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Programme formats can be a goldmine but to what extent can they attract IP rights? Lyndsay Gough looks at some of the issues facing those seeking to exploit and protect them

James Nurton, Brussels

A rare glimpse into the workings of the USPTO reveals an organization rich in history and poised on the threshold of change. Sam Mamudi visits the Arlington agency and finds out what makes it tick

Lucian Enescu In Romania, the holder of a previously registered trade mark (or application), or of a notorious trade mark may, under law no 84/1998, file an opposition to the registration of a new trade mark (within three months from the date when it was published in the Official Gazette). The opponent may consider the new sign as being prejudicial to their previous right if it is identical or similar to their own trade mark or if it protects identical or similar products as the ones protected by their own trade mark. An assessment in the case of identical marks is simpler. For similar trade marks, three possible types of similarity must be considered when analyzing a new trade mark for registration: visual, phonetic and semantic.

One of the key issues in the complex of problems surrounding exhaustion is the question of whether goods bearing the mark of a trade mark owner have been put on the market with that owner's consent. If so, the trade mark owner cannot prohibit parallel-importers from importing the goods into the EEA, according to article 7, section 1 of the Harmonization Directive (89/104/EEC).

James Nurton, London

Russia's transition to a market economy has created a tangle of proprietary rights. Valeri Guerman explains some of the problems facing trade mark owners

Interview: James Rogan James Rogan, the new director of the USPTO, speaks to Sam Mamudi about being at the helm of one of the most influential IP organizations in the world at a time of enormous challenge and growth

One case that has cast some light on co-ownership of trade marks in Singapore is Ng Chu Chong (trading as Grand Am Fashion Enterprise) v Ng Swee Choon & Ors (Suit No 1108 of 2001/E). Here the plaintiff and his sister, the first defendant, entered into a partnership called Grand Am Fashion Enterprise (Grand Am) to manufacture and sell fashion apparel under the trademark, McBlue. The trademark was created by the first defendant for the partnership and was registered in their joint names, trading as Grand Am. Subsequently, the first defendant withdrew from the partnership due to an impending bankruptcy but continued to work for the plaintiff as an employee. The plaintiff thereafter discovered that another partnership belonging to the first defendant's sister-in-law, named GA Fashion Apparel (GA) was marketing goods bearing the McBlue trade mark. The plaintiff brought an action against the defendants for trade mark infringement and applied for permanent injunction. The first defendant argued that she was entitled as a joint proprietor to authorize GA to purchase and deal with goods bearing the McBlue trade mark.

There are grounds under the UK Trade Marks Act (1994, section 3(6)) for refusal or invalidity of registration where a trade mark is applied for in bad faith. The provision derives from the European Trade Marks Harmonization Directive (89/104) and has a counterpart in EU Trade Mark Regulation 40/94 (article 51(1)(b)). Bad faith is not defined and its scope has produced a divide between UK and EU case law over the need for subjective dishonesty on the part of the trade mark applicant (Trillium, First Cancellation Division of OHIM, C000053447/1, March 28 2000).