tradema rk tim es › pdfsmip › 01-trademarktimes18seatt… · full of human-centric phrases such...

Humans looking for sim-ilarities in trademarks“is an awful, inefficient,

error-prone job, and one that com-puters can do much better thanpeople,” says Charlie Hill, head ofproduct at TrademarkNow, an AI-powered trademark searching andmonitoring service. Between theincrease in pure volume of applica-tions and registrations over timeand the disconnected nature of na-tional IP offices, searching for sim-ilarity in marks by hand andhuman eyes can be a losing battle.

Various trademark-focused AIprograms have developed to ad-dress this issue. TrademarkNow,TrademarkVision, MikeTM Suiteand LawPanel’s Aila are some ofthe existing AI-powered solutions.With various specialties, they es-sentially aim to search and moni-tor words, phrases, and imagesusing various government trade-mark offices’ databases of marksand the internet.

While there are many uses of AIthat can make the trademarksearching and monitoring processmore accurate and efficient, willthe technology make trademarklawyers obsolete? Trademar-kNow’s Hill admits that “in theshort term it’s replacing paralegalsor unfortunate junior lawyers,”but affirms humans’ place in thefield for their discernment. AI justisn’t that far along.

Additionally, trademark law is en-tirely based on human perception.Full of human-centric phrases suchas imperfect recollection, averageconsumer, and confusion, human

lawyers will be able to make thosecalls better than machines. Peoplealso inherently incorporate ethicaland practical considerations intotheir arguments and decisions,while AI might address only thetask at hand.

While the implications of AI forbrands and the legal frameworkaround trademarks are just begin-ning to be understood, AI systemsalready commonly interact withconsumers in subtle ways, includ-ing through chatbots and suggest-ing products. A press release fromIT research company Gartnerstates: “Twenty-five percent of cus-tomer service and support opera-tions will integrate virtual customerassistant (VCA) or chatbot technol-ogy across engagement channels by2020, up from less than two per-cent in 2017.”

A newer and more legally fraughtform of AI that interacts with con-sumers is AI assistants such as theGoogle Assistant, or Amazon’sAlexa. While a consumer may findthousands of brands when theysearch for a product online, Alexaonly offers one or two brands whenasked. At the moment, brands can-

not pay to be among Alexa’s topsuggestions. If this develops, how-ever, HGF’s Lee Curtis says it “willraise massive competition issues.”

This limit on consumer choice byAI assistants is of course worryingfor brands. Another competitionissue is that Alexa’s suggestionsfavor brands that consumers havebought before. Therefore, com-ments Lee, “if there’s a new en-trant in the market, they’re at amassive disadvantage.”

The main legal question going for-ward centers around liability. Whois ultimately responsible for AI’s ac-tions? While there have not beenany cases decided that directly dealwith this issue, Lee expects that AIliability will be handled similarly toISP and online marketplace liabil-ity. He guesses that precedent willbe drawn from important cases inthat sphere, like Lush v Amazon orL’Oreal v eBay. “If there’s a liabilitycall, it’ll be in line with those twodecisions,” asserts Lee. Essentially,it comes down to adequately re-sponding to notice. “A notificationand take-down system is a liabilitybreak,” Lee says. “If AI providersdon’t do it, they’re infringing.”

TRADEMARKTIMES SEATTLE 2018

INTA ANNUAL MEETING

THE GLOBAL IP RESOURCE MANAGINGIP.COM

How AI impacts trademarks INTA RETURNS TOSEATTLE

INTA’s Annual Meeting is beingheld in Seattle for the secondtime in nine years this year. Itwill bring together more than10,500 trademark practitionersand other IP professionalsfrom more than 150 for its140th Annual Meeting. SinceINTA’s last Annual Meeting inSeattle in 2009, attendancehas increased more than3,000 professionals fromaround the world.

The meeting features numer-ous highlights. On May 20, NeilLindsay, vice-president ofglobal marketing, prime andengagement at Amazon.com,will give the keynote address atthe opening ceremonies. Ses-sion topics include strategiesfor battling counterfeit goods,artificial intelligence, Brexit, andcompliance in light of the Euro-pean Union’s General DataProtection Regulation, whichtakes effect this month. Thegrand finale is a block party atthe Seattle Center.

Check www.managingip.comfor all our reporting from on-site in Seattle.

2 | MANAGING IP.COM | S E AT T L E 2 0 1 8

Big changes to China’s State IntellectualProperty Office (SIPO) can be ex-pected in the coming months. A re-

structuring plan was submitted by the StateCouncil during the 13th National People’sCongress (NPC) in March. The change is partof the overhaul of government ministries an-nounced to streamline the Chinese govern-ment’s operations.

The changes aim to eliminate overlap in en-forcement between existing agencies. Underthe plan, SIPO will take on some of the exist-ing functions of the State Administration forIndustry and Commerce (SAIC), and theGeneral Administration of Quality Supervi-sion, Inspection and Quarantine. SIPO will beresponsible for facilitating the creation of anIP rights protection system, and the registra-tion and administrative adjudication of trade-marks, patents and geographical indications.This will combine the enforcement functionsof trademarks and patents, which have beenseparately managed.

“The existing IP functions of patents underSIPO, trademarks under SAIC and the TradeMark Review and Adjudication Board, and ge-ographical indications under the General Ad-ministration of Quality Supervision,Inspection and Quarantine, in addition to thedelegated powers of these agencies at theprovincial level, will be combined to increaseefficiency and communication between differ-ent departments,” says Dongxiao Ma, partnerat Zhong Lun Law Firm.

IP practitioners in China believe that the re-structure will lead to stronger enforcement inthe future. “The unification of IP rights man-agement will strengthen China’s IP enforce-ment,” says Ma. “SIPO will gain more powerunder the unification and this will help withlocal enforcement authorities, which is greatnews for IP practitioners.”

Elliot Papageorgiou, head of IP at Clyde & Coin China, believes that the restructure may bea way for the government to re-marshal its en-forcement capacity as SAIC has a large num-ber of administrative officials numbering inthe 100,000s at the provincial, city and evendistrict levels that could be re-deployed andutilized more efficiently.

“One of the possibilities is that China is movingtowards a more international form of IP filingauthority that combines patents and trademark

under one roof such as those in the US, Japan,UK and Germany,” said Papageorgiou.

“Another possibility is that China is moving to-wards a private enforcement model that focuseson civil litigation as a means of IP enforcement.However, this could put an even greater load onthe already busy IP courts and tribunals,” addsPapageorgiou. China has been growing its IPcourt systems in recent years, including the ad-dition of the Changsha and Xi’an IP tribunals inrecent months to a total of 15 tribunals and three

IP courts. In 2017, China saw a total of 213,480IP cases, an increase of 46% year on year.

According to Xinhua, China’s trademark ap-plications exceeded 5.7 million last year, a56% increase on the previous year. The newsagency reported that a SIPO official in Aprilsaid it will shorten the trademark review cycleto less than four months and improve its trade-mark registration services by 2020. Since2016, the registration cycle has been shortenedfrom nine to eight months.

T R A D E M A R K T I M E S | M AY 1 9 - 2 3

NEWS: ASIA

China’s SIPO restructure explained Current structure

New structure

State council

State council

SAIC

Trademark registration

Patent registration

Trademark registration

Geographical indication registration

Patent and trademark enforcement

Trademark enforcement

Patent registration

Patent enforcement

SIPO

SAMS

SIPO Enforcement teams (name unknown)

Source: Hogan Lovells

Source: Hogan Lovells

“SIPO will gain more power under theunification and this will help with localenforcement authorities, which is greatnews for IP practitioners”Dongxiao Ma, partner at Zhong Lun Law Firm



Atotal of 56,200 Madrid applicationswere filed in 2017, up 5% on 2016,according to WIPO figures.

US-based applicants filed the largest numberof international trade mark applications(7,884) using WIPO’s Madrid System in2017, followed by those located in Germany(7,316), China (5,230), France (4,261) andthe UK (3,292).

Among the top 15 origins, China saw thefastest growth (+36.3%), followed by the Russ-ian Federation (+23.9%), the Republic ofKorea (+9.8%) and the UK (+9.3%). BothChina and the Russian Federation recordedtheir second consecutive year of double-digitgrowth. In contrast, Austria (-4.9%), Italy (-6.6%) and the Netherlands (-5.8%) each sawa drop in filings.

L’Oréal of France with 198 applicationsheaded the list of top filers, followed byRichter Gedeon of Hungary (117), ADPGauselmann of Germany (104), and Swisscompanies Novartis (96) and Abercrombie &

Fitch Europe (82). Of note, Richter Gedeonfiled 106 more applications in 2017 than in2016, when it filed 11. The top 15 applicants

consists of 12 compa-nies from Europe, twofrom Asia and onefrom the US.

The most-specifiedclass in internationalapplications, comput-ers and electronics, ac-counted for 9.8% ofthe total, followed byservices for business(7.9%) and techno-logical services(6.2%). Among thetop 10 classes, ma-chines and machinetools (+13.4%) andservices for business(+6.2%) saw thefastest growth.

Afghanistan isnumber 101

In April, Afghanistanbecame the 101stmember of theMadrid System. Theprotocol will enterinto force there onJune 26. This follows

Indonesia last October becoming the 100thmember, which closely followed Thailand be-coming a member in August 2017.

Canada could be the next in line. The coun-try’s long process of overhauling its trademarklaw, which was finalized in 2014, is anticipatedby its Trademarks Office to come into force inearly 2019. As part of the biggest change totrademark law in 50 years, Canada will jointhe Madrid System.

In addition, Hong Kong last year announcedplans to join Madrid in 2019.

DATA: WIPO

US leads the way in Madrid filing Top Madrid applicants

2017 ranking

Positionchanged Applicant’s name Origin 2016 2017

1 0 L’Oreal France 150 198

2 216 Richter Gedeon Hungary 11 117

3 36 ADP Gauselmann Germany 29 104

4 1 Novartis Switzerland 93 96

5 11 Abercrombie & Fitch Europe Switzerland 57 82

6 7 Apple US 60 74

7 5 Brillux Germany 61 73

7 27 Krka, Tovarna Zdravil, DD, Novo Mesto Slovenia 34 73

9 -6 Bayerische Motoren Werke Germany 117 70

10 n/a Aucma China 0 62

10 51 Janssen Pharmaceutica Belgium 23 62

Source: WIPO

Top 10 countries for Madridapplications

Country Applications % change

US 7,884 2.0%

Germany 7,316 -3.0%

China 5,230 36.3%

France 4,261 3.3%

UK 3,292 9.3%

Switzerland 3,272 6.6%

Italy 2,878 -6.6%

Japan 2,495 3.4%

Australia 2,115 2.7%

Russian Federation 1,460 23.9%

Source: WIPO

S E AT T L E 2 0 1 8 | MANAGING IP.COM | 5

M AY 1 9 - 2 3 | T R A D E M A R K T I M E S

The Chartered Institute of Trade MarkAttorneys (CITMA) in the UK haselected a new president. Tania Clark,

who is a partner at IP firm Withers & Rogers.She succeeded Kate O’Rourke after being votedin unanimously by CITMA’s council. She startedthe role on April 10 and will serve a two-yearterm.

Her vision for the organization under her lead-ership includes its role in influencing the futureof intellectual property in a post-Brexit UK.“There’s a lot of gloom about Brexit, but it couldpresent us with huge opportunities,” she says “It’sput us on the map in the sense of making us ad-vertise our profession even more. That’s been veryuseful.

“It’s given us a voice on the international stage.Before [UK IP] was maybe slightly lost in theEU. But going forward the separation of the

trademarks system means the UKIPO is far more important than itever was.”

“Brexit has also given the opportunity to engagefar more with the UK IPO and other UK organ-izations such as the Law Society and the IP Bar.Even more important, it’s done the same with or-ganizations outside the UK such as MARQUES,INTA and ECTA.”

She adds that ultimately she wants to makeCITMA a more international organization.

Another area Clark plans to focus on over thenext two years is technology’s impact on intellec-tual property. “AI is going to be hugely impor-tant,” she says. “The automation aspect istroubling but it’s something we need to address.Going forward, judgments will potentially be au-tomated. I know at the European level they’re al-

ready looking at that and that will havean impact on London legal serv-

ices.”

She adds: “The streamlining ofprocedures also means that the

benefit of having a professional in-volved is just for a small part of the

process. So much of a matter is going tobe automated that the added value aspect oftrademark attorneys will be more important. Itmeans that [trademark attorneys] need to de-velop their skill set.

“We need to encourage attorneys to think be-yond a traditional path and develop skills thatthey already have, such as in litigation.”

Clark also notes that she wants CITMA to de-velop IP Inclusive, which encourages diversityand inclusion in IP. “We want to disseminate IPInclusive more widely. It’s about getting peopleto think every time whether a role would be bet-ter suited to someone with a different skill setrather than someone who has come down a tra-ditional route.”

INTERVIEW: CITMA

Hoping to benefit from BrexitThe Chartered Institute of Trade Mark Attorneys’ newpresident, Tania Clark, shares her vision

The brand landscape is changing inthe face of technological innova-tion. “The value of companies is

shifting from tangible to intangible, so as anintangible asset, IP is increasingly impor-tant,” said Brian Daniel, IP valuation spe-cialist at Charles River Associates, at INTA’sBrands and Innovation conference in NewYork in March.

One area technological change throws uptrademark challenges, as well as opportuni-ties, is counterfeiting. Technologies suchtracking IDs, holograms or blockchain canplay a role in verification.

INTA is working to improve and harmonizeanti-counterfeiting legislation around theworld, Virginia Cervieri, chair of INTA’santi-counterfeiting committee, told Manag-ing IP last month.

Online trading platforms have made coun-terfeiters harder to catch. Where shipmentsof counterfeit goods used to come in largecontainers that bad actors would store and

sell from there, improvements in personalshipping technologies have allowed counter-feiters to buy goods on demand as orderscome in. “They don’t need storage anymore,so there’s no evidence or merchandise toseize,” says Cervieri. “This makes it harderto find bad actors criminally liable.”

The advent of social media also presentschallenges and opportunities for brands. Itis all about direct contact between brandsand their followers.

At the INTA event in New York, Jeremy

Kaufman, senior counsel of IP at Netflix,characterized the relationship from brands’perspective this way: “Do you want to besafe, or loved? More brand protection doesnot equal more brand affinity.” He urgedcompanies to evolve beyond the traditionalbrand protection strategies of strictly enforc-ing marks, and “allow a free market of criti-cism and promotion.”

He added: “Be less precious with yourbrand, and don’t stifle people’s playfulnesswith it. Let authentic conversations takeplace online, and your fans will defend you.”

NEWS: TECHNOLOGY

A blessing and a curse for brands



“Do you want to be safe, orloved? More brand protectiondoes not equal more brandaffinity.” Jeremy Kaufman, senior counsel of IP at Netflix

The biggest US trademark decision ofthe past year was Matal v Tam, inwhich the Supreme Court in June

2017 found that Section 2(a) of the LanhamAct’s prohibition on the registration of disparag-ing marks violated the First Amendment. Thecourt declared: “Speech may not be banned onthe ground that it expresses ideas that offend.”

At the INTA Annual Meeting, on MondayMay 21 at 10.15am, a panel will assess how theFirst Amendment is likely to impact trademarkregistration going forward. This will includesome first-hand experience: Simon Tam of TheSlants will be speaking as well as Amanda Black-horse, the social worker and activist involved inthe dispute over the “Redskins” mark.

At the Fordham IP Conference 2018 in April,Anne Gilson LaLonde, author of Gilson onTrademarks, also shed some light on the post-Tam landscape. She made two main pointsabout the Tam ruling.

“The first is viewpoint discrimination,” shesaid. “Under the First Amendment the govern-

ment can’t discriminate against speech on thebasis of viewpoint. The Tam court said givingoffence is a viewpoint. These applicants weredenied the benefits of registration becausetheir marks were offensive.

“Second, under First Amendment scrutiny thegovernment has to at least have a substantialinterest if it is going to suppress speech. Sowhat is the interest here? Well, the governmenttold the Supreme Court it wanted to protectunderrepresented groups from being publicallydemeaned. It is hard to think of a more laud-able goal, but the court said you only want to

prevent speech that offends – that strikes at theheart of the First Amendment.”

While the Supreme Court settled the issue ofdisparaging marks, Section 2(a)’s prohibitionagainst immoral or scandalous marks is stillbeing contested. The Federal Circuit in De-cember 2017 found Erik Brunetti’s mark“FUCT” undoubtedly scandalous, but follow-ing Matal v Tam, ruled the mark registrable onFirst Amendment grounds.

LaLonde commented: “The PTO has arguedthat moving the bar is going to force it to reg-ister graphic sexual images. But sexual imagesare a tiny part of what the PTO has rejected asscandalous. I predict that Congress is going toamend Section 2(a) to refuse registration ofobscene marks, which it can do under the FirstAmendment.”

She added: “It would not be surprising for thePTO to seek cert in Brunetti. But I think thereis no reason for the Supreme Court to take thecase. The Federal Circuit opinion is consistentwith the Supreme Court in Tam.”

NEWS: UNITED STATES

Scandalous marks post-Tam



At the INTA Annual Meeting in Seattleon Wednesday May 23 from 10.15am-11.30am, Welch and Theodore Davis

of Kilpatrick Townsend will present their ever-popular “Annual Review of US Federal CaseLaw and TTAB Developments”. The top 10TTAB cases Welch identifies are, in no particular order:

1) In re General Mills, in which the Board af-firmed a refusal to register the color yellowfor Cheerios boxes, finding the color lackedacquired distinctiveness.

2) Frito-Lay v Princeton Vanguard, in which theBoard affirmed its earlier ruling – on re-mand from the Federal Circuit – that“Pretzel Crisps” is generic.

3) In re Beds & Bars, in which the Board refusedthe mark “Belushi’s” on the ground that itis primarily a surname, even though onlyfive people in the US use it as such.

4) In re University of Miami, in which the Boardoverturned two refusals of a mark depictinga personified ibis – the university’s mascot– on the grounds that the extra elementsincorporated in use were “not integral to[the] applicant’s mark”, and therefore donot qualify as a mutilation, or creating aphantom mark.

5) Luxco v Consejo Regulador del Tequila, inwhich the Board dismissed Luxco’s opposi-tion of the certification mark “Tequila” be-cause it failed to prove its genericness, lackof legitimate control, and fraud claims.

6) Estudi Moline Dissey v BioUrn, in which theBoard granted leniency to the petitionerthat served discovery requests after thedeadline imposed by the new TrademarkRules of Practice, given that the case beganunder the old rules with different deadlines.

7) In re United Trademark Holdings, in which theBoard affirmed a refusal of the mark “LittleMermaid”, finding it merely descriptive.

This is one in a long list of meredescriptiveness affirmations, bringing theaffirmance rate to 89% in 2017 – justunder the 90% rate in 2016.

8) In re Shabby Chic Brands, in which theBoard affirmed a refusal of the markshown on the left, on the grounds that itis a simulation of the Prince of Wales’s em-blem, shown below on the right. A markthat “comprises the flag or coat of arms orother insignia ... of any foreign nation, orany simulation thereof ” is barred underSection 2(b).

9) In re Empire Tech, in which the TTAB af-firmed a refusal of the mark “Coffee Flour”.The case is rare because as the only pro-ducer and seller of coffee flour, the appli-cant established a new genus of goods.

10)Tao Licensing v Bender Consulting, in whichthe Board granted a cancellation of themark “Tao Vodka” on the grounds of non-use and likelihood of confusion with the fa-mous mark “Tao”.

The most interesting trends in 2017 at theTTAB Welch identifies are: essentially elimi-nating the surname rareness grounds for refus-ing a mark and the deadline exceptions andextensions granted after the Trademark Rulesof Practice came into effect on January 142017.

Regarding surname refusals, Welch says: “TheBoard has really taken a much harder view onwhether something is a surname … they de-cided that they would look more on what thepublic perception is of the name, rather thantrying to have some kind of mechanical counting.”

On deadline extensions granted, hesays: “These cases go on for four

years or so, so people have casesthat started on the old rules.Then the new rules came intoforce and it’s questionable as to

which changes apply and whichones don’t … The Board is trying

to show some leniency.”

2018 trends to watchWelch says fraudulent specimens of use havebeen a problem ever since In re Bose in 2009,but this year the Board may find the impetusit needs to crack down.

Acknowledging this issue, the TTAB estab-lished a pilot program in March that will allowfraudulent specimens of use to be reported ef-ficiently. Welch identifies Chinese applicationsas the impetus for the program. “The US ishaving a problem with Chinese companies fil-ing hundreds of applications with phony spec-imens of use that’s why the program wasstarted.”

Welch says that these phony specimens are“the smoking gun”. He explains: “You can cre-ate phony specimens of use easily online, andjust slap your logo on any kind of product.Then you file an application saying, ‘I’m usingthe mark.’ Hopefully one of those cases willget to the Board and they’ll do somethingabout it.”

Another issue Welch hopes the TTAB will ad-dress this year is the advantage given to foreignparties now that proceedings are handled viawritten declarations instead of oral arguments.The rule changed as part of the amendmentsin 2017.

In terms of domestic proceedings, Welch says“it’s a step in the right direction to streamlinethings.” However, in depositions with foreignparties, the new procedure “tips the scales inforeign parties’ favor,” and can be expensiveand logistically complex to boot. Even though95% of TTAB cases are domestic, Welch esti-mates, he hopes the TTAB can sort out the un-even effects of the change.

The last issue Welch identified that theTTAB may address this year is proportional-ity. He says the rule was introduced severalyears ago, but “the Board has done very littleby way of putting that concept into practice.”

SESSION PREVIEW: TTAB DEVELOPMENTS

Catching up with the TTAB Trademark Trial and Appeal Board cases in 2017 involvedsome interesting brands. John Welch, TTAB bloggerand counsel at Wolf Greenfield identifies fraud andproportionality as issues to watch at the TTAB this year.




The Canadian government unveiled itsfirst national intellectual propertystrategy at the end of April, in which

one provision was to prevent the misuse of thetrademark registration system such as instancesof “trademark squatting”.

Along with plans for copyright and patent re-form, the C$85.3 million-funded strategy pro-poses a new bad faith trademark oppositionand invalidation grounds that could be usedagainst applicants and registrants who have nobona fide intent of using their marks.

It’s hoped that this provision will stem the recentrise of trademark trolls in Canada. A Smart &Biggar Fetherstonhaugh analysis published inMarch 2018 reported that “new data shows thatseemingly baseless applications are already on therise” and noted a sharp increase in the numberof applications filed in all 45 classes in 2017.

As of early May, there were 582 all-class trade-mark applications on the Canadian Trade-marks Database. Of those, 15 were filed in2015, five in 2016 and 420 were filed in 2017.The trend seems to be continuing, with 90 all-class applications being filed in 2018 to date.

The problem, however, may not be trolls in theplural. Most of these all-class applications weremade by Brandster Branding, which has links toGerman-born millionaire and mysterious trade-mark filer Michael Gleissner. The company filedmore than 300 of the registered all-class appli-cations in 2017 and 84 of those filed this year.

Flings include applications for a wide array ofcommon words, including aqua, glass, selfie,hear, quality, concierge, and common firstnames such as Andres, Cesar, Curtis, Prestonand Margaret, according to Nelson Godfrey,associate at Gowling WLG in Canada.

The second big all-class filer is Trademarkers,which is an agent for multiple owners, accord-ing to Cynthia Rowden, counsel at Bereskin& Parr.

It’s no useThe surge of all-class applications from thesefew firms has been spurred by amendments tothe Trademarks Act and Trademarks Regula-tions. The changes will eliminate the use re-quirement for trademarks and increase filingfees for multi-class applications from a C$250flat fee to a C$300 filing fee for the first classand C$100 for every additional class. After thatan all-class application would cost C$4,730.

Until spring 2019, when these changes are ex-pected to be enforced, trolls can and seem-ingly have been taking advantage of asituation where they can obtain and enforcethe right to exclude others from using a trade-mark for little investment without any inten-tion to use them.

“We have effectively created a period of timewhere applicants can file for C$250 knowingfull well that the Trademarks Act is going tobe amended to eliminate use requirements,”Rowden at Bereskin & Parr tells Managing IP.

“To me it looks like an abuse of the trademarksystem and presumably the goal is to be ableto sell or license those trademarks for a profitwithout having invested anything other thanfor the application.”

Godfrey at Gowling WLG adds: “It’s rare thatan entity would have intention to use a trade-mark in all classes of goods and services. It ispossible that there’s a legitimate intention,but if there isn’t any then these applicationsserve to occupy space that others that otherswill be prevented or hindered from using.”

It is possible to get marks cancelled for non-use, but the registrar will only initiate cancel-lation proceedings after the third anniversaryof registration. “Therefore, the anticipatedlegislation created a three-year period inwhich a registrant could seek to enforcepurely paper rights without any practicalmeans of challenge,” wrote Peter Giddens, co-chair of IP and trademarks at McMillan in ananalysis.

Not enough infoCanada’s new national strategy, it seems, hastaken steps to stop the rise of trademarktrolls.

“It does seem like what is being said herecould help deal with trolls,” says Jamie-LynnKraft, associate at Smart & Biggar Fether-stonhaugh. “Perhaps there will be legislationlimiting trolls’ ability to enforce these source-less trademarks.” But, she adds, there’s still acertain amount of uncertainty about how thegovernment intends to achieve its trademarkgoals.

Rowden at Bereskin & Parr adds: “We don’tknow any more than is in the publicity at themoment. Presumably there will need to belegislation to address the promises they’remaking.

“But we don’t know how they’re going to doit. It could be via regulation or statute. Thewording in the announcement is a little un-clear as to when use would have to be shown,what use would have to be shown or the tim-ing of it. So there’s some uncertainty aboutwhat is going to take place, but it will hope-fully solve some of the problems.”


NEWS: CANADA

Tackling trademark trolls

“To me it looks like an abuse of the trademark systemand presumably the goal is to be able to sell orlicense those trademarks for a profit without havinginvested anything other than for the application” Cynthia Rowden, counsel at Bereskin & Parr

2015 2016 2017 2018as of May 3

0

100

200

300

400

500

All-class applications filed inCanada

Our awards ceremonies this year tookplace in London, New York andHong Kong in March. This year

awards were presented in 220 categories inmore than 45 jurisdictions.

The awards are decided by Managing IP’steam of researchers based on analysis of firms’submissions, client and peer comments andpublicly available information. The shortlistsfor each category were published in February,and the winners announced at the awards din-ners.

Following feedback from guests, this year wechanged the coverage of our awards events.We expanded our North America ceremonyto include South America and Central Amer-ica, and moved the newly-named Managing

IP Americas Awards to New York City. TheLondon ceremony was changed from theGlobal Awards to the EMEA Awards. Lastly,we launched an Asia Awards.

The following pages include highlights fromthe ceremonies, and a selection of some of thetrademark-related winners and shortlists. Briefreasons for each winning firm are also given.

To view all the winners from this year’s Managing IP Awards, please visit www.man-agingip.com/awards

CANADATRADEMARK CONTENTIOUS

GOWLING WLGGowling WLG works with well-known names in retail, food andbeverage, and other industries.

CANADA TRADEMARK PROSECUTION

BORDEN LADNER GERVAISBLG remains strong in handlinghundreds of marks for theclothing/retail, jewelry and high-end products, industrial, realestate and other sectors.

ARGENTINATRADEMARK

MARVAL O’FARRELL & MAIRALMarval is the largest law firm inArgentina, and has beenproviding high-quality advice tointernational and domesticclients for more than 90 years.

BRAZILTRADEMARK

BARBOSA MÜSSNICH ARAGÃOBMA assisted Ontex in theacquisition of the diaper businessof Hypermarcas forapproximately $300 million,which involved the assignment ofhundreds of trademarks.

FEATURE: AWARDS

The world’s best for trademark work Managing IP recently revealedthe outstanding firms andindividuals for IP work in thepast year

1 0 | MANAGING IP.COM | S E AT T L E 2 0 1 8


CHILETRADEMARK

ALESSANDRIAlessandri represented RedTelevisa Megavision before theSupreme Court, which ruledfavorably on an appeal filed byone of the most importanttelevision networks.

COLOMBIATRADEMARK

LLOREDA CAMACHO & COLloreda Camacho & Cocompleted its digitization projectin 2017, which has led the firmto digitize 100% of its files whichis compatible with the newTrademark Office System.

PERUTRADEMARK

BARREDA MOLLERBarreda Moller’s clientele and theexcellence of its services make itone of the most prestigious IPlaw firms in Peru, especially inthe trademark area.

USTRADEMARK CONTENTIOUS

FINNEGAN HENDERSONFARABOW GARRETT & DUNNERFinnegan was victorious in acounterfeiting suit for client LGElectronics against almost 20companies, resulting in a $168million damages award.

USTRADEMARK PROSECUTION

KELLY IPKelly IP was established in 2013,and is a full-service trademarkboutique that advises top-tierclients.

AUSTRALIATRADEMARK CONTENTIOUS

ASHURSTAshurst represents some famousbrands. For example, it acted forKellogg Company in relation tothe “Special K” and“NutriGrain” marks.

AUSTRALIATRADEMARK PROSECUTION

DAVIES COLLISON CAVEDavies Collison Cave defendedapplications for the AustralianCounsel for Educational Researchand advised Dulux Group on anexpansion of its product rangeinto a south-east Asian country.

CHINATRADEMARK CONTENTIOUS

KING & WOOD MALLESONSKing & Wood Mallesons workswith multinational and nationalcompanies.

CHINATRADEMARK PROSECUTION

CCPIT PATENT ANDTRADEMARK LAW OFFICECCPIT is the oldest and one ofthe largest full-scale IP law firmsin China, boasting more than294 patent and trademarkattorneys.

INDIATRADEMARK CONTENTIOUS

SINGH & SINGHSingh & Singh won animportant victory for Priusagainst Toyota at the SupremeCourt, which reiterated that IPrights are “territorial” and not“global”.

INDIATRADEMARK PROSECUTION

ANAND & ANANDAnand & Anand helped the TajMahal Palace Hotel to becomethe first privately owned hotel inIndia to receive trademarkregistration.

JAPANTRADEMARK CONTENTIOUS

NAKAMURA & PARTNERSNakamura & Partners’ recent winsinclude representing AugustaNational in a trademark case againstKonami Holdings, which resulted inthe revocation of the trial decisionby the IP High Court in 2016.

S E AT T L E 2 0 1 8 | MANAGING IP.COM | 1 1


JAPANTRADEMARK PROSECUTION

SHIGA INTERNATIONAL PATENTOFFICEShiga International Patent Officeis one of the largest firms inJapan specializing in intellectualproperty. It was founded in1965.

SOUTH KOREATRADEMARK CONTENTIOUS

KIM & CHANGKim & Chang obtained a preliminaryinjunction at the Seoul CentralDistrict Court on behalf of Binggraeagainst Daee Food for selling aproduct that copied the appearance ofa banana flavored milk beverage.

SOUTH KOREATRADEMARK PROSECUTION

LEE INTERNATIONAL IP & LAWGROUPLee International IP & LawGroup was founded in 1961 andis one of the most active IPspecialist firms in the country.

BELGIUMTRADEMARK CONTENTIOUS

ALTIUSLast year Altius acted in officeand court disputes including amulti-million euro parallelimport case on behalf ofMitsubishi on the issue ofdebranding outside the EEA.



DENMARKTRADEMARK CONTENTIOUS

GORRISSEN FEDERSPIELGorrissen Federspiel is defendingsix companies in a disputeinvolving several injunctions aswell as substantive points of law.

DENMARK AND SWEDENTRADEMARK PROSECUTION

ZACCOZacco defended office challengesfor brand owners such as Alo andStayhard.

FRANCETRADEMARK CONTENTIOUS

BIRD & BIRDBird & Bird continues to growits practice. It provided strategicand cost-effective advice to brandowners facing disputes, clearingthe way for product launches.

FRANCETRADEMARK PROSECUTION

CABINET PLASSERAUDCabinet Plasseraud defendedchallenges against its clients’marks and in other cases usedoppositions and alternativedispute resolution to protecttheir interests.

GERMANYTRADEMARK

BARDEHLE PAGENBERGBardehle Pagenberg intervenedin the CJEU in the ChampagnerSorbet case, which providedguidance on when a geographicalindication can be used on aproduct.

THE NETHERLANDSTRADEMARK CONTENTIOUS

BRINKHOFBrinkhof was involved in anumber of important cases. Itsuccessfully represented InfineonTechnologies and VerweijFashion in their respectivedisputes.

SPAINTRADEMARK CONTENTIOUS

ELZABURUElzaburu was involved in the“Kerrygold” mark dispute inwhich the CJEU ruled there canbe infringement in a memberstate despite peaceful coexistenceof two marks in other states.

SPAINTRADEMARK PROSECUTION

BOMHARDIPBomhardIP helped anintergovernmental agency toresolve a trademark and domainname registration disputewithout litigation.

SWEDENTRADEMARK CONTENTIOUS

VINGEVinge obtained favorable resultsfor Orkla Foods in its disputewith Nestlé over the mark“Felix”.

UK (ENGLAND & WALES)TRADEMARK CONTENTIOUS

BRISTOWSBristows helped Mondelēz settleits high profile dispute withPoundland and defended Nestlé’sappeal over the Kit Kat shapemark.

UK (ENGLAND & WALES)TRADEMARK PROSECUTION

STOBBS IPStobbs IP took over thetrademark portfolio ofcompanies such as YoursClothing and MarshallAmplification.

EUROPETRADEMARK CONTENTIOUS

HOGAN LOVELLSHogan Lovells represented adidasin the General Court over itsopposition to a two-stripe markand Starbucks in its appealagainst the EUIPO decision over“Coffee Rocks”.


The malicious registration of trade-marks refers to those registrationsthat are committed for the purposes

of improperly taking advantage of the marketreputation of others. Malicious registrationrefers to the violation of the principle of goodfaith, harming the legitimate rights and inter-ests of others and registrations that are com-mitted for the purpose of embezzling publicresources. The author of this article, by means

of the legal database owned by the Beijing IP-house Technology Network, which is a leadingIP legal data provider, has conducted big dataanalysis on judgments and summarized thegeneral distribution of malicious registrationswithin Chinese territory.

Second instance administrativecasesRegarding adminitrative disputes in relation tothe affirmation and authorization of trade-marks, China Judgments Online shows, onApril 3 2018, that an aggregate number of10,208 second instance administrative caseswere concluded at Beijing Higher People’sCourt from January 1 2013 to March 312017. Among those cases, 3,634 concernedthe malicious registration of trademarks, ac-counting for 35.6% of the total number.

Regarding the types of disputes, cases involv-ing trademark opposition accounted for50.7%, cases involving the rejection of trade-mark registration accounted for 30.3%, casesinvolving the invalidation of trademarks ac-counted for 18.85% and cases involving dis-missal of the review application accounted for0.06%.

In relation to the class of goods or services, thefollowing five classes were most affected bymalicious registrations: Class 25 (clothing,footwear, headgear), Class 9 (electronic and

electric appliances), Class 30 (food, rice, flour),Class 33 (alcoholic beverages) and Class 35(advertising, business management). Amongthe five classes, cases involving Class 25 ac-counted for 15.66%, cases involving Class 9accounted for 10.98%, and cases involvingClass 30 accounted for 8.37%.

There were1,534 cases involving a foreign el-ement, which accounted for 42.46%. Amongthe foreign-related cases, the following 10countries contributed most to malicious regis-trations: the US, France, Germany, Japan,England, Switzerland, Italy, Singapore, theVirgin Islands and South Korea.

First instance administrativecasesDuring the same period of time as aforesaid,an aggregate number of 20,737 first instanceadministrative cases regarding the affirmationand authorization of trademarks were con-cluded at the Beijing IP Court and the BeijingNo 1 Intermediate People’s Court. Amongthose cases, 12,201 cases involved the mali-cious registration of trademarks, accountingfor 58.84% of the total number.

Regarding the types of disputes, cases involv-ing the rejection of trademark registration ac-counted for 61.46%, cases involvingtrademark opposition accounted for 23.27%,cases involving the invalidation of trademarks


Examining data on themalicious registration oftrademarks in China

SPONSOREDEDITORIAL

Zhang Xuan, founder of IP House, analyzes data and trends relating to the malicious registration oftrademarks

Zhang XuanFounder of IP House

Mr Zhang Xuan has an educa-tional background in businessmanagement and is a legal pro-fessional. He has served as a

reporter, an editor and chief ed-itor of China Industry and Com-merce News (affiliated with theState Administration for Indus-try and Commerce) and ChinaIntellectual Property News(linked to the State IntellectualProperty Office). He is now thefounder and chairman of theboard of Beijing IPHOUSENetwork Technology Development.

IP House is a legal technologycompany based on legal dataand legal information. Its team,led by Mr Zhang Xuan, consistsof a number of former judgeswho have engaged in IP lawsuittrials for many years. IP Houseoffers global customers variousproducts and services, such asvisual intelligent data analysis,online Chinese and English caseresearch facilities, customized

data reports, intelligent predic-tion of cases, education andhigh-end consulting. Mr ZhangXuan was chief editor of JudgeComments on Difficult Trade-mark Cases of Beijing Courts(five volumes from 2011 to 2015)and Chinese Trademark Regis-tration and Protection. He wasinvolved in writing Reports onChinese Trademark (1-10 volumes).

“Maliciousregistration refers tothe violation of theprinciple of goodfaith, harming thelegitimate rights andinterests of othersand registrations thatare committed forthe purpose ofembezzling publicresources”


accounted for 23.27% and cases involving dis-missal of the review application accounted for0.33%.

Regarding the class of goods or services, thefollowing five classes were most affected bymalicious registrations: Class 25 (clothing,footwear, headgear), Class 9 (electronic andelectric appliances), Class 35 (advertising,business management), Class 30 (food, rice,flour) and Class 11 (household appliances).The cases involving the foregoing five classesof goods and services accounted for 41.93%of the total number of administrative cases offirst instance concerning the affirmation andauthorization of trademarks.

1,534 cases involved a foreign element. Theyaccounted for 42.46%. Among the foreign-re-lated cases, the following 10 countries con-tributed most to the arena of maliciousregistrations: the US, Germany, France, Japan,England, Switzerland, Italy, South Korea,Netherlands and Singapore.

Civil lawsuitsThe malicious registration of trademarks alsoexists in civil lawsuits in China. During thesame period of time, an aggregate number of137 civil cases involved the malicious registra-tion of trademarks. These civil cases fell withindisputes over infringement of trademarkrights, disputes over infringement of copy-

right, disputes over infringement of corporatenames (trade names) and other disputes relatedto unfair competition. Among the civil cases,those involving the infringement of rights ac-counted for 86.93%, and those involving un-fair competition accounted for 12.42%.

DevelopmentsIn recent years, both the Chinese governmentand the judiciary have emphasised the protec-tion of intellectual property rights, with the ju-dicial authorities playing a key role. On April10 2018, President Xi Jinping gave a keynotespeech at the opening of the Boao Forum forthe Asia Annual Conference 2018 stating thatChina will continue to strengthen the protec-tion of intellectual property rights, signifi-cantly increase the costs of infringement andfully utilize the deterrent functions of the law.In April 2017, the Supreme People’s Courtpublished the Plan on the Judicial Protection ofChina’s Intellectual Property Rights which is aimedat continuing to strengthen the protection of

intellectual property by adhering to the prin-ciples of “justice playing the predominant role”and “strict protection”. As the court that adju-dicates intellectual property cases of first in-stance, the Beijing IP Court has conductedeffective regulation of the malicious registra-tion of trademarks. In April 2017, the courtespecially held a press conference where fourregulatory measures as well as 18 typical caseson regulating malicious registration were dis-cussed. We believe that with the continuousefforts of the judicial and administrative au-thorities, there will be fewer and fewer mali-cious registrations of trademarks and theChinese market will be fairer, more open andthorough.

The statistical data above is provided by Bei-jing IPhouse Technology Network. Shouldyou have any questions regarding the data orwant further data regarding intellectual prop-erty, please visit www.iphouse.cn or send anemail to [email protected].


“In recent years, both the Chinesegovernment and the judiciary haveemphasised the protection of intellectualproperty rights, with the judicial authoritiesplaying a key role”

Hello, ladies and gentlemen. I’mChristy Li, host of today’s debateon trademark opposition proce-

dure. We have two contestants today fromworld famous law firms who were winners inthe 2018 debate season. Let us welcome MrP and Mr A to the stage.

Mr P and Mr A have experience in plenty ofcountries, and they have both received awardsand accolades. For example, Mr A has hadwins in Japan and Germany, and people therehave hailed him as the father of trademark op-position procedure. Meanwhile, Mr P doesnot show weakness, and is fully endorsed byChina and the UK.

Today the debate relates to a very familiar butcontroversial topic in worldwide trademarkpractice – whether opposition should occurbefore trademark registration or after trade-mark registration. As this is an informal de-bate, there will no ballot process today. Let usstart with Mr A’s statement.

Mr A: As far as we know, the reason a trade-mark proprietor files a trade mark applicationis to acquire an exclusive right, so that theycan use the trademark in commercial activi-ties. Opposition after registration enablestrademark proprietors to register a trade markearlier and facilitates the expansion of theirbusiness. This is because, for countries thatadopt the method of opposition after registra-tion, trade marks will be granted registrationwithout a publication period, which rangesfrom one month to several months. After thetrademarks are registered, anyone/an inter-ested party can file an opposition during theprescribed period.

Secondly, the function of trademarks is tohelp the relevant public distinguish goods/ser-

vices sources. Where marketing exists, therewill be competition. For opposite parties, cre-ating obstacles in the way of trademark regis-tration is a great weapon. Despite clearlyknowing that an opposed trademark does notcollide with its prior right, nor is the opposi-tion in the public interest, parties still raise anopposition.

In most jurisdictions, the office usually takesmore than 12 months to finish examinationof an opposition case, and initiating an oppo-sition could result in delaying registration forover one year. How should such pre-emptiveopposition be solved? Opposition after regis-tration could eliminate the risk of bad faithopposition, for the reason that the trademarkhas been granted registration before the op-position period and cannot be delayed due tothe opposition procedure.

Another advantage of opposition after regis-tration that I have to stress is that it enablestrademark proprietors to acquire registrationcertificates earlier, which is a stepping stonein commercial transactions and infringementdefence. When running a business, a registra-tion certificate is the only evidence to showownership, especially for famous websites, likeAmazon, Tmall, JD, etc. Without it, all busi-ness activities bear the risk of infringements.A registration certificate could show owner-ship in infringement cases.

By comparison with this situation, oppositionbefore registration delays registration and notonly does harm to business activities, but alsolimits the ability to sue others for infringe-ment.

All in all, opposition after registration is abeneficial statutory procedure for trademarkproprietors.

Host: Mr A set forth the advantages of oppo-sition after registration, as well as some disad-vantages of opposition before registrationelaborately. Now let us see how Mr P will fightback.

Mr P: I do not deny that the earlier the reg-istration date, the better. But, you have tocompare the short term with a stable status. Inmy opinion, stability plays the most importantrole in business. If a trademark can be opposedany time after it is registered, what is the pur-pose of its registration? Only if the trademarkis registered and overcomes the obstacles raisedby prior cited marks, can it be registered witha low risk of attack. This is a true registration.

In most legal procedures, public interest over-rides private rights and this is the case fortrademarks too. When setting up the statutory

Discussing trade markopposition

SPONSOREDEDITORIAL

Two legal practitioners evaluate whether opposition should occur before or after trademarkregistration, weighing up the advantages and disadvantages of both scenarios

Christy LiKangxin

Ms Li has experience in a wide range oftrademark, copyright and domain namematters. She is skilled at handling trade-mark prosecution globally. She hashelped many companies to devise andimplement tailored strategies for trade-mark protection in China and has alsoadvised domestic clients in relation totrademark protection overseas. She hasclients in various industries, including aworld famous beer beverages company,a pioneering mobile phone company anda home electronic products company.

“Opposition after registration enables trademark proprietors to register a trademarkearlier and facilitates the expansion of theirbusiness”1 6 | MANAGING IP.COM | S E AT T L E 2 0 1 8


procedure of opposition, private rights aswell as public interest should both be takeninto consideration. The purpose of opposi-tion is to take advice from the public, and tocarry through trademark right verificationpublicly, fairly and authentically. Temporaryregistration without public opinion does notstrictly qualify as ownership of a trademarkright.

Additionally, opposition after registration isa waste of marketing and judicial resources.In the first place, trademark owners will fullyprepare to enter a market for the trademark,but how does it feel when they hear thattheir registered mark is opposed by third par-ties and may be rendered invalid? The worstaspect of this is that their mark can be re-

jected from registration or invalidated aftertheir marketing preparation. It is not hard toconclude that all the preparation is a wasteof time and money. In a similar way, juris-dictions have used up time and energychecking and issuing a registration certifi-cate, but have to cancel it after the mark isrejected from registration due to opposition.

To conclude, when deciding whether oppo-sition should take place before or after regis-tration, factors relating to private and publicinterests should be taken into account, andopposition before registration is preferable toopposition after registration.

Host: Ok, time is over for Mr P. Both con-testants expressed themselves logically and

reasonably, and both procedures have prece-dents throughout the world, proving thatthey have pros and cons. It seems they areequally matched.

As long as it suits the local situation, eithermethod is acceptable and can be adopted.When deciding whether it is appropriate ornot, factors like the annual filing numbers inthe local district, the degree of bad faith, theopposition percentage etc. should all betaken into account. No one is born wise orlearned. The purpose of discussion is notnecessarily for achievement, but to motivatemore interested people to join us so that wecan find the most effective and beneficialway to manage and mold a healthy and so-phisticated intellectual property market.

“If a trademark can be opposed any time after it isregistered, what is the purpose of its registration?Only if the trademark is registered and overcomesthe obstacles raised by prior cited marks, can it beregistered with a low risk of attack”



Two bills involving changes to Mexico’sindustrial property legal frameworkhave been passed by Congress in

2018. One of them targeted industrial designsand geographical indications and the secondwas related to trademarks. These reforms con-stitute a comprehensive amendment to Mexi-can Industrial Property Law. Although muchremains to be done in terms of implementa-tion, these reforms are generally perceived as anenhancement aiming to broaden industrialproperty protection for users of the system.

DesignsOn March 13 2018 a reform to Mexico’s In-dustrial Property Law was published and thiscame into effect on April 27 2018. The reformwill have a considerable impact on the protec-tion afforded to industrial designs and geo-graphical indications in Mexico. Tounderstand the scope of the reform it is im-portant to contrast the protection of industrialdesigns, appellations of origin and geographi-cal indications before and after this reform.

In Mexico, according to the law, industrial de-signs are classified as either industrial drawingswhich refer to shapes, lines or colors incorpo-rated into a product for aesthetic purposes, orindustrial models which are essentially modelsor patterns used to manufacture a product. Ex-clusivity can be granted over industrial designsthrough registration as long as they are newand susceptible to an industrial application.

The reform raises an interesting question: whatis the meaning of new industrial design? Be-fore the reform, the law simply and vaguelypointed out that a new industrial design is in-dependently created and significantly differsfrom known designs or combinations thereof.The reform goes one step further, defining in-dependent creation as the lack of any identicaldesign being publicly known at the date of thefiling of the application and additionally stat-ing that designs differing in irrelevant detailswill still be considered identical.

The bar seems to have been raised in the area ofprotection for industrial designs. Examiners willnow be constrained to consider not only if thedesign differs from other known designs in more

than just irrelevant details, but also if an expertin the field would discern a difference betweenthe design in question and other known designs.

The reform seeks to bring the prosecution of in-dustrial designs closer to the procedure for ob-taining a patent. With a few exceptions, designswill be prosecuted and issued using the samerules as for a patent application. The reformmay allow the owner of a design application toobtain compensation from third parties that usethe design once the application is published.

The reform also included a big change in thetimeframe in which design registrations are inforce. Before the reform, the registrationwould be in force for a period of fifteen years,without the possibility of renewal. Now, thedesign registration will be issued for an initialperiod of just five years, and can be renewed

for subsequent periods of five years for up to atotal of 25 years.

It should be mentioned that both applicationspending at the time that the reform came intoforce and issued design registrations can benefitfrom the reform. Applicants will need, how-ever, to specifically request the application ofthe new rules to their existing applicationwithin a 30 day period counted from April 272018, and it is highly advisable that applicantsinterested in doing so seek legal advice. Ownersof design registrations granted before the re-form may benefit from a time extension so thatthey can enjoy up to the maximum of 25 years.

Geographical indicationsThe protection of geographical indications hasalso been substantially changed. While inter-national treaties protecting geographical

Mexico continues tomodernize its IP system

SPONSOREDEDITORIAL

Gloria Niembro Castro and Santiago Zubikarai Gonzalez Mariscal of Basham, Ringe &Correa, S.C. examine reforms to Mexico’s Industrial Property Law, analyzing the effect of thechanges on industrial designs, geographical indications and trademarks

Gloria Niembro CastroBasham, Ringe & Correa, S.C.

Gloria Niembro Castro is an associate inthe intellectual property practice ofBasham Ringe & Correain in MexicoCity. She specializes in intellectual prop-erty litigation, the drafting and negotia-tion of contracts, as well as consultingand prosecution in connection withtrademarks and copyrights.

Gloria graduated with honors from Insti-tuto Tecnologico Autonomo de Mexico in2012 and holds a master’s degree in lawfrom Benjamin N Cardozo School ofLaw. She passed the New York BarExam on July 2015. She is a member ofthe Mexican Association for the Protec-tion of Intellectual Property (AMPPI), theInter-American Association of Intellec-tual Property (ASIPI) and the Interna-tional Trademark Association (INTA).



Santiago Zubikarai Gonzalez Mariscal

Basham, Ringe & Correa, S.C.

Santiago Zubikarai Gonzalez Mariscalhas worked in the intellectual propertydepartment of Basham Ringe & Correasince 2009, primarily assisting clients inmatters relating to trademark searches,registrations and litigation. He often pre-pares and reviews agreements con-nected to intellectual property.

Santiago holds a bachelor’s degree inlaw from Universidad Anahuac and amaster’s degree in law from the Univer-sity of Notre Dame. He has taken sev-eral courses relating to intellectualproperty associated with WIPO and theMexican Association for the Protectionof Intellectual Property. He passed theUniform Bar Exam (NY) on February2018.

indications can be invoked before Mexican au-thorities, up until the reform, industrial prop-erty law only recognized denominations oforigin understood as the name of a geograph-ical region that is also used to designate a prod-uct that comes from that region and that owesits characteristics to the geographical environ-ment. Tequila is a perfect example. It is a geo-graphical region in western Mexico, but it isalso the name of the product originating fromthat region that owes its characteristics to thatparticular environment.

The reform now also protects all geographicalindications understood as any name of a re-gion or other indication of belonging to a re-gion that identifies a product as belonging tosuch a region when a characteristic of theproduct is mainly due to its geographical ori-gin. This is without prejudice to the fact thatdenominations of origin are still protected.Thus, the difference is that the law in Mexicois granting protection to any indication that aproduct originates from a certain region, evenwhen the name of the product is not the nameof the region. For example, references to BajaCalifornia in connection to wine can be pro-tected as geographical indications even if theywould not qualify as denominations of originunder the prior rules because they are not thename of the product.

To further protect geographical indicationsand denominations of origin, the IndustrialProperty Law now establishes that using with-out authorization a denomination of origin orgeographical indication constitutes adminis-trative infringement. The reform also providesan additional protection for products pro-duced in Mexico by providing that the sale,production, transport, import and export ofproducts that do not comply with the applica-ble denomination of origin or geographical in-dication can constitute a federal crime.

TrademarksOn March 22 2018 a substantial amendmentto Mexico’s Industrial Property Law was ap-proved by Mexican Congress mainly focusedon trademark-related aspects. The amend-ments have not yet been published and will be-come effective 60 days after publication.

Big changes have been made to trademark law.An important amendment is that trademarksno longer need to be visible in order to be reg-istered. As currently drafted, Mexican Indus-trial Property Law provides that a mark is anyvisible sign that distinguishes products or serv-ices from others of the same type or categoryon the market. With the reform, a mark wouldneed to only be perceptible by the senses andcapable of being represented in such a mannerthat the subject matter of protection is well de-termined.

Accordingly, non-traditional marks that werepreviously denied protection will now be reg-istrable in Mexico, such as sounds and scents.Sounds and scents are capable of functioningas source identifiers by performing the trade-mark function of distinguishing the commer-cial origin of a product or service. Examples ofthese non-traditional trademarks are the Nokiatune or Tarzan yell, and the scent of bubblegum for footwear.

Furthermore, descriptive or common useterms as well as three-dimensional commonforms, isolated letters, digits and colors andnon-distinctive trade dress, previously unsuit-able for registration will be registrable after thereform, based on distinctiveness acquiredthrough use, also known as secondary meaningin some jurisdictions. Under current law, de-scriptive terms or otherwise non-distinctive el-ements are ineligible for registration and theMexican Institute of Industrial Property hasbeen reluctant to accept notoriety or strongdistinctiveness arguments to overcome a de-scriptiveness objection. Evidence of use toclaim acquired distinctiveness will certainlybenefit those trademark holders whose markshave achieved distinctive status in Mexico de-spite being descriptive initially.

One of the most notable trademark reformsconcerns the provisions governing oppositions.The most significant modification is that theopposition will bebinding for the exam-iners of the MexicanInstitute of IndustrialProperty, who shallissue a decision onthe merits in eachcase. Further, the par-ties will be able to fileevidence along withthe opposition andwill be granted a two-day term to submitfinal pleadings.

Registrants must nowfile a declaration ofuse during the threemonths following thethird anniversary ofthe registration grant-ing date. Failure tofile this declarationwill automatically re-sult in the lapse of theregistration.

As to cancellation ac-tions, a new groundwas implementedagainst bad faith ap-plicants/registrants.

A trademark registration will be declared in-valid if it was obtained in bad faith. Theamendment does not detail what should beunderstood by bad faith, and this term willhave to be interpreted by the Mexican Insti-tute of Industrial Property and courts. For in-stance, a finding of bad faith may be basedon the applicant’s knowledge of the thirdparty’s rights or legitimate interests in anidentical trademark or a trademark substan-tially identical to the mark applied for, or theapplicant’s conduct in applying for the markis inconsistent with norms of reasonable andfair commercial behavior, or the notorietyand well-known status of the mark at issue.The virtue of this amendment is that it enti-tles legitimate trademark owners to defeattrademark piracy and trademark misappro-priation cases.

Concluding thoughtsMexico has introduced substantial reforms inrelation to designs, trademarks and geograph-ical indications. These provide a valuable op-portunity to modernize Mexico’s protectionof industrial property rights, both by recog-nizing the importance of protection of subjectmatter that was previously excluded and inenhancing exclusivities that already existed.What remains to be seen however, is howthese reforms will affect the practice of the au-thorities and legal practitioners implementingthese changes.




The drawn-out battle over whetherNestlé’s Kit Kat chocolate bars shouldbe entitled to trademark protection

severs as a cautionary tale for brands attempt-ing to register shape marks in Europe.

The latest development was an EU top courtadviser in April recommending Kit Katshould not be entitled to protection and stat-ing the EUIPO must re-examine whether itmay be maintained as a trademark. Accord-ing to Advocate General Melchior Wathelet,Nestlé did not produce sufficient evidence toshow that its trademark had acquired distinc-tive character because it was not recognizedin Belgium, Ireland, Greece and Portugal.The advocate general said that for the trade-mark to be valid, Kit Kat would need to berecognized as distinctive across all the EU’sstates, as was ruled by the General Court in2016.

“Nestlé got close; it proved distinctiveness inmost member states but not all,” John Cold-ham, director of IP at Gowling WLG, says.“The company tried to argue that it had

shown distinctiveness in the major economiesthat represent the majority of chocolate-buy-ing consumers and that that should beenough. But the European Court has been re-ally strict and said no, if there’s a place in theEU where it is not distinctive of the productthen tough luck.”

He adds that this decision differs from otherparts of EU trademark law that require marksto be used within a substantial part of the blocto remain valid, rather than within everymember state.

If the advocate general’s recommendation isfollowed by the CJEU and the four-fingered

trademark is revoked, it could become moredifficult for businesses to attain shape marks.

“What was already quite hard has been madeharder,” says Coldham. “There’s a question ofwhether that’s right but it’s a question that willhave to be fixed by legislative changes ratherthan the courts. The courts will have made itclear [if the advice is followed] that if a shapeis not recognized in every member country, it’snot distinctive enough to be a shape mark.”

The decision may also serve to stifle the attrac-tiveness of shape marks and reduce the num-ber of filings. “Trademark owners may thinktwice before filing EU shape marks,” ClaireLehr, partner at EIP, says “The level of evi-dence required to show distinctive characterthrough use is extremely high, since recogni-tion in 10 EU member states in this case wasnot sufficient.

“Those with existing shape trademarks mayalso be considering how evidence of their ownmarks’ distinctive character might stand up toa challenge led by a determined competitor.”


NEWS: EUROPE

Kit Kat can’t catch a break

tradema rk tim es › pdfsmip › 01-trademarktimes18seatt… · full of human-centric phrases such...

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