LawyerTrademarkIssue 3 2020

GLOBAL REACH, LOCAL KNOWLEDGE

www.trademarklawyermagazine.com

The

Mladen Vukmir, ECTA Second Vice-President,explains how IP practice and law need to developand change in the years ahead

Looking to thefuture

PA C I F I C

ASIA

Law firmRANKINGS

Polish IP CourtsPage 14

CTC Legal Media

Michael Jordan wins in China

Page 49

E-commerce in IndiaPage 38

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CTC Legal Media THE TRADEMARK LAWYER

THE TRADEMARKLAWYERIssue 3 2020EditorMatt Seexmatt@ctclegalmedia.com

Publishing DirectorChris Dooleychris@ctclegalmedia.com

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Whilst every effort has been made to ensure that theinformation contained in this journal is correct, neitherthe editor, contributors or CTC Legal Media canaccept any responsibility for any errors or omissionsor for any consequences resulting therefrom.© CTC Legal Media 2020, and contributors. Thecontents of this journal are protected under thecopyright law of the United Kingdom, the BerneConvention and the Universal Copyright Convention.Any unauthorised copying of the journal may be inbreach of both civil and criminal law. Infringers will beprosecuted.

ISSN 2053-3829

LawyerTrademarkIssue 3 2020

GLOBAL REACH, LOCAL KNOWLEDGE

www.trademarklawyermagazine.com

The

Mladen Vukmir, ECTA Second Vice-President,

explains how IP practice and law need to develop

and change in the years ahead

Looking to thefuture

PAC IF IC

ASIA

Law firmRANKINGS

Polish IP CourtsPage 14

CTC Legal Media

Michael Jordan

wins in ChinaPage 49

E-commerce

in IndiaPage 38

Front cover_TML3_v3.qxd y

CTC Legal Media

3

Trademarks are, of course, very much a global concept. Pick almostany jurisdiction, and you will likely find legislation designed topromote and protect trademarks and other forms of IP.

By way of illustration, this issue features articles from all across theworld. We look at a recent high-profile victory for Basketball legendMichael Jordan in the Chinese courts, at proposed new IP legislation inMexico, at a possible “new era” for trademarks in Angola, and atnumerous recent developments in Russia.

But that’s not all – we also look athow IP courts are being establishedin Poland, at the impact of e-commerce in India, and at brandvaluation in Germany, amongstother topics.

As ever, this is an interesting time for trademark lawyers aroundthe world. One might wonder, then, what the future holds, andwith that in mind, for our CoverStory, ECTA Second Vice-PresidentMladen Vukmir is on hand to look to the future to discuss how law,and IP practice in particular, needs

to develop and change in the years ahead.And remember: The Trademark Lawyer is also a digital publication,

so despite current global uncertainty, we will continue to bring you the latest in trademark news, features, and opinion. Head over towww.trademarklawyermagazine.com to read our online editions andlatest news stories - and make sure to subscribe to our weeklynewsletter.

I hope you enjoy the issue.

Matt Seex

Editor’swelcome

Mission statementThe Trademark Lawyer educates and informs professionals working in the industry bydisseminating and expanding knowledge globally. It features articles written by people atthe top of their fields of expertise, which contain not just the facts but analysis and opinion.Important judgments are examined in case studies and topical issues are reviewed inlonger feature articles. All of this and the top news stories are brought to your desk via theprinted magazine or the website http://www.trademarklawyermagazine.com/

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time fortrademark

lawyers aroundthe world.

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5CTC Legal Media THE TRADEMARK LAWYER

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38 Liability of e-commercewebsites in IndiaManisha Singh, Managing Partner, Aprajita Nigam,Senior Associate, and Smrita Sinha, Associate, ofLexOrbis, outline how the Indian legal system isdealing with the IP challenges created by the rapidgrowth of e-commerce in the country.

42 Monetary brand valuationin financial engineeringDr. Edelbert Häfele, Dr. Judit Inacsovszky, ChristinaKoller of PATEV Associates GmbH look at how an activeIP management by trademark and patent lawyers cansupport leveraging the value of trademark and patentrights in times of a crisis or business expansion.

46 Proposed new IP law inMexico: possibletrademark challengesClaudina González, Associate at Uhthoff, Gomez Vega& Uhthoff, S.C., discusses the impact new legislativechanges will have on Mexico’s treatment oftrademarks.

49 Michael Jordan has won a “final counterattack”against Qiaodan sports in ChinaRay ZHAO, LL.M., Senior Partner and Head of theInternational Trademark Team at Unitalen, looks at arecent high-profile victory for IP in the Chinese courts.

52 Invalidation of a trademarkas a prerequisite forregistration of identicaltrademark in relation tosimilar goods and servicesSergey Zuykov of Zuykov and partners discusses arecent invalidation case that his firm litigated in theRussian courts.

56 Why we urgently needpartial cancellationactions in MexicoVictor Ramirez and Carlos Reyes of OLIVARES look atthe substantive changes that need to be adopted byMexican IP law.

60 Rankings: Asia-PacificTen of the best law firms from each of the top Asian jurisdictions, including China, India, South Korea,and Japan.

67 Directory of servicesAn A to Z list of the international law firms who provideIP related services.

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4 THE TRADEMARK LAWYER CTC Legal Media

ContentsIssue 3 2020

6 Meet the Editorial BoardMeet our Editorial Board members who helpdetermine the direction of this magazine.

7 NewsUSPTO extends deadlines under CARES Act, Square Enix triumphs over Gleissner at UKIPO, and INTA reports on Corporate Social Responsibility.

10 Does Artificial Intelligenceact intentionally? –“willfulness” andtrademark damages in the digital agePat Breslin, Founder of Breslin Consulting, looks at the importance of “willfulness” in trademarkdisputes, and discusses the relevance of such a concept to IP disputes involving AI, algorithms, and automation.

14 Poland establishes new IP CourtsAnna Sokołowska-Ławniczak, Patent and Trademark Attorney, and Partner, and Julia Jewgraf,Lawyer at Traple Konarski Podrecki & Partners,outline the Polish approach to IP.

17 GRUNDFOS recognized asa well-known trademarkand awarded damages ofRMB 3 millionLing ZHAO, Trademark Attorney and Deputy Directorof the International Trademark Department at CCPIT Patent and Trademark Law Office, discusses an important infringement case in which she wasrecently involved.

21 How to protect yourtrademark moreeffectively in China withthe help of non-usecancellationNick Ji of Corner Stone & Partners looks at one of the ways in which rights holders can protect theirtrademarks in China.

24 COVER STORY Change offuture passedMladen Vukmir, ECTA Second Vice-President, looks to the future to discuss how law, and IP practicein particular, needs to develop and change in theyears ahead.

26 Intellectual property law inPoland – latestdevelopmentsAttorney at law and patent attorney for ZM Legal,Klaudia Błach-Morysińska, discusses the latestdevelopments in intellectual property law in Poland,including new trademark and patent regulations, andthe introduction of IP courts.

31 Another step towardscreating a regionaltrademark protectionsystem across EurasiaVladimir Trey, Partner and Head of the TrademarkDepartment at Gorodissky & Partners, examinesrecent efforts to develop an umbrella of protectionacross the Eurasian economic union.

35 A new era for trademarksin Angola?Vitor Palmela Fidalgo of Inventa gives us an overview of“genuine use” in Angola’s latest industrial property Bill.

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USPTO extends deadlinesunder CARES ActTHE UNITED STATES PATENT and Trademark Office (USPTO)has, rather belatedly, extended the time limit for applicants to file patent and trademark-related documents to 1 June 2020.It has also extended the time limits applicable to the payment ofrelevant fees and costs. The extensions have been made underthe authority of the Coronavirus Aid, Relief, and EconomicSecurity Act (CARES Act), which was signed into law by PresidentTrump on 27 March. Previously, the USPTO had insisted that“patent and trademark application deadlines and other deadlinesare not extended”, despite closing its offices to the public “untilfurther notice”, so this latest action marks a significantturnaround.

Andrei Iancu, USPTO Director and Under Secretary of Commercefor Intellectual Property said: “Inventors and entrepreneurs arethe lifeblood of our economy, and we recognize that many ofthem are having difficulty as a result of the effects of COVID-19.

As a result, we are working to provide as much relief as possibleto our stakeholders, consistent with our ability to maintain theUSPTO’s fee-funded operations. We are especially mindful ofthe outsized impact on small businesses and independentinventors and have provided additional relief for these groups.Ultimately, our goal is to ensure not only that inventors andentrepreneurs can weather the storm, but that they can hit theground running once it passes”.

According to the USPTO, it has made a number of operationaladjustments to keep its employees and the public safe as itremains open for business. In-person meetings, such as hearingsand examiner interviews, are being conducted virtually, either byphone or by video-link, until further notice. The USPTO has alsosaid that it will continue to evaluate the evolving situation aroundCOVID-19 and the impact the pandemic has on both theUSPTO’s operations and stakeholders.

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MEET THE EDITORIAL BOARD

Pravin Anand - Anand & Anand, IndiaPravin Anand, managing partner of Anand and Anand, completed hislaw studies in New Delhi in 1979 and since then has been practising asan advocate and a patent and trademark attorney. He has been acounsel in several landmark IP cases involving the first Anton PillerOrder (HMV cases); the first Mareva Injunction Order (Philips case); thefirst Norwich Pharmacal Order (Hollywood Cigarettes case); right ofprivacy (Bandit Queen case); dilution in trademarks (Glenfiddich case);recognition of market survey evidence by judiciary (Time warner case).

Ronda Majure - Vice-President,Global Head of Sales, CompuMarkRonda joined the company in 1996 and has worked in thetrademark research and brand protection industry for over 20 years, serving on several INTA committees including the INTA Internet Committee, Trade Dress, the Online Trademark UseSubcommittee, and currently serving on the Unreal Campaign.She has held several positions within CompuMark, including Vice-President of Sales and Marketing.

Jayne Durden - Intellectual Property Law Management SpecialistA trademark attorney and solicitor, Jayne is experienced inworking in large, as well as boutique law firms in the US andAustralia, helping in-house legal counsel and brand managers todevelop strong brands, supported by strategic trademark filingstrategies. Jayne utilizes her technical knowledge andunderstanding of trademark management to support thedevelopment and delivery of a range of IP portfolio services.

Christopher Lees - Director and part owner of BENTLEY ClothingChris has been heading the UK-based company for several yearsand even saw it win a landmark legal battle against Bentley Motors after they failed to cancel their trademarks.

Vitor Palmela Fidalgo - Legal Director at Inventa InternationalCurrently holding the position of Legal Director at InventaInternational, Vítor coordinates the Trademark and PatentAttorney’s team, a role in which he has extensive experience.Combining the legal and business perspective, Vítor worksalongside the clients in order to set and carry out the mostadequate Intellectual Property (IP) strategies, with the aim toprotect and enhance the profitability of all IP assets.

Enrique A. Diaz - Senior Partner,Goodrich RiquelmeEnrique is head of the Industrial and Intellectual PropertyDepartment. IP Latin American expert Enrique joined the firm in1998, finished law school in 2001, and by 2010 he became theyoungest lawyer to have ever been made senior partner in thefirm’s history. He is currently a foreign expert on Latin-Americanintellectual property, managing the prosecution of over 3500 trademarks and more than 1000 patents per year.

Rob Davey - Senior Director, ManagedSolutions and Global Markets, CompuMarkRob is a member of the CompuMark leadership team responsiblefor driving strategic growth from professional services andgeographical expansion. He leads CompuMark’s Custom &Managed Solutions team who answer the global trademarkcommunity’s unique challenges with tailored professional servicesand data analytics. Rob is also accountable for CompuMark’sbusiness in Asia, Latin America, the Middle East and Africa.

Mr. Gang HU - Trademark Specialist,CCPITMr. HU is a senior Chinese trademark specialist and practitioner.He is good at solving all kinds of difficult and complicatedtrademark litigation and non-litigation cases. Some of theinfluential cases he handled were widely reported by a variety of media, and any recent IP litigation cases represented by himwere awarded by the Supreme People’s Court as the annualguidance cases.

Rosie Burbidge - Partner, Gunnercooke LLPRosie is an intellectual property lawyer. In 2019 she wasrecognized as one of 20 Women in IP who are “destined for great things”.

Joel Vertes – Partner, CMSJoel is a Partner at CMS, with expertise in trademark litigation andprosecution, copyright, anti-piracy and other IP enforcementdisputes. He also specialises in licensing/franchising.

Shelley Jones - Vice-President atNational Inventors Hall of Fame, CanadaShelley was called to the Ontario Bar in 2010 and has been a registered trademark agent since 2002. She is experienced in protecting global brands with a focus on trademark and copyrightinfringement, domain name disputes, and anti-counterfeiting. At IPIC,Shelley developed relationships and partnerships with keystakeholders such as businesses, educators and government.

Santiago R. O’Conor - Managing Partner,O’Conor & PowerSantiago is an attorney and trademark and patent agent advisingdomestic and foreign companies on local and international IP lawin Argentina and across Latin America for more than 30 years. Heis the managing partner at O’Conor & Power in Buenos Aires,Argentina.

Verónica Rodríguez Arguijo -International Legal CounselVerónica has extensive experience in the prosecution, enforcement,and litigation of IPRs. She provides legal advice to multinationals,associations, and SMEs in relation to cross-border IP, regulatory andcontractual issues. She holds an LL.M. from Maastricht Universityand Specialization from the National Autonomous University ofMexico, both in IP Law. Verónica contributes to IPKat and IPTangoand is an IP mentor at HighTechXL.

Jeffrey LIU – Senior Partner of Corner Stone& Partners; Member of Anti-CounterfeitingCommittee of INTA & ECTAJeffrey is an established trademark attorney whose experienceincludes trademark prosecution, investigations involving infringingand counterfeit goods, and administrative enforcement. He is a keystrategist in building the foundation for complex international cases.His extensive experience and focus on client caring has made himthe firm’s international ambassador.

Tania Clark - CITMA PresidentTania is responsible for the policy and direction of CITMA and for maintaining its relationship with UK legislators andinternational organisations, including the UK Intellectual PropertyOffice (UKIPO), European Union Intellectual Property Office(EUIPO) and the World Intellectual Property Office (WIPO). A Chartered Trademark Attorney and a qualified Barrister, Tania has headed the London trademark team at Withers &Rogers for the last 12 years.

Steve Burkhart - Vice-PresidentAdministration, General Counsel andSecretary, BIC CorporationBefore joining BIC, Steve was in private practice at Venable. Inaddition to general counsel responsibilities, he serves as aConvenor of ISO TC61 SC4 WG10 for lighters, the immediate pastChairman of the Board of the Product Liability Advisory Council(PLAC), VP of U.S. Lighter Association and as an adjunct professorof law teaching in-house corporate practice.

Mr. Francesco Bonini - Studio Bonini, ItalyFrancesco has 20 years experience in Italian and EU trademarkand design prosecution. He had successful cases in oppositions,appeals and cancellations both before the EUIPO and the Italian PTO. Studio Bonini, established in 1980, has its head officein Vicenza, in the North-East of Italy. It has helped severalcompanies of the Venetian area to protect their IP rights, dealing with IP prosecution.

Mark Durrant – Director of Marketing andCommunications, Marconi GroupHaving spent over thirteen years at Nokia, most recently as the Director of Communications for Nokia Technologies, Mark has recently joined the Marconi Group as their Director of Marketing and Communications.

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BIRO OKTROI ROOSSENO, is one of the leading law firms in theIntellectual Property field of Indonesia, which has been established in the

capital city, Jakarta, since 1951. The firm is also one fo the oldest ofits kind in the country.

Our firm’s scope of works comprises registering, prosecuting, andmaintenance of Intellectual Property in Indonesia and abroad, consultant

services on Intellectual Property, searches, and registration opinions, patentand trademark surveillance and/or infringement investigation of services,

checking and managing Patent, Trademark and Copyright portfolio orindividuals/companies, consultant services and legal assistance in nullity

lawsuit and/or enforcement of Intellectual Property, counsel on litigation andinvestigation related to Intellectual Property matters.

Corporate Social Responsibility– INTA reportINTA’S “BRANDS AND CSR Survey Report”surveyed 227 INTA members worldwide.According to INTA, “organizations over-whelmingly recognize their social obligationto positively impact global issues andgive back to the community, and thatthese efforts — when made public — cancontribute to brand value and brand loyalty”.

The report found that “many brands thatengage in CSR have not yet effectivelyleveraged the full potential benefit of CSRpolicies and activities for their brands”and notes that INTA is ideally situated toeducate brands about the benefits ofsuch programs.

More than half of respondents (62.39%)confirmed that their organizations eitherhave a CSR policy and/or are engaged inactivities targeting the improvement ofsociety, the environment, labor practices,equality, or other such issues. In addition,more than 88% of law firms and servicefirms reported providing pro bono services.

Moreover, 84% of respondents agreedthat CSR policies and adopting sustainabilityprinciples as an operational priority“constitutes good economic practice andwill benefit a company and/or brand” and around 50% said CSR impacts theircompanies’ overall branding strategies.Further, 57.98% agreed that the absence ofCSR policies and practices puts companiesand brands at a disadvantage in themarket.

However, while organizations recognizethe economic and reputational benefits ofCSR, not all widely publicize their efforts.Only about 60% of respondents said thatCSR policies are part of their companies’mission statements and public-facingcommunications.

Commenting on the report, 2019 INTAPresident David Lossignol, who spear-headed the creation of Presidential TaskForce that carried out the report, said “Weknow that consumers increasingly want

brands to be good corporate citizens, and,as such, CSR initiatives present enormouspotential to garner consumer loyalty andtrust, and bolster relationships, but thebenefits are so much more far-reachingand universal: the lasting footprint thatthese efforts can have to better society istremendous”.

INTA CEO Etienne Sanz de Acedonoted: “It is heartening to see that brandsin all sectors and in all parts of the worldare stepping up to do their share. There ismore brands can do — and no doubt willdo — to effect change especially at a timesuch as now when major global issuesare impacting and challenging oursociety like never before.

“Given the current COVID-19 pandemic,individuals, society, and brands shouldreflect even more on how they cancontribute to better society today and dotheir best to reshape the world for futuregenerations”.

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Square Enix triumphsover Gleissner at UKIPOGERMAN BUSINESSMAN Michael Gleissner is a controversialfigure in the world of trademarks. Over the past few years,Gleissner has made a name for himself across the globe by filingthousands of trademark applications through hundreds ofcompanies of which he is the sole director. So prolific is his filingactivity that, by the end of 2017, over 5% of all trademark disputesbefore the UK IPO involved a legal entity owned by Gleissner.Despite all this activity, Gleissner’s motivation remains unclear.His Wikipedia page lists his activities as “entrepreneur, filmproducer, director, screenwriter, and actor”, alongside a sizeablefilmography.

Whatever Gleissner’s intentions, his attempt to register twomarks long associated with a successful videogame franchisehas met with resounding defeat at the hands of the UKIPO, courtesyof Japanese videogame developer and publisher Square Enix.

On 9 March, in consolidated invalidation proceedings betweenGleissner entity Fashion One (Europe) N.V. and Square Enix Co. Ltd,Square Enix successfully sought invalidation of two applicationsfiled by Fashion One in 2017 for the terms “Parasite Eve” and“parasite”. As gaming fans will know, “Parasite Eve” is a survivalhorror game franchise that began with the publication of Square’s

PlayStation game of the same name back in 1998. The franchisecontinued into the 2010s. Following Fashion One’s application toregister the two marks, Square Enix sought invalidation on thegrounds that, though unregistered, “Parasite Eve” has been used in the UK in respect of video game software since 1998,and that Fashion One’s use of the contested marks would be “amisrepresentation to the public and result in damage to itsgoodwill”.

Additionally, Square Enix singled-out Fashion One’s proprietor,alleging that “Mr Gleissner owns a large number of companiesthrough which he has acquired a wide portfolio of trademarksand has been involved in other legal proceedings concerningopposition and cancellation of third party trademarks, where ithas been found that his actions were an abuse of process and/orthat he was acting in bad faith”.

Finding in Square Enix’s favor, the UKIPO’s hearing officer, Mrs T Perks, held that “the applications were filed in bad faith”,and that Fashion One was guilty of passing off, stating:

“[W]hen the proprietor applied for the contested marks, it wasseeking to gain a commercial benefit from blocking the use ofidentical or similar signs by the applicant. This … equates to anintent on the proprietor’s part to seek the benefit of the applicant’sgoodwill. The proprietor did not deny that there was such anintent. I recognise that in a typical passing-off case, an intent onthe part of defendant to pass itself off as the claimant implies anintent to use the mark in the marketplace. However, I considerthat it makes no difference that the proprietor had no intention touse the marks for the purpose of establishing passing-off in acase like this, if what the proprietor was seeking to obtain was,still, a commercial benefit from blocking the use of identical orsimilar signs by the applicant, when the signs are those to whichthe applicant’s goodwill is associated. Consequently, my findingis that misrepresentation was intended by the proprietor and Iinfer that there is misrepresentation and damage.”

The UKIPO ruled that the applications were “deemed never tohave been made” and awarded costs to Square Enix.

It seems highly unlikely, however, that the UKIPO will haveseen the last of the prolific Mr Gleissner.

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“Willfulness” has similar relevance to remediesfor infringement of other forms of IP, such aspatents and copyrights. Both statutory and caselaw frequently allow larger monetary awardswhen infringers do so knowingly. Like in otherareas of US state and federal law (e.g. antitrustand competition law) the concept of trebledamages may apply, which provides that damagesawards may be increased three-fold as apunitive and/or deterrent measure when anillegal act is committed with sufficient knowledgeof potential culpability. For example, a UStrademark statute, Sec. 1117(b), is entitled “TrebleDamages for Use of Counterfeit Mark.” Thus,“willfulness” plays an important role as a generalprinciple in US state and federal law - with wideapplication in areas of IP law where it is ofteninvoked in case law and spelled out withspecificity by statute - and is also relevant tosome international law.

AI-based “willfulness” alleged in Amazon.com caseWe now turn to the mental state of computer-based systems, in the case Williams-Sonoma,Inc. [WSI] v. Amazon.com, Inc. (3:18-cv-07548,Northern District of California). Since the authorpublished comments on this case last year inThe Trademark Lawyer, the case has evolved in a manner very on point with the “willfulness”discussion above. WSI v. Amazon also raisesimportant emerging questions that remainunaddressed by relevant IP case law, as thecourt itself has noted.

Among numerous allegations (e.g. thatAmazon sold counterfeit WSI products), WSI’soriginal complaint alleged that Amazon operatedan unauthorized online retail business using thename “by Williams-Sonoma” to sell the unauthorizedproducts, damaging WSI brands and confusingconsumers in violation of US trademark laws.

“Willfulness” was at the heart of suchallegations, as the complaint stated, “Amazon’sacts are willful, with the deliberate intent to tradeon the goodwill of WSI’s WILLIAMS-SONOMAMark, cause confusion and deception in themarketplace, and divert customers of WSI’sservices to Amazon.” WSI also alleged otherviolations of different forms of its IP rights as well.

Amazon countered filing a motion that “[theCourt] should dismiss any claims that Amazon’salleged infringement was willful… [I]t is the soleallegation that supports Williams-Sonoma’sclaims to certain kinds of damages, includingdisgorgement of profits, enhanced statutorydamages, and damages for dilution.” Denying“willfulness” appears the clear focus of Amazon’smotion to dismiss, as the court observed.

In May 2019, the court denied Amazon’s motionto dismiss these “willfulness” claims. However,

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RésuméPat Breslin Pat Breslin, CEO of Breslin Consulting LLC, is an economist and expertin IP damages, valuation, and economic and financial analysis. He hasover 20 years of experience valuing transactions in litigation and otherdispute resolution contexts, in multiple jurisdictions. IP types valuedinclude patents, trademarks and brands, trade secrets, technology,know-how, and copyrights. Pat was also CEO of a technology firm,RelatableTM, that developed early AI and machine listeningtechnologies. He has extensive IP licensing and negotiationexperience in actual arm’s length transactions. He also managed anR&D team and IP portfolio related to software, music and media, ande-commerce solutions.

10 THE TRADEMARK LAWYER CTC Legal Media

On 23 April 2020, the US Supreme Courtruled unanimously that plaintiffs intrademark infringement lawsuits do

not have to prove “willfulness” - i.e. that thedefendant infringed knowingly and with intent -in order to be awarded damages based ondefendants’ profits. This assumes that otherfacts of the case support such profits-basedawards. The Court rejected lower court holdingsthat showing willfulness was an “inflexibleprecondition” to such awards under US lawrelating to trademark infringement and damages.

Here, a trademark matter with no clearconnection to high tech, AI, or digital commercemay have relevance to the rapidly evolvinglandscape of high-tech IP and infringementdamages. The plaintiff in this case, RomagFasteners, had won a prior ruling that defendant,Fossil Inc., made unauthorized use of Romag’strademarks on magnetic fasteners on watchesand wallets. Fossil had argued, in part, that it did sounintentionally, hoping to reduce the damages it

would owe. The unresolved question addressedby the Supreme Court was whether provingwillfulness is required under the relevant statuteor, as the Court ultimately decided, is an importantfactor to consider in awarding such profit-baseddamages.

Much of the Court opinion authored by JusticeGorsuch deals with defendant Fossil Inc.’s errorin effectively imposing the requirements ofunrelated sections of the statute upon keysections at issue (i.e. 15 U.S. Code Sec. 1125(a),relating to false designations of origin and falsedescriptions in commerce). Specifically, Fossilattempted to impose on Sec. 1125(a) unrelatedportions of Sec. 1117(a) - on damages and profits- that seem clearly intended to refer to Sec.1125(c) on trademark dilution and thus not to1125(a).

Despite its clear focus on correct statutoryinterpretation, the decision acknowledges theimportance of intentional versus unintentionalviolation of trademark laws, stating, “Withoutquestion, a defendant’s state of mind may havea bearing on what relief a plaintiff should receive.An innocent trademark violator often stands invery different shoes than an intentional one.”

The decision later states that knowledge orintent is “an important consideration in awardingprofits [and reflects the] principle that a defendant’smental state is relevant to assigning anappropriate remedy” and “we do not doubt thata trademark defendant’s mental state is a highlyimportant consideration in determining whetheran award of profits is appropriate.” Indeed, thedecision invokes the long-standing principle ofmens rea which has informed remedies in bothcivil and criminal law contexts, in some countriesfor centuries.

Does Artificial Intelligenceact intentionally? –“willfulness” and trademarkdamages in the digital age

Pat Breslin, Founder of Breslin Consulting, looks at the importance of“willfulness” in trademark disputes, and discusses the relevance of such a concept to IP disputes involving AI, algorithms, and automation.

Pat Breslin

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motion states that the “principal controversyunderlying WSI’s trademark and unfair competitionclaims is Amazon’s scheme of infringing WSI’sintellectual property to set up a WSI storefronton the Amazon.com platform. Amazon’s selectionand display of WSI’s copyright protected imagesis another component in furtherance of thatscheme.”

“Willfulness” arises here as well, with WSIalleging “Amazon’s volition and control over theinformation on its product detail pages on itsplatform - including the misleading use of theWilliams Sonoma mark and the selection of WSIimages - is a core element of both WSI’s pendingtrademark and unfair competition claims, as wellas WSI’s proposed copyright claim. Further, asthe facts of the claims heavily overlap, much ofthe discovery required for the pending claimswill likely be probative of issues related to theproposed supplemental claim.”

WSI’s filing describes its mistaken belief - priorto the depositions of Amazon employees beginningin late August 2019 and other discovery - that“third-party sellers were the ones publishingWSI’s images on the Amazon marketplace withAmazon acting as no more than a serviceprovider, eligible for DMCA protection.”

The Digital Millennium Copyright Act includesa “safe harbor” under which internet serviceproviders (ISPs) are not obligated to police theirthird-party users’ use (or misuse) of others’copyrights. Instead, ISPs must take steps to halt such violations if they are notified. TheDMCA seeks a balance that protects ISPs from being overburdened with massive enforcementobligations, by limiting them to express “noticeand takedown” provisions with which copyrightholders and ISPs both must comply.

WSI further states that it “did not includecopyright infringement claims in its originalComplaint, instead enforcing its rights incopyrighted images by sending takedown noticesto Amazon. Since filing this litigation, WSI haslearned that Amazon itself is a direct infringer ofWSI’s copyrights.”

Amazon’s opposition to WSI’s motion bringsus back to a key subject of this article, as itstates at the outset, “WSI claims that Amazon isliable merely because its software - automaticallyand without any human review - displays somephotographs uploaded by users and not others.Not only is this claim barred as a matter of law,but it comes months too late.”

The statement downplays WSI’s claims ofAmazon liability as “merely because its software- automatically without any human review -displays some photographs…” based on othercases where internet services’ access to theDMCA’s safe harbor was upheld. In such cases,courts ruled that a service does not invoke direct

liability when using automated processes thatare “accessibility enhancing” for third-party usersthat upload copyrighted material - such as byreformatting posted material for technical reasons.

WSI’s final brief in reply countered by assertingthat Amazon’s reading of such cases was selectiveand out of context. It asserted that Amazon isnot merely enhancing access for third partieswho may decide what photographs to upload -rather, Amazon itself is deciding what photographsits users may or may not upload. WSI furtherinvokes broader agency principles as applyingindependent of the narrow DMCA context. Itslast filing to date states,

“Amazon is the editor of its product pages. Itdecides which photos submitted by Sellers toits catalog database are ultimately displayed onproduct detail pages. That Amazon’s onlinemoderator is its AI, rather than a human employee,does not matter. Common law agency principlesapply to the tort of copyright infringement, justas to any other tort.” [citing Mavrix Photographs,LLC v. Livejournal, Inc., 873 F.3d 1045, 1052 (9thCir. 2017) - as does Amazon]

Amazon’s opposition brief may have beenmore successful at debunking the claims ascoming too late. Ultimately, the court sided withAmazon in not allowing WSI’s supplementalcopyright claims into this case, though WSI maystill pursue them by filing a separate case. Thecourt’s April 15, 2020 order in favor of Amazon’smotion in opposition is silent on its reasoning,simply stating as “granted” Amazon’s “AdministrativeMotion” - a label Amazon did not, in fact, apply toit. Perhaps this suggests a practical andprocedural basis for the court’s order, at least inpart, without a need to address the merits of theparties’ arguments - at least for now.

But in the author’s view, IP case law is only justbeginning the process of resolving questionsposed by this case. As for WSI’s claims relatedto trademarks and other IP rights, all proceedingsincluding settlement conferences between theparties are taking place through tele-conference as requested by both parties andaccepted by the court in light of COVID-19.Furthermore, deadlines have been adjusted as aresult of the pandemic and other concerns.

IP case lawis only justbeginningthe processof resolvingquestionsposed bythis case.

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ContactBreslin Consulting1200 18th Street NW, Suite 700,Washington, DC 20036 Tel: 202 468-9347pbreslin@breslinconsulting.comhttp://www.breslinconsulting.com

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the court’s order acknowledged “significantquestion[s]” as to whether “Amazon could haveacted willfully as a matter of law because there isno case law that is precisely on point”, “[whether]these claims are viable in light of the first saledoctrine”, “[and t]herefore, whether [Amazon]might have reasonably thought its conduct waslegal.”

Still, the court denied that the lack of settledlaw on these questions justified dismissing thecase. To the contrary, it highlighted the crux ofthis article, in part, in closing, “[I]t would not beplausible to presume that Amazon conductedits marketing of Williams-Sonoma’s productswithout some careful aforethought (whetherconsciously in the traditional sense or via algorithmand artificial intelligence).” [emphases added]

The May 2019 court order further noted “at a minimum” that WSI “sufficiently alleged thatAmazon acted” with indifference to WSI’strademark rights “in deliberately using the Mark…toimply a non-existent affiliation with Williams-Sonoma.”

Over the course of 2019, the WSI v. Amazoncase proceeded through stages includingdiscovery and the court’s referral of the partiesto private mediation, originally to be completedby December 2019 with an option to requestreferral to a Magistrate Judge for a settlementconference. But unresolved questions about“willfulness” resurged in the case in 2020, asdiscussed further below.

Growing focus on IP role in AI contextsCoinciding with the matters noted above,artificial intelligence (AI) increasingly capturesthe attention of IP professionals, policy makersand related organizations - as AI’s evolutionseems rapid and it appears to intersect withmany forms of IP that may share some relatedissues.

For example, the World Intellectual PropertyOrganization (WIPO) created a Draft Issues Paperrequesting comments from IP professionals andorganizations on Intellectual Property (IP) andArtificial Intelligence (AI). Among those respondingwas AIPPI (Association Internationale pour laProtection de la Propriété Intellectuelle). (Note:The author is a member of AIPPI but did nothave a role in providing its comments to WIPO.)

Here, the author refers to portions of AIPPI’sFebruary 2020 response to WIPO as an illustrativeexample, as it raises key points to bear in mind.First, different forms of IP are affected differentlyin relation to the development of AI, and areaffected (or not) over different time horizons,whether such effects arise from currentlyavailable AI systems, future AI, both, or neither.AIPPI further highlights its view that,

“Current AI systems rely on human…contribution or intervention…for example, in theselection and curating of appropriate input data…customization or configuration of the AI engineitself [or…] definition of a problem to be solvedand a general direction as to how a solution is tobe found [and/or] the utility of an output of anAI engine.” AIPPI’s response continues,

“AI systems now and in the foreseeable futureare not autonomous in the sense that they arenot independent of human [intervention; andthey cannot] do things that humans, in principle,cannot do…[A] human, in principle, may be capableof performing the same algorithms as an AIsystem does.” The key difference would be thespeed and scale with which an AI system - oranother computer implemented system, whetheror not it is asserted to be “AI” - can managelarger amounts of input data and generate moreoutput more quickly, relative to what a human-based system could.

In the author’s view, AI and similar technologymay often be seen as tools that are operated byand at the direction of people. Hypothetically inthis sense, no AI or other such technology wouldexist or operate without humans involved. Onthis question, the author is generally in accordwith AIPPI’s response paper - which considersthat truly autonomous AI, independent of needinghuman intervention - remains unrealized as atechnology and its development path will remainuncertain for some time.

Amazon’s use of AI, algorithms,and automationIn early 2020, the settlement process for WSI’s allegations of Amazon’s infringement oftrademarks and related IP rights remainedunresolved. In March, WSI filed a Motion forLeave to file Second Supplemental Complaintregarding copyright infringement by Amazon.This filing highlights WSI’s emerging view -based on evidence it learned later in 2019 - thatAmazon’s violations of its IP rights extendedfurther than it originally included in its claims, toinclude even more forms of IP rights.

According to WSI’s March 2020 filing, “Thiscase is about Amazon.com, Inc.’s (“Amazon”)infringement of every single type of WSI’sintellectual property by: launching a fake WilliamsSonoma storefront on its e-commerce platform,running false ads to attract people to that site,knocking off WSI’s patented products, and usingWSI’s trademarks in connection with thoseproducts. Moreover, Amazon uses WSI’s ownphotographs to conduct its infringement.”

The focus of these supplemental claimswould thus be WSI’s copyrights in images of itsproducts, in addition to its unresolved claimsregarding its trademark-related IP rights. WSI’s

No AI orother suchtechnologywouldexist oroperatewithouthumansinvolved.

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PLN 20,000 (approx. EUR 5,000), representationof the parties by a professional proxy – anattorney-at-law or a patent attorney – will bemandatory. However, the court may, either uponthe request of a party or ex officio, release aparty from this obligation, especially in lesscomplex cases. Importantly, the Amendmentbroadens the rights of patent attorneys in judicialmatters – they will now be able to act before thecourt in intellectual property proceedings otherthan industrial property rights cases.

The institution of intellectual propertyproceedings will also serve to sort out theregulations regarding evidence. For example,the Act introduces the request to preserveevidence. Its aim is to secure the possibility ofthe future (or current) claimant having access tofactual information concerning the infringement,so that they are able to develop the factual basisof the action, in particular in claims for damagesor claims for the return of profits.

In cases of infringement of an intellectualproperty right, any claimant who has establishedtheir claim will also be able to demand that thedefendant disclose or issue the evidence at hisdisposal, in particular bank, financial or commercialdocuments. The purpose is to enable the plaintiffto obtain evidence that could not be collectedout of court. Unlike in a request to preserveevidence, the claimant will be required to specifyreasonably clearly what evidence is sought.

Moreover, the information disclosure mechanismis set to assume a new shape. This mechanism,regulated until now by several acts, includingthe Copyright Act and the Industrial PropertyLaw Act, will now be subject to a unified regime.The rightsholder will be able to file the requesteither before or in the course of the proceedingsand even against a third party (e.g. an intermediary)who has information or access to it, regardless

of whether the rightsholder has brought a claimagainst that party. In practice, this will make iteasier to obtain information on the origin anddistribution networks of goods or services. If thecourt orders that the information be provided,the infringer – under penalty of criminal liability– should provide it. (This type of penalty constitutesanother novelty in Polish civil proceedings).However, if the rightsholder’s action is found to be unjustified, the person required to provide information will be entitled to demandcompensation.

The Act also provides for two types of actionspecific to intellectual property proceedings: thecounterclaim and the action for determination. In cases relating to infringement of Polishtrademarks or industrial designs, counter-complaints aimed at invalidating or revoking atrademark protection right or at invalidating aright in registration for an industrial design willbe admissible. This is a very significant change –until now, actions for invalidity or revocation ofIP rights could only be brought before the PolishPatent Office and not before any civil courts(except for the Court for EU Trademarks andRegistered Community Designs). The other newtype of action established under the Act is theaction to determine that there has not been any infringement of a patent, a supplementaryprotection right, a protection right or a registeredright.

The changes come into force, in principle, on1 July 2020. Cases pending before that date willcontinue as before.

IP courtsare about tobecomereality inPoland.

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ContactTraple Konarski Podrecki & Partnershttp://www.traple.pl/en/

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RésumésAnna Sokołowska-Ławniczak Anna is a patent and trademark attorney.In TKP, she leads the industrial propertyand brand management team. Her clientportfolio encompasses companies fromvarious industries. She manages complexprojects aimed at obtaining andmaintaining industrial property rights.

Julia JewgrafJulia is an advocate trainee. In TKP she isa member of IP Law team. She gainedher experience by working in renownedlaw firms as well as participating incourses on European business law andinternational IP protection.

The newcourts will havejurisdictionin all IPcases.

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The need to create specialized intellectualproperty courts within the structure of the Polish common judiciary has been

discussed for many years. Proposals to thiseffect were raised by entrepreneurs, creatorsand collective management organizations, aswell as representatives of the scientific community– they kept pointing to the specificity of casesinvolving intellectual property, which requirespecialist knowledge (and, at least sometimes,technical expertise). Now, IP courts are about tobecome reality in Poland. On 19 February 2020,the President signed the Act of 13 February 2020amending the Code of Civil Procedure andcertain other acts (the “Act”, the “Amendment”),which establishes specialized IP courts inPoland and provides for crucial changes in the IPrights enforcement regime.

It should first be noted that the Amendmentintroduces a new term into the Polish legalsystem – “intellectual property cases” – whichwill be subject to the competence of the

specialized courts. Its definition covers a widespectrum of cases, ranging from cases concerningprotection of copyright and industrial propertyrights (e.g. trademarks, inventions, designs) to,among others, matters concerning the combatingand prevention of unfair competition, and theprotection of personal rights in certain cases,e.g. relating to the advertising or promotion ofgoods and services or of scientific and inventiveactivities.

Until now, all disputes over the validity ofindustrial property rights have been resolvedeither by the Polish Patent Office (the “PPO”) or –in the case of complaints against the PPO’sdecisions – by the Provincial Administrative Courtin Warsaw and the Supreme AdministrativeCourt. Infringements of IP rights have been referredto the common courts and the Supreme Court ofPoland and handled through civil proceedings.

The only unit specializing in the IP area has sofar been the XXII Division of the District Court inWarsaw – the Court for EU Trademarks andRegistered Community Designs.

The change we are facing is revolutionary. TheAmendment provides for a complete novelty inthe system – the creation of four courts of firstinstance (as separate units of four designateddistrict courts) and two courts of second instance(attached to two regular courts of appeal). Theexact location of the IP courts will, however, onlybe confirmed in the implementing legislation.The new courts will have jurisdiction in allintellectual property cases (in the broad senseof the definition outlined above), including disputesover EU trademarks and Community designs. Itis also assumed that the District Court in Warsawwill retain exclusive competence in highly complexand technically involved cases concerningcomputer programs, inventions, utility models,topographies of integrated circuits, plantvarieties and technical trade secrets.

If the value of the object of IP litigation (thevalue of the claim pursued in the case) exceeds

Poland establishesnew IP Courts

Anna Sokołowska-Ławniczak, Patent and Trademark Attorney, and Partner,and Julia Jewgraf, Lawyer at Traple Konarski Podrecki & Partners, outline thePolish approach to IP.

Anna Sokołowska-Ławniczak

Julia Jewgraf

POLAND

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RésuméLing ZHAO Ling ZHAO is a dedicated trademark attorney, having practiced ChinaTrademark Law for 20 years since joining CCPIT Patent and TrademarkLaw Office in 2000. She graduated with a bachelor’s degree fromBeijing International Studies University and obtained a master’s degreein Intellectual Property Law from China Remin University. She wastrained at Birch, Stewart, Kolasch & Birch LLP, Washington D.C. in April2008, and at Benjamin N. Cardozo School of Law, Yeshiva University,New York City, USA, in 2015. Among the clients she represents, thereare 500 fortune corporations, as well as medium and small sizecompanies. She has successfully obtained well-known trademarkrecognition in trademark administrative and civil litigations for quite afew famous overseas brands. Ling is also a frequent contributor to IPprofessional journals. She is a member of AIPPI China, INTA, ChinaTeam of Marques and PTMG.

Grundfos, the world leader in watersolutions, is one of the most famousbrands for pumps. Both its English and

Chinese trademarks, i.e. Grundfos and �兰�(Gelanfu) were recognized as well-knowntrademarks by Beijing Intellectual PropertyCourt recently, in a civil judgement of trademarkinfringement and unfair competition againstlocal companies and infringers, Gelanfu WaterSupply Device (Shenzhen) Co., Ltd. (hereafterreferred to as Gelanfu Shenzhen), ShenzhenWeige Trade Co., Ltd. (hereafter referred to asShenzhen Weige), Shenzhen Yihefeng Sci &Tech Co., Ltd. (hereafter referred as ShenzhenYihefeng) and Beijing Jingdong SanbailushiduElectronic Commerce Co., Ltd. (hereafter referredto as Jingdong)i. Grundfos was awarded RMB3Million for damages. Although the case has beenappealed by the defendants to the Beijing HighCourt, this case is of great significance to Grundfosand is an important milestone, which will helpGrundfos’ trademarks and other intellectualproperty rights to be more strongly protected inChina.

This is a typical case of malicious infringementof well-known trademark rights. In the judgment,the court recognizes the well-known trademarksof the plaintiffs (Grundfos), and takes the badfaith of the defendants as an important factorwhen deciding the amount of compensation forinfringement damage, which fully reflects thejudicial trends that well-known trademarksshould enjoy a higher, stronger and widerprotection scope, while at the same time, thebad faith registration of trademarks for thepurpose of infringing others’ legitimate rightsshould be curbed.

This case was handled by the trademark teamof CCPIT Patent and Trademark Law Officeheaded by Gang Hu and Ling Zhao.

Headquartered in Denmark, the purpose ofthe Grundfos group is to pioneer solutions forthe world’s water and climate challenges andimprove the quality of life for people. Since 1995, Grundfos Group have been producing and

selling pumps in Chinese market and achievedtremendous success.

By the end of 2016, Grundfos initiated alawsuit against Gelanfu Shenzhen, ShenzhenWeige, Shenzhen Yihefeng and Jingdong fortrademark infringement and unfair competitionat Beijing Intellectual Property Court, claimingfor well-known trademark protection. Thedefendants were accused of using the identicalGRUNDFOS trademark on so-called "hot watercirculation system” and sold the infringing productsvia online "Grundfos flagship store" on the Jingdonge-commerce platform. Gelanfu Shenzhenregistered and used the identical Chinese mark“�兰�” (Gelanfu) as its enterprise name, andregistered the website www.glfgssb.com topromote and sell the infringing goods, usingsuch slogan like "Danish technology servesChina", "Danish quality”, "Grundfos produced andassembled in China" to mislead the public.

Findings of the court i. Similarity of goods The defendants claimed that the infringing goodshot water circulation system is a new product inthe industry, and should be classified as water

GRUNDFOS recognized as awell-known trademark and awardeddamages of RMB 3 million

Ling ZHAO, Trademark Attorney and Deputy Director of the InternationalTrademark Department at CCPIT Patent and Trademark Law Office, discussesan important infringement case in which she was recently involved.

Ling ZHAO

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high reputation and good will embodied withthe brand name GRUNDFOS, registered andused the same marks "Grundfos" and “�兰�”(Gelanfu) as their trade name, and the name oftheir online stores, and used misleadingadvertising slogans to associate the infringinggoods to Grundfos. (2) The defendants registeredonline stores on multiple e-commerce platformsto sell and publicize infringing products, so thatthe infringement was conducted in multi channelsand in a large scale, and the circumstanceswere serious. (3) The defendants advertisedonline that the infringing products were popular,and the sales number and income were high.And there have been actual confusions causedto the relevant consumers, which seriouslydamaged the well-known trademark rights andthe interests of the plaintiffs. (4) Although thecomments and evaluation of purchasers of theinfringing products via the Jingdong and Suninge-commerce platforms might not be sufficientto prove the exact sales number and profit ofinfringement, they can show that the sales ofinfringing products were remarkable. And theinformation provided by the plaintiff can alsoprove, to some extent, that the average profitmargin of the infringing products is high. (5) Theinfringing goods are for household use byordinary consumers. The confusion caused bythe infringement to the consumers will not onlyharm the legitimate interests of the plaintiffs, butalso cause potential health risk to the consumersthat could even endanger lives and bring aboutnegative social influence.

In sum, based on the reputation of thetrademarks of the plaintiffs, the bad faith of thedefendants, the length and wide scale ofinfringement, the actual confusion, the highquality and safety performance requirements ofthe products per se, and the negative impact ofpotential safety threat to consumers, the courtdetermine RMB3 million for damages of theinfringement and unfair competition acts of thedefendants Gelanfu Shenzhen, Shenzhen Weigeand Shenzhen Yihefeng to be jointly bornethereby. Since the decision as mentioned hasbeen appealed by the defendants to the BeijingHigh Court, the final outcome of the case hasnot been decided.

iii. Positive social influence John Markmann, chief financial officer ofGrundfos China, mentioned this case in aninterview with China Economic Weekly. "Thiscase is of particular significance to Grundfos and isan important milestone, which will help Grundfostrademark and other intellectual property to bemore strongly protected in the future.", so saysJohn Markmann, "And we would like to thank theChinese government for its efforts in the

protection of intellectual property rights. TheChinese government has taken many measuresto improve market access, expand imports,strengthen intellectual property protection, andcreate a more attractive investment environment.Grundfos is confident in an open and innovativeChinese market."

The efforts of authorities to improve intellectualproperty protection from every level ofadministrative body as well as the judicial systemare highly praised by the foreign investors. In2019, China revised its Trademark Law for thefourth time and the China National IntellectualProperty Administration announced thecorresponding new rules to implement the newLaw, aiming to curb bad faith filings andregistration, and strengthening the protection ofwell-known trademark as well as otherlegitimate rights of brand owners.i (2016) Jing 73 Min Chu No. 1192 Civil

Judgement of Beijing Intellectual PropertyCourt

ii According to Article 13 of China TrademarkLaw, the protection scope of a registeredwell-known trademark can be extended to dissimilar goods and/or services, whilethe protection scope of an unregisteredwell-known trademark is limited onidentical and/or similar goods andservices.

iii Protection on similar goods and servicesfor a registered well-known trademark is granted by the Supreme People's Courtin a trademark dispute involving P & G Company and Shantou WeishidaCosmetics Co., Ltd. [(2016Zui Gao Fa XingZai No. 12 Administrative Judgement of the Supreme People’s Court] BeijingIntellectual Property Court also appliedthe rule in a trademark infringement andunfair competition dispute between Deerecompany, John Deere (China) InvestmentCo., Ltd. and John Deere (Beijing)Agricultural Machinery Co., Ltd., John Deere (Dandong) Petrochemical Co., Ltd. and Lanxi Jialian Deere OilChemical Co., Ltd. [(2016Jing 73 Min ChuNo. 93 Civil Judgement of BeijingIntellectual Property Court

This is atypical caseof maliciousinfringementof well-knowntrademarkrights.

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ContactCCPIT Patent and Trademark Law OfficeZHAOL@ccpit-patent.com.cn Tel: +86 10 66046373

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supply equipment in Class 11, while the goodsof the plaintiffs belong to Class 7, so that theyshould be considered dissimilar goods, andthere is no likelihood of confusion. The court findthat pumps are the major component of said hotwater circulation system, and the main functionof said hot water circulation system is actuallyperformed by an installed pump, and no doubtthey are closely relevant in terms of function, use,sales channels and consumers and constitutesimilar goods. So, although the defendantsclaim the hot water circulation system to be akind of water supply device, which belong toClass 11, such goods are considered similar topumps in Class 7.

ii. Fair use claim denied The defendants argued that the trademarks"Grundfos" and "�兰�" (Gelanfu) used on theinfringing products are merely to describe thesource of the product component. The court heldthat in the process of selling and advertising theinfringing products, the defendants did notmake any distinction or special explanation todistinguish the source of the components fromthat of the infringing products. Instead, with fullknowledge of the trademark "Grundfos" and“�兰�" (Gelanfu), the defendants used Grundfosas the name of the flagship stores as well as theenterprise name, on the products as well as onthe trading documents. The court held that suchuse is clearly beyond the scope of fair use,infringing upon the trademark rights of theplaintiffs and causing confusions of the sourceof the goods.

iii. Conflicts of registered trademark rightsThe defendants claim that the infringingtrademark is a registered one by LianyungangWeile Electric Appliance Co., Ltd., namely Reg.No. 3133907 "Grundfos" in Class 11, and they aremerely licensed users. In 2014, the plaintiffs filedan invalidation action against the infringingtrademark registration No. 3133907 based uponits prior registration for GRUNDFOS in Class 7. Byverdict of Beijing High Court (2019) Jing XingZhong No. 808 issued in November 2019, thistrademark is decided to be declared invalid, forconstituting a similar trademark to the cited oneused on similar goods and there is the likelihoodof confusion, in accordance with Article 28 of2001 China Trademark Law.

When the present litigation was initiated, theinfringing trademark was still a valid registration,the court pointed out that since 2014, theinfringing trademark has been involved in disputewith the well-known trademarks of the plaintiffs,though it was not declared invalid until recently,the defendants, manufacturers and sellers ofrelevant goods, should be obliged to avoid

causing any likelihood of confusion that woulddamage the legitimate interests of the rightholders of the well-known trademarks inquestion, in accordance with the good faithprinciple, especially when the legal status of thedisputed trademark right is not stable, andconsidering that well-known trademarks shouldenjoy stronger protection.

Significance of the casei. Well-known trademark protection on

similar goods Based on the evidence on file, the court heldthat the plaintiffs’ trademarks "Grundfos" and"�兰�" (Gelanfu) have been widely known tothe related public through long-term andextensive use and publicity and have becomewell-known trademarks used on pump goods.Beijing Intellectual Property Court recognizeboth the Chinese and the English trademarks ofGrundfos as well-known trademarks used onpumps. The court rule that the infringing products,namely hot water circulation system are closelyrelated to pumps in terms of function, use, saleschannels and consumers, and thus should beconsidered as similar goods. However, it isnecessary to recognize the well-known statusof the cited marks in the present case andextend the well-known trademark protectionscope to the infringing products. Though thecross-class protection of a registered well-known trademark is usually only necessary incase where dissimilar goods are involved, thecourt hold that equivalent level of protectionshould also be extended to the similar goodsii.In this case, the judges apply paragraph 3 ofArticle 13 of China Trademark Law to protect aregistered well-known trademark on similargoods, which is understood as reasonableexpansion of the legal context of the law, alsoknown as the principle of “applying the penaltyof a heavy crime to a light one”iii in the criminallaw theory. If a registered well-known trademarkcan be protected on dissimilar goods, it shouldalso be protected on the similar goods, sincethe protection scope of the former is wider thanthe latter.

The judgment reflects the current judicialtendency of strengthening the protection ofintellectual property rights, while cracking downmalicious infringement.

ii. Damages of RMB3 million awarded The court decide to award RMB3 million for compensation for damages of trademarkinfringement and unfair competition based uponthe following reasoning: (1) The three defendantsfrom Shenzhen, as the manufacturers andsellers of water supply equipment and hot watercirculation system products, clearly knowing the

This case is animportantmilestone,which willhelp IPrights to be morestronglyprotected in China.

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RésuméNick Ji Nick’s broad-based experience spanningalmost 20 years includes representationin the consumer products, luxury goods,children’s products and media andentertainment industries. Nick’sElectronics Engineering degree, alongwith his employment history withdomestic and multinational IP firms,enables him to analyze intellectualproperty issues from multiple practicedisciplines. His practice includesstructured strategic intellectual propertyprosecution and enforcement.

Thepetitioner isnot requiredto prove that thetrademarkhas not been used.

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According to the Trademark Law, if atrademark has not been used for morethan three consecutive years after

registration, anyone has the right to apply for thenon-use cancellation against the registration. Inthe process of a non-use cancellation, thepetitioner is not required to prove that thetrademark has not been used, and the burdenof proof to prove the genuine use of thetrademark is only borne by the trademark owner.When a non-use cancellation is filed against atrademark registration, the Trademark Office willsend a notice to the trademark owner requestingthe trademark owner to provide evidence oftrademark use within the past three years. If thetrademark owner fails to submit a responsewithin the deadline, or if the submitted evidenceof trademark use is deemed not to meet therequirements, the trademark will be cancelled.

Chance of success of non-use cancellationYou may think that only trademarks that areindeed unused can be successfully cancelled,but according to our experience, about 70% ofnon-use cancellations can succeed (includingmany trademarks that are in actual use). Thereare the following three main successful cases:

(1) The trademark has indeed not been usedfor more than three consecutive years.

(2) After changing their addresses orattorneys, many trademark owners donot timely record the change with theTrademark Office. Consequently, theyhave failed to receive the notice fromthe Trademark Office and/or missed thedeadline to file response.

(3) Some trademark owners do notproperly retain the evidence oftrademark use, so despite their actual

use of the trademarks, they are unableto submit sufficient/valid evidence toprove it, thereby causing the trademarksto be eventually cancelled.

When is non-use cancellation needed?In the following cases, a non-use cancellation isusually recommended:

(1) If there are others’ prior trademarksblocking our trademark application,which have been registered for morethan three years, we can try to have theobstacles cancelled with non-usecancellations.

(2) When we try to file an invalidationagainst a bad-faith registration, if we donot have overwhelming evidence toensure the success of the invalidation, itis recommended to file a non-usecancellation in parallel with theinvalidation request.

How to protect yourtrademark more effectivelyin China with the help ofnon-use cancellation

Nick Ji of Corner Stone & Partners looks at one of the ways in which rightsholders can protect their trademarks in China.

Nick Ji

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TrademarkIssue 3 2020

GLOBAL REACH, LOCAL KNOWLEDGEwww.trademarklawyermagazine.com

The

Mladen Vukmir, ECTA Second Vice-President,explains how IP practice and law need to developand change in the years ahead

Looking to thefuture

PAC IF IC

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Michael Jordan wins in China

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A subscription to The TrademarkLawyer magazine will ensure thatyou and your colleagues havedetailed information on all themost important developmentswithin the international trademarklaw industry.

The Trademark Lawyer magazine isdedicated only to the trademarkindustry and is written bytrademark experts for trademarkprofessionals worldwide.

A subscription includes a hardcopy and an electronic copy whichcan be read easily on yoursmartphone or tablet.

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ContactCorner Stone & Partners1905, Tower B, Tian Yuan Gang Centre,No. 2, Dongsanhuan North Road,Chaoyang District, Beijing 100027, ChinaTel: +86-10-84464600nick.ji@cornerstoneip.com.cnlaw@cornerstoneip.com.cnwww.cornerstoneip.com.cn

CHINA

22 THE TRADEMARK LAWYER CTC Legal Media

In the invalidation proceeding, theexaminer will mainly examine the badfaith of the opposite party’s trademarkand the fame of our trademark withoutconsidering whether the oppositeparty’s trademark is in use or not.Therefore, if we fail to provide sufficientevidence to support our claim, thetrademark may not be invalidated evenif the other party does not reply to theinvalidation request.On the other hand, in a non-usecancellation, the examiner will onlyexamine whether the trademark hasbeen genuinely used in the past threeyears without considering the otherparty's bad faith or whether ourtrademark is well-known. Therefore, aslong as the other party does not replywithin the time limit or cannot providevalid evidence of use, the trademark willbe cancelled.Since many trademark squattersregister a large number of trademarksjust for hoarding instead of using, eventhough we do not have sufficientevidence to prove the other party's badfaith and/or our trademark’sfame/popularity, the opposite party’strademark may be easily cancelled fornon-use.

(3) According to the Trademark Law, whena trademark has been registered formore than 5 years, it can no longer beinvalidated unless we can prove boththat the opposite party has bad faith andour trademark is well-known. Therefore,if the other party's trademark has beenregistered for more than 5 years and wedo not have sufficient evidence to provethe opposite party’s bad faith and thewell-known status of our trademark atthe same time, a non-use cancellationmay be the only feasible solution.

Complete cancellation v partial cancellationWhen submitting a non-use cancellation request,we may choose to request to cancel all of thegoods or only a part of the goods. According tocurrent practice, when we choose to cancel allgoods covered by the trademark, as long as thetrademark owner submits evidence of use on atleast one item of goods, the trademark registrationcan be maintained valid with respect to allgoods.

However, when the non-use cancellationrequest is against a part of the goods, thetrademark owner has to submit evidence of usewith respect to each item of goods respectively.

Only those items for which evidence of use issubmitted may be possibly maintained, and theother items will be cancelled.

Therefore, if the purpose of the non-usecancellation is to remove obstacles blocking ourtrademark registration and the scope of goodsonly partially conflicts with each other, it isrecommended to file the non-use cancellationonly against the conflicting goods, which mayimprove the chance of success in removingobstacles.

Exceptions for calculating the 3-year period

(1) If a trademark registration is obtainedafter the opposition procedure, the startdate of the trademark registration willstill be the end of the publication period.However, in this case, the starting pointof the three-year period to file a non-usecancellation is calculated from theeffective date of the opposition decisioninstead of the registration date. That is tosay, the non-use cancellation can befiled after the opposition decision hasbeen effective for three years.

(2) For an international trademarkregistration designating China, thestarting point of the three-year period iscalculated from the expiry date of 12 or18 months (depending on MadridAgreement or Madrid Protocol) fromWIPO’s “Date of Recording”. In otherwords, the non-use cancellation canonly be filed in 12 months plus 3 years or18 months plus 3 years from WIPO’s“Date of Recording”.

ConclusionWhen you intend to cancel other's trademarks,no matter it is to remove obstacles blocking yourapplication or to cancel bad faith registrations,and regardless of whether the trademark is inactual use, it is advisable to actively try with thenon-use cancellations in any case.

Manytrademarksquattersregister alargenumber oftrademarksjust forhoardinginstead ofusing.

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are, in many instances, not indispensable. Interest-based resolution methods were thus

born, such as mediation and other forms of assistednegotiations. At the same time, the position-based resolution methods, such as litigation andarbitration, started shifting their traditional rolerapidly. Obviously, having the option to criticallyexamine the role of legal services and of theentire system within which they are rendered,and to seek alternatives, is a historical novelty.There can be no doubt that the ascent of law,which started some three hundred years ago,did enable the most significant reorganization ofhuman society, and did, together with the roleintangible assets played simultaneously, enablethe fastest and strongest rise in human livingstandards and an unprecedented creation ofwealth. In spite of that, it seems that these solutionsare no longer universally acclaimed by many ofthe contemporary individuals and businesses.

This development has completely changedthe rules of the game for the lawyers in privatepractice and the adjustments have not beeneasy. Primarily, it is legal education that is stillmolding lawyers with the mindset that mighthave been useful in the times when recourse tothe law was considered the only alternative toviolence, and thus vastly superior and the preferredsolution. Today, it is becoming essential thatlawyers unlearn a part of their acquired thinking,as soon as possible, in order to be perceived ashumane and constructive participants in thecommon social projects and as partners to theirclients.

In the field of intellectual property law, if welook only to the anti-counterfeiting effort over thelast decades, we will easily note how inefficientwas the use of legal systems. It is easy to seethat counterfeiting actually continued its verystrong growth in spite all of the efforts by therights’ holders to stop it by using the legal system.One can therefore question whether using thelegal system as a primary tool in this combatwas a right choice in the first place?

Services that used to be rendered in the past as highly specialized became generic andcommoditized at the same time and becameavailable to clients by both corporate andcomputer competition against traditional IP agents.Service providers replaced patent and trademarkagents in many segments. The entire segmentof IP rights administration and management gotcommoditized in a way that it is most often todayrendered by corporate quasi agents calledservice providers in the IP trade.

It is becoming increasingly clear that what isexpected for lawyers is to reform their role intheir societies in order to conform with thechanging role of law itself. If we try to imaginethe future role of law, one thing is clear - it is

not going to go away. Human societies have atendency to keep earlier formats of socialorganization even when the circumstanceschange.

If we look into the future, it seems certain thatthe profession will change much more than ithas changed over the past forty years. I expectthat, instead of remaining skills-based, ourprofession will morph into a largely creativeprofession. The skills part will mostly be takenover by computer systems that will apply andinterpret rules. I also expect a strong role forartificial intelligence in legislation, where wecould gain a more consistent and better tunedset of rules based on computer input. Humanlawyers will be best suited to the role ofdesigners of relations between the social actorsand providing input and controlling the computerdesign. Lawyers will easily build justification fortheir continued professional role in futuresocieties by creatively solving and realigning thediverging social interests where legal tools willremain only a segment of their entire professionallandscape. Legal consistency will likely beforgotten because we need differences to berecognized in order to keep ever more complexsocieties free to develop.

In a world that has long ago reached aconsensus that only those who innovate cansurvive in the markets, it is impossible for lawyers toclaim that innovating by introduction of newservices and new marketing methods is trueinnovation that can guarantee the survival andindispensability of their profession. It will becomenecessary to innovate in a true sense, to assistsocieties to resolve their frictions in novel ways,which can assist smooth prevention and resolutionof disputes. Law, psychology, neurobiology andcommunications sciences will merge into thetechnologies such as artificial intelligence,block-chain and the Internet of things. Lawyerswill gain the opportunity to make creativecontributions to this process as well as to assisttheir clients, not with the solutions they have,but with the solutions they will create.

If we try toimagine the futurerole of law,one thing is clear - itis not goingto go away.

”

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ContactECTA (European Communities Trade MarkAssociation)Rue des Colonies 18/24, 1000 Brussels,Belgiumecta@ecta.orgecta.org

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Many observe that the legal professionis facing unprecedented challenges.It appears that recently the social

commentary conveys a very direct message tothe profession, about the frustrations that societyseems to be feeling towards the legal system.

The old jokes about the lawyers might havealways reflected the social observation of thefact that the parties in dispute, by the very fact ofhaving entered into a dispute, found themselvesin great problems. By the very fact of resorting tolaw, they seem to have exacerbated their original

problems. For some disputants, legal processsometimes results in even greater hardship thanwhat would have been the case if they hadwalked away without resolving their underlyingproblem. This perception of a lawyer as aprofessional who does not subtract but ratheradds to the difficulties without even showing anyempathy to their clients, made the professionoften unloved and sometimes scorned.

Once contemporary societies, by the end ofthe twentieth century, realised that disputesarise at the moment when the communicationbetween the parties breaks down, users of thelegal system started having second thoughts onthe very role of law. If disputants are willing andready to tackle their lack of communication andre-establish it with the goal of solving theirdispute themselves, they may realise that lawyers

Change of future passedMladen Vukmir, ECTA Second Vice-President, looks to the future to discusshow law, and IP practice in particular, needs to develop and change in the years ahead.

Mladen Vukmir

ECTA

RésuméMladen VukmirMladen Vukmir is the Second Vice-President of ECTA and member of theECTA Board. He is an IMI CertifiedMediator, past member of the INTA Boardof Directors, past INTA ADR Committeeand INTA Brands & Innovation CommitteeChair as well as past President of theCroatian AIPPI Group.

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subject matter of the protection afforded to its proprietor. This opens up an easier way toregister many unconventional characters, suchas holographic trademarks, sound trademarks,and multimedia trademarks.

The amendment also introduced newregulations regarding collective trademarks andguarantee trademarks, further specifying themethod of obtaining protection for suchtrademarks, the manner of their use, and theircancellation. It shall be noticed that in Polandthe rules of use of the trademark must be filedtogether with collective trademarks and guaranteetrademark applications.

Another important change concerns thetrademarks renewal procedure. Until now, it wasnecessary to submit a written request and pay afee. From now on, no motion is needed, and it isenough to pay the fee for the next period ofprotection. This change will therefore facilitatethe process of renewing the protection oftrademarks.

The amendment gives the possibility ofpursuing claims for infringements of trademarkrights not only to the owners of those rights, butalso, to a greater extent than before, to licensees.Under the new provision, the licensee, unlessthe license agreement provides otherwise, willbe able, with the consent of the rightsholder, tobring an action for infringement of the trademark.In turn, the exclusive licensee will also be able tobring an action if the person entitled under theprotection right, despite the summons, does notbring an action in due time. The licensee, in orderto obtain compensation for the damage suffered,will also be able to join the proceedings forinfringement of the trademark.

The amended bill expands the protection oftrademarks. The trademark owner has the rightto prohibit preparatory activities related to theuse of packaging or other means. Moreover, the rightsholder has the right to prohibit the reproduction of registered trademarks indictionaries, encyclopedias, or other similarinformation collections. There is new regulation

RésuméKlaudia Błach-Morysińska Klaudia is an advocate, patent attorney and European Trademark andDesign Attorney. She specializes in intellectual and industrial propertylaw, copyright, advertisement, and unfair competition law, and providesexpert-level legal assistance in courtroom litigations and inadministrative disputes involving IP. She has a vast expertise before thePolish courts and authorities and international authorities. Klaudia hasauthored numerous publications in the field of industrial andintellectual property law and gives lectures in intellectual and industrialproperty rights. She is the Disciplinary Proceedings Representative ofthe Polish Patent Attorney Chamber, AIPPI (Board Member of PolishGroup, Design Committee Vice-Chair), PTMG, INTA, ECTA (LawCommittee Secretary, EUIPO Link Committee Member), and AIPLA(Vice Chari IP Practice in Eastern Europe and Central Asia).

This changewill facilitatethe processof renewingtheprotection oftrademarks.

”

“ on allowing the seizure of counterfeit goods intransit.

The rights of trademark owners are alsoextended, as the group of entities that will beresponsible for trademark infringement hasgrown. In addition to the producer and distributorof goods, liability may also be applied to entitieswhose services were used in the infringementof the trademark.

2. Patent amendment regulationThe main purpose of the amendmentsimplemented in accordance with the Conventionon the Grant of European Patents of 5 October1973, and Directive 2004/48/EC of the EuropeanParliament and of the Council of 29 April 2004,was the streamlining of proceedings before the

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The past twelve months have broughtimportant amendments to industrialproperty regulation in Poland. On 16

March 2019, the amendment to the PolishIndustrial Property Law adapting Polish law tothe provisions of Directive 2015/2436, thusharmonizing the laws of the Member Statesregarding trademarks, came into force. On 27 February 2020, the next amendment aimingto unify Polish law with the Convention on theGrant of European Patents of 5 October 1973 cameinto force. Moreover, regulations implementedfrom Directive 2004/48/EC of the EuropeanParliament and of the Council of 29 April 2004,on the enforcement of intellectual propertyrights, were improved. The next amendmentrefers to the Polish Code of Civil Procedure and

the creation within the Polish common court ofseparate organizational units that will deal withintellectual property issues. According to thedeadline set in the amendment, the IntellectualProperty Court will start its operation on 1 July 2020.

1. Amendments to trademarkregulations

The significant change made to the trademarkregulation by the implementation of Directive2015/2436 is the abolition of the requirement ofgraphical representation of the trademarksubmitted for registration. Under the newprovisions, a trademark may be any indication if itis possible to present it in a register in a mannerallowing the competent authorities and thepublic to determine the clear and precise

Intellectual propertylaw in Poland –latest developments

Attorney at law and patent attorney for ZM Legal, Klaudia Błach-Morysińska,discusses the latest developments in intellectual property law in Poland,including new trademark and patent regulations, and the introduction of IP courts.

Klaudia Błach-Morysińska

POLAND

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upon intellectual property rights. As regards thecounterclaim solutions, the draft is based onRegulation (EU) 2017/1001 of the EuropeanParliament and of the Council of 14 June 2017 onthe European Union trademark. Currently, casesregarding the invalidation of trademarks or designs,or cancelation of trademarks due to non-use,are run before the Patent Office of the Republic ofPoland. Pursuant to the amendments, the abovecharges can be raised in the counterclaims andcourt shall examine them. The new mechanismrequires cooperation between IP courts and thePolish Patent Office.

The new legislation therefore allows for specialproceedings to determine whether certain actionsconstitute a breach of intellectual property rights. Thenew regulations describe certain circumstancesin which this kind of claim may be filed.

4. ConclusionAs regards trademarks, Polish Industrial Law isconsistent and coherent with the main provisionsof the Trademark Directive. The amendmentfully harmonized the law with the TrademarkDirective. The regulations aiming to speed upthe procedures, simplify renewals, or strengthenthe protection, shall make both registration andprotection more efficient.

As to patent regulation, the amendmentswere dictated by the need to adapt Polishstandards on inventions to European Unionstandards. Harmonizing these two legal systemswill undoubtedly contribute to removing a numberof the discrepancies Polish and European patentholders have, until now, had to face. The newregulations will not only streamline the oppositionprocedure and allow for the limitation of patentsby their owners but will also ensure equalopportunities for Polish entrepreneurs applyingfor computer-assisted inventions in relation toforeign entities.

Bearing in mind the procedural issues, PolishIP practitioners postulated the need for thecreation of IP courts for many years. As of 1 July2020, the specialized IP courts will start to workin Poland. It will take some time to see how thatworks in practice.

The newmechanismrequirescooperationbetween IPcourts andthe PolishPatentOffice.

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ContactZaborski, Morysiński Adwokacka sp. p. (ZM LEGAL)Senatorska 32/20, 00–095 Warszawa, PolskaTel: +48 22 827 88 88, +48 22 826 88 22Fax: +48 22 826 87 77www.zmlegal.pl

”

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Polish Patent Office, including the speeding upof procedures.

As to patent opposition and invalidationproceedings before the Polish Patent Office, thecrucial amendment refers to abolition of theobligation to demonstrate legal interest. Moreover,a patent opposition will no longer be reviewed bya board of experts acting in adjudicating colleges;instead, it will be examined by one expert.

Another change is the new option to demandthat the Polish Patent Office carry out aninternational investigation and to prepare aproper report. Its purpose is to make an assessmentat the application stage of the current state oftechnology in a given area on an international level.

The new provision enables the limitation ofpatents by patent claims amendment, as well as inthe course of ongoing opposition proceedingsand patent invalidation proceedings. Before theamendment, a patent-holder was entitled torequest a limitation of his patent only with regardsto the European patents, but this was uncommon.This change is a step towards harmonization withEuropean law and eliminates the discrepanciesbetween the rights derived from European andPolish patents respectively.

The new legislation extends renewal feeexemption to support start-up entrepreneurs.Small and medium entrepreneurs may apply forexemption from renewal fees for designs andtrademarks within three years of starting abusiness.

Moreover, the amendment, inter alia:- Clarifies the solutions that do not constitute

an invention, and the requirements of thepatent description. This change unifiesnational and European regulations.

- Specifies the factors of patent invalidation,clarifies the catalog of activities that constitutea patent infringement, and thus expands thecontent of the rights of the patent owner.

- In cases re: designs and geographicalindications, attorneys at law and legaladvisers can be proxies. Patent attorneyskeep their monopoly on patent andindustrial design proceedings.

3. IP courts regulationsFinally, there is the creation within the Polishcommon court of an Intellectual Property Court,due to begin operation on 1 July 2020.

At present, intellectual property cases areexamined by common and administrative courts.There is only one specialized court – for theEuropean Union Trademarks and CommunityDesigns. However, the increasing number of IPcases, and their specific character, requires thecreation of specialized IP courts.

Pursuant to the amendment, it is the plan tocreate four departments for intellectual property

matters at District Courts in Gdansk, Lublin,Poznan and Warsaw, as well as two specializeddepartments in the Courts of Appeal in Warsawand Poznań. All newly created departments willhave the competence to hear a dispute on mattersrelating to intellectual property includingcopyrights, patents, utility models, designs,trademarks, geographical indications, topographiesof integrated circuits, unfair competition, personalrights in so far as it concerns the use of personalrights for the purpose of individualizing, advertisingor promoting an enterprise, goods or services,and in connection with scientific or rationalizingactivities. Additionally, these courts will be entitledto examine cases regarding European Uniontrademarks and Community designs. Moreover,it is planned that the IP department in the Warsawcourt will have exclusive competence inintellectual property matters of a technicalnature, i.e. regarding computer programs,inventions, utility models, topography of integratedcircuits, plant varieties, and business secrets.

The amendment sets forth mandatoryrepresentation of the parties by professionalrepresentatives in IP proceedings. The presenceof professional representatives shall assure thatthe legal basis of claims is defined, and evidenceproceedings are vigorous. The aim of the proposedregulation is to improve the speed of intellectualproperty proceedings. In uncomplicated matters,where, without prejudice to the efficiency andquality of the proceedings, the party can standalone, the court will be able to release theparties from the obligatory replacement.

In addition, provisions are proposed to clarifythe rules of proceedings in intellectual propertymatters which, in particular, introduce and/ordetermine the following: - a request for preserving evidence; - a request for disclosing or issuing evidence;

or - a request for ordering information.

These measures, which are planned to be aneffective tool in obtaining information on factsnecessary to make a claim, differ in the mannerand scope of judicial protection provided. Themotion on secure evidence will assure therightsholder by gaining information on the factsof the infringement of their rights. The requestto disclose or release evidence shall allow therightsholder to obtain evidence from the infringerfor the needs of the case, which it is impossibleto obtain in a legal manner outside courtproceedings. Based on the information request,the rightsholder can obtain information on thedefendant's co-operators, and the quantity andprices of counterfeit products.

New regulations settle two specific types ofcourt actions, i.e. counterclaims and actions todetermine whether certain activities infringe

Patentoppositionwill nolonger bereviewed bya board ofexperts.

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RésuméVladimir Trey Vladimir graduated from Moscow State Linguistic University as alinguist, and then from the law faculty of the Russian State Institute ofIntellectual Property as a lawyer. He joined Gorodissky & Partners in1999, and in 2010 was promoted to partner at the firm. His experienceincludes counseling clients on managing trademark portfolios throughclearance and prosecution and representing clients before the RussianPTO and Commercial courts, including the Russian IP Court. Vladimirrepresents owners of famous brands and consolidated trademarkportfolios across a wide range of industries like: sport and leisure,perfumery and cosmetics, medicine, media and e-communications,chemistry and agro-culture, oil extraction and processing, electronics,automotive production, financial and insurance services. Vladimir haspublished a number of publications in international magazines and isone of the leading speakers in Gorodissky team.

The Treaty on Trademarks, Service Marksand Appellations of Origin of Goods of theEurasian Economic Union was signed in

Moscow on 3 February 2020.The Treaty provides for possibility of obtaining

trademark protection on the territory of all statesof the Eurasian Economic Union, which includesArmenia, Belarus, Kazakhstan, Kyrgyzstan, andRussia. According to the Treaty legal protectionof a trademark in these countries may be grantedon the basis of one registration which is namedEurasian Union Trademark Registration. Theprocess of registration of the EAEU trademarkswill be carried out during the collaborative workof the trademark offices of the EAEU states. Thecreation of a single interstate trademark office isnot foreseen by the Treaty.

In order to obtain protection of the EAEUtrademark it will be necessary to file oneapplication with the patent office of any state of the Union. The application must be drafted in the Russian language according to uniformrequirements, regardless of the fact whichpatent office is chosen by the applicant for filing.

Preliminary (formal) examination of the applicationwill be carried out only by the filing office. If theresults of preliminary examination are positive,this office decides to publish the application onthe official website and sends the applicationdocuments to other national patent offices.

Within three months after the publication ofthe application interested parties will be able tosubmit their oppositions against registration ofthe mark, which are taken into account by thenational patent offices during the examination ofthe claimed designation.

Within six months after sending of the applicationdocuments by the filing office to the patent officesof the Union states, these offices can conductthe examination of the claimed designation andnotify the filing office of the grounds for refusingto register the EAEU trademark. If the offices donot take respective actions within the indicatedtime period, they lose this opportunity.

Based on the information received from the national patent offices the filing office eitherdecides to register the Union trademark or sendsa notification to the applicant with reasons forrefusal. The refusal of any of the national officescan be appealed according to the availableprocedure in the respective country.

In the case of a decision on registration thefiling office shall enter the trademark into theUnion Register of EAEU Trademarks and issue therespective certificate of trademark registration. Thecertificate is valid for 10 years from the date ofapplication and may be renewed every 10 years.

If the same trademark is registered in the nameof the same person in the national registers ofall countries of the Union for completely orpartially matching lists of goods, after the entryinto force of the Treaty the trademark holder willbe able to file a request for an EUAU trademarkcertificate with any national patent office of theUnion. Such a certificate shall be issued for theperiod of validity of trademark registration in thatState of the Union, in which the validity of thenational registration expires later. In this caseentries are made in the national registries about

Another step towards creating a regional trademark protectionsystem across Eurasia

Vladimir Trey, Partner and Head of the Trademark Department at Gorodissky & Partners, examines recent efforts to develop an umbrella of protection across the Eurasian economic union.

Vladimir Trey

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Gorodissky_FP.indd 1 30/04/2019 15:39

Romulo Mabanta Buenaventura Sayoc & de los Angeles is the exclusive member fi rm for Lex Mundi — the world’s leading network of independent law fi rms with in-depth experience in 100+ countries worldwide and preferred access to more than 21,000 lawyers around the world all from a single point of contact.

Romulo: 21st Floor, Philamlife Tower, 8767 Paseo de Roxas, Makati City 1226, PhilippinesEmail: romulo@romulo.comTrunkline: +63 2 555-9555 | DID: +63 2 555-9563 Fax: +63 2 810-3110 | +63 2 815-3172 Website: www.romulo.com

PROTECTING YOUR BRIGHT IDEAS.

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32 THE TRADEMARK LAWYER CTC Legal Media

the registration of the EAEU trademark and on thereplacement of the previous national registrationby such regional registration.

Challenging an EAEU trademark registrationis possible in the competent authority of anystate of the Union in accordance with the nationalprocedure of that state but on the groundsprovided for in the Treaty. If an EAEU trademarkis invalidated, the owner of the mark will be ableto submit - on the basis of the invalidated regionalregistration - a national application (or applications)for the same trademark while maintaining thepriority date of the canceled registration.

Protection of the Union trademark may beterminated ahead of time due to its non-use forthree years. At the same time, in order to maintainprotection of an EAEU trademark its use on theterritory of at least one state of the Union isconsidered sufficient.

Disputes relating to violation of the exclusiveright to an EAEU trademark on the territory ofany state of the Union will be considered inaccordance with the national legislation of thatstate. The procedure will be similar to that foreseenin connection with violations of rights for nationaltrademarks.

The agreement also provides for a regionalsystem of protection of appellations of origin onthe territory of the EAEU member states. Currentlythe EAEU countries maintain national registersof protected appellations of origin. The Treatyprovides that the Union states will exchangetheir lists of appellations of origin registeredprior to the entry into the Treaty in the relevantnational registers. After exchanging the said liststhe right holders will be able to apply to the

national patent offices with requests to registertheir appellations of origin in the Unified Registerof the appellations of origin of the Union and toissue certificates of the right to use them.

The requirements for the application for theappellations of origin of the Union are establishedby the Treaty. Applicants from members states ofthe Union will be able to submit new applicationsfor registration of the appellations of origin of theUnion and obtaining the right to use them totheir national patent office. Applicants from othercountries will be able to choose the nationalpatent office of any state of the Union as thefiling office.

The procedure of examination of theapplication for the appellations of origin of theUnion is established by the legislation of thestate of the office of filing. If the examinationresult is positive, the filing office enters theappellation of origin into the Unified Registerand issues a certificate for the right to use it. TheTreaty does not provide for the examination ofapplications for the appellations of origin of theUnion by each national patent office.

The Treaty will enter into force from the date ofreceipt by the Eurasian Economic Commissionof the last written notice on the implementationof the necessary domestic procedures byMember States.

Applicantsfrom othercountrieswill be ableto choosethe nationalpatent officeof any stateof the Unionas the filingoffice.

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ContactGorodissky & PartnersTreyV@gorodissky.com

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RésuméVítor Palmela Fidalgo Vitor is a Trademark and Patent Attorney and Legal Director at InventaInternational. He specializes in all IP matters, including patents,trademarks, copyright and domain names. Vitor is also AssistantProfessor at the Faculty of Law of the University of Lisbon, as well asArbitrator in IP matters.

I do notforeseemajorchanges tothe latestversion ofthe Bill.

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We have come a long way since the first draft on the new AngolanIndustrial Property Act was presented.

One cannot deny the anxiety that it has beencausing to stakeholders. Considering the seniorityand outdating of the current law – not evencomplying with the Trips Agreement – concernsare plenty understandable.

However, it seems the time has come. The Bill has just been sent to Council of Ministers for analysis. Considering the deep discussionbetween all the stakeholders (officials, academia,trademark and patent attorneys and right holders),I do not foresee major changes to the latestversion of the Bill.

With this article I intend to provide an overviewof one of the key changes relating to trademarks:the “genuine use” (uso sério), whose concept isalso absent in the current legislation. The currentlaw prefers not to qualify the use, employing thesolely the term “use”, which may lead to theunderstanding that the requirement is fulfilledonly when there is total lack of trademark use.

As it is commonly known, almost all legislationsworldwide on trademarks stipulate an obligationfor the owner of a registered trademark to usethat mark in a genuine manner. This requirementis preceded by a “grace period”, where theobligation of use is not applicable immediatelyafter registration of the earlier mark. In contrastwith other legislations, the current AngolanIndustrial Property Law provides for a short “graceperiod”. According to Article 39(c), the trademarkowner has only two years to initiate the use ofthe trademark. This aspect, apart from being aburden for stakeholders, contravenes the TripsAgreement. Under this International Agreement(Article 19(1)) the registered trademark may becancelled for non-use only after anuninterrupted period of at least three years.

However, the present proposal switched to amainstream approach. According to Article 208(1),of the Bill, the “grace period” is established infive years, during which it is not needed todemonstrate use of the trademark.

In addition, the lack of genuine use is nolonger only a ground for trademark revocation.

Pursuant to the last draft of the Bill, the lack of genuine use may be used as a defense in two different situations: (i) counterclaim in theOpposition; and (ii) Counterclaim in InvalidationCase.

The first situation is provided in Article 183(1) ofthe draft. Under the terms of this provision, theapplicant, facing an opposition from a third partyproprietor of an earlier trademark, may requestfrom the opponent to furnish proof that theobject trademark has been put to genuine usein connection with the goods or service classesin respect of which it is registered, for a period offive years. According to Article 182(2) the proprietorof the earlier trademark should reply against thisrequest in 30 days, which can extendable for anequal period. It is important to mention that thisprovision does not imply any assessment of thepossible revocation of the registered trademarkon which the complaint is based. If the opponentcannot prove that it has used its trademark (orthere are valid reasons for the non-use), accordingto Article 183(4), the only legal effect is the rejectionof the opposition. No revocation decision can beissued by the Angolan PTO.

Furthermore, under Article 202(4), of the Draft,a trademark cannot be canceled if, on the dateon which the respective filed trademark wasmade or on the date of the respective claimedpriority, the earlier mark claimed does not satisfythe condition of genuine use. Once again, as the solution provided in Article 183(4), underArticle 205(5), this measure does not imply anyassessment of the possible revocation of theregistered trademark on which the complaint isbased. Both trademarks will remain coexisting in

A new era for trademarksin Angola?

Vitor Palmela Fidalgo of Inventa gives us an overview of “genuine use” in Angola’s latest industrial property Bill.

Vítor Palmela Fidalgo

Inventa_TML3_v2:Layout 1 5/5/20 12:13 Page 35

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the market. The only legal issue is that,procedurally, the cancellation action will bedismissed. I would add that - despite not existingany specific Article attesting to this solution - Ibelieve it should be accepted that, during acancellation action, when it is filed a revocationaction before the Angolan PTO, the court maystay the proceedings until the final decision ofthe institute.

Despite these changes, which are mostwelcome, there is no legal provision for claimingthe genuine use as counterclaim in infringementsactions. For these cases, the defendant shall filea revocation action before the institute. It is myunderstanding, once again, that this will be reasonto stay the proceedings before the court untilthe administrative decision is issued.

As for the genuine use itself, there are morenovelties in the Bill. According to Article 207(1)(a)use of a trademark in a form which differs interms of elements that do not significantly changethe distinctive character of the trademark in theform in which it is registered. In this sense, thereis a room for the trademark owner to makevariations in the its sign that, without altering itsdistinctive character, enable it to be betteradjusted to the marketing exigencies of thegoods or services concerned.

In accordance with the Bill, the trademarkshall be also considered to have been used byits owner where it is used by a third party withthe owner’s consent. However, the Bill is notcompletely clear in this matter. According to

Article 207(1)(a), the trademark shall be consideredto have been used by a licensee, with a dulyregistered license. In the same article andparagraph, but now subparagraph c) the draftreturns to the matter, but yet stating that the it isconsidered “genuine use” the use of thetrademark by a third party, provided it is with theconsent of the proprietor and for the purpose ofmaintaining the registration. So, in this secondprovision, no mention is done to the licensee orthe recordal of the same. This raises a doubtwhether the recordal shall be a requirement forthird-party use of the trademark be legallyconsidered. One of the ways to interpret this ruleis to understand that this requirement is onlyapplicable to licensees, waiving the same forother third parties, such as companies as beingpart of the same business group of the owner ofthe trademark.

Finally, it should be mentioned that underArticle 207(1)(c), the trademark shall be consideredused in Angola, even it is only for export purposes.

Looking at the changes in this matter, onemay answer that this could be a new era fortrademarks in Angola. The genuine use and itsproper application are essential for restrict thenumber of trademarks registered and avoid,consequently, the number of conflicts betweenthem. In this last vein, genuine use is alsoimportant for prevent trademarks being used asan anti-competitive tool. With these new rulesAngola will stand alongside with the mostadvanced legislations in this matter. In its specificcase, the genuine use legal regime is importantfor two reasons. Firstly, the number of defensivetrademarks is still remarkably high. Regardlessof the reasons behind these applications, a highnumber of defensive trademarks are ineffectiveon the market, blocking the entrance of newplayers. Secondly, the volatility of the Angolanmarket, where constantly new players come inand others come out of the market, leads to ahigh number of trademarks not being used, butstill formally registered at the institute. So, a newera will definitely come for trademarks in Angolaand we look forward to seeing how is going tobe applied.

This couldbe a new era fortrademarksin Angola.

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ContactInventa InternationalAlameda dos Oceanos, 41,K21 Parque das Nações, 1990-207 LisbonTel: (+351) 213 150 970/1africa@inventa.comwww.inventa.africa

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in India such as (i) display of complete sellerdetails on the platform, (ii) e-commerceentity shall not influence the price ofgoods/services and shall maintain a levelplaying field, (iii) adopts any unfair methodsor unfair or deceptive practice that mayinfluence transactional decisions ofconsumers, (iv) falsely represent themselvesas consumers or post reviews about goodsand services in their name; or misrepresentor exaggerate the quality or the features ofgoods and services. In addition to this, thedraft Rules also lay down certain liabilitieson the sellers who are using e-commerce.Most importantly, these draft Rules providefor consumer grievance redress procedurewhich mandate that every e-commerceentity shall publish on its website the nameof the Grievance Officer and his contactdetails as well as mechanism by which userscan notify their complaints. It is also providedthat the Grievance Office shall redress thecomplaints within one month.

Information Technology Act andthe liability of intermediariesE-commerce platforms have found refuge underthe safe harbor provisions of the InformationTechnology Act 2000.

Intermediaries are defined under Section 2 (1) (w)of the IT Act as: “Intermediary, with respect to any particularelec tronic records, means any person whoon behalf of another person receives, storesor transmits that record or provides anyservice with respect to that record andincludes telecom service providers, networkservice providers, Internet service provid ers,webhosting service providers, searchengines, online payment sites, online-auctionsites, on line-market places and cyber cafes.”

As per section 79 of the IT Act, an intermediaryis not liable for any third party information, data,or communication link made available or hostedif (a) its function is limited to providing access toa communication system over which informationmade available by third parties is transmitted or temporarily stored or hosted; or (b) theintermediary does not— (i) initiate the transmission,(ii) select the receiver of the transmission, and(iii) select or modify the information contained inthe transmission; (c) the intermediary observesdue diligence while discharging its duties underthis Act and also observes such other guidelinesas the Central Government may prescribe in thisbehalf.

The Act further provides that the above safeharbor provisions shall not apply if –

(a) the intermediary has conspired orabetted or aided or induced, whether by threats or promise or otherwise in the commission of the unlawful act;

(b) upon receiving actual upon receivingactual knowledge, or on being notified by the appropriate Government or itsagency that any information, data orcommunication link residing in orconnected to a computer resource,controlled by the intermediary is beingused to commit the unlawful act, theintermediary fails to expeditiouslyremove or disable access to thatmaterial on that resource withoutvitiating the evidence in any manner.

Judicial scrutiny of Section 79 of the IT ActThe courts have scrutinised the said provision todetermine the responsibility of intermediaries inIP matters. In Myspace Inc. v. Super CassettesIndustries Ltd. (2016), the Delhi High Court notedthat while Section 79 grants a measured privilegeto the intermediaries, liability can be imposed onthe intermediary if it has actual knowledge of theinfringement and not just general awareness/knowledge.

Thereafter, in Christian Louboutin SAS v. NakulBajaj & Ors (2018), the Delhi High court observedthat e-commerce platforms which activelyconspire, abet or aide, or induce commission of unlawful acts on their website cannot go scotfree. The protection afforded to intermediaries isnot absolute and if they also initiate thetransmission, select the receiver or select or modify the information contained in the

RésumésManisha Singh Manisha is a founder and the Managing Partner of LexOrbis. She is knownand respected for her deep expertise on prosecution and enforcement ofall forms of IP rights, and for strategizing and managing global patents,trademarks and designs portfolios of large global and domestic companies.

Aprajita NigamAprajita is enrolled with the Bar Council of Delhi since 2013, and holdsan LL.M. degree in IPR Law from NALSAR University of Law. AtLexOrbis, her work includes trademark, copyright, and design matters,domain name complaints, agreement drafting, attending hearings etc.She has received much appreciation for her publications.

Smrita Sinha Smrita is an advocate enrolled with the Bar Council of Delhi since 2019and has graduated from Amity Law School Delhi. At LexOrbis she hasbeen involved in various IP matters related to copyright, trademark andindustrial design. Smrita has also contributed to publications on thesubject of arbitration, trademarks etc.

Manisha Singh

Aprajita Nigam

Smrita Sinha

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The advent of e-commerce platforms hassignificantly transformed the Indian businessand retail sector by focusing on consumers’

need for convenience to shop for the necessitiesas well as luxuries by a mere click of a button.Rapid expansion of internet services acrossIndia and the tremendous rise in the sale ofsmartphones has accelerated the growth of e-commerce business. Interestingly, these e-commerce platforms have not only managedto garner the attention of the urban populace,but of those living in the semi-urban and ruralareas of India.

The growing popularity of e-commerceplatforms has, at the same time, broughtchallenges in the form of counterfeiting whichaffects both brand owners and consumers, and

as such, these platforms are constantly underthe scanner for their role in the menace createdby counterfeit products.

Government initiatives The Government of India has come up with thefollowing draft policy and rules for regulating e-commerce platforms operating in India:• Draft National E-commerce Policy: The

measures enlisted under this policy inter aliaare – (i) the mandate for providing sellerdetails, (ii) publicly available undertaking bythe seller to e-commerce platform regardinggenuineness of the products, (iii) option ofregistration for trademark owner with the e-commerce platform to get a notification bythe platform in case a trade-marked product is uploaded for sale, (iv) if the trademark owner desires, the e-commerce platform shall not list any trade-marked good withoutprior approval, (v) in case of luxury goods,cosmetics and other goods having impact onpublic health, prior authorization fromtrademark owner will be mandatory, (vi)financial disincentives for seller if found to beselling counterfeit products, and (vii) takedownof counterfeit products on a complaint madeby consumer and affirmed by trademarkowner, if the seller fails to produce evidence of genuineness of the product.

• Draft Consumer Protection (E-Commerce)Rules, 2019: These Rules have been madeunder the Consumer Protection Act toprotect the interests of the consumers andprovide for general conditions that arerequired to carry out e-commerce business

38 THE TRADEMARK LAWYER CTC Legal Media

Liability of e-commercewebsites in India

Manisha Singh, Managing Partner, Aprajita Nigam, Senior Associate, andSmrita Sinha, Associate, of LexOrbis, outline how the Indian legal system isdealing with the IP challenges created by the rapid growth of e-commercein the country.

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40 THE TRADEMARK LAWYER CTC Legal Media

transmission, then they may lose the exemptiongiven under safe harbour provision.

A recent judicial development has come inthe form of a dispute between Direct SellingEntities (Plaintiffs) and e-commerce websites(Defendants), wherein a Single Judge of theDelhi High Court ruled in favour of the plaintiffs,and awarded interim injunctions restraining thedefendants from displaying, advertising, selling,and facilitating repackaging of the plaintiffs’products, except of those sellers who producewritten permission/consent of the plaintiffs forlisting their products.

In an appeal preferred by Amazon, Snapdealand Cloudtail (Appellants) against the aforesaidinterim injunctions, a Division Bench of the DelhiHigh Court noted that the appellants provideservices in addition to access and thus, theyhave to show compliance with Section 79(2) ofthe IT Act and establish that they do not - initiatethe transmission, select the receiver of thetransmission and do not select or modify theinformation contained in the transmission. Theappellants contended that the consumersinitiate the transmission and they neither selectthe receiver, nor modify any information.

Among other observations, the court notedthat Section 79 of the IT Act ensures that the

liability for non-compliance and/or violation oflaw by a third party, i.e. the seller, is not imposedon the e-commerce websites. The courtdisagreed with the Single Judge’s view that thee-commerce websites will have to meet the duediligence requirement, failing which the benefitof safe harbour provision would not be availableto them, and observed that there is a prima faciemerit in the appellants’ contention that as onlinemarketplaces they provide value-addedservices; however, it does not dilute the safeharbour granted to them.

The jurisprudence relating to intermediaryliability is constantly evolving in India and finalityon the same is much awaited.

E-commerceplatformshave foundrefuge underthe safeharborprovisions of the IT Act 2000.

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ContactLexOrbis709-710 Tolstoy House, 15-17 Tolstoy Marg, New Delhi -110001Tel: +91 11 2371 6565www.lexorbis.commanisha@lexorbis.comaprajita@lexorbis.com smrita@lexorbis.com

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Intellectual Property as part of the company value Especially in our knowledge-driven society, IPplays an increasingly important role. When acompany is sold or valued because of differentreasons, the proportion of goodwill, includingintangible assets (see Figure 1) such as brandsand patents, accounts for between 30 and 70 percent of the company value/purchaseprice (KPMG Corporate Finance, 2010).

It has to be highlighted that the share ofgoodwill on the overall market capitalization hasincreased continuously over the last years (alreadyelaborated on in Cardoza & Basara, 2006). As aconsequence, a one-sided focus on only financial

and commercial aspects of the balance sheetquickly overlooks the value of patent and trademarkrights that are usually not capitalized. Considerationof the value of patents and trademarks is oftenoverseen, even though they are crucial for thefuture prospect and competitive advantage of thecompany, which is also supported through theinformation provided in Figure 2, that outlines thepercentage share of the purchasing price associatedwith goodwill based on selected industries.

One especially important value driver when itcomes to IP in order to make it an importantcommercial asset are brands (Denoncourt, 2017;Lagarden, 2012).

Regarding brands, the following three mainand important functions (i.e. value drivers) haveto be distinguished, they are also important forthe considerations expressed later on, when itcomes to the valuation of trademarks in differentfinancing activities/scenarios (Brand ValuationForum, 2008; Lagarden, 2012): 1. Communication:

Trademarks are important signals in order toenable the communication towards thecustomer but also other stakeholders for whichthey are relevant (e.g. employees, suppliers,investors). This means that one of the mainfunctions of brands and their underlyingtrademark rights is to provide a clear messageabout the company as a whole or certainproducts/services the particular company offers.Essentially this enables the company toguarantee recognition as well as continuity incommunication. Summarizing, the brand playsan important role to ensure/support efficientinvestments in communication initiatives.

2. Differentiation: Trademarks help to shape the perception ofthe brand on the market. In doing so they helpcustomers and other stakeholders to distinguishthem from the competitors and – at best –enables (purchase) decisions in favor of thebrand. As technologies, markets, processes andknow-how as well as the resulting products/services are increasingly exchangeable,there is a shift in value creation to assetswhich successfully set themselves apart overa long period and cannot be copied. In case the trademark manages to buildsuch a strong differentiating potential thisgoes hand in hand with several advantages,like the fact that products / services mightbe offered for a higher price. Additionally,this also supports moving into new businessfields or product generations andcommunicate these convincingly to a (new)set of customers and other relevantstakeholders. Such a dominant position inthe market is very likely to directly result inhigher future cash flows.

Intangible Assets

Intellectual Property Rights

PatentsCopyrights

Proprietary Software

Trademarks, BrandsClients & Suppliers

Relationships

Data and KnowledgeBasis

Trade Secrets,Knowhow

Utility Models

Designs

Figure 1: Types of Intellectual property

Figure 2: Relevance of Intangible Assets (Source: KPMG Corporate Finance, 2010; also refer to: PricewaterhouseCoopers/FHDW Hannover, 2018)

0% 50%

Automotive 44.8%

Life Sciences & Healthcare 54.8%

Chemicals 36.2%

Computers & Semiconductors 49.1%

Energy & Power Generation 36.0%

Financial Services 43.4%

Industrial Products 55.9%

Internet & E Commerce 70.4%

Telecommunications 56.0%

Percentage share of the goodwill of purchase price according to industries (median)

Patev_TML3_v7:Layout 1 7/5/20 13:12 Page 43

RésumésDr. Edelbert Häfele Edelbert Häfele is a chemical engineerand holds a doctorate in processengineering. After a career in medium-sized industry, he has been managingPATEV since 2001, a solution provider forIP based business focusing on the valueof IP. He is a member of numerousassociations and has been listed in theinternational ranking of the IAM magazine"The World's Leading IP Strategists" formany years. At the IHK Munich he is"publicly appointed and sworn expert forthe valuation of industrial property rights".

Dr. Judit Inacsovszky Judit Inacsovszky holds a diploma anddoctorate in electrical engineering with a specialization in communicationsengineering/computer science. She hasover 20 years of professional experiencein the field, including more than 10 yearsof experience as a collaboration partnerof PATEV in the area of IP analysis and IPvaluation.

Christina Koller Christina Koller studied management andlaw and is working intensively on the topicof quality of Intellectual Property sincethen. She is working at PATEV since 2016and currently holds the position of DirectorBusiness Intelligence. Therefore, her mainresponsibilities are in the field of economicvaluation of intellectual property (i.e,patents, trademarks and know-how).

42 THE TRADEMARK LAWYER CTC Legal Media

Intangible assets such as brands, patents, and know-how, hold considerable value forcompanies. This is not only the result of our

extensive experience in the field of IntellectualProperty valuation but also proven by differentstudies of renowned auditing firms. In many cases,the consideration of IP and especially trademarksis of great importance for the future prospectsof companies in industry and trade. This holdstrue for a number of different scenarios werevaluations (i.e. determination of the monetaryvalue of trademarks) play an important role.

This also includes possibilities of supportingfinancing activities through the strategic use ofintangible assets, like trademarks. Especially inturbulent times (amongst others, this can includecrisis situations, but also business expansion) theuse of these assets brings specific advantagesto supporting financing efforts within companies. Itusually involves different parties (e.g. auditors,lawyers, banks, investors) to successfully runthrough the relevant processes, with one providingthe valuation of the relevant IP asset(s).

Regarding this, it is important to understandthat each brand valuation provider has its ownmethodology, which means that the method –and as a consequence also the result – dependsstrongly on the selected valuating company.Especially in Germany, however, strong tendenciestowards standardization can be observed in thelast decades. It is of great importance to considerthe relevant standards appropriate for therespective situation/scenario in which thevaluation takes place.

The following article provides a brief insightinto the relevant aspects of trademark valuationin the context of financing initiatives, with a specialfocus on referring to and highlighting relevantuse cases we encountered in the past years.

Monetary brandvaluation in financialengineering

Dr. Edelbert Häfele, Dr. Judit Inacsovszky, Christina Koller of PATEV AssociatesGmbH look at how an active IP management by trademark and patentlawyers can support leveraging the value of trademark and patent rights intimes of a crisis or business expansion.

Dr. Edelbert Häfele

Dr. Judit Inacsovszky

Christina Koller

BRAND VALUATION

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SourcesBrand Valuation Forum. (2008). Ten principlesof brand valuation. [online]Cardoza K., Basara J., Cooper L., & Conroy. R.(2006). The Power of Intangible Assets. IAM-Magazine. pp. 33 – 37. Denoncourt J. (2017). IP Debt Finance andSMEs: Revealing the Evolving ConceptualFramework Drawing on Initiatives from Aroundthe World. In: Kono T. (eds). Security Interests in Intellectual Property. Perspectives in Law,Business and Innovation. Springer, Singapore.KPMG Corporate Finance. (2010). IntangibleAssets and Goodwill in the context of BusinessCombinations (Marc Castedello, ChristianKlingbeil) [online report]Lagarden, M. (2012). Brand Valuation inBusiness Practice – Part 1. InternationalTransfer Pricing Journal. July, August. pp. 247 – 256.

PwC PricewaterhouseCoopers / FHDWHannover. (2018). Die Goodwill Entwicklung2008-2016 der DAX30-Unternehmen (PhilippHartmann, Wolfhard Cappel), koR-IFRS, Nr. 05,pp. 230 – 241.

ContactPATEV Associates GmbHIntellectual Property and TechnologiesAlbert-Einstein-Straße 62a76228 KarlsruheTel: +49 721 / 945 40 6-66Fax: +49 721 / 945 40 6-40www.patev.dechristina.koller@patev.de

It isimportant tounderstandthat eachbrandvaluationprovider has its ownmethodology.

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A well-known company from the construction industrywith annual sales of over EUR50 million gets intodifficulties with high levels of supply shortages throughno fault of its own.

This results in a short-term liquidity bottleneck.

A well-known company from the communication industrywith over EUR500 million annual turnover needs a strong,international partner. The main intention is to sell thecompany. The company has high debt and all tangiblecollateral has already been completely transferred. A bridging loan is required for the divestment process.

A regionally known trading company with approximatelyEUR200 million annual turnover is being restructured.This process requires additional financing. No furthertangible securities are available.

Umbrella brand and product brands are well-positionedin the business model of the company and play asignificant role.

An electrical engineering company, which has significantpatents and has over EUR100 million annual turnover,requires a bridging loan.

Subsequently, a part of the business (i.e., subdivision ofthe company) is to be sold. For the correspondingnegotiations with potential buyers it is important todetermine the value of the underlying IP.

- Additional bridge financing by the consortiumpartners (security: trademark rights) is required

- PATEV expert opinion as a basis for the financingframework (i.e., credit line)

- Regular continuation of business operations and laterrepayment of the loan/release of the collateral

- Trademarks, in particular, are identified as assets ofenduring value by PATEV.

- The trademark rights turned out to be primarilyinteresting for an Asian investor.

- The company is completely newly financed throughthis investor and the loans are repaid.

- Possibility to achieve financing through a bankconsortium (security: trademark rights)

- PATEV trademark expert opinion as the basis to setup the financial framework

- Regular continuation of the business operations withapproximately 1,000 employees and subsequentrepayment of the loan.

- Determination of the value of the IP – in this casepatents turned out to be the most important valuedrivers – as a basis for negotiations.

- PATEV valuation report as framework for successfulinterim financing.

INITIAL SITUATION SOLUTION

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3. Value over time: A trademark is often perceived as one ofthe most important constants when itcomes to the relationship between acustomer or other stakeholders and thecompany. The experiences – good andnegative – are strongly associated with thebrand. If the brand has a strong and well-perceived position in the market, this fostersfuture demand and stronger, long-termcash-flows. This even holds true, after otherintellectual property rights (e.g., morerelated to technological aspects likepatents) are no longer in place.

Brand valuation in Germany Brand valuation faces the strong dilemma thatdifferent valuation methods lead to differentresults in the value of the brand. At present, anumber of efforts are under way to standardizethe valuation methods – especially also inGermany. For instance, the German standardsassociation, Deutsches Institut fur Normung,elaborated a standard to establish an internationalISO procedure regarding trademark valuationwhich is already in place since several years.Additionally, also the institute of certifiedaccountants in Germany, IDW, has published astandard on the evaluation of intangible assets(IDW S5, see www.idw.de). Against this backgroundthe leading brand valuation experts establishedthe “Brand Valuation Forum” that focuses on thedevelopment of the 10 principles of monetarybrand valuation. Although compatible with eachother, these different standards focus on differentvaluation occasions.

In the following section the most relevantconsiderations regarding these most importantstandardization approaches in Germany areoutlined.

DIN ISO 10668 DIN ISO 10668 is an international set ofstandards that considers different perspectivesand purposes (e.g., financial, liquidation, litigation,internal purposes, …). The standards outline thateach valuation has to, basically, consider threeperspectives, which are a Legal, Behavioral andFinancial analysis (Brand Finance, 2010).

IDW S5 These standards focus on the relevant aspects forauditors and puts business related considerationsregarding valuation in the foreground.

10 principles of monetary brand valuationTheir aim is to develop uniform principles on thebasis of the existing valuation methods in orderto provide a guideline to examine and make aninformed decision about the relevant valuation

approach. These principles include but are notlimited to the following standards: Relevance ofoccasion, kind of brand and function, protection,target group relevance, brand status, economiclife of the brand, brand-specific cash flows and net present value methods (risk), brandspecific risks (market and competitive) as well asreproducibility and transparency (Brand ValuationForum, 2008). In most cases the valuation of brands does notonly involve one single entity; our experiencehas shown that the valuation is usually part of amore comprehensive process also stronglydependent on the respective underlyingscenario that is relevant in the given context.This – besides a valuation expert – in generalalso requires legal advisors as well as auditors thatbuilt the framework for the valuation scenario.

Also, in terms of compliance issues (especiallyif third parties like tax authorities or banks areinvolved) it is advisable to rest these responsibilitieson different shoulders.

Trademark valuation in “financialengineering”As outlined above, one of the most crucial aspectsin the valuation process is the actual situation inwhich the valuation takes place. Below we havecollected four use cases from our 20 years ofexperience in providing expert opinions fornumerous companies and their financing partnersin order to support different financial scenarios.All these cases took place in Germany.

These examples provide a first brief idearegarding the different scenarios in which IP(with a focus on trademarks) can play animportant role to support the financialconstraints and needs that companies arefacing, especially in times of crisis or businessexpansion.

Considerationof the value ofpatents andtrademarks is oftenoverseen.

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Customer/Company

Accountant / Auditor(e.g., KPMG, PwC, …)

LegalAdvisors

Figure 3: Patent Valuation - Involved Parties

Expert Opinion /Valuation

(e.g., PATEV, …)

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4 months to issue an official action regarding anyformality.

Once the formal examination is concludedand all of the requirements are fulfilled (if any),the examiner in charge will have another 3 monthsto conduct the substantive examination. In thisinstance, the examiner will issue an official actionin case there is another confusingly similar markpreviously registered, or if the mark is notregistrable based on absolute grounds, such asdescriptiveness or lack of distinctiveness.

Currently, for each of the above examinations,the applicant has 2 months to file a response,extendable for another additional 2 months, soin total, the applicant will have 4 months to replyto a provisional refusal issued during each of thestages of the examination.

The proposed new law indicates that only oneofficial action will be issued, therefore the examinerwill have to, in a period of 4 months conductboth the formal and substantive examinationsand issue only one official action. Also, what isstartling about this proposal is that the deadlineto file a response will be resumed to only 2 months,non-extendable; this means that not only theapplicant will have half of the time that currentlydoes to file a response to one provisional refusal,but also means that in half the time will have torespond to probably issues concerning to formaland substantive examination.

This modification has as a purpose to reduceexamination and granting times, but what concernus in the practice is that the study of trademarkapplications should not be a race with time,even though is in the applicants best interest tohave a registration in a shorter period of time, isequally important that trademarks are beinggranted properly and not rushed, because thiscould also increment the numbers of trademarksgranted by mistake, in error, or owing to a differenceof judgment, which also could increase the numberof nullity actions translating into additionalexpenses to applicants.

Additionally, the reduced deadline will mostlyaffect abroad applicants. We as practitionersknow that sometimes obtaining instructions inhow to proceed after an official action is not thatsimple, because most of the time we havecommunications through another agent orrepresentative which also has to contact theactual applicant, this itself could take weeks.

On the other hand, if original documents mustbe filed, such as power of attorneys, letter ofconsents or affidavits (just to name some), adeadline of 2 months non-extendable mostlikely will not be sufficient.

OppositionsMexico did not recognize this procedure untilAugust 2016. This was initially seen as a new

alternative to defend the applicant rights;however, we suffered a bit of a disappointmentbecause the procedure in Mexico was notimplemented like in other countries. For instance,the opposition does not suspend the study ofthe application and is not binding for thedefendant, meaning that they are not forced tofile a response to an opposition. In this regard,the opposition system in Mexico is not only asummarized procedure but also does not forcesthe examiner in charge to take the same intoconsideration while conducting the examinationof the application.

In other words, the opposition system inMexico for the past years functioned more as anobservation issued by a third party than a properprocedure, and although has had great resultsin our practice, it still lacks structure.

The proposed new law in terms of the oppositionoffers a few positives that finally provides thisprocedure the structure that requires to work abit better. For instance, now an opposition willforce the applicant (defendant) to file a response,otherwise the application will be deemedabandoned.

Also, even though the opposition does notsuspend the study of the application even in thiscase, while the period of the opposition is open,the examiner will have to conduct and concludethe formal examination. Even though this seemsreasonable, the examiner will have to concludethe formal examination in what is estimate to beone month, to have enough time to study theopposition, the response of it, along with thesubstantive examination, since as mentionedearlier, only one provisional refusal will be issued.

Another concern with the proposed new lawis that if an opposition was indeed filed, theexaminer will have to issue a formal decisionregarding the same (even when included in thecurrent Law, in the practice the Authorityinconsistently issued formal decisions).

We do not know for sure how this formaldecision will work, however from what we havediscussed with the Authority and people involvedin this new law is that, if the opposition wassuccessful, the examiner along with the formalexamination, will cite as impediment the trademark

RésuméClaudina GonzálezClaudina González Muñoz holds a master’s degree in IntellectualProperty Law from Anahuac University in Mexico City. She is a Memberof the Mexican Association for the Protection of Industrial Property(AMPPI) and worked for the Mexican Institute of Industrial Property (IMPI)for the distinctive sign department and afterwards, in the department ofpatent filings. Before joining Uhthoff, Claudina worked as an Associate forBarbieri & Gonzalez-Kokke’s Intellectual Property Law firm.

We do notknow forsure howthis formaldecisionwill work.

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Theproposednew lawindicatesthat onlyone officialaction willbe issued.

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On 14 November 2019, Senator ErnestoPerez Astorga submitted the initiative toissue a new Industrial Property Law in

Mexico, which means that the current lawpublished in 1991 will disappear. The proposednew law is also promoted by Juan Lozano Tovar,General Director of the Mexican Institute ofIndustrial Property (IMPI).

In the general provisions of the initiative theknowledge-based economy, the importance ofnew technologies, innovation and globalizationseem to be the focal points for this new law;however we know that one of the main goals isto concur with the settled terms included in theUnited States of America, Mexico and CanadaAgreement (USMCA).

Despite common fears, doubts and evenexcitements that a new law carries, in Mexicothe discussion for this law has been going on forseveral months. Many practitioners, members ofIP Committees, bars and associations have beenraising questions, concerns, and suggestionsdirectly to Senator Ernesto Perez Astorga, whohas kept a very open-door policy.

Even though this “new law” is at a discussionstage, there are some things that for us, aspractitioners are somehow concerned about,especially because of the possible implicationsthat could affect not only the practice in Mexico,but could carry repercussions to people orcompanies abroad that are looking to have theirpatents and/or trademarks protected in Mexico.

The proposed new law includes all IndustrialProperty matters, and even when many thingshave remained the same as they are in thecurrent law, the list of things that could changeif the same is approved as it is, is too extensive,therefore I herein will focus on trademarkrelated matters only, summarizing whatpersonally consider the most relevant changes

the new law will carry in case the same remainsas it was presented in the initiative:

Multiclass applicationsThe current law does not allow a multiclassapplication; therefore, an applicant will have tofile one trademark per class. For InternationalRegistrations, once the applicant designatesMexico, the same will be divided into nationalapplications (one per class).

The way that this is being promoted confusesthe applicants and especially the Industry, becauseit seems that payment for one application willcover all designated classes, and the study ofthe application will be conducted as a summaryreducing time, while in reality it would be thecomplete opposite.

The way the system currently works is whatallows Mexican Trademark Office to be one ofthe quickest IP offices in the world, since onetrademark could be granted within 3 to 5 months(if not impediments were issued). Multiclassapplications in Mexico will also not representmonetary savings to applicants, becausegovernment fees will still be charged for eachclass, moreover, it will also mean that the studyof the application will take exactly the same as itis right now, and probably even longer since theexaminer will have to study all related classes ina combined way.

Examination of the application and deadlinesOnce the application has been filed, the same isassigned to an examiner who will first conductthe formal examination during which it willdetermine whether the application fulfills allformal requirements, including any matterrelated to the description of goods or services.For this instance, the examiner in chare has up to

Proposed new IP lawin Mexico: possibletrademark challenges

Claudina González, Associate at Uhthoff, Gomez Vega & Uhthoff, S.C.,discusses the impact new legislative changes will have on Mexico’streatment of trademarks.

Claudina González

MEXICO

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RésuméRay Zhao Ray has accumulated extensive practicalexperience in trademark prosecution and IP enforcement. He works as a legalconsultant providing IP services for many listed companies, famousdomestic companies, public figures and multinational clients in litigation andnon-litigation cases regarding patents,trademarks, unfair competition, tradesecrets, domain names and networkinfringements. Mr Zhao also counselsclients on IP strategy and IP infringementissues.

MichaelJordan is alegend ofbasketball.

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Michael Jordan is a legend of basketballand one of the most famous superstarsin basketball history, having won many

NBA championships and inspired an entiregeneration of basketball fans all over the world– an inspiration that continues today. On thebasketball court, he played many difficultmatches, accomplished classic so-called “finalcounterattack” games, and completed manyimpossible missions. His name became popularand famous among Chinese followers due to hisattractive personal character and superbbasketball skills.

However, as the English saying goes: “Every coinhas two sides”, and reputation brings not onlyawareness, but also, in this case, provides spacefor other companies to register Jordan’s nameas a trademark. When the Chinese translation ofhis English last name 乔丹 was registered by a

Chinese company called Qiaodan Sports,Michael Jordan had no choice but to complete afinal counter-attack on the legal court againstQiaodan Sports in China.

According to public information, since 2012,Jordan and Qiaodan Sports have been involvedin many trademark administrative lawsuits inChina. One of the major issues between the twosides is over the right of use of a personal name.Jordan believes that the translation of Jordan

Michael Jordan has wona “final counterattack”against Qiaodan sportsin China

Ray ZHAO, LL.M., Senior Partner and Head of the International TrademarkTeam at Unitalen, looks at a recent high-profile victory for IP in the Chinesecourts.

Ray Zhao

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base of the opposition, and any additionalabsolute and/or relative impediment that comesfrom the substantive examination. If the oppositionwas not successful, the examiner will then issuea formal decision to the opponent regarding thesame. However, in this scenario it opens up thepossibility that the opponent refutes the formaldecision and open a proper administrative litigationwhich then it will have to suspend the study ofthe application. This possible scenario wascompletely left out of the proposed new law,and it is probably one of the most concerningmatters regarding the changes included herein.

Partial non-use cancellation actionThis is one of the points that had the mostacceptance in terms of trademarks. In the practicethere are still many trademark registrations inforce that are covering the heading of the class,since for many years the Authority consideredthat by covering headings, the registrationswere protecting each and every one of theproducts or services listed in the class.

Until this day, despite the fact that from thelatest amendment of the Industrial Property Lawon 10 August 2018 the Authority insisted in nowbeing more specific with the list of goods andservices, the reality is that there are still many

valid registrations that are covering headingsthat are being cited as impediments for newapplications.

The above represents a serious obstacle forapplicants that wants to protect a very specificproduct or service but faces a registration coveringthe class heading. However, a partial non-usecancellation action seems to be the perfectsolution for this matter, since this will allow theapplicant to force the defendant (owner of theregistration) to demonstrate the use of theproducts or services that the trademark is actuallybeing used for. As a result, the registration willbe limited making it easier for the marks tocoexist if in fact they do not cover overlappinggoods or services.

Although the proposal of the new law includespositive changes, such as the implementationof the use of technology in processes related topractice, unfortunately the points discussedabove, among many others have to be reviewedsince the same cannot lose sight of what themain purpose of the Industrial Property Lawshould be: protect the interests of innovators,creators, and holders of IP rights.

ContactUhthoff, Gomez Vega& Uhthoff, S.C.Hamburgo 260 Col.Juárez 06600, Mexico CityTel: 52 (55) 55 33 50 60

uhthoff, gomez vega & uhthoff, s.c.

www.uhthoff.com.mx

uhthofflawmx @uhthofflawmxuhthoff, gómez vega & uhthoff, s.c.

FROM A start-up TO A COMPANY WITH YEARS IN THE MARKET, YOU WILL FIND SOLUTIONS TO YOUR LEGAL

NEEDS IN UHTHOFF, GÓMEZ VEGA & Uhthoff.

Disclosure: The discussionof this matter is stilldeveloping but actualchanges have beensuspended until furthernotice due to the currentsituation in Mexicoregarding the Coronaviruspandemic. Since thisarticle was redactedbefore the developmentof this situation, changesmay have occurred.

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the natural person. The evidence in this caseproves that Michael Jordan's claim that "乔丹"meets all three factors.

Although the Supreme Court's ruling focusedon trademarks in only ten cases, it found that theuse of Jordan's trademark infringed on the rightof use of Jordan's name. This ruling has had asignificant impact on Qiaodan Sports. As early as2011, Qiaodan Sports applied to be a listedcompany and it was approved by authority, andQiaodan Sports planned to be essentially listedat the end of the following March. However, dueto the lawsuit with Michael Jordan, it had to putthe company's plans to be listed "on hold".Qiaodan Sports is also aware of the legal risksassociated with the use of 乔丹. So, all Chinesecompanies should learn from this case and notrisk their long-term development by trying touse a trademark as a "free rider".

Michael Jordan also issued a statement. He saidhe was pleased to see that the Supreme People'sCourt has recognized his right to protect hisname in the decision against Qiaodan Sports. Healso said he respects Chinese law and expectsthe court in Shanghai to rule on the pendingpersonal name infringement case.

Through this case, many ordinary people inChina will also know that the “乔丹” sneakers

they bought had nothing to do with MichaelJordan. The case is a vivid lesson in intellectualproperty law and a reflection of China's responsibleattitude toward intellectual property protection.

ContactUnitalen Tel: 86-10-59208921Fax: 86-10- 85110965lei.zhao@unitalen.com

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trademarks registered by Qiaodan Sports in Chinawill cause the public to misunderstand the sourceof the product and disturb the normal marketorder. Accordingly, Jordan initiated trademarkinvalidation actions against Qiaodan trademarksregistered by Qiaodan Sports.

Qiaodan Sports argued that Jordan's lastname is English character “Jordan”, which is quitedifferent from the Chinese translation QIAODAN“乔丹”, and that JORDAN is a common surnamein English-speaking countries including theUnited States. Qiaodan Sports further argued thatalthough Jordan has a high social and personalprofile, it does not mean that Jordan has privilegeto exclude other entities from using this translationof a common English last name as a trademark.

Jordan previously lost his action in both firstand second instances. After the failure of thesecond instance, he applied to the SupremeCourt for a retrial, requesting that the SupremeCourt revoke the judgment of the first and secondinstances, and order the trademark review andadjudication board to make a new ruling on thedisputed trademark. The main grounds were:1. There was enough new evidence to

overturn the facts found in the secondinstance. After the second instance,Chinanews.com jointly launched an onlinesurvey with Digital 100, a market researchcompany. Based on the online surveyresults, it was enough to overturn themisconceptions of the trademark reviewand adjudication board and the first andsecond instance courts that "both partieshave formed their own consumer groupsand market cognition respectively".

2. In the first and second instance, thejudgment denied the correspondingrelationship between "Jordan" and Chinesetranslation "乔丹", which was a wrong “in fact” determination.

After hearing the case, the Supreme Courtheld that the judgments of the first and secondinstance had applied the wrong recognition in

ascertaining both the facts and the applicationof the law, and accordingly they should berevoked.

The supreme people's court accordinglymade the following final judgment:1. To revoke the administrative judgment

No. 1575 of the Beijing High People's Court(2015).

2. To revoke the administrative judgment No. 9172 of Beijing No. 1 IntermediatePeople's Court (2014).

3. To revoke the decision of No. 052424 [2014]of the Trademark Review and AdjudicationBoard of the state administration forindustry and commerce on the trademarkdispute of "qiaodaitou" no. 6020578.

4. The State Intellectual Property Office shallmake a new ruling on the trademark"+device" No. 6020578.According to this decision, the "乔丹+device "

trademark No.6020578 in class 25 on “clothing,shoes, hats and socks” shall be removed. Frombeing repeatedly refuted to final victory, Jordanwon on the basis of the market's perception ofhimself and his achievements.

Concerning the standards and conditions forthe protection of prior right of personal name intrademark administrative disputes, it has beenunclear in China's judicial practice. However, theSupreme Court's decision on the series of casesclearly ruled that Jordan has the right to namethe Chinese translation "乔丹".

According to the judgment of the SupremeCourt, Article 31 of the Chinese Trademark Lawstipulates that "trademark applications shall notharm the prior right of another"; thus, a naturalperson may seek the right to protect a specificname provided there is conformity with thefollowing three conditions: first, the specificname that has certain popularity in China, and isknown by the relevant public; secondly, therelevant public uses the specific name to referto the natural person; third, the specific namehas established a stable correspondence with

This rulinghas had asignificantimpact onQiaodanSports.

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The subject mark registered by Qiaodan Sports.

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Such state of affairs allowed taking a numberof measures and coming to the followingconclusions:• Firstly, if the right holder does not use the

designation, then in case of registration anduse of the trademark by another person,there is no risk of misleading the consumer.

• Secondly, in accordance with paragraph 1 ofArticle 1486 of the Civil Code of the RussianFederation: “The legal protection of atrademark may be terminated prior to expiryin relation to all goods or part of goods, forthe individualization of which the trademarkis registered due to non-use of thetrademark continuously for three years.”Consequently, if the conditions described inthe legislation are fulfilled, it is possible toterminate the legal protection of“intervening” trademarks.Thus, in order Zuykov and partners client has

the opportunity to register the trademarks“METROPOLIS” and “МЕТРОПОЛИС” in 36, 39 and 41 classes, it was necessary to contactthe competent authorities with a request toinvalidate the legal protection of unused meansof individualization and then file applications forregistration of trademarks in relation to thecompany Kubik.

The situation was difficult as Zuykov andpartners filed similar court case three years agofor the same client, Kubik LLC, to the samedefender. But three years ago, the claim wasrefused as Kubik dint present enough evidencesto show its interest to cancel earlier trademark.

After analyzing the situation Zuykov andpartners filed a lawsuit with the court of earlytermination of the legal protection of trademarksdue to its non-use. Having examined the adduced

evidence and the facts of the case, the judicialauthorities noted the following circumstances:• The plaintiff leases the premises of the

Metropolis shopping center and providesservices similar to those that are carried outby the owners of registered marks, as well ashe also has the same market and a circle ofcustomers with the defendants.

• Kubik is interested in obtaining a certificateof protection and in the use of the contestedmark, which is confirmed by filing anapplication for registration of the trademark.

• Among other issues, Kubik is also anadministrator of metropolis.moscow.ru and

RésuméSergey Zuykov Sergey has been working in the field of intellectual property for more than 20 years. He is a patent attorney of theRussian Federation and a Eurasian patentattorney. Since 2004, he has been actingas the General Director of Zuykov andpartners, which provides industrialproperty protection services. In 2018, thecompany was included in the nationalrating of the law firms “Pravo.ru-300.”Sergey Zuykov is a member of theinternational associations: INTA, AIPLA,AUTM, ECTA, ITMA, MARQUES, PTMG,and ABA. In 2016, he was appointed VicePresident of the Union of PatentAttorneys and Specialists, whosemembers are more than 100 patentattorneys of the Russian Federation.

Theexclusiverights of theowner of aregistereddesignationare ofabsolutecharacter.

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The legal norms of most jurisdictionsprohibit the registration of identical orconfusingly similar trademarks in relation

to homogeneous goods or services.The Russian Federation is one of such

jurisdictions. So, according to paragraph 6 ofArticle 1483 of the Civil Code of the RussianFederation:

“There is no way to register designations thatare identical or confusingly similar to:1) the trademarks of other persons that

are declared for registration in respect ofhomogeneous goods and have an earlierpriority, if an application for officialregistration of a trademark has not beenrevoked, recognized as revoked or nodecision has been made to refuse officialregistration;

2) the trademarks of other persons that areprotected on the territory of the RussianFederation, including in accordance withthe international agreement of the RussianFederation, with respect to homogeneousgoods and having an earlier priority;

3) the trademarks of other persons that arerecognized in the manner established bythe Civil Code as well-known trademarksin the Russian Federation, in respect ofhomogeneous goods from the date earlier than the priority of the claimeddesignation.”

These restrictions are intended to protect theinterests of consumers and trademark owners.As it is known, the exclusive rights of the ownerof a registered designation are of absolutecharacter. In other words, as a general rule, thepossibility of using the trademark by other personswithout permission of the right holder is excluded.Thus, if a similar trademark is registered toanother person and is used in relation to similargoods, this will inevitably lead to a conflict. Inthis case it is also obvious the necessity to

protect the interests of consumers. The modernmarket of goods and services, despite its inherentdiversity, is filled with homogeneous goods. Thebuyers are practically unable to distinguish the products that have lack of any means ofindividualization.

In this regard, such designations acquirespecial meaning and allow the consumers tosingle out the product they like and identify itwith the manufacturer. If the trademark belongsto several right holders, it will become difficultfor the consumer to obtain reliable informationabout the manufacturer of the given product.

Despite the propriety of the restrictionsdescribed above, in some cases an entrepreneur’sdesire to register a trademark identical toalready protected one can be legitimate andnon-malicious. This conclusion was reached bylawyers of Zuykov and partners who faced intheir own practice with the registration of atrademark identical to a number of designationsregistered on the territory of the RussianFederation.

The Russian company Kubik, the owner of theMetropolis Shopping Center in Moscow, appliedto Zuykov and partners for legal assistance inregistering a trademark. In 2014, representativesof Kubik filed with Rospatent applications for theregistration of the trademarks “METROPOLIS”and “МЕТРОПОЛИС” in Cyrillic in relation toservices of 36, 39 and 41 classes.

Later on, it became clear that several companiesown the rights to identical designations that areregistered in relation to similar classes of services.However, it is worth noting that the existence ofa valid certificate of protection does not alwaysmean the use of means of individualization. Forthis reason, the patent attorneys of Zuykov andpartners decided to clarify information on theuse of the registered trademarks. As a result,reasons to believe that these companies do notuse their designations appeared.

Invalidation of a trademark as a prerequisite for registration ofidentical trademark in relationto similar goods and services

Sergey Zuykov of Zuykov and partners discusses a recent invalidation casethat his firm litigated in the Russian courts.

Sergey Zuykov

RUSSIA

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IP SERVICES IN RUSSIA, UKRAINE, BELARUS,KAZAKHSTAN & OTHER CIS COUNTRIES

Russia129090, Russia, Moscow,

Grokholskiy per., d. 28, 2nd floorTel+Fax: + 7 (495) 775-16-37

e-mail: info@zuykov.com

Belarus220004, Republic of Belarus, Minsk,

23/1 Pobediteley AvenueTel+Fax: +375 17 204-16-37

e-mail: bel@zuykov.com

Kazakhstan050043, Kazakhstan, Almaty,28 Ryskulbekova Str., Block 4,

10th Floor, Suite 33,Tel+Fax: +7 727 312-16-37

e-mail: kz@zuykov.com

Ukraine01135, Ukraine, Kiev,

25 Chornovola Str., Suite 168Tel+Fax: +38 044 501-16-37

e-mail: ua@zuykov.com

PATENTSIP LITIGATION

TRADEMARKS AGREEMENTS

PROTECTING TWO PARTS OF THE WHOLE: DATA AND RIGHT

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metropolis.center.ru domain names, in whichthe verbal element is confusingly similar tothe claimed trademarks.

• Paragraph 3 of Article 1486 of the Civil Codeof the Russian Federation puts the burden ofproof on the use of a trademark on the rightholder. The defendants did not appear at thehearings despite the notifications sent tothem accordingly, they did not providestatements of defense and they did notdispute the position of the plaintiff.As a result, thanks to the well-presented

evidences Zuykov and partners lawyers managedto convince the court in the plaintiff’s interest toregister the disputed designation and to confirmKubik intentions to use the trademarks afterreceiving of the legal protection.

Based on the results of the statement ofclaims consideration, the courts made a numberof decisions, according to which:• the stated requirements were partially

satisfied, and the legal protection of thetrademark owned by LLC CompanyMetropolis in relation to the services of 36 class was early terminated due to non-use.

• Fully satisfied the plaintiff’s claims to thetrademark of the defendant LLC Tritonregarding early termination of the legalprotection of the trademark in relation to all services of 39 and 41 classes due to itsnon-use.Thus, the court satisfied all the actions brought,

except the claims to the trademark Metropolis,the right holder of which was LLC CompanyMetropolis LLC, located in the Kurgan city. Thevalidity of the indicated trademarks was cancelledin relation to services of 36 class due to theabsence of evidence of its use.

The defender did not agree with the positionof the trial court and tried to appeal the decisionof the Presidium of Intellectual Property Court.In support of their position, representatives ofdefender - Company Metropolis LLC stated thatthe court findings did not match the actualcircumstances and the evidences of the case.

In the response submitted to the appeal thelawyers of Zuykov and partners highlighted thefollowing arguments in the support of theplaintiff’s position:• The arguments of the defendant’s cassation

appeal are directed to the reassessing of theevidence and cannot serve as a ground forcancellation of the trial court decision.

• The argument of LLC Company Metropolis onthe discrepancy between the findings of thecourt and the factual circumstances of thecase is not valid.During the trial, Zuykov and partners lawyers

reasoned the claimed arguments in detail and

convinced the appellate court in their innocence.In this connection, the Presidium of the IntellectualProperty Rights Court concluded that there wereno grounds for satisfying the cassation appeal andupheld the decision of the trial court.

The described example of judicial practiceallows drawing a number of valuable conclusions:• The intention of a person to register a

trademark that is identical to the existingmarks is not always an act of unfaircompetition. It is quite probable that anapplicant or a designer of the designationdoes not know about the registered similarmeans of individualization nor has reasons to believe that there is no risk of thedesignations confusion.

• As a general rule, a prohibition to registeridentical trademarks for its use with respectto homogeneous goods is legislatively fixed.However, there are exceptions to this rule.One of such exceptions can be consideredthe case when the registered trademark has not been used for a long period of time.A person, who wants to register an identicaldesignation and takes a well-definedsequence of steps in the time following will still have a possibility to register suchtrademark.

• In order the applicant has a possibility toregister a trademark identical to the alreadyprotected one, at first instance he will needto achieve recognition of the existing legalprotection as invalid.

• On the territory of the Russian Federation,the validity of the certificate of protection on a trademark may be terminated; due tonon-use of the registered means ofindividualization for a three years period.

• The official recognition of the trademarkregistration as invalid by a state authoritygives an opportunity to file an application forregistration of an identical designation,which is planned to be used in relation tosimilar goods or services and obtain acertificate of protection.

Thesituationwas difficultas Zuykovand partnersfiled similarcourt casethree yearsago for thesame client.

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ContactZuykov and partners LLC Mail address: Russia, 129110Moscow, P.O. Box 165Office: Russia, 129090 Moscow,Grokholskiy per., d. 28, 2nd floorTel: +7-495-775-16-37www.zuykov.com

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worse; because his mark registration could notbe canceled in all hypothesis of partial use,when he could be using his mark in relation withonly one single product or service and his markregistration covers as it is usual, a whole Niceclass, a long and exhausting list of products orservices, or very generic and undeterminedcategories of products or services like “machines”or “telecommunications”.

This lack of an efficient way for limiting atrademark registration granted in relation withunfairly wide or undetermined categories ofproducts or services has an adverse impact tothe market health and fair competition and actsagainst the very nature of trademarks asdistinctive signs, which essential function are todistinguish products or services from oneentrepreneur from those of others in the marketand to warrant the source and characteristics ofsuch products or services. In other words, atrademark that is not being used in the market inrelation with some products or services is notacting as a distinctive sign for those but isinstead unfairly trapped as an instrument ofmonopolistic and anticompetitive practices.

Thus, there were and there is an evidentagreement between most of trademarkpractitioners in relation with the need foreffective mechanisms of quickly removingnon-used or limiting partially used marksfrom trademark registers.

Some more than two years ago we discussedabout a modification approved in relation to theIP Law, that was proposed to unblock thetrademark registry from all those such trademarkregistrations registered in relation to long orgeneric products or services descriptions evenand were used for one or a few ones.

However, the magical measure we found togive solution to this cluttering, included inthe modifications to the IP Law in 2018, wasthe declaration of “real and effective use”,

and the practice is that to this date thisdeclaration has served a nothing or has had a little impact for unlocking the registry.

The reasons for this ineffectiveness of the so-called declaration of real and effective forclearing the registry are various and in ouropinion were quite obvious. We can mentionfirstly that the term “real and effective use” is notclearly delimited, leaving the trademark ownersthe liberty to determine when their marks arehaving such “real and effective use” to thendecide to file a use declaration, which we knowcan freely include any symbolic or token use atthe election of the trademark owner and,secondly, as happened before with the thenalready existent and symbolic declaration of userequired for a trademark registration renewal,the fact that this declaration have no rule aboutthe need of proving actual use of the mark

RésumésVictor RamirezVictor joined the firm in 1999 becoming a partner in 2020. Victor’s work focusesmostly on trademark availabilitysearches, filing and prosecution. He isalso experienced on oppositions andtrademark litigation (invalidity, caducityand enforcement) at the MexicanTrademark Office.

Carlos Reyes Carlos joined OLIVARES in October 2008.His current practice in the firm is intrademark prosecution, providing legaladvice relating trademark Law and theprotection of trademarks, respondingsubstantive examination refusals andpreparing oppositions.

Only a fewtrademarkregistrationsin Mexicocover theproducts orservicesthey areactuallyused for.

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Differently from other jurisdictions, andeven if some rights are granted to thefirst user of a trademark, Mexico has,

as general rule, a “first-to-file” system, wheretrademark protection is granted on a first comefirst serve basis. This approach implies that anapplicant does not need to prove trademark usein regard to any product or services for obtaininga trademark registration, which is not per sepernicious, unless this absence of need to proveuse is linked to a system that does not providewith efficient and cost effective mechanisms tocut down unduly wide claims like partial non-usecancellation actions. In this regard, we would dareto affirm that only a few trademark registrationsin Mexico cover the products or services (oreven a clear sub-category of products or services)they are actually used for, and that this fact iscausing a real blockage at Mexican registry, wereis more and more difficult to obtain protectionfor a trademark through its registration.

Moreover, in the great majority of cases aMexican trademark registration covers a long listof products/services or the entire heading of aninternational class, or even worse, having begunits days covering “food and its ingredients” or “rawmaterials” in a former national class, it has beengenerously reclassified in several internationalclasses for covering almost all products or servicessomeone could imagine.

Also, the Mexican Trademark registry showsthat most of the trademark registrations havebeen historically granted in relation with entireand quite undetermined categories of productsor services like for example “pharmaceuticalproducts”, “machines and machine tools”, “scientificapparatus”, “chemicals for use in the industry”,“hand tools”, “printed matter”, “alcoholic beverages”,“business management”, “financial affairs”,“installation services”, “telecommunications”,“transport”, “treatment of materials”, “sporting andcultural activities”.

This is, a trademark registration system thatdoes not require applicants to prove any use toobtain such an exclusive right of use and difficultthe marks’ cancellation when not used or doesnot provide for partial non-use cancellationactions, encourages the applicants to claimgoods/services in more classes than neededand, also, to go for a wider range of goods/services in each class, including those that theyare not even likely to use in the future.

We know that a continued increased volumeof registered trademarks is a good sign of thegood health of the economy and commerce,but affects the business in case the registrationsystem does not provide with fast and efficientways of cleaning the registry from those marksthat are not being used at all or are being used fora few specific products/services while registeredin relation with wide or generic categories ofproducts/services.

These trademark blocking rights increase thecosts of protection by increasing the effortsrequired to obtain exclusive rights of use overnew distinctive signs. That is derived on analways increased likelihood of trespassing overan earlier trademark right, including the need ofmore accurate clearance searches, respondingoppositions or office actions based on priortrademark rights that in several cases are notactually being used on related products orservices but that however cover wide lists ofproducts/services that overlap them.

No need to say that the earlier trademarkholder is sat on a comfortable position thatmakes it rare and difficult to obtain from him a reasonable coexistence agreement or a letterof consent. That is because he does not needtoo much legal advice to know that the newlyarrived would have to file against him a time andmoney costly non-use cancellation action, thatcan last 4 to 6 years, with two appeals available,in case the earlier mark is not used at all, or

Why we urgently needpartial cancellationactions in Mexico

Victor Ramirez and Carlos Reyes of OLIVARES look at the substantivechanges that need to be adopted by Mexican IP law.

Victor Ramirez

Carlos Reyes

CANCELLATION

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A continuedincreasedvolume ofregisteredtrademarksis a goodsign of thegood healthof theeconomy.

”

“CANCELLATION

makes possible to unprincipled trademark ownersto file declarations of “real and effective use” whenthere is no trademark use at all.

On the other hand, considering that most oftrademark registrations - as mentioned before -are filed in relation with generic –not clearlydetermined- categories of products or services,the lack of a clear rule makes feasible for thetrademark owners to file a declaration of “realand effective use” in relation with wide andundetermined categories of products or services,like for example “pharmaceutical products”,maintaining the protection of the mark inrelation with all that can be considered as apharmaceutical products while using it for e.g. ageneric sickness medicine, or to declaretrademark use for “machines and machinetools”, while using the mark for a specificvacuum cleaner, or in relation with “chemicalsfor use in the industry” while the mark is notused but for only a very specialized solderingchemical, or for “alcoholic beverages” whileusing the mark for only a D.O.C. wine, or inrelation with such a generic and undetermineddescriptions as “telecommunications”, “transport”or “treatment of materials”.

Considering that we already have a long andcostly - with a procedure that has almost thesame costs and timing of an invalidation action- non-use cancellation action, not having non-use partial cancellation actions is an urgentneed to clear our trademark registry and toavoid that a trademark registration could beused for monopolistic and anti-competitive

practices and as a barrier to trade, not havingany or having a very limited factual effect in themarket, instead of being an important businesstool, a distinctive sign serving to identify goodsand services from other of other origins.

It is important to mention that on November2019, two relevant reform acts have beenpresented before the Mexican senate, one ofthem addressed to amend the current IndustrialProperty Law (IPL) and the other to fully enact anew statutory IPL.

The proposals have been presented bydifferent political parties and intend to both complywith recent international treaties subscribed byMexico, such as CPTPP and the USMCA but alsoimprove and update the current IP legal framework.

In relation with trademark Law substantivechances, among other, we expect the long-awaited partial non-use cancellation to be finallyregulated.

ContactOLIVARESPedro Luis Ogazón 17, Col. San Ángel,Ciudad de México 01000Tel: +52 (55) 5322 3000Fax: +52 (55) 5322 3001https://www.olivares.mx

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“WE DO IP RIGHT.”

Professional IP & legal practice in China

China

public.relation@hongfanglaw.comwww.hongfanglaw.com

As one of the leadingChina-focused practices,the team was founded withprofessionals dedicated topracticing intellectualproperty for more than decadessince the late 1990s.

We keep our commitment toclients and stakeholders as ourtop priority, and with ourhigh-standard service quality,we devote ourselves to the besttailor-made solutions for clients.

We are proud of practicing inthe IP industry, with ourprofessionalism and passion.

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THE ASIA-PACIFIC TRADEMARK RANKINGS 2020

Throughout the next few pages, you will view acomprehensive list of the 10 most well-respected law firmsfrom Asia, in alphabetical country and company order. Ourfocused list is derived from a multifaceted methodology,which uses months of industry research and feedback fromour readers, clients, and esteemed connections around theworld. All firms are ranked top 10 in their jurisdiction but aredisplayed alphabetically to avoid bias.

SPACE TO FILL

An Tian Zhang & PartnersBaker McKenzieCCPIT Patent and Trademark Law OfficeChang Tsi & PartnersCorner Stone & Partners Hogan LovellsHong Fang LawRouseUnitalen Attorneys at LawWanhuida Peksung IP Group

China

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Anderson Mori & TomotsuneAsamura Patent OfficeKubotaMori Hamada & MatsumotoNagashima Ohno & TsunematsuNakamura & PartnersNishimura & AsahiSugimura & PartnersTMI AssociatesYuasa and Hara

Japan

YOUR TRUSTEDIP PARTNERIN JAPANSINCE 1891

PatentsTrademarks and DesignCopyrightIP ResearchCustoms Detention and SeizuresIntellectual Property ValuationLitigationLicensing

Tennoz Central Tower, 2-2-24,Higashi-Shinagawa, Shinagawa-ku,Tokyo 140-0002, Japan

T: +81 3 5715 8651F: +81 3 5460 6310E: Asamura@asamura.jpW: www.asamura.jp/en

Chooi & Company + Cheang & AriffHenry Goh & CoMarqonsultRahmat Lim & PartnersRaja, Darryl & LohShearn Delamore & CoSkrineWong & Partners (Baker McKenzie)Wong Jin Nee & TeoZaid Ibrahim & Co

Malaysia

AJ ParkBaldwins Intellectual PropertyBell GullyBuddle FindlayEllis TerryHenry Hughes Intellectual PropertyHudson Gavin MartinJames & WellsPotter IP Simpson Grierson

New Zealand

Rankings: The Americas,

The Middle East & AfricaIn May/June 2020 issue of

The Trademark Lawyer magazine

To advertise contactkatie@ctclegalmedia.com

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62 THE TRADEMARK LAWYER CTC Legal Media

Rankings: The Americas,

The Middle East & AfricaIn Issue 4 of

The Trademark Lawyer Magazine

THE ASIA-PACIFIC TRADEMARK RANKINGS 2020

Anand & AnandChadha & Chadha Inttl AdvocareK & S PartnersLexOrbis Lall & SethiRahul Chaudhry & PartnersRemfry & SagarR K Dewan & CoS. Majumdar & Co

India

SPACE TO FILL

AcemarkAm Badar & PartnersAMR PartnershipBiro Oktroi RoossenoGeorge Widjojo & PartnersHadiputranto Hadinoto & PartnersJanuar Jahja & PartnersK&K AdvocatesRouse (in association with Suryomurcito & Co)SKC Law

Indonesia

Baker McKenzieDeaconsDLA PiperHogan LovellsRobin Bridge & John Liu RouseSpruson & FergusonVivien ChenWenpingWilkinson & Grist

Hong Kong

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Deep & Far Attorneys-at-LawEigerFormosa TransnationalGiant GroupLee and Li Attorneys-at-LawSaint Island International Patent & Law OfficesTai E International Patent & Law OfficeTIPLOTsai Lee & ChenWinkler Partners

Taiwan

Annam IP & LawBaker McKenzieD&N InternationalGintasset Hogan LovellsLê & LêPham & AssociatesTilleke & GibbinsVision & AssociatesWinco

Vietnam

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64 THE TRADEMARK LAWYER CTC Legal Media

THE ASIA-PACIFIC TRADEMARK RANKINGS 2020

Abu-Ghazaleh Intellectual PropertyAbsam IPAhmed Ali Dewan & CoAli & AssociatesBharucha & CoCodex & CoRaza & AssociatesUnited Trademark & Patent ServicesVellani & VellaniZafar & Associates

Pakistan

ACCRALAWBaranda & AssociatesBengzon Negre UntalanBucoy Poblador & AssociatesCruz Marcelo & TenefranciaFederis & AssociatesPoblador Bautista & ReyesQuisumbing TorresRomulo Mabanta Buenaventura Sayoc & De Los AngelesSyCip Salazar Hernandez & Gatmaitan

Philippines

Allen & GledhillAmica LawBaker McKenzie Wong & LeowBird & Bird ATMDDonaldson & BurkinshawDrew & NapierElla CheongGateway Law CorporationLee & LeeRavindran Associates

Singapore

Bae Kim & LeeCho & PartnersFirstLaw PCHanyang International Patent & Law FirmKim & ChangLee & KoLee International IP & Law GroupShin & KimYoon & YangYP Lee Mock & Partners

South Korea

Our Intellectual Property Practice is renowned and is one of the most extensive in the region. Tapping into our network, we are able to assemble a team that can deliver effective services across the region, from China and Hong Kong to Australia, India and beyond. Our team members have been listed in Chambers and

and the recent

Mr Max Ng as a recommended and leading lawyer in the category of Intellectual Property: Domestic Litigation,

Intellectual Property, Local Firms. In addition to patent and trade mark agency services, Gateway Law primarily advises our clients on matters relating the protection and enforcement of their intellectual property rights, in Singapore, Malaysia, Vietnam and across the region.

Gateway Law Corporation39 Robinson Road | #20 – 03 Robinson Point | Singapore 068911Telephone: +65 6221 6360 | Direct: +65 6221 7311 | Facsimile: +65 6221 6375Email: sg@gateway-law.com | Website: www.gateway-law.com

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To enter your firm in the Directory of Services section please email katie@ctclegalmedia.com

Directory of Services

GUATEMALA

Lexincorp IP, S.A.Is a leading Central American Law firm, which hasspecialized in providing legal advisory and support in IP, and other legal areas, to our domestic andinternational clients, for more than 40 years. Ourregional practice has evolved to integrate processes,services, knowledge, values and solutions, providinghigh quality results, operating as a single, fullyintegrated firm, with over 80 lawyers, ready to serveyour needs.

Address: 9a Avenida 14-78 zona 10, Guatemala, Guatemala, C.A.

Tel/Fax: (502) 2246 3000Website: www.lexincorp.comEmail: gonzalomenendez@lexincorp.com

groca@lexincorp.com Contact: Mr Gonzalo Menéndez G., Ms Gina Roca

O’Conor & PowerO’Conor & Power’s trademarks and patent practicegroup has wide experience in handling portfolios fordomestic and international companies in Argentina andother Latin American countries. Our services in theregion include searches, filing and registrationstrategies, prosecution, opposition, renewals,settlement negotiations, litigation, enforcement andanti-counterfeiting procedures, recordal of assignments,licences, registration with the National CustomAdministration and general counselling in IP matters.

Address: San Martín 663, 9th Floor,(C1004AAM) Buenos Aires, Argentina

Tel/Fax: 005411 4311-2740/005411 5368-7192/3Website: www.oconorpower.com.arEmail: ocp@oconorpower.com.arContact: Santiago R. O’Conor, Managing PartnerE-mail: soc@oconorpower.com.ar

ARGENTINA

Vera Abogados Asociados S.A.Vera Abogados was founded in 1972 to attend thelegal needs of the business sector in the area of IP.Now they provide their services to all fields of thelaw. The legal study is a reference in the Andeancommunity, and they are part of internationalassociations such as INTA, ASIPI, ABPI and ASPI.They were ranked in 2018 by Leaders League as oneof the best legal studies of Colombia and is a partnerof PRAGMA, International Network of Law Firms.

Address: Calle 70 A No. 11-43, Bogotá, Colombia.Av. 6 de diciembre y la nina, Multicentro, Of: 603, Quito, Ecuador.

Tel: +57 (1) 317 6650 / +57 (1) 312 7928Website: www.veraabogados.comEmail: info@veraabogados.comContact: Jorge E. Vera Vargas / Carolina Vera Matiz /

Natalia Vera Matiz

COLOMBIA

Caribbean Trademark ServicesCaribbean Trademark Services, founded in 1981, by George C.J. Moore, provides a single contact sourceof protecting trademarks and patents in the Caribbean.Covering 29 countries, including Belize, Bermuda, CostaRica and Cuba; a bilingual staff provides IP servicestailored to the diverse jurisdictions. Experienced staffmembers and volume transactions, services are efficientmaking our single contact, long established source forthe Caribbean most cost effective.

Address: 2855 PGA Boulevard, Palm Beach Gardens,Florida 33410, USA

Tel/Fax: +1 561 833-9000 F: +1 561 833-9990Anguilla: Calvin Lake Bldg., Ste 9, Valley, Anguilla Tel: +1 264 462-9000Website: www.CaribbeanTrademarks.comEmail: IP@CaribbeanTrademarks.comContact: George C.J. Moore, P.A.

CARIBBEAN

Traplová Hakr KubátLaw and Patent OfficesTRAPLOVÁ HAKR KUBÁT is a well based IP boutiquewith a long-term tradition in representing both theCzech and foreign clients in the patent, utility models,industrial designs, trademarks, copyright, unfaircompetition and anti-counterfeiting issues.

Address: P. O. Box 38, 170 04 Prague 74Přístavní 24, 170 00 Prague 7

Tel: + 420 266 772 100Fax: + 420 266 710 174Website: www.thk.cz Email: thk@thk.czContact: Jana Traplová, Attorney at Law

Tomáš Pavlica, European Patent Attorney

CZECH REPUBLICCYPRUS

Christodoulos G. Vassiliades & Co LLC The Firm employs over 200 professionals, comprisingof qualified lawyers, legal and tax consultants,paralegals and accountants, all dedicated to theprovision of services with professionalism, efficiencyand integrity. We offer a fully integrated IP service,providing advice and professional support in relationto copyright, trademarks, patents, designs, domainnames, as well as unfair competition and protectionof other confidential information.

Address: 15, Agiou Pavlou Street, Ledra House, Agios Andreas, Nicosia 1105, Cyprus

Tel/Fax: +357 22 55 66 77Website: www.vasslaw.net Email: maria.kyriacou@vasslaw.net Contact: Maria H. Kyriacou

Cermak a spolČermák a spol. is a leading IP law firm in the CzechRepublic and Slovakia, providing services in all areasof IP law, including patents, trademarks, utility models,industrial designs, unfair competition and others. Wehave a qualified team of lawyers for both IP prosecutionand litigation including litigation in court. Our strengthsis a unique combination of experienced and qualifiedpatent attorneys and lawyers.

Address: Čermák a spol, Elišky Peškové 15150 00 Praha 5, Czech Republic.

Website: www.cermakaspol.com Email: intelprop@apk.cz

Contact: Dr. Karel Cermak - Managing PartnerDr. Andrea Kus Povazanova - Partner

CZECH REPUBLIC

Cabinet ChaillotYour IP boutique in France and EuropeOur services include filing and prosecution of patent,trademark and design applications, before the FrenchOffice, the European Patent Office and the EuropeanUnion Intellectual Property Office, prior searches,oppositions/cancellations, renewals, recordals,watching with the French and European Customadministrations, negociations.Founded in 1985, Cabinet Chaillot now has 8 officesin France.

Address: BP 74 – 92703 Colombes cedex, FranceVisiting: 16 avenue de l’Agent Sarre – 92700

Colombes, FranceTel/Fax: +33 1 4119 2777 / +33 1 4785 8449Website: www.chaillot.comEmail: cabinet@chaillot.comContacts: Denis Chaillot, Julie Desrois

FRANCE

To list your firm inthis section,please email

katie@ctclegalmedia.com

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Belonging to INTA Means… Connections with global brand owners

and intellectual property professionals

Reliable, in-depth legal resources

Benchmarking best practices and future trends

Leadership, volunteer, and professional development opportunities

+ Up to 30 percent member discount

on INTA’s live and online educational programs

Better TogetherBecome a member of the International Trademark Association

community and enjoy these exclusive benefits!

2020 Annual Meeting/Leadership MeetingNovember 2020

Visit www.inta.org for details.

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RUSSIA

Vakhnina and PartnersOne of the leading IP firms in Russia. Advising ourclients on all aspects of IP in Russia, Ukraine,ex-USSR countries and Baltic States. Using our owntrademark search engine. Services: Patents,trademarks, designs, utility models, copyright,litigation and enforcement. Members of Russian PAAssociation, INTA, AIPPI, LESI, ECTA, PTMG, GIPC.

Address: Bld. 6, Preobrazhenskaya Pl., Moscow,107061, Russia

Tel: +7-495-231-4840Fax: +7-495-231-4841Website: www.vakhnina.comEmail: ip@vakhnina.ruContact: Dr. Tatyana VAKHNINA

Dr. Alexey VAKHNIN

I N T E L L E C T U A L P R O P E R T Y P R O T E C T I O N

RUSSIA

To enter your firm in the Directory of Services section please email katie@ctclegalmedia.com

United Trademark & PatentServicesInternational Intellectual Property Attorneysspecialising in Trademarks, Patents, Designs,Copyrights, Domain Name Registration, Litigation &Enforcement services.

Address: 85 The Mall Road, Lahore 54000, PakistanTel: +92 42 36285588, +92 42 36285590,

+92 42 36285581, +92 42 36285584Fax: +92 42 36285585, +92 42 36285586,

+92 42 36285587Website: www.utmps.com & www.unitedip.comEmail: unitedtrademark@unitedtm.comContact: Yawar Irfan Khan, Hasan Irfan Khan

PAKISTAN

Pioneer Law Associates Pvt. Ltd. Pioneer Law was founded in 1982 and has beenproviding different IP services ranging from protectionof IP to enforcement and IP litigation. Our IPdepartment is headed by Ms. Anju Upreti Dhakal, anIP attorney with more than 23 years of experience.Through our understanding of the Nepalese markets,the institutional knowledge that we have acquiredover the years and our solution-oriented approach,we provide best legal services to our clients. We arealso members of APAA, INTA and AIPPI.

Address: Pioneer House, 246 Sahayog Marg,Anamnagar, Kathmandu, Nepal

Tel/Fax: +977-01- 5705340, 5707102Website: www.pioneerlaw.com Email: anju@pioneerlaw.com Contact: Ms. Anju Upreti Dhakal

NEPAL

Merida IP – The IP CompanyAn international legal firm focused on IntellectualProperty, Data Privacy Law, Sports Law andLitigation. Professionalism, personalisation and highquality services offered by specialists.

Address: Calle D, Mz. 1, No. 4, Educacion, Coyoacan, Mexico City, Mexico

Tel: +52 55 56080523+52 1 55 18230378

Website: www.merida-ip.com Email: jamerida@merida-ip.comContact: Jose Alberto Merida

MEXICO NIGERIA

S. P. A. AJIBADE & CO.S. P. A. Ajibade & Co., is a leading corporate andcommercial law firm established in 1967. The firmprovides cutting-edge services to both its local andmultinational clients in the areas of Dispute Resolution,Corporate Finance & Capital Markets, IntellectualProperty & Technology, Telecommunications, RealEstate & Succession, and Energy & Natural Resources.

Address: Suite 301, SPAACO House, 27A MacarthyStreet, Onikan, Lagos, Nigeria.

Tel: +234 1 4605091; +234 1 8118903060Fax: +234 1 4605092Website: www.spaajibade.comEmail: lagosoffice@spaajibade.comContact: John Onyido - Partner and Head of the IP,

Technology & Telecommunications DeptBolaji Gabari - Associate Partner, Abuja Office.

Deep & Far Attorneys-at-lawDeep & Far attorneys-at-law deal with all phases oflaws with a focus on IPRs, and represent someinternational giants, e.g. InterDigital, MPS, SchottGlas, Toyo Ink, Motorola, Cypress. The patentattorneys and patent engineers in Deep & Farnormally are generally graduated from the top fiveuniversities in this country. More informationregarding this firm could be found from the websiteabove-identified.

Address: 13 Fl., 27 Sec. 3, Chung San N. Rd.,Taipei 104, Taiwan

Tel: 886-2-25856688Fax: 886-2-25989900Website: www.deepnfar.com.tw Email: email@deepnfar.com.twContact: C.F. Tsai, Yu-Li Tsai

TAIWAN, ROC

Fenix LegalFenix Legal, a cost-efficient, fast and professionalPatent and Law firm, specialized in intellectualproperty in Europe, Sweden and Scandinavia. Ourconsultants are well known, experienced lawyers,European patent, trademark and design attorneys,business consultants, authorized mediators andbranding experts. We offer all services in the IP fieldincluding trademarks, patents, designs, disputeresolution, mediation, copyright, domain names, IPDue Diligence and business agreements.

Tel: +46 8 463 50 16Fax: +46 8 463 10 10Website: www.fenixlegal.euEmail: info@fenixlegal.euContacts: Ms Maria Zamkova

Mr Petter Rindforth

SWEDEN THAILAND

International Legal CounsellorsThailand Ltd. (ILCT) International Legal Counsellors Thailand Ltd. (“ILCT”)is a full-service law firm with over 50 years of history.ILCT was built under the vision to become a leadinglegal service provider. We aim to elevate bothdomestic and international markets whilst fullyproviding a one-stop legal assistance.

Tel: +66 (0) 2679 6005Fax: +66 (0) 2679 6041Website: http://www.ilct.co.th/ Email: ipgroup@ilct.co.th & law@ilct.co.thContact: Ms. Ratinuch Kawnachaimongkol

Ratinuchk@ilct.co.thMs. Juthajit Sriprasart Juthajits@ilct.co.th

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Directory of Services

D. P. Ahuja & Co.D. P. Ahuja & Co. is a dedicated full-serviceIntellectual Property firm. For the last 37 years, ourfirm has traditionally specialized in Patent andTrademark Prosecution and Litigation. We combinethe capabilities of 128 members, including 22Attorneys, 5 Litigating Counsel, 5 TechnicalAssociates, 14 Managers, 23 Paralegals, 9 ITProfessionals and support staff to provide fullyintegrated, high-quality legal and professionalservices in the area of Intellectual Property filings,prosecution and litigation.

Address: 14/2, Palm Avenue,Calcutta 700 019, India

Tel: +91 (33) 40177100Fax: +91 (33) 40088262Website: www.dpahuja.comEmail: info@dpahuja.com

INDIA

Chandrakant M Joshi Our law firm has been exclusively practicing IntellectualProperty Rights matters since 1968. Today, Mr. HiralChandrakant Joshi heads the law firm as the senior mostAttorney. It represents clientele spread over 35 countries.The law firm conducts search, undertakes registration,post-registration IP management strategies, IP valuation,infringement matters, domain name disputes and cyberlaw disputes of patents (including PCT applications),trademarks, industrial designs and copyrights.

Address: Solitaire - II, 7th Floor, Link Road,Malad (West), Mumbai - 400 064, India

Tel: +91 22 28886856 / 57 / 58 / 64Fax: +91 22 28886859 / 65 Website: www.cmjoshi.usEmail: mail@cmjoshi.com / mjoshi@cmjoshi.com /patents@cmjoshi.com / designs@cmjoshi.com /trademarks@cmjoshi.com / designs@cmjoshi.com

INDIA

Mehta & Mehta Associates Mehta & Mehta Associates (Gurgaon, INDIA) is a full-service boutique IP Law Firm, providing Filing,Prosecution and Litigation services in respect ofPatents (in different fields of science and engineering),Trade Marks, Designs and Copyright. The Firm assistsboth national and international clientele, from differentgeographical locations and backgrounds for all IPrelated contentious and non-contentious matters.

Address: Mehta & Mehta Associates, Mehta House,B-474, Sushant Lok-1, Sector-27,Gurgaon-122002, NCR, India

Tel: +91-124-410 8474, 410 8475Fax: +91-124-410 8476 Website: www.mehtaip.comEmail: mehta@mehtaip.comContacts: Dr. Ramesh Kr. Mehta, Founder

Ankush Mehta, Principal Attorney

INDIA INDIA

MEXICO

Goodrich Riquelme AsociadosOur staff of attorneys, engineers and computerspecialists help adapt foreign patent specifications andclaims to Mexican law, secure patent inventions andtrademark registrations and maintain them by handlingthe necessary renewals. Our computer system, whichis linked to the Mexican Patent and TrademarkDepartment, permits us to provide our clients with atimely notice of their intellectual property matters. Wealso prepare and register license agreements.

Address: Paseo de la Reforma 265, M2,Col. Y Del. Cuauhtemoc, 06500 Mexico, D.F.

Tel: (5255) 5533 0040Fax: (5255) 5207 3150Website: www.goodrichriquelme.comEmail: mailcentral@goodrichriquelme.comContact: Enrique Diaz Email: ediaz@goodrichriquelme.com

Gold Patents and FinancialServices (1992) Ltd. Gold Patents and Financial Services (1992) Ltd. is anintellectual property solution provider firm thatoperates in Israel as well as worldwide. We specializein providing evaluation and analyses of IP portfolios;prosecuting and drafting complex patent, design, andtrademark applications; freedom-to-operate, duediligence, patentability, validity and infringementopinions. We provide high quality services andsolutions that support our clients’ business goals anddeliver superior IP services in a timely and cost-effective manner. Address: 15 Yohanan Hasandlar St., Haifa 31251Tel/Fax: +972-48110007/ +972-46892283Website: www.gold-patent.co.il Email: office@gold-patent.co.il Contact: Marganit Goldraich

ISRAEL

To list your firm inthis section,please email

katie@ctclegalmedia.com

HONDURAS

BUFETE MEJIA & ASOCIADOSA full-service Intellectual Property law firm covering:Honduras and Central America offering a convenientand cost-effective regional service. The firm servicesinclude filing, prosecution, maintenance, enforcementand defense of all types of intellectual property.Furthermore, the firm has strong litigation andarbitration capabilities and is known for handlingcomplex litigation matters as well as infringement and anti-counterfeiting actions before all Courts,Administrative Offices and Customs authorities.

Tel: +504 25507744 / +1 (914) 4125719Fax: +1 (718) 7322118Website: www.bufetemejia.comEmail: info@bufetemejia.comContact: Ricardo Anibal Mejia Mejia

& Blanca Rebeca Mejia Lozano

GUATEMALA

Merida & AsociadosThe firm provides services throughout the range ofdifferent legal matters, specializing in the bankingindustry both nationally and internationally, businesslaw, banking law, trademarks and patents, litigation,notary law, litigation and arbitration. We are a verywell-known law firm for Intellectual Property inGuatemala. We serve several German institutions,including banks, and several German clients.

Address: 20 calle 12-51 “A” zona 10,Guatemala City, 01010, GuatemalaArmando Mérida, Section 019170,P.O. Box 02-5339, Miami, Florida,33102-5339, USA

Tel: (502) 2366 7427Website: http://www.meridayasociados.com.gt/enEmail: corporativo@meridayasociados.com.gt Contact: Armando Merida

TML Directory of Services Issue 3 2020 4pp RHS:Layout 1 6/5/20 12:17 Page 68

MEXICO

Industrial andIntellectual Property

Litigation

Licensing Enforcement

Entertainment and Sport Law

Copyrights

Enrique A. Diaz ediaz@goodrichriquelme.com (5255) 5525 1422

Jaime Delgado jdelgado@goodrichriquelme.com (5255) 5207 5324

Juan Carlos Suarez jcsuarez@goodrichriquelme.com (5255) 5207 9261

Guillermo Sosa gsosa@goodrichriquelme.com (5255) 5207 7561

Paseo de la Reforma 265, M2Col. y Del. Cuauhtemoc, 06500 Mexico, D.F.Tel. (5255) 5533 0040, Fax. (5255) 5207 3150

e-mail: mailcentral@goodrichriquelme.comwebsite: www.goodrichriquelme.com

70 THE TRADEMARK LAWYER CTC Legal Media

To enter your firm in the Directory of Services section please email katie@ctclegalmedia.com

Directory of Services

Pakharenko & PartnersPakharenko & Partners provides full IP service coveragein Ukraine, CIS countries and Baltic states and hasoffices in Kyiv and London. We pride ourselves on anexclusive expertise and experience in the fields of IPlaw, anti-counterfeiting and anti-piracy, pharmaceuticallaw, competition law, advertising and media law,corporate law, litigation and dispute resolution.

Address: P.O.Box 78, 03150 Kyiv, UkraineVisiting: Business Centre 'Olimpiysky',

72 Chervonoarmiyska Str., Kyiv 03150,Ukraine

Tel: +380(44) 593 96 93Fax: +380(44) 451 40 48Website: www.pakharenko.comEmail: pakharenko@pakharenko.kiev.uaContact: Antonina Pakharenko-Anderson

Alexander Pakharenko

UKRAINE

VIETNAM

ELITE LAW FIRMELITE LAW FIRM is born to provide professional andqualified legal services in the field of IntellectualProperty and Business Law in Vietnam as well as manycountries around the world such as Laos, Cambodia,Myanmar, Thailand,…. Standing ourselves at clientsituations helps us deeply understand customer’sbusiness thence giving the most effective solution withcost-saving to every legal problems that a customerencounters. Delivering success, effectiveness and safetyto our Clients is the ultimate goal of ELITE LAW FIRM.

Tel: (84-24) 37373051Fax: (84-24) 37373056Website: www.lawfirmelite.comEmail: info@lawfirmelite.comContact: Mr. Nguyen Tran Tuyen

VIETNAM

Pham & AssociatesEstablished in 1991, staffed by 110 professionalsincluding 14 lawyers and 34 IP attorneys,Pham & Associates is one of the largest legalpractices in Vietnam specialized in IP. The firm isone of the biggest filers of patents, trademarks andindustrial designs each year and has been renownedfor appeals, oppositions, court actions and handlingIP infringements. The firm also advises clients in all aspects of copyright law.

Tel: +84 24 3824 4852Fax: +84 24 3824 4853Website: www.pham.com.vnEmail: hanoi@pham.com.vnContact: Pham Vu Khanh Toan, Managing Partner

General DirectorTran Dzung Tien, Senior IP Consultant

UNITED KINGDOM

IP21 LimitedThe ip21 brand is a simple, modern derivation of“Intellectual Property Services for the 21st Century.”The firm’s founders set out to establish a boutique IP Firm that could advise its clients how best toprotect, enforce and exploit IP Assets to achievecompetitive advantage and peace of mind. A broadmix of experienced IP professionals are employed todeliver this commercially focused, holistic advice.

Tel: +44 (0)1603 457008Fax: +44 (0)1603 432527Website: www.ip21.comEmail: info@ip21.comContact: Melanie Harvey,

Senior Chartered Trade Mark Attorney(melanieharvey@ip21.com)Ian Bishop, Director and Patent Attorney(ianbishop@ip21.com)

TURKEY

Destek PatentWe are a multinational legal practice that hasprovided full range Intellectual Property servicesincluding trademarks, patents, designs, plant varietyprotection and more since 1983. With more than200 qualified in-house staff, including 50 patent andtrademark attorneys, we are able to assist domesticand international clients worldwide.

Address: Eclipse Business D Blok No:5, ISTANBULTel: +90 212 329 00 00Website: www.destekpatent.comEmail: global@destekpatent.comContact: Claudia Kaya

(claudia.kaya@destekpatent.com)Murat Bürkev(murat.burkev@destekpatent.com)Simay Akba(simay.akbas@destekpatent.com)

Young & ThompsonYoung & Thompson, established in 1903, is a fullservice intellectual property law firm focusing on U.S.patent and trademark prosecution of the highest qualitywhile maintaining costs at a moderate level. Young &Thompson has been recognized as an industry leaderfor innovation in new technologies and procedures,being among the first law firms adopting a paperlessworkplace, and co-developed an automated solution forcreating and executing all workflows.

Address: 209 Madison Street, Suite 500,Alexandria, VA 22314

Tel: 703-521-2297Fax: 703-685-0573Website: www.young-thompson.comEmail: embon@young-thompson.comContact: Andrew Patch

UNITED STATES

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Mladen Vukmir, ECTA Second Vice-President,explains how IP practice and law need to developand change in the years ahead

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