It is that time of year again when the Office of the U.S. Trade Representative (USTR) releases its annual report on Notorious Markets—The 2014 Out-of-Cycle Review of Notorious Markets. As we reported on last year, this annual review identifies foreign physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting.
This year’s review identified several foreign social media and file transferring websites, as well as a number of Internet service providers (ISPs), as being notorious markets including those hosted or located in Argentina, the British Virgin Islands, Canada, China, Czech Republic, France, Netherlands, Panama, Philippines, Poland, Russia, San Marino, Spain, Switzerland, Ukraine, the United Kingdom and Vietnam. Additionally, physical markets in Argentina, Brazil, China, Ecuador, India, Indonesia, Mexico, Nigeria, Paraguay, Thailand and Uruguay were also identified as being notorious markets.
The USTR also highlighted a number of recent developments including efforts by certain previously listed Chinese sites to curb piracy activities on their websites, as well as increased enforcement actions by rights holders and government officials to shut down physical and online markets in Brazil, the European Union and Ukraine among others.
What’s The Takeaway? As we have said before, every foreign market has its own IP protection challenges. U.S. businesses that operate abroad or are expanding into new markets should review the USTR’s 2014 Out of Cycle Review of Notorious Markets to help evaluate the IP protection risks associated with particular markets they wish to enter. Doing so can help to ensure that such businesses can better protect their IP assets abroad.
The United Kingdom Intellectual Property Office (UK IPO) released a report today providing a comprehensive and insightful breakdown of online copyright enforcement regimes in multiple countries. Titled International Comparison of Approaches to Online Copyright Infringement, the report evaluates online enforcement regimes in many of the world’s major markets including Brazil, Canada, France, Italy, The Netherlands, South Korea, Spain, the U.K., and the U.S. Beyond providing in-depth details and statistics on each country’s online enforcement procedures that international IP policy nerds like myself find interesting, the report highlights how each country’s enforcement regimes have dealt with the proliferation of broadband Internet and various online media services. It is also a good primer for practitioners to understand online copyright enforcement procedures across borders. Give it a read!
The New York Times and other news outlets reported last week that The Hershey Company, the global confectionary behemoth, settled its U.S. federal trademark lawsuit against leading U.S. importer of British confectionery products, LBB Imports, LLC (Case 1:14-cv-01655-JEJ), who had allegedly infringed Hershey’s own trademark-protected brands, as well as those it has exclusively licensed, through LBB’s unauthorized importation of popular UK brands and UK versions of existing U.S. brands including CADBURY DAIRY MILK, CARAMELLO, TOFFEE CRISP, YORKIE, MALTESERS, ROLO and KIT KAT.
Although these news reports have largely focused on U.S. consumer dissatisfaction over inaccessibility of these UK chocolate varieties as a result of the settlement, this case also underscores the important role trademark licensees have in the cross-border enforcement of their licensed trademarks. Hershey attested in their complaint that it has produced and promoted Cadbury’s brands in the U.S. for over 25 years, and that it is Cadbury’s exclusive U.S. licensee of several of its U.S. registered trademarks including Cadbury’s logo (U.S. Reg. No. 1,107,458) and its DAIRY MILK brand (U.S. Reg. Nos. 1,403,327, 4,224,494 and 1,460,259) (collectively, the Cadbury Marks).
While it is unclear what contractual obligations Hershey had with Cadbury concerning enforcement of the Cadbury Marks in the U.S., in regards to infringing imports or otherwise, Hershey likely had substantial legal and business incentives to enforce the Cadbury Marks against LBB. Often, foreign distributors, manufacturers, and promoters have licensed rights, and in many cases, contractual obligations, to enforce rights in their licensed trademarks including preventing the importation of infringing goods and parallel importation shipments (aka grey goods). Beyond legal obligations, licensees like Hershey have financial incentives to enforce their licensed trademarks rights as it is often necessary to protect business opportunities, as well as relationships, that accompany cross-border licensing arrangements.
As these licensed rights and obligations have substantial legal and business implications, it is important for licensing businesses to know and understand such rights and obligations, and develop enforcement strategies based on the same. So how do licensees do this? Well, here are a few things licensees should consider:
Evaluate and Understand Contractual Rights and Obligations. The first and most important thing a licensee should do when entering a cross-border licensing arrangement and considering enforcement measures based on that arrangement is to evaluate and understand their rights and obligations of enforcement. This requires that a licensee read and evaluate whatever agreement(s) acknowledge their licensing arrangement to identify such rights and obligations. Such rights and obligations may be detailed in a stand-alone trademark licensing agreement, they may be included in a more comprehensive distribution or service agreement, or they may be covered multiple agreements.
Regardless of what type of agreement(s) such rights and obligations are acknowledged, licensees need to identify three things:
(1) their rights to enforce rights in licensed mark(s);
(2) their obligations to enforce rights in licensed mark(s); and
(3) the extent and territoriality of such rights and obligations.
Licensed rights include a licensee’s optional ability to enforce rights in licensed mark(s), while obligations are a licensee’s contractual duty to enforce rights such mark(s). The extent and territoriality of such rights and obligations is particular important in cross-border IP protection as it is needed for a licensee to establish both the subject and geographic scope of their rights and obligations. In Hershey’s case, being Cadbury’s exclusive U.S. licensee of the Cadbury Marks likely gave Hershey rights and obligations of enforcement for such Marks in the U.S. However, Hershey was likely not given rights of enforcement for all Cadbury brands, nor rights of enforcement for the Cadbury Marks outside the U.S. as Hershey is identified as having only licensed certain Cadbury brand lines, and only in the U.S.
In any instance, a licensee needs to know their licensed rights and obligations, as well as its scope and territoriality.
Develop Tailored Strategies to Fulfill Licensing Obligations. Once particular licensed enforcement rights and obligations are identified, a licensee must evaluate what such obligations mean for their business. If a licensee is obligated to enforce rights in licensed mark(s) under their particular licensing arrangement, they may be required to monitor use of the marks in commerce, register (aka prosecute) the marks with national trademark authorities, record trademark registration(s) with national customs agencies to monitor and detain infringing imports, and/or conduct litigation enforcement.
In Hershey’s case, Cadbury had already registered the Cadbury Marks with the U.S. Patent and Trademark Office, and it remains unclear what Hershey’s obligations were under their licensing agreement(s) with Cadbury to record such registrations, monitor commercial use of the Marks, or even litigate their rights against potential infringers such as LBB. However, if Hershey’s did have monitoring and enforcement obligations in their licensing agreement(s) with Cadbury, their lawsuit against LBB would likely have been fulfilling these obligations as Hershey went after an allegedly unauthorized importer of Cadbury’s brands in the U.S., which it would have not otherwise known without attaining monitoring services and potentially other enforcement measures.
In short, licensees, like Hershey, have to find ways to fulfill their licensing obligations that are tailored to their particular obligations and business. As such, licensees should establish a budget to conduct such enforcement services, and consider retaining qualified counsel to ensure effective execution of obligated enforcement activities.
Consider Business Implications of Optional Licensed Rights. A licensee’s fulfilling of their licensed legal obligations is relatively straightforward, yet determining when and how to enforce licensed optional rights of enforcement is more complex, and often has more business than legal implications. Although a licensee may have optional rights of enforcement, the nature of the licensing arrangement and business relationships may obligate a licensee to adopt trademark enforcement measures. This is because the success of a licensing arrangement often depends on a licensee’s exclusive use of their licensed mark(s) in a particular country, requiring enforcement measures if such exclusivity is jeopardized. Further, licensors often urge their foreign licensees to enforce their licensed trademark rights regardless of contractual obligations, making such acts the basis for continuing their licensing arrangements. As such, a licensee may wish to adopt enforcement measures for their licensed marks despite having no obligations to do so to ensure profitability and continuation of their licensing arrangement, and to protect their existing business relationship with their licensor.
In Hershey’s case, they have been Cadbury’s exclusive U.S. licensee of the Cadbury Marks for over 25 years. Even if their rights of enforcement were optional, Hershey likely had substantial incentive to enforce rights in the Cadbury Marks as LBB’s imports jeopardized their exclusive use of such brands, and Hershey’s failure to enforce such rights may have harmed their long existing relationship with Cadbury.
Like Hershey, any licensee with optional rights of enforcement needs to consider the impact of non-enforcement on the business opportunities available in their licensing arrangement, as well as its impact on their relationship with their licensor.
What’s The Takeaway? As more and more businesses seek local foreign businesses to assist them with promoting their brands abroad, licensee businesses will be increasingly required to understand what rights and obligations they have in their trademark arrangements, and what measures they should take to fulfill those obligations, especially in deterring infringing imports. As these enforcement rights and obligations have substantial legal and business implications, licensees should work with their licensors and qualified counsel to determine how to best fulfill their enforcement obligations.
Dublin, Ireland-based Sherwin O’Riordan (SOR) Solicitors has provided us with this beautiful and insanely informational infographic on the current state of European patent registration. Taken from the most recent European Patent Office statistics (2013 Annual Report and 2014 Facts and Figures), the infographic highlights some interesting trends in European patent prosecution including:
-Patent Application Filings on the Rise: In 2013, there were 265,690 European patents filed, the largest number of annual filings to date, and representing a 2.8% increase over 2012.
-Foreign (and Corporate) Registrants Were the Largest and Often Most Successful Registrants: On average, one in four patents were granted registration in 2013. Interestingly, those countries that were the most successful in getting a European patent registered were mostly from outside Europe as the U.S., Germany and Japan had the three most successful registration rates per country. Large enterprises made up almost two-thirds of patent applicants in 2013. South Korea-based Samsung was the single largest patent filer in Europe with 2,833 applications in 2013 alone, followed by Siemens with 1,974 applications.
-Medical Patents Led Registration, Tech and Transport Patents Grew The Fastest: The Medical industry had the largest amount of European patents per technical field in 2013, however computer technology and transport were the fastest growing during the same.
-The Swiss Led the Way Among Europeans: Switzerland appeared to be Europe’s most inventive country in 2013, leading all other European countries in European patent applications per million inhabitants.
-Revocation After Registration is Common: In 2013, almost one in three European patents were revoked after being granted registration.
Special thanks to James Sherwin and everyone at SOR Solicitors for sharing this infographic with The IP Exporter!
The Office of the U.S. Trade Representative (USTR) announced yesterday that it is requesting public comments to assist the USTR in identifying significant barriers to U.S. exports of goods and services, including foreign IP protection deficiencies. The comments are being collected for inclusion in the USTR’s annual National Trade Estimate Report on Foreign Trade Barriers (NTE Report) that identifies barriers to U.S. exports including the “lack of intellectual property protection (e.g., inadequate patent, copyright, and trademark regimes).”
Last year’s NTE Report identified several U.S. export markets as possessing IP protection trade barriers, or at least IP protection concerns, including Angola, Argentina, Australia, Bahrain, Brazil, Cambodia, Canada, Chile, China, Colombia, Dominican Republic, Ecuador, Egypt, El Salvador, Ethiopia, European Union (member states), Ghana, Guatemala, Hong Kong, India, Indonesia, Iraq, Israel, Japan, Kazakhstan, Kenya, Kuwait, Laos, Malaysia, Mexico, Morocco, New Zealand, Nicaragua, Nigeria, Norway, Pakistan, Panama, Paraguay, Peru, Philippines, Russia, Saudi Arabia, South Africa, South Korea, Sri Lanka, Switzerland, Taiwan, Thailand, Turkey, Ukraine, United Arab Emirates, Uzbekistan and Venezuela.
Public comments for inclusion in this year’s NTE Report are due to the USTR by no later that October 29, 2014. Further instructions on the NTE public comment submission process are available here.
Check out my post today on The IPKat about the European Commission’s recent annual report on EU counterfeit enforcement efforts and how EU customs authorities and rights holders have recently increased their efforts to stop the flow of counterfeit goods arriving by mail into the EU.
It is available at: http://ipkitten.blogspot.com/2014/08/ec-reports-on-annual-counterfeit.html.
I have had the privilege to write an article on combating international online trademark infringement in ornamental and fruit varieties for the CIOPORA Chronicle, an annual publication of the International Community of Breeders of Asexually Reproduced Ornamental and Fruit Varieties that focuses on the “recent changes and developments in the field of Intellectual Property Protection for plant innovation.”
It is available on pages 24-25 of the 2014 edition of the CIOPORA Chronicle at: http://www.floraculture.nl/digizine/ciopora_june2014/index.html.
Co-Author Mackenzie Stout, J.D. Candidate 2014, Seattle University School of Law.
Personality rights are big business throughout the globe. Celebrities often license third parties the right to use their images and likenesses for thousands, even millions of dollars. For example, boxing legend Muhammad Ali’s personality rights were recently sold for $62 million. Yet, protection for these quasi-property rights varies from country-to-country, often limiting the degree to which celebrities, as well as ordinary persons and businesses, can protect their distinctive personal traits from unauthorized use at home and abroad.
Guernsey, the autonomous British possession and well-known tax haven island off the coast of France, recently made a bold move towards greater recognition of personality rights. By passing the Image Rights (Bailiwick of Guernsey) Ordinance, 2012 (“Ordinance”), Guernsey now grants personality rights protection to several personality traits and parties not granted under most national legal systems. By establishing the first ever registry of personality and image rights, and giving a registrant (including non-personalities) the ability to register the personality and image of a personality they intend to commercially manage, the Ordinance gives many persons and businesses the potential ability to protect their personal traits throughout the world.
So how does Guernsey’s new personality rights laws provide these protections?
What’s Is Registrable? As mentioned, Guernsey’s Ordinance allows the registration of personalities and images in Guernsey as a property right, much like a trademark or copyright registration. Personalities that can be registered include: (1) natural persons; (2) legal persons; (3) joint personalities (two or more persons who are intrinsically linked in the eyes of the public); (4) groups (whose membership can be interchangeable); and (5) human or non-human fictional characters. Such registration eligibility provides several advantages. First, the personality of a deceased natural person can be registered for up to 100 years after a person’s death and there is no fame or public recognition threshold necessary for registration. This means that any personage, no matter how well known, can be registered. Second, legal entities, such as businesses, foundations, and trusts, are now eligible to register as personalities, giving them the same rights and privileges to protect their personal traits as actual people.
Images associated with a registered personality may also be registered. Registrable images include an individual’s name or alias, voice, signature, likeness, appearance, silhouette, feature, face and even mannerisms. The proprietor of a registered personality has exclusive rights in the images registered against or associated with that personality. Even unregistered images may be protected if they are closely related to the personality. However, like any trademark or copyright registration, registering a personality or image in Guernsey’s Image Rights Register (“Register”) gives a proprietor of a personality or image rights more convincing evidence of ownership over such personality or image.
How Can a Personality or Image be Registered? A proprietor can register their personality or image rights in Guernsey in person or online. Like trademarks and copyright, an applicant should first conduct a search (known as clearance) for their personality rights in the Register, searching existing registrations for personalities and images that may preclude their own registration. If a personality or image registration application is accepted by the Guernsey Intellectual Property Office, it is published on the Register for one month, during which any person or entity may comment on and/or file a notice of opposition against the application. If no opposition is filed, the personality or image is registered with the effective date being the original filing date of the personality or image application. A personality or image registration is valid for ten years, and is renewable for subsequent ten-year periods.
How Do You Enforce Your Rights in a Registered Personality or Image? A registrant of a personality or image under the Ordinance would have to likely seek enforcement through Guernsey’s legal system, and then obtain a foreign enforcement of such a judgment abroad in order to effectively utilize Guernsey’s new image rights laws. A registrant may only file an infringement proceeding in Guernsey under the Ordinance if: (a) an infringing image is used for a commercial purpose or financial benefit; and (b) the infringing image is: (i) identical or similar to the protected image; (ii) confusingly similar to the protected image; or (iii) similar to the protected image and takes advantage of or is detrimental to the distinctive character or reputation of the registered personality. Exceptions to such infringement include any use of a registered personality or image related to education, news reporting, or incidental inclusions, where, for example, an image of the registered personality appears in the background of a television segment unrelated to the image or the registered personality.
If a registrant is able to succeed in a legal proceeding in Guernsey, they would likely need to seek foreign enforcement of such judgment abroad in order to effectively enforce their personality rights. As the vast majority of infringers will likely not be domiciled in Guernsey, a registrant will likely need to have a foreign Court enforce their Guernsey judgment in order to enforce their Guernsey image rights registration(s) abroad. The chances of being able to obtain such foreign enforcement depend on a number of factors including reciprocal enforcement arrangements between Guernsey and the country where the infringing party is domiciled, as well as the foreign jurisdiction’s own personality rights laws.
What’s The Takeaway? The implications of Guernsey’s Ordinance have yet to be fully realized, but any person or business wishing to protect their personality rights or limit their liability from the same should pay close attention to the Ordinance’s new legislation. Although Guernsey’ Ordinance appears to expand the types of entities and personal traits that qualify for personality rights, determining whether a foreign Court will recognize these new personality rights in their own jurisdiction remains to be seen. Persons and businesses wishing to obtain personality and image registrations in Guernsey should work closely with qualified counsel in order to better ensure proper registration of such rights.
Today, I had the privilege to provide a guest contribution to one of my favorite legal blogs, Art and Artifice, on a story about a U.S. weapons manufacturer who is in a copyright dispute with the Italian government over an advertisement depicting Michelangelo’s David toting the manufacturer’s rifle. Check it out at http://aandalawblog.blogspot.com/2014/03/armalite-in-italys-sights-over-gun.html.
Late last month, the European Commission approved for publication (pre-registration) a geographical indication (GI) application for the Danish cheese HAVARTI. This raised concern amongst interested industry groups, and should cause concern amongst all export-focused businesses. Similar to trademarks, and particularly certification marks, GIs are legal protection granting producers of a particular type of product from a specific geographical region the exclusive right to use the geographical region’s name (or a regionally-known name) on their products and in related promotions. Being an exclusive right, GIs exclude producers from other regions from labeling and marketing similar or identical products under the same GI name. This means, for example, that a U.S. sparkling wine can never be sold as CHAMPAGNE in the EU, or a Kenyan tea as DARJEELING in India. If registered, the EU HAVARTI GI would exclude non-Danish cheese producers from labeling and promoting their Havarti cheeses in the EU as HAVARTI.
So what’s concerning about the potential EU HAVARTI GI registration for non-dairy businesses? Well, industry groups such as the Consortium for Common Food Names (CCFN) argue that allowing the EU HAVARTI GI application to be registered would contravene international standards by prohibiting non-Danish cheese producers from labeling and promoting their own Havarti cheeses in the EU as HAVARTI, even if they meet recognized international Havarti cheese production standards. From an intellectual property perspective, the registration would arguably expand EU GI protections to common (generic) named products. Commonly named GIs such as DIJON for mustard and CHEDDAR for cheese have traditionally been restricted from GI protection due to their common vernacular usage. HAVARTI is a widely known cheese variety this is arguably as generic as these other excluded food names. By allowing HARVARTI’s potential GI registration, the European Commission could possibly allow other generic named products to be registered as GIs, thereby hindering the promotional efforts, and ultimately success of many foreign goods in the EU.
Although the potential HAVARTI EU GI registration only directly impacts the global dairy industry and the EU market, it does underscore general issues all export-focused businesses should be aware of concerning GIs. Many businesses are unfamiliar with GIs, much less the extent to which GIs can impact their expansion and success in new foreign markets. GIs are granted legal protections in multiple countries for a wide array of goods, and can significantly impact a business’ foreign operations.
Below are some GI issues businesses should consider when entering new foreign markets:
Know the Practical Differences Between GIs and Trademarks. Before understanding what GIs restrictions a business may face in a foreign market, a business needs to recognize how GIs and trademarks differ. Unlike trademarks, GIs do not indicate or represent a individual business or their goods and services. They instead represent protections for the local conditions—natural or human-made (depending on the country)—that give products from a region their qualities and reputation. Based on these localized and natural characteristics, GIs cannot be extended, shared, or transferred to producers outside the region, and cannot be cancelled once registered. Further, in many countries that grant GIs legal protection such as the EU, member state governments, not individual producers or businesses, prosecute GI infringement claims. This means a foreign business can be assured that their unauthorized use of a registered GI in a foreign market will more likely subject them to a greater risk of legal action in that country compared to the threat of a lawsuit from a individual trademark owner.
The bottom line is that GIs prohibit exporting businesses from promoting and selling their goods in a particular country under a registered GI without much recourse.
Determine if an Export Market Recognize GIs—and to What Degree. After understanding the important differences between GIs and trademarks, businesses need to then evaluate whether the markets they wish to export to have GI protections and the extent of such protections. Nearly all countries recognize GIs for wines and alcoholic beverages through their World Trade Organization (WTO) commitments. Under Articles 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WTO member states are required to extend specific GI protections for wines and alcoholic beverages, and to a reduced degree other agricultural and natural products. Most common law jurisdictions (U.S., Australia, and Japan, etc.) generally only extend GI protections to wines and alcohol beverages based on their WTO commitments. Yet, many countries, including several substantial markets, have gone beyond TRIPS’ minimum standards by providing enhanced GI protections to non-wine and alcohol agricultural products, and even non-agricultural products. The EU, China, India, and Russia, among others, extend the same level of legal protection to all agricultural and natural product GIs. Brazil, China, India, Russia, and Switzerland even extend GI protections to human made goods such as handcrafts and textiles.
Determine if There are Existing GI Registrations for Your Goods. Once a business determines whether the market(s) they wish to export their goods possess GI protections, they must evaluate whether the names of the goods they wish to use on their goods and related promotions are registered GIs. To do so, businesses must examine national GI registers in such export market(s).
Below are GI registers for some of the world’s major GI jurisdictions.
National GI Register
|National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial -INPI)|
|General Administration of Quality Supervision, Inspection and Quarantine|
|The Controller General of Patents, Designs, and Trade Marks|
|Federal Institute of Industrial Property|