Columns
A proposed new law would make it illegalto purchase counterfeits in New York City.The measure might seem radical untilyou count up the damage wreaked bycounterfeits – not only for brand owners,but for consumers as well
How the Philippines Intellectual PropertyOffice is stepping up its policing activitiesafter new legislation bolstered itsenforcement powers
When surveying the US legalservices market, it is importantto assess both national andregional trends
Three recent decisions confirm thatthe Greek Trademarks AdministrativeCommittee is struggling with dilutionarguments. As pressure mounts betweencanny infringers and territorial rightsholders, national trademark offices needto address these issues head on
In issue 42 of WTR, a feature focused on theissue of trademark bullying. Deborah Cohn,the commissioner of trademarks at the USPatent and Trademark Office, contacted usto respond to the article and outline theagency’s ongoing efforts to address thiscontroversial subject
Features
As Apple breaks new ground by registering the designand layout of its stores in the United States, this articleanalyses how the tech giant procured trade dressprotection for its stores and discusses how Europe isreacting to the development
While survey evidence has an important role to play in trademark disputes,the rules vary depending on jurisdiction. This article examines howsurvey evidence in trademark disputes is treated by courts in five differentjurisdictions. It is clear that survey evidence still has an important role toplay in trademark cases, but that its use is more strictly controlled in someterritories than others – in particular, the United Kingdom and Australia.Common themes emerge across jurisdiction – notably, that transparencyin dealings is a laudable aim, with surveys being shared with opposingparties before trial. Cooperation between the parties is encouraged wherepossible, while courts are keen that parties avoid excessive costs in relationto gathering survey evidence.
On May 7 2013, WTR announced the winnersof its seventh Industry Awards at an exclusiveceremony at the stunning Belo Mansion in theheart of the Dallas Arts District. The awardsare designed to recognise the vital workcarried out by in-house trademark counsel,and identify the teams and individuals thatare performing their functions to the highestpossible standards. Over the following pageswe speak to the winners and explain why theywere judged to be leading examples of industrybest practice.
The European Commission has unveiled an ambitiousraft of legislative proposals that would not only shake upthe way that the Office for Harmonisation in the InternalMarket is organised, but also set out to harmonisetrademark law throughout the European Union
On page 72, proposals to revise the EU CommunityTrademark Regulation and the EU TrademarkDirective are examined in detail. Following officialpublication of the documents, WTR asked a rangeof European trademark experts for their reaction tothe content and their thoughts on the likely impactshould the revisions be adopted
WTR looks back at the practical takeaways from thisyear’s International Trademark Association annualmeeting, held in Dallas, Texas
With external counsel under acute pressure to providea wider range of services at more cost-effective pricepoints, trademark law firms and practitioners areincreasingly seeking to differentiate themselves onthe market. Are brands the answer?
While trademark bullying does exist, there is a dangerthat using the term too glibly implies that bullyingtakes place whenever a large and powerful rightsholder enforces its rights. This article suggests a morelevel-headed approach, including the use of precisedefinitions
News
International: This year’s inductees to the IP Hall ofFame were honoured at an exclusive galadinner held in Boston’s Fairmont Hotelon June 10
The High Court of Englandand Wales has ruled in thelong-running dispute betweenInterflora Inc and Marks &Spencer (M&S) over the latter’suse of the mark INTERFLORAas an AdWord.
In the same week that theInternet Corporation forAssigned Names and Numbers(ICANN) published the firstresponses to the recentGovernmental AdvisoryCommittee (GAC) advice onthe generic top-level domain(gTLD) programme, Deloitterevealed that 636 trademarkholders and 119 agents haveregistered with the TrademarkClearinghouse.
Following the decisionof the European Court ofJustice (ECJ) in CharteredInstitute of Patent Attorneys vRegistrar of Trademarks (CaseC-307/10), better know as theIP TRANSLATOR decision, theOffice for Harmonisation inthe Internal Market (OHIM) hasannounced a “breakthrough”regarding the treatment ofclass headings
The US Supreme Court hasdecided to take on a case thatcould have wide-rangingimplications for brand ownersin the United States.
Country correspondent
A powerful marketing tool, fluid marks must also be managed the right way, relying on strong underlying marks
Fluid trademarks are gaining popularity in China, but a number of grey areas remain
While fluid marks are an eye-catching marketing technique, protection should be obtained for all versions ofany trademarks currently in use or expected to be used in future
While rights holders can freely explore the creative and commercial opportunities presented by the use of amodified form of their trademark, they would be well advised not to stray too far from the original mark
Rights holders are advised to take precautionary measures in order to avoid problems and issues related tothe use of fluid marks
It is highly likely that fluid marks will become the subject of IP disputes in the near future. Accordingly, brandowners should consider what combinations of IP right they may be able to use in order to protect them
Before using fluid marks, it is important to discuss the potential impact and take action to prevent the loss oftrademark rights or lengthy and expensive litigation
While new forms of advertising can be engaging, they also pose unique risks from an Indian trademark lawperspective
A fluid trademark should not be an end in itself and needs to be carefully approached
Creating new images and periodically modifying marks is arguably the best way to focus consumer attentionon specific elements or messages, but caution is needed
