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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.

26 October 2005

The challenges of '.eu'

With the launch of the sunrise period for the '.eu' domain now only a few weeks away, David Taylor of Lovells in Paris looks at how the '.eu' domain came to be, what its potential is and the challenges posed by the sunrise period and application procedure. In a second article to be published soon, he will look at the alternative dispute resolution policy for '.eu'.

12 October 2005

MERCOSUR steps up its efforts against counterfeiting

Counterfeiting remains the biggest trademark infringement problem for producers of luxury and consumer goods alike. MERCOSUR is more vulnerable to the problem than most regions of the world, partly because consumers there do not perceive counterfeiting as a crime - and neither do a number of politicians. Jaime Bestard of Berkemeyer Attorneys & Counselors in Asuncion explains what progress has been made in the region in the fight against counterfeiting in the past two years, and what remains to be done.

28 September 2005

When trademark rights must bow to a greater need

While a trademark must be used to fulfil its function of distinguishing the goods or services of one undertaking from those of other undertakings, consumer protection laws put restrictions on how and when use of the mark may occur. The interrelation between trademarks on the one hand, and unfair competition and advertising legislation on the other is a complex one. Alexander Vida of Danubia in Budapest reviews some aspects of this uneasy relationship in Europe.

14 September 2005

Pushing the case for damages

Indian legislation limits the grant of damages in respect of IP violations to actual losses. This means that plaintiffs must demonstrate that their claims for damages are directly attributable to acts carried out by the infringers - a difficult task when counterfeiters operate on a covert basis. Consequently, Indian courts have rarely awarded damages in IP cases. Change is in the air, however: Ameet Datta of Anand & Anand in New Delhi reports that the Delhi High Court has awarded damages in several recent IP cases.

31 August 2005

Mexico extends its protection of well-known and famous marks

The Mexican Industrial Property Law has been amended to give additional protection to well-known and famous marks. While domestic statutory law, case law and international treaties theoretically already afford well-known marks a high level of protection, experience has shown that this is not always the case. Inti Alejandro Alva of Arochi Marroquín & Lindner SC in Mexico explains how the power now given to the Institute of Industrial Property to declare or recognize marks as well known or famous will help mark owners to enforce their rights more effectively.