2020 · •Cadbury purple trademark Supreme Court on vulgar trademarks Rankings: South America...

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GLOBAL REACH, LOCAL KNOWLEDGEwww.trademarklawyermagazine.com Lawyer

TrademarkIssue 4 2018

• 3D trademarks • Mexico’s opposition system • Mediation and arbitration • Growth in China• The Amazon Effect • African judicial system • Chinese 3D designs • Asian trademark rankings

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Mr. Zhenkun Fu and Ms. Maggie Yang of Corner Stone & Partnersexplore the complex case over bad-faith trademarks “Wyeth” and “Wyeth in Chinese” on page 11.

Difficulties andtrends on the protectionof three-dimensional marksby Jiaquan IP Law

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The EU Worldwide Counterfeit and Piracy Watch ListBy Jan Maarten Laurijssen from Pointer Brand Protection & Research

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• Chinese law perspectives • Brand loyalty in the digital world • Artificial intelligence• European trademark rankings • Trademark squatting • European Union trademarks

Nation Branding: Zeeger Vink – Intellectual Property Director at Maus Frères – outlines seven steps to be used by competing countries to increase the power and value of their own brand.

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Trademark Lawyer FC 2018 Issue 2 - FINAL:Layout 1 5/3/18 11:53 Page 1

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GLOBAL REACH, LOCAL KNOWLEDGEwww.trademarklawyermagazine.com Lawyer Annual 2019

Trademark

• Brazil’s general trademark rules • First EU-wide design injunction • IKEA’s trademark success• USPTO’s proposal for U.S. attorneys to represent foreign applicants • Safguarding IoT innovation

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China Focus: New Chinese e-commerce rules, Compumark report onChinese trademark market, talks on trademark speculation,applying for Well-Known Trademark Recognition.

Chinese e-commerce: Newlaws shaking up the systemRay Zhao of Unitalen interprets how China’se-commerce will be affected with thepassing of new legislation.

The impact of digitalization on themanagement of IP: Dennemeyer’s

comprehensive report examines themultitude of effects digitalization has on IPmanagement as seen by industry experts.

Trademark Lawyer FC 2018 Issue 6 Final:Layout 1 13/12/18 08:02 Page 1

Issue 3 2019

Issue 1 2019

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• Argentinian law • Developments in Italy • Madrid Systems • Mexican law amendments• Malawian revisions • Trademarks in India • Twin-track approach • 3D designs in China

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Suzanne Antal and Micheline Dessureault from Joli-Cœur Lacasseexplore the trademark law behind the growing cannabis industryin Canada after the introduction of Bill C-45.

Welcome to Seattle!We are celebrating the 140th INTAAnnual Meeting in the USA withour annual bumper issue

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Issue 2 2019

Issue 5 2018 Annual 2019

Issue 5 2019

Issue 4 2018Issue 2 2018 Issue 3 2018

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• Case studies • Joint liability • Dispute resolution • Polish trademark laws • Mexico updates• Unfair competition • Bad faith marks • Americas trademark rankings • Sensory trademarks

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CONFERENCE SPECIAL: In this bumper edition for the MARQUES Annual Meeting,we’ve published articles on some of the most important topics from around the world,written by some prestigious members of the trademark community.

App icons are the new trademarksAcademic study outlines 10 conditions for strong design and protection of app icons (by Zeeger Vink)

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Issue 4 2019

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• Cadbury purple trademark • Supreme Court on vulgar trademarks • Rankings: South America• Regulations on bad-faith trademark registration in China • SMBs/SMEs and brand protection

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Trending trademarks: Blockchain vs cannabis. Compumark report examines two ofthe biggest global trends for trademark applications in 2018, plus Harbottle & Lewisgive us a forecast for 2019’s trademark landscape.

Trademark infringementisn’t just bad business –sometimes, it’s dangerousSteve Burkhart, General Counsel &Vice-President at BIC Corporation,provides perspective on thecompany’s latest lawsuits aimedat stopping the importationof Chinese-made,knock-off pocketlighters.

Trademark Lawyer FC 2019 Issue 1 Final v2:Layout 1 30/1/19 15:05 Page 1

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• McDonald’s lose another trademark • ECTA in Edinburgh• Analysis of McDonald’s Big Mac loss • Registering 3D trademarks in China

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RankingsEUROPE

Louis Vuitton makes afashion statement beforethe EU General Court

Hilda-Georgina Kwafo-Akoto of Bristows LLP analyses the twin victories of Louis Vuitton in establishing the reputation of the figurative LV trademarkwithin the European Union.

Infringement on the rise – Compumark report examines data which saw 81% ofbrands suffer trademark infringement in 2018, plus interview with global IP headDavid Stone.

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Trademark Lawyer FC 2019 Issue 2:Layout 1 19/3/19 10:21 Page 1

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• Infringement damages in a globalized age • Glen Buchenbach – Scotch whisky?• Brazil’s PTO backlog • Innovation Box in Poland • Helping SMEs go global

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Welcome to Boston!Celebrating INTA’s 141st annual meeting with our annual bumper issue

Shirley Ya LIN & Nikita Min XUE of HongFangLaw examine Tencent’s successwith sound marks in China, plus Eduardo Machado of Montaury Pimenta,Machado & Vieira de Mello discusses Brazil’s ascension into the Madrid Protocol.

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• Hong Kong toy producer sues Trespass • EU certification and collective marks• Innovative IP offices • New European spirits regulation • Multimedia & trademarks

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RankingsASIA

NESTLE WATERS wins first trial

Brenda Zhao and Zhenkun Fu of Corner Stone & Partners discuss the trial of NESTLE WATERS and examine how it got a favorable outcome.

Commentary on the EU General Court’s decision to annul Converse’s contested 3Dtrademark appeal, and INTA President David Lossignol highlights his proposals andaims in combating counterfeits.

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RankingsNorth & CentralAmerica

Rosie Burbidge of Gunnercooke looks at the way designs are,and should be, considered within an IP framework.

John XIA of Corner Stone & Partners discusses the development of GUI protection in China, and Antonio Belaunzarán and Alonso Camargo of OLIVARES examine the most important recent amendments to trademark laws in Mexico.

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Designs – The forgottenIP weapon

• Safer trademark and branding creation for creative clients• Trademark opposition procedures in Poland • Groundbreaking verdict for MILKA

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THE TRADEMARK LAWYER MAGAZINE

ABOUT THE TRADEMARK LAWYER MAGAZINEThe Trademark Lawyer Magazine is a ‘need to read’ publication for all international trademark professionals. Published bi-monthly in both hard copy and electronically via the latest page turning software, each issue of The Trademark Lawyer Magazine is seen by over 17,000 trademark professionals around the world.

The readership is split between in-house trademark counsel and private practice trademark attorneys and lawyers; our readership also covers Domain Name companies, IP associations, and ‘C’ suite executives from all the major trademark owning corporations around the world.

The Trademark Lawyer Magazine is written and advised by an esteemed panel of international trademark experts and guest writers who provide up-to-date information on international trademark law issues.

The Trademark Lawyer Magazine is 100% focused on the trademark industry and is not diluted with generic IP articles and features. This means when you advertise your trademark related services within The Trademark Lawyer Magazine you can be sure that your marketing is being seen by the correct audience.

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THE TRADEMARK LAWYER MAGAZINE EDITORIAL CALENDAR & DEADLINES 2020

Issue date Rankings region Print date Conference distribution

Issue 1 South America 31st Jan

Issue 2 No rankings 3rd Apr INTA 142nd Annual Meeting, Apr 25-29, Singapore

AIPLA Spring Meeting May 6-8, San Antonio, USA

Issue 3 UK & Europe 7th May ECTA June 17-20, Copenhagen, Denmark

Issue 4 Asia 4th Jul

Issue 5 The Americas + Middle East & Africa 7th Sep IPO 21-23 Sep, San Diego, USA MARQUES 22-25 Sep, Stockholm, Sweden AIPPI World Congress 11-14 Oct, Hangzhou, China ASIPI Annual Meeting 18-21 Oct 2020 - Ecuador AIPLA 22-24 Oct 2020 - Washington, USA WIPF - Australia - Nov 2020

The Annual No rankings 18th Nov All events in 2021 IP Service World, Munich, Germany, November

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ADVERTISING OPPORTUNITIESWe strongly believe that the combination of our editorial content and your advertising strengthens the content of the magazine and makes it more informative for your potential clients. This is why advertising in The Trademark Lawyer Magazine is the promotional activity of choice for leading law firms and service providers in the trademark industry.

The Trademark Lawyer Magazine realizes that it is important to reach the correct audiences in a variety of ways. This is why our publication offers many types of advertising and editorial packages.

DISPLAY ADVERTISINGThis is the most effective for brand awareness: when you place a display advert in The Trademark Lawyer Magazine you can be sure that your message will be seen by your target market. You can choose to place your advert in a prime position, such as the inside or outside cover pages, to maximize the adverts impact – this is commercially more effective as potential clients will notice it. Alternatively, you can choose to place your advertising alongside a special feature, such as one of our regular country focuses. This brings great benefits as your advert will be directly visible to the reader as they are engaged in the relevant editorial.

DIRECTORY OF SERVICESFirms are listed in the DOS section of every issue of the magazine, with each firm listed under their relevant countries. The DOS section is used by our readers on a regular basis as a reference tool to source the services they need. Listings include: Company logo, company name, address, telephone/fax, email/web, contact names, and a 50 word company profile.

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ONLINE/DIGITAL ADVERTISINGThe Trademark Lawyer Magazine offers a variety of options for digital advertising/marketing. Please remember that our entire publication is duplicated online so your hard copy adverts that appear in the publication will also be seen online via our page turning software, the current number of users per issue is between 12,000 to 16,000.

However, we also offer: Homepage banners advertising. These banners are displayed to every single user of The Trademark Lawyer website and the current monthly user statistics are 8,000 - 10,000 users per month.

Weekly Email News Alert banner advertising. These banners are displayed on our weekly email Trademark news alert service. The email news alerts are sent to approx. 10,700 (this number is increasing month on month) requested emails each and every week highlighting recent trademark law news and promoting the most recent articles from The Trademark Lawyer Magazine.

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EDITORIAL OPPORTUNITIESCo-Published Editorial features are one or two pages stand-along in-magazine editorial contributions written by your experts with optional support from our editorial team. These articles, which can be focused on a range of suitable topics, are an ideal vehicle through which to promote your firm and demonstrate your hard earned expertize in a particular area.

The Trademark Knowledge Share gives your firm the opportunity to feature one of your experts to answer a series of set questions all relating to trademark law in your jurisdiction. For the sponsoring law firms, it is an opportunity to provide relevant high quality information to potential new clients, as readers will no doubt need clarification in certain areas and will see your firm as the trademark experts in that particular region and make contact with you. Since the sponsorship is exclusive, companies seeking advice are not distracted by other law firms so your firm will be at the forefront of any action they take.

Jurisdictional Briefings will allow your firm to contribute an article in every issue of the year to provide a country or jurisdictional upate on trademark developments/ legislation/laws or general commentary and analysis relating to your country/ jurisdiction. Your article will be approximately 750 words and will cover a full page with the author’s name, contact information, and company’s brand alongside.

Jurisdictional Case Law Reports are a regular (twice a year) round-up of key case law in a particular jurisdiction. The article will sit with our knowledge based articles within The Trademark Lawyer Magazine. It will be a feature that provides a list of key cases in a given period; the article will provide a brief summary of the two main cases and then a 50 word summary of the remaining cases. The contributing law firm would be required to have a good breadth of trademark knowledge and over a wide area not just within the country they practice. This will be a sponsorship opportunity and allows your firm to write twice in a 12 month period and is a great opportunity to show the breadth of your firm’s knowledge. Jurisdictions to be covered: North America, South America, Europe, Asia, Oceania.

For editorial enquiries please call +44 (0)20 7112 8862 or email [email protected]

Trademark K

nowledge Share - France

79CTC Legal Media THE TRADEMARK LAWYER

RésuméNathalie Dreyfus, founder and CEO, DreyfusNathalie Dreyfus is a specialist in IP law and a French and European

trademark attorney. She is the founder and CEO of Dreyfus, a leading

French IP firm that specializes in the digital economy.

Her responsive and modern approach to the practice of law is well

known for its efficiency, especially regarding international issues involving

new technologies, the protection of trademarks online and the new generic

top-level domains.

Dreyfus’ practice offers first-rate services relating to consulting, trademarks

and designs, patents, monitoring services, contracts, litigation and domain

names. She is a renowned expert consultant to the Paris Court of Appeal,

as well as to WIPO’s Arbitration and Mediation Centre and the NAF, and

she is a panelist in several professional bodies.

Trademark protectionQ1. What conventions, Multilateral or Bilateral

agreements are pertinent to the protection of trade

identities in your jurisdiction?

France is part of the following agreements, including:

• The Madrid Arrangement and Protocol,

• The Paris Convention,

• The Nice Convention,

• The Hague Convention, and

• The Vienna Convention.

Additionally, France is subject to the European

Union’s (EU) regulations and conventions as the EU is a

contracting party in multiple international agreements.

Q1a. What national legislation is pertinent to the

protection of trade identities in your jurisdiction?

French trademark law is governed mainly by the French

Intellectual Property Code (IPC) as well as several

independent laws and decrees and EU regulations. The

modern French Trademark law dates back to the Act of

June 23, 1857 until the statute of December 31, 1964,

modified by those of June 23, 1965 and June 30, 1975.

This last statute was abrogated by the Act of January 4,

1991.

As for the other intellectual property rights, all the

applicable texts are today all aggregated in the IPC.

Finally, the Community Trademark granted by the Office

for Harmonization in the Internal Market (OHIM) in

Alicante, automatically covers France and is subject to

the provisions of the EC Regulation No. 207/2009, but

not all of its overseas territories. The EU distinguishes

two categories of French overseas communities. Overseas

Departments (DOM) are considered as members of the

EU, therefore the Community trademark is automatically

protected in French Polynesia, Guadeloupe, Martinique,

Mayotte, Reunion and Guyana. However, it produces no

effect in the Overseas Countries and Territories which

include New Caledonia, French Southern and Antarctic

Lands, Wallis and Futuna, Saint Pierre and Miquelon, as

they are not members of the EU.

Q2. Is your jurisdiction a first-to-use jurisdiction or a

first-to-register jurisdiction?

In France, protection of trademark rights is offered in

principle to the first-to-register and no rights are created

by use. However, there is an exception where rights can

be afforded by use. Indeed, Article L 711-2, paragraph 3

of the IPC provides that the distinctive character of a

trademark may be acquired through use. However, the

acquisition of distinctive character through use assumes

that its holder has extensively used the sign.

Q2a. Please describe the rights afforded by use and

separately by registration in your jurisdiction.

In principle, French trademark rights are obtained

through registration. Registration in itself offers to the

trademark’s registrant a monopoly on the exploitation

of the mark.

However, there are exceptions to this principle, in

particular the article 6bis of the Paris Convention which

offers protection to notorious trademarks even in countries

where they have not been registered, but only for the

goods and services used. The Directive 89/104/EEC

of December 21, 1988 to approximate the laws of the

Member States relating to trademarks completed the

Paris Convention by awarding a national transversal

protection to the trademark for all goods and services

for well-known trademarks (Tribunal of first instance of

Lyon, July 23, 2014, Vente-privee.com).

Trademark Knowledge Share focuses on France, with NathalieDreyfus of Dreyfus answering questions about trademarklitigation and management.

Find and sharethe knowledge:France

Knowledge Share France:Layout 1 15/4/15 12:21 Page 79

20 THE TRADEMARK LAWYER CTC Legal Media

LITIGATION

RésuméKenneth Mullen, WithersKenneth heads Withers’ London-based IP and technology team and

advises on IP, commercial technology and data protection. He has extensive

experience advising clients across a range of sectors including luxury

brands, digital commerce, software and technology, design, hotels and

leisure, music, publishing, financial services, retail and manufacturing.

Kenneth also regularly assists charities and not for profit organisations.

Kenneth’s transactional expertise includes advising on licensing, distribution,

agency, marketing, franchising, sponsorship, celebrity endorsement, book

publishing and music industry contracts, research and development,

outsourcing, IT procurement, software development and data hosting/

processing agreements as well as website terms/privacy policies.

The individual in this case, the UK fashion designer

Karen Millen, now no longer involved in the

running of the Karen Millen business, has been

refused permission by the High Court to seek trademark

protection in China and the USA for the names ‘KAREN’

and ‘KAREN MILLEN’. As with other high profile designers

and retail entrepreneurs in recent years – among them

Jo Malone and Elizabeth Emanuel – Karen Millen the

individual has been blocked in her bid to re-enter the

fashion and lifestyle market using her own name by her

former firm. This case serves as another warning to

individuals who sell or lose control of their eponymous

brand but who may later decide to try and step back into

the limelight.

The Karen Millen caseKaren Millen, the designer (‘KM’), has not been involved

in the Karen Millen trading company (‘KMCo’) since

selling her shares to an Icelandic consortium funded by

Kaupthing Bank in a 2004 Share Purchase Agreement

(‘SPA’). The terms of this SPA include restrictive covenants

which effectively prevent KM from using or attempting to

use any of KMCo’s IP and goodwill, including its registered

and unregistered rights to the ‘KAREN MILLEN’ name (or

other confusingly similar names) in a similar or competing

business.

Since her departure from the trading company, KM

has sought to establish her own range of clothing and

homeware under new ‘KAREN’ and ‘KAREN MILLEN’

brands respectively (the ‘new brands’). In 2011 KM was

involved in litigation with KMCo in the English High

Court in relation to possible trading under the new brands

in the UK and EU. This case was settled out of court in

2015 before judgement was received and in this latest

case KM has applied for negative declarations against

KMCo to allow her to proceed with trademark applications

for the new brands in the US and China.

The High Court in Karen Millen decided that KM could

not register her proposed new brands in the US and China

and refused to grant the negative declarations applied

for by the designer. Richard Meade QC, sitting as judge,

held that such marks would be ‘confusingly similar’ to the

registered and unregistered KAREN MILLEN trademarks

owned by KMCo at the date of the SPA. Furthermore, the

High Court held that KM’s desired trademark registrations

in China and the US would be a breach of the restrictive

covenants, entered into by KM, not to ‘use’ KMCo’s IP

in competition.

Lessons to be learntThe tale of the rising star, creative or founder who assigns

their personal brand to an operating company, from

Reclaim the name –Karen Millen fails toget her own backThe recent High Court decision of Karen Denise Millen v(1) Karen Millen Fashions Ltd (2) Mosaic Fashions Us Ltd(2016) adds to the list of acrimonious trademark disputesbetween famous founders and the eponymous brands theyhave created and since separated from. Kenneth Mullen andJohn Huxley, Withers, investigate the increasingly commontrademark case.

Kenneth Mullen

Withers Article:Layout 1 3/10/16 14:48 Page 20

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2020 · •Cadbury purple trademark Supreme Court on vulgar trademarks Rankings: South America...

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