ECTA Conference review

Attorneys, practitioners and in-house counsel from across the world attended the three-day European Communities Trade Mark Association’s (ECTA) conference in Palermo, the island’s main city.

Counterfeiting in China—a hot topic for trademark owners—was the subject of the opening day’s only public session: Filing and Enforcement Strategies in China. Pedro Velasco Martins, deputy head of intellectual property and public procurement at the European Commission (EC), explained that in 2010, 85 percent of counterfeit goods seized within European borders came from China—a “sobering” figure.

Martins handed over to Horace Lam, partner at law firm Jones Day in Beijing, who joked about the many “horror” stories he could tell about counterfeiting in China. Lam urged attendees to understand the country’s filing system, which is ‘first-to-file’ and has no use requirement. “The lesson to learn is that if you don’t give yourself a trademark in China, someone will give you one,” he said, provoking laughter and applause in the audience.

To illustrate his point, Lam told the story of Jeremy Lin, the professional US basketball player who shot to stardom almost overnight. After a mediocre start to his career, Lin was engulfed by a wave of popularity earlier this year following several impressive performances for the New York Knicks.

The ensuing ‘Linsanity’ soon swept across China, the birthplace of Lin’s parents. Lam said that as a result of this new found fame, a company began trading under the name ‘Jeremy Lin’, making and selling legitimate products.

According to Lam, many brands are still not protected in China and, historically, businesses have paid large sums of money to acquire their trademarks. He repeated that to beat the counterfeiters, practitioners must understand the system, calculate their budgets, and most importantly, have a strategy. “Do not blindly target the infringers,” he advised.

Patsy Lau, partner at law firm Deacons in Hong Kong, then explained that registering Chinese-character trademarks was crucial for Western companies because “95 percent of China speaks Chinese as their first language”. Patrick Marichal, trademark manager at Solvay in Belgium, added that the Chinese IP system could “live without us” and emphasised that Westerners should avoid “being the teacher” and should “try to understand the system”.

On the second day, ECTA’s annual general meeting kicked off proceedings before the official welcome address, given by the association’s president Annick Mottet Haugaard. A packed conference hall soon turned its attention to the day’s first session: Headlines in Trade Marks in Designs.

Peter Mueller, ECTA’s second vice president-turned news anchorman for the morning, played a recorded interview with Francis Gurry, director general at the World Intellectual Property Organization (WIPO).

Gurry said the two foremost challenges facing trademark owners were to ensure that legislation and regulation “maintained relevance” and “avoided a loss of coherence”.

Pointing to multiple international agreements, he questioned the level of coherence and asked: “How do we ensure that this makes sense?” Mueller asked Gurry for his opinions on home registrations, to which he replied that WIPO did not want “change for change’s sake”. “We need to modernise the system,” he said.

The General Court in Luxembourg was the next topic of discussion. Jean-Jo Evrard, a member of ECTA’s publications committee, lamented the “huge” number of appeals and “huge” backlog at the court. He said judgments were too long and too complicated to read—“you don’t need 100 paragraphs to assess the likelihood of confusion”.

Following Evrard’s comments, the audience heard about the allegations of leaks at the Office of Harmonization for the Internal Market (OHIM), based in Alicante, Spain. It has been claimed that confidential documents relating to some trademark applications became publicly available, raising fears that competitors could view private information.

Maron Galama, a member of ECTA’s professional affairs and designs committees, said access to files was “very open” at OHIM.

Moving on to domain names, session host Mueller asked whether the Internet had become “wild” with counterfeiting and piracy. Andrew Mills, chair of ECTA’s Internet committee, told a fictional story about a Chinese national called ‘Navy’ to illustrate the problems facing IP owners online.

‘Navy’ used country-code top-level domains (ccTLDs) and internationalised domain names, ie, those in non-Latin scripts, to operate illegal businesses, infringing brands as he went. The message was clear: hundreds of ccTLDs are already being used to facilitate IP infringement. “This should be a word of warning for brands in light of the new generic TLDs (gTLDs),” Mills said.

Expanding on this topic, the afternoon’s Special Report on Internet Issues examined the gTLD programme, under which businesses have applied for domains such as .app and .google.

Lorna Gradden, operations director at domain registrar Com Laude, updated the audience on the programme’s latest developments. She explained that applications for 1,930 gTLDs had been received by the Internet Corporation for Assigned Names and Numbers (ICANN), which marshals the domain name space and manages the gTLD programme.

“GRADDEN ADVISED COMPANIES THAT HAVE NOT APPLIED TO ICANN TO ADOPT A WIDE-RANGING APPROACH TO ENSURE NO-ONE REGISTERS THEIR TRADEMARK AS A NEW GTLD.”

Gradden advised companies that have not applied to ICANN to adopt a wide-ranging approach to ensure no-one registers their trademark as a new gTLD. “Search the list and see if there any confl icts; file a legal rights objection; consider negotiating and maybe buy them out; file a public comment; even lobby governments and ask them to file an early warning,” she said. Her last piece of advice was simple: get involved with ICANN.

The final day of the conference began with the Special Report on OHIM New Competencies and Practices. OHIM’s president Antonio Campinos was interviewed by Olivier Vrins, a member of ECTA’s anti-counterfeiting committee. Focusing on class headings, Campinos said convergence was a pressing issue at OHIM. “We want an EU-wide agreement: it’s very ambitious, but we like to be ambitious,” he said.

The interview turned to the European Observatory on Counterfeiting and Piracy, the work of which is overseen by OHIM. Th e observatory was created by the EC earlier this year and is bringing together specialists from the private and public sectors to support law enforcement’s eff orts to tackle IP infringement.

Campinos said the observatory’s priority should be to define to what extent infringement affects and damages GDP. “We need a similar figure to that of the US Patent and Trademark Office, which shows that IP-intensive industries contribute to 34 percent of GDP,” he said.

Jason Burrati, an IP consultant in the US, encouraged OHIM to “get back to basics” by tackling counterfeiting and piracy. “We (IP holders) are looking at OHIM and the observatory for information and statistics on the internal market, best-practice strategies and public awareness,” he said.