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A review of “the current state” of the UDRP might be coming soon, which is likely to worry the IP community

I’ve joined a brand that frequently appears in films and TV programmes. Should I be actively managing this?

On June 19 2009, the Vietnam Parliament adopted Law 36/2009/QH12 to amend some provisions of Law 50/2005/QH11 on Intellectual Property (IP Law). The amended IP Law became effective on January 1 2010.

Atrade mark licence is often granted by a brand owner in an attempt to expand the brand and strengthen its significance as a source identifier. However, if such grant of rights does not carry with it an obligation of the licensee to maintain certain quality standards and the ability of the trade mark owner to oversee and approve the manner in which the mark is used, the grant of rights can have the effect of compromising the strength and enforceability of the licensed mark.

Thailand has, over the past few years, been plagued by increasing instances of trade mark hijacking. This involves registration of a famous international trade mark (or a very similar looking mark) by a local business, beating the mark's rightful owner in the race to the Registrar's office. Afraid to get shut out of the market, the owner is left with no choice but to either pay an exorbitant ransom, and buy back the mark, or get embroiled in a prolonged cash-sapping legal battle.

The Intellectual Property Office and IP courts in Taiwan have a tendency to recognise the eligibility of advertisements as evidence of use in non-use cancellation cases. However, in a recent non-use cancellation action, the IP Court almost unprecedentedly ruled that the newspaper advertisements submitted by the registrant did not meet the use requirements as stipulated in the Trademark Law, that use of a registered trade mark should be for promoting or marketing purposes and conform to commercial transaction habits.

The Swiss Federal Administrative Court recently qualified the mark Madonna (shown below) as contrary to public morality and accordingly unregistrable for a broad range of goods in international classes 3, 9, 14, 18, 20, 21, 24, 25, 26 and 28.

Trade mark owners that apply to register their marks in Singapore, the US, Japan and the EU will soon be able to avail themselves of a harmonisation of specifications of goods and services among the respective registries.

There is a famous producer of non-alcoholic drinks and alcoholic cocktails in Russia called Borodino Holding. It filed trade mark application 009701614/50 in respect of the goods in Classes 32 and 39 for the mark "I'll Take Manhattan". The Russian Patent Office refused the registration because, as everybody knows, Manhattan is an island in the Hudson river and the historical centre of New York. Registration of the trade mark in the name of a Russian company could have misled consumers because it did not have even a distant association with the island.

Susan Hollander and Britt Anderson have joined K&L Gates as partners in the IP litigation practice in Palo Alto.