Lifecycle of a Smart Idea | Defending your trademarks & designs: global enforcement strategies

Charlotte:        Welcome to all of our guests today, wherever you are in the world. I hope you got some sleep last night and we can provide some distraction today and I can't think of a better way to do it than talking about trademark and design enforcement. My name is Charlotte McDonald and I'm a partner at Gowling WLG in our Toronto, Canada office. I'm delighted to welcome you to the next installment in our webinar series, The Life Cycle of a Smart Idea. This is the second in our trademark and design webinars. During this webinar, if you have any questions you can type them in the Q&A box at the bottom of the screen, and we'll have some time for questions at the end. After our presentation the panelists are also going to be available in breakout rooms if you have specific questions for any of them. Near the end of the webinar we'll be putting a link in the chat to start a new Zoom conference where you're going to be able to enter breakout room and talk to the panelists you're interested in talking to. So for this webinar I'm going to be playing the role of GC at HellRanger Inc., an ATV company with a reputation for edgy branding, which you may recognize from our first webinar in this series. HellRanger has recently begun expanding their brands into foods and beverages in Canada, the UK, Europe, UAE, Russia and China. They used the previous advice from Gowling WLG. We obtained trademark and design registrations in our jurisdictions of interest. I've recently started to receipt reports, however, of an infringing Hell Riser product being sold in Canada, the UK, Europe and Russia. The products are very similar to our HellRanger trademarks and the logos and designs are very similar as well. I've directed my internal team to start investigations and right now I've pulled together my legal team at Gowling WLG to provide advice and information on what our enforcement options are. I know this expert team very well and they work seamlessly with one another to deliver results on time and on budget. They include Jon Parker, a partner and a UK registered trademark and design agent in the Dubai office. Veronica Fridman, counsel and a patent attorney in the Moscow office. John Coldham, a partner in the London office and the global co-head of the brands and design practice. Manuela Finger, a partner and head of the Munich office. Ivy Liang, a new member of our Guangzhou office in China, and Nelson Godfrey, a partner and patent and trademark agent in the Vancouver office. Nelson, Jon, Manuela and Veronica, I've recently received reports that there are infringing HellRiser boots and beverages being sold in Canada, the UK and Europe and Russia. So far we've identified a distributor in Dusseldorf, Germany, and I need to present our options for next steps and some information on enforcement options to our CEO tomorrow. Can we start off with talking about what steps we can be taking now?

Nelson:            Yeah, absolutely. Thanks very much, Charlotte. I'll start and speak about the situation in Canada and pass things off to our colleagues. In Canada, really before considering specific enforcement steps we generally recommend that you fully investigate the scope of the infringing activity, that includes in Canada and elsewhere, and identify all relevant parties. We then recommend that you consider demand letters to notify relevant parties of your rights in Canada, and again, elsewhere as applicable. I'd emphasize really, at the outset, the international character of this matter and the possibility of enforcement in multiple jurisdictions. But we of course recommend that you send demand letters to any Canadian sellers and distributors. We'd want to consider the international character of the infringers operation and consider options in multiple jurisdictions. You really take holistic approach across different jurisdictions where there may be infringing activity. You told us that your trademark and design rights are registered. Of course registered rights are easier to enforce as in many jurisdictions, as the case in Canada as well, as registered rights give you the exclusive right to use the trademark and design across Canada. Unregistered rights can be enforced, but there's a requirement to prove reputation and goodwill in the unregistered mark or design, and that requirement to prove the goodwill can be expensive and can limit enforcement to Provinces in Canada where you've actually made use and obtained a protectable reputation in your mark. In Canada, if you wanted to pursue civil enforcement options, you'd likely have the option of bringing an action in either the Federal Court of Canada or in Provincial Superior Courts. We generally prefer the Federal court for jurisdictional reasons. ln fact 95%25 of all IP cases are brought in the Federal court and, in this case, because your relevant IP rights are registered we'd likely recommend that you consider bringing any civil enforcement action in the Federal Court of Canada. For remedies in advance of a final judgment, interlocutory injunctions are, in principle, available for IP infringement matters, however, they're traditionally quite rarely granted in the Federal court as evidence of irreparable harm can be difficult to establish. But in recent cases we've seen a trend to grant more interlocutory injunctions in some cases. Particularly those where there's strong and good evidence for irreparable harm. There's also pre-judgment remedies available in the nature of Anton Piller or civil seizure warrants, however, that's an extraordinary remedy and is generally more applicable in cases of counterfeiting, rather than a case like this where somebody's using or confusing a similar mark. Once you have judgment, on the other hand, injunctions generally follow the event in Canada. There's been an increasing trend in recent years to grant summary judgment in IP matters in Canada, with Canadian courts following a recent Supreme Court of Canada decision, calling for a culture shift in favour of summary judgment. In appropriate circumstances summary resolution could be an option here and that could be the quickest way to get injunctive relief. However, we need to do further analysis on that. Closing the loop, there are criminal penalties that are possible for infringing activity but they're generally rare, generally initiated by the Crown, so we generally recommend that you focus on civil enforcement measures. John, how about the situation in the UK?

John:               Thanks very much. Hi, Charlotte. Looking at enforcement options in the UK, specifically, we'd need to look carefully at the activity of the infringer. The names are obviously very similar and assuming the HellRiser brand does not pre-date your product launch, which I don't believe it does, I'd like to think you'd have an action for trademark infringement here. It may be, depending on the profile that you've achieved since your own launch, you can also rely on the brand's reputation to obtain extended perfection. But we'd need to look at this in a little bit more detail. On the design law side, it may be that you can take action on the registered and unregistered rights, as the HellRiser designs are very close to your own. So there's a decent argument for infringement. If the product was first launched in the UK or EU then an array of unregistered rights might be helpful. Both EU ones, which last 3 years and cover all aspects of the product and its surface decoration, and UK ones that last 10 years and cover just the shape. You should be able to rely on both types here which will increase your fire power. The registration should also be helpful provided they're not too detailed in ways that haven't been reproduced by HellRiser. Although it won't affect the current designs you're relying on I should just mention availability of these unregistered rights will be changing at the end of this year due to Brexit. So I just wanted to flag that it's worth talking separately about how to manage that transition for future designs that you create. In terms of enforcement options it is important to be commercial and to ensure that any steps that are taken are proportionate to the proper. If this is likely to be a major concern for your own efforts to market your product, which I believe it is, then you could bring legal proceedings and perhaps even apply for an interim injunction at the court. Unlike in Canada, summary judgment is unusual in the UK, but it's not impossible. There are options here deciding on which court to go for. There's now a lower cost court called the Intellectual Property Enterprise Court. This caps cost recovery at £50,000.00 and limits the steps that are required to get the case to trial. This often works out cheaper and the downside risk of losing is capped. There's also a scheme within the high court called the shorter trial scheme. This aims to run a case from start to finish within 12 months. It doesn't currently have any cost caps although they're being discussed. Meaning that if you succeed then you're more likely to recover a chunk of your costs. However, the downside risk of losing is correspondingly higher although this can increase the chances of settlement. If the infringement is not sufficiently commercially important to justify jumping straight into litigation, we could look at filing take down requests on the selling platforms, or even writing them a letter and seeking their agreement to cease infringing behaviour and being reasonable about the terms of settlement to encourage them to do so. This might, of course, have to be accompanied by a threat to escalate if they don't comply. So we'd need to discuss how willing you are to take that step if needs be. If you did decide, on the other extreme, to apply for an interim injunction then we would need to be able to prove that you've acted quickly, which it looks like you have, and also that there's a reason why this status quo should not be maintained. To put that another way, if the harm to you can't be compensated in damages but they can be compensated if it's later decided that the injunction should not have been granted, then the injunction before trial may well be awarded. They are quite hard to get but we've obtained quite a few over the years when the conditions warranted. We need to discuss more about why this case is likely to cause you more significant harm than simply lost sales. Manuela, why don't you cover the options in the EU generally and Germany specifically, given that I know your interim injunction rules are different to ours.

Manuela:         So, Charlotte, for the legal assessment I can basically tell you refer to what John has said. For the EU, I understand that you have registered EU trademarks and also community designs in place, so that's great. Also as the infringers EU distribution company is based in Dusseldorf, Germany, that's great news as this will enable you under the EU trademark regulation and the community design regulation to possibly obtain an EU right injunction against the EU distribution company, by suing them in the country where they are seated. So in these cases you can get a pan-EU injunction by just turning, in this case, to the German courts and so we will be able, if we succeed, to stop distribution throughout the EU so that would be great. If we intended to include other entities of the infringer that would not necessarily be a pan-EU injunction as well, so in many cases it will just be on a national level only where you can claim injunctive relief. In any event, even if we go for a pan-EU injunction, most of the sanctions and procedural rules are such that the national law, so I'll outline for you how it would work in Germany. So the first step would be that we'd send the warning letter to the infringer and ask them to submit a declaration to cease and desist. If we bear future civil action in mind, it's practical and mandatory to send such warning letter, that's based on case law by the German Federal Constitutional Court and the right to be heard. We always need to hear the other side before, for example, issuing a preliminary injunction. That's the first step. If the infringer then refuses to submit a cease and desist there is the option to file a motion for a PI and, in particular in straightforward trademark or design matters, preliminary injunctive trends are really common in Germany and it can be that you can get the injunction within 1 or 2 days from filing the motion. I have to admit that we have experienced a bit of delays due to COVID-19 but the general rule is that it's really reasonably quickly. Then once you have it you need to serve it upon the infringer and then you can practically clear the market fairly quickly and also in a cost effective way. Note that in order to obtain the PI the matter must be urgent. That means we need to act within say 4 to 6 weeks, that's the deadline which German courts apply and this deadline also varies from court to court. As we have already discussed we would probably turn to the Dusseldorf courts, which are great courts and very experienced in IP matters, I would strongly recommend filing within 1 month because they have become more restricted more recently so we should definitely file within 1 month from obtaining knowledge. But we're still in good time. We can still discuss whether to base the claim on the trademark or the designs. Designs have in the past not been used as often as trademarks because we are not formally examined for the validity before proceeding to registration but actually in the last few years they have actually proven to be quite robust in terms of enforcement. So it doesn't really matter whether we base our claims on the trademarks or designs. We would just need to look at the products more closely again. Veronica, can you tell us what steps to take in Russia?

Veronica:         Thank you, Manuela. Basically, the procedure is similar to what you've just described. We have the same cease and desist letters to the infringers before we go for formal action before the court. We should wait for at least 30 days for answer to our cease and desist letter. The next step would depend on how the infringer reacts because sometimes it makes sense to agree on out of court settlement and to sign an agreement on mutual settlement but you have to bear in mind, Charlotte, that these agreements are not approved by courts so this is just party to party contract, with all the drawbacks. In a case that we don't have a satisfactory answer, or no answer to this letter, we have full right to go to court. We can ask for preliminary injunction but, quite frankly this preliminary injunction, granted in the very rare cases in Russia, as long as trademarks or designs are concerned. For example, if you have a different case, if you have some problems with copyrights. If you would like to shutdown some music streaming service, or online movie theatre, that would work. Russian courts would immediately, within 1 day, grant this preliminary injunction motion and all you have to do is just submit a full statement of claim within 15 days. But it doesn't work the same, as I said, for trademarks and designs. In the course of the formal court proceedings we can ask for seizure of destruction of infringing goods or equipment which used for the money but it all depends on basically the rule and the merits. It's not granted of course before the final judgment is laid. Also, when we ask for recovery of the damages, or we may ask for stated recompensation. It's quite difficult to prove the amount of damages before Russian courts so most of our Western clients they normally seek stated compensation. That could be, for example, twice the amount of ... which may be quite significant amount. Or, sometimes claimants will seek for some fixed compensation. This could be anything in the range from €100 to €60,000 but, again, it's in the sole discretion of the court which amount it will award.

Charlotte:        Thank you very much. So my team has actually just handed me a report and going through it from their factual investigations it looks like the infringing goods are actually being manufactured in China. Are there any steps we can be taking to stop the infringing goods at the source?

Ivy:                  Yes. Thanks for reaching out to us, Charlotte. To answer your questions there are many ways to stop the infringement in China. For example, the civil litigation, the administrative complaints or even criminal actions, however, we propose that we may initiate two possible actions at this stage to hold back the infringement and protect our business. The first one is to get the preliminary injunction granted by the court. The second one is to seek the help from the Chinese Customs. We may now also seek the relief from the court, for example, preliminary injunction as mentioned my colleagues. The court will consider some factors to decide whether or not to grant the preliminary injunction of course. Generally the effect of the preliminary injunction will remain until the final effective judgment. In China here does successfully help our client get the preliminary injunction in a similar trademark infringement case like this. In that case they provide ... and persuasive to show to the court that the infringement was highly straightforward and significant. Therefore the injunction was granted even at the early beginning of the proceeding. My personal observation is that as the logo HellRiser highly resembles HellRanger's brand and infringers apparently using this logo in best faith. We stand quite a chance of acquiring the preliminary injunction from the courts. Secondly, considering that the infringing products are in the market right now, we may also think about filing complaint to the Chinese Customs. The privilege of doing this is to shut the door immediately and stop the exportation of more infringing products to your business market as soon as possible, of course. It is possible that the Customs will seize the infringing products in this way as the sources have been blocked. You may see dramatic drop of the quantity of the infringing products in the markets instantly. Generally speaking, it is very efficient to stop the infringement temporarily. As far as we understand you haven't submitted the application for the Customs recordal in China Mainland. If that's the case we'll need to submit the application with detailed information of the infringing products. Which has extensive evidentiary requirements. For example, the name of shippers and consignee, the port, the time, the transportation of import and export of the infringing products, etcetera. But after you have applied for the Customs recordal we would then only need to provide some clues and general information we obtain at the moment and the Customs would then analyze and take corresponding matches. According to our previous experience some Customs will select and check the suspicious products at random. Therefore we surely recommend that you apply for the Customs recordal in this regard. We can work with our colleagues, of course, in other jurisdictions to provide the service globally. At the same time I would suggest that a private investigator should be introduced to do more in depth investigation. We can then collect more information on the supplier activities and devise some more robust strategy to deal with the infringements. Whether this is required will depend on your objectives, ... of course, in the times of infringing companies. John, can you talk about HellRanger's options in the UK?

John:               Of course. As these aren't counterfeit or even parallel traded goods it wouldn't be possible, not very commonly possible, to stop them at the border. However, we could seek assistance for an investigator, either here or in China, to try to locate the possible route of the goods and to seek an injunction to prevent them from being distributed, once in the UK, before the goods fan out in different distribution centers, and so on. We could also try to discover the likely retailers who'll be stocking these goods and preventing them from selling them. These injunctive options only really work if we can succeed in showing the irreparable harm, as I mentioned earlier, and in this case the goods are not already on the market. As they aren't really on the market that will help because the status quo is in favour of them being kept off the market. Nelson, what's the position in Canada?

Nelson:            Thanks, John. In Canada, as in some of the other jurisdictions we've discussed, there's a government program in Canada. It's called the RFA, or Request For Assistance program, whereby brand owners can record registered trademarks. This provides increased options for enforcement and you can request assistance in the seizure of counterfeit goods, however, as is the case in some other jurisdictions that generally applies primarily to counterfeit goods and generally not to confusingly similar goods, or goods that a party alleges are confusingly similar. So while it's generally important to consider registering your rights of that program, and we certainly recommend it, it may not have particular bearing inside this one. Manuela, how about the situation in Germany?

Manuela:         It's actually it's quite similar. So there is the option to file a Customs recordal to prevent the goods from being shipped into the EU. So ... recorders could be filed based on an EU level or on a national level. As John and Nelson said before, as the marks look identical, it may be more difficult for Customs to pick up the products. However, you must have only registered your trademarks but you can also register your designs, as this can help to pick up infringing goods. In our case the products are quite similar. Also, within the Customs and within the application for Customs action, you can identify known infringers. You can identify known shipping channels or suspicious shipping methods and the like. All of this should be presented in an easily accessible way because Customs usually don't have much time. It has really proven to be very suitable and, discussed some time ago is also doing a Customs training. German Customs arrange for workshops a couple of times a year, which usually a good number of representatives from all the Customs offices attend. It's really useful to educate Customs about the product and what they look like. We have experienced in the past, in particular with designs, that following a workshop at some point in time Customs really picked up products to which were only infringing designs but not trademarks. So that's a great tool and I would really recommend it in order to identify the source so we can either do test purchases or, obviously, in the course of Customs actions or by using our investigator we could find out more about the manufacturer.  In terms of Customs action we would usually get to know about the sender of the products, etcetera, and whenever these products come from China we would also, obviously, turn to Ivy and her team. Apart from that we can obviously identify local retailers and selling the product and go after them, if necessary.

Charlotte:        Thank you ... ...  It sounds like we're definitely going to need to look into Customs recordals and setting up an anti-counterfeiting program as we are concerned about counterfeits. I'll set up a meeting with your colleagues to talk about that in December. Looking at the report I was given, I was taking a look at it as you were talking, and it looks like the goods are also being shipped through the UAE from one of our distributors. Jon, is there anything we can do to stop them there?

Manuela:         Hi, Charlotte. Thanks very much for this. In considering the possible actions with Customs, here in the UAE, they're probably three areas we need to consider. What steps has the brand owner taken to protect its trademarks here? The position about Custom recordals and then what are the steps with Customs we may be able to explore to try and seize those items. As you'll recall from the meeting we had recently when you expanded the HellRanger products lines, we did register your word mark and the logo here in the UAE, following that previous meeting. As mentioned in that meeting, a UAE trademark registration is a Federal route, so it covers all seven Emirates of the UAE. Very similar to a US Federal registration covering all the States. As things stand today you do have Federal registrations here in the UAE that you can look to enforce. However, when it comes to enforcement, the enforcement's actually carried out at the Emirate level. For example, if we find out that the shipment is likely to come into Ras al Khaimah, which is a port to the North of Dubai, then we will need to enforce those rights in Ras al Khaimah, which will mean have you actually recorded the trademark with Customs there? If you haven't then we will need to take steps to record the trademark with customs in order for them to look to take action. The other thing to note is whilst we have the seven Emirates there's no Federal Customs recordal system. Only five of the Emirates allow for recordals so you have to record in each of the relevant five to get the strongest protection through Customs here. Through the intelligence we see from the business or from our colleagues in China, for example, if we find out that the shipment is coming into Ras al Khaimah, but it's been transshipped only through the UAE, then that does pose some difficulties. In that the position of Customs here is if it's only for transshipment, and those products aren't coming on shore for distribution in or from the UAE, then they will allow those products to carry on to the port of destination. It's only if that shipment coming in is being broken up where some of the goods are perhaps being transshipped, but some of the goods are coming on shore and will be distributed in or through the UAE, will we likely be able to have a chance for Customs to seize those items? Again, it's more likely that it will only be the items that come in on shore they'll be willing to take, and items for transshipment may just be allowed to carry on. The issues around transshipment with the UAE is something that is being addressed. The UAE is actually on the watchlist through the US TR301 Special Record, for a few reasons, one of which one of the largest is transshipment. As it's been touched on, the other issue we do need to bear in mind of course, as a few colleagues have mentioned, the marks at issue aren't identical. So there are differences with the word marks. Therefore this presents a complication as to whether Customs will take action or whether Customs will say, "You need to come back with a Court Order which tells us these marks are confusing and then we will take action for you." If we're able to show that it's a relationship between the parties, we could potentially use this as well as the obvious similarities and overlaps fitting the products and the marks, to try and persuade Customs that this is a clear infringement and therefore you are able to take action without a Court Order. As always, with enforcement its information, information, we'd need from the business or from the investigators in order to go to Customs to give us the best chance of seizing these items for you.

Charlotte:        Thank you, Jon. You raise a really good point. I actually finally finished going through this report and it looks like the identity of the other distributor is related to us and it is actually our current, and soon to be former, distributor in Russia. Veronica, what steps can we be taking in Russia to stop them?

Veronica:         Thank you, Charlotte. As a right holder, generally initiate criminal administrative or civil proceedings against the infringing distributor. Criminal proceedings are difficult to control. Since this is a public rather than a private case and you're all right holder and representatives will be limited. That is why most of the trademark owners are perceived mostly administrative or civil proceedings against the infringers. The administrative proceedings may be initiated before the Customs or ... is dependent on the facts in this case. I understand that you have ... on counterfeiting on December 2. So I will not discuss Customs procedures in Russia in more detail. I will just only mention a few things. Customs watchlist is one of the most commonly used instruments here and works of copyright, registered trademarks and registered industrial designs may be included in that list. Also Customs may be able to stop the infringing goods coming in to Russia. The drawback of the Customs watchlist here is that Customs may occasionally stop imports or exports of genuine goods if information on a particular authorized importer or exporter has not been provided. So that should be taken into account. I believe the best course of action, we should definitely conduct a preliminary investigation, and analyze the infringement facts. First of all I would recommend investigating the state of the Russian distributor to get more facts and collect evidence. I guess ... here as well as in other countries to hire private detectors and who ... all the things may verify the location of their house, the distribution rules and also conduct test purchases of infringing products. On second, it's important to distinguish between ... imports and trademark infringement because Russian enforcement in courts might be supportive to ... importers as direction to EU and US sanctions against Russia. While use of third party trademarks, in the form of indirect or direct infringement, of course is treated differently and you have full right to apply either to the administrative authorities or the court dependent on circumstances. It is advisable to check if the distributor has registered or applied for registration of HellRiser trademark. If it has registered the trademark then you have to pursue different proceedings, in parallel, because Russia uses bifurcate system. That means that trademark infringement claims should be brought before the State Commercial Courts while the trademark revocation claims will be separate body. This specialized chamber for claimant disputes on the Russian trademark and patent office. Of course, these actions cannot be combined into one single action. It's also a question whether you are able to get stay into proceedings, because it is in the sole discretion of the court, so the litigation strategies should be formed very careful when we get our facts on the infringement.

Charlotte:        Thank you, Veronica, and you actually raised a really good point. So I just checked and it looks like the HellRiser infringer has filed some HellRiser trademark applications, and potentially design applications, but it doesn't have any registrations yet. So what steps from sort of an opposition perspective can we take to block these applications? Manuela, can we start with you?

Manuela:         Yeah, sure. The trademarks, the applications, we cannot obviously file oppositions against them based on your rights. The normal opposition proceedings available for designs, just because they are just examined for formal requirements before they proceed to registration. But there is similar to opposition proceedings, we can file for cancellation of these designs, which we can base on your earlier designs but we can also check whether we can base them on earlier trademarks or copyrights. Apart from that we can obviously approach HellRiser and just ask them to take the applications back, for example. I will pass on to John to talk about the UK.

John:               Thanks, Manuela. The design position is exactly the same here. Due to the battle of the moment it's the same system. The strategy here depends a little bit on the overall enforcement approach. At the very least you should be filing oppositions to the trademark applications, as Manuela said. If you do decide to start legal proceedings, you could then ask the registry in the UK to stay the opposition, pending the outcome of any legal infringement proceedings. That would mean that your oppositions wouldn't add unduly to the costs of the overall strategy. That you will have reserved your rights to attack those marks. Nelson, perhaps you could cover off the position in Canada.

Nelson:            Yeah, thanks, John. Canada has a very robust trademark opposition practice. Oppositions are available to other trademark owners with registered rights, as well as trademark owners without registered rights. As is often the case, there are less evidentiary requirements if you have a registration in place, which you do here. At the outset I recommend that you institute monitoring services for any applications filed by the other party. In Canada that will be tracked when the applications are advertised and make sure that you oppose in a timely fashion. We can also offer monitoring services. You can track developments in the progression of the applications. You can see when the applications have been examined. Whether your marks have been raised as a possible bar to those applications and any other developments with the applications as they progress. Looking at the opposition, specifically, there's a new section of the Canadian Trademarks Act that allows for oppositions based on bad faith. That section was recently added to the Trademarks Act, and it's an open question at the moment, the test that will be applied by the Trademarks Opposition Board to assess whether a mark was filed in bad faith. It's not clear to me whether that would apply here, given the relatively little law on the subject, and we'd have to do some further investigations. But in any event, confusion with your prior use, your prior registered marks, would generally be the focus of any opposition proceeding. Another option that was recently introduced by the new Canadian Trademarks Act is what we call third party rights notification. That's a procedure by which a party who owns a prior filed application, or a prior registered mark, can bring that application or registration to the attention of an examiner, who's entrusted with the examination of a later filed application, and basically ask if that examiner consider the prior application or registration in the course of prosecution of the later filed application. That third party rights notification can be filed by any third party at anytime before a trademark application is registered, however, as a general practice we recommend that any such third party rights notification be filed before advertisement of the party's mark, as it's generally more difficult and the examiners, we find, are less likely to clawback advertisement of a party's mark. If you took this approach and you were considering filing a third party rights notification the examiner may set you to mark against the other party's application, could pose a bar to the other party's application and you'd avoid the costs of an opposition. So that said you may want to wait until the other party's application is examined, substantively to see if your prior rights are raised by the examiner, before you take any specific steps with respect to that third party's rights application. In terms of designs, some of my colleagues mentioned designs, pending design applications in Canada are not published until registration. It's generally difficult to determine if another party has filed any design application. There's no opposition procedure available in Canada for design rights but there is an expunging procedure available through the Federal Court of Canada. So if the other party has filed an application, and it proceeds through registration, we could in all likelihood seek to invalidate in the Federal Court through expunging proceedings. Jon, could you talk about the situation in the UAE?

Jon:                 Thanks, Nelson. So the position here, Charlotte, is because we're looking at the mark as HellRiser rather than HellRanger, the marks are not identical and so the high likelihood is when their application is being examined the officials here will not raise your registration as an obstacle. So their applications likely to go straight through acceptance.  Your registrations are unlikely to stop. Therefore echoing what Nelson's just mentioned, it's going to be highly important to have a watch service in place, so that if and when their application is published, we're made aware through the watch service and then you can take steps to oppose. You will be able to oppose based on your earlier rights in the UAE and internationally whether they're registered or unregistered. Also arguing for the risk of confusion, of course, because the marks aren't identical. We can also rely on the relationship between the parties to help your position in the case, as well. Assuming that they filed for the logo on its own, and that logo's identical to your logo, then the other provision we can explore in an opposition is a provision under the Paris Convention which allows you to challenge a registration that's been filed in the name of an agent or representative without authority. This is a provision to cover situations exactly like this with distributors, or other former business partners, have tried to misappropriate the international right to sell this brand. It's a provision I've used in further oppositions down the years which normally allows you, if you succeed with it, to secure cancellation or refusal of the application, although in some countries such as the UK we have one instance where the application was actually assigned to the client on the basis of such a challenge. The danger if you don't oppose is that their trademark goes through to registration, or if you don't have a watch service in place and so were unable to oppose, their application can go straight through. They then have a registered right here in the UAE that they can potentially enforce, either through administrative enforcement or criminal enforcement actions. There have been actually instances here where in such circumstances the entity that's misappropriated the trademark has actually brought criminal or other enforcement proceedings against the rightful brand owner to try and seize the genuine products. I had a situation around 8 years ago here in the UAE where this happened. The claimant wasn't aware that a former customer had gone off and registered its trademark but became aware when it was contacted by the administrative enforcement officials who were planning to raid their warehouse to effectively seize all the genuine products. This is something that can crop up here. So it's important, one, to register your marks and, two, to have the watch service in place so that you're able to oppose and stop such filings going through. In ...  the design filings in the UAE, similar to Europe. There's no substantive examination here. It's formalities only, however, it still takes 5 to 7 years from the filing stage for the application to be granted. The publication of the application proposition takes place around 5 or 6 years after filing. So what that means is we don't necessarily know at this point if they've actually filed an application. It may be 5 years from now before we find out. So what I would suggest, if as part of this coordinated effort to oppose and challenge the use and attempted registrations is a possibility of a settlement, we do need to make sure to try and get undertakings from them about the UAE that they haven't filed for designs, or if they have, they will take steps to withdraw those designs as part of any settlement discussions. That's it from the UAE. Perhaps I'll hand over to Veronica now so she can discuss oppositions in Russia for you.

Veronica:         Thank you so much. It's great that you've mentioned the provisions of the Paris Convention which are, of course, also apply here in Russia as a member of the International Conventions. I'll just talk a little bit about local specifics, to add to what you've just said. We can file informally a position against HellRiser trademark application here in Russia. This procedure is not formalized in the applicable laws or regulations of Russia Patent Office but in practice we have done it for many of our clients and we were lucky to get ... in most of them. What you need to do, you should have as a client a watch service in place, and whenever you see anything ... you should contact your local trademark advisor. The trademark advisor will file this informal opposition and for this purpose you need to hire a certified Russian trademark attorney just like for any other formal action before Russian Trademark and Patent Office. What we usually do, we collect as much evidence as we can to attach to this informal opposition, because it's very important to alert the experts at this early stage because it will save you a lot of cost going forward. The experts are very attentive to these informal oppositions and they take them into account as they review the evidence. For example, as one of the Russian specifics, I can tell you that prior rights to HellRanger company name forms a separate basis for trademark opposition, or trademark consultation, because these designations are confused in the singular. It is an important factor in case your trademark registrations are still pending or if, for example, the infringers trademark has an earlier priority date. Ivy, I wonder what are the specifics in China?

Ivy:                  Yes, thanks, Veronica. It's very interesting to know about informal opposition procedure in Russia. I would just try to give a shot that's simple and summarize into aspects. First, as Charlotte mentioned, the mark of HellRiser has not been registered successfully here. We will then file for the opposition against it in the first instance. Otherwise we'll need to file for the validation of the registered trademark, which will be more time consuming, of course. As China adopts the bifurcated system here as Russia the civil proceeding of trademark infringement will not be accepted by the courts if it involves the conflict between two registered trademarks. Therefore we'll need to invalidate the registered trademark of HellRiser first, if it is registered successfully, before initiating the civil proceeding. Second, the legal concept of design is totally different here in China. Your design may be protected by corresponding laws of exterior design patents or copyright, respectively. It would be very difficult for the infringer to apply for the exterior design patent here as you have used this prior design and the design has gone public. We can easily invalidate this even if the application is successful. If the infringer asserts that it owns the copyright of the product it will be difficult to, because on the same token, you can easily prove the registration dates of the product which is prior to the infringers. Therefore we opine that it would be easier to block the applications of design and the trademark. Any other comments from you, John?

John:               Thank you, Ivy. At least just more some general points from me, really, about oppositions. I think it's important to remember when you come across a third party application, through a watch notice that you decide you wish to oppose, just make sure you conduct research into the applicant to see are they actually using this trademark in commerce as well. So that as well as taking steps to try and stop a registration you also deal with the issue around you use. There have been instances where this has been overlooked. So of course you want to try and stop any acquiescence points. The other point as well is don't overlook online use. So there may well be domain names, social media accounts, social media handles that you will need to take action against through enforcement or take down requests. Of course we have the complication that we've touched on a few times now for this specific case, of the difference between the HellRiser and HellRanger, but again it is something you should explore further in order to have a robust enforcement program or strategy against this third party infringer.

Charlotte:        Thank you all very much. That's been a lot of very good information. Since I need to present this to our CEO tomorrow I'm going to summarize our global strategy now. Then ask you for some of your top tips. So, in order to protect the HellRanger brand we're going to need coordinated steps globally to address both the infringement and the HellRiser applications. While we'd ultimately prefer to settle this early, and get this over with and move on with our business, these infringements are very concerning to us and potentially very harmful for our business. So we are going to be willing to proceed with litigation if this can't be resolved. For first steps we're going to need to determine and double check exactly what trademarks and designs we have registered in each jurisdiction and while I check with your colleagues on that, we're also going to need to continue to conduct our factual investigations to determine exactly the scope of infringement and how the goods are being shipped. Once we have that information we'll want to act quickly to stop the products at the source and also take steps in the jurisdictions where the infringing products are being sold. It sounds like we should probably prioritize looking into a preliminary injunction in China, where the goods are actually being manufactured, and I also understand we probably have  better chance of a preliminary injunction since we can also base it on bad faith. We can also consider Germany as a potential option for the preliminary injunction, as that's where one of our distributors are located, and it potentially could result in us getting an injunction that covers all of Europe. Since the goods are being manufactured in China we'll want to take steps there to stop the products from leaving the country, through legal proceedings, and also Customs recordals where they're available. We'll want to look into recording our trademark and designs with the appropriate Custom authorities, globally, and making sure to educate them on the brands. Then we'll need to coordinate, at the same time, sending cease and desist letters. It sounds like those are required in most jurisdictions and eventually start civil proceedings if we aren't able to resolve the dispute just through negotiations. Once our investigations are complete I'm definitely going to be reaching out to you again to talk about strategically where it makes the most sense to start a proceeding. Then finally, with respect to the HellRiser trademarks and design applications, we're definitely going to want to oppose where it's available or cancel where they're not, and we're going to have to set up watch notices on these applications to see when they're available for opposition. The possible negative consequences of HellRiser potentially obtaining registrations, and then enforcing them against us, really scares me and we're definitely going to be talking with you guys to set up watch services.

                        I think I have what I need for my meeting tomorrow but just to make sure I'm not missing anything can you tell me your three top tips that I need to know for your regions?

Jon:                 Hi, Charlotte. If it's okay I'll jump in first. Not to be accused of miscounting on today of all days I'm going to pick four tips, if that's okay, but combine them. So the first tip from me is to make sure you register and you record your rights in the UAE. Register them as trademarks, as designs and then make sure you record them where you can with Customs. As Manuela touched on, support those rights with training of the enforcement officials. Give training to the Customs officials and the administrative enforcement officials to obtain their buy in. As you heard from Manuela's example, there does seem to be proof that by carrying out the training they are more willing to take action on your behalf. The last thing is, we touched on a few times, is make sure you have a watch service in place so that you're made aware of potentially conflicting marks as soon as possible.

Nelson:            Great. Thanks, John. I'll jump in for Canada as well. In Canada I suppose my top three tip tops, or three tips with maybe some additional points on a couple, so I think the first and I think you'll hear this from a number of our colleagues as well, register your rights as soon as possible. Particularly in the design context where enforcement of designs is particularly difficult outside of the registration context. Registration facilitates enforcement, allows you to register your mark with border enforcement programs and provides passive protection against applications filed by others. For my second tip, I'd say that interlocutory injunctions, generally difficult to obtain in Canada, but the recent trends are more favourable especially through the Federal courts and enforcement in IP matters. Then on the other hand whereas permanent injunctions generally follow the event in Canada, except in rare cases, and that kind of feeds into my last point which is the recent trend in favour of summary judgment in intellectual property matters and summary judgment in certain circumstances. We'd have to investigate further here, obviously, may be the most cost effective and timely way to obtain injunctive relief in appropriate circumstances. Veronica, do you want to talk about the situation in Russia?

Veronica:         Yeah. Thank you, Nelson. First of all, apply for registration of your trademarks and designs before entering the Russian market. But even if you haven't done so remember that you can still protect yourself based on prior rights to the company name. Second, watch out for ... applications and use informal oppositions as a tool ... at the early stage. Finally, if you decide to sue your Russian distributor remember ... ... ... and whenever possible try to apply for jurisdiction of even Moscow or St. Petersburg courts because they're much more professional compared to regional courts in remote jurisdictions. This has been my tips and, John?

John:               Thanks, Veronica. I suppose my first tip is just to remember that there are so many ways to resolve issues like this. You don't have to go straight in first with the most expensive option. Taking a moment to devise a strategy that fits the commercial goal will usually be a good use of your budget. If you do decide to litigate my second tip is the UK now offers many different options. Some quicker, some cheaper, some lower risk, some higher risk but they're more likely to force the other side into settlement. There's no one correct option and the UK's made the long way in the last years to dispel the old adage to the new. It was expensive and slow to litigate here. If you don't want to consider an interim injunction do move as quickly as you can. If not cheating, this is my third tip, the designs are really worth considering properly. Unregistered rights in particular have seen great success in the English courts in recent years. So it's worth taking advice on the best way to ensure that you qualify for them and are in position to prove that they're yours. Manuela, can we go to Germany now?

Manuela:         Yeah, sure. I'm repeating what everyone else already said. Make sure you register your rights in the countries of relevance. For the EU, obviously, your trademarks and community designs are great and cost effective tool to cover the whole of the EU, as they can't also invalidate based on national rights, you may potentially consider national registrations in countries of particular relevance to your business. Second, in an infringement scenario we cited earlier identified your earlier rights you can rely on, including potentially non-registered rights on a local level, on a national level, identify where the infringement takes place and where the infringer is seated, because if an infringer is seated in an EU Member State and you can rely on harmonized rights like a EU trademark. You may be able to pay your enforcement actions accordingly and even be able to get a pan-EU injunction. The third tip is to also consider other cost effective measures such as take down procedures. So I'm turning to Ivy for China.

Ivy:                  Yes. Thanks. Three top tips. First, file your rights early. As China adopts the first bifurcated system of patent and trademark which is contrast to our first to use system in the US and Canada, we suggest HellRanger to file or register the rights as early as possible, as what my colleagues have mentioned. Two, apply for the Customs recordal, of course, as the Customs will select and check the suspicious products at random, proactively. If HellRanger has applied for the Customs recordal it will be more efficient and cost effective. Third, don't hesitate to approach our colleagues nearby and seek their professional local advice. Our multi-dimensional strategy from different jurisdictions will definitely give you a blue sky to protect your multiple times of copyrights. Those are my tips.

Charlotte:        Thank you. Thank you all. So switch again as my role as GC, I just want to thank all of our panelists. Before we end I just want take a brief moment to talk about INTA. With INTA's annual leadership meeting moving online this year we unfortunately won't be able to meet with you in person but we're still taking an active role and Cam will be delighted to meet with you and your team using INTAconnect. Across the 2 weeks that INTA will run our members of our team will be available to meet, discuss hot topics, review ongoing work or just catch up on how you and your team are adapting to challenges that we are facing at the moment. So contact us through INTAconnect or email us to set up a meeting. Our next webinar in this series is going to take place on December 2 and we'll focus on anti-counterfeiting and you should be receiving an invite to that webinar shortly and we really hope to see you there. Finally, now that the webinar is over, you'll see that Catherine put a link in the chat to a new Zoom meeting. If you click on that link it should open a new Zoom session, which will let you join a breakout room to talk to one of our panelists, if you just have some questions or just want to say hi. I understand it goes best if you have the new version of Zoom, but if not, Shannon or one of our colleagues is going to be in the Zoom meeting and will help direct you to where you want to go. Thank you all again for coming and I hope you have a great day.