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Tuesday, May 24, 2016 138th Annual Meeting, Orlando

Representatives from the EUIPOprovided registrants with aguide to the substantialchanges to EU trademark lawand practice that came intoforce in March in a Users

Meeting on Sunday.Speakers from the Office said that there

have been price reductions across the spec-trum of Office actions, including applica-tions, renewals and oppositions. An extrafee is now payable after the first class,bringing to an end the old regime of threeclasses for the price of one.

There are also changes to some formal-ities and examination procedures.Absolute grounds of refusal have beenexpanded to cover, among other things, thefunctionality prohibition and to specify suigeneris rights such as geographical indica-tions (GIs).

Another high-profile change is that thescope of goods and services in a trade-mark specification will be given its literalmeaning, following the IP Translatordecision. Article 28(8) of the amendedEU Trade Mark Regulation allows EUtrademark owners who applied beforeJune 22 2012 in respect of an entire classheading to file a declaration clarifyingthe goods and services they had intendedto protect. Affected owners have untilSeptember 23, 2016 to make a declara-tion. Further procedural changes and theremoval of the graphical representationrequirement will come into force inOctober 2017.

The EUIPO is also conducting qualityassurance reviews on various aspects of itswork, particularly its decisions. There isnow an ex-ante product quality audit bysenior examiners and ex-post quality

checks carried out by senior examiners ondecisions. External stakeholders are invit-ed to help with this. The Office also sharedwith the audience its HarmonizedDatabase, a multilingual database of over

75,000 descriptions of goods and servicesin 23 languages.

The EUIPO provided five practical tips onhow to work through the already implement-ed changes. They were: (a) With the new feeregime in mind, apply for the trademarks youneed; (b) you now have the option to chooseif you want receive EU search report and sur-veillance letters; (c) beware of the sui generisrights such as GIs, check the database; (d)take note of the new requirement for proof ofuse; (e) be clear with your class headings andwhether an Article 28 declaration is appro-priate for you: the Office’s guidelines areavailable on its website.

EUIPO provides update on trademark reforms

In an interview with the INTA DailyNews, Andrea Di Carlo encouraged EUtrademark owners to try theEnforcement Database (EDB), a freedatabase available to Customs, Europoland national police forces. “The numberof companies using it has increased toover 300,” he said. The Office is holdingan EDB Forum from June 28 to 29,where brand owners can meet enforce-ment authorities.

Di Carlo also said he is pleased withthe response so far to the launch of theDesignEuropa Awards, which recognizesthose who use RCDs. The deadline fornominations is July 15. Finalists will beannounced on October 15, and the cere-

mony will take place on November 30,2016 in Milan.

Di Carlo also During the session, DiCarlo presented a snapshot of theObservatory’s latest sectoral research,which found that the cost of counterfeit-ing in the EU is €62.6 billion in lost sales,670,000 jobs and €11.5 billion in lost gov-ernment revenues. The Office will beconducting and presenting further socio-economic impact studies, including inthe entertainment industry, in the com-ing months. EUIPO is also supportingEuropol with its IPR Crime Centre, whichis expected to be launched in July.

The Office is working on variouscooperation projects under its Vision

2020 Strategic Plan. Di Carlo told theINTA Daily News that the plan is expect-ed to be endorsed by the ManagementBoard next week.

Otaola said the Office saw a rush ofgoods and services declarations in the firsttwo weeks following entry into force ofArticle 28(8) but the total number receivedso far is in the hundreds. He added: “Thechallenge is that we are seeing deficienciesin some declarations. You may need to useother procedures as an Article 28 declara-tion may not be the most appropriate foryou.” Otaola urged brand owners and theirrepresentatives to carefully study theOffice’s guidelines and President’sCommunication on making declarations.

Interview: Deputy Director of the EU Observatory Andrea Di Carlo and José Antonio GarridoOtaola of the EUIPO Operations Department

Susan Kawaguchi ofFacebook Inc. in the U.S.was the 10,000thregistrant at the 2016INTA Annual Meeting. Shewas congratulated byPresident Ronald van Tuijland INTA CEO EtienneSanz de Acedo on Monday,when she received hercelebratory ribbon. As ofMonday, 10,114 people hadregistered for the meeting,making it the largest ever.Yesterday’s Latin America and Africa Receptions. More regional receptions on page 6.

The opportunities and dangers ofbrands interacting on socialmedia were discussed in yester-day’s session “Beyond NativeAdvertising: The Line BetweenSocial Media Posts and

Advertising.”“We are seeing see interactions with

brands online in a way we didn’t seebefore,” said moderator Stephen Coates ofTwitter in the U.S.

Brands are also using social influencersmuch more than ever before. They arekeen to reach the millions of followers ofcelebrities’ social media accounts (thisincludes pets – a cat called Nala has 2.8million followers on Instagram, for exam-ple). “Brand managers are getting moresophisticated as well as the consumers,”said Ann Chen of Abbott Laboratories inthe U.S.

Chen said it is vital to be upfront aboutwhat has been paid for: “Some people say:‘I don’t want influencers to disclose, I wantit to look natural.’ But you did give themsomething.”

The Federal Trade Commission in

December issued a guide on native adver-tising, which it defined as “advertisingand promotional messages integratedinto and presented as non-commercialcontent.”

Under FTC rules, an influencer mustdisclose if they have received compensa-tion to promote a brand on social media.“The advertiser has to make sure theinfluencer is doing that,” said Chen. “Theburden is on the advertiser, not the influ-encer.” Brands must make sure a post isamended if it is not correct. Chen suggest-ed payment should be withheld until theinfluencer has met the terms of their con-tract, which should clearly specify whatthe celebrity’s responsibilities are. Chenadded that the rules also apply to agenciesand vendors, so they should be closelymonitored as well.

Barry Benjamin of Kilpatrick Townsend& Stockton in the U.S. said that it is toughto train young people within companies andagencies to understand what must be dis-closed and why. He said there was previous-ly “huge resistance” to including #ad in anypost, but that this had recently changed.

“It was like the switch was flipped,”Benjamin said. “Pretty much all influ-encers now include #ad and nobody cares.So when you are talking to young people,just tell them nobody cares. It’s a newworld.”

One recent example where disclosurewas not given came in March when Lord& Taylor settled with the FTC for pay-ing 50 online fashion influencers to postINSTAGRAM pictures of themselveswearing the same paisley dress, butfailed to disclose they had given eachinfluencer the dress, as well as thousandsof dollars, in exchange for their endorse-ment. This is being used as a cautionarytale for brands in training for socialmedia.

Chen noted that pharmaceutical com-panies have particular challenges, withregulations requiring they provide fairbalance, adequate substantiation andeffective disclosures, and also avoid off-label use and drug claims. This can betricky given the lengthy disclaimers theynormally need and the limited space onsocial media. Other questions are what

the brand should do if a blogger men-tions a non-authorized use of a productor whether to retweet or like user-gener-ated comments that do not conform toregulations.

One recent example came last yearwhen the U.S. Food and DrugAdministration found celebrity KimKardashian’s endorsement of a morningsickness drug on Instagram was “falseand misleading,” did not include riskinformation, omitted material facts andsuggested the drug was safer than hadbeen demonstrated. She reposted a cor-rected post including the hashtag#CorrectiveAd.

During the session Leanne Stendell ofYUM! Brands in the U.S. also discussedemojis and whether they are copyrightprotectable. Another issue is brandedemoji. “Unicode will never approve abranded emoji,” she said. “One way toget around that is to use stickers, butwhat if users do something offensive withthem or combine them with a competi-tor’s content? This is the kind of thingbusinesses get really upset about.”

News

INTA Da i ly News Tuesday, May 24 2016 www.manag ing ip .com2

How brands can make friends and influencepeople online

Companies are increasinglylooking beyond word trade-marks to distinguish theirgoods and services in the mar-ketplace. Sound, shape andcolor are some of the nontradi-

tional signs that are now accepted as trade-marks in many jurisdictions. Does this sti-fle lawful competition and communicationin the marketplace?

A panel of academics debated this sub-ject at a session yesterday titled“Nontraditional Trademarks, Innovation,and Competition: Friends or Foes?” Thesession was moderated by Lisa Ramsey ofUniversity of San Diego School of Law.

“The doors to trademark protection arewide open in the EU,” said Martin R.F.Senftleben of VU University Amsterdam,who opened the debate. “EU law does notexclude any sign, provided they’re distin-guishing in character,” he added. His viewwas that shape and color marks candeprive others from entering into meaning-ful competition. Senftleben offered threesolutions to deal with this concern: excludethe marks from registrability, which hecalled “a radical solution;” accept them ona condition of acquired distinctiveness; orregister them and review the scope of pro-tection later.

Senftleben told registrants that EUcourts are alive to the point that colors andshapes need to be kept free for the benefitof consumers and competition. This is why

there are hurdles in place, such as the pro-hibition on functional signs. He arguedthat by allowing these signs to be regis-tered the courts are giving industry anincentive to invest in obtaining more ofthem. Senftleben concluded that function-ality exclusion is a better tool to deal withthe anticompetitive concern than acquireddistinctiveness.

“People’s eyes process colors different-ly,” argued the next speaker, Ann Bartowof University of New Hampshire School ofLaw, whose argument focused on colormarks. “Getting judges to make the rightdecision on colors is quite difficult,” shesaid, noting that it may be tricky when

dilution comes into play. She said it is hardto see a company using a color mark alone.“There is text or symbol on it with thecolor,” she explained. Bartow argued thatcolors are always functional even wherethis is unintended. She argued that thereare only a handful of colors which areappealing to be used on a particular goodor service and that these must be left freefor all in commerce to use. “Aestheticfunction and color exhaustion are bothunderappreciated,” she warned.

Michael Handler of University of NewSouth Wales said nontraditional signs areeasier to obtain in Australia than in theU.S. or EU. However, Australian courts are

aware of the competition issues, especiallyregarding shapes. He said there is noground of refusal in law for functionaltrademarks and functional shapes, andthat you can get a mark registered if youcan show future acquired distinctiveness.He suggested that there should be a func-tionality exclusion in law.

Panelists were of the view that shapesand colors raise more concerns than othernontraditional signs. “Sound marks don’tstrike me as too far away from slogan; I’mless troubled by that,” said Handler. Theyalso agreed that trademarks should not beused to protect cultural symbols wherecopyright protection has expired.

Professors debate nontraditional marks

Panellists at yesterday’s Europe Regional Update on nontraditional trademarks.

How should the Madrid Systemdevelop? That was the ques-tion posed by David Muls,Senior Director of WIPO’sMadrid Registry, Brands andDesigns Sector, at Sunday’s

Madrid System Users Meeting. On its 125thanniversary, WIPO is considering how theMadrid System will look in the future andthe Secretariat will submit a paper to thenext session of the Working Group on theLegal Development of the Madrid System,which takes place in June this year.

The Madrid System was founded in1891 but has continued to develop sincethen, for example with the introduction ofthe Madrid Protocol in 1989. “We have tokeep thinking about how the System shouldevolve,” Muls told the INTA Daily News.Asked how the System rated today, he said:

“Our clients are pleased but we feel there isalways room for improvement.”

Today, changes are partly being drivenby the increasing number and range ofjurisdictions covered by the system, asmore members join including regional sys-tems such as EUIPO and OAPI. The grow-ing use of technology is also playing a part,says Muls, and so are users’ demands:“Users seek simplified processes to navi-gate the system. We have to consider howwe can make it accessible while maintain-ing the quality of the output.”

During Sunday’s meeting, Muls also pro-vided an update on filing trends and recentaccessions to the Madrid System, as well asnew electronic tools. Gregoire Bisson,Director of the Hague Registry, provided anupdate on design developments.

There was also a discussion on better use

of the Madrid System, focusing on classheadings in International Registrations. Thiswas moderated by Asta Valdimarsdóttir,Director, Operations Division, MadridRegistry, Brands and Designs Sector, andincluded Yang Guoming, Deputy Director,International Registration Division,Trademark Office, the State Administrationfor Industry and Commerce of the People’sRepublic of China (SAIC), JenniferChicoski, Administrator, TrademarkExamination Policy and Procedure USPTO,and Julio Laporta, Deputy Director,Operations Department EUIPO.

News

www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 3

WIPO welcomes Madrid commentsWIPO yesterday released the newMadrid Monitor database, which willserve as the primary search tool forinternational registrations. The newsearch tool integrates in one applica-tion functionalities and informationaccessible through ROMARIN, theWIPO Gazette of International Marks,Madrid E-Alert and Real-Time Status.WIPO is demonstrating Madrid Monitorat its booth in the Exhibition Hall.

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“We have to consider how we canmake it accessible while maintainingthe quality of the output.”

Digital technology has made iteasy to infringe copyright. Asa trademark practitioner, in-house or private practice, youare likely to come across acopyright matter at some

point in your career. Panelists at yester-day’s session titled “What Do You DoWhen a Copyright Issue Lands On YourDesk?” warned registrants about the risksof using freely available content on theInternet, how to minimize the chance ofgetting into a copyright infringement situ-ation and what to do if it comes your way.The session was moderated byChristopher Kenneally of the CopyrightClearance Center.

Maury Tepper of Tepper & Eyster pro-vided an overview of copyright law, notingthat there are several works and rights,such as the distribution right, which areprotected under the law. “You need per-mission to use each,” he said. He also saidcopyright is territorial in nature, so therules vary by jurisdiction. Failure to obtainpermission exposes you to an infringementclaim but there are defenses available. Thedefense often cited is fair use, applicable inthe U.S., or fair dealing in common lawjurisdictions where certain actions, such asreferencing the work, are expected to beable to rely on it. Ultimately, only a courtcan decide if you qualify for any of thedefenses or infringe.

In-house counsel should take careregarding what is included in the compa-ny’s marketing documents as it could beinfringing, and it is difficult to claim fairuse if the use is in commerce. “It is a sub-jective examination and some factors maybe considered more important than oth-ers,” Tepper said. “That it is freely avail-able online doesn’t mean it’s free to use,”warned Gretchen Klebasko of LeggMason. This was in reference to legiti-mate sites which may display infringingcontent.

Public perception can also influencethe outcome of a case, according toTepper. Make sure you can genuinelyargue fair use if you are going for it. “It’sbest to get permission. That is the easyway to avoid problems,” he said.Panelists agreed that in-house counselshould educate employees to respectcopyright in whatever they do. “Make itpart of your corporate culture, include itin your policies,” Klebasko said.

If you are the copyright owner, you cantake a soft or hard approach, dependingon who is on the other side. Cease anddesist letters should be drafted wisely asthey could end up online and cause reputa-tional damage. “You don’t want to be seenas a copyright bully. Word it in a way thatyou can defend it, and spell the names cor-rectly,” Klebasko said. “Also make sureyou don’t have a business relationship withthe company you’re sending the letter to,”she added.

Randi Singer of Weil, Gotshal &Manges explained that copyright andbrand owners can use the DigitalMillennium Copyright Act (DMCA) to

take down infringing material online.Singer said there are steps involved, includ-ing a deadline for responding to the allegedinfringer, so you should be careful whensubmitting a notice. “You have to considerfair use before you send a DMCA notice,”Singer said. Copyright enforcement rulesand processes are different in the EU, sheadded.

With the proliferation of both

legitimate and infringing content online itcan be difficult to trace the owner. Usecommon sense, said Singer. For example, alink to an image may lead you to a profes-sional photographer’s website—whichshould get you thinking that you need per-mission from him or her. CreativeCommons is a source for images, but thereare terms and conditions depending onhow you want to use them. There are

different industry licensing bodies, such asthe Motion Picture Licensing Corporation,to approach for licenses.

Using GIFs on social media could landyou in trouble too. “You don’t know ifsomeone will assert his or her copyrightin it. Also there is a chance it is licensedand you’re more likely to be a target of alawsuit than a 13-year old,” warnedTepper.

News

INTA Da i ly News Tuesday, May 24 2016 www.manag ing ip .com4

Copyright may come your way: beware

Professor Glynn S. Lunney Jr.and Antoine Gautier-Sauvagnac dueled over tarnish-ment law in INTA’s AnnualProfessor vs. PractitionerDebate on Sunday. In a racy

session, Professor Lunney of Texas A&MUniversity School of Law argued for thepremise—and title of the debate—that“tarnishment law is just a tool to suppress

free speech,” while his opponent, Gautier-Sauvgnac, of FTPA in Paris, France main-tained that free speech and tarnishmentlaw can coexist effectively.

Tarnishment law is a form of dilution inwhich a famous mark or one confusinglysimilar to it is used by another party in away that could damage the reputation ofthe mark. Brand owners worry that “thirdparties’ usage will somehow get tangled up

and carry over in the consumer’s mind,” asLunney said, and usually the worrisomeinstances are related to illicit or politicizedtopics. So, as one might imagine, Lunneyand Gautier-Sauvagnac drew on somerather colorful examples to illustrate theirpoints.

Each debater was allotted 18 minutes tostate his case, followed by a five-minuterebuttal. The first to take the podium,

Lunney began by arguing that tarnish-ment—at least in the sense that it is meantby the Federal Trademark Dilution Act—doesn’t exist. “Now I realize there are lotsof ways you can tarnish your trademark,”he conceded, listing examples of brandsthat have infamously brought defectiveproducts to the market, “but you have todo it to yourself.”

It’s furthermore problematic that judgeshearing tarnishment cases, according to

Lunney, essentially don’t have evidence toprove that consumers make these connec-tions, or that those connections changetheir impressions of a brand. He citedsocial science studies conducted by lawyersthat showed that consumers’ opinions ofbrands were not negatively affected byexposure to what would be considered tar-nishing reappropriations.

Lunney cited one case involving“Debbie Does Dallas” (an adult film thatincited a lawsuit from the Dallas CowboyCheerleaders) as evidence of a worrisomeconsideration of property rights over free-dom of speech. He also argued that “thefact Debbie Does Dallas or some of theseother uses are objectionable is the point.That’s what makes them speech worthy ofprotection.”

Lunney concluded by declaring that“criticizing the famous brands is importantpolitical speech in our society, because itreminds us that our political heroes, oursports heroes, our religious heroes mayalso have feet of clay,” and that the exis-tence of tarnishment law discourages thiskind of skepticism.

Not to be outdone, Gautier-Sauvagnacopened with the confident assertion thatFrance is, above all, “a country of freespeech,” and that its citizens are unfazedby much of what Americans consider lewd,immoral or inappropriate. He referencedexamples like the huge boost in sales hel-met maker Dexter received after FrenchPresident Francois Hollande was seenwearing one of its helmets while visitinghis mistress in 2014 to demonstrate theFrench attitude.

French law protects parody under free-dom of expression, but judges will “notallow denigration of brands, when [thebenefits of that denigration] goes to bigmoney-makers,” Gautier-Sauvagnac said.He argued that, with a more liberal atti-tude toward what might tarnish a brand’sreputation, trademarks can be effectivelyprotected by tarnishment law.

After rebuttals, the audience voted forthe debate’s winner, but a show of handswas too close to call, and Professor Lunneywas declared the winner of the debate andwas awarded a bottle of (French) wine.

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www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 5

Tarnishment and free speech debated

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Bullying is a “very buzzy term”in trademarks at the moment,revealed Bryce Coughlin ofFox Entertainment Group inthe U.S. during yesterday’s ses-sion Taking it Too Far: When

Pretexts and Bullying Create EthicalDilemmas.

The USPTO defines a trademark bullyas: “A trademark owner that uses its trade-mark rights to harass and intimidate anoth-er business beyond what the law might bereasonably interpreted to allow.”

Jyotin Hamid of Debevoise & Plimptonin the U.S. said options for responding to atrademark bully include declaratory judg-

ment, consumer protections law and pub-lic shaming through a PR campaign. If thetrademark bully actually sues then theoptions become Rule 11 sanctions, seekingattorneys’ fees under the Lanham Act, orcounterclaims such as abuse of process.Hamid noted success under the LanhamAct was unlikely and that Rule 11 was abetter bet.

From the trademark owner’s point ofview, Coughlin outlined some practicalconcerns when a company is looking toprotect its brand.

“I am very careful to think about thelong-term impact,” he said. For example, ifa company is aggressive about its arguments

that a company in a completely differentindustry could cause confusion this could beused against it by another company latertrying to prove trademark infringement.

Another tip was to consider expecta-tions about the ultimate outcome and planaccordingly. Coughlin urged companies tothink about what they actually want, andwhether an action is worth it: “That canhelp you avoid getting into hot water ethically and overreaching.”

Another tip Coughlin gave was: “Thinkoutside the box—non-legal remedies oftenwork best.” This could be as simple as pro-viding some free merchandise or providingsome free tickets to a showing as a gesture

of goodwill. “Being nice can help,” hesaid. “It shows that there is a human onthe other end.”

It can also be important how contact ismade. “Think about first contact not com-ing from a lawyer or an outside firm,” saidCoughlin. “Sending a letter from outsidecounsel is often read as a serious messageabout how you view the case. That maynot help you get the outcome you wantand you could end up in court sooner thanyou wanted or maybe you didn’t want tobe in court at all.”

The session, moderated by Ken Taylor ofMarksmen in the U.S., also discussed caselaw and best practice tips for pre-texting.

How to avoid being a trademark bully

Regional Receptions were held yesterday evening for registrants from India, the Middle East and Asia-Pacific (left to right).

Feature Europe

www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 7

INTA’s representative office in Brusselsopened on September 16 2006, andChristina Sleszynska, now ChiefRepresentative Officer for Europe,joined one month later. Although anumber of policy issues, such as the

review of the EU Customs Regulation andACTA, have kept the Europe team highlyengaged, most of that time has been domi-nated by the debate over EU trademarkreforms, which started in 2008 and culminat-ed in December last year with the publicationof a new EU Trade Marks Directive andEUTM Regulation. But that is not the end ofthe work.

“The lobbying on the reform is done, butnow we have the implementation of the leg-islation, which is a different ball game,” saysSleszynska. In particular, INTA will be mon-itoring the secondary legislation, whichincludes issues such as the elimination of the“graphical representation” requirement,which comes into effect in October 2017. Itwill also be examining how the new provi-sions on counterfeit goods in transit are inter-preted, a subject on which guidance from theEuropean Commission is expected shortly.

“We don’t want to see any nasty surprises,”says Sleszynska. “We have been workingwith a number of European and nationaltrade and IP associations to communicateour views in particular by way of a joint let-ter to the Commission.”

Another topic that is being closely fol-lowed is legislation on plain packaging. TheUnited Kingdom, Ireland and France haveadopted plain packaging legislation. Othercountries, such as Hunagry, Slovenia,Norway, Sweden and Belgium are consider-ing similar legislation. “We send commentsstating INTA’s position wherever we can,”says Sleszynska. “Having volunteers in arange of countries, who can speak local lan-guages, is a great help.”

She now leads a team of three in theBrussels office, who liaise with INTA com-mittee members on policy issues both at anEU level and in member states. In addition,Sleszynska and her team have direct respon-sibility for three global committees: DesignRights, Geographical Indications (GIs) andBrands & Innovation. She says designs andGIs are now being looked at as “IP rights ontheir own footing” and INTA is monitoring

the consultations underway on revising theEU Designs Directive and extending GI pro-tection to non-agricultural products inEurope.

Aside from advocacy, the Europe office islooking at opportunities to submit amicusbriefs in significant cases. It recently filed abrief before the EU General Court for thefirst time in DHL Express v EUIPO—Chronopost (WEBSHIPPING), arguing that“proper reasons” for lack of use of a trade-mark refer to circumstances unconnectedwith the proprietor rather than those associ-ated with commercial difficulties or failure tochallenge infringing acts.

The Europe office has been equallyengaged internally, with a particular focus onenhancing communications and growingmembership in the region. The Europe

Global Advisory Council, tasked in part withadvising the Association on expanding itscorporate membership and better communi-cating throughout the region, has been par-ticularly helpful in this respect.

Looking ahead, Sleszynska predicts thatone topic likely to gain attention in the com-ing year is the EU Digital Single Market ini-tiative, and in particular legislation on IPenforcement and the role of intermediaries.Proposals from the EU Commission areexpected at the end of this year, and INTA ishosting a “Digital World Conference” inBrussels on December 1 and 2. Put the datein your diary: it will be a good opportunity towish the office a happy 10th anniversary.

To keep up with Europe office activities follow @intabrussels on Twitter

CONTACT DETAILS

Christina SleszynskaChief Representative Officer, EuropeEmail: CSleszynska@inta.orgTel: +32 3 880 3720

CONTACT DETAILS

Hélène NicoraRepresentative Officer, EuropeEmail: hnicora@inta.orgTel: +32 2 880 3722

CONTACT DETAILS

Milesh GordhandasAdvisor, Europe OfficeEmail: mgordhandas@inta.orgTel: +32 2 880 3721

INTA’s Europe office celebrates 10th anniversary

INTA IN ORLANDO138 TH ANNUA L ME E T I NG

You are invited to attend:

MIP Women in IP Global Network DrinksJoin the MIP Women in IP Global Network at the International Trademark Association Annual Meetingfor drinks and hors d’oeuvres from 3:00 - 5:00pm today. Please RSVP to lfitzpatrick@managingip.com

Hyatt Regency: Orchid Room and Verandah 9801 International Drive,

Orlando, Florida, USA, 32819

Interview Tricia Thompkins

INTA Da i ly News Tuesday, May 24 2016 www.manag ing ip .com8

What is your day-to-day role?I am the sole IP counsel. That means I work exclusively onmanaging the trademark portfolio as well as workingclosely with the licensing division to ensure that we havethe requisite rights to commercialize the brand domestical-ly and internationally.

Probably more than 70% of my time is spent onlicensing activities and agreements and then theremainder is spent on managing the portfolio, enforcement matters and also managing the marketingand advertising function.

How big is the trademark portfolio?We have about 5,000 active files.

How does IP fit into the company’s strategy?It is the center. Everything we do fits in with the brand.One of our more well-known brands is the ORIGINALPENGUIN brand. So it is all about identifying what is theclassic look of an ORIGINAL PENGUIN polo shirt andensuring we have the requisite protection not only for thePENGUIN mark but also any other properties that mightcome with the apparel we are selling.

What are the biggest challenges in your job?Just educating, not only the trademark offices globally butalso domestically about our PENGUIN mark. We have aU.S. registration for PENGUIN by itself, but our brand isORIGINAL PENGUIN BY MUNSINGWEAR and thattrademark has been filed worldwide. There are certain ter-ritories where we don’t own it and it was sold before weacquired the brand.

That is one of our preeminent brands in addition tothe PERRY ELLIS brand. But PERRY ELLIS in terms ofenforcement is not as challenging. Everyone wants todo something with the penguin, being a cute little ani-mal. They may be selling a beverage that has a logowith a penguin but ultimately they will want to sell T-shirts that include it. So it is an uphill battle for us interms of enforcing and educating the consumers as wellas the trademark offices that we own the rights to thepenguin.

What trademark issues concern you the most?It is more about what the various trademark offices are

Protecting the PenguinTricia Thompkins, intellectual property and licensing counsel at Perry EllisInternational in Miami, Florida, talks to Michael Loney about the challengesof protecting the fashion company’s marks, such as the ORIGINAL PENGUINline of clothing.

It is an uphill battle for us in terms ofenforcing and educating the consumers, aswell as the trademark offices, that we ownthe rights to the PENGUIN mark.

doing, whether it is new law, the length of time it takesthem to decide on actions, and whether we are getting uni-form treatment in various countries. Everything I do focus-es on ensuring we have a uniform strategy in the variousoffices and if there is a particular region or country thatseems to deviate from that then we are careful to catalogueand adjust our strategy to try to deal with the variances inthose countries.

For example, in Brazil there may be just an extraordi-nary length of time for us to get a decision and there aremultiple levels of appeal. We have had actions going on fornine years that are just now getting resolved. Even Chile,where we thought we would get a decision long ago andwe have been successful, there seems an inordinate amountof appeals available to the various companies where wehave a challenge. Those are things that are top of mindwhen we are working on our portfolio internally anddeveloping our strategy.

What is the company’s strategy for domainnames?For a company like Perry Ellis we were more focused onensuring we were part of the trademark clearance systemand had registered all our registrations. We have been suc-cessful at getting any domain names back that have beenregistered but also getting notifications of those during thesunrise period that we believe are important. I work with

our IP team as well as our e-commerce team to ensure wehave the appropriate coverage, balancing being proactiveversus our budgetary concerns. You can’t own everydomain name which is why you end up enforcing.Someone will get something that perhaps we should have

considered but for financial reasons we thought wouldn’tbe so much of an issue. If ultimately they would registersomething that advertised apparel on it then it becomes aproblem. That has been a big part of our activity in thepast year.

Interview Tricia Thompkins

www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 9

QUIZ: Win INTAmerchandise!Answer today’s INTA Daily Newsquestion to be entered into a draw towin INTA merchandise.

Today’s question: Which band (featuringJustin Timberlake) was formed inOrlando in 1995?

Send your answer to contest@inta.org by midnighttonight. Winners will be announced on Wednesday.

Photo: J Vettorino

You can’t own every domain name which iswhy you end up enforcing.

Sponsored discussion Mexico

INTA Da i ly News Tuesday, May 24 2016 www.manag ing ip .com10

Why is this opposition system being introducednow?Eduardo Kleinberg: It had to happen eventually. Perhapsthe issue of Mexico implementing the Madrid Protocol,and now the TPP [the Trans-Pacific Partnership agreementannounced in October last year and signed in February thisyear], accelerated the process. It is something that had tohappen eventually and maybe it is also because of thisinternational treaty that Mexico has subscribed.

We are very happy that Mexico has finally decided toimplement an opposition system. We have been asking for itfor a very, very long time. We thought that implementingMadrid Protocol before having an opposition system was notvery beneficial, because we would not be in the same positonas other countries participating in the Madrid Protocol.

How will it work?Juan Carlos Hernandez: It is a pre-registration opposi-tion system as opposed to a post registration. Interestingly,applications will be published 10 days after they arereceived by the Mexican trademark office. This is prior tothe formal exam that the trademark office conducts. Thiscould have an impact on the way that trademarks are pub-lished because some applications are filed with errors as tothe class number or the description of goods and services.This is going to be interesting because we are going to haveto be very careful as to what is published. Maybe peoplecould be distracted by errors in the class and certain trade-marks could not be detected appropriately.

The trademark office will continue to conduct theirown substantial exam. What is also interesting is that if theopposition is favourable for the opponent, the trademarkoffice will issue a formal rejection, saying the reasons theregistration was not granted. But if the opposition does notprevail, the trademark office will just issue the registrationcertificate. The opponent will not be given the reasoning ofthe trademark office for the granting of the registration.

What has been the reaction among IPpractitioners in Mexico? Eduardo Kleinberg: In general terms it has been receivedwell because in our opinion it is something that was miss-ing from our system: you did not previously have theopportunity as a trademark owner to raise your hand andobject to the filing of another trademark. In any countrywhere there is an opposition system it was well received bythe practitioners.

But we do not believe that it went far enough. It is amild system because, even when the trademark examinerwill receive your objections and will take them into consid-eration, they will continue with their own substantialexam and they will grant a registration and you may noteven know what their considerations are for granting theregistration.

If the mark is denied they will issue their argument as towhy it was denied. If it is granted you will not even knowif they did or did not really consider your arguments. Youwill still have the possibility of proceeding to an annulmentaction but what is relavant about an opposition system isthat you can file arguments and that they should be con-sidered in a very strict manner. We do not know if that willhappen or not.

When will it come into effect?Juan Carlos Hernandez: It has to be approved by theexecutive power. After it is approved, it will be publishedin the federal gazette, them it will come into effect 90 daysafter this publication. We expect the executive powersapproval to be granted in the following weeks. It shouldn’tbe more than two months but this could vary.

How will this system compare to others aroundthe world? Juan Carlos Hernandez: It will be similar to most pre-reg-istration opposition systems. I would say the main differ-ence would be this element in which the opponent thatloses will not know what the reasons of the trademarkoffice for granting the registrations were. We do not have amediation stage like in other countries. There will be resultsfast. Mexico has a very fast trademark proced ure. You mayhave a registration granted in four months, sometimes evenless, which is an advantage for trademark holders. So oneof the main advantages and one of the way it differs fromother systems is it is going to be a swift system.

Will the trademark office be able to cope?Santiago Zubikarai: We believe the trademark office will beable to cope with this new system. The intention of the sys-tem is not to be like a trademark examination process. Whenthe trademark office receives the application it will have 10days to publish the application in the intellectual propertygazette. You would then have one month to file the opposi-tion. Then the proceeding will continue as usual. Thereforewe do not expect it to put any excessive burden on the trade-mark office when this opposition system comes into effect.On the other hand, we will potentially be giving the Mexicantrademark office additional elements to protect trademarksthat could possibly affect third party rights. In so doing, wealso hope that we will reduce the number of annulmentactions that are filed against trademark registrations. Juan Carlos Hernandez: I would like to add that what

Santiago said was very important because trademark hijack-ing was becoming an important problem in Mexico. Forinstance, a person would try to obtain the registration of awell-known trademark that was well known for restaurantservices, and they would try to register in class 32 for bever-ages. Since the rightful owner sometimes didn’t have a reg-istration on that particular class, some of the let’s call thembad faith applications did go through. The Mexican trade-mark office was making notable efforts to try to stop thispractice and continues to do so. We believe this oppositionsystem will help the rightful trademark owners to avoid thesituation and will also be a good complement for the effortsthat the Mexican Institute of Industrial Property is pursuing.

Will these proceedings be popular?Santiago Zubikarai: It’s so new here that it is going to takea while for trademark users to clearly understand the ben-efits of that. We believe that it will be used as in any othercountry. I would expect that they will file an opposition inMexico the same way that they oppose in any other coun-try when they consider their trademark may be invaded bya similar mark. I would expect that trademark owners willuse this important tool, which could be less costly thanhaving to go to the annulment action.

Juan Carlos Hernandez: What is also relavant here isit is not only trademark application or registration ownersthat will be able to file oppositions. One element of thissystem is that you will be able to file an opposition basedon any of the prohibitions for the registration of a trade-mark that are included in the law. This could includetrademarks that are contrary to public order or to morali-ty. It includes trademarks that should not be granted basedon copyright. So the possibility of filing oppositions is notlimited to trademark owners—it could also extend togroups or to copyright holders that could be consideredaffected by the granting of a registration.

What should clients be taking into accountahead of the system coming into effect and onceit is live?Juan Carlos Hernandez: They should take into accounttwo main aspects. First, the Mexican Institute of IndustrialProperty makes important efforts to reduce the number ofregistrations that are unrightfully obtained but trademarkhijacking is something that is going on. The second thingthey should consider is the procedure itself. They should beacquainted with how it works, and the advantages and dis-advantages. We are constantly saying that one importantthing is the annulment procedure is maintained but weshould also take into account the annulment procedureentails litigation and it is a more considerable investmentin time and money. So we would advise the general pub-lic—because it is not only trademark holders—to becomeacquainted with the system and to use it.

Madrid and the TPP were factors in theopposition system being set up. Are there otherelements to the trademark system that willpotentially be changed?Eduardo Kleinberg: We do expect that besides this opposi-tion system, in the near future there is going to be an impor-tant change to the law. That is what IMPI has been discussingfor a long time. To implement TPP in Mexico there is goingto be a lot of changes that need to be added to the law, forexample non-traditional trademarks that we do not have inMexico that are going to be added to our system. There is alot of new procedures that are going to be included. It cannotbe just patches, it needs a completely new law. That’s whatthe trademark office is looking for. It is not going to be imme-diately but it is going to be in the future and not far away.

Separate from the oppositions proceeding, howhave trademark filing figures been trending inthe past few years?Santiago Zubikarai: Trademark filing in recent years hasbeen consistently increasing. It is one of the largest trade-mark offices in Latin America, behind Brazil.

We have seen a considerable increase of filings that arecoming from the Madrid System. A lot of foreign appli-cants are not using it for the protection of trademarks herein Mexico and I expect that the inclusion of an oppositionsystem will only enhance the number of filings here inMexico. Basically what we see is that the opposition sys-tem will ultimately make the trademark system of Mexicostronger and as such it will reassure people about protect-ing their intellectual property here in Mexico.

An opposition system for Mexico at last Mexico’s Congress approved an amendment to the country’s industrial property law at the end of April to establish atrademark oppositions system. Attorneys from Basham Ringe y Correa explain how it will work.

The sponsored discussion content in the INTA Daily News is the sole responsibility of the sponsor. It does not necessarily reflect the views or editorial style of INTA or Managing IP.

Sponsored discussion Mexico

www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 1 1

Eduardo Kleinberg has been a Partner of the firm since2003 in the Intellectual Property area and ManagingPartner since 2014.

He is President of the Intellectual PropertyCommission of the Confederation of Industrial Chambersof Mexico (Confederación de Cámaras Industriales de losEstados Unidos Mexicanos also known as CONCAMIN).He is designated by CONCAMIN as the permanent repre-sentative of the Mexican private sector with respect tothe Intellectual Property chapter of the Trans-PacificPartnership Agreement (TPP), Past-President of theMexican Association for the Protection of IntellectualProperty (AMPPI), Past-President of the Mexican chapterof the International Association for the Protection ofIntellectual Property (AIPPI), Member of theNominations Committee of AIPPI, Member of thePermanent Committee on Trademarks of AIPPI, Past-President of Licensing Executives Society—Mexico (LES-Mexico), Member of the Licensing Executives SocietyInternational (LESI), Member of the InternationalTrademark Association (INTA), Member of the Inter-American Association for the Protection of IntellectualProperty (ASIPI), President of the Non-TraditionalTrademarks Committee of ASIPI, Past-President of theCopyright Committee of the International Chamber ofCommerce Mexico, Member of the Association ofEuropean Trade Mark Owners (MARQUES), Member ofthe Mexican Franchise Association.

Eduardo Kleinberg, Partner

Juan Carlos Hernandez is partner of the firm in theIntellectual Property area in the Mexico City office. Hispractice focuses on planning and consulting in the fieldof intellectual property, both nationally and internation-ally, including aspects related to trademarks and slo-gans, copyright, industrial secrets, domain names andnew technologies. He also has wide experience in negoti-ating and drafting contracts.

He is the author of various articles and publicationsand speaker in intellectual property forums.

Juan Carlos Hernandez, Partner

Santiago Zubikarai is Associate of the firm in theintellectual property area in the Mexico City office. Hispractice focuses on trademark filing and prosecution,including international registrations provided by theMadrid System, designing strategies related totrademark and copyright protection, conductingtrademark and copyright searches and drafting andreviewing license, franchise, assignment, advertising,copyright and software license agreements, as well asagreements with artists for their participation in severalevents. He also practices litigation in the field ofintellectual property, including enforcement in allinstances.

Has also prosecuted and obtained permits for repro-ducing monuments from the Mexican Institute of FineArts and the Mexican Institute of Anthropology andHistory.

Santiago Zubikarai, Senior Associate

The lower chamber of the MexicanCongress on April 28 approved anamendment to the country’s industrialproperty law that will implement atrade mark opposition proceeding system.

The new system will come into forcewithin 90 days after it is published inthe Federal Government Gazette, thedate of which is not yet known. Thetariff of Instituto Mexicano de laPropiedad Industrial (IMPI), the coun-try’s patent and trademark office, mayneed to be amended first to includethe official fees for filing and for theresponse to an opposition.

Under the new system: • All new trade mark applications filed

in Mexico will be published in theIndustrial Property Gazette foropposition purposes within 10 work-ing days of the filing date.

• Anyone wishing to oppose the appli-cation must do so within one monthof the effective date of publication.

• IMPI will publish all oppositions filedwithin 10 working days of the expira-tion of the month period allowed foroppositions.

• The owners of the applications willhave one month to raise argumentsagainst the oppositions, although aresponse is not compulsory.

• IMPI may take the opposition andthe arguments offered by the appli-cant in response into considerationwhen ruling on whether to allow theapplication but this is optional.

• An opposition will not cause theprosecution of an application to besuspended. IMPI will continue toconduct its examination of applica-tions in parallel to an oppositionproceeding.

How will Mexico’s opposition system work?

Sponsored discussion China

INTA Da i ly News Tuesday, May 24 2016 www.manag ing ip .com12

What are the measures to commence Customsenforcement proceedings? According to the Customs Protection of IntellectualProperty Rights in China, there are two options availableto commence Customs enforcement proceedings. They areenforcement per application and ex-officio action.

What are the features of each measure and howdoes it proceed?Enforcement per application is a measure actively pursuedby an intellectual property right holder. When suspectedinfringing goods pending for importation or exportationare discovered, the right holder of an IP right may lodge anapplication with Customs at the port of entry or exit todetain such goods.

The main features of this measure are: • The IP right holder can directly submit an application

for detention to initiate the proceeding without record-ing its IP right with Customs in advance.

• Accordingly, Customs is not required to inspect andcheck whether the exported or imported goods mayinfringe upon the IP right which is not recorded withCustoms.

• The holder of an IP right shall provide Customs with abond which does not exceed or is equivalent to thevalue of the goods. This bond is designed to compensatefor the losses suffered by the consignee or consignor dueto an improper application for seizure. The payment ofexpenses for warehousing, maintenance and disposal ofthe goods will be made after the goods are detained byCustoms.

• Customs is not authorised to investigate the case andmake a decision. Instead, the holder of the IP right shallbring the case before a court. The detained goods willbe released if no injunction or notification for assetpreservation is issued by a court within 20 workingdays from the detention.Where requesting Customs to detain suspected infring-

ing goods, the holder of an IP right shall present a writtenapplication and relevant evidentiary documents, and pro-vide evidence that can sufficiently prove the identifiedinfringement.

In order to apply for this measure, the applicationshould include the following particulars: 1) The name, place of registration or nationality of the

holder of the IP right,2) The name, particulars and any other relevant informa-

tion relating to the IP right,3) The names of the consignee and consignor of the sus-

pected infringing goods, 4) The particulars of the suspected infringing goods, such

as name, packaging and volume,5) The possible ports, time, means of transport, etc related

to the importation or exportation of the suspectedinfringing goods.Ex-officio action is a measure initiated by Customs offi-

cers. When there are goods suspected of infringing arecorded IP right, Customs shall immediately notify theholder of the IP right of such suspected infringement inwriting.

The main features of this measure are:

• The IP right must have been previously recorded withCustoms.

• The Customs can suspend the suspected infringinggoods and issue written notification to the holder of therecorded IP right.

• The holder of the IP right is required to submit theseizure application to Customs within three workingdays from the written notification.

• The holder of the IP right shall provide Customs with abond; a general guarantee is available for this proce-dure.

• Customs shall investigate the case and make a decision.If Customs cannot determine whether the suspectedinfringing goods have infringed the recorded IP right,Customs shall notify the holder to bring the case tocourt.

• Customs has the discretion to confiscate and dispose ofthe infringing goods, and to impose an administrativepunishment if infringement is determined by Customs.With this measure, the holder only needs to submit an

application to confirm that the suspended goods areinfringing goods and the holder has applied for seizure ofthe suspected infringing goods within the above mentionedthree working days. The remaining actions are up toCustoms.

Each year, we help our clients take hundreds ofCustoms enforcement actions by undertaking the ex-offi-cio action. When the goods are seized, we would recom-mend our clients further pursuing the matter either bylodging civil litigation or sending cease and desist letter toleverage the effectiveness of the enforcement action. Weever helped one of our client obtained written undertakingto refrain from any future infringement and obtained com-pensation over 50,000 ($7,700) from the infringingexporter.

Although it is not compulsory to record IP rightsat the General Administration of Customs (GAC),what’s the benefit of doing so? Do yourecommend to do so?Recording IP rights with the GAC can achieve a certaindeterrent effect for potential infringers because the GACdatabase is accessible to the public. In other words, apotential infringer can search the database for suchrecordals and understand the degree of risk depending onthe presence or absence of IP reordals. On the other hand,if a prestigious brand has no valid IP recordals on the GACdatabase, it definitely captures the attention of numerouscounterfeiters in China.

Making good use of cross-border protection can greatlyreduce the incidence of unauthorized shipping activities inthe supply chain and distribution channels. If IP rights arerecorded with Customs, the details of a licensed vendor(shipping agents or factories) can be recorded under eachparticular right. Any party who is not listed with the IPrecordal may have its shipment detained by local ports. Ifthe shipment is unauthorized, one can address the issue byway of trademark infringement or breach of contract.

The GAC recently issued a formal notification toremove entirely the official fee for IPR Customs recordal( 800 per IP right, namely each trademark, patent or

copyright). Such exemption was made with effect fromNovember 1 2015.

Customs measures can be regarded as successful in thatmost seizures by Customs are ex-officio discoveries ofgoods being exported. According to the statistical data ofthe GAC for 2014, China Customs intercepted 27,000consignments and detained 24,000 batches of infringinggoods at the border. The quantity of infringing goodsamounted to 92 million units. It is worth noting that mostof this infringement was identified in shipments for export,which amounted to 99.6% of the total number of infring-ing goods. Because of that it is highly recommended thatan IP rights owner records its IP rights at GAC.

What types of IP rights can be recorded with theGAC? What’s the procedure to record an IP rightwith GAC? What documents are required forrecordal?At present, the right owner can record trademark, copy-right and patent, as well as the exclusive right of Olympicsymbols and the exclusive right of World Expo symbols.

The procedure to handle the recordation of IP rightsthrough the registration system include: 1) Submitting the new account application on the online

database of GAC,2) Recording the IP rights under the GAC account of the

particular IP rights owner.Generally speaking, the IP right owner shall provide the

following documents to complete the Customs recordal: • A copy of the related business license or Certificate of

Good Standing, or personal identification certificate ofthe IP rights owner,

• A copy of the Chinese registration certificate for trade-marks, patents or copyrights with photographs of theworks certified by the copyright registration authority(other evidence of copyright ownership may be accept-ed in place of the voluntary copyright registration cer-tificate). If an invention patent is the subject of aCustoms recordal, a copy of the patent register issuedwithin six months prior to the application for Customsrecordal must be submitted to the GAC if the inventionpatent grant has been announced for more than oneyear. If a utility model or design patent (granted afterOctober 1, 2009) is the subject of a Customs recordal,a patent right evaluation report made by the StateIntellectual Property Office (SIPO) must also be submit-ted. Please note that certificates of the last renewal, cer-tificates of change of name or address of the registrant,approval of assignment also serve as prerequisites forsubmitting a Customs recordal.

• A power of attorney executed by the authorized signa-tory of the IP rights holder. Notarization and legaliza-tion is not required.

Apart from registration, is there any othermethod to safeguard your IP rights at the border? Apart from registration, Customs training is anotheropportunity to safeguard the rights of the IP right owner.Generally speaking, Customs training can allow Customsofficials to better understand your recorded IP rights andto pay more attention to such rights in their inspection of

Navigating Customs enforcement in ChinaRights owners have two options available when using Customs enforcement in China. Michael Fu, Tracy Shen andKevin Yang of Chang Tsi & Partners explain the pros and cons of each.

The sponsored discussion content in the INTA Daily News is the sole responsibility of the sponsor. It does not necessarily reflect the views or editorial style of INTA or Managing IP.

Sponsored discussion China

www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 13

shipments, provide Customs officials with a simple andquick image, if any, to verify the products which infringeyour IP rights, and establish a smooth and healthy channelof communication with Customs so as to improve the IPprotection on behalf of the right owner.

The three-day time limit is sometimes difficultfor foreign IP right owners. What tips do youhave for them in this situation?From the point of view of the IP right owner, the most bur-densome aspect of Customs enforcement is the require-ment to submit a bond payment to the relevant portCustoms where the goods have been temporarily seized.Trademark rights owners that have a recordal with theGAC may submit a bank guarantee letter (also known as aGeneral Bond) instead of having to make a cash bond pay-ment following each seizure notice.

As with the verification of seizure, it is very importantthat the IP rights owner has a procedure in place for itsdesignated agents or local business unit to handle bondpayments as soon as positive verification is made. For aproduct that is frequently counterfeited, such seizures caninvolve tens of thousands of units and multiple shipmentsfrom many different ports in China. In other words, if thisprocedure is followed, it can result in frequent and volumi-nous seizures.

It is always advisable to maintain IP recordal informa-tion up-to-date, especially the details of authorized suppli-ers, so that authorized shipments will not be seized. Thistherefore requires that the IP right owner is familiar withits suppliers and distributors and takes efforts to keep suchinformation current.

On what ground will Customs authoritiesarrange for criminal proceedings to be broughtagainst the infringing party?Customs will communicate with and transfer the case tothe public security authority for criminal investigationwhen the criminal threshold is satisfied. In practice,among the criminal cases transferred from the Customsto the public security authorities for criminal investiga-tion, counterfeit trademark cases form a large percentageof such cases. When the requirements and thresholds aresatisfied in trademark cases, Customs will communicateand refer the case to the competent public securityauthority for criminal investigation, as a start of thecriminal proceeding.

Where the infringer, without authorization, uses atrademark identical to the registered trademark on identi-cal goods, the threshold for criminal liability for trade-mark infringement is as follows:1) The turnover of unlawful business operation is no less

than 50,000 or the amount of illegal gains is no lessthan 30,000;

2) Counterfeiting no less than two kinds of registeredtrademarks with the turnover of unlawful businessoperation no less than 30,000, or the amount of ille-gal gains no less than 20,000;

3) Other serious circumstances.A seller shall be convicted of selling counterfeit goods

when he knowingly sells counterfeit goods and the salesincome is no less than 50,000 according to Article 214,PRC Criminal Law and its correspondent judicial interpretation.

Criminal liability shall be imposed when: 1) forging or producing, without authorization, the labels of

registered trademarks or selling the labels forged or pro-duced without authorization with the number amountingto 20,000 pieces or more, or the turnover of unlawfulbusiness operation amounting to 50,000 or more, orthe amount of illegal gains is no less than 30,000;

2) forging or producing, without authorization, the labelsof two or more registered trademarks or selling thelabels of two or more registered trademarks forged orproduced without authorization with the numberamounting to 10,000 pieces or more, or the amount ofunlawful business operation is no less than 30,000, orthe amount of illegal gains is no less than 20,000.

Michael Fu graduated from University of New HampshireSchool of Law in 2013 with a Master in IntellectualProperty. He focuses his practice on intellectual proper-ty law. He passed the Chinese bar in 2006 and is a mem-ber of Beijing Lawyer’s Association. He has served manyFortune 500 Companies and leading multinational com-panies on overall intellectual property strategy.

Michael Fu

A graduate of Emory University School of Law in 2015who passed the Chinese bar in 2006, Tracy Shen hasbeen working as an attorney at law for over 10 yearsfocusing her practice on IP protection, infringementinvestigation and various disputes resolution. She pro-vides comprehensive legal service for international anddomestic corporations on IP prosecution and enforce-ment. She also has abundant experience in IP portfoliomanagement and trademark registration strategy.

Tracy Shen

A graduate from Hong Kong Baptist University, KevinYang is an expert in providing consultancy on ChinaCustoms IPR practice. Besides that, he has years ofexperience in assisting clients across industries on vari-ous IPR programs in China and the ASEAN regions. MrYang also acts as a liaison with Chinese authorities andconducts regular meetings in various formats on borderprotection.

Kevin Yang

Preview National offices

www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 15

In a new initiative at this year’sAnnual Meeting, INTA is hosting aseries of panels for IP offices, all ofwhich take place today. The work-shop will provide representatives ofmany offices—both regional and

national, big and small—with an opportu-nity to compare best practices, share chal-lenges and learn from each other.

The day’s programming has been puttogether by representatives of the UK IPOffice (UKIPO), the IP Office of Singaporeand Chile’s INAPI. “National offices havelong used the INTA Annual Meeting as anopportunity to meet each other informally,and we’re delighted that INTA has thisyear provided some space for a closedmeeting,” Steve Rowan, DivisionalDirector Trade Marks and Designs at theUKIPO, told the INTA Daily News.

The discussions, which will consist of aseries of panels each comprising a moderatorand three speakers from different offices,will address issues such as productivity, effi-ciency, quality, outreach and enforcement.

“There are quite a lot of opportunitiesfor work sharing in patents, such as patent

prosecution highways, but not so much atpresent in trademarks,” said MaximilianoSanta Cruz Scantlebury, Director ofINAPI. “But in Chile we have an open pol-icy and are very active in regional andworldwide cooperation.” As well as coop-erating with other offices in Latin America,INAPI has worked on projects with theCanadian and Australian offices.

One area for cooperation in electronicfiling and management tools: INAPI nowreceives 80% of trademark applications

online and Santa Cruz says he wants toextend this to renewals, so that they can bedone in “three minutes rather than threemonths.”

Rowan pointed out that there is alreadya degree of cooperation between nationaloffices in Europe, with some common ITsystems and harmonization of some for-mality requirements. The UKIPO, like oth-ers, also hosts visits and exchanges withother offices: it recently welcomed repre-sentatives from 15 Caribbean countries.

While officials have an opportunity todiscuss substantive issues at meetingssuch as WIPO’s Standing Committee onTrademarks, today is expected to pro-vide an opportunity to liaise on morepractical issues, from software tools toHR management to tips when joining theMadrid System. “We came up with avery long list of issues, so there will beplenty to talk about—and hopefully thiswill become an annual event,” saidRowan.

IP office workshop launched

Heidi Tandy of the Organizationfor Transformative Works andBarbara Quinn of DisneyCorporation spoke about fanfiction and trademark law atyesterday’s ProfessorsLuncheon. In a panelmoderated by Signe Naeve ofthe University of Washington,the speakers discussed issuesraised by fans’ use of film andTV characters in literary andartistic works, and thedifficulties of defining what isnon-commercial use.

INTA Da i ly News Tuesday, May 24 2016 www.manag ing ip .com16

Aformidable panel oftrademark experts tookthe stage for Sunday’smock mediation session.On one side were Miles J.Alexander of Kilpatrick

Townsend & Stockton in the U.S. andDaniel R. Bereskin of Bereskin & Parrin Canada. Opposing them wereLouis T. Pirkey of Pirkey Barber andLori A. Ball of Molson Coors. Drivingthe parties towards an agreement wasmoderator Leslie J. Lott of Lott &Fischer in the U.S.

The lawyers were reenacting areal case concerning the

HOMEAWAY and HOMESAWAYmarks in a realistic portrayal of amediation that featured openingstatements, joint sessions betweenthe parties, private caucuses and theoccasional sarcastic comment (suchas “They say it’s not extortion. Weknow better”).

The session was introduced byJames M. Amend, who also provideda commentary on some of the actionand decisions. He noted how moderator Lott “focused on the driv-ing forces behind a potential settle-ment” by getting the parties to set outterms first, before deciding on a dol-

lar figure. In the end, the moderatorprovided a suggested figure confiden-tially to each party, which they bothaccepted.

Lott emphasized that focusing onwhat is “fair” in a mediation may notalways be helpful, and it is importantto remind the parties of that: “Peacemay be more important to the partiesthan fairness.” Following the mockmediation, the speakers revealed thatthe real case that inspired the sessionhad been resolved in voluntary medi-ation to the satisfaction of both par-ties in 2007, and that both companieshad gone on to be successful.

Mediation in practice

alexandra j. roberts academic committeehappy hour #INTA16

INTA Europe Office #INTA16 est homologuéepar le @CNBarreaux. N’oubliez pas descanner votre badge à l’entrée des sessionsde formation! #FormationContinue

EUIPO At #INTA16 bilateral meeting with@kipoworld to discuss cooperation projectsand #TM5 activities

Hans Pyckhout EU non-tradit TMs: Audiencepoll: majority thinks that smells should beregistrable #INTA16

Sarah Burstein Ulla Wennermark was therapporteur in Shoe Branding v. @adidas. It’sthe only case in which she was “sad to beoverruled” #INTA16

Heidi Leia Consider a DMTA. Could one evermeet everyone’s requirements? What wouldthe process be? #INTA16

Tim Eisenstadt Marijuana companies protectthe trademarks they can: ancillary goods andservices, e.g. Accessories, clothing,glassware. #INTA16

Owen Smigelski Panelist: Many more .brandregistries = more brands participating in ICANNmeetings and policy development #INTA16

#INTA16

Speakers brought diverse perspectives to yesterday’s Internet/E-Commerce Industry Breakout

News

www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 17

3D printing might just changeeverything. At least JohnHornick, who leads Finnegan’s3D printing working group andwrote 3D Printing Will Rockthe World, certainly thinks so.

Introduced by Bracewell Giuliani’s ErinHennessy, Hornick spoke to INTA regis-trants yesterday morning about the dra-matic consequences he believes the prolif-eration of 3D printing could have for intel-lectual property.

“My prediction is that IP laws are actu-ally going to get weaker and narrower overtime, not stronger,” cautioned Hornick. Heexplained that 3D printing’s alarmingly fastmarch toward ubiquity has great potentialto disrupt traditional business models, andtherefore the value of intellectual property,as customization becomes commonplace.Hornick pointed to the changes in themusic industry due to streaming as anexample of this phenomenon.

Hornick believes that “3D printing hasthe ability to take us back to being makersnot buyers.” This possibility is worrisometo brand owners, and stands to disrupt

traditional business models. Companiessuch as Boeing—which also registered apatent for a 3D printer that uses multipleprinters to print an object while it levitatesat their center—are already using 3D print-ing to print every part of a product, whichposes a threat to the existence of partsmanufacturers. This is an example of 3Dprinting “within control,” which can bemore easily regulated, and the products ofwhich can be more easily protected by IPrights, says Hornick.

The real risk for IP owners is that peo-ple who were once consumers will becomeproducers “away from control,” printingproducts at home, where brand owners

have no chance of catching infringements.The best protection for brands will be cus-tomization itself, as even designs protectedby trademarks and patents can be copiedrelatively easily. Even trademarks them-selves will be easy to copy, print and affixto generic copycat designs.

“The principles of intellectual propertyapply to 3D printing just like they do toanything else,” Hornick says, “but thenumber of potential targets and the scaleof potential infringement is much largerbecause companies and individuals will beable to make anything they want awayfrom control.” He cited a prediction madeby the Gartner Consultancy Group that by

2018, companies will lose $100 billionworth of intellectual property due to 3Dprinting, but said that the danger to intel-lectual property will depend on how much3D printing grows proportionally “awayfrom control,” compared to within thespace of democratized manufacturing,which can be more easily monitored.

Hornick speculated that brand ownerswill react in five different ways: “Lawyerup, increased litigation, try to license thetechnology, demand legislation, or lock itup.” But before 3D printing can become atruly serious threat to intellectual property,it has to be completely outside of control,“and we’re not there yet,” he says.

Protecting IP in a 3D printed future

Speakers discussed the ways in which IP attachés can help brandowners and influence policy in a session yesterday morningmoderated by Aisha Salem, USPTO IP Attaché for the Middle Eastand North Africa. Riki Kishimoto of the Ministry of Foreign Affairs inJapan outlined a number of case studies from the Middle East, whileGerardo Munoz de Cote of Televisa in Mexico gave a brand owner’sperspective, saying: “The word ‘attaché’ brought concerns andconfusion when they first arrived. But it has been very positive inMexico and the Caribbean.” Attachés, along with IP officerepresentatives, also took part in an Open House yesterday evening.

101domain Advance China IP Law Office Arnold & Siedsma

Arochi & Lindner Buchanan Ingersoll & Rooney Chang Tsi & Partners

Davies Collison Cave Dumont Bergman Bider & Co Haynes and Boone

Tweetup Valipat Wan Hui Da Intellectual Property Agency

INTA Da i ly News Tuesday, May 24 2016 www.manag ing ip .com18

Receptions

Carla J. Vransky, BuchananIngersoll & Rooney,Pittsburgh, PA, U.S.I’m very much looking forwardto the Harry Potter WorldFinale!

Kelly M. Horein, DrinkerBiddle & Reath, Washington,D.C., U.S. I’m enjoying the sunshine, butfor me the best part is gettingto see people face to face thatI’ve been emailing with for solong. For me, being here is moreabout that than the location.

Giuliano De Rubertis,Lexalia, Milan, ItalyOrlando is quite good for kids,but I want to go on a tour of theKennedy Space Center.

Kerry R. Thompson, Barnes& Thornburg, Minneapolis,MN, U.S.It’s warm, and very kid and

tourist-friendly. There’s a greatvariety of restaurants andthings to see.

Jamal Abu Ghaida,Aramarks, Manama, BahrainOrlando is great because INTAis here! It’s also a cool city, withfamily attractions.

Farzana Rustom, Bharucha& Co, Karachi, PakistanI like that this city is very calm;there’s no rush and little traffic.It’s very nice and beautiful here,and there’s easy access toeverything.

Feroza Kartick, O’NealWebster, Road Town,Tortola, British VirginIslands Orlando is cheerful and exciting;I don’t want to leave! Theatmosphere just makes me wantto go out.

Sunil B. Krishna, Krishna &Saurastri, Mumbai, India Mickey Mouse! I went to Disney12 years ago, but this time I’mjust busy with meetings. Butthis is a nice venue for them.

Aaron Boyajian, GoetzFitzpatrick, New York, NY,U.S. The theme parks are the bestpart of Orlando. I’m glad to begetting some sun—that goodvitamin D—while I’m here.

Jennifer L. Dean, DrinkerBiddle & Reath, Washington,D.C., U.S. I’m enjoying checking out someof the great restaurants inOrlando!

Tao Zhang, HaihongJiacheng, Beijing, China Disney! I’m also looking forwardto going to Universal Studios onWednesday night.

What is your favorite thing about Orlando?

Vox pop

www.manag ing ip .com INTA Da i ly News Tuesday, May 24 2016 19

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: email@deepnfar.com.tw www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

Lawyers show off their silkysoccer skillsSporty trademark practitioners battledthe heat and each other in INTA’s firstsoccer tournament on Sundaymorning. Five teams of five-a-sideplayed round robin matches, followedby elimination games. The winningteam was a multinational mix ofplayers from the Americas, featuringJack Penny of the U.S., LeonardoCordeiro of Brazil, Daniel Rodriguez ofMexico, Marco Colmenares ofVenezuela, Pat Concannon of the U.S.,Greg Luna of the U.S., and GonzaloMenendez of Guatemala.

Today’s Schedule | Tuesday, May 24, 2016All events take place at the Orange County Convention Center (OCCC) unless otherwise indicated.

7:30 am - 5:00 pm Information Desk West D Lobby

7:30 am - 5:00 pm Housing Desk West Hall E Lobby

7:30 am - 5:00 pm Exhibitor/Press Registration Desk West D Lobby

7:30 am - 5:00 pm Registration West Hall E

7:30 am - 5:00 pm Hospitality West Hall D

8:00 am - 10:00 am Continental Breakfast West Hall D

8:00 am - 10:00 am BREAKFAST TABLE TOPICS W240

8:30 am - 5:00 pm Networking Excursion Desk West Hall E Lobby

10:00 am - 4:00 pm Exhibition Hall West Hall D

SESSIONS

8:30 am - 5:45 pm Working Towards the 21st Century IP Office Workshop W414 - A

SESSIONS

10:15 am - 11:30 am Trademark Scholarship Symposium—Session I (Academic Series) Hamlin Boardrooom - W333

10:15 am - 11:30 am Trademark Scholarship Symposium—Session I (Academic Series) Hamlin Boardroom - W334

CONCURRENT SESSIONS

10:15 am - 11:30 am CT01 Annual Review of Leading Case Law in the European Union Advanced Level Tangerine Ballroom West Hall F - 1

10:15 am - 11:30 am CT02 Almost Famous: Proving Fame in First to File Jurisdictions Advanced Level Tangerine Ballroom West Hall F - 2

10:15 am - 11:30 am CT03 Making Money on .Generic Domain Names (Intermediate Level) Tangerine Ballroom West Hall F 3-4

10:15 am - 11:30 am IT01 Mobile Technology Industry Breakout: Living in a Mobile World—Promoting, Managing and Protecting Your Brand

on Mobile Platforms (Beginner to Intermediate Level) W224

10:30 am - 11:30 am SPEED NETWORKING West Hall D

SESSIONS

11:45 am - 1:00 pm Trademark Scholarship Symposium - Session II (Academic Series) Hamlin Boardrooom - W333

11:45 am - 1:00 pm Trademark Scholarship Symposium - Session II (Academic Series) Hamlin Boardroom - W334

CONCURRENT SESSIONS

11:45 am - 1:00 pm IT20 Transportation/Hospitality Industry Breakout: Yours, Mine and Ours—IP Issues in the New Sharing Economy

(Intermediate Level) Tangerine Ballroom West Hall F - 1

11:45 am - 1:00 pm CT20 When Is the Mediation Successful? Intermediate to Advanced Level West Hall 3-4

11:45 am - 1:00 pm CT21 Online Enforcement: Counterfeit Products, Contraband but Genuine Products, Parallel Imports (Intermediate Level) Tangerine Ballroom West Hall F - 2

11:45 am - 1:00 pm RT20 Africa and Middle East Regional Update: Opportunity and Growth Amidst the Turmoil of the Middle East

and a Rising Africa (Intermediate Level) W224

11:45 am - 1:00 pm CT22 #HASHTAGS #EverythingYouNeedToKnow (Beginner to Intermediate Level) Chapin Theater

12:00 pm - 1:00 pm SPEED NETWORKING West Hall D

1:15 pm - 3:15 pm LUNCHEON TABLE TOPICS W240

1:30 pm - 2:30 pm SPEED NETWORKING West Hall D

3:00 pm - 4:00 pm SPEED NETWORKING West Hall D

CONCURRENT SESSIONS

3:30 pm - 4:45 pm CT50 Plain Packaging: Tobacco Today, Tacos and Tequilas Tomorrow (Intermediate Level) Chapin Theater

3:30 pm - 4:45 pm CT51 Ambush Marketing and Social Media. Lessons Learned before the 2016 Rio Olympic

and Paralympics Games (Intermediate Level) Tangerine Ballroom West Hall F 3-4

3:30 pm - 4:45 pm CT52 How Far Can You Bend a Mark Before it Breaks? (Intermediate Level) Tangerine Ballroom West Hall F - 2

3:30 pm - 4:45 pm IT50 Entertainment Industry Breakout: Brands and the Changing Face of Entertainment Content (Intermediate Level) W224

3:30 pm - 4:45 pm CT53 Bust a Move: From the Trademark World to GC and Beyond (Intermediate Level) Tangerine Ballroom West Hall F - 1

3:30 pm - 5:00 pm In-House Practitioners Industry Exchanges (Exclusive to in-house practitioners only) W240

SESSIONS

4:45 pm - 5:45 pm Working Towards the 21st Century IP Office Workshop Government Officials Industry Training Information Session

(By invitation only to IP Offices and Government Officials) W414 - A

5:30 pm - 7:00 pm Political Action Committee (PAC) Reception Hyatt Regency Orlando President’s Suite

6:00 pm - 7:00 pm In-House Practitioners Reception (Exclusive to in-house practitioners only) Sunburst Room and Terrace

6:00 pm - 7:00 pm Government Officials Reception Hamlin Boardroom - W333

6:00 pm - 7:00 pm Legal Resources Contributor Reception (By invitation only) W331 - A

Since 1976, BSKB has been providing a full range of intellectual property law services to clients in the areas of trademark and patent prosecution, post-

grant review, litigation, ITC litigation, opinions and counseling, design patents and licensing.

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