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LawyerTrademarkIssue 4 2020

GLOBAL REACH, LOCAL KNOWLEDGE

www.trademarklawyermagazine.com

The

Zhenkun Fu and Brenda Zhao, Senior Partners at Corner Stone & Partners, give a timely overviewof Chinese IP protection

IP Rights in theChinese Civil Code

Law firmRANKINGS

THE AMERICAS

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3D printing

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Sky v SkyKickPage 39

Design protectionPage 9

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CTC Legal Media THE TRADEMARK LAWYER

THE TRADEMARKLAWYERIssue 4 2020EditorMatt [email protected]

Publishing DirectorChris [email protected]

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Katie Kerr (Publishing Executive)[email protected]

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ISSN 2053-3810

LawyerTrademarkIssue 4 2020


www.trademarklawyermagazine.com

The

Zhenkun Fu and Brenda Zhao, Senior Partners

at Corner Stone & Partners, give a timely overview

of Chinese IP protection


Law firmRANKINGS

THE AMERICAS

MID

DLE-EAST, AFRIC

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3D printing

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CTC Legal Media



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We’ve been hearing a lot about China over the past few months.

Be it the continued unrest in Hong Kong, or the ongoing struggles

with a global pandemic that seems to have originated in the country,

the news hasn’t always been good. However, at least from an IP perspective, there

is tentative reason to be more upbeat. In recent years, China has made great strides

towards improving its IP protections, engaging with other jurisdictions and

multinational agencies and organizations to crack down on counterfeiting, and

strengthening the IP provisions of its own legal code.

So, for our Cover Story this issue,

Zhenkun Fu and Brenda Zhao, Senior

Partners at leading Chinese firm Corner

Stone & Partners, give us a very timely

overview how the Chinese Civil Code

currently protects IP rights.

We also have an introduction to the

rule of the descriptive fair use defense

in China, courtesy of Yakai Shi and

Lena Shen of Beijing Sanyou Intellectual

Property.

As always, we aim to give a truly

broad perspective within these pages,

and this issue is no exception. With articles

on everything from the trademark

implications of 3D printing, the importance of design protection, Certification

Trademarks in Africa, and the recent high-profile Sky v SkyKick decision, there

is truly something for everyone.

I hope you enjoy the issue.

Matt SeexEditor

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/

EDITO

R’S W

ELCO

ME

China has made great

strides towardsimproving

its IPprotections

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5CTC Legal Media THE TRADEMARK LAWYER

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30 Photobox’s Free Prints appicon found to infringe itscompetitor’s trademarkSean Ibbetson, Associate in the Brands, Designs &Copyright team at Bristows, discusses this recentHigh Court judgment.

34 Trademark issuesregarding 3D printing: A new dimension of IP infringementYashvardhan Rana, IP Lawyer at Inttl Advocare,discusses the far-reaching trademark implications ofthis revolutionary and fast-developing technology.

37 It’s all in the nameManisha Singh, Partner, and Gautam Kumar, SeniorAssociate, of LexOrbis examine the difficultiesinherent in trademarking names.

39 Is Sky the limit in the Davidversus Goliath trademarkbattle of the last decade?Hilda-Georgina Kwafo-Akoto of Mewburn Ellisexamines the potential implications of Sky v SkyKick.

42 KnowIt 2020 – Editor’s reportMatt Seex, Editor of The Trademark Lawyer, looks back at a thought-provoking and entertaining three-day live-stream event.

45 Protection and use ofCertification Trademarks in AfricaInês Tavares of Inventa International outlines howvarious African jurisdictions define and implementCertification Trademarks.

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

19

30

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4 THE TRADEMARK LAWYER CTC Legal Media

ContentsIssue 4 2020

19 New normal, old problemsNora Fowler, Senior Associate at EIP, looks attrademark protection in light of COVID-19.

21 Rankings: The Americas, Middle-East, AfricaTen of the best law firms from each of the topAmerican, Middle East and African jurisdictions,including the US, Canada, South Africa, and TheCaribbean.

16

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

7 NewsTrademark applications up in UKIPO annual report,Puma loses “Tokyo 2021” bid, and Trade Mark OwnersAssociation relaunched.

9 Trademarks and designs inuncertain timesThere has never been a better time to think abouttrademark and design protection. Rosie Burbidge,partner at Gunnercooke, explains why.

13 COVER STORY Provisionsconcerning IntellectualProperty Rights in theChinese Civil CodeZhenkun Fu and Brenda Zhao, Senior Partners atCorner Stone & Partners, give a timely overview ofChinese IP protection.

16 The descriptive fair usedefense for trademarkinfringement in ChinaYakai Shi and Lena Shen, Partner and Attorney-at-lawat Beijing Sanyou Intellectual Property Agency Ltd,give a basic introduction to the rule of the descriptivefair use defense in China.

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UKIPO annual report –trademark applications upTHE UK INTELLECTUAL PROPERTY OFFICE has once againreported its annual numbers. Most strikingly, they show asignificant increase in the number of trademark applications.

According to the report, in 2019, trademark applications increasedby 12.9%, whereas the number of patent applications decreasedby 8%. Interestingly, after an unprecedented period of growth (304%between 2015 and 2018), designs applications are now beginningto level off, decreasing some 2.4% between 2018 and 2019.

The number of patents published decreased by 7.8% from 2018 to2019, and the number granted decreased by 0.6%. According to theUKIPO, while the number of patent applications has generallydecreased in recent years, this latest drop can be attributed to anumber of factors, including a change in the application fee structure,which the UKIPO introduced in order to discourage trivial applications.

In 2019, the UKIPO received a record 107,527 trademarkapplications, a 12.9% increase from 2018. Both the number of

News

applications and trademarks registered have increased year-on-year since 2011.

There were 68,687 domestic trademark applications from UK-based applicants in 2019, and 21,764 domestic applications fromnon-UK-based applicants. In addition, there were 17,076 trademarkapplications through the International Registration (IR) route. Thehighest number of non-UK based applications (domestic and IR)came from China (15,182), the USA (11,020), and Germany (1,758).

Although design applications have seen a dramatic increase since2015, the process of applying for registered design protection withthe UKIPO has changed in recent years, with a new fee structurehaving come into force in October 2016, and an online applicationprocess going live in October 2017. These changes, intended to makethe process more straightforward and cost-effective for applicants,are likely to have contributed to increased filing activity over thatperiod, with design applications subsequently leveling off.

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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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RésuméRosie Burbidge, Gunnercooke LLP,LondonRosie is an intellectual property lawyer.She helps her clients to develop, expand,exploit, and enforce their intellectualproperty rights. This includes developingIP strategies and, if necessary, litigatingon a wide variety of issues. Rosie's bookon European Fashion Law was publishedin February 2019 (Edward ElgarPublishing). In 2019 she was recognizedas one of 20 Women in IP from aroundthe world who are “destined for greatthings”. She is a former Guest IPKat andwrites regularly for the popular IP blogsand professional publications on a rangeof complex IP issues.

The interplay between trademarks anddesigns has always been a close one – aborder which has proven crucial in many

cases but remains surprisingly misunderstoodin businesses and even, at times, within the IPcommunity.

Identifying and managing these essential IP rights has never been more important. We are in uncharted territory, from the impact ofCOVID-19, to the mystery of what Brexit will beonce the transitional period is over. In thebackground to everything, the planet is makingalarming signals that it cannot be taken forgranted and long-needed social change isstarting to gain traction.

So why are designs and trademarks of anyrelevance in these times? Surely, there are manymore business-critical questions to consider?

Many businesses, from fashion to consumerbrands, have long appreciated the value ofthese so-called “soft” IP rights. However, as themajority of businesses went online and servicesmoved from local to global, there was an

Trademarks and designsin uncertain times

There has never been a better time to think about trademark and designprotection. Rosie Burbidge, partner at Gunnercooke, explains why.

Rosie Burbidge

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NEWS


Trade Mark Owners Associationrelaunched

Puma loses “Tokyo 2021” bidGERMAN SPORTSWEAR AND SPORTS equipment multinationalPuma has had its application to register the trademark “PumaTokyo 2021” rejected by the USPTO, which reasoned that theglobal brand was attempting to create a “false connection” withthe rescheduled Tokyo Olympics even though “no connectionwith the United States Olympic Committee [had] beenestablished” between Puma and the event. Puma’s application,which also included “Tokyo 2022”, was made on 24 March – theday the International Olympic Committee (IOC) rescheduled the2020 Games due to ongoing world events.

In its decision, the USPTO said that "… the use of the wordingTokyo 2021 contained in the proposed mark would be clearlyseen by the general public as referring to the Tokyo 2020Olympic Games that have been rescheduled to 2021 because ofthe COVID-19 pandemic, and thus to the widely–knownorganization that comprises the Olympic Games (i.e. the UnitedStates Olympic Committee).

"The fact that the applicant's goods include a variety of athleticand sports bags, clothing and sports and athletic equipment, etc,

serves to enhance and increase the likelihood that there wouldbe a false connection with the Olympics, and thus the UnitedStates Olympic Committee.”

Puma now has six months in which to respond to the USPTO’sdecision.

ORIGINATING IN 1886, the Trade-Mark Owners Association(TMOA) led the expansion of global trademark protections andcontinued to protect the interests of its clients through twoWorld Wars, the Great Depression, and the 2008 Recession.Now, over 130 years after its incorporation, TMOA is beingrelaunched by its attorneys and their colleagues, following aninvestor-backed management buy-out.

Stakeholders voted overwhelmingly in favor of the buy-out,and on 19 May ownership of the business transferred to itsattorneys and colleagues, its pension fund, and its newManaging Director, Paul Hayman.

According to a statement, the newly relaunched TMOArecognizes that – more than ever – there is a need for a caring,compassionate approach that benefits clients, colleagues, andpartners alike; a “new way of working” that provides unrivaledservice to clients, a better work/life balance, opportunities forcolleagues, and trusted partnerships with associates across theglobe.

TMOA’s Managing Director Paul Hayman said: “The world isexperiencing extraordinary events so now is the perfect time torelaunch TMOA. We believe that now, more than ever, our clientsand colleagues want a partner they can trust to provide excellentservice and, as important, who they can trust to becompassionate and supportive. TMOA will be their loyal ally,protecting their interests, especially through the hardest of times.We draw on our proud heritage as we build a new enterprise forthe future: one that will address the challenges andopportunities of the world we live in today. The old ways servedus well for many decades, but the world has changed, and wehave to find a better way.”

Les Powell, former Joint General Manager, added:“Relaunching TMOA is a wonderful idea as it enjoyed so muchgoodwill from clients and agents around the world, with whomwe encouraged the building of working friendships. Reviving thisway of working, in an updated and modern way, will be a verygood thing for everyone. TMOA will be a new company, with astrong heritage, ready to meet today’s challenges.”

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trademark position can be revisited when thepurse strings are loosened. In a similar vein, whynot apply to register a mark in a low-costjurisdiction and make the most of the six-monthpriority period before filing in other territories?

Now may also be the time to revisit theMadrid system. There are obvious pros and consto the process which enables filing in multipleterritories via the World Intellectual PropertyOffice. The base mark is a single point of attackwhich can dismantle the entire trademark towerin one fell swoop. While not all countries havesigned up to the Madrid Agreement and/or theProtocol, the costs savings, at least at an earlystage, are undeniable.

Even if further filings are not required for thetime being, that does not mean that you canignore portfolio management. Indeed, this is asource of further savings. An opportunity waitingto be grasped.

Review the portfolio and trim the fat. Themarks associated with that product you havenow pivoted away from? They’re not worthretaining, but could they be licensed? If they’refor a defunct brand, could they be sold? Are anyof the brands in your portfolio no longerappropriate for a modern audience. Is it time torebrand and, if so, should you maintain theportfolio in any event to prevent third partiescoming in and sowing consumer confusion inthe future?

Recessions are boom time for counterfeiters.For example, a fashion brand’s customer maywant to buy the real thing but as times are tightand they lack the cash to buy even the cheapestleather good or pair of sunglasses, the counterfeittemptation may prove too much. If customerstrade down to the counterfeit version, you willquickly have a big problem on your hands.

At the same time, the counterfeiters oftenbenefit from cuts to anti-counterfeiting programs,which lead to less attention being paid at Customsand online. Let alone any effort in tracing theproducts back to the goods’ origin. It goeswithout saying that similar issues apply toparallel imports.

So, what is the solution? Work with finance,marketing, and your external IP advisors to findnew and creative brand protection strategies.Look at the whole supply chain, from IP filingsthrough to resale of goods. Where and how canthe brand be leveraged? Is a greater focus on aspecific market segment going to be morebeneficial to the business, and if so, what impactdoes that have on IP strategy? Give designssome serious thought.

Invest in good trademark docketing softwareor leverage off the technology that your externallawyers use – most modern docketing softwareuses a lot of automation behind the scenes and

access to records can be easily shared withclients to enable instant access to reports.Revisit those Customs recordals, check yourprocesses, and see where technology can beleveraged to improve efficiency.

Finally, speak to your external lawyers. We arealways happy to help and on hand to come upwith creative solutions. You never know when aquick virtual coffee could result in an importantinternal reassessment of brand value. My virtualdoor is always open.

Trademarkrights cantake years to secureand will bemissedwhenthey’regone.

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ContactGunnercooke LLPTel: +44 7708 923 [email protected]


DESIGNS


increasing appreciation of the importance ofcreating and maintaining a global portfolio. Or at least aportfolio in the key relevant territories for theparticular business. As budgets come underpressure, these established norms are comingunder pressure. Now is a good opportunity totake a step back and think about why IP isimportant and how it can be utilized to besteffect in times of challenge and change.

Trademarks often get more attention thandesigns. They are seen as synonymous with the all-important “brand”. Their focus is oncommunicating the core marketing message:the origin of the goods or service being offeredfor sale. Consequently, trademarks receive morebusiness and, crucially, media attention.

In these uncertain and precarious times therecan be a temptation to cut back on the trademarkportfolio. You may decide not to bother protectinga new brand name and logo this time, or to notrenew the same. Now may appear to be thetime to slash the anti-counterfeiting budget andfocus on the absolute core of the business.Whilst it is always wise to reassess value, anindiscriminate slash and burn policy toward IPwould be a mistake and may delay a longerrecovery, or at least lead to 10x plus more costsbeing incurred attempting to secure lost rights,fighting infringements, and regaining marketshare from copycat brands in the medium tolong term.

Trademark rights can take years to secure andwill be missed when they’re gone. Whilst youcan always file a new trademark, you can neverget that priority or filing date back.

The situation is even more precarious withdesigns. If you’re outside the one-year graceperiod, that opportunity is permanently lost.

Designs offer numerous opportunities andadvantages which, sadly, many businesses loseout on because one or more of the followingapplies:

(1) They do not know that designs exist –and who can blame them? Designsare confusing. The media nearlyalways refers to them as copyright.Their very name means somethingsimilar, but ultimately different, in theminds of most people. They don’teven have the same nameinternationally (design patents,industrial designs, etc). Consequently,they are much less jet setting thantheir trademark cousins.

(2) They have had a bad experience ofdesigns in the past (or heard ofsomeone who had such anexperience – the Trunki1 case has notbeen a great standard bearer for the

right). Although designs have lesseyeballs on them generally, they stilloften end up with bad PR on the rareoccasions that they do fall under themedia glare. There are lots of similarsounding but different rights acrossthe EU and the UK. This creates aperfect storm of misunderstanding,which sows mistrust and, in a verysmall way, fear. Why invest time andenergy getting to know such a right, ifyour initial instinct is that designs aregoing to be high maintenance andrequire a lot of time to trulyunderstand?

(3) They do not meet the qualificationrequirements. This is usually aquestion of timing. For example,assuming the business was lookingfor EU protection via the RegisteredCommunity Design, they would be toolate to qualify if they waited for morethan one-year window after firstsharing the design publicly.

(4) They do not meet the qualificationrequirements. For example, if thedesigns were first made publiclyavailable outside the EU, then (subjectto a pending CJEU referral), thedesigns cannot become CommunityDesigns (although they may qualify forprotection in other territories aroundthe world).

However, this simplistic analysis of designsignores their immense utility to modern businesses.They are quick to obtain (typically you can haveyour design registration certificate in your (digital)hands within a week so). They are very helpfulas part of an online takedown strategy and whenworking with Customs. They can protect packaging,product shapes, graphic interfaces, logos, individualcharacters etc.

In a world where copyright law is increasinglyunclear, they provide a single document whichclearly sets out what is protected. They clearlyhave downsides, particularly from a validityperspective but they should at least be part ofthe IP protection consideration process.

Similar cost cutting approaches are taken todesigns as to trademarks. For example, decisionsmay be taken to not register new core designs.

In fact, designs can be a helpful means ofmanaging costs in the short term. For example,rather than applying to register a new logo as anEU trademark, why not save money in the shortterm and apply for a Registered CommunityDesign? It is substantially cheaper and quickerto obtain. Whilst it is no substitute for atrademark, in times of tight budgets, it providessome degree of exclusivity and means that the

Why aredesigns andtrademarksof anyrelevance in thesetimes?

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1 PMS International Group Plc

v Magmatic Ltd [2016]

UKSC 12 (9 March 2016)


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CH

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There are 52provisionsconcerningIP rights.

”

“The civil code was officially adopted at thethird session of the 13th National People'sCongress of China on 28 May 2020 and

will take effect on 1 January 2021. As China’s firstlegislation named as a code, the civil coderepresents a milestone signaling the commence-ment of China’s codification.

Composed of 7 parts, 1,260 articles and morethan 100,000 characters, the civil code is, so far,China’s longest law, with the largest number ofarticles. Civil law, which regulates property

relationships and personal relationships betweencivil subjects with equal status, functions as thefundamental legislation for private rights, theessential law of a state, and the basic norms ofsocial life.

Although intellectual property rights do notappear as a separate part in the civil code, thereare many relevant provisions therein. IP rightsbeing an important category of civil rights, civilactivities related thereto are subject to suchgeneral rules of civil law as fairness, autonomyof the will, good faith, making compensationfor equal value, as well as public order andgood customs.

There are 52 provisions concerning IP rightsand technology contracts in the civil code.We hereby briefly introduce themain ones as follows:

Provisions concerningIntellectual Property Rightsin the Chinese Civil Code

Zhenkun Fu and Brenda Zhao, Senior Partners at Corner Stone & Partners,give a timely overview of Chinese IP protection.

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6. The part of SuccessionThis part does not involve IP rights.

7. The part of Tort LiabilityTo strengthen protection of IP rights by raisingthe cost of infringement, the following provisionis added: where the intellectual property rightsof others are intentionally infringed upon andthe circumstances are serious, the infringeeshall have the right to claim correspondingpunitive damages (Article 1185).

Reasons for absence of a part devoted to IPrights in civil code

1. The legislative method of civil speciallaw has always been adopted for China'sintellectual property legislation, e.g.,patent law, trademark law, copyright law,as well as related contents of anti-unfaircompetition law and such administrativeregulations as regulations on theprotection of layout designs of integratedcircuit and regulations on the protectionof new plant varieties. "China'slegislations on IP rights comprise notonly contents concerning civil rights, butalso contents concerning publicadministration, so as to comply ingeneral with relevant internationaltreaties. Since a civil code is a lawregulating the civil legal relationshipsbetween civil subjects with equal status,it is difficult to include therein contents ofpublic administration. It is also infeasibleto extract universal rules applicable todifferent types of IP rights."

2. The IP right system is still undergoingrapid developments and changes,warranting constant adjustment andadaptation of legislation, lawenforcement and justice administration.

3. IP rights differ from conventional propertyrights, and their particularity is manifestedespecially by the trend of specialization ofIP rights related trials. In view of this, it isnot advisable to incorporate the wholeintellectual property law system into thecivil code. In the information age when IPrights are gaining increasing significance insocial and economic life, improvement ofthe legal system of IP rights plays anirreplaceable role in ensuring theimplementation of China’s nationalinnovation-driven development strategy.Civil law, as the fundamental legislation forprotecting personal rights and propertyrights including IP rights, is the guidelinesfor conducting civil and commercial affairsand engaging in social life in an orderlymanner. Therefore, it is apparent that suchbasic civil principles as equality, fairness,

The civilcode is, sofar, China’slongest law.

”

“

ContactCorner Stone & Partners1905, Tower B, Tian Yuan Gang Centre, No. 2, Dongsanhuan North Road,Chaoyang District, Beijing 100027, ChinaTel: [email protected]

autonomy of the will, good faith, and publicorder and good customs, are applicable inthe field of IP rights.

4. Although IP rights fall under civil rightsby nature, it is infeasible for the civilcode to integrate IP rights due to theirown characteristics and many difficultiesinvolving legislative techniques. Modernintellectual property law is stillexperiencing frequent changes. IP rightsare a rapidly developing system, which,being greatly influenced by the scientificand technological revolution, economicdevelopment, social and culturaltransformation of a country or even theinternational community, has alwaysbeen in a status of constant revisions.Therefore, it is inappropriate toincorporate a frequently changing legalsystem into the civil code that needs toremain relatively stable and focuses onsystematization.

5. The normative contents of intellectualproperty law are incompatible withthose of other legal systems. Theintellectual property law, on one hand, issubstantive law for protection of thecreators’ rights, on the other hand,however, procedural provisions onacquisition, exercise, maintenance,alteration and relief of such rightsusually are also set forth in thelegislations, namely, procedural normsprescribed in and dependent onsubstantive law. Furthermore, althoughit falls within private law governing civilrights in the first place, intellectualproperty law is featured legislativelywith integration of public law andprivate law, because norms of publiclaw regarding public administration,administrative penalty and criminalsanctions are often included therein.The above feature of intellectualproperty law makes it inappropriate tobe incorporated in the civil code. Hence,the legislative style of special laws ofcivil law, rather than being incorporatedinto the civil code, is adopted forintellectual property law..


CHINA


Main contents concerning IP rightsin the civil code1. The part of General RulesThe part of General Rules precedes and governsall other parts of the civil code with the principlesand general rules to be followed in civil activities.A general provision with regard to IP rights ismade in this part (Article 123) to govern theindividually enacted laws for different IP rights.It reads as follows: Civil subjects shall enjoyintellectual property rights in accordance withlaw. Intellectual property rights are the exclusiverights enjoyed by right holders in accordancewith law with respect to the following objects: (1)works; (2) inventions, utility models and designs;(3) trademarks; (4) geographical indications; (5)trade secrets; (6) layout designs of integratedcircuits; (7) new plant varieties; (8) other objectsprescribed by law.

2. The part of Real RightsIn Section 2 Pledge of Rights, Chapter 18, Part 2,i.e. Article 440 retains the right of an obligor or athird party to establish pledge on transferableproperty rights in such IP rights as exclusivetrademark rights, patent rights, copyrights, etc.Meanwhile, it is specified in Article 444 that, asregards the pledge on such property rights in IPrights, the pledge right shall be established atthe time of registration of the pledge.

3. The part of Contracts(1) It is specified that, a business secret or

other confidential information that the

parties learn in concluding a contractshall not be disclosed or unfairly used,and a party who violates this obligationshall be liable for damages (Article 501).

(2) In the light of the needs of economicand social development, contentsregarding technology contracts as atype of nominate contracts are revisedand improved (Articles 843 to 887), andspecific provisions are made in respectof the development, transfer and licenseof technology, and in respect oftechnical consulting and service. Amongthese provisions, Article 850 stipulatesthat a technology contract whichillegally monopolizes technology orinfringes on the technology of a thirdparty is invalid.

4. The part of Personal RightsChapter 3 of this part defines the specific contentsof the right of personal name of natural personsand the right of name of legal persons or non-incorporated organizations and prescribes theprimary obligations of civil subjects to respectand protect such rights.

(1) It is explicitly stated that as regards pen names, stage names and internetnicknames, etc., which have socialpopularity to a degree sufficient tocause confusion among the public ifused by others, provisions on protectionof the right of personal name and theright of name shall be consulted andapplicable (Article 1017).

(2) To address the problems of "deepfaking" others' portraits and voices bymeans of information technology,thereby infringing upon others' personalrights and interests, or even causingdetriment to social and public interests,it is prohibited for any organization orindividual to infringe on the right ofportrait of others by faking portraitsthrough use of information technology,and it is further specified that forprotection of the voice of a naturalperson, provisions regarding protectionof the right of portrait shall be consultedand applicable (Paragraph 1, Article 1019and Paragraph 2, Article 1023).

5. The part of Marriage and Family The civil code specifies that remuneration forpersonal services other than wages and bonusesand proceeds of investment also belong tojointly possessed property of the husband andthe wife, and retains the provision that incomesof IP rights shall be in their joint possession(Article 1062).

Zhenkun Fu

Brenda Zhao

RésumésZhenkun FuZhenkun Fu is a leading intellectual property law practitioner with morethan 15 years’ experience in prosecuting trademark and patentinfringement, unfair competition, and anti-counterfeiting cases. Hiswork with Fortune 500 companies has resulted in the recovery ofmillions of dollars in damages. As a leading IP litigator, havingmanaged thousands of lawsuits, Zhenkun’s groundwork and strategicinsight, coupled with his exceptional relationships with AIC, BQS andPSB at national and local levels, makes him a key leader in intellectualproperty enforcement in China.

Brenda ZhaoBrenda Zhao is a senior partner of Corner Stone & Partners. With about20 years' experience in the IP field, Brenda has been engaged in IPprotection, addressing clients’ needs, and providing clients with high-quality, efficient and thoughtful law services as best as she can with hergreat professional skill and down-to-earth and meticulous workattitude. Brenda has provided effective legal advice to many clients,especially handling a number of significant IP protection cases formany world-famous companies. Her service has achieved good resultsin the protection of clients’ rights and interest and earns her positiverecognition by clients.


mailto:law%40cornerstoneip.com?subject=


FAIR

USE


goods or services;(2) The defendant’s use is reasonable

and conforms to general business rules.The defendant should not place theconcerned words or signs in a prominentposition or use the same fonts, graphicsor writing layouts unique to theconcerned trademark of others, whichmay mislead the consumer or causeconfusion. Ideally, the defendant shall useits own trademark and demonstrate itscompany name and other relevantinformation;

(3) The defendant’s use will not causeconfusion or misunderstanding of theorigin of the goods among the relevantpublic.

Despite different practices in judicial practice,it is generally believed that the descriptive fairuse defense that can be supported should meet atleast three conditions, namely being descriptive,in good faith, and fair use.

Descriptive useIt requires that the defendant uses the inherentdescriptive meaning of the word or sign todescribe its goods or services, rather than to useit in the sense of a trademark.

First of all, the word or sign should have adescriptive meaning, that is, it is the genericname, graphics, models of the goods or ageographical location name, or directly indicatesthe quality, main raw materials, functions, uses,weight, quantity or other characteristics of thegoods as prescribed in Article 59 of the TrademarkLaw of China. There should be evidence to proveit. For example, some legal provisions, nationalstandards, industrial standards, or any otherdocuments alike including the word or sign as ageneric name of the goods can be taken asevidence thereof. Other evidence such asprofessional reference books or dictionaries canalso be acceptable as evidence. In addition, ifthe relevant public generally believe that theword or sign refers to a certain type of goods, itwill also be convincing. In GUINNESS WORLDRECORDS LIMITED V. CHERY AUTOMOBILE CO. LTD,a trademark infringement and unfair competitioncase tried by the Guangdong High Court withthe decision reference of (2017) Yue Min ZhongNo. 2347, Guinness had several registeredtrademarks of "吉��" (Chinese version for"Guinness"), "Guinness" and so on in class 41 andChery used "吉��" and "Guinness" in their events.During the litigation, Chery defended itself byclaiming for descriptive fair use. The court foundthat there was no evidence showing that "Guinness"referred to the service name relating to "WorldRecord" and there was not any provision, nationalstandards, industrial standard or professional

reference books, dictionaries, etc. including"Guinness" as a service name. The media reportsand other evidence provided by the defendantwere not enough to prove that the relevantpublic took "Guinness" for a general term for"World Record" or "World's Most". Therefore, thedefendant's defense that "Guinness" was a genericname and its use constitutes descriptive fair usewas not supported by the court.

Secondly, the accused infringer uses thedescriptive meaning of the word or sign insteadof using it as a trademark to distinguish theorigin of goods or services. In SHAANXI MAOZHIENTERTAINMENT CO., LTD. V. DREAMWORKSANIMATION FILM COMPANY, et al, a trademarkinfringement dispute tried by the SupremePeople's Court with the decision reference of(2014) Minshenzi No. 1033, the Supreme People’sCourt found that the movie "Kung Fu Panda" (inChinese: ��) produced by DreamWorkswas released to the public in China in 2008, beforethe registration of the concerned trademark No.6353409 "��" (Chinese version for “KungFu Panda”) registered by the plaintiff in class 41on film production and other services. Since 2005,the movie title of "Kung Fu Panda"(in Chinese:��) had been continuously promoted innews reports, posters, and other promotionalmaterials. DreamWorks used its "DREAM WORKS"logo prominently in the movie, movie postersand other promotional materials to indicate thatthe origin of film production services wasDreamWorks. "Kung Fu Panda 2" used the words

RésumésYakai ShiYakai Shi is a partner of Beijing Sanyou Intellectual Property AgencyLtd, the first private patent firm and a top 10 IP law firm in China. Hereceived education in both China and Germany, graduating fromUniversity of Münster with an LLM. Mr. Shi has helped IP holders fromall over the world in formulating and implementing strategies for IPprotection in China, in respect of both prosecution and enforcement.Mr. Shi is experienced in dealing with cases with respect to patent,trademarks, copyright, and unfair competition disputes. Based on hisextensive experience and deep understanding of IP protection inChina, he is good at providing insightful advice to help clients solveproblems efficiently.

Lena Shen Lena Shen is a partner of Beijing Sanyou Intellectual Property AgencyLtd, the first private patent firm and a top 10 IP law firm in China. Shereceived her education in both China and the United Kingdom. Hermain areas of practice are IP litigation and trademark prosecution. Ms.Shen has been involved a number of IP litigation and otherenforcement actions, and has also gained rich experience in trademarkregistration, review, opposition, and cancellation, among other matters.In 2019 she was awarded the Gold Medal of Trademark Attorney by theChina Trademark Association.

Many onlineshops choseto settlebecausethey wereafraid oftheirproductsbeing takendown.

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Sanyou_TML4_v1:Layout 1 9/7/20 12:46 Page 17


Among the trademark infringement caseswe have handled, one special type drewour attention. In such cases, the concerned

registered trademark was descriptive words,such as generic names or the model number ofthe concerned goods or other commonly usedwords to describe the quality or use of them. Theregistrant managed to register such trademarks bywhatever means and then filed online complaintsat the e-business platforms against those shopswho were fairly using such descriptive words ontheir products. The intention of the registrantwas to obtain improper benefits by forcing theshop owners to pay for settlement. Many onlineshops chose to settle because they were afraidof their products being taken down or becausethey could not afford the time for litigation. Such trademark registrants are typical maliciousregistrants. In such cases, does the shop ownerreally constitute trademark infringement?

In many countries, the trademark legislationincludes the doctrine of descriptive fair usedefense and the descriptive fair use of others'trademarks is, generally speaking, an exceptionof trademark infringement. In China, there arealso similar provisions on such an exception. Thisarticle aims to introduce the legal provisions,application conditions, and relevant judicial practicesof descriptive fair use defense in China as atrademark infringement exception. The descriptivefair users can effectively make correspondingdefenses when facing infringement allegationsby trademark registrants.

Article 59 of Trademark Law of China lists thecircumstances of descriptive fair use whichconstitute exception of trademark infringement,which says:

(1) if a registered trademark contains wordsbeing generic names, graphics, or models

of the designated goods or a geographicallocation, or directly indicates the quality,main raw material, function, use, weight,quantity, or other characteristics of thegoods, the trademark registrant has noright to prohibit others from using suchwords fairly;

(2) if a 3-D trademark contains a sign beingthe shape generated by the nature of thegoods designated, the shape of thegoods required to obtain technical effects,or the shape that brings substantial valueto the goods, the trademark registranthas no right to prohibit others from usingsuch a sign fairly.

However, the Trademark Law of China doesnot clearly describe the constituent elements ofdescriptive fair use defense, and there are differentapproaches in judicial practices.

In the “Replies to Several Questions Concerningthe Trial of Trademark Civil Dispute Cases” issuedby Beijing High People’s Court in 2006, the courtholds that the following conditions should bemet to establish the descriptive fair use defense:

(1) It should be use out of good faith.(2) It is not used as a trademark of the

defendant's goods.(3) It is only to illustrate or describe the

defendant's own goods.The Civil Third Tribunal of Zhejiang High People's

Court set up a set of a bit different conditions in its"Summary for Review of Trademark InfringementDefenses" issued in 2011, which stipulates:

(1) The use of the defendant is in good faith,that is, the defendant is to make a trueand necessary description or statementof the characteristics and features of hisgoods, rather than using it as atrademark to distinguish the origin of

The descriptive fair usedefense for trademarkinfringement in China

Yakai Shi and Lena Shen, Partner and Attorney-at-law at Beijing SanyouIntellectual Property Agency Ltd, give a basic introduction to the rule of the descriptive fair use defense in China.

Yakai Shi

Lena Shen

FAIR USE


CO

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RésuméNora Fowler Nora is a Chartered UK and European Trademark Attorney at EIP. She isexperienced in managing worldwide trademark portfolios and providingstrategic advice to clients in the fashion, beauty, food, beverages, andsports sectors, including a Premier League football club. Prior to joiningEIP Nora worked at two specialist IP firms in London and in thetrademarks department of an international law firm in Germany.

The first half of 2020 has been a strangeand difficult time for most. With much of theworld going into lockdown in response to

the worldwide COVID-19 outbreak, there havebeen many challenges for individuals, for healthservices, for businesses, and for governments. Inan increasingly global world, this unprecedentedshut down has brought chaos to supply chainsfor vitals goods, such as PPE equipment forhealthcare and other frontline workers as well asinitial panic on the availability of food and othereveryday essentials. As businesses struggle to stayafloat, the focus for many has understandablybeen on protecting incomes and jobs and noton trademark protection.

However, as we slowly and carefully emergeinto the “new normal”, businesses will do well totake stock of their trademark portfolios and workto future proof their brands. Many businesseshave shifted their focus to meet current needs,whether that be restaurants moving to a take-out or delivery-based model or selling newown-branded products; wineries taking upproduction of hand sanitizers; or snorkeling masksbeing adapted into ventilator masks. Not onlymust businesses protect their current market andreputation, they must also ensure that they areproperly protected for new products and services.

Counterfeiting, infringement, anddamage to reputationOver the last few months, brand owners have facedsome new and many not-so-new challenges.Companies have had to find new approaches tothe policing of counterfeiting as traditionalmeans, such as factory visits and other physicalinspections, have become more difficult withsocial distancing and travel restrictions in place.Much of the policing has had to shift focus toonline monitoring (e.g. through site monitoring

and test purchases). As the demand for andscarcity of protective equipment, soaps, andhand sanitizers has surged, Europol, the EuropeanUnion Agency for Law Enforcement Cooperation,has reported a significant increase of counterfeitand substandard goods, especially in thehealthcare and sanitary products markets1.

Quite apart from the potentially seriouslyharmful effects on consumers, counterfeitproducts and trademark infringement can alsolead to significant damage to a brand owner’sreputation on many levels. Firstly, if counterfeitproducts of low quality enter the market bearingthe trademark, or a trademark confusingly similarto that of a reputable brand, this will inevitablylead to damage to the reputation of the rightfulbrand owner. Secondly, the practice of “pricegouging” - where a business takes advantage ofa crisis situation (such as a PPE shortage) togrossly inflate the prices of essential goods - canhave a devastating effect on a brand owner’sreputation if its goods are resold at extortionateprices by third parties in a way which suggests thatthe brand owner is taking advantage of the crisissituation to turn a profit. One widely publicizedexample of price gouging was seen with theresale of 3M N95 masks. In response, 3M hasfiled a number of lawsuits in various US Statesclaiming the companies selling the masks weredeceiving consumers and falsely associatingthemselves with 3M2. These types of actions notonly protect the public but also send a clearmessage that the brand owner does not endorsethe practice of price gouging.

Maintaining an effective andhealthy portfolioOne of the most effective and powerful ways tohelp protect a brand and ensure the ability totake action against harmful and infringing use bythird parties is trademark registration. This is astrue and equally important now as it was in lessexceptional times. Proper trademark registrationhelps the brand owner prevent the registrationand use of an identical or similar trademark foridentical or similar goods, and thus protect itfrom dilution and damage to reputation. Further,in many countries, trademark registrations canalso be recorded with customs agencies. Thecustoms agencies will then monitor goodsentering the country and seize any goods

New normal, old problemsNora Fowler, Associate at EIP, looks at trademark protection in light of COVID-19.

Nora Fowler

1 https://www.europol.

europa.eu/newsroom/

news/how-criminals-

profit-covid-19-pandemic2 See e.g.: Complaint ECF

No. 1, 3M Co. v.

Performance Supply LLC,

No. 1:20-cv-02949 (S.D.N.Y

Apr. 10, 2020 and

Complaint ECF No. 1,

3M Co. v. Rx2Live LLC,

No. 1:20-cv-00523

(E.D. Cal. Apr. 10, 2020)

EIP_TML4_v3:Layout 1 9/7/20 11:09 Page 19

FAIR USE


"Kung Fu Panda" as a continuation of theaforementioned "Kung Fu Panda" movie, and"Kung Fu Panda" was the name of the movie,which was used to summarize the expressiontheme of the movie content and was descriptiveuse rather than a trademark use to distinguishthe origin of the movie, so the court held that itdid not constitute trademark infringement.

In good faithThe defendant should use the accused word orsign in good faith. The defendant should nothitchhike the reputation of the registeredtrademark. Good faith or bad faith is subjective,and it often needs to be proven by means of theobjective behavior of the accused infringer.

ReasonableThe defendant’s use of the accused word or signshould be reasonable. To be reasonable or notrelies mainly on the question whether the usebehavior is proper and necessary. It is mainlyjudged by the specific use method of the accusedinfringer, such as whether the word or sign hasbeen used prominently and whether it hasexceeded the limit of describing the characteristicsof the goods.

To judge whether it is in good faith and whetherit is reasonable, business customs and otherfactors should be taken into consideration. InZHANGZHOU PIEN TZE HUANG PHARMACEUTICALCO., LTD. V. ZHANGZHOU HONGNING JIAHUACO., LTD., Zhangzhou Pien Tze Huang ownedtrademark registrations of “Pien Tze Huang” andit Chinese “片�癀”. Pien Tze Huang (in Chinese:

片�癀) was the name of a drug. The SupremePeople's Court held that in this case, if theaccused products contained Pien Tze Huang asan ingredient and the producer marked it in thenecessary range in good faith for the purpose of explaining or objectively describing thecharacteristics of the products, such a use couldbe considered as fair use as long as it would notcause the relevant public’s confusion on origin.The court confirmed that to judge whether itwas good faith and whether it was reasonable,one could refer to the business customs andother factors. If Zhangzhou Hongning was toexplain that its products contained Pien TzeHuang ingredients, it should be marked in anappropriate manner in accordance with businesscustoms. However, in this case, ZhangzhouHongning marked "片�癀" and “PIEN TZE HUANG”in the prominent position of the packaging anddecoration of the products it produced and sold.Also, the signs of "PIEN TZE HUANG" and "片�癀"were obviously larger than Zhangzhou Hongning'sown trademark and other remarks, and the fontused was basically the same as the registeredtrademark of Zhangzhou Pien Tze Huang. Thiskind of use method had exceeded the limit oflegitimate use for description of the product soit was hard to say that the defendant wassubjectively at good faith. In consideration ofhigh reputation of the registered trademark ofZhagnzhou Pien Tze Huang, as an objectiveresult, confusion about the origin of the producthad been caused among the relevant public.Therefore, the court held that ZhangzhouHongning's descriptive fair use defense couldnot be established.

The above is a basic introduction to the ruleof descriptive fair use defense in China. Whenthe descriptive use of a fair user is accused oftrademark infringement, in addition to thesolution of invalidating the registered trademarkin question with the ground of lack ofdistinctiveness, it is also an option to defend byclaiming it is descriptive fair use and therefore itdoes not constitute infringement, to avoid adisadvantageous situation for long time causedby the lengthy invalidation procedures so as toreduce direct economic losses.

The word orsign shouldhave adescriptivemeaning.

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ContactBeijing Sanyou Intellectual PropertyAgency Ltd.16th Fl. Block A, Corporate Square, No.35Jinrong Street, Beijing, 100033, ChinaTel: 86-10-88091921,88091922Fax: : [email protected]


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http://www.sanyouip.com


LAW FIRM RANKINGS 2020The Americas, Middle-East, and Africa

A comprehensive list of the 10 most well-respected law firmsfrom The Americas, Middle-East,

and Africa

LawyerTrademark


The

Law firmRANKINGS

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COVID-19


bearing the trademark which may be counterfeit.This can be a highly effective way for brandowners to identify and stop counterfeit goods.

In China, customs authorities will monitor goodsentering and also leaving the country3. With somany goods being produced in China, recordal ofa trademark registration with the Chinese customsauthorities is very useful to prevent infringinggoods leaving the country as well as assistingwith the smooth transit of genuine goods. However,such services can only be effective if brand ownersdiligently register their trademarks in the countriesin which they trade and/or produce goods andfor all of the goods and services for which thetrademark is or will be used. This requires carefultrademark portfolio maintenance, includingregular reviews of current protection andpotential updates to the portfolio when there arechanges in the markets and expansion ofproducts (for example the addition of productsin response to COVID-19 or other events).

Trademark squatting and planning aheadParticular care and planning are required injurisdictions which operate a “first to file” approachto trademark registration. China is an exampleof a first to file country where the Applicant whois first to file the trademark application is generallygiven the trademark rights and priority evenover those who may have used the trademarkfirst (in contrast to, for example, the USA or Canada,which are first to use jurisdictions). This can leadto serious problems for brand owners who arelate to the table in filing in these countries. They canbe prevented from using their own trademark(s)and may be forced either to use a differenttrademark or spend significant amounts of moneyand time challenging the earlier registration oreven buying the registration from the earlierApplicant. Therefore, it is particularly importantto act fast in “first to file” countries - and toconduct clearance searches.

One famous example of such a trademark battleis Apple Inc’s struggle for the iPad trademark inChina, proving that not even big corporationsare immune to such problems. The companyProview Technology had filed applications forthe trademark iPad in a number of jurisdictions,including China. Although the company agreedto sell the trademark iPad back to Apple, thereremained a dispute about whether this includedthe Chinese registration. A Chinese Court heldthat Proview Technology owned the rights in Chinaand was able to prevent Apple’s use. Eventually,the case was settled, but not without Applehaving to invest a significant amount of time andmoney4.

In first to file countries, trademark squatting –a practice where an individual or company registers

a trademark used (and potentially registered inother jurisdictions) by another entity, not with aview to using the mark but rather with a view toextracting money from the true brand owner – isa serious and not altogether uncommon problemfor brand owners. Therefore, especially at a timewhen businesses may be expanding theirproduct offerings or trying to prevent othersfrom using their trademark for certain goods andservices, critical analysis of potential gaps inregistered trademark protection (both geographicaland with respect to the goods and servicescovered by registrations) is essential, as is takingsteps to close those gaps as swiftly as possible.

Conclusion – stay alertIt is, of course, always important for brand ownersto ensure that their registered trademark protectionis up to date. However, during a time where therisk of infringement and counterfeiting isheightened, it serves brand owners well to beparticularly vigilant. Practical steps include extracare in online surveillance and site-monitoring,together with online test purchases; ensuringthat trademark portfolios are up to date andcover all relevant goods and services (includingpotentially new goods and services) as well asregistrations in all important jurisdictions wherethe trademark is used in trade or where goodsare produced; and taking action againstinfringement where possible to protect both thebrand’s reputation and the consumer.

Manybusinesseshave shiftedtheir focusto meetcurrentneeds.

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ContactEIP Tel: 020 7440 [email protected]://www.eip.com/uk/

3 https://www.china-

iprhelpdesk.eu/content/

should-we-register-our-

trademark-chinese-

customs4 https://www.reuters.com/

article/us-apple-china/

apple-pays-60-million-

to-settle-china-ipad-

trademark-dispute-idUSB

RE86104320120702

EIP_TML4_v3:Layout 1 9/7/20 11:09 Page 20

mailto:nfowler%40eip.com?subject=

https://trademarklawyermagazine.com/

http://www.eip.com/uk/

http://www.china-iprhelpdesk.eu/content/should-we-register-our-trademark-chinese-customs

http://www.reuters.com/article/us-apple-china/apple-pays-60-million-to-settle-china-ipad-trademark-dispute-idUSBRE86104320120702

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TML4 rankings Americas, Middle East & Africa_v6:Layout 1 10/7/20 10:17 Page 23


THE AMERICAS, MIDDLE EAST AND AFRICAN TRADEMARK RANKINGS 2020

Throughout the next few pages, you will view a comprehensivelist of the 10 most well-respected law firms from the Americas,Middle East and Africa, in alphabetical country and companyorder. Our focused list is derived from a multifacetedmethodology, which uses months of industry research andfeedback from our readers, clients, and esteemed connectionsaround the world. All firms are ranked top 10 in their jurisdictionbut are displayed alphabetically to avoid bias.

SPACE TO FILL

Cowan, Liebowitz & Latman, PCDebevoise & Plimpton LLPFinnegan, Henderson, Farabow, Garrett & Dunner LLPFish & RichardsonFross Zelnick Lehrman & Zissu, P.C.Jones DayKelly IP LLPKirkland & Ellis LLPVenableWilmerhale

USA: North America - East Coast

221 Ponce de León Avenue5th FloorHato Rey, Puerto Rico 00917

Tel: 787.766.7000Fax: [email protected]

SPACE TO FILL

Arnold & PorterCooley LLPHunton Andrews Kurth LLPKilpatrick Townsend & StocktonLatham & Watkins LLPLoeb & Loeb LLPMcDermott Will & Emery LLPOrrick, Herrington & Sutcliffe LLPPattishall, McAuliffe, Newbury, Hilliard & Geraldson LLPQuinn Emanuel Urquhart & Sullivan, LLP

USA: North America - West Coast

SPACE TO FILL

Carrington & SealyDunnCoxFerraiuoliFitzwilliam Stone Furness Smith & MorganHSM IPJD Sellier + CoMiniño AbogadosMyers Fletcher & GordonOutten IP Thornton Smith

Caribbean


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http://www.thorntonsmith.com

http://www.hsmoffice.com



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https://ferraiuoli.com/


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Arochi & LindnerBasham, Ringe y Correa SCBecerril Coca & BecerrilCalderon & De La SierraDumontGoodrich Riquelme y AsociadosHogan LovellsOLIVARESPanamericana de Patentes y Marcas, S.CUhthoff, Gómez Vega & Uhthoff

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PlanetArt relied on the registered trademarkshown above. The trademark was applied forthe day before PlanetArt sent its letter beforeaction to Photobox. The trademark entered theUK register in August 2019.

As can be seen above, the registered trademarkshows a white line drawing on a turquoisebackground, which is a square shape but withrounded corners.

PlanetArt complained of three signs which wereused by Photobox. The judge reached differentconclusions for each sign complained of, so weconsider them separately below.

Photobox’s app icons – found to infringeThe first of Photobox’s signs which PlanetArtcomplained of was its Free Prints icon, as shownbelow on the left (along with a Christmas versionof the icon which is shown on the right):

Whilst the judge expressed some sympathyon the basis that there is a limit on the numberof characters which an app developer can usebeneath the icon, he also noted that it was notclear from the evidence why the full name“Photobox Free Prints” was not used, since this iswithin the 30-character limit set by the app stores.

The choice made by Photobox in this regard,combined with the use of a turquoise backgroundwith a white line drawing as the logo, wassufficient to cause the judge to find infringementof PlanetArt’s trademark under both s.10(2)(which relates to a likelihood of confusion), andalso s.10(3) (unfair advantage and detriment to therepute and distinctive character of the trademark).

Photobox’s other signs – found not to infringe The judge reached a different conclusion in relationto two different signs which were presented byPhotobox in the app store itself and at otherstages of the customer journey.

RésuméSean Ibbetson Sean specializes in disputes and litigation relating to brands, design,and copyright. He also regularly advises clients on compliance with theUK’s advertising regulations and ASA investigations. Sean's expertise isin contentious matters; he recently acted for Vectura in High Courtpassing off proceedings brought by GSK, and for Fidelis in High Courttrademark infringement proceedings.

The judgefound thatthis iconinfringedPlanetArt’strademark.

”

“This is the icon which would appear on thecustomer’s phone after they had downloadedthe app from the Apple or Google app store.

The judge found that this icon infringedPlanetArt’s trademark. He first found that therewere significant similarities in the aural andvisual elements of the sign and some (morelimited) conceptual similarities. The Photoboxicon was a similar shape and a similar turquoisecolour to PlanetArt’s registered trademark, andboth also featured a simple white line drawing.The only words to appear beneath the Photoboxicon were the words “FreePrints”.

What appears to have been critical to thejudge’s finding is that Photobox had opted touse just the words “FreePrints” beneath the icon,rather than any words which might indicate thatthe app originated from Photobox, such as“Photobox Free Prints”. The judge noted thatapps of this kind invariably display their brandname beneath the icon, rather than a descriptionof the app or the type of goods or service whichwas provided.

This point is illustrated by the followingscreenshot, adapted from a similar image foundin Annex 2 to the judgment. It shows the iconsof other photo-related apps, each of whichdisplays their brand name (e.g. Snapfish orPixPax) below the icon and sometimes alsowithin the icon itself.

Bristows_TML4_v4:Layout 1 13/7/20 10:18 Page 31

PlanetArtcomplainedof threesigns whichwere usedbyPhotobox.

“


In the United Kingdom, PlanetArt, which operatesthe popular FreePrints app, recently succeededin a trademark infringement claim against its

competitor, Photobox. The judgment of the High Court relates to the

app which Photobox launched in 2019 to provideusers with free prints of their photos. Following thedecision, Photobox will be prohibited from using“Free Prints” as the only words which appearbeneath the icon on user’s phones after they havedownloaded the app.

Background PlanetArt’s FreePrints app was launched in 2014.It has been consistently popular in the variousmobile phone app stores. Once the app isdownloaded onto a user’s phone, they can ordera monthly quota of free prints of their photos.The photo prints are then delivered to thecustomer, with the customer only paying deliverycharges. In short, the FreePrints app providesusers with free prints of their photos.

By the end of 2019, the FreePrints app had beendownloaded over 11 million times in the UK, andit had generated substantial revenue. It was alsoadvertised extensively. The evidence showed itsmarketing since 2014 had generated over 3billion impressions in the UK, which is equivalentto 45 impressions for each person in the UK.

Importantly, the judge found that PlanetArthad taken extensive steps to present andproject the composite word “FreePrints” as itsbrand, and that customers and competitors had

come to treat it as such. This is critical from atrademark perspective, as the words Free Printsare inherently descriptive of the service which isprovided by the app.

The defendant, Photobox, also operates asuccessful photo printing website and anassociated app. However, its business model hadbeen largely focused on a pay-per-print model.This model began to suffer, in particular fromcompetitors like FreePrints offering customersdozens of free photos per month.

Photobox therefore decided to launch a new appto compete directly with FreePrints and others.It launched the free version of its app in April 2019,and later that month PlanetArt issued theseproceedings.

Trademark infringement By the time the case came to trial, PlanetArt’sprimary claim was for trademark infringementunder sections 10(2) and 10(3) of the Trade MarksAct 1994, which is the UK’s domestic trademarklegislation.

Photobox’s Free Printsapp icon found toinfringe its competitor’strademark

Sean Ibbetson, Associate in the Brands, Designs & Copyright team at Bristows,discusses this recent High Court judgment. Whilst the case shows howtrademark owners can successfully prevent others from using terms whichare inherently descriptive, it also demonstrates the limited scope of protectionwhich is provided by trademarks towards the descriptive end of the spectrum.

Sean Ibbetson

PHOTOBOX

PlanetArt’s registered trademark ”


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The first sign shown below is the image whichappears when a user encounters the Photoboxapp in an app store. The second image is a signused by Photobox at other times, such as inemail communications to its existing customers.

Whilst the judge was persuaded that PlanetArthad some goodwill in “FreePrints”, and that theterm had acquired a secondary meaning in thatit had come to distinguish the claimant, he wasnot persuaded that Photobox’s signs amountedto a misrepresentation, which is the criticalelement required to succeed in a passing offclaim.

The judge reached that conclusion for twomain reasons.

First, in relation to the icon which was foundto infringe PlanetArt’s trademark, the judgenoted that this icon only appears on the user’sscreen after it has been downloaded. In reachingthis finding, the judge stressed the broadercontext of the use which can be taken intoaccount in a passing off claim compared to atrademark claim.

The second major reason for finding that therewas no passing off was the absence of anyevidence of actual confusion, despite there beingample opportunity for it to have arisen sincePhotobox launched its app. It is interesting thatthe judge reached a different conclusion onpassing off than trademark infringement, when itis often the case that one result follows theother. The analysis shows the subtle differencesbetween the two causes of action and providesa useful reminder of the benefits of obtainingregistered trademark protection.

Using a descriptive term Whilst PlanetArt largely emerged from this caseas the winner, the judge stresses in hisinteresting and unusual concluding remarks onthe future conduct of the claim that they “cannotand should not attempt to prevent genuinelydescriptive use of the term "FREE PRINTS" in respect of a business or app offering free prints…. and must give other traders, including theDefendants, broad latitude in how that iscommunicated.”

This is a useful warning and reminder of thelimits which companies face when they adopt adescriptive term as their brand.

As for Photobox - it will be relieved, in manyrespects, that PlanetArt succeeded on quite anarrow basis. In particular, the judge’s findingsmean that relatively small changes are neededto its icon to ensure that it does not infringePlanetArt’s rights. Simply inserting its housemark Photobox into the name of the icon wouldlikely be sufficient to avoid liability. Indeed, avisitor to the app store who visits the app storetoday and downloads the Photobox free printsapp will find that it has a new pink icon with thewords “Photobox” below.

PlanetArtlargelyemergedfrom thiscaseas thewinner.

”

“

[email protected]

Photobox’s app store name and branding

Photobox’s stylized free prints logo

The judge found that the above signs did notinfringe PlanetArt’s registered trademark.

This was primarily because both signs containthe word “Photobox” “prominently and in aposition and manner where ordinarily consumerswould expect a brand to be found.”

This has an impact on the overall assessmentunder both s.10(2) and (3) of the Trade Marks Act1994, because the average consumer will attributeorigin significance to the Photobox element of thesign, and a far greater descriptive significance tothe element which is naturally descriptive (i.e.“free prints”).

The judge therefore rejected PlanetArt’sargument that consumers would instead seeboth the “Photobox” and “Free Prints” elementsas being origin denoting.

The result in relation to these two later signsmay well have been different if the FreePrintsbrand was not one which was inherently adescriptive term. By way of example, had theclaimant’s app been known as “PlanetArt” thenthe use of the sign “Photobox PlanetArt” in theways shown above would almost certainly havebeen found to infringe, following the line ofauthorities which flow from the Court of Justiceof the European Union’s decision in Medion AG vThomson, in relation to the sign THOMSON LIFE.This difference shows one of the main downsidesof PlanetArt choosing an inherently descriptiveterm as its brand.

PlanetArt’s unsuccessful passing off claim PlanetArt also alleged that each the signs usedby Photobox amounted to passing off, a specificUK tort which protects unregistered trademarks.


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be decentralized, the primary asset would, inturn, be a CAD file - wherein it would be licensedor sold to third parties.

Intersection with trademark lawTrademarks do not protect products unlessthere is some reference to a certain commercialorigin which forms the part of the company’sgoodwill and reputation.

It becomes necessary to distinguish betweenthree types of printing: printing only the trademark;printing the whole item to which the trademarkis affixed; and printing the whole item withoutthe trademark. 3D printing accommodates allsuch possibilities, and this is only the beginning.

3D printing technology demarcates theprocesses of design and manufacturing. In doingso, it demystifies trademarks, especially as symbolsof source. So much so, that manufacturing canbe done by anyone having access to a 3D printer- thus democratizing and commoditizing theprocess. Designing a particular product can beinitiated by any individual with an iota of knowledgeabout software, thus making it even moredecentralized. Encouraging quality manufacturingamong brand owners becomes less importantwhen manufacturing is in the hands of consumers.In addition, in cases where brand owners aremerely designers and not manufacturers, otherIP regimes such as design patents, utilitypatents, and copyright take precedence.

IssuesThe ability to assemble products withany company’s trademark on themraises serious concerns, such as:• Search difficulties -

given the closesimilarity betweenauthentic goodsand the 3D printedones.

goods carry a message that is quite differentfrom the commercial intent of traditionalmanufacturers

• Well-known marks - for proprietors of well-known marks, CAD file generators maypose a threat to their reputation by creatinga product which is detrimental to thedistinctive character of the famous mark andthus draws its value from the increasedattention created.

• Depreciation of the value of traditionalmanufacturers’ trademark assets.

• Devaluation of internet-based models -since consumers would find it moreconvenient to easily access CAD files ratherthan the traditional B2C website features. Much of the damage that 3D-printing technology

can cause trademark owners is underpinned bythe possibility of a single trademark-bearingCAD file being copied across the internet. Neverbefore has a brand owner needed to be worriedabout a tech savvy individual making a templatein his basement and in turn allowing millions tocreate counterfeits.

Many of the intermediaries may be involved inthe process of creating a 3D printed material/product. Yet the role of the intermediaries islikely to be deteriorated when high quality 3Dprinters become widely available, thus making

3D printing even more decentralized. Moreover, the upsurge in 3D printing

impacts the very function and essence of trademarks, i.e. serving as source

identifiers and the seal ofgenuineness for consumers, thusproviding an implied guarantee ofconsistent quality. In a 3D printworld, trademarks’ ability to createa connection to the source of origin

of goods becomes less relevant, asconsumers themselves produce the

goods and are aware of their origin. Onthe other hand, consumers will not be able

to ascertain the quality and brand value of a

RésuméYashvardhan RanaYashvardhan is an IP Lawyer from New Delhi, India with aparticular focus on prosecution – from registrability analysisand risk management to providing legal opinion on theavailability of use, adoption and registrability of trademarkslaunched by Fortune 500 companies and FMCGs in India. He

is a part of the Trademarks, Copyright and Design Prosecutionteam at Inttl Advocare, Noida, India, and a member of Bar

Council of Delhi, DHCBA, APAA, INTA and FICCI IP Forum. InJanuary 2020 he was appointed as an Editor of The Trade Mark Reporter,INTA, and in November 2019 he was the recipient of the Top 50 EmergingIP Professional in the world award - The IPR Gorilla.

• Deceptive similarity due to the likelihood ofconsumer confusion.

• Post-sale confusion - weakened outreach as3D printed goods resembling authentic

Rana_TML4_v3:Layout 1 13/7/20 10:19 Page 35

Enabling the creation of three-dimensionalobjects made from a digital ComputerAided Design (“CAD”) file, 3D printing is a

rapidly-growing technological innovation. If youare not excited by this new invention, well, it isbecause you are not thinking big enough. It isperceived by many renowned authors as astepping stone in introducing us to the very ideaof a “Third Industrial Revolution” or, to say theleast, in redefining the world we live in.

3D printing has been defined as an additivemanufacturing technique that creates objectsby printing layer upon layer of material based ondigital models. It works by taking a specimen ofa design model or a blueprint stored in a digitalfile, either by scanning the original object or bycoding on a CAD file. This file serves as a basefor subsequent printing, “slicing” that digitaldesign model into cross-sections. That“sliced” design is then sent to a 3D printer,which manufactures the object bystarting at the base layer and buildinga series of layers until the object isbuilt using the raw materials thatare needed for its composition.

However, for trademark owners,a significant advantage lies in the ability to quickly, andinexpensively, make trademarkusage of a mark, either nation-wide or internationally by postingproducts for sale on a website, orby advertising services online.A disadvantage, however, is theease with which counterfeiting, orinfringement can arise.

High-definition photos, graphics, images, etc.can be instantaneously and accurately digitallyreproduced and then advertised worldwide withjust a click of the mouse.

Airline companies, sports teams, majorcorporations such as Finnair for building partsfor aircraft, Adidas creating soles for shoes,William F1 racing team building parts for theirFormula One cars, have all incorporated 3Dprinting as part of their business operations. Also,3D printed guns are manufactured both inAustralia and United States. The potential of 3Dprinting is remarkable, and will be closely monitoredby consumers, manufacturers, and regulatorsalike in the years to come. Given that themanufacturing ability of many companies would

Trademark issuesregarding 3D printing:A new dimension of IP infringement

Yashvardhan Rana, IP Lawyer at Inttl Advocare, discusses the far-reachingtrademark implications of this revolutionary and fast-developing technology.

Yashvardhan Rana

3D PRINTING

THE TRADEMARK LAWYER CTC Legal Media34


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RésumésManisha Singh Manisha Singh is a founder and the Managing Partner of LexOrbis. Sheis known and respected for her deep expertise on prosecution andenforcement of all forms of IP rights and for strategizing and managingglobal patents, trademarks, and designs portfolios of large global anddomestic companies. Her keen interest in using and deploying latesttechnology tools and processes has immensely helped the firm todevelop efficient IP service delivery models and to provide best-in-the-class services.

Gautam KumarGautam is a Senior Associate with LexOrbis working with the Litigationand Enforcement group and has been dealing with IP litigation in DelhiDistrict Courts, High Court of Delhi, Supreme Court, various tribunals,and other relevant forums in Delhi. He has worked on severalcontentious IP matters including trademarks, copyright infringement andpassing off along with cancellation actions and appeals before the IPAB.

Jawed Habib is a well-known name in therealm of hair cutting and styling in India.Over the years, this name has acquired a

significant brand value, so much so that it boastsof more than 600 franchises across the country.

The underlying principle of any franchising islicensing the use of a trademark or a successfulbrand to third parties for some royalty in return.Although franchising is an indicator of successof a brand and a beneficial commercial model,there remains susceptibility towards infringementafter the license is revoked or when its tenureexpires. Moreover, if such instances of infringementby ex-franchisees are not curtailed immediatelyand effectively, it not just dilutes the brand, butthe reliability of this commercial model is alsoundermined.

Starting a business in one’s name or surnameis very common across the world. Many have usedtheir name and surname with their business toassociate their identity with it. However, themajor problem associated with registration ofname and surname as a trademark is with itsprotection. One may get it registered but cannotclaim exclusive right over the mark and stopothers from using it. However, the names ofindividuals that have acquired a brand value oftheir own have been registered as trademarksand have claimed exclusivity, regardless of the

fact that they might be common names. To cite afew examples, Mahindra & Mahindra, Birla, Tata,Dabur, Bajaj, Ford, Sony, McDonalds, Philips etc.are famous and registered trademarks that arealso common names. In Mahendra and MahendraSeeds Pvt. Ltd. vs Mahindra & Mahindra Ltd. theHon’ble High Court of Gujarat in an Appeal videorder dated 10 May 2002 held:

“There is no manner of doubt thatdistinctiveness and secondary meaningacquired by the plaintiff of its trade name'Mahindra' and "Mahindra and Mahindra" if used by employing similar words by thedefendant or any other person even if havingdifferent field of activity would definitely resultin creating confusion in the public mind that itrelates to the plaintiff. The defence of thedefendant, therefore, that the defendantcompany is carrying on business of seeds,with Laxmi Trade Mark and that Mahendra isa common name and that there are manypersons trading in the same name and thatthe plaintiff company carries on business inautomobiles industry, electronic goods, textilepiece goods and other fields of activitieshaving no commonness have no substance”.Jawed Habib, despite being a common name,

has also acquired a brand value and the publicautomatically associates this name with hairstyling and salon services. Although this brandhas relied upon franchising to commerciallyexploit the value associated with it, there havebeen several instances of infringement by ex-franchisees in the past and those have beensuccessfully pursued. For instance, Jawed Habibsuccessfully restrained two ex-franchisees viz.M/s. VVD Enterprises and Mr. Suresh Kumar inDelhi and Chennai respectively and many othersin the past (Jawed Habib Hair & Beauty Ltd. VsM/s V.V.D. Enterprises -TM 5/12 vide order datedJuly 15, 2014 and Jawed Habib Hair & Beauty Ltd.Vs Mr. Suresh Kumar passed by Bombay HighCourt vide order dated April 24, 2017). Needlessto say; pursuing against infringers not only defendsthe trademark but acts as a deterrent topotential infringers especially since precedentsare created by Court decisions along the way. Infact, in case of ex-franchisee infringers, it is readilyestablished that they have acknowledged theregistration of the trademark in favour of the

It’s all in the nameManisha Singh, Partner, and Gautam Kumar, Senior Associate, of LexOrbisexamine the difficulties inherent in trademarking names.

Manisha Singh

Gautam Kumar

LexOrbis_TML4_v2:Layout 1 13/7/20 10:21 Page 37

3D PRINTING


product in a post-sale environment. Consider the “Nike swoosh” for example - it is

easy to modify the shape slightly without skewingit considerably so that it does not lose itsassociation with the Nike brand. In this example,the CAD file may be perceived as a “digitalcounterfeit” since anyone with access to the fileand a 3D printer would be able to print out thearticle, a seemingly perfect iteration of the signrepresenting a famous mark. Creators of such aCAD file may very well be liable for secondaryinfringement. Secondary infringement occurswhen a person materially contributes or inducesthe direct infringer to commit the infringement.However, for secondary infringement to beestablished, primary infringement must be proven.

Does your existing IP frameworkcover it?According to the Agreement on Trade-RelatedAspects of Intellectual Property Rights (TRIPS),shapes are a registrable subject matter. UnderArticle 15(1), a trademark can be constituted byany sign, or any combination of signs, capableof distinguishing the goods or services of oneundertaking from those of other undertakings.

In most jurisdictions, or at least those that aresignatories to TRIPS, shapes are subject mattercapable of registration as a trademark. This isbecause TRIPS sets out a broad definition of whatconstitutes a trademark, so as to include anysign capable of distinguishing goods or services.So, in addition to all of the more conventionalsigns that are used as trademarks such as logosand brand names, 2D and 3D shapes are alsoregistrable. When this fact is considered in thecontext of 3D printing, it is clear that trademarklaw is ripe for disruption by 3D printing.

United StatesFor trademark infringement to be actionable, aplaintiff in the U.S. must plead and show interalia that the challenged use was in commerce.Even though the threshold for showing use incommerce is low, 3D at-home printing thatincludes another’s trademark solely for personaluse is unlikely (without more) to constitute anactionable use in commerce. If such 3D productis offered, sold, or displayed to the public, however,such activity may of course be actionable. However,a use that is likely to dilute a famous mark doesnot need to be in commerce to be actionable.

EU and UKIt has to be emphasized that, at least under EUlaw, the private reproduction of a trademark isnot an infringement. This means that the essenceof 3D printing, embodied in a homemadeproduction, will not directly and radically affectthe core of trademark protection.

Under the UK Trade Mark Act, a person infringesa registered trademark if he uses in the course oftrade a sign which is identical with the trademark inrelation to goods or services which are identicalwith those for which it is registered. But not everyuse of a mark can be prohibited by the owner ofthe mark. As the court emphasized in Arsenal vReed [Case C-2016/01 (2002) E.C.R.], the exerciseof the exclusive right “must be reserved to casesin which a third party's use of the sign affects oris liable to affect the functions of the trade mark, inparticular its essential function of guaranteeingto consumers the origin of the goods”. Thus, itdoes not span over any and every use.

IndiaUnder the TM Act, Section 34 (1) (a) to (c) indicatesthat the unauthorized use in the course of tradeof an identical or similar to the trademark forgoods or services which are identical or similarto the trademark is prohibited. Presently, the Actregulates the use of trademarks and not theircreation. A trademark is infringed by the“unauthorized use in the course of trade”. Theuse of the phrase in the “course of trade” alludesto a commercial aspect and does not extend topersonal use. In order to distinguish private andcommercial use, the law primarily focuses onwhether the use takes place in the context of acommercial activity with a view to obtain amonetary benefit or if it is used merely forprivate use.

Therefore, if a person 3D prints a trademarkedproduct for personal use, such use would not constitute infringement based on theaforementioned provisions. A 3D printabletrademark object may include numerousobjects that depict trademarks on physicalobjects, such as phone covers, key chains, toys,stationery, etc. Therefore, the potential scope forinfringement of trademarks is wide-ranging.

Concluding Remarks What 3D printing changes is that counterfeitingwill become easier, faster, more accessible, andcheaper. Moreover, the use of CAD files in theonline environment, empowering regular userswith sophisticated tools, may increase the incentiveto create copies of trademarked goods and tostart profiting from them.

If you arenot excitedby this newinvention,well, it isbecause you are notthinking bigenough.

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ContactInttl Advocare, IP Consultants and AttorneysOffice Address - Inttl Advocare, Intellectual Property Consultants andAttorneys, NoidaHome Address - 601, T-3, Parsvnath La Tropicana, Civil Lines, New DelhiTel: +91-9910887642Email: [email protected]; [email protected]


mailto:yash0843%40gmail.com?subject=

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RésuméHilda-Georgina Kwafo-Akoto Hilda-Georgina is an Associate Solicitor at Mew burn Ellis LLP andhandles contentious and non-contentious IP matters. She hasexperience of drafting letters before action, settlement agreements,written submissions, licences and assignments. She has worked on avariety of matters including a mediation before the Centre of EffectiveDispute Resolution and a registered design dispute before theIntellectual Property Enterprise Court.

Notable dates in the trademark lawlandscapes of the United Kingdom andthe European Union include 6 February

2018, 16 October 2019, and 29 January 2020.These dates correlate with the decisions of theEngland and Wales High Court of Justice (“theHigh Court”), the General Court of the EU (“theGeneral Court”) and the Court of Justice of theEU (“the CJEU”). The cascading nature of the Skyv SkyKick saga is reflective of (a) the high stakesinvolved in respect to the “commonplace”practice of brand owners filing broad trademarkspecifications, and (b) the “important issues of European trademark law” identified by Mr Justice Arnold, as he then was. On 29 April2020, the High Court delivered the latestinstallment in this long-running trademark dispute.

The Battle Ground Parallels can be drawn between the biblicalaccount of the shepherd boy, David and thePhilistine giant, Goliath on the one hand; andSeattle start-up, SkyKick, Inc. and the media andtelecommunications stalwart, Sky plc on the other.Ultimately, the tactical stones creatively deployedfrom the legal slingshot of SkyKick UK Limitedand SkyKick, Inc. (collectively “SkyKick”) did notprevail against Sky plc, Sky International AG andSky UK Limited (collectively “Sky”).

The strength of a brand’s trademark portfoliois inextricably linked to the ability of a brand toeffectively protect, exploit, and enforce itstrademarks. Sky is well-known for taking robustaction and commencing trademark infringementand passing off actions against owners of SKYformative marks such as Skype, Skyscanner andinevitably SkyKick.

In regard to the latter, Sky alleged that fourEuropean Union trademarks and one UKtrademark (“the Trademarks”) had been infringedas a consequence of SkyKick’s European launchin November 2014 using variants of the SKYKICKsign. It is important to note from the outset thatSky markets itself as “Europe’s leading direct-to-

consumer media and entertainment company”,whereas, SkyKick’s core business areas spancloud migration, cloud back-up and cloudmanagement.

Against this background, SkyKick (a) deniedtrademark infringement and passing off, (b)counterclaimed for a declaration that theTrademarks were either wholly or partiallyinvalid on the grounds that the specifications ofgoods and services for the Trademarks wereinsufficiently clear and precise and (c) Sky hadacted in bad faith when it filed the applicationsfor registration of the Trademarks because it didnot have an intention to use the Trademarks inrelation to the goods and services. The battlelines were drawn but it was noted in the HighCourt that SkyKick did not counterclaim for totalor partial revocation of the Trademarks for non-use. Mr Justice Arnold opined that SkyKickcould have availed itself of this line of attack if ithad notified Sky that it planned to make such acounterclaim and amended its statement ofcase once the five-year grace period for each ofthe Trademarks had expired.

Even though Sky does not develop SaaSproducts, there exists an overlap between thespecifications for the Trademarks and theSKYKICK sign in Nice Classes 9 and 38. The HighCourt and General Court concurred that theterm “computer software” is too broad andtechnological advancements have heightenedits ubiquitous nature. Notably, the CJEU held

Is Sky the limit in the Davidversus Goliath trademarkbattle of the last decade?

Hilda-Georgina Kwafo-Akoto of Mewburn Ellis examines the potentialimplications of Sky v Skykick.

Hilda-Georgina Kwafo-Akoto

Sky is well-knownfor takingrobustaction.

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franchisor and have no prior-use right in suchtrademark, which is the most common defencetaken by infringers in any suit against a trademarkinfringement.

In one more decision, again from the BombayHigh Court, another ex-franchisee has beenrestrained from using/infringing the logos/labels“JAWED HABIB”, “JH”, “JH JAWED HABIB” and“JAWED HABIB HAIR AND BEAUTY”. The SingleJudge of the Bombay High Court passed this orderon 16 October 2019, in the case Jawed Habib Hairand Beauty Limited Vs Jawed Habib Hair and Beauty.

In this case, the Plaintiff entered into a franchiseagreement with the Defendant for three yearswhich permitted them to use the trademarks of thePlaintiff at the outlet located in New Panvel, NaviMumbai on royalty basis. The said agreement alsoincluded a requirement for submission of daily salesreport and a payment of monthly royalty fees.

As per the Plaintiff, the Defendant continuouslydefaulted in payment of the royalty charges anddid not pay the arrears even after the expiry ofthe franchise agreement. The Defendant alsocontinued to carry on said business under thename “JAWED HABIB HAIR AND BEAUTY”despite expiry of the franchise agreement andtwo cease and desist notices from the Plaintiff.Finding no other resort, the Plaintiff filed the instantcase against the Defendant before the BombayHigh Court. Although no ex-parte ad interiminjunction order was passed, the Defendantchose not to contest the suit despite service ofthe summons. The Court proceeded with thematter and prima facie decided to grant ad-interim injunction in favour of the Plaintiff andagainst the Defendant for infringement of theregistered trademark of the Plaintiff “JAWEDHABIB” pending hearing and final disposal of the

suit. The Court observed:“…Though the Defendants have been served,they have chosen not to appear before theCourt. From the record, at least prima facie, itappears that "JAWED HABIB", "JH" "JH JAWEDHABIB" and "JAWED HABIB HAIR ANDBEAUTY" are registered trademarks of thePlaintiff in Class 44 of the Trade Marks Act,1999 read with the Rules thereunder. Perusingthe papers on record and especially thephotographs annexed at Exhibit-H (pages 162to 164), it is quite apparent that theDefendants are infringing the registeredtrademark of the Plaintiff "JAWED HABIB". Ifind that a strong prima facie case is madeout for grant of ad-interim reliefs…”The key to the protection of common names

as trademarks is acquired distinctiveness andestablishing a secondary meaning to it, whichcan be challenging for any business. The samecan become a very strong mark such that thepublic in general recognises and associates certaingoods and services with that name only. We canwitness several common names which havebecome strong trademarks across the globeand have acquired distinctiveness over the years.To conclude, unless the registered commonname acquires distinctiveness and secondarymeaning, the brand owner must preparethemselves for an uphill legal battle.

Starting abusiness inone’s nameor surnameis verycommonacross theworld.

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

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The High Court is required to implementretained EU case law subject to section 6(4)(b)European Union (Withdrawal) Act 2018.Inevitably, Lord Justice Arnold’s concisejudgment of 62 paragraphs would have beenanti-climactic for those curious to learn whetherthe CJEU’s new test for bad faith would bereformulated in recognition of the proceduralrequirement for a statement of use undersection 32(3) Trade Marks Act 1994. It was notedthat Sky had made a partly false section 32(3)declaration in relation to its application to theUKIPO to register the word mark SKY. By doingso, Sky had acted in a manner that was“inconsistent with honest practices in industrialand commercial matters” which constituted badfaith. Additionally, Lord Justice Arnold limitedthe specifications of the trademarks in relationto the terms “computer software” and “computersoftware supplied by the internet” so that SKYwas afforded with the requisite level ofprotection.

Ultimately, the High Court held that SkyKickhad infringed the trademarks in relation toelectronic mail services in Class 38 as “Sky hadsupplied SKY-branded email services tobroadband customers since July 2006”. It iscontended that the High Court’s most recent

decision was neither a decisive nor pyrrhicvictory for Sky. The trademarks were held to bepartially invalid and, as a consequence, thespecifications were cut down to the extent thatSkyKick had proved that Sky had acted in badfaith. Arguably, it is prudent for brand ownersseeking to enforce rights in the UK to considerwhether to triage broad trademarkspecifications where the underlying commerciallogic is tenuous. It will also be helpful tomaintain records that shed light on thecommercial justification of trademark filingstrategies so that brands owners are well-positioned to defend bad faith allegations. It issubmitted that it is premature to perceive theHigh Court’s highly anticipated decision in Sky vSkyKick as the final advance, only time will tell ifSkyKick launches a counter-attack and seekspermission to appeal.

SkyKick hadinfringedthetrademarks.

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ContactMewburn Ellis LLPAurora Building, Counterslip, Bristol BS1 6BX, United KingdomTel: 0117 945 1234www.mewburn.com

Lawyer

TrademarkIssue 4 2020

GLOBAL REACH, LOCAL KNOWLEDGEwww.trademarklawyermagazine.com

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A subscription to The TrademarkLawyer magazine will ensure that you and your colleagues havedetailed information on all the mostimportant developments within theinternational trademark law industry.

The Trademark Lawyer magazine is dedicated only to the trademarkindustry and is written by trademarkexperts for trademark professionalsworldwide.

A subscription includes a hard copyand an electronic copy which can be read easily on your smartphone or tablet.

Subscribe now!

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SKYKICK


that registration of a trademark for “computersoftware” was not contrary to public policy becauseit conferred a monopoly that did not align withany legitimate commercial interest of the proprietor.It is submitted that a delicate balance needs to be struck between (a) forward-planning for the brand’s future expansion and potentialdiversification by selecting the correct classesand relevant terms within each class; and (b)framing trademark applications so broadly thatit cannot be objectively assessed that there wasa reasonable commercial rationale for the brandowner’s filing strategy.

Bad faith Should the filing of broad trademark specificationsbe indicative of bad faith? The brand owner couldhave (a) made an error in commercial judgementand over-estimated future revenue streams or(b) deliberately filed trademark applicationswithout the intention to use the mark in relationto all or some of the goods and servicesbecause it was a defensive strategy to retainexclusivity to the mark. The underlying rationaleof the trademark system is to distinguish goodsand services from one undertaking from thegoods and services of another undertaking.Inevitably, disruptors will encounter challengeswith accessing certain markets using suitabletrademarks because they are identical or similarto earlier marks. According to Attorney GeneralTanchev, “one of the most problematic aspectsof a trademark” is the role and function of atrademark specification. He raised the questionof whether EU trademark law had reached animportant juncture whereby a trademarkproprietor was effectively granted “an absolutemonopoly in the face of which one can no longer

defend himself in infringement proceedings”even if the earlier mark had not been used, andis not likely to be used, for many of the goodsand services for which it is registered. Thequestion arises as to whether brand owners areexploiting a loophole of the principle ofspeciality to obtain exclusive rights to a broadrange of specified goods and services withoutcommercial justification. Arguably, intellectualproperty offices are best placed to address issuesof lack of clarity and precision of a specificationduring the examination process.

The opinion of an Advocate General is advisoryrather than binding on the CJEU. In Sky v SkyKick,the CJEU acknowledged Attorney GeneralTanchev’s observation that applying to register atrademark without the intention to use inrelation to the specified goods and services mayconstitute bad faith. The CJEU held that bad faithcan only be established if there was an intentionof “undermining, in a manner inconsistent withhonest practices, the interests of third parties, orof obtaining, without even targeting a specific thirdparty, an exclusive right for purposes other thanthose falling within the functions of a trademark.”

Brand owners will welcome the clarification ofthe grounds of invalidity and the high thresholdto be overcome in order to establish that atrademark application had been made in badfaith. New market entrants who find themselvesin the position of SkyKick will be aggrieved thatat present there is no practical remedy if (a)earlier marks are not vulnerable to non-userevocation actions and (b) the high evidentialthreshold to establish bad faith cannot be met.The CJEU correctly asserts that a proprietor oftrademarks with broad specifications is onlyconferred protection for goods and services forwhich has been put to genuine use. Arguably, acritical opportunity was missed to providegreater clarity on the interplay between badfaith trademark applications and the practice ofever-greening.

Even though the preliminary reference did notconcern the practice of re-filing earlier marks,the CJEU did not acknowledge that the remedyof revocation for non-use can be undermined ifbrand owners are effectively permitted toindefinitely extend the five-year grace period tocircumvent the proof of use requirements andcorresponding sanctions.

The Final Advance or a Post-Brexit Pandora’s Box?The CJEU has delivered its judgment on the fivequestions of European trademark law that theHigh Court did not consider to be acte clair. It isapparent that the requirement for a trademarkspecification to be sufficiently clear and preciseis not applicable to trademark registrations.

Brandowners willwelcometheclarificationof thegrounds ofinvalidity.

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the total number of patents held in the USoverall, over 90% are held by men.

Heather Metcalf, Chief Research Officer of theAssociation for Women in Science, spoke aboutsystemic bias and how this becomes embeddedin our workplace thinking. She also examinedthe complex range of reasons why so manyfemale STEM graduates take jobs elsewhere,and highlighted the fact that direct harassment,such as that directed towards LGBTQ people,remains depressingly widespread.

Lindsey Zuloaga, Director of Data Science atHireVue, talked about systemic bias and abouthow algorithms, regardless of whether they havebeen programmed with the best of intentions,so often discriminate against minorities becausethey have not been "trained" using sufficientlydiverse data – arguably an entirely predictableresult of an overwhelming majority of softwareprogrammers being white men.

A highlight of Day Two was the discussion “Willtrademarks survive the rise of the machines?”. Theanswer, according to Lou Perry, Partner at FaegreDrinker Biddle & Reath LLP, is “yes, but it willcertainly be an interesting journey”. Under debatewas whether the concept of a trademark as abrand identifier really means all that much in anage when products are so often selected for usby Amazon algorithms et al based on customerprofiling data and purchase histories. In the 21stcentury, would it not make more sense toconsider whether potentially infringing products

might cause confusion not just for us flesh-and-blood consumers, but also for AIs? After all,reasoned Michael K. Friedland, Partner atKnobbe Martens, US trademark law does notspecify that an actual “person” might bedeceived by an infringing product, although thediscussion conceded that the relevant case lawdoes indeed take this as a given. That said, therehave already been some important decisions onthis topic, and while it seems that, for example,Amazon product searches that direct aconsumer away from one trademarked brand toanother do not, in themselves, infringe upon anytrademark, the risk that online retailers may endfulfil orders with counterfeit products remainsvery real.

The issue of risk, this time of copyrightinfringement, was further discussed in “AI isbeing trained using human creative output. Is thatfair?” which looked at copyright's role in theFourth Industrial Revolution where the training ofAI to do anything from driving cars to providingsearch tools that scan the contents of millionsof books necessarily involves the ingestion bythat AI of vast quantities of copyrighted material.Lauryn Guttenplan, Deputy General Counsel atthe Smithsonian Institution, Eleanor M. Lackman,Partner at Mitchell Silberberg & Knupp LLP, andNick Aries, Partner at Bird & Bird LLP, askedwhether such input is protected by fair use(where such a doctrine even exists) and whetherthe output, such as a car-driving AI, was similarly

There is, no doubt, a certainattraction in keepingtradesecrets.

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KnowIt 2020became an onlinelive-streamevent.

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In May, The Trademark Lawyer was proud tobe, with our sister titles, official media partnerto KnowIt, a new annual event which aims to

“define intellectual output in a digital world andusher in the Fourth Industrial Revolution” via aprogram of discussions and seminars, attended,hosted, and presented by IP industry leaders, in-house counsel, creators, and many others.

The original plan was for the event to havebeen held in Las Vegas, but, of course, the currentglobal pandemic made this impossible. Instead,KnowIt 2020 became an online live-streamevent, although, as anybody who has spent anytime in Las Vegas can attest, spending time inthe world’s gambling capital, where it’s all too easyto completely lose track of time whilst drinkingto excess, is perhaps not all that different to lifeunder imposed lockdown...

Undeterred by this shift in presentation, KnowItbegan by asking one of the big questions of themoment: “Is intellectual property ready for primetime in the Fourth Industrial Revolution?”

Laura A. Coruzzi, Senior Vice President of IP atREGENXBIO Inc, argued that the continual erosionof the US patent system over the past 30 yearshas undermined innovation, citing specifically theexample of the US Supreme Court’s decision inMyriad Genetics that naturally-occurring humangenes cannot be patent-eligible.

Decisions such as these have, argued Laura,undermined diagnostic infrastructure and put theUS significantly behind the rest of the world,meaning that, sadly, the US has not been asprepared for the COVID-19 outbreak as it oughtto have been.

Agreeing, David J. Kappos, Partner at Cravath,Swaine & Moore LLP, said that when the USgovernment appeared to suggest that it couldtake ownership of any IP arising from vaccinedevelopment, it merely served to further dissuadebiopharma from investing in such research.

Along with David Nimmer of Irell & Manella LLP,Laura and David discussed how some companiesrely upon trade secrets rather than seek patentprotection. The presentation “The Allure of TradeSecrets” discussed this area further, looking atthe pros and cons of going down the “tradesecrets route”. There is, no doubt, a certainattraction in keeping trade secrets; they are, bydefinition, confidential, there are no statutorytime limits to consider, legal costs are reduced,and there is no lengthy application process. Onthe other hand, patents enjoy greater legalprotection in the event of infringement, there islittle a company can do to stop competitorsreverse-engineering its tech if patent protectionis lacking, and, of course, there is the ever-present risk of employees jumping ship andtaking valuable trade secrets with them. Beingable to prove harm in terms of financial andreputational impact in the event of a theft isclearly a key consideration, and Kim R. Jessum,Chief IP Counsel U.S. and Associate GeneralCounsel & Secretary at Heraeus Incorporated,Sheryl Falk, Partner and Co-Lead of Winston’sGlobal Privacy & Data Security at Winston &Strawn LLP, Serge D. Jorgensen, Founding Partnerand CTO of Sylint, and Carl A. Kukkonen, III,Partner at Jones Day, discussed this in detail,emphasizing in particular the critical need tomaintain proper documentation and data security.What emerged, again, is that there is considerabledisquiet regarding the US patent system’s abilityto adequately support innovation and protect IP.

The gender disparity in IP, particularly when itcomes to patent applications from the STEMfields, is something we have looked at in TheTrademark Lawyer. Discussion “Closing the GenderGap” dissected the complex interplay of factorsbehind a status quo that sees women gaininghalf of all engineering and science degreesawarded in the US, and yet, when it comes to

KnowIt 2020 –Editor’s report

Matt Seex, Editor of The Trademark Lawyer, looks back at a thought-provoking and entertaining three-day live-stream event.

Matt Seex

KNOWIT 2020


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trademark is often an association, public institution,or a cooperative that allows its members to usethe trademark to identify and distinguish origin,material, and mode of manufacturer or othercommon characteristics. The owner of thecollective trademark is also responsible forensuring that certain standards and regulationsare met by their members and users of the

RésuméInês Tavares Inês Tavares is a Trademark and PatentAttorney. She has a degree and post-graduation from the University of LisbonLaw school. In 2018 she obtained aMaster’s Degree by successfullydefending her thesis on the field ofIntellectual Property, namely inarbitration of pharmaceutical patents atLisbon’s Catholic University.

Certification trademarks have a specificpurpose aside from protecting the mark.Certification trademarks are trademarks

that have the capability of distinguishing goodsor services certified by the proprietor of the markin what concerns the mode or the material of themanufacture of said goods or execution of saidservices, the quality, and reliability of those goodsand/or services. In most countries, certificationtrademarks are not a guarantee of geographicalorigin, unlike geographical indications and,sometimes, collective trademarks; nevertheless,there are jurisdictions in which CertificationTrademarks are capable of designatinggeographical origin. In essence, a certificationtrademark gives a guarantee for specificcharacteristic of certain goods or/and services.

It is rather easy to confuse CertificationTrademarks with Collective ones. The big differencebetween Certification and Collective Trademarksis that the latter are limited to use by a certaingroup of enterprises. The owner of a collective

Protection and use of CertificationTrademarks in Africa

Inês Tavares of Inventa International outlines how various Africanjurisdictions define and implement Certification Trademarks.

Inês Tavares

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protected. The intended purpose of the outputtedresult - whether that result is “transformative” - iskey, although the situation in jurisdictions suchas the EU, where there is no fair use doctrine, ismore complicated.

The third and final day of KnowIt 2020 saw adiscussion on “IP & Comics”, which provided acomprehensive look at the changing face ofcomics distribution over the decades, the impactof digital distribution on the industry, and howmedia licensing, especially for TV and film, hascarried so many well-known characters toimmense worldwide success over the last fewyears. Marc H. Greenberg, Founding Director ofthe IP Law Program at Golden Gate University,and Michael L. Lovitz, Partner at Lovitz IP LawPC, provided some fascinating insight, althoughthis commentator for one was saddened to think

YouTube of its unmanned test rockets explodingin mid-flight) as a means by which true innovationin 21st century space travel can be achieved. Itwas a great way to round off the three-day event.

Of course, the aforementioned discussions werebut a few highlights. From discussing the impactof current patent and copyright case law, to in-depth takes on AI, cybersecurity, privacy, andethics, KnowIt seemed to have every base covered.

All in all, this was an excellent event, and onewhich promises to make an even greater impactin 2021, when, hopefully, attendees and mediapartners alike can meet in person. Wheneverand wherever next year’s event takes place, TheTrademark Lawyer hopes to see you there.

RetiredNASAastronautGarrettReismanspoke abouthis amazingexperiencesin space.

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ContactMatt Seex, Editor, The Trademark [email protected]

of this still much-underratedartform being seen as a mere“loss leader” for the more lucrativebusiness of movie licensing and merchsales.

KnowIt 2020 went out in style with asupremely entertaining and humbling talk byretired NASA astronaut, and current SeniorAdvisor at Space X, Garrett Reisman, who spokecompellingly about his amazing experiences inspace, the questions people always ask him(which generally boil down to “what was it like?”)and the way in which Space X is celebrating riskand failure (going so far as to post videos on


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and therefore cannot use the CertificationTrademark to either identify or certify its owngoods and/or services. Any interested personcan make a request to remove the registrationof a Certification Trademark on different grounds:1) that the owner of said trademark uses it to itsown benefit to certify, and then sell, products orservices; 2) that the owner allows for its use incontravention with the terms and conditionspreviously accepted by the registry; or 3) theowner allows the trademark to be used in amanner that deceives the public as to the qualityor other certified common characteristics.

In every jurisdiction, standard trademarkregulations will apply, with the necessaryadaptations, to the Certification Trademarks.

In general, it is mandatory that at any giventime, the owner of a Certification Trademarkcommunicates to the Registry if any changesare made to the regulations governing theCertification Mark and those changes have to beentered into the Trademark Institute.

If any person or entity proves compliance withthe standards or regulations of the terms andconditions referred to in the Certification Trademark,the application may not be refused.

In Kenya, for instance, Certification trademarkscannot be assigned and are not transmissibleunless such action has the consent of the Courts.The same applies in Zambia and Zimbabwe, butauthorization is given by the Registrar. In Morocco itis also not permissible to assign collective andcertification trademarks. However, the collectiveand certification trademark transference may beauthorized by the competent administration ifthe transferee undertakes effective control ofthe use of the mark.

The Morocco Trademark Law has specificprovisions for Collective Marks and CertificationMarks, in which collective marks may be usedby any person who complies with regulationspreviously issued by the owner of theregistration and certification marks are affixedto goods and/or services that display, inparticular, with regard to the nature, propertiesor the qualities and overall characteristics thatare detailed in the respective regulations. Itslightly differs in qualification from other Africanjurisdictions. Both types of trademark applicationsmust include copy of the regulations governingits use, duly certified by their applicants.

According to the Industrial Property Acts ofRwanda, South Africa, and Zambia, Certificationtrademarks are capable of designatinggeographical origin, as well as other commoncharacteristics.

All in all, there are downsides and upsideswhen deciding to obtain protection of aCertification Trademark in Africa, the mostrelevant downside being the process, as it its

more demanding. The upside is certainly the assurance of quality and integrity suchcertification provides to a product or performanceof a service, which benefits all, but mostlyconsumers.

In my personal opinion, there is a clearbeneficial side to Certification (and Collective)Trademarks and their provision in other Africancountries should be encouraged in the future.

There areseveralfamousCertificationTrademarksoriginatingfromdifferentcountries.

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ContactInventa International Alameda dos Oceanos, 41, K21 Parque das Nações1990-207 LisbonTel: (+351) 213 150 970/[email protected]


AFRICA


trademark. Given that Collective Trademarkspromote the strict cooperation of a certain groupof people, they have become very relevant tolocal development of businesses. In Ghana forinstance, Collective Trademarks are especiallyessential for they can be used to protect culturalexpressions. In Kenya, Collective and CertificationTrademarks are used to protect and indicategeographical indications. In 2006, a trademarkapplication for “ECHUCHUKA” was filed in theKenyan Industrial Property Institute as a collectivetrademark for an aloe-vera based product that grows and is manufactured in and by thecommunity of Lake Turkana.

On the consumer’s point a view, the existenceof a certification trademark or a collectivetrademark on a specific product or serviceassures that said product or service complieswith a previously existing and accepted standardor regulation, ensuring, to the consumer, a guarantee of quality or other relevantcharacteristic of the product or service.

The main benefit of certification and collectivetrademarks is to encourage objectivity in theuse of a trademark and to ensure to consumers,as previously mentioned, certain requirements:quality of the materials, methods and manner ofproduction, or performance of services, qualityof accuracy, were properly met. Of course, thereare downsides as well. An applicant that intendsto use a Certification Trademark must complywith these standard and fixed specificationsrigorously. An applicant who wishes to protect aCertification, or a Collective Trademark musthave a method for determining if whether therequirements are being met by trademark usersand that method has to satisfy competentauthorities in order for the applicant to becomean approved certifier. Furthermore, overall theadministrative and regulatory burden oncertification marks is significant as compared tostandard trademarks.

There are several famous CertificationTrademarks originating from different countries,such as WOOLMARK, which assures productsare made from 100% wool; LABEL ROUGE, a Frenchcertification mark to ensure the quality of foodand non-food items as well as unprocessedagricultural products, which certifies that thoseproducts are on a superior level when comparedto similar ones on the market that do not havethe Label Rouge (Red Label); ENERGY STAR,that sets the benchmark for energy efficientproducts; NTA, which stands for National TestingAgency, an Indian Certification Trademark whichenables entities to carry out qualified collegesubmission examinations; Fairtrade, that certifiesa product or service as being obtained orprovided through better prices, fair workingconditions and in a sustainable matter on an

ecological and ethical point of view; UTZ, a certification to ensure sustainability on theproduction of coffee, tea and cocoa andRainforest Alliance, which ensures that users ofthe alliance respect a list of sustainableagricultural principals that includes conservationof wildlife, water resources and minimizing soilerosion, among other regulations. Recently, theUTZ and Rainforest Alliance have emerged andwill be one certification seal only.

In principle, Certification Trademarks can beused by any person or entity as long as theycomply with the standards and regulations thatwere previously defined by the owner of thecertification trademark.

It is possible to obtain a certification trademarkin the African continent; however, not everycountry in Africa has the legal provisions for certification and collective trademarks intheir Intellectual Property laws. The Certificationtrademark registration is possible in jurisdictionssuch as Djibouti, Kenya, Libya, Morocco,Mozambique, Namibia, Nigeria, Rwanda,Seychelles, South Africa, Uganda, Zambia, andZimbabwe. Not long ago, in August 2019, Mauritiuspublished a new Industrial Property Bill and thesame is expected to enter into force in theupcoming months as soon as the effective date is proclaimed. This new Bill recognizescertification trademarks.

Collective trademarks, on another hand, are apossibility in a wider range of jurisdictions acrossAfrica, namely OAPI, ARIPO, Algeria, Botswana,Burundi, Cape Verde, D.R. Congo, Djibouti,Egypt, Ethiopia, Gambia, Ghana, Kenya, Lesotho,Liberia, Libya, Madagascar, Malawi, Mauritius,Morocco, Mozambique, Rwanda, S. Tome andPrincipe, Seychelles, Sierra Leone, South Africa,Tanzania, Tunisia, and Zimbabwe.

Regulations on Certification Trademarks aresomewhat harmonized worldwide and acrossthe African countries.

The application for the registration of aCertification trademark must designate themark as such and shall always be accompaniedby the terms and conditions governing its use. In jurisdictions such as Uganda, Zimbabweand Kenya, the Registrar will examine theregulations as to substance and can decide torefuse to accept the same, or to accept these,subject to conditions, limitations, amendments,or modifications. In general, when examining the Certification Trademark same standards asfor standard trademarks will apply, namelydisclaimers, descriptiveness, likelihood of confusion,generic nature, amongst others. The Registrarwill notify the applicant in writing and, ifrequired, promote a formal hearing.

Throughout each legal framework the ownerof a certification mark must ensure neutrality

It is rathereasy toconfuseCertificationTrademarkswithCollectiveones.

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Directory of ServicesTo enter your firm in the Directory of Services section please email [email protected]

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: [email protected]: 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: [email protected] Contact: Ms. Anju Upreti Dhakal

NEPAL

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: [email protected]

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: [email protected]: 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: [email protected]: Enrique Diaz Email: [email protected]

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: [email protected]: Jose Alberto Merida

MEXICO

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: [email protected] Contact: Marganit Goldraich

ISRAEL

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: [email protected]: John Onyido - Partner and Head of the IP,

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

TML Directory of Services Issue 4 2020 3pp LHS:Layout 1 9/7/20 16:27 Page 49


To enter your firm in the Directory of Services section please email [email protected]

Directory of Services

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: [email protected] / [email protected] /[email protected] / [email protected] /[email protected] / [email protected]

INDIAHONDURAS

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: [email protected]: 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: [email protected] Contact: Armando Merida

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: [email protected]

[email protected] Contact: Mr Gonzalo Menéndez G., Ms Gina Roca

CYPRUS

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: [email protected] Contact: Maria H. Kyriacou

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: [email protected]: Denis Chaillot, Julie Desrois

FRANCE

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: [email protected]: Santiago R. O’Conor, Managing PartnerE-mail: [email protected]

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: [email protected]: 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: [email protected]: George C.J. Moore, P.A.

CARIBBEAN



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http://www,dpahuja.com

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http://www.meridayasociados.com.gt/en

http://www.bufetemejia.com

http://www.cmjoshi.us

http://www.oconorpower.com.ar

http://www.caribbeantrademarks.com

http://www.veraabogados.com

http://www.vasslaw.net

http://www.chaillot.com


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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: [email protected]: Antonina Pakharenko-Anderson

Alexander Pakharenko

UKRAINE

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: [email protected]: 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: [email protected]: Melanie Harvey,

Senior Chartered Trade Mark Attorney([email protected])Ian Bishop, Director and Patent Attorney([email protected])

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: [email protected]: Claudia Kaya

([email protected])Murat Bürkev([email protected])Simay Akba([email protected])

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: [email protected]: Andrew Patch

UNITED STATES

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: [email protected]: 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

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 protected]: 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: [email protected]: Ms Maria Zamkova

Mr Petter Rindforth

SWEDEN



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http://www.pakharenko.com

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http://www.ineureka.ru

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http://www.fenixlegal.eu

http://www.deepnfar.com.tw

For more than 50 years GLP has been offering a complete range ofservices for a structured protection of intellectual property.

Our Clients range from artisans to some of the Top Companies on theForbes 500 list, for whom we provide initial consultancy and support in

lawsuits – both as plaintiff and defendant – throughout the world.

The quality of our services and our ability to achieve ourClients' high objectives make us leaders in this field at worldwide level.

The commitment of the Group has led toGLP being a top-level European player.

different issues.one simple solution.

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Welcome to EU IP Codes 2.0 by GLP —the brand new version of the first ever mobile app to consult all the European and Italian regulations on Industrial Property in one place. Since 2012 an essential toolfor IP professionals.

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GLP S.r.l.Via L. Manara 1320122 MILANO

Tel +39 02 54120878Fax +39 02 54121214E-mail [email protected]

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