Earlier this month, the Office of the U.S. Trade Representative (USTR) announced it had concluded a Work Plan with the Honduran Government to strengthen intellectual property (IP) protection and enforcement. Included in the Work Plan are commitments by the Honduran government to increase criminal IP prosecutions, improve IP enforcement coordination efforts with U.S. authorities, evaluate the adoption of trademark customs recordation procedures, and enhance and clarify the Honduran geographical indication (GI) protection registration process.
The adoption of the Work Plan is a positive step in U.S.-Honduran IP relations. Honduras was identified in the USTR’s 2015 Special 301 Report as being subject to an out-of-cycle review to determine whether Honduras should be included in the USTR’s Special 301 Report Watch List, namely countries considered by the USTR to have inadequate IP protections. While the 2016 Special 301 Report will not be released until April 2016, the conclusion of the Work Plan should assist Honduras in remaining off of the 2016 Special 301 Report Watch List.
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.
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|
In recent months, there have been a number of stories from around the world about trademark applications, registrations and uses that have been critically questioned, and in some cases rejected, based on their offensive cultural or historical meaning.
Here are just a few stories that I have come across in the past couple of months. They highlight important country-specific cultural and historical sensitivities businesses should take into consideration when deciding how to brand, and register their trademarks abroad.
- The U.S. football team the Washington Redskins have been under growing pressure from Native American organizations, media and sport commentators, and even comments from President Obama, that their team name be changed, and their trademark registrations in that name cancelled, based on the team name’s insensitive characterization of Native Americans (FYI, The National Congress of American Indians came up with some model logos that give a unique and appropriate juxtaposition to show the degrading nature of Native American sport team names).
- Closer to my home, the Portland, Oregon-based Asian-American rock band THE SLANTS were refused trademark registration of their band name by the U.S. Trademark Trial and Appeal Board based on the name being a “derogatory reference to people of Asian descent.”
Similar trends are also happening around the world.
- Last week, the IP blog The IPKat had a great posting about how an Italian citizen living in Norway and an Italian regional wine industry association helped to put enough pressure on a Swedish wine producer selling under the mark MAFIOZO to stop using the mark. Beyond the winemaker’s alleged violation of European Union geographical indication protections, the producer was publicly criticized for using a mark that connotes historical and ongoing Italian organized crime that has resulted in thousands of deaths.
- Lastly, late last month, family members of the deceased Colombian drug lord Pablo Emilio Escobar Gavira submitted a trademark application to Colombia’s Commission of Industry and Commerce to register the full name of the former drug lord in International Class 41. The Commission rejected the application stating that granting the mark would be “immoral and subvert public order.” Although it was only one single trademark application, many world news outlets reported the story, even comparing the attempt to register Mr. Escobar’s name as registering Hitler as a trademark (Coincidently, I recently wrote about how a Thai fast food restaurant tried (and failed) to use such branding).
What’s the Takeaway? All of these recent stories highlight how a country’s historical and cultural sensitivities can not only prevent obtaining legal protections for a trademark, but can also cause additional unforeseen damage through negative public relations and rebranding costs. As a trademark provides a means for the public to identify a business’ goods and services, choosing a word, name or phrase that that is culturally or historically insensitive can almost guarantee negative outcomes, both at home and abroad.
In the context of developing foreign markets for goods and services, understanding and respecting the cultural and historical sensitivities of a particular country is essential to obtaining trademark protection in that country, and more importantly, helping to develop a successful international brand. As with all other aspects of entering into new foreign markets, businesses should do their homework and ensure the mark or marks they wish to register and use abroad are not offensive. Doing so is a relatively inexpensive insurance policy for businesses to prevent complications in expanding abroad.
What does your business do to protect itself from insensitive branding abroad?
In recent years, many national customs offices have established notification procedures to allow IP rights holders the ability to alert customs officials of their IP rights in order to assist them in their import inspection activities. Like Internet Service Provider takedown requests on the Internet (more information about these procedures), IP customs office notifications is a tool for IP rights holders to protect their IP rights abroad by reducing the global spread of infringing goods and content by preventing its cross-border transit—and in many cases, assisting in its destruction. However, to utilize such protection measures, an IP rights holder must ask themselves:
- Can you submit such a notification in a particular country?
- Does the country you wish to enforce your IP rights have an IP customs notification system?
- Does such a country’s national IP customs notification system include the type of IP you wish to protect?
- What are the particular foreign customs agency’s IP notification requirements?
Can you submit a IP customs notification? Generally, an IP rights holder can only submit an IP customs notification to a foreign customs office if their IP qualifies for protection in that foreign country. Determining if particular IP qualifies for protection in a country depends on the type of IP the rights holder wishes to protect and to what extent the rights holder has secured foreign legal protections. Here is how it breaks down:
Trademarks. If an IP rights holder wants to submit a foreign customs notification to protect a trademark or service mark in another country, they usually need to have registered that mark in the IP office of that specific country or through a centralized international registration mechanism like the Madrid Protocol (more information about the Madrid Protocol). This is because trademark protection is territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. So for example, if a U.S. company registers its trademark in the U.S. for particular goods or services and wishes to protect that trademark against infringing imports into New Zealand, it must also register that mark through the Intellectual Property Office of New Zealand or the Madrid Protocol in order to submit a trademark notification to the New Zealand Customs Service.
Of course there are some important exceptions to this territoriality requirement to keep in mind. The European Union maintains a community-wide trademark system (Community Trade Mark) allowing one community registration to qualify for customs notification registration in all EU member states (a list of EU member states is available here). The African Intellectual Property Organization (OAPI) also maintains a community trademark system where a single OAPI community mark registration is recognized in 16 African nations (a list of EU member states is available here).
Patents. Like trademarks, a patent rights holder must generally have a registered patent in the country to which they wish to register an IP customs notification. Unlike trademarks, however, there are no current community registration exceptions. As a result, patent rights holders must register their patents in the country to which they wish to register their IP customs notifications.
Trade Secrets: Generally, as trade secrets require that their owners keep the content of their secrets confidential in order to maintain its legal protections, any disclosure of such secrets to customs officials likely eliminates such secrets’ protections. Therefore, there does not appear to be any national customs IP notification systems that permit trade secret notification.
Copyright. Unlike trademarks and patents, a work qualifying for copyright protection in one country may qualify for copyright protection in other countries in order to allow foreign customs notification registration. However, depending on the country, foreign copyright authors may need to file a copyright registration in order to submit an IP customs notification. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (Berne Convention countries), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.
If a work qualifies as an attached work under the Berne Convention and the IP rights holder wishes to register their protected work in a foreign Berne Convention country customs office, they will be able to file a customs registration without having authored the work in the foreign Berne Convention country. Yet, as mentioned above, countries differ on national copyright registration requirements for IP customs notifications. Australia, for example, does not require Australian copyright registration prior to submitting a customs notification application to the Australian Customs Service. However, several major markets, such as the U.S., China and India, require that copyrighted works be registered in their country prior to registering an IP customs notification.
Does the country you wish to enforce your IP rights have an IP customs notification system? Not all countries maintain IP customs notification processes. Some substantial and growing markets, such as Brazil, Canada and Chile, do not currently maintain IP custom notification systems. However, many major markets and transshipment countries maintain various types of IP customs notification systems including Argentina, Australia, China, European Union (EU), Hong Kong, India, Japan, Malaysia, Mexico, New Zealand, Russia, Singapore, South Korea, Taiwan, Thailand, Turkey, Ukraine, United States and Vietnam, among others.
Does such a country’s national IP customs notification system include the type of IP you wish to protect? Several countries only maintain IP notification systems for particular types of IP. For example, The U.S. Customs and Border Protection (CBP) only accepts copyright and trademark notifications, not patent notifications (the CBP only examines imports for patent infringement based on a Section 337 exclusion order from the U.S. International Trade Commission (more information available here)). In contrast, several other countries monitor and detain imports for possible patent and geographical indication infringement. India’s Central Board of Excise and Customs (CBEC) in particular monitors imports for copyright, geographical indication, patent and trademark infringement.
What are the particular foreign customs agency’s IP notification requirements? Once an IP rights holder verifies that their IP qualifies for legal protections in the foreign country they wish to submit an IP customs notification, and that the type of IP they wish to notify customs about can be registered, the IP rights holder’s customs notification must comply with the foreign customs office’s own notification requirements.
Below are the IP customs notification submission requirements for some of the worlds’ major markets.
Types of IP Covered
|United States||19 C.F.R. 133.1 et seq.
||Copyright and Trademark||Instructions: Copyright and trademark notification (known as e-Recordation) requires:
-The trademark or copyright’s U.S. registration number
-The name, address and citizenship of the IP rights owner
-The place(s) of manufacture of goods bearing the trademark or copyright
-The name and address of individuals authorized to use the trademark or copyright
-The identity of a parent company or subsidiary authorized to use the trademark or copyright (if any)
Fees: US $190.00 per copyright and trademark (per class of goods and services).
Effective Duration of Notification: 20 years.
|e-Recordation Notification Portal|
||Copyright Act 1968, Subsection 135(2)||Copyright and Trademark||General Notes: Australian IP customs notifications are known as Notices of Objection.To register a copyright or trademark notice with Australian Customs Service, an IP rights holder must submit: (1) a notice of objection form; and (2) a deed of undertaking. Both types of forms as well as further instructions are located in the right column.
Duration of Notification: Four years.
|China||Decree of the General Administration of Customs, No. 183||Copyright, Patent and Trademark||Requirements: To file a IP customs notification with the General Administration of Customs (GAC), an application must include:
-a copy of the IP rights holder’s business registration certificate and a Chinese translation
-a copy of the Chinese registration certificate for the copyright, patent or trademark
-Proof of Power of Attorney (if registered by an agent)
-Registration fee (see below)
-Licensing agreements (if any)
-Pictures of the relevant goods and their packaging
Submission: Forms can be filled online or by mail.
Fees:Approximately US $130.00 (800 RMB).
|GAC Online Notification Form (In Chinese)|
|European Union||Council Regulation (EC) No 1383/2003, Article 5.5||Copyright, Geographical Indication, Patent and Trademark||The EU refers to IP customs notifications as Applications For Action. Applications require: (1) a completed application form; and (2) a completed Article 6 Declaration. Both forms are located to the right.
Note: Individual EU member states may maintain their own IP customs notification systems (a link to individual EU member state customs agencies is available here).
|Community Application For Action|
|India||Notification no. 47/2007 – Customs (n.t.)||Copyright, Geographical Indication, Patent and Trademark||Registration: The CBEC requires that copyrighted works be registered with Indian Copyright Office, and geographical indications, patents and trademarks with the Office of the Controller General of Patents, Designs & Trade Marks prior to submitting a CBEC customs notification.
Ports of Entry: The CBEC also requires that notifications be submitted to particular ports of entry.
Duration of Notification: Minimum period of one (1) year.
|Online Notification Submission Portal|
**Note**: The above requirements are meant for comparative educational purposes only. IP rights holders should consult with national customs agencies or qualified attorneys in the jurisdictions they wish to enforce their rights to confirm these and other IP customs notification requirements.
Further Steps. Once an IP rights holder’s IP is registered with a foreign customs office, the foreign customs office will generally notify the rights holder or their representative of any infringing inbound shipments and may detain and potentially destroy infringing imports. However, such detentions may include legal proceedings, as well as additional country-specific enforcement procedures. IP rights holders should obtain qualified local counsel to assist with these enforcement activities.