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Owners of foreign language trade marks need to exercise particular caution when contemplating the expansion of their brands into the United States marketplace. US trade mark law and language issues create certain concerns that specifically relate to the availability of a foreign language mark in the US.

On January 12 2007, the Court of Appeal handed down its judgment in a long-running dispute between Special Effects and L'Oreal as to whether the same grounds could be adopted in infringement or invalidity proceedings after they had already been unsuccessfully deployed in an opposition action. The High Court had held that once a mark had overcome an opposition and been accepted for registration, the opponent was estopped from attacking the mark a second time either by infringement or invalidation proceedings. This decision was overturned by the Court of Appeal, which held that Registry proceedings did not involve any cause of action which could form the basis of an estoppel and that the Trade Marks Act 1994, which provided for the co-existence of both opposition and invalidation actions, meant that opposition actions were by their nature non-final.

Sweden's legislators and judicial authorities are facing a delicate problem in connection with file sharing – that is, with uploading and downloading of copyrighted material from the internet. The problem is that the existing legislation regulating the issue is ignored by the vast majority of people whom it is principally intended to govern.

In the December/January issue of MIP, it was reported that opposition proceedings had been brought by Mark Richard Jeffery and Guy Anthony (the Opponents), owners of the trade mark Jeffery-West in Class 25 against Nautical Concept Pte Ltd (the Applicant), who applied to register the mark jWEST in Class 25. That article summarized the decision of the Principal Assistant Registrar (Registrar), who found that the application for jWEST was made in bad faith and that jWEST was confusingly similar to Jeffery-West.

In the decision of the Supreme Court (SC) issued on February 2 2007 in McDonald's Corporation v Macjoy Fastfood Corporation, the SC employed the dominancy test to affirm the decision of the Intellectual Property Office (IPOPhil) that the predominant features of the McDonald's marks (namely its corporate logo known as the golden arches or M design, McDonald's, McChicken, MacFries, BigMac, McDo, McSpaghetti, McSnack, and Mc), are the "M" logo design, and the prefixes "Mc" and "Mac", and found confusing similarity between the McDonald's marks and the opposed Macjoy and device mark, especially since both are used on the same products falling under Classes 29 and 30.

The German Federal Supreme Court (BGH) recently issued a decision (Haftetikett), which significantly increases the legal burden on an employer to effectively claim a patent right originating from an employee's invention.

Before the Linkage Regulation in Mexico, the health authorities granted marketing authorizations for pharmaceuticals when the applicant complied with the regulatory requirements, without reviewing possible violations of patent rights. In short, marketing authorizations granted in the past for patented pharmaceutical products to non-authorized third parties were government authorizations to infringe patents.

Shahnaz Mahmud, New York

Canada is not unique in its concern over increasing prevalence and diversity of counterfeit goods. The OECD recently reported counterfeiting in virtually all economies with a cost estimated at 5% to 7% of world trade, up from 2% to 4% 15 years ago. Canada is, however, a jurisdiction in which enforcement is difficult. This is probably attributable primarily to the fact that, unlike the United States, Canadian Border Service personnel are not mandated to search for and seize counterfeit goods.

Article 10 of the Enforcement Directive (Directive 2004/48/EC) provides corrective measures to be taken with regard to goods that have been found to infringe an intellectual property right. Those measures include: