Trademarks

Ferrari with its well known trademark “Testarossa” at risk in Germany.

Following the dispute between the famous car manufacturer Ferrari and the Autec AG, holded by the Kurt Hesse with respect to trademark “Testarossa” in Germany, arised the well known trademarks genuine use issue.

The translation of foreign words in determining whether they are registrable as trademarks, or confusingly similar with existing marks is, certainly, a relevant matter in the Trademarks’ Right. In this brief overview, we comment on its importance, giving special attention to the USPTO’s doctrine of the foreign equivalents.

Regulation No 2424/2015 of the European Parliament and of the Council, dated 16 December 2012, which will enter into force on 1 October 2017, implements various changes to the EU trademarks’ regime. These changes include not only the substantive trademark law, but also the procedural legislation.

The launhcing of this domain is divided in 3 phases. The Sunrise Phase started on the past 23rd ofjuly of 2017 and will end on October 22nd of 2017. During this period, only the oweners who have trademarks registered in Kenya will have the right to apply for the corresponding domain names. To do that, it will only be necessary to have a confirmation letter from the Intelectual Property Institute of Kenya to verify if the trademarks are registered in the country.

The African Regional Intellectual Property Organization (ARIPO), formerly known as English Speaking African Regional Intellectual Property Organization (ESARIPO), was created with the Lusaka Agreement (1976) and currently boosts 19 member-states, which are mostly English speaking countries. ARIPO intends to promote the cooperation between members regarding the protection of intellectual property rights and with time it developed to a regional system that allows the registration of patents, trademarks and plant varieties.

Madrid System makes possible for any trademark owner to register the trademark up to 115 territories through a single application.

By adhering to the Protocol, starting on November 7 of 2017, trademark owners in Thailand will be able to designate all the country members of the Madrid Protocol through a single application, making their Intellectual Property assets to become protected on the remaining 98 members of the Protocol.

The famous court case held between Christian Louboutin and Van Haren Schoenen, in the District Court of The Hague, Netherlands, in which the Louboutin’s red sole validity as a Benelux trademark is being questioned, has suffered a setback.

The District Court of The Hague requested for a preliminary ruling from CJEU and Maciej Szpunar, the Advocate General, has delivered the opinion on the case on June 22, 2017.

Intellectual property rights play a crucial role in the marketing strategy of all kinds of an increasing number of companies, and it involves a set of processes, creations and communications offerings which have value for the clients, customers or society in general. Marketing necessarily generates intangible assets that may be protected by intellectual property rights. In fact, this is the first significative aspect of the influence of intellectual property rights on marketing strategies: the protection of intangible assets in a marketing campaign.

Although Zimbabwe joined the Madrid Protocol in 2015, the protocol was not given effect since Zimbabwe failed to amend its domestic law, which is required for Common Law countries.

As a result, some doubts arised on whether Zimbabwe was effectively a member of the treaty or not, and, consequently, if international registrations designating Zimbabwe were legal.

As for 2017, all doubts have been cleared by Trade Marks Regulations 2017, and all international registrations can legally designate Zimbabwe.

As discussed before (see here), the Canadian IP Office (CIPO) allowed applicants to file trademarks using the Nice Classification.

However, once Bill C-31 comes into force, the Nice Classification will become mandatory when filing Canadian trademarks.