Showing posts with label TRADEMARK. Show all posts
Showing posts with label TRADEMARK. Show all posts

Saturday, May 26, 2018

Intellectual Property Markets

Patents, trademarks, and copyrights are hardly new. Trademarks came first, in the 1200s in England. Patents were next, in the 1400s in Italy. Copyrights emerged in the early 1700s in England. For the United States, laws passed in the 1790s protected patents and copyrights. Trademark laws arrived in the 1870s following legislative activity throughout Europe. These are the three primary types of intellectual property (IP) that can be “registered” with governments for protection. Each are made public, and available statistics for all countries make it possible to track global activity.

Registered IP Boom: What is happening is not a surprise. There are several factors, besides globalization and competitiveness, that fuel the growth. First is the ability to monetize IP. IP used to be part of the price of a product. It still is, but it can also be sold or licensed or bartered in an increasingly liquid marketplace. Transactable IP, which began in the early 2000s, increased the size of the available market. Providers of software and services could now create many more capabilities than simply IP inventory management systems for companies.

Open innovation came of age a few years later, spurred by giants such as Procter & Gamble that set a goal to in-source 50% of their innovations from other companies. As the internet increasingly enabled global connectivity, big data and algorithmic analytics came of age. All the pieces were now in place to take a company’s IP portfolio and compare it to any company or set of global statistics.

Finally, coming full circle, this easily comparative global information spurred further growth as analysts warned companies about not keeping up with the Joneses. Geometric growth has been going on for the past five to seven years.

IP Networks: Another important growth driver are IP organizations that are not the actual governmental registration bodies. Western economic zones have assembled neighboring countries into consortiums and/or empowered agencies that oversee activities and influence country policies and legislation, such as Europe, Eurasia, the Arab States, and Africa. Asian countries appear to be taking a more solo approach.

On a larger scale, the World Intellectual Property Organization has become an increasingly important player. It was established in 1967 by the United Nations as a self-funding agency. It is located in Geneva, Switzerland, and represents 191 of 195 countries. WIPO, as it is known, is the global forum for IP services, policy, information, and cooperation. It is a great source of information on all registered IP. Get on their e-mail list and you will have your finger on the pulse.

Patents & Trademarks: There will always be regional, vertical, and other types of segment competitors, but a look at several WIPO’s global services likely portends the future of IP. WIPO offers three global registration platforms: for utility patents (PCT), design patents (Hague), and trademarks (Madrid). Users file a single “international application” directly with WIPO, which then handles the various country filings. This is a great assist for emergent countries and regions, and is also increasingly used by industrialized nations which already have plenty of infrastructure for registration and enforcement.

Copyrights: Copyrights are also increasingly being monetized. After the “free thinking” period when the internet boom began, the realization that content has value started to return. Giant companies and organizations around the globe now compete to gather and charge for access to their content. The list is long. Copyrights have a couple interesting twists. First is the ability to digitally identify every single publication, a systems capability that has been evolving since 1998.

Does it sound to you like the future of registered IP is headed to be a transactable commodity?

Friday, December 23, 2016

Court finds trademark infringement, but imposes only future prohibition

Guangzhou Hongfu Real Estate Co Ltd is the owner of registered Trademarks 1946396 (September 28 2002) and 1948763 (September 21 2003) comprising combination trademarks STAR RIVER in Chinese characters and device, to be used respectively for the services of "real estate rental, real estate management" in Class 36 and "architecture" in Class 37.

Hongfu assigned the trademarks to Guangzhou Star River Industrial Development Co Ltd, which licensed Hongfu to use the trademarks – enabling Hongfu to bring infringement actions in its own name. Hongfu and its affiliated companies developed several Star River real estate projects in Guangzhou, Beijing, Shanghai and other cities, and won many awards.

In 2000 Jiangsu Weifu Group Construction & Development Co Ltd launched various real estate projects using the names 'Star River Garden', 'Star Garden' and 'Star Scenery Garden' in Nantong – a city in Jiangsu Province. The names of the apartment blocks were approved by the Municipal Civil Affairs Bureau of Nantong.
Star River Co and Hongfu sued Weifu on the grounds of trademark infringement and unfair competition.

The Nantong City Intermediate People's Court ruled that Weifu's use of 'Star River Garden' as the name of its apartment blocks did not constitute trademark infringement, since it did not mislead consumers as to the developer of the buildings. The first-instance court further found that – since Weifu had not intended to free ride and had not caused misidentification among consumers – Weifu's use of 'Star River Garden' did not constitute an act of unfair competition. The court therefore dismissed the claims.

Star River Co and Hongfu appealed to the High People's Court of Jiangsu Province, which upheld the first-instance judgment.

Star River Co and Hongfu then filed a retrial application to the Supreme People's Court.
The Supreme People's Court determined that Weifu's use of 'Star River Garden' as the name of its apartment blocks was likely to cause confusion and misidentification among the relevant public, due to its similarity to the cited marks, which constituted infringement. Consequently, the court overruled the first and second-instance judgments, concluding that Weifu must not use 'Star River' as the name of buildings yet to be developed and sold, and must compensate Star River Co and Hongfu Rmb50,000 for their economic loss.

The case attracted a lot of attention, since it involved the protection of trademarks registered for real estate sale services and liability after a court had found infringement. In the retrial, the Supreme People's Court clarified that when an IP right such as a trademark conflicts with a property right, whether the parties should be ordered to stop using the trademark should be based on the principle of good faith and by taking into account the public interest. The court considered the fact that the name of Weifu's apartment blocks had been approved by the local civil affairs agency. In addition, residents had been living in the complex for many years and there was no evidence to prove whether they knew, upon initial purchase, that the name of the building infringed the cited trademarks. Terminating all use of 'Star River' would have created imbalance between the interests of the trademark owner and those of the public or residents. As a result, the court did not order a complete prohibition against use of 'Star River Garden', but ruled that buildings yet to be developed and sold must not use the name. The verdict protected the trademark owner's interests to the extent allowed by the law, while minimising the harm against the public interest – highlighting the significance of the judicial guidance.

The fact that the infringing products were apartment blocks, with each unit sold individually, created an unusual situation where the final product (the apartment) did not bear the infringed trademark and where the buyer may have been unaware that infringement had been committed. Knowledge of the exact claims submitted by the plaintiffs is essential to assess the significance of this decision. If the plaintiffs requested that the first and second-instance courts affirm the existence of infringement, order the cessation of the infringement and compensate the damages caused, the court's decision did as requested and it was not necessary to rule further. However, if the plaintiffs requested that the courts order the modification of all existing buildings' names, the court's dismissal of the plaintiff's claims may be questioned. Unlike the Patent Law, the Trademark Law contains no reference to the public interest. On the contrary, it is in the interest of consumers not to be confused by an act of infringement, which could happen if the owner of one of the infringing apartments decides to resell.

Tuesday, December 6, 2016

Trademarks : Iceland v. Iceland : The battle for exclusivity

Iceland (the country ) is a leading exporter of frozen fish and seafood to several countries in the EU. Recently, native companies like ‘Clean Iceland’ and ‘Iceland Gold’ have faced trouble in marketing their products due to confusion over the name which clashes with ‘Iceland Foods’ – a renowned frozen food supermarket chain that has subsisted since the 70’s.

‘Iceland Foods’ for several years used to be under the control of Icelandic investors and later Icelandic banks. As the spokesperson for the retailer said, “the relationship came to an end with a £1.5bn buyout of the company in 2012, but Iceland the company has continued to have a good relationship with Iceland ,the country through the ownership of three Iceland stores there, export sales of Iceland products to other retailers throughout the country, and sponsorship of the Icelandic national team in this year’s European football championships.”
‘Iceland Foods’ is currently a UK-based but South African owned supermarket chain.

The Icelandic government has begun legal proceedings to ensure that the trademark of ‘Iceland’- that is exclusively owned by the supermarket chain is cancelled. These steps have been taken primarily to protect native companies that are unable to promote themselves abroad in association with their place of origin, as is their right, for it is a place that they are rightly proud of and which enjoys a positive national branding.

The supermarket’s founder and chief executive, Malcolm Walker, said: “A high-level delegation from Iceland Foods is preparing to fly to Reykjavik this week to begin negotiations, and we very much hope for a positive response and an early resolution of this issue.”

The negotiations are hoped by both sides to bring an end an issue that has the potential to erupt into a long-term battle. According to Iceland Foods, they have no desire to stand in the way of a country that is making use of their own name to promote their goods as long as it does not conflict with the long standing business that the supermarket chain had established over the years.

The Icelandic government has also been clear on its stance and it does not intend to force the supermarket to register a new name, it is only seeking to end the company’s right to assert the Iceland trademark to block native companies from using “Iceland.”

Thursday, May 28, 2015

India’s IPR environment is maturing

Legal systems are in place, landmark judgements have been pronounced, and next-gen policies are being evolved

The establishment of the World Trade Organisation (WTO) at the conclusion of the Uruguay Round (UR) on negotiations in 1995 signalled a quantum leap in integrating developing countries with the global economies. Developing countries undertook greater commitments lured by additional market access in agriculture, textiles and the movement of people.

In a well researched report by RIS India , the gains from the UR proposals were estimated to be between $213-$510 billion a year, with developing countries benefiting to the tune of $86-$122 billion. Empirical evidence suggests that there has been a significant deviation of these income flows to the developing world in favour of the developed world.

Works in progress
The Indian intellectual property rights system represents one of the most mature IP systems amongst developing countries, although some of the studies rank it below China, which is often accused of thefts, counterfeiting, piracy and cyber attacks on IPRs. Successive Indian governments have put in efforts to improve IP legislation since 2000. Jurisprudence has consistently evolved, institutions like the Intellectual Property Appellate Board (IPAB) have been established, and landmark judgments by the judiciary have been given in the past few years. In recent times, key efforts have been made by the PMO to revisit the IP regime and a task force has been set up to evolve a next generation IP policy for our nation.

There have been acrimonious noises made by US industry against Indian IP legislation and its interpretation by the government and judiciary. Criticism of certain provisions in the Patent Act that renders evergreening of patents ineligible for grant has generated considerable heat. Similarly, lack of IP enforcement, a non-responsive legal system, lack of awareness and compulsory licensing have all come under fire.

On the ground, it appears to be a lot of work in progress. Significant policy changes in recent years by successive governments have been responsible for the evolution of IP legislation in our country. Indian pharmaceutical companies have become globally competitive in the generics market.

Not only are Indian companies competitive, the drugs produced by these companies have pharmacologically better characteristics and quality. Some of these domestic companies are also entering into licensing agreements with global players such as Sanofi, Forest Laboratories, Bristol Myers Squibb, Merck, and Eli Lilly and AstraZeneca in the R&D space. Over 50 NCEs/NMEs from Indian companies are at different stages of development for new drugs. This marks the entrance of Indian pharma companies in drug discovery; an innovation cycle that may be fraught with difficulties but is equally rewarding of success.

On copyright

In the case of the entertainment and IT industry, the recent involvement of the HRD ministry with industry associations such as Ficci, BSA and MPA are providing copyright enforcement training to police officers and its governing officials. To deepen awareness on copyrights, the ministry is in the process of finalising the inclusion of IPR as a compulsory subject in K-12 education. These are likely to see much anticipated reduction in unlicensed software and piracy of music and films.

There have been pioneering judgments that decisively deal with digital TM violations, meta tagging and parallel imports, making our legal environment more responsive and intolerant towards IP abuse. The decision of grant of interim royalty payouts by the Delhi High Court in the Ericsson vs Micromax case is a turning point in the “no damage cover” regime prevalent in India.

In the engineering and manufacturing sectors, IP capability and process maturity appear to be the binding-glue that will allow OEMs (original equipment manufacturers) transfer critical IPRs to Indian companies without fear. These ingredients must find a place in training each skilled worker in this exercise of nation-building. It is recommended that each set of National Occupational Standards must aim to create workers who are knowledgeable, innovative, skilled and IP centric.

India’s openness to re-examine its IPR laws and policies, and establish a think-tank and an empowered group on IPR reflects serious intentions of her transforming attitude towards IPRs.


Tuesday, April 14, 2015

Technology Leaders Unite to Protect Intellectual Property Rights

From servers and hard drives to semiconductors and software, Intellectual Property (IP) is a key asset for many high tech companies. Protecting the invention, innovation, research, design and testing involved in creating IP is critical to high tech companies of all sizes, and IP must be closely guarded to protect technological advancements. Threats to IP are many and varied, and come in many different forms -- including gray marketing, counterfeiting, service and warranty fraud and digital IP abuse.
AGMA, a non-profit organization and the largest group solely focused on IP protection in the high-tech industry, is on a mission to hinder threats to IP and render these activities more difficult, undesirable and unprofitable. AGMA's goal is to educate the industry and the public -- sharing and developing best practices in the fight against IP theft. Comprised of the tech sector's most influential companies -- including Avaya®, Cisco®, APC® by Schneider Electric, HP®, IBM®, Microsoft®, QLogic®, Seagate® and more -- AGMA employs a number of tactics, including event speaking, educational initiatives, benchmark studies, industry guidelines, and public policy advocacy.

Advocating for Change
IP theft comes in many shapes and sizes. AGMA has narrowed its focus on the following threats: gray marketcounterfeitingservice and warranty fraud and digital IP abuse. These four distinct areas of focus must be closely guarded in order for the high-tech industry to thrive and contribute to economic prosperity, innovation and security. To provide a greater level of support to its members, AGMA has recently appointed industry experts to act as advocates for each of its four focus areas.

AGMA appointed advocates include individuals from prominent member companies including HP, Schneider Electric and Microsoft. A primary responsibility for AGMA Advocates is to drive internal and external initiatives that will bring greater visibility to the issue and arm members with best practices to address the problem. Leveraging their extensive knowledge, AGMA Advocates will also provide a greater level of education to the industry, law enforcement, policy makers and consumers.
According to AGMA president Sally Nguyen, "AGMA has been fighting the good fight against these threats to intellectual property rights since 2001, and we are still the only association that is focused on these issues facing the high-tech industry. Our AGMA Advocates dig deep into their specific areas of focus -- they provide additional resources and knowledge to penetrate the industry and raise awareness. The goal is for members to get the most out their AGMA membership and make them more adept at fighting the problem."

The Issues at a Glance
Gray marketing is the sale of genuine branded products that have been diverted from authorized distribution channels or that have been imported into another country without the consent and knowledge of the brand owner. Counterfeiting is the deliberate attempt to deceive consumers by copying and marketing goods that bear a rights holder's trademark, so that these goods appear to have been placed on the market by the rights holder. Both gray marketing and counterfeiting impact more than just the bottom line -- they can negatively influence brand image, customer loyalty and overall customer satisfaction.

Service and warranty fraud contributes to the gray market, and acts as a conduit for counterfeit goods to infiltrate the authorized supply chain. Finally, due to their intangible nature, digital products can be reproduced at a very low cost and delivered via the Internet across virtually unlimited geographic markets. Therefore, it's easy to see why digital IP represents the most rapidly growing portion of the global economy.

This article first appeared in

Parallel import issues under Indian trademark law

Parallel importation is a complex and often disputed issue in the IP field. ‘Parallel imports’ are genuine goods that are legitimately acquired from the rights holder and subsequently sold at lower prices through unauthorised trade channels in the same or a different market.
As parallel importation is essentially a trade practice, it is regulated under both IP law and competition law. In the trademark law context, parallel importation significantly affects the rights of a manufacturer or trader, as trademarks help traders to earn goodwill in the market and to protect their commercial reputation. As territorial rights, trademarks also indicate the source of the trademarked products or services. A conflict therefore arises when parallel importation results in a misrepresentation of the source, reputation or quality of the trademarked goods.
There is no dispute that parallel importers are in business to make money. Parallel importation occurs due to price differentials caused by currency rate fluctuations and tax differentials in different markets. This allows goods to be resold at a profit by a third party in a more expensive market. Actions to prevent parallel imports under trademark law include suits for passing off and/or infringement.
Parallel imports are also referred to as ‘grey-market’ goods because although the goods may be genuine, they are sold through unauthorised trade channels. The Indian judiciary has recently attempted to clarify this ‘grey’ area.
Law on parallel imports
In India, parallel importation is intricately linked to the principle of exhaustion of rights under the Trademarks Act, 1999. The principle of exhaustion of rights is enshrined in Article 6 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), which states that “nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights”. Hence, each state is entitled either to prohibit or to allow parallel imports within its own legal framework.
Two major issues that are often discussed in the context of parallel importation and trademarks in India are whether parallel importation constitutes infringement under Section 29 of the Trademarks Act and whether India recognises the principle of international exhaustion of rights under Section 30 of the Trademarks Act.
Case law
One of the first cases concerning parallel importation and trademark law in India was Cisco Technologies v Shrikanth 2006 (31) PTC 538, in which the Delhi High Court granted an ex parte injunction in favour of the plaintiff and restrained the defendant from importing computer hardware and hardware components under the trademark CISCO (which was registered in India). The plaintiff argued that:
CISCO products such as routers and switches are mission and human critical hardware components used in network infrastructure; that the product of the Plaintiff is used in critical networks such as railways, air-traffic control, hospitals, air defenses etc.; that malfunctioning/failure of the product of the Plaintiff would result in huge losses due to failure of these networks; that keeping in view the critical importance of the product in question, it becomes imperative to ensure that neither counterfeit sales nor sales by misrepresentation take place… and that public interest has to be kept in mind while determining the issue whether ex-pare ad interim relief should flow to the Plaintiff at this stage.
In accepting the plaintiff’s arguments, the court also observed that:
It is the obligation of all statutory and governmental authorities to ensure that laws are not violated by any person in this country. For persons who hold benefit of registered trademarks, Section 140 of the Trade Mark Act, 1999 makes statutory provisions whereunder the Collector of Customs could prohibit the importation of goods if the import thereof would infringe Section 29(vi)(c) of the Trade Marks Act. I see no reason why the statutory authorities should not prohibit import of such products, import whereof would result or abet in the violation of the proprietary interest of a person in a trademark/trade name.
The court also issued directions to Customs to notify at all ports that no consignments, other than those of the plaintiff, should be permitted to be imported in respect of routers, switches or cards bearing the CISCO trademark and/or the bridge device.
The Indian courts will usually grant an injunction against parallel importers only if the nature or quality of the goods has been changed or impaired after they have been put on the market. For instance, in Samsung Electronics Co Ltd v Mr G Choudhary, 2006 (33) PTC 425, Samsung argued that the sale of parallel-imported ink cartridges and toners did not strictly conform to Indian laws and regulations (eg, they were not accompanied by literature in English or the vernacular, and/or a label indicating the maximum retail price; they were not covered by a warranty; and use of the products would likely breach the warranty of the printer in which they were used). The Delhi High Court restrained the defendant from dealing directly or indirectly in those products.
In M/S General Electric Company v Altamas Khan General Electric argued, among other things, that the defendants’ import of its genuine products into a territory for which they were not intended violated its trademark and caused it loss. It further argued that the illegal sale caused it loss of reputation, insofar as purchasers that were unable to claim warranty or avail of an aftercare service would likely blame it or hold it responsible. The Delhi High Court found the defendants liable for infringement.
In Kapil Wadhva v Samsung Electronics, 2013 (53) PTC112, the Delhi High Court Division Bench reinforced the legality of parallel imports and held that the Trademarks Act enshrines the principle of international exhaustion of rights. In other words, it held that the exclusive right of a trademark owner over its goods is exhausted once the goods have been put on the market either by the trademark owner or with its consent. The court held, among other things, that the word ‘market’ used in the statute implies a global market, and that the preparatory works to the Trademark Bill 1999 clearly indicate the intent of the legislature to recognise the principle of international exhaustion of rights to control further sales of the goods once they have been put on the market by the trademark owner.
To illustrate: where a third party acquires goods legitimately from the trademark owner in country X, which follows the principle of international exhaustion of rights, and subsequently sells them at a higher or lower price in country Y, which also has an international regime, the trademark owner cannot oppose the sale because its exclusive right has already been exhausted by the doctrine of exhaustion in country X. An international exhaustion regime is therefore consistent with TRIPs in promoting free trade.
Section 30(4) of the Trademarks Act allows the trademark owner to control the circulation of goods where there are legitimate reasons to object to further dealings in the goods – in particular, where their condition is changed or impaired after they have been put on the market. The Delhi High Court Division Bench has broadly interpreted ‘legitimate reasons’ to include differences in:
  • services and warranties;
  • advertising and promotional efforts;
  • packaging;
  • quality control, pricing and presentation; and
  • the language of the product literature.
Although an appeal is pending before the Supreme Court of India, the decision remains in force.
A notable aspect of this ruling is that the court directed that, as far as possible, unauthorised dealers and parallel importers must prominently display in their showrooms signs stating that the products they sell have been imported, and that they themselves – rather than the trademark owners – are providing the related warranty and aftercare services. The appellant in this case was ordered to display the following sign outside its showroom: “Samsung/SAMSUNG Products sold are imported into India and SAMSUNG (KOREA) does not warranty the quality of the goods nor provide any after sales service for the goods. We warranty the quality of the goods and shall provide after sales service for the goods.”
Such practices can mitigate the risk of confusion and deception among consumers and help consumers to identify the source of the products and distinguish between parallel imports and authorised products.
In India, the only circumstances in which a trademark owner can oppose or prohibit unauthorised parallel imports and plead infringement under the Trademarks Act are where the goods either were not lawfully acquired or were changed or materially altered after their acquisition. Therefore, given the international exhaustion of rights regime, a parallel importer need not prove that the trademark owner has consented to the parallel imports, either expressly or implicitly. Perhaps the only burden on the parallel importer relates to the quality and safety compliance of the products. In Philip Morris Products SA v Sameer, 209 (2014) DLT 1, the Delhi High Court held that in light of the legal position enunciated by the Division Bench in Samsung, an importer of grey-market goods, its representative or a subsequent purchaser will not be liable for infringement under Section 29 if the imports fall within the purview of Section 30(3). However, the importer must prove that the impugned goods were placed on a market worldwide by the trademark owner or with its consent, and thereafter that it lawfully acquired them.
Customs law
Indian customs law also includes provisions on parallel importation. According to the 2012 Central Board of Excise & Customs Circular on Enforcement of Intellectual Property Rights on Imported Goods, parallel importation is not prohibited unless:
  • the goods bear a false trademark as specified in Section 102 of the Trademarks Act; or
  • the goods bear a false trade description within the meaning of Section 2(1)(i), in relation to any of the matters connected to the description, statement or other indications of the product, excluding those specified in Sections 2(1)(ii) and (iii).
This marked a clear departure from the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007, which provided that where a trademark owner notified the customs authorities in the prescribed format requesting that clearance of goods suspected of infringing its rights be suspended, and this notice was duly registered by the customs authorities, the import of all goods bearing the infringing trademark would be suspended and proceedings for confiscation of the goods would be initiated under Section 111(d) of the Customs Act. The confiscated goods were eventually required to be destroyed or disposed of outside normal channels of commerce with the trademark owner’s consent.
Consequences of parallel importation
Parallel importation has both legal and economic ramifications. Economically, it promotes the availability of trademarked goods at different prices, which prevents the establishment of a trade monopoly. A monopolistic approach in a parallel import-free market would lead to inflated prices of the goods sold by the trademark owner or authorised dealer. In the absence of cheaper alternatives, consumers would be obliged to purchase goods at the price set by the monopolist. This could have an adverse effect on the overall market, as well as on supply and demand.
Legally, it is essential to prevent deception and confusion among consumers regarding the source or quality of products, and to protect the economic interests of trademark owners. Only if the parallel imported products are materially different from those sold directly can a trademark owner file suit, including for passing off, falsification and infringement.
Therefore, the positive impact of parallel importation is that it forces prices down and provides consumers with goods at lower prices. Parallel imports prevent trademark owners from exercising their exclusive right to divide markets and thus promote free trade, subject to the exhaustion doctrine followed in the particular country. The negative impact is that the manufacturer’s distribution arrangements and ability to monitor the quality of trademarked goods are restricted. Parallel imports are also often used as a tool to cash in on the reputation and goodwill of the trademark owner; this can give rise to an action for passing off.
While consumers may benefit from lower prices for trademarked goods, parallel imports do not necessarily guarantee quality assurance or an aftercare service, and may thus result in consumer dissatisfaction and cause damage to the reputation and goodwill of the trademark. On a more practical note, however, the consumer as end user has the ultimate choice and is the ultimate beneficiary of parallel trade. Most consumers would purchase an Apple or Sony product from authorised dealers only and would be aware of the repercussions if they did otherwise. Similarly, in the case of pharmaceuticals, consumers would generally exercise extra caution and purchase the same from trusted distributors, chemists or hospitals.
Under Indian trademark law, trademark owners can take legal action only against traders dealing in goods that compromise the goodwill, reputation or quality of the trademark. Parallel importation thus acts as a reasonable limitation to the trademark owner’s exclusive rights to use the mark in relation to the goods and services for which it has been registered.
The decision on whether to allow parallel importation is ultimately a choice between quality control and price control; between the economic rights of trademark owners and consumer access; between trade monopolies and free trade. In the trademark context, parallel importation in no way compromises the trademark owner’s right to sue for infringement, passing off or falsification of its marks. In this sense, by following the principle of international exhaustion of rights, Indian law not only safeguards the reputational assets of a trademark, but also ensures free trade, as mandated by TRIPs, by eliminating the monopolistic tendencies of profit-driven trademark owners.

This article first appeared in IAM magazine. For further information please visit

Trademark Law

The year 2014 will be remembered as the year when Canada rewrote its trademark laws. Much has been written on this subject and much more will be written over the next few years. However, 2014 was also an exceptionally busy year for trademark cases in Canada. While no single case stood out above the rest, there were a number of interesting cases of which both legal professionals and brand owners should take note.
When is a trademark clearly descriptive of geographic origin?
In Lum v Dr Coby Cragg Inc the Federal Court considered whether the registered mark OCEAN PARK for use with “dental clinics” was clearly descriptive of place of origin, as the dental clinic in question was located in an area called Ocean Park. The court applied a two-part test that:

  • the mark must point to a place; and
  • the place must be indigenous to the services in question.
The plaintiff failed on the second part of the test as Ocean Park was not indigenous to dental services. There was no evidence that a reasonable person hearing the term 'Ocean Park' would automatically think of going to the dentist, and as a result the registration was maintained.
In MC Imports Ltd v Afod Ltd the Federal Court considered whether the registered mark LINGAYEN, covering a variety of Filipino foods – including bagoong, a fish sauce – was clearly descriptive of the place of origin of these products. The evidence showed that Lingayen was a municipality in the Philippines and a known source of bagoong. Further, the registrant’s goods originated from Lingayen. As such, the court deemed the mark to be clearly descriptive of the place of origin and the registration was ordered to be expunged.
The Federal Court also considered the issue from the perspective of the ordinary consumer and concluded that he or she would not be without knowledge, and would have some intelligence and concern about the item being purchased. The ordinary consumer in this case would essentially be Canadians of Filipino or Southeast Asian origin, a group among which LINGAYEN would be viewed as clearly descriptive of origin.  
Both of these decisions have been appealed, providing the Federal Court of Appeal an opportunity to clarify the test to be applied in determining if a mark is objectionable on the basis that it is clearly descriptive of place of origin.
Distinctiveness of geographical designation not linked to absence of deception
London Drugs Limited v International Clothiers Inc concerned London Drugs, a well-known Canadian drugstore chain which owns various trademark registrations incorporating the term 'London'. It appealed a decision of the Opposition Board that allowed applications for the trademark SMITH & BARNES LONDON, covering a variety of retail store services and related wares.

In assessing confusion, the Federal Court rejected the argument that a trademark incorporating a geographical term may be distinctive where it is used on wares or services that have no pre-existing connection to the designation. It noted that the distinctiveness of a mark has to do with its originality, uniqueness and inventiveness, not with the absence of deception. Geographical designations such as 'London' are not inherently distinctive, and should not be accorded a high degree of protection unless they have acquired distinctiveness over time. The court upheld the board’s decision and rejected the appeal.
Assessing confusion between inherently weak letter marks
In Gemological Institute of America v Gemology Headquarters International an application for the mark GHI was opposed by the Gemological Institute of America on the basis of confusion with its registered trademark, GIA. Both marks covered goods and services in the field of gemology. The Opposition Board noted the inherent weakness of marks consisting of letter acronyms and rejected the opposition. On appeal to the Federal Court, fresh evidence was filed to show that while not inherently distinctive, the opponent’s GIA mark had been used over a significant period of time and was well known in Canada. The court noted that if this new evidence had been put before the board, it would have approached the confusion analysis differently and would have considered that the opponent’s mark was well known. The appeal was allowed, and the application to register GHI was refused. The court’s decision has been appealed.

Consideration of nature of wares and channels of trade
In Hayabusa Fightwear Inc v Suzuki Motor Corporation the applicant, a company specialising in mixed martial arts, appealed the board’s decision to refuse its application to register HAYABUSA for use with clothing. Suzuki opposed the application based on its registration for the identical mark HAYABUSA for motorcycles and on its prior use of HAYABUSA with motorcycles and caps.

The court found that the board had failed to consider the different channels of trade for the parties’ products. As Suzuki did not hold a registration covering “caps”, it was imperative to consider its actual use with these goods, which involved sales strictly through authorised Suzuki dealers (ie, a single channel of trade and to targeted consumers). The fact that it would be virtually impossible to find the parties’ wares in the same channels of trade should have been determinative of the matter in favour of Hayabusa Fightwear. The court set aside the decision of the board and allowed the application.
Similarly, in Bridgestone Corporation v Campagnolo SRL the nature of the wares and channels of trade were key considerations. Campagnolo, a manufacturer of track and competitive road racing bicycle parts and accessories, applied to register the trademark POTENZA for bicycle parts and accessories, but not including tyres, brakes, wheels, rims and spokes. Bridgestone – primarily known for its automotive products – opposed based on its registration of the identical mark POTENZA in association with tyres, tubes and wheels. The board held that there was no reasonable likelihood of confusion, and on appeal the court agreed.
Bridgestone argued that it was erroneous to consider only current channels of trade – just because Campagnolo sold high-end bicycle components in specialty stores did not mean that it would not market a cheaper line in big-box stores in the future. The court disagreed, noting that the parties’ respective statements of wares must be read with a view to determining the probable channels of trade as opposed to the possible channels of trade.
Always confirm that the other side is still active
In Bacardi & Co Ltd v The Devil’s Martini Inc an application for the trademark DEVIL’S MARTINI was unsuccessfully opposed by Bacardi, which appealed to the Federal Court. During the appeal, it became apparent that the applicant had been dissolved. After confirming that the Office of the Public Guardian and Trustee in Ontario did not intend to continue with the application and that the director appointed under the Ontario Business Corportations Act did not intend to oppose the appeal, the court held that the mark was not registrable under Section 30 of the act and ordered that the application be refused. 

Issue raised for first time on appeal refused
In Cohen v Susan Fiedler Incorporated Cohen’s application for the 'F CANCER and design' mark was successfully opposed by Fiedler on the basis of Fiedler’s prior use of a series of unregistered F CANCER marks. On appeal, Cohen raised an entirely new argument – that the word 'f***' was obscene and therefore prohibited by Section 9(1)(j) of the act. The court noted that the argument was “somewhat counter-intuitive” given that it would be fatal to Cohen’s own application, but Cohen conceded that her goal was not the registration of her own mark, but rather the collateral purpose of obtaining a ruling from the court that Fiedler had no enforceable common law rights to its F CANCER marks.

The court held that the question should have been decided by the Opposition Board, the expert tribunal with the authority to decide such questions, and that there was no valid reason why the argument could not have been raised before the board. The appeal was refused and the court went on to assess elevated costs, given that the appeal had been brought for collateral purposes.
Strict interpretation of 'use in Canada' not applicable in Section 45 proceedings
In Ridout v HJ Heinz Company Australia Ltd, a non-use cancellation proceeding, the registrar of trademarks maintained the registered mark OX & PALM for use with meat and processed meat. The evidence before the registrar showed that the registrant had received a purchase order for the wares and the goods were delivered to a shipper in Australia before expiry of the material period, but that they were subsequently delivered to the Canadian customer three days after the expiration of the material period. The registrar maintained the registration, noting that the mark was not “deadwood” and that this case did not warrant a strict interpretation of 'use'. The Federal Court upheld the decision, concluding that there was a transfer of property in the goods in Canada when they were delivered to the shipping entity in Australia, so long as the delivery to Canada was ultimately completed.

Thymes decision distinguished
The Reitmans (Canada) Ltd v Thymes Ltd decision confirmed that an application claiming use and registration in another jurisdiction must have all of the requisite elements present (use and the foreign registration, or at least a pending application) as of the Canadian filing date. If not, the application could be successfully opposed. Coors Brewing Company v Anheuser-Busch, LLC established that an allegation of an improper foreign registration and use claim in a registered mark did not constitute a ground for expungement. A lack of foreign use at the Canadian filing date is not fatal to registered trademarks that are issued based on a claim of foreign use and registration, provided that the claim was true at the time that it was made.

In August 2010 Anheuser filed a US application to register GRAB SOME BUDS based on intended use in the United States. A corresponding Canadian application was filed in mid-September 2010 based on proposed use in Canada. Use commenced in the United States in late September 2010 and the US case issued to registration in March 2011. In February 2011 Anheuser amended its Canadian application to rely on foreign (US) use and registration. The Canadian application proceeded to registration on this basis.  
Coors applied to expunge Anheuser’s Canadian registration, arguing that it was invalid since use of the mark did not commence in the United States until after the Canadian filing date. The court disagreed and upheld the registration. The sole basis for invalidating the registration raised by Coors was the alleged improper foreign registration and use claim. However, the grounds on which a registration may be expunged are set forth in Section 18 of the Trademarks Act, and the court confirmed that non-compliance with procedural filing requirements under Section 30 of the act does not constitute grounds for expungement. Further, while a misstatement in an application may present a ground for expungement, the statement made by Anheuser in its application was true when it was made, and as such it did not constitute a misstatement.
Section 9 objection at examination overturned by Federal Court
In Jack Black LLC v Canada (Attorney General) the applicant applied to register JACK BLACK for skincare products. The examiner objected to the registrability of the mark on the basis that Jack Black is a “famous living individual”. On appeal, the Federal Court concluded that the print-outs from the Internet relied on by the examiner in reaching his decision were insufficient to establish that there was an individual named Jack Black with a significant public reputation across Canada. The applicant also filed new evidence showing that the skincare products offered under its mark were not new, and in fact benefited from a fairly large circulation, without objection from Black.

Federal Court considers official marks
In Terrace (City) v Urban Distilleries Inc, which concerned the official mark SPIRIT BEAR, the failure to show prior adoption and use resulted in a declaration that the official mark was unenforceable. The court noted that adoption “is a low bar; all a party must do is state it has adopted the mark”. Use requires that the mark be made available for public display before publication. The court noted that “such use cannot be abstract. It must be associated with a particular ware or service, and a connection must be made with the wares or service and the mark”.

In surveying the relevant case law, the court noted that public display can include the display of a mark on a website in association with a particular service; use can be found when an announcement for the services and a logo, containing the mark and a graphical depiction of the mark, have been published in a public newsletter. A mark is not used where it is not distinguished from surrounding text, nor when it is used on internal communications only. 
The evidence fell short of establishing use, with the result that the SPIRIT BEAR official mark was deemed unenforceable. The court’s decision has been appealed.
In TCC Holdings Inc v Families as Support Teams Society the court considered whether a registered charity qualified as a public authority for the purposes of Section 9 of the act. The respondent, the Families as Support Teams Society, was a registered charity when it obtained the protection of Section 9, but its charity status was revoked shortly thereafter. It did not participate in the proceedings.
The court was satisfied that the respondent was not a public authority, noting that it did not meet the test of significant governmental control. As such, the court did not have to consider whether its activities satisfied the public benefit requirement. The court further noted that even if it had been a public authority, it ceased to be one when its charitable status was revoked, such that it was not entitled to benefit from the official mark.
Punitive and aggravated damages distinguished
In Bauer Hockey Corp v Sport Maska Inc, on a motion dealing with the sufficiency of pleadings, the Federal Court of Appeal commented on the distinction between punitive and aggravated damages. The court noted the following:

  • Punitive damages are intended to punish the defendant in situations where the defendant’s misconduct is so malicious, oppressive and high handed that it offends the court’s sense of decency. They are not limited to situations of litigation misconduct.
  • Aggravated damages are intended to compensate the plaintiff and are usually awarded in relation to intangible injuries (humiliation or mental distress), and it is questionable whether such damages can be claimed by a corporation.
The court struck Bauer’s claim to aggravated damages, but allowed the claim for punitive damages to remain in the statement of claim. While allegations of wilful and knowing infringement alone do not support a claim to punitive damages, the court held that it was not plain and obvious that the statement of claim disclosed no reasonable cause of action with respect to punitive damages, as there were other allegations to be considered.
Criminal penalties stemming from sale of counterfeit goods
In R v Strowbridge the accused was seen selling counterfeit brand-name products from the back of a van parked next to the highway, and C$500-worth of products were seized. He pled guilty to fraud and copyright and trademark infringement, and was sentenced to 15 months in prison – six of which were for copyright infringement under the Copyright Act and trademark infringement under the Criminal Code.

On appeal, the Newfoundland Court of Appeal canvassed sentencing decisions relating to the sale of counterfeit goods, primarily under the Copyright Act, most of which resulted in conditional sentences. The court distinguished between operations where customers buy goods from an ostensibly legitimate storefront operation versus the purchase of goods from the back of a van parked on the side of a highway, noting that while purchasers of counterfeit goods can be victims, there was no indication that they were in this case. The court deemed Strowbridge’s operation to be marginal and unsophisticated. 
The court agreed that a six-month sentence was disproportionately long and reduced it to two. This decision is of particular interest given the recent amendments to the Trademarks Act, which provide for significant criminal penalties in relation to counterfeiting activities.


Sunday, December 28, 2014

Toyo sues Toyomoto for trademark infringement

Toyo Tire & Rubber Co. Ltd. and its U.S. subsidiaries are suing Japan Toyomoto Tire Corp. and its affiliates for infringing the Toyo trademark.
At the same time, Toyo reported the U.S. District Court for the District of Nevada has issued a permanent injunction against Toyama Tyre Corp. Ltd. in a similar trademark infringement case filed last November.
Toyo filed the action against Toyomoto, which it calls a Chinese corporation, in the same court in Nevada, where both companies exhibited at the recent Specialty Equipment Manufacturers Association trade show in Las Vegas.
In the complaint, Toyo Tires alleges that Toyomoto is marketing and selling tires using the Toyomoto mark, related domain names, and logos in direct infringement of Toyo Tires’ long established Toyo trade name and trademark.
The complaint states: “Defendants… have intentionally adopted the Toyomoto mark to take advantage of the tremendous reputation and goodwill of the famous Toyo marks, and continue to do so knowing of the irreparable harm that they have caused and will continue to cause Toyo, its marks, and the public.”
The court issued a preliminary injunction against Toyomoto on Nov. 12, stating: “The Toyomoto mark is confusingly similar to the Toyo marks, and the defendants are using the mark for the same goods covered by Toyo’s trademark registrations. In addition, defendants are claiming that they are a Japanese company, (which is likely to exacerbate confusion with Japan-based Toyo), even though defendants are China-based companies.”
The court’s ruling means Toyomoto is preliminarily enjoined from using the Toyomoto mark in commerce, including the sale, distribution, promotion and advertising of tires bearing the Toyomoto mark.
Toyo is seeking permanent injunctive relief to prohibit Toyomoto from continuing to infringe on Toyo Tires’ intellectual property rights, together with other corrective relief, including destruction of infringing products and materials, and recovery for damages arising from Toyomoto’s actions.
Toyomoto is a trademark belonging to Kabusikiki Kaisha Tokyo Nihoon Rubber, a Tokyo-based company founded in 1985 by Takahasi Takuo. The site attributes the name to Mōri Toyomoto, a 15th century warlord of the province of Aki.
Takuo later established Japan Toyomoto Tire Corp. and introduced the tire brand in 2011. The site also lists three subsidiaries: Toyomoto (Beijing) International Trading Co.; Toyomoto Tire (U.S.) Inc.; and Toyomoto OTR Division.
Neither Toyo nor Toyomoto identifies the Chinese manufacturer of the Toyomoto brand, but Toyomoto on its website states it has its own tire manufacturing technology and claims to be supplying technology and know-how to an entity it identifies as Saudi Company for Tyre Manufacturing, which Tyomoto claims is setting up a tire production unit in the Gulf States.