News
A judge in the US Court ofAppeals for the Ninth Circuithas handed the Bratz doll brandback to MGA Entertainment,overturning the district courtsearlier judgment after whichMattel claimed victory.
The Colombian registry behindthe widely marketed ‘.co’ topleveldomain name hasreiterated that it will continueto champion the rights oftrademark owners.
Anheuser-Busch InBev hasfailed in its 14-year effort toregister its famous BUDWEISERmark as a Communitytrademark (CTM) in theEuropean Union. The Court ofJustice of the European Union(ECJ) ruled on July 29 thatBudejovický Budvar’s earlierrights in Germany and Austriawere sufficient to show genuineuse of the mark in theCommunity and couldtherefore block AB InBev’sapplication.
The process to reach consensus on the trademark protectionmechanisms proposed for thenew generic top-level domains(gTLDs) has encounteredanother delay, just ahead ofSeptember’s expected decisionon the matter.
WTR presents a round-up of news from around the globe.
Country correspondent
The need for the Indian legislature to recognise publicity and image rights in a statutory manner has never been greater. Celebrities increasingly seek to protect theirpublicity and image rights due to the risingcommercial value of their fame andidentity.
Although publicity and image rights mightappear to have most in common withcopyright, of all IP rights, this is not in fact thecase. Copyright concerns property, whereaspublicity rights concern privacy.The use of images may or may not becommercial – commercial use comes to mindwhen the image of a famous person is used.
A number of legal protections are available for the protection of publicity and image rights.
Italian law provides strong protection for personal names and portraits as trademarks. The relationship between image protection and trademarks is defined by the few articles in the Industrial Property Code that deal specifically with images and personal names in relation to trademarks.
While national jurisprudence defends the nature of the image right as a personality right with important patrimonial value, economic exploitation can arise from the broad scope for negotiation in comparison to other personality rights.
Those wishing to protect their image or name need to navigate trademark law, issues surrounding freedom of expression, the Privacy Protection Law and Unjust Enrichment Law.
Image rights are fundamental rights enshrined in the Spanish Constitution, yet a number of factors hamper effective judicial protection.
Legislation on image rights is becoming increasingly necessary. With the rapid development of China’smarket economy and the emergence of newforms of marketing models, there is agrowing interest in new forms of propertyrights – image rights – to deal with thegrowing commercial value of celebrities’fame and identity.
In Canada, personality rights enjoy commonlaw and statutory protection, stemmingfrom an individual’s publicity rights (whichare proprietary in nature) and the right toprivacy (a personal interest). In terms ofcommon law protection, the tort ofmisappropriation of personality is availableto individuals (outside Quebec) who havesuffered economic injury as a result of theviolation of their publicity rights.
The forthcoming Civil Code will dramatically impact on image rights protection. The protection of image rights was firstacknowledged in Romania in the 1991Constitution, but only as a general andindirect principle (as a limit to the freedomof expression).
Features
To achieve success in pleading before the Trademark Trial and Appeal Board (TTAB), it is important to understand the differences between opposition proceedings in the United States and Europe, as well as grasping the intricacies of TTAB proceedings themselves. Successful navigation of the system can not only increase your chances of success, but also save money.
Bose may have shaken the world of US practitioners, but now their Canadian counterparts are considering whether two decisions at home could signal a trend towards a Medinol-style approach to misstatements in trademark applications
The results of a six-month study present a unique insight into marketing perspectives on sports brand protection and suggest a growing need for marketers to work more proactively on legal protection mechanisms
Trademark law is not practised in a bubble. Smart trademarkcounsel know that their team must dovetail with other departments in order to meet the companys strategic objectives. They also understand that beyond the registration certificates lies a world where brands brighten up store shelves and billboards. The in-house trademark counsel is a nexus not just between internal teams, but also with the outside world. It is thus vital that trademarks are viewed in their wider commercial and political context.
Frederick Mostert, chairman of the Walpole IP & BrandProtection Working Group, suggests that the solutionto the problem of trademark piracy on online auction sites can be found by drawing on historical experience
As he prepares to vacate the president's chair at theEuropean trademark agency, Wubbo de Boer reflectson his decade-long tenure and shares his thoughts onOHIM's future
As video games become more realistic and moreinteractive, the issue of in-game trademark use raisesnew concerns. And a traditional trademarkinfringement analysis may no longer be suitable
Almost 20 years after the enactment of EU Regulation (40/94), the path to a uniform CTM system still has a number of obstacles to overcome
An analysis of the counterfeiting and ambushmarketing challenges experienced in South Africareveals some valuable lessons for brand ownersand event organisers
It has been a busy year in Alicante. While efforts to tackle thebacklog of opposition files and long processing times continued, the Office for Harmonisation in the Internal Market (OHIM) also launched TMview, unveiled and implemented the initial framework within which national offices and users can apply for support from the 50 million OHIM Cooperation Fund, found itself proposed for potential anti-counterfeiting responsibilities and appointed a new president (the latter resulting in questions over the selection process after just one name was forwarded for consideration by the European Council).
Columns
Rumours recently circulated that thetrademark function would be spun offfrom India's patent and trademark office.With the office still burdened with a significant backlog of work and accession to the Madrid Protocol looming, wouldsuch a move be a help or a hindrance?
Domain name infringers target names that deliver the greatest return on investment. Familiarising yourself with their tactics, and using that knowledge to protect your intellectual property, is key in the fight against cybersquatting
Let's face it: we are not yet winning the war against counterfeit products. Despite the introduction of stronger laws with tougher penalties, improved enforcement resources and better training for customs officers inintercepting and identifying fakes, each year the illicit trade expands. This has led to a growing belief that the fight cannot be won solely by measures aimed at disrupting thesupply of such goods.
Roundtable
Practitioners from around the globe offer practical advice on creating an effective, budget-friendly anti-counterfeiting strategy
