DAILY: General Court sheds light on descriptiveness of compound words
In Universal Display Corp v OHIM, the General Court has upheld a decision of the Second Board of Appeal of OHIM refusing to register the word mark UNIVERSALPHOLED for goods in Class 1 on the grounds that it was descriptive. Whilst it is usual for a tribunal to examine the component elements of a compound word as a step in its analysis, it is the assessment of the whole word which truly matters, as the General Court reiterated in this case.;
DAILY: Online piracy debate shifts to new battleground
With PROTECT IP and SOPA seemingly vanquished and ACTA facing new obstacles, the debate over IP protection and online freedom shows no sign of abating, with the Trans-Pacific Partnership shaping up as the next battleground.;
DAILY: New administrative measures to resolve domain name disputes
Circular 37/2011/TT-BKHCN of the Ministry of Science and Technology, which came into force on February 10 2012, is expected to breathe new life into the current mechanisms for resolving domain name disputes involving IP rights, such as trademarks, trade names and geographical indications, by describing in more detail the administrative measures to be used as a means of resolution.;
DAILY: US Chamber of Commerce denied registration of NATIONAL CHAMBER mark
In In re The Chamber of Commerce of the United States of America, the US Court of Appeals for the Federal Circuit has upheld the refusal to register the service mark NATIONAL CHAMBER as merely descriptive of the web services promoted by the US Chamber of Commerce. Among other things, the court noted that a term is merely descriptive if it immediately conveys knowledge of a function of the goods and services for which it is to be used.;
DAILY: Trademark-free marketing: should other companies follow Ford’s example?
Ford’s blue oval logo is one of the most recognisable trademarks in the world. But a new advertising campaign from the Dearborn-based company seemingly lacks any explicit reference to the brand at all, with the iconic logo and product names absent altogether. Though counsel may feel uneasy that trademarks are not being used, ‘brandless’ marketing could have benefits if certain steps are taken.;
DAILY: ECJ confirms that ‘boto’ marks would take unfair advantage of BOTOX
In Helena Rubinstein SNC v OHIM, the ECJ has followed the opinion of the advocate general and confirmed that the marks BOTOLIST and BOTOCYL would take unfair advantage of the distinctiveness and reputation of the earlier BOTOX marks. Following this decision, it appears that the monopoly enjoyed by the BOTOX marks provides a strong defence against other ‘boto’ marks.;
DAILY: Shadow company loses passing-off case and pays the price
In Wyeth LLC v Wyeth (China) Limited, a Hong Kong court has found that the defendant intended to pass off the plaintiff's goodwill in the WYETH marks (in English and Chinese). Interestingly, the defendant rejected the plaintiff's sanctioned offers to settle the case and was ordered to pay the plaintiff's legal costs on an indemnity basis and additional interest.;
DAILY: Court awards compensation and damages in fake Rolex case
In Rolex SA v Graff Seirup, in a case involving fake Rolex watches, the Maritime and Commercial Court has held that Rolex had a claim for reasonable compensation for the use of its trademarks under Section 43 of the Trademarks Act. In light of the 2006 decision in Chanel v Medgyesi, it seems that the court has problems when assessing compensation in this type of case.;
DAILY: Misleading UDRP exhibits could create liability under ACPA
In ISystems v Spark Networks Ltd, the US Court of Appeals for the Fifth Circuit has held that a company that allegedly redacted portions of an exhibit submitted in connection with a complaint under the UDRP may be liable for misrepresentation under the Anti-cybersquatting Consumer Protection Act.;
DAILY: '.no' registry launches major data cleansing operation
NORID, the registry responsible for ‘.no’ domain names, has launched a data cleansing operation to update the ownership details for registered domain names in line with the registration requirements for ‘.no’ domain names. NORID’s tightening-up actions seem to go against the general trend of liberalisation for ccTLDs.;
DAILY: Spain removed from Special 301 Report's Watch List
The Office of the US Trade Representative published its latest Special 301 Report on April 30 2012. There was good news for Spain, which was removed from the Watch List. The report applauds the swift measures taken by the country, but warns that, in practice, the police and the judges themselves have become somewhat relaxed in combatting IP offences over the internet.;
DAILY: Pressure mounts on ICANN's 'digital archery' batching proposal
In the wake of the gTLD application system meltdown, the Intellectual Property Constituency is calling for a rethink on ICANN’s ‘digital archery’ batching system. The Internet Society of China has also weighed into the issue, calling for a public comment period on the proposed system.;
DAILY: Pernod Ricard goes on the offensive after Supreme Court blow
No sooner had the US Supreme Court refused to review the decision of the Court of Appeals of the District of Columbia which prevented the renewal of Pernod Ricard’s HAVANA CLUB trademark registration in the United States, than the multinational drinks company came out fighting – unveiling a new brand for its Cuban-produced rum.;
DAILY: No evidence that words contained in earlier marks had ceased to be descriptive
In Mars New Zealand Limited v Heinz Wattie's Limited, the High Court has overturned a decision of the assistant commissioner of trademarks refusing to register the mark ADVANCE ADVANCED PET NUTRITION based on the earlier marks CHAMP ADVANCED DOG NUTRITION and ADVANCED DOG NUTRITION. Among other things, the court was not convinced that the words ‘advanced dog nutrition’ had ceased to be descriptive.;
DAILY: Government gives advice on misleading business names
The Office of Fair Trading has issued a document entitled "Misleading or Otherwise Undesirable Names", which deals with all forms of unsuitability of business names. Although the OFT makes it clear that “[t]he protection of its trademarks or goodwill is of itself a matter for individual businesses to address”, it recognises that there are times when the choice of a business name can have substantial repercussions for IP owners and consumers.;
DAILY: Let's talk about '.sx' (and others)
The registry for ‘.sx’, the ccTLD for Sint Maarten, has announced the launch of the ‘.sx’ extension. The sunrise period will run from May 3 to July 4 2012 - during this period, holders of any registered national trademarks will be able to apply for the corresponding ‘.sx’ domain name, provided that the mark was registered on or before March 1 2011. Meanwhile, domain name registrations under ‘.cw’, the ccTLD for Curaçao, have been open since February 1 2012.;
30 May, London IPR ENFORCEMENT: The Olympics – The Challenge! This conference, to be held in Wembley Stadium’s Wembley Suite, will showcase the measures protecting rights holders, sponsors and consumers before and during 'the Games of the XXXth Olympiad', assessing the main lessons to be learned from Beijing, and the likely value of the legacy from the 2012 Games for IPR enforcement in the future. Speakers will be drawn from government, law enforcement and the Olympics organisers. A black-tie dinner, with pitch view, will take place on May 29 2012.;
DAILY: ICANN orders Chinese registrar to stand and deliver
ICANN has issued Chinese registrar eName Technology with a notice of breach of the registrar accreditation agreement after the domain name ‘1111.com’ was allegedly hijacked earlier this year and the registrar failed to respond to ICANN's request for information. In the wake of the launch of the new gTLDs, this case highlights the enormous responsibility entailed in acting as a domain name registrar.;
DAILY: Plaintiffs may recover attorneys' fees in addition to statutory damages
In Louis Vuitton Malletier SA v LY USA Inc, the US Court of Appeals for the Second Circuit has considered for the first time whether a trademark owner who elects to recover statutory damages for a defendant’s counterfeiting rather than actual damages and defendant’s profits is precluded from also recovering attorneys’ fees.;
DAILY: Supreme Court confirms domain name infringement, but reduces fine
The Supreme Administrative Court has upheld a decision of the Commission for the Protection of Competition in which the latter had fined a Sofia-based company for using a domain name that was confusingly similar to that of a competitor. The commission had imposed a fine amounting to 2% of the company’s 2008 turnover, but the court ruled that this amount was unjustified.;
DAILY: More stumbling blocks for ACTA as Switzerland delays and Kroes expresses misgivings
The Anti-Counterfeiting Trade Agreement has returned to the headlines, as Switzerland delays signing and a senior European Union politician openly doubts that it will be ratified. However, further scrutiny by signatories should not be seen as a sign of the agreement’s likely demise.;
DAILY: Use of mark in connection with resale of old stock is not genuine use
In Cycleeurope AB v Dansk Supermarked A/S, the Maritime and Commercial Court has cancelled the trademark PUCH on the grounds of non-use. Among other things, the court held that use of the mark in connection with resale from old stock could not be regarded as normal marketing activity by the trademark owner.;
DAILY: Laches period begins from knowledge of confusing use, not mere knowledge of use
In Ray Communications Inc v Clear Channel Communications Inc, reviewing a laches defence to a trademark infringement claim, the US Court of Appeals for the Fourth Circuit has held that a district court had applied the wrong legal standard in determining when the defence was triggered, incorrectly measuring the laches period from the date the plaintiff first knew of the defendants’ use of a similar mark.;
DAILY: gTLD application process to resume in two weeks, reveal date still unknown
ICANN has announced that May 22 is the target date for the reopening of the TLD Application System. However, as yet there is no indication of the projected reveal date for applications.;
DAILY: Practice regarding registration of trademarks containing INNs is clarified
The Ukrainian Institute of Industrial Property has upheld a decision of the Appellate Board in which the latter had held that Celgene Corporation’s trademark THALIDOMIDE CELGENE should be registered for a limited list of goods, with a disclaimer for 'thalidomide'. The decision is significant in that it clarifies the institute’s practice with regard to the registration of trademarks containing INNs.;
DAILY: Case involving liability of online trading platform selected as Top IP Case for 2011
The Supreme Court has released its Top IP Cases for 2011. One case that stands out is a dispute between Taobao.com, China's largest online trading platform, and a local brand owner, in which Taobao was found to have failed to take effective and necessary measures to stop infringing activities. The fact that it is listed in the Top IP Cases reveals the Supreme Court's inclination with regard to the liability of online trading platforms.;
DAILY: Board of Appeal rebuked for failing to take into account error made by OHIM
In Brainlab AG v OHIM, the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had rejected an application for restitutio in integrum and ruled that the applicant’s CTM had expired. OHIM had removed, by error, the reference to the applicant’s appointed representatives from its database and, for that reason, had not sent a notification to them.;
DAILY: Revealed: the ground-breaking in-house trademark teams
Last night, taking a short break from receptions organised by others, WTR turned host and celebrated the best in-house trademark counsel in the industry at the sixth annual Industry Awards ceremony. Among those honoured were teams from adidas, Mars and BMW, with Alan Drewsen picking up the Lifetime Achievement award.;
DAILY: German pet food manufacturer wins bad-faith case against Serbian company
The Commercial Appellate Court of Belgrade has upheld a decision of the Commercial Court of Belgrade in which the latter had found that the defendant, a Serbian importer and producer of pet food, had registered the marks GIMPET and GIMBORN in bad faith. The marks belonged to the defendant’s business partner, German pet food manufacturer Gimborn.;
DAILY: Owner of Popeye and Wimpy figurative marks prevents registration of combined mark
Tthe State Office for Inventions and Trademarks has rejected an application to register the combined trademark POLDO, which contained a representation of the cartoon characters Popeye the Sailor and Wimpy, based on an opposition filed by Hearst Holdings Inc, the owner of figurative trademarks representing these cartoon characters.;
DAILY: Official mark declared void as holder is not 'public authority'
In Maple Leaf Foods Inc v Consorzio Del Prosciutto Di Parma, the Federal Court has held the Consorzio Del Prosciutto Di Parma’s official mark PARMA to be ineffective to give rise to any rights or prohibitions under the Trademarks Act, invalid and void ab initio. Among other things, the court found that the Consorzio was not a ‘public authority’ within the meaning of Section 9 of the act.;
DAILY: INTA gets down with the kids to push anti-counterfeiting message
Today saw the official launch on INTA’s Unreal campaign, which aims to educate teens about the value of trademarks and the negative effects of counterfeiting. It may also help shape the IP professional of tomorrow.;
DAILY: The buzz is back at the INTA
The INTA has found its mojo once again. After what have seemed like several flat annual meetings in a row, the buzz around the convention centre in Washington DC, where this year’s event is taking place, has been palpable. The conversations are more animated, the exhibition hall is busier, the sessions are more incisive; and as for the evening receptions, well let’s just say that they have been lively and leave it at that! All in all it’s just like it used to be; except that there are many more people in attendance – a record number, in fact, with...;
DAILY: The ITC can be an effective anti-counterfeiting weapon, but maybe only for the rich
A lively session at the INTA conference today looked at new strategies for combatting counterfeiters. One of the alternative approaches discussed was ITC litigation. While the speakers offered some compelling case studies, use of the ITC for trademark-related dispute remains low. Is that set to change?;
DAILY: Sainsbury’s, John Lewis, Asda: leading UK names fail to own their trademarks in China
Some of Britain’s best known retailers are among those who have missed the trademark boat in China. The trademarks for several of the UK’s leading retailers are revealed to be in the hands of Chinese companies and individuals, presenting a problem as these brands seek to move east into a potentially huge marketplace.;
DAILY: Counterfeits: a silver lining?
Perusing the INTA exhibition hall, among the usual names is a charity that works with brands to redistribute counterfeit goods to disadvantaged people the world over. Though this is putting counterfeits to good use, will brand owners be wary of the dangers of placing fakes back onto the market?;
DAILY: Beware the creeping growth of trademark law?
Copying an unprotected concept or design used to be called competition; now it is known as trademark infringement. So said Christine Haight Farley, of the American University’s Washington School of Law, speaking in a well-attended session held this morning at the INTA annual meeting in Washington DC. Along with her fellow panellists Farley was exploring the challenges created by what all three agreed is the steady expansion of trademark law.;
DAILY: Federal Supreme Court: defendant has burden of proving that goods are genuine
The German Federal Supreme Court has issued two important decisions concerning the burden of proving that products are genuine and the doctrine of exhaustion of trademark rights. These decisions could represent a major boost for trademark owners in their fight against counterfeiting and parallel imports.;
DAILY: Trademark counsel urged to embrace the reality of gTLDs
While the delayed gTLD reveal date has prevented trademark counsel attending this year’s INTA Annual Meeting from discussing the full list of applications, gTLDs remain a hot topic in DC, with ICANN stating that the TLD application system (TAS) held 2,091 applications when it was taken offline. This morning the conference opened with a call for brand owners to embrace the reality of the expanded online space.;
DAILY: Failure to actively use domain name not in itself evidence of bad faith
Spain-based company Vacaciones eDreams SL has failed to obtain the transfer of the domain name ‘edreams.com.au’ under the auDRP, the dispute resolution policy for ‘.au’ domain names. Among other things, the panel believed that the respondent's stated planned use was not intended to give rise to confusion with the complainant, especially given the evidence of substantial third-party use of the term ‘eDreams’ in a variety of fields.;
DAILY: Learning from the past – the evolution of INTA and the annual meeting
This year’s INTA annual meeting is the biggest yet. While final numbers are not yet in, as it stands more than 9,500 attendees have descended on Washington DC. Executive director Alan Drewsen took time out from a busy schedule to sit down with WTR and look back at the evolution of the event.;
DAILY: Shared platform at INTA points to progress on OHIM strategic initiatives
WTR previously reported on OHIM’s plans to make IP protection more accessible to business. At this year’s INTA conference some of the first fruits of those efforts are on display and, for the first time, OHIM is exhibiting at INTA as part of the European Trade Mark and Design Network, a collaboration between Alicante and national IP offices aimed at converging practice and the user experience across Europe.;
DAILY: Will new initiative strengthen the trademark-marketing relationship?
The tensions that can exist between trademark counsel and their marketing counterparts have been well-chronicled. Analysis of the relationship often focuses on misunderstanding of the trademark function but a new industry initiative is seeking to deepen the trademark-marketing relationship by encouraging marketers to become active players in the fight against counterfeiting.;
DAILY: Trademarks are the foundation upon which IP value creation is built
The annual INTA meeting – the USTA meeting as was – is by far the oldest and biggest annual IP event of them all. It brings together delegates from dozens of countries and totally takes over every city in which it is held. This year in Washington DC is no exception. Everywhere you look there are delegates wandering the streets with INTA passes hung round their necks. Many are jet-lagged, some are slightly befuddled, all are looking for the next law firm reception or heading to the convention centre for a session or a meeting.;
DAILY: When trademarks drive business: The Lacoste experience
An often-discussed issue in the trademark world is the level of board engagement with the IP function. For some organisations, attaining senior management buy-in can be a struggle, for others – particularly in brand led businesses – management places trademarks at the center of its business strategy. The latter is the case at Lacoste SA, as Michel Lacoste, chairman of the board, told WTR.;
DAILY: Supreme Court sets the tone for IP cases
The Supreme Court’s IP Tribunal has issued its 2011 Case Report, which contains 34 guiding precedents covering almost all fields of IP litigation. Importantly, the Supreme Court used the precedents to establish rules for 44 key legal issues that have often caused disputes in IP cases.;
DAILY: Recovering reputation – how BP is turning the tide of consumer perception
Two years ago WTR considered the role the trademark team could play in managing BP’s corporate reputation in the wake of the Gulf of Mexico oil spill. A new study suggests that the company has made positive progress over the past 24 months, with the key takeaway being that sometimes actions speak louder than a managed message.;
DAILY: Supreme Court clarifies when mark is suggestive, rather than descriptive
In Liebherr-International AG v Department of Intellectual Property, the Supreme Court has held that the Board of Trademarks had erred in finding that the mark BIOFRESH for “apparatus for refrigerating and freezing” was not registrable because it lacked distinctiveness. The Supreme Court found that BIOFRESH was suggestive, rather than descriptive.;
DAILY: Growth in '.eu' domain names as extension celebrates sixth anniversary
According to the latest quarterly progress report from EURid, the ‘.eu’ registry, at the end of 2011 there were a total of 3.5 million ‘.eu’ registered domain names, representing growth of 5.5% when compared with the fourth quarter of 2010. Even though ‘.eu’ was launched six years ago, not all issues relating to the registration rules have been resolved, and one case in particular, known as Pie Optiek, is still pending before the ECJ.;
DAILY: Heineken victorious in parallel imports case
The Moscow District Federal Commercial Court has upheld a decision of the Ninth Commercial Appeals Court in which the latter had imposed a fine on Russian company Elitvoda Ru for importing Heineken Ceská republika beer without the trademark owner’s authorisation.;
United States Patent and Trademark Office (USPTO)
USPTO video streams: "USPTO: Inventor's Greatest Resource", "Promoting Innovation - Today's USPTO", "Protecting Geographical Indications", "Trademark Newsflashes" USPTO museum: strives to educate the public about the patent and trademark systems, and the important role intellectual property protection plays in social and economic health "Trademark Information Network" (TMIN): features broadcast-style videos that cover important topics and critical application filing tips Annual National Trademark Expo (since 2008): two-day event designed (...);
Copyright Information and Anti-piracy Centre (CIAPC)
"Fake No More" campaign (2012) aiming to provide information on counterfeiting and piracy for a younger generation of junior high and high school students;
"Chimiscope": experimental chemical laboratory to raise awareness about the importance of chemistry in daily life and to encourage young people to pursue careers in science;
Software & Information Industry Association (SIIA)
"Don’t Copy That Floppy" anti-piracy campaign (1992) and "Don't Copy That 2" sequel (2009) featuring MC Double Def DP ("the ultimate defender of creativity"); slogan: "it's not just a copy, it's a crime"; campaign includes a website, extended educational video and lesson plans for teachers, presence on social networks (Twitter, facebook) "Don't Get Mad, Get Even" campaign (2007/2008): reward scheme for victims of auction fraud who purchased pirated software online and report counterfeit sellers Anti-piracy posters: "My Daddy went to (...);
Ministry of Economy, Trade and Industry (METI), Japan Patent Office (JPO)
"Love the real thing" anti-counterfeiting campaign (2011-2012); includes messages via different media, such as posters, a special website (www.kawanai.go.jp) and movies "Kawanai" ("I will not buy it") campaign to combat counterfeiting and piracy (2009-2010 and 2010-2011), focusing on the purchase of counterfeit products from online shopping sites; objective: to warn consumers about the detrimental effects of counterfeit or pirated products, and to encourage them not to purchase such goods through: - TV commercials: a 15-second TV spot aired in nine regions, (...);
Board of Studies New South Wales (NSW), Music Industry Piracy Investigations (MIPI)
"HSC: All My Own Work" program (2007) to reinforce to students the importance of copyright and respecting others' creativity Modules: Scholarship Principles and Practices; Acknowledging Sources; Plagiarism; Copyright; Working with others;
"Music Matters" campaign (launched in 2010) aiming to raise awareness of the value of music and change attitudes towards music piracy; includes: - "Music Matters Trustmark": acts as a guide for music fans and help differentiate legal music services from illegal ones - "whymusicmatters.org" website including short films featuring famous musicians (Willie Johnson, John Martyn, Fron Choir, Sigur Ros, Nick Cave, Louis Armstrong, Kate Bush, The Jam) explaining the value of music and directing users to legal online music stores, blog - presence on Twitter, YouTube, (...);
Rock the Schools, College of Creative Arts & Technology (CCAT)
"Rock the Schools tour" educational initiative (2006, 2007, 2008, 2009, 2010 and 2011 supported by MIPI): live band performances at schools followed by educational workshops (covering for example audio engineering, digital music production or the music business) Educational workbook: "Plan a Career in Music";
Rock the Schools, College of Creative Arts & Technology (CCAT)
"Rock the Schools tour" educational initiative (2006, 2007, 2008, 2009, 2010, 2011 supported by MIPI): live band performances at schools followed by educational workshops (covering for example the negative effects of illegal music downloading);
Australian Children's Music Foundation (ACMF)
Annual "National Songwriting Competition" for children from kindergarten through to year 12;
Australian Children's Music Foundation (ACMF)
Annual "National Songwriting Competition" for children from kindergarten through to year 12; featuring a special category called "Music for Free?", accepting songs discussing the ethics of illegal file sharing;
Music Industry Piracy Investigations (MIPI)
"Tropfest and Tropfest Jr Guide to Music and Copyright" answers questions like whether its okay to use other people’s music in your film and how to get permission for up and coming filmmakers entering the Sony Tropfest and Sony Trop Jr competitions (2007, 2008 and 2009) MIPI seminars for musicians about protecting their rights and understanding the effects of music piracy (as part of the Victoria Rocks program) (2008) MIPI-provided seminars and fact sheets for singer/songwriters entrants to the Fretfest competition, educating them about copyright and the balance of protection and (...);
Music Industry Piracy Investigations (MIPI)
"Piracy in your industry" guides (since 2007), teaching people how to legally use music within their industry;
Music Industry Piracy Investigations (MIPI)
"Support Artists Report Music Piracy" campaign (2007): MIPI disseminated information on the negative consequences of music piracy for the music industry and encouraged people to report music piracy; the campaign targeted music retailers, both bricks & mortar and internet, markets and others in the music industry "Selling Second-Hand Music - Are You Doing The Right Thing" fact sheet "Report Piracy" website and hotline;
Music Industry Piracy Investigations (MIPI)
"Teachers and Schools - Are you doing the right thing?" (2007) comprehensive guide setting out how music can be used within the educational context (also appeared in an education magazine distributed to 80,000 primary school teachers in Australia);
Music Industry Piracy Investigations (MIPI)
"Who cares about illegal downloading?" (2007) music piracy campaign through secondary schools in Australia;
Intellectual Property Thieves poster (2008) to promote IP theft awareness among Australian police officers; the posters were distributed to over 306 police stations across the country and aim to encourage police to be aware of IP crime and help to enforce Australia’s copyright laws;
Intellectual Property Awareness Foundation (IPAF)
Campaigns: - "What are you really burning?" campaign (2007, 2009) in cinemas, retail & rental stores as well as television telling Australians that what they are you really burning if they don’t respect film and television copyright is the Australian film industry; aimed at helping Australians to see the positive outcomes that result when people respect copyright and say ‘no’ to pirating films and television shows - "Movie Piracy: it's a crime. Don't buy into It." (2004) "Copyright or Copywrong"/"Nothing Beats The Real Thing!" education initiative (...);
TropInc, Sony Group, Movie Network Channels
Event: "Tropfest" short film festival. Entries in Festival are required to include the year's "Tropfest Signature Item" (TSI) in their film - this is meant to encourage the production of original films for the festival Tropfest Short Film Production Initiative (in partnership with Media Resource Centre and the South Australian Film Corporation): assists filmmakers develop and produce an engaging, entertaining short specifically for entry into the a Tropfest film festival;
"Innovation for Schools": activity-based learning modules suitable for students in upper primary and lower secondary grades; each learning unit has been designed to help boost creativity and innovation among young Australians and encourage the exploration of intellectual property concepts in the classroom;
