Features
While some trademark teams have finally seenbudgets improve over the last year, for many thesituation remains straitened. The challenge forthem is clear: ensuring that reduced spend and newenforcement approaches do not lead to significantlyincreased risk
With comparative advertising disputes on the rise, the need has increased for a statute that codifies and consolidates the fundamental principles, exceptions and defences to this form of marketing
In the continuing battle against counterfeiting,fashion designers are increasingly turning to designpatents to improve protection for their products.Such patents can act as a new weapon in litigation,provided that they meet certain requirements
In November 2013, WTR Daily reported on aBeijing higher court ruling which held that thedistinctiveness of a trademark consisting of foreignwords should be assessed on the basis of the generalknowledge of the relevant public in China
The Middle East and North Africa is a lucrative butcompetitive market for confectioners, with casesfought over the tiniest elements of packaging. Globalbrands should familiarise themselves with thesimilarities – and differences – between local regimesbefore diving in
A round-up of selected decisions of the IntellectualProperty Office of Singapore (IPOS) and the Singaporecourts which offer useful guidance to both trademarkowners and practitioners
A number of decisions in 2013 indicate significantprogression in the trademarks debate in Brazil; it isto be hoped that these developments become soundfoundations for future achievements
The relationship between rights holders andlawyers – whether in-house or part of an IP firm– has been transformed in the last few years bytechnological developments and shifting attitudes,causing some rights holders to question how bestto manage their portfolios
The increasing practice of brand owners ‘verbingup’ their own marks and in some cases deliberatelydisrupting their own logos demonstrates that strongbrands can be flexible, fluid and living
With signs that the courts are adopting a morerestrictive approach towards trademark rights, therehave been some clear challenges for brand owners inprotecting their marques
The emergence of wearable-tech products has givenrise to a number of legal issues, particularly inrelation to data protection and privacy, but also withregard to how innovative companies can protect andenforce their rights in products
It is a time of great change in Canada, with keydecisions and developments through 2013 paving theway for a broadening of the definition of trademarksand the augmentation of border enforcement
In 2013 the US Supreme Court took an unusualinterest in trademark-related issues. Whilenoteworthy, debate surrounding the WashingtonRedskins trademark grabbed the mainstream mediaheadlines
While some feel that damages awards in China arestill insufficient, recent cases show that the courtsare becoming much more sophisticated in calculatingdamages and awards are increasing – especially incases of wilful infringement
The World Trademark Review Industry Awards2014 – to be presented at an exclusive ceremonyin the owners box at the historic Happy ValleyRacecourse in Hong Kong, timed to coincide withthe 136th International Trademark Associationannual meeting – honour leading trademarkteams and individuals across a range of businesssectors. In this issue, we reveal the shortlist
A number of important practical takeaways can beidentified when surveying 2013’s trademark decisions
Although trademark law in Europe was harmonisedmore than 20 years ago, recent decisions suggest thatthe ECJ is still deciding questions of interpretationof fundamental issues such as the meaning of ‘duecause’ and ‘bad faith’
World Trademark Review asks a range of trademarkcounsel how they ensure they are maximisingin-house trademark budgets
Country correspondent
Opposition proceedings in Italy are limited in order to exclude protection of extremely well-knowntrademarks beyond the concept of likelihood of confusion, but there are avenues open to trademark owners
The lack of lists of well-known marks and specific rules for determining whether a mark is well known hasgiven examiners in Vietnam broad discretion in this regard
Well-known trademark status offers useful protection, but securing it in China can be an uphill battle
Trademark owners should apply to register their famous marks now, to be able to take advantage of theincoming customs regime
An overview of the regime for famous marks in the United States
Declarations for well-known trademarks are issued only after the Mexican Trademark Office has carefullystudied all evidence submitted to it
Trademark legislation in the United Kingdom affords a unique and substantial degree of protection to wellknownand famous marks
Recent rulings show that the courts are pragmatic in giving due credence to the international character oftrademarks and recognising their well-known status
Turkish law does not define a ‘well-known mark’, but such status is nonetheless available to rights holdersand filing a separate application for well-known status before the Turkish Patent institute is recommended
Polish law does not set out regulations for famous trademarks, but protection is nonetheless available
Well-known trademarks are protected in Romania, but a number of court decisions have highlightedinconsistencies in approach
UAE law is clear in its protection of internationally well-known marks and has been interpreted at least onceto favour internationally famous marks over local marks
Columns
A Chinese high court has set aninteresting precedent focusing onprinciples of anti-dilution in a caseinvolving the protection of well-knownmarks. The judgment also provides hintson the latest judicial guidelines withregard to the protection of well-knownmarks in China
After a slow start, digital crypto-currencyBitcoin is taking the world by storm.Amid concerns that virtual currenciespose a major money-laundering threatand a danger to national economies,World Trademark Review suggests thattrademark counsel should also keep themon their radar
“Since the Philips/Nokia ruling (C‑446 and495/09) in 2011, under EU law EuropeanCustoms can check counterfeit goodstransiting through the EU but can onlystop them if there is a risk of these goodsentering into the Single Market. This meansin practice that customs are powerlessagainst counterfeit goods on route to a thirdcountry, and must let them go, at the riskof these goods being illegally diverted backinto the EU. The new provisions adoptedtoday will allow Customs to stop trademarkcounterfeit goods even if destined to acountry outside the EU, and will not affectthe trade of legitimate goods under the EU’sWTO international obligations. Likewise,these provisions ensure that genuinegeneric medicines will reach their finaldestination. With this vote, the EuropeanParliament signals that it is serious aboutstopping trademark counterfeits to protectconsumers everywhere and that the EUshould show leadership in the global fightagainst counterfeiting.”
As Scotland gears up to a referendum todetermine whether it will break awayfrom the rest of the United Kingdom,questions are being raised about whatthis will mean for IP rights – particularlyif devolution leaves Scotland outside theEuropean Union
News
The US government’s announcement that it intends to transfer responsibility for Internet Assigned Numbers Authority functions to the internet community was one of the big talking points at ICANN 49, held in Singapore in March. However, other issues of significance for trademark owners were also discussed – not least the Trademark Clearinghouse’s (TMCH) revelation that it had delivered over 500,000 claims notices as of March 25, with 95% of the queries for trademark terms that triggered claims notices not being followed through to a live registration. According to the TMCH, the fact that around 475,000 applications were dissuaded from progressing to registration was evidence that “the deterrent is working”.
US Immigration and Customs Enforcement’s Homeland Security Investigations and US Customs and Border Protection have released their counterfeit and pirated goods seizure statistics for fiscal year (FY) 2013. Some of the key figures are represented below.
Crowell & Moring LLP has announced the addition of partner Lora A Moffatt to the firm’s IP group at its New York office.
In Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH (Case C-406/12) the European Court of Justice (ECJ) has ruled, on a reference for a preliminary ruling from the Austrian Supreme Patent and Trademark Court, that a trademark is liable to revocation in respect of a product for which it is registered if, in consequence of acts or inactivity of the rights holder, it has become the common name for that product from the point of view solely of end users of the product.
A number of national offices have expressed their opposition to the European Commission proposal that ex officio examination of relative grounds be abandoned.
In Office for Harmonisation in the Internal Market v National Lottery Commission (Case C‑530/12 P), the ECJ has clarified the approach that the Office for Harmonisation in the Internal Market (OHIM) and the General Court should follow when applying national law, and highlighted the importance of seeking information of their own motion.
In H-D USA LLC v Berrada (2014 FC 207) the Federal Court of Canada has held that Harley- Davidson may sell its Screamin’ Eagle clothing in association with its well-known HARLEYDAVIDSON mark, despite another party’s trademark registration for SCREAMING EAGLE for retail clothing stores.
Advocate General Wathelet has issued his opinion in Karen Millen Fashions Ltd v Dunnes Stores (Case C‑345/13), stating that Article 6 of the EU Community Designs Regulation (6/2002) must be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression that the design gives to the informed user must be different from that given to such a user by one or more earlier designs taken individually and viewed as a whole, not by an amalgam of various features of earlier designs.
Industry insight
For regular jurisdictional updates, see WTR Daily. Delivered straight to your inbox, World Trademark Review’s regular email news service provides legal updates, industry analysis and the editor’s pick of the best trademark content from around the globe
Roundtable
Global trademark practitioners offer practical guidance on the creation and execution of a resilient social media strategy
