Daily News - Managing Intellectual Property · (FIFA) also stressed the need for a consid - ered...

I NTA President Mei-lan Stark and StevenWang, Acting Chairman of China’sQuality Brands Protection Committee,

signed a cooperation agreement yesterday todeepen the collaboration between the two IPorganizations. QBPC represents foreignbrand owners in China and works to pro-mote IP protection in the country.

Jack Chang, Honorary Chair of QBPC,said that the agreement with INTA marked anew page for the Committee. “We are thefrontline soldiers fighting counterfeiting inChina. The police kick the door down andwe follow them in, and so we have in-depthexperience of the tricks the counterfeitersplay. We know the dos and don’ts, and howto engage the Chinese government. We won’tshy away from giving the Chinese govern-ment the credit it deserves, but we also havethe courage to raise issues with officials.”But he added that it wasn’t enough to focusjust on China in the fight against fakes. “Weneed to leverage the platform. INTA bringsmore international experience to QBPC.”

Stark said that the QBPC would helpINTA to navigate China, and in return, theorganization would help those brands thatare not already global to become global.

Data

New gTLDtrendsPage 6

Han

Cyrillic

Katakana

ArabicHebrewMixedscriptThaiDevanagari

Preview

How to deal withlookalikesPage 8

新闻。

全球化的商标管理策略 —— 跨国企业经验谈Page 3

DailyNewsPublished by

www.inta.org www.managingip.com

Monday, May 12, 2014 136th Annual Meeting, Hong Kong

News 2-5 | Quiz 测试 2 | Features 8-19 | Schedule 24 | Weather 26°C

INTA and QBPC sign agreement

“G ood morning trademark peo-ple,” began Grégoire Bisson,Director of The Hague

Registry, at the Madrid System Users’Meeting yesterday. “There’s nothing wrongwith trademarks, but once you’ve workedin designs there is no going back.”

The WIPO official explained his enthu-siasm for the world of design law by out-lining how important design has becometo IP over the past 50 years. “We used tobuy watches by looking for the most reli-able watch for our budget,” he said.“Trademarks offered some promise of thatreliability. Now though, reliability isassumed and what people look for isdesign. People want products that have the‘wow’ factor.”

Design registrations have grown at twicethe speed of trademark registrations overthe past nine years, Bisson said. Mostdesign owners, however, seek protection in

their home country. That’s because there isterritoriality of rights, making the applica-tion process cumbersome and expensive.The good news for design owners is that theHague System, administered by WIPO, canmake the application process more efficient.The bad news is that it has limited geo-graphical scope, compared with the scopeof protection offered to trademarks throughthe Madrid System.

“But stay tuned,” said Bisson. “TheHague System will grow massively.” SouthKorea is due to join in July, the UnitedStates in October, and Japan, China, the 10ASEAN countries and Russia could join in2015. Canada, Mexico and ARIPO arealso considering whether to accede to theHague Agreement.

Expansion of the System, however,could lead to what Bisson described as“complexification.” One solution is forWIPO member states to agree on a draft

Design Law Treaty, designed to simplifyregistration formalities for industrialdesigns. At WIPO’s Extraordinary GeneralAssembly last week, member states dis-cussed convening a diplomatic conferenceon the Treaty. Even if that does not matureinto domestic legislation for many years,said Bisson, it will act as a best practicemodel for IP offices around the world.

Yesterday’s Madrid System UsersMeeting also featured presentations fromrepresentatives of trademark offices inTunisia, Mexico, India, OAPI and HongKong, while WIPO officials provided anupdate on changes to the system, and howtrademark owners can make better use of it.For more details, see page 5.To find out more about designs, attend

today's session IM20 The Shape of Thingsto Come: Clearing and Protecting High-Tech Product Configurations from 11:45am to 1:00 pm in Convention Hall A.

Looking for the wow factor in designs

It might have been raining outsidethe Convention Centre, but thoseattendees at the WelcomeReception were treated to rathersunnier views of Hong Kong. A bigscreen projected images of the bestthe city has to offer: shopping inthe city’s luxury malls and bustlingback streets; hiking in the wilder-ness of the New Territories; thespectacular harbor side lightshow;frenetic dragon boating; and after-noon tea at The Peninsula.Attendees were treated to a dimsum feast with shao mai, springrolls, turnip cake, and egg tarts.

I n the Exhibition Hall this year you canfind many items of interest fromaround the world. These include

Russian dolls, traditional Chinese outfits,Ecuadorian chocolate, Vietnamese fig-urines and pirates of the Caribbean.Cuddly toys also appear popular amongexhibitors this year. You can even winsome at one stand if you manage to throwa sticky ball at a target. At INTA’s standyou can view samples of some counterfeitgoods, including fake designer jeans andpurses.

In addition, you can make 20 newfriends in an hour in the SpeedNetworking section of the Exhibition Hall.

The 40 busy networkers at the 20 tables inthe section must change tables every threeminutes.

Sessions last an hour. Monday andTuesday each have sessions at 10:30 am,12:00 pm, 1:30 pm and 3:00 pm, whileWednesday has sessions at 10:30 am and12:00 pm.

Among the tips provided to speed net-workers are: consider developing an“elevator pitch” of a response youwould give in any situation when some-one asks you who you are or what youdo, think about how you want todescribe yourself and consider letting theother person talk first.

A t yesterday’s Users’ Meeting, repre-sentatives from the Japan PatentOffice (JPO) gave an update on

recent activities and upcoming developmentsin Japanese trademark law. One of the biggestchanges is that the country is looking to intro-duce protection for non-traditional marks.

One reason for this is the increasingpopularity of these marks. In fact, the JPOnotes that Japanese companies have beenfiling for and receiving non-traditionalmarks in other jurisdictions.

A draft version of a bill to amend theJapanese Trademark Act looks to provide

for protection of color marks, sounds, mov-ing marks, holograms, and positional marks.However, the draft bill does not provide forprotection of scent and taste marks, due toconcerns that it is too difficult to specify thescope of such marks and there is doubt thatthere is immediate need for them.

T rademark administrators were givensome guidance on dealing withcross-cultural communication at a

brunch yesterday. Etienne Sanz de Acedo,INTA CEO, opened the session by underlin-ing the vital role of administrators. “You dothe daily work for trademark owners, andthat is extremely important to us, so thanksa lot for being here,” he said.

Daniel Greif of Siam PremierInternational Law Office in Thailand com-pared western and Asian worldviews, such asthe CEO of a company being viewed with farmore importance in Asia. He said that manycountries claim that their culture is differentfrom others, but in Thailand that really istrue. As opposed to the urgency applied towork in some countries, Greif said a com-mon refrain in Thai offices is “sabai-sabai”,which means “relax, relax”. “Yes, it is differ-ent,” he said. “It can be a challenge in theworkplace to get things done.”

Mona Lee of Hanol Law Offices inSouth Korea pointed out that body lan-guage is important. In Asia, for example, itis very important when meeting people toinspect their business card, and disrespect-ful gestures include putting the card inyour pocket and—even worse—writing onit. When leaving a room in Asia youshould not turn your back on someonemore senior. You should also stand upwhen someone important is leaving.

Mark McVicar of Winkler Partners inTaiwan, outlined six ways of helping mas-

ter cross-cultural issues. His first tip was tounderstand low context versus high con-text culture. Western cultures are low con-text, with direct communication, individ-ual opinions and fact-based decisions.“What you see is what you get,” he said. Incontrast, Asian cultures have less directcommunication.

The second tip was to keep itsimple.”Give the appropriate amount ofinformation, be aware of overly complexlanguage and avoid cultural references andhumor,” said McVicar. Third was forbrand owners: state your goals clearly,

understand the standards of urgency andresponsiveness, and don’t jump to conclu-sions. “Ask for clarifications first!” hesaid.

The fourth tip was for local counsel:work actively to manage the client’s brand,understand the client’s business and brand,and communicate legal and cultural issues.For both brand owners and local counsel,McVicar urged: “If you are not sure, ask.”The fifth tip was to ask for a second opin-ion if you run into a problem and the finalwas to keep an open mind and to giveyourself a break if something goes wrong.

News

INTA Da i ly News Monday, May 12 2014 www.manag ing ip .com2

Get your networking up to speed

Japan considers non-traditional marksThe INTA Daily News is produced by Managing

Intellectual Property in association with the

International Trademark Association.

Photography by Graham Uden.

Printed by ieMedia Asia Limited.

The INTA Daily News is also available online at

www.inta.org and www.managingip.com.

© Euromoney Institutional Investor PLC 2014.

No part of this publication may be reproduced

without prior written permission. Opinions

expressed in the INTA Daily News do not

necessarily represent those of the INTA or any of

its members. Full production credits at

www.managingip.com/about-us.html

Today’s quiz question | 测试

This is INTA’s firstAnnual Meeting in Hong

Kong, but theAssociation has hadevents here before.When was INTA’s lastconference in Hong

Kong? |国际商标协会年

会首次在香港举办，但该协会曾在此举办过其它会议。请问最近一次在香港举办的会议是什

么时候

Send your answer [email protected]

by midnight tonight. Winner announced on

Wednesday

Win INTA goodies!

Six ways to master cross-culturalcommunication

I n an increasingly globalized market-place, companies need to learn to picktheir battles and conserve their

resources. That was the message from yes-terday’s panel, The Essentials of Managinga Worldwide Trademark Portfolio.

Companies often instinctively feel theneed to maximize protection for all theirbrands. However, Denise Yee of VisaInternational said that brand developmentrequires a nuanced approach. “At Visa, itseems like every client wants to nameeverything, all the time. And sometimes itmakes sense, but a lot of times, for a par-ticular service, it may not need a specialname,” Yee explained.

Instead, she said that when discussing anew service with partner companies, thefirst question is whether it needs a name atall. Factors to consider include the product’sexpected shelf life, whether there will be sig-nificant marketing behind it and how manycountries the product will be deployed in.

Daniel Zohny of the FédérationInternationale de Football Association(FIFA) also stressed the need for a consid-ered approach to brand protection. FIFA hasits brands divided into several types, includ-ing the FIFA brand itself and the trophy.

There are also the event-related brands,such as logos, slogans and mascots for spe-cific tournaments like the 2014 FIFAWorld Cup. In this category, the size of thetournament also helps to determine thebrand protection strategy. For example,while marks associated with the WorldCup will be registered in many jurisdic-tions, protection for a smaller event suchas an under-17 tournament may be focusedjust on the host country.

Thomas Zutic of DLA Piper gave theoutside counsel’s perspective. He said oneof his main objectives is to obtain strongprotection for his client’s core trademarks.“Many times, there will be tons of sub-brands, so you really have to make surethat you understand the core brand, thecore marks and make sure that you are put-ting the appropriate resources behind theseand not something that’s just a one-timething for three months,” he says.

In the end, building a brand is aboutcareful weighing of a mark’s value. Even theVisa brand, judged by some to be the ninthmost valuable in the world, does not indis-criminately register for the sake of getting amark. “We put a lot of thought into whatwe file, if we file at all,” Yee explained.

在全球化的经济形势下，企业内部法律顾

问和外部律师在管理企业商标组合时，面

临各种不同的挑战，尤其对于跨国企业更

是如此。在香港举办的第136届国际商标

年会上，演讲人分享了他们的商标策略，

包括商标申请、通关、授权、保护及管理

等一系列问题。

威士国际（Visa International）的丹

尼斯•伊（Denise Yee）女士负责管理企

业的知识产权法律部门，她提到了申请和

管理商标时需要考虑的几个主要问题。“

这个商标将会覆盖哪几个国家？在整个商

标组合中是否具有独特性？受众群是消费

者还是企业？等等，这些都是我们需要考

虑的问题。”她说道。

具体来说，管理者必须清楚申请该商标

的目的——仅用于短期推广活动还是适用

于长远规划？更重要的是要确保它在企业

内得到足够的市场推广投资，管理层对此

商业机会的支持尤为重要。

伊也透露道，目前大部分工作是由企业

内部团队完成，包括美国的商标申请及更

新等。交由外部律师的工作则包括国际申

请及一些超额的工作等。威士的业务覆盖

200多个国家，并于2012年获得BrandZ全

球最具价值品牌荣誉。

国际足球联合会（FIFA，简称国际足联

）的商标策略侧重点略有不同。知识产权

团队的负责人丹尼尔 •佐尼（ Daniel

Zohny）在发言时提到他们的决策依据。

“品牌发展策略视市场重点及客户群而决

定，而商业品牌则取决于业务的性质，比

如足球联赛的市场推广。商标的注册地及

司法区的选择很大程度上由联赛的时间表

及规模决定。”他解释道。

国际足联目前拥有13,000项商标，另有

900项正在审批。该组织拥有其所有的知

识产权，包括商标、版权设计、联赛及活

动相关的零售品牌等，并向赞助商、合伙

人等提供独家授权许可。佐尼表示，授予

电视相关播放及媒体的许可已占总许可收

入的三分之二。

在提到商标保护策略问题时，对于最近

常见的社交媒体侵权，威士和国际足联似

乎都认同处理这些的问题所面临的挑战。

“社交媒体的覆盖面广，有时向整个网

站采取行动反而事与愿违，所以采取行动

前我们会考虑网站点击量等一系列因素。

”伊说道。

“尤其对于像国际足联这样的公众组织

，采取类似的行动时需备加小心。我们会

确保与决策者进行沟通。”佐尼表示。

本届国际商标协会年会于5月10日开始

在香港会议展览中心举办，为期5天，吸

引了约8,500位与会者。

News | 新闻。

www.manag ing ip .com INTA Da i ly News Monday, May 12 2014 3

Being smart about globalbrand development

商标管理策略 —— 全球化挑战

M eet Generation-e: today’s law stu-dents are permanently connectedto their electronic devices; con-

stantly distracted by emails, texts andtweets; and believe they can combine keep-ing in touch online with listening to lec-tures. In yesterday’s Adjunct ProfessorsSpecial Interest Group panel, moderatedby Tara Aaron of Aaron Sanders PLLC,professors, lawyers and students discussedhow to win their attention.

Professor Lutz-Christian Wolff urgedteachers to be passionate, or at least act pas-sionate: “There are natural teachers … andthere are others,” he said. “But the differenceis over-rated.” He advised lecturers to use in-class exercises, real-life examples and person-

al stories to capture and maintain attention.“Explain why you are doing things, andmake sure you’re entertaining,” he added.

Several students in the session said theydo have self-discipline, and can concen-trate while their electronic devices areswitched on, particularly when professorsare engaging them on their own level.“When students think, they don’t havetime to tweet,” said one.

But Professor Irene Calboli emphasizedthat engagement is a two-way street. She saidstudents should “be aware of their surround-ings, show good manners and respect.”Ultimately, she stressed, technology is every-one’s friend: “But as a professor I can nevercompete with Brad Pitt and Angelina Jolie.”

News


King & Wood Mallesons is redefi ning the way clients work with their legal adviser. Through our unrivalled presence in the Asian region and an award winning trademark and intellectual property team, we are connecting the world to Asia, and Asia to the world.

Across the globe more than 2,700 lawyers in 31 international offi ces are connecting businesses to relationships that unlock opportunity. Every day.

If you’re looking for a partnership that truly hits the mark, talk to us.

www.kwm.com

Trademark | Patent | Copyright | IP Litigation

The Power of Together

King & Wood Mallesons is

Think trademarksThink global

Let me entertain you!

Veteran China-watcher Joe Simone of SIPS offered some “Chinese take-aways” at the In-House Practitioners Luncheon yesterday. In an enter-taining speech, he discussed Chinese history, philosophy and religion aswell as the ethical and cultural ideas that underpin approaches to intel-lectual property and law. Simone also provided advice on dealing withcounterfeits, especially online, and bad faith trademark registrations.One tip was to try to understand the counterfeiters’ mentality. “I’ve metlots of counterfeiters; most of them are really nice people and they reallybelieve what they are doing is legal,” he said. INTA held a Pre-Annual Meeting reception in Paris, France earlier this year.

T he Madrid System could expandbeyond 100 member states withinthe next year if the Organisation

Africaine de la Propriété Intellectuelle(OAPI) delivers on its plans to join.

At the Madrid System Users Meetingyesterday, OAPI’s Maurice Batanga saidhe hoped the 16-member group ofFrench-speaking countries in Africawould join Madrid as a regional organi-zation by the end of this year. That wouldmean that owners of international trade-marks could designate OAPI in the sameway they can today designate Communitytrade marks in Europe. OAPI’sAdministrative Congress approvedMadrid membership at its most recentmeeting and the organization has beenupdating its regulations, manual of proce-dure and official forms.

If they do join, the OAPI members willbe following in the footsteps of anotherAfrican country, Tunisia, which becamethe 91st and most recent country toaccede to Madrid last year. Speaking tothe INTA Daily News yesterday, NebilBen Béchir of the Tunisian IP Office saidaccession was a result of “a new environ-ment” in the country since 2011. Thecountry also joined the Hague Agreementon industrial designs in 2012.

Trademark applications are growing at

a rate of 7% in Tunisia and Ben Béchir saidthat membership of the internationalagreements inspires confidence amongboth international investors and localSMEs. Since joining Madrid, the countryhas been designated in more than 1,500international registrations and this yearhas already seen two international registra-tions filed from Tunisia. The first, in class5, was for pharmaceutical company Vitfen

and the second, in class 7, for solar powercompany Saphon Energy.

“I would encourage and recommendother countries, especially developing coun-tries, to accede to the Madrid Protocol tocontribute to economic development,” saidBen Béchir. He said Tunisia would particular-ly welcome OAPI membership, given thegrowing importance of trade within Africa.

OAPI is one of two regional IP groups

in Africa. It is likely to be more difficult forthe other one, the African RegionalIntellectual Property Organisation, to joinMadrid, as it operates a designation sys-tem, rather than a single filing covering allmember states. That would mean interna-tional registrations would effectively bedesignations of designations.

Representatives of both organizationswill be speaking at today’s Africa Rising!session. Moderator Brenda Wodd-Kahiriof B. W. Kahiri told the INTA Daily Newsthe panel will discuss both legislativedevelopments and practical businessissues: “We’re going to look at the frustra-tions as well as the successes for business-es.” One particular focus will be the eco-nomic harm caused by counterfeiting, andhow this can be communicated to govern-ments and law enforcers.

Panelist Jose M. Checa of DuPont deNemours International, which has 1,500employees in sub-Saharan Africa, agreed:“There is very good will in the courts, thegovernment and the police. But there is aneed for IP education—really understand-ing what IP is, why counterfeits are notgood and why IP rights are good for socie-ty in general.”RM50 Africa Rising! takes place from

3:30 pm to 4:45 pm today in ConventionHall A.

News


Africa gears up for Madrid System

Members of WIPO and national IP offices after yesterday’s Madrid SystemUsers Meeting

T he new gTLDs are coming: more than 250 havealready been designated and new domains arelaunching every week. Ahead of today’s session, here

are some key figures on the new gTLD program.“There’s a lot of misinformation out there,” said

today’s moderator Kristina Rosette of Covington &Burling. Among the issues the panel aim to clarify todayare compliance, Whois access, premium name lists,name collision and the so-called Spec 13 concerning.brand domains. Amy Stathos of ICANN will be present

to address the high-level issues about governance andsecurity.

One of today’s panelists, Sarah Deutsch of Verizon, toldthe INTA Daily News the panel of domain name special-ists will discuss hot topics, including what’s working andwhat’s not working in the program. “It’s a changingdynamic and things are happening very rapidly,” sheadded. Among emerging issues that are presenting challenges to brand owners are deceptive sales practices,name collision and the .sucks domain.

Also speaking will be Vicky Folens of Deloitte, whowill speak about the Trademark Clearinghouse and inparticular the “top 10 misperceptions”. As the latest fig-ures show, use of the Clearinghouse is beginning to accel-erate after a slow start now that more new gTLDs arelaunching.

CM04 Trademarks and New Generic Top-Level Domains:An Update takes place at 10:15 am to 11:30 am today inConvention Hall BC.

Data


TMCH statistics

1 mark 64%

1-5 marks 27%

6-10 marks 5%

10-20 marks 2%

20+ marks 1%

Validated

Being processedInvalid

Status of marks

0

2

4

6

8

10

9 35 41NICE classification

42 16 36 38 25 5 3

Top 10 classes

Latin

Other Han

Cyrillic

Katakana

ArabicHebrewMixedscriptThaiDevanagari

Script of marks

1 United States

2 Germany

3 France

4 United Kingdom

5 Switzerland

6 Spain

7 Italy

8 Sweden

9 Japan

10 Australia

Top 10 new gTLDs

0

100

200

300

400

500

600

700

Wit

hd

raw

n

Will

no

t p

roce

ed

In e

valu

atio

n

On

ho

ld

Pen

din

g G

AC

ad

vice

Pen

din

g o

bje

ctio

ns

Co

nte

nti

on

set

s

In c

on

trac

tin

g

gT

LD

s d

eleg

ated

In s

un

rise

Su

nri

se c

om

ple

ted

Application statistics as of May 5gTLD Registrations Market share

1 .guru 55,739 7.60%

2 .berlin 47,412 6.47%

3 .photography 34,981 4.77%

4 .club 34,767 4.74%

5 .xn--3ds443g (在线) 30,980 4.23%

6 .email 28,703 3.92%

7 .link 23,915 3.26%

8 .today 23,294 3.18%

9 .tips 21,774 2.97%

10 .company 18,124 2.47%

Source: ntldstats.com. Data as of May 11, 2014

Top 10 countries

Trade marks submittedper organization

Get the latest gTLD news

Imagine that a business that is ripping off your product’spackaging asks you to pay them USD1 million to stop it.Would you pay up? It’s unlikely. Now imagine that they

are one of the biggest distributors of your product and havethe power to take your brand off their shelves overnight.That’s the kind of commercial dilemma that many brandowners face when confronted with own-brand lookalikeproducts sold by supermarkets and other retailers.

Lookalikes––sometimes known as parasitic copies––havebeen around for decades, but brand owners are facing prob-lems more frequently and in more markets than ever before,says Imogen Fowler of Hogan Lovells. “It’s been going onfor some time in Europe and the U.S., but now lookalikesare appearing in far more places. It is becoming a problemin New Zealand and Australia, and it’s spreading to Asiatoo, along with the emergence of national and internationalsupermarket chains.”

Fowler is moderating a session today on lookalikes thatwill consider how trademark owners should respond toown label brands that come close to––and often cross––thelegal line when it comes to conjuring up the look and feelof the packaging used by market leaders.

The two in-house counsel (Jorge Casals Ide of Red Bull

GmbH and Ann H. Chen of Mars, Incorporated) and oneprivate practice lawyer (Lydia T. Gobena, Fross ZelnickLehrman & Zissu, P.C.) on the panel will consider howbrand owners can best protect their legal rights against themakers of lookalikes, as well as outlining the commercialissues that they need to consider before they take actionagainst suspected infringers.

The session is aimed at both in-house counsel and atprivate practitioners, says Fowler. “We want to offer someadvice to in-house lawyers on how to deal with lookalikesand raise awareness among those lawyers who may not yethave had to deal with the problem. But we also want tosensitize external counsel to the issues. It is easy to see alookalike, say ‘blatant infringement’ and then march off tocourt to do exciting things. But we need to look at looka-likes as a commercial issue.”

Few lookalike disputes ever make it to court because of thebusiness risks involved for brand owners. Big retailers are,after all, often their chief distribution channels. Added tothese commercial concerns are legal uncertainties: brand own-ers and retailers know that it is difficult for the courts to deter-mine with any certainty what consumers are thinking whenthey choose one product over another. For example, one rare

case of a brand owner taking action against a supermarketown brand in the UK (when United Biscuits, maker of PEN-GUIN chocolate biscuits, sued Asda Stores over its PUFFINbiscuit in the 1990s) saw the brand owner lose, after it failedto convince the court that its trademark had been infringed.

But the lack of court rulings doesn’t mean that in-housecounsel ignore the problem of lookalikes. Fowler says thatsome of her clients have more than 100 live disputes. Theproblem can be blatant and constant, she says––but brandowners should be willing to tackle it. “Once the retailer getsthe message that you are going to fight it, they are morelikely to move onto the next brand owner,” she says.

So how should brand owners respond to lookalikes?One of the biggest challenges for in-house counsel is tomanage the relationship with a retailer who is both a com-petitor and a customer. There are also tricky internal rela-tionships that must be handled sensitively. Senior manage-ment may demand the company’s legal team do everythingit can to stop the sales of lookalikes, while the salespeoplewho make their living from keeping retailers stocked withthe company’s products are often reluctant to confronttheir best customers about the problem.

In these cases, external counsel should help the in-house

Preview Lookalikes


What to do when an infringer is your biggestcustomerTrademark owners have long complained that own-brand rivals use look-alike products to free-ride on theirreputations and steal market share. Panelists today will explain what they can do about it, says Emma Barraclough.

You create. We protect.

COHAUSZ & FLORACK Patent Attorneys and Attorneys-at-lawBleichstraße 14 . D-40211 Düsseldorf . Germany . Phone +49 211 90490-0 . Fax +49 211 [email protected] . www.cohausz-florack.com

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: [email protected] www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

team draft correspondence and have those awkward conver-sations with retailers. If retailers deny that their own-brandversion of the brand owner’s product is a lookalike, Fowleradvises her clients to ask the other side for a copy of the designbrief that they sent to their designers. “It is amazing what yousee come out of the woodwork,” says Fowler. “I have seencases where the brief said ‘get as close to [the brand leader] asyou can.’ That’s a brilliant piece of evidence to have.”

Brand owners who want to avoid protracted and unpre-dictable legal disputes (and who doesn’t?) should considerwhat commercial solutions they might be happy to accept andhow they can exploit commercial points of leverage in discus-sions with retailers. They might be willing to make anothercommercial concession in return for a supermarket phasingout a lookalike quickly, for example. Brand owners shouldconsider the timing of their negotiations. Many retailers con-

duct a listings process each year, during which time they try tosecure their annual purchasing deals. This makes it a goodtime to start talks, says Fowler. But trademark owners shouldbe wary about agreeing to pay retailers to change their pack-aging. Retailers talk, and a brand owner that has developed areputation as an easy mark is likely to be targeted again.

Although the commercial relationship between bigsupermarkets and brand owners is a complicated one, therise of so-called deep discounters is reshaping the linksbetween the two. While brand owners have traditionallyheld back from taking legal action against supermarkets,lookalikes also appear in smaller chains such as Aldi andLidl in Europe. These kinds of stores, which are gainingmarket share in many jurisdictions, often don’t stock themarket leaders’ own products, making it easier for trade-mark owners to justify taking legal action against them.

Those brand owners that choose to sue freeriding retail-ers need to understand that the rules on lookalikes varywidely from jurisdiction to jurisdiction. During today’spanel, Lydia T. Gobena of Fross Zelnick Lehrman & Zissuwill be considering some of the issues involved in enforcing

your IP rights and comparing the rules in some Europeancountries with those in the U.S. Those trademark ownerswho sell their products across the EU may find it easier toenforce in Germany, where the opportunity to obtain an exparte injunction provides a good starting point for negotia-tions with retailers, than in markets such as France and theU.K. (see box).

Of course trademark owners would rather avoid prob-lems than respond to them, and the panelists will offersome tips to in-house counsel about the ways they can max-imize trademark protection for their rights. They shouldwork with their design teams to explain what elements ofthe product’s packaging may be eligible for protection, forexample. Unusual bottle shapes, product colors and namesmay make rip offs by retailers easier to establish, and thesedesigns and logos can then be protected by design rights aswell as trademark rights, subject, as always, to constraintson the prosecution budget. But brand owners may be bet-ter off spending money upfront on protection than onretailers’ ransom demands down the line.

CM20 – Battling for Brands: 11:45 am to 1:00 pm today

Preview Lookalikes


Responding to lookalikes requires amix of legal know-how and com-mercial savviness. Here are some ofthe issues to take into account.• Understand the commercial rela-tionship you have with the retail-er. Ensure you get your salesteams on board with the legalstrategy you pursue, but remindthem that your job is to avoid

the dilution of the brand in thelong term.

• If budget allows, obtain broadtrademark and design protec-tion for packaging as well aslogos.

• Consider carefully the implica-tions of paying retailers tochange their lookalike packaging

• Educate your own design teams

about IP protection and aboutwhat elements of a design or getup might be protectable.

• Document examples of customerconfusion.

• Consider whether you can obtainan injunction in a more brandowner-friendly jurisdiction togive you greater negotiatingleverage.

How to deal with lookalikes


D oing business in China can be a complex undertak-ing for inexperienced foreigners. Many fall intothe various traps awaiting those so eager to

expand into this growing market that they neglect to dobasic due diligence on their prospective partners, or fail tounderstand that Chinese laws do not mirror those of theirhome country.

While doing business in China might not always beeasy for those new to the game, the good news is thatmanagers who invest time and effort in understandingboth the cultural norms and the laws in the country, andwho keep a level business head in one of the world’s mostdynamic economies, can maximize their chances ofavoiding problems.

So what do managers need to know about setting upand thriving in China? Panelists today will provide tipsand advice in in a session moderated by Joseph Simoneof SIPS–Simone Intellectual Property Services Asia Ltd,who has studied and worked in China since the 1980s.He is joined by Vivien Chan of Vivien Chan & Co.,Kevin Ching of Sotheby’s, and Laura Wen-yu Young ofWang & Wang.

They will talk about some of the common mistakes

brand owners make when they invest in China and discussthe regulatory challenges in doing business on the ground,from obtaining licenses to opening offices. The panelistswill also address the hot topics of managing relations withgovernment officials and ensuring that your companymeets its compliance obligations.

The high degree of government regulation of business inChina means that it is essential that companies develop aneffective government relations program, and that it is over-seen by senior staff who understand what the companymust do (and must not do) to stay within the law both inChina and overseas. Although managers may be temptedto rely on personal connections in China to get thingsdone, they should be wary of over-estimating the impor-tance of guanxi, says Simone. “Guanxi are not alwaysessential, and in any case, business relations should alwaysbe managed by solid contracts and good business funda-mentals.” Companies should beware people who claimthat they can sell guanxi, because of the obvious compli-ance issues that they pose.

The panelists will consider the practical ways that com-panies can deal with audits by government officials, andprepare for and deal with crises. They will also consider

what President Xi Jinping’s continued campaign againstcorruption means for businesses in China, including howforeign companies should respond when their local partnerappears to be operating within a legal gray area.

Negotiation is one business skill that is particularlysusceptible to cultural mismatches, and the lawyers intoday’s session will explain how Chinese negotiationstyles can wrong-foot foreigners. Negotiations generallytake longer, and there are typically a number of hiddenfactors on the Chinese side that contribute to delays indecision making, says Simone. “Beware also that thebiggest issues in negotiations are often left to the lastminute for discussion,” he warns.

Given the rapid rise in the number of Chinese who havebeen educated overseas, an increasing number of foreignbusinesspeople will find that they share plenty of culturalreference points with their younger Chinese colleagues andbusiness partners. But they should still be aware of the cul-tural and political context in which negotiations takeplace, the panelists will warn. Junior employees in Chinaare often particularly deferential to their senior colleagues,and business partners from both private companies andstate-owned enterprises will have important political issues

Preview Doing business in China

Prosper in ChinaChina’s dynamic economy attracts plenty of overseas investment. But how should foreign companies conductbusiness to secure long-term success? Emma Barraclough reports.

to take into account in their decision making, to which for-eign observers may be oblivious.

Finally, the panelists will offer some advice for brandowners who want their story of doing business in China to

have a happy ending by explaining how they can avoidbecoming a counterfeiting victim. They will look at issuesincluding the advantages offered by having a Chinese-character brand, dealing with trademark squatters and

understanding the best ways of negotiating with and liti-gating against infringers. CM01 – Doing Business in China: 10:15 am to 11:30 amtoday

Preview Doing business in China

www.manag ing ip .com INTA Da i ly News Monday, May 12 2014 1 1

Doing business in China requires foreignIP owners to understand the Chinesemarket, the country’s laws and thenuances of business etiquette. Here are10 tips for getting it right

Understand the environmentSome businesses have jumped into

the Chinese market too quickly, fearfulthat they will lose money and marketshare to competitors if they miss abusiness opportunity. But you need totake your time, understand the environ-ment, and build a useful network ofbusiness intelligence contacts andadvisers to whom you can turn to forspecific advice.

Be preparedYou should assume that your

trademarks, copyrights and tradesecrets will come under attack. Ensureyou have systems in place to minimizetheft from employees, business part-ners and rivals and make it clear toeveryone that you take IP protectionseriously.

Get the right team The best team for your China opera-

tions will include business managers withplenty of experience within your compa-ny and business managers with experi-ence in China. “Having one without theother can be perilous. Having neither isfolly,” says Simone. It can be tempting torely on junior Chinese staff to manageyour China operations because theyhave the linguistic skills and culturalknow-how that the rest of your teammay lack. But beware: they are unlikelyto have developed the business acumenof more experienced managers and willneed plenty of support and supervision.

Appreciate local differencesAlthough China appears to be a very

centralized country, in reality there arelarge economic and political differencesbetween provinces. Officials in courts andenforcement agencies may deal with thesame issue differently in different partsof the country. Brand owners shouldunderstand the impact this may have ontheir IP enforcement strategy.

Be conscious of timeGetting the timing of a deal right can

be difficult. Although companies shouldavoid making rash decisions without doingproper due diligence in China they shouldbe aware that negotiations which seem tobe going smoothly may become more diffi-cult over time. In China dealmaking oftenbegins with lavish banquets and plenty ofpositivity, but the most difficult points aresaved for the end of the talks.

Develop a sound governmentaffairs strategy

You need to understand which governmentauthorities are looking over your company’sshoulder and engage them in a friendly andopen way, says Simone. “Ignoring them canincrease the risks of trouble on a number offronts, and make it harder to compete withprotected local enterprises as well as toextricate oneself from a crisis.”

Expect negotiations to continueForeigners can become very frus-

trated by a tendency for Chinese busi-ness partners to continue negotiations

even after a contract is signed. If thishappens to you, it may be most useful totake the same approach and use the talksas a chance to secure a better outcomefor your side.

Identify decision makers in adeal

This can be tricky for foreign businessmanagers, who rely on cultural clues toidentify their counterparts in otherorganizations. But getting it right isimportant, because if the person on theother side of the negotiating table is notthe organization’s key decision maker, itis doubtful that they will have been giventhe authority to sign off on any agree-ment you might think you have reached.

Trust yourselfAlthough there are undoubtedly cul-

tural, legal and political differences betweenChina and many other countries, mostChinese businesspeople, just like you, simplywant to make good deals. Don’t leave yourbusiness instincts at the immigration count-er. If a deal doesn’t sound good, don’t do it.

1

2

3

4

5

6

7

8

9

How to navigate the Chinese market

How long have you been with Alibaba? Wherewere you previously?I’ve been at Alibaba since March 2009. Before that I wasa Senior Associate with the U.S. law firm TroutmanSanders’ Hong Kong office, and before that a local HongKong firm, So Keung Yip & Sin. In all of these positions,my practice involved intellectual property and informationtechnology.

How big is your team and what are your respon-sibilities?I was the first lawyer at Alibaba who was tasked to exclu-sively deal with all IP issues except for patents. Initially wehad a very small team, just myself and one paralegal. Atfirst, our responsibilities were mainly trademark anddomain name applications around the world, excludingmainland China.

The role has grown since then. In addition to Alibaba’sglobal trademark and domain name portfolios, our team isalso responsible for the company’s copyrights, enforce-ment work, technology, licensing and IP advisory in M&Aprojects and transactions. I have also been leading the

team in working on the new gTLD matters since 2010.Our team now has 10 members consisting of four qualifiedlawyers including myself, four paralegals with legal assis-tant and legal secretary.

Four of our team members are based in mainland Chinaand the rest are based here in Hong Kong. We basicallyhandle all of Alibaba’s IP, except for patents; there isanother team consisting of patent attorneys based in main-land China which handle the day-to-day patent applica-tions.

In addition to maintaining Alibaba’s portfolios, we alsoprovide support when intellectual property is involved inother situations, such as in licensing and M&A deals.

We also manage administrative actions, litigation andarbitration matters that arise. We use outside law firms forthese cases, as well as online platforms like MarkMonitorand WebTMS to help manage our portfolios, conductonline watch services, brand monitoring and enforcementwork, but of course we have to analyze the merits of thecases, send out cease-and-desist letters and considerinstructing external firms to handle complicated mattersshould they arise.

Does your team also handle matters involvingthe intellectual property of those using Alibaba’sservices, such as brand owners asking to havecounterfeits pulled off of Taobao?We did assist with some of those matters, but prelimi-narily that work is usually handled by lawyers in thatparticular business unit and our product security team.My team is responsible for handling Alibaba’s ownintellectual property prosecution and enforcementwork.

What are some of Alibaba’s big brands?Our biggest brand is of course ALIBABA (阿里巴巴) itself,which is the name of the group of companies, but also ofour business to business marketplace (www.alibaba.com).TAOBAO (淘宝), our customer-to-customer marketplaceis also a big brand for us. TMALL (天猫), ALIEXPRESS,聚划算 (Juhuasuan, a group purchasing service), ALIYUN/ ALIBABA Cloud Computing (阿里云), ALIPAY (支付宝,a third-party independent payment solution), are also ourimportant brands.

We have many more brands and marks, ranging from

Profile Karen Law, Alibaba

China’s global marketplace tackles globalbranding challengesKaren Law, Senior Legal Counsel of Alibaba Group, talks to the INTA Daily News about where it faces its biggestbrand enforcement issues (hint: it’s not China), what she looks for when selecting outside counsel and why theleast expensive lawyer isn’t always the best.


core brands to product brands to defensive brands, butthese are probably our biggest ones.

You mentioned the new gTLDs. What plans doAlibaba have for them right now?We’ve registered several of the new gTLDs with ourbrands, including .alibaba, .alipay, .tmall, and .taobao.Our initial reason for registering them was mostly todefend our brands, but I think the company is going tothink of other ways to use them as well.

The company is also actively involved in the ICANNmeetings and sharing, and treasures every opportunity tofocus and share views on Internet security, domain mat-ters, Internet governance and related matters, both from abrand owner perspective and an Internet user perspective.

Did you register any Chinese-language gTLDs?No, not at this time, but that might be something to con-sider in the upcoming round in the future.

Which jurisdictions are the biggest for Alibaba?Our IP portfolio covers about 150 countries. MainlandChina is our biggest market and about half of my team’swork. After mainland China, Russia, the U.S., and the EUare probably the biggest. We have significant B-to-B and B-to-C marketplace operations in those jurisdictions.

While we have some trademarks that are unique toChina, many of them are also international, such as ALIBA-BA, TAOBAO, TMALL, ALIPAY AND ALIEXPRESS.

What are some of the IP-related challenges thatyou face? Do you face the same sorts of prob-lems in different countries?We face more challenges in the Middle East and Russiathan in other regions.

With Russia, perhaps it’s the geographical proximity, but

we find ourselves often work-ing with our Russian attor-neys. There have been severalcompanies there claiming tobe Taobao or Alibaba exclu-sive resellers, which may arisebecause of language barrierswith the users and also someof the challenges in enforce-ment. We have had success inboth revoking trademarks that infringe on our IP and alsoin recovering domains, such as alibaba.ru.

With the Middle East, our problems tend to stem fromthe Alibaba story, which is obviously very well knownthere. Therefore, not only do a lot of people use the exactor similar trademark, but we have also faced oppositionson the basis of the story. These oppositions have failedhowever, in part because this company is so well known asa global marketplace.

In addition, a couple of years back we had quite a fewcases in India where our brands were being used for otherservices like food and catering. However, we have beensuccessful at opposing such registrations and enforcingagainst these uses.

In China, we have been working hard in securing well-known status for our core brands in Chinese, including 阿里巴巴 (ALIBABA), 淘宝 (TAOBAO) and 支付宝 (ALI-PAY) marks, which helps with protecting them and theenforcement work.

What qualities do you look for in outside counseland service providers?Most importantly, we look for expertise and efficiency. Wehave our businesses on the Internet, so we need counselwho understand our markets, keep up with the changes inthe laws and are fast and responsive.

Price is important to us of course, and when we look forhelp in managing our portfolios, we usually are able toobtain a favorable discount given the volume of work wehave.

That said, we are not necessarily chasing after theabsolute lowest price. As long as the price is reasonable, Iam fine with it. I was at a large U.S. firm, so I understandthat good legal work is not always the cheapest, and canbe worth it.

English language skills are important as well. For countrieslike Japan and India, we look for lawyers that can write wellin English, because that’s how we communicate with them.

What activities do you recommend for INTA del-egates visiting Hong Kong for the first time?For those in Hong Kong or the region for the first time, Iwould recommend that they take advantage of the proxim-ity to mainland China and try to learn as much as possible,by trying to meet the people and getting to know the cul-ture. People have their own way of working in China, solearning about that will be very helpful.

For leisure, I would recommend sites like The Peak orLantau Island for some good sightseeing. I think that whilesome people will want to do things like go to Disneyland,this is also an opportunity to try to experience some moreunique Chinese things.

“We need counsel whounderstand our markets, keep upwith the changes in the laws andare fast and responsive”Karen Law

Profile Karen Law, Alibaba


A ttendees will get a chance to find out best prac-tices during mergers and acquisitions (M&A) intomorrow’s panel “Working Trademarks into the

M&A Process: Tips for Spotting Issues and WorkingCollaboratively in a High-Pressure, Short-DeadlineWorld”. The panel features a blend of in-house andexternal counsel, with Christopher Turk from US appar-el firm VF Corporation, Joseph Nabor from Fitch EvenTabin & Flannery in the US, and Joel Smith from HerbertSmith Freehills in Australia. Christopher George from UScomputer chip firm Intel was also involved in planningthe session.

The INTA Daily News caught up some of the paneliststo identify five of the best practices for trademark practi-tioners during an M&A process.

Understand your role in the process“One of the biggest mistakes is not understanding wherethe trademarks fit into the overall deal,” said Intel’sGeorge. “How important are the different parts of the IPto the deal? That requires pretty early and consistentcommunication with the deal team and the unit buyingthe company. One mistake is for the trademark team notto understand where the trademark fits into the deal.That is one area that in-house counsel should be aware ofearly on.”

Be proactive “The guiding message to everybody whether you are out-side counsel or inside counsel is to figure out who is doingthe M&A deal for the company or the clients and reach

out to them proactively aheadof time,” said George. “The ear-lier you get involved in the dealthe better. Since I have been hereI have never seen a deal gosouth because of trademarks.That is not to say there haven’tbeen issues with trademarks but

unless you are buying specifically for the trademark, rarelyis the trademark going to hold up the deal.

“When I got here around six years ago the M&A team didpay attention to the trademarks but it did happen more timesthan I care to admit that the deal would be done and thetrademark team would see the announcement on our internalwebsite and the trademark attorneys would be looking ateach other like, ‘Did you work on that deal, I didn’t work onthat deal?’ and there are trademarks all over their website.

“That is coming from a very tech, IP and trademark savvycorporation where still the different business units didn’t nec-essarily know that upfront. I have had to do a decent amountof work to involve myself with the M&A teams and makesure they know who we are, that we are around, that legalisn’t a four letter word, that we can work with them, keep thedeal moving, and we are not going to be an impediment.”

Have a clear chain of title“It is important to have a clear chain of title. We don’t wantassignment issues to crop up,” said Turk from VF, whichbought Timberland in 2011. “There are some purchases –not Timberland – that VF has made over the years, whetherit is buying somebody out of bankruptcy or buying a brand

Preview Mergers and acquisitions


Five best practices for trademark teams duringM&AA panel tomorrow will provide practical advice on dealing with trademarks during mergers and acquisitions.Michael Loney discusses five of the top tips.

“One of the biggest mistakes is notunderstanding where the trademarks fit intothe overall deal.”Christopher George

that has been run into theground by somebody, whereyou don’t always know whatyou are getting. So there arechain of title issues, there areassignment issues, and thingslike that to be aware of.”

Have a plan“Another issue to be aware of when conducting due dili-gence is to make sure you know what you are doing with theintellectual property before you dissolve the company, if youdissolve it,” said Turk. “We’ve bought various companiesthat had one or two trademarks that were not owned by themain company or were owned by European subsidiaries andthose subsidiaries were since merged out of existence or dis-solved. You then have a situation of having your own trade-mark registrations that are owned by a company that nolonger exists blocking your own new trademark filing.

“That is a post-acquisition issue, but going forward that isthe kind of thing I look for in doing due diligence now –pointing out to the business team and the rest of the legalteam before you start restructuring post acquisition that weneed to do X, Y, Z, we need to assign these trademarks, weneed to make sure we have the proper chain of title, we needto make sure there are still officers of this company around tosign assignment documents at the closing or shortly thereafter.

“There is a different trademark analysis that is requiredfor us than say for Intel. We are not purchasing for tech-nology. We are purchasing for the brand and the consumerawareness. You have to take a different approach whenlooking at due diligence. One of VF’s stated goals is thatwe want to be a global company so we want our brands tobe global brands. If you are purchasing a regional brandthat is popular, for example, in Europe or the US what iskey for us in due diligence is whether we expand that.”

Know what you are buying“There’s the issue of continued use of the trademarkand/or personal names,” said Joseph Nabor at FitchEven Tabin & Flannery. “It is not unusual for a lot ofsmaller businesses to be organized under the name ofthe owner. When that owner sells does he or his familyhave right to the continued use of the family name incompetitive businesses? How long would you structurea non-compete? What is appropriate for both sides?There are a number of instances where not the entirebusiness is being sold but the purchaser needs to use thename of the company in their acquisition even thoughthe company will still exist as a separate entity. So whatresidual rights and trademarks are there that you needto work out?

“The pitfalls to avoid are not doing an adequate duediligence and not taking into account the twists and turnsthat are going to come in the short term following the deal.The problems come in whether or not the seller owns whatthey are selling and the buyer buys what they think theyare buying. Those are two entirely separate issues. Fromthe buyer’s perspective you have to make sure the sellerreally is selling what the buyer thinks they are getting fromthis. There are some famous situations in the past wherepeople thought they were buying a trademark lock, stockand barrel and found out they were only getting a part ofit after the deal closed.”CT21 – Working Trademarks into the M&A Process: 11:45am to 1:00 pm tomorrow

Preview Mergers and acquisitions


Our goal: To completely satisfy you, our clients, through our prompt and

dedicated service.

Matsushita IMP Building, 1-3-7, Shiromi, Chuo-ku, Osaka, 540-0001, JAPANPhone: 81-6-6949-1496; Fax: 81-6-6949-1487; Email: [email protected]

URL: www.abe-law.com

ABE & PARTNERS

Please look out for our article in the International Briefings section of Managing IP Magazine distributed in INTA!

“The pitfalls to avoid are not doing an adequatedue diligence and not taking into account thetwists and turns that are going to come in theshort term following the deal.” Joseph Nabor

Victoria PeakSituated on Mount Austin, Victoria Peak offers one ofthe best views of Hong Kong. Developed in the 19thcentury as a place for summer homes, the Peak nowboasts some of the most valuable real estate in theworld. The Peak tram, which opened in 1888, made iteasier to live there year-round. Previously, residentsrelied on sedan chairs to scale the Peak. Picture © HongKong Tourism Board

Stanley Stanley has an eclectic mix of attractions. Frombeachfront bars and restaurants catering to bothexpats and locals, to the street vendors selling sou-venirs and street food, Stanley is well worth the taxiride to the southern end of Hong Kong Island. Thepromenade is also a popular attraction, especially onsunny days. Picture © NekaPearl @Flickr.

Hong Kong highlights

T heodore Davis, partner at Kilpatrick Townsend &Stockton, will give an overview on court decisionsduring Wednesday’s annual round-up. He believes

the most interesting recent development is the SupremeCourt taking more interest in the Lanham Act.

Already this year, the Supreme Court has issued a deci-sion in one trademark case, Lexmark International v.Static Control Components, and heard arguments inanother, POM Wonderful v. Coca-Cola. In addition, theCourt has asked the U.S. Solicitor General to file a brief inB&B Hardware v. Hargis Industries, in which it has beenasked to decide whether a Trademark Trial and AppealBoard (TTAB) finding of a likelihood of confusion pre-cludes the respondent from re-litigating that issue ininfringement litigation and whether the district court isobliged to defer to the board’s finding. “The SupremeCourt all of a sudden has gotten interested in the LanhamAct,” said Davis. “There is one opinion down, one to comeand there may be a third as well.”

Lexmark v. Static ControlIn a unanimous decision in Lexmark on March 25, theSupreme Court articulated a new test for standing in Lanham

Act false advertising cases. The case resolved the question ofwhether it is necessary for two parties to be in direct compe-tition for a plaintiff to be able to bring a false advertisingclaim. “This is an issue on which there was a very significantsplit among our circuit courts,” said Davis. “The SupremeCourt resolved that by rejecting the rule that you need to havedirect competition. So at least in some circuits bringing theseclaims will be dramatically easier. It is an opinion that doessubstantially change the law across most of the country.”

The Lexmark decision followed the Supreme Court’sAlready v. Nike decision in January last year upholding atrademark owner’s right to have counterclaims for cancel-lation dismissed if it has withdrawn infringement claims.Davis noted, however, that this was a case “that involveda registered trademark but was primarily turned on a pro-cedural ground rather than it being a true substantivetrademark opinion.”

Davis is not sure why the Court is seemingly more inter-ested in trademark cases. He noted, however, that JusticeSonia Sotomayor was involved in trademark cases in privatepractice and as a trial judge, unlike the other Justices. Davisadded: “It may be that that interest that the Court has devel-oped on the patent side may be carrying over to the trade-

mark side. If it is, though, it is significant that in the first ofthese three cases [Lexmark] the Court has decided verymuch in the plaintiff’s favor. The conventional wisdom onthe patent side is the plaintiffs are not going to come out ofthis string of cases as well. A lot of patent practitionerswould predict that the Court isn’t taking the patent cases toaffirm them. It may be taking these cases to overturn them.”

POM Wonderful v. Coca-ColaThe Supreme Court’s decision in POM Wonderful, inwhich oral arguments were heard on April 21, is expectedby the end of June. Beverage firm POM Wonderful suedThe Coca-Cola Company over a product labeled as“Pomegranate Blueberry” that only contained about 0.3%pomegranate juice and 0.2% blueberry juice. Coca-Colaargued that its labeling was specifically authorized underthe Federal Food, Drug & Cosmetic Act, the NutritionLabeling and Education Act of 1990, and U.S. Food andDrug Administration (FDA) regulations governing thenaming and labeling of juice products.

A California appeals court decided in 2012 that there wasno cause of action because the FDA had chosen not to chal-lenge the label and therefore POM Wonderful could not use a

Preview Trademark cases review


US trademark case and TTAB trends explainedA session on Wednesday will give attendees analysis of the most important US trademark cases in the past year.Michael Loney looks at some of the cases that might be discussed.

false advertising statute to challenge the FDA’s inaction. TheNinth Circuit Court of Appeals affirmed that decision.

Davis said the most interesting aspect of the SupremeCourt taking the case is how broad its ruling will be. If itsopinion is broad enough that it applied to other statutes itcould have ramifications for false advertising claims inindustries other than beverages. He adds, however, that anarrow ruling that applies only to the POM Wonderfulcase is more likely.

“The significance of this case may well be very limitedin the sense that it is limited to a very narrow statutoryconstruction of the Food, Drug & Cosmetic Act,” saidDavis. “It may also be something considerably broader inthe sense that the Court’s holding has some significance toother industries that have other regulatory frameworks.The Environmental Protection Agency, for example, hasthe authority to approve labels of certain kinds of productsand you must have that approval before that product cango on [the market] but that’s a separate statute governingthe enquiry. The Department of Treasury has the obliga-tion and must approve an alcoholic beverage label beforethat label can be put on the market. That too is governedby a separate statutory framework.

“So if there is a very broad holding from the court,which is generally unlikely because the court prefers toissue very narrow holdings, it could bleed over into otherindustries as well.”

Outside of the Supreme Court, Davis identifies “anunusually large number of opinions over the past couple ofyears and certainly over the past 12 months attempting toclarify the relationship between trademark protection andthe first amendment protection available for creative works.”

TTAB trendsJohn Welch, partner at Lando & Anastasi, who runs therespected The TTABlog, will be reviewing the past year at

the TTAB during Wednesday’s session. He identifiesactivity around non-traditional marks as an area towatch.

“Probably the most interesting area from a high-levelview is the never-ending attempt by trademark attorneys topush the envelope and try to get all kinds of non-tradition-al marks registered,” he said. “Often product shapes comebefore the Board and get shot down, particularly becauseoften these products have patent protection that is aboutto run out so the owner of the patent or the design will tryto get trademark protection. The TTAB usually will shootit down on functionality grounds, particularly if there wasa utility patent involved.”

The TTAB now has two judges who were patent attor-neys. Welch believes this is helping the board get a betterunderstanding on the interface between patent and trade-mark law. “They are getting a much better handle on therole of the utility patent and the difference between defacto functionality, in other words the product shape as afunction, versus de jure functionality, meaning it can’t be atrademark because the shape is essential to the usefulnessof the product. For instance, the scoring of a candy bar isde facto functional because it has a function that makes iteasier to break the candy bar apart but it is not de jurefunctional because it is not essential – you could do itmany, many ways.”

Welch refers to an example from 2012 when the TTABreversed a refusal to register a Hershey bar product config-uration. Hershey proved functionality and distinctiveness.Judge Thomas Shaw, a patent attorney, wrote the decisionin this case and Welch was pleased to see Shaw make thedistinction between the two.

TTAB judges are holding firm despite attorneys’attempts to push the boundaries of non-traditional marks.“Occasionally one slips by because the judges don’t knowwhat they are doing or don’t understand, but generally

they are pretty tough,” he said. “I think they are gettingbetter and they make it difficult for these non-traditionalmarks.”

He pointed to a 2012 case about a yellow triangularshape a ceiling fan. Delta T had applied to register a two-dimensional design for ventilating fans. But the specimenof use displayed the design in three dimensions, corre-sponding to the shape of the winglet at the outer tip ofthe fan blade. The board found that the proposed markwas “coextensive with and inseparable from the appli-cant’s patented winglet design” and therefore de jurefunctional.

“The board said: ‘You say it is a two dimensionalshape. But actually it is the shape of the fan and the shapeof the fan is functional and it is three dimensional. So, eventhough you are trying to register it as a two dimensionaldesign, we know what you are doing and you’re not get-ting away with it.’ That was an example,” said Welch.

Another trend Welch identifies is the Board lecturingpractitioners about discovery and disclosure rules. He saidsome practitioners are not very familiar with TTAB Rulesand procedures. “A lot of practitioners before the Boardmay be federal litigators,” he said. “They don’t pay atten-tion to the TTAB Rules, which are pretty particular – theyare not the same as the federal rules. There are variousthings you have to do at the TTAB that aren’t the same asat the courts. Litigators may be great court litigators, butthey think they know what they are doing and they stum-ble over the TTAB Rules.”

One thing the Board does like, however, is when partiesdecide to go down the accelerated case resolutions (ACR)route. ACR streamlines the procedures because the twoparties decide not to have testimony, using affidavitsinstead. “That gets the Board all excited,” said Welch.“They commend the parties for using ACR. But from whatI can tell not many people use it.”

Preview Trademark cases review


What are the biggest challenges you face?Despite all the public education and strategic marketing wehave done, trademarks and IP generally, as a relatively newand non-obvious knowledge system that is capable of capi-talization, are not readily identified and recognized. Mybiggest challenge has been to highlight the value of IP and tobuild necessary and sufficient support systems so as to nur-ture the development of various elements in the IP ecosystem.

Are there particular changes to the trademarklaws that you would like to see enacted, and isthere any pending IP legislation that might help?I think trademark proprietors should take a multisensoryapproach in connecting their goods and services with thecustomers. They should use and acquire more nontradi-tional marks. One obstacle regarding registration of non-traditional marks is the requirement of graphical represen-tation, and I think permissible international legal norms donot anticipate the future and should be removed at thedomestic level. However, that is not generally perceived asa deficiency, and so such a bill is not in the pipeline.

What steps has the government taken in recentyears to improve IP protection?Hong Kong IP protection is in line with international stan-dards and norms. Hong Kong registered its first trademark in1874. The Hong Kong IP system is so mature that we have aPrevention of Copyright Piracy Ordinance. Policy, law andenforcement aside, the government is keen to foster the devel-opment of international IP trading via Hong Kong. Details canbe found here: http://www.ipd.gov.hk/ eng/IP_trading.htm.(See box for more on IP trading in Hong Kong).

Can you discuss any partnerships or eventsyou’re involved with to help increase awarenessabout IP rights?IPD has continued its territory-wide campaigns such as the“No Fakes Pledge” Scheme and the “I Pledge” Campaign toencourage pride in the selling and buying of genuine goodsamong Hong Kong retailers, tourists and local consumers.

IPD launched the “No Fakes Pledge” Scheme in 1998.It aims to enhance consumer confidence in Hong Kong andto strengthen the City’s reputation as a “Shopping

Profile Hong Kong IPD


Protecting Trademarks “Hong Kong-style”The INTA Bulletin interviewed Peter Kam-fai Cheung, Director of Intellectual Property, Registrar of Patents,Designs and Trademarks for the Hong Kong Intellectual Property Department (HKIPD) in December of last year.The HKIPD is co-organizing the Unreal Student Session on Tuesday from 12:00pm to 4:00pm in the Hong KongConvention & Exhibition Center.

We support clients worldwide to get the best out of their intellectual property

The Hague Munich Leuven www.vo.eu

Pleased to meet

you in Hong Kong!

V.O. INTA team:

Michiel, Denys, Noëlle,

Koen, Bernard and

Natalia

..

Peter Kam-fai Cheung, HKIPD

Paradise” for genuine products. It encourages participatingretail merchants to set a good example by pledging not tosell or distribute counterfeit or pirated products, thusestablishing and upholding honest and trustworthy tradingpractices. In 2013, nine trade associations with 808 retailmerchants, covering 6,426 outlets in Hong Kong, tookpart in the “No Fakes Pledge” Scheme.

All retail merchants participating in the “No FakesPledge” Scheme will post the “No Fakes” stickers and tentcards in their shops. With the “No Fakes” logo, touristsand consumers can easily identify reliable retailers andshop with confidence. In 2013, IPD developed a “NoFakes Pledge” Shop Search mobile application to facilitate

tourists’ and consumers’ searching of shop informationand locating conveniently of all participating retail mer-chants in the Scheme.

With the help of strong marketing and growing partici-pation, the Scheme will further distinguish honest and reli-able retail merchants, thereby gaining the confidence andtrust of consumers.

Are there any major trademark-related projectsunderway within the Office that you would liketo highlight? Specifically, are there any majortechnology changes/projects in the works?“Hong Kong” literally means “fragrant harbor.” A majorIPD trademark-related project that has been underway iscalled “Fragrant Hong Kong.” The goal of the project is toraise societal awareness by promoting aroma marketing toconnect customers with marks and brands, and to set pos-sible standards on smell classification and the applicationand registration of smell marks. We have done 2013 actionitems in spring, summer and autumn, and a Decemberevent is coming up. More information is available here:http://www.ipd.gov.hk/eng/Fragrant_Hong_Kong.htm.

IPD also will host the 6th Global Multisensory BrandForum in Hong Kong on May 9, 2014.

Last, IPD is conducting a feasibility study on redevel-oping the existing electronic processing systems for theTrade Marks, Patents, and Designs Registries, and the e-Filing System and Online Search System. In the feasibilitystudy, an integrated system is proposed to replace theexisting systems, using Web-based technologies support-ing popular Internet browsers, smart phones and tabletcomputers, together with other new technologies such as2-D barcode, OCR, enhanced e-form, e-payment gateway,etc. The integrated system is planned to be launched byphases in 2017.

What advice or message do you have for trade-mark owners looking to expand into Hong Kong?Think about the possibility of trading your trademarks viaHong Kong–based IP trading platforms and marketingnontraditional marks from Hong Kong.

What one major achievement would you like tohave accomplished for the Office by the end ofyour term?I would like to have made the trading of international IP(“Hong Kong–style”) more visible and tangible in theworld scene.

Profile Hong Kong IPD


• Official Name: IntellectualProperty Department,Government of the Hong KongSpecial Administrative Region,People’s Republic of China(IPD).

• Name of Head: Peter Kam-faiCheung, Director of Intellectual

Property, Registrar of Patents,Designs and Trademarks.

• Date Appointed/Length of Term:April 12, 2011, to May 14, 2014

• Location: Intellectual PropertyDepartment, 25/F Wu ChungHouse, 213, Queen’s Road East,Wanchai, Hong Kong

• Position Within theGovernment: Works with theSecretary for Commerce andEconomic Development.

• Madrid Status: “Not yet.”• Number of TrademarkExaminers: 61

IPD: The Numbers

The Asia IPExchange (www.asi-aipex.com) is a freeonline platformdeveloped and man-aged by the HongKong TradeDevelopment Council

and showcasing IP rights around the globe in an effortto facilitate international IP trade to global IP players.As Asia’s largest online IP portal, AsiaIPEX has

formed alliances with 23 local and overseas strategicpartners with a listing of over 25,000 tradable IP rights.

For more information, contact the HongKong Trade Development Council:Telephone: (852) 2584 4013Email: [email protected]

Asia IP Exchange – The Global OnlineMarketplace for Intellectual Property

Receptions


WadesonIP @WadesonIPCongratulations to Dr Qiang Ma of JunHeBeijing and his wife on the birth of their babydaughter 2 days ago. Dr Ma just arrived#INTA14.

Brabners IP Comm @BrabnersIPComWe’re in Hong Kong after having leftLiverpool...now we hear a pianist playing ‘LetIt Be’ on the way into one of the #INTA14presentations!

AlexGarcia @AlexGarciaLopez#INTA14 even in networking you must choosea segment of the market. It’s not aboutmeeting and knowing everybody.

Maria Speth @mariaspethSinging the no fakes song at theanticounterfeiting committee meeting.#inta14!

Tracy Corneau @Tracytms#Inta14 - at the anticounterfeiting committeemtg - discuss how to tackle counterfeits -biggest committee at #Inta!

Staci Riordan @staciriordan@ManagingIP I think a symposium orconference is very different than a class -social media has a place. But not in myclassroom #TNTPanel

Sara Delpopolo @sdelpopoloChina is still a leading source of counterfeitsdue to low awareness of IP in lawenforcement. Shared intel is vital #INTA14

Luis F. Ruiz @chaplezLast night dining with clients Restaurantserved live (and still moving) shrimps.Surprise me today HK! @INTA #inta14

#INTA14

Yesterday’s receptions

Bardehle Pagenberg Field Fisher Waterhouse Ropes & Gray

Boult Wade Tennant Fross Zelnick Lehrman & Zissu Valipat

Ferraiuoli K&L Gates Wragge Lawrence Graham & Co

Ladas & Parry

Shyla N. Jones, Norvell IP, Chicago, U.S. -This is my first month in my position, so Ihaven’t had a chance to delve too deeply intothe issues the firm’s clients face just yet. In mylast firm, my clients were mostly concernedabout getting registrations and trademarkclearance but my new firm is more focused onenforcement, so that’s going to be a new chal-lenge for me.

Alfred M. Strahlberg, Strahlberg & Partners,Wabern, Switzerland - The biggest issue is thatexaminers in some jurisdictions don’t alwaysunderstand the marketplace. I have had objec-tions from Swiss examiners who say thatmarks in English are descriptive, when I haveseen the same marks in English-speaking coun-tries. There is a lack of harmonization and thatis a big problem.

Valentina Sergeyeva, Strahlberg & Partners,Riga, Latvia - The biggest issue for my Latvianclients is entering new markets. Their typicalmarket is the countries of the former USSR,but now many of them are figuring out whereto go next. Many of them want to expand toAfrica and the near East, but they need towork out how they can do that in the best way,without infringing anyone else’s mark and pro-tecting their own.

Margaret Shearer, Banki Haddock Fiora,Sydney, Australia - Cost and getting value formoney from their attorneys is a big issue. Allour clients are facing budget pressures andthey want to maximize IP protection with a lim-ited budget. For many clients IP protection isnow a business cost, rather than a legaldepartment cost. Sometimes that encouragesclients to take a shorter-term view of IP protec-tion rather than a longer-term, strategic view.

Gonzalo Barreda, BRDA Abogados, Lima,Peru - It is counterfeits. There are some placesin Peru where the police know counterfeits andpirated products are on sale but they don’t dovery much. Part of the problem for copyrightproducts is that traditionally there weren’tmany places where people could buy genuineproducts, although that is now starting tochange.

Darius F. Dalal, Jehangir Gulabbhai &Bilimoria & Daruwalla, Mumbai, India - Thereis insufficient IP infrastructure in India. The IPoffice needs more manpower. At the momentthere are delays. Examiners are not sufficientlywell-trained in trademark law. Applications areadvertised when they shouldn’t be. They areopposed and that leads to more delays. It’s avicious cycle.

Aaron Silverstein, Saunders + Silverstein LLP,Amesbury, MA, U.S. - Expanding into jurisdic-tions outside the U.S., and how to manage thateffectively. It’s about prioritizing filings withlimited budgets. Clients need to be smart. Theyneed to think about where their customers are,where they manufacture and potential red flagjurisdictions.

Laetitia d’Hanens, Gusmão & Labrune, SãoPaulo, Brazil - Brazil doesn’t protect non-tradi-tional marks—only visible, perceptible ones.That’s a big issue for our clients. IPAssociations are trying to persuade the gov-ernment to accept non-traditional marks.

Phoebe Zhang, Beijing Voson, Beijing, China -Some of my Chinese clients have found thattheir trademarks have already been registeredby other people abroad. They need informationabout how to protect their trademarks abroad,and how to reclaim their rights.

Adebusola Bakinson, Jackson, Etti & Edu,Lagos, Nigeria - Getting marks registered by theNigerian Registry is a big issue for our clients.The Registry has just introduced online filing,but the turnaround time is still slow. I expect itwill improve, and we have seen some improve-ments already, but we always want more.

What is the biggest issue your clients face today?

Vox pop


What are some of the important changes thatthe Trademark Law brings to registration andopposition proceedings?Spring Chang: The revision added the registrable elementfor trademark registration: the requirement for the precon-dition of “visually perceptible” signs for trademark regis-tration has been cancelled in the revised Trademark Law;the registrable element “sound” for trademark has beenstipulated in the revision (Article 8).

Multi-class application has been introduced: the appli-cant may file one application for several classes for a trade-mark; before the revision, the applicant could only file atrademark on one class in one application (Article 22.2).

The revision also clarified the effectiveness of electronictrademark applications: it clearly stipulated that a trade-mark registration application and other relevant docu-ments may be submitted in writing or by way of data mes-sage (Article 22.3).

The time limit for trademark examination and reviewhas been set: before the revision, the Law only required the“on time” standard for trademark examination andreview; after the revision, the Law has clarified the timelimits for different types of trademark examination andreview cases; therefore, it improves the efficiency of trade-mark examination and review, and also regulates theadministrative behaviors of the related authorities.

Finally, before the revision, the opposition procedure wascomplex and the period for examination was too long. Therevised Trademark Law has restricted the qualification forthe opposing party and simplified the opposition procedure.

What changes were made to either getting orusing well-known trademarks?Frank Liu: Before the revision of the Trademark Law, well-known status was often misused as an honorific title in thepromotion of products and advertising by the trademarkowner. Finding that the relevant public may be misled bysuch use (Article 13), the new law clarifies a number ofissues to prevent misuse.

First, the revised law further clarified the meaning of “well-known trademark”. Previously, there was no clear definitionregarding well-known trademarks in the Trademark Law. InArticle 13 of the revised law, it added that a well-knowntrademark is one that is well known by the relevant public.

In 2009, the Interpretation of the Supreme People'sCourt defined that “‘well-known trademarks’ shall meanthe trademarks that are widely known to the relevantpubic within the territory of China”.

The definition of “well-known trademark” in the newTrademark Law is more accurate and it helps the relevantpublic in China to better understand the original meaningof the “well-known trademark” as originally defined inParis Convention for the Protection of Industrial Property.

The revision also clarified the principles of case by caserecognition and passive recognition. Article 13 of the newlaw adds the precondition for recognition of well-known

trademarks by the related authorities, requiring that theholder is of the opinion that its rights have been infringedupon. Furthermore, it clarified that the purpose of thewell-known recognition of a mark is for the protection ofthe holder’s trademark rights and not for commercial pro-motion or propaganda.

In addition, Article 14 of the revised law further clari-fies that the recognition of a well-known trademark shallbe based on the request of the concerned party, and it shallbe recognized only as a fact that needs to be ascertained inthe handling of a trademark-related case. It aims to recti-fy the improper use of well-known status by some rightholders who actively create a dispute in order to obtainwell-known status for their marks.

I think these above revisions clarify the principles ofcase by case recognition and passive recognition.Chang: Related to the above, the commercial use of the

words "well-known trademark" in advertising or promo-tion has been prohibited (Article 14). The commercial useof the term may be punished by a fine of RMB 100,000 ($16,700), which may be levied by a local Administrative forIndustry and Commerce (AIC) (Article 53)

The revision clearly defined the related authorities andthe applicable procedures for the recognition of the well-know trademark” (Article 14). The procedures are:1) During investigations and punishments of trademark-

related illegalities cases by the AIC;2) During the process of handling of trademark disputes

by the Trademark Review and Adjudication Board(TRAB); and

3) During the process of trials of trademark-related civil oradministrative cases before the People's Court designat-ed by the Supreme People's Court.

What does the new law do to deal with bad faithregistrations and oppositions?Tom Wang: Bad faith registration and opposition are twoproblems that rights holders have been facing in China.The new Trademark Law has several provisions aimed ataddressing these issues.

The registration of a trademark registration by a partywith knowledge based on abusiness relationship with theprior user of the mark is prohib-ited. This is designed to tacklethe problem of agents or busi-ness partners registering a brandowner’s mark without consent.

Article 14 in the new

Trademark Law also looks to deal with bad faith. It adds thatif the applicant clearly knows of the existence of the trade-mark of another party due to contractual, business or otherrelationships, such registration shall not be approved.

The new Trademark Law also provides protection forprior usage. Article 59.3 of the new law grants protectionfor the useby a party that has a history of prior use of atrademark with a certain level of reputation. In such a cir-cumstance, the holder of the exclusive right to use the reg-istered trademark shall have no right to prohibit the prioruser from continuing to use the trademark within the orig-inal scope of use. However, it may require that prior userto add suitable logos for distinguishing purposes.

Article 58 also clarifies the prohibition of the usage ofanother party’s trademark as a trade name. Although suchprotection has been stipulated in the current ImplementingRegulations and related Supreme Court interpretationsbefore the revision, the clarifying of the same in theTrademark Law is still a positive development that will helpto clarify and smooth out the performance of the law.

The new Trademark Law also addresses bad faith oppo-sitions. Before the revision, anyone can initiate oppositionproceedings against any trademark application. UnderArticle 33 of the new law, only a holder of prior rights oran interested party may raise opposition based on relativegrounds, such as having a prior trademark right, prior useor other rights. Therefore, bad faith oppositions which aimto prolong the registration procedure with no concrete rea-son will be limited.

What are the procedural changes, such as short-ened timelines, that rights holders need to beaware of?Liu: The time limits to complete the examination of thetrademark by the China Trademark Office (CTMO) andTRAB have been stipulated in the revision. • Registration examination: nine months (Article 28)• Review of application after refusal: nine months

(Article 34)• Non-use cancellation application: nine months (Article 49)• Review application for non-use cancellation: nine

months (Article 54)• Invalidation application with absolute ground: nine

months (Article 44)• Invalidation application with relative ground: 12

months (Article 45)• Opposition application: 12 months after the expiration

of the three-month publication period for opposition(Article 35);

Sponsored discussion China’s new Trademark Law


Moving fast under China’s new Trademark LawChina’s new Trademark Law looks to speed up registration and opposition proceedings and to stop on bad-faithfactors. Spring Chang and Frank Liu of Chang Tsi & Partners and Tom Wang of Kohler discuss the changes andhow brand owners can prepare.

Spring Chang: (1)、增加可以注册的商标要素：删

除了修订前的商标法关于商标必须是

“可视性标志”的限制性规定，明确

“声音”可以作为商标申请注册。（

新法8条）

(2)、明确“一标多类”申请方式：

商标注册申请人可以通过一份申请就

多个类别的商品申请注册同一商标，

即由之前的一标一类申请，修改为允

许一标多类申请。（新法22条2款）

(3)、明确了电子申请的效力：规定

商标注册申请等有关文件可以以书面

方式或者数据电文方式提出。（新法

22条3款）

(4)、规定商标审查与审理工作时限

：修订前的商标法对商标审查时限未

作规定，仅要求应当“及时”进行审

查。修订的商标法对各类案件的审查

及审理时限作出了明确规定；提高了

商标审查效率，规范了行政行为。

(5)、完善并简化异议程序：

修订前的商标法规定的异议程序过于

复杂，审查期限过长。修订的商标法

对提出异议申请的主体进行了适当限

制，并简化了异议程序。

商标法修改中关于商标注册和异议程序的重大变化有哪些？

I think these above revisions clarify the principles ofcase by case recognition and passive recognition.Frank Liu

• Review application for opposition: 12 months (Article 35)If there are any special circumstances, the AIC can grant

extensions of three to six months to the above time limits.

Wang: Article 35 of the new Trademark Law also sim-plifies the opposition procedures. Other than a preliminaryruling on the opposition, the CTMO may directly decidewhether to approve the registration application after therevision of the trademark law.

One important change is that if the CTMO decides toapprove the registration of the trademark after opposition,the opposing party CANNOT file the opposition reviewwith the TRAB. Instead, it must initiate invalidation pro-ceedings TRAB in accordance with Article 44 and Article45 of the revised Trademark Law.

How should rights holders deal with the newopposition proceedings, especially the new pro-vision that an application that survives an oppo-sition is immediately registered?Chang: Under the new law, if the opposition against an appli-cation fails at the CTMO, the opposing party cannot appealwith the TRAB. Instead, the opposing party may initiate aninvalidation procedure according to Article 44 and 45 of therevised law. In the invalidation procedure, the opposing partymay make good use of the Revision against the bad faith reg-istration (trademark squatting) as discussed above.

Please note that even when the opposing party wins theopposition in the CTMO, if the TRAB overrules theCTMO decision, the trademark will still be immediatelyregistered, and the opposing party will need to proceedwith the invalidation procedure in accordance withArticles 35, 36, 44 and 45.

Another point that needs to be mentioned is that theregistered trademark after the opposition examinationshall have no retroactive effect on the use of a mark byanother party, provided that the use by the other party isnot based on bad faith. That other party shall not beliable for compensating the losses caused to the trademarkregistrant.

What unanswered questions are there about thenew Trademark Law in terms of registrationsand opposition? Do the ImplementingRegulations address these issues?Liu: As you know, the draft Implementing Regulationshave already been published on the website of theLegislative Affairs Office of the State Council for com-ments and it has addressed many detailed issues for therevised law, such as how to apply for sound marks. Thisalso came into force on May 1. However, there are stillmany other issues to be addressed, such as how distin-guishable marks will be added to prior use trademarks asrequired in Article 59 (3).

Sponsored discussion China’s new Trademark Law


Spring Chang focuses onall aspects of IP rights,including applications andprotection of trademarks,patents, copyrights, anddomain names. Ms. Changhas supervised over 10,000trademark applications,and thousands of opposi-

tions, non-use cancellations, and other administrativeactions. She also oversees hundreds of administrativeraids per year, and has handled many administrative,civil and criminal IP cases. Ms. Chang’s representationof Best Buy before the China Supreme People’s Courtallowed for registration of their house mark whichhad been denied for lack of distinctiveness. She alsorepresents Air China in its Chinese and internationaltrademark matters.

Spring Chang

Frank Liu specializes inintellectual property anddispute resolution. He hasworked in the Court forfive years since 1996, andstarted to practice law asan attorney in 2002.Through many years ofpractice, he has accumulat-

ed valuable experiences in the fields. Mr. Liu has pro-vided legal service for many Fortune 500 companiesand domestic clients regarding the intellectual prop-erty protection strategy and various other legalissues. Mr. Liu has acted for clients in more than 100litigation and arbitration cases in China, and has beennominated by AsiaLaw Leading Lawyers as a leadinglawyer in the areas of dispute resolution in China in2013.

Frank Liu

Tom Wang has beenassigned as an academicresearcher for theIntellectual PropertyInstitute of ECUPL (EastChina University of PoliticalScience and Law) since2003. He has accumulatedover 10 years experience

as an in-house attorney among multinational compa-nies including Johnson & Johnson, SanDisk andKohler. Majoring in the mixed industries such as phar-maceutical, semi-conductor and fast consumer goods,Tom shows professional skills and great passion intacking with intellectual property challenges ontrademarks, patent and copyrights. With Tom’s signifi-cant contribution, Johnson & Johnson WorldwideSecurity-China was awarded “Highly CommendedCompany of 2007 Global Anti-counterfeit awards” bythe GACG (Global Anti-counterfeit Network).

Tom Wang

Today’s Schedule | Monday, May 12, 2014All events take place at the Hong Kong Convention and Exhibition Centre (HKCEC) unless otherwise indicated.

Consult the Final Program for times and locations of invitation-only events.

7:30 am – 5:00 pm REGISTRATION Mezzanine & Convention Hall Foyer7:30 am – 5:00 pm HOSPITALITY Hall 3FG7:30 am – 5:00 pm INFORMATION BOOTH Mezzanine8:30 am – 5:00 pm Tour Desk Mezzanine8:45 am – 10:00 am OPENING CEREMONIES Grand Hall10:00 am – 4:00 pm EXHIBITION HALL Hall 3FG9:00 am – 10:30 am Career Development Day: What They Didn’t Teach You in Law School About Trademark Law S42810:00 am – 11:00 am Committee Structure and Participation Presidential Task Force S42910:15 am – 12:15 pm COMMITTEE MEETINGS

Anticounterfeiting Committee – East Asia & Pacific Subcommittee S421Enforcement Committee – Opposition & Cancellation Standards and Procedures Subcommittee N211-N212International Amicus Committee – Canada Amicus Subcommittee N103International Amicus Committee – Latin America Amicus Subcommittee S430Internet Committee – Internet Governance and Contractual Relationships Subcommittee N111-N112Madrid Practitioner’s Guide Project Team N102Trademark Office Practices Committee – Asia-Pacific TMO Relations Subcommittee S424Trademark Office Practices Committee – USPTO Subcommittee S423

10:15 am – 11:30 am CONCURRENT SESSIONSCM01 Doing Business in China Beginner Level Grand HallCM02 Plain Packaging: Who Will it Affect Next? Advanced Level Theatre 1CM03 Trademarks at the Crossroads of Trade and Culture Intermediate Level Convention Hall ACM04 Trademarks and New Generic Top-Level Domains (gTLDs): An Update Intermediate Level Convention Hall BC

10:30 am – 11:30 am SPEED NETWORKING Hall 3FG10:30 am – 12:30 pm OHIM Breakfast Meeting N101B10:45 am – 11:45 pm Being the Best Counsel You Can Be (Career Development Day) S42811:45 am – 1:00 pm CONCURRENT SESSIONS

CM20 Battling for Brands: Strategies for Dealing with Private Labels Intermediate Level Grand HallIM20 The Shape of Things to Come: Clearing and Protecting High-Tech Product Configurations Advanced Level Convention Hall ARM20 Regional Update: China Intermediate Level Theatre 1RM21 Regional Update: Working with Customs in Europe Intermediate Level Convention Hall BC

12:00 pm – 1:15 pm Career Development Day: Getting Involved with INTA: Working Lunch for Law Students S42512:00 pm – 1:00 pm SPEED NETWORKING Hall 3FG12:00 pm – 1:30 pm Trademark Strategy for a Luxury Brand (Academic Day Professor Luncheon) S4271:15 pm – 3:15 pm COMMITTEE MEETINGS

Anticounterfeiting Committee Eastern Europe & Central Asia Subcommittee N107Enforcement Committee – Trade Names Subcommittee N206-N207-N208Enforcement Pub Project Team N102In-House Practitioners Committee N101BInternet Committee – Online Trademark Use Subcommittee S221Legislation & Regulation Committee – East Asia & Pacific Subcommittee N202-N203Legislation & Regulation Committee – Latin America & Caribbean Subcommittee S426Legislaton & Regulation Committee – Middle East, Africa & South Asia Subcommittee N103Legislation & Regulation Committee – U.S. Subcommittee S421Related Rights Committee – Design Rights Subcommittee S423Roundtables Subcommittee (Programs Committee) N211-N212The Trademark Reporter Committee N101AParallel Imports Committee – Leadership N111-112CONCURRENT SESSIONS

1:15 pm – 2:30 pm Regional Intellectual Property Attachés Update Convention Hall BC 1:30 pm – 3:15 pm Trademark and IP Issues in China: Government Perspective Advanced Level Convention Hall A1:15 pm – 3:15 pm LUNCHEON TABLE TOPICS N2011:30 pm – 2:30 pm SPEED NETWORKING Hall 3FG2:00 pm – 3:15 pm Trademark Scholarship Symposium Session I – Can Trademark Law Circumvent Copyright’s First Sale Rule for Imported Copies? S429

Trademark Scholarship Symposium – Session I – Sixth Time Lucky: Starbucks and the Lessons from European Law S4242:00 pm – 4:00 pm TM5 Mid-Term Meeting N202-N2032:30 pm – 3:30 pm Career Development Day Speed Networking S4273:00 pm – 4:00 pm SPEED NETWORKING Hall 3FG3:30 pm – 4:45 pm CONCURRENT SESSIONS

CM50 Social Media in China: How to Harness the Potential and Avoid Legal Pitfalls Beginner to Intermediate Level Theatre 1CM51 The Presumption of Irreparable Harm: Don’t Stop Believing Advanced Level Convention Hall BCRM50 Regional Update: Africa Rising! Intermediate Level Convention Hall ARM51 Annual Review of Leading Case Law in the European Union Advanced Level Grand Hall

3:30 pm – 4:45 pm Academic Day Trademark Scholarship Symposium Session II: Initial Interest Confusion “Troika” Abandoned? S4293:30 pm – 4:45 pm Academic Day Trademark Scholarship Symposium Session II: Indirect Trademark Infringement - Is International Consensus Possible? S4243:45 pm – 5:00 pm Academic Day Careers in Trademark Law: A Panel Discussion for Law Students S4283:45 pm – 5:45 pm COMMITTEE MEETINGS

Anticounterfeting Committee – European Union Subcommittee N211-N212Government Officials Education and Training Committee N206-N207-N208Internet Committee – Internet Policy Advocacy Subcommittee N202-N203Law Firm Committee S421Legislation & Regulation Committee – Europe and Central Asia Subcommittee N111-N112Related Rights Committee – Geographical Indications Subcommittee S425Related Rights Committee- Indigenous Rights Subcommittee N103Related Rights Committee – Right of Publicity Subcommittee N209-N210Trademark Administration Pub Project Team S426

5:15 pm – 7:15 pm Academic Day Academic and Young Practitioners Happy Hour S423India Reception (By invitation only) N101AChina Reception (By invitation only) N101B

Daily News - Managing Intellectual Property · (FIFA) also stressed the need for a consid - ered...

Documents

Transcript of Daily News - Managing Intellectual Property · (FIFA) also stressed the need for a consid - ered...