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INTA and the International Association for the Protection of Intellectual Property (AIPPI) held a joint conference, Designs: Into the Future, in Singapore from February 29 to March 1. The conference highlighted how both design protection and the Asia-Pacific region are increasingly important for brand owners, and in-house speakers from around the globe provided key practice tips and insight.
INTA CEO Etienne Sanz de Acedo welcomed the more than 200 participants and reiterated INTA’s commitment to serving this growing discipline by elevating the Association’s Designs Committee to full committee status. This represents the first time in INTA’s history that a full committee has been dedicated to the topic of designs. David Stone (Simmons & Simmons, UK), chair of the INTA Designs Committee and a co-chair of the INTA-AIPPI Designs Conference, also outlined the Designs Committee’s planned work for the coming term.
The keynote address and panel sessions focused on how important the design process is to some of the world’s most recognizable brands, and attendees heard about the issues that design leaders, in-house counsel and outside counsel tackle in their work developing, protecting and enforcing designs around the world. The message from companies such as Procter & Gamble and LG Display, among others, was clear: the design process and the protection of those designs is challenging, and it is essential that the industry, together with partner associations such as INTA and AIPPI move forward in a united and coordinated fashion, working with governments and other authorities to ensure the design process remains protected and valued. Design law is among the least harmonized of the various forms of IP, and there is potentially a very important role for INTA and other international organizations to play in helping harmonize the laws and practice around the world in coming years.
In his welcoming remarks, Mr. Sanz de Acedo also highlighted INTA’s commitment to the Asia-Pacific region, with plans to open a Singapore office this year. This commitment to serving members in Asia is critical to the drive for greater IP protection and value creation in the world’s fastest growing region. Singapore, and the wider Asian region, was well represented at the event, with speakers from the Intellectual Property Office of Singapore, Procter & Gamble Asia, SK-II, Hong Kong Customs, South Korea’s LG Display Co. Ltd, as well as several law firms from China, Japan, Australia and beyond.
Design Discussion: From Litigation to 3D Printing
The wealth of information shared across four days of talks and panels was indeed staggering. Topics that seemed to resonate with registrants on Twitter included panels on enforcing designs in different regions around the globe, hearing from in-house practitioners and the rise of designs in a virtual world.
There were two sessions on multinational design litigation, with outside counsel who have handled some of the leading litigation in the United States, the United Kingdom and continental Europe. The key takeaway from these sessions was that there are nuanced differences in the approaches to litigation between different regions. For example, Chris Carani (McAndrews, Held & Malloy, USA) said that in the United States, the most common defenses were anticipation (lack of novelty); obviousness; lack of ornamentality (functionality); indefiniteness; and prosecution history estoppels. The choices of venues for litigation include the U.S. District Courts, the International Trade Commisison or the USPTO’s Inter Partes Review (IPR) process. The panelists were able to highlight the pros and cons of the various venues, as well as the different types of relief that could be sought in the U.S., the UK and Germany.
On the European front, attendees heard from Mr. Stone and Henning Hartwig (Bardehle Pagenberg Partnerschaft, Germany) and discussed the ways in which litigation could best be approached. Mr. Stone explained that, while in principle the regulations were to provide for no forum shopping, in fact they provide for a sophisticated means to forum shop. Generally, litigators have four avenues: (1) the defendant’s domicile; (2) if the defendant is not domiciled in the EU, then the jurisdiction in which it has a presence; (3) the complainant’s domicile; or (4) the Spanish court. Mr. Stone and Tracy-Gene Durkin (Sterne Kessler Goldstein Fox, USA) also discussed how the courts in their respective jurisdictions dealt with the “apportionment of profits” issue in connection with the award of damages.
In a detailed keynote on the design process used in connection with the SK-II brand of cosmetic products, Procter & Gamble’s (P&G’s) Senior Design Manager Akiko Ashiwa (Procter & Gamble, Singapore) shared with attendees her experience and insight in how P&G approached developing the distinctive design of SK-II’s products, advertising and in-store displays. Ms. Ashiwa presented five key factors in SK-II’s design philosophy: simplicity of beauty; the beauty of aging; harmony with nature; passion (red) and artistry. She then took the attendees through a tour of earlier iterations and showed how the SK-II logo had too many variations in its product packaging, advertising and in-store displays. The company refocused to unify around one font and presentation and then do that consistently on packaging, advertising and any other messaging. While Ms. Ashiwa conceded that it was very difficult to “own” a single color, the specific color of red used for SK-II clearly resonates with consumers the passion the brand represents. Ms. Ashiwa also focused on the design element of shape, which in SK-II highlights the core value of simplicity (Japanese Zen style). The gloss finish of the packaging references sake, where the key ingredient Pitera originated. Ms. Ashiwa shared examples of other iconic designs that have been rejuvenated over the years by keeping core design elements the same and making minor changes so that the designs look fresh.
Attendees were also treated to a stimulating session in which Dara Kendall (Procter & Gamble Asia, Singapore) and Albert Lee (LG Display Co. Ltd., South Korea) shared both their struggles and success stories from the in-house perspective. One clear takeaway from Ms. Kendall was to leave the design drawings to the experts and ensure that you have identified the jurisdictions in which you will pursue design protection in advance so that the drawings comply with local requirements and provide the protection the company seeks. Answering an audience question on the form drawings should take, Ms. Kendall said she prefers line drawings in black and white because “I feel that gives the greatest scope of protection and some flexibility to disclaim certain elements.”
And what of the future? There was a broad consensus that designs continue to be an increasingly important part of the IP landscape. Many predictions were made during the sessions, with a particular focus on 3D printing and graphical user interfaces (GUIs). On the 3D front, in a panel titled “3D Printing – Evolution, Revolution or Extinction for IP Protection?” Jan Bernd Nordemann promised “something for everyone.” Tweeting during the session, Managing IP utilized emojis of a handbag, bomb, tools and medicine to emphasize Mr. Bernd Nordemann’s point that the impact of 3D printing technology on IP rights cannot be overstated. In a presentation called Designs in a Virtual World, Ms. Durkin said that the rise of virtual designs in either 2D or 3D, which requires prior art from both the digital and analog worlds, has led to significantly more filings in recent years. To emphasize her point, Ms. Durkin said that the USPTO had recently increased its staff from one staff member to 25 members just to cope with the increased GUI workload.
From the very beginning of the conference, it was clear that designs will rise in prominence as brands and companies increasingly find the need to differentiate themselves, a key strategy to winning in an increasingly competitive global market. From packaging to fonts, and from color to the technical drawings themselves, all aspects of a product’s design can be utilized to set it apart from the pack and ensure greater protection. From an IP practitioner’s point of view, Designs: Into the Future gave a lot of food for thought. What seemed particularly valuable to registrants was the in-house expertise and insights from various jurisdictions. The speakers touched not only on each country or region’s approach to design protection, but how professionals across the board, whether they are part of the design or legal team, are adapting and dealing with new challenges as they arise.
INTA Mumbai Corporate Workshop: Preparing for India’s Emergence as a Global Economic Powerhouse
Disha Dewan, R K Dewan, Mumbai, India
INTA’s Strategic Brand Management Workshop, held on March 2 at the St. Regis hotel in Mumbai, India, boasted a packed house of 115 attendees from Indian and international companies and law firms, including representatives of 50 corporations.
On the morning of the workshop, INTA’s Annual India Delegation had a very productive meeting with senior officials of the Mumbai Trademarks Registry, where a number of issues were discussed and concrete action points decided. A detailed account of this meeting is available here.
The Delegation’s meeting at the Trademarks Registry was followed by an INTA-hosted prospective corporate lunch, which gave potential corporate members a chance to interact with and get to know the Association’s 2016 President, Ronald van Tuijl, in an informal setting.
The workshop itself was held that afternoon, and consisted of two main sessions. Mr. van Tuijl kicked things off by providing an overview of INTA, highlighting the diversity of its members. He also introduced the new “umbrella” Regular + membership exclusively available to Regular members.
Mr. van Tuijl moderated the first session of the day, “Trademark Protection in India & Attractive Export Markets.” He emphasized the importance of transitioning from a mindset in which IP is seen as a cost to one in which it is seen as an investment and he encouraged Indian companies to take the opportunity to shape international public policy with respect to trademarks.
Brenda M. Wood Kahari (B W Kahari, Zimbabwe) explained to the audience the best routes of trademark protection in Africa, emphasizing the increasing bilateral relations between India and various regional trade organizations in Africa, and also provided insights into the importance of corporate social responsibility and mobile app presence for enhanced brand recognition in Africa.
Hemant Singh (Inttl Advocare, India) then took the audience through the most important trademark judgments of 2015–2016, specifically Supreme Court judgments dealing with jurisdiction, prior user versus registered user and conceptual similarity of trademarks.
Ghaida’ Ala’ Eddein (Saba & Co., Jordan) spoke about trademark law and practice in the Middle East and North Africa (MENA). She highlighted the dichotomy between import and trademark filings from India into the UAE by providing statistics showing the average import value of 14 percent and trademark filings of just 2.9 percent for the year 2013. She provided information on the trademark law and infrastructure in place in the MENA region, including a robust customs recordal and enforcement system in Jordan, and encouraged Indian companies to consider Jordan as a potentially rewarding market.
During the Q&A portion of the session, Dr. Mohan Dewan (RK Dewan & Company, India) pointed out that perhaps one of the reasons for low filings in Jordan and other Middle Eastern countries is the mandatory requirement of document legalization—a long and costly process involving numerous formalities—and is a major deterrent for many clients. This statement caused many heads in the audience to nod in agreement. He went on to suggest that perhaps INTA could step in and take up this issue to support a policy move towards more liberal and less tedious practices.
Cross-Border and Domestic Enforcement
The next session, “Tools for Cross-Border and Domestic Enforcement of Trademark Rights,” was moderated by Mr. Singh and featured in-house counsel sharing their anticounterfeiting experiences. The audience chimed in throughout the discussion, adding their observations and knowledge. Pulin Kumar (adidas Group, India) and Florence Wong (adidas Group, Hong Kong) shared the success story of adidas’ “small-parcels program,” in coordination with courier companies and post offices, in tackling counterfeits. They addressed the importance of working with other brand owners and sharing intelligence and provided many useful tips for refining search criteria to investigate counterfeit products.
Dev Bajpai (Hindustan Unilever Limted, India) touched upon the need to educate consumers about respect for intellectual property rights and suggested that counterfeiting should be treated as a national issue comparable to money laundering. He also highlighted the innovative programs being implemented by Hindustan Unilever Limted (HUL) to spread awareness about counterfeits, such as holding debate competitions in schools and street plays acted out by HUL employees, particularly in poorer areas.
Farokh Bhiwandiwalla (One-Red India Licensing Pvt. Ltd, India) led the audience through the unique problems faced by companies that are highly vigilant and frequently conduct anticounterfeiting raid actions. Some notable examples include the selling of counterfeit products under a code name (for example, “Philips” products being sold under the name “Classic”) and the execution of delivery of such goods on bank holidays. Murlidhar Balasubramanian (Castrol India Limited, India) concluded the session with a talk on anticounterfeiting measures related to packaging and dealing with repeat offenders.
Tackling Problems Early through Unreal
Dr. Dewan concluded the workshop by introducing the audience to INTA’s Unreal Campaign to educate teenagers (ages 14-18) about counterfeit products, and on behalf of the Unreal Campaign Committee, requested attendees’ assistance in providing samples of real versus fake products, financial sponsorship and donating their time to this cause.
Closing and Cocktails
Following closing remarks, attendees gathered for a networking cocktail reception, where they mingled and caught up in a relaxed atmosphere. The event was very well received, with a number of participants expressing their desire to bring along more team members to the next INTA-hosted workshop.
The workshop was followed by a three-day delegation led by INTA President Ronald van Tuijl and INTA CEO Etienne Sanz de Acedo. The delegation included a series of high-level meetings. A detailed account of the delegation is available here.
Inaugural INTA-BASCAP Workshop Identifies Solutions and Trends in Anticounterfeiting Practices
On March 2 in Singapore, INTA and The International Chamber of Commerce (ICC) Business Action to Stop Online Counterfeiting and Piracy (BASCAP) launched the first in a series of workshops titled “Intermediaries and Rights Holders—Working Together to Stop Counterfeiting and Piracy.” The series is focused on the pressing trends and priority issues affecting brand own-ers in the area of anticounterfeiting.
INTA CEO Etienne Sanz de Acedo opened the workshop by citing the most recent Organisation for Economic Co-operation and Development (OECD) studies on the size of global trade in counterfeits, which was estimated at approximately USD 250 billion in 2009. Many estimates, he said, indicate that this number may now be around USD 2 trillion.
BASCAP’s Deputy Director Bill Dobson, citing the March 2015 BASCAP white paper on in-termediaries, said that “the problem of counterfeiting and piracy has grown hand-in-hand with the globalizing economy and it is evident that counterfeits account for a growing proportion of international trade.”
Intellectual Property Office of Singapore Director of Legal, Trina Ha, delivered the keynote ad-dress and highlighted the relationship between the trade in counterfeit goods and developing economies.
The discussions focused on the need for cross-border cooperation and collaboration to prevent the movement of illicit goods; the need for landlords to play a role in improving the market-place’s safety by preventing the use of their premises for the sale of counterfeit goods; and tack-ling counterfeits online, among other topics.
Panelists in the discussion on cross-border cooperation noted that for counterfeiters, trade in these illicit goods are a business. To fight these illegal competitors, the panelists agreed on hold-ing intermediaries, such as shippers, to high standards, including implementing strong “Know Your Customer” (KYC) practices.
This first INTA-BASCAP workshop provided brand owners, government and intermediaries a platform to discuss issues, network and learn best practices. INTA and BASCAP are looking forward to organizing four more workshops for the remainder of the year in Africa, China, Eu-rope and Latin America. The next one will be held in Cape Town, South Africa, on August 31, 2016.
INTA’s 2016 India Delegation: Making a Difference through Conversation and Collaboration
India is currently on the precipice of fulfilling its role as a global economic powerhouse. With the National Intellectual Property Rights Policy expected to be released soon and palpable excitement surrounding the government’s “Make in India” initiative, a nation-building initiative introduced by India’s Prime Minister, Narendra Modi, devised to transform India into a global design and manufacturing hub, and which is steadily gathering steam, this is an exciting time for the country, and indeed, for the global trademark community.
In recognition of this fact, INTA has consciously stepped up its activities in India in the past few years, mainly to provide a meaningful way for brand owners and trademark practitioners in the country to participate and have their voices heard. To facilitate this objective, INTA’s Annual India Delegation visits are held specifically to engage all key stakeholders on pertinent issues affecting trademarks in an effort to shape policy and make a difference.
INTA’s 2016 Delegation visit to India successfully and significantly elevated the Association’s engagement with key stakeholders. The Delegation met with local members, cabinet ministers, high-ranking government officials, enforcement agencies, including the police and Customs and prominent trade/IP bodies. In a first for the Association’s activities in the country, the Annual Delegation met with India’s Minister of Law and Justice.
This year’s India Delegation included INTA’s 2016 President Ronald van Tuijl and INTA CEO Etienne Sanz de Acedo. They were joined by both corporate and associate members in India to attend high-level meetings as part of the Delegation. The three-day event started in Mumbai on March 2 before moving to New Delhi for more meetings on March 3 and 4. Noteworthy observations from the official meetings included a sense of increased camaraderie, as well as the development of concrete action points to drive INTA’s India initiatives in the coming months.
Meeting with Senior Representatives of the Indian Trademarks Registry
Given INTA’s increasingly dynamic interface with the Indian Trademarks Office in the past two years, with the creation of the Trademark Office Practices—India Subcommittee, it was fitting that the Delegation met with the Office of the Controller General of India. As the Controller General himself was not available, due to a ministerial engagement, he nominated his top staff, including R.A. Tiwari (Deputy Registrar of Trademarks), S.D. Ojha and Sachin Sharma (both Assistant Registrars of Trademarks) to attend the meeting.
Mr. van Tuijl explained that the purpose of the visit was to further strengthen the goodwill that prevails between the Association and the Trademarks Office. INTA Board Members Hemant Singh (Inttl Advocare, India) and Mohan Dewan (RK Dewan and Co., India) expressed their appreciation on behalf of the Association on the opposition backlog clearance drives that have recently been announced by the Controller General. These drives also include mediation, which is a first for the Registry. Members were extremely encouraged to see that the Registry had taken note of these suggestions, which formed part of an INTA paper submitted to the Controller General in November 2015 by the Trademarks Office Practices—India Subcommittee. INTA’s offer to conduct collaborative Examiner Seminars was discussed further and Mr. Tiwari requested that INTA conduct a follow-up meeting with them to establish the design and logistics of the seminars. INTA corporate member Sarita Joglekar (Reliance Industries Limited, India) suggested that, as brand owners are the Trademarks Registry’s primary stakeholders, the Registry should make it a priority to seek their views on policy matters. The officials took this suggestion on board and said that brand owners are always welcome to submit their comments and feedback to the Controller General.
As an apt conclusion to this highly positive interaction, Mr. van Tuijl handed over a personal invitation from Mr. Sanz de Acedo to the Controller General, O.P. Gupta, to attend INTA’s 138th Annual Meeting in Orlando and participate as a speaker at an all-day workshop developed exclusively for IP offices.
After this meeting, the INTA Delegation hosted a prospective member lunch and a Corporate Strategic Brand Management Workshop at the St. Regis Mumbai hotel. The robust participation of 115 attendees in the workshop included an impressive representation from 50 corporates. The workshop is covered in greater detail here.
Meeting with the Department of Industrial Policy and Promotion
In New Delhi, the INTA Delegation met Rajiv Aggarwal, Joint Secretary of the Department of Industrial Policy and Promotion (DIPP) of the Ministry of Commerce and Industry. This meeting was significant in terms of reiterating INTA’s commitment to supporting the DIPP in its policy initiatives under the “Make in India” program, and ease of doing business in the country. Mr. Sanz de Acedo took the opportunity to congratulate the DIPP on the success of the Make in India Week held in February.
Mr. Aggarwal stated that he was very pleased to see how dynamic INTA has become globally, as well as in India. He then participated in a lively discussion with the Delegation, addressing certain concerns and updating everyone on issues, including the quality of trademark examinations, recordals backlog, online filings, the National IPR Policy, the problem of counterfeiting, the advent of commercial courts and the amendment of Section 115(4) of the Trade Marks Act, which currently requires the Registrar’s opinion prior to a search and seizure being carried out.
Mr. Aggarwal reaffirmed support of INTA-TMO collaborative Examiner Seminars and other INTA initiatives in India. At the suggestion of Mr. Sanz de Acedo, Mr. Aggarwal said he would be happy to have INTA and the Controller General collaborate on a program aimed at educating children on IP and counterfeiting. As a concrete action point, a joint working group of INTA and the Trademarks Office will be formed to move this project ahead.
Meeting with the Customs Commissioner, Central Board of Excise and Customs (CBEC)
As has become customary over the last few years, the INTA Delegation was delighted to have a very amiable meeting with Sandeep Kumar, India’s Commissioner of Customs, and his colleagues from the CBEC. During this meeting, Mr. Kumar thanked INTA for supporting a conference organized by the CBEC and Fidus Law Chambers in February 2016, titled “Combatting Counterfeits in Electronic Commerce—Evolving a Voluntary Code of Practice.” Discussions held included INTA’s participation as a representative of brand owners in the working group set up by the CBEC to develop this voluntary code in India. Shwetasree Majumder (Fidus Law Chambers, India), Co-chair of the India Global Advisory Council, requested that the Commissioner keep in mind INTA’s suggestions during an ongoing software overhaul at the Customs department. These suggestions, submitted last year, pertain to the essential ingredients that ought to be present in all customs notices addressed to IP owners.
Mr. Kumar also assured INTA of CBEC’s support for the Association’s anticounterfeiting initiatives in India.
Meeting with D.V. Sadananda Gowda, Minister of Law and Justice, Government of India
The Delegation’s meeting with D.V. Sadananda Gowda, Minister of Law and Justice, Government of India, was notable, as it was INTA’s first introduction to and interaction with a serving cabinet minister of the Indian government. Also present at the meeting was P. K. Malhotra, Secretary, Department of Legal Affairs.
Mr. Gowda was very pleased to hear a brief history of INTA, its membership profile, and its initiatives globally and in India. He requested that the Delegation speak freely about areas in which INTA needs assistance. This gesture from the Minister of Law is reflective of the present government’s dedication to the objective of improving the ease of doing business in India and thus, increasing investor confidence. INTA congratulated Mr. Gowda and the Ministry of Law on the Commercial Courts Act, a very progressive piece of legislation that will boost the quality and speed of IP adjudication in the country.
One issue that the Delegation raised was that of the above-mentioned proviso to Section 115(4) of the Indian Trade Marks Act. The Delegation asked for the Minister’s support on removal of this proviso, which is unanimously deemed to obstruct effective criminal IP enforcement in the country and is counterproductive to the government’s policy initiatives. Both Mr. Gowda and Mr. Malhotra appreciated this genuine concern. They have requested that INTA take up this issue with the relevant ministry by submitting a representation on behalf of the industry. They also assured INTA that the Ministry of Law would look at possible solutions and mechanisms together with the concerned administrative ministry.
Other Notable Meetings
The INTA Delegation also had the pleasure of meeting two sitting Delhi High Court judges, Justice Manmohan Singh and Justice J.R. Midha. Justice Singh had previously attended many INTA Annual Meetings as an INTA member before becoming a judge. Mr. Sanz de Acedo extended an invitation to both judges to attend INTA’s 138th Annual Meeting in Orlando and participate in a program being developed in which judges from different countries would be in attendance.
Other interactions included an introductory meeting with the Joint Commissioner of the Economic Offences Wing of the Delhi Police to discuss the role of the police in identification of counterfeits during seizures and to offer INTA’s support in training police officials; a meeting with IP Attachés to learn more about their key missions in India and to share a brief about INTA’s activities in the country; discussions with representatives of ICC BASCAP and FICCI CASCADE to explore the possibility of a joint project on the theme of the interface between IT and IP to curb the counterfeiting menace; a meeting with the Intellectual Property Attorneys Association (IPAA) and Asian Patent Attorneys Association (APAA) India Group President; as well as a lunch meeting with the newly appointed India Global Advisory Council.
Pre–Annual Meeting Reception
The Delegation concluded with a spectacular pre–Annual Meeting Reception hosted for INTA in New Delhi by Prathiba M. Singh, an INTA member and member of the government-appointed IPR Think-Tank. Along with INTA members, this reception was attended by cabinet ministers of the Indian government, Supreme Court and Delhi High Court judges, senior lawyers, corporates and IP Attachés.
With the number of concrete action points emerging from the meetings held over the three days, INTA definitely will have a busy and constructive year ahead in India.
INTA would like to extend sincere thanks to the supporters of the Association’s efforts in India, including, in addition to all of those mentioned above, Pravin Anand (Anand & Anand, India), India Global Advisory Council Co-Chair Ranjan Narula (RNA IP, India), Murlidhar Balasubramanian (Castrol India Limited, India), Snehal Vedak (Mahindra & Mahindra, India) and Shailendra Bhandare (Khaitan & Co., India).
For more on INTA’s activities in India, contact Gauri Kumar, INTA India Consultant, at firstname.lastname@example.org.
Bad Faith and the Requirement to Show Genuine Use of a CTM
Carmel Corcoran, Insignia IP Services Ltd., Cambridge, UK
INTA Bulletins—Features Subcommittee
The Community trade mark (CTM) system differs from other trademark systems in that it does not require the applicant to have an intention to use the mark at the time of filing, nor does it require the applicant to have an intention to use the mark in relation to all the goods and services applied for at the time of filing [CTM No 1628395 NAKED, Cancellation Division, Dec. 14, 2004]. In fact, proprietors of CTMs have a grace period of five years from the date of registration to commence use of the mark registered throughout the EU in relation to all the goods and services covered.
However, the tenth recital of the Community Trade Mark Regulation (CTMR) states that “there is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used.” Accordingly, once the five-year grace period expires, a proprietor can expect to face sanctions if it does not commence “genuine use” of a mark registered as a CTM in the EU.
To begin with, by virtue of the provisions of Article 42(2) of the CTMR, the proprietor of an earlier CTM relied upon in opposition proceedings may be requested by the applicant to furnish proof that, during the five-year period preceding the date of publication of the opposed CTM application, the earlier CTM had been put to genuine use in the Community in connection with the goods or services with respect to which it was registered, or that there were proper reasons for non-use, provided the earlier CTM had at that date been registered for not less than five years. To the extent that the opponent cannot furnish proof of use, the opposition will be rejected.
Further, under Article 51, CTMR, third parties may revoke (or partially revoke) a CTM registration which is not put to genuine use throughout the EU after expiry of the five-year grace period where there are no proper reasons for non-use.
Reasons for Non-Use
Proper reasons for non-use do not include the fact that market conditions have been unpromising during the past five years. Moreover, the conditions for showing genuine use throughout the EU are fairly exacting. Genuine use means actual use of the mark by the proprietor or a third party with authority to use the mark. This use must be more than merely “token,” i.e., undertaken solely to preserve the rights, and must be consistent with the essential function of the trademark, i.e., to guarantee the trade origin of goods or services, and by way of real commercial exploitation aimed at maintaining or creating an outlet for the goods or services or a share in that market. While advertising campaigns might satisfy this criteria, purely internal or promotional use will not do so [Case C-40/01 Ansul BV v. Ajax Brandbeveiliging BV,  ECR I-2439].
While it is settled that use of the mark need not always be quantitatively significant for it to be deemed genuine and there is no de minimis rule [Case C-259/02 La Mer Technology Inc v. Laboratoires Goemar SA,  ECR 1-1159], it is necessary for the proof of use to relate to the place, time, extent and nature of the use. In LidlStiftung & Co v. A Colmeia do Minho [Case T-300/12], the General Court confirmed that furnishing proof of use is no rubber-stamping exercise: an owner who provides barely legible invoices addressed to one customer, without other materials such as brochures, pamphlets, etc., to properly establish the place, time, extent and nature of the use in relation to each item of goods or services claimed, is in danger of having his opposition fail for lack of proof of use.
Acceptable Types of Use
Moreover, there are types of commercial activity which may face particular difficulty in showing genuine use in the EU. Despite the provisions of Article 15(1)(b), CTMR, which expressly provide that affixing a CTM to goods or packaging in the EU for export purposes constitutes use in the EU, the position of use which is solely for export remains far from clear. For example, in the leading case of Ansul, the Advocate General opined that use which was solely for export purposes should only count as genuine use in “exceptional circumstances,” while, more recently, the Dutch Court of Appeal has held that a Dutch manufacturer of cigarettes which were solely for export could not be said to be using its trademark in the Benelux unless there was a risk the goods could be placed on the market in the EU [Zhu v. Great Blue Sky International, judgment of Dec. 10, 2013].
Re-Filing Strategy and Bad Faith Claims
To evade the effects of these use requirements it is a commonly used strategy to refile the same trademark for the same goods or services and to thereby obtain a further five years to begin actual use of the mark. Indeed, potentially, this may be done numerous times. However, this strategy is not always risk free and such re-filings may find themselves liable to the claim that they were filed in bad faith, or that the strategy has not succeeded in avoiding the requirement to furnish proof of use in opposition proceedings.
Article 52(1)(b), CTMR, provides that “a Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where the applicant was acting in bad faith when he filed the application for the trade mark.” The CTMR does not provide us with a precise definition of the concept of bad faith; however, OHIM does provide some guidelines on how it will interpret the concept. For example, the Guidelines concerning proceedings before the Office, Part D, Section 2, state that “bad faith” can be considered to mean “dishonesty which would fall short of the standards of acceptable commercial behaviour.”
An allegation of bad faith is a serious allegation that must be proven on the balance of probabilities by the party asserting it: the applicant is presumed to have acted in good faith absent good evidence to the contrary [Case R 1621/2006-4, Funke Kunststoffe GmbH v. Astral Property Pty Ltd]. To determine whether an application has been filed in bad faith, consideration must be given to the applicant’s subjective intention, i.e., the applicant’s state of mind at the time of filing, although later evidence may cast light upon that state of mind. In practice, clear, direct evidence of the applicant’s state of mind at the time of filing is rarely available and it is necessary to consider all the surrounding circumstances of the particular case [Case C-529/07, Chocoladenfabriken Lindt & Sprüngli AG v. Franz Hauswirth GmbH  ECR 1-4893].
Past case law indicates that the mere fact a CTM application is a repeat filing of the same mark for the identical goods or services cannot in itself be regarded as an act of bad faith. For example, if the re-filing is made within the five-year grace period of the original mark and if the original mark is used before the expiry of the grace period, then the applicant cannot be said to be circumventing the mandatory use requirement in making the re-filing [1344 C, AX 26 – SARL v. Red Bull GmbH, OHIM, Mar. 21, 2007].
However, it is the essential function of a trademark to act as a badge of trade origin and Article 52(1)(b) is intended to prevent abuse of the CTM system [Case R 633/2007-2, OHIM Second Board of Appeal, Feb. 29, 2008, CHOOSI Trade Mark; Joined Cases C-456/01 P and C-457/01 P Henkel v. OHIM  ECR I-5089]. Accordingly, as stated in the leading case of Lindt, there are circumstances in which an absence of intention to use is highly relevant; for example, where it can be shown that the mark was filed to prevent a third party or competitor from entering the market.
In pelicantravel.com v OHIM [Case T-136/11, judgment of Dec. 13, 2012], the General Court held that a repeat application filed for the purpose of avoiding the consequences of full or partial revocation for non-use was a factor to be taken into account in deciding whether the proprietor had acted in bad faith. In that case, the General Court declined to make a finding of bad faith because the later mark was not a true repeat filing since it had an “updated” graphic design (though the differences between the marks appear slight: the marks are shown side by side below) and the list of goods covered was narrower and more specific. Further, the General Court found that these changes were accounted for by the holder’s desire to modernize the appearance of the mark in connection with the celebration of the 125th anniversary of the brand and not by the expectation of an application for revocation for non-use (the fact that the earlier mark was later revoked for non-use did not constitute evidence as to the proprietor’s state of mind at the time of filing the later mark).
Updated Graphic Design:
Recent Case Law
The question which, therefore, presents itself is whether OHIM is likely to find that a repeat filing of an unused earlier mark was made in bad faith in circumstances where it could be argued that it was made to avoid the consequences of non-use and where the later mark is being used to prevent or hinder the entry onto the market of a competitor.
In the NAVIGO case [Case R 2181/2010-2, HHD Global Corporation v. Syndicat des Transports d’Ile-de-France], it was unsuccessfully argued before OHIM that recent French re-filings upon which the opposition was based had been made in bad faith because they were made to avoid revocation for non-use of older French registrations. The applicant relied upon OHIM’s Cancellation Guidelines, paragraph 4.3.3, which states: “Where the proprietor of a CTM makes repeated applications for the same mark with the effect of avoiding the consequences of revocation for non-use of earlier CTMs, whether in whole or in part, the proprietor is acting in bad faith.” The applicant argued that national re-filings should be treated in the same way and, therefore, to succeed in opposition the opponent must first provide proof of use of the marks which are the object of the French re-filings even though these re-filings had not yet been registered for five years when the opposed CTM application was published. OHIM held it was clear that Article 42(2) only covered registrations which were more than five years old; the registrations relied on were too young for proof of use to be required so the only recourse left to the applicant was to apply to cancel the re-filings for bad faith before the appropriate national forum.
However, in the PATHFINDER case [Case R 1785/2008-4, Anja Holzapfel v. José Domingo López-Palacios González], a similar argument gave rise to a different result. The proprietor of an earlier Spanish re-filing for MARS PATHFINDER was requested by the applicant to furnish evidence of use of the mark, even though it had been registered for less than five years, upon the basis that the registration was an identical repeat filing of an earlier Spanish registration and had been filed in bad faith and solely to avoid revocation of the earlier Spanish registration for non-use. In this case there was evidence that the opponent had no intention to use the MARS PATHFINDER mark (there had been an offer to sell the mark to the applicant for a substantial sum), together with an admission that the re-filing was made to avoid the consequences of non-use of the mark. In the circumstances, OHIM clearly felt that the re-filing had been made in bad faith and it went on to find that the re-filing was identical in all respects to the earlier mark and should be treated simply as an extension of the earlier right. Therefore, Article 42(2) would apply even though the re-filed mark was less than five years old and the opposition failed for want of proof of use.
More recently, in the CANAL+ case [Case R-1260/2013-2, Feb. 13, 2014], OHIM relied upon the PATHFINDER case and required the proprietor of recent re-filings for CANAL+, CANAL PLUS and PLUS to furnish proof of use. This case represents an extension of the PATHFINDER principle because the goods and services covered by the later re-filings were not exact reproductions of those set out in the earlier marks. However, OHIM found that this did not matter because the differences were not such as to exclude a finding of identity because the later re-filings did include identical goods and services, while the non-identical goods and services could always be limited or the trademark divided to cover identical goods and services at some future date. OHIM did continue to adhere to the principle set out in pelicantravel.com v. OHIM in refusing to regard a re-filing which was composed of different graphics as an identical re-filing, or to require proof of use in relation to this mark (shown below).
Later Graphic Mark:
Document Your Intentions
Thus, recent case law before OHIM suggests that proprietors may expect to face an allegation of bad faith, and perhaps be required to furnish proof of use in relation to a trademark registered for less than five years, where the mark they seek to rely upon to prevent third-party registration is an identical re-filing (i.e., identical as to mark, goods/services and territory) of an unused earlier mark. Fiddling with lists of goods and services may prove insufficient to deal with this issue. However, a re-filing composed of different or genuinely “updated” elements is unlikely to be held to be made in bad faith or to be a mere extension of an earlier mark. The intentions of the proprietor are paramount in considering the issue of bad faith and a continuing contingent intention to use a mark is probably sufficient to avoid a finding of bad faith. Therefore, it is highly advisable for trademark owners to retain internal and external documents so as to evidence their intentions at the time of re-filing or to update unused marks which are more than five years old.
BRAZIL: Guidelines Issued on Registrability of the Word “Olympic”
Contributor: Pedro Tavares, Barbosa, Müssnich & Aragão Advogados, Rio de Janeiro, Brazil
Verifier: Patricia Franco, Provedel Advogados, Rio de Janeiro, Brazil
On January 19, 2016, the National Institute of Industrial Property (INPI) issued special guidelines on the examination of applications for marks formed by the word “Olympic.” This is quite timely due to the upcoming 2016 Olympic Games in Rio de Janeiro.
The guidelines generally follow the terms set forth in the Rio 2016 Olympic Act (Law 12.035/09) and in other pieces of legislation. They prohibit the registration, as a mark, of signs which reproduce or imitate the Olympic Organizing Committees’ flags, emblems, anthem, marks and symbols, as well as the name of the event, namely, OLYMPICS, PARALYMPICS, OLYMPIC GAMES, PARALYMPIC GAMES and variations. This prohibition does not necessarily apply to the adjective “Olympic” in all circumstances. According to the INPI’s understanding, the adjective “Olympic,” in its inherent meaning, refers to the Olympus and the Mount Olympus in Greece. In Brazilian Portuguese, the term is commonly used to convey the idea that something is majestic, grand or impressive due to its greatness or importance. Therefore, according to INPI, registration of marks formed by the adjective “Olympic” is possible by any interested party as long as there is no possibility of association with the Olympic Games or its organizers.
The guidelines provide some examples of OLYMPIC-formative marks that may and may not be registered by third parties. Among the marks that could be registered, the INPI cited the following: DEUSES OLÍMPICOS (“Olympic Gods”) for any goods and services; and APHRODITE’S BELEZA OLÍMPICA (“Aphrodite’s Olympic Beauty”) for hairdressing services. With regards to marks that cannot be registered by third parties, the INPI cited the word mark OLÍMPICO (“Olympic”)—an application for a word mark OLÍMPICO or OLYMPIC would not be accepted because there is no additional element that could distinguish the mark from the Olympic Games—and the word and design mark shown below:
A search conducted by this article’s author of the INPI’s online database revealed the existence of recently granted registrations for DEPÓSITO OLÍMPICO (“Olympic Storage/Warehouse”), protecting the commercialization of construction materials, and OLYMPIC BANKING SYSTEM, covering banking, financial and consultancy services. These decisions were rendered prior to the issuance of the guidelines, which means that the above understanding was already being applied by examiners.
JAPAN: Changes to Trademark and Patent Prosecution Procedures
Contributor: James Hughes, S. Soga & Company, Tokyo, Japan
Verifier: Shoichi Okuyama, Okuyama & Sasajima, Tokyo, Japan
The Japanese Patent Office (JPO) recently announced some minor changes to both trademark and patent prosecution procedures that are aimed at simplifying prosecution for applicants, both foreign and domestic. The changes, applicable to both trademarks and patents, relate to extensions of time for responding to provisional refusals during examination.
At present, the initial time period for responding to a provisional refusal of a trademark application is 40 days for domestic applicants and three months from date of issue for applicants from overseas. This distinction between foreign and national applicants, followed by the JPO for many years for both trademark and patent prosecution, recognizes the inherent difficulties centering on communication and translation faced by applicants from overseas.
Furthermore, this period can be extended for one month only by foreign applicants without the need for a substantial reason. However, the announced change will also make this option available to domestic applicants.
The major change to this policy as far as foreign applicants are concerned is the introduction of a procedure to file for a two-month extension, again, without the need for a substantial reason. This can be done even if a request for a one-month extension has already been filed. Further, and more importantly, the request can be filed within this new two-month extension period even if the original deadline for replying has expired, that is, even after the initial 40-day or three-month period has passed. This can be seen as a vastly improved practice in many cases involving overseas applicants. However, this belated request procedure is not available for appeal cases.
The JPO has also stated that this procedure for requesting an extension after a deadline has expired will be subject to a fee, yet to be quantified and somewhat more expensive than the present extension fee. It is also expected that Japanese associates will apply a concomitant professional fee to carry this out.
This new policy will make it easier for foreign attorneys and domestic associates to deal with last minute instructions, particularly in view of the time needed for translation or the major time differences between Japan and countries in the Western hemisphere.The policy will come into effect on April 1, 2016.
PERU: Electronic Publication of Trademark Applications
Contributor: Adriana Barrera, Barlaw – Barrera & Asociados, Lima, Peru
Verifier: Marcela Robles, Kresalja I.P., Lima, Peru
INTA Bulletins Committee Law & Practice—Latin America Subcommittee
On September 24, 2015, Legislative Decree No. 1212 (the Decree), which seeks to eliminate bureaucratic barriers and to encourage competitiveness, was approved by the Peruvian Government. The purpose of the Decree is to identify and eliminate any rules or measures imposed by any public entity that may constitute a barrier to competition that is illegal or unreasonable. Among the provisions introduced by the Decree is a provision (Chapter III, Provision 6) related to trademark registration proceedings that should ultimately reduce the cost of registering trademarks in Peru.
Currently, according to the Peruvian Trademark Law Statute (Legislative Decree 1075), once a trademark application is filed, the examiner must confirm that all formal requirements have been fulfilled. Then, the National Institute for the Defense of Competition and Intellectual Property Protection (INDECOPI) issues a written order for publication (for any third-party oppositions). The trademark application must be published in the Official Gazette, Diario El Peruano, which is a separate entity from INDECOPI. To have the trademark application published, the applicant must pay an additional fee. This fee is separate from the one initially paid when the trademark application was filed.
Chapter III, Provision 6 of the Decree states that once the trademark examiner verifies that the trademark application complies with all formal requirements of Andean Decision 486–Andean Community Trademark Law Statute, INDECOPI will publish the application in an Electronic Gazette. This provision also applies to applications for slogans and trade names.
The Decree further states, in its Complementary Derogatory Provision, that the Electronic Gazette will also be implemented for any other industrial property rights registration proceedings, such as patents, industrial designs, model designs and appellation of origin applications. The Decree refers to Provisions 30, 53, 85 and 90 of Legislative Decree 1075°, which established the current rules for publication in the Diario El Peruano for all types of industrial property rights.
According to the Decree, this Electronic Gazette should be implemented once the Secretary of Justice and Human Rights and the Prime Minister issue guidelines regulating the implementation of this new type of publication. There is not yet an exact date for implementation of the Decree; however, it is estimated that it will be implemented in the coming months.
It is expected that once the Electronic Gazette is implemented, the costs for publication of trademark applications will likely be reduced, and therefore, total costs for registering a trademark in Peru will decrease.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2016 International Trademark Association