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INTA Bulletin


February 1, 2018 Vol. 73 No. 1 Back to Bulletin Main Page

Interviews


Barrett Golden: Don’t Get Caught by Crisis

INTA’s 2018 Brands and Innovation Conference will provide a forum for leading business and legal experts to discuss the impact of innovation on brands and brand strategies. Nowhere has the brand conversation changed more than online, where today companies must be present and constantly engaging with consumers. This especially extends to engagement during major scandals or crises, and requires careful planning, according to Barrett Golden, a partner at the award-winning strategic communications firm of Joele Frank Wilkinson Brimmer Katcher (USA).

Ms. Golden will be speaking at INTA’s Brands and Innovation conference as part of a panel titled, “Crisis Communications: Prepare, Prepare, Prepare!” She shared with the INTA Bulletin some of the key points she will discuss at the conference.

How did you come to work in the area of strategic communications? 

Before being introduced to the founder of Joele Frank [Joele Frank], I wasn’t aware that this kind of profession existed. I had been working as a paralegal at a plaintiff’s securities litigation firm and was contemplating going to law school. That experience left me with two key realizations: first, that practicing law was not for me; and second, I was intrigued by how much communications can influence outcomes. The managing partner at the law firm was a good mentor and graciously introduced me to a number of people, including, ultimately, the firm where I met Joele. In the end, the move was sort of ironic. I moved from a firm that sues companies to one that represents them, and in each case, their communications make the difference. 


Joele Frank Wilkinson Brimmer Katcher was founded in 2000. It began with 11 employees and today has grown to 125 people in New York City, New York, and San Francisco, California, including 22 partners. In addition to crisis work, the firm’s practice areas include mergers and acquisitions; shareholder activism and proxy contests; bankruptcies and restructurings; ongoing investor and financial public relations; litigation support; and private equity. The firm has been named Financial Agency of the Year for two years running by the Holmes Report and has been number one in the U.S. M&A League Tables for five years straight. 


One main area of concentration for you is crisis communications. What is your perspective on how that realm has changed in recent years? 
More than anything, the speed at which news travels has changed. News is not a daily event that lands on doorsteps in the morning. News cycles, particularly for a crisis, can be ongoing and evolve into new angles quickly. Communications strategies need to understand this cadence, anticipate issues before they get reported, and ideally get ahead of the news and shape messages directly with key stakeholders. 

What are some of the missteps that companies make in crisis situations, and what are some ways for companies to avoid these missteps? 
There are others, but I’ll outline four mistakes in a crisis situation that can greatly impact reputation and outcomes: 

First is not taking responsibility when you should. There have been a number of recent, high-profile instances where problems were widespread across an organization. Rather than admit there was a problem, companies have asserted defenses, not fixes. I believe those companies could have mitigated their reputational damage by owning up to their problems and working on solutions earlier. Even if the situation is limited in scope and strong policies and procedures already exist, we encourage our clients to still examine whether this is an opportunity for improvement and make those changes. 

Second is communicating too quickly and before the facts are known. We represent a lot of publicly traded companies. Some have had a significant earnings miss and needed to pre-announce their results. We encourage those clients to get a full story together. It’s important to not just communicate the miss, but be able to explain why and what you are doing to right the ship. Conveying a sense of control is important in any crisis. 

Third is relying on “no comment.” We certainly appreciate that there are legal implications, particularly in a crisis, that must be considered when deciding how, when, and what to communicate, but by and large, we believe “no comment” is a mistake. We try to work closely with our clients and their legal counsel to move beyond “no comment” and develop a communications plan and message that addresses stakeholder concerns without compromising the legal strategy. 

Fourth is assuming that what worked in one situation will work in another. Every crisis is unique, and while there may be best practices, the strategies, messages, spokespeople, and materials should be tailored accordingly. 

In this day and age, data breaches seem to be inevitable—what should a company do to be prepared for this eventuality? And once it happens, what is the first thing they should do? 
You are right; it’s not “if” your company will be breached, but “when.” And, as we’ve seen, some companies are being hacked again and again. Cybersecurity issues are increasingly common. No industry is immune. Still, we have found that there are several advance planning actions that can make a difference. 

We recommend that our clients hire experts who can audit their cybersecurity protocols and make recommendations for improvements. Companies are judged on the relative security measures they had in place prior to a breach, as well as their communication and remediation efforts after a breach. Knowing that you have best-in-class protocols and being able to communicate that fact is a much stronger position than having to admit and explain why you didn’t previously address apparent flaws in your systems. 

Developing contingency plans is also important. While the specifics will change, some data breach scenarios can be anticipated and scenario plans developed. These won’t dictate actual communications in the event of a breach, but they can give companies a running start. 

Last, identifying a core team before you need them is essential. In fact, making a call to this team is the first action companies should take. IT forensic experts, cybersecurity investigators, attorneys, and crisis communications teams all have a role to play. In the heat of the moment, I’d rather have these folks on speed dial rather than need to look up credentials, references, and numbers. 

How do you work with brand teams (legal and marketing)? 
In short, closely. Everyone has an opinion on communications and considering each opinion helps to ensure that we get to the right place. I wear glasses, so an analogy that comes to mind is a visit to the optometrist. The crisis clouds your environment. But, as the lens of each discipline is added, the right solution and the right strategy become clear. 

How can companies best maintain brand integrity during a crisis?
Keep in mind, a company is judged not only on the crisis itself, but also by how they prepared, managed, and communicated during the crisis. Each phase must be addressed. With regard to brand integrity in particular, crisis communications strategies may examine if there is a way to credibly distance the problem from the brand. For example, would using a technology expert as the spokesperson rather than a C-suite executive be appropriate? Can a distinction be drawn between one division versus the company as a whole? To navigate these areas successfully, find a team that is experienced and willing to give it to you straight, and then be open to those observations.

What attracted you to participate in the Brands and Innovation conference? 
I respect members of the project team, including Paul Brown at UL, who have helped to organize the conference. I look forward to the opportunity to both share and learn. 

INTA’s Brands and Innovation Conference will be held March 19‒20, 2018, in New York City. Register here


Sophana Meach, Cambodian Counter Counterfeit Committee: Exposing Fakes, Saving Lives

As President of the Cambodian Counter Counterfeit Committee (CCCC), Lieutenant General Sophana Meach is charged with protecting the public from the many dangers of counterfeit goods. Established in 2015 by the Deputy Prime Minister and Minister of the Interior, H.E. Sar Kheng, with support from the government of France, the CCCC represents the Cambodian government’s recognition that counterfeiting is a serious health and safety risk that requires a dedicated agency to address. 

“Our origins lie in the realization by the Cambodian government that the relevant ministries and other state institutions may not be ideally structured and focused to combat counterfeit trade, especially since the rampant trade and manufacture of counterfeit drugs has begun to pose a serious threat to public health and safety,” says Mr. Meach. By protecting the public from “dangerous, unsafe, unhealthy, and substandard goods, particularly in the categories of medicines, cosmetics, and food/beverage items, we are protecting the interests and investments of honest merchants, brand owners, and license holders who provide employment, technology, education, progress and revenue,” he adds. 

Mr. Meach spoke in more detail with the INTA Bulletin about some of the CCCC’s recent accomplishments and how INTA can help the committee to achieve its goal of saving lives. 

What have been some key accomplishments of the CCCC since its establishment? 
The CCCC has succeeded in serving notice to counterfeiters and illegal importers of the seriousness of their crimes and awakening the public to the dangers and risks to their health by using unlicensed medicines or cosmetic products. Our appeal to the corporate community has produced memorandums of understanding with trade chambers and major companies for common strategies and support of our efforts. We managed to crack down on some large counterfeit operations and successfully prosecuted the perpetrators.

You recently destroyed 81 tons of fake cosmetic products, the most the country has ever disposed of. How did you do it, and are there similar future operations in motion in other sectors?
Those goods were accumulated from earlier raids and seizures. Larger quantities are earmarked for destruction but must await the official and final verdict of the courts. Those public displays of destroying contraband serve to show that the government is serious about disposing of harmful goods and about cutting into illegal businesses. Those raids are the results of a combination of intelligence work, patient investigation, and following complaints of brand owners and the public.


Lieutenant General Sophana Meach
Undersecretary of State
Ministry of Interior, Kingdom of Cambodia

Lieutenant General Sophana Meach is an Undersecretary of State and President of the Cambodia Counter Counterfeit Committee, Ministry of Interior. General Meach served as the Director of the Immigration Department from 2002 to 2003 and the Chief of Staff of the Cambodian National Police from 2003 to 2005. He is the Vice Chairman of the National Counter Terrorism Committee Secretariat. In the area of sport, he serves as President of the Cambodian Motor Sport Federation and the Cambodia Shooting Federation. He is widely connected with the law enforcement and intelligent communities around the world. His areas of specialty are diplomacy, international cooperation, and ASEAN affairs; and transnational crime prevention, including counter-terrorism, counter money laundering, and counter counterfeiting.


What are the major challenges the CCCC is facing, and how are you addressing those?
Our challenges are abundant; foremost are: a lack of resources, building the capabilities of our existing staff and officers, gaining experience, and collecting know-how. We are in desperate need of investigative technologies, data software, and testing equipment. On the public front, we battle against the shadows of corruption and mistrust in state institutions. We have, with the generous assistance of some corporate sponsors, begun public education campaigns, newsletters, and other frontline public relations work. A well-known law firm is sponsoring a presentation video of our activities, and some overseas organizations are offering seminars and workshops. We have managed to draw some talented and experienced individuals into our committee and secretariat to provide focus and structured procedures in order to build competence. Additionally, we lobby our government for proper budget allocation and the private sector to support us with much needed resources, as mentioned above. Interviews such as this one will hopefully generate interest in our work and our plight for tangible support.

How big is the problem of online counterfeiting in Cambodia? Are there projects or partnerships underway to address it? 
Through the proliferation of social media and the ever easier set-up and availability of trading platforms, online trade in counterfeit goods has increased dramatically and will pose a major new challenge. As a first measure, we established within the human resources of our secretariat an IT department, or working group. We are, admittedly, hopelessly behind the curve on this topic. One promising development is a cooperation effort with a French company specialized in cybercrime, which should materialize within the next months and which could put us hot on the heels of illegal cyber trade. Our officers need urgent training and the necessary software and equipment to stop this trend before the Internet undermines our efforts on the street.

How can INTA members best help the CCCC?
INTA can help by assisting us in spreading the message, introducing us to sympathetic potential partners or peer organizations, and by sharing expertise and technologies. We of course appreciate and gratefully accept any form of support, but mostly by focused workshops where “hands-on” participation within smaller groups can produce tangible results, rather than large-scale seminar presentations with universal subjects. We need our officers to experience the procedures, work, and surroundings of their counterparts on foreign soil, where different approaches and advanced practices can broaden their minds and build confidence in their own work. 

What goals is the CCCC focusing on achieving in the coming years? 
We still focus on our priorities in the sectors of public health, beauty care, and food and beverages, but we may soon be persuaded to extend our attention to other areas of public safety, such as electric appliances and toys. We are very determined to fulfill the mission of our charter and to use our invested authority to combat counterfeits and parallel imports with ever greater efficiency. That means intensifying investigative work, expanding public relations efforts, and raising our competence and technical capability by any means possible. Our ultimate goal is to see a dramatic decrease in death or injury from substandard consumer goods and increased prosecution of criminal merchants. 



Association News

In Memoriam: Dolores K. Hanna, INTA Past President and Trademark Mentor

Dolores K. Hanna, who was elected INTA’s first female President in 1984 and who made countless contributions to the Association throughout her decades-long membership, passed away peacefully in her home at the age of 90 last month. 

INTA received an outpouring of sentiment from members who were inspired by Ms. Hanna and had fond memories of working with her. Robin Rolfe (Robin Rolfe Resources, USA), who served as the Association’s Executive Director from 1981 to1998, said that “Dolores’s contributions to INTA have been unmatched by any of INTA's many noteworthy individuals—both in terms of impact and length of service.”

Ms. Hanna graduated from Chicago-Kent IT College of Law in 1952. Prior to that, she earned her bachelor's degree in history and English from Ohio University. She joined the intellectual property firm of Fitch, Even, Tabin & Flannery after graduating law school, and was named partner at a time when it was rare for women to even practice law, noted INTA member Mark Feldman (DLA Piper, USA). She later worked as in-house counsel at Kraft Inc., as head of the trademark group at Hill & Simpson, and founded the trademark practice at Bell, Boyd & Lloyd (now K&L Gates). 

On the occasion of INTA’s 125th anniversary in 2003, Ms. Hanna authored an article for The Trademark Reporter recounting the effort—which she spearheaded with the help of INTA leadership—to review, and ultimately revise, the U.S. Lanham Act. She recalled in the article how, as Association President in 1984, at the suggestion of Ms. Rolfe, Ms. Hanna established the Trademark Review Commission (TRC) to analyze and make recommendations on whether substantive changes to U.S. trademark law were warranted. The effort resulted in the Trademark Law Revision Act of 1988, which was signed into law by President Ronald Reagan on November 16, 1988, and which became effective November 16, 1989. 

The new law adopted many of the TRC’s suggestions, including an “intent-to-use” standard for trademark applications; reduction of the term of a trademark registration from 20 to 10 years to alleviate the problem of “deadwood” marks on the register; and the requirement to show actual commercial use in commerce, rather than “token use,” before a mark is officially registered. “The feeling of great accomplishment added a glow and satisfaction for each of us in the practice of trademark law thereafter,” Ms. Hanna wrote in The Trademark Reporter.

Ms. Hanna also was instrumental in the creation of INTA’s Saul Lefkowitz Moot Court Competition, and the competition’s Dolores K. Hanna Best Brief Award is named in her honor. Some of Ms. Hanna’s many other INTA achievements include founding the Brand Names Education Foundation (BNEF); representing INTA at the Revision of the Paris Convention; and serving as a mentor to at least two generations of IP lawyers—particularly women. 

“Dolores paved the way for so many INTA members, especially women interested in leadership positions,” said 2018 INTA President Tish Berard. “Her example through the years, and her extraordinary success as INTA President, inspired us to do more and to think big.” 

“Dolores was unique,” added Mr. Feldman. “Those of us who got to know her and work with her are truly blessed. We will greatly miss her.” 

INTA has made a donation in Ms. Hanna’s name to the Public Interest Law Initiative, of which she was a Board member.


Committee Spotlight: Harmonization of Trademark Law and Practice Committee

Jonathan Aumonier-Ward, AJ Park, Wellington, New Zealand
INTA Bulletins Association News Subcommittee (2016‒2017 term)

In the 2016–2017 committee term (at the time of writing this article) the Harmonization of Trademark Law and Practice Committee was chaired by Kowit Somwaiya (LawPlus Ltd., Thailand) with Andreas Ebert-Weidenfeller (Meissner Bolte, Germany) as Vice Chair and Debbie Cohn as INTA staff liaison. The main objectives of the committee are to evaluate efforts on national, regional, and international levels through treaties, special conventions, and other non-binding instruments that relate to trademark law and practice, and also to advance and to advocate INTA’s existing policy positions, including drafting proposed treaty language, and to advocate the same to relevant government officials.

The committee is composed of three subcommittees: (1) Free Trade Agreement; (2) International Classification; and (3) New Developments in International Harmonization. 

The Free Trade Agreement Subcommittee is chaired by Chris Kindel (Pirkey Barber, PLLC, USA). This subcommittee has been monitoring progress of free trade agreements (FTAs) worldwide and updating a status chart of current and prospective FTAs. It has also been collaborating with regional and national government agencies on negotiations of trademark issues in FTAs, particularly with European officials on the Trans-Atlantic Trade and Investment Partnership (T-TIP). Earlier this year, this subcommittee, led by its member Horacio Rangel Ortiz, submitted a position paper on Mexico – EU FTA negotiations with comments on the trademark provisions of the FTA and suggestions for modifications where appropriate.

The International Classification Subcommittee, chaired by Winnie Tham (Amica Law, Singapore), has had a fairly busy term. This subcommittee has worked constantly to ensure that INTA is represented before many organizations so that we may participate in the drive toward harmonization of classification. Highlights of the achievements of this subcommittee include submitting papers with respect to the Nice Classification of Goods and Services before the 26th and 27th WIPO Committee of Experts meetings, making a contribution to the 7th session of the Committee of Experts (CE) of the Vienna Union for the Classification of the Figurative Elements, and also monitoring new developments in classification globally. 

The New Developments in International Harmonization subcommittee is chaired by Steve Beale (2016) (Unilever PLC, UK) and Jonathan Moskin (2017) (Foley & Lardner LLP, USA). This subcommittee identifies new matters and activities that will lead to harmonization and/or collaboration of trademark practices, and monitors and prepares a report of new initiatives and trends on trademark issues proposed by International IP organizations such as WIPO. This subcommittee has been working on the report summarizing legal rights and court actions concerning goods in transit and collecting information regarding international use requirements to maintain trademark rights. Moreover, it has begun assembling information on the disparate registration requirements for nontraditional marks.

Assuming leadership of the committee for the 2017–2018 term are Committee Chair Andreas Ebert-Weidenfeller (Meissner Bolte Partnerschaft m.b.B., Germany) and Committee Vice Chair Winnie Tham (Amica Law, Singapore).


Volunteer Spotlight: Michelle Brownlee

Michael W. Rafter, Kilpatrick Townsend & Stockton, New York, New York
INTA Bulletins Association News Subcommittee

Michelle Brownlee, Trademark Counsel for Bose Corporation, is passionate about combating counterfeiting through education. Ms. Brownlee most recently served as the first Chair of INTA’s Unreal Campaign Committee. The Unreal Campaign is INTA’s public awareness initiative designed to educate teenagers (14‒18) about the importance of trademarks, intellectual property, and the dangers of counterfeit products. 

Ms. Brownlee has had an interest in counterfeiting education for a long time and, in her words, is “convinced that education is the most important part of anticounterfeiting strategy for a company like Bose. Many people still do not know that electronics products are counterfeited, and they are surprised how closely the fake products and packaging resemble the original.” Some years ago, Ms. Brownlee worked on some education initiatives when she served on INTA’s Anticounterfeiting Committee, including the introduction of a counterfeit mock trial fact pattern in the Discovering Justice program in Boston, which educates inner-city students about the U.S. justice system. During the committee sign-up process last term, she saw that there was a brand new committee for the Unreal Campaign, which educates teens about counterfeits. Thinking it would be a great match for her interests, she requested to serve on the committee and was delighted when she was asked not only to serve on it, but to Chair the committee as well. It is the INTA project she has most enjoyed working on.

“Because we are a new committee with a clear mission, we have lots of energized committee members who have educated thousands of teens around the world through live student events in schools and through student organizations like DECA and Future Business Leaders of America, as well as through social media influencers,” says Ms. Brownlee. “It has been great to be a part of this effort.”

In fact, Ms. Brownlee believes that one of the most important issues in trademark law today is finding a way to decrease the trade in counterfeit goods. While she would like to see governments around the world devote greater resources to prosecuting counterfeiters, Ms. Brownlee recognizes that “because the Internet enables anonymity and law enforcement resources are stretched thin, it is difficult to make a real impact through criminal and civil actions against counterfeiters.” According to Ms. Brownlee, that is “why education is such an important aspect of counterfeiting strategy.” 

At Bose Corporation, Ms. Brownlee’s daily work involves traditional trademark clearance, prosecution, maintenance, oppositions, and enforcement, as well as—no surprise—anticounterfeiting. When not engaged in work or counterfeiting education, Ms. Brownlee enjoys cycling in the warmer months and skiing and snowboarding during the winter months.


Welcome New Members

Guangzhou Juncy Intellectual Property Agency Co., Ltd., Guangzhou, China
Bringer IP, Toulouse, France
Keep Alert, Pessac, France
Adi Barkan-Lev Law Office & Notary, Tel Aviv, Israel
Tavira Y Botella, Madrid, Spain
Altius Institute for Biomedical Sciences, Seattle, Washington
Forager Information Services, Hillsborough, North Carolina
Law Office of Heena Kampani, Norcross, Georgia
IP Solved (ANZ) Pty Ltd., Sydney, New South Wales, Australia
Suzhou Simate Trading Co. Ltd., Suzhou, China
Tsingtao Brewery Co., Ltd., Qingdao, China
Friese Goeden Patentanwälte PartGmbB, Munich, Germany
One Global IP Law, Tokyo, Japan
Ahold Licensing Sarl, Geneva, Switzerland
Law Office Sebastian Saissi, Zurich, Switzerland
Allen & Overy LLP, New York, New York
Edwin A. Sisson, Attorney at Law, LLC, Sharon Center, Ohio
Jessica Elliott, New Canaan, Connecticut
Simpsons Solicitors, Millers Point, New South Wales, Australia
Beijing Tong Ren Tang Chinese Medicine Company Limited, Hong Kong SAR, China
Tahota (Beijing) Law Firm, Beijing, China
Properta Attorneys Ltd., Helsinki, Finland
Cabinet Camus Lebkiri, Paris, France
Kather Augenstein, Düsseldorf, Germany
Roesler Rasch Van Der Heide & Partner, Munich, Germany
Tesa Scribos GmbH, Heidelberg, Germany
Brand M.O. Limited, Hong Kong SAR, China
Hautier IP, Monaco
Valitra Patent & Trademark, Bursa, Turkey
Couchmans LLP, London, United Kingdom
Merck & Co., Inc., West Point, Pennsylvania
Substantia Law Group, P.C., San Mateo, California


Asia-Pacific Update

The Year Ahead in Asia-Pacific

In 2017, INTA organized 34 events, including conferences, education roundtables, receptions, and member gatherings—up 143 percent from 2016 levels. INTA nearly doubled its engagements with government in the region through policy dialogues, submissions, delegations, and face-to-face meetings. INTA also participated in 25 third-party events around the region, sending speakers to other events and organizing panel sessions with partner organizations. INTA’s impact study, titled The Economic Contribution of Trademark-Intensive Industries in Indonesia, Malaysia, the Philippines, Singapore, and Thailand, made headlines around the region, and was covered in five languages, including Chinese, Bahasa Indonesia, Malay, Tagalog, and Thai. The coming year will continue and expand upon these efforts. 

Monitoring Cross-Border E-Commerce


In 2018, INTA will be monitoring and influencing policy around the region affecting trademarks, with a focus on the impact of cross-border e-commerce and anticounterfeiting. This year, Singapore has taken the chair of ASEAN and has stated that furthering regional e-commerce trade, as well as the ASEAN Single Window—a customs initiative to improve trade within the region—are top priorities. Increases in cross-border e-commerce could also increase the trade in counterfeit goods, and INTA will continue promoting the importance of trademark protection with relevant government authorities. 

INTA will be releasing an updated version of its “Best Practices to Prevent the Sale of Counterfeits Online”—a set of recommendations for e-commerce platforms, brand owners, payment providers, search engines, advertisers, and shippers to prevent the trade in counterfeit goods. In 2018, INTA plans to also continue holding a series of policy dialogues with e-commerce platforms in the region. The anticounterfeiting committee plans to engage platforms in Japan and South Korea later in the year. 

Speaking out Against Brand Restrictions

Last year, INTA committees advocated against brand restrictions in five Asian countries and are monitoring the situation in 2018. The Association will be conducting more policy dialogues with policymakers and stakeholders around the region. 

The first dialogue will be held February 26 in Singapore and will feature: leading expert on brand restrictions, Professor Bryan Mercurio of Chinese University of Hong Kong; Christopher Chan, General Counsel and Head of Government Affairs from RedMart; Samir Dixit, Asia Pacific Managing Director of Brand Finance; and INTA’s 2018 President Tish Berard.

First International Moot Court Competition on Trademarks


INTA is honored to be hosting Asia’s first international moot court competition on trademarks from February 23 to 24 at Singapore Management University. Twenty-four teams from around Asia will be competing in this groundbreaking competition. INTA is honored to have Singapore’s Justice Valerie Thean act as a finalist judge in the competition, and the Association also greatly appreciates the brief readers and oral argument volunteers from INTA’s membership, many of whom are flying to Singapore from other countries in Asia for the event.

Do not hesitate to contact Seth Hays, INTA’s Asia-Pacific Chief Representative, at shays@inta.org or Queenie Zhao, INTA Asia-Pacific Associate, at qzhao@inta.org about any of these activities for 2018.


Committee Updates

Pharma: Regulatory Encroachments on Trademark Rights—Is This the Future for Brands?

Pharmaceuticals Task Group, Health Policy Subcommittee—Emerging Issues Committee

INTA’s Health Policy and Trademark Rights Subcommittee of the Emerging Issues Committee was given a mandate to create a Task Group to further review laws and regulations that limit the use of trademarks and brand imagery on pharmaceutical products. The mandate came in light of the previous work conducted by the Task Group on Unaddressed Issues in Health and Safety, which highlighted the recent headline-grabbing advent of plain packaging requirements for tobacco products in the trademark field. The Pharmaceuticals Task Group researched the situation in Canada, Europe, and the United States, and developed a series of three articles which will touch on the historical intrusion of governments into the branding of pharmaceuticals and highlight recent developments that are changing the landscape in these jurisdictions. We begin with the U.S. situation. 

Brief History

Before 1990, the U.S. Food and Drug Administration (FDA) did not significantly consider the role of pharmaceutical trademarks in possible medication errors. Then, around 1990, the FDA’s Labeling and Nomenclature Committee (LNC) started evaluating proposed pharmaceutical trademarks and making recommendations to the FDA’s Center for Drug Evaluation and Research (CDER) as to whether a proposed pharmaceutical trademark would be acceptable from the perspective of patient safety. Since then, the review and evaluation of trademarks has moved from LNC to other FDA offices or divisions, and now resides within the Division of Medication Error and Prevention Analysis (DMEPA). The FDA’s authority to conduct a review of the proposed trademark arises from the fact that proprietary names are used in a pharmaceutical product’s labels and labeling, as well as in other promotional materials, and so, is based on the “misbranding” section within the Food, Drug and Cosmetic Act (FDCA), where, at Section 502(a) (21 U.S.C. § 352 (a)) the FDCA states: “… a drug, including a biologic, is misbranded if its labeling is false or misleading in any particular (emphasis added).” In addition, Section 351(b) of the Public Health Service Act (42 U.S.C. § 262(b)) prohibits falsely labeling or marking any package or container of a biological product. 

The most significant early milestone that prompted the FDA to review proposed pharmaceutical trademarks more rigorously occurred around 1999, when the Institute of Medicine (IOM) published a report called To Err Is Human. According to that report, health care in the United States was not as safe as it should or could be. Specifically, it was alleged that between 44,000 and 98,000 people were dying in hospitals each year because of preventable medication errors. This was a wake-up call. In the years following publication of this report, as well as further independent reports and learned papers, the U.S. government and the FDA enacted new laws and regulations and developed various draft guidance documents with the goal of minimizing potential medication errors, including those alleged to occur because of confusion between a proposed trademark being considered for a pharmaceutical product and the trademark of an existing pharmaceutical product. 

FDA Guidance: Lack of Predictability, Uncertainty of Safety

In April 2016, after a number of years of various draft guidance documents, the FDA issued a final guidance titled “Contents of a Complete Submission for the Evaluation of Proprietary Names—Guidance for Industry” (Contents Guidance). This guidance should be read in conjunction with the FDA’s draft guidance for industry titled “Best Practices in Developing Proprietary Names for Drugs,” first launched in 2010, relaunched in 2014, and which continues to be draft guidance (Best Practices Guidance). As stated by the FDA, the Best Practices Guidance is the third guidance on best practices for developing and selecting proprietary names and is intended to complement the Contents Guidance, the FDA’s existing guidance for industry. This statement represents the only connection between the guidances. 

The Contents Guidance is directed to an “applicant or sponsor” and applies to proprietary name (trademark) submissions for: (1) prescription drug products, including biologics, that are the subject of an investigational new drug (IND) application, a new drug application (NDA), an abbreviated new drug application (ANDA), or a biologics license application (BLA); and (2) nonprescription drug products that are the subject of an IND, NDA, or ANDA. An applicant or sponsor, however, is only required to make a submission of its proposed proprietary name as part of an NDA, ANDA, or BLA. If the sponsor or applicant wishes to have an earlier evaluation, the FDA will provide a preliminary review of a proposed name while the product is under an IND, but only after phase two clinical trials for the drug have been completed. 

Even if the proposed name is reviewed during an IND and is deemed conditionally accepted, the acceptability status may change because the FDA still has authority to review the proposed trademark during NDA review. If the proposed name is approved conditionally during an NDA review, based upon representations by the FDA in 2014, the acceptability status should not change unless there is a material change to the NDA by the sponsor or applicant. The FDA, however, has not yet formalized that representation in any of the referenced guidances or its “Manual of Policies and Procedures” (MAPP). Thus, it’s still possible that a conditionally approved proposed trademark could be rejected any time during the NDA review, including before final approval of the product. 

Within the Contents Guidance, the FDA states that each submission should be identified as either a request for proprietary name review (or if an amendment, an amendment to a request for proprietary review) or a request for reconsideration of proprietary name (following an initial rejection of a proposed proprietary name). The FDA further states that sponsors or applicants should include up to two proposed proprietary names for review and the applicant should specify its first choice, i.e., primary and alternate. However, the FDA will not evaluate the alternate name unless the primary name is determined to be unacceptable and the applicant has confirmed with the FDA in writing that it would like the alternate proposed proprietary name to be reviewed. In addition, the intended pronunciation of the proposed proprietary name, and the derivation of the proprietary name should be included in the submission. 

In connection with these three elements (the proposed proprietary name, pronunciation, and derivation of the proposed name), a sponsor developing a proposed product name is well advised to carefully consider the factors outlined in the “FDA’s Approach to the Evaluation of Proposed Proprietary Names” found in the Contents Guidance (p. 5, Section II.D). Included is reference to the tools and methods the FDA uses (outlined in Section IV.A of the Concept Paper) for its analysis which are contained in the FDA concept paper titled “PDUFA Pilot Project Proprietary Name Review” (Concept Paper). 

Many of the elements described in the Concept Paper are reproduced and continued in the FDA’s Best Practices Guidance. As such, the Contents Guidance and the Best Practices Guidance, plus the Concept Paper form the landscape of content to be considered with respect to requesting a proprietary name. Although the Contents Guidance doesn’t mention the Best Practices Guidance, the Best Practices Guidance does refer to the Contents Guidance.

Additional content that the FDA says sponsors and applicants should include in their submission is further set out in the Contents Guidance at page 10, Sections IV.B, C, and D and consists of:
  1. Intended meaning of the proprietary name’s modifiers;
  2. Pharmacologic/therapeutic category;
  3. Proposed label and labeling if available at the time of filing, or, if the product label and labeling is not available, information that is expected to form part of the label; and 
  4. Information about product dispensing and delivery
Since a modifier (prefix or suffix) might suggest different meanings to health care professionals and consumers, to minimize product confusion, the submission should include the intended meaning of the modifier, the rationale for the modifier, and any studies that have been conducted to support the use of the modifier. As well, in connection with information expected to be part of the label, this is the requirement if the request for review is filed during the IND when the final label is not available. As such, this requires information that will be found in the label, such as established name, prescription status, dosage form, product strength, proposed indications for use, routes of administration, etc.

The Contents Guidance also sets out a final element, which is the “Applicant’s Assessments of Proprietary Name, Packaging, and/or Labeling” (Contents Guidance, p. 15, Section IV.E). To support its position that the proposed name is not similar to existing drug names and therefore approvable, a sponsor or applicant may submit safety review data, simulation studies, Failure Modes and Effects Analysis (FMEA) results, etc., based on what studies and analyses appear to be important according to the high-level descriptions provided in the Contents Guidance, Best Practices Guidance, and Concept Paper. 

The Best Practices Guidance attempts to provide objective and quantifiable measures to sponsors or applicants. It also places emphasis on the FDA’s Phonetic and Orthographic Computer Analysis (POCA) tool. Specifically, the FDA established the following three ranges of scores (Best Practices Guidance Appendices D, E, and F) so sponsors or applicants can predict with greater certainty whether a proposed pharmaceutical trademark would be “approvable” by the FDA. 

POCA Score   Category
≤ 49 Low similarity
50–69 Moderate similarity
≥ 70 High similarity

Unfortunately, the POCA tool is only one factor considered by the FDA. The Best Practices Guidance makes it clear that the FDA will conduct its own internal safety review even if a sponsor or applicant has conducted a safety review and submitted its results under the “Applicant’s Assessments” section of the Contents Guidance. Unpredictability continues in the face of a sponsor’s safety review since prescription simulations (safety reviews) are, among other things: (1) lacking scientific validation; (2) open to subjective interpretation; (3) not representative of actual prescribing and dispensing situations; (4) not reproducible; and (5) not free of false positives. 

Although the content for the “Applicant’s Assessments” section of the Contents Guidance addresses the primary inquiry of the Best Practices Guidance, namely whether the proposed trademark is too similar to existing drug brand names, it is noteworthy that any information provided under “Applicant’s Assessments” is not required: “FDA [will not] consider a submission incomplete because this information is not provided.” Therefore, because the FDA does not require that data, and, conducts its own safety review, study, and analysis, the FDA reserves the right to make that determination based on its own data. Indeed, it isn’t clear to what extent, if any, the FDA considers the data submitted by the sponsor or applicant. Thus, even though a sponsor or applicant may have a favorable safety review, FMEA result, a POCA score identified as “low similarity” or “moderate similarity,” etc., all of which would suggest an “approvable” proposed trademark, any one, or more, of the previously enumerated items could lead to a different result when the FDA conducts its own internal safety review and overall assessment. Stated differently, the FDA does not make it clear how it conducts its assessments and arrives at its conclusions, other than referring to the general principles set out in the Contents Guidance, the Concept Paper, and the Best Practices Guidance, and to say all of the factors outlined in each of these documents are taken into consideration. This lack of transparency helps to explain the DMEPA-proposed trademark approval data within the table below:

Year CDER (%) CBER* (%)
2017 76 58
2016 78 77
2015 82 53
2014 78 76
2013 62 69
2012 47 47

*Center for Biologics Evaluation and Research 

This data is from an FDA Update: Proprietary Name Review Program PhRMA presentation given on July 24, 2017; thus, the 2017 information is from data from October 1, 2016 to June 14, 2017, and the data does not provide specific insight about whether the approved trademarks were the primary or secondary mark, or whether there were re-filings of name approvals because of a rejection prior to final regulatory approval of the drug product. 

Regardless, whether you are a pharmaceutical trademark owner or a health authority reviewing proposed brand names, patient safety remains paramount. Thus, sponsors or applicants must continue to work with the FDA to minimize the role of pharmaceutical trademarks in medication errors. Working together, it may be possible to develop and/or further refine objective tools like POCA, and provide greater insight as to how different factors are considered and the weight they are given in making decisions, with the hope of providing greater predictability for sponsors or applicants, and at the same time, ensure greater safety for patients.


India Update

INTA Delegation to Visit India in March

The first quarter of the year is always an exciting time for INTA in India, as the Association prepares to send an annual delegation to the country. This year, the delegation comprising INTA’s CEO, Etienne Sanz de Acedo, and 2018 President, Tish Berard (Hearts On Fire Company LLC, USA), will visit India March 14‒16. This will be the Association’s eighth annual delegation to the country. 

As part of INTA’s delegation visit, Association members and leaders will meet with officials from India’s Trade Marks Office (TMO), judges, Indian customs officials, officials from the Department of Industrial Policy & Promotion (DIPP), IP attachés, and representatives of relevant industry and IP associations. 

INTA will also host a half-day workshop, “A ‘Brand’ New Day—Preparing for the Present and Future of Trademarks,” on March 14, 2018, at The LaLiT in New Delhi, India. The workshop will explore the impact of globalization and technological advancement on businesses of all sizes in India, and it will equip attendees with the tools they need to adapt to an evolving trademark climate. At the workshop, leading business insiders and legal experts will address effective strategies and best practices for protecting IP rights in a booming and transforming e-commerce and tech startup environment. 

Workshop sessions will cover timely topics, including: creative solutions for preempting trademark infringement and counterfeiting in today’s tech-dominated reality; strategies for effectively leveraging social media and cultural references to promote brands and influence consumer choice; and practical approaches for new technology companies facing constantly developing IP challenges. This workshop is designed for IP and trademark professionals, in-house counsel, small and medium-sized enterprises (SMEs), and technology industry professionals. It will also provide numerous opportunities for networking. 

After the workshop, registrants can network with their colleagues, session speakers, the INTA President, and the INTA CEO at a cocktail reception. 

INTA would like to thank workshop Project Team members Shwetasree Majumder (Fidus Law Chambers, India), Ranjan Narula (RNA, IP Attorneys, India), and Pulin Kumar (Adidas Group, India), for their excellent work in planning this event. 

The India delegation visit is a significant event in INTA’s annual calendar as the Association continues to play an enhanced role on all fronts in the advancement of trademarks and related IP rights in India.

Click here for more information and to register for the upcoming workshop, “A ‘Brand’ New Day—Preparing for the Present and Future of Trademarks.


Internet

INTA Participates in Internet Governance Forum and Submits Comments to ICANN

While others were winding down for the holidays, INTA maintained its active pace with respect to advocacy efforts. The Association participated in the Internet Governance Forum (IGF) from December 18 to 21 in Geneva, Switzerland. This year’s theme was “Shape Your Digital Future” and covered a wide variety of topics, including expanding Internet access to underserved populations, balancing free speech and privacy rights against Internet security and safety, the role of data in trade, data access, and content regulation. 

Lori Schulman, INTA’s Senior Director for Internet Policy, represented INTA on a panel focused on “Multistakeholder Governance of the Domain Name System, Lessons Learned for other Internet Governance Issues.” Ms. Schulman discussed the evolution of the Uniform Dispute Resolution Process (UDRP) as an excellent example of a solution that was created by the bottom-up multistakeholder process to combat cybersquatting. There is agreement among registries and brand owners that the UDRP works. It solves a problem that is unique to the domain system at relatively low cost. Contributors to the multistakeholder process include representatives from the technical community, private sector, civil society and academia. 

Substantive Comments Submitted

In keeping with INTA’s commitment to ICANN’s policy development process, four substantive comments were submitted in the areas of consumer choice, competition, and trust, and ICANN’s accountability mechanisms (CCWG and WS2). The comments are available here under Testimony and Submissions

Outgoing INTA Internet Committee leadership passed the baton mid-race to new leadership in seamless fashion. INTA highlighted its findings from the 2017 New gTLD Cost Impact Study and clarified points to help the Competition, Consumer Trust and Consumer Choice (CCT) and Review Team refine its conclusions as to whether the new generic top-level domain program (new gTLD) met its objectives of improving choice and competition in the domain name market place. INTA encourages ongoing study and analysis of the program as it is still relatively new. 

INTA submitted three sets of comments in the area of ICANN’s accountability reforms that touched on jurisdiction, improving the role of the Office of Ombudsman, and promoting diversity at ICANN. The jurisdictional topics focused on ICANN’s compliance with U.S. Office of Foreign Asset Control (OFAC) regulations and Choice of Law and Venue in ICANN contracts. 

INTA continues to monitor the implementation of ICANN’s accountability reforms and is creating an accountability score card to highlight ICANN’s progress in this regard.


Middle East Update

Looking Forward to Growth and Change

INTA is looking ahead to 2018 as a year of growth and opportunity in the Middle East. 

Through its dedicated members, the Association will continue to provide expertise to help demystify the region—a fundamental step for improving the business climate. Moreover, INTA will monitor the latest IP developments and encourage the sharing of best practices. In order to further harmonization and address administrative hurdles such as the recent rise in trademark fees across the region, INTA will promote policy dialogue with key officials, encourage innovation, and urge respect for IP rights. Consumer protection will also be a priority.

Recently, INTA finalized the list of new Global Advisory Council (GAC) members and selected the co-chairs of the project team in charge of the November Middle East/Africa Conference (more details on this event to be made available soon). In line with INTA’s 2018–2021 Strategic Plan, the GAC leadership will map out its key activities (advocacy, communications, and membership initiatives) in the region.

Overall, the Association is keen to continue expanding its reach in the region and remains fully committed to engaging with partners and governments.


Trademark Office Updates

Important Public Notice Issued by the Indian Trade Marks Registry

The Controller General of Patents, Designs and Trademarks issued a public notice on January 22, 2018. The notice is regarding the Indian Trade Marks Registry’s (TMR’s) list of applications in which examination was completed before December 31, 2017, and for which the examination reports containing office objection(s) have been communicated to the person concerned at the address for service on record, but no replies have been received by the TMR. 

Applicants and their authorized agents have been provided one last opportunity to send a scanned copy of reply to the examination report on or before February 22, 2018, at parm.tmr@nic.in, failing which such applications will be treated as abandoned. 


Need to Ask a Question or Submit Forms? Simply Contact Madrid

Sending us your questions, comments, or forms is easier than ever with the Contact Madrid service, your gateway to Madrid System customer support.

Ask Us Anything

Contact Madrid offers a wide range of topics and subtopics to guide your enquiry or your request to the right WIPO staff member, helping us serve your business with even greater efficiency.

In addition to asking questions, the Contact Madrid service lets you:
  • request technical support for any of our e-services and online tools (including access to the Madrid Office Portal for IP offices);
  • enquire about invoices and payments; and
  • submit orders for certified records.
Simply select your area of enquiry and follow the onscreen prompts to send your request to a dedicated Madrid System expert.

Upload Multiple Documents per Transaction

The Contact Madrid service allows trademark owners and representatives to upload multiple Madrid System forms and documents in a single request. Once your documents have been received and processed by WIPO, you’ll receive a summary of your transmission by email, which includes the WIPO reference number assigned to your request. You can use this number to track the status of your request in Madrid Monitor.

This intuitive, easy-to-use function helps ensure all your documentation is delivered in a single bundle, streamlining your request so you can get back to the business of building your brand.

Electronic Confirmations and Receipts

Each time you submit a request or document through Contact Madrid, a summary of your transaction will be displayed, allowing you to print and save the details for your records.

What’s more, any time you submit a question or comment, you’ll also receive an email confirmation containing the unique tracking number assigned to your query. When a member of our customer service team responds, you can keep the conversation going by simply including this tracking number in the subject line of your reply.

Ready to Get Started?

Access to the Contact Madrid service is available under the Contacts section of the Madrid homepage, or by selecting “Contact Us” in the upper right-hand corner of the page.

Questions or Comments?
   
To find out more about this dedicated service for Madrid System customer support, contact us.


Features

Comparing Anticounterfeiting Measures in Canada and the United States 

Contributor: Timothy O. Stevenson, Smart & Biggar/Fetherstonhaugh, Ottawa, Ontario, Canada
Co-Chair, INTA Bulletins Law & Practice—North America Subcommittee

Verifier: Mark A. Watkins, Vorys, Sater, Seymour and Pease LLP, Akron, Ohio

anticounterfeiting Canda quote Request for AssistanceOn January 1, 2015, Canada improved the ability of customs authorities to detain suspected counterfeit products and to exchange information regarding these products with brand owners. These measures were a result of amendments to the Copyright Act (CA), Trade-marks Act (TMA), and Customs Act, effected by the Combating Counterfeit Products Act (CCPA)—and their purpose was to restrict the import and export of counterfeit goods at the Canadian border. 

On November 2, 2015, the Canada Border Services Agency (CBSA) released an official memorandum on the new provisions providing detailed guidance as to how the system and the related detention process would work in practice. CBSA, Copyright and Trade-marks, Memorandum D19-4-3 (Ottawa: CBSA, Nov. 2, 2015). All discussion of the Canadian system, below, is with reference to this memorandum..

Now that the system has been in place for more than two years and the processes are well defined, it is a good time to assess the scope of its adoption by brand owners and compare key elements of the Canadian system with the customs protections available in the United States. 

Adoption by Brand Owners

The core of the new anticounterfeiting system in Canada is the Request for Assistance (RFA), by which the owner of a Canadian trademark registration or a registered or unregistered copyright can file an application with the CBSA, listing its rights, with information to permit customs officers to more easily identify and detain suspected counterfeit goods at the border. CBSA officials who encounter suspected counterfeit goods during their inspections will contact the brand owner of the authentic goods so that it may facilitate the detention of the suspected counterfeit goods and begin court proceedings for infringement.

While the RFA system is still in its early days, more than 150 RAFs have been filed with Canada’s customs authorities, resulting in more than 35 seizures of suspected counterfeit or pirated products and at least 10 civil actions as a result of those seizures (figures provided by CBSA as of Oct. 31, 2016)). A variety of brand owners from different industries have taken advantage of the program; not only those in the consumer packaged goods and luxury goods fields, but also those in, for example, the automotive, aviation, and heavy industrial goods sectors.

Given the relatively low upfront cost to register with the RFA system (as discussed below, there is no government registration fee and attorney time is often minimal), it is one of the most cost-effective means of ensuring that suspected counterfeit goods entering and leaving Canada are brought to the attention of brand owners. 

Comparison to the United States

While the Canadian RFA system has some general similarities to the U.S. system of border protection, there are some significant differences. The most fundamental difference is that the Canadian RFA system is effectively a system of notifying the brand owner of the potentially counterfeit goods so that the brand owner can then begin its own action for infringement in the Canadian courts. The CBSA will not adjudicate the matter or impose remedies or fines as can the U.S. Customs and Border Protection (CBP) agency under the Code of Federal Regulations. 19 C.F.R. § 133. 

With this in mind, some of the more significant aspects of the two countries’ protection regimes are compared below. 

1. Eligibility and Application

Under the Canadian RFA system, brand owners can record both trademarks and copyrighted works. The trademarks must be registered with the Canadian Intellectual Property Office (CIPO). Copyright does not need to be registered with CIPO in order to be listed on the RFA, but it is still recommended by CBSA that the copyright be registered. 

The RFA program is intended to capture commercial counterfeits entering and leaving Canada, but does not extend to parallel imports (gray market goods), in-transit goods (those merely passing through Canada between two destinations), or goods imported or exported in personal baggage which appear to be for personal use. 

The above differs to a limited extent from the U.S. recordation system, in which only the owner of a trademark registered on the Principal Register with the U.S Patent and Trademark Office (USPTO) or copyrighted work registered with the U.S Copyright Office may be recorded with CBP. 19 C.F.R. § 133.1 and § 133.31. Also, while the U.S. system does not address goods being exported out of the United States, there are restrictions on the import of gray market goods. 19 C.F.R. § 133.23.

2. Fees and Duration

In Canada, there is no registration fee to apply for an RFA, and it takes CBSA approximately four to six weeks to process the RFA application. The RFA is valid for two years, after which it may be renewed, at no cost, for successive two-year periods.

With the U.S. recordation system, there is a $190 fee for each trademark (per class) or copyright to be recorded. 19 C.F.R. § 133.3(b) and § 133.33(b). The U.S. recordation system also has a fee of $80 for each renewal of a trademark (per class) or copyright recordation. 19 C.F.R. § 133.7(a)(3) and § 133.37(c)(3). However, in the United States, the term of the recordation with CBP is much greater, and flows concurrently with the registration period for the trademark or copyright. The recordation or renewal of a trademark will be valid concurrently with the 10-year registration period or latest renewal period in the USPTO. 19 C.F.R. § 133.4(b). The recordation of copyright remains in effect for 20 years, unless the copyright ownership expires before that time, in which case recordation is in effect until the ownership expires. 19 C.F.R. § 133.34(b). 

3. Detention

The procedures of notification and detention of suspect infringing goods differ noticeably. In particular, with the Canadian RFA system, the brand owner is first notified of the suspect goods by customs authorities, and they must then begin an infringement proceeding in a Canadian court to obtain a remedy. Under the U.S. system, the notification and initial burden is first placed on the importer to justify that the suspect goods are legitimate, and if the importer is not able to do so, the goods will be seized and disposed. 19 C.F.R. § 133.21(b) and § 133.43(a). Relevant details of the two systems are compared below. 

In Canada, when a CBSA officer encounters suspected counterfeit goods during routine inspections, and the brand owner has filed an RFA, the following steps will be followed:
  • The brand owner will be contacted and provided with preliminary information, such as information about the nature and quantity of the goods (and photographs), and must, within three business days, notify the CBSA whether or not it wishes to pursue a remedy under the Copyright Act or the Trade-marks Act. Memorandum D19-4-3, paras. 17‒19.
  • If the brand owner notifies the CBSA, it will be issued a formal Notice of Detention. The brand owner must then, within 10 working days (five working days for perishable goods), provide to the CBSA a copy of a document filed with a Canadian court beginning proceedings with respect to the detained goods. During this time, the brand owner may be provided with further information that could assist it in pursuing a remedy (e.g., samples of the goods and/or the opportunity to inspect them, information that identifies the owner, importer, exporter, consignee, and/or manufacturer of the goods). Memorandum D19-4-3, paras. 20‒21, 26.
  • If the brand owner submits documentation showing the start of court proceedings before the end of the 10-day detention period, the goods will then continue to be detained until: the court proceedings either end, are settled, or become abandoned; a court directs that the goods are no longer to be detained; or the brand owner consents to the goods no longer being detained. Memorandum D19-4-3, para. 27.
In the United States, suspected counterfeit articles bearing a trademark registered with the CBP will be detained for a period of up to 30 days. 19 C.F.R. § 133.21(b)(1). Within five business days from the date of a decision to detain suspected merchandise, CBP will notify the importer of the detention, giving the importer the option of presenting information within seven business days to establish that the detained merchandise is not counterfeit. 19 CFR § 133.21(b)(2). Where the importer does not provide this information, CBP may then provide the brand owner with a sample and information regarding the detained merchandise. 19 C.F.R. § 133.21(b)(2). 

Once CBP determines that the article bears a counterfeit mark, the owner of the mark, within 30 days of notification of seizure, may provide written consent to the importer allowing the importation of the seized merchandise after removal of the mark, or other appropriate disposition. 19 C.F.R. § 133.21(g). Otherwise, the merchandise will be seized and disposed. 19 C.F.R. § 133.21(g).

For copyright, when CBP has any reason to believe that an imported article may be infringing a recorded copyrighted work, the importer will be notified and advised that it may file a statement denying that the article is an infringing copy and, in the absence of receipt within 30 days of a denial, the detained article will be considered an infringing copy and subject to seizure and forfeiture. 19 C.F.R. § 133.43(a). 

If the importer files a denial, CBP will then give the copyright owner 30 days to file a written demand for the exclusion from entry of the detained imported article and a bond to make sure the importer or owner of the imported article is not liable for any loss or damage resulting from customs detention in the event that it is determined that the article is not infringing. 19 C.F.R. § 133.43(b). If the copyright owner files a written demand with a proper bond, the parties may then submit evidence, legal briefs, or other pertinent material to substantiate the claim or denial of infringement, in order for CBP to decide the disputed claim of infringement. 19 C.F.R. § 133.43(d)(1). Alternatively, the copyright owner may seek a court order enjoining importation of the article. 19 C.F.R. § 133.43(e).

4. Possible Additional Costs

Under the Canadian RFA system, brand owners are potentially liable for the CBSA’s costs associated with the storage, handling, and, if applicable, destruction of detained goods, should the goods be found not to be infringing. Brand owners are also potentially liable for damages to the owner, importer, or exporter of the detained goods should any of these parties suffer losses, costs, or prejudice as a result of the detention if the proceedings are dismissed or discontinued.

In the United States, for recorded trademarks, CBP may release to the owner of the mark a sample when the owner provides a bond, conditioned to indemnify the importer or owner of the imported article against any loss or damage resulting from the furnishing of the sample. 19 C.F.R. § 133.21(c)(2). However, CBP will provide brand owners with certain information regarding the suspected infringing products, such as photographs of the products, without the payment of a bond. 19 C.F.R. § 133.21(b). For copyright owners, a bond may be required to make sure the United States, its officers and employees, and the importer or owner of the imported article are not liable for any loss or damage resulting from the furnishing of a sample. 19 C.F.R. § 133.43(c). In addition, a copyright owner must also provide a bond conditioned to ensure that the importer or owner of the imported article is not liable for any loss or damage resulting from customs detention in the event that it is determined that the article is not an infringing copy. 19 C.F.R. § 133.43(b).

Comparison Table

The table below summarizes many of the key differences between the Canadian and U.S. systems. 



Canada

United States

System

Request for Assistance (RFA) application with Canadian Border Services Agency (CBSA)

Recordation of trademarks and copyrighted works with U.S. Customs and Border Protection (CBP)

Eligible IP rights

Registered trademark

Registered or unregistered copyright

Registered trademark (on Principal Register) or registered copyright

Protection

Applies to commercial counterfeits entering and leaving Canada

Does not apply to gray market goods, in-transit goods, or goods in personal baggage that appear to be for personal use

Applies to importation of goods, including gray market goods, articles accompanying importer carried in baggage or on the person, and mail importations

Term of recordation

Two years with additional two-year extensions upon renewal

Recordation of trademark remains in force concurrently with the 10-year registration period or latest renewal period

Recordation of copyright in effect for 20 years unless copyright expires before that time 

Filing fee

No filing fee

$190 for each trademark (per class) or copyright to be recorded

$80 for each renewal of a trademark (per class)/copyright recordation 

Initia detention period

Up to 10 working days—or five days if  the goods are perishable—after the day on which the CBSA first provides a sample or information to the brand owner

Up to 30 days from the date on which the merchandise is presented for examination

Possible additional costs

Brand owner may be liable for:

  • storage, handling, and destruction charge incurred by CBSA in connection with detention of goods; and
  • damages to the owner, importer, or exporter of the detained goods if infringement proceedings are dismissed or discontinued
To obtain a sample of the goods, a bond is required from the brand owner to account for any loss or damage resulting from the furnishing of a sample 

For copyright, a bond is also required for any loss/damage resulting from detention if the article is found to be non-infringing
Penalties

CBSA does not assess penalties or prosecute

CBP may impose a civil fine for merchandise seized and bearing counterfeit marks

Remedies

Brand owner has the opportunity to pursue remedies under the Copyright Act and Trademarks Act via an infringement action in civil court

Issue can be decided administratively by CBP or by a federal district court 


A Cost-Effective Method

After more than two years, the Canadian RFA system has proven to be a-cost effective method for brand owners to be notified of and to detain counterfeit goods at the Canadian border. Brand owners familiar with the U.S. system of customs and border protection should be aware that the Canadian system works differently and, in certain respects, requires more active involvement by the brand owner and its counsel in seeking remedies from the importer (or exporter) once the goods have been detained by customs authorities. 


Law and Practice

CAMBODIA: Official Fees for Trademark Matters Increased

Contributor: David Haskel, Abacus IP, Phnom Penh, Cambodia

Verifier: Chandavya Ing, Tilleke & Gibbons, Phnom Penh, Cambodia


Effective January 1, 2018, the official fees for trademark matters in Cambodia were increased and new fees introduced for international registrations under the Madrid System, which Cambodia joined on June 5, 2015. 

While certain fees will more than double, such as the fee for oppositions, the basic fee for filing and registration of a trademark will increase by less than 3 percent. With the establishment of the fees for international registrations, the Department of Intellectual Property Rights will, from January 1, 2018, be able to serve as office of origin under the Madrid System. Fees have been set for processing of international applications, renewal of international registrations, transforming an international to a national application, and replacing a national with an international mark. 

The enabling regulation also sets forth estimated timeframes for processing of matters by the Department of Intellectual Property Rights. Although these are merely indicative and non-binding, they do provide a helpful indication for applicants and should, over time, become an expectation of how long a matter may remain pending.
 
In accordance with the Joint Declaration on Public Service Fees between the Ministry of Commerce and Ministry of Economy and Finance No. 1217, dated November 27, 2017, the previous two Joint Declarations (No. 985, dated Dec. 28, 2012, and No. 1643, dated Dec. 16, 2014) were abrogated on December 31, 2017.


EUROPEAN UNION: Disputes Related to Ownership of IPRs Do Not Fall Within the Exclusive Jurisdiction of Member States

Contributor: Abdurrahim Ayaz, Istanbul Patent A.S., Istanbul, Turkey

Verifier: Nina Ringen, Lundgrens Law Firm, Copenhagen, Denmark

Mr. Ayaz and Ms. Ringen are members of the INTA Bulletins Law & Practice—Europe Subcommittee.

In the case of Hanssen Beleggingen BV v. Tanja Prast-Knipping (C-341/16, Oct. 5, 2017), the Court of Justice of the European Union (CJEU) held that the exclusive jurisdiction of the member states in proceedings concerning intellectual property rights (IPRs) is limited to proceedings concerning the registration or validity of those rights, and that proceedings concerning exclusively the question of who is entitled to those rights do not fall within the scope of that exclusive jurisdiction. 

After the death of Mr. Helmut Knipping, owner of a German company which is the holder of Benelux trademark registration no. 361604 for KNIPPING (& device), Ms. Prast-Knipping was recorded as the proprietor of the trademark by the Benelux Intellectual Property Office based on her being the sole heiress of Mr. Knipping. 

Ms. Prast-Knipping’s recordal as the proprietor of that Benelux trademark was contested before the German court. The Higher Regional Court of Düsseldorf (referring court) referred the case to the CJEU, in order to clear its doubts as to whether the German courts had jurisdiction to hear the case. The question was whether it was possible for the courts of a member state, in which registration of the mark concerned had taken place, to have exclusive jurisdiction under Article 22(4) of Regulation No. 44/2001. The referring court sought answers to whether the action amounted to proceedings “concerning with the registration or validity of … trade marks” within the meaning of Article 22(4), and whether the judgment of Duijnstee (Case 288/82, Nov. 15, 1983) still had to be taken into account despite the development of trademark law since that judgment. 

The court held in the judgment of Duijnstee that proceedings concerning exclusively the question of who is entitled to a patent do not fall within the scope of exclusive jurisdiction. Article 22(4) of Regulation No. 44/2001 provides exclusive jurisdiction to the court of a member state in which the right was registered “in proceedings concerned with the registration or validity of [IPRs].” The CJEU held in the case of Solvay (C-616/10, July 12, 2012) that Article 22(4) reflects the same system and is drafted in almost identical terms as Article 16(4) of the Brussels Convention, so that it is necessary to ensure continuity in the interpretation of those provisions. Accordingly, the CJEU confirmed that the reasoning in the case of Duijnstee remains valid despite the development of trademark law, and also applies to trademark cases, not just patents.

In conclusion, the CJEU held that cases that concern exclusively the question of who must be regarded as the proprietor of a trademark do not fall within the exclusive jurisdiction of a member state in which that trademark was registered, and do not fall within the scope of Article 22(4) of Regulation No. 44/2001.


INDIA: Use of a Registered Trademark as Trade Name Does Not Constitute Infringement

Contributor: Samta Mehra, Remfry & Sagar, Gurgaon, India

Verifier: Shailendra Bhandare, Khaitan & Co., Mumbai, India

The Supreme Court of India, on August 11, 2017, agreed to hear an appeal filed by Cipla Limited against a March ruling of the full bench of the Bombay High Court that use of a registered trademark as a trade name for dissimilar goods/services does not amount to infringement. Cipla Limited v. M/s Cipla Indsutries Pvt. Ltd., March 1, 2017. While the Supreme Court has agreed to hear the appeal, it has not yet delivered a ruling in the case.

The plaintiff, Cipla Limited, a well-known manufacturer of pharmaceutical products, had a registration for the mark CIPLA in Class 5 with respect to “pharmaceutical products.” The defendant, M/s CIPLA Industries Pvt. Ltd., registered the mark CIPLA PLAST in Class 21 with respect to “household and kitchen utensils, containers etc.” A suit was initiated by the plaintiff against the defendant claiming that use of its well-known registered trademark CIPLA as a part of the defendant’s corporate name amounted to infringement. 

The plaintiff argued that, since trademarks are, by definition, inclusive, they must include the right to use the mark as a trade name; thus, use of Cipla Limited’s trademark as a corporate name by the defendant would amount to infringement. On the other hand, the defendant maintained that its goods were neither similar nor identical to the plaintiff’s marks and, hence, no infringement was present. 

The single judge adjudicating the matter, although bound by the dictum from the case of Raymond Limited v. Raymond Pharmaceuticals [2010 (44) PTC (Bom)] (Raymond), was of the view that the decision rendered in the said case—wherein an injunction was refused to the plaintiffs whose registered trademark was being used as a corporate name by the defendants—required reconsideration. In disagreement with the findings of the Raymond case, the judge referred the matter to a larger bench. 

The full bench had to, among other issues, deliberate on points of law surrounding the interplay of relevant provisions of Section 29 of the Trade Marks Act, which deals with infringement of registered trademarks—in particular, Sections 29(4) and 29(5). Interpreting the provisions literally, the bench held that in order to invoke Section 29(4), the plaintiff would have to show that the defendant’s mark was identical with or similar to the plaintiff’s well-known registered trademark and was used in relation to dissimilar goods/services. On the other hand, Section 29(5) applied in cases where the plaintiff’s registered trademark was used as a corporate name by the defendant with respect to same/similar goods/services. The bench affirmed that Sections 29(4) and 29(5) were mutually exclusive and no cause of action would exist when a registered trademark was used as a corporate name with respect to dissimilar goods. 

While the judgment is based on a literal interpretation of the law, it does affect the statutory rights of holders of well-known trademarks. That said, a passing off action may still be initiated in such scenarios. Owners of well-known marks now eagerly await the decision of the Supreme Court in the appeal. Although the matter was listed on January 4, 2018, a hearing has not yet been held.


UNITED STATES: Insincere Form of Flattery—Excell’s Costly Imitation of Coty Fragrances

Contributor: Nina Osseiran, Cedar White Bradley, Washington, D.C.

Verifier: Connie Limperis, San Diego, California

Ms. Osseiran and Ms. Limperis are members of the INTA Bulletins Law & Practice—North America Subcommittee.

Plaintiffs Coty, Inc., et al. (Coty), producers/distributors of Calvin Klein, Vera Wang, and Lady Gaga fragrances, among others, sued Excell Brands, LLC (Excell) for trademark infringement, unfair competition, trademark dilution, and false advertising under federal and New York law. Coty Inc. v. Excell Brands, LLC Case 1:15-CV-07029-JMF Document 156 (S.D.N.Y. Sept. 18, 2017).

At issue, were Excell’s bargain versions of Coty’s fragrances under similar names and packaging, for example:
Ck_Image 1versus ok_Image 1

 Obsession_Image 1versus  Possession_Image 1

After a three-day bench trial, the United States District Court for the Southern District of New York concluded that, “Excell’s imitation crossed the line from flattery to infringement, dilution, unfair competition, and false advertising.”

Coty established that its fragrances are “some of the most popular and recognizable” in the market and proved it spent hundreds of millions of dollars on advertising and promotion. 

The defendant, on the other hand, conceded it manufactured and distributed knockoffs referred to as “versions” of Coty’s fragrances, and did so without authorization or royalty payments. Excell asserted the defenses of nominative fair use and laches. The affirmative laches defense was dismissed as Excell conceded its intent to infringe upon Coty’s brands. 

The court analyzed Coty’s trademark infringement claim under the two-prong test as to whether a plaintiff’s mark is entitled to protection, and in the case of trade dress, whether it is nonfunctional; and secondly, whether use of the mark is likely to cause consumer confusion. The court easily concluded Coty’s trademarks are entitled to trademark protection, as are Coty’s unregistered trade dresses. The court further rejected Excell’s argument that Coty’s fragrance bottles should be deemed product designs that lacked acquired distinctiveness.

In assessing likelihood of confusion, the court found that five of eight of the Polaroid factors weighed heavily in Coty’s favor, and none strongly favored Excell. While Excell argued that its products include a disclaimer on the product packaging, such as “Our Version Of” or “Not Associated With,” the court noted that courts have found that “disclaimers are not only ineffective, but actually cut against the allegedly infringing party.” Additionally, Excell displayed Coty’s marks more prominently than the disclaimer language undercutting any arguable purposes for a disclaimer.

Excell also argued against consumer confusion due to the significant price difference and different sales venues between its low-cost fragrances sold at discount retailers versus Coty’s higher-priced fragrances sold at higher-end or upscale retailers. While the court found that these factors weighed in Excell’s favor, it managed to downplay how significantly these factors favored Excell. All in all, in considering the Poloroid factors, the court looked to the products “in their totality” and concluded “that consumers are likely to be confused by Excell’s knockoff fragrances.”

Finally, the court dismissed Excell’s nominative fair use defense to Coty’s trademark infringement claim finding, on the contrary, that Excell sought to mimic Coty’s fragrances as to brands, marks, and trade dress.

Turning to trademark dilution, Coty established all the elements such that the court concluded Excell diluted Coty’s famous trademarks under federal law and Coty’s distinctive trademarks under state law.

Lastly, as to false advertising, Coty was able to prove all five elements, including that Excell’s use of disclaimer phrases such as “Our Version Of” was likely to deceive or confuse consumers.

In conclusion, the court granted Coty’s request for injunctive relief, and awarded profits and reasonable costs, notwithstanding that Excell had shut down its operations by December 2016 after some of its owners and employees were criminally indicted on charges of money laundering for Latin American drug cartels.


UNITED STATES: Consumer Survey Fails Reliability Test and Results in Dismantling of Massive Verdict

Contributor: Julian L. Bibb IV, Waller Lansden Dortch & Davis, LLP, Nashville, Tennessee
INTA Bulletins Features Subcommittee

Verifier: Connie Limperis, San Diego, California
INTA Bulletins Law & Practice—North America Subcommittee

In vacating a jury’s award of almost $54 million based on a finding of willful trademark and trade dress infringement, an Illinois federal district court granted the defendants’ motion for a new trial, finding the trial “fundamentally unfair due to the admission of unreliable and prejudicial expert testimony.” The Black & Decker Corporation et al v. Positec USA Inc., No. 1:2011cv05426 (N.D. Ill. Sept. 11, 2017).

After losing at trial, the defendants filed multiple post-trial motions. The defendants argued that the jury’s damages award was excessive, the verdict was against the great weight of the evidence, and the trial was fundamentally unfair owing to the consumer survey and testimony admitted.

At trial, the plaintiffs alleged the defendants infringed their intellectual property rights by selling power tools and accessories that used the plaintiffs’ “family” of yellow and black registered trademarks and trade dress. The court examined a consumer likelihood of confusion survey. The survey participants were shown a photograph of two rows of boxed power tools in which all products depicted were the plaintiffs’ DeWalt products, save one, which was a Rockwell product sold by the defendants. The participants were then asked if they believed that all products featured in the photograph were offered by one company, and 47 percent of participants said they did. At trial, the defendants moved to exclude the survey evidence based on Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc.,509 US 579 (1993), but the motion was denied.

In holding that the defendants were entitled to a new trial, the court explained, “this is one of those unusual instances in which a proffered consumer survey was ‘so informally designed and conducted that it fails key tests of professionalism and reliability,’ and therefore should have been excluded from trial.” Citing J. Thomas McCarthy, 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:158 (4th ed. 1999). Further, the court noted the expert had acknowledged at trial that the survey was designed to test whether its participants “could be induced to ‘overlook the obvious’ through the placement of Defendants’ product amidst boxes of Plaintiffs’ products,” and which, the court noted the plaintiffs could not show actually mirrored any real setting in which consumers would encounter either the parties’ respective trademark or trade dress in commerce. For these reasons, the court found that the survey was unreliable.

Regarding the defendants’ motion for judgment notwithstanding the verdict, the district court found that a rational jury could find that the defendants’ use of the yellow and black color scheme could create a likelihood of confusion, that the defendants’ prior knowledge of the plaintiffs’ trademarks and trade dress could establish their intent to cause confusion, and that the defendants’ extensive advertising and promotional activities could also contribute to a likelihood of confusion, among other similar findings. Consequently, the defendants’ motion was denied.

In sum, the flawed survey was “the linchpin of Plaintiffs’ case on likelihood of confusion” and no evidence of actual confusion was presented; thus, the court concluded that the survey and accompanying testimony most likely “unfairly influenced the jury’s verdict.”

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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