The EUIPO and OECD have published a new report, ‘Trends in Trade in Counterfeit and Pirated Goods’. It updates analysis published in 2016.

The latest report estimates the value of the international trade in counterfeit and pirated goods to be up to €460 billion. This compares with an estimate of €338 billion in the 2016 report.

In the EU, 6.8% of all imports from third countries are now estimated to be counterfeit and pirated goods, up from 5% in the 2016 report.

The full report, executive summary and infographics are available on EUIPO’s website in various languages. The main findings include:

• In 2016, the volume of international trade in counterfeited and pirated products could amount to as much as USD 509 billion (EUR 460 billion). This represents up to 3.3% of world trade.
• The previous OECD EUIPO study, which relied on the same methodology, estimated that up to 2.5% of world trade was in counterfeit and pirated goods in 2013, equivalent to up to USD 461 billion (EUR 338 billion).
• In 2016, imports of counterfeit and pirated products into the EU amounted to as much as EUR 121 billion (USD 134 billion), which represents up to 6.8% of EU imports, against 5% of EU imports in 2013.
• Companies and businesses most affected by counterfeiting and piracy continue to be primarily based in OECD countries such as the United States, France, Italy, Switzerland, Germany, Japan, Korea and the United Kingdom.
• However, a growing number of companies registered in high income non-member economies, such as Singapore and Hong Kong are becoming targets.
• Customs seizures detailed in the report indicate the main countries and regions from which counterfeit and pirate goods include China, Hong Kong, the UAE, Turkey, Singapore, Thailand, India and Malaysia.

The report uses data from nearly half a million customs seizures from international enforcement agencies including the World Customs Organization, the European Commission’s Directorate-General for Taxation and Customs Union and the United States Department of Homeland Security. The datasets are composed of information collected and processed by customs officers.

Last year the MARQUES Dispute Resolution Team posted the results of a questionnaire with information on preliminary injunctions in 18 key jurisdictions.

For each jurisdiction, answers are provided to questions such as: What types of injunctions are available? Are any available on an ex parte basis? Which factors will courts take into account in deciding whether to grant a preliminary injunction? Can damages/an account of profits be awarded in addition to an injunction? What is the procedure and timescale for seeking a preliminary injunction? Is there a right of appeal? And are costs recoverable?

The jurisdictions covered are Brazil, China-Hong Kong, Croatia, Denmark, France, Germany, Greece, Mexico, the Netherlands, Norway, Poland, Portugal, Spain, Sweden, Switzerland, Turkey, the UK and the US.

Patricia McGovern of DFMG Solicitors in Ireland is a member of the Dispute Resolution Team. She answered some questions about the publication.

How did the project come about?

It was one of our first projects when the Dispute Resolution Team was formed. A lot of us on the Team had experience in seeking interlocutory relief in different countries or being involved in multi-jurisdiction litigation, and we thought this was an area where useful information could be provided.

We realised that everything is slightly different in each country, and in some cases radically different. So we thought it would be useful to both corporate and expert members to provide a quick reference that people could look at. It is not a substitute for local advice but an initial go-to when the problem arises so you can interact better with local counsel.

It is something we all get from time to time: a client says their trade mark is being infringed and asks whether they can get an injunction in certain countries, and whether it is better to go for one country first. This questionnaire gives you a quick indication before seeking local advice on your strategy.

How did you choose the countries?

It was partly pragmatic: we looked at the countries represented by the members of the Team. But we extended it to look at countries where we often encounter issues, and major markets such as the US and China.

We may consider adding more countries in the future. And, if things change in the existing countries, we can easily update it.

What surprised you about the responses?

It is fascinating to see all the differences that exist in the world. On particular questions, things you take for granted in one country aren’t available elsewhere. For example, in Ireland we give the court an undertaking as to damages; in other words the plaintiff may have to pay damages to the defendant if it is subsequently decided at the full hearing that a preliminary injunction was granted without grounds. Not all jurisdictions have that. There are also a variety of rules on whether costs are recoverable and the extent of costs recoverable.

Another difference is that countries such as Germany have the concept of a protective writ to assist you in defending against a potential ex parte injunction. And the Dutch courts are prepared to grant extraterritorial injunctions. In China, in general there are very limited circumstances in which you can get an injunction.

Even within Europe, we have very significant differences between the civil law jurisdictions on the continent and the common law jurisdictions of the UK and Ireland, which are important to consider.

How did you decide the questions?

We spent some time on the questionnaire, reviewing it and populating it. That led to us amending certain questions and rephrasing some of them and then circulating the questionnaire further.

If anyone out there thinks it would be of benefit to add any more countries, they can contact us and we can consider adding more countries to the spreadsheet. It might be interesting to include India, Russia, Australia, some of the Middle East countries or any countries where clients feel there is most need to get an injunction. The invitation is open to anyone who encounters these issues.

We would also welcome feedback on this format: is there a question we didn’t include? We can always go back to the contributors and get more information if necessary.

Are there plans for any similar projects?

The Team has a lot of other projects in the pipeline, including a session for the Annual Conference in Dublin. We’re looking in general at dispute resolution issues in a broad sense, and anyone who would like to know more can contact any of the Team members – we represent quite a few jurisdictions between us.

The Preliminary Injunctions guide was distributed to 2018 Annual Conference delegates on a USB stick, and MARQUES members can also download it from the Dispute Resolution Team page on the MARQUES website.

For full access to all the MARQUES Team resources, become a member. Members also benefit from a discount on registration for the Annual Conference, taking place in Dublin in September 2019.

Mutlu Yıldırım Köse provides a guest post for Class 46 on a recent Court of Appeal ruling in Turkey

The Court of Appeal (COA) has approved a decision of a first instance court which ruled that the regulatory restriction on the sale of cocktail beverages containing distilled alcohols constitutes a proper reason for non-use of a trade mark in Turkey.

Bacardi & Company Limited filed a trade mark infringement and unfair competition action against a Turkish company using the FREEZER mark on Bacardi BREEZER lookalikes.

Founded 157 years ago, family-owned Bacardi sells its products in more than 150 countries. Protecting the reputation of its brands and the quality of the products consumers expect from Bacardi is critical to the long-term sustainability of the business.

The defendant company filed a counter non-use action and argued that Bacardi’s BREEZER trade marks have never been used in Turkey and requested revocation of the trade marks.

Indeed, the Bacardi BREEZER mark has not been used in Turkey since its registration date of 2001. But the reason behind the non-use of Bacardi BREEZER marks in Turkey was regulatory restrictions. Turkish regulations never let cocktail beverages containing distilled alcohols be sold to consumers.

According to the Turkish Trade Mark Law, a trade mark registration can be revoked if the trade mark in question has not been put to genuine use in Turkey for a continuous period of five years in connection with the goods or services in respect of which it is registered, unless the owner of the trade mark proves that there is a proper reason that justifies this non-use. The Law does not define “proper reason” for non-use.

In the cancellation action, Bacardi argued existence of proper reasons for non-use and stated that Bacardi cannot use BREEZER trade marks in Turkey since Turkish regulations do not allow the sale of cocktail beverages containing distilled alcohols.

The first instance court accepted that such regulatory restrictions were a proper reason for non-use and dismissed the request to revoke the BREEZER marks for “sparkling beverages containing rum”. The First Instance Court’s decision was approved by the COA and finalized in December 2018.

In parallel, the trade mark infringement and unfair competition claims against the KIRBIYIK FREEZER branded products were also accepted.

In Turkey, decisions in which the court accepts that the trade mark owner had proper reasons for non-use are very rare. Therefore, the decision is an important example demonstrating that regulatory restrictions can constitute a proper reason for non-use.

Mutlu Yıldırım Köse is a partner of Gün+Partners and a member of the MARQUES Copyright Team

WIPO is hosting a Seminar on the Practical Aspects of the Madrid System in Geneva on 24 to 25 April 2019 and registration is now open.

According to WIPO's website:

As before, this highly popular and hands-on masterclass focuses on a wide range of Madrid System processes and procedures, such as filing an international application and managing registrations. It also serves as a useful platform for participants to exchange knowledge and ideas, and provides a forum for feedback that will help us continuously improve and enhance the System for our fast-expanding user base.

WIPO speakers will give presentations on WIPO’s role in the Madrid System, cover some of the System’s recent developments, and introduce a range of new and improved online services. We will also explore the role of the Designated Contracting Party in some depth.

Moreover, our special guest speaker will be Mr. Gavin Stenton, Partner at Penningtons Manches LLP in the United Kingdom. Mr. Stenton will share his experiences in responding to refusals, and discuss issues relating to the United Kingdom.

The provisional programme is available here (PDF).

Registration can be made until 18 April 2019 and the fee is CHF600 (including materials, lunches, morning and afternoon tea).

Özlem Fütman of the MARQUES GI Team provides a guest post on new plans for the inspection of geographical indications in Turkey

The Turkish Patent and Trademark Office (TURKPATENT) and Republic of Turkey Ministry of Trade have signed a cooperation protocol aimed at conducting work in regard to protection and inspection of geographical indications (GIs) and traditional product names.

The Head of TURKPATENT stated that the Ministry of Trade will inspect products bearing a GI consumed by citizens, saying: "This will further strengthen the system."

In a speech delivered at the signing ceremony of the protocol, the Head of TURKPATENT indicated that they have recently been performing significant work concerning registration of GIs regarding local products in Turkey, that approximately 200 new GIs were registered within the last year, and that they have also been working on ways to earn more money out of GIs and how to enter the international market.

Without a shadow of a doubt, inspection of GIs is as important as their registration, and constitutes the other pillar of the system. Indeed, the holder of a GI registration also needs to establish the necessary mechanisms of inspection. In this context, it is understood that Turkey’s Ministry of Trade is going to inspect whether the products with a GI consumed by citizens comply with the requirements.

The purpose of this protocol is to ensure coordination between authorities concerning protection of GIs and traditional product names, as well as protection of consumers.

As part of the protocol, TURKPATENT will notify the Ministry of Trade of complaints received by it in relation to any misleading information through use of GIs and traditional product names. Afterwards, the Ministry of Trade will examine the matter through its Advertisement Board, and impose penalty sanctions if it concludes that there is an unfair and wrongful use in question.

Özlem Fütman is a lawyer with OFO Ventura in Turkey and a member of the MARQUES GI Team

Practitioners from Israel, the US, Switzerland and China provided tips on overcoming trade mark examiners' objections at a workshop at the MARQUES Spring Meeting titled "50 shades of international trade mark examination".

The Spring Meeting is taking place in Amsterdam from 7 to 8 March. More than 100 Council and Team members are attending.

The workshop was organised jointly by the Education Team and the International Trade Mark Law and Practice Team. It was recorded and the video will be made available on the MARQUES website soon.

Ehud Gabrieli of Seligsohn Gabrieli & Co discussed challenges in Israel, which joined the Madrid System in September 2011. He said that Israel has a common law system, and that Supreme Court precedents often take into account US and UK decisions.

About 54% of trade mark filings in Israel are International Registrations. Roughly 45% of these IRs are provisionally refused, but 70% of those are recovered. One cause of provisional refusals is the use of broad phrases in the classification, particularly in popular Nice classes such as class 9 and class 5. These can be overcome by limiting the goods or using the house mark.

Another common reason for provisional refusal is the use of names of places. However, this can often be overcome if you can show that the mark is not the exact geographic name or is not primarily a geographic name. For example, the mark Divonne was accepted despite the place name Divonne-les-Bains.

Similarly, refusals based on surnames can sometimes be challenged by showing that the mark is not really a surname in the country of origin, or is only rare. For example, OKI was shown to be a rare surname in Italy. The marks ONEGIN, HIROSE and UHLMANN were also accepted based on analysis of the Israeli telephone directory.

Michael Leonard of Fox Rothschild LLP in the United States reviewed the pros and cons of the different bases for registration in the US, namely:

• Use in commerce
• Intent to use in commerce
• Home country application
• Home country registration
• International Registration

Formalities examination accounts for most of the 97% of US IR designations that are provisionally refused. USPTO examiners take a strict approach and objections to descriptions of use are very common. The best way to counter these is to prepare well in advance.

Other challenges in the US include the use of disclaimers and the improper identification of the applicant or its entity, for example using the wrong company name or suffix. "We share your frustration!" said Michael.

Applications can also be objected to because they are "deceptively misdescriptive": GUMMY BITES for a dog treat was refused, for example. Other common reasons for refusal are geographic descriptiveness: (eg YOSEMITE BEER) and being geographically misdescriptive (eg ARGENTINA for meat from the Philippines).

Michael said that acquired distinctiveness gets round many, but not all, of these objections. However, it can be challenging to prove if you do not have at least five years of use. The Supplemental Register is also a possibility where there is use in commerce and/or a home country registration.

Switzerland also has unique challenges, including the fact that there are many bilateral agreements that can be cited by trade mark examiners. Many big multinationals are based in Switzerland, so it is logical to start their international filing strategy at the Swiss office, but the high rate of refusals presents a problem for them.

There are around 16,000 IR marks designating Switzerland, said Bernard Volken of Fuhrer Marbach. Similar to Israel, there are 40% provisional refusals but in 70% of these cases the refusal is resolved. In 60% of provisional refusals, the reason given is that the mark is in the public domain. "It's worth defending in Switzerland because you have a high probability of success," said Bernard.

Geographical terms are particularly difficult, he added. For example, registration of the PARIS ST GERMAIN mark took three years. Other notable refusals include SIBIRICA (Siberia) and TRAINSCANNER, as well as several 3D and colour trade marks such as the Louboutin red shoe (where acquired distinctiveness was not claimed).

If you do get a refusal in Switzerland, there are some tricks: one is to apply for an "appealable decision" which can lead directly to the mark being accepted and does not require payment of any fees.

Yunze Lian of Jadong IP Law Firm discussed how to overcome refusals in China. In 2018, there were 7.3 million applications, almost three times the number in 2015, with 51% refusals. One person filed 5,746 trade mark applications in 11 months.

Common reasons for refusal include no intention to use (particularly where the applicant is making hundreds of applications) and use of non-standard goods/services in the CTMO classification (except for IRs). Lian said it is also "very important" to understand the Chinese sub-class system.

Ways to overcome refusals in China include providing evidence of use, the existence of a well-known trade mark, agent or business contacts, prior rights or letters of consent and registering Chinese marks.

The MARQUES Cyberspace Team shares news of an update to its paper on ISP liability

In the online world of file sharing, search engines, internet auction platforms and social networks, the protection of trade marks and copyright has become an increasingly difficult and multi-faceted issue. Evermore questions are arising on a yearly basis as to where one draws the line of liability of internet service providers.

The MARQUES Cyberspace Team has attempted to bring some light into the dark with the newest update to its paper “Overview on the jurisdiction on liability of Internet Service Providers (ISPs)”. MARQUES members can read and download the paper here.

The paper gives an overview on the guidelines laid down by the CJEU, as well as those of the main jurisdictions in Europe, on the liability of host and access providers and the actions which may be required from them upon discovering infringements.

By consolidating the most recent CJEU and national court decisions in relation to the liability of ISPs, the Team has created a systematic overview of interesting developments and questions these decisions raise.

For instance, whilst ISPs may be held liable for third-party infringements if they do not react upon becoming aware of them, there is no general obligation for them to actively investigate and monitor the data of their customers, thereby prohibiting infringements from occurring in the first place. On the other hand, European law does not conflict with an obligation imposed by national courts to prevent further similar infringements arising from one specific third-party violation.

Moreover, in particular with regard to internet access providers, questions have been raised whether such intermediaries may be ordered to block the access of its customers. This could lead to a general monitoring obligation, which is currently prohibited by EU law. Nevertheless, the CJEU and some national courts have held such blocking injunctions to be lawful in specific cases.

Also Brussels is trying to shift more responsibility to access providers in the fight against (copyright) platforms such as Google and Facebook shall be obliged to use filter systems to check content for infringements before it is published on their platforms (so-called upload filters). Trilogue negotiations are continuing, but have been temporarily stalled after talks scheduled to resume on Monday, 21 January 2019 were postponed for an indeterminate time.

Meanwhile, you might be interested in reading the detailed examination of the rulings of the CJEU on intermediary liability and the various national decisions (i.e. Germany, Netherlands, UK, Denmark, Sweden) in this regard.

This is an ongoing project, and MARQUES members are invited to contact the Team with details of other countries to include.