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26 July 2007

Genoa court clarifies ECJ Montex decision in patent case

In a case involving patents, a court in Genoa has given useful guidance on the interpretation of the European Court of Justice decision in Montex Holdings Ltd v Diesel SpA. Among other things, the Genoa court decision clarifies that the actual destination of goods for the purposes of a preliminary seizure and injunction can be demonstrated by means of documentary evidence, such as the relevant shipping documentation.

11 October 2006

Bringing counterfeiters to justice

In the second part of our article on anti-counterfeiting tools available in the United States, Lynda Zadra-Symes and Nicholas M Zovko of Knobbe Martens Olson & Bear LLP in Irvine, and Michael Gray formerly of Knobbe Martens Olson & Bear LLP, explain how to bring counterfeiters to justice. They look at civil and criminal actions, and discuss the measures available under the Racketeer Influenced and Corrupt Organizations Act.

27 September 2006

Pre-litigation anti-counterfeiting toolkit

With counterfeiting still the number one problem for most trademark owners, a review of the tools available to mark owners in the United States in their fight against counterfeiters seems called for. This week Lynda Zadra-Symes and Nicholas M Zovko of Knobbe Martens Olson & Bear LLP in Irvine, and Michael Gray formerly of Knobbe Martens Olson & Bear LLP, review the pre-litigation tools available, in particular in the context of online infringement; in a second part, to be published on October 11, they will consider how to bring counterfeiters to justice.

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.

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.