intellectual property: an international...

Intellectual Property:

An International Perspective

February 23, 2018

UNO Thompson Center

Omaha, NE

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Faculty Bios

Tom Somervell – Partner, Chartered and European Patent Attorney: Tom specializes in the patenting of mechanical, process engineering, medical devices, electrical, electronic, telecoms and computer-related inventions. He has more than 15 years of experience in drafting and prosecution of patents, as well as analyzing and providing opinions on validity and infringement of patents. Tom has also represented clients at examination, opposition and appeal hearings at the European Patent Office. He represents UK-based clients from industry and academia, including carrying out patent drafting and prosecution work for local Universities. This has included advising on the patentability of inventions as well as drafting and prosecuting UK and overseas patent applications, for example relating to power grids, electronic circuits and software. Tom also carries out prosecution of European and UK Patent applications for a number of U.S. associate law firms. Tom graduated from Oxford University with an MA in Engineering Science and is a Chartered member of the Institution of Mechanical Engineers. Prior to joining Marks & Clerk, he built up wide experience of engineering in industry, including 14 years at the Research and Technology Division of British Gas. This included working on projects related to coal gasification, industrial gas utilization and air conditioning equipment, as well as equipment used in onshore natural gas treatment and storage. Stephen Blake – Partner, Chartered and European Patent Attorney: Stephen is a chartered UK and European Patent Attorney experienced in filing and prosecuting patent applications, broadly in the fields of telecommunications, software, electronic engineering, and mechanical engineering. In addition, Stephen delivers business focused advice to his clients relating to the management of their Intellectual Property portfolios, including enforcement, assignments and licensing, and represents his clients before the European Patent Office at oral proceedings. Stephen graduated from the University of Nottingham with a first class honours degree and a PhD, both in Electronic Engineering. Prior to entering the patent profession, Stephen spent six years in the Royal Air Force as an Avionics Engineer. In 2014, Stephen featured in Managing Intellectual Property as co-author of an article on the Patent Prosecution Highway. In addition to this and following the recent Banking on IP report from the Intellectual Property Office (IPO), Stephen has been invited to join their working group to help develop a framework of tools to aid businesses wishing to value their intellectual property. In March 2015, Stephen was appointed as an Associate Member of the European Patent Institute's Professional Education Committee. More recently, Stephen has been elected to the Council of the European Patent Institute, the Institute of Professional Representatives before the European Patent Office. Daan Erikson – Associate, Admitted to practice in Nebraska, Massachusetts, New York, and the U.S District Court: Daan advises Fortune 500 companies, startups and individual authors on trademark, copyright, right of publicity and right of privacy matters. Daan has gained high trust for his particular experience in managing domestic and international trademark portfolios and counseling clients with complex copyright issues. Before joining Husch Blackwell, Daan researched copyright law and policy for more than two years in New York at the Fordham IP Institute under Professor Hugh Hansen, where he interfaced with judges, practitioners, academics and government leaders from around the world, including heads of agencies such as the U.S. Copyright Office, European Commission, United States Patent and Trademark Office (USPTO), U.S. Trade Representative and the World Intellectual Property Organization (WIPO). During law school, Daan served as a judicial extern to the Honorable Richard Fruin of Los Angeles Superior Court and interned in HBO’s Santa Monica, California office. While at HBO, he drafted talent contracts for HBO’s original programming, licensing agreements and other contracts.

The Impact of Brexit on

Intellectual Property and the State

of the Unitary Patent System and

Unitary Patent Courts

Tom Somervell

Marks & Clerk

February 23, 2018

UNO Thompson Center, Omaha, NE

1

The Impact of Brexit on

IP in EuropeAn Update for Nebraska Patent Bar Association

February 23rd 2018

Tom Somervell

© 2017 Marks & Clerk LLP | Marks & Clerk is a registered trade mark.

Brexit Summary

Impact of Brexit on

o Patents

o UP and UPC

o Trade marks

o Designs

o Other considerations

Contents

• In a referendum on 23 June 2016, 51.9% of the participating UKelectorate voted in favour of the UK leaving the EU.

• Article 50 of the Lisbon Treaty sets in place a two-year processfor a country to withdraw from the European Union.

• On 29 March 2017, the Prime Minister formally triggered Article50 by writing to the European Council President, Donald Tusk.

• The UK is on course to leave the EU on 29 March 2019.

Brexit – A brief background


2

Source: Institute for Government analysis of European Commission documents, 22 May 2017

The EU’s proposed timetable for Brexit negotiations



• Many aspects of IP will be completely unaffected if the UK leaves the EU. These include:

o All EPO procedures (filing, prosecution, opposition, appeal)

o National UK Patents, Designs and Trade Marks

• Possibly best summed up in the words of the official statement from EPO President Battistelli on 24 June 2016:

• “The Office underlines that the outcome of the referendum has no consequence on the membership of the UK to the European Patent Organisation, nor on the effect of the European Patents in the UK.

• Concerning the Unitary Patent and the Unified Patent Court, the Office expects that the UK and the participating Member States will find a solution as soon as possible which will allow a full implementation of these so-long awaited achievements”

Impact on IP?


• Some aspects of IP will ultimately be affected, but will not change in the short term. These include:

o EU Trade Marks

o Community Designs

o Supplementary Protection Certificates

o Regulatory data protection

o Marketing authorisations

• It is expected that the UK will put in place transitional provisions and legislation to ensure a smooth transition to any new UK IP regime when UK has left the EU, e.g.

o Enactment of EU regulations into UK law

o Recognition, conversion or registration of existing EU rights as UK rights.

Impact on IP?

3

Patents


• EP patents via the EPO

• National patents via national IPOs

• This has been the situation since 7 October 1977 and there are no plans for this to change.

Current


38 EPC contracting states, including all 28 EU members

European patents granted by EPO

Single application process:

“bundle” of national rights

Enforced and defended on a national basis

The existing system under the European Patent Convention

Image from EPO website

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• Unitary patents (UPs):

o single patents whose territorial scope will extend to all participating countries.

o will be obtained via a single designation following the grant of a patent application under the existing European Patent Convention (EPC).

o A unitary patent will provide uniform protection with equal effect in all of the participating countries.

o A European patent will benefit from unitary effect at the request of the patentee.

o The unitary patent will co-exist with the classical European patent.

o For example it will be possible to have a unitary patent for the 25 participating member states together with a classical European patent taking effect in one or more EPC contracting states, such as NO, ES, CH, TR.

Unitary Patent


• Unified Patent Court (UPC):

o will have exclusive jurisdiction over both UPs and, subject to a transitional “opt-out”, existing and future (non-unitary) European patents in force in the participating countries.

Unified Patent Court


Obtaining a unitary patent

Validation

Unitary Patent

EPO

Europeanpatent

application

Filing andformalities

examination

Search report with preliminary

opinion onpatentability

Grant ofEuropean

patent

Refusal or withdrawal

of application

Substantiveexamination

On request

LimitationRevocationOpposition

proceedings

Appealproceedings

Bundle of national rights

European Patent Attorney

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• Following the “Brexit” referendum, many thought that the UK would no longer take part. However, on 28 November 2016, the UK government announced its intention to ratify UPC agreement for UK participation in Unitary Patent (UP) and Unified Patent Court (UPC).

• 25 EU member states (out of 28) agreed to participate.

• Croatia, Spain and Poland did not agree to participate.

• Ratification is required by 13 of the participants, including UK, FR, DE.

• So far 12 have ratified:

o AT/FR/BE/LU/DK/SE/FI/PT/MT/BG/IT/NL

o UK and DE are expected to ratify soon

Unitary Patent

What countries will it cover?


• Not presently known.

• A “sunrise” period for opting European patents out of the UPC system under transitional arrangements is expected to start 3 months before.

• Preparatory work is under way e.g. set-up of the Court and its Divisions, finalising of Court rules, appointment of judges and training, forms and IT systems, EPO implementing rules for the new UP designation.

When can we expect it to come into force?

Unitary Patent


6


• Once the UK leaves the EU, the Unitary Patent, which is an EU regulation, will cease to cover the UK.

• Until then, a Unitary Patent will cover the UK.

• Following the UK’s departure, in 2019 at the earliest, it is almost certain that the UP/UPC will continue to operate.

• Explicit and separate provisions would be required for the UK to recognise a Unitary Patent (and allow it to be enforced in the UK) after the UK leaves the EU.

o Very little is known about whether that would be possible – still less is known whether that might actually happen.

What will happen when the UK leaves the EU?

UP/UPC


• The UK’s long-term future in the Unitary Patent (UP) and Unified Patent Court (UPC) is unclear. However, because unitary patents would be obtained via the European Patent Convention (EPC), representation rights are determined by the EPC, not EU membership. European Patent Attorneys based in the UK will therefore continue to be able to act before the EPO in all capacities, including obtaining UPs.

• Marks & Clerk have offices in the UK and in (other) EU member states, so in any event can continue to represent clients to obtain IP rights in Europe.

Representation

Trade marks

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• EU trade mark registrations via the EUIPO

• National registrations via national IPOs

Current

• Unless there is an agreement or arrangement to the contrary EUTMs will cease to cover the UK once the UK leaves the EU (this has been confirmed in a communication from the EUIPO in December 2017)

• Highly likely there will be a simple and cost effective means of extending EUTM protection to the UK

• Unclear exactly what this will look like and there have been a number of mooted possible options…

Outcome of Brexit for EUTMs covering the UK


• Likely there will be some form mechanism for extending EUTMs to cover the UK after UK leaves the EU – (e.g. automatic extension of EUTMs to the UK)

• Likely the cost and process of extending protection will be relatively small and simple

• But some uncertainty e.g. will official fees be payable? will EUTMs be registered automatically or re-examined? Will there be an opportunity for earlier trade mark owners to oppose EUTM based UK applications? What happens with pending applications?

Most likely outcome


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• Recognition/conversion of EUTMs is almost certain if the UK leaves the EU, but cannot be absolutely guaranteed.

• The safest strategy is to file UKTM applications in parallel to EUTM applications, or designate the UK separately from the EU in international applications, until the situation becomes clearer.

• Marks & Clerk currently has three offices in other EU states, so we can guarantee that we will be able to continue to prosecute EUTM applications without interruption.

• We will be able to offer a combined service, so that applicants can conveniently instruct us for both EU and UK TM applications via a single order letter.

Trade Mark Filing Strategy

Designs


• Community design registrations via the EUIPO

• National registrations via national IPOs

Current

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• Community Designs will continue to confer protection in the UK until the UK leaves the EU (until 2019 at least).

• If and when the UK leaves the EU, an existing Community Design will no longer provide protection in the UK.

• We fully expect that there will be a mechanism that allows the conversion of a Community Design to a UK Registered Design or that extends the protection afforded by existing Community Designs to the UK. However, this cannot be guaranteed.

• The ability of UK design attorneys to act before the EUIPO will depend on the nature of the future relationship of the UK with the remaining EU.

• National UK Registered Design filings will not be affected.

Impact of Brexit on Community Designs


• Recognition/conversion of Community Designs is almost certain if the UK leaves the EU, but cannot be absolutely guaranteed.

• The safest strategy is to file UK Registered Design applications in parallel to Community Design applications, until the situation becomes clearer.

• IMPORTANT: The UK is not yet a member state of the Hague Union (although it intends to join). As a consequence, an international design application cannot currently result in a UK national registration and so a separate UK application will be required.

• Marks & Clerk currently has three offices in other EU states, so we can guarantee that we will be able to continue to prosecute Community Design applications without interruption.

• We will be able to offer a combined service, so that applicants can conveniently instruct us for both EU and UK design applications via a single order letter.

Design Filing Strategy


• As a global firm with qualified European TM and design attorneys across our offices, including Luxembourg and France, M&C will be able to continue handling all your Trade Mark (EU and UK) and Design (CRD and UK) registrations/applications if and when the UK leaves the EU.

EU TM, UK TM, CRD and UKRD with us

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Other potential impacts of Brexit


• Agreements that identify the EU as a territory (e.g. licensing agreements and co-existence agreements) will be affected if the UK leaves the EU.

• Since potentially impacted agreements may require renegotiation, it will be important to review them as soon as possible.

Agreements with third parties


• We do not know whether there will be single market access after Brexit.

• There is a lot of speculation, but also a lot of political “heat” surrounding this issue.

• Brexit will pose questions regarding Exhaustion of IP rights – will IP rights be “exhausted” throughout the EU when they are put on the market in the UK – probably not, but we do not know.

• Competition law is also likely to be affected, and the European Competition Commission is unlikely to have effect in the UK after Brexit

Single Market Access & Exhaustion

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Questions?


Contacts


Tom Somervell

Partner

Stephen Blake

Partner

[email protected]

This presentation has been produced by Marks & Clerk.

Items featured are intended to provide a summary of the subject matter only. Readers should not act on any information without first obtaining specialist professional advice.

[email protected]

The Impact of Supreme Court of

the United Kingdom Decision in

Activis v. Eli on the Doctrine of

Equivalents

Stephen Blake

Marks & Clerk

February 23, 2018


1

Doctrine of Equivalents – the UK version!

Stephen Blake

February 2018

© 2017 Marks & Clerk Solicitors LLP | Marks & Clerk is a registered trade mark.

“The extent of protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”

Article 69(1) EPC 1977

The law


2

Article 1 – General principles

Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

Protocol on the Interpretation of Art. 69


Scylla and Charybdis


A lintel - the bar that goes across the top of a window to carry the weight of the bricks laid above it

Claim 1 – rear member "extend vertically”

Catnic Components v Hill & Smith [1982]


Hill lintel at an angle of 6°

0.6% weaker in load bearing capacity (negligible difference).

3

Apparatus for removing hair

Claim 1 – helical metal spring

Improver v Remington [1990]


1. Rubber roller with grooves

Works in the same way?


Diplomatic conference 2000


4

Final version of Article 2 of the Protocol:

For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

Not in force until 2007

Diplomatic Conference 2000



Actavis v Eli Lilly [2017] - Supreme Court


5

• Actavis proposed to use

(a) pemetrexed diacid

(b) pemetrexed ditromethamine

(c) pemetrexed dipotassium

• In practice the pemetrexed compound would be reconstituted in saline prior to use.

• Solubility of a given pemetrexed salt would not be known but would be routine to establish.

• Skilled person would expect to be able to find alternative to disodium

The alleged infringement


• Direct infringement

• Would have been indirect infringement

• Result would be the same in other European courts

Lord Neuberger (President) and four others

Actavis v Lilly: Supreme Court judgment


1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?

2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same wayas the invention?

3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

Reformulated Improver Questions


6

1. Yes

2. Yes

3. No

Lord Neuberger: Yes, Yes, No

Application to the facts



Is novelty now an issue?

UK High Court – Oct 2017

Generics and Synthon v Yeda and Teva


7

• UK courts now harmonized with rest of Europe?

• Harmonization desirable as Unified Patent Court approaches (2019?)

• Doctrine of equivalents finally triumphs

o Be wary when considering scope of competitor patents

o Be careful what you say during prosecution

In conclusion


Contacts


Stephen Blake

[email protected]

T + 44 121 634 2321

International Trademark and

Copyright Protection

Daan Erikson

Husch Blackwell

February 23, 2018


1

© 2 0 1 8 H u s c h B lac k wel l L L P

International Trademark and Copyright Protection

Daan G. EriksonAssociate, Husch Blackwell LLP

Admitted to practice in Nebraska, Massachusetts, and New York


Copyright v. Trademark: Some Key Differences

Copyright Trademark

Generally worldwide Territorial

Fixed works of authorship Any device used to distinguish goods or services

Limited life Potentially unlimited life


Global Copyright and Trademark

• Treaties & Organizations• GATT: General Agreement on Tariffs and Trade

• Originated after WW II to reduce tariffs between nations.

• Included provisions on nondiscrimination through most‐favored nation (“MFN”) treatment and “national treatment.”

• Current version of the agreement from 1994.• WTO: World Trade Organization

• Created in 1995.• Successor to GATT organization.• Administers GATT, GATS, TRIPs.• 164 members (as of 2017) including the U.S.

2



• “MFN”• Not giving preferential treatment to one foreign

country over others.• Must accord the same benefits to all countries

within the trading group.• “National treatment”

• “Each Member shall accord to the nationals of other Members treatment no less favorable than it accords to its own nationals with regard to the protection of intellectual property” (subject to a number of exceptions). See, e.g., TRIPs Article 3.



• Treaties & Organizations• The Paris Convention, signed in 1883, revised most

recently in 1967 in Stockholm • Applies to patents, trademarks, and industrial

property.• 177 member countries (as of 2017) including

the U.S.• Important provisions: “national treatment,” and

priority rights (e.g., retaining priority filing date for trademark applications filed in other countries within six months of filing in the first country).



• Treaties & Organizations• The Berne Convention, signed in 1886, revised

most recently in Paris in 1971 • Applies to copyrights.• 175 member countries (as of 2018) including

the U.S.• “National treatment”• Mandated certain minimum standards.

• Example: the making available right.• Disallowed formalities as a prerequisite to

copyright protection.

3



• Treaties & Organizations• WIPO: the World Intellectual Property

Organization (created 1967)• An agency of the United Nations.• 191 member states (as of 2018) including the

U.S.• Administers 26 international treaties.

• TRIPs: the Agreement on Trade Related Aspects of Intellectual Property (1994)


TRIPs

• Establishes minimal substantive standards for copyrights trademarks, geographical indications, industrial designs, patents, integrated circuit designs, and trade secrets; first international treaty to do so comprehensively.

• Contributed significantly to harmonizing IP laws and rights.

• Links IP issues to trade issues with the possibility of enforcement through WTO; the WTO can issue trade sanctions against countries in violation of international IP obligations.

• “National treatment.”


Copyrights

4


Worldwide Copyright Rights

• Copyright is a bundle of exclusive rights granted to authors for their creative expression.

• Acquiring copyright in works:• Automatic under U.S. copyright law as soon as

original expression is fixed in a tangible medium.• An author receives protection in all Berne

Convention and WTO countries when a “point of attachment” exists

• U.S. nationals (and nationals of all Berne Convention countries) automatically receive protection in all Berne Convention and WTO countries.


Worldwide Copyright Rights

• Acquiring copyright in works• Non‐Berne nationals may receive rights in Berne

Convention and WTO countries if they a “point of attachment”:• If the author publishes the work in a Berne

country first or within 30 days of publishing in a non‐Berne country.

• If the author becomes a habitual resident of a Berne country.

• Non‐Berne nationals cannot claim rights in Berne Convention and WTO countries in unpublished works.


Other Non‐Copyright Rights

• Directive on the Legal Protection of Databases, Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996.• Databases are protected in the EU sui generis,

independent of any copyright protection• “Neighboring rights”: performers’ rights.

• The Rome Convention: the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, signed 1961 (U.S. not a member)

• Place of performance important under Rome.• Protects performers against unauthorized

broadcasting and fixation of live performances.

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• Droit de suite: Resale right.• Berne Convention Article 14ter.• Optional for Berne Convention countries.• Not recognized under U.S. federal copyright law.• California state law recognized the right under

certain circumstances, but the 9th Circuit ruled the law unconstitutional as a violation of the Commerce Clause in 2012 and the U.S. Supreme Court declined to hear the appeal.



• Moral rights/droit moral• The right to claim to be identified as the author.• The right to object to any distortion, mutilation or

other modification that would be prejudicial to the performer’s reputation.

• Not recognized by the U.S., except in a limited way in the Visual Artists Rights Act (VARA).



• Beijing Treaty on Audiovisual Performances• Adopted in 2012.• Not yet in force.• Grants the rights of reproduction, distribution,

rental, and making available to performers in fixed audiovisual works, such as motion pictures.

• Grants certain rights in unfixed performances.• Grants certain moral rights.

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Exceptions and Limitations in Copyright Law

• The Berne “Three Step Test”• Article 9(2) of the Berne Convention.• “It shall be a matter for legislation in the countries

of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.”

• Examples:• Fair use.• Marrakesh VIP Treaty.


Duration in Copyright Law

• Berne Convention, Article 7(1): Life plus 50 years.• Berne Convention countries may give longer terms but

not shorter than life plus 50.• E.g., currently, the United States is life plus 70

(since 1998), the EU is life plus 70 (since 1993), Mexico is life plus 100.

• “Rule of the Shorter Term”• Berne Convention Article 7(8).• A country with a longer copyright term does not

need to grant authors a term any longer than the term in the work’s country of origin.

• An exception to “national treatment.”


Duration in Copyright Law

• Other laws on duration may apply (e.g., the term for anonymous works, pseudonymous works, and works made for hire published since 1978 in the U.S. is 95 years from publication or 120 years from creation, whichever is shorter).

• Note duration may depend on when the author died as laws on duration have changed over time.

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International Copyright Enforcement

• While local copyright registration is not required, it may be helpful in certain jurisdictions for enforcement purposes.


Trademarks


Trademark Basics

• Definitions• A trademark includes any word, name, symbol,

slogan, or device (such as a design), or any combination of them, used to identify goods or services and to distinguish them from those manufactured, sold or serviced by others.

• A service mark is a trademark used in the sale or advertising of services (as opposed to products).

8


Trademark Basics

• The function of trademarks• Indicate the source of origin of the goods;

distinguish goods from those of competitors• Consumers recognize your brand as a quality

guarantee for the goods or services bearing the trademark

• Create and maintain a demand for the product through advertising

• Symbol of goodwill


Building a Global Trademark Portfolio

• Trademark rights are property rights• a subset of “intellectual property” along with

copyrights, patents, and trade secrets• Trademark rights are gained through:

• Use (only some countries)• Registration

• The importance of registration:• Obtain maximum control over use of the mark• Provide the best basis for challenging infringers• Prevent third parties from registering the mark• Lessen financial risks


Building a Global Trademark Portfolio

• Goal: to obtain and enforce trademark registrations where your brand is or will be used around the world

• How does that work?• Select a new mark• Search availability of new marks• File applications for new marks• Prosecute applications through to registration• Maintain registrations by filing required documents• Enforce trademark rights• License and monetize your brand

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Filing New Trademark Applications

• Select the appropriate territories for registration• Trademark rights are territorial• Some regional registration systems exist

• European Union Trade Marks• OAPI (Africa)

• Madrid Protocol and Madrid Agreement filings through the World Intellectual Property Organization (WIPO): a cost‐saving alternative to filing directly in many countries• Pros and cons



• United States• First to use.

• International• Many countries and jurisdictions are “first to file,”

such at the EU.



• United States• Rigorous examination of application:

• Descriptiveness, likelihood of confusion, particular requirements with goods and services descriptions.

• International• Level of examination and goods/services

descriptions that are allowed varies.

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• United States• Application timing:

• Examined within 3 months initially• Application published within 8‐9 months if no

significant issues exist.• Registration issues within 10‐12 months if no

significant issues exist.• International

• Application timing: varies greatly, e.g.:• Fiji: 1‐2 months• India, Brazil, Venezuela: years



• Use requirements vary by country.• Use not required to obtain a registration in many

countries.• Proof of use is required in the U.S. to obtain a

registration.



Austria

Belgium

Bulgaria

Croatia

Cyprus

Czech Republic

Denmark

Estonia

Finland

France

Germany

Greece

Hungary

Ireland

Italy

Latvia

Lithuania

Luxembourg

Malta

The Netherlands

Poland

Portugal

Romania

Slovakia

Slovenia

Spain

Sweden

United Kingdom

(And any country that joins the European Union in the future)

One application for a Community Trade Mark (CTM) in the EU covers 28 countries:

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• Andean Community• Four South American Countries (Bolivia, Colombia,

Ecuador, and Peru) coordinate to enforce trademark protection and avoid duplication.

• Use in any one of these countries counts as use in each country.



• Mexico• A “first to file” country.• However, limited common law rights exist, e.g.,

prior users have a right to file a cancellation based on prior use, whether in Mexico or abroad.



• What to register?• Composite marks:

• The entire mark?• The word portion alone?• The design element separately?

• Word marks:• Roman characters and characters of the local

language, if used• Proper translation or transliteration

• Trademark costs vary depending on the country and number of “Classes” (categories of goods and services) covered

• Consider local requirements, e.g., format in China.

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The Art of Trademark Maintenance

• Dockets show when maintenance and filing deadlines will occur

• For U.S. marks, between 5 and 6 years after a registrant’s mark registers, registrants must file a declaration that they are still using a mark, or the registration will be abandoned.

• Between years 9 and 10, registrants must file the first renewal, and then again every 10 years after that.

• Non‐U.S. jurisdictions have a variety of requirements.


Enforcing Trademark Rights

• Tools for monitoring and protecting trademark rights• Country‐specific or worldwide watch notices• Common law watch services



• Types of civil enforcement• Cease and desist• Opposition• Cancellation• Litigation• Customs

• Section 337 Investigations with the U.S. International Trade Commission; obtain exclusion order directing Customs to stop infringing imports from entering the U.S.

• Criminal enforcement in the U.S. for counterfeiting

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• Policing third party use of a mark• Use by trademark licensees• Use of confusingly similar or counterfeit marks by

unaffiliated parties• The importance of enforcing

• Put infringers on notice• Prevent loss of trademark rights

• The importance of establishing a benchmark enforcement policy• Consistency• Efficiency/effectiveness


Licensing and Monetizing

• Make your brands work for you• Licensing• Monetizing• Consumer engagement• Social media


Trademark Success

• Make your brands work for you• Choose a strong mark• Use the mark properly• Monitor third party use and applications• Enforce rights in your brands

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Rights Related to Trademarks

• Geographic Indications (GIs)• Protected under TRIPs:

• Governments that allow registration of GIs must allow owners of GIs to prevent use of marks that mislead the public as to the geographical origin of goods.

• All governments must allow GIs to protect wines and spirits, regardless of whether third party use is misleading or not (certain exceptions apply).


Daan G. [email protected]‐964‐5160

intellectual property: an international...

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