defeating ip counterfeiting: from retail goods to
TRANSCRIPT
Defeating IP Counterfeiting: From Retail Goods to Counterfeited Companies Policing and Protecting Brands and Enforcing Rights Against Infringers
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TUESDAY, JANUARY 21, 2014
Presenting a live 90-minute webinar with interactive Q&A
Rex Donnelly, Shareholder, RatnerPrestia, Wilmington, Del.
Edward Hardcastle, Executive, Rouse, Dubai
John Lee, Chief Executive Officer, LeeCore, Bothell, Wash.
Van H. Leichliter, Counsel, RatnerPrestia, Valley Forge, Pa.
Roland Pamm, Director, Brand Protection Center, E. I. du Pont de Nemours and Company, Wilmington, Del.
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FOR LIVE EVENT ONLY
Defeating IP Counterfeiting
From Retail Goods to Counterfeited Companies
Presented By:
Webinar Speakers: Rex Donnelly | RatnerPrestia
Van. H. Leichliter | RatnerPrestia Edward Hardcastle | Rouse
John Lee | LeeCore Roland Pamm | E. I. du Pont de Nemours and Company
&
Strafford Live CLE Webinars
4
Topics • Global Trends
• EU (Source: EU Commission) • U.S. (Source: U.S. Customs & Border Protection & U.S. Immigration & Customs
Enforcement) • China (Source: China General Administration of Customs) • Global (Source: International Chamber of Commerce BASCAP Report)
• Online Counterfeiters
• Factors driving use of the internet • Key players • Challenges and Trends
• Government Responses & Legislative Developments
• ACTA • Transit of Counterfeit Goods in the EU • Criminal thresholds in China • WCO Action Plan to Combat Counterfeiting
6
Global Trends
• Changing geographies – China, India, Pakistan, Central Asia, Asian Tiger economies
• The Internet
• Government attempts to catch up....
• FCPA/ABAC
• Consumers
7
EU Trends
8
Detentions Totals: 2010 2011
Cases 79.112 91.245
Articles 103.306.928 114.772.812
Domestic retail value € 1.110.052.402 € 1.272.354.795
EU Trends
9
EU Trends • The majority of counterfeit goods coming into Europe are shoes, medicines
and toys.
• With regard to copyright infringements, CD/DVDs were the most affected products.
• In 93% of all EU Customs cases, the destination was an EU country (i.e. not in transit with a destination outside the EU)
• China remains the primary country of origin. As in former years, China, Hong Kong, India, Turkey and the United Arab Emirates remain in the top 10. Syria appears for the first time.
• In over 90% of the detentions, the goods were either destroyed under the simplified procedure or a court case was initiated to determine the infringement. 10
U.S. Trends • Increasing - consumer safety and critical technology seizures (especially
pharmaceuticals).
• Decreasing - handbags/wallets/backpacks do not make the ‘Top Commodities Seized’ list.
• Maintaining - China as the number one source country for counterfeit and pirated goods seized (+60% of the total domestic value of seizures).
• Transforming - India and Pakistan both made the ‘Top Ten Source Countries’ in 2011/12 due to seizures of counterfeit pharmaceuticals. Pharmaceutical seizures accounted for 86% of the value of IPR seizures from India and 85% of the value of IPR seizures from Pakistan.
11
China Trends
12
• Civil litigation vs. administrative cases – the balance has shifted
• Criminal cases and the PSB – who is making money?
• The need for innovation and the price of copying
• Value of Customs seizures increasing, despite less items and cases.
• More seizures at seaports, but less items being seized... What does this tell us?
• Regional trends within China – West, South, East, North
Online Counterfeiting trends
• A 2011 study into Online Piracy & Counterfeiting carried out by Mark Monitor found that the combined traffic to the 48 sites selling counterfeit goods studied is more than 240,000 visits per day or more than 87 million visits per year.
• 74% of those sites were hosted in North America or Western Europe, 14% in Eastern Europe and 9% in Asia.
13
Organiser ?
Warehouse
Trader
I/E Company
Export Agent
SG
UAE
Import agent
Importer (ES)
Distributor (DE)
Retailer
Retailer
Retailer
Supplier Supplier Supplier
Assembler
Shipper
$
‘Traditional’ counterfeit route
14
‘Online’ counterfeit route
Retailer
Online trader
SG
UAE
End user
Supplier Supplier Supplier
Assembler
Visa, PayPal etc
UK
DHL
Organiser ???
$
$
eBay
15
Online Counterfeiters – Challenges & Trends Challenges • Risk of a genuine sale being lost • Customers become accustomed to buying “high quality” fakes online • Lack of understanding of online customers • Too easy to source counterfeit product online Trends • Social media growing as an influencer to buying decisions • Falling International Shipping costs and times • Increasingly difficult to tell genuine products from “good” fakes leading
to buyer ambivalence • Changing customer behaviour, mobile devices
16
Legislative Developments • Government Responses • ACTA • Transit of Counterfeit Goods in the EU • Criminal thresholds in China • WCO Action Plan to Combat Counterfeiting
17
Takeaways... 1. Increasingly complex landscape
2. China is still at the heart of the counterfeit threat, and this dynamic is unlikely to change.
3. However, other territories emerging with specific industry focus (e.g. India, Russia, Ukraine, Africa)
4. The impact of the Internet on counterfeiting business models is real and enforcement strategies need to change.
5. On-going lack of success in any joined up governmental approach means the burden is on the rights owner to be more proactive and creative.
18
New Threat: Expansion Into
Associated Crimes China Focus
John Lee
LeeCore | CEO
19
My Background
30 years - 78 cities of world markets
development work
5 Industries Logistics, IT, Security, Banking , Consulting
Regional V.P. of Asia
Pinkerton Consulting and Investigations (Shanghai based) protected Asia units of Fortune
500 & FTSE 100 firms
8 Locations Beijing, Shanghai, Guangzhou, Hong Kong, Taipei, Singapore,
Jakarta, Ho Chi Minh City
20
THE PROBLEM
21
The Perceived Problem
Google Hack Attack Was Ultra Sophisticated, New Details Show
- Wired.com - January 2010
U.S. Demands China Block Cyberattacks and Agree to Rules
- NY Times March 2013
Major US Newspapers Allege Chinese Hack Attack
- ABC News - January 2013
22
The Perceived Problem
Counterfeit Chinese Parts Slipping Into U.S. Military Aircraft: Report
- abcnews.go.com May 2012
On Canal Street: A Tour Through the Counterfeit
Economy - Inc.com - September 2008
23
The REAL Problem – Part 1
The Chinese are not stopping at products & services, they are now using cyber attacks and IP theft to copy your entire company
• Operations
• R&D
• Finance
• Sales/marketing
In short: Creation of a Parallel Company that uses your company’s resources to leapfrog past you!
=
24
The REAL Problem – Part 2
They are also draining your resources by:
• External and internal agencies of attack
• Taking/copying what you have that is valuable
• Government and press participation
• Cyber attack
• Solicitation and elicitation of key personnel
• Production/supply chain disruption
• Labor unrest (strike, slow downs, vandalism)
25
Case Study 1 Situation: • Veteran of China (20+ years) global, U.S. based pharmaceutical
firm is attacked by various Chinese entities (individuals, quality board, “independent” scientific journal) - all calling to question the purity and quality of their products’ purity levels
Problem:
• These attacks happened after a long period of no such activity - “unprecedented”
• These attacks contained information that no one other than
internal folks would know
o Lost Value: $10 million/ revenue per year
26
The Attacks
• From the evidence gathered, the frequency, intensity and pervasiveness of the attacks is increasing on U.S. firms (regardless of whether they do business in China or not).
• The most asked question most asked:
• “Why now and why me?”
• What is triggering these recent attacks and why are they only going to increase?
27
THE CAUSE
28
China’s Master Blueprint Communist Party of China’s 12th Five Year Plan
(2011-2015)
Strategic Emerging Industries (SEI) are emphasized as the seven industries of the next phase of
China’s growth 29
Healthcare •Pharmaceutical Sector Restructuring •Bio-Medical Engineering •Bio-Breeding •Bio-Manufacturing
•Biotechnology Promoted
•Life Sciences
30
New Energy
• New-generation nuclear power equipment
• Large wind power generating sets and parts
• Efficient solar power and heat utilization
• Biomass energy conversion and utilization
• Intelligent power grid
31
Energy Conservation and Environmental Protection
• Promote efficient energy conservation
• Advanced environmental protection
• Resource recycling
32
Technology Indigenous Innovation Supports for:
• High End Software and New Information Services
• Electronic Devices
• Integrated Circuits
• Nano technology
• Next Generation: Networks, Mobile
• Cloud Computing
• Digital and Virtual Technologies
33
High-End Equipment Manufacturing
• Aviation
• Satellite and Application Industry
• Rail Transportation
• Marine Engineering
• Intelligent Equipment Manufacturing
34
New Energy Automobile
Conduct R&D and large-scale projects for:
• Plug-in hybrid electric vehicles
• Pure electric vehicles
35
New Materials
• New Functional Material
• Advanced Structural Material
• High Performance Composite Material
36
THE TACTICS
37
Takeaway #1 If your company’s industry is on the SEI list then there is a
high probability that you are being targeted.
38
What Do They Want?
• Key personnel
• Physical assets (machinery, equipment)
• Plans (Marketing, Finance, Operations)
• Database (customers/patients/partners)
• Intellectual property (formulas, algorithms, designs, patents, trademarks)
• Reputation/brand
39
Case Study 2 Situation:
• Large Asian technology company was finding that there were products showing up in the market very similar to their latest product offerings and prototypes.
• It was discovered that the producer of the rival products was a recently established technology firm in China.
Problem:
• Upon investigation, it was revealed that key engineers and designers had left the targeted Asia technology company and started to work quietly for the new Chinese rival technology firm.
• A lawsuit ensued that was very complex, ugly, expensive and long and then a TWIST!!
Stolen Value: $1.5 billion revenue per year
40
Other Takeaways
• The most sophisticated of defense systems can be defeated by humans.
• If there is an attack it will be done on an external AND internal basis.
• Conventional methods of protecting firms don’t work.
41
Regulatory and Legal Factors Impacting Counterfeiting in
China
Rex Donnelly
RatnerPrestia | Shareholder
42
Regulatory / Legal Factors Attributes of Chinese TM Law:
• First-to-file
• Sub-classes of goods/services
• “Well-Known Trade Mark” status needed for dilution or unregistered marks
• Need Certificate of Registration / Recorded chain of title for enforcement
43
Additional Factors in China
• Bad-faith registrations
• Registered solely to sell back to foreign TM owner at inflated price
• Contract manufacturer’s registrations
• Leverage in the event of a dispute
• Protection in Roman characters does not extend to
Chinese
44
In Practice
• Counterfeiters may register first
• If mark owner has not yet registered in China
• Same or similar mark for different goods
• Same or similar mark in Chinese characters
• Registrations used for Customs
45
Hypothetical
46
for “Paints” in class 2
Infringers may register:
• Chemical vehicles used in the manufacture of paints in class 1
• Spray guns for painting in class 7
• Paint brushes and paint rollers in class 16
• Painting services in class 37
RP
If TM owner only registers:
RP 豌豆
Counterfeiting Penalties
• Penalties for infringement relatively minor, unless “serious” or sales are “large”
• No monetary recovery for defensive registrations
• Criminal counterfeiting requires “serious” activity and “large” sales using mark “identical” to that registered, for “goods of the same kind”
47
Enforcement – Practical Issues
• Front companies (minimal records)
• Just-in-time production (no inventory)
• No samples
• Products shipped directly from sub-contractors to freight forwarders
• Payment entities separate from production and sales
• Genuine /gray market products mixed with counterfeits
48
Enforcement Options Administration for Industry and Commerce (AIC)
• Investigate premises
• Review and take evidence
• Seal, detain, confiscate infringing goods
• Order to stop production
• Destroy goods and special tools
• Impose fines (3X, $16K cap if can’t calc)
• No compensation to mark owner
49
Enforcement Options
Civil Action in People’s Court
• Complaint
• Answer
• Exchange of Evidence
• Hearing
• Judgment
- injunction
- seizure of goods and tools
- payment of damages to plaintiff (capped at $82K if cannot calculate)
50
Enforcement Options
Criminal Proceedings
• “identical mark”
• “goods of the same kind”
• Serious and large – 3 years imprisonment
• Extremely serious and huge – 3-7 years
Typically initiated by People’s Procuratorate
Direct action by mark owner possible (rare)
51
Goods “of the same kind” Case Study
BLACKBERRY®
“data processing devices, transmitters (for telecommunication purposes) and computer software”
Defendant: accused products = “mobile phones”
Prosecutor: products are “handheld electronic data transceivers or data processing devices for the purpose of tracking or processing personal information”
52
“Identical Mark” Case Study
Is BLACKBERRY identical to BlackBerry?
• “exactly the same as” or
• “visually almost non-different” and
• sufficient to mislead the relevant public
Still identical if:
• Change in font, case or arrangement;
• Change in spacing between words, letters or numerals
• Changes in color
53
Well Known Marks If not registered in China
• for identical or similar goods
• reproduction, imitation or translation
• liable to create confusion
If registered in China
• goods not identical or similar
• reproduction, imitation, or translation
• likely to mislead public and damage owner
54
Well Known Marks Factors
Article 14:
(1) degree of public recognition;
(2) duration of use;
(3) duration and extent of advertising, and geographical area thereof;
(4) records of protection;
(5) other factors
55
An Ounce of Prevention . . . File TM applications to register:
• prior to actual use in China (sale or mfg.)
• in non-Roman characters
• in all commercially relevant classes and subclasses offensively and defensively
• trade dress
56
An Ounce of Prevention (cont.)
• Request Certificates of Registration
• Record assignments immediately
Also register:
• with Customs
• copyrights for graphics
• primary domain names
57
QUESTIONS?
58
Please contact : Rex. A Donnelly Shareholder | RatnerPrestia (302) 778-3460 [email protected]
Anti-Counterfeiting: The New Reality
Roland Pamm
DuPont Brand Protection Center | Director – Brand Protection Center
59
@2014 DuPont
DEVELOP KNOWLEDGE &
EXPERTISE
Field Work Internet Monitoring External Resources
TOOLS BEST PRACTICES
SOLUTIONS
EDUCATIONAL PROGRAMS
BUSINESS COMMITMENT
(Brand Stewards/Coordinators/Resources =>Implementation/Execution)
Brand Protection Process Cycle
Business Integration
Raising Awareness
Global Brand
Protection Center of
Excellence + Legal Trademark
+ Corporate Security
+ other partners
Gain Experience
Evaluation
Business Engagement
60
@2014 DuPont
Global Brand Protection – Business Process Integration
• Proactive/Preventive
• Brand Risk Evaluation
• Raising Awareness
• Product Protection Plan
• Continuous Assessment
• Education
• Communication/Advocacy
• Benchmarking
• Ex/Internal Networks
• Ex/Internal Resources
Global Brand
Protection Center of Excellence
• Reactive/Enabling/Stabilizing
• Value Chain Integrity
• Enforcement
• Enhancing Business Practices
• Continuous Improvement
Anti-Counterfeiting Risk Management
Brand Protection
61
@2014 DuPont
Authentication
Alliances Verification
Covert & Overt Markers
Taggants/Tracers QA/QC Programs
Transparent Tracking & Traceability
Compliance Audits Market Monitoring Import/Export Data
Marketplace Feedback
Education Customs Audits/Trng
Distributor Agreements “Selective Need-to-Know”
Transporter/Broker Contacts
Value Chain Integrity
Securing the Value Chain
62
@2014 DuPont
Chinese Customs Seizure of Nonstick Cookware - Teflon®
63
@2014 DuPont
Thread Tape Advertising for Teflon®
64
@2014 DuPont
Brand Protection Online Enforcement Priorities
Employee Referrals
Domain Names
eCommerce
Social Networks
Search Engines
65
@2014 DuPont
Possible Counterfeiting – Kevlar®
66
@2014 DuPont
Brand Abuse – DuPont™
67
@2014 DuPont
Brand Abuse – Freon®
2 Cans R12 R-12 Freon Refrigerant The Real Stuff
68
@2014 DuPont
Brand Abuse - Kevlar®
69
@2014 DuPont
Social Website Issues - Kevlar®
70
@2014 DuPont
How You See the Problem is the Problem Why are U.S./European firms stymied in their endeavors to protect themselves?
It is literally how they “see” the problem(s)
It starts with cultural conditioning on both sides and it extends to the realms of Prevention and Interdiction in solving problems!
72
What Does Not Work in Prevention U.S. entities are blind sided by the “American-ness” of their thinking and ways to PREVENT problems. Examples: • Non Disclosure Agreements and Non-Compete Agreements
• Code of Conduct Clauses
• Conflict of Interest Clauses
• Corporate Social Responsibility governance
• Audits (financial, physical, processes/procedures)
NOTE: While these are necessary things to do however, uniquely Western in thinking and easily defeatable because the assumptions underlying these aspects are all wrong.
73
Assumptions in Workplace
Most companies think that employees or contractors who are:
Well compensated
Long tenure
Senior position (senior age)
Friendly and collaborative
Works on committees or working group
Highly respected and well regarded
Naturalized US citizen
= SAFE Employee(s)
74
WRONG!!
75
Main Reason for Wrong Assumptions
“It is better to be the head of a chicken than the tail of the Phoenix”
• Criminal Fire Triangle
• Situational ethics – all is fine until: • Motive/payoff - (Fuel)
• Means/ability - (Oxygen)
• Opportunity – (Heat)
• Usually no criminal record, trusted individual
• Usually has access to the company’s “secrets”
or algorithms, designs, formula (or aspects of it) 76
Possible Reasons for Situational Ethics
Possible underpinnings that led to this problem:
• Amoralism abounds due to anti-theistic Communist culture
• Cultural Revolution (1966-69) threw out Confucius
• 1985 speech by Deng Xiao Peng’s “white cat, black cat” speech intimated that the dependence on the “State” should not be an underlying assumption
• Approach to all things is “I win, you lose” or “I win more, you win less”
• SO therefore this all translates to: “You are on your own!”
77
Ineffective Remedies
U.S. entities are blind sided by the “American-ness” of their thinking and ways to solve problems. Examples: • Audits (financial, physical, processes/procedures)
• Segmented way of doing business (local, regional, corporate)
• Conventional silo approach doesn't’t work: Legal, Security, Compliance, HR, Operations on an ad hoc investigative basis
• Reactionary SWAT team approach
• Pursue and punish seldom works out to remediate damage or stop future behavior
• Legal remedies such as lawsuits, cease and desist orders, restraining orders
• Reliance on Chinese governmental agencies to mediate or adjudicate
78
THE SOLUTIONS
79
Define the Endgame
What is the endgame strategy?
• Elimination of attacks?
Not realistic
• Spinning the attack responses correctly?
Reactive and no plan to deter attacks
• Deflect the attacks to other targets?
Redirection of attacks by making your firm hard to hit and giving the attackers no opportunity
80
Endgame
• Deflect the attacks to other targets
Redirection of attacks by making your firm hard to hit and giving the attackers no opportunity
81
What Works From Inside the Company
There is a way to defeat these attacks but you have to think beyond the norm (the U.S. norm): • Training that looks at where the gaps are that allows internal
“moles” to thrive and hurt your company
• Creating an attack deflection system that incorporates on-the-ground tools and personnel which are self-sustaining and self- governing
• Protection of your most valuable resources with a phased solution program
82
Phased Solutions Approach
Through a phased approach you can:
• Protect your “crown jewels” from inside out using guanxi mapping
• Harden internal structures through an aggressive employee adherence programs including fapiao auditing
• Put into place pre-set tools to prevent and interdict problems: Attack Playbook including threshold tests
• Document Controls are key! But maybe not what you may think in U.S. terms
83
Guanxi Mapping Relationship (guanxi) is key in prevention/interdiction of theft (IP or real assets): • Guanxi mapping shows the spheres of influence that exists within
the company • Guanxi mapping (done legally) can be done externally as well • It is key to know who is spending time with who and possible
motives NOTE: Very rarely does IP theft occur with one perpetrator
84
Fapiao Auditing
Fapiaos are government expense forms for transaction recordation. They are also a great source of finding the money trail. Looking at outflows:
• Supply chain vendors, channel partners, subcontractors
• Fleet management or bulk sales
• Sales and marketing campaigns
• One-time events such as junkets, events, conferences
• Management meetings
85
Attack Response Playbook
• Pre-formatted response to probable scenarios
• Playbook with pre-assigned roles/functions
• Metrics (time, $, personnel, results)
• Traffic Light (red, yellow, green) for incidents - Threshold Testing
86
Case Study 1
Situation:
A highly regarded Canadian standards company had suffered allegations of kickback and bribery being offered to and accepted by their inspectors in China. Problem:
The most recent allegations caught the standards company unready and scrambling to address the accusations however they lost time, credibility and (almost) a customer.
Solution:
A pre-formatted and vetted Anti-bribery Playbook was created to address the problem(s) with flow charts of progression, various roles, tools such as reporting kits, and expected process and results.
87
Document Controls
• Registration, recordation, accessibility and constant review of documents is critical to stop flow of resources out of your company
• Includes: fapiaos, expenses, requisitions
• Vendor or channel partner’s certifications, licensing, insurances (if any)
• Your own: certifications, licenses, tax authority, zoning, industry, compliance documents!
88
Solutions Team • Internal platform levels (local, regional, corporate) to work
together in protection
• Shape the responses in advance
• Everyone has role in adherence
• Concerted effort to eliminate all gaps or holes
• “If only _________ knew what ________ knows”
89
Case Study 2 Situation: An American services company in China was having most of its cash and revenues siphoned by various employees (some at director levels) Problem: • The perpetrators were in various locations, functions and ages
• Controls were very loose as to transactions and fapiao controls
• Perpetrators in the company were using outside vendors or subcons
Solution:
Solution teams were formed in various locations (some with the suspected perpetrators) to work on document controls (fapiaos, expensing, inventory)
Gaps were identified and perpetrators left soon thereafter as the illegally siphoned revenue streams dried up!
90
Positive Endgame
91
Potential Regulatory / Legal Solutions for IP
Protection Under the New Chinese Trademark Law
Rex Donnelly
RatnerPrestia | Shareholder
92
The New Chinese TM Law Introduction
• Passed and published August 30, 2013
• Effective May 1, 2014
• Implementing regulations still in progress
• Court interpretation will take several years
• Some provisions codify current practices
93
The New Chinese TM Law General Provisions
In general, the new law aims to:
• Increase penalties for infringement
• Discourage bad faith registration
• Provide limited rights for first users
• Streamline registration examination and challenge processes
94
The New Chinese TM Law Deterring Bad Faith
• Requires applications for registration and use be made in good faith
• Bad faith arises if applicant is aware of prior rights through business dealings or has contractual or other relationship with mark owner
• Remedies for bad faith:
• - Non-registration if opposed - Cancellation -- registration void ab initio - Treble damages for bad faith use - Cannot interfere with scope of prior use
95
The New Chinese TM Law Prevention of Bad Faith Registration
• Trademark Agencies • Must inform client if mark cannot be registered
• Cannot accept instructions to file in bad faith
• Can only file for its clients
• Cannot falsify documents, seal or signatures
• Consequences: • Fines (up to RMB100K per violation)
• Blacklisting by AIC or industry organization
• CTMO and TRAB may refuse to accept filings
• Public announcement
96
The New Chinese TM Law First Use
• First use now confers limited rights
• “Squatters” cannot enjoin activities covered by scope of first use
• But, first user may be forced to distinguish from first registrant
97
The New Chinese TM Law Well Known Marks
• Use prohibited if likely to cause confusion and to prejudice mark owner
• AIC fines
• Status can be requested at TM office, TM Review and Adjudication Board, or in some People’s Courts
• Status cannot be advertised for laudatory purpose
98
The New Chinese TM Law Damages
• Infringers must disclose accounting
• TM owner must prove use within last 3 years to receive damages
• Damages available:
• Punitive damages up to 3X actual damages
• Statutory damages up to RMB 3 million
• TM owner entitled to recover enforcement expenses
99
The New Chinese TM Law Administrative Penalties
Fines for AIC enforcement:
• Revenue > RMB 50K, up to 5X revenue
• Revenue < RMB 50K or incalculable, up to RMB 250K
• Greater fines if >2 instances within 5 years
• Well known mark: up to RMB100K per violation
100
The New Chinese TM Law Registration Procedures
• E-filing expressly included in statute
• Multi-class filings permissible
• Sound marks permissible
• Preliminary determination of registrability within 9 mos.
• CTMO can issue request for explanation
• Opposition and Invalidity Proceedings (relative) complete in 12 mos.; invalidity proceedings (absolute) in 9 mos.
101
The New Chinese TM Law Oppositions • Current law:
• Any party can oppose
• Unsuccessful opposer can appeal
• New law:
• Any party can oppose on absolute grounds (e.g. descriptiveness)
• Only prior right owner or interested party can oppose on relative grounds (i.e. likelihood of confusion)
• Unsuccessful opposition results in immediate registration* (applicant can still appeal)
102
The New Chinese TM Law Other features
• Likelihood of Confusion analysis now mandated (codification of current practice)
• Fair Use defense now includes protection for generic use of registered mark
• Use of registered mark or unregistered well known mark as a business name is clearly prohibited
• Knowingly facilitating or assisting infringement = infringement
103
The New Chinese TM Law Overall Outlook
• Addresses some current problems
• Need to see implementing regulations and how the law will be interpreted to understand impact of law
• Good faith requirement and higher penalties hold some promise
• First use provisions could go either way
• Does not address class subheadings
104
QUESTIONS?
105
Please contact : Rex. A Donnelly Shareholder | RatnerPrestia (302) 778-3460 [email protected]