Sheila Carnegie: Welcome to all of our guests today wherever you may be in the world. My name is Shelagh and I am a partner and the co-head of our global IP group at Gowling WLG. I am delighted to welcome you to the next instalment of our webinar series entitled to The Lifecycle of a Smart Idea.
Today we are going to discuss a strategy for building out a global trademark and design portfolio. For this purpose I am reinventing myself as Shelagh Carnegie, Global General Counsel for a Canadian based all terrain vehicle company known as Hell Ranger. Hell Ranger is known for its edgy branding and surprised new product extensions. Hell Ranger has decided to launch a line of boots and an energy drink in its key markets being Canada, the United States, Europe, the UK, the UAE, Russia and China. Our brand and product extensions are on my screen. The boot and bottle decides for the new products were just created by our incredible design team and they tell me they will be unique and exciting in the marketplace.
Like many general counsels I need a solid protection strategy and coordinated advice so my CEO knows we are following the best practices and avoiding any pitfalls. My time is limited and so is my budget so I have assembled my team from Gowling WLG to take the next hour to walk me through the plan and the issues to make sure I have locked down protection for my TIP assets. I know this expert team and they work seamlessly together to deliver results both on time and on budget. They include Kate Swaine who is the other co-head of intellectual property global and a partner in our UK office. Jim Longwell, Jim is a Partner and a Patent Agency in the Toronto office. Jon Parker Parker who is a UK registered trademark and design attorney in our office in Dubai. Jian XU. Jiang is the head of our intellectual property practice in China and a patent trademark attorney and finally Veronica Fridman. Veronica is from the Russian office and is counsel and a patent attorney.
Kate and Jim, I had to give a presentation to my CEO tomorrow. Can we start off with the important design and trademark considerations as a high level?
Kate Swain: Absolutely no problem. I'll kick off if that is alright. So the first step for us is to understand your business priorities. Business priorities are built around brand value. They are built around sales, territorial important strategic development, and your global rights they really need to match those priorities to ensure that your IP portfolio strengths the business rather than detracting from it. So in order to work with you, we need to understand firstly what are the Crown jewels for Hell Ranger? What do you sell? What are you known for? What is your reputation synonymous with? That is what you are going to need to guard. Then we need to look at what are the business' core brands. The names, the logs, the colours, the catchphrases and the tag lines which your customers and competitors are going to identify with you. That is your brand identity and where are the business' key territories both in terms of sales and also in terms of your strategy development. You may well get different answers depending which bit of the business you actually ask that question of. It is a case of understanding which territories though are at the heart of your company's business strategy. That is where you are going to need the most robust protection. And then finally where do you face the most challenges? Whether it is markets, whether it is particular competitors or the infringers that you face because that is where you are going to need your protection to be its most robust. So having gathered all that information with you, then we can identify the rights you need in place, where and what they need to cover? That is going to allow us to scope out the most appropriate registration systems, the likely timeline in different jurisdictions and importantly your budget because the likely cost of securing the portfolio is going to be a key issue for you to consider. So in terms of your Crown jewels, we need to consider the logo, we need to consider that tagline where angels fear to tread and we need to consider the Hell Ranger name. Where and how would you intend to use them and we also need to look at them not simply from the trademark perspective but also in light of design right protection so Jim I will hand over to your expertise. Would you like to speak on that?
Jim Longwell: Absolutely so designs, designs, designs, I am just so happy that you are considering design protection. They offer such an inexpensive way to seek product protection for futures that can fill in gaps and bolster your IP portfolios so there are many facets to brand identity and protection as Kate as was mentioning and I think design strategies are cutting edge approaches to protect product identity and particularly the unique user experience that so many companies are trying to build into their product lines now. So we say why designs? Well 3D trademarks and copyright protections may overlap with designs in some ways. These other forms of protections, they are not always universally available and in the case of trademarks often they are not available until a prolonged period of use has transpired after a products introduction in a particular market and in terms of enforcement I think there is a big contrast between copyright and design and copying you have to show copying per se and for design there are just are no innocent infringers so for at least these reasons, I think design protection should be overlooked and as I said I am very pleased that you are not doing that.
So turning then to come of the considerations that Kate was mentioning and putting a bit of a design on to those, there is a lot overlap. You know we are looking at the what, the where and the when aspects here, the what relates not just a particular product but those specific tangible features that set your new product apart from those of others. Those are the futures that relate to your brand identity and that user experience I was mentioning. Those are the features that a competitor and a counterfeiter of course will want to copy. The what of course also includes issues related to your budget, your sales goals and so forth so we can gauge your appetite for design protection in various markets, and then the other side is the where and the when as Kate mentioned similarly we need to know your intended markets where you are making products. Where your competitors may be making their products for their big sales locations. We want to cover you off in a very strategic way globally so that you are not wasting resources in areas that are not helpful to you and really concentrating as I said being quite strategic in your protection, and then for many jurisdictions globally it is really important to remember to have a design application on file before the design is made available to the public. Design rights are more like patent rights in a way than trademark rights in that sense. So with this information, we consider our specific design features and will propose strategies for clearance and protection of you so turning specifically to these features then I think in terms of the bottle we see shape and channel elements towards the bottom of the bottle, there is a feature of the skull cap in a raised motif on top there, in the boot, there are a number of features, the skull motif is repeated in the shaped lace hooks. There is rotated L shape on the side element. The boot sole has some interesting features in terms of the skull whether individually or in a pattern and there are lots of colour which I really like and colour is often a feature of design protection strategies.
So then of course we see the name Hell Ranger and the logo that you have including the tagline. At least in the English version of the mark so I do not always suggest registering a design with a logo per se either in association with design features or not sometimes. We really only see counterfeiters copying brands with product features, you know smart competitors are not going to put your brand on a product so they are going to adopt their own brands and also should you decide to sell off non-core IP assets at some point in the future maintaining separation between a trademark portfolio and a design or a non-trademark assets can be really helpful for that type of an activity so some jurisdictions do permit registration of logos as designed per see just as a logo so it is really applicable to almost any product but those are few and far between so at least for those reasons we do take a hard look at whether we would suggest registering design with the mark. So that is my comments.
Shelagh Carnegie: Well thank you that was very helpful, and Jim you mentioned clearance, I think I do want to devote some of my budget to clearance to make sure we avoid any obvious obstacles and if we have to change direction, I want to know that before we think a lot of resources into global filings. Jon perhaps you could start us off and walk me through a discussion of the clearance considerations.
Jon: Yes thank you Shelagh. I guess the first thing you are making the right decision in conducting clearance searches because it is an important step for the reasons you have mentioned before you starting ploughing money in and before you launch it is important to get the risk assessment as to what is out there and I think it is an important part for the meeting tomorrow with your management that to make them aware that the searches are a risk assessment so that you have the information to hand, that you can work with your business colleagues as to whether what is the risk of using this brand, what are the risks surrounding the designs or elements of the designs that we need to take into account before we actually launch. So I will touch on the considerations for both the trademark and the design searches and what we will need from you to be able to run those searches as well as some watch-outs as well.
So I guess the first thing is as you are no doubt aware, it is almost impossible to find a clear trademark no matter what mark you search, in which country or countries around the world, the chances are you will come up with an issue. Some issues of course are more fatal than others and part of the work we will do with you and our team around our offices is to try and workout what the level of risk are posed by those rights and are there ways around to help you try and manage those. The other thing I would say is if you do run a search and those search results come up totally free, it is probably a sign that it is worth rerunning them. As I said for the reasons I mentioned, if the search feels wrong, if the results are blank then it probably means it just needs to rerun again in some countries particularly in our region some of the officials are running these searches and then can perhaps need some prompting just to give you the actual information that is in the database. So in order to conduct these searches, we will need to consider the elements of both the trademarks and the designs as Jim and Kate has just run through which may need to be cleared and where I think the other thing to bear in mind particularly around managing budget is if the intention to offer the full range of products in all these countries so for example will the product contain alcohol or could it contain that in due course. If so, it is unlikely that you may want to register that in the UAE therefore we will not incur the searches in relation to those products here, we will just carry on with the other products you are looking to use in the relevant countries.
As Jim has touched on, there are some countries when it comes to designs where a logo could be both a trademark and/or a registered design particularly the EU registered community design. They are often used for both protection of logo marks as well as product designs. Because of that searching when it comes to designs in Europe can be challenging because there is no substantive examination with a medium design it does mean that there are a lot of designs on the register that you may have to go through to try and work out is this really a risk or not so the other thing around that is it can take time to clear the searches. The other thing around timing is when to start them particularly with the design so how final is your final design? If at this moment the design is say half way there and there could still be some significant changes, is now the right to conduct those searches or are we better off leaving it for another few weeks so that we can have something closer to the final design to search for you. You can of course press ahead now before it is final but what we would advise then is you run top up searches once you are close to a final design just to make sure that any new elements are also clear to use.
The other issue to bear in mind is not just search and register so there are unregistered rights in many countries so in the UK you may have to conduct common law searches to see whether there are any unregistered trademark rights or unregistered design rights that may pose issues to either your trademark or design elements. These can take time and also can be more costly so again it is just factoring this in as part of your strategy.
The other points you made just want to take into account as well as is at some point you may have say short term right so perhaps there will be a tagline that you will use over a festive period and for a few weeks only. In those instances, we would still recommend running searches to make sure that even your short term use does not lead to an infringement but you may not necessarily look to register a brand that you are only using for a three or four weeks period over the festive season but again searching and clearing that is an important step for you.
Then the other watch-out I would say particularly for the Middle East where I am based and the UAE is there are commercial search databases that are available through which you can run screening searches or clearance searches. Unfortunately for this region, the trademarks offices are reluctant to give full access to their database and so as such a lot of these commercial search databases do not have full rights or full information and so it is just something to be aware of that if you do run searches against commercial databases the data may not be complete and then the final thing which we will touch on shortly through Jian and Veronica is if you so start looking at local branding whether it is Chinese, Cyrillic or Arabic, think about clearing those rights as well and on that I will hand over to Jian in China just to run you through the considerations there.
Jian Xu: Thanks Jon. I think you have really given us a really comprehensive and a practical overview of clearing methodology which I think I learn a lot as well. So for China to do a clearance search is actually in one aspect easier and other aspect maybe a bit more complex. It is more easier because China has virtually no protection of unregistered rights so normally when Jon is talking common law searches, market research, those kind of things are usually not necessary in China so you do not have to spend money normally to search for unregistered rights or goodwill or trade names. You normally only need to do a search of registered trademarks only so that is going to save money. It can be more complex as also Jon pointed out the language issues. So if your brand is a direct leasing for like airport or Crown Plaza or Hell Ranger then you want to clear the Chinese translation or the closest Chinese translation of that mark as well because it might be blocking so that's for trademark clearance. For designs again normally you only need to do a search of registered designs in China but in practice because as Jim mentioned, designs in China are not substantially examined so there will be registered as long as formalities are met, so in practice many clients also normally just follow design without any clearings that is also normal. So I think that is all about China clearings and now Russia, I think Russia is also another territory which are unfamiliar to many international clients so I will hand over to Veronica to talk about Russia.
Veronica Fridman: Thank you Jian. In Russia you may also need to search for both [unclear 00:18:04.1] and translations because [unclear 00:18:10.8] here like in China is made in very sophisticated way, not always as straightforward copyright for trademarks. For example we have a local brand which is Black Carte or Chernaya Karta in Russian and this is actually a copy of Carte Noire coffee brand and talking about Hell Ranger's clearance search. I would advise the search for the translations of this trademark and also for the translation and the translation is ranger of hell.
Kate Swaine: Actually that is a really good point worth making Veronica and it is also worth bearing in mind that you do have other rights which both support and compliment your trademark rights so copyright is sometimes seen as the poor relation to trademarks but it is actually a really useful right particularly where you encounter issues around infringement of your logo, your packaging, your advertising or the appearance of your product and in some countries you can register your copyright such as China and the US but in other countries the copyright will simply come into being on the creation of the copyright work. You also need to think about other unregistered rights in for instance your goodwill, your reputation. In the UK we refer to those rights as passing off but in other countries they are enforced through the law of unfair competition and they can be really handy.
Veronica Fridman: Yes absolutely right. I agree with you Kate. It is very important in terms of filing in Russia the search for some prior copyrights because the trademark rights and copyrights and also company names rights they are all unequal. So for example if someone holds copyrights in certain title of a movie or book series or for example in some character it could be a character image or character name and these prior copyrights they may serve as relative grounds for refusal of a later file trademark and unlike many other jurisdictions Russia protects short phrases and as they said for example, it could be a movie title or a book series and it extends copyright protection even to short citations from poems and this showed works but they could ensure separate protection and be posed to trademarks. For instance I found out that there is a Hell Ranger book series offered by some Gina Farbor and theoretically if Russian trademark discovers the existence of such book series, and it may enquire from the applicant if there is any permission from the offer and unless you are able to prove that your rights to the mark are superior of if you have permission, you will get in trouble and may not get the registration in Russia.
And one more thing I would also mention that well-known names of local music brands frequently become subject of disputes for example between the trademark holders and former co-founders or artists, performers who used to play in those bands and if those persons do not consent to registration of the trademark then again this rights could serve as obstacle to registration of a trademark.
Shelagh Carnegie: Well than you that was very helpful and some of that was quite new to me especially the names of music bands being an issue Veronica and that was a great reminder on ancillary rights Kate thank you. Before we talk about which specific filings that we are going to make I note that Canada is a member of both the Madrid and Hague systems. Jon perhaps you could start us off I would just like to understand a little bit more about those systems and how I might be taking advantage of them?
Jon: Yes sure. Thank you Shelagh. So I will take you through Madrid which is the trademark system and then I will pass over to Jim to run through the Hague which is the design system if that is OK and cards on the table I am a huge fan of the Madrid system. It is a system which has its drawbacks which I will come across shortly but it is also a system that for the right type of trademark in the right way it does offer considerable savings for. So just to explain the Madrid system for trademarks it is a system which allows qualifying trademark owners from a member state of which there are 106 countries that are member states or jurisdictions that member states as of today to file a single application based on a home registration or application through the national office and then via WIPO and designate one of those 106 member countries. What it provides you with is a single administrative application which results in a bundle of national rights so for example designation into Bahrain, a country quite close to where I am sitting at the moment through Madrid will have the same effect and the same impact as a national filing into Bahrain. As I mentioned there are some drawbacks, one of which in my experience is if you are expecting to enforce your rights heavily or relatively often I would probably go down the national route over the Madrid route. The reason being with the national route you will be awarded a registration certificate which you will be able to show third parties or enforcement officials what your rights are in that country in order to take effect against counterfeits or infringement products. With Madrid because you do not have this certificate there are some enforcement authorities that do not quite deal with them in the same way as they should with a national filing. If you are just looking for a registration for registration sake, then I think Madrid is something to explore because the costs saving can be at least 20% or more which of course is important at this time of restricted budgets for all of us at the moment in time for brand owners.
The other thing to bear in mind with Madrid and I mention this if you are looking to start your filing programme now is that you do need a strong base to file on. It is not to say that you should not file if your application is pending but you do need to run those searches to make sure that there are no hidden issues out there that could come to impact your home advocation or registration because whatever happens to your home application or registration within the first five years will follow through to all the designations you filed so if your home registration is cancelled potentially that means your designations could be cancelled unless they are transformed to national filings.
The other potential drawback because we have just been touching on local branding is you are unlikely to be using the Chinese brand for example in Canada. Therefore you are unlikely to file there so if you were to protect the Chinese brand you are likely to nationally rather than through Madrid because you will not have the home registration to base it on so even if you decide that Madrid is something for you to use you will be filing Madrid and nationally in some of these countries for example the UAE is not a member so you would have to file your trademarks nationally here in order to obtain the protection and as I touched on with local language marks again you may file those at the national level which again we will touch on it shortly. With that I will hand over to Jim to take you through designs in the Hague system.
Jim Longwell: Thank you very much Jon so the Hague system for the international registration of industrial designs provides a helpful mechanism to acquire, maintain and manage design rights in the number of member jurisdictions so there is about 90 contracting parties at the moment. You can file a single application that can contain up to as many as 100 different designs and that means individual design not just by country but individual design so presently as if a number of major jurisdictions however are not members of the Hague opportunity and so national design will have to be prepared. The process does allow users to save time and money because although a single fee is paid by design and contracting party, it is only a single application so you are saving some additional costs through streamlining. Some of the contracting parties such as Canada and the United States, while they reserve the ability to examine your Hague application under the applicable domestic or patent law applicably and the office actions and other requirements may be occasion so the appointment of a local counsel still may happen. So the other issue to concern yourself with is that if you want to try and take advantage because there are differences, there is a lot of harmonisation obviously within the Hague system but there are differences between domestic laws. These are not well suited if you going to go through the Hague system because that is to try and do one thing the same way and many jurisdictions at the same time so if you want to take advantage of say peculiar practices in Canada or the United States or some other places, it is just not the greatest strategy to use so Hague is better for a simple design application. Jian, maybe you could talk about some of the requirements for China?
Jian Xu: Yes. I am going to talk about Madrid trademarks because there are a lot of questions on this regard whether I should cover China through the Madrid system or not. That's quite a big topic but I think Jon has made it very clear that a hybrid approach may be the best way, a balanced way so if I can summarise I think the factors to favour Madrid factors will be like you have a big portfolio may need to cover many countries and you do not have the urgency of a high frequency to heavily enforce in a particular country so those are the factors to favour Madrid and the drawbacks in China are mainly for Madrid at mainly two points, firstly as Jon mentioned if you want to have a Chinese character trademark local branding then you have to file nationally and another one is actually more important, we would normally advise the client that for the key brand if China is a key market, you had better go by national other than Madrid – why – it is because the trademarks in China by Madrid, usually have a narrower scope of protection containing international ones. So what is the reason? The reason is because China's unique sub-class system which I will cover later on but in China if you want to have a big protecting scope you need to cover as many sub-classes as possible but for Madrid because the trademarks are not adjusted to take care of the sub-class system in China so you normally have gaps to cover sub-class or they are narrower so for Hell Ranger certainly your key brand we would advise you to engage our local team to draft goods or services to cover as many sub-classes as possible so that for China and for designs, it is actually China is not a member of Hague so designs are filed in the normal way, but one thing to take care or to note is that for designs although China had in principle grace period of six months for designs but in practice those grace period only apply to very limited scenarios mostly exhibit internationally famous trade affairs, [unclear 00:31:08.2] so normally clients should not have any expectation of relying on grace periods in China so Jon mentioned in China you normally have to follow design before you admit the design to the public so that is for China. How about Russia? Veronica.
Veronica Fridman: Even if Russia and China have very much in common in this particular situation it is a bit different. They have become a member of Hague recently and of course Russia is a longstanding member of Madrid filing system and in addition to this to assist them we also have our unique regional system so called Eurasian filing system – it works for both – for trademarks and it is already functioning and soon we will also have our original system for filing of the designs so basically to get the design registration in Russia you can use three possible ways. You either can file a national application and this national application will be valid for five years and you may extend it for another five year terms after 25 years or you may use the Hague system or soon you will be able to file the designs in former user sub-countries which are, part of them are now members of the Eurasian systems. I will remind you of them. There are five countries including Russia, Belarus, Kazakhstan, Armenia and Kyrgyzstan. For example, if you talk about trademark filings so for Eurasian system, you can file a single application which is very convenient. You can do it in Russian because it is kind of official and good for all those countries and you can do it from one or receiving office and then the application is published and everyone can see it and file any objections within three months. Then local [unclear 00:33:18] have six months to conduct substantial examination of the trademark and when it is registered and this community registration could be arranged through any of the trademark offices for example it may be [unclear 00:33:34]. If it is not used within three consecutive years but the evidence of use in only one of five countries would be able to save your trademark because it would be sufficient to overcome the challenge.
Shelagh Carnegie: Thank you. Thank you all. Very helpful. I think we have come to the point where I would now want to decide on my filings, my specific filings so in Canada and the United States, I would file for word marks and standard characters for the broadest protection and to try and support my case that I do not need to translate the mark into French and Canada. I would file for our logo in black and white to protect it in any colour scheme and I might also eventually file as Jim mentioned for the shape of the bottle but in Canada I cannot protect a trademark for the shape of my goods until I can provide good evidence of sales and an acquired reputation across Canada so that would take some time. However, can you help me understand Jim what we should be considering in terms of design filings and what we should be considering for filings in the non-English speaking countries?
Jim Longwell: Absolutely Shelagh. Happy to do that so briefly important design elements are those features that set your product apart from others right and so as part of our early assessment here we take an inventory of all of these features to assist with clearance and filing so because most individual products have a number of design features whether they relate to shade or pattern configuration or other ornamentation, it is important to highlight those that are important to you. They are the ones that we want to focus our intention upon and often with common products, commonly available products and particularly in the consumer area models and footwear have a long history of design and use so small differences are often sufficient to avoid infringing of design registration. What does that mean? It means that restricting of design to a single important feature or a combination of a couple of features is often very wise to do and we try and do this through what is a partial design is what we say rather than a comprehensive design that relates to everything related to the product so that means that more than one design application or registration is often is indicated for a single product to provide the desirable scope of protection. Registering a design with many features is fine to counter costs but a season knock off artist will not merely copy an entire design. They are going to make changes while trying to maintain the design's spirit or identity so that being said not all jurisdictions may permit partial designs and so we need to clarify as I say through other aspects of your design strategy, where you are willing to file comprehensively verses individual features.
So then design representation requirements another issue which we should consider ourselves with when we are filing a priority application and these requirements particularly in the area of partial designs often vary from country to country if you are filing national applications so it is important to consider it a priority application including representations for various countries where you are headed eventually and then you can reduce or restrict out those copies of the design from your home application for example. So that way we can try and preserve our options as we march around the Globe and Jian could you talk to the nature of filings and so forth in China?
Jian Xu: Yes certainly. For trademarks, I agree with Shelagh's filing strategy of the elements to file but for China I have a few important points to make. Actually that is the priority that he will need local advice the most so I will highlight three points so firstly language issues. So you should think about advice the Chinese version of the Hell Ranger so as you can see from the slides we have demised some Chinese translation of the Hell Ranger so why is that important because although it is not legally required to have a Chinese translation of your English brand but normally the Chinese consumers or media will devise a Chinese version of your English brand and the people become more and more associated with that Chinese translation so that is actually what happened in the famous Viagra case so for Viagra the Chinese nickname or Chinese translation by the media like Big Brother or Great Brother which is overwhelmingly as you imagine overwhelmingly more famous than the original English brand so I think the company Pfizer failed to realise that but once they do it is too late so they had a ten year legal battle with [unclear 00:39:07] who registered that nickname in Chinese but in the end Pfizer are still losing it and had to rebrand the Chinese translation so prevention is better than cure. You should devise a Chinese version of Hell Ranger and a Chinese version so that is my first point. So my second point is about culturalism so I think the look was very nice, very, very cool particularly I think because you have two human skulls in it, it is very cool I think in the Western culture but in China, I think the Chinese examiners sometimes they might reject a trademark because of this two human skulls on the ground of unsung social influence. Although we can certainly file appeal and argue that the two human skulls are so small they not prominent at all but to save time and to save money on appeal, if the human skulls are not a key element of the branding concept, we will advise you to remove that and the file version of the local to make things easier. Finally, my third point is I talked earlier about the sub-class issues so this is also a big topic so if you have dealing with Chinese trademarks you must have encountered Chinese unique and perplexing sub-class system so what is the system so China adopts the international patents casing 45 classes [unclear 00:40:56]. That is all good. What is unique is that China further devised its class into sub-classes so why do they do that? The purpose is to mainly help examiners to determine similarity of [unclear 00:41:13] so they only need to tick boxes for examination so same sub-class they are similar, different sub-class they are not similar so that causes problems. So what kind of problems, so for example if you register Hell Ranger and sports shoes for example you might think no one can register Hell Ranger are sports stocks or sports clothing but on the contrary we can so why because in the sub-class system socks, shoes and clothing belong to three different sub-classes so they are not similar during examination so that is why we advise you for key brand you will look to engage local Chinese team to draft specific goods to cover those sub-classes that you are interested in so I think I covered a lot for China. I hope things might be a bit easier for Russia so Veronica.
Veronica Fridman: Yes you are right. It is somewhat easier because we do not have this complex sub-classes system but we may face the same issue of unsound social influence because of use of human skulls as you have mentioned and the bottle shape. The bottle shape may present a separate issue in Russia. For example, it may not be accepted for registration on the grounds that it lacks a distinctive character and even if it accepted for registration as a 3D trademark or industrial design. It may then later be challenged on the application of interested party your opponent for example in a trademark dispute but there were any other kind of intellectual property dispute and now the unfortunate example in our experience was a consolation of a very well-known bottle shape design for washing liquid. It is the application of the Russian competitor of confusingly similar products and even though those products have later been introduced to the market they are have been able to cancel all the implicit rights on the grounds of local distinctive character. So it should be taken in mind.
Shelagh Carnegie: Thank you? Jon
Jon: However UAE I think we have some good news for you hopefully Shelagh in that we are unlikely to face any issues with the skulls or the inherent registerability of Hell Ranger so good news there. There is also a useful quirk so regarding your question of do we file in colour or not. A useful quirk of the UAE trademark law is that it states positively that unless colour is claimed as an element of the mark, the law deems that trademark to cover all colours and so when we file the application and include the mark description etc. we will not mention colour even if we are using the colour swatch and it is deemed protective for whatever colour in due course. With regard to three dimensional marks dare I say it is probably too easy to register them in the UAE? In the 14 years, I have been based here, I have not seen any three dimensional marks being objected to by the officials nor have we dealt with any rejections ourselves. They proceed through on a prima facie basis without evidence of use. There are cases that have gone before the courts for cancellation but generally speaking the courts have upheld those to be registerable marks or valid registrations here. Because of this and touching back on designs as well to a degree it can take five years to obtain a design in the UAE but less than six months to obtain a registered trademark so what we often do is use the 3D trademark system in order to get quicker protection for you as a brand owner or rights holder over the design protection here so again it is just another quirk of using the local system to try and obtain swift protection for you. And the other benefit of that which we will touch on in a subsequent part of this webinar series is they do actually enforce those 3D rights as well.
Shelagh Carnegie: That is music to my ears Jon but I have to say the situation in China scares me a little Jon so thank you for your advice and as you all know everyone's budget is very tight right now, is there anything that we can be doing in terms of timing to help out my costs a little?
Jon: Yes sure perhaps I can jump in on trademarks and then I will hand over to Jim if that is OK for you on design Shelagh.
Shelagh Carnegie: Sure.
Jon: Because I think the priority system using Paris convention is probably the obvious way where we can try and spread some of these costs for you so I will just run through trademarks and then pass over to Jim, but in terms of trademarks what we can do is once we have filed those first trademarks for you or you filed them in Canada you will then have a six month non-extendable window to file those applications in other Paris convention countries but claim the filing date from Canada for example so what this means is rather than try and file everything in the next week or in the next two weeks you can spread those costs over the next six months. It does add to the cost slightly but not significantly in that you do have to pay for the priority claims and supporting documents but once you have that priority date it can be highly important and key for you. The reason being just as an example we have some active cases at the moment in this region for a client where if it was not for the priority date the client probably would have lost its mark now due to a competitor who went off to file the client's trademark but because we used the priority we have managed to start succeeding both in oppositions and cancellations around the region for the client and I will hand over to Jim to run you through designs.
Jim Longwell: Thanks Jon. So designs are similar in terms of the Paris convention and a six month window it is different then from patents which has a 12 month window so it is important to keep that in mind if you are thinking the designs really are patent rights. It is very much trademark like so yes you can file a single application at the beginning and then file for an application. The interesting thing for Hague applications, you do not need a home application to base that upon right so you can use that separately. They are independent in that sense and the other thing you can do is rely upon grace periods so if you have the stomach for it, it can be a little bit more risky and it does not always work for jurisdictions where you need to have an application on file but your subject matter has been made available to the public but in lots of cases we see clients who wait a period of time gauge some market response for example to a product launch and then file their design applications.
So the other thing that some people try and do is they try and take advantage of local customs and file more than one embodiment of a particular design in a single application arguing that it is effectively the same design and so they are trying to get more scope of protection. They are trying to, I would not say the system is not fair. They are trying to take full advantage of the system. The problem can be when an examiner in that office says no I think these are separate designs. If you do not pursue all of those designs and sometimes even if you do pursue them all and for example the divisional application, what you have done is you have given an infringer a foot hole to argue that their design change is a small design changes are sufficient to avoid your registration because you have kind of polluted the waters so to speak with your own variations of the design and because the office says that they are different designs they are going to get a narrow scope of protection so I am wary about a lot of cost saving strategies, they are not always far sighted, they are very short sighted so that is it for designs.
Shelagh Carnegie: Thank you. I think we are almost there. Kate, could you just very quickly tell me how Brexit might impact our plan?
Kate Swaine: You had to ask didn't you? Well, there are many aspects of Brexit which remain unclear but we have got quite a lot of clarity around the trademarks. So just very briefly from 1 January 2021, EU trademarks will no longer protect rights in the UK. So the UK IPO instead will create a comparable UK trademark for all rights holders from that existing EU trademark. So your EU trademark will continue and it will you the protection in EU member states and you will have a new separate UK mark that will be recorded on the UK trademark register, have exactly the same legal status if you had applied for and registered it under a UK law. It will keep your original EU trademark filing date and also the original priority or any UK seniority dates but it will be fully independent of the original EU trademark so it can be challenged, assigned, licenced, renewed separately so that really is it in a nutshell is what will happen. The key thing for you to remember Shelagh for your filing policy going forward is that you are going to have to apply for separate UK and EU rights.
Shelagh Carnegie: Great. OK. I think we are almost there. I just want to make sure I have got this tied up with a bow for my presentation tomorrow. Can you all just give me your top three tips of pitfalls for your regions so I have got those and I am ready. Veronica.
Veronica Fridman: For Russia, there are three tops tips you need to know. First you need to make clearance of the trademark for both translations and transliteration and get registrations for this version of your mark in all cases and even for the translations it is possible to make sense. Second it is a very bureaucratic jurisdiction so you need to make sure that all the agreements with designers, with agencies, any kind of local law and counterparties all be in writing, countersigned and all have very strong IP related [unclear 00:52:13] warranties and also non-infringement obligations and in Russia, those provisions are a bit different from those in European jurisdiction or Canada so it is advisable to seek local advice. And third, and it is connected to the second one you need to keep everything, all agreements, all acts on file. For example, the designers, logos and other talents in case you need to present them as evidence if you ever go to the local court and have to prove your rights. That is basically it.
Shelagh Carnegie: Jian?
Jian Xu: And for China very briefly three top tips. Firstly, register your key brand and key designs in China as early as possible because in China, [unclear 00:53:13], and secondly, trademark power rate or trademark [unclear 00:53:18] is a common problem in China so that ties up with my first point, prevention is better than cure. So third point, local branding. The longer and the more famous your products are in China, the more important the local branding so you want to control and devise your own Chinese version. That is my top three tips for China.
Shelagh Carnegie: Thank you. Jon?
Jon: Since coming to the Middle East, I have always said to clients think China so the points I make will mirror what Jian has just said and again the very first one being register, register, register. It is a civil law jurisdiction. There is a lot of power in waiving that single piece of a paper as a registration certificate to enforce your rights or for licencing etc. so registration is key. Again, localisation both in terms of the local language branding but also taking account of cultural sensitivities not just in the branding perhaps even the marketing around your product and services as well and similar to the third point of Jian, and something Jim touched on as well is be aware of false economies. Generally, the Middle East and the UAE is one of the more expensive countries for trademark protection and design protection but not having those registrations could be lead to you losing your business or worst case scenario and this has happened is your right to hijack by a third party who then bring a criminal action against you as the rightful brand owner to stop your sales in this market.
Shelagh Carnegie: Thank you. Jim?
Jim Longwell: So three key things to cement the importance of designs I think in a portfolio. It is scope and protection I think is important. People are always a bit wary so focus on those features in your product that set it apart from all those of others but also remember that to do that, you probably need to file more than one application for a particular new product. Consider a Hague filing strategy for a simple portfolio and simple design but be strategic and do not be afraid to use national filings where you have an important market for example and you need to take care to have a really good scope of protection under the national aw and then be wary of overlapping rights when they do and do not apply so as a Canadian company, let me tell you, a lot of people are not aware of the overlap between the Copyright Act and the design Act in Canada where if you introduce a new product with design features that also may have copyright features, if you produce more than 50 of those articles instances of your product which is more than likely for your boots and bottles then you can no longer rely on copyright to enforce the copyright rights that you may have. The Act requires you to have a registered design. So those are my three key tips.
Shelagh Carnegie: Kate?
Kate Swaine: Well predictably and I am sorry to end on a down note but my three top tips at the moment relate to Brexit. So number 1 consider whether the cloned UK rights will create any duplication on the UK register for you. If so, do you want to opt out of the UK cloned rights in order to save costs. Secondly, do you have any EU rights which have not been used in the UK to date? If so, you need to be aware that the use clock will start ticking for a five year period from 1 January 2021 so if you have no intention of using them in the future in the UK, do you really need to be retaining them? Finally, if you have any EU trademarks that have licences or securities registered against them you will need to make recordals against the UK cloned rights after 1 January 2021. That is it Shelagh.
Shelagh Carnegie: Well than you do much team. That was so helpful. Putting my Gowling hat back on, my Gowling WLG hat, which says Gowling WLG.
Kate Swaine: It is a great hat.
Shelagh Carnegie: We have time for at least one question. So you can send a question to the question and answer portal or you can bid in for my hat and we have a few already. So this is really a question for Jim. Could you let us know how long the length of protection is for design rights generally?
Jim Longwell: Yes so design right term is quite different I think around the world and there are I would say a base of a minimum ten years, usually 15 years is available. The United States is kind of peculiar as a 14 year term but they do not have a renewal period. In other parts of the world there are renewal requirements and you can extend design rights in some places as long as 20/25 years but they are not as long as typically copyright or trademark rights.
Shelagh Carnegie: OK. Thank you. Unfortunately we are out of time for more questions but you will get an opportunity. I would like to first of all thank our panellists so much for your participation today. Your comments and your thoughts were just incredibly thoughtful and helpful and thank you to all of you who attended our webinar today. We will be sending out a follow up email that includes that top tips in writing and our panellists contact information so if you have any questions for the panellists, do feel free to reach out of them. There will be a recording to today's events sent and it will also appear on our website and on Goexcel.com which you can see on the screen. So if you would like to watch it again or share it with others, please do and if you enjoyed this webinar then please consider signed it up the next instalment in our series where we will focus on the enforcement of the design and trademark portfolio as part of the lifecycle of a smart idea and that takes place 4 November and after that we will have a webinar on 2 December focusing on anti-counterfeiting and brand protection and of course we would love to see you there so thank you again and have a wonderful rest of your day everyone.