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03 March 2004

Will South America succeed in its fight against counterfeiting?

Despite adequate laws, South American countries are hit hard by counterfeiting, mainly because of enforcement problems, which are in turn due to inadequate structural control and administrative inefficiency. Rodrigo Borges Carneiro and Mauro Ivan C R dos Santos of Dannemann Siemsen Bigler & Ipanema Moreira in Rio look at the situation in the Southern Cone Common Market, its member states, Chile, the Andean Community and possible developments under the Free Trade Area of the Americas.

18 February 2004

Law on pop-up ads remains unclear

Pop-up advertisements continue to be used extensively on the Internet, even though less than 20% of users actually click through the advertisements. In addition, more and more companies have attempted to thwart this type of competitor advertising on their websites, claiming infringement of both copyrights and trademark rights. However, Rochelle D Alpert of Morgan Lewis & Bockius LLP in San Francisco explains that the legal status of pop-up ads remains unclear as the few court decisions issued to date have come to quite different conclusions.

04 February 2004

The proposed union of the Madrid and Community trademark systems

By adding the United States to its list of members, the Madrid Protocol has gained some credibility as an international system for trademark registration. Adding Spanish as the protocol's third official language is expected to attract Latin American countries, which would help make it a genuinely global system. A more important development in the near future, however, is the proposed link to the Community trademark system. Alfred M Strahlberg, European Trademark & Design Attorney, of Strahlberg & Partners in Wabern/Berne, Switzerland, looks at the practical implications of such a link for both international and Community trademark holders.

21 January 2004

The ACPA's role in international domain name dispute resolution

With its capacity to extend jurisdiction to residents outside the United States and its power to review UDRP decisions, the Anti-cybersquatting Consumer Protection Act may give the impression that the United States rules the world of international domain name dispute resolution. However, Karin Segall and Ellen Dowling at Darby & Darby in New York explain that strict jurisdictional analysis and international comity mean that it is just another - albeit strong - tool against cybersquatters.

10 December 2003

Tips for effective brand management

While most organizations recognize the importance of acquiring protection for their brands, the inevitable budget constraints remain. As a result, the trademark manager is often faced with the dilemma of which brands to register as trademarks, to what extent they should be protected and in which jurisdictions. Darren Olivier and Rachel Tan of Field Fisher Waterhouse in London explain how to conduct an effective brand audit to determine the relevant protection strategy, and highlight some cost-cutting and revenue-generating tips that will stand the trademark manager in good stead to negotiate his or her budget.

26 November 2003

Expanding your brand in an enlarged European Union

The Community trademark system and the Community design system allow for the protection of a sign or design across the whole of the European Union through a single registration. With the European Union set to welcome 10 new member states as of May 1 2004, Kathleen Harris of Hammonds in London explains the changes awaiting trademark and design rights owners in both the existing and accessing member states.

05 November 2003

The trouble with certification and collective marks

Collective and certification marks guarantee the origin, nature and quality of the products and services bearing them. While more legislation is being enacted worldwide to give such marks a legal standing, they are not as popular as one might have expected in the jurisdictions where they are already recognized. Looking at the example of the United Kingdom, Dai Davis of Nabarro Nathanson finds that the registration and cancellation rules applying to such marks mean that they are often more trouble than they are worth.

22 October 2003

Going, going, gone: enforcing trademark rights on auction websites

Because they typically do not have control over the items for sale on auction websites, rights holders have expressed concerns about the policing of their marks in this increasingly popular marketplace. To reassure them, William M Bryner and Andrew Roppel of Kilpatrick Stockton LLP sketch out the measures that eBay - the largest auction website - has put in place to halt auctions that violate trademark rights. They also highlight the legal considerations to bear in mind in such circumstances.

08 October 2003

Common law rights and nationality issues in cybersquatting disputes

The prosecution of cybersquatters may be a complex and daunting project for international businesses, particularly as the rules applying to the registration and protection of domain names differ from one country to the next. To help businesses devise anti-cybersquatting strategies, Giovanni Visintini of Field Fisher Waterhouse highlights two of the variable elements that are often overlooked: whether a particular policy affords protection to names and unregistered marks, and whether protection extends to non-national companies and individuals.

24 September 2003

Life plus 70: trademarks will not extend copyright duration

While trademark law sometimes overlaps copyright law in the grey area surrounding creative works (in particular those that have reverted to the public domain), Jeanne Hamburg, special counsel with Baker Botts LLP in New York, explains that a decision from the US Supreme Court and another from the US Federal Court of Appeals show that, ultimately, trademark protection cannot always be assumed to apply when copyright does not. This is in good part due to the concern that applying unlimited rather than limited rights would violate the US Constitution.

10 September 2003

Dispelling some myths about unregistered trademark rights

While law students and attorneys are taught that trademark rights are granted to whomever first uses the mark in common law countries and whomever first registers the mark in civil law countries, this rule has many important exceptions. Bruce Horowitz of Paz & Horowitz shows that the first-to-file rule in Latin America does not exclude rights in unregistered marks, which creates a number of opportunities and risks for those wishing to protect their trademark rights.

30 July 2003

The scope for personal interpretation in UDRP decisions

The Uniform Domain Name Dispute Resolution Policy (UDRP) has been in place for over three years. It was established to provide an inexpensive and quick arbitration process, primarily aimed at dealing with cybersquatters who try to sell domain names to brand owners at extortionate prices or who set up pirate sites. Although the UDRP has largely achieved these objectives, the panellists deciding complaints have a wide discretion, which can give rise to seemingly conflicting decisions. Louisa Albertini of Field Fisher Waterhouse explores the scope for divergence in UDRP disputes.

16 July 2003

The Internet as a tool for trademark practitioners

The trademark practitioner's life has been revolutionized by the increasing availability of information on the Internet since the mid-Nineties. Principal uses of the Internet include searching registered trademarks, monitoring the progress of an application, establishing whether a mark is being used and how, and finding out more about one's client and adversaries. Barbara Cookson of Nabarro Nathanson explains how comprehensive global searches for trademarks can be made using the Net without having to pay extortionate prices.

02 July 2003

Has the UDRP broadened trademark owners' rights?

A study published in June last year highlights various features of the Uniform Domain Name Dispute Resolution Policy that appear to favour trademark holders. Theo Savvides and Miles Ingrey-Counter of Osborne Clarke discuss whether the conclusions of the study are justified, focusing on the issues of respondent defaults, the use of precedents, panellist discretion and the nebulous concept of bad-faith domain name registration.

18 June 2003

Generic trademarks: the importance of brand vigilance

As the fate of the ESCALATOR and LINOLEUM marks show, obtaining a trademark registration for a brand is only half the battle. Rights owners must then ensure that the mark does not become a generic designation for similar goods or services as it will then lose its function and be subject to cancellation. Elizabeth May of Field Fisher Waterhouse looks at some European decisions and sets out the actions brand owners can take to save their marks from such a fate.