Class 46 readers involved in domain name disputes may be interested in WIPO’s conference marking the 20th anniversary of the UDRP.

The conference takes place in Geneva on 21 October 2019 and is organised by the WIPO Arbitration and Mediation Center. In the 20 years of the UDRP, WIPO has handled more than 45,000 cases, and the conference will look at the lessons learned as well as what the future holds.

The conference begins with a welcome by WIPO Director General Francis Gurry and introduction by Brian Beckham, Head of the Internet Dispute Resolution Section, and Erik Wilbers, Director of the WIPO Arbitration and Mediation Center.

Topics covered during the conference will include:

• The UDRP in numbers
• Reviewing core substantive and procedural UDRP guideposts
• The UDRP panellist’s experience
• A trade mark owner’s enforcement perspective
• The UDRP as a best practice; the CCTLD landscape
• The evolving DNS: from .com to keywords, domaining and branded TLDs
• The UDRP’s ability to address evolving bad faith
• The future of the UDRP
• IP dispute resolution models for platforms

There will also be opportunities for discussion, as well as coffee and lunch breaks. The conference concludes with a cocktail reception.

The conference is targeted at UDRP panellists, brand owners, trade mark practitioners, counsel, academics, registrars, ccTLD administrators and other domain name and Internet stakeholders.

Space is limited and the registration fee is Sfr250. You can register for the conference here.

New ccTLD services

Practitioners might also like to note that WIPO has recently added dispute resolution services for the .CN and .中国 (China) and .UA (Ukraine) domains. In addition, the .MX (Mexico) service has gone paperless.

CTA Deputy Secretary General Mr WU Dongping (pictured right) introduces the CTA workshop to be held at this year’s MARQUES Annual Conference in Dublin, in our latest workshop preview.

China Trademark Association (CTA) is a national-level organization founded by some well-known domestic enterprises in 1994 with the approval of the Ministry of Civil Affairs. It undertakes the functions of promoting trade mark policies and laws, strengthening self-discipline of trade mark agency industry, providing service for trade mark and brand building, promoting international exchange of trade marks and brands, so on and so forth.

CTA boasts around 1500 corporate and individual members. The corporate members are enterprises with strong economic strength and high trade mark reputation, trade mark agencies and relevant organizations. The individual members are experts, scholars and legal practitioners with academic accomplishments and rich experiences.

Cooperation with MARQUES

Ms Julia Hongbo ZHONG

It was in 2014 that CTA began to participate in the 28th Annual Conference of MARQUES. Members have attended the MARQUES Annual Conference since 2016. In 2017 and 2018, MARQUES sent members to celebrate the China Trademark Festival and held a forum during the China Trademark Annual Meeting.

CTA held a forum during the MARQUES Annual Conference in 2018. This year, CTA plans to hold a forum on “prevention and regulation of malicious trade mark registration”, aiming to introduce the trade mark management system with Chinese characteristics to trade mark holders and other agencies or individuals in Europe and the whole world. Taking cases as examples to explain relevant laws, CTA informs participants of the laws and practices on preventing malicious trade mark registration and tells them how to use China’s trade mark law to prevent malicious registration and protect our own rights.

CTA workshop

Judge Ms WANG Yanfang

The CTA Workshop will be moderated by Ms Julia Hongbo ZHONG, Chair of MARQUES China Team and Vice President of Lee and Li - Leaven IPR Agency Ltd. The agenda is as follows:

Opening remarks: by MARQUES representative, and by Mr WU Dongping, CTA Deputy Secretary General

Session 1: Voices from the Chinese Judges

Speaker: Judge Ms WANG Yanfang, Chief Judge of the Supreme People's Court, with the topic of "Laws and regulations function to control bad-faith registrations when dealing with trademark infringement in civil proceedings"

Judge Ms ZHANG Xiaoli

Speaker: Judge Ms ZHANG Xiaoli, Senior Judge of Beijing IP Court, with the topic of "Laws and regulations function to control bad-faith registrations during the Administrative proceedings when granting a trade mark right"

Session 2: Viewpoints of scholars, attorneys and Chinese brand owners

Speaker: Mr Paul RANJARD, Counsel of Beijing Wanhuida Peksung IP Group, with the topic of "Features of Chinese trade mark management system and handling of bad-faith trademark registration in China"

Speaker: Ms Betty WANG, Tencent Technology (Shenzhen) Co., Ltd, with the topic of "Sharing experiences of fighting against bad-faith registrations"

Speaker: Mr WU Xinhua, Director of the Intellectual Property Department of Weiheng Law Firm, with the topic of "How to effectively use the Chinese Trademark Law to combat bad-faith registrations and protect one’s own rights and interests"

Mr Paul RANJARD	Ms Betty WANG	Mr WU Xinhua

General License 27 published by the US Office of Foreign Assets Control (OFAC) on 6 August allows payments to the Venezuelan Government for filing, prosecution and maintenance of patent, trade mark, copyright or other forms of IP protection in Venezuela, including opposition and infringement proceedings.

New US Government sanctions (Executive Order Blocking Property of the Government of Venezuela; EO 13884) prohibit US individuals or companies from engaging in transactions with the Government of Venezuela, by broadening the definition of Government of Venezuela to include not only the state and named officials but also all property and property interests of the Government of Venezuela (Section 6(d), e.g., political subdivisions, agencies, entities and persons controlled directly or indirectly by the Government).

In the case of IP matters in Venezuela, on 6 August 2019OFAC published 13 new general licences that excused US persons from the terms of the Executive Order. In particular, General Licence 27 authorises transactions in connection with the protection of IP rights in the US or Venezuela. Expressly permitted are the filing, prosecution and maintenance of any patent, trade mark, copyright, or other form of IP protection in Venezuela, as well as the filing and prosecution of opposition or infringement proceedings with respect to an IP right, or the entry of a defence in such proceedings. 

General License 27 authorises US persons to pay fees to the Government of Venezuela, and to pay reasonable and customary fees and charges to attorneys and representatives within the US or Venezuela in connection with IP transactions. Find out more information from The US Treasury here.

This is a guest post written for Class 46 by Ricardo Alberto Antequera and Ricardo Enrique Antequera of Antequera Parilli & Rodriguez in Venezuela, a member of MARQUES

The latest in our series of blogs previewing the MARQUES Annual Conference in Dublin discusses the workshop on comparative and sponsored advertising

The workshop is one of four that will be held on Thursday afternoon during the Conference. See details of all the workshops here.

The workshop will be divided into two parts.

In the first half, speakers from Russia, China, the UAE and the US will give an overview of the legal frameworks and relevant enforcement bodies governing comparative and influencer advertising in each country and some key principles that govern the same. They will also discuss recent high profile disputes together with key take-aways.      

The second half of the workshop will be more interactive. Participants will be presented with a series of examples of comparative advertising and influencer advertising, together with a list of the issues raised.

“Table participants will be encouraged to talk about how these examples would be handled in their particular jurisdictions, and identify key similarities and differences in treatment,” says Julia Anne Matheson of Hogan Lovells, who will moderate the workshop. “We will then ask speakers from each table to report on key points of interest arising out of those discussions with input from the speakers, allow for questions and dialogue amongst participants, and then conclude.”

The workshop is organised by the MARQUES Brands and Marketing Team.

Look out for more previews of workshops on the MARQUES blogs during this month.

The Anti-Counterfeiting and Parallel Trade Team has compiled a list of key performance indicators (KPIs) and a case study to help companies track online anti-counterfeiting efforts.

The sale of counterfeit and infringing products on online marketplaces is of ongoing and even growing concern for trade mark owners, not only in B2C but also in B2B business. Many companies have set up online monitoring and take-down activities either focusing on certain key countries or globally.

How do you convince your management to invest in this? The obvious answers – avoid harm to people, environment and profit; avoid dilution of your trade marks and reputation damage; safety; compliance – are often not enough.

There is a need to get organised and collect data to compose a management report. Hard facts and figures, commonly known as key performance indicators (KPIs), are expected to measure the impact and determine whether anti-counterfeiting goals are met.

The Team has compiled a list of KPIs and a hypothetical case study of the Sunshine company exploring how they can be used (click here to access – MARQUES login required). There are many individual approaches possible and businesses certainly differ, so please consider this as a checklist of possible KPIs.

By Petra Herkul, Chair of the MARQUES ACPT Team

In a guest post, Selma Ünlü discusses an important decision in Turkey that brings to an end debates over the treatment of actions for non-use of trade marks:

Article 14 of the now-abrogated Decree Law number 556 was the basis of non-use cancellation action of trade marks in Turkey. This was cancelled on 6 January 2017 by the Constitutional Court, before the effective date of the Industrial Property Law numbered 6769 (IP Law) which entered into force on 10 January 2017. However, this cancellation decision caused several problems in the implementation.42

The IP Law regulating the obligation to use a trade mark and the cancellation of a trade mark in case of non-use entered into force just four days after the cancellation decision made by the Constitutional Court. But the provisions of the IP Law could not be applied in non-use cancellation actions filed in the period when the abrogated Decree Law numbered 556 was in force due to the principle of non-retroactivity. Therefore, courts have been dismissing cases on procedural grounds due to the lack of legal basis.

These were not the only implementation problems caused by the cancellation decision of the Constitutional Court. The decision also caused discussions whether non-use cancellation actions may be initiated before the date of 10 January 2022. Hence, some practitioners and academics assert that the use obligation of a trade mark within five years of its registration date started on the effective date of the IP Law, namely 10 January 2017. They therefore argue that such actions could not be filed without implementing the five-year grace period as of 10 January 2017, namely before 10 January 2022, even for trade marks where the five-year grace period has expired.

Supreme Court decision published

The decision of the 11th Chamber of the Supreme Court to address these questions was finally published on 25 June 2019.

The decision (numbered 2019/1765) discusses whether the relevant provisions of the IP Law should be applied retroactively or not. Although the decision emphasises the non-retroactivity of laws, it also states that there is no obstacle for legislators to introduce a law that is meant to be effective retroactively. It is indicated that the IP Law has entered into force on 10 January 2017 with its publication in the Official Gazette; however, the draft was accepted by the Parliament on 22 December 2016.

Since the Constitutional Court’s decision was not yet made by the date of its acceptance, the legal gap to be caused by the decision dated 6 January 2017 was not foreseeable by the legislator. It is indicated within the decision that the essential purpose of the legislator from the beginning was to regulate the provisions of the IP Law regarding the use of trade marks and cancellation of trade marks in case of non-use to be effective retroactively.

As stated in the decision of the Supreme Court, laws are not implemented retroactively as a rule and have effect prospectively only. But the Supreme Court has concluded with this decision that implementing IP Law 6769 to cover the period before the effective date serves the intention of the legislator and the purpose of the law.

In the light of the case law made by the Supreme Court very recently, discussions about whether non-use cancellation actions based on the IP Law would be filed before 10 January 2022 have come to an end. Accordingly, cancellation actions can be filed for trade marks where the five-year grace period is expired before 10 January 2022.

Selma Ünlü is Senior Partner of NSN Law Firm and a member of the MARQUES Unfair Competition Team

Tove Graulund and Jessica Le Gros (pictured right) from the MARQUES International Trade Mark Law and Practice Team attended the recent Madrid Working Group meeting at the World Intellectual Property Organization. The meeting is for contracting parties to the Madrid Agreement and Protocol and NGOs including user groups and industry associations to discuss changes to the Madrid system for International Registrations to improve the functioning and use of the system.

MARQUES attended to advocate for brand owner interests, and to seek to improve the way in which the International Registration system operates for brand owners. The agenda for the meeting and the MARQUES position paper can be found here.

Topics on the agenda included:

Replacement (where an IR designation that is equivalent to an existing earlier national registration can benefit from the earlier registration's priority date). MARQUES advocated for a central mechanism to provide for replacement to make it easier for brand owners to use. The Working Group is reviewing a proposal to implement a transitional timeframe for all contracting parties to implement the option of partial replacement.

Timeframes for provisional refusal, including whether the timeframe for notifying applicants of a provisional refusal, the method of calculating the response period and the timeframe for response should be harmonised. This is of particular importance to brand owners as the current system is not transparent and there is a risk that applicants miss the deadline to respond to provisional refusals. MARQUES’ position is that these should be harmonised, but that if this is not possible in the short term, it should be made clear on the face of correspondence the date by which a response is required.

Non-traditional marks. WIPO presented the results of a survey on the position in various member countries as to whether graphical representation was required, what types of non-traditional marks are accepted, and what formats non-traditional marks can be submitted in. This information is interesting and useful to brand owners wishing to protect non-traditional marks in various jurisdictions, and can be found as agenda item 4 here. MARQUES supports the modernisation of the IR system to allow for non-traditional marks, but cautioned that applicants should be made clearly aware of what type of marks are acceptable in which designations during the application form to avoid the cost and time of applications that will be automatically refused.

Dependency. This is a contentious topic that has been discussed for some time. It is a foundational principle of the Madrid system that an IR and its designations are dependent on the fate of the basic mark, but equally this principle causes uncertainty for brand owners and can mean they avoid using the system. MARQUES would like to see the principle of dependency removed, and topics under discussion included the removal of dependency, reduction of the dependency term from five years to a shorter period, freezing of dependency to observe the impact of this, or the limitation of the effect of dependency to certain types of actions by third parties (eg, challenges based on bad faith).

New languages. Russia and China put forward proposals at last year's meeting for the addition of Russian and Chinese as working languages, and this year Bahrain put forward a proposal for the addition of Arabic as well. While MARQUES is an inclusive association and supports diversity, it is difficult to see a practical way forward for the addition of three and perhaps more languages. It can only be done when machine translation is fully reliable and when it will not result in additional costs for the users. It must furthermore be ensured that the current tools, such as MarkMonitor and Fee Calculator, would remain reliable and function without difficulty. It is obviously at the same time an issue that is viewed as very important for the countries using the languages in question and also for countries that see an opportunity to have their own language included, such as Portuguese. It was clear from the discussion that the participants recognised that this was a topic that needed very thorough analysis before a decision can be taken, and it is to be expected that this will be on the agenda of the Working Group for many years to come.

For more information on the Madrid System, members can check the International Trade Mark Law and Practice Team’s dedicated page.