11/1/2018 INTA Bulletin

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November 1, 2018 Vol. 73 No. 19 Search Submissions Subscriptions and Reprints

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InterviewsBranding Strategies for the Tastiest TrademarksSteven Sidman (Carlton Fields, USA) provides a glimpse into one of many exciting sessions planned for the 2018INTA Leadership Meeting, which will be held November 6–9 in New Orleans, Louisiana, USA.

What Belonging to INTA Means to Me: Maria Cecilia RomolerouxWith the deadline to renew your INTA membership approaching, Maria Cecilia Romoleroux (CorralRosales,Ecuador) explains what belonging to INTA means to her and her firm.

Association NewsLooking Beyond Trademarks: A Report from INTA’s 2018 Asia­Pacific ConferenceINTA’s 2018 Asia­Pacific Conference: Looking Beyond Trademarks, drew 217 registrants to Sydney, Australia, andfocused on themes such as employing partnerships to combat counterfeits, embracing innovation, and broadeningthe definition of trademarks to include brands and IP­adjacent practices.

AnticounterfeitingUnited States­Mexico­Canada Agreement Provides a Leg Up in Combating CounterfeitingThe United States­Mexico­Canada Agreement replaced the North American Free Trade Agreement on October 1and strengthens Canada’s ability to combat counterfeits—but there is still more work to be done.

China UpdateRegulations Clarify Role of New Agencies Following China's IP Institutional ReformTwo regulations released by China’s State Commission Office for Public Sector Reform in September clarify therole of the newly formed National Intellectual Property Administration and State Administration for MarketRegulation, following a reorganization of China’s IP agencies earlier this year.

Committee UpdatesSign Up for “Sign Me Up!”The Trademark Administrators Committee urges all Association members to sign up for unlimited access to INTA’swebsite and valuable member resources.

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Washington UpdateINTA Meets U.S. Copyright Office Officials to Discuss Key IssuesINTA’s Washington, D.C., Representative Office engaged with stakeholders and members of Congress throughoutSeptember and October.

FeaturesThe Good­Faith Prior Use Exception to Brazil’s First­to­File Rule: What Is a “Right of Precedence in Registration?”Decisions of Brazil’s Supreme Tribunal of Justice have clarified that the “right of precedence in registration” can be asserted bya good­faith prior user for the first time in a judicial nullification action against a granted registration in court and in anadministrative nullification action against a granted registration at the National Institute of Industrial Property.

Trademark Office UpdatesBOTSWANA: Companies and Intellectual Property Authority Relocated

Law and PracticeARGENTINA: Court Awards Substantial Damages for Unfair Use of Trademark as Keyword

CANADA: Construing Trademark Use in the Digital Age: Liberal Interpretation of Use with Respect to Retail Services

EL SALVADOR: “Pupusa” Becomes El Salvador’s First Protected Geographical Indication

INDIA: Supreme Court Rules Evidence of Fraud and State of Mind Not Relevant in Passing­Off Action

JAPAN: New Fast­Track Examination System Applies Automatically to National Trademark Applications

THE NETHERLANDS: Following Ratification of Geneva Act of the Hague Agreement, Benelux Consequently Becomesa Member

SINGAPORE: IP Office Emphasizes Understanding of Average Consumer in Assessing Similarity

UNITED STATES: Specific Personal Jurisdiction Allowed Against German Corporation for Trademark Infringement

IP SnippetsESWATINI: The Kingdom of Swaziland Is Now the Kingdom of Eswatini

Disclaimer

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specificinterest. The INTA Bulletin relies on members of the INTA Bulletins Committee and INTA staff for content but also accepts submissions from others.The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication. Forpermission to reproduce INTA Bulletin articles, send a brief message with the article title, volume and issue number, proposed use, and estimatednumber of copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services, ormessages depicted therein. © 2018 International Trademark Association

INTA Bulletin Editorial Board

Committee LeadershipChair: Peter McAleese, AKRAN Intellectual Property

Co­Chairs, Law & Practice: Middle East & Africa Subcommittee:

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Vice Chair: Katherine Hely, Caribbean IP ­ Katherine Van Deusen HelyP.L.L.C. Co­Chairs, Features Subcommittee:

Florian Traub, Pinsent Masons (UK) LLPLeigh Ann Lindquist, Sughrue Mion, PLLC

Co­Chairs, Association News Subcommittee:

Niti Dewan, RK Dewan & CoSalvador Ferrandis, Salvador Ferrandis IP Legal SLP

Co­Chairs, Law & Practice: Asia­Pacific Subcommittee:

Ian Drew, Davies Collison CaveMin Xue, HFL

Co­Chairs, Law & Practice: Europe Subcommittee:

Christian Lemke, Heissner & Struck Ellen Gevers, Knijff Trademark Attorneys

Co­Chairs, Law & Practice: Latin America Subcommittee:

Diego Laurini, Estudio GoldKathryn Pearson, Livingston, Alexander & Levy

Zeina Salameh, Saba & Co. IPStephen Goldberg, Spoor & Fisher

Co­Chairs, Law & Practice: North America Subcommittee:

Timothy Stevenson, Smart & Biggar/FetherstonhaughMiriam Trudell, Sheridan Ross P.C.

Co­Chairs, China Bulletin Subcommittee:

Yueqin Wu, Watson & Band Eugene Low, Hogan Lovells

INTA Bulletins Staff Chief Executive Officer: Etienne Sanz de Acedo Director, Marketing and Communications: Carol Steinberg Senior Manager, Communications: Jean­Claude Darné Strategist, Communications Content: Eileen McDermott Assistant, Shanghai Representative Office (China BulletinSubcommittee Staff Liaison): Weijie Dai Editor: Elizabeth Venturo Graphic Designer: Eric MehlenbeckINTA Bulletins Committee

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Branding Strategies for the Tastiest Trademarks

With just a few days to go before INTA’s 2018 Leadership Meeting in NewOrleans, Louisiana, speakers like Steven Sidman (Carlton Fields, USA) aregearing up to address some of the most exciting topics in trademarks andbranding today. Mr. Sidman, an entertainment transactional attorney bytrade, and a long­time representative of budding and iconic restaurateursalike, has assembled a star­studded panel to examine “Branding forRestaurants: Strategizing the Branding of New Restaurants, the Brandingof Restaurant Groups, and the Rebranding of Old Restaurants,” which willtake place on November 7 from 10:30 am to 11:30 am. With the increased exposure chefs and restaurants have today, thanks tochanging technology and an explosion in television and other media gearedto cooking and celebrity chefs, the prospect of branding in the food serviceand hospitality industry has undergone a sea change in the last 10 to 20years. The result is that even the smallest independent restaurateur or chefmust consider trademark and branding issues as a core part of thebusiness. Mr. Sidman spoke with the INTA Bulletin about some of theunique issues his panel will address. Who are your panelists and what perspectives will they bring to the

topic?

I’m really proud of the panel that we’ve assembled and very fortunate that I was able to lean heavily on some cherished friendsand long­time colleagues of mine. I’m humbled by their willingness to participate. They come from wildly varied backgrounds,so will bring real depth and breadth to the panel:

Kristen Fancher (Margaritaville Enterprises, LLC, USA) has worked on matters for Jimmy Buffett for many years and isnow Chief Legal Officer and General Counsel at Margaritaville Enterprises, LLC, where she handles all of the variouslifestyle branding ventures Jimmy Buffett is involved with. The company’s holdings are incredibly diverse, includingrestaurants, retail shops, prepared foods and beverages, non­food & beverage consumer goods, casinos, resorts,vacation ownership, retirement communities, and a national radio station on SiriusXM. Kristen’s perspective is going tobe very insightful.

Joseph V. Tripodi (The Subway Corporation, USA) is Chief Marketing Officer (CMO) for The Subway Corporation andwas previously Global CMO of The Coca­Cola Company. Given that Subway is the largest single­brand restaurant chainin the world, and that Joe also led the marketing efforts of the most recognizable beverage brand in the world, I thoughthe’d bring an interesting (and non­lawyerly) perspective.

Joshua Siegel (Momofuku Group, USA) is Vice President of Development and General Counsel at Momofuku Group,the holding company for the interests of the world­renowned chef and restaurateur, Chef David Chang. Josh previouslypracticed law at Stroock & Stroock & Lavan and has helped oversee the explosive expansion of Chef Chang’sinternational culinary brands. He has a deep background in representing highly successful, globally recognized, high­end dining groups.

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And then we have Chef Alon Shaya (Pomegranate Hospitality, USA), a James Beard Foundation Award ­ winning chefbased in New Orleans with his award­winning flagship, Saba, and whose new venture, Pomegranate Hospitality, justexpanded into Denver, Colorado, with the opening of Safta. Chef Shaya was involved in a high­profile trademarkdispute, in which my law firm represented him, with another New Orleans chef. He comes from an individualrestaurateur background—he started with nothing and rose to the highest levels of the American culinary scene, butthen had to rebuild his brand due to trademark­related matters.

Why is this a timely topic?

It’s timely for a number of reasons. Perhaps most obviously because there is growing interest in the food and hospitality worlddue to increased exposure on various visual media, such as television and the Internet—and not only from a purely marketingand publicity perspective. So much about the way brands generally, including food service, hospitality, and so­called lifestyle

brands, interact now is tech­driven. Even if we were to focus solely on thetechnological aspect, we’d be able to fill the hour without fear ofcontradiction among these panelists, because each of their brands hassuch a different relationship with its customer base. There is this white­hotspotlight being shone on the industry right now and a cult of celebritysurrounding high­profile chefs. How is that a change from a decade or so ago?

Certainly as it relates to the more sophisticated chefs and restaurateurs,the fact that they’re focusing at all on branding is a sea change. In largemeasure, until you had this explosion of media interest in the last 20 years,chefs as brands unto themselves didn’t exist in the manner we recognizetoday, with a few notable exceptions, such as Julia Child and Jacques

Pepin. Restaurants as brands were pretty much limited to fast food franchises or what are now known as “fast­casual”concepts. Now, individual chefs and restaurateurs are starting to see themselves as brands in their own right. They’rebeginning to see that, beyond their recipes, there is a limitless array of opportunities that might only be indirectly related to theirfood product or hospitality services, including the commercial exploitation of their own names and likenesses. What are some examples of the unique challenges faced by brands in the food service and hospitality industry that

will be addressed?

I wanted to structure the panel the way I did because the panelists can all address different types of challenges. Chef Shayacan describe in tear­jerking detail about all of the mistakes young restaurateurs make, which includes not focusing at all on theimplications of trademark ownership and control and all of the pitfalls that go along with that. Then you have Kristen’sperspective, where she is dealing with a very diversified conglomerate, but that still at the end of the day is not Coca­Cola orMcDonald’s. She’s advising Jimmy Buffett and his team about how to grow and monetize the brands and marks in a spacewhere the source of the brand’s fame is only partially related to the actual goods and services they’re providing. Joe will weighin from on high to talk about what it means to conceive of branding strategies for an absolutely iconic brand like Coca­Cola andalso what it’s like to guide a different monolithic brand out of a tarnishing event. And Josh, alongside whom I just completed arather high­profile New York restaurant deal—our clients are co­venturers in a high­end dining concept—will be able to givesome fascinating insight on the highly developed, high­concept end of the culinary spectrum based on his work with ChefChang, one of the most influential and revered culinarians of his generation. What practical takeaways do you hope to provide those who attend the session?

I hope to show them that those of us in this discipline cast a very wide net in trying to identify opportunities and potential issuesthat might arise out of those—both legal and commercial. When you’re representing a brand, these are all things that should betaken into consideration in terms of rights you might be giving up or want to acquire. The parent company for Subway, forinstance, is Doctor’s Associates, Inc., which started in Bridgeport, Connecticut (USA), back in the mid­1960s. You never knowwhen one little sub joint in Connecticut is going to become the world’s largest franchisor, so “an ounce of prevention is worth apound of cure,” as the Benjamin Franklin quote goes. If you think about these things as the brand is developing, it can help youto navigate the waters more effectively. What else are you looking forward to at the Leadership Meeting?

First of all, I’m extraordinarily appreciative of the opportunity to talk about an issue that has occupied a large part of my practicefor the last decade or so. But more importantly, I don’t hold myself out as a trademark or licensing attorney per se, so I’mexcited about the prospect of learning from the professionals who deal at the cutting­edge of these issues all day, every day. Iconsider these issues on an almost daily basis because of this niche I have crafted for myself as part of a broader transactionalpractice in the entertainment space, but I welcome the broad perspective and deep insight of those in the trenches dealing withthem at a very high level.

NEW: INTA InfluencersOn November 7, from 9:00 am to 10:00 am, just before Mr. Sidman’s panel,hear from some of INTA’s experienced leaders as they share personalstories about their careers, experiences, and interests beyond trademarks.These concise and compelling talks on topics that are meaningful to themwill motivate and inspire your own personal and professional growth.

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Emotional Quotient (EQ) and Emotional Intelligence

(EI): The IQ of the Future Rudy Gaines, Womble Bond Dickinson (US) LLP(United States). Rudy is a long­time INTA member andvolunteer who currently serves on the Unreal CampaignCommittee. Rudy will share his insight on boosting youremotional quotient (EQ) and emotional intelligence (EI),

essential self­knowledge needed for a successful career, allowing you tobuild strong client relationships, manage occupational stress, and minimizeprofessional liability risks.

INTA Core Values: Taking Your Career to the Next

Level

Gustavo Giay, Marval, O'Farrell & Mairal (Argentina).Gustavo is a former INTA Board member who currentlyserves on the Data Protection Committee. Gustavo willshare his personal experience with INTA core values andhow he has used INTA’s member benefits to take hiscareer to the next level.

More Than Footprints: Utilizing the Power of INTA to

Effect Positive Change

Marion Heathcote, Davies Collison Cave (Australia).Marion has been a member of INTA since 1994 and isalso a former INTA Board member. She currently serveson the Pro Bono Committee and the Global AdvisoryCouncil—Asia­Pacific. Marion will share how herpassions, her professional career, and her years with

INTA have intersected to create positive change.

To register for the Leadership Meeting or to learn more, visit the meeting homepage. Please note registration is exclusive tocurrent and incoming Board of Directors and Counsel, Past Presidents, and Past Counsel, as well as current (2018–2019 term)

Committee Chairs and Vice Chairs, Subcommittee Chairs, Committee Members, Project Team Members, Program Speakers,

and IP Office Representatives. Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association

11/1/2018 What Belonging to INTA Means to Me: Maria Cecilia Romoleroux

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What Belonging to INTA Means to Me: Maria Cecilia Romoleroux

Maria Cecilia Romoleroux is a Partner at CorralRosales in

Quito, Ecuador, and has been an INTA member since

1995. She spoke with the INTA Bulletin about whatbelonging to INTA means to her and how her firm benefits

from INTA’s services throughout the year.

Why is your organization an INTA member and howdoes it benefit from membership? Our firm is very active in international work, both inbound

and outbound. As an international organization with

members coming from every part of the world, INTA fits

perfectly with our international needs and profile. Our firm

is regularly at the forefront of intellectual property (IP)

developments in Ecuador, and INTA provides us with a

platform to share our achievements and expertise with

other trademark professionals. This is particularly useful in

what is a fast­moving and global profession.

How long have you been an active INTA member and what does belonging to INTA mean to you? I have been an active member since 1995. For me personally, INTA means being involved in very significant projects, being in

contact with clients and friends, and getting to know more people. Most recently, to me INTA means benefiting from the

experience and expertise I have gained over the years and giving something back to a profession that has given me so much

in terms of professional experiences, friendship, and personal achievements. This past year I have been very lucky to receive

various awards and acknowledgements, and I am sure these have much to do with my involvement with INTA.

Outside of the Annual Meeting, in what other ways do you make use of your membership throughout the year? Aside from participating at the Annual Meeting and the Leadership Meeting, INTA has proven very useful; for example, in terms

of assisting our local clients in their needs to expand internationally. We have a local client, Pacari, that requires contacts not

only for IP­related matters, but also other issues, and INTA has proven to be very helpful in accessing the necessary contacts

to allow them to grow internationally, now having reached over 50 markets. Pacari is the first Ecuadorian company to join INTA.

In a nutshell, why should trademark professionals join INTA? One of the great things about the trademark profession is its international scope, and INTA is at the forefront of bringing that

richness and diversity together in one place. If trademark professionals want to experience everything that the profession has

to offer, they should get on board with INTA! If you are not actively participating in INTA, you will not be able to experience all

the IP world has to offer. Also, INTA provides opportunities for women to participate and develop in leadership positions and

speaker roles. I find value in these opportunities and I appreciate that the Association I belong to supports diversity.

Be sure to renew your INTA membership by December 31! Renew here now.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on

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matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an

official position.

© 2018 International Trademark Association

11/1/2018 Looking Beyond Trademarks: A Report from INTA’s 2018 Asia-Pacific Conference

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Looking Beyond Trademarks: A Report from INTA’s 2018 Asia­Pacific Conference David Moore, Henry Hughes IP, Wellington, New Zealand INTA Bulletins—Association News Subcommittee

More than 200 delegates gathered in Sydney, Australia, forINTA’s intensive and productive two­day 2018 Asia­PacificConference: Looking Beyond Trademarks, from October 11to 12. The conference covered an exciting balance oftraditional trademark material (for example,anticounterfeiting strategies and enforcing trademark rightsagainst unauthorized ad words and metatags) together withhighly informative sessions on hot topics such as dataprivacy, corporate social responsibility, 3D printing, andambush marketing. Themes

Several key themes emerged over the two­day conference.In particular, the benefit of working in partnership was arecurring message. Brand owners can strengthen theirposition against infringers by working in partnership withborder protection officials, intellectual property (IP) offices,and online retailing platforms. INTA CEO Etienne Sanz de Acedo spoke in his opening address about INTA’s desire to embrace innovation and to assist itsmembers in doing likewise. This became another theme, as the IP offices of Australia, New Zealand, and Singapore areplanning ahead to ensure that their systems are equipped to meet the changing pace of innovation. Attorneys and brandowners must also adapt to new technologies. As the title of the conference suggests, registrants were invited to move beyond trademarks. Mr. Sanz de Acedo asked them tomove from thinking in terms of trademarks to thinking about brands, and they were challenged to broaden their knowledge ofnon­trademark topics, such as data privacy and 3D printing. Knockout Knockoffs

Early birds kicked off the week on October 10 with a three­hour policy discussion on anticounterfeiting titled “KnockoutKnockoffs—Catching Counterfeits Online and on the Ground” held at the office of Davies Collison Cave and organized byINTA’s Anticounterfeiting Committee—East Asia and Pacific Subcommittee. The discussion began with opening remarks fromValentina Salmoiraghi, INTA’s Anticounterfeiting Advisor, Asia­Pacific, who touched on the activities of the AnticounterfeitingCommittee in the region. Organizing members Nick Holmes (Davies Collison Cave, Australia) and Russell Waters (PhillipsOrmonde Fitzpatrick, Australia) then set the stage for the discussion and emphasized the importance of holding collaborative

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dialogues. The discussion commenced with a panel on “Border Measures: Challenges and Successes” moderated by Russell Waters(Phillips Ormonde Fitzpatrick, Australia). Remarks from the Australia Border Force and presentations and videos by brandowners on the dangers of counterfeits were shown. Additionally, sobering video footage from Nicolas Green (Australian FederalChamber of Automotive Industries, Australia) and Shoba White (Toyota, Australia) demonstrated the severity of theconsequences of purchasing counterfeit car parts. Worryingly for consumers, the fakes can be very difficult to spot even bypeople in the industry. The second panel of the day, “Best Practices in Combatting Online Counterfeiting,” was moderated by Nick Holmes (DaviesCollison Cave, Australia). Both Michelle Fahey of New Zealand’s leading online sales platform, Trade Me, and Stacey Taylor,Head of Legal, Australia and New Zealand, at eBay (Australia), spoke about their respective company's takedown procedures.Both platforms are very open to working with brand owners, forming industry partnerships, and cooperating with authorities to

remove listings for fake goods as efficiently as possible. Rodney Jeffs of the Australian Department of Home Affairs(Border Force Department) observed how few borderprotection notices are in place compared to the number ofregistered trademarks in the country, highlighting thatcustoms and border protection officials need help frombrand owners in order to operate more effectively. Bruce Tonkin (.au Domain Administration Ltd., Australia)and Luke Richards (Clarivate, Australia) rounded out thedialogue with a discussion of the importance of cooperationbetween the public and private sectors and availablesolutions to implement consumer safeguards.

Conference Welcome and Keynote Address

Registrants were privileged to be welcomed to Sydney byCharles “Chicka” Madden, an elder of the Gadigal people.The Gadigal clan are part of the Eora Nation—the coastalaboriginal peoples who have lived in and around the

Sydney region for many thousands of years. The conference keynote address was delivered by Louise Baxter, the Chief Executive and Executive Director of the StarlightChildren’s Foundation (https://starlight.org.au/). Starlight is a charitable organization that creates “positive distractions” forseriously ill children and their families. Ms. Baxter talked about the power of one’s personal brand and a company’s brand. Astrong brand starts with clarity: establish your purpose and vision and then cascade it through your entire business. Ms. Baxterreminded the audience that everything you do will either underpin, or undermine, your brand. The Role of IP Offices

Registrants next heard from Frances Roden, Deputy Director General, IP Rights Division of IP Australia; Paula Adamson of IPAustralia; Steffen Gazely of the Intellectual Property Office of New Zealand; and Kok Wan Ng from the Intellectual PropertyOffice of Singapore (IPOS). All three IP offices have strategic plans in place looking toward the future. In addition to ensuringthat they are embracing new technologies and using those technologies to provide a better service, the IP offices are looking toplay a role in supporting and educating local businesses to grow their IP capabilities. This may mean that businesses are betterequipped to manage their own trademark portfolios directly with the IP offices. Trademark attorneys may need to broaden thevalue that they can offer to innovative companies rather than just relying on routine trademark filings. Amid the talk of revolutionary technological change, Mr. Ng of IPOS asked registrants to think back to 2008. What has changedsince then? Many things are in fact still the same. There are different paces of change. One thing which will not change is theneed for consumers to trust the brands with which they interact. A featured speaker was Christian Archambeau of the European Union Intellectual Property Office (EUIPO). Mr. Archambeau isthe newly appointed director of EUIPO and was performing his first speaking engagement in his new role. In keeping with thetheme of collaboration and partnership, Mr. Archambeau spoke of EUIPO’s work with IP Australia on new technology and bigdata, and its cooperative programs in Southeast Asia, India, and Latin America. EUIPO’s future plans include accelerating theuse of new technologies, supporting small and medium­sized enterprises (SMEs), and enhancing enforcement capabilities. Trademark Sessions In a session on regulatory restrictions that are being placed on brands, Mr. Sanz de Acedo emphasized that INTA’s role is topromote the rights of brand owners and consumer protection. The implementation of brand restrictions, such as plainpackaging of tobacco, which started in Australia, has spread to other countries. Now, restrictions are being considered beyondtobacco for products such as sugary drinks, high fat content foods, and breakfast cereals. It is not just brand owners who standto lose billions of dollars in brand value; there is a flow­on effect to the creative industries that design logos and packaging,

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leading Kylie McPherson (Diageo, Australia Ltd) to ask the important question whether the product label is the most effectiveway to educate consumers about health? In other sessions, registrants learned about taking enforcement action in South Korea, Japan, and China against the misuse oftrademarks as ad words or metatags. They also heard from representatives of two high­profile brands, Wendy P. Collie (Mars,Incorporated, Australia) and Huong Nguyen (Tiffany & Co, Australia), about the challenges of battling counterfeit goods onlineand offline, defense strategies and tools. Only a small percentage of products coming into a country are x­rayed. Working andpartnering with and training customs officials is a key part of any strategy. Beyond Trademarks Project Team Co­chairs Rebecca Thomas (Forever New Clothing Pty Ltd, Australia) and Ken Hamilton (Spruson & Ferguson,Australia) should be commended for leading a team which, collectively, put together a highly stimulating program. George Chan (Simmons and Simmons, China) led a session on establishing an online trading channel in China. The speakersgave first­hand, practical tips on how to avoid rookie mistakes and protect their IP. Registrants also heard from representatives of Telstra—Australia’s leading telecommunications provider—on balancing datacollection versus privacy rights on a global scale. Peter Chalk (Ashurst, Australia) interviewed Heather Forrest, Chair of ICANN’s Generic Names Supporting Organization(GNSO). The interview was wide­ranging, covering the history of the collection of and access to WHOIS data, and what theEuropean Union’s General Data Protection Regulation (GDPR) could mean for the future. Other sessions focused on the positive benefits to business in having an effective corporate social responsibility policy, themind blowing possibilities of 3D printing, and the tensions that arise among sponsors, athletes, and opportunistic marketersaround major sporting event. Importantly, given the warm welcome from the Gadigal people, registrants heard from Terri Janke (Janke and Company PtyLtd, Australia), Kerry Silcock (IP Australia, Australia), Karaitiana Tairu (Trade Marks Māori Advisory Committee, IntellectualProperty Office of New Zealand, New Zealand) and Marion Heathcote (Davies Collison Cave, Australia) on the treatment ofindigenous peoples’ IP, including how indigenous peoples might be given greater control over the commercial use of theirwords and images. Ms. Janke proposed that a self­determining indigenous authority should be established. This would givepeople a body with which to consult when considering the use of indigenous IP. Conclusion

In looking “beyond trademarks” registrants were given valuable industry insights into areas of business and law that may not bean everyday focus for trademark practitioners, but which intersect with the trademark world. Those who attended are nowbetter equipped to have conversations with clients and stakeholders on topics beyond trademarks. Following the 2018 Leadership Meeting, taking place in New Orleans, Louisiana, next week, the next and final of INTA’s

regional conferences in 2018 will take place in Dubai, United Arab Emirates, December 10 ­ 11. The 2018 Middle East and

Africa Conference: Innovation, Investment, and IP conference will involve two days of inspiration and robust discussion

about the opportunities and challenges of attracting investment in the Middle East and Africa, how innovation is re­shaping

the economy, and the importance of a thorough IP strategy for effective protection and enforcement in these regions. Learnmore and register here. Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association

11/1/2018 United States-Mexico-Canada Agreement Provides a Leg Up in Combating Counterfeiting

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United States­Mexico­Canada Agreement Provides a Leg Up inCombating Counterfeiting Karen MacDonald, Norton Rose Fulbright, Vancouver, Canada Anticounterfeiting—Canada Subcommittee

On October 1, 2018, the government of Canada announced a new freetrade agreement with the United States and Mexico to replace the NorthAmerican Free Trade Agreement (NAFTA), now known as the UnitedStates­Mexico­Canada Agreement (USMCA). The USMCA remains in itspreliminary stages and will still need to be tabled, debated, and ratified byParliament before Canada adopts the agreement. INTA is pleased to report that Article 20.J.6 of the USMCA states thatcustoms officials will be given authority to “initiate border measures” against“suspected counterfeit trademark goods” that are imported, destined forexport, in transit, or admitted into or exiting from a free trade zone or abonded warehouse. Canada has long lagged behind the United States and other countries inhaving effective provisions to combat against counterfeit goods. Canadahad been on the Office of the United States Trade Representative’s(USTR’s) “Priority” Watch List Special 301 Report on Intellectual Property Rights, for many years prior to 2013, when it cameoff the list for a few years with the passing of Canada’s Combating Counterfeit Products Act. More recently, in 2018, Canada’splacement on the “priority” watch list has been in part due to its lax laws and enforcement against counterfeit goods. Background

Canada made significant changes to its laws with the 2013 Combating Counterfeit Products Act legislation, but brand ownersand trademark practitioners have always seen such legislation as having significant holes that continue to put Canada at adisadvantage in being able to effectively combat counterfeiting. Since the passage of the 2013 legislation, INTA has continued to strongly advocate for additional changes to the legislationitself and to increasing the resources put towards anticounterfeiting (including with respect to detaining counterfeit goods at theborder). Statistics show detention of only 70 shipments of suspected counterfeit goods by the Canadian Border ServicesAgency (CBSA) between January 2014 and the fall of 2018. As a part of its efforts, INTA, working with the Canada Subcommittee of INTA’s Anticounterfeiting Committee, has sentnumerous delegations of brand owners, trademark professionals, and INTA representatives to meet with government officials inOttawa. The focus of these meetings has been educating the relevant government departments on the scope of the problemand need to take action, as well as seeking legislative changes in three primary areas:

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Providing a “simplified procedure” at the border to allow the CBSA to destroy counterfeit and pirated goods (the currentprocedures require a judicial determination unless the brand owner negotiates with the importer to relinquish the goods,assuming the brand owner can find the importer); Providing statutory damages for trademark infringement; and Allowing the CBSA to detain counterfeit and pirated goods in transit.

Improvements under the USMCA

The USMCA brings us part of the way there, requiring for ex officio initiation of border measures against counterfeit trademarkgoods in transit. This commitment in the USMCA will require Canada to amend its legislation and remove the exception to thedetainment of counterfeit goods in transit through Canada to other destinations (an exemption found in Section 51.03(2)(d) ofthe Trade­marks Act). Given that Canada is a significant port of entry for goods coming from China and other Asian countries,where counterfeit goods primarily originate, the addition of in­transit goods to Canada’s border regime is a significant win forbrand owners in the global fight against counterfeits. Other Possible Changes

Unfortunately, much of the other language of the USCMA that might have affected Canada’s legislative regime to assist incombating counterfeit goods, whether through civil or criminal enforcement or border measures, is permissive in nature and willnot likely require Canada to amend any of its existing legislation or enforcement policies.

For example, the USMCA speaks of “pre­established damages” “in anamount sufficient to constitute a deterrent to future infringements and tocompensate fully the brand owner for the harm caused by theinfringement.” It was hoped that such language might lead to theimplementation of statutory damages in the context of counterfeit goods inCanada, which would be of great assistance to brand owners, since thecalculation of damages in such cases is next to impossible. However, theprovisions provide for “one or more” (emphasis added) of the following: (a)pre­established damages, which shall be available on the election of therights holder; or (b) additional damages, with footnote indicating that“additional damages” “may include exemplary or punitive damages.”Statutory damages in Canada are likely still not yet on the table. TheCanadian civil legal system already allows for “additional damages” in thenature of exemplary and punitive damages, and Canada is probablyalready in compliance with the provisions of the USMCA. In relation to the border regime, the USMCA requires Canada to provide forex officio (i.e., by virtue of its position) initiation of border measures inrelation to suspected counterfeit goods. Currently, unless dealing withgoods which are of national security or public health concern—the latter ofwhich is given a very narrow interpretation—CBSA will generally onlydetain counterfeit goods if a brand owner has filed a Request forAssistance (RFA). It is hoped that the USMCA language will be read as

expanding the circumstances under which the CBSA will detain counterfeit goods, including situations where an RFA has notbeen filed. However, the provisions of the current Trade­marks Act (s. 51.03) and Customs Act (s. 101) already give CBSA thepower to detain counterfeit goods ex officio, and so it is likely that Canada is already in compliance with the requirements of theUSMCA. Other language in the USMCA may arguably provide support for a simplified procedure relating to the destruction of counterfeitgoods detained at the border, which would allow CBSA itself to make a determination and destroy counterfeit goods so that abrand owner wouldn’t have to bring a civil action and get a court order in order to obtain destruction of such goods. Specifically,the permissive language of the USMCA does not require that the determination that goods are counterfeit be made by a court,but contemplates such determination being made by law enforcement authorities, such as the CBSA. However, again, as theprovisions are permissive, Canada’s regime, which does require a judicial determination prior to destruction, is already likely incompliance with these provisions. Similarly, while the USMCA calls for criminal measures to be in place to address commercial­scale counterfeiting, Canadaalready has criminal provisions in place that likely meet the requirements of the USMCA. The issue on the criminal side inCanada has always been that law enforcement and crown prosecutors are very reluctant to lay charges or pursuecounterfeiting criminally, and nothing in the USMCA will require Canadian authorities to start using the criminal provisions that italready has in place. Next Steps

Initial discussions with governmental officials on each of these issues tends to support their position that Canada is in factalready in compliance with all of these provisions of the USMCA, and that, other than removing the “in transit” language, nofurther legislative changes in these areas are required.

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Nevertheless, the language of the USMCA would appear to suggest ongoing international pressure and support for Canada toupdate its legislation on all of these fronts. INTA looks forward to the upcoming amendments to the Trade­marks Act, and willcontinue to lobby for the possibility of an introduction of a simplified procedure regime in Canada (Art, 20.J.6, USMCA) and theestablishment of statutory damages to act as a deterrent to future counterfeiting, and fully compensating brand owners for theharm caused. Art. 20.J.4, USMCA. A copy of the text of Article 20 the USMCA as it currently stands can be found here. For more information on INTA’s anticounterfeiting activities, please contact INTA Anticounterfeiting Manager Maysa Razaviat mrazavi@inta.org or Anticounterfeiting Senior Coordinator Tiffany Pho at tpho@inta.org. Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association

11/1/2018 Regulations Clarify Role of New Agencies Following China's IP Institutional Reform

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November 1, 2018 Vol. 73 No. 19 Back to Bulletin Main Page

Regulations Clarify Role of New Agencies Following China's IPInstitutional Reform Bai Gang, Wanhuida Peksung IP Group, Beijing, China

Since the Chinese government announced its plan to reorganize variousgovernment agencies in March, foreign brand owners have been wonderinghow it will affect the intellectual property (IP) sector and practice. In August 2018, China’s State Intellectual Property Office (SIPO) wasrenamed the National Intellectual Property Administration (CNIPA). ShenChangyu, ex­SIPO Commissioner, was appointed as CNIPA Commissioner.Liu Junchen, ex­Vice Commissioner for the State Administration for Industryand Commerce (SAIC) was appointed as one of the six vice Commissionersof the CNIPA. At the same time, the activities of the SAIC (trademarks and competition);SIPO (patents); the General Administration of Quality Supervision, Inspectionand Quarantine (AQSIQ) (product quality); and food and drugs regulationwere regrouped under one central administration, the State Administration forMarket Regulation (SAMR). Zhang Mao, ex­Commissioner of the SAIC wasappointed as Commissioner of the SAMR. In September, two regulations were released by China’s State CommissionOffice for Public Sector Reform (SCOPSR). The SCOPSR is the executiveorgan of the Central Institutional Organization Commission, a governmental agency specializing in policymaking onadministrative reform, central reorganization plans, staffing, quotas, and administrative regulations for state institutions. In anutshell, the Commission is a super agency that decides on the constitution and running of other government agencies. On September 10, 2018, the “Regulations on the Function, Organisational Structure and Staffing of the State Administration forMarket Regulation” (SAMR Regulations) were released and came into force retroactively on July 30. On September 11, 2018,the “Regulations on the Function, Organisational Structure and Staffing of the National Intellectual Property Administration”(CNIPA Regulations) were released and came into force retroactively on August 1. SAMR Regulations

The SAMR Regulations outline the following IP rights (IPR)­related functions:

Market Regulation Enforcement: overseeing the integration and building of enforcement teams at local Administrationfor Market Regulation (AMR) offices; promoting integrated market supervision; and orchestrating major enforcementprograms;Anti­Monopoly Enforcement: coordinating and promoting the execution of competition policy; overseeing faircompetition probe; conducting anti­monopoly probe against concentration of operators, as well as anti­monopoly

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enforcement against monopoly agreement, abuse of market dominance position, and abuse of administrative power ineliminating or restricting competition; and coaching Chinese businesses in coping with overseas anti­monopoly suits;andAdministration of Market Order: supervising and regulating market transactions, Internet commodity trading and theservices thereof; organizing and overseeing the enforcement against pricing offenses or violations, unfair competition,illegitimate pyramid scheme or multi­level marketing, trademark or patent infringement, manufacturing or sale ofcounterfeits or shoddy goods; and supervising advertising industry and advertising activities.

These functions are expected to be fulfilled by the agency’s bureaus: the Enforcement Inspection Bureau, the Anti­MonopolyBureau, the Internet Transaction Administration Bureau, the Price Probe & Anti­Unfair Competition Bureau, and the AdvertisingAdministration Bureau. According to the regulation, the Enforcement Inspection Bureau is tasked to organize and oversee investigations andenforcement against major cases of national implication or which have trans­provincial/municipal geographical reaching. Brandowners are advised to approach the Bureau if they seek to initiate nationwide or trans­provincial/municipal enforcementactions. IPR enforcement against trademark or patent infringement, counterfeiting, and unfair competition also falls under thejurisdiction of the Enforcement Inspection Bureau, but given the top­down nature of the institutional reorganization, anationwide AMR network has not yet been formed. For instance, there is no Beijing AMR yet. This could be problematic. TheIPR enforcement function of the CNIPA and local IP offices (IPOs) has been de facto transferred to the SAMR and its localoffices. However, in the regions where there is no local AMR, brand owners will need to resort to the local IPO and the MarketSupervision and Administration Office (equivalent to the local Administration of Industry and Commerce) with respect tofunctions) to enforce their IPRs. The Anti­Monopoly Bureau, integrating the Anti­monopoly Bureau of the Ministry of Commerce (MOC), the Price Supervisionand Inspection and Anti­monopoly Bureau of the National Development and Reform Commission (NDRC), and the SAIC’s Anti­monopoly and Anti­unfair Competition Enforcement Bureau, will be the nation’s anti­monopoly watchdog, acting as theexecutive organ of the Anti­monopoly Committee of the State Council. CNIPA Regulations

The CNIPA Regulations outline, inter alia, the following functions, among others:

Drafting and Execution of National IPR Strategy: formulating major policies, initiatives, and developing plans forbuilding China into an IP powerhouse; and developing and executing administrative policies and mechanism to promoteIP innovation, protection, and utilization;IPR Protection: devising and implementing protection mechanisms for trademark, patent, geographical indications(GIs), and layout design of integrated circuits; drafting laws, regulations, and departmental rules, and overseeing theexecution thereof; and overseeing trademark and patent enforcement and supervising IP dispute resolution,enforcement aid, and dispute mediation at local levels; andExamination, Registration, and Administrative Adjudication of IPR: trademark registration, patent examination, andregistration of layout design of integrated circuits; re­examination, invalidation, and other administrative adjudication oftrademarks, patents, and layout design of integrated circuits; as well as the drafting and execution of integrated GIassessment mechanisms.

The CNIPA Regulations explicitly task the agency to shorten the IP registration cycle and to enhance examination quality andefficiency, as well as to focus on trademark bad faith filings and unproductive patent applications.

Given that the China Trademark Office (CTMO) and the Trademark Reviewand Adjudication Board (TRAB) have been incorporated into the CNIPA,the application and granting of trademarks, patents, layout designs ofintegrated circuits, and GIs is under the independent governance of theCNIPA. Most importantly, the documents address the division of labor between theSAMR and the CNIPA with respect to IPR enforcement: The SAMR organises and oversees trademark and patent enforcement.

The CNIPA coaches the trademark and patent enforcement practice, sets

criteria for the affirmation of trademark and patent rights and for the

ascertaining of trademark and patent infringement and oversees the

execution thereof, as well as sets parameters for the inspection,

authentication and other practices in trademark and patent enforcement. It seems that the CNIPA is expected to devise a set of criteria and practice

manuals on IP infringement, which the SAMR will be executing in its enforcement actions.

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The CNIPA Regulations also contain a brief and very vague mention of copyright, which reads, “Copyright administration shallbe in compliance with the regulations on the division of labor promulgated by the Central Committee of China Communist Partyand the State Council.” It remains to be seen whether the SCOPSR will release a similar document on the National CopyrightAdministration in the near future. INTA’s China Representative Office based in Shanghai represents the Association’s 269 members in China. Working in

collaboration with staff at INTA’s headquarters in New York City, the China Representative Office leads the Association’s policy,

membership, marketing, and communications initiatives in these jurisdictions. To learn more about INTA’s activities in China,

please contact INTA Representative Officer, Shanghai, Monica Su, at msu@inta.org. Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association

11/1/2018 Sign Up for “Sign Me Up!”

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November 1, 2018 Vol. 73 No. 19 Back to Bulletin Main Page

Sign Up for “Sign Me Up!”

Rosa Jimenez, Wyndham Destinations, Inc., Orlando, Florida, USA

Trademark Administrators Committee

INTA’s Trademark Administrators Committee has launched the “Sign Me Up!”

initiative to make all INTA members aware that every trademark professional in

your company, law firm, or organization is ensured his or her own login access to

INTA’s website. Your INTA membership provides unlimited logins to you and your

colleagues . . . and it’s free! Employees of an active INTA member organization

can get their own login by creating an account at www.inta.org. Simply click on“Login” located in the upper right corner of the homepage and, when prompted,

click on “create an account” (see screenshot below).

Reasons to sign up: There is so much value in having access to INTA’s usefullegal resources! For instance, with Country Guides you have one­stop access toinformation on trademark pre­filing, filing, prosecution, registration, maintenance,

and enforcement in more than 100 jurisdictions around the world. With an easy­to­

use format and topics organized by subject heading, a wealth of information is at

your fingertips. For a thorough introduction to trademark practice and procedure,

Trademark Administration is an online training tool that covers a plethora oftopics, such as the role and function of trademarks, selection and clearance,

registration and maintenance, litigation, international practice, ethics, and much

more. It is a formidable resource for administrators and young practitioners.

Are you new to trademarks or need help teaching someone thefundamentals? Get quick, clear answers to your questions by searchingTrademark Basics on INTA’s website. From an introduction to trademarks toadvanced topics, get access to ready­made PowerPoint presentations to explain

trademark basics to clients or colleagues outside the legal department.

Checklists, anyone? Checklists are one of the best ways to ensure that criticalconsiderations are not missed. INTA offers checklists on a variety of topics—from

cease and desist letters to trademark clearance searches and

investigations. Assuming responsibility for a trademark portfolio? There is a

checklist for that! Need to conduct a trademark audit, due diligence, or a trademark survey? These topics are covered as well.

Checklists can be accessed through Practitioners' Checklists.

Want to learn more? No problem! Answers to your basic questions about trademarks and other relevant topics, like protectionof Olympic trademarks, marking requirements, and information on how to preserve trademark rights, can be accessed through

INTA’s Fact Sheets. INTA’s website also provides webinars through E­Learning Programs, with easy access 24 hours a day,seven days a week.

Programs and events: When you have your own login, you will receive invites and notifications to INTA events that are

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targeted to your needs, like local forums, roundtables, the Annual Meeting, the

Trademark Administrators and Practitioners Meeting, and other special events and

conferences.

Sign­up today at www.inta.org. There is truly something for everyone: lawyers,paralegals, and other trademark professionals. Whether you’re a seasoned

professional or new to the practice, INTA is for everyone in your organization.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin,readers are urged to check independently on matters of specific concern or interest. Law &

Practice updates are published without comment from INTA except where it has taken an

official position.

© 2018 International Trademark Association

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November 1, 2018 Vol. 73 No. 19 Back to Bulletin Main Page

INTA Meets U.S. Copyright Office Officials to Discuss Key Issues

On September 11, INTA visited the U.S. Copyright Office in Washington,D.C., to meet with senior officials. Dale Cendali (Kirkland & Ellis, USA), chairof the Copyright Policy Subcommittee of INTA’s Copyright Committee; AxelNordemann (Boehmert & Boehmert, Germany), Copyright Committee chair;and Debbie Cohn, INTA Senior Director, Government Relations attended inperson and several Copyright Committee members, including Noel Cook(Owen, Wickersham & Erickson, P.C., USA), Copyright Committee vice­chair,attended remotely. The meeting focused on copyright registration of logos and other currenttopics of interest to the committee, as well as potential future collaboration onprograms and events. The discussion was extremely productive and servedto enhance INTA’s relationship and future work with the Copyright Officethrough the Copyright Committee. INTA Hosts USPTO Stakeholder Roundtable and Reception On September 17, INTA hosted a United States Patent and Trademark Office (USPTO) stakeholder roundtable at headquartersin Alexandria, Virginia. USPTO Trademark Commissioner Mary Boney Denison and her executive team discussed currentUSPTO trademark issues and initiatives, including holding an interactive dialogue with attendees and informal discussionfollowing the roundtable. INTA PAC Receptions On September 26, INTA’s Political Action Committee (INTA PAC) hosted an INTA PAC reception at the offices of Jones Day inWashington, D.C. INTA PAC Chair Michael Moore (Mattel, USA) kicked off the reception and focused on the goals of INTAPAC, which include providing crucial opportunities for INTA to advocate and represent brand owners’ interests in Congress.The INTA PAC reception then welcomed Congressman Hank Johnson (D­GA­4th), who spoke about the importance of strongintellectual property (IP) laws and the need for enhancing IP enforcement. On October 17, INTA PAC hosted a West Coast reception in Los Angeles at the downtown Los Angeles offices of MorganLewis, with special guest Congresswoman Judy Chu (D­CA­27th), a member of the Congressional Trademark Caucus and astrong advocate of IP rights. Representative Chu spoke about the importance of strong IP protections, especially in the creativeindustries, which are a crucial component of the California economy. U.S. Congressional Legislative Review and Elections Update On November 6, elections will be held in the United States for the entire House of Representatives and a portion of the U.S.Senate. The 115th session of Congress will conclude on January 3 and the 116th Congressional Session will begin later inJanuary with new committee leadership.

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Following INTA’s goals throughout this Congressional session, INTA has advocated for strong IP protections and adequatefunding for the USPTO. Last month, the Orrin G. Hatch­Bob Goodlatte Music Modernization Act (H.R. 1551) was signed intolaw, which creates a compulsory blanket licensing system for music recordings, updates the rate standards applicable to musiclicensing, provides copyright royalties to pre­1972 artists, and provides compensation to producers, mixers ,and soundengineers. Additionally, the Small Business Innovation Protection Act of 2017 (S. 791) was signed into law, which amends theSmall Business Act to expand IP education and training for small businesses. Both pieces of legislation will assist with creatingstronger IP enforcement frameworks and provide opportunities for expanded education and outreach initiatives. INTA’s Washington, D.C., Representative Office represents the Association’s 2,361 members in North America. Working in

collaboration with staff at INTA’s headquarters in New York City, the Washington, D.C., Representative Office leads the

Association’s policy, membership, marketing, and communications initiatives in Canada and the United States. To learn more

about INTA’s activities in the region, please contact INTA Senior Director of Government Relations Deborah Cohn,

at dcohn@inta.org. Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association

11/1/2018 The Good-Faith Prior Use Exception to Brazil’s First-to-File Rule: What Is a “Right of Precedence in Registration?”

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November 1, 2018 Vol. 73 No. 19 Back to Bulletin Main Page

The Good­Faith Prior Use Exception to Brazil’s First­to­File Rule:

What Is a “Right of Precedence in Registration?”

Walter W. Palmer, Pinheiro Palmer Advogados, Rio de Janeiro, Brazil INTA Bulletins Committee—Features Subcommittee

Brazil is a first­to­file trademark jurisdiction, meaning that, as a general rule, rights in a trademark belong to the first party to

apply for and successfully register the mark; however, there are a handful of exceptions to this general rule in the Brazilian

Industrial Property Law (Law No. 9.279, May 14, 1996) (the IP Law), including a “right of precedence in registration” based on

good­faith prior use of an unregistered trademark.

Specifically, Article 129, Paragraph 1, of the IP Law provides as follows:

Article 129—Ownership of a trademark shall be acquired by means of a registration validly issued in conformity with the provisions of this Law, and its exclusive use shall be assured to the owner . . . .

Paragraph 1—Any person who, in good faith, on the priority date or the filing date of the application, had been using for at least six months in Brazil an identical or similar mark to distinguish or certify identical, similar or related products or services, shall enjoy a right of precedence in registration.

Although a similar exception had been present in earlier 20th century

Brazilian trademark legislation, it was absent from the Industrial Property

Code (Law No. 5.772, Dec. 31, 1971), which had been in effect until the

current IP law entered into force in May 1996.

The policy motivation behind all iterations of the exception, past and

present, was to protect parties that had been using unregistered

trademarks in good faith prior to the date of a formal application for the

same or a similar mark by another party.

Semantics

On its face, Article 129, Paragraph 1, can only be successfully invoked by

parties that (1) had been using a trademark (2) in good faith (3) for at least

six months prior to the filing or priority date of a third party’s formal

application with the National Institute of Industrial Property (INPI), in which

the mark in question (4) is identical or similar to the third party’s mark and

(5) was used on products or services which are identical, similar, or related

to those covered by the third party’s application.

Significantly, the statutory language grants a “right of precedence in

registration,” rather than a “right to register.” This semantic distinction led to

a debate, both among legal commentators and in the courts, regarding

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when Article 129, Paragraph 1, could be invoked.

Understanding the debate requires familiarity with Brazilian trademark examination procedure. In Brazil, oppositions are filed

prior to substantive examination of trademark applications, and the examiners consider oppositions during their own

registrability analysis; however, the IP law also provides for post­grant substantive attacks on trademark registrations, including

both administrative (with INPI) and judicial (in federal court) nullification actions, which can be filed within 180 days and five

years of the date of registration of a mark, respectively. After its fifth anniversary, a trademark registration can no longer be

nullified except in instances of bad faith.

Given the timing of oppositions and the fact that Article 129, Paragraph 1, provides only a “right of precedence in registration,”

many legal commentators argued, and many courts found, that a party could only invoke this exception to the first­to­file rule

before the third party’s formal application issued to registration, i.e., by filing an opposition against the third party’s application

with INPI asserting its right to priority in registration and filing its own formal application for the mark. The rationale of this

school of thought, formally adopted by INPI itself, was that once the third party’s application had issued to registration, the

good­faith user’s “right of precedence in registration” ceased to exist and could no longer be invoked in either administrative or

judicial nullification actions against granted registrations. From around 2012 on, the rationale was routinely applied by the

Regional Federal Tribunal for the Second Region (TRF2), the first­level federal appellate court located in Rio de Janeiro, which

is the jurisdiction where the vast majority of judicial nullification actions are filed, since the INPI, a necessary party to the

actions, is located in Rio de Janeiro.

The opposing school of thought understood that where a party could satisfy the evidentiary requirements of Article 129,

Paragraph 1, its “right of precedence in registration” included the ability to nullify, administratively and/or judicially, a third

party’s registered trademark.

The Supreme Tribunal of Justice Weighs In

In December 2016, the Third Panel of the Supreme Tribunal of Justice (STJ), Brazil’s highest court for non­constitutional

matters, issued a unanimous decision in special appeal National Institute of Industrial Property v. Padrão Grafia Industrial eComercial Ltda, holding that Article 129, Paragraph 1, can be invoked for the first time in both administrative and judicialnullification actions against registered trademarks. Special Appeal No. 1.464.975 – PR (2014/0160468­6).

Seriprint Indústria e Comércio de Etiquetas Ltda filed an application with the INPI to register the composite mark PADRÃO

GRAFIA on May 29, 2000. The application was published for opposition purposes on August 22, 2000, and the 60­day

deadline passed without oppositions being filed, the mark eventually issuing to registration on August 8, 2006.

On February 5, 2007, Padrão Grafia Industrial e Comercial Ltda filed an administrative nullification action with the INPI against

the PADRÃO GRAFIA registration based on Article 129, Paragraph 1, alleging good­faith prior use of PADRÃO GRAFIA as a

trademark.

With the administrative nullification action still pending before the INPI on August 8, 2011, the deadline to file a judicial

nullification action, Padrão Grafia Industrial filed a judicial nullification action against the INPI and Serinpet Indústria that day,

seeking to nullify the PADRÃO GRAFIA registration based on Article 129, Paragraph 1. Padrão Grafia Industrial submitted

evidence of use of its mark in the course of its business from 1997 to 2000, as well as proof that it had adopted “Padrão Grafia”

as the distinguishing element of its commercial name in 1993. The INPI answered, arguing that Article 129, Paragraph 1, no

longer applied after a trademark had issued to registration, and that the court had no power to declare Seriprint Indústria’s

registration null since the administrative nullification action was still pending at the INPI.

The trial court agreed with Padrão Grafia Industrial and entered a final decision declaring Serinpet Indústria’s PADRÃO

GRAFIA registration null. The court found that Padrão Grafia Industrial had proven use of its mark prior to the date of Serinpet

Indústria’s application, and that coexistence of the two marks was impossible because the two companies operated in the

same market. The court rejected the INPI’s jurisdictional argument, noting that the Brazilian Constitution granted it authority to

decide the case.

The INPI appealed to the regional federal appellate court, arguing again that Article 129, Paragraph 1, cannot be invoked after

a mark has issued to registration, and that the courts have no authority to rule on the issue of nullification of a mark while an

administrative nullification action regarding the same mark is still pending at the INPI. In its decision on the appeal, the

appellate court summarily adopted the trial court’s reasoning, upheld the sentence, and rejected the INPI’s appeal.

The INPI then appealed to the STJ, arguing that the PADRÃO GRAFIA registration could not be judicially nullified because it

had been legally granted to Seriprint Indústria, that the “right of precedence in registration” had to be asserted by a good­faith

prior user before the third party’s trademark issued to registration, and that it had exclusive jurisdiction to decide whether or not

the PADRÃO GRAFIA registration could be nullified based on Article 129, Paragraph 1.

After noting that three different panels of the STJ had already issued decisions between 2014 and 2016 finding that it was

possible to judicially nullify trademark registrations based on Article 129, Paragraph 1, the Reporting Justice, Minister Nancy

Andrighi, cited the fact that Article 5, item XXXV, of the Brazilian Federal Constitution guarantees access to the courts to

defend individual rights which have been violated. After summarizing the first­to­file general rule and the good­faith prior use

exception, the Minister then wrote:

11/1/2018 The Good-Faith Prior Use Exception to Brazil’s First-to-File Rule: What Is a “Right of Precedence in Registration?”

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Thus, it is understood that the IPL expressly protects he who has been regularly using a mark [which is the] object of athird party’s trademark application, guaranteeing to him, so long as certain requirements are observed, the right to register[the mark]. It should be noted that, if this right of precedence were invoked as an opposition against a trademark application—anadministrative attack—the good­faith prior user must observe the deadlines, procedures and requirements of the IPL, aboveall [filing its own application for its mark].

However, if the interested party comes to assert this right after registration [of the third party’s mark], it can do so bymeans of an administrative nullification action (Articles 168 to 172 of the IPL [outlining procedures for administrativenullification actions]) or opt for the judicial route and file a judicial nullification action (Articles 173 to 175 of the IPL [outliningprocedures for judicial nullification actions]).

The Minister then noted that Padrão Grafia Industrial had filed the lawsuit

because the INPI was taking so long to enforce its “right of precedence in

registration” at the administrative level, that both the trial and lower

appellate courts had found clear evidence that Padrão Grafia Industrial had

been using PADRÃO GRAFIA as a commercial name and trademark for

years prior to Seriprint Indústria’s May 2000 trademark application, and that

the trial court had concluded that coexistence of the two marks was

unviable because both companies operated in the same market segment.

In closing, Minister Andrighi stated:

In light of this, therefore, established by the lower court judges—sovereign in their examination of the evidence —that [Padrão GrafiaIndustrial], in good faith, had been using the mark to designate an identicalor similar product, more than six months before the trademarkapplication was filed, requires [the rejection of the INPI’s appeal].

Despite Brazil being a civil law jurisdiction, the country’s most recent Civil

Procedure Code, which went into effect in 2016, requires judges to either

follow “jurisprudence or precedent” cited by the parties or explain in their

decisions why the precedents can be distinguished or should not be

followed.

An informal review shows that between December 2016 and September

2017, only one federal trial court, located in Rio de Janeiro, found that the Padrão Grafia decision was precedent to be followedand allowed a party to assert Article 129, Paragraph 1, for the first time in a judicial nullification action. During the same period,

the TRF2 issued nine appellate decisions which continued to apply its rule that the claim was only available if the party had

filed an opposition with the INPI.

In this scenario, the Third Panel of the STJ returned to the issue in September 2017 in another unanimous decision, this time in

special appeal Chocolates Franz Indústria e Comércio Ltda ME v. National Institute of Industrial Property, expressly stating thatthe TRF2’s continued refusal to allow claims based on Article 129, Paragraph 1, when the party had not filed an opposition at

the administrative level was “not in line with the jurisprudence of this Court.” Special Appeal No. 1.673.450 – RJ

(2017/0055508­4).

Chocolates Franz filed its judicial nullification action against the INPI and JFC Franz Alimentos Ltda in federal court in Rio de

Janeiro seeking to nullify JFC Franz’s two composite mark registrations for FRANZ ALIMENTOS covering “meats, poultry and

eggs for consumption” in National Class 29.10/20 and related commercial services based on its commercial name rights and its

good­faith prior use of FRANZ in relation to “the manufacture of chocolates, sweets, candies, and confectionery in general”

since 1995, years before JFC Franz filed its applications in 1997. Losing at the trial court level, Chocolates Franz appealed to

the TRF2, which, in a 2013 opinion, upheld the trial court’s decision, summarily dismissing Franz Chocolate’s good­faith prior

use claim because the company had not filed oppositions against the FRANZ ALIMENTOS applications.

With Reporting Justice Minister Nancy Andrighi again writing for the court, the Third Panel upheld the rejection of Chocolates

Franz’s request to nullify the FRANZ ALIMENTOS registrations. Nonetheless, Minister Andrighi took the opportunity to make

clear that the STJ had “already recognized the possibility of the right to precedence [based on good­faith prior use] to be

exercised after the mark has issued to registration, whether before the INPI [an administrative nullification action] or by the

judicial route [a judicial nullification action]” and, as mentioned, inform the TRF2 that its decision was “not in line with [that]

jurisprudence.” Reminding that the court’s concern was the constitutional right to access justice, Minister Andrighi clarified that:

. . . the fact that the system adopted by the Brazilian judicial order is attributive of the right, in which the property andexclusive use [of a trademark] are acquired only by registration, does not mean that the exception to this rule—the right toprecedence in registration—must suffer excessive restrictions and limitations which, in the ultimate analysis, make the useof the institution unviable.

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Thus, the interpretation which must be made of Art. 129, paragraph 1 , . . . cannot be understood to be a restriction onthe means for the exercise of the right, impeding the earlier good­faith user from seeking the Judicial Power in the face ofharm or threat to its right. The rule is exceptional only because it modifies the logic that the right is granted to the owner by the INPI, but notbecause it only can be exercised by this or that route, such that the grounds adopted in the appellate decision under reviewto negate the appellant’s right to precedence cannot survive.

Minister Andrighi made clear, however, that “Art. 129, paragraph 1, . . . must be systematically interpreted, taking into

consideration, above all,” whether there is an actual conflict between the two competing marks:

If, by chance, coexistence [of the marks] is possible, there is no reason for one to have precedence over the other, in thateach can occupy its own space. If, however, coexistence is not possible and only one can occupy a determined space, whohas precedence must be evaluated.

Since the record showed that Chocolates Franz used its mark in relation to “chocolates, sweets, and the like” while JFC Franz

used its mark in relation to “meat, derivatives and the sale of goods,” the court found that “principle of specialty of trademarks”

applied and that the two companies’ marks could coexist without causing consumer confusion or undue association. For this

reason, there was no reason to analyze whether Chocolates Franz had a right to precedence in registration under Article 129,

Paragraph 1.

An informal review shows that since Chocolates Franz was handed down in September 2017, one federal appellate court, theRegional Federal Tribunal for the Fourth Region, and four federal trial courts, all located in Rio de Janeiro, have found that

Padrão Grafia and/or Chocolates Franz were precedent to be followed and allowed a party to assert Article 129, Paragraph 1,for the first time in a judicial nullification action. During the same period, the TRF2 issued one decision which, without any

mention of either Padrão Grafia or Chocolates Franz, applied its rule that the claim was only available if the party had filed anopposition with the INPI; two decisions which do not expressly mention Padrão Grafia or Chocolates Franz, but stated thateven if it were possible to assert Art. 129, Paragraph 1, for the first time in a judicial nullification action, there were no grounds

for nullifying the trademark registrations which were the objects of the lawsuits; and three decisions which acknowledge the

existence of Padrão Grafia or Chocolates Franz and the STJ’s position regarding Art. 129, Paragraph 1, but distinguished thecases at issue. Perhaps significantly, in the most recent of these decisions issued on August 9, 2018, the TRF2 finally

expressly stated that Chocolates Franz is “precedent.”

The Padrão Grafia and Chocolates Franz decisions make clear that, rather than being available only during oppositions againstpending trademark applications, the “right of precedence in registration” can be asserted by a good­faith prior user for the first

time in a judicial nullification action against a granted registration in court and in an administrative nullification action against a

granted registration at the INPI; however, the decisions also make clear that the party seeking the “right of precedence in

registration” must show that it actually used the sign in question as a trademark for at least the required six months before the

priority date of the third party’s registration, and, further, that there is actually a possibility that consumers will be confused or

unduly associate the two marks if they are allowed to coexist.

While the TRF2 has shown resistance to following Padrão Grafia and Chocolates Franz, and may continue to distinguish anddecline to apply the precedents when it can, at least one other regional federal tribunal has already followed Padrão Grafia,and federal trial courts in Rio de Janeiro are following the decision with increasing frequency.

Though the Padrão Grafia and Chocolates Franz decisions broaden the protection afforded to good­faith prior users ofunregistered trademarks in Brazil, they do create a degree of legal uncertainty during the first five years of a trademark

registration’s life in Brazil before the statute of limitations runs on judicial nullification actions (lack of legal certainty was one of

the main policy reasons behind the TRF2’s adoption of the opposite stance). For this reason, as part of clearing their marks in

Brazil for both registration and use, trademark applicants should consider taking steps to identify good­faith prior users of

identical or similar unregistered marks in relation to identical, similar, or related goods or services.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an

official position.

© 2018 International Trademark Association

11/1/2018 BOTSWANA: Companies and Intellectual Property Authority Relocated

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BOTSWANA: Companies and Intellectual Property Authority

Relocated

Contributor: Dineo Modibedi, Spoor & Fisher, Centurion, South Africa

Verifier: Mark McKee, Armstrongs, Gaborone, Botswana

The Botswana Companies and Intellectual Property Authority (CIPA) moved to a new location on September 28, 2018, and

became fully operational on October 29, 2018.

A notice was circulated by CIPA on September 24, 2018, advising users of the relocation and requesting that they use CIPA’s

“outstations” located in Francistown, Serowe, and Muan during this period.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an

official position.

© 2018 International Trademark Association

11/1/2018 ARGENTINA: Court Awards Substantial Damages for Unfair Use of Trademark as Keyword

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ARGENTINA: Court Awards Substantial Damages for Unfair Use

of Trademark as Keyword

Contributor: Bernard Malone, Baker & McKenzie, Buenos Aires, Argentina

Verifier: Magdalena Barros, Jarry IP, Santiago, Chile

Mr. Malone and Ms. Barros are members of the INTA Bulletins Law & Practice—Latin America Subcommittee.

The use of a third party’s trademarks as “keywords” in search engines was ruled an undue use of the trademarks and an act of

unfair competition by Chamber III of the Federal Court of Appeals for the City of Buenos Aires. Organization Veraz v. Open

Discovery S.A./Cease of use action, Docket No. 1789/09, May 4, 2018.

In this case, the defendant, Open Discovery S.A., used the trademarks VERAZ and ORGANIZACIÓN VERAZ, owned by the

plaintiff, as keywords in Internet search engines. As a result, the defendant’s webpage appeared in Internet users’ search

results for these keywords.

The court of first instance ruled against Open Discovery and ordered the company to cease use of VERAZ and

ORGANIZACIÓN VERAZ on the basis that the trademarks were well known in the field in which they were used. (Organization

Veraz provides commercial reports on physical persons and companies, mostly used by credit institutions such as banks). The

court added that a strict standard should be applied with respect to well­known trademarks to avoid a third party taking

advantage of a particular mark’s prestige. The court also applied the principles of loyalty and good faith, which help to avoid

consumer confusion. The court of appeals confirmed the lower court’s ruling.

In its decision, the court of appeals took into consideration (i) similar cases in foreign countries (USA/Europe); (ii) the distinctive

character and the renown of the plaintiff’s trademark; and (iii) the act of unfair competition by a direct competitor.

The court of appeals also increased the damages awarded by the court of first instance. For a number of years, the courts

were reluctant to award damages in trademark cases due to the difficulty in proving the damage caused; however, on the basis

of the Argentine Procedural Code, in the 1990s the courts began adopting the position that the use of a third party’s trademarks

on its own can cause damage, and that if there is difficulty in proving that damage, the courts could establish it based on the

circumstances of the particular case. Thus, the courts started awarding damages, mostly nominal.

In this case, however, the court of first instance had awarded damages for ARS 35,000 (about USD 920), but the court of

appeals awarded damages in the amount of ARS 3,336,468 (about USD 87,800). This represents a substantial increase, both

in this case and also as compared to the amounts typically awarded by the courts to date. We must now see if the trend is

continued by other courts.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on

matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an

official position.

© 2018 International Trademark Association

11/1/2018 ARGENTINA: Court Awards Substantial Damages for Unfair Use of Trademark as Keyword

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11/1/2018 CANADA: Construing Trademark Use in the Digital Age: Liberal Interpretation of Use with Respect to Retail Services

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CANADA: Construing Trademark Use in the Digital Age: Liberal

Interpretation of Use with Respect to Retail Services

Contributor: Jacky Wong, Borden Ladner Gervais, LLP, Vancouver, Canada

Verifier: Jamie­Lynn Kraft, Smart & Biggar, Ottawa, Canada

In the context of e­commerce, what must an online retailer do to satisfy the trademark use requirement for “retail store

services” in Canada? The Federal Court of Canada considered this issue in the July 25, 2018, decision of Dollar GeneralCorporation v. 2900319 Canada Inc., 2018 FC 778.

In Canada, the statutory definition provides that a trademark is deemed to be used with respect to services if the mark is used

or displayed in the performance or advertising of those services. In a traditional brick­and­mortar retail store setting, this means

that the retail store must be located in Canada. It has also been held that purchases made from a retail store remotely must be

delivered to Canada for retail store services to be provided in Canada. Boutique Limité Inc v. Canada (Registrar of Trade­Marks), [1998] FCJ No. 1419 (CA) (WL).

In Dollar General, the Federal Court overturned the Registrar’s decision to expunge a trademark registration in association with“retail variety store services” on the basis that the trademark was not used in association with retail store services in Canada

since the mark owner did not directly ship the products into Canada. While the mark owner operated an e­commerce website

that allowed customers in Canada to “review product details, pricing and availability, and then make online purchases of

products by using a credit card,” customers were required to have their products shipped to a U.S. address or delivered using a

third­party shipping agent to receive their purchases.

In overturning the Registrar’s decision and finding that there was use of the mark, the Federal Court upheld previous case law

that the word “services” should be liberally construed. Kraft Ltd v. Registrar of Trade­marks, [1984] 2 FC 874 (TD) (WL). The

Court also found that what is necessary is some degree of interactivity between the service provider and the customer, and

with the hypothetical Canadian customer in particular. Lapointe Rosenstein LLP v. West Seal Inc, 2012 TMOB 14.

With this in mind, the Court looked at the mark owner’s dealings and found that it was easy for Canadians to purchase

products from the owner’s website and have those products delivered to their door in a matter of days. The Court further

commented that use of a third­party delivery service would not, in and of itself, result in non­use of retail services in Canada.

This case demonstrates Canadian courts’ willingness to adopt a liberal approach to trademark use, allowing a flexible

interpretation in the e­commerce age.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to checkindependently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA

except where it has taken an official position.

© 2018 International Trademark Association

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11/1/2018 EL SALVADOR: “Pupusa” Becomes El Salvador’s First Protected Geographical Indication

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EL SALVADOR: “Pupusa” Becomes El Salvador’s First Protected

Geographical Indication

Contributor: Jorge Camilo Trigueros, Universidad Evangelica/Ministry of Economics, San Salvador, El Salvador

Verifier: Danilo Rodríguez Villamil, Espino Nieto & Asociados, San Salvador, El Salvador INTA Bulletins Law & Practice—Latin America Subcommittee

On May 7, 2018, El Salvador announced its first geographical indication

(GI) for “Pupusa de Arroz de Olocuilta,” protecting the country’s most

internationally recognized Salvadoran dish, “pupusas.”

Since 2014, El Salvador has invested in the development of national

products that are identified by certain quality standards and reputation. The

country launched its first National Policy of Intellectual Property in 2014,

which has led to the establishment of nine designations of origin (DO) and

the GI for pupusas.

The possibility of registering a DO was first introduced along with the

trademark law reforms in 2013. Such amendments were made within the

framework of the negotiation and approval of the Central America and

European Union (EU) Association Agreement. Based on this new

agreement with the EU, Central American countries implemented an

innovation regulation to effectively ensure the protection of this type of intellectual property (IP).

Prior to the 2013 reforms and the National Policy of 2014, El Salvador had only registered one DO: Cafè Apaneca­Ilamatepec

(in 2010). From 2015 to the present, another 10 registrations (nine DOs and one GI) have been granted, five of them related to

coffee production (across the country); one for an alcoholic beverage known as “Chaparro” (based on fermented national

products such as corn and brown sugar); one for a national fruit known as the “Jocote Baron Rojo” (sweet small red fruit used

for culinary purposes); an edible flower named “loroco” (with a great and distinctive taste used for culinary purposes); and the

well­known pupusa.

The pupusa is the most traditional dish in Salvadoran culture. It consists of a stuffed tortilla, usually with cheese, pork, and red

beans. It can be made from any type of dough, but the protection provided by the GI is limited to those made from rice.

The GI “Pupusa de Arroz de Olocuilta” has been granted due to the renown and fame that Olocuilta (a city located in the

central zone of El Salvador) has earned. The city has a population of 30,000 inhabitants. Its name means “the city of

measuring worms,” which it earned when a plague destroyed all of the corn plantations several hundred years ago, forcing

people to consume rice instead of corn. For this reason, almost 60 percent of the Olocuilta’s population is directly or indirectly

related to the production of rice­based pupusas.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an

11/1/2018 EL SALVADOR: “Pupusa” Becomes El Salvador’s First Protected Geographical Indication

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official position.

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11/1/2018 INDIA: Supreme Court Rules Evidence of Fraud and State of Mind Not Relevant in Passing-Off Action

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INDIA: Supreme Court Rules Evidence of Fraud and State ofMind Not Relevant in Passing­Off Action Contributor: Mohan Dewan, R K Dewan & Co., Mumbai, India INTA Bulletins Law and Practice—Asia­Pacific Subcommittee Verifier: Sushant Singh, Advocate, Supreme Court of India & Delhi High Court, New Delhi, India

On September 12, 2018, in Wockhardt Limited v. Torrent Pharmaceuticals Ltd., Civil Appeal No. 9844 2018, the SupremeCourt of India held that, in a passing­off action, it is not necessary to provide evidence of fraud or the defendant’s state of mind. Wockhardt Limited and Torrent Pharmaceuticals Ltd. are pharmaceutical companies headquartered in India. TorrentPharmaceutical Ltd. is the proprietor of the mark CHYMORAL FORTE. The mark has been registered and continuously in usesince 1962. The trademark is derived from the drug’s active ingredient, CHYMOTRYPSIN. For the same active ingredient,Wockhardt Limited adopted the mark CHYMTRAL FORTE. Torrent filed suit at the Bombay High Court against Wockhardt Limited for passing off. The trial court dismissed TorrentPharmaceutical’s case on the grounds that, on the date of filing of the suit, nearly six years had lapsed, the plaintiff had notpresented any evidence for actual passing off or fraud, and, over the period of six years, both the marks had co­existed in themarket. The trial judge also concluded that since the prefix “chym” was adopted from the name of the active ingredient, therewas no intention to deceive, as the element of mens rea was missing. The Appellate Court at Mumbai reversed the trial court’s judgment and relied on the three­way test for passing off laid down byLord Oliver in Reckitt & Colman Ltd v Borden Inc.: (i) establishment of reputation, i.e., if the goods or services have acquiredreputation in the marketplace and are distinguishable from those of competitors; (ii) misrepresentation, i.e., the defendantmisrepresents itself in a manner that its goods/services are confused with those of the plaintiff; and (iii) injury/damage causedto the plaintiff as a result of the defendant’s activity. 1990 1 All E.R. 873 viz. The appellate court thus enjoined Wockhardt from using the mark CHYMTRAL FORTE. Wockhardt appealed to the SupremeCourt of India, which held that the test for passing off does not require the fraud to be proven for the purposes of inferringmisrepresentation. The misrepresentation can be innocent, though fraud may assist the court to arrive at the finding ofdishonesty. The Supreme Court therefore reaffirmed the precedent of the cases Laxmikant Patel v. Chetan Bhat Shah, 2002(3) SCC. 65 and S. Syed Mohideen v. Sulochana Bai, rendered in 2015. Both of these judgments dealt with the three­way testof passing off. Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association

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11/1/2018 JAPAN: New Fast-Track Examination System Applies Automatically to National Trademark Applications

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JAPAN: New Fast­Track Examination System AppliesAutomatically to National Trademark Applications Contributor: Tomohiro Nakamura, Konishi & Nakamura, Nagoya, Japan INTA Bulletins Law & Practice—Asia­Pacific Subcommittee Verifier: Ken Nakayama, Sugimira & Partners, Tokyo, Japan

Adding to an expedited examination system offered at the request of a trademark applicant (Expedited Examinations), theJapan Patent Office (JPO), on October 1, 2018, introduced a fast­track examination which automatically applies to trademarkapplications if they meet certain conditions (Fast­Track Examinations). The Fast­Track Examinations automatically apply to applications that meet all of the conditions set forth below: a. Designates, at the date of filing, goods and services using descriptions which are listed in the Guideline of Examinations, the Rules to Implement Trademark Act (both published by the JPO), or the International Classification of Goods and Services (a list of goods and services published by the World Intellectual Property Organization (WIPO)); b. Is not subject to any amendments of goods and services until an examiner has performed substantive examinations; c. Has an actual filing date of October 1, 2018, or later; d. Files direct with the JPO, not via an international application; and e. Seeks to register a traditional mark(s). The JPO does not require an extra government fee for Fast­Track Examination. Applicants should expect to receive a FirstNotice of Examination two months earlier than with the standard procedure, which typically takes eight months. The JPO willimplement the Fast­Track Examinations system on an experimental basis, with a view to running it routinely. The Expedited Examination option also remains available at an applicant’s request. If an application to register a trademarkfalls into one of the following categories, Expedited Examination may be requested: Type 1: The Trademark Requires Prima Facie Urgency Requirements: Test A. You or a licensee are using a trademark, or have almost completed preparations to use a trademark (i.e. use will beginwithin three months in Japan) in connection with some goods/services claimed in the application; and Test B. You or a licensee require “prima facie urgency”to register the trademark for some goods/services designated in anational application; and Test C. You can prove prima facie urgency. For instance:

A third party is using or preparing identical or similar trademarks;

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You or a licensee have received a cease and desist letter from a third party in connection with a trademark filed inJapan; orA third party approaches you to obtain a license for a trademark filed in Japan.

Type 2: Claiming Exact Goods/Services in Use or in Preparation for Use Requirements: Test A. You or a licensee are using a trademark, or have almost completed preparations to use a trademark (i.e., use will beginwithin three months in Japan); and Test B. You designate goods/services in a national application which are substantially or literally the same as those used orprepared for use in Japan. Type 3: Specifications Claimed Are Identical to National Specification Guidelines: Test A. You or a licensee are using a trademark, or have almost completed preparations to use a trademark, (i.e., use willbegin within three months in Japan) in connection with some goods/services claimed in the application; and Test B. Your designated goods/services are identical to the descriptions which are illustrated in the Guideline of Examinations,the Rules to Implement Trademark Act, or the International Classification of Goods and Services. The Expedited Examination process, like the Fast­Track Examinations, apply to national applications filed directly with the JPO,and for registrations of traditional marks. Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association

11/1/2018 SINGAPORE: IP Office Emphasizes Understanding of Average Consumer in Assessing Similarity

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SINGAPORE: IP Office Emphasizes Understanding of Average

Consumer in Assessing Similarity

Contributor: Denise Mirandah, Mirandah Asia, Singapore INTA Bulletins Law & Practice—Asia­Pacific Subcommittee

Verifier: Ravinran Kumaran, Relianze Law Corporation, Singapore

In Monster Energy Company v. NBA Properties, Inc. [Sept. 5, 2018] SGIPOS 16, Monster (the opponent) unsuccessfullyopposed registration of NBA’s (the applicant’s) composite mark comprising a circular device bearing the words TORONTO

RAPTORS at the Intellectual Property Office of Singapore (IPOS).

The opponent relied on its claw device and composite device against NBA’s application.

The opponent sought to establish that the applicant’s mark was confusingly similar to its registered trademarks such that it

would result in consumer confusion; that the applicant’s mark was confusingly similar to its “well­known” trademarks; and that

use of the applicant’s mark would be liable to be prevented by the tort of passing­off. Success on any of the above grounds

required the establishment of similarity between at least one of the opponent’s earlier registered marks and the applicant’s

mark.

To determine similarity, the primary consideration was to identify the dominant element of each mark. Once established, the

marks could then be compared in their entirety to determine whether there was visual, aural, or conceptual similarity. For both

the opponent’s marks, the IPOS decided that the claw device represented the dominant element. On the other hand, the IPOS

concluded that there was equal dominance between the textual element and the graphical element of the applicant’s composite

mark. With this in mind, the IP adjudicator compared the respective marks and concluded that there was no similarity between

the applicant’s mark and the opponent’s marks. Accordingly, none of the grounds of opposition was sustained.

Interestingly, the IP adjudicator also addressed how an average consumer would understand or recognize a mark based on

common general knowledge. The adjudicator took the view that relevant surrounding circumstances should be taken into

consideration; namely, that the extent of knowledge of the average consumer and how this may influence his or her

understanding or interpretation of certain elements of a composite mark ought to be relevant in assessing mark similarity.

Following this, the adjudicator considered, inter alia, that the average Singaporean consumer is likely to recognize the wordsTORONTO RAPTORS to reference a professional sports team and that this may affect the assessment of visual, aural, and

conceptual similarity. Accordingly, parties should be allowed to adduce evidence relevant toward establishing the general

knowledge to be expected of the average consumer.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an

official position.

11/1/2018 SINGAPORE: IP Office Emphasizes Understanding of Average Consumer in Assessing Similarity

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11/1/2018 UNITED STATES: Specific Personal Jurisdiction Allowed Against German Corporation for Trademark Infringement

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November 1, 2018 Vol. 73 No. 19 Back to Bulletin Main Page

UNITED STATES: Specific Personal Jurisdiction Allowed AgainstGerman Corporation for Trademark Infringement Contributor: Allison Z. Gifford, Stradley, Ronon, Stevens & Young, LLP, Malvern, Pennsylvania, USA Verifier: Michael Rafter, Kilpatrick Townsend & Stockton, Atlanta, Georgia, USA Ms. Gifford and Mr. Rafter serve on the INTA Bulletins Law & Practice—North America Subcommittee.

On September 13, 2018, the U.S. Court of Appeals for the First Circuit affirmed “the thoughtful holding” of the Maine DistrictCourt allowing trademark infringement claims against a German corporation to proceed in federal court. Plixer International Inc.v. Scrutinizer GmbH, Case No. 18­1195 (1st Cir. 2018). Plaintiff Plixer, an American company, sued German company Scrutinizer GmbH for trademark infringement, alleginginfringement of Plixer’s registered “Scrutinizer” trademark for computer software and hardware. Scrutinizer runs a “self­serviceplatform,” which allows customers to build better software. Plixer’s one basis for personal jurisdiction over Scrutinizer was itsnationwide contacts with the United States, which supported specific jurisdiction under Federal Rule of Civil Procedure 4(k)(2).The district court held that Plixer had made a prima facie showing of personal jurisdiction based on Scrutinizer’s operation of “ahighly interactive website that sold its cloud­based services directly through the website [ . . .] open to business throughout theworld” and “recurrent business from the United States in a substantial amount.” Two of the three elements under Federal Rule of Civil Procedure 4(k)(2) were met—that the cause of action must arise underfederal law and that the defendant must not be subject to personal jurisdiction of any state court of general jurisdiction. Thethird element was in dispute—the federal court’s exercise of personal jurisdiction comporting with due process. Plixer bore the burden of demonstrating that Scrutinizer had adequate contacts within the United States under the FifthAmendment Due Process Clause. Plixer proved that its claim related directly to Scrutinizer’s activities in the United States, thatScrutinizer’s forum contacts represented a purposeful availment of the privilege of conducting its business activities within theUnited States, and that the exercise of jurisdiction was reasonable. The First Circuit agreed, affirming the district court holding that the exercise of specific personal jurisdiction against a Germancorporation under the Federal Rules of Civil Procedure 4(k)(2) does not offend the Due Process Clause of the United StatesConstitution. The First Circuit also indicated that the Supreme Court “has not yet had the occasion to give clear guidance” onthis issue and it“deliberately avoid[s] creating any broad rules.” Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association

11/1/2018 UNITED STATES: Specific Personal Jurisdiction Allowed Against German Corporation for Trademark Infringement

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11/1/2018 ESWATINI: The Kingdom of Swaziland Is Now the Kingdom of Eswatini

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ESWATINI: The Kingdom of Swaziland Is Now the Kingdom ofEswatini Contributor: Dineo Modibedi, Spoor & Fisher, Centurion, South Africa Verifier: Qondile Magagula, Magagula & Hlophe, Mbabane, Kingdom of Eswatini

Swaziland, one of Africa’s smallest countries, has changed its name. On April 19, 2018, the monarch, King Mswati III, announced that the country would change its name from the Kingdom ofSwaziland to the Kingdom of Eswatini. The country is now known as the Kingdom of Eswatini. The decision was published in the official gazette, Legal Notice no. 80 of 2018, on May 11, 2018, which states that all referenceto the Kingdom of Swaziland in any written laws, international agreements, and legal documents shall be construed and read toreference the Kingdom of Eswatini. The Kingdom of Eswatini (formerly the Kingdom of Swaziland) is a member state of the World Intellectual PropertyOrganization (WIPO), a member of the Madrid Protocol, the Paris Convention, and the African Regional Intellectual PropertyOrganization (ARIPO) regional registration system. The Kingdom’s WIPO ST.3 County Code remains SZ following the namechange. Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently onmatters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken anofficial position. © 2018 International Trademark Association