Charlotte Duly of the MARQUES Education Team reviews the latest edition of “Trade Marks Law and Practice” by Alison Firth, Peter Cornford and Andrew Griffiths (published by Jordan Publishing at £179.99 in paperback and available here).

This is the fifth edition of this well-regarded text, providing a mixture of legal text and practical elements covering UK trade marks, in addition to EU and international considerations. The previous edition was published in 2016 and since that date the UK has left the EU (Brexit). 

The function of a trade mark

Trade marks act as indicators of origin, and case law has confirmed this, but this is not a straightforward concept and there are other functions, and factors, that need to be taken into account. The book discusses these various considerations with supporting case law.

There is an interesting consideration of what brands are, through the views of the authors and several third parties, including discussion as to whether “brand” is a marketing term, the identity of a company’s product, the public perception of a good/service or a combination of these elements.

Particularly useful during the modern age of social media is a discussion as to whether the mark selected will be suitable when considering factors such as longevity and the chosen advertising media.

Passing off

Passing off is covered in detail with a summary of the relevant case law and helpful tables setting out the various typical forms of misrepresentation cross-referenced with case law examples. 

In fact, diagrams appear throughout the book, aiding the understanding of concepts and processes, including registration procedure and infringement.

COVID19

Interestingly, and perhaps uniquely for an IP text, COVID-19 is featured.

A summary of the main issues this presented to the IP community is accompanied by useful links to websites with a host of material to assist in navigating issues caused by the pandemic. It is also an interesting reflection on what has happened over the past year or so in terms of the impact on IP offices.

Of further relevance to the pandemic is the section on territorial issues, with COVID-19 having forced many businesses online, perhaps bringing new customers in from other countries but with accompanying trade mark issues. 

Brexit

The UK remained in the Brexit transition period when this book was published, meaning that life largely carried on as normal, but that period has subsequently come to an end. This book contains a useful summary of points to note, including a handy checklist that features things many will still need to remember and a reminder of the approaching 30 September 2021 deadline for filing a separate UK application based on any EU applications that were pending at 31 December 2020.

A useful book

This book is useful for both IP lawyers and non-specialist lawyers. In-house lawyers, and those who do not undertake trade mark work on a day-to-day basis, may find this particularly useful.

Trade mark law is complex, with many factors to be considered, and the breadth of this book and references to case law are useful to all who practise in this field.

Charlotte Duly is Head of Brand Protection at Charles Russell Speechlys LLP and a member of the MARQUES Education Team. The picture shows the cover of the book as seen on the publisher's website

Having said it would do so in the first half of the year, the UK government has just managed to meet its deadline of launching, on 7 June, its consultation on the future regime for exhaustion of IP rights and parallel imports – as Roland Mallinson, Chair of the MARQUES Brexit Task Force, explains.

Full details and submissions can be made here. The consultation closes on 31 August 2021.

The outcome clearly could have a major impact on brand owners and whether they can rely on UK trade mark rights to prevent the import into the UK without their consent of genuine branded goods first put on the market with their consent outside the UK.

The MARQUES Brexit Task Force is considering whether a common position can be agreed amongst MARQUES members such that a submission from MARQUES can be made.

The most likely options to be considered are (1) international exhaustion (2) UK-only exhaustion and (3) something along the lines of the pre-Brexit scenario of regional EEA+UK exhaustion.

If you would like to propose a position for MARQUES to take and/or to be involved in this debate, please contact Roland Mallinson at r.mallinson@taylorwessing.com.

Book review: Marius Schneider & Vanessa Ferguson, Enforcement of Intellectual Property Rights in Africa (Oxford University Press, 2020)

Living in Helmond, The Netherlands, Africa is closer by for your Marques' Class46 reviewer as this blog audience based on a geographical approach alone might possibly think. Just around the corner of our house, so to speak, next to the beautiful Helmond castle, are the factory buildings and the offices of Vlisco. Vlisco is renowned for its fabrics with colorful and intriguing artworks printed on them. The fabrics commonly known as Dutch wax prints are very much loved and used in clothing which has obtained an haute couture status throughout the African continent (foremost in West African markets). The clothing made with Vlisco fabrics thus becoming also known as ‘the Chanel of Africa’.

Reportedly the fabrics of Vlisco attracted and do attract ‘blind’ copying thereof by other manufacturers, forcing Vlisco to stand up against this practice. Needless to say, that solid intellectual property rights and proper functioning legal systems can be key to protect manufacturers against such copying in African countries.

The Vlisco business case is shortly highlighted by Schneider and Ferguson in their magnum opus (covering nearly a thousand pages) Enforcement of Intellectual Property Rights in Africa (which is the object of this review) in view of a quite curious phenomenon which apparently occurs in some African markets, namely that consumers are better aware of counterfeit names than of the original well-known brands (so for example Clavin, Samsong, and Sunny instead of Calvin Klein, Samsung, and Sony - Schneider & Ferguson, p. 16) and the copying of products of ‘local’ entrepreneurs and firms.

According to Schneider and Ferguson ‘(t)his problem is particularly acute for wax cloths which are copied in China and sold in Africa. Counterfeit wax cloth companies copy the design and trade mark without authorization. A news website reported that 79 per cent of wax cloth sold in Togo are Chinese counterfeits, amounting to 742 million metres of fakes sold each year to consumers attracted by the competitive price of Chinese fabrics. Counterfeit wax cloth has impacted many people and companies, from the wax print distributors or Mama Benzes [a nickname referring to female wax distributors in West Africa, being the distribution a highly profitable female occupation, affording riches and Mercedes Benz to the Mama Benzes - clarification by Schneider and Ferguson, GvR], as they are known, to local wax manufacturers.’

The impact of hard and fast counterfeiting and piracy can hardly be underestimated. Africa is rising - as Schneider and Ferguson write in ‘Understanding the Real Problem of Fakes in Africa, a 30 pages exposé with which they kick off this ‘Fundgrube’ for African intellectual property law, followed not only by a country by country approach and overview, but including also (the works of) multilateral African organizations and its legal instruments (the African Regional Intellectual Property Organization - ARIPO - and Organisation Africaine de la Propriété Intellectuele -OAPI).

In the introductory exposé - one which I loved reading - Schneider and Ferguson clarify that Africa’s emerging economies present exciting opportunities for right holders. Schneider and Ferguson reflect on these opportunities with an eye on certain particularities and forces in their view operative in African markets and countries which should be considered. The free movement of counterfeit goods in and across Africa goes beyond the African continent, according to the Schneider and Ferguson, which seems to go hand in hand with the worrying trend of the establishment of free-trade zones in Africa. Such free-trade zones apparently being a breeding ground which can easily be used also to facilitate the trade in counterfeit goods to Europe and the United States. Especially as Schneider and Ferguson establish that in Africa resources for enforcement (of intellectual property rights) are often limited and ‘the desire to attract foreign investment and to create local employment is strong, policing is weak.’

This ‘landscape’ comes - so argue Schneider and Ferguson - with specific factors which enable counterfeit and challenges of IP enforcement in Africa, like porous borders, corruption and bribery, limited resources available to enforcement agencies, little cooperation between different authorities within and amongst African states, absence of efficient Customs enforcement mechanisms in many African countries, advances in technology and online marketplaces which have allowed counterfeiters to fine-tune their manufacturing, sale and distribution networks, the increase in trade and investment between China and Africa, developing legal frameworks and the lack of specialized courts for intellectual property infringements.

But be sure that Africa is not a safe haven for counterfeiters: Schneider and Ferguson point out that in recent years ‘a substantial number of measures and innovations have been implemented that support effective IP rights enforcement and anti-counterfeiting strategies in Africa.’ They spot a growing awareness in Africa for the value of IP rights and the need to protect such rights in Africa. Countries are reviewing and amending their domestic IP laws, making them compliant with obligations arising from international regulations (treaties). Next to that countries set up IP policies to align domestic laws with international commitments and best practices. There is an ongoing legislative process aimed at for example better protection for well-known trade mark and implementing anticounterfeit measures (seizure for example by Customs). Furthermore specialized anti-counterfeiting agencies are established, whilst by training and awareness initiatives the protection of IP becomes top of mind. Besides that, new technologies like blockchain are adopted and become available in anticounterfeit strategies of countries.

Schneider and Ferguson close the introductory essay with some useful tips and tricks for rights holders, especially trade mark right owners, the final one - which sums it all up - being: ‘(…) retain specialized advisers who clearly understand the subtleties of the local law and practice to ensure their IP rights are properly on the African continent.’ And there are indeed subtleties that needs attention. Be aware that proceedings for the registration of IP may be a lengthy process, safeguard all involved paperwork to evidence your registrations (‘Many African IP registers are still in paper format’), follow up your registrations (use your IP in so far as required, think of genuine use of trade marks), maintain your own integrity and follow due process if corruption occurs, keep good contacts and work together with Customs, regulatory bodies. Think and act with deep respect for local cultures and empathy for local law.

In a second step Schneider and Ferguson reflect on the already mentioned regional African intellectual property organizations ARIPO and OAPI, their status and the legal instruments it has created for the registration and enforcement of intellectual property rights in the Member States.

Last but not least - because that is really ‘la pièce de résistance’ of this book - Schneider and Ferguson dive into the ‘local’ intellectual property laws of all 54 countries of Africa in alphabetical order being Algeria, Angola, Benin, Botswana, Burkina Faso, Burundi, Cameroon, Cape Verde, Central African Republic, Chad, Comoros, Congo, Democratic Republic of the Congo, Djibouti, Egypt, Equatorial Guinea, Eritrea, Eswatini (formerly Swaziland), Ethiopia, Gabon, Gambia, Ghana, Guinea, Guinea-Bissau, Ivory Coast, Kenya, Lesotho, Liberia, Libya, Madagascar, Malawi, Mali, Mauritania, Mauritius, Morocco, Mozambique, Namibia, Niger, Nigeria, Rwanda, Sao Tomé and Principe, Senegal, Seychelles, Sierra Leone, Somalia (including Somaliland), South-Africa, South Sudan, Sudan, Tanzania (Mainland Tanzania and Zanzibar), Togo, Tunisia, Uganda, Zambia and Zimbabwe.

This part of the book is a real ‘Fundgrube’ for obtaining a concise and overall overview of the IP laws, regulations and proceedings applicable in said countries. Schneider and Ferguson strive for dealing with the matter according to a fixed pattern. In each country overview Schneider and Ferguson with a factual and legal background sketch followed by clear explanations regarding the enforcement of intellectual property rights (mostly as far as possible Schneider and Ferguson try to focus on trademarks, patents and copyright), unfair competition and Customs enforcement of intellectual property rights.

The book comes with a detailed index, a table of cases and a table of legislation.

I’m going to wrap up: Schneider and Ferguson have completed in a successful way what must have been a Sisyphus task. One can see and read that Schneider and Ferguson have worked meticulously in order (as Schneider and Ferguson put first in the preface of the book) to ‘disseminate knowledge to colleagues and right holders, to encourage governments, judges, and law enforcement authorities to foster best practices, to give confidence to companies to grow their African markets and to preserve their intellectual property (IP) rights, to further research by providing academics with an authoritive resource on IP enforcement in Africa, and to encourage public-private collaboration in developing best practices in relation to protection and enforcement of IP’.

The African proverb which Schneider and Ferguson place at the top of the Preface says it all and reflects the spirit which runs like a thread through the book: ‘Knowledge is like a field: if it is not cultivated it cannot be harvested.’

Schneider and Ferguson cultivated and harvested well: Africa is rising!

On 26 April 2021, the 21^st World Intellectual Property Day, the China National Intellectual Property Administration (CNIPA) released 10 typical trade mark cases in 2020, including five oppositions and five review cases.

Jia Li and Tingxi Huo of the MARQUES China Team summarise the cases and the relevant principles to help understand the CNIPA’s latest practices in the application of the revised Chinese Trade Mark Law.

Case 1: Opposition to mark “中智行”, number 33953937, to crack down on malicious applications for large number of marks without intention to use

The opponent Allride.AI opposed the trade mark of Xu Haojie, an individual applicant who has filed more than 170 trade marks in more than 20 classes, some of which are identical or highly similar to others’ prior distinctive trade marks and trade names. The big number has obviously exceeded his normal needs and the filing evidently aims at unjustifiable interests. The individual failed to prove that the marks were his own creation or to submit evidence of use.

Case 2: Opposition to mark “草薙家族草薙京冒菜”, number 31919844, to crack down on maliciously squatting others’ character names and protect the prior right holder’s creative work

SNK, a Japanese company, opposed Li Xingjun’s trade mark application, which corresponded to the name of an important character in the opponent’s online games containing property value and economic interests originated from the opponent’s intelligent creation and investment. The mark might lead to the misbelief that the services come from or are associated with the character name right holder. The filing is unfavorable for fair market order or innovation.

Case 3: Opposition to mark “亮神”, number 24438839, to crack down on associated companies squatting online shop names

The opponent Yongkang Dude Industry & Trade Co, Ltd opposed the mark owned by Wuhu Wushaoshe Trading Co, Ltd. To avoid legal risk, the legal representative of the opposed party registered several companies to file more than 2,000 trade marks, mostly squatting the names of Tmall online flagship shops. The associated companies’ tricky filing constituted fraudulent and unjustified registration.

Case 4: Opposition to marks “好待百”, number 33838169, and “梦多加喱”, number 33827187, to crack down on maliciously splitting foreign famous marks for filing to protect prior trade mark rights

The marks of the applicant Nanjing Yaosheng Trading Co, Ltd are separately distinguishable from the opponent’s famous marks, but when combined, are very similar to the prior famous marks of the opponent House Foods Group Inc. The tricky squatting can hardly be found out in the normal examination. The CNIPA combined the relevant oppositions in a more comprehensive way to stop the hidden squatting.

Case 5: Opposition to mark “橙米CNMI”, number 33255177, to curb infringement of copyright and protect the famous company’s goodwill

The opponent Xiaomi owns prior copyright to the stylized MI, whereas the last two Latin characters of the opposed mark are identical to the original copyright which has become famous after the opponent’s long extensive use. The opposed party is taking advantage of the opponent’s goodwill and might cause confusion in the market.

Case 6: Invalidation against mark “云铜”, number 36699370, to crack down on malicious filing and unjustifiable registration

The claimant Yunnan Copper has been long using its abbreviation YUNTONG in Chinese characters. The respondent Yunduanzhixiang and its associated companies jointly hoarded many YUNTONG marks and the claimant’s logo in 45 classes to make false advertisement, sue the claimant, and request CNY8 billion to the claimant’s affiliated companies. The CNIPA decided that the respondent maliciously registered the marks without intention to use and unjustifiably occupied public resources.

Case 7: Appeal against rejection of 3D mark, number 32315366, to guide examination of 3D marks in terms of distinctiveness and functionality

FERRERO’s egg-shaped 3D mark in red, blue, and white plus the term KINDER was rejected due to indistinctiveness. In the appeal, the CNIPA was partially convinced and decided the mark had acquired distinctiveness on chocolate and corresponded solely to the applicant, but upheld the rejection regarding confectionery.

Case 8: Invalidation of colour combination mark, number 18338886, to guide examination of colour combination marks

Three claimants requested the invalidation of ZoomLion’s colour combination mark because of formality defects, generic colour in the mechanical industry, and inability to distinguish the source of the goods through the owner’s extensive use. Zoomlion filed a response with evidence and convinced the CNIPA to maintain the validity.

Case 9: Invalidation against mark “上海故事Story Of Shanghai & Device”, number 12676248, to illustrate the principle for coexistence of earlier used mark with later registered mark

Hangzhou Lingjueding Garments Co, Ltd, the respondent and owner of the mark, failed to prove that its mark was originally created or used earlier than the claimant’s cited mark. The CNIPA accordingly invalidated the mark and refused the coexistence of the marks. This is the CNIPA’s first case of circuit hearing to examine a complicated case.

Case 10: Invalidation against mark “佳丽芙Jialifu (stylized)”, number 17393381, to regulate trade mark representation and eliminate malicious filing and hoarding

The claimant S C Johnson & Son, Inc proved that Ma Jihui, an individual, registered the mark through Guangzhou Yangzhi Ad Design Co, Ltd, an agent recorded at the CNIPA and solely owned by Ma himself, who filed more than 2,000 marks, many of which are identical with or similar to others’ name brands. The CNIPA deemed Ma to be the agent, who should be restricted to filing marks for only relevant services. The mark was invalidated, though it was assigned to another party.

Ms Jia Li and Mr Tingxi Huo are members of Chofn IP and the latter is a member of the MARQUES China Team

Speakers form BAT, Ferrero, LVMH and Unilever are taking part in the next MARQUES webinar, which takes place next Tuesday 8th June from 15.30-17.00 CET.

The webinar is on “IP and the challenges of the COVID-19 pandemic”.

The panellists will cover topics such as what they have learned in the past year about managing workloads, new working practices, budgeting, portfolio management, enforcement and marketing. They will also discuss how relations between clients and advisers are changing and what the future is likely to hold.

They will draw on experiences from different industries and regions. The webinar will be structured as a discussion, with plenty of time for questions from the audience.

The speakers are:

• Emma Stopford, BAT (UK)
• Giordano Cardini, Ferrero (Italy);
• Simone Pelkmans, Unilever (Netherlands)
• Leo Longauer, LVMH (France)
• Virginia Cervieri, Cervieri Monsuarez (Uruguay)
• Arthur Artinian, K&L Gates (UK)
• James Nurton, MARQUES (moderator)

The webinar has been organised by the MARQUES Brands and Marketing Team. Registration is €100 (MARQUES members) or €135 (non-members) and can be made online here.

The 2021 MARQUES Annual Conference will be a unique hybrid event, allowing you to choose to attend in person or online. Sessions will be held at the World Forum in The Hague and broadcast live to TV standard via an interactive platform.

The Conference will include both face-to-face and online elements, and there will be something happening every day from Monday 13th to Friday 24th September. The Early Bird fee for MARQUES members is valid until 1st July 2021.

The programme will comprise a total of 16.5 hours of educational sessions, as well as a social programme, coffee breaks and an exhibition which can be enjoyed both in person and via the internet.

The centrepiece of the Annual Conference will take place at the World Forum, with two full days of panel sessions covering a range of topical issues. The Conference theme, “Peace and Justice for Brands”, is inspired by The Hague’s reputation as the city of peace and justice.

The sessions will include the quality and range of speakers you have come to expect from MARQUES conferences. They will feature a range of media and will be broadcast like a TV show, so that those participating online can enjoy an experience as close as possible to being in the room. All sessions will also be recorded and available for registrants to view at their convenience.

Registration options

There are two registration options:

1. Physical registration – attendance at the sessions in The Hague from 14th to 16th September, plus online participation in all webinars from 20th to 23rd September
2. Virtual registration – online participation in all sessions

Both options are all-inclusive, and there are no additional Conference fees to be paid.

Those delegates who are able to attend The Hague will need to follow the Covid-19 protocol. In particular, numbers will be capped to ensure social distancing, social events will be held outside and hand sanitiser should be used.

Due to the Covid pandemic, MARQUES is not booking accommodation or transfers for this year’s Conference, and delegates should make their own arrangements.

The social programme will include a site visit to Europol, welcome reception, drinks reception and barbecue, online reception and coffee break with exhibitors (including online element).

The full Conference, including panel sessions and webinars, comprises 16.5 hours of high-end educational content. MARQUES will provide attendance certificates for CPD/CLE purposes.

Full details of the programme, speakers, registration fees and social activities are on the dedicated page on the MARQUES website.

Early Bird Discount

The most cost-effective way to register for the Conference is with the Members Early Bird Discount, which is available to MARQUES members until 1st July 2021. The Early Bird fee is €950 (Physical registration) or €490 (Virtual registration). After this date, higher fees will apply.

Yasemin Aktas reports on an interesting opposition decision in Turkey.

In Turkish trademark practice, it is agreed that well-known marks need broader protection than ordinary marks. Turkey has various statutes extending the scope of protection of well-known marks to different goods/services where certain conditions exist. These include:

• Article 6(4) of the Industrial Property Code 6769 (the IP Code), recognizing Article 6bis of the Paris Convention, which sets out protection for unregistered well-known trade marks;
• Article 6(5) of the IP Code, adapted from Article 16(3) of the Agreement on Trade-Related Aspects of IP Rights (TRIPs), which sets out protection for registered well-known marks also for different goods/services

Under the Law of Literary and Artistic Works No 5846, the protection for copyrighted works subsists automatically and becomes enforceable. Copyright registration is possible for all types of work but it is not mandatory to obtain protection over a work in Turkey. Registration is optional.

Article 6/6 of the IP Code states that if an application for a trade mark contains the name, business name, photo, copyright, or IP rights of third parties it will be rejected. This grants protection to copyrighted works against trade marks.

In a recent case, the Turkish Trademark and Patent Office (TPTO) put copyright protection over well-known status protection. An opposition based on the well-known status of a registered logo mark and the opponent’s copyrights on the logo was accepted owing to the copyright protection only.  

Grounds of opposition

The opponent, a famous American fashion brand, has been actively using its registered logo mark in Turkey for many years in classes 18, 25 and 35 and the well-known status of its mark has been recognised by the TPTO many times in opposition/appeal proceedings.

The opponent sought the refusal of a local application for a mark with a similar version of its well-known logo and covering different services in class 39 from land, sea and air transport services and electricity distribution services to water supply services. The opponent’s main grounds were “dilution by blurring” based on the recognised well-known status of their logo and their “copyrights” on the logo. The opponent’s copyright was not registered in Turkey, but it was in the US. 

The PTO accepted the opposition grounds based on the copyright protection and entirely rejected the opposed application. But the dilution claims were rejected on the ground that registration of the opposed mark in class 39 would not cause any risk of dilution of the well-known logo, even though the signs are remarkably similar to each other. 

Importance of copyright protection

This decision reveals that the PTO tends to be more protective of copyrights than well-known registered marks when the conflicting mark covers quite different goods/services. Well-known brand owners should always seek copyright protection, where possible.

Yasemin Aktas is a partner of OFO VENTURA and a member of MARQUES