Country correspondent
Proposed practice rules, if implemented, could pave the way for the registrability of sound andcolour marks
The US system for protection andregistration of non-traditional trademarks isliberal and pragmatic. Practitioners shouldconsider its flexibility and broad protection.Rights holders can confidently embrace non-traditionaltrademarks in their overall IPstrategy for the US market.
According to the law on traditionaltrademarks, words, logos and wording inspecial characters enable consumers todistinguish sources of goods and services.However, what about particular colours andsounds that have the ability to identifygoods and services belonging to a particularbusiness source?
A trademark’s principal function is todistinguish the products of one entity fromthose of another. In order for a sign to servethis purpose, it must be perceived by thepublic as a sign of origin and not as a meredescription, general statement oradvertisement.
The Trademark Law 1998 (significantlyamended in 2010) follows the principles ofthe EU First Trademarks Directive(89/104/EEC). Thus, in Romania, a‘trademark’ is defined as any sign that iscapable of being represented graphicallyand distinguishing the products of oneentity from those of others.
Sophisticated businesses rely on more thansimple words and logos to identify theirproducts and services. Unique product andpackaging shapes, slogans, colours, jingles,endorsement by personalities and evensmells can be used by businesses to identifytheir products or services.
While colour combination and three-dimensional trademarks are still relatively new to China, there remaingreat uncertainties about their protection
The Russian regime does not set down separate regulations to govern applications for non-traditionaltrademarks, although moves are afoot to improve the legislation
In order to make a product or service moreattractive or distinguishable, non-traditionalmarks are often used in modern marketingstrategies. However, such use may result in alack of adequate protection in somejurisdictions. Now that business is conducted on aglobal scale due to technological advancessuch as the Internet, manufacturers andservice providers face pressure not onlyfrom the competition, but also becauseconsumers are more demanding of newcharacteristic elements when deciding whatto buy.
Non-conventional marks are slowly gaining acceptance in India. However, trademark laws and proceduresare still evolving, making it important to keep abreast of the latest developments
Features
New proposals on electronic service of process on fictitious and anonymous websites have comeunder scrutiny, but offer an important tool to fightonline fraud
While celebrity endorsements can boost a brand, theycan also result in negative publicity and tarnishreputations. To minimise risk to brand identity,contracts should cater for every eventuality
The Falsified Medicines Directive, the MedicrimeConvention and the Anti-counterfeiting TradeAgreement are set to strengthen the position ofpharmaceutical trademark owners – just as the issueof goods in transit looks set to create new challenges
As exclusive USPTO data reveals the ascent of newbusiness models for trademark filing services, WTRexamines the challenge posed by new market entrantsand why they are causing a stir
WTR looks back on the key learnings from this year’sInternational Trademark Association annual meeting,held in San Francisco
The Quality Brands Protection Committee is leadingthe charge in the battle against counterfeiters inChina. Chairman Jack Chang discusses the group’ssuccesses, challenges and plans for the future
On May 17 2011, WTR announced the winners of its fifth Industry Awards at an exclusiveceremony in San Francisco’s Asian ArtMuseum. The awards are designed to recognisethe vital work carried out by in-housetrademark counsel, and identify the teams andindividuals that are performing their functionsto the highest possible standards. Over thefollowing pages we speak to the winners andexplain why they were judged to be leadingexamples of industry best practice.
A US district court in Washington state has called intoquestion the long-accepted rule of domicile and hasshifted the debate over the right of publicity
New generic top-level domains are here, but whatbrand considerations come into play when decidingwhether to apply for a proprietary gTLD and whatshould you take from your existing protection andenforcement strategies?
While there are many successful examples of brandtruncation, for both marketing professionals andtrademark counsel the decision to create alternativefaces for existing marks is one that should beapproached carefully
In addition to identifying those vendors offeringenterprise trademark management systems, newresearch offers invaluable advice for selecting the righttrademark software and systems for your organisation
Columns
For Links of London, linking its socialmedia and anti-counterfeiting strategiespays tangible dividends
When Heather Steinmeyer joined WellPointInc, she was tasked with building andimplementing a resilient IP programmeacross the organisation – a process in whichthe brand strategy team was key
Social media sites purporting to offerprotection for trademarks, patents andcopyrights, in the form of ideas, willnegatively shape public perception of IP rights
News
The Internet Corporation forAssigned Names and Numbers(ICANN) has published a reportproposing that a full-scalereview of the Uniform DisputeResolution Policy (UDRP) is notrecommended.
The US Patent and TrademarkOffice (USPTO) has released theresults of its ‘trademark bulliesstudy’, which stemmed fromgrowing concerns that smallbusinesses are unfairlydisadvantaged in trademarkdisputes. Following itspublication, the study has facedfierce criticism from thetrademark attorney community
The Office for Harmonisation inthe Internal Market (OHIM) hasunveiled a new organisationalstructure. Following anextensive consultation period,OHIM’s new strategic plan setsout three overall objectives: tobuild a strong, vibrantorganisation; to improvequality and optimise thetimeline of operations; and topromote convergence ofpractice. To achieve this, sixlines of action have beenidentified, including theestablishment of the I PAcademy and knowledgerepository, the improvementand broadening of quality, andthe development of theEuropean network.
For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, WTR’s regular email news serviceprovides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe.
The Court of Justice of theEuropean Union (ECJ) hasclarified the territorial scope ofinjunctions and the coercivemeasures used to enforce suchinjunctions for infringement a Community trademark (CTstating that “the scope of theprohibition against furtherinfringement or threatenedinfringement of a Communitytrademark, issued by aCommunity trademark court…extends, as a rule, to the en tirearea of the European Union”.
The Supreme Court of Canadahas clarified that trademarkrights acquired through use inone geographic area of thecountry may be relied upon toprevent the registration of alater similar trademark, even ifthe later mark is used in adifferent part of the coun try.
