Cycle de vie d'une bonne idée | Stratégies mondiales sur l'annulation des marques de commerce (Webinaire en anglais)

Kristen: Alright. So let's get started. Welcome to today's webinar on Global Trademark Cancellation Strategies and thank you for joining us. My name is Kristen Kilroy and I'm an associate in Gowling WLGs Toronto, Canada office. Our webinar today will begin with a 1 hour presentation were I will be playing the role of the general counsel at Hellranger Inc., an ATV company with reputation for edgy branding that you may recognize from some of the previous webinars in this series. Following the presentation portion of the webinar we'll be transferring those who have signed up to various breakout rooms where you'll have the opportunity to speak with one of our presenters in a smaller group setting. If you've signed up for a breakout room please do stick around if you have time at the end of the presentation.

I'm the GC at Hellranger Inc. This is an exciting time for Hellranger as we're beginning to expand our brand into boots and beverages in numerous jurisdictions. As GC I'm managing and developing our global trademark strategy. It's come to my attention that there are registered marks blocking our new Hellranger brand in several jurisdictions. These marks don't appear to be in use so I'm interested in understanding what types of cancellation strategies are available to our business to overcome these objections and how we as a brand can protect our own marks from being cancelled in the future. To gain a better understanding of these topics I've pulled together my legal team at Gowling WLG. This expert team works seamlessly with each other to deliver results on time and on budget. They include Charlotte McDonald, a partner and trademark agent with Gowling WLG Toronto, Canada office. Kate Swaine, a partner and co-Head of Intellectual Property Global, located in Gowling WLGs UK office. Jon Parker, a partner and UK registered trademark and design attorney in Gowling WLGs Dubai office. Alexander Christophoroff, a partner in Gowling WLGs Moscow office and Yan Gong, a partner at a Law Firm in Chongqing, whom Gowling WLG has an exclusive referral arrangement.

Charlotte, you first raised the issue of cancellation after identifying a registration that could potentially block Hellranger's application in Canada. At a high level could you please explain what a cancellation proceeding is and what options are available to our business to remove this block in Canada.

Charlotte: Thank you, Kristen. I'd be happy to explain. So there are two main procedures that can be used to remove a blocking registration in Canada. Invalidation procedures and summary cancellation proceedings. I'm going to touch very briefly on invalidation proceedings and then move onto summary cancellations, as that's going to be the focus of our discussion today. So in Canada invalidation proceedings are brought through an application to the court, and depending on the age of the registration that you're trying to invalidate, there's a few different grounds you can use. For example, the trademark was not registerable on the date of registration. The trademarks not distinctive at the time of the invalidation proceeding which means a mark that later becomes not distinctive can be removed. The trademark has been abandoned which is similar to but not the same as a cancellation for non-use. The applicant for registration was not the person entitled to secure the registration or the application was registered in bad faith, which is a brand new ground of invalidation in Canada.

That was just a very brief overview of invalidation proceedings and the second type of proceeding, and the one we're going to concentrate on, is summary cancellations for non-use, or in Canada we also call them section 45 proceedings. They are based solely on non-use of the registered mark within a 3 year period. Since the blocking mark we're talking about today has been registered for more than 3 years, and doesn't look like it's been in use, a summary cancellation is a potentially more efficient and practical and cost effective way to remove the blocking registration. So summary cancellations in Canada are brought through the Canadian Trademarks Office and depending on steps taken by both parties it can be a very quick way to get rid of a blocking registration. While in Canada, in theory, the Trademarks Office can initiate a summary cancellation proceeding on its own, typically they're initiated when a third party makes a request to the Trademarks Office to issue what we would call a section 45 notice. The third party making the request just has to pay a fee and ask that the notice be issued. They don't have to show that they're an interested party. They don't have to show any evidence that the mark is not in use. They just have to essentially ask the office to issue the notice. The office has discretion and can decide not to issue a notice, but generally they will, as long as the mark has been registered for more than 3 years and has not been subject to a summary cancellation proceeding within the prior 3 years. The notice requires that the trademark's owner provide evidence of use of the mark, with all the registered goods and services, within the 3 year period before the notice was issued or if the mark was not used, provide the date on which it was last used and the reason for why the mark hasn't been used. If the registered owner files no evidence then the mark is expunged. In my experience this happens either when the trademark owner has no interest in the brand anymore, they're out of the business or they simply don't get the notice. Sometimes trademark owners who don't have agents, don't update their addresses with the office which means they don't receive the correspondence from the office. This is actually a really good reason why you should keep your address updated.

If the registered owner does file evidence, the threshold in Canada is pretty low. There's no requirement of a certain level of commercial activity or continuous use. The trademark owner really just needs to show that the mark was in use within that 3 year period with any of the goods and services in a legitimate way. If evidence isn't available for all the goods and services, the ones where there is no evidence are expunged and removed from the registration, and then the registration will survive for the goods and services where there is evidence. Which means that if the non-use relates to goods and services we care about, then we can get rid of those goods and services and potentially remove the block, even if the registration survives. Once evidence is filed the party that requested the notice be issued does get to participate but they don't get to file their own evidence and they don't get to cross examine, however, they can optionally file written arguments and participate in the oral hearing, if there is one. Decision is ultimately rendered by the Trademarks Office which can then be appealed to the courts. Kate, can you explain how it would be different in the UK?

Kate: Very happy to, yes. In the UK we have a number of ways, just as you've been describing, Charlotte, in which the proprietor of registered UK trademark can lose their registered rights. So you can lose them via expiry. You can lose them via surrender, revocation or a declaration of invalidity, but like you, today I'm going to focus on revocation for non-use. Which can take one of two forms. So firstly, there's been no genuine use of the mark, either by the proprietor or by any licencee, for the first 5 years following the completion of the registration procedure that's actually entered on the register, and there are no proper reasons for non-use. For mark on the international register that start date is when protection is conferred on the mark within the UK. Secondly, there's been no genuine use of the mark for a continuous 5 year period at any point and there are no proper reasons for non-use, again. Now if the revocation application is based on that second option, revocation can take place from the anniversary of the date when you ceased. Once that application for revocation on grounds of non-use has been filed, the burden of proof rests with the proprietor. So they have to provide evidence of genuine use or, alternatively, show that there are proper reasons for non-use. A mark can be revoked wholly or it can be revoked partially. So that means in relation to some or all of the goods and/or services for the detail in the specification. A mark won't be revoked in respect of those goods and services for which genuine use can be demonstrated and genuine use arises when the mark is used in accordance with essential function to guarantee the identity of the origin of the goods or services for which it's registered. The total use will not be genuine use, particularly if it's just done in an attempt to try and put that moniker of genuine use on the mark. Having said that, a small amount of use might be sufficient if it's truly genuine commercial use. When the registration of a trademark is revoked the proprietor's rights normally cease from the date of the application. Proceedings for revocation can be made by way of a counterplay as well, an infringement proceeding, so it doesn't have to just be a stand alone application. The application can be made to trademarks registry or to the High Court, but if there already court proceedings relating to the trademark in question, then the application must be made in the context of those proceedings.

To begin proceedings at the registry the application form has to be completed. It needs to include a statement of reasons and sent to the UK Trademark Registry, with the appropriate fee. If the trademark doesn't defend the application then the registrar will treat the application as unopposed and proceed to revoke the trademark or have it declared invalid. If the trademark owner opposes the application then we have a series of exchange of evidence that will continue and then later will be a hearing before a Hearing Officer or there may be a determination on the papers. So written submissions only.

What about appeal? Well, appeals from a Hearing Officer's decision can be made to the appointed person or it can be made to the High Court. An appeal to the appointed person is normally quicker and it's less costly but there is no further right of appeal. If the parties appeal to the court then the process may take longer, and it may cost more money, but the full range of the legal process is then open to them with further stages of appeal. Having given the parties an opportunity to make representations, the appointed person may actually refer the matter to the court, if they consider that there's a point of general legal importance involved, or if one of the parties has requested that the matter be referred and the appointed person agrees with their reasoning. So that's procedurally about it. Jon, how does it work in Dubai?

Jon: Thanks, Kate. Hi, Kristen. It's very similar to Canada and the UK insofar as trademarks can be cancelled here on the basis of non-use. The other type of cancellation is more limited though. It can be cancelled on the basis the mark was registered without a right. There are limited circumstances where it's possible for the ministry itself to cancel a registration, again on the basis the mark was registered without a right, but these are very seldom seen. Way the cancellation action is brought by a third party, on either basis, that party must be an interested party. So that's the first hurdle, for example, that you will have to show in order to be able to bring the action. So in your scenario, if the third party mark was raised as a citation that blocked your application, then that would make us an interested party in order to bring a non-use action, for example, against their registration here. The non-use period in the UAE is an uninterrupted 5 year period, however, unlike the UK position we've just heard from Kate, the law is silent on when that period starts. The law just says that it can be cancelled if a registered mark hasn't been used for an interrupted 5 year period. So it's almost looking back from the date of filing the action or the earliest, perhaps, that the cancellation action on non-use could be brought would be 5 years and 1 day after the application was filed, assuming it was registered at that time. But of course that means it could be registered for just 2 or 3 weeks before, but potentially if it hasn't been used, it could be open to cancellation.

In the UAE, unless the registration is being surrendered by the actual trademark owner, cancellation actions have to be filed before the courts. So we can't file before the IPO. They have to be before the courts and so they are full blown litigation matters. In non-use action, the initial owners will be on the applicant for cancellation to show that the mark is not being used. This can be through relatively straightforward evidence showing what steps you've taken to see whether or not there's evidence of sales here in the UAE, for example. Once it's filed the onus then moves to the registered proprietor to try and defend that action and prove either use or genuine reasons for non-use which we'll touch on shortly. There can be numerous hearings before the court to allow the parties to put forward submissions and supporting evidence but also the courts here have the option of appointing a court expert. The expert is purely to assist the court. So answering any questions the judge may have and normally that's through sitting down with the parties to seek clarifications or information from them to help prepare the report. The report isn't binding but it is something that judges can take into account.

Once the decision has been issued by the Court of First Instance. It can be appealed, first to the Court of Appeal, and then potentially to the Court of Causation. We recently, successfully defended a non-use action for a client that was based on the client's 3-dimensional trademark. So it wasn't non-use. It was a cancellation without a right. Fortunately we defended it but I'd thought I'd point it out just to show the speed in which that case went through. So it went through Court of First Instance, Court of Appeal and the Court of Causation within around 15 months of the claim initially being filed. So the UAE courts have really sped up in recent times. There is another important difference, I think, to raise about the UAE and also for some of the other countries in the Middle East. That is where a trademark is either expires or is cancelled there is a 3 year window in which it can still be raised as a block to third party filings for the same or similar trademark. So if you were to cancel this blocking registration, unless we ask the court to order that the trademark registry allow your mark to proceed, it could still be maintained as a citation even though you've successfully cancelled it.

In terms of success rates for cancellation actions here, it's difficult to say because being a civil law jurisdiction, the decisions aren't publicly available so we have to try and rely on cases we either bring ourselves or we see other law firms writing about. Information on that can be quite scarce. I think at this point I'll pass over to my colleague, Yan, who will introduce cancellations in China to you.

Kristen: We seem to have possibly lost Yan for a second so why don't we go, Alexander, could you tell us about Russia?

Alexander: Yeah. Thanks, Kristen. So similar to what Charlotte, Kate and Jon explained, in Russia there are also invalidation and non-use cancellation procedures. But distribution of a ... is just opposite to Canada so invalidation starts from the Trademark Office and non-use cancellation is always directed to the Intellectual Property Court. So speaking about the cancellation in the wider sense for both types of trademark cancellation, there is a strong bar on legal interests. I guess even stronger than in the Emirates. So the demands are quite high and the claimant has to prove it sells similar goods and services and has relevant plans to expand or already sells under this given brand and is being sued by the trademark owner. There is also a separate procedure if the trademark owner dies or the company is liquidated and I don't touch less common opportunities like abusive right and unfair competition but they also exist. As we concentrate on the non-use cancellation, I must say that the burden of proof with regard to the use of the mark lies on the trademark owner, like everywhere, and they generally should be proved for every position of the list of goods and services that the owners wants to keep, no sub-classes. There are two exceptions to the rule of proving every position on the list of the goods and services. First, is if the mark is widely known then the owner might prove its use for one position out of the group of similar goods and services. Second, if the client's legal interest is recognized only with regard for some goods and services. There is no need to prove use for the remaining part. Mostly due to the bar of legal interest the success rate by the claimants, in general, not with our firm, is only 49%25. So the window for the qualifying use, 3 years before the first start of the cancellation procedure and as it happens in the court, the claimant have all the rights to try striking the evidence of use. As I understand it's not applicable everywhere. Kristen?

Kristen: Great, and Yan, could you please tell us about China, how things differ there?

Yan: Yes, of course. Thanks, Kristen. Like in many other jurisdictions, non-use cancellation is also one of the most effective and cost effective means in China to remove a blocking registration. Given that the figure of new trademark applications in 2020 went up to over 9 million. As you can imagine there are a large number of trademarks that were registered for defensive purpose and have never been put into use. Any third party in China can initiate the non-use cancellation actions with the Trademark Office once the trademark has been granted registration for over 3 years. The party only needs to submit a simple form with a written request, without having to conduct any pre-filing investigation. The identity of the requesting party is visible to the registered owner but not displayed on the Chinese register. The burden of proof rests with the registered owner, who's required to respond to the trademark office within 2 months, by showing a minimum level of use of the mark in the market in the past 3 years. If the registered owner fails to submit any use evidence, sufficiently supporting use of that mark in the market, then the mark can be revoked and displayed on the register as invalid. The Trademark Office makes the decision directly and the requesting party has no opportunity to see the response from the registered owner. The decision can be appealed to the Review Board, afterwards, where the evidence of use is forwarded to the requesting party, then you will have an opportunity to find out the flaws in the use evidence. The Review Board's decision can be further appealed with the Beijing IP Court, then Beijing High People's Court and then eventually the Supreme People's Court. The owner's rights cease from the date of publication of the final decision on the register and the mark can no longer block any subsequent filing. One more thing, non-use can also be used by way of a counterclaim in trademark infringement litigation. If the plaintiff cannot prove use of the mark in the past 3 years, the defendant does not have to pay for the damage, even if the infringement has been constituted. Back to you, Kristen.

Kristen: Thank you, Yan, and everyone. That was extremely helpful and I now feel like I understand what my options are in each of these jurisdictions. Saying that, Yan, I'm particularly interested in China. If Hellranger was going to bring a cancellation proceeding in China to remove a blocking registration, what strategy would you recommend that we use?

Yan: Thanks, Kristen. China's always a hot topic. Assuming you have an over 3 year old blocking registration in China to remove, we can do that top search to see whether the mark has been used online. If our search does not turn up any use information we would recommend filing a non-use cancellation right away and wait for the decision from the Trademark Office. The success rate of cancellation at the Trademark Office can be as high as, in average, about 70%25. If it appears in our search results the mark has been used in China, then you may want to negotiate with the other side for purchasing the mark, or obtaining a letter of consent. But before approaching the other side we always suggest filing a non-use cancellation just to get leverage for negotiation. The key thing is to withdraw the cancellation from the Trademark Office or Review Board, depending on how long it takes to settle, before it decides to revoke the mark. If you are concerned that the registered owner may get irritated by the cancellation action, we can avoid that by filing an anonymous cancellation through a straw man. In order to raise the chance of success you can file a partial cancellation targeting the conflicting use only. As a result the registered owner has to provide use evidence with regard to the specified goods or at least the goods that is classified into that sub-class. To prevent the registered owner from filing a backup application it would be wise to apply for the mark one day after filing the non-use cancellation. In that way the Trademark Office is likely to suspend the examination of your new application until the cancellation decision has been made. The most exciting part, actually, about these non-use cancellation proceeding in China is cross examine of evidence. I think this might be different from other jurisdictions because registered owners submit fake use evidence because there's so far very little or no punishment for doing that. The chance of success at this stage relies on how experienced or how committed your attorney is. For example, we once cancelled the mark by finding some flaws in the evidence. The one most tricky but interesting one is we found the date in that agreement, between the registered owner and his business partner, falls on the Chinese New Year public holiday, which is Christmas to Western countries but we don't have a fixed date for Chinese New Year. So imagine you need to look back 2 to 3 years to find out whether that is a public holiday, and more than that we even observed in the photo, which was claimed to be taken during the mid-winter in Beijing, but guess what? The trees were still green so we won that case beautifully. Back to you, Kristen.

Kristen: That's very helpful and a very interesting story. Thank you. Alexander, could you tell me what strategies you might recommend in Russia?

Alexander: Yes. So first I must say that there is no need to conduct investigation either. But it may be a good idea in order to not to start the procedure without any chances. Yeah? Then if the exact legal entity to which the trademark was registered no longer exists, as I told already, striking the mark is a much simpler procedure in the Trademark Office but sometimes backdated assignments appear, to which the Trademark Office gives precedence. So that does not solve all problems even in that case. Then using a straw man is not allowed like in China, and speaking from the defensive perspective, refiling every 2 years is currently a good strategy for the defense in Russia as well. But a Trademark Office requires every new application differs from the previous one. For example, with the language of goods and services. Kristen?

Kristen: Thank you, Alexander. Jon, could you please tell us what strategies you'd recommend for moving a blocking registration in Dubai?

Jon: Sure. As I touched on early, the onus will be on you initially to show that the mark hasn't been used, so we'll have to carry out the research to determine whether there is any evidence of the mark being used in the UAE or not. If it's never been used or if there's no evidence at all then you'll have the option of bringing the non-use action. But similar to what Yan mentioned a little earlier I think, because it is a full blown litigation court case here, it may be worth considering an approach to the owner to see whether the threat of cancellation action will generate an assignment of the mark to you. Or perhaps even a letter of consent. Unlike other countries, letters of consent aren't automatically accepted by the UAE officials, but more often than not they do look on them favourably. So it is a viable option we could explore. Of course in doing this the other party may realize that there could be this incoming threat and so they look to start using. So the other option, of course, is whether you look to file the action and make the approach at the same time, just to cut off that potential avenue. Again, as with some of the other countries, the other point to bear in mind with the UAE is that there are provisions for genuine reasons for non-use. Now a trademark owner can look to prove that the lack of use is due to reasons beyond its control. That can be things such as import restrictions or government restrictions imposed on the goods or services. So once this defensive is there it is quite narrow. In these limited circumstances the owner may be able to put forward a valid defense in order to maintain the registration. But there will be a high burden of proof on the trademark owner to show that these reasons did exist, and so they may have to look to bring forward copies of government decisions, or edicts, or laws which show that they're unable to bring their mark into use at this time. And of course it may be difficult for use to know whether they face these issues until or unless they defend the action. The other point to note is as and when evidence is being brought forward, the UAE courts are looking for more than an advert placed in the newspaper a week ago. They will expect to see that there's been a level of ongoing use for some time. So a one off placement of an advert may not be sufficient to prove use within that interrupted period. I think another tip from me is, if you haven't already done so, let's set up a watch service because, as and when the other side realizes that there may be this risk of their registrations being challenged, it may well be that they start a refiling program. So by having a watch service set up, if you haven't already, at least you're notified if they do start this so that you can oppose the mark, should you wish to do so. Okay.

Kristen: Thank you, Jon, and thank you for giving us those proactive tips as well. Charlotte, can you please talk about how you would recommend approaching the situation in Canada?

Charlotte: Yeah, of course. Thank you, Kristen. So I'm going to start by talking very briefly about how potentially bringing a summary cancellation will impact your pending application in Canada and then talk a little bit about a few more considerations to keep in mind before initiating a summary cancellation proceeding, though the others have covered that quite well already. So the good news in Canada, with respect to your pending application, is that a summary cancellation proceeding is exceptional circumstances to our Trademarks Office, which means that you can get extensions of time while your pending application is in process and while the summary cancellation proceeding is in process. Which means you do not need to refile to keep your rights alive because you can get extensions until you're done the process. Second, in regards to the proceeding, it's pretty similar to Jon's comments, with respect to Dubai. You would want to do an investigation to see if the ... mark is more than 3 years old in Canada and if it's in use. Another important point I would highlight, which has been touched on a bit already, is it's really useful to look at who the entity is, that it owns the blocking registration and if that's an entity where you want to try to expunge the registrations. It may be that the summary cancellation proceeding, which while in Canada it's not full blown litigation it is sort of a litigious action, it could initiate a larger legal fight, especially if it turns out the entity that you're looking at is known to be particularly litigious and you might not want to start a fight with them, and want to approach different means of getting your mark through. It can also be that the entity's not using the mark, or isn't in business anymore, and you might be able to purchase the mark from then or even obtain a consent, though similar to Dubai, consents are not necessarily going to get your mark through in Canada. It might even be that the trademark owner is a client or other friendly party. Just from a practical perspective, it's important to consider who the other party is before taking next steps, as well as the merits of the non-use proceeding before you start it.

Kristen: Thanks, Charlotte. That's really helpful. Kate, could you please tell me what kind of strategies your recommend in the UK?

Kate: Yup, absolutely. Well first I think you need to be certain that the blocking mark isn't in use. Or at least it's not in use in relation to the goods and services that where interested by. We therefore look at investigating, both online, perhaps using a local investigator if the relevant business is more localized, it's bricks and mortar. Assuming we don't cover any evidence of use we then move quite quickly to preparing filing with the trademark registry revocation application. The speed is important because you want to avoid any issues around tipping off the proprietor of the blocking mark, because if they start to use then that can create issues as to whether genuine use has occurred, who got there first in terms of cancellation and non-use. So once the application has been filed we then recommend contacting the proprietor and inviting them to assign the registered mark. How receptive they are, well that's going to depend on whether they have genuinely early intent to use the blocking mark in the future. Whether they can see an opportunity perhaps to sell the mark. Make some money out of it. If it hasn't been used for 5 years then hopefully they would be willing to enter into discussions to assign it or at least not to fight the application.

Kristen: Thank you, team. That's really helpful. I think cancellation proceedings are an excellent strategy for Hellranger in this position. Saying that, and with all of your comments in mind, I want to make sure that Hellranger is also protecting it's own brands from being cancelled by third parties in all of these various jurisdictions. Kate, what kind of strategies could we use to defend against the potential cancellation action in the UK?

Kate: The best way to avoid cancellation actions altogether is to effect a trademark portfolio management. That comes in several forms and I think every single person on this call would agree that actually dealing with the problem before it arises, prevention is always better than cure, as they say. So first of all, ensure your marks are registered in your key jurisdictions and know what your key jurisdictions are. Review them regularly. Make sure you're still on top of that. Ensuring that the marks are being put to consistent genuine use in the relevant jurisdiction. It's easy for commercial strategies directions to change that so are they being consistent with that? Ensuring that the marks are being put to use in the form they appear on the register. This is an issue we see a lot of. It might be that your marketing team decides to make a tweak here and there to the mark and they start to use it in a different way. Before you know it, what's on the register and what's actually being put to genuine use, are two different things. Even some marginal differences can cause real problems so that's one to really stay on top of. Make sure the specification for each mark encompasses the goods and services that are being used. If that changes, if you expand the range of goods and services in relation to which you're using, make sure you are seeking protection for those new goods and services. If you stop using them, then just be aware it might not matter to you anymore. You might have no intent to use a certain good again but stay on top of that because staying on top of everything really will help you in avoiding issues in the future. Speaking of that, it's also prudent to keep some records of use. So records of advertising campaigns where you've used the relevant marks and often that evidence can be found easily online, if it's needed, but if you've already got it, when somebody like me comes along and makes a demand for your evidence of genuine use, it's much, much quicker if you've already been putting that together. You can easily just get your hands on it. Jon, do you have similar issues?

Jon: Yeah, I agree with everything you've just said, Kate. I won't reiterate them but I think that said, the gold standard to meet, so I think everything Kate has just relayed to you, Kristen, is something you should think about for the UAE, and of course the other countries. I think the other thing, of course, in defending your rights against potential non-use should you wish to do so, you could explore the refiling option in the UAE also. It's been touched on elsewhere. Here, of course, it would be every 5 years given that that's the non-use period as such. But similar to what Alexander mentioned earlier, I think if you are going to think about refiling every so often, try and do so for different versions of the mark each time. So one period perhaps for the word mark. The next time could be a stylized marking colour. The time after that could be the stylized mark in black and white or grey scale. Just to try and avoid any triple identity issues. I think the other issue to take into account, of course, is it's an Arabic speaking country I'm based in so think about filing a pure Arabic language mark because that's unlikely to be blocked by an English or other non-Arabic language citation that may exist. So it could be a way of getting a registration in place quite easily. I think the other thing to bear in mind with the UAE is that the UAE examiners are quite relaxed, I think is probably a nice way of putting it, over citations. So we may even find that what looks to be from a trademark search, potentially significant issue, isn't actually raised by the officials here. It's not uncommon to see very similar or even identical word marks that exist with different logos, or different stylizations, actually be accepted in the face of one another. Sometimes the officials take the view that a different visual element is sufficient to distinguish that mark from any earlier citation. It's worrying, perhaps, in some respects in that the word marks may still be confusingly similar but it is a tactic we can look to explore. Often what we find as well is if the examiner is thinking that there could be a citation, they may actually give us the opportunity to add a distinguishing element to the mark, before they look to refuse it. So I think let's explore those options before you go to court as well, because I think it may give you the option to get that mark through here, that we may not necessarily be able to do in other countries that have a stricter citation practice.

Kristen: Thank you, Jon, and then Charlotte, how can Hellranger protect its marks from being cancelled in Canada?

Charlotte: It's quite similar in Canada. The gold standard is use it as registered and keep evidence of use. It's a lot easier to prove you're using a mark when you keep that evidence as you go along, in particular with website analytics and things like that. Sometimes you can't go back in time and get older versions. Refiling is also an option in Canada. Since our time period starts from registration, you want to keep into account the filing times. So application to registration and then that so it can probably be a bit more of a longer period than 3 years for your refiling strategy. However, since summary cancellations in Canada are essentially considered a bit of a housekeeping measure. Some variations of the marks can be allowed but it is a very fact specific and subjective analysis. It's not particularly predictable sometimes. So it's always better to use your mark as registered. This would be potentially something that would be of interest to talk about in the breakout rooms after this session. In Canada we also look to whether or not you have a good reason for not using your mark which can let you keep your registration, and again, those are factors we take into account are also very sort of fact specific and can include the length of time the mark's not been used. So the longer you haven't used it, the harder it is to keep the registration. If your one day past that 3 year period, it's not as hard as if it's been, let's say, 10 years. Whether the reasons for use were beyond your control, for example, waiting for government approval or a business deal that falls through, through no fault of the registered owner, has been found to be a sufficient reason for non-use when considered in conjunction with the other factors in those cases. The office will also look at whether or not you have a serious intention to start using the mark soon. For example, if you had plans for relaunch, or product markups, or those sort of documents available that you can put in with your evidence to explain, yes we weren't using the mark but we were just about to start using it and here's evidence that we were. But overall, if you haven't been using the mark it's more difficult to maintain the registration and the best way to avoid being put in a situation is to use it, and to refile your important brands to make sure that backup applications and registrations if you aren't using your mark in Canada.

Kristen: Thanks, Charlotte. That's really helpful. Yan, could you let us know what you'd suggest for us to protect our marks from cancellation in China? We might have a little technical issue. Perhaps we move onto Alexander. Could you tell us about Russia and then we'll circle back to Yan.

Alexander: So actually, again, almost everything which my colleagues already told you about other countries, applies to Russia. I only wanted to underline one exception. Advertising campaigns are no value for defending parties. If you need to prove use you cannot refer to advertising campaigns and practice only actual use of the mark on goods or when providing services counts. So that's probably the main difference. Kristen?

Kristen: Well that's very interesting. Thank you. So, we're just waiting for Yan to pop back up on the screen but in the meantime, I want to just circle around with the rest of the team because this has been a lot of great information and a lot to digest. But I'd like to sort of get your top tips for your countries. Just give me one or two tips. Jon, perhaps we could start with you.

Jon: Sure. I think short and sharp, use it or lose it, I think is the mantra to keep in mind, Kristen. I think for the UAE, let's see if we can overcome the citation through arguments so that you don't have to go to court, if possible. If it appears inevitable that we may have to look at a non-use action, let's think about trying to make an approach in order to settle. I have a couple of other tips as well which I'm happy to share in the breakout room for the UAE later one.

Kristen: Thanks, Jon. Charlotte, how about in Canada? What are your top tips?

Charlotte: The first tip is that cancellations in Canada are a great tool, and can be a relatively simple and quick way to remove the registration that's blocking your trademark application, because there's no requirement in Canada to show use at the time of renewal. There are many registrations that are just not in use and this can be a good way to get rid of it. You can get extensions of time for your application while that process is on going. The second tip would be to protect yourself from cancellations, to make sure that you're using your mark as registered, and with respect to licences to make sure they are noted and memorialized in some way so that if you need to prove the mark was being used under licence, you can do so later on.

Kristen: Alexander, how about you? What about Russia? What are the top tips in Russia?

Alexander: Yeah. So in Russia the trial is also quite fast. It takes only about 6 months but it is preceded by a 2 or 3 month period for sending a pre-trial letter and waiting for a response. That letter shows both as a negotiation tool and fixes the end of the 3 year window in which the trademark owner should profuse. So just memorize that.

Kristen: Thank you. Kate, how about in the UK? What are your tips for us?

Kate: First of all, from an offensive perspective, I think it's really important to just act quickly and decisively. Don't spend months debating whether to make an application, because in this time the proprietor of the blocking mark could have put it to use and that opportunity, that window's been lost. So I think if you make the decision, follow through. Secondly, from a defensive perspective, just ensure your trademark portfolio is proactively maintained. That actually applies to lots of issues that brand owners come across. Not simply at this point about blocking marks and use. Making sure that your marks registered appropriately and that they are being used as registered and that they're regularly reviewed and audited. I just think that's absolutely essential.

Kristen: Great, thank you. And then, Yan, could you maybe first tell us what it is that you recommend that Hellranger do to protect its marks from being cancelled in China?

Yan: In China, likewise, once a trademark is granted registration we always recommend using the mark in exactly the same form in which it is registered. All the specific goods and services. Here are some additional points to be considered. One is use in Hongkong, Macau and Taiwan is not regarded as use in China. Second, black and white mark, they can be used in any colour but a colour mark cannot change the colour in use. If you have a word mark and a device mark registered separately then you can use them together. That would suffice but if you also register a combined mark at the same time, consisting of both the word and the device, then you should be careful because evidence of use of that combined mark cannot support use of the stand alone word mark or device mark. Next, use of the mark on goods does not support use on the sales of goods in class 35, which is also a hot topic here. For example, if you use your mark on wine but you want to prove use on sales of wine or exportation of wine, then that's not enough. Among various types of evidence in China the most convincing one should be fapiao. I'm not sure whether you have heard of that. Fapiao is the official receipt showing the VAT. So make sure your fapiao also reflects the necessary information including the trademark, the date, goods, etcetera. If you can, at the same time, provide a set of documents or materials corresponding to that fapiao, then you are safe. If you are concerned about your defensive purpose filing then we can advise on how to generate basic use evidence, and document use with a notary public every 2 years after registration, or alternatively, you can refile that mark every 2 years. Do I need to sum up a bit about the points I made?

Kristen: Yes. Since we just lost you for a minute there, some technical issues, I think we'd like to get your top one or two tips for takeaways in China on non-use cancellations.

Yan: Yeah, of course. The Chinese Trademark Office has recently accelerated their progress. So timeline of non-use cancellation has been remarkably reduced from over 1 year to 5 months. So that means initiating cancellation without delay is highly recommended now because it might save you a lot of trouble and costs in your parallel proceedings. Another piece of news is the Beijing IP Court has recently brought in the mediation proceeding to help resolve the problem of having ongoing cancellations. So that means you're trademark administrative litigation will not be accepted for at least one or two months which also makes cancellation actions even more effective and cost effective in China. That's all for China.

Kristen: Thank you, everyone. There's so much information and I think that I really have a good understanding of how to approach cancellation going forward. This concludes the presentation portion of the webinar but, as I mentioned before, if you signed up you're now going to be moved into a breakout room with one of our participants. Before you move we just wanted to say, as many of you already know, the annual INTA conference, which is virtual again this year, is taking place next week. We have a global team of our top tier trademark professionals attending and we hope that you'll reach out to them on the INTA connect platform if you too will be attending. Finally, we'll be hosting our next webinar in this series on February 2, 2022, and it will be called 'What's to Prove in a Trademark Case'. Please look out for an invitation and we hope that you will attend. Thank you again for coming and if you've signed up, again, you'll be moved to a breakout room now.