Africa Asia-Pacific Europe

GlobalReport

Africa Doug de Villiers, Interbrand Africa, on How to Build a Global Brand

Asia-Pacific INTA Registers Asia-Pacific Office in Singapore Europe How and When Brexit Will Affect Trademarks

July 2016

Recent Trademark Developments and INTA Activities in Eight Key Regions

INTA Global Report, July 20162

Africa 4 Asia-Pacific 8 China 12 Europe 15 India 22 Latin America 26 Middle East 33 North America 35

This report was compiled with the help of INTAs Global Advisory Councils, as well as the INTA Bulletin Committee and the authors named herein. Please direct all comments/feedback to [email protected].

The past quarter has included the best-attended Annual Meeting in the Associations history, a vote by the UK to exit the European Union that could have sweeping consequences for trademark own-ers, and the registration of INTAs Asia-Pacific office in Singapore, among other important develop-ments. As much of the business world settles down for the summer, INTA will continue working hard to follow up on the many tasks that have evolved from each of these events.

With final registration numbers of 10,108, the 2016 Annual Meeting in Orlando, Florida, was the largest and most diverse in Association his-tory. The meeting drew more registrants from all regions, particularly the Middle East/North Africa and Latin America/the Caribbean, and included many fruitful meetings that will help to build bridg-es with government officials and associations. I hope youll read more about it in the pages ahead, and dont forget to prepare for next years meeting in Barcelona, Spain!

Just over one month after the Annual Meeting, the UK electorate voted to withdraw from the European Union. Although the official exit is likely to take at

least two years and there remain many uncertain-ties about next steps, the long-term implications for trademark and IP ownersand the business sector in generalare many. Inside, a dedicated team of volunteers provides some initial thoughts and out-lines some of the possible challenges ahead.

Finally, in March, INTA registered a branch of-fice in Singapore, marking a new chapter for the Associations advocacy efforts in Asia-Pacific. The office will help the Association to further its Strategic Plan goals by supporting members in the region and working with partners in government and industry to promote trademarks and protect consumers. Headed by INTA Chief Representative, Asia-Pacific Office, Seth Hays, the new office will allow for increased focus on policy advocacy efforts throughout the region. Find out more inside.

I hope you enjoyed the Annual Meeting as much as I did, and I look forward to seeing many of you in November for the Leadership Meeting in Hollywood, Florida. For now, read more about what weve been doing and whats ahead in this issue of the Global Report!

Although every effort has been made to verify the accuracy of items in this report, readers are urged to check independently on matters of specific interest. The Global Report relies on members of the Global Advisory Councils, INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The Global Report Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication. For permission to reproduce Global Report articles, send a brief message with the articles name, volume and issue number, proposed use, and estimated number of copies or viewers to [email protected]. Global Report sponsorships in no way connote INTAs endorsement of the products, services, or messages depicted therein.

2016 International Trademark Association

Global Report StaffChief Executive Officer Etienne Sanz de Acedo

Director, Marketing and Communications Sheila Francis

Strategist, Communications Content Eileen McDermott

Manager, CommunicationsJC Darn

EditorElizabeth Venturo

Graphic Designer Eric Mehlenbeck

INTA Officers & CounselPresident Ronald Van Tuijl, JT International S.A.

President Elect Joseph Ferretti, PepsiCo, Inc./Frito-Lay, Inc.

Vice President Tish L. Berard, Hearts On Fire

Vice President David Lossignol, Sandoz International GmbH

Treasurer Ayala Deutsch, NBA Properties, Inc.

Secretary Tiki Dare, Oracle

Counsel Maury M. Tepper, III, Tepper & Eyster, PLLC

Ronald van Tuijl (JT International S.A. Switzerland), INTA 2016 President

mailto:jdarne%40inta.org?subject=mailto: [email protected]

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September 12, 2016Cape Town, South Africa

Register Today! www.inta.org/2016Africa

Intermediaries and Rights Holders Working Together to Stop Counterfeiting and Piracy

August 31, 2016Cape Town, South AfricaRegister Today!www.inta.org /BASCAPAfrica

Future INTA/BASCAP Events:September 21, 2016 Beijing, ChinaNovember 30, 2016 Brussels, Belgium

http://www.inta.org/2016Africahttp://www.inta.org/BASCAPAfrica


According to the United Nations Economic Commission for Africa (UNECA), Africas real GDP growth is expected to increase by about 4.3 percent in 2016 and 4.4 percent in 2017, led by strong domestic demand and by investment, particularly in infrastructure. Since 2010, the continents mobile broadband infrastructure has grown rapidly, expanding from 2 percent in 2010 to almost 20 percent in 2014, and total mobile telephony penetration is over 70 percent. Internet access is also in-creasing slowly. While these factors represent a great opportunity for brand owners looking to expand their businesses, the unique challeng-es presented by widely varying regional and local legal frameworks and still-developing infrastructures make it essential that brand owners be knowledgeable and well-informed before finalizing a strategy. Likewise, African companies looking to capitalize on recent success by expanding outside of Africa must become well-versed in doing business beyond African borders.

To better educate both African and foreign brand owners on these topics, INTA will hold its first conference in Africa in Cape Town, South Africa, from September 12, 2016. The INTA Bulletin spoke with INTA CEO Etienne Sanz de Acedo to find out more about whats in store for the conference, and why INTA members should not miss the chance to learn from the experts about this quickly developing market.

Why has the Association decided to target Africa? This conference is an opportunity to reinvig-orate our presence in Africa. Its a great way for African companies to better understand the value of trademarks and brands, and also for foreign companies to better understand the legal environment in Africa. We have an impressive lineup of speakers from a variety of backgrounds, including business people, branding experts, lawyers, and IP offices, which makes the program especially appealing.

INTA has been focused on Africa for a while now, in part through its Africa Global Advisory Council (AGAC), which is composed of eight members based throughout the continent. The AGAC has been helping to expand corpo-rate membership in Africa and advising the Association on important policy issues. INTA presently has 236 total member organizations throughout Africa and 656 total individual members. Annual Meeting attendance by reg-

istrants from the Middle East and Africa region increased by 11 percent this year compared to 2015, and we have an African representative on the Board of Directors with the addition of Brenda Kahari (B.W. Kahari, Zimbabwe). We will continue to focus more on Africa in the coming months and years, and this conference will serve as a starting point for increased engagement on the continent.

Does INTA have close relationships with any of the regional IP organizations in Africa? We have always had strong relationships with the two most influential IP organizations on the continent: the African Regional Intellectual Property Organization (ARIPO) and the African Intellectual Property Organization (OAPI). We have been fortunate enough to meet with them at every Annual Meeting, and sometimes at Leadership Meetings as well. In the coming years we look to enhance these interactions, and I thank the Director Generals of both organizations, Paulin Edou Edou of OAPI and Fernando dos Santos of ARIPO, for their close cooperation in the past and going forward.

What policy activities has INTA pursued in Africa over the past year or so? INTA provides advice and comments to national governments in Africa on such issues as strengthening anticounterfeiting laws. One ex-ample was INTAs suggestions to the South Afri-can government that its draft National IP Policy provide more emphasis on anticounterfeiting efforts, including stronger deterrents, improved customs procedures and training, and seizing counterfeit goods in transit. The Association also has joined forces with national IP groups such as Nigerias Anti-Counterfeiting Collabora-tion to host policy dialogues and conferences that include government officials in order to focus on the issues of importance to brand owners. In May of 2015, INTA submitted com-ments to South Africas Department of Science and Technology on the South Africa Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill 2014.

We also weigh in on issues of concern glob-ally, such as plain packaging legislation. The South African Health Department has been particularly active in its consideration of plain packaging requirements for tobacco products, and INTAs amicus brief to the World Trade Organization in a dispute over Australias plain packaging legislation appears to have given the

South African government reason to consid-er the overall implications of imposing such restrictions.

Finally, INTA has submitted comments on trademark-related legislation in places such as Uganda and Namibia, and also has an ongoing project to benchmark the trademark office prac-tices on the continentthe Trademark Office Benchmarking Database. Accessible to both the offices and users on INTAs website, the information allows for the comparison of the services provided to users and their efficiency. This in turn encourages the offices to improve upon current practice so as to not only facilitate the securing of a trademark registration, but also to promote foreign investment in Africa.

What do you hope to achieve with this conference? We want to build upon our relationships with organizations like ARIPO and OAPI, and Im also very interested in stronger interaction with brand owners, especially companies such as Interbrand Africa (see Interbrand Africa inter-view). Africa has a growing voice worldwide and a growing middle class, which makes it very ap-pealing to foreign companies, but also means that African companies have an opportunity to grow outside of Africa. This conference is not just about helping non-African companies to bring their business to Africa; we also want to learn from African companies about their businesses and where we may provide support to them as they continue to expand abroad.

Global Report: Africa

Chair Lara Kayode, O. Kayode & Company, Nigeria

Council MembersBarbara Berdou, Berdou Attorneys, South AfricaAnne-Marie Breek, Remgro Management Services Limited, South AfricaBrenda Kahari, B.W. KAHARI, ZimbabweMadelein Kleyn, Oro Agri Inc, South AfricaStephen Le Feuvre, Lysaght, Channel IslandsWilliam Mansfield, ABRO Industries, Inc., United StatesUche Nwokocha, Aluko & Oyebode, NigeriaStaff Liaison Bruce MacPherson, Chief Policy Officer [email protected]

Africa Global Advisory CouncilINTA Conference to Examine the Role of Brands in Building Africas Economy

http://www.inta.org/Advocacy/Documents/2015%20IR%20SA%20Bill.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IR%20SA%20Bill.pdfhttp://www.inta.org/Advocacy/Documents/2015/INTAWTOPlainPackagingAmicusBriefApril2015.pdfhttp://applications.inta.org/apps/tmobm/http://applications.inta.org/apps/tmobm/http://www.inta.org/INTABulletin/Pages/Interbrand_CEO_Africa_Interview_7111.aspxhttp://www.inta.org/INTABulletin/Pages/Interbrand_CEO_Africa_Interview_7111.aspxmailto:[email protected]

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Building Africa with Brands will feature a diverse group of speakers from both IP and non-IP organizations. One of those speakers is Doug de Villiers, CEO of Interbrand Africa, who, with his colleague Charles Rupare, will be addressing the topic of Brand Valuation: Your Brand May Be Your Biggest Asset; It Has More Value Than You Think. Interbrand Africa, a brand valuation and strategic branding com-pany, has been building its presence in Africa for 23 years. In the last ten years, it has grown from its office in Johannesburg to open offices throughout East and West Africa as well. Today, it is the largest strategic branding company on the continent, says Mr. de Villiers.

Mr. de Villiers spoke more with the INTA Bulle-tin about the opportunities and challenges of branding in Africa, why he is eager to address INTA members in September, and how his business goals are linked with the goals of trademark and IP professionals.

What is Interbrand, and what is your role with Inter-brand Africa? Interbrand is the world leading strategic brand-ing consultancy. As CEO of Interbrand Africa, my primary responsibility is to look after the four offices that oversee the sub-Saharan Afri-can regionJohannesburg, South Africa; Lagos, Nigeria; Nairobi, Kenya; and Port Louis, Mau-ritius. My job is to promote the understanding of brands as a business tool and a business asset as opposed to the often traditional view of a brand as just a logo and beauty parade for the business. I spend a significant amount of time educating and informing clients. I work with them closely as a business consultant to help them understand and recognize that they have asset value in their brands, and thatlike any good business assetthey need to nurture, invest in, and grow their brands to the benefit of the business.

How exactly do you impart that to them? We usually have a simple conversation with cli-ents to identify whether theyre using the brand to drive up revenue. If branding and marketing is done correctly, it will increase revenue but also drive down costs. In fact, the power of a coherent brand set can have a massive impact around the alignment of the organization. The conversations I have tend to move beyond just the marketing departments, heads of market-ing, or Chief Marketing Officersthe majority

of our conversations are in fact primarily with CEOs, CFOs, and Chief Talent Officers.

How are trademarks and IP linked to what you do? The IP conversation is very central to our orga-nization. Unfortunately, I dont believe we yet have sufficient interaction with IP practitioners. Our primary touch point is when were doing things like name generation, securing URLs, getting names registered, and the various elements of protecting IP. It tends to be a subset or a result of what we do in our brand consulting and design capability. But with the significant amount of time and attention we put into the delivery of brand asset value, more and more organizations are now recognizing that, not only is it their right to protect their brand elements, but it is their obligation, since brands have significant business value now and in the future. Various forms of legislation put the onus on directors to protect the assets of a company. Once businesses recognize that the brand is an asset, then it is natural that the conversations we have are with the CEOs. We explain to them that we can develop a great strategy, we can design fantastic brands, and we can activate them beautifullybut if you dont own that IP, or you cant protect that IP, you may be investing in something for naught.

What are the unique challenges of protecting brands in Africa? The conversation around getting organizations and brand owners to understand the brand as a business asset is not unique to Africathat is, in many respects, a global challenge. Of course, more sophisticated markets do have a better understanding of that.

What makes branding in Africa quite unique is that we have some significant practical challenges around the quality of research and information. This is from an international, continental, regional, and local perspective. Too often the wrong questions are asked of

the wrong people in those markets. On an international basis, many people view Africa as one immense homogenous market, which it is not. Its a significantly complicated geographic, religious, cultural, and language market that absolutely has to be dealt with as 53 different countries and subsets within that. So, one of our biggest challenges is getting away from talking about Africa and instead talking about the regions in country-specific terms.

Africa is abundantly diverse in terms of culture and language, so when you look at brand development and how youre positioned in var-ious markets, there are significant distinctions as a result of religion, language, and individual preference. It can be really complicated. You have 2,000-plus languages in Africa, so how do you present brands that can be well-recognized and understood across that broad market?

What drew you to participate in INTAs Building Africa with Brands conference? Its part of our continual drive to educate and open more stakeholders eyes to the potential of what could be achieved through proper and strategic brand consideration and manage-ment. We have strong interest in pushing beyond the marketing community, because the biggest mistake we see is when people believe that brand is a subset of marketing. It most dis-tinctly and definitely is not. Brand is the respon-sibility of the CEO at the top end. It determines the people the company employs, the distribu-

InterviewDoug de Villiers, Interbrand Africa: Why Branding Must Be Handled from the Top


continued on page 6

If branding and marketing is done correctly, it will increase revenue but also drive down costs.

http://www.inta.org/Programs/Pages/2016BuildingAfricawithBrands_Overview.aspxhttp://www.inta.org/Programs/Pages/2016Africa_Program.aspxhttp://www.inta.org/Programs/Pages/2016Africa_Program.aspxhttp://www.inta.org/Programs/Pages/2016Africa_Program.aspx



NIGERIA: The Nigerian Trademarks Office: A Synopsis of 2015 to Date2015 was a challenging year for the IP industry in Nigeria, particularly regarding the Trademarks, Patents and Designs Registry, which saw numerous changes in leadership and policies.

April 2015: The Registrar of Trademarks,

Patents and Designs transferred out of office in 2015

In April 2015, Nima Salman-Mann, who had served as Registrar from March 2012, moved to another ministry within the Federal Civil Ser-vice. Her legacies include the execution of the online filing platform as well as the introduction of the Industrial Property Automated System

(IPAS) of filing at the Registry, which replaced the old manual system.

May 2015: Appointment of new Registrar

In May 2015, Olusegun Adeyemi Adekunle Esq. became the new Director of the Com-mercial Law Department and the Acting Reg-

BOTSWANA: Trademark Opposition Hearings No Longer AvailableOn January 26, 2016, the Companies and Intel-lectual Property Authority (CIPA) announced that it no longer has the capability to conduct hearings for trademark oppositions and inval-idations. The reason given was that due to re-cent restructuring, CIPA had lost staff members essential to the operation of these hearings.

No time period has been given as to when CIPA will regain the capability to conduct such hear-

ings. However, assurances have been made that an interim solution is currently being in-vestigated. For the time being, CIPA will receive and acknowledge the trademark oppositions and invalidations lodged with their office.

As a long-term solution, CIPA intends to review the Industrial Property Act of 2010 with a view to incorporating provisions for a Trademarks Tribunal, not unlike that of its neighbor, South Africa.

In the meantime, substantial delays can be expected.

Contributor: Brendon Ambrose Spoor & Fisher, Pretoria, South Africa

Verifier: David Broodryk Remgro Management Services Ltd, Stellenbosch, South Africa

In the News

tion channels it uses, the product the company makes, and yes, ultimately, the marketing and messaging and the stakeholder groups and communications to them. It involves critical stakeholders like the legal and financial teams to ensure from a governance and due diligence point of view, the brand assets are recognized and protected. An audience like INTA members is exactly who we want to be chatting to, to explain that youve got to push branding up the corporate food chain to the very top.

What will attendees learn from your session on brand valuation? My topic is going to talk about recognizing a brand as an asset and not just a piece of IP or design. Well talk a little bit about the process with respect to the responsibility of the orga-nization in protecting, nurturing, and growing the brand as a business asset. Well look at methodologies to value a brand, without get-ting massively technical. The IS0 10668 [which is published by the International Organization for Standardization and specifies the proce-dures and methods of measuring the value of a brand] will be available to look at, but the goal is to give the conference attendees an idea that once brands are recognized as an asset there are very clever and scientific tools in place to measure and allow organizations to

make choices as to where to best invest and optimize in brands beyond the governance point of view. Brand valuation gives companies a very key performance metric around how you can measure your brand on an ongoing basisdaily, weekly, monthlyas opposed to every couple of years when theres some sort of brand crisis.

What are some of the key benefits of expanding a brand into Africa? The world is in quite a strange place right now with Brexit, but the one thing we recognize in Africa is that the more things change the more they stay the same. Change is always a variable. Working in any of the markets here does entail a strong requirement for agility and flexibility. But for brand owners who want to

grow their businesses in Africa, the single key business attraction is that Africa is significantly unbranded. This means we have a tremendous population concentrated in three to five key economies that are all consumers. There is a very big age bubble sitting in a young consum-er base that is now a growing middle class in most of the key developing markets. No, it doesnt have the level of disposable income or GDP youd see in the developed markets, but you cant ignore the facts that there are so many potential consumers that do in fact have money and have the same aspirations when it comes to brand ownership that we have anywhere else in the world.

There seems to be a high level of caution when bringing brands to Africa, and this is often worsened by bringing brands to Africa in the wrong way. I think people who are serious about growing their business cannot ignore what is a relatively complicated market in the greater scheme of things, but nonetheless a significant market from a revenue and busi-ness growth point of view. Weve certainly seen that those organizations that have moved into Africa have done well if theyve brought their brands in properly, have protected them well, positioned themselves correctly in the market, and have proven that theyre here to stay.

Interview continued from page 5

For brand owners who want to grow their businesses in Africa, the single key busi-ness attraction is that Africa is significantly unbranded.

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Regional ResourcesThe AnticounterfeitingCollaboration, Nigeria

ARIPO

OAPI

Additional Resources on INTA.orgCountry Guides

Global Portal

International Opposition Guide

Madrid Agreement and Protocol

Trademark Cancellations Guide

Trademark Office Benchmarking

Geographical Indications, Certification Marks and Collective Marks: An International Guide

Testimony and Submissions:

INTA Comments on South Africa Protection of Traditional Knowledge Bill

ZIMBABWE: Trademark Amendment Bill Incorpo-rates Madrid ProtocolThe National Assembly on April 14, 2016, approved the General Laws Amendment Bill, which includes amendments to the Trademark Act to incorporate Zimbabwes accession to the Madrid Protocol. The Bill now must be prepared for submission to the President and obtain his

assent. It will then be published in the Govern-ment Gazette.

Upon publication it will become law, but the Ministry of Justice will need to draft regulations to enable implementation of the Protocol by the Registrar of Trade Marks Office. It is not clear how long the process will take. Mean-

while, applications filed cannot be processed until the regulations are published.

Contributor: Trademark Office Practices CommitteeAfrica Subcommittee

Verifier: Sara Moyo Honey & Blanckenberg, Zimbabwe

istrar of the Registry of Trademarks, Patents and Designs.

Mr. Adekunle very quickly set to work, putting processes and systems in place, a move that stakeholders applauded.

Mr. Adekunle continued to serve as the Registrar of Trademarks, Patents and Designs until October 2015, when the Association of Senior Civil Servants of Nigeria served a 21-day notice. The notice stated that the members at the Registry were planning to embark on an indefinite strike, which would have the effect of shutting down the registry completely. The ma-jor demand of the Union was that the Registry appoint the most senior Registry officer as the Registrar of Trademarks, Patents and Designs. After serving as Director/Acting Registrar for months at the registry, Mr. Adekunle was transferred to the Ministry of Water Resources Department. Mr. Adekunle graciously accepted his redeployment to Water Resources, and, as a result, the imminent strike did not happen.

The news of his move was received with mixed feelings by stakeholders and staff of the Reg-istrymany individuals were concerned about the effects of such changes on the Registrys operations.

October 2015: Chief Registrar Mr. William Amuga

With the exit of Mr. Adekunle, Mr. William Amuga, the most senior officer in the Registry, became the Registrar, adopting the title of Chief Registrar, Trademarks, Patents and De-signs Registry; this appointment was welcomed by Registry staff.

Recent happenings at the Registry include:

The introduction of TSA by the federal government and its effects on the online filing system: The Treasury Single Account (TSA) is the new payment policy initiated by the federal gov-ernment and requires all revenue generated by all ministries, departments, and agencies

to be paid into a single account, for the sake of accountability and tracking.

Limited resources as a result of the economic downturn: With the fall in oil prices, the diminishing value of the naira, and several hiccups associated with the workings of the TSA, the productivity level of the Registry was affected as a whole.

Determined efforts of Registrar: Despite the above challenges, Mr. Amuga has been persistent in his resolve to process outstand-ing certificates. In a recent meeting with IP stakeholders in Lagos, he pledged the following:

Timely publication of trademark journals;

The diligent and efficient administration of the IPAS and Online filing systems; and

The issuance of outstanding certificates.

Despite the challenges and changes in leader-ship and economic downturn of the country, we are optimistic that the present leadership will also leave a positive legacy.

Despite the challenges and changes in leadership and economic downturn of the country, we are optimistic that the present leadership will also leave a positive legacy.

http://anticounterfeiting.com.ng/site/http://anticounterfeiting.com.ng/site/http://www.aripo.org/http://www.oapi.int/http://www.inta.org/CountryGuides/Pages/CountryGuides.aspxhttp://www.inta.org/globalportal/Pages/GlobalPortal.aspxhttp://www.inta.org/Oppositions/Pages/IOG.aspxhttp://www.inta.org/MadridProtocol/Pages/MadridProtocol.aspxhttp://www.inta.org/Cancellations/Pages/Cancellations.aspxhttp://applications.inta.org/apps/tmobm/http://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/INTABlog/Lists/Posts/Post.aspx?ID=175http://www.inta.org/INTABlog/Lists/Posts/Post.aspx?ID=175


INTAs decision to register a branch office in Singapore in March marks a new chapter for the Associations advocacy efforts in Asia-Pacif-ic. The office will help the Association to further its Strategic Plan goals by supporting members in the region and working with partners in gov-ernment and industry to promote trademarks and protect consumers.

Positioned geographically in the center of the region that stretches from Australia and New Zealand in the south to Japan and South Korea in the north, Singapore operates as a business hub that will allow INTA to more easily liaise with members and government officials throughout the region. Singapore is also an IP- and business-friendly city. In its Doing Business 2015 report, the World Bank ranked Singapore first out of 189 economies for ease of doing business, and in its Global Competitiveness Report 20132014, the World Economic Forum ranked Singapore as having the best IP protection in Asia.

The new office will allow for increased focus on policy advocacy efforts in Asia-Pacific, led by INTA Chief Representative, Asia-Pacific Office, Seth Hays. Mr. Hays will work with organiza-tions such as the ASEAN IP Association and

the ASEAN Working Group on IP Cooperation to help strengthen the IP and business econo-mies in Asia-Pacific. He will also work closely with governments and non-IP organizations in the region to support the harmonization of trademark laws, as ASEAN Member States continue to integrate into a prosperous eco-nomic community.

The Asia-Pacific office leaves the Associa-tion well-positioned to support trademark owners, policy makers, and other stakehold-ers throughout the region as it tackles new opportunities and challenges posed by the future, said Mr. Hays.

INTAs First Unreal Campaign in Asia Takes Place in the Lion CityOn March 4, 2016, INTAs Unreal Campaign visited the Nanyang Girls High School in Singa-pore, for the first Student Engagement Session in Southeast Asia since the campaigns launch in 2012.

Nanyang Girls High School, which was founded almost a century ago in 1917, is consistently ranked as the top secondary school in Singa-pore. Notable alumni include the late former First Lady of Singapore, Ong Siew May, as well as the only woman who currently holds the status of full minister in the Singapore Cabinet,

Grace Fu Hai Yen. The presentation was held in the Siew May auditorium and was attended by approximately 400 students. The presentation was delivered by Zaheera Hashim, a Senior Counsel, Procter & Gamble, as well as Low Pei Lin and Gloria Goh, partners of the Intellectual Property Practice of Allen & Gledhill LLP.

Ms. Low and Ms. Goh presented on the basic legal aspects of trademark protection and trademark enforcement measures. As part of the presentation, the students were shown vid-eos produced in Southeast Asia by the Unreal Campaign and seemed engaged and enthusi-astic about the ideas presented. The students

also enjoyed a quiz where they compared real and unreal products and voted for which prod-ucts they thought were real and which were counterfeits. Overall, it was a very successful event and hopefully there will be more Unreal events in Singapore soon.

For more information on the Unreal Campaign, contact INTAs Campaign Coordinator, Laura Heery at [email protected].

Inaugural INTA-BASCAP Workshop Identifies Solutions and Trends in Anticounterfeiting PracticesOn March 2 in Singapore, INTA and the Inter-national 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

HoldersWorking Together to Stop Counterfeit-ing and Piracy. The series is focused on the pressing trends and priority issues affecting brand owners in the area of anticounterfeiting.

INTA CEO Etienne Sanz de Acedo opened the workshop by citing the most recent Organi-sation for Economic Co-operation and Devel-

Global Report: Asia-Pacific

Co-ChairsMona Lee, Hanol Law Offices, South Korea

Kowit Somwaiya, LawPlus Ltd., Thailand

Council MembersLouis Chan, Procter & Gamble, SingaporeDaniel Greif, Spruson & Ferguson, SingaporeMarion Heathcote, Davies Collison Cave, AustraliaPatsy Lau, Deacons, Hong KongAndy Leck, Baker McKenzie, Wong & Leow, SingaporeShunji Sato, TMI Associates, JapanThomas Treutler, Tilleke and Gibbins, VietnamJay Young-June Yang, Kim & Chang, South KoreaChristopher Young, Minter Ellison Rudd Watts, New ZealandStaff LiaisonSeth Hays, Chief Representative Officer: Asia-Pacific [email protected]

Asia-Pacific Global Advisory Council

Association Activities

INTA Registers Asia-Pacific Branch Office in Singapore

Pei Lin LowAllen & Gledhill LLP, Singapore

INTA Chief Representative, Asia-Pacific Office, Seth Hays

http://www.inta.org/Advocacy/Pages/UnrealCampaign.aspxmailto:[email protected]:[email protected]

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This represents the first time in INTAs history that a full committee has been dedi-cated to the topic of designs.

Peter DernbachWinkler Partners, Taipei, Taiwan

opment (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.

BASCAPs Deputy Director Bill Dobson, citing the March 2015 BASCAP white paper on inter-mediaries, said that the problem of counter-feiting 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 Direc-tor of Legal, Trina Ha, delivered the keynote

ad-dress and highlighted the relationship between the trade in counterfeit goods and developing economies.

Discussion Points 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 marketplaces safety by preventing the use of their premises for the sale of counter-feit goods; and tackling counterfeits online, among other topics.

Panelists in the discussion on cross-border cooperation noted that for counterfeiters, trade

in these illicit goods is a business. To fight these illegal competitors, the panelists agreed on holding 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 plat-form to discuss issues, network, and learn best practices. INTA and BASCAP are looking forward to organizing four more workshops for the re-mainder of the year in Africa, China, Europe, and Latin America. The next one will be held in Cape Town, South Africa, on August 31, 2016.

Grand Designs: A Report from the 2016 INTA-AIPPI Joint Designs ConferenceINTA 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 protec-tion 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 INTAs commitment to serving this growing

discipline by elevating the Associations Designs Committee to full committee status.

This represents the first time in INTAs 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 Committees planned work for the coming term. Read the full report in the INTA Bulletin.

ASEAN IPA Meeting Looks AheadFrom March 4 through March 6, in Kuala Lumpur, Malaysia, the Association of Southeast Asian Nations Intellectual Property Association (ASEAN IPA) conducted its Annual Meeting and Conference, focusing on the future of IP in the region. INTA was honored to be invited as an observer, represented by Trademark Office Practice Asia Pacific Subcommittee Chair, Mr. Louis Chan (P&G, Singapore) and INTA Asia-Pacific Office Chief Representative, Mr. Seth Hays.

President Chew Phye Keat opened the event by calling for an ASEAN voice in the role of IP development in the region, citing the numerous trends in IP development, such as the recent drafting of the next ASEAN intellectual property rights (IPR) action plan to recently negotiated trade agreements.

Participating in the event were representa-tives from several IP offices, such as those in Malaysia, Cambodia, Laos, Myanmar,

and Singapore. Mr. Abdul Aziz Ismail of the Malaysia IP office spoke in detail on the re-cently drafted IPR Action Plan for the ASEAN Working Group on IP Cooperation (AWGIPC) for 20162025. He mentioned four strategic goals: (1) building a robust IP system through IP offices and IP infrastructure; (2) contrib-uting to the ASEAN Economic Community; (3) promoting asset creation and traditional knowledge and geographical indications; and (4) expanding an inclusive IP ecosystem. Most notably, industry groups play a major role in ex-panding the IP system, and the AWGIPC plans more interaction with users of the IP system.

Following Mr. Ismails comments was the presentation of Mr. Ignacio de Medrano, Project Leader for the EU-ASEAN Project on the Protection of Intellectual Property Rights (ECAP III) program. He noted that the numer-ous programs initiated by ESCAP III, such as ASEAN TMview, have been successful in using technology to link IP offices and create value for users, who can easily search all connected

offices in the region for trademark registrations through one website. He noted that IP offices in the region are becoming digitally mediated institutions.

INTA joined an afternoon panel on emerging issues. Mr. Louis Chan spoke on the recent trends of plain packaging in the region, joining other panelists who discussed the emerging issues of indigenous rights, the Trans-Pacific Partnership (TPP), and the Hague Agreement.

The day concluded with an update on the IP law drafts in Myanmar and the business per-spectives of counterfeit trade in the region.

This event was a fantastic forum to hear ASEANs leading IP users group discuss the major topics in the region and to mix with lead-ing government officials.

http://www.inta.org/INTABulletin/Pages/Printable_Version_7105.aspxhttp://www.asean-tmview.org/tmview/welcome.html


JAPAN: Changes to Trademark and Patent Prosecution Procedures The Japanese Patent Office (JPO) recently announced some minor changes to both trade-mark and patent prosecution procedures that are aimed at simplifying prosecution for appli-cants, 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 respond-ing to a provisional refusal of a trademark application is 40 days for domestic applicants and three months from date of issue for appli-cants 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 pro-cedure 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 quan-tified, 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.

In the News


This can be seen as a vastly improved practice in many cases involving overseas applicants.

Contributor: James HughesS. Soga & Company, Tokyo, Japan

Verifier: Shoichi Okuyama Okuyama & Sasajima, Tokyo, Japan

Additional Resources on INTA.orgCountry Guides

Global Portal



Trademark Cancellations Guide

Geographical Indications, Certification Marks

and Collective Marks: An International Guide


INTA Comments to the Draft Certification Mark Regulations of the Kingdom of Cambodia

INTA Comments to IP Australias Proposals to Streamline IP Processes and Support Small Business

Regional ResourcesASEAN

TMview

TM5 Website

Trademark Questions and Answers

QuickStart Trademark Chart

Providing quick hit answers to 18 frequently asked trademark questions across more than 120 jurisdictions.

Visit www.inta.org/Quickstart

http://www.inta.org/CountryGuides/Pages/CountryGuides.aspxhttp://www.inta.org/globalportal/Pages/GlobalPortal.aspxhttp://www.inta.org/Oppositions/Pages/IOG.aspxhttp://www.inta.org/MadridProtocol/Pages/MadridProtocol.aspxhttp://www.inta.org/Cancellations/Pages/Cancellations.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/Advocacy/Documents/2015/2015%20Cambodia%20Cert%20Mark%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015/2015%20Cambodia%20Cert%20Mark%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015/2015%20Cambodia%20Cert%20Mark%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IP%20Australia%20Streamline%20IP%20Process%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IP%20Australia%20Streamline%20IP%20Process%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IP%20Australia%20Streamline%20IP%20Process%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015%20IP%20Australia%20Streamline%20IP%20Process%20Comments.pdfhttp://www.asean.org/http://www.asean-tmview.org/http://tmfive.orgwww.inta.org/Quickstart

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Coming In November 2016: INTAs New Enforcement Guide!In INTAs forthcoming searchable guide, youll find information on the many facets of trademark litigation, including:

www.inta.org/MemberResources

pre-filing requirements claims for infringement of registered

and unregistered marks

emergency measures early resolution of litigation evidence

trials and oral hearings judgment and final orders post-judgment issues costs of litigation remedies

http://www.inta.org/MemberResources


The China Subcommittee of the Trademark Office Practices Committee (TOPC) had the honor of receiving an informative update from representatives of the China Trade-mark Office (CTMO) in attendance at the INTA Annual Meeting in Orlando, Florida, in May. The CTMO introduced a new trademark examination quality management system currently being tested and deployed to ensure high quality and consistent examination of trademark applications.

It is no secret that the CTMO receives the worlds most trademark applications, topping out at nearly 2.9 million in 2015. Additionally, subsequent to the enactment of the amended Trademark Law in 2013, the CTMO is required by statute to examine applications within nine months. The high volume of applications and the short time period for examination led to the formation of the Trademark Examination Coop-eration Center in 2014, which handles most of the initial trademark examinations.

The examiner team of the Cooperation Center is built on the basis of examiners of the Tongda Trademark Service Center who were recruit-ed and trained in 2008. New hires will be recruited in the following years to cope with the increasing applications. In order to guarantee the examination quality, the CTMO focused its efforts and staff on guidance, supervision, and training for Cooperation Center examiners.

A team within the CTMO is charged with quality control. The quality management teams goals are to reduce error rates, identify systemic issues, and evaluate and improve the overall

quality of examinations. The CTMO is using an in-process sampling method, whereby a sub-set of applications are inspected, and errors notified to examiners for improvement. Senior inspectors conduct the process independently, while difficult cases are discussed at depart-ment meetings.

Reports are developed on a monthly basis to identify common or recurring issues to be ad-dressed. The in-process sampling system has been in formal use since November 2015.

The CTMO representative also indicated that software is being developed to help manage the process, particularly time management software.

Scott Palmer (Sheppard Mullin, China), TOPC China Subcommittee Chair, said of the pro-gram, This quality management initiative is a noteworthy and commendable effort by the CTMO to enhance the consistency, transparen-cy, and accountability of trademark examina-tion practices. Its initial results are encourag-ing, and we expect that the initiative will yield noticeable improvements as it is expanded to cover the work of all CTMO examiners in the

Global Report: China

The CTMO receives the worlds most trademark applications, topping out at nearly 2.9 million in 2015.

Co-ChairsLi Yongbo, Unitalen Attorneys At Law, ChinaJing He, Anjie Law Firm, ChinaCouncil MembersGang Bai, Wan Hui Da Intellectual Property Agency, ChinaGeorge Chan, Simmons & Simmons (Beijing) Intellectual Property Agency Company Limited, ChinaDing Xianjie, King & Wood Mallesons LLP, ChinaZhen Feng, Hogan Lovells International LLP, ShanghaiKaren Law, Digital Domain Holdings Limit-ed, Hong Kong SAR, ChinaFei Liao, King & Wood Mallesons LLP, ChinaChunxiang Shen, NTD Patent & Trademark Agency Ltd., ChinaFang Zhou, China Telecom, ChinaIris Chao, Johnson & Johnson, ChinaScott Palmer, Sheppard Mullin Richter & Hampton LLP, ChinaSam Xu, Tencent Technology (Shenzhen) Co., Ltd., ChinaStaff LiaisonSeth Hays, Chief Representative, Asia Pacif-ic Office, [email protected]

China Global Advisory Council

INTA Submits Comments to the State Council Legis-lative Affairs Office

On March 21, INTAs Unfair Competition Com-mittee submitted comments to the State Coun-cil Legislative Affairs Office (SCLAO) in China on the current draft revision of the Anti-Unfair Competition Law. INTA believes that this draft legislation will further protect consumers in Chi-na and discourage unfair business practices.

Although INTA supports most of the amend-

ments proposed in the draft, there were certain provisions that INTA encourages SCLAO to consider, including:

1. SCLAO should consider provisions that protect translation and transliteration of certain commercial marks;

2. The definitions contained in the Anti-Un-fair Competition Law should align with the Trademark law of the Peoples Republic of China;

3. The threshold for a finding of unfair com-pletion should be a likelihood of causing market confusion and not actual confusion; and

4. SCLAO should consider a Miscellaneous Provision to the proposed law.

For more information, please read the full comments submitted by INTA or contact INTAs Asia-Pacific Chief Representative, Seth Hays, at [email protected].


INTA Briefed on New China Trademark Office Quality Management System

coming months. WeINTA and the TOPC China Subcommitteewill be watching the next phase of this initiative with great interest indeed.

mailto:[email protected]://www.inta.org/Advocacy/Pages/Testimony.aspxhttp://www.inta.org/Advocacy/Pages/Testimony.aspxmailto:[email protected]

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Global Report: ChinaINTA Participates at EU-China Online Counterfeiting Conference On June 2, INTA member Li Yongbo (Unitalen, China), Co-chair of the China Global Advisory Council, and INTAs Asia-Pacific Chief Represen-tative Seth Hays, participated in the EU-China Seminar on Online IP Protection in Beijing, China. China Ministry of Commerce Vice Min-ister Feng Aiqing and EU Delegation to China Ambassador Hans Dietmar Schweisgut gave opening remarks.

Mr. Feng noted the tremendous advances that China has made in all areas of IP, pointing specifically to the fact that IP-intensive indus-

tries attract more funding than other sectors. More R&D and global functions are coming to China as a result, he said, noting that the Chinese and European economies are highly complementary. By the year 2020, the goal for China-EU trade should hit USD 1 trillion.

Mr. Feng noted that the State Council is in the process of drafting a new e-commerce law, and that the National Leading Group on the Fight against Counterfeiting has been fo-cused on online counterfeiting for two years as a top priority.

During the substantive program, Mr. Li Yongbo

spoke on the practical aspects of notice and takedown procedures.

The day of discussion outlined key IP issues in China, which boasts the worlds largest online marketplace. Attendees noted the high quality of speakers, from government and associa-tions to online sales platforms and European brand owners.

INTA has been a leader on the issue of online counterfeiting in China, having engaged gov-ernment officials and online sales platforms for several years. (See report from 2014 here.)

Doing Business for the First Time in China? An INTA Resource Especially for Small and Medium-Sized Trademark Owners

Expanding Your Trademark into China: An INTA Guidebook for Small and Medium Enterprises is a new publication compiled by a team of expert practitioners serving on the Anticoun-terfeiting Committees China Subcommittee. The guidebook contains useful background information for companies contemplating entry into the Chinese market.

It opens with some insightful statistical data covering the global counterfeiting industry and includes a primer on registering trademarks in China, and it covers time limits for examination and oppositions (which were imposed under

Chinas revised 2014 trademark law) and bad-faith trademark filings.

The Guidebook also covers enforcement basics, ranging from customs enforcement to administrative proceedings and including civil and criminal enforcement. A Best Practices section provides practical tips that have been

successfully utilized by members to establish trademark protection programs, including infor-mation on market investigations. This section also provides strategies that will aid in deter-mining a trademark owners needs, whether it pertains to an enterprise just entering the Chi-na market, one that has been in the market for several years, or is a mature entrant needing a robust anticounterfeiting program.

Corporate trademark owners may find the Guidebook useful in justifying the need for trademark registration protection and an anticounterfeiting program in China. Trademark practitioners can also use the document to train clients and others new to trademarks.

Click here to access and download the Guide-book.

Supreme Peoples Court Rules Use of a Mark on OEM Product for Export Did Not Infringe Chinese Mark On November 26, 2015, Chinas Supreme Peoples Court issued a final decision in a case brought by Focker Security Products Interna-tional Ltd. (Focker Security) against Original Equipment Manufacturer (OEM), Ya Huan Lock Industry Co. Ltd, in which Focker Security alleged that Ya Huans use of the trademark PRETUL on locks destined for export only was infringing its Chinese national trademark regis-tration for PRETUL.

Ya Huan was manufacturing the locks for Truper Herramientas S.A. DE C.V. (Truper), the owner of the mark PRETUL (Trademark Registration No. 770611), used on locks, and PRETUL with oval shape design (Trademark Registration No. 2783496), both registered in Mexico. Truper asked Ya Huan Lock Industry

Co. Ltd. (Ya Huan), based in Zhejiang, China, to manufacture locks bearing the PRETUL trade-marks for export to and distribution in Mexico. Focker Security is a Hong Kong company that had registered the trademark PRETUL with oval shape design (Trademark Registration No. 3071808) in Class 6 in Mainland China.

Focker Security originally sued Ya Huan in Ningbo City, Zhejiang Province, China, for trademark infringement. The Ningbo Inter-

mediate Peoples Court made a first instance judgment that Ya Huan had infringed Focker Securitys mark and ordered Ya Huan to cease using the PRETUL with oval shape design mark on its products immediately. The court also awarded compensation of RMB 50,000 (USD 7,735) to Focker Security, but ruled that the use of the PRETUL word mark did not consti-tute trademark infringement (Court Docket No. 2011ZYZCZ No. 56). The court deemed that,

In the News

Lisa SmithAlticor, Inc., Ada, Michigan

TM Owner The Mark Reg. No. Class CountryFocker Security 3071808 6 China

TRUPER S.A. DE C.V. 2783496 8 Mexico

770611 6 Mexico

Corporate trademark owners may find this Guidebook useful in justifying the need for trademark registration protection and an anticounterfeiting program in China.

continued on page 14

http://www.inta.org/INTABlog/Lists/Posts/Post.aspx?ID=74#.V1PuTPl96M8http://www.inta.org/TopicPortal/Documents/INTA%20SME%20Anticounterfeiting%20Toolkit%20for%20Chinese%20Trademark.pdfhttp://www.inta.org/TopicPortal/Documents/INTA%20SME%20Anticounterfeiting%20Toolkit%20for%20Chinese%20Trademark.pdfhttp://www.inta.org/TopicPortal/Documents/INTA%20SME%20Anticounterfeiting%20Toolkit%20for%20Chinese%20Trademark.pdf


Additional Resources on INTA.orgChina Microsite

China Bulletin

Country Guides

Geographical Indications, Certification Marks and Collective Marks: An International Guide


Trademark Cancellations



INTA Comments to the Hong Kong Panel on Health Services on Legislative Proposals to Strengthen Tobacco Control

Regional ResourcesChina Trademark Association

State Administration for Industry and Commerce

Global Report: China

although the products were exported to Mexico without any distribution in China, the usage of PRETUL with oval shape design on locks, packages, and instructional guides should be regarded as trademark use under Chinas Trademark Law. Both parties disagreed with the courts judgment and appealed.

Zhejiang Provincial Higher Peoples Court heard the appeal in 2012, and disagreed with the first instance court. The Zhejiang Court re-voked the first instance judgment by deeming the usage of both the PRETUL word mark and the PRETUL with oval design mark infring-ing and increased compensation to Focker

Security from RMB 50,000 to RMB 80,000 (USD 12,380) (Court Docket No. 2012ZZZZ No. 285). Both the first instance court and the second instance court made their judgments in accordance with Article 52(1) of the Trademark Law of China.

Ya Huan appealed to the Supreme Peoples Court (SPC) for review. On November 26, 2015, the SPC revoked both the first and second instance judgments (Court Docket No. 2014MTZ No. 38). The SPC said that the primary purpose of a trademark is to distinguish the source of the commodity or the service, and, in this case, Ya Huan had clearly

indicated that the lock products were for Truper in Mexico. The SPC ultimately ruled that the use of the PRETUL trademarks on the product labels did not constitute substantially signifi-cant trademark use as defined by Article 52(1) of the Trademark Law of China.

First Sound Mark Receives Preliminary ApprovalOn February 13, 2016, the first sound mark application was preliminarily approved and published for opposition. It was filed by China Radio International for the opening sound of its program. China started to accept applications for sound marks after May 1, 2014, when the newly amended Trademark Law came into effect. As of the end of January 2016, the State Administration for Industry and Commerce of the Peoples Republic of China (SAIC) has ac-cepted 450 filings for sound mark applications.

As provided by the Trademark Law, any mark consisting of words, devices, letters, numbers, three-dimensional marks, combined colors, sounds, etc., or the combination of these fac-tors, that can distinguish the goods of a natural person, legal person, or other organization from the goods of others, can be applied for.

The SAIC also issued the Criteria of Formality and Substantive Examination of Sound Marks (Trial Edition) as the guideline for examination and approval of sounds marks. This states that a sound mark should be examined by the same

criteria as visible marks, which are focused on whether or not the mark violates the prohibitive articles of the Trademark Law, whether or not the mark is inherently distinctive, and whether or not the mark is similar to prior marks.

According to the Criteria, in substantive exam-ination, those marks should be prohibited from registration if the marks are identical with or similar to Chinas national anthem, military songs or LInternationale and their rhythms, or related to religious music or terrorism and violence so as to create unhealthy influence. The marks will be deemed to lack distinctive-ness if they merely make direct reference to the contents, consumers, and other features of the designated goods or service, such as piano sounds used for musical instruments,

the voices of children playing and laughing for babys milk powder, or a dog barking or cat me-owing for pet foods. Marks will also be found to lack distinctiveness if they are devoid of other distinctive features, are too simple or have a common sound or rhythm, such as a long and full musical composition, ordinary slogan or catchphrase shouted by usual intonation, or a generic industrial musical song or composition.

In practice, a sound mark can acquire dis-tinctiveness only through long-term use, in that the sound mark should not be approved for registration unless association has been established among the consuming public between the mark and the providers of the goods or service.

Contributor: Nikita XueHongFangLaw, Shanghai, China INTA Bulletins Law & PracticeAsia Pacific Subcommittee

Verifier: Yu JieGuangdong Province High Peoples Court, Guangzhou, China

Contributor: Guizeng LiuYuanhe Partners/Yuanhe Intellectual Property Partners, Beijing, China Co-Chair, INTA Bulletins Law & Practice Asia Pacific Subcommittee

Verifier: Lin XuTrademark Review and Adjudication Board (TRAB), Beijing, China

As of the end of January 2016, the SAIC has accepted 450 filings for sound mark applications.

In the News continued from page 13

http://china.inta.org/http://china.inta.org/bulletin.phphttp://www.inta.org/CountryGuides/Pages/CountryGuides.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/GeographicalIndications/Pages/GeographicalIndications.aspxhttp://www.inta.org/Oppositions/Pages/IOG.aspxhttp://www.inta.org/Cancellations/Pages/Cancellations.aspxhttp://www.inta.org/MadridProtocol/Pages/MadridProtocol.aspxhttp://www.inta.org/Advocacy/Documents/2015/2015%20HK%20Health%20Panel%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015/2015%20HK%20Health%20Panel%20Comments.pdfhttp://www.inta.org/Advocacy/Documents/2015/2015%20HK%20Health%20Panel%20Comments.pdfhttp://www.cta.org.cn/http://www.saic.gov.cn/english/http://www.saic.gov.cn/english/

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Anna Carboni Redd Solicitors LLP, London, UK

Michael Hawkins Noerr Alicante IP, S.L., Alicante, Spain

Sheila Henderson Richemont International S.A., London, UK

Keith Howick Carpmaels & Ransford, London, UK

Jeremy Newman Rouse Legal, London, UK

INTA Brexit Rapid Response Group

Global Report: EuropeHow the Brexit Vote Will Affect Brand Owners: A Q&A Guide

On June 23, 2016, the electorate of the United Kingdom of England, Wales, Scotland and Northern Ireland voted to leave the European Union by a majority vote of 51.9 percent to 48.1 percent. This unprecedented decision will result in a period of uncertainty for the busi-ness sector in general. IP rights holders and INTA will be examining the implications over the months to come.

For this preliminary review of the potential im-plications, set out below are answers to some of the immediate questions posed in relation to Brexit.

When will the UK leave the EU? Nobody knows yet, but it is likely to be at least two years away. The UK government first has to formally notify the European Council of its intention to leave, which Prime Minister David Cameron indicated in his resignation speech should be done by his successor. Therefore, this will not happen until potentially October 2016. However, others are pushing for earlier notification. Formal notification will trigger a period of exit negotiations between the UK and the EU, which will have a two-year backstop date unless all the other EU Member States agree that additional time is needed.

Do EU laws still apply in the UK?Yes. EU laws will continue to apply in the UK until the UK officially leaves the EU. Therefore, for example, the EU Trade Mark Regulation (EU) 207/2009 (as amended by Regulation (EU) 2015/2424) and the Community Designs Regulation (EC) 6/2002, as well as the various harmonizing directives, such as the Trade Marks Directive (EC) 2015/2436 or the IP En-

forcement Directive (EC) 2004/48, all remain in full force and effect. The UK government has an excellent track record for ensuring that changes in IP legislation contain appropriate transitional provisions to help brand owners and other IP proprietors to adjust to any new regime. The UK trademark profession, as well as INTA itself, will no doubt get involved in the process at the relevant time, to ensure that this is the case.

Do EU Trade Marks (EUTMs) still cover the UK? Yes. Until the UK actually leaves the EU, EUTMs still have full force and effect across the UK. EUTMs can currently and for the foreseeable future still be invoked against national UK trademarks and infringing use in the UK. But once the UK formally leaves the EU, newly filed EUTMs will no longer cover the territory of the UK (subject to any special extension arrange-ment that is made as part of the Brexit deal).

What are the consequences for existing EUTMs once the UK actually leaves the EU, and will protection in the UK be lost? EUTMs will still cover the other (currently 27) Member States of the European Union and will continue to be administered by the EUIPO and governed by EU law. A mechanism will undoubtedly be provided to allow the continued protection or extension of pre-existing EUTMs to the UK post-Brexit. INTA will work with the UK government and UK Intellectual Property Office (UKIPO) to ensure that the process and transitional provisions to allow pre-existing EUTMs to be re-designated as UK national marks will be as smooth and easy as possible for rights holders. This should include main-taining the original filing and priority dates, and/or any relevant seniority claim.

How will the genuine use requirement be applied if the UK element of an EUTM is split off?Where an EUTM has only ever been used in the UK, the rump EUTM following Brexit may

eventually be vulnerable to revocation for non-use. It would be expected, however, that the EUIPO and EU courts would take into account use that took place in the UK while the UK was still in the EU. Similarly, there may be non-use issues for UK spin-offs from EUTMs that have not been used in the UK. Again, it would be fair to brand owners if use elsewhere in the EU while the UK was part of the EU could count in defense of a non-use attack, though such details will need to be worked out.

Do I now need to file UK applications to cover the UK? From the date on which the UK formally leaves the EU, it will probably be necessary to file UK national applications (or designate the UK through an International Registration), as EUTMs will no longer cover the territory of the UK, unless some special arrangement is set up whereby an EUTM can be extended to the UK

continued on page 16

Co-ChairsAnne Gundelfinger, Swarovski AG, LiechtensteinMichael Hawkins, Noerr Alicante IP, S.L., Spain

Council MembersCarsten Albrecht, FPS Fritze Wicke Seelig, GermanyJose Luis Arnaut, CMS Rui Pena & Arnaut, PortugalGerhard Bauer, Gerhard Bauer, GermanyCatherine Boudot, Biofarma, FranceGeert Glas, Allen & Overy LLP, BelguimLorenzo Litta, Societ Italiana Brevetti, ItalyJeremy Newman, Rouse, United KingdomGabrielle Olsson Skalin, Inter IKEA Holding Services S.A., BelgiumPetter Rindforth, Fenix Legal KB, SwedenDavid Stone, Simmons & Simmons LLP, United KingdomZeeger Vink, Lacoste S.A., FranceVanni Volpi, GUCCI, ItalyVerena von Bomhard, Bomhard IP, SpainStaff Liaison Christina Sleszynska, Chief Representative Officer, [email protected]

Europe Global Advisory Council

http://www.inta.org/Press/Pages/Brexit_Media_Statement.aspxhttp://eur-lex.europa.eu/legal-content/EN/TXT/?uri=uriserv:OJ.L_.2015.341.01.0021.01.ENG&toc=OJ:L:2015:341:TOChttp://eur-lex.europa.eu/legal-content/EN/TXT/?uri=uriserv:OJ.L_.2015.336.01.0001.01.ENG&toc=OJ:L:2015:336:TOChttp://eur-lex.europa.eu/legal-content/EN/TXT/?uri=uriserv:OJ.L_.2015.336.01.0001.01.ENG&toc=OJ:L:2015:336:TOChttp://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32004L0048R(01)http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32004L0048R(01)mailto:[email protected]


Global Report: Europe

(rather like the way in which EUTMs currently extend to Jersey, despite the fact that it is not part of the EU). Until then, filing a national UK mark would simply duplicate protection. There should be no disadvantage to not filing UK applications that equate to a validly protected EUTM in the meantime.

What about International Registrations that desig-nate the EU?EU designations of International Registrations should be treated in the same way as EUTMs themselves, such that coverage of the UK will be maintained. Thus, references to EUTMs in these Q&As apply equally to International Registrations designating the EU.

How will cross-border enforcement work? What about existing pan-EU injunctions?In theory, once the UK leaves the EU, the courts in the UK will only have jurisdiction to grant injunctions and damages awards in rela-tion to infringing activities within the UK; and national EUTM courts elsewhere will no longer have jurisdiction over infringing activities in the UK. However, it is not inconceivable that some sort of reciprocal arrangement may be set up whereby something close to the current system of pan-EU relief may be available with respect to equivalent EU and UK trademarks. This would no doubt depend on the UK deciding to adopt and follow judgments of the Court of Jus-tice of the EU, which is debatable at this point.

It is unclear what will happen in cases where a national EUTM court has already granted an in-junction prohibiting infringing activities across the EU. Will the enjoined party be able to ig-nore the injunction in the UK once it leaves the EU? And what if it was a UK court that granted the injunction? This is yet another detail which will need to be worked out when unpicking the current EU-wide arrangements.

Will trademark and other license agreements that mention the EU need to be redrafted?IP owners and licensees should be reviewing their agreements to see whether they refer to the EU or to specific EU laws in a way that is un-

clear as to what happens when Member States leave (or join) the EU. This might be relevant to the geographical scope of a license or to a non-compete provision, for example, and each material agreement will need to be considered to determine whether it is clear that the UK will continue to be covered once it leaves the EU. Once again, the impact of Brexit will not apply until it takes effect, but it would be prudent to start the review process soon in order to avoid surprises in the future.

How will other IP rights be affected?Like EUTMs, Registered Community Designs are unitary rights covering the whole EU. Provision will need to be made to ensure that Registered Community Designs continue to be afforded equivalent national protection in the UK when it formally leaves the EU. Whether or not Unregistered Community Designs will be given equivalent protection for the remainder of their term may be slightly more open to question, given that the UK has retained its own separate unregistered design right system.

Similarly, geographical indications are gov-erned by an EU-wide regime from which the UK element will need to be detached and protect-ed on a national basis post-Brexit.

Copyright exists on a national basis within the EU and so UK copyright will continue unaffect-ed pursuant to national legislation. Whether and to what extent this legislation will continue to be interpreted in accordance with EU harmo-nizing directives remains to be seen, but the courts will no doubt continue to look towards the Berne Convention and Universal Copyright Convention for guidance and so one would hope that the law will not diverge substantially from that in the rest of the EU.

The position for domain names is generally more straightforward, in that their registration is not EU related, and so, for example, UK-based individuals and companies that own .com, .net, .co.uk or .uk domain names will not be affected by Brexit. The one exception is .eu domain names, which may only be registered by individuals who are residents of or busi-nesses that are established in the European Economic Area (EEA). It is possible, but not at all certain, that the UK may become an EEA member once it has left the EU. If it does not, then arrangements will need to be made to determine whether existing registrants of .eu domain names may retain them.

As far as patents are concerned, the most significant immediate effect is likely to be a delay in the implementation of the new Unitary Patent and Unified Patent Court (UPC), which had been expected to be implemented in early 2017. As things stand, the UK will not be able to participate in the new UPC system once it leaves the EU, since EU membership is a pre-requisite to participation. On the other hand, the UK will remain a signatory to the European Patent Convention (EPC), and it will still be possible to obtain a UK patent via the EPC system.

What are the EUIPO and UKIPO saying about the post-Brexit arrangements?At the time of going to press (July 1, 2016), nei-ther the EUIPO nor the UKIPO has made any of-ficial statement in relation to the UKs decision. No doubt, they will make their positions known soon, which will be reported to INTA members.

What do I need to do now? Until timing and the picture of the UKs future relationship with the EU post-Brexit become clearer, it is largely business as usual. That said, rights holders would be well advised to closely monitor the situation and perhaps conduct audits of existing protection, enforce-ment, and agreements concerning the UK, so as to be in a better position to make informed decisions when the time comes to do so. In-house counsel should also seek to ensure that IP issues are fully considered when wider com-mercial issues such as domicile, distribution models, and tax structures are being discussed within their companies.

Brexit Vote continued from page 15

Rights holders would be well advised to closely monitor the situation so as to be in a better position to make informed decisions when the time comes to do so.

This unprecedented deci-sion will result in a period of uncertainty for the business sector in general.

17

INTA Intervenes for the First Time before the General Court of the European UnionDHL Express (France) and the French compa-ny Chronopost have been litigating for more than a decade regarding the use and regis-tration of the WEBSHIPPING word mark for delivery services. Chronopost, the proprietor of the EU registered mark, initially sued DHL Express before a Paris court for infringement. In 2009, the Paris court issued an injunc-tion against DHL Express. This decision was enforceable but not final, and an appeal was lodged with the French Supreme Court. Chro-nopost did not enforce the Parisian courts decision or subsequently make any use of its trademark in the EU.

In July 2012, DHL Express filed proceedings with the European Union Intellectual Prop-erty Office (EUIPO, formerly OHIM) to revoke Chronoposts EU mark for lack of genuine use during a continuous five-year period, pursuant

to Article 51(1)(a) of Regulation No 207/2009 on the EU Trade Mark. While Chronopost had indeed not used its mark during the relevant five-year period, it nevertheless prevailed

before EUIPOs Board of Appeal, on the basis that it had proper reasons not to use the mark. Chronopost argued that the presence of infringing acts (by its competitor DHL Express) on the market amounted to valid proper rea-sons for non-use. DHL Express disagreed and appealed to the General Court of the European Union in Luxembourg.

INTA requested leave to intervene before the General Court in support of DHL Expresss position that alleged infringement of Chro-noposts rights did not amount to proper rea-sons for failure to use a trademark for more than five years. INTAs position is that proper reasons for lack of use refers to circumstanc-es unconnected with the trademark propri-etor rather than to those associated with its commercial difficulties or its own decision not to enforce judicial decisions against third parties allegedly using the mark without the proprietors consent.

The rules of procedure of the Court of Justice of the European Union (CJEU) and the Gen-eral Court provide that third parties can only intervene in proceedings before these courts if they can establish an independent interest in the outcome of the case (see Article 40 of the Statute of the CJEU). In other words, the bar for intervention as an independent party is set high.

European Officials at the Annual MeetingINTAs Representative Office in Europe, togeth-er with colleagues in the New York head office, welcomed European officials at this years Annual Meeting in Orlando, Florida. A represen-tative from the European CommissionDirec-torate-General for Trade attended the Annual Meeting to exchange views with relevant committees on the EUs trade policy, ongoing Free Trade Agreement negotiations, and IP priorities. Representatives from the EUIPO and from various national trademark and patent offices (from EU as well as non-EU Member States) also attended the Annual Meeting and participated in dedicated workshops, commit-tee meetings, and networking events.

EU-Ukraine IPR DialogueOn July 6 in Kiev, EU and Ukrainian trade offi-cials met for their bi-annual IPR Dialogue. The aim of these dialogues is to exchange informa-tion and best practices on IPRs, and to address and solve concrete IPR issues in the EU and the trading partners respective territories.

In advance of the IPR Dialogue, the European CommissionDG Trade hosted a preparatory meeting with industry in order to exchange views on IP issues that rights holders are fac-ing. Hlne Nicora, Representative OfficerEu-

rope, attended the next preparatory meeting on June 16 in Brussels. Europe Office staff attend such meetings on a regular basis for Ukraine as well as for other countries with which the EU has IP-related dialogues or negotiations.

Representation and Membership Outreach in BarcelonaMilesh Gordhandas, Advisor, INTAs Europe Office, attended the IP Business Congress in Barcelona on June 57. After the event, he met with local brand owners and informed them about INTA membership benefits and services.

Barcelona will be hosting INTAs Annual Meet-ing next year.

For more information on the activities of the INTA Europe Office contact Christina Sleszyns-ka, Chief Representative OfficerEurope (de-tails here). To keep updated on developments follow @INTABrussels on Twitter.

Europe Representative Office Activities Span Orlando to Kiev

Proving an independent interest before the General Court is always a difficult task.



http://www.inta.org/Locations/Pages/Locations.aspxhttp://www.twitter.com/INTAbrussels


Global Report: EuropeOn November 23, 2015, the General Court granted INTAs request to intervene (T 142/15, EU:T:2015:908). The General Court acknowledged that the case raised what can be considered a matter of princi-ple possibly affecting trademark law from a public policy perspective. The General Court took into account the fact that, in a previous case before the CJEU, INTA was allowed to intervene (Voss, 25 March 2014, C 445/13P, EU:C:2014:202). The General Court stressed that INTA is a worldwide non-profit organiza-tion with more than 6,700 members and an

observer on WIPO and on EUIPOs Manage-ment Board and Budget Committee.

This is a tremendous achievement for INTA, as proving an independent interest before the General Court is always a difficult task.

Pursuant to the aforementioned decision, INTA filed a statement in intervention in early Janu-ary 2016. The case is still pending.

INTAs application for leave to intervene and statement in intervention were prepared by

Tanguy de Haan (NautaDutilh, Belgium), Fleur Folmer (NautaDutilh, the Netherlands) and Sven Klos (Klos Advocaten, the Netherlands), members of the Europe Amicus Subcommittee.

For more information, please visit INTAs amic-us page.

INTA Comments on EU Commissions IPRED Consultation In line with its mission to advance and support the creation and improvement of trademark protection laws, the International Trademark Association has responded to the European Commissions recent consultation on the evalu-ation and modernization of the IP Rights En-forcement Directive (IPRED). The Enforcement Directive of April 29, 2004, set the standard for the enforcement of intellectual property (IP) rights within the EU. The Directive contains provisions on all aspects of IP right enforce-ment, including the collection and preservation of evidence, a plaintiffs right to information, the issuance of preliminary and precautionary measures, the execution of decisions, and the calculation of damages. After more than a decade of the Directive being in effect, the EU Commission requested comments on the func-tionality and effectiveness of the Directive and its implementation in the EU Member States, particularly regarding the enforcement of IP rights in the online environment.

INTA s Enforcement Committeein particular, the Judicial Administration and Trademark Litigation (JATL) Subcommittee under the lead

of Paulo Monteverde of Baptista, Monteverde & Associados in Portugalgathered comments from several different groups, namely, the Anticounterfeiting, Legislation and Regulation, Copyright, and Designs Committees.

Overall, practitioners and right holders seem to be pleased with the implementation of the Di-rective. One major complaint concerns the fact that the implementation of the Directive into national regulations differs significantly among Member States, which creates discrepancies in procedural rules and also in the outcome

of proceedings depending on the jurisdiction. According to the survey, the implemented regu-lations differ in procedural requirements, time-liness, cost of court proceedings, and damage awards. Practitioners therefore call for better harmonization of the procedures in order to curb the phenomenon of forum shopping and to allow for more predictability of the outcome of enforcement actions in every Member State. In addition, the fast development of new tech-nologies and marketplaces was recognized as creating a challenge for legislation, especially in cases of cross-border online infringements. However, in summary, the provisions in the Directive seem to create the intended results and have improved brand owners options to enforce their rights against infringements. It remains to be seen which corrective measures, if any, the Commission will suggest to address the respondents concerns.

For more information, please contact Iris Gun-ther (External Relations Enforcement Advisor) at [email protected].

Tanguy de HaanNautaDutilh, Brussels, BelgiumInternational Amicus CommitteeEurope Subcommittee

EUROPEAN UNION: New EU Trade Mark Regulation Comes into Force On March 23, 2016, the new EU Trade Mark Regulation (EUTMR) came into force as part of the EU Trade Mark Reform Package.

Community trademarks will now be called EU trade marks (EUTMs). OHIM will be called the EU Intellectual Property Office (EUIPO).

The reforms bring about a number of changes, the most significant of which relate to fees, class headings, company name use, counterfeit

goods in transit, and graphic representation.

Fees There is a new application fee structure centered on a one class per fee system as opposed to the old system, in which one fee covered up to and including three classes. There is also a reduction in renewal fees.

Changes to Specifications There is a transitional period until September 23, 2016, for trademark owners to apply to amend the specifications of certain registered

trademarks covering class headings. This applies to all EUTMs and international (EU) trademarks applied for before June 21, 2012, and registered with respect to the entire head-ing of a Nice class.

Infringing Acts Using a registered trademark as a trade or company name is a specific infringement. Com-pany names have been removed from the own name defence.

Trademark owners will be able to prohibit

In the News

The implementation of the Directive into na-tional regulations differs significantly among Member States, which creates discrepancies in procedural rules.

http://www.inta.org/Advocacy/Pages/Amicus.aspxhttp://www.inta.org/Advocacy/Pages/Amicus.aspxmailto:[email protected]://www.inta.org/INTABulletin/Pages/EU_TM_Reform_Update_7020.aspxhttp://www.inta.org/INTABulletin/Pages/EU_TM_Reform_Update_7020.aspx

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GERMANY: Dominant Element within a Challenged Mark May Establish a Conflict, Even if Incapable of Distinguishing The Federal Patent Court upheld an opposi-tion against the German word and figurative mark DSA DEUTSCHE SPORTMANAGE-MENTAKADEMIE, filed by the owner of the wordmark BSA, Johannes Marx, and affirmed aural similarity between DSA and BSA. It re-fused registration for a majority of the goods and services in Classes 16, 35, 38 and 41. An appeal against this decision was filed with the Federal Court of Justice (decision of July 9, 2015 - I ZB 16/14).

The company DGBB Deutsche Gesellschaft fr berufliche Bildung GmbH applied for the

mark pictured below, which was registered on November 25, 2011, for goods in Classes 16 (paper), 35 (business management and ad-vertisement services), 38 (telecommunication services), and 41 (training services). Mr. Marx

initially filed a notice of opposition against the later mark before the German Patent and Trade Mark Office (DPMA) and the DPMA rejected the opposition.

It is interesting to note that the Federal Court of Justice considered the acronym DSA to be the dominant element within the sign as a whole. The Federal Court of Justice held that an element of a mark has dominant character if the other elements of the mark are large-ly secondary to the overall impression. The relevant public would be guided specifically by the dominant elements of a mark. The Federal

Contributor: Susanna HeurungKotitschke & Heurung Partnerschaft mbB, Munich, Germany

Verifier: Florian TraubSquire Patton Boggs (UK) LLP, London, UK

Ms. Heuring and Mr. Traub are Co-Chairs of the INTA Bulletins Law & PracticeEurope Subcommittee.

EUROPEAN UNION: General Court Rules on Similarity between Leaping Animal Marks The General Court of the EU (EGC) recently found that there was sufficient similarity be-tween two figurative signs that each repre-sented a leaping animal, despite the fact that the opposed mark represented an imaginary animal, while the earlier mark represented a Puma (EGC, decision dated Feb. 25, 2016, T-692/14 - Puma SE/OHIM).

On April 27, 2012, the applicant, Sinda Poland Corporation sp. Z o.o., filed an application for registration of a sign that represents a leaping animal. This animal seemed to be leaping like a cat. However, the species of the animal depicted could not be determined exactly. The mark claimed protection for footwear in Class 25. Puma SE filed an opposition against the application based on international registration no. 480105, designating various EU Member States, among others, also protected for foot-wear in Class 25.

The two trademarks are reproduced below:

The EUIPOs Opposition Division rejected the opposition and found that there was no likelihood of confusion. The EUIPO determined that the signs were not similar from a visual point of view because there were no common-alities whatsoever. Phonetic similarity was excluded for figurative signs. The signs were also not similar from a conceptual point of view because the earlier mark represented a puma while it was unclear which animal was repre-sented in the application. In fact, the animal in the application even seemed to be a mixture of different animals. The paws seemed to be those of a kangaroo, the tail that of a whale, and the nose that of a dolphin. Therefore, the Opposition Division said there was no danger of confusion, despite the potential high level of distinctiveness of the earlier mark. The Board

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