MARQUES has a programme of online webinars, podcasts and meetings planned for the next few months, to keep members informed and connected while lockdowns and travel restrictions continue

These include:

• Webinar on Chinese translations and transliterations: 4 February
• Spring Team Meeting (for Team and Council members): 11 to 12 March
• Corporate Breakfast Meetings (by invitation only): 18 March, 17 June and 18 November
• Talking MARQUES podcast series – first issue on Brexit, second issue coming soon!

The Annual Conference, including a Corporate Breakfast Meeting, is due to be held in The Hague, The Netherlands, from 14 to 17 September.

Future meetings already announced include the 2022 Spring Team Meeting (Barcelona, 10 to 11 March) and 2023 Spring Team Meeting (Frankfurt, 2 to 3 March).

Everyone at MARQUES hopes we will soon be able to announce more physical events where everyone can see each other again. But in the meantime we hope you will enjoy these online activities.

Find out more about upcoming events on the Events page and listen to Talking MARQUES on the podcast page. The pages will be updated whenever new activities are announced.

The latest update from the MARQUES China Team looks at three guiding cases recently published by CNIPA.

On 15 December 2020, the China National Intellectual Property Administration (CNIPA) released the guiding administrative cases on IP enforcement, aiming to provide guidance to the Administrations for Market Regulation (AMR) across mainland China to regulate the administrative enforcement.

This is the first time that the CNIPA has released guiding cases, including three trade mark cases, an invention case and a case relating to integrated circuit layout design. The three trade mark cases are summarized below for your information.

Case 1: Infringing use of trade mark in online advertisement of keyword search

Dun & Bradstreet owns the trade marks DUNS in English and Chinese, registered in China. Shanghai Zuangyuan, without extended authorization after expiration of the licence, continued to advertise its services through the search engine Baidu with the keywords, confusingly indicating its connection with the trade mark owner.

The local AMR ordered the infringer to stop infringement and imposed a fine. Through this case, the CNIPA confirms that use of keywords on search engines may constitute trade mark use, and accordingly, trade mark infringement.

Case 2: Wilful infringement proved by associated shareholders and filing history

When inspecting the market on 9 January 2018, the AMR officers of Beijing noted that the dealer HongYuanLiDe was selling sports shoes infringing ASICS’s registered trade marks.

Investigation revealed that the dealer was associated with its supplier Quanzhou AiShiKeShi as they held each other’s shares. The supplier had applied for similar trade marks which had been rejected.

The association and unsuccessful filing history prove the corresponding prior knowledge and wilful infringement.

The AMR ordered the dealer to stop infringement, confiscated the infringing shoes on stock, and imposed a fine of more than CNY55 million (€7 million), a record high.

Case 3: Contractor’s purchase and use of trade mark infringing goods constitutes trade mark infringing sale

In June 2019, the Hubei AMR found out that a contractor had been using legitimate goods, but later purchased from a suspicious salesperson some goods infringing a registered trade mark.

The AMR decided that the contractor’s purchase and preparation to use should be regarded as sales of infringing goods and constitute trade mark infringement. The contractor was fined and the infringing goods were confiscated and destroyed.

General comments: The three trade mark-related guiding cases have explicitly categorized the three types of trade mark use above as infringement and will help he AMRs nationwide to punish similar infringement in more consistently and efficiently.

By Ms Haoyu Feng and Mr Tingxi Huo, of Chofn IP and the MARQUES China Team

The MARQUES China Team is hosting a webinar on Thursday 4 February starting at 10.00 CET. Find out more and register here.

China is the second most important business partner of the EU. As China applies the first-to-file principle to trade marks, it is important to register your trade mark as soon as possible.

However, as Chinese is the mother tongue in China, having a Chinese name and trade mark is crucial. If a company does not have a Chinese-language trade mark, the market will create a name. If that name is registered by someone else, enormous legal conflicts will arise.

Other conflicts can arise if there are problems with the meaning of the trade mark. In order to overcome Chinese legal and Chinese language problems, and in order to show which considerations are important with Chinese translations and transliterations, this workshop will discuss how to make the correct translation and transliteration for your Chinese trade marks.

The webinar will be moderated by Mirjam de Werd of ABCOR in The Netherlands, who is Co-Chair of the China Team. The speakers are:

• Tingxi Huo, Chofn IP, China
• Hens J de Koning-Ghijsen, Heineken International BV, The Netherlands
• Reinout van Malenstein, HFG Law Firm & IP Agency, China

The webinar will include a panel discussion and Q&A.

The fee is €100 (MARQUES members) or €135 (non-members). You can register online.

A new position paper has been published by INDICAM and UNICRI entitled “Dangerous Liaisons: Why IP Infringements Are the New Eldorado for Organized Crime”.

The paper summarises the evidence presented during a conference organised by the Italian Ministry of Economic Development, EUIPO, UNICRI and INDICAM on 21 October last year. It is written by Claudio Bergonzi and Mariachiara Anselmino of INDICAM and Marco Musumeci of UNICRI.

The paper includes a preface by MP Alessia Morani, Undersecretary of State at the Italian Ministry of Economic Development and President of the CNALCIS; an interview with Susan Wilson, Counselor for Intellectual Property, US Attaché to the EU; and conclusions by Paul Maier, Director of the EUIPO Observatory on IP Infringements.

Speaking about the European Multidisciplinary Platform Against Criminal Threats (EMPACT) in her interview, Susan Wilson said: “It is highly unfortunate in this context that IP crimes did not carry over among the identified priorities in the fight against serious international and organized crime for the current period through 2021.”

The “production and distribution of counterfeit goods violating health, safety and food regulations and sub-standard goods” was dropped from the EMPACT cycle from 2018 to 2021. Susan Wilson said: “Because the designation of EMPACT priorities has a major influence on European law enforcement efforts against organized crime, the removal of IP crime from the EMPACT priorities has been a major concern in IP rights enforcement circles."

In his conclusions, Paul Maier said the fight against IP crime should be an enforcement priority for the 2022-25 cycle of EMPACT: “To best face the threat of IP crime, coordination of IPR enforcement efforts is of the essence. Close cooperation between EU enforcement authorities and data exchanges, with all appropriate safeguards concerning data protection, is the only way to avoid gaps which criminals will be quick to take advantage of. The first step is to establish shared priorities to ensure that enforcement authorities’ efforts all go into the same direction.”

INDICAM is one of the stakeholders of the private sector of the Observatory, where MARQUES is also represented.

The position paper can be downloaded from INDICAM’s website here.

EUROPOL recently published an Early Warning Notification regarding vaccine-related crime during the COVID-19 pandemic.

The notification warns that organised crime groups may be preparing to produce counterfeit vaccines, spread disinformation about vaccines and illegally refill vials. It also notes that some dark web markets already feature adverts for fake COVID-19 vaccines.

In addition, the notification states: “Genuine COVID-19 vaccines will be highly valuable commodities and their supply chains (storage, transportation and delivery) will be at risk of being targeted by criminals seeking to obtain these pharmaceutical products.”

All of these activities are considered a serious threat to public health.

In October last year, the WHO issued a Medical Product Alert regarding three batches of the influenza vaccine Fluzone found in Mexico, which were not authorised by the manufacturer Sanofi Pastuer.

EUROPOL is seeking to encourage vigilance on the possible involvement of criminals in the vaccine development and distribution process.

Pharmaceutical companies, trade associations and others can support enforcement authorities by filing Customs applications for action and sending information to the IP Enforcement Portal. On 12 December EU Customs issued an urgent call to rights holders of COVID 19-related products.

If any Class 46 readers have information about fake COVID-19 or flu vaccines, medicines or personal protection equipment being advertised or sold online or on social media, they are encouraged to contact EUROPOL or national health authorities.

Janet Satterthwaite reports on the latest developments regarding the rebranding of the Washington Redskins and Cleveland Indians.

Sometimes we need to be grateful for a win, even if it’s not for all the right reasons. In this case, the Washington football team is changing its name from THE REDSKINS because of a general backlash against all kinds of racism, as opposed to the narrower and long-running cause of indigenous rights and trade marks.

The REDSKINS name

The Washington DC National Football League Franchise is called the Redskins. They have a logo that is offensive to many people. Yet they have, until recently, refused to consider changing the name.

They, and the League, which actually owns the trade marks, recently defended and won the right to maintain REDSKINS in registered trade marks, after the Supreme Court, in another case involving an Asian slur (Matal v Tam), agreed that the US law against registration of offensive marks violated free speech.

This case was resolved only recently, in 2017, and many people wondered if regardless of the win, the team would nevertheless feel social pressure to change its name. But the owners, even in 2017, showed no interest in changing the name. As Time Magazine put it in an editorial by the executive Director of the National Congress Of American Indians and the Oneida Indian nation:

Here is a good rule of thumb: If your team name requires a landmark court order protecting racist hate speech, then it is a signal you should change your team’s name…. And yet in response to the ruling, the team’s billionaire owner, Dan Snyder, declared “I am THRILLED!” (‘The NFL Needs to Stop Promoting a Racial Slur,’ TIME, 26 July 2017)

A short history

This has been a longstanding issue (see this timeline in the Washington Post). As early as 1972, Native Americans had met with the team to ask them to change the name, but nothing happened.

These are drawings of some of the registered trademarks:

In 1992, there were more protests by Native Americans when the team was in the championship game. Various attacks on the trade mark registrations followed.

In 2013, The team owner, Dan Snyder, told USA Today: “We’ll never change the name. It’s that simple. NEVER. You can put that in all caps.”

President Obama told the Associated press that same year that he would think about changing the name if he were the owner.

Black Lives Matter

But then in 2020, along came the huge surge in the Black Lives Matter movement after yet another murder by police of an unarmed African American citizen, George Floyd. Crowds of people across American emerged from pandemic isolation to protest racism and brutality by police. The Mayor of Washington DC had the words BLACK LIVES MATTER painted on the street in front of the White House, whose resident is known for conservative views on the matter.

Moreover, the Mayor of Washington DC said that a new stadium to be built on federal land would not go forward absent a name change.

Almost every corporation in America put out a statement disavowing racism and promising to adopt better policies to address it and rethinking logos that might be racially insensitive.

Sponsors of the team also faced pressure from their shareholders not to advertise or do business with a football team called THE REDSKINS.

In early July 2020, FedEx demanded that the team change its name. “The company’s request [came] less than a week after a group of more than 85 investment firms and shareholders representing $620 billion in assets called on FedEx, Nike and PepsiCo to sever ties with the team unless Snyder changes its name.”

A new name

On 3 July 2020, the team announced that it was undergoing “a review” of the team name, which means that it will be changing the name. Trade mark lawyers are eagerly scanning the USPTO database for new applications that might represent stealth filings by surrogates of possible new names.

The temporary name is WASHINGTON FOOTBALL TEAM. A quick look at the USPTO website for filings in the name of Pro Football reveals an application filed on 23 July 2020 for WASHINGTON FOOTBALL TEAM based on intent to use. (Will this be refused as merely descriptive?)

The url redskins.com now redirects to washingtonfootball.com, where the Redskins logo is absent except in photos of past events.

So while this change did not come about directly through efforts to raise awareness of and combat trade marks and brands that are offensive about indigenous peoples, it did get swept up in a broader movement by corporations to address racial bias and insensitivity in general.

Cleveland Indians

Meanwhile, in December 2020, the Cleveland Indians major league baseball team also is reported to be planning a name change, but not until 2022. Fortunately, the team has already started moving away from its offensive Chief Wahoo Logo (pictured), a grotesque cartoon which could be seen all over the city from the outside of the stadium.

As the New York Times reported: “Other professional sports teams, including the Atlanta Braves, the Kansas City Chiefs and the Chicago Blackhawks, have said in recent months that they have no plans to change their names. Many universities and high schools abandoned Native American mascots long ago, but efforts to address the names at all levels of sport in the United States have increased in recent months.”

By Janet Satterthwaite, Potomac Law Group, Washington DC, and Member, IP Emerging Issues Team

Members of the Unfair Competition Team have published two new reports on the protection of trade names in Austria and the UK.

The reports are part of a series being published by members of the Team and follow articles on Germany and the Czech Republic posted earlier this year.

Each of the reports provides summary information on the protection of company names, trade names and other business identifiers in a clear and accessible format.

They can be downloaded on the Team's page on the MARQUES website here (MARQUES log-in required).

The report on Austria is written by Georg Schönherr of Schwarz Schönherr Rechtsanwälte KG and the one on the UK by Matthew Dick of D Young & Co LLP.

The project is being led by Sascha Abrar of LÖFFEL ABRAR and Karin Pomaizlova of Taylor Wessing. They have co-authored a comprehensive multi-jurisdiction study on this topic, which is also available to download from the Team's page.

More reports on other jurisdictions will be published in the coming months.