Country correspondent
Non-traditional trademarks have been registrable in Australia since the Trademarks Act 1995 came into force.However, recent decisions of Australian courts indicate that many issues relating to the definition, scope andenforceability of these highly coveted marks remain unclear
Although Mexican law appears not to recognize non-traditional marks, on closer examination certain typesof non-traditional mark enjoy full trademark protection inMexico, provided that they fulfil specific criteria.Where the trademark law does not cover such marks, itmay be possible to find alternative protection underother legal measures
The Benelux countries, Belgium, the Netherlands and Luxembourg, have uniform trademark and design laws,and a harmonized approach to the protection of non-traditional marks. As members of the European Union,the practice of the Benelux countries in this area is also highly influenced by EU law
Even before the implementation of the EU First Trademarks Directive in Germany in 1995, the Germancourts and the Patent and Trademark Office had begunto establish a tradition of registering and defendingnon-traditional marks. However, the use of such marks has challenged German trademark practice andraised new questions to be answered by the courts
Modern EU trademark law offers, in theory, the possibility of registering shape, sound or colour marks,but applicants will face hurdles such as graphical representation and proving acquired distinctiveness
There are very few limitations, in principle, to whatcan be registered and protected as a trademark under USlaw. However, tests showing that the sign is a source identifier, is not functional and is distinctive must be met
As in all EU jurisdictions, trademark law in Italy recognizes the registrability of shape, colours and soundmarks in principle, but case law so far indicates aguarded approach to the registration of non-conventionalmarks by the national IP office and the courts
Columns
The considerations involved inchallenging an infringer are varied andthe emphasis is constantly changing.These variables encourage legal counselto keep abreast of legal and commercialdevelopments, and often media interestas well
Domain names are often managed by the in-house IP team along with trademarks, but their nature means that the best management solution for them may well be outside the trademark group
The practice of 'domain tasting' (ie, registering large numbers of domain names for a very short period of time and keeping those that generate revenue only), though innocuous on a small scale, has grown into a problem as single companies register more than 10,000 domain names a day, oten preying on popular brands
Features
As numbers of applications fortrademarks at the US Patent andTrademark Office continue to grow,the Trademark Operation is faced withnumerous problems, such as delaysand inconsistencies. But embracingnew technology and working methodsis helping it meet the rising demand
WTRspoke to a number of leading practitioners in theUnited States to find out who they rated as beingamong the best in the trademark law business. Here arethe names that were mentioned most
The fight against counterfeiting and piracyhas found a place on the political agenda.However, even an event as promising as theGlobal Congress to Combat Counterfeitingand Piracy can leave IP professionals withthe feeling that a lot is being said, but notenough is being done
On May 1 2007 World Trademark Reviewannounced the winners of its inauguralIndustry Awards, sponsored by ThomsonCompuMark, for in-house trademarkteams at a ceremony in Chicago. The awardsare designed to recognize the vitally importantwork done by in-house trademark counsel,and identify the teams and individuals thatare performing their functions to the highestpossible standards. The following pagesfeature profiles of the winners
The International Trademark Association's annual meeting remains the must-attend event for the trademark industry. WTR asked afew delegates what they got out of this year's meeting.
Tony Wilsonis a Vancouver franchising and trademark lawyer whohas written for the TorontoGlobe and MailMacleans Magazineandother publications. His regular humour column inBartalk Magazinewas a finalist for "Best Regular Column" by the Western Magazine Awards Foundation - something which he hopes might get the damn thing syndicated one day
As part of a dispute between a Belgian brewer andchampagne makers over the use of references tothe appellation of origin 'champagne' in advertising, the European Court of Justice has clarified the scope of the term 'comparative advertising' and defined certain key terms in this field
The counsel now responsible for the managementof the Unilever trademark portfolio shares his viewson the trends, motivations, business rationale andpracticalities of outsourcing
General practice law firms are increasingly seeking tomuscle out the IP boutiques, while clients become evermore demanding. Yes, the trademark services marketin the United States is as tough as ever
News
Roundtable
Australia is a wealthy, brand-focused country. For the well-preparedtrademark owner, this is very good news
