Features
The 2013 edition of the World Trademark Review1000, released in January 2013, comprehensivelyidentifies the world’s leading trademark firmsand practitioners. In this preview, exclusive toWTR subscribers, we identify the firms with thehighest number of rankings by jurisdiction andby individual practitioner
Registering shape marks can be a strategic challenge,with game-changing new decisions being handeddown all the time. But with the right tactics, rightsholders can successfully navigate this shiftinglandscape and secure strong protection for shapesand 3D marks
Many creations that involve design can benefit fromthe protection offered by design patents as well astrademarks. However, how should practitioners –particularly those outside the United States – decidewhich types of protection to apply for, and when?
The standing of trademark licences in bankruptcy haslong been a murky issue. While the Seventh Circuit’sdecision in Sunbeam shines new light on the matter,both licensees and licensors must still pay attention tothe fine print to make sure they are protected
Managing relations with Customs is key to successfulanti-counterfeiting actions. WTR asks local expertsfrom across Asia to provide practical guidance on howto manage this relationship in their jurisdiction
WTR asked a range of trademark professionals,industry representatives and legal specialiststo highlight the issues that they felt were mostsignificant in 2012, either in their own jurisdictionor internationally, and what they anticipate will bemajor developments in 2013
Using different combinations of IP rights can bea good way to protect designs. However, decidingwhich rights to use can be confusing. One strategyentails blending design rights and trademark rights,depending on how the design is to be marketed
Although Macau is one of two special administrativeregions in China, its IP laws have more in commonwith the Portuguese regime. In particular, there aresome striking divergences between the two traditionsof which practitioners should be aware
Understanding the complexity of brand identitymessages can both help protect the brand frominflicting damage on itself and prevent othersfrom utilising ideas in the same way. Semioticsis one of the fundamental building blocks to thisunderstanding
With increasing numbers of apps available, newsocial media sites launching on a regular basis andthe online world due to expand significantly – whileprotection budgets remain tight – there are a numberof strategy shifts that brand owners should consider
India’s IP Appellate Board waded through tens ofvolumes of evidence when a petitioner sought to havethe XEROX marks declared generic. The ruling providesa number of strategic lessons for trademark counsel
A recent split between the trademark registriesin Australia and New Zealand on the one hand,and OHIM on the other, with regard to confusingsimilarity highlights how different workingmethods can influence findings
Customs is the first port of call for rights holders lookingto protect their brands in China. Recording trademarksand lists of licensees with Customs is crucial to anyanti-counterfeiting strategy but the hard work does notstop there. Working with local customs is essential andshould be integrated into your brand protection strategy
While investors are well aware of the power of a strong brand, they may have little appreciation of the critical role that trademarks play in building brand value. Trademark counsel can help by framing their work in a way that investors will understand; but to do so requires a step into the unknown for many
Country correspondent
While more public education over the consequences of infringement is required, a number of tools areavailable to brand owners protecting their property online
Trademark owners which believe that keyword advertising is causing them damage will face a number ofhurdles if they opt for litigation
There are many obstacles to effective online law enforcement, with a lack of proper and specific regulationsto assist brand owners not helping the situation
Although levels of online infringement remain high, foreign and domestic rights holders can look forwardto a bright future for both the monetisation and protection of their valuable content over the Internet
The debate as to whether the harmonisation of law and technological developments, or consumer awarenessand education, is the route to meet online challenges continues. In reality, a combination is necessary
Even where trademark law has not proved as helpful as rights holders might have hoped, clarificationsto the law have at least enabled them to establish procedures for detecting and responding to onlineinfringement of their trademark rights
What to do when your trademark is being used on social media sites
It is expected that in the foreseeable future, IP issues on the Internet will be no more complicated thanregular market infringement matters
The virtual world of social media sites is no longer the new frontier of intellectual property, but has becomeone of the normal arenas in which companies manage the legal issues arising from the unauthorised use ofIP rights
News
The Governmental AdvisoryCommittee (GAC) has filed 242early warnings to generic topleveldomain (gTLD) applicants.Early warning notices are notformal objections: they areissued where a gTLD applicationis considered to be potentiallycontroversial or sensitive byone or more governments.
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
In Marks and Spencer Plc vInterflora Inc ([2012] EWCACiv 1501), the Court of Appealof England and Wales hasconsidered the practice ofadducing favourable evidenceof confusion from members ofthe public in trademark actionswhere such witnesses wereselected from a wider groupof survey respondents – or‘witness gathering exercises’.
Advocate General Mengozzi hasgiven his opinion in FédérationCynologique Internationale vFederación Canina Internacionalde Perros de Pura Raza (CaseC-561/11), a reference for apreliminary ruling concerningthe interpretation of Article9(1) of the EU CommunityTrademark Regulation(207/2009).
The Court of Justice of theEuropean Union (ECJ) hasconfirmed that use of atrademark in a form that isdifferent from the mark asregistered is sufficient to provegenuine use if the differingelements do not alter thedistinctive character of themark, even if that mark itself isregistered.
The International Corporation ofAssigned Names and Numbers(ICANN) board’s New GenericTop-Level Domain (gTLD)Programme Committee hasapproved two resolutions aimedat providing interim domainname protections to certainnon-governmental and intergovernmentalorganisations.
In Ryohin Keikaku Co Ltd vTRAB, China’s Supreme People’sCourt has held that evidence ofuse of a trademark in originalequipment manufacturer (OEM)manufacturing activities solelyfor export was insufficientto show that the mark hadbeen “used and achieved acertain amount of influence inChina” under Article 31 of theTrademark Law.
Columns
Proposed changes to Poland’s IndustrialProperty Law would have a great impacton the registration, and protection, ofdesigns
The Court of Appeal of England and Waleshas found that while any derogationsto EU principles should be interpretednarrowly, there must be circumstancesunder which ‘special grounds’ apply orthe exception becomes meaningless
WTR has previously reported on the disconnect that can occur between trademark counsel and marketing departments. Yet when it comes to phishing, marketer initiatives are setting the enforcement agenda
