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Globalizing a Brand

Globalizing a Brand






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  • The name Coca-Cola in China was first rendered as Ke-ke-ken-la. Unfortunately, the Coke company did not discover until after thousands of signs had been printed that the phrase means "bite the wax tadpole" or "female horse stuffed with wax" depending on the dialect. Coke then researched 40,000 Chinese characters and found a close phonetic equivalent, "ko-kou-ko-le," which can be loosely translated as "happiness in the mouth."

Globalizing a Brand Globalizing a Brand Presentation Transcript

  • CLE Seminar for In-House Counsel January 8, 2014 San Francisco, CA Globalizing a Brand Elizabeth Foster Todd Liao David Masson Partner, Los Angeles +1 213 892 2808 elizabeth.foster@dentons.com Senior Counsel, Shanghai +86 21 2315 6028 todd.liao@dentons.com Partner, Paris +33 1 42 68 48 00 david.masson@dentons.com Rob McDonald Denis Voevodin Partner, Edmonton +1 780 423 7305 rob.mcdonald@dentons.com Partner, Moscow +7 495 644 0500 denis.voevodin@dentons.com
  • Expand Your Brand Around the Globe Canada European Community Russia and CIS China California
  • Canada: Rob McDonald
  • European Community: David Masson
  • Russia/CIS: Denis Voevodin
  • China: Todd Liao
  • Focus: Canada, Europe, Russia/CIS, China Key Canada United States Europe Central and Eastern Europe l Offices l Calgary  Atlanta l Barcelona l Bratislava  Associate offices l Edmonton  Boston l Berlin l Bucharest  Facilities l Montréal l Chicago l Brussels l Budapest u Associate firms l Ottawa l Dallas l Frankfurt l Istanbul l Toronto l Kansas City l Madrid l Prague l Vancouver l Los Angeles l Paris l Warsaw  Miami u Zurich  New Orleans l New York l Phoenix + Special alliance firms l l u Algiers  Abu Dhabi l Beijing Amman l Hong Kong Bissau u Beirut l u Shanghai u Bujumbura l Doha l Singapore l Cairo l Dubai u Cape Town  Kuwait City Casablanca l Manama Dar Es Salaam l Muscat Johannesburg u Riyadh Kampala u St. Louis l Accra u Silicon Valley l u Asia Pacific u Short Hills l Middle East u San Francisco l Africa Kigali + Lagos u Luanda u Lusaka u Maputo u Nairobi u Nouakchott Kyiv u Port Louis l Moscow u Praia l St. Petersburg u u Washington, DC United Kingdom l l London Milton Keynes Russia and CIS l Central Asia l Almaty u Ashgabat São Tomé l Baku Tripoli l Tashkent
  • Globalizing a Brand - A Canadian Perspective Presented by: Rob McDonald Partner and Chair of National Intellectual Property Group Dentons Canada, Edmonton, Alberta
  • Trademark Protection and Enforcement in Canada 1. Trademarks Act 2. Registered Trademarks 3. Unregistered Trademarks (common law rights) 4. Corporate Names and Trade Names
  • Basis of Registration 1. Use in Canada (s.16(1)) • date of first use • wares (commercial sale) v. services (advertisement) 2. Making known in Canada (s.16(1)) 3. Marks registered and used abroad (s.16(2)) • Application and use abroad? 4. Proposed use (s.16(3)) 5. Claiming Paris Convention Priority (s.34)
  • Specific Canadian Issues 1. Concurrent use of confusing marks (s.21(1)) 2. Non-entitlement if confusing with previously used trademark, previously filed trademark or previously used trade name 3. Invalidity proceedings (s.18) 4. Five Year Incontestability Rule (s.17(2)) 5. Expungement Proceedings (s.45) 6. Licensing issues and deemed control (s.50(2)) • Public notice of: • The fact that the use is a licensed use; and • The identity of the owner 7. Protection of famous brands in Canada
  • Enforcing your Brand 1. Infringement proceedings for registered marks (s.20) 2. Passing off proceedings for unregistered marks 3. Depreciation of goodwill (s.22) 4. Grey market goods and parallel importation • Using copyright registrations to create alternative remedy 5. Opposition proceedings (s.38) 6. Avoiding loss of trademark rights • Maintain use • Maintain distinctiveness • Maintain control • Maintain consistency of the brand • Ensure application is filed with accurate information
  • Globalizing A Brand: A European Perspective Presented by: David Masson, Partner, Europe
  • What is a Community Trademark (CTM)? • The Community Trademark (CTM) is a trademark registered at the OHIM (the Office for Harmonization in the Internal Market), obtained through a single procedure and valid in all 28 Member States of the European Union. • Protection of CTM is granted for 10 years from the filing date and may be renewed indefinitely every ten years.
  • What is a Community Trademark (CTM)? (cont’d) • The Council Regulation (EC) n 207/2009 of 26 February 2009 provides all rules relating to the Community trademark.
  • What can be protected as a CTM? • A Community trademark may consist of any signs capable of being represented graphically provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. • Registration is refused in the case of (not exhaustive): • Signs which do not conform to the previous requirements; • Trademarks which are devoid of any distinctive character; • Trademarks which are descriptive regarding the goods or services; • Trademark which consist exclusively of signs or indications which have become customary in the current language or commercial practice; • Trademarks which are contrary to public policy or to accepted principles of morality; • Trademarks which are of such a nature to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
  • What are the advantages of using the CTM system? • The application covers all 28 EU Countries. As new Member States join the EU, existing CTMs automatically expand, without any action or payment, on the Community territory. • Any national or legal person can file a CTM without any restrictions as to nationality or state of incorporation (however the applicants whose office or residence is not within the EU must have a professional representative approved by the OHIM). • The application can be filed in any official languages of the EU (then a second language has to be chosen from the five official languages of OHIM). • The average registration time is 6 to 9 months (when no objections are made).
  • What are the advantages of using the CTM system? (cont’d) • The cost of registration is much lower than the collective cost of filing separate applications in each Member State. • A CTM application that is refused registration may be converted into national applications that maintain the priority of the original CTM application. • Genuine use in a single Member State is normally sufficient to avoid cancellation. • The Community Trademark courts designated by the Member States have exclusive jurisdiction for all infringement actions, actions for declarations of non-infringement and counterclaims for revocation or invalidity of the CTM.
  • What are the disadvantages of using the CTM system? • An earlier registration in one Member State alone may defeat a CTM application in its entirety, even if the CTM owner has no interest or intention to use the mark in that Member State. • One single registration for all 28 countries can inevitably lead to languages difficulties: • The trademark cannot be adapted to each country
  • What are the disadvantages of using the CTM system? (cont’d) • The trademark can be descriptive in one (or more) of all 28 countries Ex: T269/06 November 19 2008 “Rautaruuki” refused for designating metals because means “iron” in Finnish. • The trademark can have a problematic meaning in one (or more) of all 28 countries.
  • Globalizing A Brand: A Russian/CIS Perspective Presented by: Denis Voevodin, Partner, Russia
  • Key demographics • Population of Russia: 143.3 million • Male/female: 66.1 million / 76.9 million (46% / 54%) • Cities with more than a million inhabitants (15): • Moscow • Chelyabinsk • St. Petersburg • Rostov-on-Don • Novosibirsk • Ufa • Yekaterinburg • Volgograd • Nizhny Novgorod • Perm • Samara • Krasnoyarsk • Omsk • Voronezh • Kazan • Population of Moscow: 15+ million
  • Transliteration (local language adaptation?)
  • Transliteration: Good Practices
  • Transliteration: Good Practices (cont’d)
  • Transliteration: Good Practices (cont’d)
  • Transliteration: Good Practices (cont’d)
  • Transliteration: Good Practices (cont’d)
  • Transliteration: Challenging Practices PEUGEOT (ПЕЖО или ПЕУГЕОТ?)
  • Transliteration: Challenging Practices (cont’d) CHRYSLER (КРАЙСЛЕР or СХРУСЛЕР?)
  • Transliteration: Challenging Practices (cont’d) GENERAL MANAGER (ГЕНЕРАЛ МАНАГЕР?)
  • Translation (any need to translate a brand?)
  • Translation: Challenging Practices Carte Noire (French) = Black Card (English)
  • Translation: Challenging Practices (cont’d) Черная Карта (Russian) = Black Card (English)
  • Translation: Challenging Practices (cont’d) Black Pearl (English) = Черный Жемчуг (Russian)
  • Translation: Challenging Practices (cont’d) Черный Жемчуг (Russian) = Black Pearl (English)
  • Globalizing a Brand - A China Perspective Presented by: Todd Liao Senior Counsel Dentons China, Shanghai
  • Key Chronology of Development of IP Regime in China Year Law/Regulations Year Law/Regulations 1982 Trademark Law 2001 Accession to WTO 1982 Patent Law 2001 1991 Copyright Law Amendments to IP laws to comply with TRIPS 1992 Accession to Berne and Universal Copyright Conventions 2003 New Regulations on Customs Protection of IPRs 2007 Accession to WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty 2008 Anti-monopoly law 2010 Amendment to Regulations on Customs Protection of IPRs 2010 Amended Copyright Law 2013 Amended Trademark Law 1992 First Amendment to Patent Law 1993 First Amendment to Trademark Law 1993 Anti-unfair Competition Law 1995 Regulations on Customs Protection of IPRs
  • Register Early • First-to-file vs. First-to-use • First-to-file is a principle. If filed on the same day, first-to-use applies. (Article 31 of PRC Trademark Law) • Applicant is entitled to a prior right for a trademark first registered in a foreign country within 6 months after such registration based on international treaty or convention between China and such country. (Article 25, PRC Trademark Law) • Applicant is entitled to a prior right for a trademark used on a commodity displayed in an exhibition organized by Chinese government or a recognized international exhibition within 6 months after the display of the commodity. (Article 26, PRC Trademark Law) • Application of trademark registration cannot harm any existing prior right. (Article 32 of the PRC Trademark Law) • Application for a trademark that has been used by another party and has substantial influence will not be accepted. (Article 32 of the PRC Trademark Law)
  • Register Early (cont’d) • It is essential to register your trademarks in China before entering into the market to diminish the risk of your trademarks being "hijacked" • Note that the registration process can take up to 18 months • A trademark can only be fully protected in China once the registration has been completed • Example of abusive registration: • Michael Jordan, also known as 乔丹 (Qiaodan) in China, 乔丹 (Qiaodan) was registered in 2000 by Qiaodan Sports Company Limited, a Chinese sportswear and shoe manufacturer
  • Register Early (cont’d) • Register with the right classes and right goods • Chinese trade mark registration systems use the International Classification of Goods and Services under the Nice Agreement • Chinese classes also include sub-classes which are not used in Europe. • The application should specify the classes and the names of the commodities/services using the trademark. • One application may include several classes of commodities using one trademark. (Article 22 of PRC Trademark Law)
  • Register Early (cont’d) Protecting Chinese Language Marks • One brand may have different Chinese translation according to its pronunciation. Chinese characters with similar pronunciation have different meanings. E.g. Coca-Cola: 蝌蚪啃蜡 vs. 可口可乐 Microsoft: 微软 Yahoo: 雅虎 • Register Chinese marks that have been acknowledged in the Chinese market E.g. Viagra 万艾可 vs 伟哥 (Pfizer registered 万艾可 in China in 2000. 伟哥 was better recognized in the Chinese market via media report, but was registered by a domestic company in 1998). • Register Chinese marks that may be related to the brand
  • Patent • Invention (“发明") - granted for new technical solutions for a product, process or the improvement thereof, provided that technical solutions have a practical applicability; 20 years' term from the filing date. • Utility model (“实用新型") - granted for new and practical technical solutions relating to the shape and/or structure of a product. In general, the degree of invention required for a utility model patent is not as high as it is for invention patents; 10 years' term from the filing date. • Design (“外观设计") - granted for new designs relating to the shape, pattern or their combinations, or the combination of color, shape and/or pattern that are aesthetically pleasing and industrially applicable; 10 years' term from the filing date. • Patent rights commence from the date of publication of the grant in the Patent Gazette.
  • Copyright • China is a party to Berne Convention and Universal Copyright Convention • The work product is automatically protected by copyright the moment it is created • Voluntary registration for copyright is available in China • Voluntary registration will provide proof of ownership, which can save you time and money in case of a dispute later on • According to PRC Trademark Law: An application for the registration of a trademark shall not create any prejudice to the prior right of another person • Copyright can be a type of such “prior right” as provided in the PRC Trademark Law, which could be claimed against trademarks in opposition
  • Domain Name • Companies operating in China face an increasing number of online threats, such as fraud, counterfeit sales, false affiliation, phishing, slamming and traffic diversion. • These may lead to consumer confusion or lost E-mails or lost business, and various online criminal activities may lead to brand dilution, increased risks, loss of business and an eventual loss of reputation (and ultimately profit). • It is strongly recommended that you proactively protect your company name, product names, services and trademarks through domain name registrations under the Chinese top level domain .cn and the new top level domain name .中国, which means .china. • Register your domain name in both Latin and Chinese characters, even if your company is not operating in China yet but plan to.
  • Domain Name (cont’d) • China no longer allows foreign companies to register for .cn domain names unless you have a local presence in China. However, you may register for a .cn domain name by entering trustee agreements with an agent. • China Internet Network Information Center has implemented a domain name dispute policy, which costs approximately RMB4,000 to pursue, exclusive of attorney fees. • A domain name dispute must be carried out within two years after the initial registration of the domain name. • After this period, you must go through the legal system, which can be a timely and costly affair. • If your company wins a domain name dispute case, be sure to follow up and arrange for a transfer of domain name to your company right away.
  • Customs IPR Protection • IPR holders may voluntarily file their China-registered trademarks and related products with Customs so that Customs will actively detain suspected infringing goods • Customs may also detain suspected infringing goods upon application by the IPR holders case by case • IPR holders need to submit monetary deposit to Customs for each detainment of infringing goods or may post annual bonds with Customs as a deposit for detainment of infringing goods in a year • IPR holders may arrange trainings relating to genuine and fake goods for staffs at targeted Customs ports to enhance efficient IP enforcement
  • Manage Your IP Portfolio • Centralize Management • avoid duplication or inconsistency of records • reliable record system • monitor dates of applications, registrations, renewals and maintenance • Trademark registration effective for 10 years. Renewable within 12 months before the expiration. 6 months' grace period is given after the expiration for the renewal application. • Use Evidence If a registered trademark is not used for three years without reasons, any one can apply to the trademark bureau to cancel the registration. (Article 49 of the PRC Trademark Law)
  • Contract with Business Partners • Define the scope of the IP rights licensed • Geographical; Time; Scope of Service/Products • Exclusive or Non-exclusive • Prohibit abusive registrations • Non-compete covenants • Guidelines for Anti-monopoly Enforcement in the Area of IP • SAIC is in the process of making such guidelines • PRC Anti-monopoly Law Article 55: Abuse of IP rights to excluding or restricting competition is subject to the Anti-monopoly Law.
  • Multiple Enforcement Routes Criminal Action Serious infringement of IPR or false trade descriptions Civil Remedies Interim: preliminary injunction, preservation of evidence Final: cessation of infringement, confiscation of counterfeit goods and moulds, compensation for damage (profits lost by IPR owner, unjust enrichment by defendant, or statutory damages), reasonable expenses on investigation, collection of evidence, lawyer’s fees
  • Multiple Enforcement Routes (cont’d) Administrative AIC – trademark infringement AIC / National Fair Trade Bureau – unfair competition TSB – false trade description under Product Quality Law Customs Arbitration
  • Develop a Strategy 1. Know your IP 2. Register early: what to register and what to oppose 3. Have a centralized system 4. Periodic audit 5. Monitor the market: in-house team, external advisors and investigators 6. Enforcement
  • Summary Q&A
  • North America: Branded for Greek Consumers
  • Europe: Branded for Chinese Consumers
  • Thank You! Merci! Спасибо! Xie Xie! Gracias! Todd Liao Denis Voevodin Senior Counsel, Shanghai Partner, Moscow +86 21 2315 6028 +7 495 644 0500 todd.liao@dentons.com denis.voevodin@dentons.com Rob McDonald David Masson Partner, Edmonton Partner, Paris +1 780 423 7305 +33 1 42 68 48 00 rob.mcdonald@dentons.com david.masson@dentons.com Elizabeth Foster Partner, Los Angeles +1 213 892 2808 elizabeth.foster@dentons.com