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INTA Bulletin


December 15, 2017 Vol. 72 No. 21 Back to Bulletin Main Page

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Adil El-Maliki, Director General, Moroccan Office of Industrial and Commercial Property

As Director General of the Moroccan Office of Industrial and Commercial Property (French acronym "OMPIC")—one of the highest performing IP offices in Africa—Adil El-Maliki is tasked with the overall management and implementation of OMPIC’s strategies, as well as representing Morocco in international negotiations and discussions. Mr. El-Maliki has chaired WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) for seven years and is working to further strengthen OMPIC’s international position by improving processes that will bring it up to international standards in a number of areas. 

Mr. El-Maliki shared more about OMPIC’s achievements, operations, and objectives with the INTA Bulletin

Can you explain what it means that OMPIC is “a public institution with legal personality and financial autonomy,” and how that unique model works to the Office’s advantage? 
OMPIC benefits from a direct and flexible management model. Indeed, we are able to design our own strategies, action plans, and to define our own budgets, although this is obviously based on the national policy and priorities. The OMPIC governance model relies on a Management Board chaired by the Minister of Industry and made up of members representing both public and private actors, including ministerial departments, governmental agencies, and professional federations involved in industrial property, innovation, and entrepreneurship. 

The objectives set out by the Minister of Industry and the collective external experience of the other Management Board members provides a more accurate picture of OMPIC’s performance toward its strategic objectives and financial goals.

OMPIC is classified as a commercial and industrial public institution with corporate accounting and is subject to corporation tax and VAT. The Office must, from its own revenue, be able to cover all its operating expenses and finance all its development projects and investments.


Adil El-Maliki graduated from Mohammadia Engineering School in Rabat, Morocco, in 1992 with a degree in chemical process engineering. Soon after, he began his career with the Moroccan Ministry of Industry and Trade and spent eight years in various positions among the Ministry’s staff, including managing the Commercial Studies Division and the Central Trade Register Department. Following the creation of the OMPIC in 2000, he was put in charge of the Information and Communication Department while also serving as Deputy Director of the Office. He served as an Acting Director-General during 2007 and was named Director General in 2008.


OMPIC is one of the leading IP offices in the region; can you describe some of the Office’s priorities and how you are accomplishing them? 
OMPIC strives to make industrial property a driving force for the economic and social development at both the national and regional levels. To this end, we have identified 11 strategic business areas. There are two core areas we will be emphasizing in the years ahead: 
  • Strategic use of IP tools by economic operators to enhance their market value;
  • Capacity building and knowledge transfer to manage and use IP rights.
Regarding the use of IP tools, we try to make the Moroccan legislative environment attractive for both high value-added investments and local innovators, including start-ups, university researchers, designers, and SMEs developing brands or manufacturing local products using geographical indications. To this end, several reforms of the law have been undertaken that have made the Moroccan industrial property system conform to the highest international standards. 

As a result, there has been a positive trend in terms of use of IP tools among Moroccan companies, particularly brands and industrial models and designs. Every year, nearly 15,000 new trademarks are registered in Morocco, more than half of which are 100 percent Moroccan. We also have more than 1,000 designs registered annually. This is a good performance given our level of GDP. It proves that Moroccan companies are dynamic and innovative. Morocco’s ranking of 42nd in the 2016 World Intellectual Property Indicators for trademarks and 16th for industrial design applications filed by residents, further illustrates the strength of Moroccan companies. Morocco also stands out with its rank of sixth worldwide for number of industrial designs filing applications per GDP. 

In terms of capacity building, Morocco is currently conducting several practical training programs which mix onsite trainings and online trainings through elearning.amapic.ma. These programs deal with different aspects of industrial property management and enjoy regular and effective participation from African countries. The most notable is the “Industrial Property Animator Certificate,” which is spread over a six-month period and is conducted in partnership with WIPO, OAPI, and INPI (France). 

What are the biggest challenges still facing OMPIC? 
The most important operational challenge is granting IP rights with a strong presumption of validity. To this end, we are focused on improving the quality of examination and granting procedures for patents and distinctive signs. We also promote the effective use of mechanisms and legal measures aimed at ensuring the enforcement of IP rights.

Secondly, we want to capitalize on the opportunities of the digital revolution by improving our www.directinfo.ma platform in order to cover all IP protection and information services. 

Another key challenge is to introduce made-to-measure support services to help Moroccan SMEs increase their ability to develop a management plan or strategy to make their IP grow their business. 

Your 2020 Strategic Vision outlines a number of strategic objectives to improve efficiency and overall operations. Can you highlight a few of the key goals of the plan and what you are doing to implement them?
 
Granting high quality IP rights in a timely manner is central to effectively securing business assets and investments. To this end, our operations are being engineered for optimum efficiency through the deployment of the Lean Six Sigma methodology, which includes making our services and processes as straightforward and as fast as possible. Further enhancements will be made to update our technological infrastructure to deal with the increasing demand for our IP protection services. We are focusing on making our services as customer centric as possible, minimizing costs for applicants, and increasing our productivity.

How can partnerships with organizations like INTA help OMPIC? What kinds of collaborations would you like to see? 
The development of strong Moroccan brands is one key objective we are trying to achieve through a range of initiatives. The Morocco Awards is an annual competition that rewards the efforts made by Moroccan companies which have invested the most in the development of their trademarks. Another initiative is the “Morocco Brands Club,” which aims to put in place an environment favorable to the emergence of new brands in Morocco and to strengthen the role of major locomotive brands that create value. We believe that such activities should be joined with other efforts being undertaken in a similar vein, particularly those of international actors. We seek to generate consistency and synergies by coordinating work with national, regional, and international offices and organizations. 

We share the same business goals with INTA, which is one of the most active organizations in the field of trademarks. Therefore, collaboration with INTA will help to foster an IP culture among Moroccan businesses, which can be spread out throughout African economies.

What goal would you most like to achieve during your term?
Every time I witness a success story based on the effective use of intellectual property in which OMPIC played a role, my team and I feel that we moved a step forward towards economic development. My wish is to advance the field of industrial property as much as possible in Morocco, in order to prepare an easier path for my successors.



Interview: Justice Bareiro de Módica, Supreme Court Justice of Paraguay

IP education is a high priority in Paraguay. The INTA Bulletin caught up with Supreme Court Justice Bareiro de Módica to discuss training judges, how the court’s IP expertise is evolving, and what developments she would like to see next.

The Paraguayan Supreme Court has a unit for IP matters. Can you explain what led you to create this special department and what its duties and powers are?

Before being appointed as Justice of the Supreme Court, I practiced as an IP attorney for a long time. During that period I noticed that, although local IP acts comply with a suite of international treaties related to trademarks, patents, industrial designs, geographical indications, trade secrets, copyright, and unfair competition, Paraguayan judges were not familiar with this field. This lack of knowledge was reflected in their decisions. 

For that reason and given the importance of protecting IP, after taking up my role as a Justice of the Supreme Court I thought it was necessary to create and support this unit to give the judges the legal tools to resolve IP conflicts before civil and criminal courts. In 2011, I proposed the project to the plenary of the Supreme Court. It was approved without objections, and in 2012, the unit for IP matters officially entered into force. I was nominated as the person responsible for this unit, and a Director and specialized technicians were immediately appointed in order to fulfill its remit.

The main powers and duties of the unit are to:
  • Train judges, assistants, and judicial officials on IP issues; 
  • Organize and sponsor conferences, seminars, and workshops;
  • Take part in formulating policies to improve IP enforcement, in coordination with other specialist institutions;
  • Produce accurate statistics related to IP rights; and
  • Propose and support meetings with specialized government agencies on IP rights issues.
In 2016, the plenary of the Supreme Court attributed to the unit a very important role, enabling it to issue nonbinding opinions on IP issues at the request of courts and administrative offices.

How do you train judges and court officials?
Each year we prepare a calendar of activities in advance, taking into account the areas that require the most attention. The calendar includes courses and other activities that allow judges to keep up to date. In principle, we conduct courses run by our own experts, but lately, we have also involved international associations such as INTA and ASIPI, among others. 

I would like to highlight that since 2012, we have carried out several activities throughout the country and that we have trained around 5,000 judges and officials.

We encourage the use of alternative methods of dispute resolution, particularly mediation. In fact, this year we organized the first national course in mediation on IP rights for postgraduates.

Have you noticed any changes in the court’s decisions since the creation of the IP unit?

For training courses, it is unlikely that there will be any impact in the short term, but perhaps there will be in the medium term. 

We expect the greatest impact to be on legal opinions. Although they are not mandatory, they can have a profound impact and exert influence in the short term, given that they can be requested by any judge in the country.

What developments are you hoping to see in Paraguay to further improve the environment for IP owners?
It is very valuable to have expert and qualified judges in the field, but we want also to include them in our training. Organized jointly with INTA, a workshop for judges took place recently in Paraguay and the lectures actually involved some judges with experience in the field.

The most effective form of protection is action aimed at increasing the public´s awareness of the consequences of violating IP rights. It is important that judges have a clear vision of the regulations and procedures in order to impose appropriate penalties. For this reason, once we have obtained the necessary resources, we intend to carry out more intensive, updated, and integrated training sessions and seminars with national and foreign academics.

We will also continue to promote the use of alternative methods of dispute resolution, given that it is one of the strategic, thematic focuses proposed by the Supreme Court. We are working closely with judges and prosecutors specialized in IP rights to apply the Supreme Court resolution that regulates mediation in the criminal field. Mediation is an effective way to resolve intellectual property disputes. Unfortunately, it is not widely practiced in Paraguay, although there is already a dispute resolution mechanism before the mediation agency and it is the most appropriate method for small infractions. 

Finally, it is extremely important for us to develop a solid body of precedents in the area of IP in order to ensure that the IP system can promote investment and economic growth.

How can INTA offer support?

In my opinion, INTA plays an important role in the development of trademark protection policies throughout the world. By the way, when I was a member of INTA, I worked on several interesting projects that involved active participation in committees. I know the great job INTA does defending trademark rights. For my country it would be very important to have the support of this association though courses, seminars, and workshops. In addition, it would be ideal for our judges to be able to participate in INTA activities. 


Interviews

Raymond Rundelli, Calfee, Halter & Griswold LLP, on the Benefits of INTA Membership

Raymond Rundelli is a partner at Calfee, Halter & Griswold LLP, in Cleveland, Ohio, and has been an active INTA member for 31 years. He told the INTA Bulletin how INTA membership most benefits him and his colleagues. 

Why is your organization an INTA member, and how does it benefit from membership? 

My firm is a member because we represent clients all around the world with trademark rights or usage in many, many countries. Being a member ensures that we have ready access to news and information about trademark developments worldwide and have regular opportunities to interact with other INTA members on behalf of our clients. Also, The Trademark Reporter is a valuable source of information about trademark and related issues that impact our clients and my firm’s intellectual property practice.

How long have you personally been an active INTA member, and where do you find the most value in membership on a personal level? 

I personally have been an active INTA member for 31 years, having attended my first Annual Meeting in Boston in 1986. The most value to me personally is the networking and interfacing opportunities provided by the Annual Meeting and the INTA Roundtables in my local community.

Outside of the Annual Meeting, what other ways do you make use of your membership throughout the year?

When practicable, I and other members of my firm attend the INTA Roundtables hosted in our local community. We share and discuss pertinent articles appearing in The Trademark Reporter. At times, we avail ourselves of the informational resources that can be accessed through the INTA website.

In a nutshell, why should trademark professionals join INTA?
It is in my view the most essential trade association for those who own trademarks or counsel those who do.

Renew your INTA membership by December 31, 2017, to ensure that you continue to receive all INTA member benefits, including the member rate to the 2018 Annual Meeting. Annual Meeting registration begins in January 2018.



Association News

Highlights of the 2017 WIPO Assemblies

INTA was represented in the 57th series of meetings of the Assemblies of the World Intellectual Property Organization (WIPO) and the Unions administered by WIPO, held in Geneva from October 2–11 by INTA President Joe Ferretti (PepsiCo, Inc., USA) and Bruno Machado, INTA Geneva Representative. In the general statements segment of the plenary, INTA drew attention to restrictions being imposed on brands without due consideration of the need to balance diverse policy objectives. This statement is available here

Among the decisions and conclusions reached by the Assemblies, a summary of which is available here on the WIPO website under meeting document number A/57/11, ADD 1 through 7, the following may be of particular interest to members.

Program and Budget for the 2018‒2019 Biennium


For the first time in the organization’s history, the income forecasted in the Program and Budget of WIPO as adopted for the 2018‒2019 biennium reaches, and exceeds, the 800 million Swiss Francs mark. Some 95 percent of such income is expected to come from fees paid by users of the international registration systems (mainly the Patent Cooperation Treaty (76.4 percent) and Madrid (17 percent)), and just over 4 percent from contributions paid by WIPO member states. 

Divergences of views nevertheless remain regarding the methodology for the allocation of income and expenditure among the unions. Discussions on the methodology will continue in the WIPO Program and Budget Committee next year.

Madrid Union

On the first day of the Assemblies (October 2), Indonesia deposited its instrument of accession to the Madrid Protocol, bringing the membership of the Protocol to 100.

In the plenary, several delegations, namely the delegations of Canada, Ethiopia, Jamaica, Malawi, Samoa, Sri Lanka, and Trinidad and Tobago, mentioned steps being taken by their governments to accede to the Madrid Protocol. Moreover, the delegation of China referred to the decision of the Government of the Hong Kong Special Administrative Region (SAR) to implement the international trademark registration system under the Madrid Protocol in the Hong Kong SAR.

In the Assembly of the Madrid Union, the delegation of the EU drew attention to the changes that entered into force on October 1 in the requirements for the reproduction of nontraditional marks (particularly sound marks) under the EU Trade Mark Regulation and stated that the EU and its member states stood ready to work with WIPO and the members of the Madrid Union to find solutions so that such requirements may be met in international applications designating the EU and that international applications originating from the EU and meeting those requirements may be accommodated within the Madrid system.

Hague Union


In the plenary, a number of delegations, namely the delegations of Canada, the Lao People’s Democratic Republic, Madagascar, Thailand, and the UK, expressd the intention of their governments to accede to the Geneva Act of the Hague Agreement.

Lisbon Union

The Assembly of the Lisbon Union adopted common regulations under the Stockholm (1967) Act of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration and the Geneva (1915) Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, and decided that those regulations would enter into force on the date of entry into force of the Geneva Act.

Design Law Treaty

Much to the dismay of user groups, the political deadlock over the convening of a diplomatic conference for the adoption of the Design Law Treaty, a draft of which was finalized by the Standing Committee on the Law of Trademarks, Designs and Geographical Indications in 2014, could, once more, not be overcome. The matter will be considered again by the General Assembly of WIPO at its next session, in the autumn of 2018, with a view to convening the diplomatic conference at the end of the first half of 2019.

External Offices

Currently, WIPO has five external offices, in Rio de Janeiro, Beijing, Tokyo, Moscow, and Singapore. At its 2015 session, the General Assembly of WIPO decided to establish three new external offices in each of the 2016‒2017 and 2018‒2019 bienniums, at locations to be determined by the Assembly; and at the 2016 session it was decided that two of these offices would be established in Algeria and Nigeria, respectively.

No agreement could be reached this year on the selection of the seats of the four remaining external offices. Candidates for the 2016‒2017 biennium were Azerbaijan, Colombia (supported by all Latin American countries), India, Iran, the Republic of Korea, Romania, and Turkey. Candidates for the 2018‒2019 biennium were Azerbaijan, India, Iran, Oman, the Republic of Korea, Romania, Saudi Arabia, Turkey, and the United Arab Emirates. It was decided that the 2018 General Assembly will consider opening up to four WIPO External Offices for the 2018‒2019 biennium, including in Colombia.


Building Sustainable Growth Through Brand Authenticity

INTA’s Brand Authenticity conference, held in Berlin, Germany, November 30–December 1, 2017, focused on the synergies between brands, brand protection, sustainability, integrity, and corporate social responsibility (CSR). Speakers came from a wide range of industries and included founders of ethical and sustainable businesses, brand owners, government officials, legal practitioners, certification specialists, and representatives from global non-government organizations (NGOs). The project team was led by Jessica Murray, Director for IP and CSR of TOMS Shoes, and Mladen Vukmir of Vukmir Associates. 

Building Sustainable Growth

The value of brands to businesses and society was at the heart of INTA CEO Etienne Sanz de Acedo’s introductory address. “IP professionals need to speak about brands, not only trademarks, and transcend the purely legal concept,” he said. 

Conference co-chair, Jessica Murray, shared with attendees that brand authenticity is not only a personal passion but also a daily priority in her role at TOMS Shoes.

Building on this starting point, Santiago Peralta, the founder of Pacari Chocolate in Ecuador, gave the keynote speech, in which he described how good business and sustainability feed into each other. While the audience was enjoying samples of Pacari chocolate, Mr. Peralta stressed the importance of having “fairness all along the supply chain,” a commitment demonstrated by his close relationship with local chocolate producers in Ecuador. “We do our own chocolate with our own cacao, our own farmers, our own company,” he said.

A theme running throughout the panels was the value that CSR could bring to brands, especially now that CSR is a basic demand of today’s consumers.

Giulia Di Tommaso (Elipe Limited, UK) pointed out that brands that are strongly focused on sustainability see an increase of 20 to 30 percent in their sales. Adam Garfunkel (Junxion, UK) added that, according to surveys, 66 percent of consumers would pay more for a product made with CSR credentials, and concluded by saying that “people want to go shopping, but increasingly, people are interested in the company and not just in the product.”

These sessions also looked at the role that certification and voluntary sustainable standards (VSS) could play. The panelists included representatives from Demeter and Fairtrade International, and delegates heard about the importance of certifying food and beverages (Demeter) and applying fair labor standards (Fairtrade International). Certification and VSS contribute to brand recognition and are a source of “empowerment and capacity building in global South,” said Ms. Di Tommaso. She added that companies and brands “need to be more caring about how they work with their supply chain in order to build a relationship with consumers,” which explains why there are more sustainability clauses in supply chain contract terms.

The keynote speaker on day two of the conference, Aiko Bode (Group Chief Sustainability Officer, Fenix Outdoor International AG, Germany), provided a “management compass” that puts CSR at the heart a company’s strategic development, with each of the directions standing for a core value of the company: N - nature; E - economy; S - society; W - well-being. This compass, according to Mr. Bode, “makes sure that sustainability is integrated in every decision” at Fenix Outdoor.

Attendees were inspired to hear about how companies and law firms are integrating CSR and sustainability into their business models. Camille van Gestal of Waka Waka and Peter Dernbach of Winkler Partners not only inspired attendees with their stories but provided examples to follow as to how to integrate CSR into day-to-day business decisions.

Diversity, Inclusion, and Involving NGOs

Diversity and inclusion is a vital part of CSR and more companies, law firms, and businesses are creating a dedicated position to push through these core values. For example, Putri Realita (Danone, France) explained her company’s three global priorities (inclusion, diversity, and empowerment). Session moderator David Stone (Allen & Overy LLP, UK) said that, “it is the right thing to do … and we need to convince people.”

The relationship between brands and non-profit organizations and government associations was at the center of a dedicated panel. Wolfgang Scheunemann (German CSR-Forum, Germany) used the example of the Volkswagen emissions scandal to illustrate that when there is a clash between NGOs and companies, the NGO “usually wins.” This can affect the brand’s image and reputation and ultimately hurt sales. Participants in this session stressed that having a collaborative approach to NGOs is key. 

Additional sessions featured speakers from organizations such as oriGIn, WIPO, and eNABLE Germany, and provided attendees with a perspective of brand value beyond the purely legal brand definition. 

All participants agreed that CSR is no longer a trend but has become essential for any brand willing to connect with its consumers and to sustain its reputation. With this conference INTA showed how important CSR and sustainability are for brand owners and the benefits that corporate responsibility brings to business, consumers, and society at large. 

INTA Wraps up its Free Trade Zones Workshop Series


Preceding the Brand Authenticity conference, INTA concluded its one-day workshop series on Free Trade Zones: Commerce vs. Counterfeits on November 29, with a focus on Europe. The Berlin event was the final of a series of workshops held around the globe in 2017, with previous events in Cartagena, Dubai, Hong Kong, and New York City. The purpose of these workshops was to provide a closed-door forum for brand owners, free trade zone authorities, government officials, and other key stakeholders to share their concerns and best practices and to work together toward solutions to combat the threat of counterfeiting in free trade zones.


Department Spotlight: Executive Team

INTA’s Executive Team consists of Chief Executive Officer Etienne Sanz de Acedo and Executive Assistant Maribel Lajara. 

In his role as CEO, Etienne works with the Board of Directors and Officers to recommend, formulate, and implement policies and programs for the Association; is responsible for the administrative operation of the Association’s offices and the supervision of all staff; and is responsible for the development and administration of the annual budget.

As Executive Assistant to the CEO, Maribel provides critical executive administrative support through regular contact with senior management, staff, the Board of Directors, Association Leadership, and Committee members, and assists Etienne in the day-to-day operation of the office.

Here Etienne answers a few quick questions from the INTA Bulletin.

How long have you been with INTA?
It feels like it was only yesterday when I joined INTA, but four and a half years have already passed! I joined July 1, 2013, and spent my first few days at the Brussels office while I waited from my passport to come back from the American embassy with my visa. 

What does your daily work involve?

Well, every day is different and that’s the beauty of it. However, I do try to begin each day by first looking at what is happening around the world and particularly within our IP community. 

As CEO, I’m in a lot of meetings! Every other week we have a senior management meeting, a Rep Office meeting, meetings with HR, Finance, and IT. Once a month we have full staff meetings to update staff on the state of the Association, as well Executive Committee, Finance, Audit, and Planning Committee calls. Between meetings with different staff, I’m responding to emails and taking calls from members. I’m not complaining though, there is so much talent among the INTA staff and membership. They also care deeply about our Association and its mission: collaborating with them is only a pleasure! 

And all this is magnificently coordinated by Maribel, without whom I would simply not be able to do my job.

In the quiet time that Maribel kindly safeguards in my schedule, I work on long-term projects, keeping the Association on target to meet the goals of the Strategic Plan and to complete the major projects in the corresponding Implementation Plan. 

What projects have you most enjoyed working on during your career with INTA?
There are so many projects, it is really hard to highlight only a few. But let me start by sharing that the first time we had a full staff meeting, which was to prepare for the 2013 Leadership Meeting, I was absolutely impressed by the INTA staff and how professional they all were. That really pleased me and made me feel very proud to be a part of this Association. 

In terms of projects that I have really enjoyed I would certainly mention the opening of our two new Representative Offices in Singapore and Santiago, enhancing our interaction with officials in China and India, and around the world, witnessing the expansion of the Unreal Campaign, the publication of INTA’s first impact study, and also entering into new areas of work for INTA like copyrights, designs, and data protection. 

And, of course, I have really enjoyed working with the Planning Committee on our new 2018‒2021 Strategic Plan. While it is ambitious, bold, and forward thinking, I am confident that we will make a success of it. The good thing is that we are developing processes and methodologies that will last well beyond 2021 and help strengthen our evolving Association.

Last but not least, I love the interaction with members: 32,000 individuals from all around the world! Sometimes challenging but always rewarding.

What do you do for fun, outside of INTA?

I like reading historic novels. I love sports, particularly tennis, but it’s not easy to practice in New York. I am a big fan of my home soccer team Real Sociedad. I also love to travel with enough time to enjoy and visit places. And, most importantly, I spend as much time as possible with my children Alexia (18 months) and Iñaki (12 years). 

What are your favorite trademarks?

Amazon (please change the Alexa brand; it is very confusing with our daughter Alexia!), Apple, Netflix, and Polo Ralph Lauren. 

Welcome New Members

Actio IP AS, Bergen, Norway
McNamara & Co., Castries, Saint Lucia
AIP Patent & Law Firm, Seoul, South Korea
MOOIL International IP Law Firm, Seoul, South Korea
Lee Marshall Holtry, PLLC, Scottsdale, Arizona
The Banner Firm, LLC, Washington, D.C.
ADSTO, Paris, France
Guillemin Flichy, Paris, France
Gucci, Scandicci, Italy
BV & Partners, Asunción, Paraguay
Thrings LLP, Bristol, United Kingdom
Clark & Brody, Alexandria, Virginia
Mitchell Silberberg & Knupp LLP, New York, New York
Rubeya & Co-Advocates, Bujumbura, Burundi
Greentree IP Law Firm, Beijing, China
Hangzhou Wuzhou Trademark Service Co., Ltd., Hangzhou, China
Care Intellect LLP, New Delhi, India
Procter & Gamble, Mumbai, India
Murat Law Office, Ankara, Turkey
Allbright Law Offices, Shanghai, China
Lawtelier Avvocati Associati, Milan, Italy
Rouse Africa, Windhoek , Namibia
Disosa BPS, Willemstad, Curacao
Bruun & Hjejle, Copenhagen, Denmark
Athena Legal, New Delhi, India
Eversheds Sutherland Bitans, Riga, Latvia
Swart Attorneys, Stellenbosch, South Africa
BieN IP Consultancy Ltd., Ankara, Turkey
Rodan & Fields, LLC, San Francisco, California
Jiangsu Sunyu Information Technology Co., Ltd., Nanjing Jiangsu, China
Buse Heberer Fromm, Hamburg, Germany
Luxottica India Eyewear Pvt. Ltd., Gurgaon, India


Anticounterfeiting

INTA Holds Policy Dialogues in Ottawa, Nigeria, Brussels, and Panama

On October 17, the Canada Subcommittee hosted a luncheon in Ottawa in collaboration with the Canadian Anti-Counterfeiting Network (CACN) and the Canadian Intellectual Property Council on “Combating a Tsunami of Counterfeits, Piracy and Fraud: Protecting the Health, Safety and Economy of Canada.” This luncheon brought together key anticounterfeiting stakeholders in the country to discuss the importance of strong anticounterfeiting legislation and the need for an IP rights coordination center in Canada. 

The first keynote presentation was provided by former Director of the U.S. National IPR Coordination Center and INTA consultant, Bruce Foucart. Mr. Foucart spoke about the formation of the U.S. National IPR Coordination Center and how the U.S. model can be implemented in Canada. Mr. Foucart also highlighted the importance of cross agency collaboration in combating counterfeits. Detective Robert Whalen of the Toronto Police Service provided a second keynote presentation. Detective Whalen presented cases he had encountered that linked counterfeiting to terrorist organizations, emphasizing the real-life implications of the counterfeit trade on Canadian citizens.

Local Canadian brand owners and IP professionals then participated in a panel on the state of counterfeiting in Canada and why the formation of an IP rights center should be a priority for Canadian policymakers. Panelists included Katie Jamieson (Herschel Supply Company, Ltd.), Carrie Baker (Canada Goose), Dale Ptycia (Hockey Canada), Andrew McGuigan (MPA/MPAA Canada), Lorne Lipkus (Kestenberg Siegal Lipkus LLP), and Barry Elliott (RCMP). 

The luncheon gathered around 30 key anticounterfeiting stakeholders and succeeded in creating open dialogue and collaboration between the attendees.

INTA and ACC-Nigeria Host Policy Dialogue and Customs Training for Eleventh Year

On October 17, the Middle East and Africa Subcommittee and the Anti-Counterfeiting Collaboration-Nigeria (ACC-Nigeria) hosted the eleventh annual policy dialogue on combating counterfeiting in Lagos. The theme of this year’s policy dialogue was “Fighting Counterfeiting and the Ease of Doing Business.” The discussion brought together brand owners, regulators, enforcement officials and IP practitioners in the entertainment industry to discuss the correlation between counterfeiting and the ease of doing business in Nigeria. 

Desmond Adeola, Chairman of ACC-Nigeria, provided welcoming remarks to the attendees. Mr. Adeola highlighted the efforts and achievements of many of the enforcement officers in attendance and encouraged discussion throughout the day on how all stakeholders could work together to combat counterfeiting. 

Marc Schreuder, the first Chairman of ACC-Nigeria, and General Manager at Natnudo Foods delivered the keynote address. Mr. Schreuder commented on the Economic Recovery and Growth Plan and the current state of IP law in countries such as South Africa, Kenya, and Egypt and how Nigeria should be ready to embrace moral values to improve the ease of doing business. Uche Nwokocha (Aluko & Oyebode), Chair of the Middle East and Africa Subcommittee of the ACC and Secretary of ACC-Nigeria, set the stage for the workshop. Ms. Lara Kayode (O. Kayode & Co.) introduced INTA and the Association’s mission. 

The keynote addresses were followed by three sessions. The first focused on brand owners and how counterfeiting affects their ability to do business. The second looked at regulators and leveling the playing field, while the third session focused on counterfeiting challenges in the entertainment industry. Bob Peeters (World Customs Organization) then presented training on the IPM (Interactive Policy Making) software to the Nigeria Customs Service.

The workshop closed with a vote of thanks by Ms. Nwokocha and a cocktail reception to honor Hon. Justice M.B. Idris of the Federal High Court in Lagos. Justice Idris was presented with an award for commitment and service in recognition of his support in the fight against counterfeiting and piracy. 

Combating Online Counterfeiting: An IP Policy Dialogue with ABAC-BAAN in Brussels


On October 18, INTA’s Anticounterfeiting Committee and its Europe Office (represented by Hadrien Valembois, Policy Officer) co-hosted an IP policy dialogue, in partnership with the Belgian anticounterfeiting association ABAC-BAAN, bringing together government officials, brand owners, and online platforms. The discussion was dedicated to combating online counterfeiting.

In the context of the current EU political situation, the issue of online counterfeiting and the role of online intermediaries is very sensitive and lies at the heart of the EU Commission’s current evaluation of its IP rights legal framework. On September 28, the Commission published its nonbinding guidelines on the removal of illegal content, which include provisions on notice and take down. The Commission carefully stressed in these guidelines that it will “monitor progress and assess whether additional measures are needed, … including possible legislative measures … by May 2018.” 

While brand owners advocate for online intermediaries to play a greater role in tackling online counterfeiting, online actors (platforms, social media, marketplaces, etc.) stress that they have stepped up cooperation with brand owners and have set up monitoring systems with regard to online illegal content and goods.

This meeting was aimed at gathering all three stakeholders together to foster dialogue and propose solutions to tackle online counterfeiting. The dialogue was divided into three panels:
  • Panel I: Government officials’ perspective featured interventions by the EU Commission and the representative of Belgian Central Administration for Customs and Excises;
  • Panel II: Brand owners’ perspective featured representatives from PVH, LVMH, and Cisco; and
  • Panel III: Online platforms’ perspective featured an intervention from eBay’s IP legal counsel.
Government Perspective 

On behalf of the EU Commission, Amaryllis Verhoeven (Head of Intellectual property and Fight Against Counterfeiting Unit, DG GROW, European Commission) provided a preliminary overview of the Commission’s IP package published on November 29 (see Europe Update). This package includes a nonbinding communication with a strong emphasis on monitoring schemes to assess whether its provisions are implemented. She highlighted that she was “happy that INTA is working on best practices [, which is] very important” (referring to INTA best practices guide on "Addressing the Sale of Counterfeits on the Internet").

On Directive 2004/48/EC, which covers enforcement of intellectual property rights (IPRED), she said that it is “still fit for purpose today” but that implementation varies from one member-state to the other. She added that, within the IP package, the Commission will publish “guidance” (not binding but “authoritative”) on the implementation of IPRED and will work “intensively” with the judicial system and judges in that regard. She pointed out that if the actors do not apply the proposed provisions, the Commission does not exclude the option of coming back with binding provisions in the future. 

She also mentioned the need to “beef up the integrity of the supply chain” as well as the ongoing memorandum of understanding (MOU) on the sale of counterfeit goods over the Internet (and the fact that they are “in contact with the shipping industry” to propose a dedicated MOU with that industry). Finally, covering the international trade perspective, she said that the Commission (through the lead DG TRADE) is setting up a list of high-priority, third-world countries where counterfeiting is a problem, “notably free-trade zones,” and that it could lead to the publication of a blacklist.

Speaking from a customs’ perspective, Luc Van de Velde-Poelman emphasized the danger from small counterfeit goods. He pointed out that, given the enormous volume of counterfeit goods reaching EU borders, counterfeiting “is not random; it is organized,” thereby establishing the link between counterfeiting and organized crime.

Brand Owners and Online Platforms Have Their Say


Giving the brand owners’ perspective, Tomas Elemans (Brand Protection Manager, PVH Europe B.V.) stressed the need for “clustering online enforcement strategy” (action on websites, online market places, and social media). Jaymeen Patel (Senior Manager–Head of the Brussels Office, LVMH) pointed out as a priority the fact that consumers are fooled into buying fake goods they believe are genuine. Finally, Cisco Brand Protection EMEA, Jiri Kocab, provided the perspective of a different sector—electronic hardware and software—and insisted on the importance of looking at prevention strategies for online counterfeiting.

Panel III offered the platforms a chance to present their own strategy to tackle online counterfeiting. eBay Senior Legal Counsel (Intellectual Property–Global Rights Owner Manager) Sandro Chiesura stressed that eBay was “very happy to have joined the MOU [on the sale of counterfeit goods over the Internet]” and that it represents “a fantastic opportunity to be involved with stakeholders.”

Latin America and Caribbean Subcommittee Host Policy Dialogue in Panama

On November 30, the Latin America and Caribbean Subcommittee held a policy dialogue in Panama at P&G’s office on “Combating Counterfeits through Collaboration.” The policy dialogue was aimed at discussing the counterfeiting situation in Panama, and the need for an IP rights coordination center. INTA Chief Representative, Latin America and the Caribbean, José Luis Londoño provided opening remarks and focused on the role of intellectual property in Latin America. Mr. Londoño discussed the key IP challenges in the region and what INTA is doing to address them. 
The first panel of the day focused on “The Current Anticounterfeiting Landscape in Panama.” Speakers included Igor Blanco, Circuit Prosecutor of the Intellectual Property Prosecutor’s Office, Alberto Diaz from the National Direction of Police Intelligence (DNIP), Cristana Quinteros, Regional Administrator of National Customs, and Cesar Schiaffino, Regional Expert from the World Customs Organization. Each panelist provided an overview and update on how their offices are combating counterfeiting and how key stakeholders should work together to combat the growing issue of counterfeits in Latin America. Following the panel, brand owners conducted training for the enforcement officials attending the workshop. 

Panama plays a central role in the shipping industry. In 2016, 6.2 million 20-foot equivalent unit (TEU) containers touched Panamanian ports. The Panama Canal, including the Expanded Locks, facilitates the trade of all kinds of goods from coast to coast. According to Panama Customs Authority seizure data from January 1, 2016, to December 31, 2016, 56 containers were seized (down from 233 in 2012) totaling 1,000,425 counterfeit goods at an estimated value of US $21,000,139.

INTA thanks INTA ACC Latin America and Caribbean Subcommittee members for their work on this event: Audrey Williams (Estudio Benedtti), Hugo Morán (Icaza, González-Ruiz &Alemán), and especially our host, Julie Mejia (Procter & Gamble). 

For more information on INTA’s anticounterfeiting activities, please contact INTA Anticounterfeiting Manager Maysa Razavi at mrazavi@inta.org, or Anticounterfeiting Coordinator Tiffany Pho at tpho@inta.org.


Asia-Pacific Update

INTA Holds First Trademark Dialogue in Timor-Leste

On November 30–December 1, INTA led a delegation of staff and members to engage government officials in Dili, Timor-Leste. This is the first time an international organization has organized government and industry dialogues on trademark law in Timor-Leste. Currently, this Southeast Asian nation does not have a trademark law. Trademarks are protected through a system of cautionary notice publications. INTA will be working with Timor-Leste officials on a draft law and to improve the IP rights enforcement environment. Timor-Leste gained independence in 2002 and is Asia’s youngest country. It has also applied for ASEAN membership, which is currently under consideration.

On November 30, INTA staff and members met with representatives of the Timor-Leste government, including the Ministry of Justice and National Police of Timor-Leste (PNTL) to discuss the draft trademark law and enforcement against counterfeit goods, respectively. 

INTA informed the Ministry of Justice that it provides support for legislative and regulatory changes through various policy advocacy committees, including through a dedicated Legislation and Regulation Committee. Additionally, INTA informed the officials about the INTA Model Trademark Law Guidelines, which the officials indicated they would like to receive. 

In meetings with the PNTL, they noted a keen interest addressing counterfeit goods in the domestic market, noting that most markets selling consumer goods in Timor-Leste have fake goods available. The PNTL indicated that it was interested in forming a cross-government enforcement task force focused on dangerous, low quality counterfeit goods. It was also noted that enforcement officials first and foremost needed training on how to identify counterfeit goods and that a firm legislative framework was needed. 

Finally, the PNTL also noted that public awareness on counterfeiting was very low. Timor-Leste is one of Asia’s and the world’s poorest countries (it ranks tenth in on Global Hunger Index) and its consumers tend to purchase the cheapest products available. INTA informed PNTL of the Unreal Campaign, focused on raising awareness among teenagers about the danger of counterfeit goods.

INTA also offered, as an initial step, trainings by video through the Customs Connection. Although focused on customs officials, these videos provide relevant information for all enforcement officials. Given interest from brand owners, INTA offered to organize future in-person trainings through the Anticounterfeiting Committee. 

On December 1, INTA conducted a policy dialogue with local industry, multinational companies (MNCs), government, and local and regional members (INTA has two local law firm members). Officials from the Ministry of Justice, the Ministry of Finance (Customs), the Ministry of Agriculture, the National Police, AIFAESA (Quality Standards Agency), the Ministry of Health and Pharmaceuticals, and SERVE (the business registry) participated. Industry representatives included INTA members Philip Morris International and Heineken. Local industry included Timor-Leste Coffee Growers Association and a handicraft SME. Approximately 35 attendees joined the event and the program was simultaneously interpreted from English to Tetun, the local language.

The workshop opened with remarks from INTA Chief Representative, Asia-Pacific, Seth Hays on the value of IP to national economies, citing recent research released by INTA on trademark-intensive industry contribution to gross domestic product (GDP), exports, and employment. INTA also noted that brands provide an opportunity to diversify the economy away from natural resource extraction (Timor is reliant on petroleum extraction) and to move up the value chain from commodities (coffee is a major export). 

In her remarks, the U.S. Ambassador to Timor-Leste, the Hon. Karen Stanton, indicated that trade with the outside world will be an important factor for Timor government officials, and that trademarks and IP are essential parts of trade. 

INTA members formed a panel session to review the current state of registration of trademarks in Timor-Leste and other models around the world. José Borges Guerra (Miranda & Associados, Timor-Leste), Leanor e da Silva (CRA Timor, Timor-Leste), and Emirsyah Dinar (Affa Intellectual Property Rights, Indonesia) reviewed the current practice of cautionary notice publications in Timor, and how trademark offices function in Europe, Indonesia, and internationally, through the Madrid Protocol. 


INTA’s Practitioner’s Guide to the Madrid Agreement and Madrid Protocol is a comprehensive searchable guide covering the application of the Madrid System in member countries. Visit www.INTA.org/MadridProtocol to learn about the practices and procedures in obtaining, maintaining, licensing, and enforcing registrations obtained through the Madrid System; how each jurisdiction treats marks extending to it; and the history of the Madrid treaties, use of the system, and the strategic considerations of whether, and how, to best use the system. 


Industry representative Vinay Mathur (Heineken, Timor-Leste) provided a number of practical problems that his company has faced in Timor regarding brands, given the current lack of a proper legal framework (including issues around registering claims to future products and counterfeits/knock-offs).

In the afternoon, the discussion focused on anticounterfeiting. Timor-Leste Customs opened the session with a presentation on the current work of customs, which includes seizing counterfeit goods.

Industry representative from PMI’s anti-illicit trade group outlined the regional and local problem with fake goods coming into the market. He praised in particular the work of AIFAESA, the newly established quality standards agency. 

João Francisco Sá (Inventa, Portugal) Emirsyah Dinar, (Affa Intellectual Property Rights, Indonesia), and Ted Merritt (U.S. DOJ, U.S. Embassy, Timor-Leste) spoke on the current state of enforcement in Europe, Indonesia, and the United States. Emphasis was placed on the cross-border trade in counterfeit goods.

Discussion for both morning and afternoon sessions was very lively, including among the various government officials. Participants requested that INTA convene a similar event next year to expand on certain aspects of the day’s discussion. As one attendee noted, “This is a great topic, and comes at the right time. Come next year and you will see three times as many participants.”

Should you have interest in INTA’s activities in the Asia-Pacific region, please contact Seth Hays at shays@inta.org.


Committee Updates

INTA Board Supports “Application Approach” in U.S. Copyright Cases

Jason Bloom, Haynes and Boone, LLP, Dallas, Texas
Copyright Committee

On November 7, 2017, the INTA Board of Directors adopted a resolution supporting the “application approach” over the “registration approach” in U.S. copyright cases. The resolution was proposed by the Enforcement Subcommittee of INTA’s newly formed Copyright Committee, which will complete its inaugural term at the end of this year. The resolution, the full text of which can be found here, was presented by Dale Cendali (Kirkland & Ellis, LLP, USA), Chair of the Copyright Committee, and Jason Bloom, Vice Chair of the Enforcement Subcommittee.

Background

U.S. Circuit Courts have long been split on an important question impacting copyright claimants and brand owners (more on this below): when can a copyright infringement suit be filed? The U.S. Copyright Act, unlike most countries’ copyright regimes, requires a copyright claimant to register its copyright with the U.S. Copyright Office before it can file a copyright infringement lawsuit. Under general procedures, a claimant can register a copyright by filing an application, paying a small fee (US $55, in most cases), and submitting the material to be registered to the Copyright Office. Then, the Copyright Office will either issue or refuse to issue a registration certificate within six to 15 months.

Due to ambiguity in the statute, some courts will allow a copyright claimant to file suit against an infringer immediately after submitting the application, fee, and deposit materials to the Copyright Office, without having to wait several months for the Copyright Office to issue (or refuse) a registration certificate. This is known as the “application approach.” Other courts require a copyright claimant to receive a registration certificate (or denial) from the Copyright Office before filing a copyright infringement lawsuit. This is known as the “registration approach.”

The “registration approach” adopted by several U.S. Circuit and district courts can be detrimental to copyright claimants that do not already own a copyright registration and cannot afford to wait six to 15 months for a registration certificate to issue (or be refused) before proceeding with a lawsuit. For example, when a copyright claimant seeks to: enjoin an infringing advertisement that will run in five days, stop the sale of an infringing product that will launch in a week, or seize and impound infringing articles that will be shipped out of the country at any moment, waiting several months for the Copyright Office to act on a copyright application will not suffice. Such delay makes even less sense in light of the fact that, under the “registration approach,” a copyright claimant can proceed with a lawsuit even if the Copyright Office ultimately declines to issue a registration certificate. Moreover, while courts and litigants receive some benefit from knowing the Copyright Office’s position on copyrightability prior to the commencement of litigation, copyright registrations are issued about 98 percent of the time, making the delay seem all the less reasonable.
  
While the Copyright Office will endeavor (but not guarantee) to issue a registration certificate in about five working days if the claimant pays a US $800 “special handling” fee, the “special handling” fee can be burdensome to some claimants (especially those seeking to register a large number of works), and even a five-day delay can be detrimental in some cases. Additionally, the “registration approach” does not sync well with the Berne Convention, which is an international treaty designed to make securing and enforcing copyright interests as simple as possible, with minimal administrative burdens.

Based on the above reasons, the Enforcement Subcommittee proposed and the INTA Board resolved, that the “application approach” should be universally adopted by U.S. courts. Notably, this very issue has recently been petitioned to the U.S. Supreme Court in the case of Fourth Estate Public Benefit Corp. v. Wall-Street.com, 856 F.3d 1338 (11th Cir. 2017), petition for cert. filed (U.S. Aug. 4, 2017) (No. 17-571).

Importance of Issue to Brand Owners

Although the copyright application versus registration debate may not, at first glance, appear to be of much interest to brand owners, the fact is that copyright law can serve as a very valuable brand protection tool. 

There are several areas, such as logos and designs, in which trademark and copyright protection can overlap, and the ability to assert a copyright claim in addition to a trademark claim against an infringer can provide valuable leverage and additional remedies. Moreover, a copyright owner is not required to prove likelihood of confusion to prevail on a claim, which can result in a higher likelihood of litigation success for brand owners.


Additionally, even when overlapping rights to logos and designs are not involved, there are many instances when a trademark infringer is simultaneously infringing copyrighted text (such as instructions), photos, or other content. In such cases, it is beneficial to be able to assert promptly both copyright and trademark claims against an infringing party. 

Because many brand owners are more diligent about registering their trademarks than copyrighted material, the “application approach” would enable brand owners to promptly submit an application, deposit, and fee and then immediately pursue infringers for copyright and trademark infringement. The “registration approach” could require brand owners to either (i) wait several months to pursue their claims; (ii) only assert trademark claims; or (iii) pay a high fee for “special handling.” None of these choices is ideal. The “application approach” supported by the resolution is therefore more beneficial to brand owners than the “registration approach.”

Conclusion

The passage of this Board resolution was an important accomplishment for the Copyright Committee in its inaugural term, and highlights the importance of copyright law to brand owners. View the full text of the resolution here.


USPTO Unveils Improvements to Design Code System

Non-Traditional Marks Committee—U.S. Subcommittee

For the past year and a half, members of the U.S. Subcommittee of INTA’s Non-Traditional Marks Committee analyzed the USPTO Design Code System with the goal of improving it for increased accuracy of clearance search results and a reduction in the number of unnecessary conflicts. The subcommittee decided on a two-pronged approach: (i) raising awareness of the practitioner; and (ii) seeking clarification about the process from the USPTO.

Practitioner Education

To raise awareness of the design code system, the subcommittee published an INTA Bulletin article, “Tips for Navigating the USPTO Design Code System,” on October 1, 2016, vol. 71, no. 17, to educate practitioners about the system by providing (i) background on the significance of coding; and (ii) options for practitioners to ensure coding is robust by reviewing the assigned codes and requesting modification, addition, or deletion of codes in a USPTO record.

USPTO Analysis

At the same time, the USPTO implemented its own analysis of the system. Results of this analysis and subsequent improvements were presented to the subcommittee at INTA's 2017 Annual Meeting in Barcelona by Meryl Hershkowitz, Deputy Commissioner for Trademark Operations. The presentation was entitled “Improving the Customer Experience with Design Search Coding.” 

This INTA Bulletin article provides a synopsis of the points addressed by Deputy Commissioner Hershkowitz and outlines key improvements to the USPTO notices, webpage, and training. The key improvements are as follows.

Design Search Code Notice

After an application is filed, the USPTO reviews the mark to determine if one or more design codes should be assigned. If any design codes are assigned, the USPTO sends a notice detailing the code(s) selected. The USPTO has updated the text of these notices to assist the applicant both in determining which design codes have been assigned to the mark and in understanding the design coding process. In addition, the updated notices include instructions on accessing a new USPTO webpage on design codes.

New Webpage  

The USPTO updated its webpage on design codes (see here) and now provides information on:
  • Why the USPTO uses codes—to allow examining attorneys and the public the ability to “thoroughly and efficiently search the expansive USPTO database for marks that are similar”; 
  • Examples of codes—the design at the right was assigned at least one code, 03.03.01 for the elephant design;
  • How the USPTO determines which codes to assign—by (i) visually scanning the mark and selecting the features to be assigned a code; and (ii) considering the description of the mark from the application;
  • How to find out which codes are assigned to a mark—by (i) receiving a notice from the USPTO after an application is filed; and (ii) viewing the USPTO online record; and
  • Next steps after assignment of codes—to suggest modification, addition, or deletion of codes; to send an email to TMDesignCodeComments@uspto.gov.
Response to Email

It used to be that if an email was sent to TMDesignCodeComments@uspto.gov, the sender of the email was not informed about the process or timetable. The new procedure is for the USPTO to send a reply message to the sender that provides information on both the process and the timetable. An example of a reply follows:

USPTO has received your design search code request.

Thank you for submitting your request regarding the design search codes assigned to your application. If we approve your request, we will update the list of design search codes assigned to your application. A real-time listing of any design codes assigned to your application is available in the Trademark Status and Document Retrieval (TSDR) database under the ‘Mark Information’ tab.

We will process your request within two business days. If your request is granted, you will see the changes to the design codes in TSDR.

For additional information on design coding, please visit the USPTO’s webpage on design search codes.

Training: Pre-Examination Unit

The USPTO regularly provides training to the pre-examination unit, but in light of the updates to the system, instituted quarterly training emphasizing consistency, such as improvements to ensure consistent coding of co-pending files. 

In view of the above, the subcommittee, collaborating with the USPTO, successfully moved forward on the goal to increase the accuracy of clearance search results and to reduce unnecessary conflicts.


INTA Collaborates with the USPTO on an Industry Training Focused on Coffee Industry

The Government Officials Training (GOT) Committee’s second United States Patent and Trademark Office (USPTO) training for 2017 took place on Thursday, November 7, and focused on the coffee industry. More than 270 people attended or viewed the presentation live online. The GOT Committee’s USPTO Subcommittee Co-Chair, Scott Woldow of Smith, Gambrell & Russell, LLP (USA), who organized the training along with subcommittee members, presented opening remarks. Speakers included Ato Getachew Mengisitie Alemu, former Director General of the Ethiopian IP Office and Batur Oktay, Director and Corporate Counsel at Starbucks Coffee Corp. (USA). The panel was moderated by GOT Committee Member Helen Hill Minsker of Banner & Witcoff (USA).

Mr. Alemu talked about setting up a program for registering key Ethiopian coffee trademarks and licensing them as a means to help his country leverage one of its most unique assets: world renowned coffee. The goal of the initiative is to improve the country’s economy, and in turn, the standard of living for individuals working in the coffee industry. Mr. Alemu also provided insights into the pros and cons of trademark registrations versus certification mark registrations, and royalty-free licenses versus royalty-based licenses. The Ethiopian registration and licensing program has resulted in partnerships with companies, such as Starbucks, which have gone on to invest resources and provide training to coffee farmers in Ethiopia. 

Mr. Oktay gave an overview of the challenges facing a global brand, such as protecting and enforcing rights around the world. Using the Starbucks portfolio as an example, he provided practical guidance for setting priorities for trademark clearance, registration, and enforcement, and discussed how different types of intellectual property (IP) protection may be utilized by companies such Starbucks to protect its IP. 

INTA-USPTO Industry Trainings

Each year, INTA’s GOT Committee collaborates with the USPTO on an Industry Training presentation for the Office’s examining attorneys and staff. The industry trainings provide a forum whereby an industry sector and the USPTO come together to share information on the latest trends within the industry that may affect the examination of trademark applications. The trainings allow examiners to hear about common trademark challenges facing in-house counsel and the outside bar. The trainings establish a direct line of communication between the examiners and attorneys practicing before the USPTO. 

The GOT Committee also presents annual train
ings at the European Union IP Office (EUIPO) and the Mexican Institute of Industrial Property (IMPI). 


Enforcement

INTA Joins Shanghai University IP College and the Jutra IP Center to Co-Host Seminar on Parallel Imports

On November 5, 2017, INTA’s Asia-Pacific-Africa Subcommittee of the Parallel Imports Committee (PIC) co-hosted a seminar on parallel imports (PI) issues with Shanghai University IP College and the Jutra IP Center. Judges from Beijing High Court, Beijing IP Court, Shanghai IP Court, professors from Shanghai University and Tongji University, and more than 60 people, including INTA members and those from local Shanghai companies and law firms, attended the seminar. The PIC was represented by Jason Yao from the law firm of Wan Hui Da. As China does not have consistent jurisprudence on PI, the PIC decided to start a dialogue on this issue in China with this event.

Judge Zhang Lingling from Beijing IP Court gave a presentation on “Trial Practice in Trademark Infringement of Parallel Imports.” She touched upon four cases in which the courts found no infringement, and concluded that courts tend to find no infringement with PI when the products are genuine and legally imported without any amendment to the product or packaging. She then raised a few questions for the judges and audience to consider: 
  1. When the parallel imported products are obviously different in quality with the products sold in China by authorized importers, should the parallel imported products be considered trademark infringing? 
  2. When the parallel imported products are relabeled in Chinese and the Chinese translation is the same as / or similar to the registered Chinese version of the trademark, would the use of Chinese translation be trademark infringement to the registered Chinese mark? 
There were very different views among judges. Some agreed that it would be considered trademark infringement if the product quality/specification of PI is materially different from the authorized imports, or the change of package/label cuts off the connection of the products with the trademark owner. Others founnd it to be non-infringement as long as the products are originally sold by the trademark owner.

The Director of Justra IP Center, Mr. Wang Ze, commented that the following five principles should be considered in PI cases: 
  1. Whether or not the use of trademark in selling PI is necessary for informing consumers whose products they are; 
  2. Whether or not the product quality or commercial reputation of the product has been damaged; 
  3. Whether or not the PI are clearly marked or labeled as parallel or repackaged; 
  4. Whether or not the PI cause any damage to the trademark rights holder; and
  5. Whether or not the repackaging of PI would cut off the connection with the trademark rights holder. 
When judges consider whether or not PI constitute trademark infringement, they should not only consider the likelihood of confusion, but also the possible damages to the trademark rights holder. Mr. Wang’s view was widely agreed by the audience.

Judges and scholars remain divided on this issue. Shining a light on the many other facts that need to be considered in PI cases, the seminar did well to rejuvenate conversation among judges and scholars who do not consider PI to be a form of trademark infringement. INTA always welcomes the opportunity to start a conversation about trademark-relevant topics and thanks the participants and organizers for creating a successful event. 


Europe Update

INTA Increases its Advocacy on the Importance of IP in the Brexit Negotiations

With the festive season upon us, the Europe Representative Office is busy wrapping up its work on several notable issues regarding Brexit and intellectual property (IP), among other things.

Brexit: While Uncertainty Dominates the Process, INTA Proposes a Clear Position and Advocates for IP Protection as a Priority


While ten months have passed since the official triggering of the ‘Brexit’ negotiations in March 2017, the EU and the UK finally reached a compromise on December 8 to agree to move from the current ‘divorce’ phase of the negotiations to the second phase dedicated to the new relationship. This first phase was dominated by core issues, such as the fate of their respective citizens living in each other’s territory, the ‘bill’ to be paid by the UK to exit, and the UK’s border with Ireland with little—if any—consideration of others. Therefore, with IP-related issues far down on the list of priorities on both sides so far, a strong sense of uncertainty remains among brand owners and practitioners regarding the fate of IP once ‘Brexit’ actually occurs.

In this context, INTA has stepped up its advocacy efforts to elevate the status of IP in the negotiations, and to provide tools to help brand owners maintain strong IP protection in the EU and the UK post-Brexit. In March 2017, the Association published Brexit Brands Toolkit: Preparing Brand Owners for Brexit, a guide for companies to anticipate key challenges. Subsequently, at the November 2017 Leadership Meeting, the INTA Board of Directors approved a position paper that provides concrete recommendations on issues of particular concern to brand owners and practitioners. In particular, INTA is advocating for four core principles the EU and UK need to safeguard during Brexit negotiations and when Brexit becomes effective. These are:
  1. Minimum disruption of trade; 
  2. Minimum costs; 
  3. Maximum retention of rights; and
  4. Maximum transparency and legal clarity.
With Brexit negotiations ongoing through 2018 (until March 2019, except if the European Council decides to extend the period), INTA will continue promoting its position paper and raising the profile of IP issues in the negotiations. 

Learn more about INTA’s activities on the dedicated Brexit topic portal here.

New Suggested Measures on Enforcement and Anticounterfeiting in the EU 

The European Commission published its long-awaited ‘IP package’ on November 29 to address ways to improve IP enforcement in the EU. The EU Commission ultimately decided not to review the legislation (Directive 2004/48/EC on the enforcement of intellectual property rights—‘IPRED’) but rather to push forward a set of voluntary measures which include: 
Notably, the EU Commission will propose a new MOU aimed at withholding advertising on IP infringing websites, a second MOU for the transport and shipping industries, and a third MOU for providers of payment services. The Commission will also set up an IP markets watch-list in the second half of 2018, “identifying online and physical markets that engage in or facilitate substantial IPR infringements.”

The Europe Representative Office shared the recently updated the Association's "Addressing the Sales of Counterfeits on the Internet" guide and looks forward to further promoting this important best practices guide in Europe. 

The Europe office also gathered recommendations from the Association’s Anticounterfeiting and Enforcement Committees on enforcement-related issues in the EU where harmonization was needed, including on evidence, injunctions, and damages calculations. INTA will work with the EU Commission on how the newly adopted IP package can help in further addressing these issues.

Finally, the Europe office is raising awareness on the impact of counterfeiting in the European Parliament’s International Trade Committee’s Towards a Digital Trade Strategy (nonbinding) report. INTA secured the inclusion of an amendment stressing figures on the impact of counterfeiting on jobs and tax revenues. The report, including this amendment, has been approved by the European Parliament during its plenary session on December 11‒14.

INTA Continues Working with the EU Commission and EUIPO on IP and Trade 


The Europe Office has also been active on issues relating to trade, attending meetings with the EU Commission, and responding to the Commission’s requests for input on:
  • The status of IPRs in third countries (namely Ecuador, China, Colombia, Peru, and Turkey);
  • The future EU IP dialogues/working groups; and
  • The implementation of free trade agreements with the above-mentioned third countries.
INTA has also prepared input on future “IP key Programs” handled by EUIPO, aimed at improving IPRs in China, Southeast Asia, and Latin America via concrete projects in collaboration with these countries. 

For additional information about INTA’s activities in Europe, please contact Hélène Nicora, INTA’s Chief Europe Representative Officer at hnicora@inta.org


India Update

INTA Attends India IP Office Stakeholders Meeting

On December 7, 2017, the Indian Intellectual Property Office and the Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and Industry, Government of India hosted a stakeholders meeting. These meetings provide a meaningful forum for brand owners and practitioners to communicate procedural and other challenges they face in the effective management of their trademark rights at the IP office. India Consultant Gauri Kumar represented INTA at the meeting. 

In the past two years, the IP office has taken several positive measures in its functioning in response to the needs of stakeholders. Prior to this meeting, INTA submitted written comments to the IP office concerning certain issues faced by its members. 

DIPP Secretary Ramesh Abhishek, DIPP Joint Secretary Rajiv Aggarwal, and Controller General of Patents, Designs, and Trade Marks O.P. Gupta presided over the proceedings. Participants were updated about IT-enabled facilities being introduced by the IP office, such as a short message service (SMS) facility to communicate key alerts and deadlines, a video conferencing facility for hearings, and a mobile app. Mr. Abhishek encouraged users to provide feedback to the IP office on the official website as well as the mobile app so that the user interface aspects of these technologies can be improved. On other procedural aspects, the officials patiently listened to stakeholders and indicated that they will review the feedback and written submissions the IP office received ahead of the meeting. Participants were asked to look out for the IP office’s written responses to all submissions on its official website in the coming days.

Important Public Notice from the Indian Trademarks Office 

The Office of the Controller General of Patents, Designs, and Trade Marks has issued a public notice in Journal No. 1826, Suppl. 1, dated December 5, 2017, regarding the default in filing a reply to official objections raised in examination reports prior to March 2016. As a background, the notice explains that the Office has abandoned a number of applications due to absence of responses to official actions. Consequently, the Office received several complaints regarding wrongful abandonment and took many corrective steps over the course of 2016. This included providing opportunities to applicants and their authorized agents to submit representations with sufficient details and documentary evidence substantiating their case as well as keeping any abandonment orders issued after March 20, 2016, in abeyance. 

The present notice states that all applications in which a reply has been submitted by November 30, 2017, have been restored and will proceed as per law. However, the Office has still not received a response in relation to more than 80,000 applications by November 30, 2017. Unless the Office receives a reply to such applications by December 20, 2017, these will be treated as abandoned with effect from December 31, 2017. The journal with the notice and list of such applications can be accessed here

IPR Awareness for Children in India: A CIPAM and INTA initiative 

The nationwide IP rights awareness campaign for children produced collaboratively by the Cell for IPR Promotion and Management (CIPAM) and INTA is in full swing. December has been a busy month with numerous interactive workshops being held in the National Capital Region. Many INTA members from the region represented the Association and spoke to students in workshops about IP rights and their significance. On December 8, 2017, CIPAM and members of INTA also participated in a “training of trainers” of Agastya International Foundation on Intellectual Property Rights, which will help drive the IPR Awareness Campaign in schools across the country. INTA would like to thank its members, Anand & Anand, Fidus Law Chambers, Zeus IP, and Remfry & Sagar, for participating in these sessions and making impactful presentations on IP. 

The resource material that has been developed by INTA and CIPAM under this campaign for IPR awareness in schools can be viewed here.


Internet

Rights Protection Mechanisms, Access to Domain Registrant Data, and Use of Geographic Terms Continue to Dominate Internet Policy

Fall 2017 was a busy time for Internet advocacy as INTA continues to share the results of the new gTLD cost impact study to interested parties. 

On October 18‒19, INTA Senior Director for Internet Policy, Lori Schulman, participated in the Organization for an International Geographical Indications Network’s (oriGIn’s) 2017 Biannual Meeting in Treviso, Italy. Ms. Schulman gave a presentation titled “Legal Certainty in the Domain Name System,” focusing on the impact study and the remedies that trademark owners have through rights protection mechanisms (RPMs) at ICANN. oriGIn, a not-for-profit and non-governmental organization (NGO) based in Geneva, was established in 2003 and is a global alliance of geographical indications (GIs), representing some 500 associations of producers and other GI-related institutions from 40 countries. 

Ms. Schulman also presented the results of the impact study to representatives of the American Bar Association (ABA), Intellectual Property Owners (IPO) Association, and American Intellectual Property Association (AIPLA) as part of the Washington, D.C., area IP association meeting on November 6, in Arlington, Virginia. 

On October 31, Internet Committee Chair John McElwaine (Nelson Mullins Riley & Scarborough, LLP, USA) presented the results of an impact study to ICANN’s Governmental Advisory Committee (GAC) as part of a panel discussion titled “Rights Protection Mechanisms: Why Should the GAC Care?” at ICANN60, held in Abu Dhabi, UAE, from October 28‒November 3. INTA Board Member Brian Winterfeldt (Winterfeldt IP Group, USA) and Internet Committee Member Susan Payne (Com Laude, UK) were also part of the panel. The presentation yielded a positive result for brand owners with the GAC recognizing in its ICANN60 Communiqué the public policy implications of ICANN’s current RPMs review and the importance of engaging experts, including WIPO and government agencies at the national level.

Although RPMs are of critical concern to INTA owners, another hot topic that took center stage at ICANN60 included the future of the open WHOIS registrant directory. The implementation of the European General Data Privacy Regulation in May 2018 threatens to change the way brand owners access information thorough the WHOIS database. This information is critical to online trademark enforcement. Possible solutions include a tiered system of access, implementing a code of conduct for data protection and use, or closing WHOIS access altogether. While the nature of WHOIS will inevitably change, the question of how it will change is yet to be clarified. INTA advocates for an accessible, accurate, contactable, and reliable registrant directory system, and the RPMs and WHOIS remain key concerns for trademark enforcement. 

Another area of critical concern is how geographic terms are used in domain names. The most prominent example is the disposition of Amazon’s pending .amazon application. The application has been the subject of much controversy as several governments, including those of Argentina, Brazil, and Peru, have objected to the delegation based on the geographic significance of the Amazon rainforest. The ICANN Board has heeded the governments’ concerns and did not award the domain name to Amazon.

Amazon recently prevailed in an Independent Review Panel decision that directed the ICANN Board to reconsider the application and provide a public policy rationale for the refusal of the application. The Board was admonished for failing to follow ICANN’s bylaws and applicant guidebook procedures on the matter. The GAC was criticized for not providing a rationale for its objection. In light of that decision, the ICANN Board has requested additional information from the GAC regarding the public policy rationale for objecting to Amazon’s application. Further, Amazon was provided the opportunity to present its arguments directly to the GAC and a much anticipated follow-up discussion ensued. INTA’s position is that any objection to the use of a geographic term that is determined to be of either national, cultural, geographic, or religious significance to a particular country or region has no legal basis, whether under agreed principles of international law or national sovereignty. A decision regarding .amazon is expected in early 2018.


Trademark Office Updates

Turkey Introduces New Regulation on Code of Conduct and Discipline of Patent and Trademark Attorneys

Contributors: Uğur Aktekin & Ayşen Kunt, Gün + Partners, İstanbul, Turkey
Verifier: Gökçe İzgi, Moroğlu Arseven, İstanbul, Turkey


The Turkish Patent and Trademark Office (the Office) published the Regulation on the Code of Conduct and Discipline of Patent and Trademark Attorneys on May 18, 2017, following the entry into force of the Industrial Property Code on January 10, 2017. 

Article 30/A of the Law of the Establishment and Functions of the Turkish Patent and Trademark Office no. 5000, which was introduced by Article 182 of the IP Code, sets forth that disciplinary sanctions shall be exercised against those trademark and patent attorneys who are acting and behaving against the professional codes of the patent and trademark attorney profession. Disciplinary penalties, and the acts against which these penalties will be applied, are listed in the subsequent paragraph of Article 30/A, whereas the recently published Regulation introduces the rules regarding the code of conduct for patent and trademark attorneys. The code of conduct regulates the relationships between attorneys and clients, other attorneys, and the Office. Rules and procedures relating to the complaint and investigation process by the disciplinary board are also comprised in the Regulation.

Naturally, there are questions regarding the interpretation of some basic concepts, such as conflict of interest, transfer of files, approach to potential clients, and advertising. It is expected that the Disciplinary Board of the Office will shed light on these issues by either publishing sample cases on its website, by concealing the confidential information, or by publishing guidelines.

The provisions of the IP Code and the Regulation on the Code of Conduct and Discipline has filled a gap in the profession of patent and trademark attorneys, as there were no provisions or regulations directly referring to code of conduct and discipline in the former legislation. 

The leading intellectual property associations in Turkey are quite enthusiastic about the new regulation, and most stakeholders believe that this is a milestone for the IP profession in paving the way for the IP profession to reach international standards.


Features

From Smiley to Sad Faces—Registering Emoticons as Trademarks

Lena Marcinoska, Wardynski & Partners, Warsaw, Poland

Emoticons are punctuation marks, numbers, letters, and graphics frequently used to express feelings or emotions. For example, punctuation marks can be arranged in such a way as to create a smiling face :-), a wink ;-), or a sad or frowning face :-( and letters can also be inserted to increase the number of emotions or expressions; for example, ;-P is used to represent a face with a tongue poking out. 

They are commonly found in text messages, discussion forums, on social platforms and on other online platforms. Over time, emoticons have developed from simple punctuation to stylized graphics and even complex 3D designs. Emoticons are also increasingly used in marketing. Brands, including Chevrolet, Domino’s Pizza, McDonalds, Dove, Durex, and Always use them for advertising. In addition, technology companies and IT providers such as Apple, Google, and Microsoft, have created their own emoticons for devices, software, and apps. 

Emoticons are sometimes differentiated from emojis. The former are markings that express facial emotions, while the latter are graphic icons representing many other things, such as: food, weather, activities, jobs, animals, nature, travel, and places. Simple emoticons are still the most popular. 

Registering Simple Emoticons as Trademarks 

The first issue to consider is whether a simple emoticon comprised of a few punctuation marks (without additional words or graphics) can indicate the origin of goods or services. Some would argue that emoticons are incapable of functioning as trademarks because they merely describe a feeling or emotion and, as such, are incapable of indicating the origin of goods or services in the absence of other distinctive elements.

The second issue is whether a simple emoticon is sufficiently distinctive to be capable of registration. Some countries prohibit the registration of symbols, letters, and numbers that are in common use, in the public domain, or in trade. The prohibitions are variously formulated, but the premise is the same. Successful registration depends upon the jurisdictions in which a particular emoticon is filed.

The U.S.—From Despair to Satire 

A review of U.S. Patent and Trademark Office records indicates that a simple emoticon can in some circumstances be registered as a trademark in the United States. For example, Despair, Inc., (Despair) filed two U.S. trademark applications for a frowning face emoticon in 1998 and 1999, :-(, which were successfully registered in 2000 for greeting cards, art prints, posters, clothing, and retail store services.

The marks were registered under U.S. trademark registration nos. 2347676 and 2412079. It was reported that Despair wanted to satirize the absurdity of certain aspects of IP law, especially technology companies that it believed claimed overly broad IP protection. Despair issued a press release on its website stating that it had sued Internet users that used the emoticon. (The story was picked up in the press, and a press release on Despair’s website stated, “Despair filed suit yesterday in a US District Court in Dallas, alleging trademark infringement against over seven million individual Internet users. The company requested separate injunctions granted against each. It is believed to be the largest single trademark dispute in history.”). Afterwards, the company stated that the threat was a joke (see report in The New York Times). These trademarks are now deemed incontestable, have been renewed, and remain on the U.S. Register. 

Various parties have filed additional U.S. applications for emoticon applications, such as U.S. application no. 78288813 for ; ) in Class 25 (filed on August 18, 2003, by Zappos.com, Inc.), and U.S. application no. 78624642 for ; - Pin Classes 14, 16, 18, and 25 (filed on May 6, 2005, by Unique Product Designs, Inc.). The emoticons were rejected, but not on the basis of being emoticons. The first was refused due to a likelihood of confusion with U.S. trademark nos. 3068503 :-) and 2832142 large vertical wink face (see the USPTO decision). The second was abandoned because of formal issues, i.e., that the applicant failed to file for a statement of use or for an extension of time.
  
Other examples include U.S. trademark no. 75893756 for :-), which was successfully registered in Class 25. This was filed on January 10, 2000, by Stephen M. Engel and registered on March 14, 2006, but was not renewed. U.S. trademark no. 78259932 (small vertical wink face) was registered in Class 25 and is still in force (filed on June 9, 2003, by Icon DE Holdings LLC and registered on April 13, 2004). Similarly, VeryMeri Creative Media, Inc., applied for U.S. trademark registration of a heart for apparel in 2013. In 2014, it obtained registration no. 4539570 in Classes 22 and 39 for the emoticon depicted as broken heart emoticon

Will Brand Owners Be Smiling in Europe? 

This depends on the jurisdiction. In Finland in 2006, Tuomas Joel Mattila registered trademark no. 236083 for smiley face emoticon :) for goods and services in Classes 9, 35, and 38. On August 13, 2012, the Finnish Supreme Administrative Court (Viestinnan Keskusliitto ry v Mattila, KHO, 2012:64, unreported KHO, (Fin), Finnish Supreme Administrative Aug. 13, 2012—Mattila) found that this designation was not a distinctive mark and that it could not be registered as a trademark. The court stated that this emoticon was well-known and should be available to everyone for commercial and other purposes. The smiley face was universally and indisputably recognized as a symbol conveying a positive mood and, therefore, was unsuitable as a designation of origin for products or services (page 18 of the judgment in the Mattila case; see also a comprehensive report on the judgment in an article by Pessi Honkasalo and Sanna Kaistinen published in European Intellectual Property Review (E.I.P.R) 2012, Issue 12, Comments, pp. 877‒879).

In Germany, Sebastian Gatzke filed German trademark application no. 3020080784180 for smiling face emoticon :-) in 2008, for goods and services in Classes 14, 16, 25, 28, 38, and 41. The German Patent Office refused registration of the application due to a lack of distinctiveness (see a decision of July 14, 2012, of Deutsches Patent- und Markenamt, case no. 3020080784180). 

In 2011, the company Pricer AB filed winking emoticon silhouette ;-) for goods and services in Classes 9, 35, 37, and 42 as a European Union trade mark (EUTM) under no. EUTM 010083971.The European Union Intellectual Property Office (EUIPO) considered the registrability of the emoticon and decided that registration would be against the public interest (see EUIPO refusal decision dated October 3, 2011, on 010083971, ref. no .V2909 lEUOO/AD/cer). EUIPO stated that grounds for refusal must be interpreted in light of the public interest and that no single trader or business entity may obtain sole control over an emoticon. EUIPO added that the graphics were mundane and not characteristic enough to distinguish the mark which, as a whole, was not distinctive. 

In addition to the cases of rejection above, there are also examples in European jurisdictions of the valid registration of simple emoticons as trademarks.

On June 29, 2007, the Russian telecommunication company Superfone filed winking face emoticon ;-) for advertising, communication, and broadcasting services in Classes 35, 38, and 41. The Russian Patent Office granted trademark no. 370513 in a decision dated January 27, 2009. 

On August 1, 2006, the company Writer’s Block Ltd. filed for registration of the smiling face emoticon  and successfully registered it on February 2, 2008, as an EUTM in Classes 9, 35, and 38 under no. 005234661 for telecommunication and other services. 

The Polish Patent Office granted a trademark registration in 2007 for simple facial graphic emoticon  to Santander Consumer Bank S.A under Polish Trademark Registration no. 217974 for computer programs and other goods and services, among others, in Classes 9,16, and 36. 

Comparing the United States and Europe 

In Europe, the registration of a simple emoticon is more complicated than in the United States. The registration of a facial emoticon would probably once have been easier in the EU, but EUIPO has become more strict and may now refuse to register an emoticon due to its lack of distinctiveness. Applicants at EUIPO and other European jurisdictions may need to include additional elements to make an emoticon distinctive and capable of registration. 

Analyzing Pictorial Marks and Graphics 

While there are few cases on the registrability of emoticons, there are many more cases that can be reviewed to assess whether an emoiji can be registered based upon the fact that it is a graphic. These cases have involved informative pictograms and symbols. Examples of pictograms include chrome cloud and green camera

Both of these pictograms were the subject of EUTM applications, both filed by Apple Inc. (the first, no. 1111497, in Classes 9, 38, and 42; the second, no. 1183785, in Classes 9 and 38. Both were denied registration due to a lack of distinctiveness (see the decision of the First Board of Appeal of August 16, 2013, in case no. R 1666/2012-1, and the decision of the Fifth Board of Appeal of August 7, 2015, in case no. R 2985/2014-5). EUIPO equates emoticons with informative pictograms and treats them in a similar way. This is directly reflected in some EUIPO decisions emphasizing that there is no established practice for allowing simple pictograms or emoticons to be registered because they are not sufficiently distinctive and lack the essential feature of being able to indicate product origin; see point 25 of the decision from the Fifth Board of Appeal of April 25, 2016, in case no. R 1883/2015-5. Here the EUIPO said that “there is clearly no practice established of allowing simple pictograms/emoticons similar to the sign at issue, to registration.” 

The national courts of the EU have also provided some points of reference. In the above Mattila case, the Finnish court compared the emoticon to the @ symbol and stated that the emoticon and typographical symbol @ were similar for the purpose of registrability. It is worth noting that there have been many unsuccessful cases in the EU of attempts to register the pure @ symbol as a trademark for various goods and services. 

The characterization and validity for registration of a simple emoticon and the hashtag designation (#) are similar. A hashtag is used on the Internet to make it easier for users to find messages or posts with a specific theme or content. Attempts have been made to register pure hashtags in various classes. Examples of cases before EUIPO in which it refused to register a sole hashtag include a decision dated December 16, 2013, for green # (see Community Trade Mark (CTM) no. 012042222 in Classes 9, 38, 41, 42, and 45, dated December 16, 2013) and dated November 15, 2013, for Black # (see CTM no. 012042231 in Classes 9, 38, 41, 42, and 45, dated November 15, 2013). Both applications were filed by Castle Street Investments plc. EUIPO stated in the decision concerning the first mark that “the applied for mark consists of no more than a simple basic figure, which is not appropriate for identifying the origin of goods and services.” (see page 4 of the refusal of application.)

Using an Emoticon as a Domain Name 

This is complicated. Some time ago, Coca-Cola used the www. smiley face. ws domain name and others including smiley faces, in a marketing campaign (smiling domain—click here for the Emoticoke video-advert on YouTube). How does a smiling domain work? It is not technically possible to register an emoticon in a domain name. Instead, a specific sequence of characters may be registered, which then gets converted into an emoticon. For example, the smiling domain of Coca-Cola www. smiley face .ws is xn--h28h.ws (click here for one example of a website that allows conversion of the code).The domain with the emoticon converted from a sequence of characters may be displayed as a link, such as on Facebook, but it is not possible to place or see it in a browser or search engine window. 

The Coca-Cola smiling domain has the extension .ws, which is the extension of the Independent State of Samoa. Conversion into an emoticon domain is not currently accepted on domains such as .com, .net, .org, .eu, and many others that are commonly used. Therefore, a smiling domain with the above extensions cannot be registered. Only a few registrars, including Samoa, allow it. 

The registration of a simple emoticon as a trademark is complicated and contentious. Given the current practice of EUIPO and a number of national trademark offices in Europe, it is doubtful whether simple emoticons will be considered distinctive enough to indicate the origin of a product or service there. In view of the difficulty in registering emoticons in a number of jurisdictions, it seems more practical to use simple emoticons without seeking registration. However, this applies only to simple emoticons consisting solely of punctuation marks. If an emoticon is accompanied by additional graphics or words, these may render the mark distinctive and capable of registration. Graphically creative and sophisticated emoticons may be capable of registration and should be analyzed separately for protection under trademark and copyright law.


Law and Practice

EUROPEAN UNION: EGC Considers the Perception of Non-Cyrillic Terms by Bulgarian Consumers

Contributors: Maxim Hristov and Dimitar Batakliev, Petosevic, Sofia, Bulgaria

Verifier: Alona Sivcova, Agency Tria Robit, Riga, Latvia
INTA Bulletins Law & Practice—Europe Subcommittee

On September 22, 2017, the General Court of the European Union (ECG) rendered a judgment in which it assessed how a certain segment of EU consumers will perceive the word element of an EU trade mark (EUTM) that is not in their native language. T-586/15, ECLI:EU:T:2017:643.

Nara Tekstil Sanayi Ve Ticaret Anonim Sirketi filed an EUTM application for the figurative sign NaraMaxx logofor goods and services in International Classes 18, 25, and 35. NBC Fourth Realty Corp. opposed the application on the basis of, among other issues, a Bulgarian national registration for MAXX covering the same classes. The EUIPO’s Opposition Division upheld the opposition and the applicant took the case before EUIPO’s Boards of Appeal (BoA). The Fourth BoA dismissed the appeal, confirming that the signs were visually and phonetically similar and that there was a likelihood of confusion. The BoA also considered that, since the signs had no conceptual meaning for Bulgarian consumers, the conceptual comparison between the marks was neutral for the outcome of the case.

The applicant sought the annulment of the BoA’s decision before the EGC, arguing in part that the term “maxx” had a laudatory connotation and a very low degree of distinctiveness from the point of view of Bulgarian consumers. Therefore, the distinctive element “Nara” was sufficient for the public to identify the origin of the goods and services, according to the applicant. 

The court concurred with the BoA’s finding that, since the application was opposed on the basis of a national Bulgarian registration, likelihood of confusion should be assessed from the point of view of the public at large in Bulgaria. Despite being presented with a decision of the Bulgarian Patent Office, finding that the term “maxx” is perceived by Bulgarians as an abbreviation of “maximum,” the court held that the term “maxx” does not exist in Bulgarian, which uses the Cyrillic alphabet, and that the Bulgarian word for “maximum” is “максимален,” which is not apparently similar to “maxx.” Moreover, the term “maxx” has a notable double “x,” which is very unusual for the relevant public in Bulgaria. Consequently, for the relevant Bulgarian public, the terms “maxx” and “Nara” were found to be equally distinctive, and since the mark shared a common distinctive element with the Bulgarian mark MAXX, that led to likelihood of confusion, held the court.

The case demonstrates how the multiplicity of languages in the EU, which the EUTM system has to accommodate, presents certain challenges in assessing consumers’ perceptions in different European countries. The decision at hand establishes a low threshold for finding distinctiveness of the term “maxx” from the point of view of the Bulgarian public. As the word is in a non-native alphabet for Bulgarians and it is misspelled, this was deemed sufficient to conceal its possible descriptive meaning for the relevant public. These factors, which largely assessed visual perception of the sign, sufficed to outweigh any etymological or phonetical considerations, into which the court did not delve.


EUROPEAN UNION: CJEU Confirms IP Translator Decision Has no Retroactive Effect

Contributor: Florian Traub, Squire Patton Boggs (UK) LLP, London, United Kingdom

Co-Chair, INTA Bulletins Law & Practice—Europe Subcommittee

Verifier: Ellen Gevers, Merkenbureau Knijff & Partners, Weesp, The Netherlands
INTA Bulletins Law & Practice—Europe Subcommittee

IEuropean Union Intellectual Property Office (EUIPO) v. Cactus SA, Case C‑501/15 P, October 11, 2017, the Court of Justice of the European Union (CJEU) confirmed that its 2012 landmark ruling in IP Translator (Case C‑307/10, June 19, 2012) does not have retroactive effect.

The case concerned an application by a Spanish individual to register CACTUS OF PEACE/CACTUS DE LA PAZ as an EU trade mark (EUTM). Cactus SA, a Luxembourg company, opposed the application based on its earlier EUTM registrations for the word mark CACTUS (registered in 2002) and a figurative mark also incorporating the word “cactus” (registered in 2001). The main issue in the opposition was whether the applicant sought to register the mark for goods and services which are identical or similar to those covered by Cactus SA’s prior registrations. The assessment of the similarity of goods and services depended on the proper interpretation of the CJEU’s ruling in IP Translator.

Prior to IP Translator, the EUIPO (or OHIM as it was called then) deemed that trademark registration for a class heading covered all of the goods or services in that class. In IP Translator, the CJEU held that a trademark application must identify the goods/services to be covered by the mark with “sufficient clarity and precision” to enable others, such as competitors, to determine the scope of protection provided by the mark. It held that a class heading could, in principle, be used for this purpose, but an applicant was required to specify whether its application was, in fact, intended to cover all the goods or services included in that class or, if not, which goods or services were to be covered.

Cactus SA’s trademarks (Cactus SA being the opponent in the case) covered only class headings. As a consequence, the important question before the CJEU in the Cactus case was whether the scope of the specifications should be interpreted in line with the pre‒IP Translator approach as covering all of the goods or services in the relevant class, or whether Cactus SA was bound by IP Translator and required to specify more precisely the goods and services for which its marks were registered. 

The CJEU held that IP Translator did not have retroactive effect, and as a result, did not affect the scope of protection of trademarks registered pre‒IP Translator. Cactus SA could therefore rely, in line with the practice which was in place when it filed its applications, on all of the goods or services in classes that contained class headings. 

The decision of the CJEU is logical insofar as it gives trademark owners with national or EUTMs predating IP Translator certainty on the scope of protection of those registrations in portfolios which cover class headings. On the other hand, the decision of the CJEU represents a significant shift from the intention of the EU legislator, EUIPO, and the Convergence Programme (the effort to harmonize EU IP office practices). Article 28(8) EUTM regulation (now, after re-codification: 33(8)), allowing owners of EU trademarks applied for before the IP Translator ruling (either registered or still pending before June 22, 2012) to declare before September 24, 2016, that their trademark was meant to cover also goods or services not covered by the literal meaning of the general indications, appears, in hindsight, superfluous. And what about forbidden terms, i.e., those terms identified in the Convergence Programme that do not meet the requirements of “clarity and precision”? The CJEU in Cactus does not make an express reference to forbidden terms, but specifically, to retail services in Class 35. It held that EUTMs that pre-dated the Praktiker Bau judgment of July 7, 2005 (C-418/02), and covered the full class headings in Class 35, automatically extended to “retail services for any goods.” 

The CJEU’s decision gives owners of EUTMs pre-dating IP Translator and Praktiker Bau a potentially wider basis for successfully opposing applications that were filed later. The Cactus decision is very relevant and practitioners should be aware of its consequences. 


GERMANY: Federal Court of Justice Confirms Protection of 3D Marks

Contributor: Margret Knitter, SKW Schwarz Rechtsanwälte, Munich, Germany

Verifier: Jan Weiser, UNIT4 IP Attorneys at Law, Stuttgart, Germany

Ms. Knitter and Mr. Weiser serve on the INTA Bulletins Law & Practice—Europe Subcommittee.

The Federal Court of Justice (Bundesgerichtshof) recently set aside several decisions of the Federal Patent Court that had revoked protection for two 3D marks (decisions dated October 18, 2017, in cases I ZB 106/16, I ZB 106/16, I ZB 3/17, and I ZB4 /17).

In the first case, Ritter Sport had obtained trademark protection on the packaging, without print, of its square chocolate bars in 1995 and 1998. At the time, the trademarks were registered due to acquired distinctiveness. Kraft Foods Schweiz Holding had initially successfully contested the registrations. The Federal Patent Court held that the challenged design solely consisted of a (packaging) form that was caused by the nature of the product itself (Federal Patent Court, decisions dated November 4, 2016, in cases 25 W (pat) 78/14 and 25 W (pat) 79/14). Such forms may not be monopolized by trademark registration which would restrict competition.

In the second case, Zertus, Dextro Energy’s parent company, had two 3D marks registered for the form of its glucose tablets since 2003. The appropriate trademark protection was also granted on the basis of acquired distinctiveness. When a competitor filed for cancellation of the trademarks, it was initially successful. The Federal Patent Court ruled that the shape was necessary to achieve a technical effect, since the shape offered the most space-saving option for storage, the rounded corners facilitated consumption, and the centered recess served as a predetermined breaking point to easily divide the tablet (Federal Patent Court, decisions dated December 27, 2016, in cases 25 W (pat) 59/14 and 25 W (pat) 60/14). Shapes of goods whose essential characteristic fulfils a technical function are excluded from eligibility for trademark registration. 
The most critical aspect of these decisions was that the grounds for refusal accepted by the Federal Patent Court could not be overcome by proving acquired distinctiveness.

Decisions of the Federal Court of Justice

Following the trademark owners’ appeals, the Federal Court of Justice set aside the contested decisions and referred the cases back to the Federal Patent Court (decisions dated October 18, 2017, in cases I ZB 106/16, I ZB 106/16, I ZB 3/17, and I ZB4 /17).

With respect to the Ritter Sport packaging, the Federal Court of Justice held that marks consisting exclusively of a shape that is determined by the type of product itself are not eligible for trademark protection. This applies to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors. The Federal Court of Justice did not consider the square shape of chocolate bars to be an essential characteristic of chocolate.

With regard to the shape of the Dextro product, the Federal Court of Justice confirmed that marks consisting exclusively of a shape that is necessary to achieve a technical effect cannot claim trademark protection. When the specially shaped corners and edges of the glucose tablets make it more pleasant to consume them, this does not have a technical function, but a sensory effect on consumption, said the court. A 3D mark is not eligible to be protected as a trademark only where all its essential characteristics have technical functions. This could not be determined for the design of the edges of the tablets and the stacking of the individual tablets with these edges, however, which is why the Federal Patent Court decisions were set aside by the Federal Court of Justice.

The Federal Patent Court will now need to decide whether there are other grounds that exclude trademark protection for the two product shapes.


UNITED STATES: Eleventh Circuit Finds Reproduction an Insincere Form of Flattery

Contributor: Richard Rivera, Smith, Gambrell & Russell, LLP, Jacksonville, Florida
INTA Bulletins Law & Practice—North America Subcommittee

Verifier: Julian Bibb, Waller, Lansden, Dortch & Davis, LLP, Nashville, Tennessee

In October 2017, the Eleventh Circuit Court of Appeals reversed a district court’s grant of summary judgement, finding that a college has potentially protectable rights that extend beyond the scope of its federal service mark registrations. Savannah College of Art & Design, Inc. v. Sportswear, Inc., No. 15-13830 (11th Cir. Oct. 3, 2017). The Eleventh Circuit found that the lower court applied the wrong precedent in granting the defendant’s motion for summary judgement against Lanham Act claims arising from the reproduction of the college’s federally registered service marks on athletic clothing.

The plaintiff, Savannah College of Art and Design, Inc., is a private, nonprofit college based in Georgia, and provides educational services to more than 11,000 students. The plaintiff has used the two word marks—SCAD (federally registered in 2003) and SAVANNAH COLLEGE OF ART AND DESIGN (federally registered in 2005)—since 1979. The defendant, Sportswear, Inc., uses a business model whereby interested persons can use its website to apply word and design marks from colleges and other institutions, to items such as t-shirts, hats, and duffel bags. The plaintiff filed suit after becoming aware of the website and the products bearing its registered word marks. The district court found that protection for the service marks did not extended to apparel, in part because the plaintiff did not show priority of use as to goods. The district court relied on Crystal Entertainment & Filmworks v. Jurado, 643 F.3d 1313 (11th Cir. 2016), in reaching its conclusion.

The Eleventh Circuit held that reliance on Jurado was misplaced because neither party in that case held a federal trademark registration; therefore, common law trademark rights and issues relating to priority of use were determinative to the outcome. Here, however, the Eleventh Circuit recognized that the plaintiff owns federal service mark registrations for the marks at issue. Thus, the district court was bound to follow the precedent of Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing, 510 F.2d 1004 (5th Cir. 1975), which held that protection for federally registered service marks could be extended beyond the scope of the services identified in the relevant trademark registration(s) in order to prevent others from selling goods bearing those marks. (Note: The Eleventh Circuit split off from the Fifth Circuit in 1981 and adopted all decisions of the Fifth Circuit Court of Appeals from before the split as binding precedent.)

The Eleventh Circuit reversed the district court’s decision and remanded the case, instructing the lower court to apply the reasoning in Boston Hockey in order to assess the validity and scope of the plaintiff’s service marks and to analyze what impact, if any, this might have on the plaintiff’s claims.

This decision should serve as a reminder that when operating without a license one should not presume that sale of an item bearing another’s registered mark is allowed, even if the mark owner does not use the mark in connection with that type of good.


UNITED STATES: Trademark Licensee’s Priority Derives from its Own Use (and Not from its Licensor’s Use)

Contributor: Julian Bibb, Waller Lansden Dortch & Davis, LLP, Nashville, Tennessee

Verifier: Paul C. Llewellyn, Arnold & Porter Kaye Scholer LLP, New York, New York
INTA Bulletins Law & Practice—North America Subcommittee

The Trademark Trial and Appeal Board (Board) held that the plaintiff licensee in an opposition and cancellation proceeding could not establish priority of use over the defendant based on any common law rights previously acquired by the plaintiff’s licensor. Julie A. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028 (TTAB Sept. 8, 2017). 

Julie A. Moreno (the plaintiff) filed a cancellation petition against one trademark registration (CASANOVA in standard characters), and filed opposition proceedings against two trademark applications (design marks featuring CASANOVA), each identifying sports and athletic equipment, all of which related to boxing gloves, boxing bags, training equipment, and similar various goods, owned by Pro Boxing Supplies, Inc. (the defendant).

As an initial matter, the Board considered the plaintiff’s standing, which was premised on the plaintiff’s rights under a license from Deportes Casanova, a non-party to the proceeding based in Mexico City and the owner of a trademark registration in Mexico for CASANOVA for boxing gloves. Deportes Casanova, which has been using the mark CASANOVA in Mexico for more than 60 years, does not own a U.S. trademark registration, though the evidence suggested longstanding use in the United States. The Board determined that the exclusive trademark license granted by Deportes Casanova to the Licensee on July 23, 2013, to use the mark in the United States “is a valid and enforceable contract,” and as a result, the plaintiff “has a real interest in, and thus standing to pursue, these proceedings.”

Next, the Board acknowledged that contemporaneous use of the marks at issue would be likely to cause confusion. The critical issue turned on which party had priority of use. The defendant relied on its registration and applications as proof of constructive use of its marks. The plaintiff, however, had no U.S.-based registration or applications upon which to rely. Instead, the plaintiff sought to establish priority by the common law use of the mark by its licensor. The defendant’s registration claimed a first use date of December 31, 1993 (and each application, January 30, 2003). Evidence presented during the proceedings suggested that Deportes Casanova could establish common law use in the United States for many years before 1993 (although a date certain was not established, with proffered testimony from various parties claiming use as early as 1968, 1979, and 1982).

In holding that the plaintiff could not prevail as to the issue of priority, the Board explained that the plaintiff “does not argue in her brief, and we do not find, that she personally used the licensed mark CASANOVA before [the defendant’s] constructive use of its . . . marks.” And, addressing an issue of first impression, the Board held that the plaintiff could not rely on the licensor’s prior common law trademark rights. “It is well-settled that use of a mark by a licensee inures to the benefit of the trademark owner,” the Board explained. But the plaintiff “has provided no authority for the converse principle, i.e., that use of a mark by the controlling trademark owner inures to the benefit of the licensee, and we are aware of none.” Furthermore, because the trademark license between the plaintiff and Deportes Casanova expressly disavowed any transfer of ownership to the plaintiff, the Board declined to view “the license as tantamount to an assignment of the mark, which might have allowed [the plaintiff] to assert whatever priority rights Deportes Casanova may have in the United States in the mark CASANOVA” (emphases added).

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 
 
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