Daily: Day 3

ECTA 35th Annual Conference, 22-25 June 2016, Dubrovnik, Croatia

Copyright Reform China Spotlight Bad Faith

New second VP flies in,

Budapest confirmed

The opening day of the European Communities Trade Mark

Association’s 35th Annual Conference saw the location of next year’s
event and the new second vice president confirmed.

ECTA confirmed that the 2017 annual meeting will be held in Budapest,
Hungary, between 28 June and 1 July.

With F Peter Müller stepping aside and Ruta Olmane taking over as
president today, Anette Rasmussen has been unanimously elected as
second vice president.

Rasmussen was previously a member of ECTA’s law committee and has

served as vice chair of the European IP Office link committee.

ECTA’s new leadership team is now set, with Sozos-Christos

Theodoulou taking over as first vice president and in a position to
move up to president in 2018.
Continued on p3

New second vice president flies in, The tide is turning, says Campinos
Budapest confirmed
Continued from p1
Müller, meanwhile, has been recommended to
become a member of the advisory board on the
European Cooperation Projects, an EUIPO initiative
aimed at promoting convergence of practices and
tools in trademarks and designs.
In that role, Müller would advise the EUIPO and
EU member states on the allocation of funds on
cooperation and conversion projects.
The highlight of the opening day of the conference
came during the keynote speech, which was
delivered by Emil Tedeschi, president and CEO of
Atlantic Grupa, a food company with significant
presences in Croatia, Germany, Slovenia, Bosnia
and Herzegovina, Serbia and Macedonia.
Tedeschi said that his company was founded on Then, he said, there were many negative feelings
partnerships with brands such as Wrigley, whose towards the value of IP. “Now the tide is turning in
products Atlantic went on to distribute. the debate,” he explained.
Today, Atlantic distributes products on behalf of
major global brands. But the company needed to
begin producing and distributing its own brands if it
wanted to grow, he said.
“It’s very difficult to do brands from scratch,” Tedeschi
admitted. To overcome this, Atlantic embarked on a
series of acquisitions, including homemade fruit and
vegetable specialist Foodland in 2015.
Atlantic’s own brands now account for 68 percent of
its annual revenue, which has reached €750 million
per year.
Tedeschi told attendees that Atlantic is aiming to
create a globally successful food brand, on a par
with Italy’s pizza, for example, with red pepper
spread, which he hopes will become widely
synonymous with the Adriatic region.
Tedeschi’s experience has shown that while such
brands could have attractive packaging or a
particular recipe, the key to making them global
successes is invoking emotion in the consumer.
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ECTA News
EUIPO seeing EU trademark filings spike in the first
six months of 2016. National IP offices are enjoying
The tide is turning in the conversation about similar demand, meaning that heightened interest in
intellectual property, but with a better appreciation IP rights is a global trend.
of its value comes greater responsibilities for those
who deliver it, António Campinos told attendees of As a result, IP offices such as EUIPO have a duty to
the European Communities Trademark Association improve their service for users, Campinos said. The
35th Annual Conference. EUIPO has invested in new technology and systems,
and is increasingly moving its service online in a bid
The EU IP Office executive director told attendees to meet user appetites.
that the changes brought by the trademark reform
package, including the renaming of his own agency, Most EU trademarks are now filed electronically, he
are only the beginning. “Change does not stop said, with prosecution taking 20 weeks to occur.
there,” he said.
Campinos pointed to the debates that raged only a
few years ago when the Stop Online Piracy Act and Published by
the Anti-Counterfeiting Trade Agreement, intended
to strengthen the hand of IP owners, were resoundly
defeated in the US and EU, respectively.
www.ipprotheinternet.com
EUIPO’s European Observatory on Infringements of
IP Rights has conducted a range of studies into how
IP affects EU citizens. Editor: Mark Dugdale
editor@ipprotheinternet.com
The observatory recently surveyed almost 9,000 small
and medium-sized enterprises in Europe to uncover Designer: John Savage
how they use IP rights to support their businesses, johnsavage@ipprotheinternet.com
with some 60 percent saying that protecting their
rights had a positive effect on their businesses. Associate Publisher: Carlos Northon
carlosnorthon@ipprotheinternet.com
These surveys indicate that appreciation for the
value of IP is increasing, Campinos said, but they Publisher: Justin Lawson
are also revealing that IP is increasingly being justinlawson@ipprotheinternet.com
disrespected, with the same SME survey singling
out the prevention of copying as the main reason for Published by Black Knight Media Ltd
registering IP rights in the first place. Copyright © 2016 Black Knight Media Ltd.
Another survey, conducted earlier this year in All rights reserved.
conjunction with the OECD, put the value of trade in
fake goods in the hundreds of billions of US dollars, Company reg: 0719464
or equal to the GDP of some countries. Copyright © 2016 Black Knight Media Ltd.
All rights reserved.
“It is common knowledge now that IP and
innovation are essential,” Campinos said, with the
3
 New council members
Members of the European Communities Trade Mark Association
elected new council members during the 35th Annual Conference
Austria: Marc Keschmann, Haffner & Keschmann Patentanwälte

Belgium: Olivier Vrins, Altius

Bulgaria: Elena Miller, Bojinov & Bojinov; Olga Sirakova, Interius

Croatia: Davor Boskovic, Producta; Mladen Vukmir, Vukmir & Associates

Denmark: Frank Jørgensen, NJORD Law Firm; Anette Rasmussen, Awapatent

Finland: Hannu Halmetoja, Berggren; Ari-Pekka Launne, Kolster

France: Caroline Casalonga, Casalonga Associates; Stéphane Guerlain, Armengaud-Guerlain (new nomination);
Stéphanie Legrand, Legrand Lesage-Catel Gaultier

Germany: Andreas Thielmann, Cohausz & Florack

Greece: Dr Nikolaos Lyberis, Vayanos Kostopoulos

Ireland: Seamus Doherty, Tomkins & Co

Italy: Fabio Angelini, De Simone & Partners; Angelica Lodigiani, Barzanò & Zanardo

Luxembourg: Pierre Kihn, Office Freylinger

Romania: Delia Belciu, Stratulat Albulescu; Crina Frisch, Frisch & Partners (new nominations)

Spain: Luis-Alfonso Durán, Durán-Corretjer

Slovakia: Karol Fajnor, Fajnor IP

Slovenia: Jasna Habič, Item Patent and Trademark Agency (new nomination)

Sweden: Mats Lundberg, Groth & Co

United Kingdom: Joe Cohen, Collyer Bristow (new nomination); Imogen Wiseman, Cleveland; Claire Lazenby
5
Speaker Spotlight Mark Dugdale reports

Digital killed
the legal star

ECTA’s Mladen Vukmir discusses the past and future of intangible assets in a
digital, networked world, finding that the law might be too far behind to catch up
Your session is entitled ‘Rogue Waves and Crosswinds’—will the
disruptive nature of the digital world be the focus, or have we moved
beyond that?
Let me put it this way—we ain’t seen nothing yet. Despite the digital revolution
happening almost two decades ago, or more recently if we pinpoint the
beginning as the introduction of the worldwide web, I’d argue that we are
closer to the beginning of the transformation than its end.
In practical terms, the best example is the music industry. The force of this
technological change has reformed the business entirely, totally redefining
users’ wants and needs. The movie industry was next and the developments
did not stop there.
Has how we consume content really changed that much?
I’d argue that society is continuing to dematerialise its reality. What used to be
material, for example, a musician playing a song to an audience, became an
analogous record. Then, with digital technology, its nature changed. The song
became a copy, or equal to the original. That is not the same as the analogous
mediums. Now, previously material objects, for example, a tennis shoe, will
become digital files, shareable like a song and likely printable. Advanced
printing by nanotechnology, for example, has the potential for us to be printing
our shoes via our desktop computer at home in a decade.
In such a scenario, we might still be buying our laces, but the implications
are profound. What happened to copyright owners when copies of their

The best example is the music industry.

The force of this technological change
has reformed the business entirely, totally
redefining users’ wants and needs

6

works became instantly shareable? The same could well happen to shoe
brands, faced with the possibility that their once intricate and complicated
designs could be replicated at the press of a button.
Isn’t what you describe simply counterfeiting and piracy, both
age-old problems?
Piracy and counterfeiting are remnants of the analogous age. Now we have
perfect copies and instant shareability. I’m not sure this is merely piracy and
counterfeiting anymore, but something much more disruptive.
How is the law reacting?
My major concern is that the legal profession has lost a lot of credibility over
the past decade by failing to listen and repeating the mantra that the law can
adapt. Systems are undergoing fundamental changes that, in my opinion, the
law has failed to grasp. Consistency has been forgotten in favour of the case-
by-case basis as the increased number of increasingly different transactions
simply cannot be dealt in any other way. The law needed to set a good example
over the last decade but I think it has failed to do so, so much so that I worry
society might conclude that it is failing its basic test, to provide guidance.
Can the law ever again provide that consistency, and by extension,
become the guiding hand once again?
To quote on Croatian academic: “We won’t see consistency in legal systems
during our lifetime.” I think that says it all. Whether the law will be able to
keep its central role is questionable because of that lack of consistency. Laws
traditionally provide guidance and without consistency, society will inevitably
reconsider its usefulness.
Having said that, I don’t think, ultimately, it’s inconsistency that’s hurting the
law, but complexity. It’s so at odds with how we run our societies today. A few
decades ago, a legal document was carefully crafted and painstakingly built
into a unique piece of knowledge by lawyers. Nowadays, a legal document is
often just a form to be signed that glances at typical situations, while complex
legal issues, the disputes, are being dealt with by alternative dispute resolution.
Uniform Dispute Resolution Policy (UDRP) proceedings are a good example,
as are the mechanisms of content platforms and social media. They don’t
have law so much as rules, or preferred business practices. They are so
unlike legal systems that they don’t even provide for appeals. I figured
that out during a UDRP case that I oversaw. One of the parties wanted
anonymity, which was unusual because the decisions are published online
and are publically available. But I decided, referring to UK privacy law, that
the party was entitled to this anonymity. That practice has persevered in
the intervening years, even though it doesn’t constitute law. These types of
business mechanisms are not necessarily going to be consistent, but they
exist, as does a resolution of sorts.
7
Speaker Spotlight
Mladen Vukmir
ECTA council member and member
of the local organising committee
Partner at Vukmir & Associate
Mladen Vukmir practices intellectual
property law in Zagreb, Croatia, where
he founded Vukmir & Associates in 1991.
Mladen specialises in intellectual property
and information and telecommunications
law, licensing, commercial law, litigation,
and alternative dispute resolution.
Now, I don’t mean to sound dramatic. The law isn’t going to disappear, but it’s like
the concept of layering in technology. The TV didn’t kill the radio, and the radio
didn’t kill print. They just shift. This is what I think is happening with the law. The
rule of law is losing its position as the central axis of how we run society.
But laws can be changed, can they not?
Take the examples of the Paris and Berne Conventions, which, in my opinion,
are two zombies. We prop them up because, politically, we cannot come up with
new treaties. There is no agreement in the world. When the multilateral system
that we have for negotiating treaties is broken down, there is a proliferation of
regional and bilateral treaties, championing the rights of territoriality enshrined
in the old conventions. The Berne and Paris Conventions are not serving
modern businesses and economies properly. There is the European single
market, which is an early beacon of the direction we are going to, followed
by the emergence of the digital single market, which is global. It’s affecting
the whole principle of territoriality, on which the conventions were built. The
principle makes no sense for modern society.
In addition, it’s not only territoriality that has changed but the forms of creativity
too. IP rights were created to fit certain forms of creativity. But what has happened?
The nature of creativity changed. We once had gifted individuals inspired to create,
but they were few. Today, everyone is a creator. We have this constant churn of
creativity that knowledge-based economies are constantly producing. The result
is it’s not perfectly aligned with what we were protecting when we first designed
IP rights. We just can’t fit our creativity in those existing categories.
We live with these zombie conventions and pretend they work, but they
don’t. The whole system of intellectual property is not very strong with these
conventions at its back.
Mladen’s discussion, ‘Rogue Waves and Crosswinds’, is the eighth session of
the day, taking place at 14.30. He will elaborate further on the past and future
of intangible assets in a digital, networked world.
Session Spotlight
Speed to single market
Law matching the pace of the digital age? The EU is getting to work on its
Digital Single Market initiative
The future of copyright is under full consideration in the EU, with copyright owners
and creators concerned that their content is not fully protected or exploitable.
Copyright, essentially a bundle of rights, from performing in public to reproduction,
has been called unfit for the digital age, when copying is the click of a button away
and sharing is not only easy, but socially implicit.
Is copyright fit for purpose? Dr Christian Freudenberg, chair of the European
Communities Trade Mark Association’s (ECTA) copyright committee, and
partner at Schomerus & Partner in Hamburg, thinks, when done properly, it is.
“Copyright protection supports creative people to invest their time and
skills into the creation of new works to the benefit of culture and the
economy,” he explains. “It means they can focus on their creativity while
being sure that the results are protected and can be used as a source to
earn their living, or even more.”
It is copyright owners and creators who may feel let down by the European
Commission’s Digital Single Market initiative. A major step forward in the
programme was announced in December 2015, with a proposed regulation that
would allow consumers to take their digital files or online subscriptions from
one EU member state to another, and several public consultations to consider
modernising copyright law, with a view to introducing legislative proposals.
But, as far as the cross-border portability right, which would begin to do
away with the territorial nature of copyright, is concerned, copyright owners
and creators were far from impressed.
A new report, which was backed by the likes of 21st Century Fox, Sky
and Viacom and timed for release during the Cannes Film Festival in May,
claimed that full cross-border content portability in the EU would cost TV
and movie producers up to €8.2 billion per year in the short term.
The European Commission’s ultimate aim to do away with territoriality in
licensing agreements and create a truly digital single market would result
in a 48 percent drop in new content in the short term, said consultancies
Oxera and O&O, which were tasked with responding to the European
Commission’s Digital Single Market plans for gradually removing obstacles
to cross-border access to content and to the circulation of works in the
EU. Those plans were put into motion with the introduction of the limited
cross-border portability right, which would allow content to be accessed
while travelling temporarily between EU member states.
In the medium to long term, completely removing territoriality from licensing
agreements in the EU could cost €4.5 billion per year in consumer welfare,
according to the report, which painted a pessimistic picture of how movie
and TV producers would react.
“Less content would be produced—the less mainstream content would
be dropped. Locally targeted content would be particularly affected,
threatening cultural/language diversity. Some consumers would pay a
higher price and/or be left with a lower-quality offering; others would be
priced out of the market altogether,” the report summarised succinctly.
Despite this negative reception to the Digital Single Market’s first reform,
Freudenberg is less pessimistic. Having copyright under discussion at the
EU’s top table at all is positive development, he says.
“At least the Digital Single Market strategy puts copyright into the focus
of European legislative issues and will strengthen the harmonisation of
8
Mark Dugdale reports
the EU copyright. While we are used to a harmonised trademark law for
more than 20 years, there are still too many differences in member states’
copyright law systems to secure a common market, as copyright law was
only harmonised in some aspects so far.”
One of the consultations, which ran until 1 April 2016, asked for comments
on copyright enforcement measures against online infringement. The
European Commission wants to ‘follow the money’ and introduce measures
that will cut-off revenue sources for online pirates.
Specifically, the European Commission is considering amendments to the
legal framework that will focus on commercial-scale infringements and
clarify the rules for identifying infringers, the application of provisional and
precautionary measures and injunctions and their cross-border effect, and
the calculation and allocation of damages and legal costs.
It also consulted on possible changes to the rights of ‘communication to
the public’ and ‘making available’, and “whether any action specific to
news aggregators is needed, including intervening on rights”.
Freudenberg comments: “Some parts of the Digital Single Market strategy
seem to be driven by the needs and demands of the industry to create
an access to the common online market, but do not really consider the
interests of the creators of the protected works. But creativity and its
legal and economic protection is most important to secure continuing
developments in all areas of culture and economy.”
The Digital Single Market is still in its early stages. The cross-border
portability right was the first step, although with its origins grounded in
a regulation, the European Commission wants it implemented across the
EU’s 28 member states by 2017.
Günther Oettinger, commissioner for the digital economy and society, said late
last year: “Our action plan gives the direction for further reform in spring next year:
we want a copyright environment that is stimulating, fair, rewards investment in
creativity and makes it easier for Europeans to access and use content legally. Our
ongoing work on the role of platforms and online intermediaries will also help to
translate our plan into concrete proposals.”
Law matching the pace of the digital age? You’ll have to tune in next week to
find out what happens in the next installment of copyright reform in the EU.
Dr Christian Freudenberg is moderating ‘Copyright: Creating Values and Protecting
Them—We Are Not Alone’ at 09:00.
Dr Christian Freudenberg
Chair of the ECTA copyright committee
Partner at Schomerus & Partner
Dr Christian Freudenberg has been
a partner of the multidisciplinary
partnership Schomerus & Partner (tax
consultants, attorneys-at-law and
certified accountants) in Hamburg,
Germany, since 2012. He was previously
an in-house lawyer in the music industry.
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Session Spotlight
China’s trademark framework has come a long way in the past decade,
thanks in large part to European practitioners
When it comes to the EU, nothing quite embodies the union quite like
its persistency in seeking trademark reform, both at home, if that’s how
you can describe 28 separate member states, and abroad, most tellingly
in China.
The EU’s work on impressing the importance of an efficient and bold
trademark system to Chinese authorities has been underway for more
than a decade, says Michele Ferrante, founding and managing partner of
Ferrante Intellectual Property, which has offices in Beijing, Shanghai and
Hong Kong.
“The relationship between China and Europe has delivered great results,”
he says. “Europe has been excellent in co-working with and supporting
China with the IP Key programme.”
IP Key is a three-year-project that launched in July 2013. Implemented by
the EU Intellectual Property Office in partnership with the European Patent
Office, it supports the EU-China IP Dialogue and EU-China IP Working
Group, the EU’s official venue and body respectively for the exchange of
expertise and advice between the two global powerhouses.
Together, and since EU-China IP Dialogue was set up in 2004, they have
worked to improve the protection and enforcement of IP in China, for the
benefit of both local and foreign rights owners. An area where the EU has
been particularly vocal is regulatory reform, and the European Communities
Trade Mark Association (ECTA) has been on hand to support the process.
Ferrante says: “We have worked extensively on regulatory reform in China,
along with IP Key, the EU-China IP Working Group and the European
Chamber of Commerce. Through these groups, we receive drafts of the
10
Mark Dugdale reports
laws and together with other law firms we can make our comments. This
is very important and everyone involved has benefited greatly from the
cooperation that has been developed over the last 10 or so years.”
He goes on to add: “What is very positive is the evolution of the relationship
with China. I’ve had the chance to attend almost all the working groups.
Discussion reaches a very high level and the minutest of technical details
are reviewed. The response from China is always very interesting.”
A criticism often levelled at China, particularly where trademark protection
and enforcement is concerned, is that the country is not willing to
modernise. Ferrante dismisses this criticism as missing the point.
He says: “We might not always like China’s response to our suggestions, but
it’s their position and it’s deeply felt. We will discuss and argue, amicably of
course, but their position is their position.”
Having said that, Ferrante applauds the achievements of the past decade.
“The evolution has been impressive,” he explains. “If you consider what
China has accomplished in the past 15 years, it cannot be described any
other way. We should consider China from this point of view. There is room
for improvement, but there is always something to work on. The first-to-file
system for trademarks, for example, is far from ideal. We have to deal with,
but it’s a problem for the medium to long term.”
Trademark reform
Zhang Mao, China’s minister for the State Administration for Industry and
Commerce (SAIC), wrote in an article in 2014 for WIPO Magazine that

Michele Ferrante
Member of the ECTA
anti-counterfeiting committee
Founding and managing partner of
Ferrante Intellectual Property
Advising clients on Chinese IP matters
since 1999, Michele Ferrante’s practice
focuses on advising high-profile foreign
companies in the protection of their IP
rights and designing anti-counterfeiting
strategies in China tailored to their needs
and requirements.
the newly amended Trademark Law “streamlines trademark registration
procedures and strengthens the legal protection of trademarks in China in
line with international standards”, while promising “to generate significant
economic and social benefits for the country”.
The law, which took effect 1 May 2014, dealt with, most significantly, the
issue of bad faith registrations. China has for a long time struggled to cope
with international brands losing out to local bad actors intent on profiting
from the fame and fortune those brands have earned elsewhere. While not
dropping its first-to-file trademark system, acknowledging and attempting
to deal with bad-faith registrations in the same way as other vital markets
was a step in the right direction.
Ferrante acknowledges the progress made, but concedes that China
still has a way to go before nefarious filers can be dealt with properly.
“Everybody pushed to have bad faith trademark applications dealt with in
the amended Trademark Law that was implemented in 2014, but what was
passed was only really a general principle, albeit a positive one, meaning
that trademarks should be registered in good faith.”
“Having said that, if you look at the recent positions of the Chinese
Trademark Review and Adjudication Board in terms of cancellations, they
have been helpful and have a better understanding of the whole picture.”
“The other point is that Europe has been consistent and is always open to
cooperation. The discussions have been tough but also clear and fair. And
this is a testament to the relationship between Europe and China. Other
countries have taken a harder approach and this ended their relationship,
which isn’t very helpful.”
Ferrante will lead a comprehensive session on China during the ECTA Annual
Conference. It will feature Jorg Weberndorfer, the European Commission’s
11
Session Spotlight
IP rights policy officer for China, Hong Kong, Macao, Mongolia and Taiwan,
Paul Ranjard, chair of the EU Chamber of Commerce in the EU-China IP
Working Group, and Thomas Jullien, China representative of the Bordeaux
Wine Council.
“Attendees will have the chance to receive information from people who
have great experience. They have deep knowledge of the system and its
evolution. The source is very important,” Ferrante comments.
What will attendees take away from the session? Ferrante says: “I think
attendees should take consideration of the system in China and its
difficulties. It’s a very difficult environment but they should not make
the mistake that I’ve seen too frequently, that China is too difficult of an
environment so they are not going to bother registering their trademarks or
making the minimum investment to protect their trademarks.”
“Unfortunately, the biggest problem at the moment are the rights owners
who do not do the minimum in China. They have appropriate strategies
in Europe and the US, but not in China. This is the key point in foreign
countries, I think.”
“I’m not saying China has to stop and there is no room for improvement.
What I’m saying is, taking into consideration all the work done so far, the
rights owners have to start thinking about what more they can do. It’s a
much more difficult task coming to lawyers after they’ve discovered a
problem in China. The new trend is very dangerous.”
Ferrante points to the example of one brand that recently lost a case and an
important trademark in China, costing $16 million in damages for infringement.
He says: “Previously, someone in China would register a mark and then
try to sell it. But they were not very active or aggressive. Now they know
the system, which is very efficient. And they use the system against the
original rights holder in China, at which point it becomes infringement in
China because the rights owner does not own that Chinese trademark. So
a problem becomes much worse. There are many cases like this.”
Rights owners need to begin putting China at the top of the list for trademark
registration, says Ferrante. “It’s too easy for these bad actors to say that
your client should have registered it in the first place.”
“Once that is done, the onus is on the system to fix the situation. This is
my point. If a rights owner would take this approach, we would move a step
further to China becoming a more hospitable environment. This happens in
every other country, so why not in China?”
Michele Ferrante’s panel, ‘From Europe to China: IP Key, The Chinese
Trademark Reform and Other Related IP Matters’, is the sixth session,
taking place at 11:30.
China Interview
China might seem like a desert in an oasis, but it’s really the
other way around, says Ray Zhao of Unitalen Attorneys at Law
What was the most significant change implemented in 2014 when
Trademark Law was amended?
When China’s Trademark Law was amended in 2014, significant changes
were made, particularly to deal with the problem of bad faith trademark
applications. Chinese trademark law did have some rules against bad faith
applications before the amendment, but they discouraged the practice
rather than prohibited it. The new Trademark Law strongly prohibits bad faith
applications, placing a significant burden on applicants to prove that they are
filing their applications in good faith.
What guidance has the CTMO given to brands that believe their
marks have been registered in bad faith?
The Chinese Trademark Office (CTMO) understands that bad faith can be
difficult to prove, so it has provided practical guidance to brands. For example,
bad faith applicants might be former employees of the brand, so providing
evidence to show this would strengthen a case. The applicant might be a
retailer or distributor that works with the brand. Those situations would also
be considered to be bad faith. Another example would be if the brand and the
applicant had previously engaged in a dispute, such as litigation or domain
name arbitration. That situation would mean they already knew each other
before the trademark application was filed, suggesting bad faith on the part
of the applicant.
Other criteria include negotiations, specifically the correspondence that the
brand and the trademark applicant might have exchanged. If the brand has
emails from the trademark applicant sent before the application, that could
prove it was filed in bad faith. This is the kind of guidance that was provided by
the CTMO following implementation of the amended Trademark Law.
Brands are still struggling to cope if reports are to be believed. What
do they need to do to overcome this problem?
The amended law has already been in force for two years, but the fact is that a
well-known trademark can enjoy cross-class protection in China. The catch for
12
Mark Dugdale reports
All is not
as it seems
Lei (Ray) Zhao
Partner
Unitalen Attorneys at Law
many brands in Europe and the US, for example, is that they do not sell their
goods or services in China.
Prior use or fame would not be provable in this market. That means that some
brands will not be well-known in a jurisdiction that is first-to-file. A registration is
king. Those brands should apply for a trademark as early as possible in China.
It will help a lot. If they delay filing here, and their trademarks are been
registered by third parties, proving prior use on the basis of being
established in Europe or the US makes it difficult to retrieve a trademark.
Some brands actually have prior use in places such as Hong Kong, but
those markets have different laws and so use in those jurisdictions will not
be considered to be use in China. It’s essential that brands are aware of
this point.
Is it fair to say that China is a navigable jurisdiction for brands?
Absolutely. Even though China’s IP framework is relatively new compared to
those in Europe and the US, the CTMO is making progress every year. The
office is recruiting new examiners to manage the increasing workload and
emphasising the protection that exists for brands because China wants to
create a positive environment for China. Without a certain legal environment,
those foreign brands might think twice before investing.
Of course, China is still improving. It’s far from perfect, but the tools are there
for brands. They just need to use them.
ECTA in Photos
ECTA in Photos
Conference Programme
Friday 24th June 2016

08.00-18.30 Registration and information desk - Exhibition Area

08.00-13.00 Parallel sessions

09.00-11.00 Fourth session - Elafiti Conference Hall 3+4

Copyright: Creating values and protecting them—we are not alone

09.00-11.00 Fifth session - Elafiti Conference Hall 1+2

Prior right agreements: Pitfalls and ploys

11.00-11.30 Coffee Break - Exhibition Area

11.30-13.00 Sixth session - Elafiti Conference Hall 3+4

From Europe to China: IP Key, the Chinese trademark reform and other
related IP matters

11.30-13.00 Seventh session - Elafiti Conference Hall 1+2

WIPO: How to file a global trademark without national objections

13.00-14.30 Lunch - Main Hotel Restaurant & Nocturno Wine Bar

14.30-15.30 Eighth session - Elafiti Conference Hall

Rogue waves and crosswinds: The past and the future of intangible
assets in a digital, networked world

15.30-17.00 Ninth session - Elafiti Conference Hall

Case law update

17.00-17.15 Summary - Elafiti Conference Hall

17.15-17.45 Closing reception

19.00–23.00 Gala Dinner at the Valamar Resort