The MARQUES Unfair Competition Team has published two more reports as part of its project on company names, trade names and other business identifiers.

In October last year, the Team published a study on the topic, covering 14 countries. As anticipated, the survey revealed a great divergence in the law on trade names, company names and other business identifiers – even within the EU. In particular, there are differences regarding what qualifies as a company/trade name, whether registration and/or use is required, transfer, the scope of protection and the impact on trade marks.

The results were presented in a questionnaire and an executive summary.

Now the Team is publishing more detailed reports on the situation in various jurisdictions, analysing legislation, practical issues and dispute proceedings.

The reports are written in an accessible way to assist businesses who are interested to get a detailed perspective on certain issues in each market.

The country reports follow the structure of the questionnaire and executive summary, to maintain the unity of the presentation.

The first two reports to be published are on the Czech Republic (written by Karin Pomaizlová) and Germany (written by Sascha Abrar).

Further reports on other countries will be posted soon as part of this project.

The two reports, and last year’s study, can be downloaded from the Unfair Competition Team page on the MARQUES website (MARQUES log in required).

ZHU Zhigang of the MARQUES China Team provides an update on the EU-China GI Agreement.

In November 2019, China and the EU concluded the negotiations on a landmark bilateral agreement on geographical indications with commitments to very high-level of protection.

Upon authorization of signature of the agreement by the Council of the EU on 20 July 2020, the final text of the EU-China GI Agreement is expected to be signed before the end of 2020 and should enter into force soon after.

Protection for GIs

According to the agreement, 100 EU GIs in China and 100 Chinese GI in the EU will be protected against imitations and usurpation. Within four years after entry into force, another 175 EU GIs may be protected in China (and another 175 Chinese GIs may be protected in the EU).

In fact, many EU GIs had already been recognized and protected by China. Since 2012, EU GIs, including Champagne, Bordeaux, Margaux and Romanée-Conti have been granted protection in various legal proceedings such as trade mark oppositions, administrative raid actions, and civil actions. On 4 June 2020, the Shanghai Pudong People’s Court handed down the first judgment in a criminal proceeding, which found the suspects criminally liable for counterfeiting the GI collective trademark Bordeaux.

Issues to be discussed

Nevertheless, some issues will remain to be discussed, in particular the most complex which is the concept of genericity of a GI.

For the European Union, a GI – once it has been recognized as such – cannot become generic (article 23.2 of the EU regulation on the protection of geographical indications of 21 November 2012).

However, Article 33 of the Measures for the Protection of Foreign Geographical Indications issued by the Administration of Quality Supervision Inspection and Quarantine (AQSIQ) in March 2016 opened the possibility for a Chinese court to revoke a foreign GI.

No detail explaining the circumstances in which a foreign GI can be revoked was provided. However, recently, the Measures were revised by the China National Intellectual Property Administration (CNIPA) and the terms "when the foreign GI has been revoked by a decision of the judiciary", were replaced by "where it is a generic name or has become a generic name in China". Furthermore, on 25 March 2020, the CNIPA released the draft of a Guide for Determining Geographical Indications as Generic Names, inviting public comments.

This Guide provides clear procedures allowing any party, not only to oppose the registration of a GI, but also to apply for the revocation of a registered GI based on genericity, thus allowing market access and exports of the products bearing the GI.

This evolution appears to have been made in accordance with the first phase of the US-China Economic and Trade Agreement signed on 15 January 2020, in which the US insisted that China should create procedures allowing the genericity of a foreign GI in China, even if the foreign GI remains valid in its country of origin.

This, of course, is in absolute contradiction with the European principle according to which a GI shall not become generic, at least as long as it is protected as a GI in its country of origin.

The EU China GI Agreement does not address this issue which, among a number of other topics, will remain to be discussed between the two parties.

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

In their second post, Utku Süngü and Mutlu yıldırım Köse look at some of the trade mark applications that have arisen from the COVID-19 pandemic.

This is the second part of our article on the impact of COVID-19 in Turkey. The first post, looking at trade mark trends, can be read here.

With the COVID-19 pandemic, phrases such as “Koronavirus” (Coronavirus), “Korona” (Corona), “Sosyal Mesafe” (Social Distancing) and “Evde Kal” (Stay Home) have become part of our daily lives. This has also affected trade mark applications. Hence, we find phrases that are related to the pandemic such as “Covid-19”, “Coronavirüs”, “Koronavirüs” “Sosyal Mesafe”, “Covid” and “Korona” among the trade mark applications filed since the beginning of 2020.

It has been detected in the research made on the trade mark records of the Office that some of the trade mark applications have been rejected after the first examination while the registration process for some is continuing.

It can be stated that the Office rejects trade mark applications with the phrases “Covid-19”, “Korona” and “Corona” when they are applied for classes 3, 5, 9 and 10 which include cleaning, health, medical and protective materials in general, except when they have an additional distinctive device or phrase. For instance, it has been decided for the trademark application pictured right (number 2020/32607) that the registration process continue for the classes 3 and 5.

However, a trade mark application for “Korona” (number 2020/38152) has been rejected for class 3. Likewise, an application for “Coronagel” (number 2020/10514) has been rejected after the first examination for the class 5 including “Disinfectants, antiseptics (microbe killers), detergents for medical purposes, medicated soap, disinfecting soap, antibacterial hand lotions”.

Meanwhile, an application for “Hyper Corona” (number 2020/35062) has not been rejected for class 5 that includes the same goods and it is published in the Official Trademark Bulletin.

The Office does not generally reject trade mark applications with the phrases ”Covid-19”, “Korona” and “Corona” for goods and services for which these phrases cannot be defined as ‘descriptive’. It has been decided that the registration process of the two applications pictured (number 2020/45781 for class 35 and number 2020/58481 for classes 28 and 41 respectively) and “Korona Günlerinde Aşk” (number 2020/35152) for classes 9 and 41 can continue.

Likewise, the trade mark application “Corona” (number 2020/14479) for class 13 including “Firearms, air guns, spring arms and adapted cases and shoulder straps therefor. Heavy weapons, mortars and rockets. Fireworks. Defence gases for personal use” has not been rejected after the first examination and has been published in the Official Trademark Bulletin. However, the application pictured left (number 2020/34233) has been rejected for classes 1, 18 and 25.

The Office also rejects trade mark applications related to the COVID-19 period with the phrases “Sosyal Mesafe” (Social Distancing) and “Evde Kal” (Stay Home) unless they have distinctive devices or phrases. The following have been rejected:

• An application for “Sosyal Mesafe” (number 2020/38434) for classes 35, 41, 42 and 44.
• The application pictured above right (number 2020/43475) for classes 25 and 35.
• “Evdekal” (number 2020/36708) for class 35.
• The applications pictured right (number 2020/42290 for class 42 and number 2020/42290 for class 30).

However, an application for “Tadelle Evde Kal” in class 30 has not been rejected after the first examination and has been published in the Official Trademark Bulletin.

The approach of existing marks

Existing trademarks have tried to cope with the COVID-19 period by adopting various approaches. World-famous trade marks have created many commercial films raising awareness about the importance of social distancing and staying home. Apart from that, trade marks that can be called “social distancing trade marks” have been one of the methods adopted, as these examples show:

Trade marks in Turkey have also changed their logos in this way and participated in this trend of creating “social distancing trademarks”:

The COVID-19 pandemic, which has affected the whole world, has had an impact on trade mark law in many ways as well as other areas of law.

While the total number of trade mark applications before the Office has decreased, applications related to the COVID-19 period including phrases such as “Korona”, “Corona”, “Covid”, “Sosyal Mesafe” (Social distancing) and “Evde Kal” (Stay Home) have increased rapidly. Existing brands have made temporary revisions to their trade marks and slogans parallel with the Covid 19 period.

Utku Süngü and Mutlu yıldırım Köse are attorneys with Gün+Partners, a MARQUES member

Kate Swaine and Marion Heathcote of the MARQUES IP Emerging Issues Team discuss changes to some controversial brands in the wake of the Black Lives Matter movement.

The 'court of popular opinion' was always predicted to be the driver of progress regarding cultural appropriation and the appropriateness of brand language and imagery.

The IP Emerging Issues Team prophesised this in the session on Indigenous Intellectual Property Rights at the MARQUES Annual Conference in Villaitana 2016 which featured Ambassador Keith Harper, the then US Ambassador to the UN Human Rights Council, and again during the MARQUES Annual Conference in Dublin last year, when the Team held its workshop "Food, Fashion and Festivals – Whose Culture is it Anyway?".

The workshop explored where the line lay between brand inspiration and cultural appropriation, highlighted a number of controversial branding concepts (many of which were still in use) and considered the commercial and legal risks posed by their continued use (see blog post here).

The Team flagged this as an issue which consumers are alive to and have become increasingly vocal about and provided some suggestions to assist brand owners including ensuring greater diversity in decision making around branding and marketing practices.

In the wake of the Black Lives Matter movement, some of the controversial brand identities which the Team considered have come under scrutiny and brand owners have been reviewing their brand portfolios and the messaging that surrounds them. Some have already taken steps to make changes as a result and the IP Emerging Issues Team applauds this.

• Nestlé recently announced that it will rename its Red Skins and Chico sweets (pictured) in Australia.
• Following a petition new owner, Canada-based Saputo, has said it will cease using the controversial trade mark COON on a cheese product which has carried that name in Australia since 1935 (more details here and here). Previously there has been resistance to the pressure to change on the basis that the trade mark reflected the name of its American creator irrespective of it being known as a racial slur.
• Colgate-Palmolive is reviewing the name of its toothpaste Darlie which was labelled "Darkie" until 1989 and which translates in Chinese as "Black Person Toothpaste". Quaker Oats has announced that it will change the branding and name of its Aunt Jemima pancake and waffle mix product. Mars is reviewing the branding of its Uncle Ben’s rice range.
• Most recently, after years of controversy, the Washington Redskins American football team has announced that it will retire its name, notwithstanding a US Supreme Court ruling allowing for the registration of disparaging terms as trade marks. The announcement of the name change followed demands from sponsors to review the use of the Redskins name. The team will be known as Washington Football Team until a permanent new name is chosen.

It is likely that we will see more reviews and changes to well-known brands in the months to come. Whether we will see real legal change as to what terms should or should not be entitled to protection will remain to be seen.  

Kate Swaine is a partner of Gowling WLG and Chair of the IP Emerging Issues Team. Marion Heathcote is a partner of Davies Collison Cave and a member of the Team

Neeraj Thomas provides a guest post for Class 46:

At a time when brands are aiming to bounce back and return to some form of normality, many online infringers have used consumers’ increased digital activity to ramp up their illegal activity. The closure of physical stores has pushed more and more consumers online. In addition, the unprecedented threats to global supply chains (both due to the closure of borders and the lack of staff being able to attend work) has caused shortage of some products. Lastly, with many consumers facing a drop in their normal disposable income, people are shopping around to secure the best deal.

All of the above has created the perfect storm for infringers and counterfeiters and it has never been more important for brands to focus on the protection of their IP. To further compound matters, the need to take strong action against infringers comes at a time when legal and brand protection budgets are likely to be under pressure. 

The Scottish IP Court offers a rights holder-friendly forum which is worth considering if raising proceedings elsewhere may be cost-prohibitive or otherwise difficult. If online infringements are occurring across the UK, then Scottish jurisdiction can be obtained by carrying out a test purchase from Scotland.

The benefits of enforcing IP rights in Scotland include:

• There is no requirement to send correspondence in advance of proceedings being raised. Whilst parties are free to issue pre-action correspondence if they wish, there are no mandatory provisions that require them to do so. 
• Preliminary injunctions (known in Scotland as interim interdicts) are regularly granted on a without notice basis. In these instances, no advance notice of the proceedings is provided and a hearing will proceed before the judge without the infringer or their lawyers being present. In such cases, the first an infringer will know that the interim interdict has been awarded against them will be when process servers turn up at their door to serve the order.
• Irrespective of the value of the case, the IP Court charges a flat fee of just over £300 in court fees to have an action raised. This is the case no matter what type of IP is involved, which can offer a significant cost saving in comparison to court costs in other jurisdictions.
• Any final interdict order can be registered administratively in England, thus providing brands with a UK-wide injunction. As such, brands have the opportunity to obtain UK-wide relief for much lower costs than if proceedings had been raised in the English courts.

When dealing with online infringers, it is likely jurisdiction for an IP dispute can be found in a number of different locations. As this blog demonstrates, the Scottish IP Court may well offer brands an alternative angle to their IP enforcement strategy and importantly provide more bang for their legal budget buck.

Neeraj Thomas is an Of Counsel at MARQUES member CMS, and heads the firm’s Scottish IP litigation practice 

In the first of two posts, Utku Süngü and Mutlu yıldırım Köse consider the impact of COVID-19 on filing trends in Turkey. A second post, to be published soon, will examine some case studies.

The COVID-19 pandemic has had an impact on trade mark law as on other areas of law. When considered in detail, it can be seen that trade mark law is affected in various aspects by the COVID-19 pandemic.

One of the clearest examples of this impact is that the number of trade mark applications related to the COVID-19 period has risen, although the number of trade mark applications in total has decreased. World-famous brands have changed their trade marks during this pandemic period, aiming to show their customers their awareness and sensitivity.

Impact on trade mark applications

During the COVID-19 period, the number of trade mark applications has declined in Turkey. The reason for this decline was the economically unstable situation for the biggest applicants for trade mark during the period rather than any technical considerations. After all, trade mark applications can be made online.

The number of trade mark applications increased respectively by 32.5% and 26.4% in January and February 2020 compared to the same months in 2019. However, according to the Turkish Patent and Trademark Office, the number of applications in March 2020 (when the first COVID-19 case was detected in Turkey) decreased by 3.6% compared to March 2019. The most dramatic decrease in the number of trade mark applications occurred in April when COVID-19 had more impact in Turkey. There was a decrease of 25.8% in April 2020 compared to the same month in 2019.

With the introduction of the ‘new normal’ notion and the lower impact of COVID-19 compared to April, in May the decrease in the trade mark applications was reduced. With the termination of many restrictions, it is expected that this reduction in the decrease rates will go on and that there may even be an increase in the number of applications in June compared to the same month last year.

When the latest statistics of EUIPO are observed, it can be seen that the period has been relatively stable in Europe, with neither a significant increase nor a decrease in trade mark applications during this period. As in Turkey, the highest rate of decrease occurred in March and April and there has been an increase beginning to be apparent in May.

Coming soon: part 2 of this post looks at trade mark applications related to COVID-19.

Utku Süngü and Mutlu yıldırım Köse are attorneys with Gün+Partners, a MARQUES member

Readers may be interested to know that WIPO has today launched the Madrid Application Assistant. The Assistant is an electronic version of the MM2 form which automatically records all the information required to complete an international application.

WIPO states:

The Madrid Application Assistant is the latest improvement to the service level of the Madrid Registry as part of WIPO’s drive to enhance the creation and management of trademark rights under the Madrid System.

The Madrid Application Assistant helps users to generate high-quality application files. Through the data import from the Office of origin’s national/regional trademarks database, the application is automatically pre-populated with the relevant information for a Madrid international application - from contact details to a full list of goods and services. Built-in features also include the automatic verification of the classification of the list of goods and services, as well as its translation. This reduces user effort while also lessening the risk of irregularities, thus making the process of filing an international application more efficient and accurate.

Functionalities of the Madrid Application Assistant include:

• convenient data import for basic marks
• real-time calculation of fees
• easy use of classification tools (Madrid Goods & Services Manager)

Benefits include:

• Simple Process: Retrieve essential information concerning your basic mark directly from the database of your Office of origin
• Faster Completion: Fill in your application following a step-by-step process and ensure accuracy of the captured data
• Validated data: Get your list of goods and services checked for classification and translated automatically

Francis Gurry, Director General, WIPO, said: “Availability of all services online will make the Madrid System more user-friendly, bringing long term benefits to the users as well as the Offices.

The Assistant integrates online filing options in all member Offices and is expected to contribute to reducing the workload of examination for the Office of origin by minimizing irregularities.

As the Assistant is derived from Madrid e-Filing, it could easily be upgraded to support all examination work by Offices of origin from start to finish, including online verification and real-time communication of files to WIPO.

WIPO advises all users of the Madrid System to use the Madrid Application Assistant and online filing services offered by IP Offices. It says it is committed to providing more online services under the Madrid System for the benefit of the users as well as member IP Offices.

For more information, read WIPO’s announcement or Information Notice No 53/2020.