Fred Rocafort, Autor bei Harris Sliwoski LLP Schwierige Märkte, mutige Anwälte Mon, 11 Mar 2024 15:07:31 +0000 en-US stündlich 1 https://wordpress.org/?v=6.4.3 https://harris-sliwoski.com/wp-content/uploads/cropped-Harris-Sliwoski-Logo-FinalIcon-White-1-32x32.png Fred Rocafort, Autor bei Harris Sliwoski LLP 32 32 Betrug mit US-Marken ist auf dem Vormarsch . . . . SO VORSICHT! https://harris-sliwoski.com/blog/u-s-trademark-scams-are-on-the-rise-so-beware/ Mon, 11 Mar 2024 14:08:16 +0000 https://harris-sliwoski.com/?p=135167 The Increasing Threat of Trademark Scams Trademark scams are on the rise, as the U.S. Patent and Trademark Office (USPTO) warns. If you get a concerning email about your trademark, there is a good chance it’s a trademark scam — but sometimes unsolicited emails are legit (or sort of), in the sense that they are

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The Increasing Threat of Trademark Scams

Trademark scams are on the rise, as the U.S. Patent and Trademark Office (USPTO) warns. If you get a concerning email about your trademark, there is a good chance it’s a trademark scam — but sometimes unsolicited emails are legit (or sort of), in the sense that they are alerting you of a real issue. For that reason, it is always a good idea to check in with a trademark lawyer that you trust when you receive this kind of communication, both to avoid falling prey to a trademark scam, while also ensuring that you are on top of any trademark-related issues.

USPTO Trademark Scammer List

The USPTO publishes a list of known trademark scammers. This list, however, is not even close to being exhaustive. Yet it usually isn’t that difficult to pick up on trademark scams.

Recognizing Trademark Scams: A Real-World Example

Here is an example that one of our clients received, with details changed for confidentiality reasons:

Dear Juan del Pueblo,

I hope you’re doing well. I’m writing on behalf of Trademark Whiz’s Legal Department to let you know about a possible trademark registration for the business name “Mofongo & Sushi” We found that your details are linked to this name.

Acting quickly is important because someone else is interested in registering the same name. If you don’t move forward with your registration, they could gain legal rights, and you might face consequences for using the name. This could even lead to legal action against you to claim ownership of your profits.

We noticed that your brand isn’t currently registered with the United States Patent and Trademark Office (USPTO). We want to know if you plan to register “Mofongo & Sushi.”

Keep in mind that if you don’t object, someone else might register it first under the USPTO’s policy.

According to the Lanham Act of 1946, federal registration is necessary to establish ownership rights. Please respond promptly to protect your rights and avoid potential legal issues.

We look forward to hearing from you soon.

Thanks & regards,

John Roberts

Sr. Intellectual Property Attorney

Trademark scams invariably present telltale signs, one of them being flat-out lies about the law. Federal registration is NOT necessary to establish trademark ownership rights in the United States. In our case, Juan has been using the “Mofongo & Sushi” trademark since the second Obama administration, meaning he has established what are known as common law trademark rights merely by using the trademark in commerce — regardless of whether he has registered the trademark at the federal or state level.

When Trademark Scams Serve a Purpose

Though you should never engage with anyone that appears to be trying to pull off a trademark scam, in some cases they might be doing you a favor, by prompting a conversation — with an actual trademark practitioner — about the trademark protections you have in place and whether they are sufficient. Moreover, as mentioned earlier, not all unsolicited communications regarding your trademarks are fraudulent. In some cases, you might be offered “services of dubious value, such as offering to record trademarks in a private registry,” but in some cases a provider might be offering assistance to deal with a real issue that has come up with your trademark application or registration.

Consult a Trusted Trademark Attorney

To sum up, if you receive any unsolicited correspondence regarding trademark matters, reach out to a legitimate trademark attorney.  At a minimum, this will ensure that you are not ensnared by trademark scams. And at the same time, your trademark attorney can alert you of any issues with your trademarks that merit action.

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Mexiko-Marken: Was Sie wissen müssen https://harris-sliwoski.com/blog/mexico-trademark-what-you-need-to-know/ Tue, 13 Feb 2024 11:58:58 +0000 https://harris-sliwoski.com/?p=82749 The Global/Mexico Trademark Landscape In a world where trademark identity is often a company’s most valuable asset, protecting that identity in foreign markets is crucial. Mexico, with its growing economy and strategic geographic location, has become a hotspot for many international companies. However, without a solid understanding of its trademark regulations, companies run the risk

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The Global/Mexico Trademark Landscape

In a world where trademark identity is often a company’s most valuable asset, protecting that identity in foreign markets is crucial. Mexico, with its growing economy and strategic geographic location, has become a hotspot for many international companies. However, without a solid understanding of its trademark regulations, companies run the risk of compromising their brand integrity and facing potential legal disputes. This article discusses the Federal Law for the Protection of Industrial Property (2021) in Mexico and explains how companies can safeguard their intellectual property rights in Mexico.

Navigating International Trademark Protocols

For trademark owners, trademarks are an essential aspect of intellectual property. If you plan to do business in Mexico, your attorney should have experience with trademarks in Mexico to ensure protection of the elements of your brand.

For all but the largest companies, filing individual trademark registrations in the more than 200 countries of the world is costly and impractical. However, in the last 25 years, two important developments have made this unnecessary.

In 1996, the European Union Community Trademark, currently known as the EU Trademark (EUTM), was established. This initiative allows a single application for registration to obtain trademark protection in all member states of the European Union. This system is possible because the EU operates as a supranational entity with regulatory capacity over its member countries. One of the fundamental objectives of the EU is to homogenize legislation and provide protection for citizens’ rights in a cross-border context, including intellectual property rights.

It is important to note that the EU has implemented this measure to simplify and strengthen the trademark protection process within its territory, thus facilitating business management and promoting innovation and trade.

Although trademark protection is predominantly applied within a national framework outside the European Union, i.e., each trademark is legally protected only within the borders of the country where it is registered, there are international collaboration strategies that go beyond this limit. One of the most important is the Madrid System, administered by the World Intellectual Property Organization (WIPO), a United Nations entity specialized in the protection of intellectual property rights at the international level. This system enables trademark owners to register and manage the protection of their trademarks in several countries simultaneously through a streamlined and centralized process. It is crucial to understand that the Madrid System provides an efficient framework for companies to protect their intellectual assets in multiple jurisdictions, minimizing the legal complexity and reducing the costs associated with protecting trademarks abroad, yet it is more like a priority system (priority claim) than an international registration.

Therefore, companies or individuals wishing to secure their trademarks in different international jurisdictions must proceed with the necessary registrations in each country of interest. This process can be complex and requires a detailed understanding of the applicable intellectual property laws in each territory.

Should You File Directly in Mexico or via WIPO (Madrid Protocol)?

WIPO stands for World Intellectual Property Organization, which oversees several international treaties related to intellectual property rights, including the Madrid Protocol. Given the global support for trademark owners mentioned above, should I worry about local trademark registrations or just file through WIPO and let that process (which ensures local trademark registrations) take care of local protection?

The Madrid System provides a single application mechanism, which notifies the competent bodies and authorities of each of the designated countries of the existence of such an application. This establishes that they must recognize the original filing date as valid for the right of priority or priority. However, it is essential to understand that this recognition does not exempt the request from:

  • Complying with country-specific legal regulations to determine whether a sign is registrable or not, both in Mexico and in other countries.
  • Following the trademark registration process in accordance with the formalities and stages dictated by the legislation of each country, to mention just two of the most relevant aspects.

It is therefore crucial to understand that the scope of the Madrid System includes an international phase, managed by WIPO, which acts as a two-way intermediary between the applicant and the national authority, and a national phase, which falls under the jurisdiction of each of the authorities of the designated countries. This national phase is subject to national regulations, both in form and substance.

This clarification is vital to avoid misunderstandings or incorrect expectations about the rights granted. The Madrid System should not be confused with the EU Community Trademark, which offers a unitary registration system within the European Union, reflecting a level of legal integration and homogenization that is not replicated within the scope of the Madrid System.

The following are some of the questions our international trademark attorneys often consider when deciding whether to file directly in Mexico or through the Madrid Protocol:

  • What is the country of the original trademark registration?
  • In how many (and which) countries do you plan to file trademark applications?
  • For what type(s) of goods/services are you seeking trademark protection?

This article covers the basics of trademark filing in Mexico, but the above comments are valid for all countries.

A consultation with an international IP attorney is valuable not only to ensure that you understand the local trademark laws and regulations in the country, but also because the application of the laws and regulations often changes over time. For example, it used to be that a Madrid Protocol application designating China would move toward registration more quickly than an application in China, but now the opposite is true and direct registration generally ensures a faster and sometimes even better result. As for Mexico, it does not allow multiple class filings, so an International Registration covering more than one class will automatically be divided into separate Mexican applications (one per class).

If you are filing in three or more countries, it is usually cheaper to file through the Madrid Protocol. But if you are filing in (only) one or two countries initially, it will almost always be more economical to file directly in those one or two countries. Also, it is important to remember that an International Registration application designating Mexico will ultimately be approved (or denied) by the Mexican authorities. If Mexico is your destination, the great advantage of filing directly is that you will be able to obtain the professional analysis oriented to give your application the best chance of success in Mexico and in addition to that, shorter deadlines in the registration process, since the notifications issued by the national authority in Mexico are sent to WIPO and WIPO must in turn communicate – officially notify – the applicant, it is possible that there may be time lapses between these actions – which are usually only a few days – and delays in the progress of the proceedings.

The Trademark Landscape in Mexico

In Mexico, trademark registration is valid for ten years, with the option to renew for additional periods of one decade each. Following a recent legislative reform, the decade count starts from the date on which the Mexican trademark registration is granted, not from the date of application. With the publication of the amendment to the Industrial Property Law on November 5, 2020, which aligns with the provisions of the TMEC, the mandatory filing of a declaration of trademark use was introduced. This requirement applies to all trademarks registered in Mexico and constitutes an essential element to preserve the validity of the registration for trademarks granted from August 10, 2018, onwards.

The Mexican Patent and Trademark Office, known as the Mexican Institute of Industrial Property (IMPI), is the governmental entity in charge of granting (or refusing) trademark registrations. Any person or company seeking to differentiate its products or services may apply for these registrations. Trademarks eligible for registration can be perceived by the senses, including, but not limited to, trade names, products, logos, sound and even olfactory marks, in addition to three-dimensional marks. In Mexico, protection is also offered for certification marks, famous and notorious marks, but that will be the subject of another article.

To initiate the registration of a trademark in Mexico, it is advisable to perform a prior search for trademarks that may be similar and that are already registered or being processed by third parties in the country. Although IMPI’s “MARCia” website offers free access and provides an overview of the trademark environment in your sector, it is important to keep in mind that the results obtained may not be definitive, as the database is not always fully updated.

In the registration process, it is essential to present a detailed and precise description of the goods and services that are intended to be covered by the trademark, since IMPI grants protection only for those that are explicitly mentioned in the application. Mexico adopts the International Classification of Goods and Services of the 12th edition of the Nice Agreement for this purpose.

In addition, it is crucial to understand that ownership of a trademark registration abroad does not, by itself, confer any right of priority for the registration of the same trademark in Mexico. Applicants may avail themselves of the six-month grace period offered by the Paris Convention, counted from the date of the first application in another member country, to claim priority in Mexico (recognition of the same date of filing of the application in a member country of the Convention as the filing date in Mexico).

Trademark Documentation in Mexico

The process of registering trademarks in Mexico is relatively simple. You must complete the trademark application form, which can be done electronically with a Portal de Pago y Servicios Electrónicos (PASE) account granted by the Mexican government for online filing. Anyone in possession of a Unique Population Registry Code (CURP) can sign an electronic application. CURP stands for Clave Única de Registro de Población and is a unique identification code assigned to each Mexican citizen and resident. It is similar to a Social Security number in the United States. Although the PASE platform proves to be an intuitive and user-friendly system, it is crucial to obtain advice from an intellectual property specialist. The apparent simplicity of the trademark registration process in Mexico can lead to a misleading perception, as the platform allows data entry without validating its correctness, which alone does not guarantee a successful registration. Therefore, it is essential to have a thorough knowledge of the specific Mexican trademark laws to ensure compliance with all legal and technical requirements.

The information required in the trademark registration form includes the following:

  • The word or phrase to be registered as a Mexican trademark and a black and white or color specimen of the mark in the case of designed or combined marks; if applying to register sounds, smells or product configurations, a description of the mark to be protected must be provided.
  • The goods or services to be covered by the Mexican trademark.
  • The date of first use of the mark in Mexico. If no first use is claimed or specified, the Mexican Patent and Trademark Office will assume that the mark has not been used.
  • The residential or business address of the applicant. This does not need to be in Mexico.
  • The factory address or location of the principal place of business (street, number, city and country) only if the applicant claims a date of first use in Mexico.
  • A power of attorney granted by an authorized officer of the applicant company and two witnesses.

IMPI has up to 18 months to issue a first decision with respect to international trademark applications, as established by the international registration procedure through the Madrid System. This period starts from the time the International Bureau (WIPO) sends the application to IMPI. After WIPO receives and reviews the international application to verify that it complies with the formal requirements, it records it in the International Register and publishes it in the International Trademark Gazette, notifying each of the designated contracting parties. In Mexico, the IMPI then proceeds to analyze the application according to the national industrial property legislation.

As of November 5, 2020, the Federal Law for the Protection of Industrial Property establishes that for the purposes of trademark registration examination, the IMPI must issue a first response within a maximum term of four months. This applies to various types of trademarks, including traditional and non-traditional trademarks, collective or certification trademarks, among others.

It is important to note that these deadlines refer to the time that IMPI must respond and not necessarily the total time that the registration process would take, since there may be requirements or official actions that extend the time until the final decision.

The procedure in Mexico begins with the publication of the trademark application in the IMPI Gazette. After publication, any interested party has a period of one month to file its opposition, arguing causes of impediment to registration based on the applicable legislation or contravention of public order and other legal provisions. Arguments and evidence must be submitted at this time. IMPI then notifies the applicant about the opposition, who has two months, extendable for two more, to respond as it will be considered in addition to the impediments or requirements of form that IMPI considers in the opinion. If the applicant does not respond, the application is considered abandoned.

If IMPI issues an objection to the registration, applicants have two months from the date they are notified of the official action (with the possibility of a two-month extension) to respond to any objection and any opposition filed. This may delay the processing of the application for an additional six months from the time of the response to the request.

Once a Mexican Trademark is Granted

Holders of Mexican trademark registrations have specific obligations for the preservation of their rights:

  • Declaration of Use: File a declaration of use within three months following the third anniversary of the date of grant of the trademark registration.
  • Renewal: Request the renewal of the registration every ten years, counted from the date of filing the application for registration.
  • Update of Data: Notify IMPI of any change in the name or address of the owner or in the ownership of the registration due to a transfer of rights.
  • Trademark Warnings: Use the ® symbol to indicate that it is a registered trademark, which is not mandatory, but helps to inform the public and potential infringers about the registered status of the trademark.
  • In Mexico, the law provides that the holder of a trademark registration or its authorized licensee must use the mark in commerce within three years of its registration and continue its use to avoid forfeiture for non-use. This is vital for owners that do not operate directly in Mexico, as they must ensure that the mark is used in the national territory, either themselves or through a licensee, to maintain legal protection of the mark. Lack of use may be cause for third parties to request the cancellation of the trademark registration before the IMPI.

These measures help to maintain the legal protection of the trademark and to avoid its revocation or cancellation. In addition, compliance with these obligations is essential to take legal action in case of infringement of trademark rights.

Challenges and Resolutions in Trademark Registrations in Mexico

If IMPI denies the registration of your trademark, you may challenge such decision by filing an administrative appeal before IMPI or through a nullity action before the Mexican Federal Court of Administrative Justice, which has a specialized chamber for intellectual property matters.

In the case of trademarks that are widely recognized in other markets, Mexican law may provide protection if you can demonstrate that your trademarks are known to Mexican consumers or recognized worldwide. This protection means that IMPI must reject third party trademark applications for these types of marks, provided you follow the procedures for IMPI to grant such recognition, so trademark owners register their “famous” or “notorious” marks as a precautionary measure and because the cost of registering a mark in Mexico is insignificant compared to the cost of litigation in which you have to prove that you never needed to register a mark because it was already known.

If a trademark has been registered by a third party, it is possible to remove the trademark registration through a nullity action, based on the following grounds:

  • The trademark registration was improperly granted.
  • A third party claims the trademark due to prior use in relation to the same or similar goods.
  • The registrant’s assertion of prior national use in its application form is inaccurate.
  • The registration was obtained in bad faith.

Do Not Wait to Protect Your Trademarks in Mexico 

Since trademarks are often a company’s most important asset, many people register the names and logos of foreign companies in Mexico (and elsewhere) and then attempt to sell the trademark “back” to the foreign company. Trademark prices in these transactions are often much higher than what it would have cost the foreign company to secure the trademark by registering it as described above.

If you are going to do business in Mexico, one of the first things you should do is to hire an experienced Mexican trademark attorney to help you determine the best way to protect your brand names and logos (and perhaps even your sounds and colors, etc.) in Mexico.

Make sure your brand identity is protected, recognized and respected, no matter where you choose to operate.

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Hongkong Update: Rechtliche Entwicklungen in Hülle und Fülle https://harris-sliwoski.com/chinalawblog/hong-kong-update-legal-developments-aplenty/ Thu, 01 Feb 2024 15:50:17 +0000 https://harris-sliwoski.com/?post_type=chinalawblog&p=134551 2024 Hong Kong Legal Developments Article 23 and Its Implications Hong Kong is having a busy 2024 when it comes to legal developments. The city is getting ready to adopt national security legislation, separate from the National Security Law imposed by China in 2020. According to a public consultation document issued by the region’s Security

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2024 Hong Kong Legal Developments

Article 23 and Its Implications

Hong Kong is having a busy 2024 when it comes to legal developments. The city is getting ready to adopt national security legislation, separate from the National Security Law imposed by China in 2020. According to a public consultation document issued by the region’s Security Bureau:

Article 23 of [Hong Kong’s] Basic Law clearly stipulates that [Hong Kong] shall enact laws on its own to prohibit any act of treason, secession, sedition, subversion against the [Chinese government], or theft of state secrets, to prohibit foreign political organisations or bodies from conducting political activities in [Hong Kong], and to prohibit political organisations or bodies [from Hong Kong] from establishing ties with foreign political organisations or bodies.

Efforts to adopt legislation as called for by Article 23 during the early days of Chinese rule following the handover of Hong Kong by the British proved deeply controversial and were shelved for many years. As the Security Bureau sees it, it was the failure to pass Article 23 legislation and to make “full use of existing law” that led to “the social chaos which took place in the past, ultimately causing the Hong Kong version of ‘colour revolution’ in 2019 which posed national security threats to the extent that made it difficult for [Hong Kong] to handle on its own.”

A New Definition of National Security

To give a flavor of what the new homegrown legislation will look like, the Security Bureau recommends that the region adopt the same definition of “national security” as in China’s own National Security Law, namely:

the status in which the State’s political regime, sovereignty, unity and territorial integrity, the welfare of the people, sustainable economic and social development, and other major interests of the State are relatively free from danger and internal or external threats, and the capability to maintain a sustained status of security.

Hong Kong Legal System Concerns

Meanwhile, on January 29, a new ordinance went into effect in Hong Kong, implementing an agreement between China’s top court and the Hong Kong government. Under the terms of the new legislation, creditors under judgments from Mainland China in civil or commercial matters may register those judgments in Hong Kong. While this could certainly bring about certain efficiencies, it “further erodes the differences between the legal systems of Hong Kong and the mainland,” a prospect that raises concerns in some quarters. “Asset managers,” for instance, “may no longer be able to advise wealthy clients with total confidence that their investments would be protected in Hong Kong.”

The Chow Hang-tung Case and Its Implications for Legal Appeals

Finally, on January 25, Hong Kong’s Court of Final Appeal restored the quashed conviction of Chow Hang-tung, sentenced to 15 months’ imprisonment for “inciting others to take part in [a] vigil banned on public health grounds during the COVID-19 pandemic in 2021” – which just happened to be a commemoration of the 1989 Tiananmen crackdown. Prosecutors took advantage of an amendment to Hong Kong law last year that permits the appeal of acquittals by the High Court (which includes the intermediate Court of Appeal) in national security cases. Appeals by prosecutors were already permitted from the lower-level District Court and Magistrates’ Courts, which handle less serious offenses.

The Future of Hong Kong

For years now, some in the Fragrant Harbor have sardonically referred to the city as 深圳市香港区 (Hong Kong District, Shenzhen City) or made similar quips. We are not quite there yet, but the overall trend is crystal clear for anyone who cares to see. Whereas in the not-so-distant past many saw 2047 (when the city’s special status is set to expire under the 1984 Sino-British Joint Declaration on Hong Kong) as a question mark, increasingly it appears Beijing is looking at that year a completion date.

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Navigieren durch internationale Ungewissheit https://harris-sliwoski.com/chinalawblog/navigating-international-uncertainty/ Fr, 26 Jan 2024 11:58:55 +0000 https://harris-sliwoski.com/?post_type=chinalawblog&p=134473 In a world where the only constant is change, the landscape of international business stands at a critical juncture. As we turn the pages of recent history marked by the COVID-19 pandemic and the Ukraine conflict, it’s evident that unforeseen events continue to shape the global economy in profound ways. How can businesses navigate this

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In a world where the only constant is change, the landscape of international business stands at a critical juncture. As we turn the pages of recent history marked by the COVID-19 pandemic and the Ukraine conflict, it’s evident that unforeseen events continue to shape the global economy in profound ways. How can businesses navigate this sea of uncertainty? This is the pivotal question for a panel I’ll be moderating at the upcoming Florida Bar International Law Section’s iLaw2024 conference, to be held in Miami on February 16. Titled A Changing World Order: Impacts on International Business, the panel will delve into the evolving world order and its impact on international business, examining the emergence of new alliances, the rise of economic nationalism, and the crucial role of legal counsel in steering businesses through these uncharted waters.

While the world order is always changing to some degree, the past few years have been a whirlwind of unforeseen events – from the COVID-19 pandemic to the Ukraine war – each with profound consequences for international commerce. While most of us certainly hope that won’t be the case, it’s unrealistic to expect that in the next ten years we will not see dramatic events with far-reaching, negative consequences like the pandemic and the Russian invasion of Ukraine – even if we can’t predict what those events will be.

This inevitable uncertainty brings with it the risk of us assuming that, as Vlad Vexler puts it, because “we can’t predict what transformational but unforeseeable events will occur … we can assume that no unpredictable, unforeseeable, transformational events will occur.” Yet history makes clear that this is a mistake.

It’s worth recalling that much of what has happened since seemed highly unlikely in 2014, yet little was unimaginable. COVID lockdowns in massive cities like Wuhan were shocking but the fear of something like that happening was present in the minds of some of Guangzhou’s residents during the 2005 H5N1 scare. As for the trade war, resentment over China’s trade practices had been building for a long time. Without doubt, the impositions of tariffs on a wide range of Chinese goods caught many by surprise, but the fact that some action was taken by the United States was hardly surprising.

As we anticipate a dynamic discussion at the iLaw2024 conference, it’s clear that the role of business lawyers is more crucial than ever in guiding clients through the labyrinth of global uncertainty. We cannot foresee every twist and turn in the international business landscape, but we can equip ourselves with the wisdom gleaned from past events and the flexibility to adapt to future challenges. Our panel promises to offer insightful perspectives on these pressing issues. Stay tuned for key takeaways from this engaging dialogue, which will not only illuminate current trends but also chart a course for navigating the unpredictable tides of international business. The future may be uncertain, but our preparedness need not be.

If you’re interested in attending iLaw2024, please reach out or check out this page for details.

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Acht Fragen zum geistigen Eigentum, die Sie sich stellen sollten, bevor Sie ein Unternehmen in einem neuen Land gründen https://harris-sliwoski.com/chinalawblog/eight-ip-questions-to-ask-before-starting-business-in-a-new-country/ Di, 23 Jan 2024 19 :00:01 +0000 https://harris-sliwoski.com/?post_type=chinalawblog&p=134447 International IP Protection: The Questions to Ask  As companies transition out of China and move elsewhere, my law firm’s international IP attorneys are helping them protect their IP during and after this transition. This blog post delves into the critical questions every business should ask itself before entering a foreign market. The following are the

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International IP Protection: The Questions to Ask 

As companies transition out of China and move elsewhere, my law firm’s international IP attorneys are helping them protect their IP during and after this transition. This blog post delves into the critical questions every business should ask itself before entering a foreign market.

The following are the eight questions we suggest companies starting a business in a foreign country should ask about their own intellectual property before they start doing business in that foreign country, be it Mexico, Spain, Japan, Thailand or wherever.

1. Trademarks

Can we adopt, use, and register as trademarks the names we want to use for our products or services in the foreign country? Practical Tip: Your trademark almost certainly does not apply outside your own country.

2. Patentability

Is any aspect of our IP new, inventive, and useful and therefore potentially patentable in the foreign country or anywhere else relevant to our business? Practical Tip:Patent laws are not uniform worldwide.

3. Confidentiality

Have we instituted procedures to keep our potentially patentable inventions confidential until a patent application may be filed? Practical Tip: Confidentiality agreements and internal protocols can be critical, before and even after you secure your necessary foreign country IP filings.

4. Third-Party Patents

Are there any third-party patents that could prevent us from selling our services or products in the foreign country or even from manufacturing our products there or anywhere else? Practical Tip: Conduct thorough patent searches in potential markets before you enter and face lawsuits.

5. Copyrights

What aspects of our products or services are protected by copyright? Practical Tip:Understand the level of copyright protection and enforcement in each country in which you will be doing business.

6. Design Patents

Is the design of our product protectable as a design patent in the foreign country or elsewhere? Practical Tip:Evaluate the visual aspects of your product for international design patent protection, especially if you are not able to secure a utility patent.

7. Third-Party Design Patents

Are there any third-party design registrations that could prevent us from selling our product in the foreign country or elsewhere? Practical Tip: Conduct comprehensive searches for existing design registrations in potential markets before you enter and face lawsuits.

8. IP Ownership Agreements

Do we have written agreements with our foreign country employees and manufacturers that clearly assign to us any IP we create with them and that provide for maintaining the confidentiality of our information and our trade secrets? Practical Tip: Draft clear, country-specific IP agreements with all local partners, otherwise, you risk “gifting” your IP to those with whom you do business.

Conclusion

Navigating international IP is not just about avoiding pitfalls; it’s about leveraging intellectual property as a strategic tool for your company’s global success. Taking your company into new markets requires a well-informed, proactive approach to protecting and enhancing your IP. By asking the right questions, learning from others’ experiences, and understanding the nuances of international IP laws, you can protect your innovations and pave a path for international growth.

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Was tun, wenn jemand Ihr chinesisches Warenzeichen besitzt? https://harris-sliwoski.com/chinalawblog/what-to-do-when-someone-has-your-china-trademark/ Mo, 22 Jan 2024 17 :06:26 +0000 https://harris-sliwoski.com/?post_type=chinalawblog&p=134422 Navigating China Trademark Conflicts It used to be rare for one of our clients to be unable to secure a desired trademark in China because someone had beaten them to it. With the proliferation of trademark filings in China over the last 3-5 years, those halcyon days are over. When our pre-application screening turns up

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Navigating China Trademark Conflicts

It used to be rare for one of our clients to be unable to secure a desired trademark in China because someone had beaten them to it. With the proliferation of trademark filings in China over the last 3-5 years, those halcyon days are over.

When our pre-application screening turns up a conflict with a previously registered trademark, we often suggest determining whether the preexisting trademark has been abandoned. Under Chinese trademark law, failing to use a China trademark in commerce at least once every three years puts the trademark at risk of cancellation. I use the words “at risk” because in China a trademark is presumptively valid throughout its term unless someone files a non-use cancellation against it (or otherwise challenges its validity). Of late, our China trademark lawyers have been fielding a bunch of inquiries regarding non-use cancellations.

Before we file a non-use cancellation, we gather up our own evidence regarding non-use, usually using Baidu for the initial search. If something shows up on Baidu indicating the trademark has in fact been used recently, our work is done and securing a non-use cancellation will likely not be possible. If we do not find anything on Baidu, we generally expand our search until we either find evidence of trademark usage or become convinced that filing a non-use cancellation is the way to go.

Filing a non-use cancellation in China is fast and easy, but as with pretty much everything involving the Chinese Trademark Office these days, the rest of the process is often delayed. The good news is that with most of our non-use cancellations, the trademark owner never responds and, once the CTMO processes the filing, the “offending” trademark is cancelled, clearing the way for our client’s own China trademark application.

Conclusion

Navigating trademark conflicts in China’s increasingly crowded trademark marketplace requires a strategic approach. Understanding the nuances of Chinese trademark law, particularly regarding non-use cancellations, is crucial. Proactive research and timely action can be the difference between you securing your desired trademark or missing out.

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Bewertung der Präsidentschaftskandidaten zum Thema Cannabis: Ron DeSantis https://harris-sliwoski.com/cannalawblog/grading-the-presidential-candidates-on-cannabis-ron-desantis/ Wed, 17 Jan 2024 15:00:21 +0000 https://harris-sliwoski.com/?post_type=cannalawblog&p=134319 We recently kicked off our series of posts grading the presidential candidates on their cannabis stances (check out the first post, on Joe Biden). Today we turn to Florida Governor Ron DeSantis, who as of January 8 was a distant second in the race for the nomination to frontrunner Donald Trump. But with Trump facing

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We recently kicked off our series of posts grading the presidential candidates on their cannabis stances (check out the first post, on Joe Biden). Today we turn to Florida Governor Ron DeSantis, who as of January 8 was a distant second in the race for the nomination to frontrunner Donald Trump. But with Trump facing a number of challenges that could, perhaps, derail his plans for a second term, the prospect of a DeSantis nomination for the White House cannot be ruled out.

Overall Grade: C+

Back in 2022, when he was campaigning for his second term as governor, we noted that “DeSantis has made it clear that he does not support legalization, though he has ‘suggested he was in favor of decriminalizing marijuana.'” At the same time, we warned against expecting any bold moves on the issue as DeSantis turned his attention to the national stage and showing off his conservative bona fides.

As we get close to the start of primary season, we must say that DeSantis is exceeding our — admittedly low — expectations when it comes to cannabis. Recently, DeSantis declared that “he’d honor state-level decisions on [cannabis] in the event he’s elected President.” That’d be a great start: Respect for states’ rights is really all we need when it comes to cannabis from the federal government. In principle, a President DeSantis should be amenable to the idea of curbing Washington’s power, in particular its overreach when it comes to regulating interstate commerce. (Of course, we’d have to see how President Ron feels about federal power once its levers are at his disposal, or when the rights in question are those of states ideologically unaligned with him.)

Why DeSantis Doesn’t Get a B- or B

The more recent iteration of DeSantis on cannabis might be deserving of a B-, perhaps even a B, if only by way of encouraging the governor. However, his grade has to be docked on account of his seeming inability to address cannabis issues without some dig or canard, either complaining about the smell, scaremongering about fentanyl-laced cannabis, or snidely referring to medical use as a “pretext” on the part of some to get high. He comes off as a guy who cares more about letting you know he’s against legalization than about the actual prospect of legalization. The same probably goes for his gripes about the Noles being left off the College Football Playoff — Go Blue, by the way.

More seriously, under DeSantis’ watch, there has been a whole-of-government effort to second-guess Floridians when it comes to recreational cannabis legalization. His attorney general, Ashley Moody, has led senseless crusades against ballot initiatives on the subject (possibly encouraged by the state Supreme Court’s receptiveness in the past to persnickety arguments over the language in these initiatives). Meanwhile, a few days ago a bill was introduced in the Florida House to limit THC amounts in the event the ballot initiative passes. We understand that the AG and legislators are elected officials unbeholden to the governor, but DeSantis could at least express support for the idea that it should be up to Sunshine State voters to decide whether adult-use cannabis should be legal — which by the way would be perfectly consistent with his vision of Florida as “freedom’s vanguard.” His failure to do so suggests that he is, at a minimum, untroubled by the AG’s undemocratic efforts.

Conclusion

DeSantis’ disparaging comments about cannabis and acquiescence in efforts to prevent Floridians from voting on legalization mean that he cannot get anything higher than a C-. While his framing of cannabis as a states’ rights issue is encouraging, there is nothing in his record to suggest that DeSantis would move to change the federal prohibitionist framework that hinders the development of legal cannabis industries at the state level. That said, there is at least the possibility that a DeSantis Administration would strike a compromise that lays down some bright lines for states and their cannabis industries. Obaman half-measures are hardly something to get excited about, but coming from Ron DeSantis, that wouldn’t be too bad, would it?

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Wie Sie Ihr geistiges Eigentum international schützen können https://harris-sliwoski.com/chinalawblog/how-to-protect-your-ip-internationally/ Di, 16 Jan 2024 11 :58:24 +0000 https://harris-sliwoski.com/?post_type=chinalawblog&p=134159 A Strategic Approach to Global IP Protection While tidying up my inbox, I stumbled upon an old email I had sent to a Spanish client who had engaged our law firm to safeguard their IP across the globe. The below comes from our initial email, mapping out what we proposed we do to protect this

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A Strategic Approach to Global IP Protection

While tidying up my inbox, I stumbled upon an old email I had sent to a Spanish client who had engaged our law firm to safeguard their IP across the globe. The below comes from our initial email, mapping out what we proposed we do to protect this company’s IP globally.

  1. Identifying Where to Register Your IP: We likely will want to secure trademarks for your brand names, your logos, and some or all of your product names, in all countries where your products are produced or sold, or where you have significant business operations. In doing this, it is important that you think ahead. Are there markets you plan to enter in the near future? Securing your IP rights now for those countries will probably be a good idea.
  2. Prioritizing Your IP Assets: Together we should assess which elements of your IP are worth the investment. It is easy for us as lawyers to suggest you secure registrations on all of your IP, but if you have a product which generates $15,000 in yearly sales in Vietnam, we can probably skip that country, unless you plan to do something there that will likely increase your sales. But right now, it probably is not worth the time and money to try to protect $15,000 in yearly sales, especially because the lower your sales are in any given country, the lower the risk that someone will steal your IP in that country.
  3. Protection Mechanisms: This typically involves registering trademarks, copyrights, or patents. A U.S.-based beverage company, for example, secured a trademark for its unique bottle design and patented its proprietary filtration process, thus ensuring two layers of protection.
  4. Strategic Contracting: Contracts can provide additional IP safeguards. Consider licensing agreements, trade secret agreements, NNN (non-disclosure, non-use, non-circumvention) agreements, confidentiality agreements, and non-compete clauses. A case in point is a licensing agreement we drafted for a client with a European partner, which included specific clauses on IP usage and infringement penalties.

Non-Legal Means to Fortify IP Protection

  1. Maintaining Key Technologies Locally: Keeping your critical technologies and procedures within your home country, as far as feasible, can limit exposure. A Spanish winery we advised kept their unique fermentation process a closely guarded secret within their home facility.
  2. Limiting Access to Sensitive Information: Restrict key information to a small circle of trusted individuals. Think of it as the ‘less is more’ philosophy in information dissemination.
  3. Designing Copy-Resistant Products: Ingenious product design can deter copying. A client in the electronics sector designed their products with custom components that were difficult to replicate, adding a layer of protection against imitation.
  4. Compartmentalizing Production: By distributing different production stages across various entities, you reduce the risk of a single manufacturer gaining complete know-how. This approach was effectively used by a client manufacturing specialized automotive parts.
  5. Diversified Outsourcing: Outsource different components to various companies. This minimizes the risk of any single supplier becoming a competitor.
  6. Rigorous Hiring and Contracting Processes: Thoroughly vet employees and business partners worldwide. Ensure they sign NDAs and non-compete agreements. A tech firm we counseled implemented rigorous background checks and contract stipulations for all their international hires.
  7. Conducting Diligent Supplier and Distributor Vetting: Select partners with their own reputations to protect. Include IP protection clauses in contracts. For example, a client in the cosmetic industry only partnered with suppliers who had a proven track record of respecting IP rights.
  8. Monitoring the IP Landscape: Keep an eye on your competitors’ IP activities to prevent copycats. Implementing a monitoring system for trademark filings, for instance, can be invaluable.
  9. Enforcing Your Rights: Vigilantly monitor for IP violations and take prompt action. Your IP rights are only as strong as your commitment to enforce them.

Bringing It All Together:

Securing your legal and operational setup is essential, but it’s only the beginning. Proactively managing your IP is a continuous process of strategic moves and countermoves. Legal protections are crucial but integrating non-legal strategies into your arsenal can significantly bolster your overall IP defense.

Though establishing a robust legal and operational framework is essential in safeguarding your intellectual property, it is just the beginning of what should be a dynamic process. As you venture into new markets and develop innovative products or services, you should continually reassess and fortify your IP strategies. Protecting your IP is not just about legal battles and paperwork; it’s about nurturing the core innovations and ideas that give your business its competitive edge.

The nuances of IP protection extend beyond borders. It’s crucial to stay informed about international IP laws and the laws in the countries in which you operate and buy your products, and adapt your IP strategies accordingly. Engage with experts, leverage new tools and technologies for monitoring IP violations, and cultivate a culture within your organization that values and protects intellectual creativity.

By integrating both legal and non-legal measures in a cohesive strategy, you not only position yourself to defend your current IP assets but you also pave the way for future innovations to thrive. When it comes to intellectual property, an ounce of prevention is worth a pound of cure. Stay proactive, stay informed, and continue to evolve your strategy to suit your current IP situation.

Getting your legal and operational house in order will obviously not prevent all IP problems, but it is a necessary start.

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Delta-8 Trademarks Update https://harris-sliwoski.com/cannalawblog/delta-8-trademarks-update/ Wed, 03 Jan 2024 15:00:58 +0000 https://harris-sliwoski.com/?post_type=cannalawblog&p=134216 The impact on Delta-8 THC (“D8”) of AK Futures v. Boyd Street Distro, a 2022 Ninth Circuit decision, has been widely exaggerated. As my colleague Griffen Thorne explains: What AK Futures actually did was affirm a preliminary ruling in a trademark dispute where legality of delta-8 products was one of a number of issues at play. In order to

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The impact on Delta-8 THC (“D8”) of AK Futures v. Boyd Street Distro, a 2022 Ninth Circuit decision, has been widely exaggerated. As my colleague Griffen Thorne explains:

What AK Futures actually did was affirm a preliminary ruling in a trademark dispute where legality of delta-8 products was one of a number of issues at play. In order to have a protectible trademark, the good or service must be lawful in commerce. The infringer argued that delta-8 products were not lawful. As part of the preliminary injunction, the Ninth Circuit agreed that the plaintiff was “likely” to succeed in establishing that the products were lawful, if they came from hemp and if they contained under 0.3% delta-9 THC. This was a preliminary ruling, but it’s likely that the court would rule similarly on some sort of final ruling. However, to claim that this case is the be-all-end-all for delta-8 is just, well, wrong. The case is not precedential anywhere outside of the Ninth Circuit.

The AK Futures court held that “AK Futures is likely to succeed on its trademark claim because its delta-8 THC products are not prohibited by federal law, and they may therefore support a valid trademark.” A year and a half later, have any D8 products supported a valid trademark?

According to USPTO, as of January 2, 2024, it has registered four trademarks with the term “delta-8” included in their goods and services identifications. In all four cases, the mention of D8 is exclusionary, stipulating that the goods or services described cannot be or involve goods containing delta-8. For example, one of the descriptions is “Bar soap; Body butter; Body scrub; Body sprays; Bubble bath; Lip cream; Shower gel; Skin lotions; Cosmetic bath salts; Lip balm … all of the foregoing not containing delta-8 tetrahydrocannabinol THC …”

In this case, initially USPTO refused the application, noting in an office action that:

the Applicant’s website clearly states ‘All spa products are made with CBD and Delta8 THC!’ Thus, the identification of goods is broad enough to include goods that contain Delta-8. As discussed above and as reflected in the attached documents, tetrahydrocannabinols are listed on Schedule I under the CSA. Specifically, Schedule I identifies ‘THC, Delta-8 THC, Delta-9 THC, dronabinol and others.’

The office action goes on to explain that 2018 Farm Bill’s carveout of hemp from the Controlled Substances Act’s prohibition on marijuana “explicitly applies to delta-9 THC, and this delta-9 limitation language to the identification of goods does not convert Schedule I unlawful goods (e.g., delta-8 THC) to goods that may be lawfully used in commerce.” Bear in mind that the office action was issued on July 7, 2022 – a month and a half after the AK Futures decision was handed down – yet USPTO did not equivocate and plainly referred to delta-8 goods as unlawful.

There are over a hundred pending applications identifying delta-8 goods and services. Perhaps in its treatment of these, USPTO will take a different tack. So far, however, it is clear that AK Futures did not change USPTO’s approach and registration of a trademark in connection to D8 products has not occurred.

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Widersprüche und Ungültigkeitserklärungen von Marken in China: Gute und schlechte Nachrichten https://harris-sliwoski.com/chinalawblog/china-trademark-oppositions-and-invalidations-good-and-bad-news/ Wed, 03 Jan 2024 11:58:59 +0000 https://harris-sliwoski.com/?post_type=chinalawblog&p=134202 Our China Trademark Opposition and Invalidation Victories Our law firm just got some good news in the form of several favorable decisions on China trademark opposition and invalidation proceedings. This in itself was good news, but we were also pleased to see China’s Trademark Office (TMO) and Trademark Review and Adjudication Board (TRAB) give critical

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Our China Trademark Opposition and Invalidation Victories

Our law firm just got some good news in the form of several favorable decisions on China trademark opposition and invalidation proceedings. This in itself was good news, but we were also pleased to see China’s Trademark Office (TMO) and Trademark Review and Adjudication Board (TRAB) give critical weight in all of the proceedings to the bad faith exhibited by the adversary, be it someone trying to register our client’s trademark, or someone who already had.

Bad Faith in China Trademark Disputes

As readers of this blog well know, bad-faith trademark applications are a widespread, persistent problem in China, and it is therefore encouraging to see the TMO and TRAB honing on the bad-faith character of these applications.

The Fight Against China Trademark Squatting

Most of the favorable opposition and invalidation decisions hinged on Article 32 of the Trademark Law, which, among other things, provides that one may not use “illegitimate means to rush to register a trademark that is already in use by another person and has certain influence.” However, it is far too commonplace for China trademark squatters and others acting in bad faith (for example, counterfeiters and ill-intentioned business partners) to rush to do just that. In the past, we have seen the TMO and TRAB taking an excessively strict view of what constitutes illegitimate means. This has meant that, in some cases, an invalidation or opposition request has been denied, even though the victim of the bad-faith registration or application had in fact used the trademark in China, and it was clear that the registrant or applicant was up to no good.

China’s Evolving Stance on “Illegitimate Means”

It seems the TMO and TRAB are adopting a more realistic approach to bad faith in the context of opposition and invalidation proceedings, and not giving the benefit of the doubt to parties that previously fiddled with other trademarks that legitimately belonged to someone else. They seem to be understanding that vast portfolios of squatted trademarks are built slowly, and such activity should be nipped on the bud.

Unfortunately, however, several of the decisions seemed to rest exclusively on the bad faith on the part of the adverse party. Basically, the rulings said that if not for the bad faith of the other party, the invalidation or opposition would have failed. This is troubling because, in these cases, our clients bringing the actions are important marketplace actors. Their trademarks have been used in China and under any reasonable standard do in fact have “certain influence” in China. Though in these cases the bad faith of the other party saved the day, it is still concerning that an unduly strict standard continues to be applied when it comes to establishing prior use and “certain influence” in China.

This situation reminds me of the puzzlingly high threshold that was applied a few years ago when deciding if a trademark was “well-known” per China’s Trademark Law. In one case, China’s Trademark Review Board found that our client’s trademark was not “well-known”, even though this client is one of England’s Big Six soccer teams. All it would have taken for the adjudicator to realize that the trademark was recognizable to millions of Chinese was to ask colleagues. But instead, it seemed that the adjudicator’s perspective was confined to their cubicle, disconnected from real-world recognition. This same lack of perspective seems to influence evaluations of influence and prior use.

Conclusion

Though some troubling trends remain in terms of China trademark protections, the recent decisions emphasizing bad faith are an encouraging development for trademark owners facing infringement in China. As we move into 2024, these cases demonstrate progress in recognizing illegitimate Chinese trademark registrations and protecting brands from squatters. But there is still room for improvement, particularly in evaluating influence and prior use in China.

Still, we will take these victories, and we will focus on the good. Again, it is encouraging to see the TMO and TRAB taking a harder line on bad-faith applicants and registrants and we can hope that these Chinese trademark agencies will continue to move in the direction of protecting legitimate trademark owners.

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