BrandWrites by Bird & Bird - May 2014



Welcome to the second edition of BrandWrites by Bird & Bird

BrandWrites by Bird & Bird is an international publication that explores topical legal and industry related brand news, featuring recent trade mark cases and key changes in the law, practical advice and commentary from respected brand owners. It features contributions from Bird & Bird’s renowned IP team across Europe, Asia-Pacific and the Middle East.

We hope you enjoy it. We welcome questions, comments and suggestions, so feel free to get in touch with Editor and Bird & Bird Associate, Nick Aries or Bird & Bird Partner, Lorraine Tay at or tweet us at @twobirdsIP.

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Rules of play in bullring battle finally established
On 6 February 2014 the Court of Justice (CJ) found in favour of The Bulldog in its battle against Austrian brand Red Bull and provided trade mark owners with guidance on the meaning of ‘due cause’. In the bullring battle, Red Bull and The Bulldog are in dispute about whether or not The Bulldog is entitled to sell energy drinks under the brand “The Bulldog”... Read more>> 

‘Professional’ TM squatters in China
Trade mark squatting is not unique to China, but it is especially prevalent due to the low cost of filings and the rush of foreign brands looking to enter the Chinese market. Trade marks in China are generally awarded on a “first to file” basis, resulting in floods of applications, often mimicking foreign brands that have yet to expand into the Chinese market. According to the 2012 Annual Development Report issued by the China Trade Mark Office 1,648 million trade mark applications were accepted in 2012 – over double that of the US – making China the top filing destination in the world for 11 years running... Read more>> 

Digital killed the television star
It has always been tricky to identify and target audience demographics in TV advertising. “Spray and pray” is how Yahoo’s chief of sales, Wenda Harris Millard, recently summarised the position. The advertising business was built on top of network television. Traditionally, advertisers could reach the majority of viewers by buying prime time slots on 2 or 3 channels. That approach is still possible (Superbowl, World Cup, X Factor Final) but the choice of channels and the rise of personal video recorders (PVRs) have materially diluted the model. The development of cross-platform content offerings and the natural corollary, a platform agnostic audience, is equally significant... Read more>> 

International brand expansion – Q&A on Middle East franchising
The Middle East is a hugely popular destination for businesses and brands to expand into. Which are the key Middle East markets?... What sectors have witnessed the most significant growth and influx of ‘Western’ brands?... What are the legal challenges facing businesses looking to expand via franchising into the Middle East?... Read more>>

Protecting your trade mark: opposition vs infringement
Trade mark applicants and their agents are generally familiar with the threat of a registered trade mark being subject to non-use cancellation if the specification is broader than the range of goods or services in relation to which the trade mark is actually put to use. However, even at the outset, a broad specification may impede the successful registration of a trade mark - thereby undermining the applicant’s business development plans with regard to that trade mark... Read more>> 

Next round in “KORNSPITZ battle”: CJEU specifies requirements for trade mark genericism
On 6 March 2014 the Court of Justice of the European Union (CJEU) published its eagerly awaited decision on the alleged genericism of the Austrian trade mark “KORNSPITZ”. With this judgment the court specified the standards which apply for the loss of the distinctive character of a trade mark. The court held the perception of the end users, and not of the traders, is decisive... Read more>>

A further step towards the protection of perfumes by copyright
The perfume industry has always used trade marks to protect their creations. However, due to the progress of the technical equipment in the field of smell analysis, the infringers not only copy the brand names. They also copy the aesthetic intellectual creation: the fragrance of the perfume itself. Even worse, they sell this fragrance under another brand name. In such a case, trade mark law is useless. In Switzerland, the courts have not yet examined whether a fragrance of a perfume can be protected by copyright... Read more>>

3D printing: predictions for the fashion industry
As 3D printed fashion looks set to become an affordable reality, and it becomes conceivable that consumers will one day scan objects or download design files and print clothing and accessories at home, we look at the likely impact on the fashion industry in terms of challenges to its intellectual property rights and ways in which it looks likely to compete in a brave new fashion world...
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Brand under fire
As far back as the Roman Empire, it was recognised that once a reputation has been damaged it can be very hard to regain. Socrates’ wisdom applies as much to brands as to individuals, but working out how to apply it in the online world is particularly challenging. The ease of posting content online means that every brand will face criticism of one kind or another from time to time. Identifying which attacks matter and require a response is crucial... Read more>> 

Coloured shapes and trade mark protection: the Orange case
It is relatively common that a trade mark attorney is confronted with the enquiry whether the colour per se and colour combination trade marks are registrable under the law of his or her jurisdiction. In Europe that is theoretically possible under the interpretation of the Court of Justice of the European Union, e.g. in the Libertel and Heidelberger Bauchemie cases. In particular, a colour per se is registrable whenever it is capable of distinguishing the goods or services... Read more>> 

Industry news
News in Brief: Paid promotions: the next frontier of social media marketing?; The maker product movement - big brands get involved... Read more>> 

Comparative advertising – my brand is better than yours
Comparative advertising is a well-known marketing technique. Because in such comparisons one brand always comes out on top, this type of advertisement regularly generates controversy... Used in an unfair manner, it can be detrimental to competitors and have an adverse effect on consumer choice. Comparative adverts must find a balance between these conflicting interests... Read more>>

Brands in the social age of transparency
The uncomfortable truth for some is that brands are made differently now. In the past, brand teams could carefully craft their messages, pay to influence their audiences, and control their prized assets.  It was what you said, not what you did, that mattered. Because customers couldn’t compete with TV adverts or billboards – they had no voice. But today it’s the individual that has the power to make or break a brand in real-time... Read more>>

Brand Watch
Goods in transit; Anti-trafficking campaing; UAE - New draft anti commercial fraud law moves closer; Fast track examination of trade marks; EU enforcement database; OHIM announcement regarding scope of protection of black and white trade marks... Read more>> 

Upcoming international brand events
Our pick of international key industry events. Read more>>




Lorraine Anne Tay

Joint Managing Partner

Call me on: +65 6534 5266
Nick Aries

Nick Aries

United States

Call me on: +1 415 231 6568