20:12 • 06 Oct 2008
Trademarks Articles
- You can still build local brands in a global market, says Hans Van Bylen. He explains how Henkel manages its global brand Schwarzkopf and the ‘glocal’ brands that it supports Henkel isn’t a company name that instantly jumps out a...
- You’ve invested time, energy and resources, but as little as 15% of the trademarks you own could actually be of strategic and commercial value to your business. It’s time to declutter your portfolio, says CPA’s Brigitta Best Brig...
- According to the European Commission’s latest report on piracy, the number of seizures of counterfeit goods significantly increased in 2007. But there is still work to do, says Richard Lewis Counterfeiting is a growing and increasingly dange...
- As the world edges closer to the 2008 Olympics in Beijing, China has stepped up its enforcement of IP Rights. But as intelligent as its anti counterfeiting efforts have become, counterfeiters are still one step ahead, says TMDS’s Sylvia Lacroix...
- The James Bond franchise is responsible for one of the screen’s most iconic characters, over US$4bn in revenue and plenty of fierce IP debates, says Johnny Acton One day in 1952, while sitting in his study in Jamaica trying to come up with a...
- When Google launched its AdWords advertising programme in 2003, keyword-linked advertising seemed to herald the future of online advertising. If only it didn’t infringe brand owners’ IP Rights in the process, says Duncan Bucknell It al...
INTA focus: Sponsoring success
One of the world’s most spectacular sporting events will lift its curtain in just under 100 days. But will recent protests over China’s humanitarian record mar the marketing success of the event’s sponsors? On 24 March 2008, the ...- One of the world’s most spectacular sporting events will lift its curtain in just under 100 days. But will recent protests over China’s humanitarian record mar the marketing success of the event’s sponsors? On 24 March 2008, the Ol...
- With the 2008 Summer Olympic Games approaching, Johnny Acton investigates how the ‘greatest show on Earth’ won a gold medal for IP Rights. On a pro rata basis, the world’s most lucrative sporting event is the Super Bowl. Unfortun...
Reflecting a Culture: Key Trends in Trademarks
A successful marketing strategy will convert trademark rights into brand recognition and loyalty, but it needs to move with the times. External economic, political and social forces, and even sporting events, can impact on IP and the way that it need...- As the trademark market continues to grow in size, it is more important than ever to ensure the accuracy and efficiency of trademark renewals. That’s why CPA is unveiling a new operating system that will deliver a better service to its clients,...
JRR Tolkien's Estate Sues New Line Cinema
The family of JRR Tolkien, who present his work and interests through the Tolkien Trust, is suing New Line Cinema, alleging that it has not received any royalty payments. The Tolkien Trust, which is run by Christopher and Priscilla, son and daught...- How do a country’s advertising rules and regulations affect a company’s brand protection policy? In the wake of the 2007 Marques conference, Claire Mounteney of Marks & Clerk UK and chair of Marques Brands & Marketing Team, offers...
- The ultimate business advantage of the 1990s was an online presence. Now, as we hurtle towards the end of the noughties, companies must show themselves to be greener than green, says Johnny Acton A combination of strange weather, dire predictions ...
Johnny Cash royalties' lawsuit launched
The daughters of late country music legend Johnny Cash have launched an investigation into why they have never received royalties from his hit, 'Ring of Fire'. Rosanna, Kathleen and Tara Cash, daughters by Cash's first wife, Vivian have hired IP e...Hollywood advises Bollywood in piracy fight
Stronger enforcement of copyright laws and educating audiences have been commended as being a must if Bollywood wishes to reduce the millions of dollars lost each year at the hands of piracy, says a top Hollywood official. The worlds largest film ...UK piracy site shut down by FACT
TV Links, a video pirate website which listed a directory of copyrighted material from YouTube and other sites has been shut down. This if the first time an online directory has been shut down in connection with video copyright infringement. The s...- From humble origins in eighteenth-century France to the drink of the rich and famous, the story of champagne is a controversial one. Johnny Acton charts its chequered history Champagne, real champagne that is, comes from the Champagne region in th...
Speaking up for Trademark Owners
Jane Collins is the new chair at Marques, the Association of European Trade Mark Owners. Here, she outlines her vision for the future and tells Edward Fennell why the need for European-wide awareness has never been greater In a crowded market of c...Gucci sues 2 Chinese companies over trademark infringement
Italian fashion house Gucci is suing 2 Chinese companies claiming they infringed its trademarks. Gucci are suing Shanghai Basto Shoes Co and the Hualian Hypermarket Co at the Beijing Municipal No.1 Intermediate People’s Court. Gucci has dema...China sets up reward system to fight piracy
China's National copyright Administration (NCA) has recently launched a new system to reward information from any individual or organisation, which leads to a prosecution. The reward for most cases would be up to 100,000 Yuan ($13,000). However, t...Second Life avatar seeks trademark registration
For the first time in the popular world of Second Life, the online virtual community, a personal avatar (a net person) is seeking trademark protection for her appearance. Alyssa LaRoche, or Aimee Weber in the virtual world, runs a design studio in...'Pioneer' a famous trademark in China
Pioneer and the Chinese characters of the same word, have been officially approved as famous trademarks of China in Category 9, Audio Equipment. The Pioneer trademarks follow the six Japanese companies' trademarks that have been already approved i...USPTO and UKIPO building a highway
The United States Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) announced that they are now accepting applications in a pilot project designed to fast track patent examination between the two countrie...London Olympic Committee closing in on infringers
In an early warning to any business looking to illegally cash in on the 2012 London Olympics, a Dorset butcher has been banned from displaying an Olympic ring sign outside his shop. The sign was emblazoned with the date ‘2012’ and five...Cola infringement loses its fizz
The Delhi High Court has ruled in favour of Coca-Cola after a Jodhpur-based local company tried to sell a soft drink named ‘FACTA’. The Court accepted Coke’s contention that the ‘FACTA’ name was too similar to that of th...Sports firm throws promotion curve ball
Washington State’s Baden Sports has launched lawsuits against USA Basketball and the sport’s global governor, Federation International de Basketball (FIBA), over the alleged promotion of infringing products. Baden argues that the US baske...Goods brand challenges check mate
Burberry, whose distinctive check has adorned the garments and luggage of countless celebrities, has launched an infringement suit against rival goods firm, London Fog. The tartan titan alleges that a forthcoming trenchcoat range from the rival brand...Third time lucky for China TM reform
China is exploring possible amendments and revisions to its Trademark Law for the third time since 1983, in a bid to reduce cycles of trademark registration and rights vindication. Zhou Bohua, the chief of the State Administration for Industry and...Extra Time For World Cup Trademarks
South Africa’s Trade and Industry minister, Mandisi Mpahlwa, has extended the deadline for the submission of objections on the use of specific words and emblems for the 2010 Football World Cup has been extended. The Minister has called for...- Johnson & Johnson, the US pharmaceutical giant, has filed a lawsuit against the American Red Cross, demanding that the charity stop using the red-cross symbol on products it sells to the public. Johnson & Johnson also uses a red-cross lo...
- US domestic goddess Martha Stewart is embroiled in a trademark row with her new neighbours. The cooking and home decorating guru, 66, moved into the fashionable New York district of Katonah last year. Stewart liked the area so much that Martha S...
Philippines’ IP police net billions
The National Committee for Intellectual Property Rights (NCIPR) in the Philippines has announced that its member agencies have confiscated nearly four billion Pesos (approximately £42million) worth of counterfeited items since the committee&rsq...- The Formula One Group (FOG) has failed in its bid to trademark the term ‘F1’ in Britain. Applications for the mark – regarded as the given abbreviation for the racing sport's name – have been filed by the Group's commercial ri...
Water company loses its bottle
A mineral water bottling company has been barred from using a name similar to that of a world famous Scotch whisky. This week the Delhi High Court determined that the ‘WAT 69’ brand of water produced by SM Enterprises was too similar t...Canada unveils new Olympic trademark legislation
Canada’s innovative Bill C-47 comes into force this month, giving the Vancouver Organising Committee (VANOC) for the 2010 Winter Olympic Games unprecedented legal powers to protect its trademarks in the run up to the event. Domestic and inte...China urged to value own brands
A partner from one of the world’s most renowned IP law firms spoke at the first International Trademark Forum in Beijing on 20 June, arguing that greater brand awareness in China would improve the country’s economy. Kevin Smith, trademark...Tourist guide has Olympic mountain to climb
A humble guidebook has run afoul of the American branch of the International Olympic Committee (IOC) on the grounds of trademark infringement. Titled Best of the Olympic Peninsula 2007: Vital Information to ‘DO THE LOOP’ Around Washington...Trademark Dilution: Does Europe lag behind the US?
Six months after the US completely overhauled the dilution provisions of its trademark act, Ilanah Simons asks whether the EU should be following suit Traditional trademark models are based on confusion. A trademark is infringed if a rival trader ...- Media-savvy celebrities know that legal protection of their ‘brand’ can allow them to cash in on their fame by licensing its commercial use. But, as Jeremy Dickerson asks, how can that be reconciled with their corresponding right to priva...
- The self-appointed ‘greatest rock ‘n’ roll band in the world’ certainly has one of the world’s greatest logos. The famous ‘tongue and lips’ device perfectly captures what the Stones are all about, says Johnny...
- Protecting a brand isn’t just about registering trademarks. There’s an entire industry behind the scenes, says TMDS’s Philippa Edward The fact that France has agreed to allow an Abu Dhabi group to use the Louvre trademark to grac...
Trader made to go public as IP thief
Reports emerged on 3 May that an online software trader has been forced to advertise that he is a counterfeiter, following a lawsuit brought by Microsoft. In January, MA Jabarkhail of Grimsby, England, was convicted of selling fake Microsoft goods on...Supermarkets breed superbrands
British retailers are biting the hand that once fed them, shifting their emphasis from stocking major brands to creating and pushing their own. Their efforts are giving the likes of Procter & Gamble and Johnson & Johnson a run for their money...Jeans firm: rival brand against our Religion
Fashionable denim dealer True Religion has launched a trademark suit against the in-store jeans brand sold by branches of Sam’s Club, the warehouse merchandise division of a leading US retail chain. With style signatures that develop from the p...Utah marks caught in legal web
According to its current plans, the US state of Utah will impose a new registration system from 30 June that will enable IP holders to obtain digital ‘trademarks’ for their brands. In a groundbreaking move, they will be used to prevent co...- California resident Joseph Lewis Aguirre has raised eyebrows in the Orange County area by trademarking 15 local place names, it emerged on 2 April. Particularly worried are the owners of local firms, who fear that Aguirre will use his array of rights...
G stands for ‘grind’ on Google’s foreign mail trail
It emerged on 27 February that Google is facing a tough battle in its latest effort to protect its brand from dilution. The search giant, which runs the convenient, free-access email service, Gmail.com, has encountered a brick wall in the shape of Ch...Marks event to deliver the goods
A Law Society-accredited seminar on consumer goods branding will be held by the Intellectual Property Institute on Thursday 15 March. Hosted by the McDermott Will and Emery law firm in their 7 Bishopsgate, London headquarters, the seminar will addres...- The Academy Award of Merit is the world’s most cherished movie award, and yet few know it by its actual title. Johnny Acton reveals how the Oscars got its name The Academy of Motion Picture Arts and Sciences is an honorary association of mo...
- Film studios are using their IP rights to greater effect than ever before, says Jeremy Dickerson When Paramount registered its mountain logo as a trademark in 1914, it was the launch of a new era for IP in the film industry. Film studios began to ...
Second Life repays mark parody in kind
Linden Lab has taken an unusual stance on a website that parodies its popular online community, Second Life, it was revealed on 14 February. The parody site, entitled Get A First Life (slogan: ‘Your world. Sorry about that.’), satirises S...News honey brands nickname for host of ventures
It emerged this week that CNBC business anchor, Maria Bartiromo – an iconic figure in US financial circles – has trademarked her own nickname for several goods classes, including comics, films and clothing. An application for ‘Money...Whisky sour: body to appeal ‘Glen’ ruling
The Scotch Whisky Association (SWA) is to contest a decision of 24 January by the Canadian Trade Marks Opposition Board that fails to endorse special protection for the word ‘Glen’ as a unique feature of Scotch whiskies. Instead, the ruli...Lifestyle guru sows place brand fears
Homemaking queen and entrepreneur, Martha Stewart, has angered residents of her New York State hometown with a plan to trademark its name for use on her new furniture line, it emerged on 22 January. Many of Stewart’s neighbours are concerned wi...Cisco sues Apple over iPhone trademark infringement
It has been common knowledge for some time in the IP world that that Apple has been seeking a trademark for its new iPhone since 2001. However, their decision to go ahead and release the iPhone without legal rights to the name surprised trademark law...Battling brewers form historic trade alliance
The beginning of this week saw an important distribution deal between rival brewers Anheuser-Busch and Budejovicky Budvar, heralding a thaw in the century-long dispute over who owns the rights to the Budweiser trademark, and shocking industry o...Dirtbike king fumes over rapper’s stunt
Biking legend ‘Evel’ Knievel filed an infringement suit against rap star, Kanye West, in a US District Court this week after West portrayed himself as a Knievel-like character in a recent pop video. The clip, which promotes West’s s...TM law changes set for New Year
Before the festive season takes off and obscures the finer details of the IP universe, IP Review Online would like to take the opportunity to remind its readers of forthcoming changes to UK trademark legislation. Under the 1994 Trade Marks Act, the N...Orange seeks banana for love and TM dispute
A Canadian director whose educational short film led to a trademark spat with one of the world’s biggest clothing companies has finally won her case, it emerged on 24 November. Michelle Messina began her legal battle six years ago after the pop...Fake Nikes sprint into record haul
One million pairs of counterfeit Nike shoes have been impounded during a sustained enforcement action in Hamburg harbour, the firm’s lawyers, Mayer, Brown, Rowe & Maw, announced in a 22 November press release. Throughout the operation, whic...Shoe corp to hunt firms wearing its ‘skins’
New York-based apparel manufacturer, Skins Inc, announced on 20 November that the USPTO had approved a patent application for its cornerstone design – a novel take on the structure of footwear that has had industry-watchers buzzing for months. ...Jeans mark transit verdict rolls in
On Thursday 9 November, the European Court of Justice (ECJ) delivered its ruling in case C-281/05, Montex Holdings v Diesel SpA – a judgement that IPR Online flagged up early last week. The case had prolonged a clash between the two firms over ...ECJ to make two marks this week
The European Court of Justice (ECJ) is preparing to hear one trademark case and rule in another over the next few days, in order to clarify key legal clauses. Case one (C-17/06), set for hearing on Tuesday 7 November, examines 5(1) of the Trade Ma...- BP, Nestlé and Vodafone are among a growing number of companies placing ownership of their trademarks and global brands into offshore holding companies in low tax jurisdictions. For some, the attraction is in greater tax efficiency, for others...
Ten Commandments for Trademark Owners
CPA's Bianca McDonogh provides some sound strategies on how to maintain your trademarks, protect your business and enhance your brand. 1. Ensure clearance Before launching a trademark for your products or services, conduct searches for conflictin...A Bright Future for Trademarks
The trademark market has been growing steadily and shows no signs of slowing down, says Benedict Ely, trademark business manager at CPA. He explains why to Sonja Patel. With 10 years as an IP lawyer and four years running a business, Benedict Ely ...900,000th mark registered under WIPO
A Chinese manufacturer of porcelain ornaments and other household goods has registered the 900,000th trademark issued under the Madrid system, the World Intellectual Property Organisation (WIPO) announced this week. The organisation also commented th...- Brands and their associated trademarks support the success of a product in the marketplace. However, maintaining and protecting the associated rights can be a complex and time-consuming process. Trademark marketing manager, Helen Brazier outlines thr...
- The accession of the European Union to the Madrid Protocol is an important step towards integrating a global system of trademark protection. But, asks Edward Fennell, will it facilitate the registration and enforcement of intellectual property rights...
The Importance of Being Translated
According to WIPO there has been a marked increase in worldwide trademark applications over the last 20 years. Milka Sculac Sennett from Trade Marks Directory Service (TMDS), part of the CPA Group, explains the language issues trademark watchers enco...The Third Dimension: the shape of things to come?
Thanks to the curves of the Coca-Cola bottle, the triangular shape of the Toblerone chocolate bar and the distinctive configuration of the Volkswagon Beetle, trademark practitioners are increasingly identifying that a shape can function as a trademar...- The UK Trade Marks Registry, part of the Patent Office, recently introduced the biggest changes in trademark dispute procedures in the last 50 years. What are the changes, how did they come about, and what will their effect be? Keven Bader explains. ...
- Like a rose, a perfume by any other name should smell as sweet. But following a Dutch court ruling in July 2004, selling a cheap imitation under another name now constitutes a copyright violation. David Bainbridge looks at the different ways a smell ...
- The Internet is beginning to dominate the world in which we live. But it isn’t just information and services that can be found a mouse-click away. So too lurks the permanent danger of infringement to IP Rights by pirates and cybersquatters. ...
- With the Olympics approaching, Simon Bennett offers some timely advice on the use of Olympic imagery in the UK. The Olympic motto Citius Altius Foritus – ‘faster, higher, stronger’ may not be as memorable as the five rings, blue,...
- Why are some brand owners choosing names that invite genericism? Dominic Farnsworth looks at a growing trend and discusses the legal implications. ‘Genericide’ is a term that has a fatal resonance. Traditionally most IP professionals b...
- IP and IP Rights protection has been the cornerstone of the film and television industries since their very inception. Now, as moving images expand into the Internet and mobile telephony, trademark, patent and copyright laws are being called upon as ...
- French philosopher, Roland Barthes, believed in the death of the author, arguing that the real owners of art are the audiences who watch, read and listen. Fortunately, the law disagrees, says Jeremy Dickerson from Burges Salmon LLP. In the enterta...
- Unlike many things in life – an ice-cream sundae, say – the desirability of a gadget depends on how small, clean and simple it is. Hence the success of the iPod. Remember cassette players? We’ve come a very long way. iPod, and r...
Holograms: The next generation of trademarks?
Holograms have been used for decades as security devices against counterfeiting in the field of credit cards and banknotes. But does this make them eligible for trademark registration? Dr Ralf Sieckmann continues our series on less conventional IP wi...- How does the most famous toothpaste ensure its market dominance? Johnny Acton examines the history of Colgate. In a world containing several billion human teeth, many of which are cleaned twice daily, dental hygiene is big business. The Colgate-Pa...
- In May 2006, nearly 8,000 delegates gathered in Toronto for the INTA’s 128th Annual Meeting to share ideas about IP trends in today’s globalised economy. This opportunity to network is key to the organisation, as INTA’s Daryl Grecic...
- Counterfeit goods erode brand values and product integrity, says Toe Su Aung, general counsel at BATMark Ltd, and chair of the International Trademark Association’s anti-counterfeiting & enforcement committee. So why isn’t more being ...
- Most people will recognise a favourite soft drink by the colour of its bottle, a preferred bar of chocolate by the shade of its packaging or a clothing designer by the tint of its logo. But how easy is it to register and protect a colour in relation ...
- The 2006 FIFA World Cup has highlighted what many brand owners already know: football is big business. This year’s competition recorded viewing figures in excess of 30 billion, giving companies the rare opportunity to promote their brands, logo...
- A fresh look at trademarks in the pharmaceutical industry In the past 20 years, the pharmaceutical industry has emerged as one of the most dynamic and competitive in the world. in an extract from CPA’s recent white paper, Benedict Ely brings...
- In 2006, the Office for Harmonization in the Internal Market (OHIM) will be processing the first Community Trade Mark renewals. Etienne Sanz de Acedo, head of operations at OHIM, explains the performance standards being set in place. Established i...
- Caterpillar’s first tractor rolled off the assembly line over 80 years ago. Since then the company has become a market leader in the field of construction vehicles and extended its brand into footwear. But how did a construction giant navigate ...
- Independence and adventure rumble at the heart of the Harley-Davidson legend, says Johnny Acton. Its motorcycles are one of only a few products that appeal to rebellious outlaws and straight-laced businessmen alike. But how did Harley-Davidson build ...
- Every type of trademark is a communication mark, but none more so than sound marks. These enable consumers to aurally distinguish between different products and services, whether they are represented by a classical melody, the quack of a duck or the ...
- In today’s digital age, animated or moving-image trademarks are becoming as recognisable as company names, but how do you know if your moving-image device is registrable as a trademark? Dr Ralf Sieckmann continues our series on less traditional...
- How does a successful football club protect and maintain its intellectual property? Emma Jones looks at the trademark strategy of Manchester United PLC to find out how the world’s most famous football brand protects its trademarks from infringe...
- In a surprising twist, Google’s use of trademarks to trigger advertisements was deemed legal by a US Court in December 2004. What impact will this have on trademark owners looking to enforce their trademarks online? Alex Wade explains. Googl...
- How does the world’s most famous chain of coffee shops protect its market dominance? Johnny Acton experiences the charm of Starbucks’ ‘Third Place’. Seattle has arguably had more influence on contemporary culture than any ...
- Starting a family company can make logical business sense, but what happens if that company splinters, leaving two or more parties seeking to trade on the same brand name? Jeremy Phillips asks who holds the rights when it comes to cashing in on a fam...
- The word spam is an amalgamation of ‘spiced’ and ‘ham’. So why is it being used to describe unwanted e-mails? Marcus Liddiard, a trademark attorney at CPA, opens up a meaty issue. What image springs to mind with the word sp...
Daddy No Longer 'Diddy' in the UK
In a late September court ruling, Sean Combs – the artist formerly known as ‘Puff Daddy’ and ‘P Diddy’ – was disallowed from using his latest, even shorter, stage-name, ‘Diddy’, in the UK. The David-and...- Following a USPTO decision on 3 August not to renew the Havana Club rum mark jointly owned by the Cuban government and Pernod Ricard, Bacardi USA has swiftly claimed it. It can now add a touch of authenticity to its popular rum brand. Bacardi spokesw...