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.
A little over a month ago, the Canadian Government introduced a bill (Bill C-31, the Economic Action Plan 2014, No. 1) that proposes substantial reforms to Canada’s trademark system. Initially proposed for Canada to uphold its international IP treaty commitments, the proposed trademark reforms in Bill C-31 will potentially impact not only how foreign businesses obtain trademark protection in Canada, it will also influence how such businesses evaluate their global brand protection and marketing strategies.
Although Bill C-31 offers many important trademark reforms that several commentators have provided good insight on (a couple of good analyses are available here and here), the two proposed reforms that will arguably impact foreign businesses the most are: (1) the removal of date of use requirements for trademark registration; and (2) the adoption of the Nice Classification of Goods and Services.
No Date of Use Requirements For Trademark Registration: Bill C-31 will remove current requirements that a Canadian trademark application enclose a date of use in Canada or another country. Currently, Section 30(b)-(d) of the Trade-marks Act requires that trademark applicants provide the date that their trademark has been used in Canada, is intended to be used in Canada, or details of any registration abroad. However, Bill C-31 removes these requirements and only requires that an applicant “use or propose to use, and are entitled to use” a particular trademark in Canada, effectively removing any requirement of providing a specific date of use of a mark in Canada or abroad in a Canadian trademark application.
The removal of such date requirements has benefits and drawbacks for foreign businesses. It would potentially give foreign businesses time advantages and cost benefits in protecting and marketing their brands in Canada and beyond. Without mandating a showing of use or potential use in Canada, foreign businesses will likely be given time after their trademark is registered to determine whether that mark obtains legal protections in other countries without actually having to use the mark in Canada. This helps such businesses to better evaluate the risks of using a particular brand globally without having to exert funds to show actual use of the brand in the Canadian market. From a marketing perspective, removing dates of use requirements would also give foreign businesses time to determine whether their brands develop positive consumer recognition in other markets prior to use in Canada that can help such businesses to better strategize how to market their goods and services on a global scale.
The downside to the removal of date of use requirements is that it may increase trademark trolling. As other commentators have reported, removing date of use or potential use requirements may allow persons or entities to register unused trademarks in order to extort money from legitimate businesses who have not yet registered such marks with the Canadian Intellectual Property Office (CIPO). If Bill C-31 is implemented in its current form, such a scenario has substantial cross-border business implications as a party could register a mark with CIPO for an emerging foreign business not yet operating in Canada and then extort such business for rights to the mark as they expand into Canada. This often happens in trademark jurisdictions where no dates of use registration requirements exist. For example, China does not maintain date of use trademark registration requirements and famous foreign brands such as Apple, Tesla Motors and even hall of fame basketball player Michael Jordan have had their trademarks prior registered by Chinese trademark trolls.
Although it is uncertain whether Canada’s proposed removal of date use requirements under Bill C-31 will result in the same level of trademark trolling as seen in China, there is such a possibility if such reforms are enacted.
Adoption of the Nice Classification: Bill C-31 will also impact foreign businesses through Canada’s adoption of the Nice Classification of Goods and Services (Nice Classification) for trademark registrations. Under Bill C-31’s proposed reforms, a Canadian trademark application will be grouped according to classifications provided under the internationally recognized Nice Classification, instead of Canada’s own existing wares and services classifications. Being one of the last holdouts to adopting the Nice Classification, Canada’s wares and services trademark classification system has made it challenging for foreign businesses to ensure that their Canadian trademark registrations are harmonized from a classification standpoint with registrations of the same mark in other countries that have adopted the Nice Classification. Further, Canada’s reluctance to adopt the Nice Classification has effectively prohibited Canada from adopting the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), which allows a trademark application or registration from a Madrid Protocol country to be submitted for registration in other Madrid Protocol countries.
If Canada adopts the Nice Classification, foreign businesses can better ensure that their trademark registrations in Canada cover similar goods and services as provided in registrations of the same mark in other countries. Further, as Canada’s adoption of the Nice Classification would better allow Canada to implement the Madrid Protocol in the near future, such reforms would give foreign businesses the potential to reduce costs and logistical burdens in registering their marks in Canada and other Madrid Protocol countries. However, it is important to emphasize that Bill C-31 does not effectively implement the Madrid Protocol.
What’s The Takeaway? Bill C-31 proposes several substantial reforms that may benefit foreign businesses, while also posing some potential risks. Although Bill C-31’s proposed reforms are promising, Bill C-31’s reforms have yet to be enacted and it is uncertain whether its proposed reforms will be enacted in the same form described in this positing.
Regardless of whether Bill C-31’s trademark reforms are perceived to be beneficial or problematic, no one can deny that its proposed reforms will dramatically impact Canada’s trademark system for foreign businesses.
Check out my recent guest post on UK IP blog The IPKat on Disney’s trademark dispute with Canadian DJ and electronic musician Deadmau5 over a U.S. mouse-head design trademark application. It is available at: http://ipkitten.blogspot.com/2014/04/disney-and-canadian-dj-spar-over-us.html.
Over the last week, the Office of the U.S. Trade Representative (USTR) and the International Intellectual Property Alliance (IIPA) released reports on the current state of intellectual property (IP) protections for U.S. businesses abroad. These reports provide updated insights on foreign countries and foreign retail markets (both physical and online) that have recently caused U.S. businesses the most IP protection difficulties.
Here is a summary of the reports:
IIPA 2014 Special 301 Report Submission
On February 8th, the IIPA submitted their 2014 Special 301 Report Submission to the USTR. As one of the largest U.S. lobbying groups for the copyright-based industries, the IIPA’s submission identifies the foreign countries the IIPA believes provides the most ineffective IP legal protections for U.S. businesses. The USTR’s final Special 301 Report (released annually April-May) provides reporting to the U.S. government and the general public on the countries that, according to the Omnibus Trade and Competitiveness Act (19 U.S.C. § 2242(a)), deny “adequate and effective protection of [IP] rights” or “fair and equitable market access to United States persons that rely upon [IP] protection.”
Although the U.S. government rarely imposes trade sanctions based on the Special 301 Report, a country’s listing in the final report often impacts the U.S.’ trade relations with that country and the degree to which the U.S. government initiates trade promotional activities with the same. From both a private sector and practical standpoint, the Report also represents a review of the markets that U.S. businesses have had the most IP protection challenges.
What countries did the IIPA recommend for inclusion in the 2014 Special 301 Report?
Priority Foreign Countries. For a second year in a row, the IIPA has identified Ukraine as being a “Priority Foreign Country.” This is the least favorable designation available under the Special 301 reporting system. Specifically, it identifies that country as one with the “most onerous or egregious acts, policies, or practices” that “have the greatest adverse impact (actual or potential) on the relevant [U.S.] products” without making efforts to ameliorate their status. 19 U.S.C. § 2242(b)(1)). Ukraine’s designation as a Priority Foreign Country was based on a number of factors, most notably the absence of effective online copyright enforcement, and unfair and non-transparent royalty society collections. Shockingly, the classification was also based on reports of widespread software pirating by Ukrainian government agencies.
Priority Watch List and Watch List Countries. The IIPA’s Special 301 Report Submission lists Argentina, Chile, China, Costa Rica, India, Indonesia, Russia, Thailand and Vietnam on the “Priority Watch List,” and Belarus, Brazil, Bulgaria, Canada, Ecuador, Greece, Israel, Kazakhstan, Kuwait, Mexico, Romania, Saudi Arabia, Switzerland, Taiwan, Tajikistan, Turkey, Turkmenistan, United Arab Emirates and Uzbekistan as “Watch List” countries. Although not as a severe rating as a Priority Foreign Country, being listed as a country on the Priority Watch List or simply Watch List means that a country has potential IP protection deficiencies that require varying levels of USTR monitoring.
Newly Non-Listed Countries. It is also important to note that the IIPA has recommended removing a number of countries from the final 2014 Special 301 Report due to their improvements in IP protection. These countries include Barbados, Bolivia, Colombia, Dominican Republic, Egypt, Finland, Guatemala, Jamaica, Lebanon, Pakistan, Paraguay, Peru, Trinidad and Tobago, and Venezuela.
Out-of-Cycle Review of Notorious Markets
Also, on Wednesday, the USTR released an Out-of-Cycle Review of Notorious Markets that identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting. The Review includes particular social media and file transferring sites hosted abroad, including sites hosted in Antigua and Barbuda, Bulgaria, Canada, China, Czech Republic, Finland (possibly), Netherlands, Poland, Russian Federation, Spain, Sweden, Ukraine, United Kingdom and Vietnam. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Paraguay, Spain, Thailand and Ukraine were also deemed notorious.
What’s The Takeaway? Every foreign market has its own IP protection challenges. U.S. businesses that are exploring expansion into new markets should consider the IIPA’s Special 301 Report Submission (as well as the USTR’s Final Special 301 Report due out later this year), and the USTR’s Out-of-Cycle Review of Notorious Markets to help evaluate the IP risks associated with such markets. Doing so can help to ensure that such businesses can better protect their IP assets as they expand.
I have again been given the honor of guest posting for The IPKat on a follow-up story about the Canadian Olympic Committee’s trademark dispute (now a lawsuit in British Columbia) with the U.S. outdoor clothing company The North Face. Check it out at: http://ipkitten.blogspot.com/2014/02/will-north-face-put-on-brave-face-coc.html.
Enjoy the 2014 Sochi Winter Olympic Games!
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|
Today I had the privilege to provide a guest contribution to one of my favorite intellectual property blogs, The IPKat, on a story about the Canadian Olympic Committee’s unfair competition dispute with the The North Face over the U.S. clothing company’s International Collection. Check it out at http://ipkitten.blogspot.com/2014/01/friday-fantasies_24.html.
Earlier this month, a number of international news outlets reported about Canadian clothing manufacturer Canada Goose who filed a trademark and trade dress lawsuit in Canadian Federal Court against Sears’ Canadian subsidiary (Sears Canada). The suit alleges that Sears Canada was selling knock-off versions of Canada Goose’s well-known parkas. In a statement of defense to Canada Goose’s lawsuit, Sears Canada claimed that Canada Goose’s lawsuit claims were not only unfounded, but that they were intended to bully retailers and control pricing. As reported in The Globe and Mail, the statement stated “the real purpose of Canada Goose’s campaign of intimidation is to attempt to prevent or lessen sales in the marketplace of less expensive winter jackets” and “to preserve its temporary ability to sell its garments at a huge markup to the public.”
Although Sears Canada’s comments are by no means unique for a defendant in such a trademark lawsuit, the reporting of the comments in several news outlets has significant public relations (PR) implications. By claiming that Canada Goose is using trademark laws to bully retailers and control prices, Sears’ comments inevitably impact the ways retailers and the general public perceive Canada Goose and its parka jackets. Negative public perceptions about a business’ IP enforcement actions can tarnish a business’ brand and hinder its domestic and foreign market opportunities—just like the counterfeit goods that it tries to protect itself against.
As I read multiple stories about Sears’ comments, I could not help but to think that Canada Goose did not effectively counter Sears’ accusations in the public forum. Many major international clothing manufacturers such as Gucci and Burberry pursue similarly proactive cross-border trademark enforcement strategies as Canada Goose. Yet, few of the reporting news outlets carried the comments of Canada Goose’s spokespersons who gave justifications for the lawsuit against Sears Canada. In fairness, claims of bullying are likely more sensational than justifications for brand protection. However, emerging global companies like Canada Goose must ensure that they effectively communicate to the public the justifications behind their IP enforcement actions. As growing businesses set their sights on international expansion, PR becomes nearly as valuable as trademark protection to ensure that they can take advantage of domestic and foreign market opportunities.
What’s The Takeaway? Businesses who seek legal protections for their brands need to consider the PR implications of their enforcement actions. This is even more important in an international context. As many countries and cultures have negative perceptions towards litigation, businesses need their legal counsel and public relations professionals to collaborate to ensure that the public is educated about their global IP enforcement activities. Doing so can help to prevent the unintended PR consequences that global IP enforcement can bring.
What PR issues does your business face in international IP enforcement?
Photo courtesy of Abdallah Iskandarani.
Earlier this month, I received a message from WordPress notifying me of the one year anniversary of The IP Exporter. As blogging on cross-border and trade-related IP issues over the past year has had results that I never imagined, I thought I would take this opportunity to take a look back at some of my impressions over the past year.
The outpouring of support and feedback I have received from other legal practitioners and those with an interest in the ever-changing world of cross-border IP protection has been the most remarkable aspect of blogging for The IP Exporter. Attorneys and IP specialists from all over the world have not only read my blog (which is a shock in itself!) and shared it with friends and colleagues, but they actually commented on it and told me that it helped in their research and the actual legal issues they were facing. As a relatively young attorney, I have been heartened by this positive feedback. Also, such communication has led to a number of guest writing and professional legal opportunities that I would not have had without blogging.
Another amazing thing I have found about blogging for the The IP Exporter has been seeing which cross-border IP issues have struck accord with my readers. Each time I blog, I am unsure whether an issue I think is interesting is relevant or important to my readers. Some postings I have made on issues that I think are not earth shattering, such as whether to register a trademark in India under the Madrid Protocol or directly through India’s trademark office (The Controller General of Patents Designs and Trademarks), have been the most read postings I have written.
Lastly, the ability to connect with people throughout the world has made blogging an amazing experience. I never thought people from so many different countries would read The IP Exporter. To date, readers from over 90 countries have read The IP Exporter, and much of my readership comes from places I never expected, such as India, Malaysia and Russia. I am also continually amazed about what I blog or tweet about, much of which takes place in countries on the other side of the globe, have resulted in direct feedback from those in such countries. For instance, when I tweeted in July this year about a story on how a hair salon in Dubai, United Arab Emirates was using promotional materials that were alleged to be confusingly similar to Facebook’s protected branding, I received the above photo soon thereafter by a local resident who found it on his car. Although, it is not a complete surprise that I would receive such feedback in this globalized age, I still find it remarkable.
What’s The Takeaway? Blogging over the past year has been an amazing experience. It has made me grow as a writer and as a legal practitioner. More than personal and professional growth, it has made me realize how large a need there is for people to know more about cross-border and trade-related IP issues. The culmination of these experiences has energized me and my efforts to blog on these topics.
What cross-border or trade-related IP issues are you facing?
Last week, I had the privilege of being a guest writer for Seattle-area based Efinitytech on an article dealing with infringing online advertisements. Although it was focused on combatting trademark infringing online advertising on U.S.-based search engines such as Google, Bing and Yahoo!, as well as U.S. social media sites such as Facebook and Twitter, it contained many of the same considerations trademark owners, and their agents, should consider when combatting infringing online advertisements abroad. However, there are a few additional foreign issues trademark rights holders should consider.
1. Obtain A Trademark Registration. U.S. businesses generally need a U.S. federal trademark registration to submit an advertising complaint to a U.S. online advertising website. A U.S. federal trademark registration establishes a presumption of ownership and exclusive rights in a trademark in the U.S. This gives U.S. search engines and social media sites assurances that a filed advertising complaint is valid.
Additional Foreign Considerations: A trademark registration is also generally required to submit ad complaints in other countries. Many countries do not even recognize a business’ rights in a trademark unless it has registered the mark with the country’s national trademark office. As a result, Google, Bing and Yahoo!, their foreign subsidiaries, as well as many other foreign advertising sites, require that a business have a valid trademark registration in the country where they are filing an online ad complaint. This means that if a rights holder wants to enforce their trademark rights against a foreign ad, they generally have to have a valid trademark registration in that foreign country.
2. Advertising Websites Have Different Trademark Enforcement Reputations. U.S. search engines and social media sites have their own track records for responding to advertising complaints. For example, Bing and Yahoo!’s U.S. sites will often remove an infringing ad upon evidence of a valid U.S. federal trademark registration, while Google U.S.’ site generally declines removing ads infringing a descriptive trademark, even if the mark is federally registered through acquired distinctiveness (aka secondary meaning).
Additional Foreign Considerations: The varied reputations of online advertising sites’ handling of trademark ad complaints are even more disparate at the global level. Many foreign sites have good track records, while others less so. Also, some foreign advertising sites have ad enforcement features that offer benefits beyond those offered on most U.S. websites. For example, China’s leading search engine, Baidu, allows trademark rights holders to register their Chinese registered marks with their representatives in order to prevent others from purchasing infringing ads and ad words on their website. However, like Google, Baidu’s IP enforcement system is imperfect, as it has been criticized in the past for failing to stop the sale of ad words to fraudulent advertisers.
3. Multiple Ad Complaints May Need To Be Filed. Trademark rights holders may need to submit multiple complaints against an infringer before an infringer’s ad appears removed. This can be due to the ineffectiveness of an advertising website complaint system, or more likely because an infringing advertiser has made several ad purchases, requiring the submission of multiple ad complaints in order to effectively remove all of an infringer’s advertisements.
Additional Foreign Considerations: None. Additional complaints may need to be filed for foreign trademark ad complaints as well.
4. Consider The Ramifications Of Filing An Online Complaint. Lastly, submitting an online ad complaint may impact an infringing advertiser’s online reputation as well as the trademark rights holder. Based on these ramifications, trademark rights holders should consider reaching out to alleged infringers, either directly or through an attorney, to see if the disputed ad can be removed amicably.
Additional Foreign Considerations: The consequences of filing online trademark ad complaints abroad is as significant, or even more so, then doing so in the U.S. As I have previously highlighted, countries maintain different beliefs and perceptions towards the legal rights that should be given to trademarks and other forms of IP. In particular, several important and emerging foreign markets such as Canada, Chile and New Zealand disagree with forceful online IP enforcement, as seen in their current rejection of copyright website takedowns. This means that submitting online trademark ad complaints may have similar or even more negative reactions in a business’ particular industry (and among the public) abroad than at home. Based on these circumstances, businesses should feel even more inclined to first reach out to foreign infringing advertisers before they submit online ad complaints.
What’s The Takeaway? As combatting infringing online advertisements has many of the same challenges and considerations in the U.S. as abroad, businesses wishing to protect their brands abroad need to identify the countries where they have or may have significant business and develop strategies to protect against online ad infringement. This requires considering foreign trademark registration, identifying major foreign online advertising websites, and developing processes and procedures to monitor and enforce rights against infringing advertising activity on such websites. Doing so can help businesses to more effectively protect their brands in the foreign markets they wish to grow.