European IP Helpdesk

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Bulletin No. 3 Trademark

Contents

Introduction to Trademarks 2

The face of your business

Zumba, Weight Watchers & Co 3

Where trademarks come into play

Applying for a Trademark 4

Important things to consider

Setting the Strategy 6

Best practices in trademark management

EU Trademark Directive 7

Modernising trademark law

Combatting Counterfeiting 8

Challenges, benefits and best strategies

Brand Protection Online 10

How technology helps protect IP in the world wide web

International Trademark Protection 12

Useful guides and case studies

News from the European IP Helpdesk Team 13

Publications, training and other activities

Editorial

2020 has thrown the world for a loop: COVID-19, its implications and global consequences have been grabbing our attention like little else. While the coronavirus pandemic has caused tremendous loss and pain for people worldwide affecting our lives in ways never imagined possible, it has also had an impact on intellectual property (IP) offices around the globe. Over the past couple of months, many thousands of trademark applications related to COVID-19 and the coronavirus pandemic have been filed around the world. The most common trademark applications are for medical equipment, while others are attempting to register trademarks for games or clothing items, such as sweatshirts and hats sporting a KEEP CALM AND CORONAVIRUS ON slogan. Even though these opportunistic attempts at virus-related trademarking are in bad taste, brand protection is now more important than ever. A good trademark strategy should be in place well before disaster strikes, however.

Against this backdrop, the present Bulletin will dive into the at first glance seemingly intricate waters of trademark application and management.

We are launching our edition with a general overview on what to consider before, during and after the application process and how to steer clear of the most common problems. Our newest fact sheet on trademarks is a quick and handy guide that takes a closer look at managing trademarks, before we are approaching the subject from a slightly different angle. In the humorous, yet still informative, article “What do Zumba, Bodypump, Weight Watchers, Cards Against Humanity and the Assimil method all have in common?” you will learn what unites a dieting regimen and a rude card game.

Next, Inge Buffolo, Customer Department Director at the European Union Intellectual Property Office (EUIPO), shares with us her sizable knowledge on filing successful trademark applications. According to her, proper registration of trademarks “can make the

difference between life or death in the business world”. Various tips shared by Novagraaf’s Chantal Koller in the next article on trademark management alongside best practice examples and information on the future challenges of trademarking and IP rights (IPR) round off this ‘do’s and ‘don’ts section.

To keep up to date with the legal developments in trademark law, have a look in the following at our interview with the immediate past President of the European Communities Trademark Association (ECTA), Sozos-Christos Theodoulou, who has given us his views on the status quo of the implementation of the EU Trademark Directive.

The next part delves into an important but often neglected topic in regards to trademarks: the protection from theft of businesses’ IPRs by trademark squatters and counterfeiters. Our first article dispels the common misconception that counterfeiting is solely a problem for luxury brands, whereas, in fact, more than 30 % of small and medium-sized enterprises (SMEs) that use IPR have suffered from IPR infringement in the past. We spoke with Maya Razavi from the International Trademark Association (INTA), who leads the association’s global anticounterfeiting efforts, about major challenges and best strategies to combat counterfeiting. What else to do proactively against infringement is shown in an interview with Red Points, a company that has developed a technology-based solution for detecting and enforcing online IP infringements.

Lastly, we are broadening our scope to include trademark strategies specific to China, South-East Asia and Latin America. Our colleagues from the international IP Helpdesks provide a wealth of insightful cases and guidelines addressing trademark protection when taking your business abroad, and we just spotlight some.

Happy reading!

The European IP Helpdesk editorial team