Recent publications

This item has been posted on Jeremy's behalf. He is on holiday today.

The September/October issue of the World Trademark Review, published bimonthly by Globe Business Publishing, leads with a cover story by staff writer Liz Rutherford-Johnson on the management of the Gallo winery intellectual assets. Other features include a critical analysis by the IPKat's friend Ethan Horwitz and Ethan's colleague at King & Spalding Jill Wasserman on the US trade mark dilution litigation over BUKHARA (ITC v Punchgini). This Second Circuit case is under appeal. Ethan and Jill - who acted for ITC - think it's wrongly decided and that, if it's right, the US is in breach of its international obligations in respect of the protection of famous marks. This blogger, who thinks the decision is right, awaits the appeal with interest. Kenyon & Kenyon, who acted on the other side, unsurprisingly think so too.

Details of the latest issue here



Oh, dear, the Kat's a bit late with this one, because it has been out for a while now - it's the September issue of Informa's near-monthly Trademark World. So what's in it? Cover story is by Freshfields Bruckhaus Deringer's very own Giles Pratt, who discusses various diseases that afflict the well-being of the internet - domain name tasting, joy-riding, kiting (this bit of the IPKat hadn't heard that term before) and spying. For the uninitiated, kiting is a more advanced form of domain name tasting in which tasted domain names are recaptured as soon as they have been returned.

Other topics addressed in this issue include an insight by Peter Jennings (Cripps Harries Hall) into the much-discussed spat between KFC and the Tan Inn, a Yorkshire public house that persisted in using the term "Family Feast" to describe its Christmas luncheons, notwithstanding KFC's registration of that term for foods and restaurant services by the fast-food giant (see IPKat post here); also IPKat blogger Jeremy's friend and old colleague Carina Badger (Macfarlanes) ponders over the eternal question in EU trade mark law: does an allegedly infringing act have to constitute "trade mark use" before it infringes a trade mark?

Details of this issue here


The September issue of Managing Intellectual Property, published ten times a year by Euromoney, carries a powerful question-and-answer session with former MARQUES chairman Tove Graulund, now manager of trade marks and legal at Zacco, Denmark. The theme of the discussion, "What is the future for fees?", is a subject on which Tove has long held strong views. In short, she believes in the following propositions:

* users of registration systems are entitled to expect those systems to be efficient and cost-effective;

* there is no justification for governments raking off trade mark and other IP fees to subsidise non-IP activities, while national offices are under-resourced and need funds to maintain and improve their services to users;

* creaming off surplus fee income from running the Office for Harmonisation in the Internal Market is not a solution to the general funding issues - especially since OHIM fees should be set by reference to its budgetary needs, not the need to make up the shortfall of investment in national offices.

The IPKat hopes that a future issue of MIP will carry an interview with some important person who is prepared to disagree with her publicly, since he hasn't yet seen a reasoned response to anything Tove has said and his little cat-sized brain can't fathom out why her views are supposed to be so heretical.

Details of this issue here


Last but by no means least is the early arrival of the October issue of the European Intellectual Property Review, published monthly by Sweet & Maxwell. Like Trademark World, the EIPR carries a piece on trade mark use - this time, by Hong Kong University's Po Jen Yap. It's quite fun to contrast the approaches taken by the respective authors if you get the chance: it is not surprising that a European practitioner, writing almost from the battlefield, and an Asian scholar examining the cases with clinical objectivity will take very different routes even when reaching broadly similar conclusions.

Above right: how about a companion journal for Trademark World, Patent World and Copyright World, but this time focusing on the needs and interests of infringers themselves? Would Patricia Loughlan (see below) approve?

Also in this issue is a highly provocative and well argued piece by Patricia Loughlan (University of Sydney) on the impropriety of the use of the word "theft" to describe acts of intellectual property infringement.