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GlobalReport
Africa Doug de Villiers, Interbrand Africa, on How to Build a
Global Brand
Asia-Pacific INTA Registers Asia-Pacific Office in Singapore
Europe How and When Brexit Will Affect Trademarks
July 2016
Recent Trademark Developments and INTA Activities in Eight Key
Regions
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INTA Global Report, July 20162
Africa 4 Asia-Pacific 8 China 12 Europe 15 India 22 Latin
America 26 Middle East 33 North America 35
This report was compiled with the help of INTAs Global Advisory
Councils, as well as the INTA Bulletin Committee and the authors
named herein. Please direct all comments/feedback to
[email protected].
The past quarter has included the best-attended Annual Meeting
in the Associations history, a vote by the UK to exit the European
Union that could have sweeping consequences for trademark own-ers,
and the registration of INTAs Asia-Pacific office in Singapore,
among other important develop-ments. As much of the business world
settles down for the summer, INTA will continue working hard to
follow up on the many tasks that have evolved from each of these
events.
With final registration numbers of 10,108, the 2016 Annual
Meeting in Orlando, Florida, was the largest and most diverse in
Association his-tory. The meeting drew more registrants from all
regions, particularly the Middle East/North Africa and Latin
America/the Caribbean, and included many fruitful meetings that
will help to build bridg-es with government officials and
associations. I hope youll read more about it in the pages ahead,
and dont forget to prepare for next years meeting in Barcelona,
Spain!
Just over one month after the Annual Meeting, the UK electorate
voted to withdraw from the European Union. Although the official
exit is likely to take at
least two years and there remain many uncertain-ties about next
steps, the long-term implications for trademark and IP ownersand
the business sector in generalare many. Inside, a dedicated team of
volunteers provides some initial thoughts and out-lines some of the
possible challenges ahead.
Finally, in March, INTA registered a branch of-fice in
Singapore, marking a new chapter for the Associations advocacy
efforts in Asia-Pacific. The office will help the Association to
further its Strategic Plan goals by supporting members in the
region and working with partners in government and industry to
promote trademarks and protect consumers. Headed by INTA Chief
Representative, Asia-Pacific Office, Seth Hays, the new office will
allow for increased focus on policy advocacy efforts throughout the
region. Find out more inside.
I hope you enjoyed the Annual Meeting as much as I did, and I
look forward to seeing many of you in November for the Leadership
Meeting in Hollywood, Florida. For now, read more about what weve
been doing and whats ahead in this issue of the Global Report!
Although every effort has been made to verify the accuracy of
items in this report, readers are urged to check independently on
matters of specific interest. The Global Report relies on members
of the Global Advisory Councils, INTA Bulletin Committee and INTA
staff for content but also accepts submissions from others. The
Global Report Editorial Board reserves the right to make, in its
sole discretion, editorial changes to any item offered to it for
publication. For permission to reproduce Global Report articles,
send a brief message with the articles name, volume and issue
number, proposed use, and estimated number of copies or viewers to
[email protected]. Global Report sponsorships in no way connote INTAs
endorsement of the products, services, or messages depicted
therein.
2016 International Trademark Association
Global Report StaffChief Executive Officer Etienne Sanz de
Acedo
Director, Marketing and Communications Sheila Francis
Strategist, Communications Content Eileen McDermott
Manager, CommunicationsJC Darn
EditorElizabeth Venturo
Graphic Designer Eric Mehlenbeck
INTA Officers & CounselPresident Ronald Van Tuijl, JT
International S.A.
President Elect Joseph Ferretti, PepsiCo, Inc./Frito-Lay,
Inc.
Vice President Tish L. Berard, Hearts On Fire
Vice President David Lossignol, Sandoz International GmbH
Treasurer Ayala Deutsch, NBA Properties, Inc.
Secretary Tiki Dare, Oracle
Counsel Maury M. Tepper, III, Tepper & Eyster, PLLC
Ronald van Tuijl (JT International S.A. Switzerland), INTA 2016
President
mailto:jdarne%40inta.org?subject=mailto: [email protected]
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3
September 12, 2016Cape Town, South Africa
Register Today! www.inta.org/2016Africa
Intermediaries and Rights Holders Working Together to Stop
Counterfeiting and Piracy
August 31, 2016Cape Town, South AfricaRegister
Today!www.inta.org /BASCAPAfrica
Future INTA/BASCAP Events:September 21, 2016 Beijing,
ChinaNovember 30, 2016 Brussels, Belgium
http://www.inta.org/2016Africahttp://www.inta.org/BASCAPAfrica
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INTA Global Report, July 20164
According to the United Nations Economic Commission for Africa
(UNECA), Africas real GDP growth is expected to increase by about
4.3 percent in 2016 and 4.4 percent in 2017, led by strong domestic
demand and by investment, particularly in infrastructure. Since
2010, the continents mobile broadband infrastructure has grown
rapidly, expanding from 2 percent in 2010 to almost 20 percent in
2014, and total mobile telephony penetration is over 70 percent.
Internet access is also in-creasing slowly. While these factors
represent a great opportunity for brand owners looking to expand
their businesses, the unique challeng-es presented by widely
varying regional and local legal frameworks and still-developing
infrastructures make it essential that brand owners be
knowledgeable and well-informed before finalizing a strategy.
Likewise, African companies looking to capitalize on recent success
by expanding outside of Africa must become well-versed in doing
business beyond African borders.
To better educate both African and foreign brand owners on these
topics, INTA will hold its first conference in Africa in Cape Town,
South Africa, from September 12, 2016. The INTA Bulletin spoke with
INTA CEO Etienne Sanz de Acedo to find out more about whats in
store for the conference, and why INTA members should not miss the
chance to learn from the experts about this quickly developing
market.
Why has the Association decided to target Africa? This
conference is an opportunity to reinvig-orate our presence in
Africa. Its a great way for African companies to better understand
the value of trademarks and brands, and also for foreign companies
to better understand the legal environment in Africa. We have an
impressive lineup of speakers from a variety of backgrounds,
including business people, branding experts, lawyers, and IP
offices, which makes the program especially appealing.
INTA has been focused on Africa for a while now, in part through
its Africa Global Advisory Council (AGAC), which is composed of
eight members based throughout the continent. The AGAC has been
helping to expand corpo-rate membership in Africa and advising the
Association on important policy issues. INTA presently has 236
total member organizations throughout Africa and 656 total
individual members. Annual Meeting attendance by reg-
istrants from the Middle East and Africa region increased by 11
percent this year compared to 2015, and we have an African
representative on the Board of Directors with the addition of
Brenda Kahari (B.W. Kahari, Zimbabwe). We will continue to focus
more on Africa in the coming months and years, and this conference
will serve as a starting point for increased engagement on the
continent.
Does INTA have close relationships with any of the regional IP
organizations in Africa? We have always had strong relationships
with the two most influential IP organizations on the continent:
the African Regional Intellectual Property Organization (ARIPO) and
the African Intellectual Property Organization (OAPI). We have been
fortunate enough to meet with them at every Annual Meeting, and
sometimes at Leadership Meetings as well. In the coming years we
look to enhance these interactions, and I thank the Director
Generals of both organizations, Paulin Edou Edou of OAPI and
Fernando dos Santos of ARIPO, for their close cooperation in the
past and going forward.
What policy activities has INTA pursued in Africa over the past
year or so? INTA provides advice and comments to national
governments in Africa on such issues as strengthening
anticounterfeiting laws. One ex-ample was INTAs suggestions to the
South Afri-can government that its draft National IP Policy provide
more emphasis on anticounterfeiting efforts, including stronger
deterrents, improved customs procedures and training, and seizing
counterfeit goods in transit. The Association also has joined
forces with national IP groups such as Nigerias Anti-Counterfeiting
Collabora-tion to host policy dialogues and conferences that
include government officials in order to focus on the issues of
importance to brand owners. In May of 2015, INTA submitted
com-ments to South Africas Department of Science and Technology on
the South Africa Protection, Promotion, Development and Management
of Indigenous Knowledge Systems Bill 2014.
We also weigh in on issues of concern glob-ally, such as plain
packaging legislation. The South African Health Department has been
particularly active in its consideration of plain packaging
requirements for tobacco products, and INTAs amicus brief to the
World Trade Organization in a dispute over Australias plain
packaging legislation appears to have given the
South African government reason to consid-er the overall
implications of imposing such restrictions.
Finally, INTA has submitted comments on trademark-related
legislation in places such as Uganda and Namibia, and also has an
ongoing project to benchmark the trademark office prac-tices on the
continentthe Trademark Office Benchmarking Database. Accessible to
both the offices and users on INTAs website, the information allows
for the comparison of the services provided to users and their
efficiency. This in turn encourages the offices to improve upon
current practice so as to not only facilitate the securing of a
trademark registration, but also to promote foreign investment in
Africa.
What do you hope to achieve with this conference? We want to
build upon our relationships with organizations like ARIPO and
OAPI, and Im also very interested in stronger interaction with
brand owners, especially companies such as Interbrand Africa (see
Interbrand Africa inter-view). Africa has a growing voice worldwide
and a growing middle class, which makes it very ap-pealing to
foreign companies, but also means that African companies have an
opportunity to grow outside of Africa. This conference is not just
about helping non-African companies to bring their business to
Africa; we also want to learn from African companies about their
businesses and where we may provide support to them as they
continue to expand abroad.
Global Report: Africa
Chair Lara Kayode, O. Kayode & Company, Nigeria
Council MembersBarbara Berdou, Berdou Attorneys, South
AfricaAnne-Marie Breek, Remgro Management Services Limited, South
AfricaBrenda Kahari, B.W. KAHARI, ZimbabweMadelein Kleyn, Oro Agri
Inc, South AfricaStephen Le Feuvre, Lysaght, Channel IslandsWilliam
Mansfield, ABRO Industries, Inc., United StatesUche Nwokocha, Aluko
& Oyebode, NigeriaStaff Liaison Bruce MacPherson, Chief Policy
Officer [email protected]
Africa Global Advisory CouncilINTA Conference to Examine the
Role of Brands in Building Africas Economy
http://www.inta.org/Advocacy/Documents/2015%20IR%20SA%20Bill.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IR%20SA%20Bill.pdfhttp://www.inta.org/Advocacy/Documents/2015/INTAWTOPlainPackagingAmicusBriefApril2015.pdfhttp://applications.inta.org/apps/tmobm/http://applications.inta.org/apps/tmobm/http://www.inta.org/INTABulletin/Pages/Interbrand_CEO_Africa_Interview_7111.aspxhttp://www.inta.org/INTABulletin/Pages/Interbrand_CEO_Africa_Interview_7111.aspxmailto:[email protected]
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5
Building Africa with Brands will feature a diverse group of
speakers from both IP and non-IP organizations. One of those
speakers is Doug de Villiers, CEO of Interbrand Africa, who, with
his colleague Charles Rupare, will be addressing the topic of Brand
Valuation: Your Brand May Be Your Biggest Asset; It Has More Value
Than You Think. Interbrand Africa, a brand valuation and strategic
branding com-pany, has been building its presence in Africa for 23
years. In the last ten years, it has grown from its office in
Johannesburg to open offices throughout East and West Africa as
well. Today, it is the largest strategic branding company on the
continent, says Mr. de Villiers.
Mr. de Villiers spoke more with the INTA Bulle-tin about the
opportunities and challenges of branding in Africa, why he is eager
to address INTA members in September, and how his business goals
are linked with the goals of trademark and IP professionals.
What is Interbrand, and what is your role with Inter-brand
Africa? Interbrand is the world leading strategic brand-ing
consultancy. As CEO of Interbrand Africa, my primary responsibility
is to look after the four offices that oversee the sub-Saharan
Afri-can regionJohannesburg, South Africa; Lagos, Nigeria; Nairobi,
Kenya; and Port Louis, Mau-ritius. My job is to promote the
understanding of brands as a business tool and a business asset as
opposed to the often traditional view of a brand as just a logo and
beauty parade for the business. I spend a significant amount of
time educating and informing clients. I work with them closely as a
business consultant to help them understand and recognize that they
have asset value in their brands, and thatlike any good business
assetthey need to nurture, invest in, and grow their brands to the
benefit of the business.
How exactly do you impart that to them? We usually have a simple
conversation with cli-ents to identify whether theyre using the
brand to drive up revenue. If branding and marketing is done
correctly, it will increase revenue but also drive down costs. In
fact, the power of a coherent brand set can have a massive impact
around the alignment of the organization. The conversations I have
tend to move beyond just the marketing departments, heads of
market-ing, or Chief Marketing Officersthe majority
of our conversations are in fact primarily with CEOs, CFOs, and
Chief Talent Officers.
How are trademarks and IP linked to what you do? The IP
conversation is very central to our orga-nization. Unfortunately, I
dont believe we yet have sufficient interaction with IP
practitioners. Our primary touch point is when were doing things
like name generation, securing URLs, getting names registered, and
the various elements of protecting IP. It tends to be a subset or a
result of what we do in our brand consulting and design capability.
But with the significant amount of time and attention we put into
the delivery of brand asset value, more and more organizations are
now recognizing that, not only is it their right to protect their
brand elements, but it is their obligation, since brands have
significant business value now and in the future. Various forms of
legislation put the onus on directors to protect the assets of a
company. Once businesses recognize that the brand is an asset, then
it is natural that the conversations we have are with the CEOs. We
explain to them that we can develop a great strategy, we can design
fantastic brands, and we can activate them beautifullybut if you
dont own that IP, or you cant protect that IP, you may be investing
in something for naught.
What are the unique challenges of protecting brands in Africa?
The conversation around getting organizations and brand owners to
understand the brand as a business asset is not unique to
Africathat is, in many respects, a global challenge. Of course,
more sophisticated markets do have a better understanding of
that.
What makes branding in Africa quite unique is that we have some
significant practical challenges around the quality of research and
information. This is from an international, continental, regional,
and local perspective. Too often the wrong questions are asked
of
the wrong people in those markets. On an international basis,
many people view Africa as one immense homogenous market, which it
is not. Its a significantly complicated geographic, religious,
cultural, and language market that absolutely has to be dealt with
as 53 different countries and subsets within that. So, one of our
biggest challenges is getting away from talking about Africa and
instead talking about the regions in country-specific terms.
Africa is abundantly diverse in terms of culture and language,
so when you look at brand development and how youre positioned in
var-ious markets, there are significant distinctions as a result of
religion, language, and individual preference. It can be really
complicated. You have 2,000-plus languages in Africa, so how do you
present brands that can be well-recognized and understood across
that broad market?
What drew you to participate in INTAs Building Africa with
Brands conference? Its part of our continual drive to educate and
open more stakeholders eyes to the potential of what could be
achieved through proper and strategic brand consideration and
manage-ment. We have strong interest in pushing beyond the
marketing community, because the biggest mistake we see is when
people believe that brand is a subset of marketing. It most
dis-tinctly and definitely is not. Brand is the respon-sibility of
the CEO at the top end. It determines the people the company
employs, the distribu-
InterviewDoug de Villiers, Interbrand Africa: Why Branding Must
Be Handled from the Top
Global Report: Africa
continued on page 6
If branding and marketing is done correctly, it will increase
revenue but also drive down costs.
http://www.inta.org/Programs/Pages/2016BuildingAfricawithBrands_Overview.aspxhttp://www.inta.org/Programs/Pages/2016Africa_Program.aspxhttp://www.inta.org/Programs/Pages/2016Africa_Program.aspxhttp://www.inta.org/Programs/Pages/2016Africa_Program.aspx
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INTA Global Report, July 20166
Global Report: Africa
NIGERIA: The Nigerian Trademarks Office: A Synopsis of 2015 to
Date2015 was a challenging year for the IP industry in Nigeria,
particularly regarding the Trademarks, Patents and Designs
Registry, which saw numerous changes in leadership and
policies.
April 2015: The Registrar of Trademarks,
Patents and Designs transferred out of office in 2015
In April 2015, Nima Salman-Mann, who had served as Registrar
from March 2012, moved to another ministry within the Federal Civil
Ser-vice. Her legacies include the execution of the online filing
platform as well as the introduction of the Industrial Property
Automated System
(IPAS) of filing at the Registry, which replaced the old manual
system.
May 2015: Appointment of new Registrar
In May 2015, Olusegun Adeyemi Adekunle Esq. became the new
Director of the Com-mercial Law Department and the Acting Reg-
BOTSWANA: Trademark Opposition Hearings No Longer AvailableOn
January 26, 2016, the Companies and Intel-lectual Property
Authority (CIPA) announced that it no longer has the capability to
conduct hearings for trademark oppositions and inval-idations. The
reason given was that due to re-cent restructuring, CIPA had lost
staff members essential to the operation of these hearings.
No time period has been given as to when CIPA will regain the
capability to conduct such hear-
ings. However, assurances have been made that an interim
solution is currently being in-vestigated. For the time being, CIPA
will receive and acknowledge the trademark oppositions and
invalidations lodged with their office.
As a long-term solution, CIPA intends to review the Industrial
Property Act of 2010 with a view to incorporating provisions for a
Trademarks Tribunal, not unlike that of its neighbor, South
Africa.
In the meantime, substantial delays can be expected.
Contributor: Brendon Ambrose Spoor & Fisher, Pretoria, South
Africa
Verifier: David Broodryk Remgro Management Services Ltd,
Stellenbosch, South Africa
In the News
tion channels it uses, the product the company makes, and yes,
ultimately, the marketing and messaging and the stakeholder groups
and communications to them. It involves critical stakeholders like
the legal and financial teams to ensure from a governance and due
diligence point of view, the brand assets are recognized and
protected. An audience like INTA members is exactly who we want to
be chatting to, to explain that youve got to push branding up the
corporate food chain to the very top.
What will attendees learn from your session on brand valuation?
My topic is going to talk about recognizing a brand as an asset and
not just a piece of IP or design. Well talk a little bit about the
process with respect to the responsibility of the orga-nization in
protecting, nurturing, and growing the brand as a business asset.
Well look at methodologies to value a brand, without get-ting
massively technical. The IS0 10668 [which is published by the
International Organization for Standardization and specifies the
proce-dures and methods of measuring the value of a brand] will be
available to look at, but the goal is to give the conference
attendees an idea that once brands are recognized as an asset there
are very clever and scientific tools in place to measure and allow
organizations to
make choices as to where to best invest and optimize in brands
beyond the governance point of view. Brand valuation gives
companies a very key performance metric around how you can measure
your brand on an ongoing basisdaily, weekly, monthlyas opposed to
every couple of years when theres some sort of brand crisis.
What are some of the key benefits of expanding a brand into
Africa? The world is in quite a strange place right now with
Brexit, but the one thing we recognize in Africa is that the more
things change the more they stay the same. Change is always a
variable. Working in any of the markets here does entail a strong
requirement for agility and flexibility. But for brand owners who
want to
grow their businesses in Africa, the single key business
attraction is that Africa is significantly unbranded. This means we
have a tremendous population concentrated in three to five key
economies that are all consumers. There is a very big age bubble
sitting in a young consum-er base that is now a growing middle
class in most of the key developing markets. No, it doesnt have the
level of disposable income or GDP youd see in the developed
markets, but you cant ignore the facts that there are so many
potential consumers that do in fact have money and have the same
aspirations when it comes to brand ownership that we have anywhere
else in the world.
There seems to be a high level of caution when bringing brands
to Africa, and this is often worsened by bringing brands to Africa
in the wrong way. I think people who are serious about growing
their business cannot ignore what is a relatively complicated
market in the greater scheme of things, but nonetheless a
significant market from a revenue and busi-ness growth point of
view. Weve certainly seen that those organizations that have moved
into Africa have done well if theyve brought their brands in
properly, have protected them well, positioned themselves correctly
in the market, and have proven that theyre here to stay.
Interview continued from page 5
For brand owners who want to grow their businesses in Africa,
the single key busi-ness attraction is that Africa is significantly
unbranded.
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7
Global Report: Africa
Regional ResourcesThe AnticounterfeitingCollaboration,
Nigeria
ARIPO
OAPI
Additional Resources on INTA.orgCountry Guides
Global Portal
International Opposition Guide
Madrid Agreement and Protocol
Trademark Cancellations Guide
Trademark Office Benchmarking
Geographical Indications, Certification Marks and Collective
Marks: An International Guide
Testimony and Submissions:
INTA Comments on South Africa Protection of Traditional
Knowledge Bill
ZIMBABWE: Trademark Amendment Bill Incorpo-rates Madrid
ProtocolThe National Assembly on April 14, 2016, approved the
General Laws Amendment Bill, which includes amendments to the
Trademark Act to incorporate Zimbabwes accession to the Madrid
Protocol. The Bill now must be prepared for submission to the
President and obtain his
assent. It will then be published in the Govern-ment
Gazette.
Upon publication it will become law, but the Ministry of Justice
will need to draft regulations to enable implementation of the
Protocol by the Registrar of Trade Marks Office. It is not clear
how long the process will take. Mean-
while, applications filed cannot be processed until the
regulations are published.
Contributor: Trademark Office Practices CommitteeAfrica
Subcommittee
Verifier: Sara Moyo Honey & Blanckenberg, Zimbabwe
istrar of the Registry of Trademarks, Patents and Designs.
Mr. Adekunle very quickly set to work, putting processes and
systems in place, a move that stakeholders applauded.
Mr. Adekunle continued to serve as the Registrar of Trademarks,
Patents and Designs until October 2015, when the Association of
Senior Civil Servants of Nigeria served a 21-day notice. The notice
stated that the members at the Registry were planning to embark on
an indefinite strike, which would have the effect of shutting down
the registry completely. The ma-jor demand of the Union was that
the Registry appoint the most senior Registry officer as the
Registrar of Trademarks, Patents and Designs. After serving as
Director/Acting Registrar for months at the registry, Mr. Adekunle
was transferred to the Ministry of Water Resources Department. Mr.
Adekunle graciously accepted his redeployment to Water Resources,
and, as a result, the imminent strike did not happen.
The news of his move was received with mixed feelings by
stakeholders and staff of the Reg-istrymany individuals were
concerned about the effects of such changes on the Registrys
operations.
October 2015: Chief Registrar Mr. William Amuga
With the exit of Mr. Adekunle, Mr. William Amuga, the most
senior officer in the Registry, became the Registrar, adopting the
title of Chief Registrar, Trademarks, Patents and De-signs
Registry; this appointment was welcomed by Registry staff.
Recent happenings at the Registry include:
The introduction of TSA by the federal government and its
effects on the online filing system: The Treasury Single Account
(TSA) is the new payment policy initiated by the federal
gov-ernment and requires all revenue generated by all ministries,
departments, and agencies
to be paid into a single account, for the sake of accountability
and tracking.
Limited resources as a result of the economic downturn: With the
fall in oil prices, the diminishing value of the naira, and several
hiccups associated with the workings of the TSA, the productivity
level of the Registry was affected as a whole.
Determined efforts of Registrar: Despite the above challenges,
Mr. Amuga has been persistent in his resolve to process
outstand-ing certificates. In a recent meeting with IP stakeholders
in Lagos, he pledged the following:
Timely publication of trademark journals;
The diligent and efficient administration of the IPAS and Online
filing systems; and
The issuance of outstanding certificates.
Despite the challenges and changes in leader-ship and economic
downturn of the country, we are optimistic that the present
leadership will also leave a positive legacy.
Despite the challenges and changes in leadership and economic
downturn of the country, we are optimistic that the present
leadership will also leave a positive legacy.
http://anticounterfeiting.com.ng/site/http://anticounterfeiting.com.ng/site/http://www.aripo.org/http://www.oapi.int/http://www.inta.org/CountryGuides/Pages/CountryGuides.aspxhttp://www.inta.org/globalportal/Pages/GlobalPortal.aspxhttp://www.inta.org/Oppositions/Pages/IOG.aspxhttp://www.inta.org/MadridProtocol/Pages/MadridProtocol.aspxhttp://www.inta.org/Cancellations/Pages/Cancellations.aspxhttp://applications.inta.org/apps/tmobm/http://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/INTABlog/Lists/Posts/Post.aspx?ID=175http://www.inta.org/INTABlog/Lists/Posts/Post.aspx?ID=175
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INTA Global Report, July 20168
INTAs decision to register a branch office in Singapore in March
marks a new chapter for the Associations advocacy efforts in
Asia-Pacif-ic. The office will help the Association to further its
Strategic Plan goals by supporting members in the region and
working with partners in gov-ernment and industry to promote
trademarks and protect consumers.
Positioned geographically in the center of the region that
stretches from Australia and New Zealand in the south to Japan and
South Korea in the north, Singapore operates as a business hub that
will allow INTA to more easily liaise with members and government
officials throughout the region. Singapore is also an IP- and
business-friendly city. In its Doing Business 2015 report, the
World Bank ranked Singapore first out of 189 economies for ease of
doing business, and in its Global Competitiveness Report 20132014,
the World Economic Forum ranked Singapore as having the best IP
protection in Asia.
The new office will allow for increased focus on policy advocacy
efforts in Asia-Pacific, led by INTA Chief Representative,
Asia-Pacific Office, Seth Hays. Mr. Hays will work with
organiza-tions such as the ASEAN IP Association and
the ASEAN Working Group on IP Cooperation to help strengthen the
IP and business econo-mies in Asia-Pacific. He will also work
closely with governments and non-IP organizations in the region to
support the harmonization of trademark laws, as ASEAN Member States
continue to integrate into a prosperous eco-nomic community.
The Asia-Pacific office leaves the Associa-tion well-positioned
to support trademark owners, policy makers, and other stakehold-ers
throughout the region as it tackles new opportunities and
challenges posed by the future, said Mr. Hays.
INTAs First Unreal Campaign in Asia Takes Place in the Lion
CityOn March 4, 2016, INTAs Unreal Campaign visited the Nanyang
Girls High School in Singa-pore, for the first Student Engagement
Session in Southeast Asia since the campaigns launch in 2012.
Nanyang Girls High School, which was founded almost a century
ago in 1917, is consistently ranked as the top secondary school in
Singa-pore. Notable alumni include the late former First Lady of
Singapore, Ong Siew May, as well as the only woman who currently
holds the status of full minister in the Singapore Cabinet,
Grace Fu Hai Yen. The presentation was held in the Siew May
auditorium and was attended by approximately 400 students. The
presentation was delivered by Zaheera Hashim, a Senior Counsel,
Procter & Gamble, as well as Low Pei Lin and Gloria Goh,
partners of the Intellectual Property Practice of Allen &
Gledhill LLP.
Ms. Low and Ms. Goh presented on the basic legal aspects of
trademark protection and trademark enforcement measures. As part of
the presentation, the students were shown vid-eos produced in
Southeast Asia by the Unreal Campaign and seemed engaged and
enthusi-astic about the ideas presented. The students
also enjoyed a quiz where they compared real and unreal products
and voted for which prod-ucts they thought were real and which were
counterfeits. Overall, it was a very successful event and hopefully
there will be more Unreal events in Singapore soon.
For more information on the Unreal Campaign, contact INTAs
Campaign Coordinator, Laura Heery at [email protected].
Inaugural INTA-BASCAP Workshop Identifies Solutions and Trends
in Anticounterfeiting PracticesOn March 2 in Singapore, INTA and
the Inter-national Chamber of Commerce (ICC) Business Action to
Stop Online Counterfeiting and Piracy (BASCAP) launched the first
in a series of workshops titled Intermediaries and Rights
HoldersWorking Together to Stop Counterfeit-ing and Piracy. The
series is focused on the pressing trends and priority issues
affecting brand owners in the area of anticounterfeiting.
INTA CEO Etienne Sanz de Acedo opened the workshop by citing the
most recent Organi-sation for Economic Co-operation and Devel-
Global Report: Asia-Pacific
Co-ChairsMona Lee, Hanol Law Offices, South Korea
Kowit Somwaiya, LawPlus Ltd., Thailand
Council MembersLouis Chan, Procter & Gamble, SingaporeDaniel
Greif, Spruson & Ferguson, SingaporeMarion Heathcote, Davies
Collison Cave, AustraliaPatsy Lau, Deacons, Hong KongAndy Leck,
Baker McKenzie, Wong & Leow, SingaporeShunji Sato, TMI
Associates, JapanThomas Treutler, Tilleke and Gibbins, VietnamJay
Young-June Yang, Kim & Chang, South KoreaChristopher Young,
Minter Ellison Rudd Watts, New ZealandStaff LiaisonSeth Hays, Chief
Representative Officer: Asia-Pacific [email protected]
Asia-Pacific Global Advisory Council
Association Activities
INTA Registers Asia-Pacific Branch Office in Singapore
Pei Lin LowAllen & Gledhill LLP, Singapore
INTA Chief Representative, Asia-Pacific Office, Seth Hays
http://www.inta.org/Advocacy/Pages/UnrealCampaign.aspxmailto:[email protected]:[email protected]
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9
Global Report: Asia-Pacific
This represents the first time in INTAs history that a full
committee has been dedi-cated to the topic of designs.
Peter DernbachWinkler Partners, Taipei, Taiwan
opment (OECD) studies on the size of global trade in
counterfeits, which was estimated at approximately USD 250 billion
in 2009. Many estimates, he said, indicate that this number may now
be around USD 2 trillion.
BASCAPs Deputy Director Bill Dobson, citing the March 2015
BASCAP white paper on inter-mediaries, said that the problem of
counter-feiting and piracy has grown hand-in-hand with the
globalizing economy and it is evident that counterfeits account for
a growing proportion of international trade.
Intellectual Property Office of Singapore Direc-tor of Legal,
Trina Ha, delivered the keynote
ad-dress and highlighted the relationship between the trade in
counterfeit goods and developing economies.
Discussion Points The discussions focused on the need for
cross-border cooperation and collaboration to prevent the movement
of illicit goods; the need for landlords to play a role in
improving the marketplaces safety by preventing the use of their
premises for the sale of counter-feit goods; and tackling
counterfeits online, among other topics.
Panelists in the discussion on cross-border cooperation noted
that for counterfeiters, trade
in these illicit goods is a business. To fight these illegal
competitors, the panelists agreed on holding intermediaries, such
as shippers, to high standards, including implementing strong Know
Your Customer (KYC) practices.
This first INTA-BASCAP workshop provided brand owners,
government, and intermediaries a plat-form to discuss issues,
network, and learn best practices. INTA and BASCAP are looking
forward to organizing four more workshops for the re-mainder of the
year in Africa, China, Europe, and Latin America. The next one will
be held in Cape Town, South Africa, on August 31, 2016.
Grand Designs: A Report from the 2016 INTA-AIPPI Joint Designs
ConferenceINTA and the International Association for the Protection
of Intellectual Property (AIPPI) held a joint conference, Designs:
Into the Future, in Singapore from February 29 to March 1. The
conference highlighted how both design protec-tion and the
Asia-Pacific region are increasingly important for brand owners,
and in-house speakers from around the globe provided key practice
tips and insight.
INTA CEO Etienne Sanz de Acedo welcomed the more than 200
participants and reiterated INTAs commitment to serving this
growing
discipline by elevating the Associations Designs Committee to
full committee status.
This represents the first time in INTAs history that a full
committee has been dedicated to
the topic of designs. David Stone (Simmons & Simmons, UK),
chair of the INTA Designs Committee and a co-chair of the
INTA-AIPPI Designs Conference, also outlined the Designs Committees
planned work for the coming term. Read the full report in the INTA
Bulletin.
ASEAN IPA Meeting Looks AheadFrom March 4 through March 6, in
Kuala Lumpur, Malaysia, the Association of Southeast Asian Nations
Intellectual Property Association (ASEAN IPA) conducted its Annual
Meeting and Conference, focusing on the future of IP in the region.
INTA was honored to be invited as an observer, represented by
Trademark Office Practice Asia Pacific Subcommittee Chair, Mr.
Louis Chan (P&G, Singapore) and INTA Asia-Pacific Office Chief
Representative, Mr. Seth Hays.
President Chew Phye Keat opened the event by calling for an
ASEAN voice in the role of IP development in the region, citing the
numerous trends in IP development, such as the recent drafting of
the next ASEAN intellectual property rights (IPR) action plan to
recently negotiated trade agreements.
Participating in the event were representa-tives from several IP
offices, such as those in Malaysia, Cambodia, Laos, Myanmar,
and Singapore. Mr. Abdul Aziz Ismail of the Malaysia IP office
spoke in detail on the re-cently drafted IPR Action Plan for the
ASEAN Working Group on IP Cooperation (AWGIPC) for 20162025. He
mentioned four strategic goals: (1) building a robust IP system
through IP offices and IP infrastructure; (2) contrib-uting to the
ASEAN Economic Community; (3) promoting asset creation and
traditional knowledge and geographical indications; and (4)
expanding an inclusive IP ecosystem. Most notably, industry groups
play a major role in ex-panding the IP system, and the AWGIPC plans
more interaction with users of the IP system.
Following Mr. Ismails comments was the presentation of Mr.
Ignacio de Medrano, Project Leader for the EU-ASEAN Project on the
Protection of Intellectual Property Rights (ECAP III) program. He
noted that the numer-ous programs initiated by ESCAP III, such as
ASEAN TMview, have been successful in using technology to link IP
offices and create value for users, who can easily search all
connected
offices in the region for trademark registrations through one
website. He noted that IP offices in the region are becoming
digitally mediated institutions.
INTA joined an afternoon panel on emerging issues. Mr. Louis
Chan spoke on the recent trends of plain packaging in the region,
joining other panelists who discussed the emerging issues of
indigenous rights, the Trans-Pacific Partnership (TPP), and the
Hague Agreement.
The day concluded with an update on the IP law drafts in Myanmar
and the business per-spectives of counterfeit trade in the
region.
This event was a fantastic forum to hear ASEANs leading IP users
group discuss the major topics in the region and to mix with
lead-ing government officials.
http://www.inta.org/INTABulletin/Pages/Printable_Version_7105.aspxhttp://www.asean-tmview.org/tmview/welcome.html
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INTA Global Report, July 201610
JAPAN: Changes to Trademark and Patent Prosecution Procedures
The Japanese Patent Office (JPO) recently announced some minor
changes to both trade-mark and patent prosecution procedures that
are aimed at simplifying prosecution for appli-cants, both foreign
and domestic. The changes, applicable to both trademarks and
patents, relate to extensions of time for responding to provisional
refusals during examination.
At present, the initial time period for respond-ing to a
provisional refusal of a trademark application is 40 days for
domestic applicants and three months from date of issue for
appli-cants from overseas. This distinction between foreign and
national applicants, followed by the JPO for many years for both
trademark and patent prosecution, recognizes the inherent
difficulties centering on communication and translation faced by
applicants from overseas.
Furthermore, this period can be extended for one month only by
foreign applicants without the need for a substantial reason.
However, the
announced change will also make this option available to
domestic applicants.
The major change to this policy as far as foreign applicants are
concerned is the introduction of a procedure to file for a two-
month extension, again, without the need for a substantial
reason. This can be done even if a request for a one-month
extension has already been filed. Further, and more importantly,
the request can be filed within this new two-month extension period
even if the original deadline for replying has expired, that is,
even after the initial 40-day or three-month period has passed.
This can be seen as a vastly improved
practice in many cases involving overseas applicants. However,
this belated request pro-cedure is not available for appeal
cases.
The JPO has also stated that this procedure for requesting an
extension after a deadline has expired will be subject to a fee,
yet to be quan-tified, and somewhat more expensive than the present
extension fee. It is also expected that Japanese associates will
apply a concomitant professional fee to carry this out.
This new policy will make it easier for foreign attorneys and
domestic associates to deal with last minute instructions,
particularly in view of the time needed for translation or the
major time differences between Japan and countries in the Western
hemisphere. The policy will come into effect on April 1, 2016.
In the News
Global Report: Asia-Pacific
This can be seen as a vastly improved practice in many cases
involving overseas applicants.
Contributor: James HughesS. Soga & Company, Tokyo, Japan
Verifier: Shoichi Okuyama Okuyama & Sasajima, Tokyo,
Japan
Additional Resources on INTA.orgCountry Guides
Global Portal
International Opposition Guide
Madrid Agreement and Protocol
Trademark Cancellations Guide
Geographical Indications, Certification Marks
and Collective Marks: An International Guide
Testimony and Submissions:
INTA Comments to the Draft Certification Mark Regulations of the
Kingdom of Cambodia
INTA Comments to IP Australias Proposals to Streamline IP
Processes and Support Small Business
Regional ResourcesASEAN
TMview
TM5 Website
Trademark Questions and Answers
QuickStart Trademark Chart
Providing quick hit answers to 18 frequently asked trademark
questions across more than 120 jurisdictions.
Visit www.inta.org/Quickstart
http://www.inta.org/CountryGuides/Pages/CountryGuides.aspxhttp://www.inta.org/globalportal/Pages/GlobalPortal.aspxhttp://www.inta.org/Oppositions/Pages/IOG.aspxhttp://www.inta.org/MadridProtocol/Pages/MadridProtocol.aspxhttp://www.inta.org/Cancellations/Pages/Cancellations.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/Advocacy/Documents/2015/2015%20Cambodia%20Cert%20Mark%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015/2015%20Cambodia%20Cert%20Mark%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015/2015%20Cambodia%20Cert%20Mark%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IP%20Australia%20Streamline%20IP%20Process%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IP%20Australia%20Streamline%20IP%20Process%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IP%20Australia%20Streamline%20IP%20Process%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IP%20Australia%20Streamline%20IP%20Process%20Comments.pdfhttp://www.asean.org/http://www.asean-tmview.org/http://tmfive.orgwww.inta.org/Quickstart
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Global Report: Asia-Pacific
Coming In November 2016: INTAs New Enforcement Guide!In INTAs
forthcoming searchable guide, youll find information on the many
facets of trademark litigation, including:
www.inta.org/MemberResources
pre-filing requirements claims for infringement of
registered
and unregistered marks
emergency measures early resolution of litigation evidence
trials and oral hearings judgment and final orders post-judgment
issues costs of litigation remedies
http://www.inta.org/MemberResources
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INTA Global Report, July 201612
The China Subcommittee of the Trademark Office Practices
Committee (TOPC) had the honor of receiving an informative update
from representatives of the China Trade-mark Office (CTMO) in
attendance at the INTA Annual Meeting in Orlando, Florida, in May.
The CTMO introduced a new trademark examination quality management
system currently being tested and deployed to ensure high quality
and consistent examination of trademark applications.
It is no secret that the CTMO receives the worlds most trademark
applications, topping out at nearly 2.9 million in 2015.
Additionally, subsequent to the enactment of the amended Trademark
Law in 2013, the CTMO is required by statute to examine
applications within nine months. The high volume of applications
and the short time period for examination led to the formation of
the Trademark Examination Coop-eration Center in 2014, which
handles most of the initial trademark examinations.
The examiner team of the Cooperation Center is built on the
basis of examiners of the Tongda Trademark Service Center who were
recruit-ed and trained in 2008. New hires will be recruited in the
following years to cope with the increasing applications. In order
to guarantee the examination quality, the CTMO focused its efforts
and staff on guidance, supervision, and training for Cooperation
Center examiners.
A team within the CTMO is charged with quality control. The
quality management teams goals are to reduce error rates, identify
systemic issues, and evaluate and improve the overall
quality of examinations. The CTMO is using an in-process
sampling method, whereby a sub-set of applications are inspected,
and errors notified to examiners for improvement. Senior inspectors
conduct the process independently, while difficult cases are
discussed at depart-ment meetings.
Reports are developed on a monthly basis to identify common or
recurring issues to be ad-dressed. The in-process sampling system
has been in formal use since November 2015.
The CTMO representative also indicated that software is being
developed to help manage the process, particularly time management
software.
Scott Palmer (Sheppard Mullin, China), TOPC China Subcommittee
Chair, said of the pro-gram, This quality management initiative is
a noteworthy and commendable effort by the CTMO to enhance the
consistency, transparen-cy, and accountability of trademark
examina-tion practices. Its initial results are encourag-ing, and
we expect that the initiative will yield noticeable improvements as
it is expanded to cover the work of all CTMO examiners in the
Global Report: China
The CTMO receives the worlds most trademark applications,
topping out at nearly 2.9 million in 2015.
Co-ChairsLi Yongbo, Unitalen Attorneys At Law, ChinaJing He,
Anjie Law Firm, ChinaCouncil MembersGang Bai, Wan Hui Da
Intellectual Property Agency, ChinaGeorge Chan, Simmons &
Simmons (Beijing) Intellectual Property Agency Company Limited,
ChinaDing Xianjie, King & Wood Mallesons LLP, ChinaZhen Feng,
Hogan Lovells International LLP, ShanghaiKaren Law, Digital Domain
Holdings Limit-ed, Hong Kong SAR, ChinaFei Liao, King & Wood
Mallesons LLP, ChinaChunxiang Shen, NTD Patent & Trademark
Agency Ltd., ChinaFang Zhou, China Telecom, ChinaIris Chao, Johnson
& Johnson, ChinaScott Palmer, Sheppard Mullin Richter &
Hampton LLP, ChinaSam Xu, Tencent Technology (Shenzhen) Co., Ltd.,
ChinaStaff LiaisonSeth Hays, Chief Representative, Asia Pacif-ic
Office, [email protected]
China Global Advisory Council
INTA Submits Comments to the State Council Legis-lative Affairs
Office
On March 21, INTAs Unfair Competition Com-mittee submitted
comments to the State Coun-cil Legislative Affairs Office (SCLAO)
in China on the current draft revision of the Anti-Unfair
Competition Law. INTA believes that this draft legislation will
further protect consumers in Chi-na and discourage unfair business
practices.
Although INTA supports most of the amend-
ments proposed in the draft, there were certain provisions that
INTA encourages SCLAO to consider, including:
1. SCLAO should consider provisions that protect translation and
transliteration of certain commercial marks;
2. The definitions contained in the Anti-Un-fair Competition Law
should align with the Trademark law of the Peoples Republic of
China;
3. The threshold for a finding of unfair com-pletion should be a
likelihood of causing market confusion and not actual confusion;
and
4. SCLAO should consider a Miscellaneous Provision to the
proposed law.
For more information, please read the full comments submitted by
INTA or contact INTAs Asia-Pacific Chief Representative, Seth Hays,
at [email protected].
Association Activities
INTA Briefed on New China Trademark Office Quality Management
System
coming months. WeINTA and the TOPC China Subcommitteewill be
watching the next phase of this initiative with great interest
indeed.
mailto:[email protected]://www.inta.org/Advocacy/Pages/Testimony.aspxhttp://www.inta.org/Advocacy/Pages/Testimony.aspxmailto:[email protected]
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Global Report: ChinaINTA Participates at EU-China Online
Counterfeiting Conference On June 2, INTA member Li Yongbo
(Unitalen, China), Co-chair of the China Global Advisory Council,
and INTAs Asia-Pacific Chief Represen-tative Seth Hays,
participated in the EU-China Seminar on Online IP Protection in
Beijing, China. China Ministry of Commerce Vice Min-ister Feng
Aiqing and EU Delegation to China Ambassador Hans Dietmar
Schweisgut gave opening remarks.
Mr. Feng noted the tremendous advances that China has made in
all areas of IP, pointing specifically to the fact that
IP-intensive indus-
tries attract more funding than other sectors. More R&D and
global functions are coming to China as a result, he said, noting
that the Chinese and European economies are highly complementary.
By the year 2020, the goal for China-EU trade should hit USD 1
trillion.
Mr. Feng noted that the State Council is in the process of
drafting a new e-commerce law, and that the National Leading Group
on the Fight against Counterfeiting has been fo-cused on online
counterfeiting for two years as a top priority.
During the substantive program, Mr. Li Yongbo
spoke on the practical aspects of notice and takedown
procedures.
The day of discussion outlined key IP issues in China, which
boasts the worlds largest online marketplace. Attendees noted the
high quality of speakers, from government and associa-tions to
online sales platforms and European brand owners.
INTA has been a leader on the issue of online counterfeiting in
China, having engaged gov-ernment officials and online sales
platforms for several years. (See report from 2014 here.)
Doing Business for the First Time in China? An INTA Resource
Especially for Small and Medium-Sized Trademark Owners
Expanding Your Trademark into China: An INTA Guidebook for Small
and Medium Enterprises is a new publication compiled by a team of
expert practitioners serving on the Anticoun-terfeiting Committees
China Subcommittee. The guidebook contains useful background
information for companies contemplating entry into the Chinese
market.
It opens with some insightful statistical data covering the
global counterfeiting industry and includes a primer on registering
trademarks in China, and it covers time limits for examination and
oppositions (which were imposed under
Chinas revised 2014 trademark law) and bad-faith trademark
filings.
The Guidebook also covers enforcement basics, ranging from
customs enforcement to administrative proceedings and including
civil and criminal enforcement. A Best Practices section provides
practical tips that have been
successfully utilized by members to establish trademark
protection programs, including infor-mation on market
investigations. This section also provides strategies that will aid
in deter-mining a trademark owners needs, whether it pertains to an
enterprise just entering the Chi-na market, one that has been in
the market for several years, or is a mature entrant needing a
robust anticounterfeiting program.
Corporate trademark owners may find the Guidebook useful in
justifying the need for trademark registration protection and an
anticounterfeiting program in China. Trademark practitioners can
also use the document to train clients and others new to
trademarks.
Click here to access and download the Guide-book.
Supreme Peoples Court Rules Use of a Mark on OEM Product for
Export Did Not Infringe Chinese Mark On November 26, 2015, Chinas
Supreme Peoples Court issued a final decision in a case brought by
Focker Security Products Interna-tional Ltd. (Focker Security)
against Original Equipment Manufacturer (OEM), Ya Huan Lock
Industry Co. Ltd, in which Focker Security alleged that Ya Huans
use of the trademark PRETUL on locks destined for export only was
infringing its Chinese national trademark regis-tration for
PRETUL.
Ya Huan was manufacturing the locks for Truper Herramientas S.A.
DE C.V. (Truper), the owner of the mark PRETUL (Trademark
Registration No. 770611), used on locks, and PRETUL with oval shape
design (Trademark Registration No. 2783496), both registered in
Mexico. Truper asked Ya Huan Lock Industry
Co. Ltd. (Ya Huan), based in Zhejiang, China, to manufacture
locks bearing the PRETUL trade-marks for export to and distribution
in Mexico. Focker Security is a Hong Kong company that had
registered the trademark PRETUL with oval shape design (Trademark
Registration No. 3071808) in Class 6 in Mainland China.
Focker Security originally sued Ya Huan in Ningbo City, Zhejiang
Province, China, for trademark infringement. The Ningbo Inter-
mediate Peoples Court made a first instance judgment that Ya
Huan had infringed Focker Securitys mark and ordered Ya Huan to
cease using the PRETUL with oval shape design mark on its products
immediately. The court also awarded compensation of RMB 50,000 (USD
7,735) to Focker Security, but ruled that the use of the PRETUL
word mark did not consti-tute trademark infringement (Court Docket
No. 2011ZYZCZ No. 56). The court deemed that,
In the News
Lisa SmithAlticor, Inc., Ada, Michigan
TM Owner The Mark Reg. No. Class CountryFocker Security 3071808
6 China
TRUPER S.A. DE C.V. 2783496 8 Mexico
770611 6 Mexico
Corporate trademark owners may find this Guidebook useful in
justifying the need for trademark registration protection and an
anticounterfeiting program in China.
continued on page 14
http://www.inta.org/INTABlog/Lists/Posts/Post.aspx?ID=74#.V1PuTPl96M8http://www.inta.org/TopicPortal/Documents/INTA%20SME%20Anticounterfeiting%20Toolkit%20for%20Chinese%20Trademark.pdfhttp://www.inta.org/TopicPortal/Documents/INTA%20SME%20Anticounterfeiting%20Toolkit%20for%20Chinese%20Trademark.pdfhttp://www.inta.org/TopicPortal/Documents/INTA%20SME%20Anticounterfeiting%20Toolkit%20for%20Chinese%20Trademark.pdf
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INTA Global Report, July 201614
Additional Resources on INTA.orgChina Microsite
China Bulletin
Country Guides
Geographical Indications, Certification Marks and Collective
Marks: An International Guide
International Opposition Guide
Trademark Cancellations
Madrid Agreement and Protocol
Testimony and Submissions:
INTA Comments to the Hong Kong Panel on Health Services on
Legislative Proposals to Strengthen Tobacco Control
Regional ResourcesChina Trademark Association
State Administration for Industry and Commerce
Global Report: China
although the products were exported to Mexico without any
distribution in China, the usage of PRETUL with oval shape design
on locks, packages, and instructional guides should be regarded as
trademark use under Chinas Trademark Law. Both parties disagreed
with the courts judgment and appealed.
Zhejiang Provincial Higher Peoples Court heard the appeal in
2012, and disagreed with the first instance court. The Zhejiang
Court re-voked the first instance judgment by deeming the usage of
both the PRETUL word mark and the PRETUL with oval design mark
infring-ing and increased compensation to Focker
Security from RMB 50,000 to RMB 80,000 (USD 12,380) (Court
Docket No. 2012ZZZZ No. 285). Both the first instance court and the
second instance court made their judgments in accordance with
Article 52(1) of the Trademark Law of China.
Ya Huan appealed to the Supreme Peoples Court (SPC) for review.
On November 26, 2015, the SPC revoked both the first and second
instance judgments (Court Docket No. 2014MTZ No. 38). The SPC said
that the primary purpose of a trademark is to distinguish the
source of the commodity or the service, and, in this case, Ya Huan
had clearly
indicated that the lock products were for Truper in Mexico. The
SPC ultimately ruled that the use of the PRETUL trademarks on the
product labels did not constitute substantially signifi-cant
trademark use as defined by Article 52(1) of the Trademark Law of
China.
First Sound Mark Receives Preliminary ApprovalOn February 13,
2016, the first sound mark application was preliminarily approved
and published for opposition. It was filed by China Radio
International for the opening sound of its program. China started
to accept applications for sound marks after May 1, 2014, when the
newly amended Trademark Law came into effect. As of the end of
January 2016, the State Administration for Industry and Commerce of
the Peoples Republic of China (SAIC) has ac-cepted 450 filings for
sound mark applications.
As provided by the Trademark Law, any mark consisting of words,
devices, letters, numbers, three-dimensional marks, combined
colors, sounds, etc., or the combination of these fac-tors, that
can distinguish the goods of a natural person, legal person, or
other organization from the goods of others, can be applied
for.
The SAIC also issued the Criteria of Formality and Substantive
Examination of Sound Marks (Trial Edition) as the guideline for
examination and approval of sounds marks. This states that a sound
mark should be examined by the same
criteria as visible marks, which are focused on whether or not
the mark violates the prohibitive articles of the Trademark Law,
whether or not the mark is inherently distinctive, and whether or
not the mark is similar to prior marks.
According to the Criteria, in substantive exam-ination, those
marks should be prohibited from registration if the marks are
identical with or similar to Chinas national anthem, military songs
or LInternationale and their rhythms, or related to religious music
or terrorism and violence so as to create unhealthy influence. The
marks will be deemed to lack distinctive-ness if they merely make
direct reference to the contents, consumers, and other features of
the designated goods or service, such as piano sounds used for
musical instruments,
the voices of children playing and laughing for babys milk
powder, or a dog barking or cat me-owing for pet foods. Marks will
also be found to lack distinctiveness if they are devoid of other
distinctive features, are too simple or have a common sound or
rhythm, such as a long and full musical composition, ordinary
slogan or catchphrase shouted by usual intonation, or a generic
industrial musical song or composition.
In practice, a sound mark can acquire dis-tinctiveness only
through long-term use, in that the sound mark should not be
approved for registration unless association has been established
among the consuming public between the mark and the providers of
the goods or service.
Contributor: Nikita XueHongFangLaw, Shanghai, China INTA
Bulletins Law & PracticeAsia Pacific Subcommittee
Verifier: Yu JieGuangdong Province High Peoples Court,
Guangzhou, China
Contributor: Guizeng LiuYuanhe Partners/Yuanhe Intellectual
Property Partners, Beijing, China Co-Chair, INTA Bulletins Law
& Practice Asia Pacific Subcommittee
Verifier: Lin XuTrademark Review and Adjudication Board (TRAB),
Beijing, China
As of the end of January 2016, the SAIC has accepted 450 filings
for sound mark applications.
In the News continued from page 13
http://china.inta.org/http://china.inta.org/bulletin.phphttp://www.inta.org/CountryGuides/Pages/CountryGuides.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/Oppositions/Pages/IOG.aspxhttp://www.inta.org/Cancellations/Pages/Cancellations.aspxhttp://www.inta.org/MadridProtocol/Pages/MadridProtocol.aspxhttp://www.inta.org/Advocacy/Documents/2015/2015%20HK%20Health%20Panel%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015/2015%20HK%20Health%20Panel%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015/2015%20HK%20Health%20Panel%20Comments.pdfhttp://www.cta.org.cn/http://www.saic.gov.cn/english/http://www.saic.gov.cn/english/
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Anna Carboni Redd Solicitors LLP, London, UK
Michael Hawkins Noerr Alicante IP, S.L., Alicante, Spain
Sheila Henderson Richemont International S.A., London, UK
Keith Howick Carpmaels & Ransford, London, UK
Jeremy Newman Rouse Legal, London, UK
INTA Brexit Rapid Response Group
Global Report: EuropeHow the Brexit Vote Will Affect Brand
Owners: A Q&A Guide
On June 23, 2016, the electorate of the United Kingdom of
England, Wales, Scotland and Northern Ireland voted to leave the
European Union by a majority vote of 51.9 percent to 48.1 percent.
This unprecedented decision will result in a period of uncertainty
for the busi-ness sector in general. IP rights holders and INTA
will be examining the implications over the months to come.
For this preliminary review of the potential im-plications, set
out below are answers to some of the immediate questions posed in
relation to Brexit.
When will the UK leave the EU? Nobody knows yet, but it is
likely to be at least two years away. The UK government first has
to formally notify the European Council of its intention to leave,
which Prime Minister David Cameron indicated in his resignation
speech should be done by his successor. Therefore, this will not
happen until potentially October 2016. However, others are pushing
for earlier notification. Formal notification will trigger a period
of exit negotiations between the UK and the EU, which will have a
two-year backstop date unless all the other EU Member States agree
that additional time is needed.
Do EU laws still apply in the UK?Yes. EU laws will continue to
apply in the UK until the UK officially leaves the EU. Therefore,
for example, the EU Trade Mark Regulation (EU) 207/2009 (as amended
by Regulation (EU) 2015/2424) and the Community Designs Regulation
(EC) 6/2002, as well as the various harmonizing directives, such as
the Trade Marks Directive (EC) 2015/2436 or the IP En-
forcement Directive (EC) 2004/48, all remain in full force and
effect. The UK government has an excellent track record for
ensuring that changes in IP legislation contain appropriate
transitional provisions to help brand owners and other IP
proprietors to adjust to any new regime. The UK trademark
profession, as well as INTA itself, will no doubt get involved in
the process at the relevant time, to ensure that this is the
case.
Do EU Trade Marks (EUTMs) still cover the UK? Yes. Until the UK
actually leaves the EU, EUTMs still have full force and effect
across the UK. EUTMs can currently and for the foreseeable future
still be invoked against national UK trademarks and infringing use
in the UK. But once the UK formally leaves the EU, newly filed
EUTMs will no longer cover the territory of the UK (subject to any
special extension arrange-ment that is made as part of the Brexit
deal).
What are the consequences for existing EUTMs once the UK
actually leaves the EU, and will protection in the UK be lost?
EUTMs will still cover the other (currently 27) Member States of
the European Union and will continue to be administered by the
EUIPO and governed by EU law. A mechanism will undoubtedly be
provided to allow the continued protection or extension of
pre-existing EUTMs to the UK post-Brexit. INTA will work with the
UK government and UK Intellectual Property Office (UKIPO) to ensure
that the process and transitional provisions to allow pre-existing
EUTMs to be re-designated as UK national marks will be as smooth
and easy as possible for rights holders. This should include
main-taining the original filing and priority dates, and/or any
relevant seniority claim.
How will the genuine use requirement be applied if the UK
element of an EUTM is split off?Where an EUTM has only ever been
used in the UK, the rump EUTM following Brexit may
eventually be vulnerable to revocation for non-use. It would be
expected, however, that the EUIPO and EU courts would take into
account use that took place in the UK while the UK was still in the
EU. Similarly, there may be non-use issues for UK spin-offs from
EUTMs that have not been used in the UK. Again, it would be fair to
brand owners if use elsewhere in the EU while the UK was part of
the EU could count in defense of a non-use attack, though such
details will need to be worked out.
Do I now need to file UK applications to cover the UK? From the
date on which the UK formally leaves the EU, it will probably be
necessary to file UK national applications (or designate the UK
through an International Registration), as EUTMs will no longer
cover the territory of the UK, unless some special arrangement is
set up whereby an EUTM can be extended to the UK
continued on page 16
Co-ChairsAnne Gundelfinger, Swarovski AG, LiechtensteinMichael
Hawkins, Noerr Alicante IP, S.L., Spain
Council MembersCarsten Albrecht, FPS Fritze Wicke Seelig,
GermanyJose Luis Arnaut, CMS Rui Pena & Arnaut, PortugalGerhard
Bauer, Gerhard Bauer, GermanyCatherine Boudot, Biofarma,
FranceGeert Glas, Allen & Overy LLP, BelguimLorenzo Litta,
Societ Italiana Brevetti, ItalyJeremy Newman, Rouse, United
KingdomGabrielle Olsson Skalin, Inter IKEA Holding Services S.A.,
BelgiumPetter Rindforth, Fenix Legal KB, SwedenDavid Stone, Simmons
& Simmons LLP, United KingdomZeeger Vink, Lacoste S.A.,
FranceVanni Volpi, GUCCI, ItalyVerena von Bomhard, Bomhard IP,
SpainStaff Liaison Christina Sleszynska, Chief Representative
Officer, [email protected]
Europe Global Advisory Council
http://www.inta.org/Press/Pages/Brexit_Media_Statement.aspxhttp://eur-lex.europa.eu/legal-content/EN/TXT/?uri=uriserv:OJ.L_.2015.341.01.0021.01.ENG&toc=OJ:L:2015:341:TOChttp://eur-lex.europa.eu/legal-content/EN/TXT/?uri=uriserv:OJ.L_.2015.336.01.0001.01.ENG&toc=OJ:L:2015:336:TOChttp://eur-lex.europa.eu/legal-content/EN/TXT/?uri=uriserv:OJ.L_.2015.336.01.0001.01.ENG&toc=OJ:L:2015:336:TOChttp://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32004L0048R(01)http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32004L0048R(01)mailto:[email protected]
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INTA Global Report, July 201616
Global Report: Europe
(rather like the way in which EUTMs currently extend to Jersey,
despite the fact that it is not part of the EU). Until then, filing
a national UK mark would simply duplicate protection. There should
be no disadvantage to not filing UK applications that equate to a
validly protected EUTM in the meantime.
What about International Registrations that desig-nate the EU?EU
designations of International Registrations should be treated in
the same way as EUTMs themselves, such that coverage of the UK will
be maintained. Thus, references to EUTMs in these Q&As apply
equally to International Registrations designating the EU.
How will cross-border enforcement work? What about existing
pan-EU injunctions?In theory, once the UK leaves the EU, the courts
in the UK will only have jurisdiction to grant injunctions and
damages awards in rela-tion to infringing activities within the UK;
and national EUTM courts elsewhere will no longer have jurisdiction
over infringing activities in the UK. However, it is not
inconceivable that some sort of reciprocal arrangement may be set
up whereby something close to the current system of pan-EU relief
may be available with respect to equivalent EU and UK trademarks.
This would no doubt depend on the UK deciding to adopt and follow
judgments of the Court of Jus-tice of the EU, which is debatable at
this point.
It is unclear what will happen in cases where a national EUTM
court has already granted an in-junction prohibiting infringing
activities across the EU. Will the enjoined party be able to
ig-nore the injunction in the UK once it leaves the EU? And what if
it was a UK court that granted the injunction? This is yet another
detail which will need to be worked out when unpicking the current
EU-wide arrangements.
Will trademark and other license agreements that mention the EU
need to be redrafted?IP owners and licensees should be reviewing
their agreements to see whether they refer to the EU or to specific
EU laws in a way that is un-
clear as to what happens when Member States leave (or join) the
EU. This might be relevant to the geographical scope of a license
or to a non-compete provision, for example, and each material
agreement will need to be considered to determine whether it is
clear that the UK will continue to be covered once it leaves the
EU. Once again, the impact of Brexit will not apply until it takes
effect, but it would be prudent to start the review process soon in
order to avoid surprises in the future.
How will other IP rights be affected?Like EUTMs, Registered
Community Designs are unitary rights covering the whole EU.
Provision will need to be made to ensure that Registered Community
Designs continue to be afforded equivalent national protection in
the UK when it formally leaves the EU. Whether or not Unregistered
Community Designs will be given equivalent protection for the
remainder of their term may be slightly more open to question,
given that the UK has retained its own separate unregistered design
right system.
Similarly, geographical indications are gov-erned by an EU-wide
regime from which the UK element will need to be detached and
protect-ed on a national basis post-Brexit.
Copyright exists on a national basis within the EU and so UK
copyright will continue unaffect-ed pursuant to national
legislation. Whether and to what extent this legislation will
continue to be interpreted in accordance with EU harmo-nizing
directives remains to be seen, but the courts will no doubt
continue to look towards the Berne Convention and Universal
Copyright Convention for guidance and so one would hope that the
law will not diverge substantially from that in the rest of the
EU.
The position for domain names is generally more straightforward,
in that their registration is not EU related, and so, for example,
UK-based individuals and companies that own .com, .net, .co.uk or
.uk domain names will not be affected by Brexit. The one exception
is .eu domain names, which may only be registered by individuals
who are residents of or busi-nesses that are established in the
European Economic Area (EEA). It is possible, but not at all
certain, that the UK may become an EEA member once it has left the
EU. If it does not, then arrangements will need to be made to
determine whether existing registrants of .eu domain names may
retain them.
As far as patents are concerned, the most significant immediate
effect is likely to be a delay in the implementation of the new
Unitary Patent and Unified Patent Court (UPC), which had been
expected to be implemented in early 2017. As things stand, the UK
will not be able to participate in the new UPC system once it
leaves the EU, since EU membership is a pre-requisite to
participation. On the other hand, the UK will remain a signatory to
the European Patent Convention (EPC), and it will still be possible
to obtain a UK patent via the EPC system.
What are the EUIPO and UKIPO saying about the post-Brexit
arrangements?At the time of going to press (July 1, 2016), nei-ther
the EUIPO nor the UKIPO has made any of-ficial statement in
relation to the UKs decision. No doubt, they will make their
positions known soon, which will be reported to INTA members.
What do I need to do now? Until timing and the picture of the
UKs future relationship with the EU post-Brexit become clearer, it
is largely business as usual. That said, rights holders would be
well advised to closely monitor the situation and perhaps conduct
audits of existing protection, enforce-ment, and agreements
concerning the UK, so as to be in a better position to make
informed decisions when the time comes to do so. In-house counsel
should also seek to ensure that IP issues are fully considered when
wider com-mercial issues such as domicile, distribution models, and
tax structures are being discussed within their companies.
Brexit Vote continued from page 15
Rights holders would be well advised to closely monitor the
situation so as to be in a better position to make informed
decisions when the time comes to do so.
This unprecedented deci-sion will result in a period of
uncertainty for the business sector in general.
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17
INTA Intervenes for the First Time before the General Court of
the European UnionDHL Express (France) and the French compa-ny
Chronopost have been litigating for more than a decade regarding
the use and regis-tration of the WEBSHIPPING word mark for delivery
services. Chronopost, the proprietor of the EU registered mark,
initially sued DHL Express before a Paris court for infringement.
In 2009, the Paris court issued an injunc-tion against DHL Express.
This decision was enforceable but not final, and an appeal was
lodged with the French Supreme Court. Chro-nopost did not enforce
the Parisian courts decision or subsequently make any use of its
trademark in the EU.
In July 2012, DHL Express filed proceedings with the European
Union Intellectual Prop-erty Office (EUIPO, formerly OHIM) to
revoke Chronoposts EU mark for lack of genuine use during a
continuous five-year period, pursuant
to Article 51(1)(a) of Regulation No 207/2009 on the EU Trade
Mark. While Chronopost had indeed not used its mark during the
relevant five-year period, it nevertheless prevailed
before EUIPOs Board of Appeal, on the basis that it had proper
reasons not to use the mark. Chronopost argued that the presence of
infringing acts (by its competitor DHL Express) on the market
amounted to valid proper rea-sons for non-use. DHL Express
disagreed and appealed to the General Court of the European Union
in Luxembourg.
INTA requested leave to intervene before the General Court in
support of DHL Expresss position that alleged infringement of
Chro-noposts rights did not amount to proper rea-sons for failure
to use a trademark for more than five years. INTAs position is that
proper reasons for lack of use refers to circumstanc-es unconnected
with the trademark propri-etor rather than to those associated with
its commercial difficulties or its own decision not to enforce
judicial decisions against third parties allegedly using the mark
without the proprietors consent.
The rules of procedure of the Court of Justice of the European
Union (CJEU) and the Gen-eral Court provide that third parties can
only intervene in proceedings before these courts if they can
establish an independent interest in the outcome of the case (see
Article 40 of the Statute of the CJEU). In other words, the bar for
intervention as an independent party is set high.
European Officials at the Annual MeetingINTAs Representative
Office in Europe, togeth-er with colleagues in the New York head
office, welcomed European officials at this years Annual Meeting in
Orlando, Florida. A represen-tative from the European
CommissionDirec-torate-General for Trade attended the Annual
Meeting to exchange views with relevant committees on the EUs trade
policy, ongoing Free Trade Agreement negotiations, and IP
priorities. Representatives from the EUIPO and from various
national trademark and patent offices (from EU as well as non-EU
Member States) also attended the Annual Meeting and participated in
dedicated workshops, commit-tee meetings, and networking
events.
EU-Ukraine IPR DialogueOn July 6 in Kiev, EU and Ukrainian trade
offi-cials met for their bi-annual IPR Dialogue. The aim of these
dialogues is to exchange informa-tion and best practices on IPRs,
and to address and solve concrete IPR issues in the EU and the
trading partners respective territories.
In advance of the IPR Dialogue, the European CommissionDG Trade
hosted a preparatory meeting with industry in order to exchange
views on IP issues that rights holders are fac-ing. Hlne Nicora,
Representative OfficerEu-
rope, attended the next preparatory meeting on June 16 in
Brussels. Europe Office staff attend such meetings on a regular
basis for Ukraine as well as for other countries with which the EU
has IP-related dialogues or negotiations.
Representation and Membership Outreach in BarcelonaMilesh
Gordhandas, Advisor, INTAs Europe Office, attended the IP Business
Congress in Barcelona on June 57. After the event, he met with
local brand owners and informed them about INTA membership benefits
and services.
Barcelona will be hosting INTAs Annual Meet-ing next year.
For more information on the activities of the INTA Europe Office
contact Christina Sleszyns-ka, Chief Representative OfficerEurope
(de-tails here). To keep updated on developments follow
@INTABrussels on Twitter.
Europe Representative Office Activities Span Orlando to Kiev
Proving an independent interest before the General Court is
always a difficult task.
Association Activities
Global Report: Europe
http://www.inta.org/Locations/Pages/Locations.aspxhttp://www.twitter.com/INTAbrussels
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INTA Global Report, July 201618
Global Report: EuropeOn November 23, 2015, the General Court
granted INTAs request to intervene (T 142/15, EU:T:2015:908). The
General Court acknowledged that the case raised what can be
considered a matter of princi-ple possibly affecting trademark law
from a public policy perspective. The General Court took into
account the fact that, in a previous case before the CJEU, INTA was
allowed to intervene (Voss, 25 March 2014, C 445/13P,
EU:C:2014:202). The General Court stressed that INTA is a worldwide
non-profit organiza-tion with more than 6,700 members and an
observer on WIPO and on EUIPOs Manage-ment Board and Budget
Committee.
This is a tremendous achievement for INTA, as proving an
independent interest before the General Court is always a difficult
task.
Pursuant to the aforementioned decision, INTA filed a statement
in intervention in early Janu-ary 2016. The case is still
pending.
INTAs application for leave to intervene and statement in
intervention were prepared by
Tanguy de Haan (NautaDutilh, Belgium), Fleur Folmer
(NautaDutilh, the Netherlands) and Sven Klos (Klos Advocaten, the
Netherlands), members of the Europe Amicus Subcommittee.
For more information, please visit INTAs amic-us page.
INTA Comments on EU Commissions IPRED Consultation In line with
its mission to advance and support the creation and improvement of
trademark protection laws, the International Trademark Association
has responded to the European Commissions recent consultation on
the evalu-ation and modernization of the IP Rights En-forcement
Directive (IPRED). The Enforcement Directive of April 29, 2004, set
the standard for the enforcement of intellectual property (IP)
rights within the EU. The Directive contains provisions on all
aspects of IP right enforce-ment, including the collection and
preservation of evidence, a plaintiffs right to information, the
issuance of preliminary and precautionary measures, the execution
of decisions, and the calculation of damages. After more than a
decade of the Directive being in effect, the EU Commission
requested comments on the func-tionality and effectiveness of the
Directive and its implementation in the EU Member States,
particularly regarding the enforcement of IP rights in the online
environment.
INTA s Enforcement Committeein particular, the Judicial
Administration and Trademark Litigation (JATL) Subcommittee under
the lead
of Paulo Monteverde of Baptista, Monteverde & Associados in
Portugalgathered comments from several different groups, namely,
the Anticounterfeiting, Legislation and Regulation, Copyright, and
Designs Committees.
Overall, practitioners and right holders seem to be pleased with
the implementation of the Di-rective. One major complaint concerns
the fact that the implementation of the Directive into national
regulations differs significantly among Member States, which
creates discrepancies in procedural rules and also in the
outcome
of proceedings depending on the jurisdiction. According to the
survey, the implemented regu-lations differ in procedural
requirements, time-liness, cost of court proceedings, and damage
awards. Practitioners therefore call for better harmonization of
the procedures in order to curb the phenomenon of forum shopping
and to allow for more predictability of the outcome of enforcement
actions in every Member State. In addition, the fast development of
new tech-nologies and marketplaces was recognized as creating a
challenge for legislation, especially in cases of cross-border
online infringements. However, in summary, the provisions in the
Directive seem to create the intended results and have improved
brand owners options to enforce their rights against infringements.
It remains to be seen which corrective measures, if any, the
Commission will suggest to address the respondents concerns.
For more information, please contact Iris Gun-ther (External
Relations Enforcement Advisor) at [email protected].
Tanguy de HaanNautaDutilh, Brussels, BelgiumInternational Amicus
CommitteeEurope Subcommittee
EUROPEAN UNION: New EU Trade Mark Regulation Comes into Force On
March 23, 2016, the new EU Trade Mark Regulation (EUTMR) came into
force as part of the EU Trade Mark Reform Package.
Community trademarks will now be called EU trade marks (EUTMs).
OHIM will be called the EU Intellectual Property Office
(EUIPO).
The reforms bring about a number of changes, the most
significant of which relate to fees, class headings, company name
use, counterfeit
goods in transit, and graphic representation.
Fees There is a new application fee structure centered on a one
class per fee system as opposed to the old system, in which one fee
covered up to and including three classes. There is also a
reduction in renewal fees.
Changes to Specifications There is a transitional period until
September 23, 2016, for trademark owners to apply to amend the
specifications of certain registered
trademarks covering class headings. This applies to all EUTMs
and international (EU) trademarks applied for before June 21, 2012,
and registered with respect to the entire head-ing of a Nice
class.
Infringing Acts Using a registered trademark as a trade or
company name is a specific infringement. Com-pany names have been
removed from the own name defence.
Trademark owners will be able to prohibit
In the News
The implementation of the Directive into na-tional regulations
differs significantly among Member States, which creates
discrepancies in procedural rules.
http://www.inta.org/Advocacy/Pages/Amicus.aspxhttp://www.inta.org/Advocacy/Pages/Amicus.aspxmailto:[email protected]://www.inta.org/INTABulletin/Pages/EU_TM_Reform_Update_7020.aspxhttp://www.inta.org/INTABulletin/Pages/EU_TM_Reform_Update_7020.aspx
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19
Global Report: Europe
GERMANY: Dominant Element within a Challenged Mark May Establish
a Conflict, Even if Incapable of Distinguishing The Federal Patent
Court upheld an opposi-tion against the German word and figurative
mark DSA DEUTSCHE SPORTMANAGE-MENTAKADEMIE, filed by the owner of
the wordmark BSA, Johannes Marx, and affirmed aural similarity
between DSA and BSA. It re-fused registration for a majority of the
goods and services in Classes 16, 35, 38 and 41. An appeal against
this decision was filed with the Federal Court of Justice (decision
of July 9, 2015 - I ZB 16/14).
The company DGBB Deutsche Gesellschaft fr berufliche Bildung
GmbH applied for the
mark pictured below, which was registered on November 25, 2011,
for goods in Classes 16 (paper), 35 (business management and
ad-vertisement services), 38 (telecommunication services), and 41
(training services). Mr. Marx
initially filed a notice of opposition against the later mark
before the German Patent and Trade Mark Office (DPMA) and the DPMA
rejected the opposition.
It is interesting to note that the Federal Court of Justice
considered the acronym DSA to be the dominant element within the
sign as a whole. The Federal Court of Justice held that an element
of a mark has dominant character if the other elements of the mark
are large-ly secondary to the overall impression. The relevant
public would be guided specifically by the dominant elements of a
mark. The Federal
Contributor: Susanna HeurungKotitschke & Heurung
Partnerschaft mbB, Munich, Germany
Verifier: Florian TraubSquire Patton Boggs (UK) LLP, London,
UK
Ms. Heuring and Mr. Traub are Co-Chairs of the INTA Bulletins
Law & PracticeEurope Subcommittee.
EUROPEAN UNION: General Court Rules on Similarity between
Leaping Animal Marks The General Court of the EU (EGC) recently
found that there was sufficient similarity be-tween two figurative
signs that each repre-sented a leaping animal, despite the fact
that the opposed mark represented an imaginary animal, while the
earlier mark represented a Puma (EGC, decision dated Feb. 25, 2016,
T-692/14 - Puma SE/OHIM).
On April 27, 2012, the applicant, Sinda Poland Corporation sp. Z
o.o., filed an application for registration of a sign that
represents a leaping animal. This animal seemed to be leaping like
a cat. However, the species of the animal depicted could not be
determined exactly. The mark claimed protection for footwear in
Class 25. Puma SE filed an opposition against the application based
on international registration no. 480105, designating various EU
Member States, among others, also protected for foot-wear in Class
25.
The two trademarks are reproduced below:
The EUIPOs Opposition Division rejected the opposition and found
that there was no likelihood of confusion. The EUIPO determined
that the signs were not similar from a visual point of view because
there were no common-alities whatsoever. Phonetic similarity was
excluded for figurative signs. The signs were also not similar from
a conceptual point of view because the earlier mark represented a
puma while it was unclear which animal was repre-sented in the
application. In fact, the animal in the application even seemed to
be a mixture of different animals. The paws seemed to be those of a
kangaroo, the tail that of a whale, and the nose that of a dolphin.
Therefore, the Opposition Division said there was no danger of
confusion, despite the potential high level of distinctiveness of
the earlier mark. The Board