The MARQUES Brands and Marketing Team has published a new paper titled “Demystifying Africa: Considerations for a Trade Mark Filing Strategy in Africa”.

Written by Team member Simonne Moodie of Von Seidels in South Africa, the paper outlines some general practical considerations as well as a possible strategic approach for filing trade marks in Africa.

It states: “Fortunately, there has been more focus lately on the opportunities offered in Africa, with a number of these negative perceptions either being expelled by a glimpse into how African countries actually operate, or by the negatives being outweighed by the positive growth prospects for businesses in Africa. Many successful businesses have learnt how to overcome the challenges faced and turn their African expertise into a competitive advantage.”

The paper covers general practical consideration, including the cost of filing versus trying to enforce use rights; the difficulty of challenging marks filed in bad faith; costs of filing; and language and cultural considerations.

It also provides tips on developing a strategic approach to filing in Africa, addressing where to file based on key markets, the use of regional systems and countries with large economies.

MARQUES members can read and download the paper from the Team’s page on the MARQUES website (log-in required).

EUIPO is hosting a regional seminar in collaboration with the Sweden IP Office (PRV) to provide a platform for knowledge sharing on specific IP issues for the staff of IP offices and user association representatives. The online seminar will focus on SME IP-related topics.

EUIPO states:

The diverse programme will include round-table sessions on IPO’s strategies for SMEs, the role of intermediaries in the protection and dissemination of IP for SMEs and case studies provided by the European Institute of Innovation and Technology (EIT). The programme will be complemented with presentations on contemporary IP issues, such as the implications of bad faith and using domain names and trade marks as business builders.

Considering the substantial interest in the development of soft skills, the seminar will also conduct a session on the change of mindset in the current digital society.

The seminar will be intermediate level and in English. Details of the agenda and speakers are available on EUIPO’s website here.

EUIPO has invited MARQUES as a user association to send two experts to participate in the seminar. If you are a MARQUES member and would like to take part, please register by 19 April.

On 18 March 2021, the Minhang District (Shanghai) Court published on its website a judgment, rendered on 25 September 2020, which could become a precedent in the fight against trade mark squatting. Zhigang ZHU of the MARQUES China Team reports.

This case concerned a form of trade mark squatting that targets the owner of a reputable trade mark. The squatter files large numbers of identical or similar marks, preferably in classes of goods or services where the targeted trade mark is not registered.

This kind of behaviour forces the victim to file numerous oppositions or invalidation actions and therefore incur significant costs.

BRITA v DEBRITA

In this case, the targeted trade mark was BRITA and its Chinese transliteration, registered respectively in 1993 and 2010, by the German company BRITA GmbH, in class 11, for water purification systems. The German company also registered several sub-brands and acquired a certain reputation in the field.

A Chinese company, Shanghai Kangdian Industrial Company (Shanghai Kangdian) registered a trade mark DEBRITA in the same class, and filed 21 other applications in other classes, based on which Shanghai Kangdian challenged the registration or use, by BRITA Gmbh, of its own trade marks in various sectors.

It took eight years for BRITA Gmbh to finally obtain the invalidation of the DEBRITA trade marks and put a term to the harassment pursued by Shanghai Kangdian.

Unfair competition

The cost of these administrative and judicial procedures, added to the damage caused by the infringement actions committed the Shanghai Kangdian, was such that BRITA Gmbh decided to seek compensation and sue Shanghai Kangdian before the Minhang District Court.

The Chinese subsidiary of BRITA Gmbh, whose business had been affected by the acts of Shanghai Kangdian, joined in the action.

One of the focal points of the dispute was whether the use of trade mark administrative procedures could be considered abusive, malicious and constitute acts of unfair competition.

The Minhang District Court held that the trade mark legal system gives business operators the procedural means to protect their own trade mark rights. However, business operators must not use such procedures to pursue illegal purposes.

The court cited Article 2 of the Law of the People’s Republic of China on Anti-Unfair Competition, which defines the term “unfair competition” and refers to the conduct of business operators who harm the lawful rights and interests of other business operators and disrupt the social and economic order.

The Court held that the defendant's malicious pre-emptive registration of trade marks and abuse of trade mark administrative procedures violated the principle of good faith and business ethics and disrupted the order of market competition. Therefore, the defendant’s behaviour constituted acts of unfair competition.

Financial consequences of bad faith

This decision gives high hopes to the victims of trade mark squatting. They have to spend huge sums of money to keep the trade mark registry clear of these many, identical or similar, trade marks while the cost of filing of such trade marks is only few hundred Rmb and constitutes no risk for the trade mark squatters.

It will be only fair if, once the bad faith of trade mark squatters has been established by a final decision, the squatters face the financial consequences of their bad faith.

ZHU Zhigang is a partner and attorney-at-law with Wanhuida Law Firm, and a member of the MARQUES China Team

As some readers may be aware, the latest edition of the Examination Guidelines for EU trade marks and registered Community designs entered into force on 1 March 2021.

Members of three MARQUES Teams – Designs, European Trade Mark Law and Practice and Geographical Indications – submitted comments during the consultation on the Guidelines that took place last year.

The Guidelines were approved by Executive Director Christian Archambeau on 8 February by Decision EX-21-1.

They are available in HTML and PDF versions on the EUIPO website. Changes from the previous edition can be seen by switching on “show modifications” in track changes.

The Guidelines are currently available in the five EUIPO languages: English, French, German, Italian and Spanish. They will be made available in the other 18 official languages of the EU later this year.

Note that the most recent Executive Director decisions also came into force on 1 March. These concerned communication by electronic means and technical specifications for annexes submitted on data carriers.

More information about the Guidelines is available in the February edition of EUIPO’s Alicante News. You can read about the MARQUES Teams' comments in the 2020 MARQUES Highlights.

In the latest update from members of the MARQUES China Team, Ms Haiyu Li and Mr Tingxi Huo summarise recent developments regarding damages, and the latest decision in the New Balance case.

SPC interprets IPR punitive damages

The Supreme People’s Court (SPC) of China released the Interpretation Concerning Application of Punitive Damages in Civil Cases of Intellectual Property Right Infringement, effective 3 March 2021, which includes seven rules.

The Interpretation addresses issues such as wilfulness, bad faith, wilful infringement factors, severe scenarios and means of calculation.

In recent years, China amended its laws relating to trade marks, copyright, patents, seeds, unfair competition and the civil code and updated the relevant judicial interpretations. Accordingly, significantly heavier fines and higher damages have been provided, which is expected to greatly improve the IPR enforcement environment and deter infringers.

However, the amended laws and interpretations are slightly inconsistent in terms of punitive damages. The Interpretation is made to better help coordinate the different laws and standardise the application of punitive damages.

According to the SPC’s plan, it will release more typical cases to further illustrate the rules and guide the local courts in the future.

Read a translation of the Interpretation on the Team’s page on the MARQUES website (log-in required).

Shell granted maximum statutory damages

The Beijing IP Court recently granted Shell a maximum statutory damage of CNY5 million (€0.64 million) in its first-instance ruling under the newly amended Chinese Trademark Law.

In this case, because Shell was unable to prove its loss or the defendants’ profit from the trade mark infringement, the Court used its discretion to comprehensively consider such factors as the defendants’ subjective bad faith, self-announced profit and the contribution of trade mark and granted the damages.

Under the old Trademark Law, the maximum statutory damages award was CNY3 million (€0.39 million). As the five defendants’ trade mark infringement lasted until after the new Law took effect on 1 November 2019, the new Law was applied and greater damages were thus granted.

Record award for trade secrets

According to news from Chinaso.com, on 19 February 2021, the Supreme People’s Court (SPC) granted damages of CNY159 million (€20.5 million) for infringing trade secrets in the second and final instance, a record high in all trade secret cases.

The two plaintiffs Zhonghua Chemical and Shanghai Xinchen jointly developed a vanillin producing technique and protected it as a trade secret. Zhonghua Chemical won some awards for the technique and has become the biggest vanillin producer in the world, occupying 60% of the world’s vanillin market.

In 2010, Mr Fu, a workshop Deputy Director of Zhonghua Chemical, received CNY400,000 from Wanglong Tech, one of the five defendants, informed Wanglong Tech of the trade secret and joined the company. Wanglong Tech and the other two company defendants actually used the trade secret to produce vanillin from 2011 through 2017, producing at least 2,000 tons of vanillin every year.

After the first-instance suit, both sides appealed to the SPC, which finally ordered the defendants to stop infringement and granted total damages of CNY159 million, with the reasonable expenses for enforcement included. At the same time, the SPC transferred the criminal evidence to the police for criminal prosecution.

New Balance fails to invalidate XINBAILUN

On 9 February 2021, the Beijing Higher People’s Court finally upheld the Beijing IP Court’s ruling and the China National IP Administration’s (CNIPA) decision to refuse New Balance’s petition for invalidation of Zhou Lelun and his company’s Chinese trade mark XINBAILUN (新百伦) on the basis of its English trade mark NEW BALANCE.

Zhou Lelun and his company applied for and registered the Chinese trade mark. Although New Balance used the same mark earlier, under China’s first-to-file principle as opposed to the first-to-use principle, the Supreme People’s Court (SPC) found New Balance’s use to be infringement in another civil lawsuit.

The Beijing Higher People’s Court ruled that there was no one-to-one correspondence between the Chinese and English marks and that New Balance’s earlier use of the same Chinese trade mark is insufficient to prove its influential or famous status before the challenged trade mark’s filing date.

As the ruling on the invalidation is final, New Balance will have to design and select a different Chinese mark equivalent to its original English version. This case once again reflects the importance of filing trade marks earlier and conducting searches before use in China.

Haiyu Li and Tingxi Huo are members of Chofn IP. Find out more on the MARQUES China Team page

Taita Basket - photo by WIPO/Shingo Tsuda

The first session in a new webinar series of “How to Protect and Promote Your Culture” will take place on Wednesday 24 March from 3.00 pm to 4.15 pm (CET).

It will cover “Collective Marks and Certification Marks”.

There will be presentations by Ms Dorcas Gombe Mwambeta, Taita Basket Association, Kenya and Ms Christina Haetta, Head, Cultural Unit, Saami Council, Norway, about the Taita Basket collective mark and the Sámi Duodji certification mark respectively, followed by a talk by Mr Jacob Adams, IP law practitioner in the United States, titled “How can Collective Marks and Certification Marks be useful for IPLCs?”

The webinar series is inspired by the WIPO Traditional Knowledge Division’s publication Protect and Promote Your Culture – A Practical Guide to Intellectual Property for Indigenous Peoples and Local Communities.

It is aimed at indigenous peoples and local communities and will cover the main IP tools that can be useful to them.You can register for the webinar on WIPO’s website here. View the full programme here.

The EUIPO is hosting a demonstration of the IP Enforcement Portal, and a Q&A session, on 31 March at 15:00 CET.

The online event is aimed at rights holders and legal representatives and will last about one hour.

EUIPO says:

The portal lets users exchange information with enforcement authorities via a series of features. In this Q&A session, we will go through these features together, explain how they help rights holders and their legal representatives to protect their IP rights and answer any questions that may arise.

Join our live Q&A session, where we will answer any questions you may have on the IP Enforcement Portal; or, listen in and learn from our answers to questions from others.

The session is free of charge but you need to register in advance here. It is open to both existing and potential users of the IP Enforcement Portal.

More information about the IP Enforcement Portal is available here.