News
Features
A number of interesting US decisions issued in 2007 did not receive the coverage they deserved. They include the following
International brand owners looking to invest in new markets and needing effective corporate set-ups to manage their trademark portfolios should consider the British Virgin Islands
Western companies have been knocking at China’s door for three decades now, all trying to entice the country’s massive purchasing power to their products. Two questions continue to nag at these companies as they consider the Chinese market
New York City mayor Michael Bloomberg's administration has begun an anti-counterfeiting initiative based upon the legal theory of landlord liability. Many applaud the approach; however, others question whether the initiative merely pushes the counterfeit trade to new locations
By all indications, 2007 was the worst year ever for cybersquatting, but while the popularity of ‘tasting’ and ‘kiting’ creates new challenges for brand owners, IP counsel at Time Warner and Dell are leading the way in fighting back
The sheer size of Sara Lee’s portfolio means that its trademark department tackles almost every aspect of trademark protection and enforcement. Other rights holders can learn much from its approach to copycat products and counterfeiting
The case of Louis Vuitton Malletier SA v Haute Diggity Dog LLC (Case 06- 2267, November 13 2007) highlighted that the reform to the law of dilution brought in by the Trademark Dilution Revision Act in 2006 may not be the panacea that famous mark owners believed it would be
A recent Austrian court ruling may resolve a troubling jurisdictional issue that has perplexed commentators and CTM owners alike, helping the latter to enforce their rights against infringements in the European Union by several defendants located both inside and outside the European Union
Since the announcement in 2001 that Beijing would host the 29th Olympic Games, the Chinese authorities have made significant improvements to the IP protection regime. With the games now just around the corner, the authorities and rights holders must start putting their final strategies in place
Bad reputations are hard to shake. Many still believe that Italy has ineffective enforcement and trademark registration systems, but the former is no longer true and the latter is set to change too
In a case involving US brewer Anheuser-Busch Inc, the Hong Kong High Court issued in January 2007 an important decision in relation to the registration of shadow company names that incorporate famous trademarks
When it comes to the most effective ways of dealing withcounterfeiting in China, brand owners should look no further than the tried and tested methods adopted by their peers – both large and small
In October 2007 the Court of Appeal of England and Wales referred questions on central issues in EU trademark law to the European Court of Justice (ECJ) in the case of L’Oréal SA v Bellure NV ([2007] EWCA Civ 968)
In Mexico, the courts and the National Institute of IntellectualProperty (IMPI) are locked in a power struggle over the registrability of three-dimensional marks. A typical example was the case of In re MGA Entertainment Inc (Case 32271/05-17-05-6 (April 3 2007)), in which the Federal Court for Fiscal and Administrative Justice reversed an IMPI decision that refused registration of the three-dimensional shape of a doll
Columns
Vigilance on the part of trademark ownersis vital to ensuring that a trademark’sgoodwill is not exploited or damaged.This column explores the ways in whichbrand owners can stop unlawful actionsand protect brand integrity
Rights owners are constantly looking for new ways to fight the rising trade in fake goods. Recently, the UK authorities have been using the anti-money laundering legislation in order to tackle counterfeiting
Domain name tasting is the practice whereby domain names are tested over a five-day grace period to see whether theyattract a sufficient amount of traffic in order to be profitable. The grace period has had some unexpected, undesirableconsequences that ICANN is seeking to tackle
The owners of ‘well-known’ or ‘famous’ marks can benefit from cross-border protection, but far more needs to be doneto harmonize the international principles behind these doctrines
Country correspondent
The health industry has always been a sensitive sector, including in relation to trademarks. The current practice for the assessment of pharmaceutical trademarks is the result of a long evolution of French case law
Unlike marks in most other business fields, pharmaceutical trademarks are affected by regulatory law. In Germany, this influence accompanies the trademark throughout its existence. The owners of pharmaceutical trademarks therefore face a number of specific questions – not only when registering a trademark, but also in connection with maintaining and defending it
Pharmaceutical trademarks have been the subject of much debate, discussion and case law in India. This article runs through some of the key decisions
With public health and safety issues arising from pharmaceuticals hitting the headlines daily, it is hardly surprising that these concerns have permeated the assessment of whether a new pharmaceutical trademark willcause confusion. EU pharmaceutical trademarks undergo two separate assessments on this front
The sale of pharmaceutical products online is an increasing problem. Various Australian statutes may help in controlling such trade
China, the most populous country in the world, has a median age that continues to rise. If it can maintain its strong economic growth, building on the success of the past decade, the long-term prospects for pharmaceuticalcompanies in China will be very promising
The registration of pharmaceutical trademarks in Mexico may be problematic as there are no clear-cut examination criteria to assess similarity with prior marks. In addition, the body charged with granting marketing authorization has no obligation to assess new applications against existing trademark registrations
The Italian courts have issued a number of rulings on pharmaceutical trademarks in recent years. This article looks at a selection of key rulings in this field
Roundtable
Infringement is, unfortunately, often an unavoidable fact of life for brand owners. Putting in place the most appropriate litigation strategies can help to lessen the pain
Focus
Bad reputations are hard to shake. Many still believe that Italy has ineffective enforcement and trademark registration systems, but the former is no longer true and the latter is set to change too.
