Check out my post today on The IPKat about The Church of Jesus Christ of Latter-day Saints’ Canadian trademark litigation against a British Columbia-based Mormon fundamentalist group that will likely be determined by concurrent use considerations.
It is available at: http://ipkitten.blogspot.com/2014/07/lds-church-and-mormon-fundamentalist.html.
It was announced today that for the next six months, I will be given the great honor of being a guest contributor for the UK-based IP blog The IPKat where I will be posting on IP developments throughout the world.
Don’t worry, I am still intending to blog on international, cross-border and trade-related IP issues for The IP Exporter. If any of you have any stories you feel need to be covered, either in The IP Exporter or The IPKat, please feel free to send me a message.
Thank you for all of your continued support!
My colleague Rachel E. Buker, blogger for Art and Artifice, and I are giving a presentation for businesses on navigating legal issues online and on social media at The Makers Space at 92 Lenora Street in Seattle on Wednesday, July 9th at noon. It should be a good time and there will be lunch (If you get there quick enough!).
Please RSVP to me at firstname.lastname@example.org if you will be attending. See you there!
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.
Last month, the European Parliament passed legislation and the European Court of Justice (CJEU) handed down a ruling that expands trade-related intellectual property (IP) protections in the European Union (EU) and beyond. Particularly, the European Parliament passed laws granting EU customs officials the ability to detain trademark counterfeit transshipments transiting the EU, while the CJEU ruled that EU customs authorities can seize counterfeit goods in the EU that were purchased for personal use from sellers outside the EU. Although these are positive developments that provide IP rights holders the ability to stem the flow of infringing goods, and ultimately better enforce their IP rights across borders, they also have important requirements and limitations that need to be understood.
Counterfeit Transshipments. On February 25th, the European Parliament approved amendments to the EU’s main trademark act (Council Regulation (EC) 207/2009) that will permit EU customs authorities to seize suspected trademark counterfeit goods that are being transshipped through the EU. According to reports, these reforms follow previous limitations on customs seizures that were handed down in recent CJEU decisions. Particularly, a joint 2011 CJEU decision (Koninklijke Philips Electronics NV v. Lucheng Meijing Industrial Co. Ltd. (C-446/09) and Nokia Corporation v. HMRC (C-495/09)) held that copyright and trademark counterfeit goods could only be seized by EU customs officials if they were intended for sale in the EU, and not merely transiting through EU territory.
The new Directive (T7-0118/2014) is an attempt to reverse (in part) the 2011 joint CJEU ruling by granting EU trademark owners expanded rights to legal action. According to the legislative text, a EU trademark owner will have the right to prevent others from bringing non-circulated goods into the EU that bear the owner’s trademark without authorization. This includes the “right to request national customs authorities to take action in respect of goods which allegedly infringe the [IP rights holder’s] rights.”
Beyond giving IP rights holders valuable protection against the flow of counterfeit goods into the EU, the Directive also has IP protection implications beyond Europe. According to the latest statistics available from the World Shipping Council, eight of the 50 largest container ports in the world are located in the EU. The Directive thereby gives IP rights holders the ability to stop counterfeit goods leaving a substantial number of the world’s major transshipment points, thereby limiting the global dissemination of goods infringing their marks.
Although the reforms are a welcomed enhancement of cross-border protections for IP rights holders, there are a few considerations and limitations IP rights holders should be aware of:
Trademarks Only. The Directive only applies to trademarks. Although an IP rights holder can register their EU trademarks, copyright, patents and geographical indications for monitoring by EU customs officials, the Directive’s transshipment protections only apply to trademark counterfeit goods. Similar measures may be soon adopted to prevent transshipments of counterfeit copyright goods through the EU as the European Commission is currently evaluating copyright reforms. Yet, the Directive’s exclusion of copyright counterfeit goods is particularly problematic as copyright counterfeit goods constitute a substantial amount of counterfeit goods being transshipped through the EU and other major markets.
Community Trademark Registration Required. To qualify for transshipment counterfeit protections under the Directive, a trademark owner would likely need to register their mark on a community-wide (EU) level with the Office of Harmonization for the Internal Market (OHIM). Each EU member state maintains their own trademark offices, granting a registered mark exclusive protection in their state respectively. Yet, a trademark owner would likely need a community trademark registration to qualify for the Directive’s transshipment protections as the Directive’s text only identifies “European Union trademarks” as qualifying for such protections. Fortunately, qualifying foreign IP rights holders may be able to more easily (and cheaply) obtain community registration(s) through registering their trademark(s) through the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). However, requiring a community trademark registration to qualify for the Directive’s new protections puts EU member state trademark owners at a disadvantage compared to community trademark owners.
Customs Recordation Required. A trademark owner or rights holder would need to record their community trademark registration with EU customs authorities to qualify for the Directive’s new transshipment protections. Although customs recordation is not a specific requirement under the Directive to qualify for the enhanced transshipment protections, it is required to ensure EU customs officials are made aware of a community mark owner’s or right holder’s registration.
Directive Has Yet to be Enacted. Lastly, it is important to note that the Directive has yet to be enacted in EU member states and it remains to be seen how it will be implemented. EU member states have 30 months to implement the new Directive into their national laws, and although they are obligated to adopt the laws effectively and in the spirit of the Directive, the member states’ implementing legislation may have specific divergences.
Counterfeits for Personal Use. On February 6, 2014, CJEU ruled in Blomqvist v. Rolex SA (C‑98/13) that EU customs officials could seize and destroy non-EU originating counterfeit goods in the EU that were purchased by EU citizens for personal use. In Blomqvist, a Danish citizen bought a fake Rolex watch from a Chinese online seller. When the watch entered Denmark, Danish customs reported the suspected counterfeit to Rolex’s IP rights holder, who in turn demanded the destruction of the counterfeit watch. Danish courts found that because the counterfeit watch was purchased from a non-EU seller who was not directly selling or advertising to EU consumers, and because the watch was purchased for personal use, such a purchase did not constitute trademark or copyright infringement by the purchaser under Danish law.
The CJEU in Blomqvist reversed and found that Rolex’s copyright and trademarks were infringed, and that a EU IP rights holder does not have to prove that a non-EU seller was directly trying to sell or advertise counterfeit goods for personal use in the EU in order for EU customs officials to seize imports of the counterfeit goods. Under the EU’s previous customs regulations (Council Regulation 1383/2003), a EU trademark or copyright owner would have to prove that the counterfeit seller was directly trying to market their counterfeit goods to EU consumers in order for the personal purchase to be subject to infringement and seizure. As reported by commentators, the Blomqvist Court differed from the Council Regulation by establishing that an IP rights holder is entitled to protection of their EU trademark or copyright whenever an infringement of the same occurs in EU territory, and that counterfeit goods can be seized whenever such infringing goods enter EU territory.
Although the Blomqvist ruling gives IP rights holders stronger protections against foreign counterfeit sellers, like the Directive, there are considerations and limitations IP rights holders should be aware of:
EU IP Protection and Customs Recordation Required. Like the Directive, a trademark or copyright owner would need to ensure that their IP qualifies for protection in the EU and that they have recorded such IP with EU customs authorities in order to qualify for protections under Blomqvist.
Additional Investigation Suggested. Qualifying IP rights owners will likely need to investigate and track suspected non-EU counterfeit sellers to determine when and to whom they are selling personal counterfeit goods to ensure effective protection under Blomqvist. Rolex was fortunate in Blomqvist that a single counterfeit of their watch was detected by EU customs authorities. Unfortunately, not all brands are as well known as Rolex. A similar counterfeit personal purchase shipment for a lesser known brand may not have been as easily identified by EU customs authorities. These circumstances mean that an IP rights holder may need to perform their own monitoring to effectively detect personal shipments of counterfeit goods entering the EU. Unfortunately, this can be an expensive service that many IP rights owners do not have the resources to obtain.
What’s The Takeaway? These recent EU counterfeit enforcement reforms show that the EU is serious about preventing the cross-border flow of counterfeit goods. IP rights owners who have had problems with IP enforcement in the EU or through transshipments originating in the EU, now (or will soon) have enhanced means to protect their IP against counterfeits. Despite these advancements, IP rights holders should work closely with their counsel to ensure they understand and comply with the requirements and limitations of these recent reforms.
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?
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.
The Canadian Parliament reintroduced proposed legislation late last month that will dramatically impact how foreign copyright and trademark owners can protect their rights in Canada, and ultimately around the world. Reported to be enacted by the end of this year, the Combatting Counterfeit Products Act (Bill C-56; CCPA) proposes specific amendments to Canada’s Copyright Act and the Trade-marks Act that will allow foreign rights owners to better control the cross-border flow of counterfeit goods in Canada. The CCPA provides several notable reforms, including the expansion of registerable trademarks and new claims of recovery for trademark counterfeit goods. However, I believe its most important proposed reform is the establishment of a system allowing rights owners to register their copyrighted works and trademarks with Canadian authorities—while gaining help in detaining counterfeit shipments entering and leaving Canada.
The CCPA’s proposed request and detention system is an expansion of legal protections against counterfeit goods under current Canadian law because it introduces non-judicial measures rights owners can use to prevent the import and export of counterfeit goods in Canada. Currently, rights owners must obtain a Canadian court order to halt infringing imports and exports of counterfeit goods in and out of Canada. The CCPA addresses these limitations by allowing copyright and trademark owners to file a request for assistance with the Ministry of Public Safety and Emergency Preparedness (Ministry). This allows Canada’s border authority, the Canadian Border Services Agency (CBSA), to monitor inbound and outbound shipments of counterfeit products for a two-year period, and temporarily detain counterfeit good shipments to allow further investigation.
Although rights owners will be required to provide a security deposit and fees for a detention, the request and detention system will provide a more expedient, inexpensive and overall more effective means for foreign rights owners to prevent the dissemination of counterfeit products, both in Canada and beyond. Filing a request for assistance with the Ministry is a faster and relatively less expensive procedure that seeking a court order. It also allows the CBSA to assist in policing shipments, complementing any monitoring activities conducted by foreign rights owners, and ultimately improving a foreign right owner’s overall global IP enforcement efforts.
Despite these benefits, the proposed request and detention system also has limitations:
Goods for Personal Use: The CCPA’s system does not cover counterfeit goods for personal use, such as those in personal baggage.
Parallel Importation: The system excludes copyright grey goods, namely copies of copyright-protected works made in a country outside of Canada where the copies were authorized to be made.
Transshipment: The CCPA’s system does not apply to transshipments. This means that foreign rights owners’ requests to the Ministry will not assist in detaining shipments of counterfeit goods that are only intermediately transiting Canada.
National Treatment: A foreign rights owner’s access to the request and detention system may also be limited depending on the type of IP they wish to enforce. A foreign copyright rights owner can likely access the system regardless if they are Canadian or if their work was created in Canada due to the legal protections provided in the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention). The Berne Convention allows a work from a Berne Convention country (Berne Convention countries) to qualify for protection in another Berne Convention country when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country, 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. This means that if a foreign work becomes attached, and qualifies for protection under Canada’s Copyright Act, a copyright rights owner will have copyright protection for their work in Canada and may utilize the CCPA’s request and detention procedures once the CCPA is enacted.
Trademark rights owners will not be as easily able to utilize the CCPA’s system. Unlike copyrights, trademarks are generally territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. This means that a trademark owner must generally have registered their mark in Canada in order for them to utilize the CCPA’s trademark request and detention system. Further, as Canada is not a member to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (aka the Madrid Protocol), foreign trademark owners need to obtain a Canadian trademark attorney to register their marks in Canada.
What’s The Takeaway?: The CCPA will give foreign copyright and trademark owners more effective and less expensive tools to protect their copyrighted works and trademarks in Canada and beyond. Its request and detention system does this by not only restricting imports of counterfeit goods, but also limiting their dissemination from Canada to other countries. Yet, the CCPA underscores the vigilance that foreign rights owners must have to ensure that they register and re-register requests for assistance for their works and marks. Only copyright and trademark owners (not authorized parties, e.g. licensees) can file requests with the Ministry to utilize the system’s full protections.
Further, the CCPA shows that foreign trademark owners who are serious about protecting their brands in Canada, and ultimately throughout the world, need to consider registering their marks in Canada in order to effectively utilize the CCPA’s request and detention system once it is enacted. Upon doing so, such owners can better insure protection for their marks in Canada and beyond.