Daily News. INTA President Mei-lan Stark and Steven. INTA and QBPC sign agreement. Looking for the wow factor in designs. Monday, May 12, 2014

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1 Daily News Published by Monday, May 12, th Annual Meeting, Hong Kong News 2-5 Quiz 测试 2 Features 8-19 Schedule 24 Weather 26 C Han Cyrillic Katakana Arabic Hebrew Mixedscript Thai Devanagari Data New gtld trends Page 6 Preview How to deal with lookalikes Page 8 新闻 全球化的商标管理策略 跨国企业经验谈 Page 3 INTA President Mei-lan Stark and Steven Wang, Acting Chairman of China s Quality Brands Protection Committee, signed a cooperation agreement yesterday to deepen the collaboration between the two IP organizations. QBPC represents foreign brand owners in China and works to promote IP protection in the country. Jack Chang, Honorary Chair of QBPC, said that the agreement with INTA marked a new page for the Committee. We are the frontline soldiers fighting counterfeiting in China. The police kick the door down and we follow them in, and so we have in-depth experience of the tricks the counterfeiters play. We know the dos and don ts, and how to engage the Chinese government. We won t shy away from giving the Chinese government the credit it deserves, but we also have the courage to raise issues with officials. But he added that it wasn t enough to focus just on China in the fight against fakes. We need to leverage the platform. INTA brings more international experience to QBPC. Stark said that the QBPC would help INTA to navigate China, and in return, the organization would help those brands that are not already global to become global. INTA and QBPC sign agreement Looking for the wow factor in designs morning trademark people, began Grégoire Bisson, Good Director of The Hague Registry, at the Madrid System Users Meeting yesterday. There s nothing wrong with trademarks, but once you ve worked in designs there is no going back. The WIPO official explained his enthusiasm for the world of design law by outlining how important design has become to IP over the past 50 years. We used to buy watches by looking for the most reliable watch for our budget, he said. Trademarks offered some promise of that reliability. Now though, reliability is assumed and what people look for is design. People want products that have the wow factor. Design registrations have grown at twice the speed of trademark registrations over the past nine years, Bisson said. Most design owners, however, seek protection in their home country. That s because there is territoriality of rights, making the application process cumbersome and expensive. The good news for design owners is that the Hague System, administered by WIPO, can make the application process more efficient. The bad news is that it has limited geographical scope, compared with the scope of protection offered to trademarks through the Madrid System. But stay tuned, said Bisson. The Hague System will grow massively. South Korea is due to join in July, the United States in October, and Japan, China, the 10 ASEAN countries and Russia could join in Canada, Mexico and ARIPO are also considering whether to accede to the Hague Agreement. Expansion of the System, however, could lead to what Bisson described as complexification. One solution is for WIPO member states to agree on a draft Design Law Treaty, designed to simplify registration formalities for industrial designs. At WIPO s Extraordinary General Assembly last week, member states discussed convening a diplomatic conference on the Treaty. Even if that does not mature into domestic legislation for many years, said Bisson, it will act as a best practice model for IP offices around the world. Yesterday s Madrid System Users Meeting also featured presentations from representatives of trademark offices in Tunisia, Mexico, India, OAPI and Hong Kong, while WIPO officials provided an update on changes to the system, and how trademark owners can make better use of it. For more details, see page 5. To find out more about designs, attend today's session IM20 The Shape of Things to Come: Clearing and Protecting High- Tech Product Configurations from 11:45 am to 1:00 pm in Convention Hall A. It might have been raining outside the Convention Centre, but those attendees at the Welcome Reception were treated to rather sunnier views of Hong Kong. A big screen projected images of the best the city has to offer: shopping in the city s luxury malls and bustling back streets; hiking in the wilderness of the New Territories; the spectacular harbor side lightshow; frenetic dragon boating; and afternoon tea at The Peninsula. Attendees were treated to a dim sum feast with shao mai, spring rolls, turnip cake, and egg tarts.

2 News Get your networking up to speed In the Exhibition Hall this year you can find many items of interest from around the world. These include Russian dolls, traditional Chinese outfits, Ecuadorian chocolate, Vietnamese figurines and pirates of the Caribbean. Cuddly toys also appear popular among exhibitors this year. You can even win some at one stand if you manage to throw a sticky ball at a target. At INTA s stand you can view samples of some counterfeit goods, including fake designer jeans and purses. In addition, you can make 20 new friends in an hour in the Speed Networking section of the Exhibition Hall. The 40 busy networkers at the 20 tables in the section must change tables every three minutes. Sessions last an hour. Monday and Tuesday each have sessions at 10:30 am, 12:00 pm, 1:30 pm and 3:00 pm, while Wednesday has sessions at 10:30 am and 12:00 pm. Among the tips provided to speed networkers are: consider developing an elevator pitch of a response you would give in any situation when someone asks you who you are or what you do, think about how you want to describe yourself and consider letting the other person talk first. Japan considers non-traditional marks At yesterday s Users Meeting, representatives from the Japan Patent Office (JPO) gave an update on recent activities and upcoming developments in Japanese trademark law. One of the biggest changes is that the country is looking to introduce protection for non-traditional marks. One reason for this is the increasing popularity of these marks. In fact, the JPO notes that Japanese companies have been filing for and receiving non-traditional marks in other jurisdictions. A draft version of a bill to amend the Japanese Trademark Act looks to provide for protection of color marks, sounds, moving marks, holograms, and positional marks. However, the draft bill does not provide for protection of scent and taste marks, due to concerns that it is too difficult to specify the scope of such marks and there is doubt that there is immediate need for them. The INTA Daily News is produced by Managing Intellectual Property in association with the International Trademark Association. Photography by Graham Uden. Printed by iemedia Asia Limited. Six ways to master cross-cultural communication Trademark administrators were given some guidance on dealing with cross-cultural communication at a brunch yesterday. Etienne Sanz de Acedo, INTA CEO, opened the session by underlining the vital role of administrators. You do the daily work for trademark owners, and that is extremely important to us, so thanks a lot for being here, he said. Daniel Greif of Siam Premier International Law Office in Thailand compared western and Asian worldviews, such as the CEO of a company being viewed with far more importance in Asia. He said that many countries claim that their culture is different from others, but in Thailand that really is true. As opposed to the urgency applied to work in some countries, Greif said a common refrain in Thai offices is sabai-sabai, which means relax, relax. Yes, it is different, he said. It can be a challenge in the workplace to get things done. Mona Lee of Hanol Law Offices in South Korea pointed out that body language is important. In Asia, for example, it is very important when meeting people to inspect their business card, and disrespectful gestures include putting the card in your pocket and even worse writing on it. When leaving a room in Asia you should not turn your back on someone more senior. You should also stand up when someone important is leaving. Mark McVicar of Winkler Partners in Taiwan, outlined six ways of helping master cross-cultural issues. His first tip was to understand low context versus high context culture. Western cultures are low context, with direct communication, individual opinions and fact-based decisions. What you see is what you get, he said. In contrast, Asian cultures have less direct communication. The second tip was to keep it simple. Give the appropriate amount of information, be aware of overly complex language and avoid cultural references and humor, said McVicar. Third was for brand owners: state your goals clearly, understand the standards of urgency and responsiveness, and don t jump to conclusions. Ask for clarifications first! he said. The fourth tip was for local counsel: work actively to manage the client s brand, understand the client s business and brand, and communicate legal and cultural issues. For both brand owners and local counsel, McVicar urged: If you are not sure, ask. The fifth tip was to ask for a second opinion if you run into a problem and the final was to keep an open mind and to give yourself a break if something goes wrong. The INTA Daily News is also available online at and Euromoney Institutional Investor PLC No part of this publication may be reproduced without prior written permission. Opinions expressed in the INTA Daily News do not necessarily represent those of the INTA or any of its members. Full production credits at Win INTA goodies! Today s quiz question 测试 This is INTA s first Annual Meeting in Hong Kong, but the Association has had events here before. When was INTA s last conference in Hong Kong? 国际商标协会年会首次在香港举办, 但该协会曾在此举办过其它会议 请问最近一次在香港举办的会议是什么时候 Send your answer to contest@inta.org by midnight tonight. Winner announced on Wednesday 2 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

3 Being smart about global brand development News 新闻 商标管理策略 全球化挑战 In an increasingly globalized marketplace, companies need to learn to pick their battles and conserve their resources. That was the message from yesterday s panel, The Essentials of Managing a Worldwide Trademark Portfolio. Companies often instinctively feel the need to maximize protection for all their brands. However, Denise Yee of Visa International said that brand development requires a nuanced approach. At Visa, it seems like every client wants to name everything, all the time. And sometimes it makes sense, but a lot of times, for a particular service, it may not need a special name, Yee explained. Instead, she said that when discussing a new service with partner companies, the first question is whether it needs a name at all. Factors to consider include the product s expected shelf life, whether there will be significant marketing behind it and how many countries the product will be deployed in. Daniel Zohny of the Fédération Internationale de Football Association (FIFA) also stressed the need for a considered approach to brand protection. FIFA has its brands divided into several types, including the FIFA brand itself and the trophy. There are also the event-related brands, such as logos, slogans and mascots for specific tournaments like the 2014 FIFA World Cup. In this category, the size of the tournament also helps to determine the brand protection strategy. For example, while marks associated with the World Cup will be registered in many jurisdictions, protection for a smaller event such as an under-17 tournament may be focused just on the host country. Thomas Zutic of DLA Piper gave the outside counsel s perspective. He said one of his main objectives is to obtain strong protection for his client s core trademarks. Many times, there will be tons of subbrands, so you really have to make sure that you understand the core brand, the core marks and make sure that you are putting the appropriate resources behind these and not something that s just a one-time thing for three months, he says. In the end, building a brand is about careful weighing of a mark s value. Even the Visa brand, judged by some to be the ninth most valuable in the world, does not indiscriminately register for the sake of getting a mark. We put a lot of thought into what we file, if we file at all, Yee explained. 在全球化的经济形势下, 企业内部法律顾问和外部律师在管理企业商标组合时, 面临各种不同的挑战, 尤其对于跨国企业更是如此 在香港举办的第 136 届国际商标年会上, 演讲人分享了他们的商标策略, 包括商标申请 通关 授权 保护及管理等一系列问题 威士国际 (Visa International) 的丹尼斯 伊 (Denise Yee) 女士负责管理企业的知识产权法律部门, 她提到了申请和管理商标时需要考虑的几个主要问题 这个商标将会覆盖哪几个国家? 在整个商标组合中是否具有独特性? 受众群是消费者还是企业? 等等, 这些都是我们需要考虑的问题 她说道 具体来说, 管理者必须清楚申请该商标的目的 仅用于短期推广活动还是适用于长远规划? 更重要的是要确保它在企业内得到足够的市场推广投资, 管理层对此商业机会的支持尤为重要 伊也透露道, 目前大部分工作是由企业内部团队完成, 包括美国的商标申请及更新等 交由外部律师的工作则包括国际申请及一些超额的工作等 威士的业务覆盖 200 多个国家, 并于 2012 年获得 BrandZ 全球最具价值品牌荣誉 国际足球联合会 (FIFA, 简称国际足联 ) 的商标策略侧重点略有不同 知识产权团队的负责人丹尼尔 佐尼 ( Daniel Zohny) 在发言时提到他们的决策依据 品牌发展策略视市场重点及客户群而决定, 而商业品牌则取决于业务的性质, 比如足球联赛的市场推广 商标的注册地及司法区的选择很大程度上由联赛的时间表及规模决定 他解释道 国际足联目前拥有 13,000 项商标, 另有 900 项正在审批 该组织拥有其所有的知识产权, 包括商标 版权设计 联赛及活动相关的零售品牌等, 并向赞助商 合伙人等提供独家授权许可 佐尼表示, 授予电视相关播放及媒体的许可已占总许可收入的三分之二 在提到商标保护策略问题时, 对于最近常见的社交媒体侵权, 威士和国际足联似乎都认同处理这些的问题所面临的挑战 社交媒体的覆盖面广, 有时向整个网站采取行动反而事与愿违, 所以采取行动前我们会考虑网站点击量等一系列因素 伊说道 尤其对于像国际足联这样的公众组织, 采取类似的行动时需备加小心 我们会确保与决策者进行沟通 佐尼表示 本届国际商标协会年会于 5 月 10 日开始在香港会议展览中心举办, 为期 5 天, 吸引了约 8,500 位与会者 w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

4 News Let me entertain you! Meet Generation-e: today s law students are permanently connected to their electronic devices; constantly distracted by s, texts and tweets; and believe they can combine keeping in touch online with listening to lectures. In yesterday s Adjunct Professors Special Interest Group panel, moderated by Tara Aaron of Aaron Sanders PLLC, professors, lawyers and students discussed how to win their attention. Professor Lutz-Christian Wolff urged teachers to be passionate, or at least act passionate: There are natural teachers and there are others, he said. But the difference is over-rated. He advised lecturers to use inclass exercises, real-life examples and personal stories to capture and maintain attention. Explain why you are doing things, and make sure you re entertaining, he added. Several students in the session said they do have self-discipline, and can concentrate while their electronic devices are switched on, particularly when professors are engaging them on their own level. When students think, they don t have time to tweet, said one. But Professor Irene Calboli emphasized that engagement is a two-way street. She said students should be aware of their surroundings, show good manners and respect. Ultimately, she stressed, technology is everyone s friend: But as a professor I can never compete with Brad Pitt and Angelina Jolie. INTA held a Pre-Annual Meeting reception in Paris, France earlier this year. Veteran China-watcher Joe Simone of SIPS offered some Chinese takeaways at the In-House Practitioners Luncheon yesterday. In an entertaining speech, he discussed Chinese history, philosophy and religion as well as the ethical and cultural ideas that underpin approaches to intellectual property and law. Simone also provided advice on dealing with counterfeits, especially online, and bad faith trademark registrations. One tip was to try to understand the counterfeiters mentality. I ve met lots of counterfeiters; most of them are really nice people and they really believe what they are doing is legal, he said. The Power of Together Think trademarks Think global King & Wood Mallesons is redefining the way clients work with their legal adviser. Through our unrivalled presence in the Asian region and an award winning trademark and intellectual property team, we are connecting the world to Asia, and Asia to the world. Across the globe more than 2,700 lawyers in 31 international offices are connecting businesses to relationships that unlock opportunity. Every day. If you re looking for a partnership that truly hits the mark, talk to us. Trademark Patent Copyright IP Litigation 4 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

5 News Africa gears up for Madrid System The Madrid System could expand beyond 100 member states within the next year if the Organisation Africaine de la Propriété Intellectuelle (OAPI) delivers on its plans to join. At the Madrid System Users Meeting yesterday, OAPI s Maurice Batanga said he hoped the 16-member group of French-speaking countries in Africa would join Madrid as a regional organization by the end of this year. That would mean that owners of international trademarks could designate OAPI in the same way they can today designate Community trade marks in Europe. OAPI s Administrative Congress approved Madrid membership at its most recent meeting and the organization has been updating its regulations, manual of procedure and official forms. If they do join, the OAPI members will be following in the footsteps of another African country, Tunisia, which became the 91st and most recent country to accede to Madrid last year. Speaking to the INTA Daily News yesterday, Nebil Ben Béchir of the Tunisian IP Office said accession was a result of a new environment in the country since The country also joined the Hague Agreement on industrial designs in Trademark applications are growing at Members of WIPO and national IP offices after yesterday s Madrid System Users Meeting a rate of 7% in Tunisia and Ben Béchir said that membership of the international agreements inspires confidence among both international investors and local SMEs. Since joining Madrid, the country has been designated in more than 1,500 international registrations and this year has already seen two international registrations filed from Tunisia. The first, in class 5, was for pharmaceutical company Vitfen and the second, in class 7, for solar power company Saphon Energy. I would encourage and recommend other countries, especially developing countries, to accede to the Madrid Protocol to contribute to economic development, said Ben Béchir. He said Tunisia would particularly welcome OAPI membership, given the growing importance of trade within Africa. OAPI is one of two regional IP groups in Africa. It is likely to be more difficult for the other one, the African Regional Intellectual Property Organisation, to join Madrid, as it operates a designation system, rather than a single filing covering all member states. That would mean international registrations would effectively be designations of designations. Representatives of both organizations will be speaking at today s Africa Rising! session. Moderator Brenda Wodd-Kahiri of B. W. Kahiri told the INTA Daily News the panel will discuss both legislative developments and practical business issues: We re going to look at the frustrations as well as the successes for businesses. One particular focus will be the economic harm caused by counterfeiting, and how this can be communicated to governments and law enforcers. Panelist Jose M. Checa of DuPont de Nemours International, which has 1,500 employees in sub-saharan Africa, agreed: There is very good will in the courts, the government and the police. But there is a need for IP education really understanding what IP is, why counterfeits are not good and why IP rights are good for society in general. RM50 Africa Rising! takes place from 3:30 pm to 4:45 pm today in Convention Hall A. w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

6 Data Get the latest gtld news The new gtlds are coming: more than 250 have already been designated and new domains are launching every week. Ahead of today s session, here are some key figures on the new gtld program. There s a lot of misinformation out there, said today s moderator Kristina Rosette of Covington & Burling. Among the issues the panel aim to clarify today are compliance, Whois access, premium name lists, name collision and the so-called Spec 13 concerning.brand domains. Amy Stathos of ICANN will be present to address the high-level issues about governance and security. One of today s panelists, Sarah Deutsch of Verizon, told the INTA Daily News the panel of domain name specialists will discuss hot topics, including what s working and what s not working in the program. It s a changing dynamic and things are happening very rapidly, she added. Among emerging issues that are presenting challenges to brand owners are deceptive sales practices, name collision and the.sucks domain. Also speaking will be Vicky Folens of Deloitte, who will speak about the Trademark Clearinghouse and in particular the top 10 misperceptions. As the latest figures show, use of the Clearinghouse is beginning to accelerate after a slow start now that more new gtlds are launching. CM04 Trademarks and New Generic Top-Level Domains: An Update takes place at 10:15 am to 11:30 am today in Convention Hall BC. Application statistics as of May 5 Top 10 new gtlds 700 gtld Registrations Market share Withdrawn Will not proceed In evaluation On hold Pending GAC advice Pending objections Contention sets In contracting gtlds delegated In sunrise Sunrise completed 1.guru 55, % 2.berlin 47, % 3.photography 34, % 4.club 34, % 5.xn--3ds443g ( 在线 ) 30, % 6. 28, % 7.link 23, % 8.today 23, % 9.tips 21, % 10.company 18, % Source: ntldstats.com. Data as of May 11, 2014 TMCH statistics Top 10 countries Status of marks 1 United States 2 Germany 3 France 4 United Kingdom 5 Switzerland 6 Spain 7 Italy 8 Sweden 9 Japan 10 Australia Invalid Being processed Validated Trade marks submitted per organization 1 mark 64% 1-5 marks 27% 6-10 marks 5% marks 2% 20+ marks 1% Top 10 classes Script of marks Latin Other Han Cyrillic Katakana Arabic Hebrew Mixedscript Thai Devanagari NICE classification 6 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

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8 Preview Lookalikes What to do when an infringer is your biggest customer Trademark owners have long complained that own-brand rivals use look-alike products to free-ride on their reputations and steal market share. Panelists today will explain what they can do about it, says Emma Barraclough. Imagine that a business that is ripping off your product s packaging asks you to pay them USD1 million to stop it. Would you pay up? It s unlikely. Now imagine that they are one of the biggest distributors of your product and have the power to take your brand off their shelves overnight. That s the kind of commercial dilemma that many brand owners face when confronted with own-brand lookalike products sold by supermarkets and other retailers. Lookalikes sometimes known as parasitic copies have been around for decades, but brand owners are facing problems more frequently and in more markets than ever before, says Imogen Fowler of Hogan Lovells. It s been going on for some time in Europe and the U.S., but now lookalikes are appearing in far more places. It is becoming a problem in New Zealand and Australia, and it s spreading to Asia too, along with the emergence of national and international supermarket chains. Fowler is moderating a session today on lookalikes that will consider how trademark owners should respond to own label brands that come close to and often cross the legal line when it comes to conjuring up the look and feel of the packaging used by market leaders. The two in-house counsel (Jorge Casals Ide of Red Bull GmbH and Ann H. Chen of Mars, Incorporated) and one private practice lawyer (Lydia T. Gobena, Fross Zelnick Lehrman & Zissu, P.C.) on the panel will consider how brand owners can best protect their legal rights against the makers of lookalikes, as well as outlining the commercial issues that they need to consider before they take action against suspected infringers. The session is aimed at both in-house counsel and at private practitioners, says Fowler. We want to offer some advice to in-house lawyers on how to deal with lookalikes and raise awareness among those lawyers who may not yet have had to deal with the problem. But we also want to sensitize external counsel to the issues. It is easy to see a lookalike, say blatant infringement and then march off to court to do exciting things. But we need to look at lookalikes as a commercial issue. Few lookalike disputes ever make it to court because of the business risks involved for brand owners. Big retailers are, after all, often their chief distribution channels. Added to these commercial concerns are legal uncertainties: brand owners and retailers know that it is difficult for the courts to determine with any certainty what consumers are thinking when they choose one product over another. For example, one rare case of a brand owner taking action against a supermarket own brand in the UK (when United Biscuits, maker of PEN- GUIN chocolate biscuits, sued Asda Stores over its PUFFIN biscuit in the 1990s) saw the brand owner lose, after it failed to convince the court that its trademark had been infringed. But the lack of court rulings doesn t mean that in-house counsel ignore the problem of lookalikes. Fowler says that some of her clients have more than 100 live disputes. The problem can be blatant and constant, she says but brand owners should be willing to tackle it. Once the retailer gets the message that you are going to fight it, they are more likely to move onto the next brand owner, she says. So how should brand owners respond to lookalikes? One of the biggest challenges for in-house counsel is to manage the relationship with a retailer who is both a competitor and a customer. There are also tricky internal relationships that must be handled sensitively. Senior management may demand the company s legal team do everything it can to stop the sales of lookalikes, while the salespeople who make their living from keeping retailers stocked with the company s products are often reluctant to confront their best customers about the problem. In these cases, external counsel should help the in-house 13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C. Tel: Fax: / @deepnfar.com.tw Prosecution Infringement IP Litigation You create. We protect. COHAUSZ & FLORACK Patent Attorneys and Attorneys-at-law Bleichstraße 14. D Düsseldorf. Germany. Phone Fax mail@cohausz-florack.com. 8 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

9 Preview Lookalikes How to deal with lookalikes Responding to lookalikes requires a mix of legal know-how and commercial savviness. Here are some of the issues to take into account. Understand the commercial relationship you have with the retailer. Ensure you get your sales teams on board with the legal strategy you pursue, but remind them that your job is to avoid the dilution of the brand in the long term. If budget allows, obtain broad trademark and design protection for packaging as well as logos. Consider carefully the implications of paying retailers to change their lookalike packaging Educate your own design teams about IP protection and about what elements of a design or get up might be protectable. Document examples of customer confusion. Consider whether you can obtain an injunction in a more brand owner-friendly jurisdiction to give you greater negotiating leverage. team draft correspondence and have those awkward conversations with retailers. If retailers deny that their own-brand version of the brand owner s product is a lookalike, Fowler advises her clients to ask the other side for a copy of the design brief that they sent to their designers. It is amazing what you see come out of the woodwork, says Fowler. I have seen cases where the brief said get as close to [the brand leader] as you can. That s a brilliant piece of evidence to have. Brand owners who want to avoid protracted and unpredictable legal disputes (and who doesn t?) should consider what commercial solutions they might be happy to accept and how they can exploit commercial points of leverage in discussions with retailers. They might be willing to make another commercial concession in return for a supermarket phasing out a lookalike quickly, for example. Brand owners should consider the timing of their negotiations. Many retailers conduct a listings process each year, during which time they try to secure their annual purchasing deals. This makes it a good time to start talks, says Fowler. But trademark owners should be wary about agreeing to pay retailers to change their packaging. Retailers talk, and a brand owner that has developed a reputation as an easy mark is likely to be targeted again. Although the commercial relationship between big supermarkets and brand owners is a complicated one, the rise of so-called deep discounters is reshaping the links between the two. While brand owners have traditionally held back from taking legal action against supermarkets, lookalikes also appear in smaller chains such as Aldi and Lidl in Europe. These kinds of stores, which are gaining market share in many jurisdictions, often don t stock the market leaders own products, making it easier for trademark owners to justify taking legal action against them. Those brand owners that choose to sue freeriding retailers need to understand that the rules on lookalikes vary widely from jurisdiction to jurisdiction. During today s panel, Lydia T. Gobena of Fross Zelnick Lehrman & Zissu will be considering some of the issues involved in enforcing your IP rights and comparing the rules in some European countries with those in the U.S. Those trademark owners who sell their products across the EU may find it easier to enforce in Germany, where the opportunity to obtain an ex parte injunction provides a good starting point for negotiations with retailers, than in markets such as France and the U.K. (see box). Of course trademark owners would rather avoid problems than respond to them, and the panelists will offer some tips to in-house counsel about the ways they can maximize trademark protection for their rights. They should work with their design teams to explain what elements of the product s packaging may be eligible for protection, for example. Unusual bottle shapes, product colors and names may make rip offs by retailers easier to establish, and these designs and logos can then be protected by design rights as well as trademark rights, subject, as always, to constraints on the prosecution budget. But brand owners may be better off spending money upfront on protection than on retailers ransom demands down the line. CM20 Battling for Brands: 11:45 am to 1:00 pm today w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

10 Preview Doing business in China Prosper in China China s dynamic economy attracts plenty of overseas investment. But how should foreign companies conduct business to secure long-term success? Emma Barraclough reports. Doing business in China can be a complex undertaking for inexperienced foreigners. Many fall into the various traps awaiting those so eager to expand into this growing market that they neglect to do basic due diligence on their prospective partners, or fail to understand that Chinese laws do not mirror those of their home country. While doing business in China might not always be easy for those new to the game, the good news is that managers who invest time and effort in understanding both the cultural norms and the laws in the country, and who keep a level business head in one of the world s most dynamic economies, can maximize their chances of avoiding problems. So what do managers need to know about setting up and thriving in China? Panelists today will provide tips and advice in in a session moderated by Joseph Simone of SIPS Simone Intellectual Property Services Asia Ltd, who has studied and worked in China since the 1980s. He is joined by Vivien Chan of Vivien Chan & Co., Kevin Ching of Sotheby s, and Laura Wen-yu Young of Wang & Wang. They will talk about some of the common mistakes brand owners make when they invest in China and discuss the regulatory challenges in doing business on the ground, from obtaining licenses to opening offices. The panelists will also address the hot topics of managing relations with government officials and ensuring that your company meets its compliance obligations. The high degree of government regulation of business in China means that it is essential that companies develop an effective government relations program, and that it is overseen by senior staff who understand what the company must do (and must not do) to stay within the law both in China and overseas. Although managers may be tempted to rely on personal connections in China to get things done, they should be wary of over-estimating the importance of guanxi, says Simone. Guanxi are not always essential, and in any case, business relations should always be managed by solid contracts and good business fundamentals. Companies should beware people who claim that they can sell guanxi, because of the obvious compliance issues that they pose. The panelists will consider the practical ways that companies can deal with audits by government officials, and prepare for and deal with crises. They will also consider what President Xi Jinping s continued campaign against corruption means for businesses in China, including how foreign companies should respond when their local partner appears to be operating within a legal gray area. Negotiation is one business skill that is particularly susceptible to cultural mismatches, and the lawyers in today s session will explain how Chinese negotiation styles can wrong-foot foreigners. Negotiations generally take longer, and there are typically a number of hidden factors on the Chinese side that contribute to delays in decision making, says Simone. Beware also that the biggest issues in negotiations are often left to the last minute for discussion, he warns. Given the rapid rise in the number of Chinese who have been educated overseas, an increasing number of foreign businesspeople will find that they share plenty of cultural reference points with their younger Chinese colleagues and business partners. But they should still be aware of the cultural and political context in which negotiations take place, the panelists will warn. Junior employees in China are often particularly deferential to their senior colleagues, and business partners from both private companies and state-owned enterprises will have important political issues 1 0 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

11 Preview Doing business in China How to navigate the Chinese market Doing business in China requires foreign IP owners to understand the Chinese market, the country s laws and the nuances of business etiquette. Here are 10 tips for getting it right Understand the environment 1 Some businesses have jumped into the Chinese market too quickly, fearful that they will lose money and market share to competitors if they miss a business opportunity. But you need to take your time, understand the environment, and build a useful network of business intelligence contacts and advisers to whom you can turn to for specific advice. Be prepared 2 You should assume that your trademarks, copyrights and trade secrets will come under attack. Ensure you have systems in place to minimize theft from employees, business partners and rivals and make it clear to everyone that you take IP protection seriously. Get the right team 3 The best team for your China operations will include business managers with plenty of experience within your company and business managers with experience in China. Having one without the other can be perilous. Having neither is folly, says Simone. It can be tempting to rely on junior Chinese staff to manage your China operations because they have the linguistic skills and cultural know-how that the rest of your team may lack. But beware: they are unlikely to have developed the business acumen of more experienced managers and will need plenty of support and supervision. Appreciate local differences 4 Although China appears to be a very centralized country, in reality there are large economic and political differences between provinces. Officials in courts and enforcement agencies may deal with the same issue differently in different parts of the country. Brand owners should understand the impact this may have on their IP enforcement strategy. Be conscious of time 5 Getting the timing of a deal right can be difficult. Although companies should avoid making rash decisions without doing proper due diligence in China they should be aware that negotiations which seem to be going smoothly may become more difficult over time. In China dealmaking often begins with lavish banquets and plenty of positivity, but the most difficult points are saved for the end of the talks. Develop a sound government 6 affairs strategy You need to understand which government authorities are looking over your company s shoulder and engage them in a friendly and open way, says Simone. Ignoring them can increase the risks of trouble on a number of fronts, and make it harder to compete with protected local enterprises as well as to extricate oneself from a crisis. Expect negotiations to continue 7 Foreigners can become very frustrated by a tendency for Chinese business partners to continue negotiations even after a contract is signed. If this happens to you, it may be most useful to take the same approach and use the talks as a chance to secure a better outcome for your side. Identify decision makers in a 8 deal This can be tricky for foreign business managers, who rely on cultural clues to identify their counterparts in other organizations. But getting it right is important, because if the person on the other side of the negotiating table is not the organization s key decision maker, it is doubtful that they will have been given the authority to sign off on any agreement you might think you have reached. Trust yourself 9 Although there are undoubtedly cultural, legal and political differences between China and many other countries, most Chinese businesspeople, just like you, simply want to make good deals. Don t leave your business instincts at the immigration counter. If a deal doesn t sound good, don t do it. to take into account in their decision making, to which foreign observers may be oblivious. Finally, the panelists will offer some advice for brand owners who want their story of doing business in China to have a happy ending by explaining how they can avoid becoming a counterfeiting victim. They will look at issues including the advantages offered by having a Chinesecharacter brand, dealing with trademark squatters and understanding the best ways of negotiating with and litigating against infringers. CM01 Doing Business in China: 10:15 am to 11:30 am today w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

12 Profile Karen Law, Alibaba China s global marketplace tackles global branding challenges Karen Law, Senior Legal Counsel of Alibaba Group, talks to the INTA Daily News about where it faces its biggest brand enforcement issues (hint: it s not China), what she looks for when selecting outside counsel and why the least expensive lawyer isn t always the best. How long have you been with Alibaba? Where were you previously? I ve been at Alibaba since March Before that I was a Senior Associate with the U.S. law firm Troutman Sanders Hong Kong office, and before that a local Hong Kong firm, So Keung Yip & Sin. In all of these positions, my practice involved intellectual property and information technology. How big is your team and what are your responsibilities? I was the first lawyer at Alibaba who was tasked to exclusively deal with all IP issues except for patents. Initially we had a very small team, just myself and one paralegal. At first, our responsibilities were mainly trademark and domain name applications around the world, excluding mainland China. The role has grown since then. In addition to Alibaba s global trademark and domain name portfolios, our team is also responsible for the company s copyrights, enforcement work, technology, licensing and IP advisory in M&A projects and transactions. I have also been leading the team in working on the new gtld matters since Our team now has 10 members consisting of four qualified lawyers including myself, four paralegals with legal assistant and legal secretary. Four of our team members are based in mainland China and the rest are based here in Hong Kong. We basically handle all of Alibaba s IP, except for patents; there is another team consisting of patent attorneys based in mainland China which handle the day-to-day patent applications. In addition to maintaining Alibaba s portfolios, we also provide support when intellectual property is involved in other situations, such as in licensing and M&A deals. We also manage administrative actions, litigation and arbitration matters that arise. We use outside law firms for these cases, as well as online platforms like MarkMonitor and WebTMS to help manage our portfolios, conduct online watch services, brand monitoring and enforcement work, but of course we have to analyze the merits of the cases, send out cease-and-desist letters and consider instructing external firms to handle complicated matters should they arise. Does your team also handle matters involving the intellectual property of those using Alibaba s services, such as brand owners asking to have counterfeits pulled off of Taobao? We did assist with some of those matters, but preliminarily that work is usually handled by lawyers in that particular business unit and our product security team. My team is responsible for handling Alibaba s own intellectual property prosecution and enforcement work. What are some of Alibaba s big brands? Our biggest brand is of course ALIBABA ( 阿里巴巴 ) itself, which is the name of the group of companies, but also of our business to business marketplace ( TAOBAO ( 淘宝 ), our customer-to-customer marketplace is also a big brand for us. TMALL ( 天猫 ), ALIEXPRESS, 聚划算 (Juhuasuan, a group purchasing service), ALIYUN / ALIBABA Cloud Computing ( 阿里云 ), ALIPAY ( 支付宝, a third-party independent payment solution), are also our important brands. We have many more brands and marks, ranging from 1 2 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

13 Profile Karen Law, Alibaba core brands to product brands to defensive brands, but these are probably our biggest ones. You mentioned the new gtlds. What plans do Alibaba have for them right now? We ve registered several of the new gtlds with our brands, including.alibaba,.alipay,.tmall, and.taobao. Our initial reason for registering them was mostly to defend our brands, but I think the company is going to think of other ways to use them as well. The company is also actively involved in the ICANN meetings and sharing, and treasures every opportunity to focus and share views on Internet security, domain matters, Internet governance and related matters, both from a brand owner perspective and an Internet user perspective. Did you register any Chinese-language gtlds? No, not at this time, but that might be something to consider in the upcoming round in the future. Which jurisdictions are the biggest for Alibaba? Our IP portfolio covers about 150 countries. Mainland China is our biggest market and about half of my team s work. After mainland China, Russia, the U.S., and the EU are probably the biggest. We have significant B-to-B and B- to-c marketplace operations in those jurisdictions. While we have some trademarks that are unique to China, many of them are also international, such as ALIBA- BA, TAOBAO, TMALL, ALIPAY AND ALIEXPRESS. What are some of the IP-related challenges that you face? Do you face the same sorts of problems in different countries? We face more challenges in the Middle East and Russia than in other regions. With Russia, perhaps it s the geographical proximity, but we find ourselves often working with our Russian attorneys. There have been several companies there claiming to be Taobao or Alibaba exclusive resellers, which may arise because of language barriers with the users and also some of the challenges in enforcement. We have had success in both revoking trademarks that infringe on our IP and also in recovering domains, such as alibaba.ru. With the Middle East, our problems tend to stem from the Alibaba story, which is obviously very well known there. Therefore, not only do a lot of people use the exact or similar trademark, but we have also faced oppositions on the basis of the story. These oppositions have failed however, in part because this company is so well known as a global marketplace. In addition, a couple of years back we had quite a few cases in India where our brands were being used for other services like food and catering. However, we have been successful at opposing such registrations and enforcing against these uses. In China, we have been working hard in securing wellknown status for our core brands in Chinese, including 阿里巴巴 (ALIBABA), 淘宝 (TAOBAO) and 支付宝 (ALI- PAY) marks, which helps with protecting them and the enforcement work. What qualities do you look for in outside counsel and service providers? Most importantly, we look for expertise and efficiency. We have our businesses on the Internet, so we need counsel who understand our markets, keep up with the changes in the laws and are fast and responsive. We need counsel who understand our markets, keep up with the changes in the laws and are fast and responsive Karen Law Price is important to us of course, and when we look for help in managing our portfolios, we usually are able to obtain a favorable discount given the volume of work we have. That said, we are not necessarily chasing after the absolute lowest price. As long as the price is reasonable, I am fine with it. I was at a large U.S. firm, so I understand that good legal work is not always the cheapest, and can be worth it. English language skills are important as well. For countries like Japan and India, we look for lawyers that can write well in English, because that s how we communicate with them. What activities do you recommend for INTA delegates visiting Hong Kong for the first time? For those in Hong Kong or the region for the first time, I would recommend that they take advantage of the proximity to mainland China and try to learn as much as possible, by trying to meet the people and getting to know the culture. People have their own way of working in China, so learning about that will be very helpful. For leisure, I would recommend sites like The Peak or Lantau Island for some good sightseeing. I think that while some people will want to do things like go to Disneyland, this is also an opportunity to try to experience some more unique Chinese things. w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

14 Preview Mergers and acquisitions Five best practices for trademark teams during M&A A panel tomorrow will provide practical advice on dealing with trademarks during mergers and acquisitions. Michael Loney discusses five of the top tips. Attendees will get a chance to find out best practices during mergers and acquisitions (M&A) in tomorrow s panel Working Trademarks into the M&A Process: Tips for Spotting Issues and Working Collaboratively in a High-Pressure, Short-Deadline World. The panel features a blend of in-house and external counsel, with Christopher Turk from US apparel firm VF Corporation, Joseph Nabor from Fitch Even Tabin & Flannery in the US, and Joel Smith from Herbert Smith Freehills in Australia. Christopher George from US computer chip firm Intel was also involved in planning the session. The INTA Daily News caught up some of the panelists to identify five of the best practices for trademark practitioners during an M&A process. One of the biggest mistakes is not understanding where the trademarks fit into the overall deal. Christopher George Understand your role in the process One of the biggest mistakes is not understanding where the trademarks fit into the overall deal, said Intel s George. How important are the different parts of the IP to the deal? That requires pretty early and consistent communication with the deal team and the unit buying the company. One mistake is for the trademark team not to understand where the trademark fits into the deal. That is one area that in-house counsel should be aware of early on. Be proactive The guiding message to everybody whether you are outside counsel or inside counsel is to figure out who is doing the M&A deal for the company or the clients and reach out to them proactively ahead of time, said George. The earlier you get involved in the deal the better. Since I have been here I have never seen a deal go south because of trademarks. That is not to say there haven t been issues with trademarks but unless you are buying specifically for the trademark, rarely is the trademark going to hold up the deal. When I got here around six years ago the M&A team did pay attention to the trademarks but it did happen more times than I care to admit that the deal would be done and the trademark team would see the announcement on our internal website and the trademark attorneys would be looking at each other like, Did you work on that deal, I didn t work on that deal? and there are trademarks all over their website. That is coming from a very tech, IP and trademark savvy corporation where still the different business units didn t necessarily know that upfront. I have had to do a decent amount of work to involve myself with the M&A teams and make sure they know who we are, that we are around, that legal isn t a four letter word, that we can work with them, keep the deal moving, and we are not going to be an impediment. Have a clear chain of title It is important to have a clear chain of title. We don t want assignment issues to crop up, said Turk from VF, which bought Timberland in There are some purchases not Timberland that VF has made over the years, whether it is buying somebody out of bankruptcy or buying a brand 1 4 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

15 Preview Mergers and acquisitions that has been run into the ground by somebody, where you don t always know what you are getting. So there are chain of title issues, there are assignment issues, and things like that to be aware of. Have a plan Another issue to be aware of when conducting due diligence is to make sure you know what you are doing with the intellectual property before you dissolve the company, if you dissolve it, said Turk. We ve bought various companies that had one or two trademarks that were not owned by the main company or were owned by European subsidiaries and those subsidiaries were since merged out of existence or dissolved. You then have a situation of having your own trademark registrations that are owned by a company that no longer exists blocking your own new trademark filing. That is a post-acquisition issue, but going forward that is the kind of thing I look for in doing due diligence now pointing out to the business team and the rest of the legal team before you start restructuring post acquisition that we need to do X, Y, Z, we need to assign these trademarks, we need to make sure we have the proper chain of title, we need to make sure there are still officers of this company around to sign assignment documents at the closing or shortly thereafter. There is a different trademark analysis that is required for us than say for Intel. We are not purchasing for technology. We are purchasing for the brand and the consumer awareness. You have to take a different approach when looking at due diligence. One of VF s stated goals is that we want to be a global company so we want our brands to be global brands. If you are purchasing a regional brand that is popular, for example, in Europe or the US what is key for us in due diligence is whether we expand that. The pitfalls to avoid are not doing an adequate due diligence and not taking into account the twists and turns that are going to come in the short term following the deal. Joseph Nabor Know what you are buying There s the issue of continued use of the trademark and/or personal names, said Joseph Nabor at Fitch Even Tabin & Flannery. It is not unusual for a lot of smaller businesses to be organized under the name of the owner. When that owner sells does he or his family have right to the continued use of the family name in competitive businesses? How long would you structure a non-compete? What is appropriate for both sides? There are a number of instances where not the entire business is being sold but the purchaser needs to use the name of the company in their acquisition even though the company will still exist as a separate entity. So what residual rights and trademarks are there that you need to work out? The pitfalls to avoid are not doing an adequate due diligence and not taking into account the twists and turns that are going to come in the short term following the deal. The problems come in whether or not the seller owns what they are selling and the buyer buys what they think they are buying. Those are two entirely separate issues. From the buyer s perspective you have to make sure the seller really is selling what the buyer thinks they are getting from this. There are some famous situations in the past where people thought they were buying a trademark lock, stock and barrel and found out they were only getting a part of it after the deal closed. CT21 Working Trademarks into the M&A Process: 11:45 am to 1:00 pm tomorrow Hong Kong highlights Victoria Peak Situated on Mount Austin, Victoria Peak offers one of the best views of Hong Kong. Developed in the 19th century as a place for summer homes, the Peak now boasts some of the most valuable real estate in the world. The Peak tram, which opened in 1888, made it easier to live there year-round. Previously, residents relied on sedan chairs to scale the Peak. Picture Hong Kong Tourism Board Stanley Stanley has an eclectic mix of attractions. From beachfront bars and restaurants catering to both expats and locals, to the street vendors selling souvenirs and street food, Stanley is well worth the taxi ride to the southern end of Hong Kong Island. The promenade is also a popular attraction, especially on sunny days. Picture ABE & PARTNERS Our goal: To completely satisfy you, our clients, through our prompt and dedicated service. Matsushita IMP Building, 1-3-7, Shiromi, Chuo-ku, Osaka, , JAPAN Phone: ; Fax: ; abe@abe-law.com URL: Please look out for our article in the International Briefings section of Managing IP Magazine distributed in INTA! w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

16 Preview Trademark cases review US trademark case and TTAB trends explained A session on Wednesday will give attendees analysis of the most important US trademark cases in the past year. Michael Loney looks at some of the cases that might be discussed. Theodore Davis, partner at Kilpatrick Townsend & Stockton, will give an overview on court decisions during Wednesday s annual round-up. He believes the most interesting recent development is the Supreme Court taking more interest in the Lanham Act. Already this year, the Supreme Court has issued a decision in one trademark case, Lexmark International v. Static Control Components, and heard arguments in another, POM Wonderful v. Coca-Cola. In addition, the Court has asked the U.S. Solicitor General to file a brief in B&B Hardware v. Hargis Industries, in which it has been asked to decide whether a Trademark Trial and Appeal Board (TTAB) finding of a likelihood of confusion precludes the respondent from re-litigating that issue in infringement litigation and whether the district court is obliged to defer to the board s finding. The Supreme Court all of a sudden has gotten interested in the Lanham Act, said Davis. There is one opinion down, one to come and there may be a third as well. Lexmark v. Static Control In a unanimous decision in Lexmark on March 25, the Supreme Court articulated a new test for standing in Lanham Act false advertising cases. The case resolved the question of whether it is necessary for two parties to be in direct competition for a plaintiff to be able to bring a false advertising claim. This is an issue on which there was a very significant split among our circuit courts, said Davis. The Supreme Court resolved that by rejecting the rule that you need to have direct competition. So at least in some circuits bringing these claims will be dramatically easier. It is an opinion that does substantially change the law across most of the country. The Lexmark decision followed the Supreme Court s Already v. Nike decision in January last year upholding a trademark owner s right to have counterclaims for cancellation dismissed if it has withdrawn infringement claims. Davis noted, however, that this was a case that involved a registered trademark but was primarily turned on a procedural ground rather than it being a true substantive trademark opinion. Davis is not sure why the Court is seemingly more interested in trademark cases. He noted, however, that Justice Sonia Sotomayor was involved in trademark cases in private practice and as a trial judge, unlike the other Justices. Davis added: It may be that that interest that the Court has developed on the patent side may be carrying over to the trademark side. If it is, though, it is significant that in the first of these three cases [Lexmark] the Court has decided very much in the plaintiff s favor. The conventional wisdom on the patent side is the plaintiffs are not going to come out of this string of cases as well. A lot of patent practitioners would predict that the Court isn t taking the patent cases to affirm them. It may be taking these cases to overturn them. POM Wonderful v. Coca-Cola The Supreme Court s decision in POM Wonderful, in which oral arguments were heard on April 21, is expected by the end of June. Beverage firm POM Wonderful sued The Coca-Cola Company over a product labeled as Pomegranate Blueberry that only contained about 0.3% pomegranate juice and 0.2% blueberry juice. Coca-Cola argued that its labeling was specifically authorized under the Federal Food, Drug & Cosmetic Act, the Nutrition Labeling and Education Act of 1990, and U.S. Food and Drug Administration (FDA) regulations governing the naming and labeling of juice products. A California appeals court decided in 2012 that there was no cause of action because the FDA had chosen not to challenge the label and therefore POM Wonderful could not use a 1 6 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

17 Preview Trademark cases review false advertising statute to challenge the FDA s inaction. The Ninth Circuit Court of Appeals affirmed that decision. Davis said the most interesting aspect of the Supreme Court taking the case is how broad its ruling will be. If its opinion is broad enough that it applied to other statutes it could have ramifications for false advertising claims in industries other than beverages. He adds, however, that a narrow ruling that applies only to the POM Wonderful case is more likely. The significance of this case may well be very limited in the sense that it is limited to a very narrow statutory construction of the Food, Drug & Cosmetic Act, said Davis. It may also be something considerably broader in the sense that the Court s holding has some significance to other industries that have other regulatory frameworks. The Environmental Protection Agency, for example, has the authority to approve labels of certain kinds of products and you must have that approval before that product can go on [the market] but that s a separate statute governing the enquiry. The Department of Treasury has the obligation and must approve an alcoholic beverage label before that label can be put on the market. That too is governed by a separate statutory framework. So if there is a very broad holding from the court, which is generally unlikely because the court prefers to issue very narrow holdings, it could bleed over into other industries as well. Outside of the Supreme Court, Davis identifies an unusually large number of opinions over the past couple of years and certainly over the past 12 months attempting to clarify the relationship between trademark protection and the first amendment protection available for creative works. TTAB trends John Welch, partner at Lando & Anastasi, who runs the respected The TTABlog, will be reviewing the past year at the TTAB during Wednesday s session. He identifies activity around non-traditional marks as an area to watch. Probably the most interesting area from a high-level view is the never-ending attempt by trademark attorneys to push the envelope and try to get all kinds of non-traditional marks registered, he said. Often product shapes come before the Board and get shot down, particularly because often these products have patent protection that is about to run out so the owner of the patent or the design will try to get trademark protection. The TTAB usually will shoot it down on functionality grounds, particularly if there was a utility patent involved. The TTAB now has two judges who were patent attorneys. Welch believes this is helping the board get a better understanding on the interface between patent and trademark law. They are getting a much better handle on the role of the utility patent and the difference between de facto functionality, in other words the product shape as a function, versus de jure functionality, meaning it can t be a trademark because the shape is essential to the usefulness of the product. For instance, the scoring of a candy bar is de facto functional because it has a function that makes it easier to break the candy bar apart but it is not de jure functional because it is not essential you could do it many, many ways. Welch refers to an example from 2012 when the TTAB reversed a refusal to register a Hershey bar product configuration. Hershey proved functionality and distinctiveness. Judge Thomas Shaw, a patent attorney, wrote the decision in this case and Welch was pleased to see Shaw make the distinction between the two. TTAB judges are holding firm despite attorneys attempts to push the boundaries of non-traditional marks. Occasionally one slips by because the judges don t know what they are doing or don t understand, but generally they are pretty tough, he said. I think they are getting better and they make it difficult for these non-traditional marks. He pointed to a 2012 case about a yellow triangular shape a ceiling fan. Delta T had applied to register a twodimensional design for ventilating fans. But the specimen of use displayed the design in three dimensions, corresponding to the shape of the winglet at the outer tip of the fan blade. The board found that the proposed mark was coextensive with and inseparable from the applicant s patented winglet design and therefore de jure functional. The board said: You say it is a two dimensional shape. But actually it is the shape of the fan and the shape of the fan is functional and it is three dimensional. So, even though you are trying to register it as a two dimensional design, we know what you are doing and you re not getting away with it. That was an example, said Welch. Another trend Welch identifies is the Board lecturing practitioners about discovery and disclosure rules. He said some practitioners are not very familiar with TTAB Rules and procedures. A lot of practitioners before the Board may be federal litigators, he said. They don t pay attention to the TTAB Rules, which are pretty particular they are not the same as the federal rules. There are various things you have to do at the TTAB that aren t the same as at the courts. Litigators may be great court litigators, but they think they know what they are doing and they stumble over the TTAB Rules. One thing the Board does like, however, is when parties decide to go down the accelerated case resolutions (ACR) route. ACR streamlines the procedures because the two parties decide not to have testimony, using affidavits instead. That gets the Board all excited, said Welch. They commend the parties for using ACR. But from what I can tell not many people use it. w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

18 Profile Hong Kong IPD Protecting Trademarks Hong Kong-style The INTA Bulletin interviewed Peter Kam-fai Cheung, Director of Intellectual Property, Registrar of Patents, Designs and Trademarks for the Hong Kong Intellectual Property Department (HKIPD) in December of last year. The HKIPD is co-organizing the Unreal Student Session on Tuesday from 12:00pm to 4:00pm in the Hong Kong Convention & Exhibition Center. What are the biggest challenges you face? Despite all the public education and strategic marketing we have done, trademarks and IP generally, as a relatively new and non-obvious knowledge system that is capable of capitalization, are not readily identified and recognized. My biggest challenge has been to highlight the value of IP and to build necessary and sufficient support systems so as to nurture the development of various elements in the IP ecosystem. Are there particular changes to the trademark laws that you would like to see enacted, and is there any pending IP legislation that might help? I think trademark proprietors should take a multisensory approach in connecting their goods and services with the customers. They should use and acquire more nontraditional marks. One obstacle regarding registration of nontraditional marks is the requirement of graphical representation, and I think permissible international legal norms do not anticipate the future and should be removed at the domestic level. However, that is not generally perceived as a deficiency, and so such a bill is not in the pipeline. Peter Kam-fai Cheung, HKIPD What steps has the government taken in recent years to improve IP protection? Hong Kong IP protection is in line with international standards and norms. Hong Kong registered its first trademark in The Hong Kong IP system is so mature that we have a Prevention of Copyright Piracy Ordinance. Policy, law and enforcement aside, the government is keen to foster the development of international IP trading via Hong Kong. Details can be found here: eng/ip_trading.htm. (See box for more on IP trading in Hong Kong). Can you discuss any partnerships or events you re involved with to help increase awareness about IP rights? IPD has continued its territory-wide campaigns such as the No Fakes Pledge Scheme and the I Pledge Campaign to encourage pride in the selling and buying of genuine goods among Hong Kong retailers, tourists and local consumers. IPD launched the No Fakes Pledge Scheme in It aims to enhance consumer confidence in Hong Kong and to strengthen the City s reputation as a Shopping The Hague Munich Leuven We support clients worldwide to get the best out of their intellectual property Pleased to meet you in Hong Kong! V.O. INTA team:.. Michiel, Denys, Noëlle, Koen, Bernard and Natalia 1 8 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

19 Profile Hong Kong IPD Asia IP Exchange The Global Online Marketplace for Intellectual Property The Asia IP Exchange ( is a free online platform developed and managed by the Hong Kong Trade Development Council and showcasing IP rights around the globe in an effort to facilitate international IP trade to global IP players. As Asia s largest online IP portal, AsiaIPEX has formed alliances with 23 local and overseas strategic partners with a listing of over 25,000 tradable IP rights. For more information, contact the Hong Kong Trade Development Council: Telephone: (852) asiaipex@hktdc.org Paradise for genuine products. It encourages participating retail merchants to set a good example by pledging not to sell or distribute counterfeit or pirated products, thus establishing and upholding honest and trustworthy trading practices. In 2013, nine trade associations with 808 retail merchants, covering 6,426 outlets in Hong Kong, took part in the No Fakes Pledge Scheme. All retail merchants participating in the No Fakes Pledge Scheme will post the No Fakes stickers and tent cards in their shops. With the No Fakes logo, tourists and consumers can easily identify reliable retailers and shop with confidence. In 2013, IPD developed a No Fakes Pledge Shop Search mobile application to facilitate IPD: The Numbers Official Name: Intellectual Property Department, Government of the Hong Kong Special Administrative Region, People s Republic of China (IPD). Name of Head: Peter Kam-fai Cheung, Director of Intellectual tourists and consumers searching of shop information and locating conveniently of all participating retail merchants in the Scheme. With the help of strong marketing and growing participation, the Scheme will further distinguish honest and reliable retail merchants, thereby gaining the confidence and trust of consumers. Are there any major trademark-related projects underway within the Office that you would like to highlight? Specifically, are there any major technology changes/projects in the works? Hong Kong literally means fragrant harbor. A major IPD trademark-related project that has been underway is called Fragrant Hong Kong. The goal of the project is to raise societal awareness by promoting aroma marketing to connect customers with marks and brands, and to set possible standards on smell classification and the application and registration of smell marks. We have done 2013 action items in spring, summer and autumn, and a December event is coming up. More information is available here: IPD also will host the 6th Global Multisensory Brand Forum in Hong Kong on May 9, Property, Registrar of Patents, Designs and Trademarks. Date Appointed/Length of Term: April 12, 2011, to May 14, 2014 Location: Intellectual Property Department, 25/F Wu Chung House, 213, Queen s Road East, Wanchai, Hong Kong Position Within the Government: Works with the Secretary for Commerce and Economic Development. Madrid Status: Not yet. Number of Trademark Examiners: 61 Last, IPD is conducting a feasibility study on redeveloping the existing electronic processing systems for the Trade Marks, Patents, and Designs Registries, and the e- Filing System and Online Search System. In the feasibility study, an integrated system is proposed to replace the existing systems, using Web-based technologies supporting popular Internet browsers, smart phones and tablet computers, together with other new technologies such as 2-D barcode, OCR, enhanced e-form, e-payment gateway, etc. The integrated system is planned to be launched by phases in What advice or message do you have for trademark owners looking to expand into Hong Kong? Think about the possibility of trading your trademarks via Hong Kong based IP trading platforms and marketing nontraditional marks from Hong Kong. What one major achievement would you like to have accomplished for the Office by the end of your term? I would like to have made the trading of international IP ( Hong Kong style ) more visible and tangible in the world scene. w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

20 Receptions #INTA14 Yesterday s receptions Bardehle Pagenberg Field Fisher Waterhouse Ropes & Gray Boult Wade Tennant Fross Zelnick Lehrman & Zissu Valipat Ladas & Parry Ferraiuoli K&L Gates Wragge Lawrence Graham & Co Congratulations to Dr Qiang Ma of JunHe Beijing and his wife on the birth of their baby daughter 2 days ago. Dr Ma just arrived #INTA14. Brabners IP We re in Hong Kong after having left Liverpool...now we hear a pianist playing Let It Be on the way into one of the #INTA14 presentations! #INTA14 even in networking you must choose a segment of the market. It s not about meeting and knowing everybody. Maria Singing the no fakes song at the anticounterfeiting committee meeting. #inta14! Tracy #Inta14 - at the anticounterfeiting committee mtg - discuss how to tackle counterfeits - biggest committee at #Inta! I think a symposium or conference is very different than a class - social media has a place. But not in my classroom #TNTPanel Sara China is still a leading source of counterfeits due to low awareness of IP in law enforcement. Shared intel is vital #INTA14 Luis F. Last night dining with clients Restaurant served live (and still moving) shrimps. Surprise me today #inta I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

21 Vox pop What is the biggest issue your clients face today? Shyla N. Jones, Norvell IP, Chicago, U.S. - This is my first month in my position, so I haven t had a chance to delve too deeply into the issues the firm s clients face just yet. In my last firm, my clients were mostly concerned about getting registrations and trademark clearance but my new firm is more focused on enforcement, so that s going to be a new challenge for me. Alfred M. Strahlberg, Strahlberg & Partners, Wabern, Switzerland - The biggest issue is that examiners in some jurisdictions don t always understand the marketplace. I have had objections from Swiss examiners who say that marks in English are descriptive, when I have seen the same marks in English-speaking countries. There is a lack of harmonization and that is a big problem. Valentina Sergeyeva, Strahlberg & Partners, Riga, Latvia - The biggest issue for my Latvian clients is entering new markets. Their typical market is the countries of the former USSR, but now many of them are figuring out where to go next. Many of them want to expand to Africa and the near East, but they need to work out how they can do that in the best way, without infringing anyone else s mark and protecting their own. Margaret Shearer, Banki Haddock Fiora, Sydney, Australia - Cost and getting value for money from their attorneys is a big issue. All our clients are facing budget pressures and they want to maximize IP protection with a limited budget. For many clients IP protection is now a business cost, rather than a legal department cost. Sometimes that encourages clients to take a shorter-term view of IP protection rather than a longer-term, strategic view. Gonzalo Barreda, BRDA Abogados, Lima, Peru - It is counterfeits. There are some places in Peru where the police know counterfeits and pirated products are on sale but they don t do very much. Part of the problem for copyright products is that traditionally there weren t many places where people could buy genuine products, although that is now starting to change. Darius F. Dalal, Jehangir Gulabbhai & Bilimoria & Daruwalla, Mumbai, India - There is insufficient IP infrastructure in India. The IP office needs more manpower. At the moment there are delays. Examiners are not sufficiently well-trained in trademark law. Applications are advertised when they shouldn t be. They are opposed and that leads to more delays. It s a vicious cycle. Aaron Silverstein, Saunders + Silverstein LLP, Amesbury, MA, U.S. - Expanding into jurisdictions outside the U.S., and how to manage that effectively. It s about prioritizing filings with limited budgets. Clients need to be smart. They need to think about where their customers are, where they manufacture and potential red flag jurisdictions. Laetitia d Hanens, Gusmão & Labrune, São Paulo, Brazil - Brazil doesn t protect non-traditional marks only visible, perceptible ones. That s a big issue for our clients. IP Associations are trying to persuade the government to accept non-traditional marks. Phoebe Zhang, Beijing Voson, Beijing, China - Some of my Chinese clients have found that their trademarks have already been registered by other people abroad. They need information about how to protect their trademarks abroad, and how to reclaim their rights. Adebusola Bakinson, Jackson, Etti & Edu, Lagos, Nigeria - Getting marks registered by the Nigerian Registry is a big issue for our clients. The Registry has just introduced online filing, but the turnaround time is still slow. I expect it will improve, and we have seen some improvements already, but we always want more. w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

22 Sponsored discussion China s new Trademark Law Moving fast under China s new Trademark Law China s new Trademark Law looks to speed up registration and opposition proceedings and to stop on bad-faith factors. Spring Chang and Frank Liu of Chang Tsi & Partners and Tom Wang of Kohler discuss the changes and how brand owners can prepare. What are some of the important changes that the Trademark Law brings to registration and opposition proceedings? Spring Chang: The revision added the registrable element for trademark registration: the requirement for the precondition of visually perceptible signs for trademark registration has been cancelled in the revised Trademark Law; the registrable element sound for trademark has been stipulated in the revision (Article 8). Multi-class application has been introduced: the applicant may file one application for several classes for a trademark; before the revision, the applicant could only file a trademark on one class in one application (Article 22.2). The revision also clarified the effectiveness of electronic trademark applications: it clearly stipulated that a trademark registration application and other relevant documents may be submitted in writing or by way of data message (Article 22.3). The time limit for trademark examination and review has been set: before the revision, the Law only required the on time standard for trademark examination and review; after the revision, the Law has clarified the time limits for different types of trademark examination and review cases; therefore, it improves the efficiency of trademark examination and review, and also regulates the administrative behaviors of the related authorities. Finally, before the revision, the opposition procedure was complex and the period for examination was too long. The revised Trademark Law has restricted the qualification for the opposing party and simplified the opposition procedure. What changes were made to either getting or using well-known trademarks? Frank Liu: Before the revision of the Trademark Law, wellknown status was often misused as an honorific title in the promotion of products and advertising by the trademark owner. Finding that the relevant public may be misled by such use (Article 13), the new law clarifies a number of issues to prevent misuse. First, the revised law further clarified the meaning of wellknown trademark. Previously, there was no clear definition regarding well-known trademarks in the Trademark Law. In Article 13 of the revised law, it added that a well-known trademark is one that is well known by the relevant public. In 2009, the Interpretation of the Supreme People's Court defined that well-known trademarks shall mean the trademarks that are widely known to the relevant pubic within the territory of China. The definition of well-known trademark in the new Trademark Law is more accurate and it helps the relevant public in China to better understand the original meaning of the well-known trademark as originally defined in Paris Convention for the Protection of Industrial Property. The revision also clarified the principles of case by case recognition and passive recognition. Article 13 of the new law adds the precondition for recognition of well-known Spring Chang: (1) 增加可以注册的商标要素 : 删除了修订前的商标法关于商标必须是 可视性标志 的限制性规定, 明确 声音 可以作为商标申请注册 ( 新法 8 条 ) (2) 明确 一标多类 申请方式 : 商标注册申请人可以通过一份申请就多个类别的商品申请注册同一商标, I think these above revisions clarify the principles of case by case recognition and passive recognition. Frank Liu 商标法修改中关于商标注册和异议程序的重大变化有哪些? trademarks by the related authorities, requiring that the holder is of the opinion that its rights have been infringed upon. Furthermore, it clarified that the purpose of the well-known recognition of a mark is for the protection of the holder s trademark rights and not for commercial promotion or propaganda. In addition, Article 14 of the revised law further clarifies that the recognition of a well-known trademark shall be based on the request of the concerned party, and it shall be recognized only as a fact that needs to be ascertained in the handling of a trademark-related case. It aims to rectify the improper use of well-known status by some right holders who actively create a dispute in order to obtain well-known status for their marks. I think these above revisions clarify the principles of case by case recognition and passive recognition. Chang: Related to the above, the commercial use of the words "well-known trademark" in advertising or promotion has been prohibited (Article 14). The commercial use of the term may be punished by a fine of RMB 100,000 ($ 16,700), which may be levied by a local Administrative for Industry and Commerce (AIC) (Article 53) The revision clearly defined the related authorities and the applicable procedures for the recognition of the wellknow trademark (Article 14). The procedures are: 1) During investigations and punishments of trademarkrelated illegalities cases by the AIC; 2) During the process of handling of trademark disputes by the Trademark Review and Adjudication Board (TRAB); and 3) During the process of trials of trademark-related civil or administrative cases before the People's Court designated by the Supreme People's Court. What does the new law do to deal with bad faith registrations and oppositions? Tom Wang: Bad faith registration and opposition are two problems that rights holders have been facing in China. The new Trademark Law has several provisions aimed at addressing these issues. The registration of a trademark registration by a party with knowledge based on a business relationship with the prior user of the mark is prohibited. This is designed to tackle 即由之前的一标一类申请, 修改为允许一标多类申请 ( 新法 22 条 2 款 ) (3) 明确了电子申请的效力 : 规定商标注册申请等有关文件可以以书面方式或者数据电文方式提出 ( 新法 22 条 3 款 ) (4) 规定商标审查与审理工作时限 : 修订前的商标法对商标审查时限未 the problem of agents or business partners registering a brand owner s mark without consent. Article 14 in the new 作规定, 仅要求应当 及时 进行审查 修订的商标法对各类案件的审查及审理时限作出了明确规定 ; 提高了商标审查效率, 规范了行政行为 (5) 完善并简化异议程序 : 修订前的商标法规定的异议程序过于复杂, 审查期限过长 修订的商标法对提出异议申请的主体进行了适当限制, 并简化了异议程序 Trademark Law also looks to deal with bad faith. It adds that if the applicant clearly knows of the existence of the trademark of another party due to contractual, business or other relationships, such registration shall not be approved. The new Trademark Law also provides protection for prior usage. Article 59.3 of the new law grants protection for the useby a party that has a history of prior use of a trademark with a certain level of reputation. In such a circumstance, the holder of the exclusive right to use the registered trademark shall have no right to prohibit the prior user from continuing to use the trademark within the original scope of use. However, it may require that prior user to add suitable logos for distinguishing purposes. Article 58 also clarifies the prohibition of the usage of another party s trademark as a trade name. Although such protection has been stipulated in the current Implementing Regulations and related Supreme Court interpretations before the revision, the clarifying of the same in the Trademark Law is still a positive development that will help to clarify and smooth out the performance of the law. The new Trademark Law also addresses bad faith oppositions. Before the revision, anyone can initiate opposition proceedings against any trademark application. Under Article 33 of the new law, only a holder of prior rights or an interested party may raise opposition based on relative grounds, such as having a prior trademark right, prior use or other rights. Therefore, bad faith oppositions which aim to prolong the registration procedure with no concrete reason will be limited. What are the procedural changes, such as shortened timelines, that rights holders need to be aware of? Liu: The time limits to complete the examination of the trademark by the China Trademark Office (CTMO) and TRAB have been stipulated in the revision. Registration examination: nine months (Article 28) Review of application after refusal: nine months (Article 34) Non-use cancellation application: nine months (Article 49) Review application for non-use cancellation: nine months (Article 54) Invalidation application with absolute ground: nine months (Article 44) Invalidation application with relative ground: 12 months (Article 45) Opposition application: 12 months after the expiration of the three-month publication period for opposition (Article 35); 2 2 I N TA D a i l y N ews M o n d ay, M ay w w w. m a n a g i n g i p.co m

23 Sponsored discussion China s new Trademark Law Review application for opposition: 12 months (Article 35) If there are any special circumstances, the AIC can grant extensions of three to six months to the above time limits. Wang: Article 35 of the new Trademark Law also simplifies the opposition procedures. Other than a preliminary ruling on the opposition, the CTMO may directly decide whether to approve the registration application after the revision of the trademark law. One important change is that if the CTMO decides to approve the registration of the trademark after opposition, the opposing party CANNOT file the opposition review with the TRAB. Instead, it must initiate invalidation proceedings TRAB in accordance with Article 44 and Article 45 of the revised Trademark Law. How should rights holders deal with the new opposition proceedings, especially the new provision that an application that survives an opposition is immediately registered? Chang: Under the new law, if the opposition against an application fails at the CTMO, the opposing party cannot appeal with the TRAB. Instead, the opposing party may initiate an invalidation procedure according to Article 44 and 45 of the revised law. In the invalidation procedure, the opposing party may make good use of the Revision against the bad faith registration (trademark squatting) as discussed above. Please note that even when the opposing party wins the opposition in the CTMO, if the TRAB overrules the CTMO decision, the trademark will still be immediately registered, and the opposing party will need to proceed with the invalidation procedure in accordance with Articles 35, 36, 44 and 45. Another point that needs to be mentioned is that the registered trademark after the opposition examination shall have no retroactive effect on the use of a mark by another party, provided that the use by the other party is not based on bad faith. That other party shall not be liable for compensating the losses caused to the trademark registrant. What unanswered questions are there about the new Trademark Law in terms of registrations and opposition? Do the Implementing Regulations address these issues? Liu: As you know, the draft Implementing Regulations have already been published on the website of the Legislative Affairs Office of the State Council for comments and it has addressed many detailed issues for the revised law, such as how to apply for sound marks. This also came into force on May 1. However, there are still many other issues to be addressed, such as how distinguishable marks will be added to prior use trademarks as required in Article 59 (3). Spring Chang Spring Chang focuses on all aspects of IP rights, including applications and protection of trademarks, patents, copyrights, and domain names. Ms. Chang has supervised over 10,000 trademark applications, and thousands of oppositions, non-use cancellations, and other administrative actions. She also oversees hundreds of administrative raids per year, and has handled many administrative, civil and criminal IP cases. Ms. Chang s representation of Best Buy before the China Supreme People s Court allowed for registration of their house mark which had been denied for lack of distinctiveness. She also represents Air China in its Chinese and international trademark matters. Frank Liu Frank Liu specializes in intellectual property and dispute resolution. He has worked in the Court for five years since 1996, and started to practice law as an attorney in Through many years of practice, he has accumulated valuable experiences in the fields. Mr. Liu has provided legal service for many Fortune 500 companies and domestic clients regarding the intellectual property protection strategy and various other legal issues. Mr. Liu has acted for clients in more than 100 litigation and arbitration cases in China, and has been nominated by AsiaLaw Leading Lawyers as a leading lawyer in the areas of dispute resolution in China in Tom Wang Tom Wang has been assigned as an academic researcher for the Intellectual Property Institute of ECUPL (East China University of Political Science and Law) since He has accumulated over 10 years experience as an in-house attorney among multinational companies including Johnson & Johnson, SanDisk and Kohler. Majoring in the mixed industries such as pharmaceutical, semi-conductor and fast consumer goods, Tom shows professional skills and great passion in tacking with intellectual property challenges on trademarks, patent and copyrights. With Tom s significant contribution, Johnson & Johnson Worldwide Security-China was awarded Highly Commended Company of 2007 Global Anti-counterfeit awards by the GACG (Global Anti-counterfeit Network). w w w. m a n a g i n g i p.co m I N TA D a i l y N ews M o n d ay, M ay

24 Today s Schedule Monday, May 12, 2014 All events take place at the Hong Kong Convention and Exhibition Centre (HKCEC) unless otherwise indicated. Consult the Final Program for times and locations of invitation-only events. 7:30 am 5:00 pm REGISTRATION Mezzanine & Convention Hall Foyer 7:30 am 5:00 pm HOSPITALITY Hall 3FG 7:30 am 5:00 pm INFORMATION BOOTH Mezzanine 8:30 am 5:00 pm Tour Desk Mezzanine 8:45 am 10:00 am OPENING CEREMONIES Grand Hall 10:00 am 4:00 pm EXHIBITION HALL Hall 3FG 9:00 am 10:30 am Career Development Day: What They Didn t Teach You in Law School About Trademark Law S428 10:00 am 11:00 am Committee Structure and Participation Presidential Task Force S429 10:15 am 12:15 pm COMMITTEE MEETINGS Anticounterfeiting Committee East Asia & Pacific Subcommittee S421 Enforcement Committee Opposition & Cancellation Standards and Procedures Subcommittee N211-N212 International Amicus Committee Canada Amicus Subcommittee N103 International Amicus Committee Latin America Amicus Subcommittee S430 Internet Committee Internet Governance and Contractual Relationships Subcommittee N111-N112 Madrid Practitioner s Guide Project Team N102 Trademark Office Practices Committee Asia-Pacific TMO Relations Subcommittee S424 Trademark Office Practices Committee USPTO Subcommittee S423 10:15 am 11:30 am CONCURRENT SESSIONS CM01 Doing Business in China Beginner Level Grand Hall CM02 Plain Packaging: Who Will it Affect Next? Advanced Level Theatre 1 CM03 Trademarks at the Crossroads of Trade and Culture Intermediate Level Convention Hall A CM04 Trademarks and New Generic Top-Level Domains (gtlds): An Update Intermediate Level Convention Hall BC 10:30 am 11:30 am SPEED NETWORKING Hall 3FG 10:30 am 12:30 pm OHIM Breakfast Meeting N101B 10:45 am 11:45 pm Being the Best Counsel You Can Be (Career Development Day) S428 11:45 am 1:00 pm CONCURRENT SESSIONS CM20 Battling for Brands: Strategies for Dealing with Private Labels Intermediate Level Grand Hall IM20 The Shape of Things to Come: Clearing and Protecting High-Tech Product Configurations Advanced Level Convention Hall A RM20 Regional Update: China Intermediate Level Theatre 1 RM21 Regional Update: Working with Customs in Europe Intermediate Level Convention Hall BC 12:00 pm 1:15 pm Career Development Day: Getting Involved with INTA: Working Lunch for Law Students S425 12:00 pm 1:00 pm SPEED NETWORKING Hall 3FG 12:00 pm 1:30 pm Trademark Strategy for a Luxury Brand (Academic Day Professor Luncheon) S427 1:15 pm 3:15 pm COMMITTEE MEETINGS Anticounterfeiting Committee Eastern Europe & Central Asia Subcommittee N107 Enforcement Committee Trade Names Subcommittee N206-N207-N208 Enforcement Pub Project Team N102 In-House Practitioners Committee N101B Internet Committee Online Trademark Use Subcommittee S221 Legislation & Regulation Committee East Asia & Pacific Subcommittee N202-N203 Legislation & Regulation Committee Latin America & Caribbean Subcommittee S426 Legislaton & Regulation Committee Middle East, Africa & South Asia Subcommittee N103 Legislation & Regulation Committee U.S. Subcommittee S421 Related Rights Committee Design Rights Subcommittee S423 Roundtables Subcommittee (Programs Committee) N211-N212 The Trademark Reporter Committee N101A Parallel Imports Committee Leadership N CONCURRENT SESSIONS 1:15 pm 2:30 pm Regional Intellectual Property Attachés Update Convention Hall BC 1:30 pm 3:15 pm Trademark and IP Issues in China: Government Perspective Advanced Level Convention Hall A 1:15 pm 3:15 pm LUNCHEON TABLE TOPICS N201 1:30 pm 2:30 pm SPEED NETWORKING Hall 3FG 2:00 pm 3:15 pm Trademark Scholarship Symposium Session I Can Trademark Law Circumvent Copyright s First Sale Rule for Imported Copies? S429 Trademark Scholarship Symposium Session I Sixth Time Lucky: Starbucks and the Lessons from European Law S424 2:00 pm 4:00 pm TM5 Mid-Term Meeting N202-N203 2:30 pm 3:30 pm Career Development Day Speed Networking S427 3:00 pm 4:00 pm SPEED NETWORKING Hall 3FG 3:30 pm 4:45 pm CONCURRENT SESSIONS CM50 Social Media in China: How to Harness the Potential and Avoid Legal Pitfalls Beginner to Intermediate Level Theatre 1 CM51 The Presumption of Irreparable Harm: Don t Stop Believing Advanced Level Convention Hall BC RM50 Regional Update: Africa Rising! Intermediate Level Convention Hall A RM51 Annual Review of Leading Case Law in the European Union Advanced Level Grand Hall 3:30 pm 4:45 pm Academic Day Trademark Scholarship Symposium Session II: Initial Interest Confusion Troika Abandoned? S429 3:30 pm 4:45 pm Academic Day Trademark Scholarship Symposium Session II: Indirect Trademark Infringement - Is International Consensus Possible? S424 3:45 pm 5:00 pm Academic Day Careers in Trademark Law: A Panel Discussion for Law Students S428 3:45 pm 5:45 pm COMMITTEE MEETINGS Anticounterfeting Committee European Union Subcommittee N211-N212 Government Officials Education and Training Committee N206-N207-N208 Internet Committee Internet Policy Advocacy Subcommittee N202-N203 Law Firm Committee S421 Legislation & Regulation Committee Europe and Central Asia Subcommittee N111-N112 Related Rights Committee Geographical Indications Subcommittee S425 Related Rights Committee- Indigenous Rights Subcommittee N103 Related Rights Committee Right of Publicity Subcommittee N209-N210 Trademark Administration Pub Project Team S426 5:15 pm 7:15 pm Academic Day Academic and Young Practitioners Happy Hour S423 India Reception (By invitation only) N101A China Reception (By invitation only) N101B