Country correspondent
Non-traditional signs enjoy broadprotection in the United States as long asthey can function as trademarks.Nonetheless, proving acquireddistinctiveness may be challenging forthose signs, such as product designs, thatlack inherent distinctiveness
The Indian Intellectual Property Office isputting together a manual on trademarkpractice and procedure which providesthorough guidelines on the requirements toregister non-traditional marks. This articleexamines the latest proposals in detail.
Although the definition of ‘trademark’under the Industrial Property Law isrestrictive, most non-traditional signs canenjoy a degree of protection in Brazil
Even though the traditional view thattrademarks can consist only of visualsigns lingers in Romania, shapes, soundsand colour combinations may beregistered as trademarks. Case lawregarding other non-traditional marks,however, remains limited.
Spanish trademark law and practice arebound by EU regulations and case law.However, the Spanish Patent andTrademark Office is even more reluctantthan the EU trademark bodies to registerunconventional marks.
The definition of ‘trademark’ in Mexicanlaw is restricted to signs that can beperceived visually. In practice, theTrademark Office narrows this definitionfurther – for instance, by not grantingregistration to colours unless they arecombined with other distinctive elements.
The protection afforded to non-traditional trademarks in Benelux is governed in large part by EU regulations and case law. However, Benelux courts are often prepared to grant protection where the EU instances are not.
In principle, any sign that is distinctiveand can be represented graphically may beregistered as a trademark in Denmark, butthese requirements often prove to beinsurmountable hurdles for non-traditionalmarks.
Three-dimensional trademarks can be registered in China as long as they are distinctive and non-functional. However, trademark owners should be aware that similar shapes may already have been registered as patent designs.
The conservative approach of the Patent and Trademark Office and the courts to the protection of non-traditionaltrademarks, as well as limited national case law on the issue, mean that much remains to be clarified with regard to the scope of protection of such signs.
Israeli law recognizes a broad range of signs as being registrable as trademarks. However, the Trademark Office’s practice on this matter is rather restrictive.
Three-dimensional shapes can beprotected under trademark, industrialdesign and/or copyright law in Canada.To obtain immediate and comprehensiverights, brand owners should consider anintegrated strategy combining all threeprotection schemes.
Part IV of Russia’s Civil Code provides for theregistration of an array of non-traditionaltrademarks. But graphical representationmay be an issue in some cases.
Although a number of non-traditionalsigns are protectable as trademarks underEU law, Portuguese law and practice arerather more restrictive.
are, by and large,protectable in Norway, with the restrictionsimposed across the European Union alsoapplicable in this non-EU country.
Columns
Besides the usual, already daunting rightsand obligations involved in a licenceagreement, a recent decision revisits theclaim that a fiduciary relationship mayexit between licensors and licensees
The penalties imposed on counterfeitersin the Gulf region are not stringentenough to act as a deterrent. Brandowners are calling for a rapidimplementation of the Unified GulfCooperation Council Trademark Law tohelp them in their fight
Courts from five different EU jurisdictionshave referred questions to the ECJ withregard to keyword advertising. Furtherguidance on the issue is vital
News
As part of its continuing effortsto protect well-known marks,the Adjudication Committee ofChina’s Supreme People’s Courthas issued an “Opinion onCertain Issues Concerning theProtection of Well-Known Marksin Civil Disputes”.
Cosmetics giant L’Oréal wasinvolved in three eagerlyawaited decisions from courtsin Europe in the past few weeks– but with mixed results.
The US Court of Appeals for theSecond Circuit has ruled thatunique product codes (UPC) areprotected under trademark law(Zino Davidoff SA v CVSCorporation (Case 07-2872-cv,June 19 2006)). It is abreakthrough in the fightagainst counterfeit and greymarketgoods.
Features
Innovations appear online daily. The next big thingwill undoubtedly be the expansion of the generictop-level domain space next year, but brand ownersfear that the step could undermine their rights.WTR joins the debate
The global downturn and changes to domestic practiceand procedure have altered Spain's prosecution andenforcement landscape significantly. WTR takes adetailed look at the effects on the Spanish legal market
With demand for luxury goods tumbling, many brandowners are looking to licensing as a means of boostingincome. A recent decision from the ECJ could helpthem maintain a firmer grip on their rights
In the current economic climate is defensiveregistration a proactive means of securingprotection for global brands or a risky venture inlight of well-established use requirements?
A review of the UDRP’s defining characteristics and keydecisions is in order as the policy prepares to celebrateits 10th anniversary at a time of intense speculationregarding the future direction of the Internet
Among the top 10 cases of the year selected by theChinese People’s Supreme Court, five were of keysignificance to trademark owners. The selectioncriteria left many puzzled, but a new analysis showsthat each decision is remarkable in its own way
Over 150 senior IP professionals attended the thirdWTR Industry Awards (www.Industry-Awards.com)at the stylish Greg Kucera Gallery in Seattle onMay 19 2009. Representatives from the nominatedteams mingled with leading private practice lawyersat the exclusive champagne reception in honourof the world’s top in-house trademark counsel.WTR wishes to thank all nominees and sponsorsfor helping to make the Industry Awards 2009 sucha successful event.
The International Trademark Association’s (INTA) annual meeting isstill the most important – and busiest – event in the trademarkcommunity’s calendar. This year the conference returned to Seattlefor the “greenest annual meeting” ever, as Katrina Burchell, head oftrademarks at Unilever and co-chair of the meeting, explained at theopening ceremony. “We live in a competitive world,” Burchell said.“Trademarks are key to winning that battle, so brands are jumpingon the environmental bandwagon.” INTA leapt on board too thisyear, with its special theme of corporate social responsibility. In thissection, WTR looks at some of the meeting’s many highlights, sonumerous that one delegate said she was “too busy to sleep!”.
The laches defence can prove an effective weapon forstriking out a trademark infringement claim in theUnited States. However, a controversial ruling fromthe Ninth Circuit may have served to raise theevidentiary burden placed on defendants
On May 19 2009 WTR announced the winnersof its third Industry Awards at a ceremony inSeattle. The awards are designed to recognizethe vital work done by in-house trademarkcounsel, and identify the teams and individualsthat are performing their functions to thehighest possible standards. The following pagesfeature profiles of the winners
