The DLA Piper Fashion, Retail and Design Group distributed a special edition of its e-magazine, Law à la Mode. The edition coincides with the 135th INTA (International Trademark Association) Annual Meeting in Dallas, Texas. Given the nature of the conference, the special edition focuses exclusively on branding issues such as securitizing trademarks, IP rights in shop formats and brand protection considerations for entrants into emerging markets. Please click here to read the e-magazine.
By Alberto Zacapa
The Madrid Protocol (“Protocol”) is one of two international treaties of the Madrid System or International Trademark System (“System”). The Protocol provides a cost-effective and efficient way of acquiring trademark protection in multiple countries. The Protocol allows an applicant to file one international application through a single office, in one language, with one set of fees in a single currency. Moreover, foreign associates or agents are not needed to assist in the filing process. If an application is approved, the World Intellectual Property Organization (“WIPO”) may grant international certificates of registration. While these international registrations do not offer protection in any specific country, they indicate approval for designated countries. It is up to each designated country to grant or refuse protection. If protection is granted in a country, the effect is the same as if the mark had been registered through that country’s trademark office. The benefits of the Protocol extend to simplified post-registration maintenance of a trademark registration. The Protocol provides one straightforward step to record any changes in name, ownership or address of either the representative or the holder of a mark. WIPO then transmits any request for protection, renewal and other documentation to all designated offices.
Countries in Latin America have long been hesitant to adopt the Protocol. Perhaps, this hesitancy stems from the possibility that its adoption would constitute a reduction in revenue from the trademark application process. Spanish was only introduced as a language of the Protocol in 2004. The language limitation had previously excluded the Spanish-speaking region. Nonetheless, membership has remained low among the Latin American countries. However, in early 2012, Colombia became the 87th member of the Madrid System. The benefits of having a streamlined system that works in parallel with the national trademark application process were recognized by Colombian Vice President Angelino Garzón, who led this transformation. The Protocol entered into force a few months later on August 29, 2012.
By Rebecca Kay
This Tuesday, members of DLA Piper's Fashion, Retail and Design Group assembled in Washington with retail clients from around the globe, for a working lunch entitled "Around the retail world in sixty minutes: Reflecting the top branding issues for retailers in 2012". As well as being a fantastic opportunity to catch up with industry peers, the event was a fascinating insight into topical issues and concerns.
World Intellectual Property Organization (WIPO) Director General Francis Gurry said the day “is an opportunity to celebrate the contribution that intellectual property makes to innovation and cultural creation – and the immense good that these two social phenomena bring to the world.” WIPO posted a number of suggestions for celebrating World IP Day. This year’s theme is “visionary innovators – people whose innovations transform our lives.”
What are you doing to celebrate World IP Day?
A well-deserved recognition for our colleague!
How many IP attorneys do you know who own a personal registered trademark? Mark Feldman is one. Remaining true to his name and his profession, he owns MARK IS MY NAME AND MARKS ARE MY GAME. Also hitting the mark is the personalized license plate on his car: CIRCLE R.
Despite the puns and fun, trademarks are serious business for the chair of DLA Piper LLP’s intellectual property practice in Chicago. Being in a large general practice firm, Mark gets queried on the broadest possible range of IP issues, consulting with partners and associates and counseling corporate clients “on their myriad issues du jour.” He also teaches IP basics to general practice lawyers to help them recognize the full scope of issues facing clients. In Mark’s words, “I have the greatest job in the world if you have a short attention span!”
Active in INTA for nearly 30 years, Mark recognizes important industry trends, including increasing use of trademarks in search engines and throughout cyberspace. “Courts and statutes must deal with what constitutes ‘use’ of a trademark, and they are still in the early stages of wrestling with these concepts.” Mark says that “so far, the court decisions have been very favorable for the Internet industry. It will be interesting to see if the pendulum swings back to give greater respect to the traditional rights of brand owners to control the use of their marks.”
In Mark’s opinion, while the world seems to be getting smaller, the opposite is true in the trademark realm. “As more countries are formed, trademark owners have additional places to protect their marks.” He advocates simplification, with more countries joining the Madrid Protocol and eliminating such formalities as legalization.
Very active on INTA’s Saul Lefkowitz Moot Court Committee since 1995—most recently as the coordinator of all regions for the national law student competition— Mark loves introducing the next generation of trademark attorneys to this area of law.
As for his favorite trademarks, Mark remains sweet on NUTRASWEET because he was “there for its birth and it’s become a casebook study on how to develop and implement a branded ingredient strategy.”
When not working, Mark spends time with his “most important copyright client”—his wife, who runs a nonprofit that produces films—and his two daughters, his son-in-law and his one-year-old granddaughter.
We just wanted to say thanks for spending such a wonderful week with us at INTA 2011. We DLA Piper attorneys had wonderful time connecting with our foreign counsels and clients from around the world. After a good weekend of sleep, we'll begin gearing up for next year in Washington, DC!
When I travel, I often send pictures to my team to keep them updated on what I'm up to. I thought it would be fun to share my time here at INTA with Re:Marks Blog too.
INTA-attendees: be forewarned! Registration can be dangerous. Tom cuts finger trying to jam name tag into badge holder - then nearly gets strangled by lanyard.
Gorgeous event here at INTA: Gowlings brunch at another legendary American spot.
The clouds have parted here in San Francisco where we're meeting for the International Trademark Association -- and the sun has come out after several days of rain and cold. Curiously at the top of the hill in Chinatown, there is a building that has the word "Trade Mark" prominently affixed to it. Does anyone know why this is?
Larry Flynt, one of the standard bearers of the First Amendment showed up at a photo shoot at the Four Seasons San Francisco when we were there meeting folks at INTA.
One of the best annual dinners at INTA is the Indian fete put on by the Indian IP firm of K&S Partners. Here is the formidable Jyoti Sagar. I sat at his table and trademark lawyers from around the world, such as Germany and UK were discussing geographic indications and Darjeeling tea -- which K&S gave out to their guests as parting gifts in fancy gift bags.
Our legislative subcommittee had an interesting meeting at INTA earlier this week. The group engaged in a lively discussion on the Protect IP Bill that was introduced into the Senate last week. More on this bill later... Here's a picture of key members of our subcommittee.
Some more photos from our INTA adventures!
In the battle for co-existence between national brands and private brands (in Australia, known as home or house brands), several truths emerge:
- National brand owners have to accept competition represented by emergence of home brands and furthermore, that home brands can often quite lawfully borrow from, and leverage off, the look and feel and get up of a national brand.
- The ability for a national brand owner to successfully enforce its intellectual property rights will typically turn on whether the company has taken positive steps of registering its trade mark rights and demonstrating ownership of other packaging rights - eg. trade dress, copyright.
- Proof of ownership, particularly registered rights, will give a trade mark owner the necessary 'cut through' to force a meaningful conversation with private brand owners.
- Any aspect of packaging which you regard as your valuable IP - eg colours, shapes, layout and design - should be registered as individual trade marks. The benefits of registration, when it comes to enforcement and protection of your patch, far outweigh relatively minor costs of registration.
During a constructive INTA panel discussion of representatives from manufacturers, private and national brand owners, valuable insight was provided today into the challenges for business in adopting new brand names which don't infringe upon third party rights. Target's in-house counsel revealed that several hundred brand concepts were considered and searched before settling on their UP and UP brand. Unless you, as a national brand owner, take the positive steps of registering your trade marks then your marks will not be revealed on these searches and a battle with a private label inevitably looms.
Last night, a group of nearly 50 DLA Piper Intellectual Property attorneys from around the world got together. As a global firm, we never feel far apart, but there is something special about the opportunity we get once a year to meet face-to-face.
- In India, disparaging advertising is reported to be an increasing problem. Companies should be aware their brand could be subject to ridicule in advertising in India.
- Disparaging advertising not specifically legislated against in Australia. Instead, this sort of advertising is largely moderated by commercial and cultural influences which results in consumers not responding positively to a company's disparaging attack on a competitor particularly where the attack is baseless, scandalous or amounts to innuendo. To the extent that an advertisement is untruthful then possible grounds may exist under our ACL (misleading or deceptive conduct) or passing off. HK, Japan and US reported similar situations in their countries. in the cases of Japan and US, additional potential remedies to comparative advertising issues exist under Unfair Competition laws.
- Representatives from most jurisdictions agreed that disparaging advertising is unlikely to amount to trade mark infringement because no 'use as a trade mark'.
- Enforcement of trade marks in China: HK representative advised that enforcement in China is improving for overseas trade mark owners but the emphasis is on overseas trade mark owners to register in China. China's trade mark system operates on a first to register basis making it important for companies to protect their mark in China.
- Each jurisdiction represented in this discussion reported that matrix of laws dealing with passing off, copyright, trade dress (US), statutory misrepresentation provide a means for dealing with a competitor's conduct which 'sails too close to the wind'.
Comparative advertising is one of those issues that underscores the importance of having your company's marketing team work closely with the legal team.
What do you think? Is comparative advertising effective? Which country has it "right"?
With more than 8,500 individuals from 140 countries, INTA’s Annual Meeting is the superbowl for trademark professionals. This year, DLA Piper is representing our ONE FIRM mantra with dozens of attorneys from more than 10 countries.
Also, be sure to visit us here at Re:Marks Blog throughout INTA for posts related to INTA education sessions.