Features
This year’s Global Congress on Counterfeiting andPiracy saw more than 900 anti-counterfeitingprofessionals descend on Paris. WTR presents thehighlights of the programme, which saw calls formore engagement from the private sector
Despite efforts to stop counterfeit products at source,the sheer diversity of distribution channels makes itimpossible to prevent illicit products being offered toconsumers. Brand owners therefore need to be ascreative and flexible as the foes they face
Brand owners carefully monitor markets to ensurethat counterfeits are not reaching consumers, butare they doing enough to ensure that they are notthemselves being supplied with counterfeit versionsof their products?
Whether through bankruptcy proceedings due torecent economic conditions or companies identifyingnew business models, trademark auctions are morevisible now than ever before. Yet there is much toconsider before raising your hand to reserve thosedesirable trademarks
Social game developers operate in a fast-moving, competitive marketplace, where traditionalapplications of trademark law may no longer provide comprehensive protection. However,recent disputes involving Mafia-themed games suggest that all is not lost
The right approach to counterfeit investigationsnot only will increase effectiveness, but it can alsogenerate brand protection profit
Successfully tackling the availability of counterfeitgoods in China requires that attention be paid both tothe source of illicit products and to the venue in whichthey are being sold
Innovation, the buzzword of the new economic models, isbreaking out of the patent bubble as more and more peoplerecognise its relationship with trademarks. WTR investigates
In Europe, there has been debate about OHIM takingon an anti-counterfeiting enforcement role. In Korea,the Intellectual Property Office is one step ahead,having launched its own special judicial police squad
For those seeking to value their brands, the industryoffers a confusing array of methodologies. Take awrong turn and the results can be significantly skewed
The successful use of expert witnesses does not relysolely on the nature of their evidence. Litigators wouldalso be well advised to consider courtroom protocoland psychology
With the country on the Office of the US TradeRepresentative’s Priority Watch List, a new bill hasbeen introduced to strengthen the anti-counterfeitingoptions available to trademark owners. Will it provea game changer?
Expert witnesses can make or break your litigationstrategy. While expert evidence is an invaluable tool,mistakes made in the planning stage can proveextremely costly later
As the controversial domain name expansionapproaches, litigators are circling. WTR looks at thepossible legal grounds for lawsuits against the policyand the $30 million fund designed to fight them
Cecelia Dempsey explains how the Burger KingCorporation utilises all available resources to fightinfringement – with franchisees playing a vital role
Country correspondent
In Russia, in order to file a trademarkapplication, it is not necessary to submitmaterial proving use of the mark or evenintention to use. However, before filing atrademark application, certain generalpoints should be taken into account in orderto ensure that proper protection for thetrademark is obtained.
Applications for registration of words or logosmay include multiple filing bases, includinguse, proposed use and use and registrationabroad. If an application is filed based onproposed use, the applicant will ultimatelyneed to file a declaration of use attesting to useof the mark in Canada before the applicationwill proceed to registration.
As the Chinese language is fundamentallydifferent from Latin language, businessesplanning to tackle the Chinese market musthave a Chinese version of their trademarks.One question that must be dealt withbefore filing a trademark application is howto select the appropriate Chinese equivalentof the original trademark.
Brand owners should note that the enforcement of rights before the Polish courts is more effective ifa trademark owner enjoys protection under the national system.
In the United Kingdom, trademark rightsare protected in two ways – by statutethrough an action for trademarkinfringement and by common law bymeans of a ‘passing off’ action. In order toobtain statutory protection, a trademark mustbe registered.
In the United States, practitioners should bewary of a host of issues before filing atrademark application. As a baseline, in orderto anticipate and head off problems duringprosecution, it is prudent initially to conducta full trademark search.
The Mexican Institute of Industrial Property can often be subjective in its interpretation of the law, making it crucial for applicants to approach the authority to discuss any areas of uncertainty. This can result in significant savings.
The Italian Patent and Trademark Office can hardly count itself among theworld’s most efficient industrial propertyoffices. However, recent developments showthat it is taking steps in the right direction.This is partly due to efforts made by theItalian legislature which, since 2005, hasintroduced a number of measures aimed atreorganising the IP system, particularly inregard to the trademark system.
Applicants applying for trademarkprotection in Germany are likely to perceivethe German Patent and Trademarks Office(GPTO) as an accessible institution whichtakes a reasonably cooperative approach tothe registration process. For example,wherever possible, applicants will beinformed of any objections that the GPTOmay have at an early stage in theproceedings, so that they can clarifyuncertainties or submit observations todefend the application.
News
For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, WTR’s regular email news service provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe.
The International TrademarkAssociation (INTA) hasrelaunched its website,introducing a refreshed markaccompanied by a new slogan,“Powerful network powerfulbrands”.
The expected March 2011launch of the new gTLDprogramme was in doubt asWTR went to press, with PeterDengate Thrush, chair of theInternet Corporation forAssigned Names and Numbers(ICANN), acknowledging thatapproval of the final applicantguidebook could be delayed.
Although the first-ever publictrademark auction may havefailed to spark a bidding frenzyon the day, WTR has discoveredthat big brand owners have beenprivately buying up the unsoldmarks for six-figure sums.
Columns
The paradox at the heart of anticounterfeitingstrategies is that successresults in a drop in seizure numbers,making it harder to demonstrate the needfor ongoing funding
Brand owners forced to police use of theirlogos online are justified in describingthe burgeoning social network space as amajor headache. But a new system whichprovides them with a set of proactivelicence conditions could ease the painfor good
A recent English High Court decisionoffers the prospect of new remedies basedon confusion and passing off
