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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.

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 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.

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.

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.

13 July 2005

Louis Vuitton injunction: landlords liable in counterfeiting war

A New York district court has granted Louis Vuitton a preliminary injunction against the owner of seven Canal Street, New York properties. The injunction is the first of its kind granted to a major designer against the sale of counterfeit goods in New York. James L Bikoff and Patrick L Jones of Silverberg Goldman & Bikoff in Washington DC explain how this may give trademark holders a new weapon in the perennial battle against counterfeiters.

30 June 2005

Greek Competition Commission's questions go unanswered

Pharmaceutical companies that were hoping that their ability to restrict parallel trade in the European Union would be clarified by the ECJ have been disappointed by the court's refusal to consider questions on this issue referred by the Greek Competition Commission. The ECJ held that it did not have jurisdiction as the Greek commission does not meet the criteria for reference under the EC Treaty.

08 June 2005

Personal names as domain names: confusion reigns

A number of recent decisions have highlighted the fact that disputes involving personal names registered as domain names may be resolved differently according to whether (i) they are decided in accordance with the Uniform Domain Name Dispute Resolution Policy, or (ii) formal litigation proceedings are brought before national courts. David Taylor and Jane Seager of Lovells in Paris examine some of these decisions and consider what conclusions may be drawn from them.

04 May 2005

Are image rights protected in Europe?

At the margin of trademark law, image rights enable individuals to control the use of their name, voice or picture. Against the backdrop of protection afforded in some other European countries, Jacqueline Irvine of Bird & Bird in London looks at these rights in the United Kingdom, in particular in relation to unauthorized use of personalities' images to endorse products and services.

20 April 2005

Unhappy bedfellows? The relationship between passing off and registered trademarks

In common law countries the protection afforded to trademarks by the tort of passing off is usually welcomed as an additional weapon in the registered owner's arsenal. Among other things, passing off extends protection to aspects, such as get-up and feel, that registered trademark protection often cannot reach. However, Alistair Payne and John Cahir of Matheson Ormsby Prentice in Dublin report that recent experience and case law suggest that passing off does not always complement registered trademark protection - instead the potential for conflict is ever greater.