European Court of Justice ruling in L’Oréal v Bellure, Lord Justice Jacob has made it clear he isn’t happy about muzzling commercial free speech. Expect the debate over free riding to continue.

18 May 2010

Switzerland: Gillette's G is not the best a man can get

That is, if the 'man' is a trademark examiner with the Swiss IP office. Mark owners have long criticized the Swiss authorities for being overly strict when it comes to trademark examination. But, in a new ruling of the Federal Administrative Court, the authorities are probably on the button. The court has denied Gillette's application to register its letter G as a trademark, arguing that the mark is not distinctive enough.

18 May 2010

China's trademark litigation landscape may not be as perilous as many think

Surveying China's trademark litigation landscape as part of some research for a magazine feature, I have found that the jurisdiction which was infamous for being something of a ‘Wild Wild East’ is now making rapid improvements in its judiciary and court system. Many commentators have already written a great deal about litigation trends in China. Taking a new approach, thanks to some exclusive, unpublished court data and the testimonies of former judges and experts, WTR has uncovered exactly why foreign brand owners should no longer fear the dragon.

17 May 2010

UK ponders trademark protection for two-character domains

With the UK yet to release one- and two-character domains, registry Nominet is canvassing for feedback on the proposed introduction process. Brand owners would be advised to get involved to avoid a repeat of the German experience, where the lack of a sunrise period resulted in a free-for-all for key domains.

14 May 2010

Europe's anti-counterfeiting team between a rock and a hard place

The European Observatory on Counterfeiting and Piracy is to hold its first events at the European Parliament from June 21 - 25. The week will include exhibitions, information sessions, short films and ceremonies to raise the profile of the observatory and awareness of the issues surrounding counterfeiting and piracy. These are commendable activities, so why does a question mark hang over the location of the observatory?

13 May 2010

General Court sketches out similarities between design and trademark law

The latest decision from the General Court of the European Union has clarified when an earlier trademark right can be used to invalidate a later registered Community design, shedding new light on the interplay of trademark law and design rights under the Council Regulation on Community Designs (6/2002). The methodology used by the court will be welcomed by many trademark professionals.

11 May 2010

Joint venture partners forsake trademarks at their peril

According to a survey conducted just a few years ago, chief executives' top concern when embarking upon a joint venture is the control of their IP rights. That's the kind of statistic we love to hear at WTR, as it shows that senior management grasp the value inherent in intellectual property. Unfortunately, WTR's own more recent survey found that for many brand owners the opposite is true.

11 May 2010

Mark owners feel ignored, but will the European Commission listen?

European trademark owners are on the warpath. They are already unconvinced that the study into the EU trademark system is listening to their opinions, and now there is dismay that the European Council is trying to force the OHIM to commence anti-counterfeiting work and the 50% split of CTM renewal fees with national offices. So they are going right to the top: user association MARQUES today meets with the European Commission to try and explain why now is not the time to start work on these areas.

10 May 2010

It looks like the USPTO desires free trademark data for all, too

Here's a gentle whisper from the United States Patent and Trademark Office (USPTO). It appears that the agency is searching for a partner that can help it open up its trademark register to the public free of charge. The USPTO, which already operates a searchable trademark database, made noises last year about developing its technology in the interests of transparency and user experience.

07 May 2010

Now governments are backing brand owners in trademark gTLD debate

The saga over trademark protection in the new generic top-level domain space may resemble a long-running soap opera but the UK Intellectual Property Office is planning to cut through the confusing plot turns to help trademark counsel work out exactly why this topic needs their urgent attention - and it is not before time.