Columns
The Court of Appeal has offered welcomeclarity on whether infringers may deductgeneral overhead costs from an account ofprofits in infringement proceedings. Thecourt ruled that these costs can be takeninto account only where they are properlyattributable to the infringing activity
The Apple v Samsung tablet design disputeshave grabbed media headlines acrossEurope. For trademark counsel, there are anumber of important takeaways
The ONEL decision was much anticipated,the issue of genuine use of a Communitytrademark long being a hot topic ofdebate. So is this the end of the discussionor just the beginning?
Features
IP valuation is still a controversial issue, with a varietyof different methodologies and few hard-and-fastrules. However, US courts appear to be taking a moreactive role in helping to ensure that damages awardsmore closely reflect the value of the infringed asset
Survey evidence can be a potent weapon in trademarkcases. However, not all surveys are equal and noneis immune to criticism. Counsel must ensure thatsurveys are properly designed and conducted so thatthey can carry their points successfully
In today’s cost-conscious corporate environment, litigation isusually regarded as a last resort in the event of infringement –but sometimes it is the only available solution. In such cases it isimportant to ensure that you have the right strategy in place, bothto maximise the chances of success and to ensure that resourcesare properly allocated. Over the following 23 pages, WTR presents anexamination of strategies and best practices as they relate to the USlitigation landscape.
Not every defendant is a wrongdoer, and there are arange of tactics that counsel should consider when ina defensive position
Corporate efforts to gain competitive advantage inthe midst of a difficult global economy have led to anincreased focus on brands – leading to an upswing inbrand value as a proportion of total enterprise value. Aswith any race, however, there are winners and losers
In Leno Merken BV v Hagelkruis Beheer BV (CaseC-149/11, December 19 2012) – often referred to as theONEL decision – the European Court of Justice (ECJ)found that while use of a Community trademark(CTM) in one member state could suffice to establishgenuine use in the Community, “all facts andcircumstances” should be considered. It ruled outa de minimis rule and suggested that the bar forshowing genuine use within the Community will beset somewhat higher than that for showing the samein a specific member state. In addition to the detailedanalysis on page 12, WTR asked a number of legalexperts for their reaction to the decision
Despite a lacklustre response to the US Departmentof Commerce report on trademark litigation, bullyingis a real problem that disproportionately affectssmall businesses, and is something that the wholetrademark community needs to address
While Australia’s Tobacco Plain Packaging Act is thefirst of its kind, similar rules may be implementedin other jurisdictions before long – and there areeven indications that plain packaging rules may beextended to other sectors
The prospect of litigating in China can be daunting tosay the least, and courts and judges across the countryvary widely in their trademark expertise. By followinga few select tips, brand owners can ensure that theychoose the best venues in which to enforce their rights
Defending a multibillion-dollar global brand in theonline age is no easy task. IKEA trademark managerCecilia Emanuelson reveals how consistency andtenacity are the keys to success, Swedish style
Recent civil decisions involving OEM and trademarkinfringement have led some to speculate that China’scourts may have departed from their earlier positionthat OEM of branded goods does not constitutetrademark ‘use’. However, a review of the recent cases,together with the Trademark Law and guidance fromthe Supreme People’s Court, would suggest otherwise
The use of brands and trademarks as collateral isbecoming increasingly common. However, issuessuch as publicising deals, valuing trademarkportfolios and the portability of trademarksremain far from cut and dried
Deciding where to file suit in the United States whenseeking redress for trademark infringement or unfaircompetition, or defending against such claims, is atricky business. Fortunately, there is plenty of case lawto provide guidance for potential litigants in choosinga forum
Country correspondent
Adapting trademark prosecution strategies in light of IP Translator
Registering trademarks in Romania is relatively straightforward, as long as the right approach is taken
Does the creation of a specialised IP Court shift trademark prosecution towards litigation?
It is a common misconception that trademark use without filing an application grants the user rights.In reality, the first-to-file rule makes early registration a must
With a rising number of trademark applications resulting in examination delays, it is crucial that brandowners do all that they can to expedite prosecution of their applications
Agile registration strategies are crucial in Russia, with foreign applicants required to be represented byRussian trademark attorneys who are registered at the RPTO
The rush for trademark registration means it is increasingly difficult to register marks in China.However, a number of strategies can be implemented to maximise the chances of success
Non-traditional marks present creative ways to engage consumers, but their registration can be complexand present unique challenges for rights holders
The Italian Patent and Trademark Office is taking great strides in its aim to make its offerings more efficientand effective, not least through the introduction of an oppositions procedure
Securing trademark registration generally entitles rights holders to enforce their rights against third partiesand pursue legal actions that would otherwise be unavailable
Efforts continue to streamline the Canadian trademark system and bring it into line with internationalpractice, but it could still be some time before proposed amendments are implemented
News
The new generic top-leveldomain (gTLD) TrademarkClearinghouse has revealedthat the cost of submittingtrademarks will be capped at$150 per year.
According to draft EuropeanCommission proposals obtainedby WTR, the European trademarksystem is set for a shakeup.A renamed Communitytrademark (CTM) and Office forHarmonisation in the InternalMarket (OHIM), the abandonmentof examination on relativegrounds and reduced applicationand renewal fees for CTMs areamong the potential changes.
Following two years ofconsultation, China’s NationalPeople’s Congress has released adraft of the revised TrademarkLaw for public comment.
In Already LLC v Nike Inc (Case11-982), the US Supreme Courthas held that a broad covenantnot to sue can be sufficient tomoot an underlying case orcontroversy, thereby removingthe basis for jurisdiction for acourt to decide counterclaimsseeking to invalidate atrademark.
The European Court of Justice(ECJ) has issued its long-awaiteddecision in Leno Merken BV AGv Hagelkruis Beheer BV (CaseC-149/11), better known as theONEL case, which addressed therequirement for ‘genuine use’ ofa CTM. The ECJ held that proofof use of a CTM in one memberstate can in principle, but will notnecessarily, be deemed sufficientto prove genuine use in theCommunity.
The High Court of Australia hasheld that Google did not engagein misleading or deceptiveconduct merely by displayingsearch results generated byadvertisers’ wrongful use ofthird-party trademarks as GoogleAdWords (Google Inc v AustralianCompetition and ConsumerCommission ([2013] HCA 1).
