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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.

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.

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.

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.

04 May 2010

WTR Industry Awards shortlist highlights the best in-house counsel

Over 1,600 nominations and two months of extensive research later, the shortlist for this year's WTR Industry Awards is now live. The awards recognize the vital work of in-house trademark counsel and identify those teams and individuals that are performing their functions to the highest standards.

04 May 2010

Visionary trademark managers will demand more than a law firm

While the folks at the recently merged Hogan Lovells state that the new firm offers "enhanced services", one wonders exactly how the organization will differentiate its IP offerings in a competitive market. With many law firms looking increasingly old-fashioned, in-house trademark managers continue to flock to non-traditional service providers – drawing the future battle lines for IP spend.

28 April 2010

Chanel's brand may need a polish if it cannot stop No 6

If you thought that Chanel's registration for NO 5 in Class 3 was enough to stop a competitor registering NO 6 in the same class, think again. The USPTO has just rejected Chanel's opposition to the NO 6 mark, in a move that could stop owners of famous brands in their tracks.

27 April 2010

This Deloitte brand list has certainly got in-house counsel talking

Thanks to its vague methodology, the Deloitte brand list is causing a stir. Last week we noted that Thomson Reuters, one of the world's most valuable brands and parent of a company whose function is to protect brands online, had not made the list, and then asked whether this called into question the criteria behind the list. Senior in-house counsel have now joined the debate.

23 April 2010

Is Thomson CompuMark really failing to protect its own brand online?

Looking again through the Deloitte brands list, drawn up to pinpoint the 100 best protected brands online, one name is notable for its absence. You would expect Thomson Reuters to be among the brands noted for exceptional online protection for two reasons: firstly, according to Interbrand, it is one of the world's most valuable brands and, most importantly, because its company Thomson CompuMark is world renowned as a leader in the field of online brand protection.

22 April 2010

Bacardi counsel on the need for a long-term trademark strategy

A recently published interview with Bacardi IP lawyer François Griesmar offers some useful, strategic advice for in-house trademark counsel striving to demonstrate the value of their activities. It is an issue that also figures highly in the findings of WTR's Global Trademark Survey (to be published in the next issue of WTR on May 4).

20 April 2010

New brands in the pipeline as filings outstrip renewals

It seems that trademark practice is finally picking up again, after one of the deepest recessions in living memory. New statistics collected by WTR show that over 30% of in-house trademark counsel identified a rise in filings over the year to March 2010, compared to 20% in the previous period.

14 April 2010

Does this mean Twitter will start selling trademarks as keywords?

Trademark owners who think that the problem with sponsored keywords may be limited to search engines (of which there is only one real foe) will want to look closely at Twitter's new business model. The powerful micro-blogging site has launched an ad system that may not be far from Google's AdWords programme.

09 April 2010

Best protected online trademarks revealed; some surprise exceptions

Deloitte and Belgian law firm Laga have published their list of the 100 global trademarks which they consider to be the best protected online. Notable exceptions include Ford, Budweiser and Gillette, some of the world's most valuable brand names.

08 April 2010

Bacardi ducks confusion challenge in latest HAVANA CLUB win

While rum drinkers can tell that if it looks like a duck, swims like a duck and quacks like a duck then it probably is a duck, brand owners accustomed to arguing that their trademarks function primarily as source identifiers will read the most recent HAVANA CLUB rum judgment with dismay.