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New York City Bar Association Trademark and Unfair Competition Committee Seminar

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statue-of-liberty-267948_960_720During an unseasonably freezing spell in autumnal New York, I was honoured to be amongst the speakers at a NYC Bar Association seminar on 13 November 2017 organised and hosted by Ainslee Schreiber in her debut event since being recently appointed Chairwoman of the Trademark and Unfair Competition Committee of the Association.

Taking advantage of several International trade mark practitioners who were transiting through New York after the INTA Leadership Meeting in Washington, DC, the previous week, Ainslee organised and hosted an evening seminar on latest developments in key jurisdictions of interest to the Association’s members. Many braved the cold and it was a well-attended session, at the end of which I was delighted to meet Ronald Coleman, who successfully took THE SLANTS trade mark application all the way up to the Supreme Court and obtained registration of the mark.

Here is a review of the seminar with a few take-home points on each one of the presentations.

NY Bar

Manuela Macchi

I started the session with a summary of where we stand on Brexit-related IP issues, highlighting, in particular, the still complete uncertainty of the situation, but also how the publication of the CTIMA position paper and the EC position paper on the desirable outcomes advocated by the two institutions presented some points of overlap and, hopefully, started to delineate where we might be heading. In particular, it would be a huge relief for everyone, if indeed an automatic transfer of all EUTMs and RCDs onto the UK Register that preserves scope of protection and filing/priority dates and recognises seniority claims for UK registrations that have been allowed to lapse was confirmed. I also alerted the audience to the fact that one of the possible outcomes could be the creation of UK-effective trade mark and design rights even after Brexit.

The next speaker was Kenneth Ng, of Chang Tsi & Partners, who showed his business skills in giving the audience best practice tips on how to create successful relationships with Chinese clients. The most valuable suggestions were, in my view, two: 1) don’t just say show: i.e. explain by referring to visual examples using the client’s own goods/services and/or marks. This has the most impact in persuading clients, for example, that action in an infringement situation is necessary. 2) be ahead of the game when it comes to budgeting: i.e. find out when the client’s financial year ends and start obtaining information and planning for next year’s budget in good time before a budget is requested. This will enable you to do a most accurate job and impress the client.

Pier Luigi Roncaglia of SIB Legal gave a presentation focused on important points of difference in US and EU practice bringing many examples of cases where these differences brought to opposed outcomes. For example, in assessing likelihood of confusion in trade mark infringement proceedings, the analysis under EU practice is a lot more abstract and can lead to a finding of infringement even where the registered mark has never been used. Aspects such as price difference between the goods are irrelevant and there is no ‘parody’ defence. In the US, on the other hand, the context and the way in which marks have been used is essential in this analysis. Interesting also the points Pier Luigi made on the lower threshold in the EU – compared to the US – to prove the well-known status of a mark and the existence in the EU of the concept of ‘reputation’, which requires a lower level of notoriety than well-known status, but can give trade mark owners enhanced rights in opposition or infringement proceedings.

The next speaker, Punita Bhagarva, of Inventure IP, discussed the huge improvements both in IP legislation and systems in India in the last few years, including the improvements in the handling of trade mark applications by the Indian IPO. The times of having to renew a registration before the application was registered are over! Examination times have reduced dramatically for national trade mark applications as well as designations of India under the Madrid system. Also, the Indian IPO has now gone live with an online portal that enables e-filings, all records are digitalised and all communications are electronic.

Abraham Diaz of Olivares touched on the possible impact of NAFTA negotiations on IP and then went on to discuss developments in GIs protection in Mexico referring to Tequila and Mezcal examples. Abraham also reported on the recent introduction of  a trade mark opposition procedure (oppositions to trade mark applications did not exist in Mexico until not long ago) and a Court decision which opened the path to abusive website take-downs on the grounds of copyright infringement. Abraham also entertained the audience by handing out great prizes to those who guessed the answered his questions!

To wrap up the session, Monique Couture of Gowlings WLG brought up the latest developments from Canada. Firstly, it appears that the long announced entry of Canada in the Madrid system will (probably) happen in 2019. The Canadian TMO seems to have resolved the IT issues that were hampering the implementation. In anticipation of the switch to the Nice Classification system, some applicants have filed trade mark applications for all 45 classes. Whilst it is unlikely that they genuinely intend to use the marks in all 45 classes, it is still unclear how the Registry will treat those applications. Finally, Monique discussed the implications of the CETA Agreement on IP: two points to note, in particular, are the introduced ability to protect GI’s in Canada and the immediate protection by virtue of the CETA Agreement, of 187 EU GIs in Canada. Interestingly, no Canadian GI was granted immediate protection in the EU by virtue of the Agreement.

Manuela Macchi  27 November 2017


1 Comment

  1. a nice summary – I found the comments regarding US/EU differences especially interesting!

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