Features
WTR asks users to have their say on how the nonlegaltrademark services industry is meeting theirneeds, and asks vendors to respond to user concernsand requests
The drive to cut costs has led some companies todownsize their trademark team – or to dismantleit altogether and transfer its responsibilities to thewider IP or legal department. WTR asks three in-housepractitioners to consider the arguments for andagainst a dedicated corporate trademark function
Although IP business practices have not been atraditional area of Foreign Corrupt Practices Actenforcement, a number of the high-risk areas applyin the IP context. Counsel should thus take care toestablish procedures to mitigate such risks
The Uniform Rapid Suspension system, and itsbig brother the UDRP, are the key tools availableto trademark counsel to help to stem the tide ofinfringement in new gTLDs. However, it is crucial toidentify the pros and cons of each – and follow therules carefully
The latest amendments to the Trademark Lawintroduce several key changes, including writing theprinciple of good faith into the law in an attempt tostamp out bad practices such as counterfeiting andtrademark squatting
WTR presents the highlights from this year’sMARQUES annual conference, which offered anintriguing glimpse at the future of trademark practice
The IP Hub Master Plan is designed to turn Singaporeinto a global IP hub. While the main thrust of thereport is innovation and patent protection, somerecommendations in the report will also impact ontrademark-focused businesses
Global brand owners are increasingly partneringwith Middle East and North African companies inorder to gain a foothold in these emerging markets.However, such arrangements present pitfalls as wellas opportunities
Counterfeiting syndicates in Asia are difficult toidentify, trace and dismantle, posing the question ofwhether it is wiser to continue cracking down on illicitactivities as and when they are discovered, or to playa strategic long game with the aim of shutting downproduction at source. WTR investigates
As take-up of social media continues to rise inIndia, rights holders are enthusiastically exploringthis new avenue for promoting brands. However,they should also be aware that social media isyet another platform on which their intellectualproperty can be infringed
Africa is not a region for the fainthearted, butconsiderable opportunities await the canny investor.The quirks and challenges of this region make it vitalthat local counsel be engaged to ensure that rights areproperly protected
While a cheeky double entendre might once have beenallowed registration, a recent Federal Circuit decisionappears to signal that such days are over. Applicantsfor borderline marks should consider all potentialinterpretations, as well as the context in which theirmarks might appear
While the dust settled on the L’Oreal v Belluredecision some time ago, clarification is still neededon recognised functions of a trademark. Without this,there is a danger that the treatment of marks will runcontrary to the core purpose of trademarks as economictools in an effective competitive marketplace
With the East African Community currently failingto make a meaningful impact on the import anddistribution of counterfeit products, there are anumber of strategies available to brand owners to takeeffective action in the fight against fakes
Columns
The Customs Union – which includesRussia, Belarus and Kazakhstan – has justsigned an agreement on a new unifiedsystem for trademarks. The agreementshould make it easier and cheaper forrights holders to register and enforce theirmarks across member states
It is over a year since the launch ofNigeria’s online trademark filing system.While supporters have praised the portalfor cutting waiting times, reports oftechnical difficulties and resistance toincreased fees suggest that opinionsremain divided
The future of brands and brandingmight be hard to distil, but while thefundamentals remain the same, it isimportant that brands follow the latestmarket trends
Central and Eastern Europe offer richpotential for brand owners seekingstrategic growth opportunities, buttrademark protection needs to top theagenda for those considering expansionin the region. This issue we shine aspotlight on Russia, Poland and Ukraine– large, fast-developing markets readyto be tapped by ambitious brand owners
Country correspondent
Although Mexican law grants protection to some non-traditional marks, it requires updating in order tomeet modern demands
Although some non-traditional marks are protectable in Vietnam, there are still concerns about theirregistrability and enforcement
Non-traditional marks are modern and in vogue, but the possibility of effective enforcement and the abilityto evidence proper use of a non-traditional mark are questionable in Russia
A recent landmark decision, focused on the Carneval biscuit, offers important insight into the treatment ofproduct appearance in Finland
Reflecting the current trend towards the use of less conventional signs, the Romanian trademark office isopen to the registration of non-traditional marks – with certain caveats
Patent Office practice in relation to non-traditional trademarks has been relatively poor. However, it ishoped that within the next few years, things will improve
The requirements to demonstrate distinctiveness at filing, as applied by the Canadian Trademarks Office, pose a significant obstacle to the registration of non-traditional marks
Although the non-traditional marks realm remains largely unexplored in China, there is a trend towardsbroadening the scope of protection to include such marks
Non-traditional marks are gaining acceptance in India, and trademark laws and procedures are evolvingwith time. Overall, the future seems promising
Conflicting views centre on how to represent non-traditional marks graphically so that they can beregistered with the Turkish Patent Institute
If practitioners can avoid registration refusals based on functionality and lack of distinctiveness, the liberalUS regime for non-traditional marks provides brand owners with an opportunity to strengthen goodwill
Non-traditional marks are afforded protection in Italy, but there are challenges to registration
Non-traditional trademarks in Germany have two compounded problem areas compared with traditionaltrademarks
The issues that can arise around non-traditional trademarks are illustrated by high-profile disputes in theUK confectionery sector
News
In Société des Produits Nestlé SAv Cadbury UK Limited, the Courtof Appeal of England and Waleshas overturned a decisionof the trial judge allowingthe registration of Cadbury’strademark for the colourpurple in respect of its milkchocolate confectionery.
In Martin y Paz Diffusion SAv Depuydt (Case C-661/11), ina reference for a preliminaryruling from the Belgian Court ofCassation, the European Courtof Justice (ECJ) has clarified thenature of ‘consent’ to use aregistered trademark under Article5(1) of the EU First TrademarksDirective (89/104/EEC).
The European Commissionhas published a study on theeconomic impact of IP acrossthe European Union.
Applicants for generic stringshave clarified their intended useof the top-level domains (TLDs)that they seek to operate. Thiscame a day after the InternetCorporation for Assigned Namesand Numbers (ICANN) revealedthat some stalled applicationscan proceed to delegation if theapplicant blocks certain secondleveldomains while furtherassessment is carried out. Inother gTLD-related news, Googlehas launched its online domainregistry, Charleston Road Registry.
In Rintisch v Office forHarmonisation in the InternalMarket (OHIM) (Cases C-120/12P, C-121/12 P and C-122/12 P), theEuropean Court of Justice hasheld that the Board of Appeal ofthe Office for Harmonisation inthe Internal Market (OHIM) hadcorrectly dismissed oppositionsfiled by Bernhard Rintisch, eventhough the board had erred inassuming that it had no discretionto take into account additionalevidence filed after the expiry ofthe deadline set by OHIM.
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
Following years of deliberation,the Standing Committee ofChina’s National People’sCongress has finallyapproved the amendmentsto the Trademark Law. Theamendments will come intoforce on May 1 2014.
