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06 September 2006

The threat of redefining WHOIS

In April 2006 the organization that oversees domain name registration voted to limit the WHOIS database to include only information that is needed to resolve narrow, technical issues. James L Bikoff of Silverberg Goldman & Bikoff explains how adopting a technical goal for the database will likely make enforcing IP rights and preventing internet fraud a more time consuming and expensive process.

26 July 2006

Have the new EU GI regulations gone too far against EU applicants?

Earlier this year the Agriculture Council in Brussels adopted two new regulations on (i) the protection of geographical indications and designations of origin for agricultural products and foodstuffs, and (ii) certificates of special character (now to be known only as 'traditional speciality guaranteed'). The new regulations clarify and streamline the rules on GIs and DOs and make amendments required following the decision of a World Trade Organization panel in March 2005. Cheng Foong Tan of McDermott Will & Emery UK LLP in London reviews the changes brought by the new regulations and questions their impact on EU companies.

05 July 2006

The lessons from the first '.eu' decisions

By mid June, the Arbitration Centre for '.eu' Disputes had already issued 25 decisions, 11 of which were in favour of the complainants. Based on the time frame of these decisions, complainants should expect that it will take approximately three months from the time the complaint is filed until a decision is made. What conclusions can be drawn from these decisions? Lisbet Andersen of Bech-Bruun in Copenhagen provides some answers.

21 June 2006

Chinese courts continue attack on landlords

In a spate of recent cases, the Chinese courts have provided encouragement to mark owners through their continuing efforts to fight counterfeiting in China - in particular by finding landlords liable for trademark infringement. In a case involving the refilling of genuine bottles bearing well-known marks with inferior liquor, a court in Zhongshan has sentenced the landlord of the premises in which the infringement took place to one year of imprisonment and a fine. Before that, the Beijing Higher People's Court had affirmed the lower court decision in finding the owner of the Silk Street market liable for trademark infringement.

07 June 2006

Ambit of protection for famous marks increased despite defeat for mark owners

The Supreme Court of Canada has released the much anticipated decisions in the BARBIE and VEUVE CLICQUOT trademark appeals. Although neither owner of these famous marks was ultimately successful at having the Supreme Court overturn the lower courts' decisions that there was no likelihood of confusion, the Supreme Court did make it clear that famous marks are generally entitled to a broader scope of protection from would-be interlopers. In doing so, the court clarified the test for determining a likelihood of confusion.

19 April 2006

Anti-counterfeiting strategies in South Korea

Trademark counterfeiting affects a wide range of products in South Korea, with fashion-related items such as apparel, footwear or bags most at risk from copying. Jay Young-June Yang and Sung-Nam Kim of Kim & Chang in Seoul explain what legal recourses are available to mark owners and what strategies work best against counterfeiters in South Korea.

22 March 2006

Evolution of nominative fair use - from Ninth to Third

The Ninth Circuit adopted the nominative fair use doctrine in 1992 for cases where the defendant uses the plaintiff's mark to refer to the plaintiff's products or services. This defence, which may be raised when the products or services referred to are not readily identifiable without use of the trademark, has been slow to spread beyond the Ninth Circuit. However, in October 2005 the Third Circuit expressly recognized nominative fair use as a defence and developed a test that is similar to but distinct from the Ninth Circuit's approach. David S Fleming of Brinks Hofer Gilson & Lione in Chicago outlines the evolution of nominative fair use as a recognized defence to infringement claims.

08 March 2006

Is the TTAB's reluctance to issue citable decisions set to change?

The Trademark Trial and Appeal Board of the US Patent and Trademark Office issues hundreds of decisions each year but only a handful of those are citable as precedent. Trademark practitioners have expressed frustration at the relative lack of decisions made citable and claim that the old argument that not all parties are equal when it comes to accessing decisions no longer stands now that access to online or electronic versions of decisions has greatly improved, and all decisions from the past 10 years are available on the USPTO's website. Making decisions that are available to all citable would ensure consistency and accountability of the board's decision-making.

22 February 2006

Court of Appeal takes close look at shape mark for shaver design

In the latest in a long-running series of international trademark disputes between Philips and Remington over shaver head designs, the Court of Appeal of England and Wales has affirmed a High Court decision, which held that Philips's three-headed rotary mark was invalid. Simon Chapman and James Martin of Field Fisher Waterhouse, who acted for Remington, explain how the case also provided the Court of Appeal with its first opportunity to give a detailed consideration of the June 2002 judgment of the European Court of Justice in respect of functional marks, which was delivered as a result of questions referred by the Court of Appeal in the first UK proceedings between the same parties.

08 February 2006

Famous marks and abusive company name registrations - a growing concern

Trademarks often compete with company names and domain names as identifiers of the origin of goods and services. The public believes that these signs confer similar rights to the holder or registrant. This misconception and the different legal or administrative regimes under which these different types of registration operate have opened fertile ground for infringers. Chi Keung Kwong of Sit Fung Kwong & Shum reports that Hong Kong has seen a growing trend in the incorporation of company names that embody famous marks in order to ride on these marks' reputation and goodwill.

18 January 2006

Free Trade Agreement's effect on border enforcement measures

Where national forces have not managed to impose the introduction of new anti-counterfeiting legislation, obligations contracted under international or bilateral trade agreements may do the trick. Penny Leng of Drew & Napier LLC in Singapore explains that the US-Singapore Free Trade Agreement, signed in 2003, led to significant amendments to the country's border measures. The amendments, which came into force 18 months ago, provide for a simplified notice procedure, new seizure powers, a new search warrant procedure and enhanced enforcement measures.

09 December 2005

Starbucks regains rights in STARBUCKS through legal process

Starbucks Corporation has successfully cancelled a Russian registration for a trademark similar to its famous STARBUCKS logo mark, which was registered by an unconnected Russian entity. Since the unauthorized registration of trademarks is common in Russia, this case is of importance to trademark owners as it demonstrates that it is possible to cancel marks through the legal process without having to deal directly with the registrant.

07 December 2005

The alternative dispute resolution rules for '.eu'

On the day the '.eu' domain name is launched via a sunrise period protecting IP rights owners, the World Trademark Law Report looks forward to the important second mechanism of protection under the new domain, the '.eu Alternative Dispute Resolution mechanism. David Taylor, a '.eu' domain name arbitrator from Lovells in Paris, explains that while at first glance the '.eu' ADR Rules seem to mirror the Uniform Domain Name Dispute Resolution Policy and Rules from which they are inspired, they do differ quite significantly in several areas.

23 November 2005

The risks faced by non-EU mark owners during the '.eu' sunrise period

The '.eu' top-level domain is generating significant interest among trademark owners eager to protect their brands and reach a consolidated European audience from a single point on the Internet. With only two weeks to go before the start of the sunrise period, Marc Trachtenberg of Ladas & Parry LLP and Ladas Domains in Chicago reminds mark owners with no EU presence that they can only apply for '.eu' domain names through third parties but that (i) time restrictions apply, and (ii) this strategy is not without risks.

09 November 2005

Anti-counterfeiting: maximizing existing tools as a first option

Alarming statistics, as they usually are, on counterfeiting activities tend to send the authorities into a frenetic search for a solution that, more often than not, involves the introduction of new legislation. While new legislation may be useful or even necessary, it may not always be the only or even the best solution. Looking at the Spanish example, Alejandro Angulo of Grau Baylos & Angulo in Barcelona reminds us that using all the tools already available to their maximum capacity should be considered first.