trademark strategies redefined: a global perspective on trademark
Transcription
trademark strategies redefined: a global perspective on trademark
THOMSON REUTERS TRADEMARK STRATEGIES REDEFINED TRADEMARK STRATEGIES REDEFINED: A GLOBAL PERSPECTIVE ON TRADEMARK REGISTRATION, LITIGATION AND POLICY. DAAN TEEUWISSEN PERRY VISCOUNTY DR. WERNER SULZBACH PHILIP HARRIS ABOUT YOUR MODERATOR Andreas Gerling Senior Account Manager Thomson CompuMark [email protected] T + 32 3 220 72 70 Duesseldorf, Germany THOMSON COMPUMARK PRESENTS: TRADEMARK STRATEGIES REDEFINED A GLOBAL PERSPECTIVE ON TRADEMARK REGISTRATION, LITIGATION AND POLICY Daan Teeuwissen Managing Partner Knijff Trademark Attorneys, The Netherlands Dr. Werner Sulzbach European Patent /Trademark Atty Prinz & Partner, Germany Perry Viscounty Philip Harris Partner UK and European Trademark Atty Latham & Watkins LLP, USA Gill Jennings & Every LLP, UK TRENDS IN TRADEMARK CLEARANCE Daan Teeuwissen Knijff Trademark Attorneys / Multisearch Managing Partner CONTENTS • Introduction • Trends in registration • Trends in searching • Searching solutions • Conclusions INTRODUCTION Daan Teeuwissen Knijff Trademark Attorneys Established 1989 15 attorneys, 60 staff Focus on trademark clearance Multisearch® TRENDS IN CLEARANCE? What are your experiences with conducting full trademark clearance searches via online databases on your own? Recent post on TM blog TRENDS IN REGISTRATION • Globalization • CTM/Madrid systems • Expansion • Lower official fees (OHIM) • Online/E-filing • Improved service level (PTO’s) TRENDS IN REGISTRATION • Ex officio searches discontinued or limited (OHIM, Benelux) • Decreasing relative grounds examination (UK) TRENDS IN SEARCHING • Internet opens up information • More and better search engines • Increasing (free) online databases • Both official and commercial TRENDS IN SEARCHING • Risks: – ‘Perception of safety’ – Quality, completeness of the data searched – National/linguistic issues: get local opinion! – How to manage large amounts of data? TRENDS IN SEARCHING • Type/size of applicants/companies: – Private/small – Medium sized – Multinational • Different approach depending on nature of business: – FMGC, Tech., Fashion, Pharma TRENDS IN SEARCHING • Risk avoiders: (e.g. pharma) avoiding risk has priority over costs • Risk reducers: prepared to search but to certain extent • Risk takers: cost (not risk assessment/liability) as primary driver TRENDS IN SEARCHING • Different types of marks selected (per industry) in naming process • More descriptive marks > less searching (?) • Weaker brands (lower value, difficult to enforce) ECONOMIC TRENDS • Economic downturn: – limited investments, less R&D, fewer new products and services, fewer new marks required – M&A leads to fewer, bigger companies (e.g. pharma) – Fewer companies need fewer brands ECONOMIC TRENDS • TM departments reorganized / downsized • Budget cuts • Conclusion: Same/more work, with fewer people and less money • Result: increased creativity, higher risk acceptance, more conflicts SEARCHING SOLUTIONS • Well developed search strategy fitting the industry • Different approaches e.g.: – Pharma company looking for name for pipeline product vs. – IT company that expands existing name globally SEARCHING SOLUTIONS Example: US Pharma co., pipeline names • Tier approach: – Identical search home country – (.com) domain name check – Screening search key regions (e.g. Top 6 EU, Japan/China/Australia) – Full search key regions – Full search remaining regions A SEARCH STRATEGY PhaseI Scan Searches Search Scope Preliminary (Screening Search) PIU+CTM+WIPO+US+gTLD (.com) Secondary (Screening search) PIU+CTM+CH+WIPO+US+GE Scan Search Analysis Candidate Priorty Allocation Teams Discuss Candidates to progress Comprehensive Searches PhaseII Preliminary (Comprehensive Search) US (Fed/State/CL) incl. Legal opinion Secondary (Comprehensive Search) Step 1 Top 5 EU countries (FR/GE/IT/SP/UK) + Overall Opinion Step 2 Other Strategic Countries + local and/or overall legal opinion Step 3 Other Countries + local and/or overall legal opinion SEARCH SOLUTIONS SEARCHING SOLUTIONS • In house or outsourcing? • Not only searches, also (internal) reporting, sharing, archiving • Not only trademark search, also regulatory, domain names etc. • Requires integrated (web based) solutions SOME CONCLUSIONS • Easier to register, less reason to search? • Lot of data available, but be aware of quality/completeness/local issues • Develop suitable strategy (define priorities, risk levels etc.) Thank THANKyou YOU for your attention! Daan Teeuwissen Managing Partner Leeuwenveldseweg 1382 LX Weesp The Netherlands Telephone: +31 294 490 900 Fax: +31 294 416 722 [email protected] www.knijff.com www.multisearch.info PRACTICE NOTES ON TRADEMARK CLEARANCE A GERMAN PERSPECTIVE Dr. Werner Sulzbach Patent Attorney, Partner Prinz & Partner TRADEMARK PROSECUTION IN GERMANY Trademark Application Examination for inherent registrability Registration Applicant Opposition proceedings GROUNDS FOR OPPOSITION • Registered Trademarks • New: non-registrered trademarks • New: business signs • Company names and trade names – Example: Daimler AG • New: Titles of Works New: Well-known trademarks: taking unfair advantage or damaging the reputation thereof CONDUCTING CLEARANCE SEARCHES • No official objection search • Pre-opposition negotiations: – prior right agreement and restriction of scope • Opposition: – cancellation of trademark registration – final decision 2 to 3 years after filing CONDUCTING CLEARANCE SEARCHES • Risk of trademark infringement: – Holder of earlier rights can stop market appearance • Infringement Claims – Cease and desist – Information disclosure / financial accounting – Damages • Preliminary injuction – Court order is enforceable immediately CONDUCTING CLEARANCE SEARCHES • Further Consequences: – Destruction of marketing materials, especially catalogues! – Possible destruction of products – Damage to public image, consumers and retailers WORST CASE EXAMPLE • OLG Düsseldorf: 3. Nov. 2009 Lifetec Medion AG ./. Litec Litec Computer GmbH Start of business: 1996 Likelihood of Confusion (+) After more than 10 years of local market appearance WHICH RIGHTS ARE TO BE SEARCHED? • Registered Trademarks • Company Names Company Names • Domains • Designs • Work Titles Designs Trademarks Domain Copyrights Work Titles CHANGES IN A CLIENT’S BEHAVIOR CHANGES IN A CLIENTS BEHAVIOR • Cost cutting by identical screening searches • Example: TWINCUT – Go ahead? • But what about: – TWINOX – TWINETTE – TWINSHARP – TWIN CUSINE – TWIN …all owned by Zwilling J.A. Henckels AG, Solingen? DEVELOPMENT OF SEARCH STRATEGY • Cost factors in trademark searches: – Scope of the searches (trademark, companies, designs) – Similarity or identity search – Number of countries to be searched – Number of classes to be searched – Format of the report TIME MANAGEMENT PRODUCT Branding – Favorite Name + preferably 5–10 alternatives Searches 3–9 months Discussion of results + decision Application / Registration (Trademarks / Domains etc.) Registration 2 – 9 months (depending on strategy) Marketing Production THANK YOU Dr. Werner Sulzbach Patent Attorney, Partner Prinz & Partner Rundfunkplatz 2 80335 München Telephone: +49 (0) 89 / 59 98 87-0 Fax: +49 (0) 89 / 59 98 87-211 [email protected] www.prinz.eu SEARCHING AND CLEARING TRADEMARKS IN THE UNITED STATES Perry J. Viscounty, Partner Co–Chair Global Intellectual Property Litigation Group Latham & Watkins LLP WHY CONDUCT A TRADEMARK SEARCH? • No affirmative duty to search prior to registering a trademark • Seventh Circuit: “Nowhere does the Lanham Act specifically mandate a pre-application search . . . . To imply [such] a duty … would appear inconsistent with the statutory scheme.” (Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 671 (7th Cir. 1982)) WHY CONDUCT A TRADEMARK SEARCH? • Bad faith: – Failure to conduct a search is not generally, by itself, sufficient to prove bad faith, but – the absence of a search could contribute to a finding of bad faith. (Savin Corp. v. Savin Group, 391 F.3d 439, 460 (2d. Cir. 2004)) TRADEMARK SEARCHING IS PREVENTATIVE MEDICINE • Searching in advance provides evidence to rebut an argument of bad faith or willful intent • May avoid: – Damages (including treble damages) – Injunction – Disgorgement of profits – Attorney’s fees and costs – Corrective advertising DEFENDANT’S BAD FAITH INTENT ON SELECTING THE MARK • The relevant inquiry seems simple: – Did defendant, in choosing the mark, “intend to cause confusion” among consumers? • Simple or not, courts have interpreted this factor differently. – Some courts have held that “Defendant’s failure to perform an official trademark search, even with the knowledge that plaintiff marketed its [trademark] under the [same] name, does not standing alone prove they acted in bad faith.” (Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739 at 746 (2d Cir. 1998)) DEFENDANT’S BAD FAITH INTENT ON SELECTING THE MARK • “Good faith can be found if a defendant … has requested a trademark search or has relied on the advice of counsel.” (W.W.W. Pharmaceutical Co. v. Gilette Co., 984 F. 2d 567 at 575 (2d Cir. 1993)) • “[R]eliance on the advice of counsel after conducting a trademark search is sufficient to defeat an inference of bad faith.” (Lucent Info. Mgmt., Inc. v. Lucent Techs. Inc., 186 F.3d 311, 318 (3d Cir. 1999)) THE PROBLEM • Which circuit will you be sued in? • Different law in each circuit. • Moving forward without a search simply exposes you to too much risk. THE SOLUTION: • Perform a preliminary or “knock out” search and/or a Full Trademark Search! PRELIMINARY OR “KNOCK-OUT” SEARCHES • Limited search of: – Federal applications and registrations – State registrations for identical marks • Advantages: – Can be done relatively quickly and inexpensively – Can potentially be used to rebut bad faith argument • But does not give you the whole picture FULL TRADEMARK SEARCHES • U.S. Full Availability Search covers: – Federal pending and registered trademarks; – Existing state trademark registrations; – Industry common law trade directories, publications, association listings and business name listings; – Indices of company information and statistics; – Company names and corporate availability; and – Current Internet domain name registrations. • Web extension products provide additional industry specific databases FACTORS TO KEEP IN MIND WHEN REVIEWING A FULL SEARCH • Abandoned or cancelled marks • Supplemental Register • Section 44 applications • Individual state database limitations FACTORS TO KEEP IN MIND WHEN REVIEWING A FULL SEARCH • Marks need not be identical! • Similarities can include phonetic similarity, underlying meanings, as well as translations: – Corrupted spellings: Kwik vs. Quick – Visual similarity: Steinway vs. Steinberg (for pianos) – Phonetic similarity: Energy vs. NRG – Underlying meanings/synonyms: Hurricane vs. Tornado – Equivalents in other languages: Good morning vs. Buenos Dias AGGRESSIVE SENIOR USER • Full search looks clear • Registration is issued • You are in the clear, right? • WRONG! • Senior user can still challenge your mark THE PROBLEM • Marketing has come up with a fantastic new product name • Full trademark search shows no potential conflicts • Sounds great, right? • Misappropriated from competitor? THE SOLUTION • Trademark searches by themselves do not address all the potential pitfalls • Any complete trademark search requires investigation into: 1. What does the mark mean? 2. How do you pronounce it? 3. Does the mark have any meaning within the industry or in any foreign language? 4. Who created the mark? 5. How was the mark created? 6. Who are your competitors? THE SOLUTION 7. Will the mark be used with a design or logo? 8. What goods and services will be used in connection with the mark? 9. Do you plan to expand the use of the mark to other products or services? 10. Where do you plan to manufacture, distribute, advertise and sell the product? 11. How do you plan to market this product or service? 12. Will the mark be used as a corporate name or a domain name? SCENARIO 1 Your client intends to launch a new coffee drink called QUICK TWITCH PRELIMINARY SEARCH RESULTS • Two similar marks: “Quickly Twitch-It Too” and “Twitch Master 500, Quick Shakes” • None of the goods or services cover coffee or beverages • Move on to full search FULL SEARCH RESULTS • International company called Got the Shakes, Inc. owns a family of “Twitch” marks, such as “Twitch Free,” and “Go Twitch,” including various design marks, for nutritional supplements. • Got the Shakes, Inc. has opposed all marks that contain the word “Twitch” that were filed in connection with nutritional and dietary supplements, and food and beverage products. RISK CONCLUSION FOR SCENARIO # 1 Even if another mark is not identical or similar, does not share the same marketing channels, and there is little chance of actual confusion to support a claim of “likelihood of confusion,” be aware of the Aggressive Senior User. SCENARIO 2 Your client created new designs for wigs, hair pieces and hair extensions and wants to start marketing the products under the name BARELY NOTICED. PRELIMINARY SEARCH RESULTS • RISK CONCLUSION FOR SCENARIO # 2 • Weak mark • Highly diluted mark • If adopting an identical mark for a similar product or service, it is likely you will receive a cease and desist letter or a lawsuit from one of the prior users. GENERAL CONSIDERATIONS • At a minimum, always conduct a preliminary or “knockout” search. • It is highly recommended to order a full trademark availability search. • Go beyond the full search results and conduct additional research. • In reviewing the search results, be conscious of not only what marks your client might be infringing, but who holds those marks and how aggressive that holder has been in the past. THANK YOU Perry J. Viscounty, Partner Co–Chair Global Intellectual Property Litigation Group Latham & Watkins LLP LATHAM & WATKINS LLP 650 Town Center Drive 20th Floor Costa Mesa, CA 92626-1925 Direct Dial: +1.714.755.8055 Fax: +1.714.755.8290 [email protected] http://www.lw.com GENERAL TRENDS • Budgets/Commoditization/Discounting • Official – v – professional fees • Growth of the private client SEARCHING TRENDS • Increased realism • Pre-instruction enquiries – self-searching • Search targeting SEARCHING TRENDS • Common law searches • “File and forget” • China/India SEARCHING TRENDS • Impact of OHIM • Precedent consistency/quality? • Approaches on risk assessment SEARCHING TIPS • The Darts-IP comparison tools • Use of UK companies House web-check facility WORKING WITH BRAND OWNERS • The changing relationship in the UK • Client care COST AND TIME TO REGISTER • CTM – forum of choice for many filers • UK- private client trend • Internationals- China REDUCING/AVOIDING DISPUTES • Search comprehensively! • Specification limits at outset • Commercial approach to co-existence • Up-front appraoches REDUCING/AVOIDING DISPUTES • Attack as defense • Trade Mark chess – leverage the assets • The UK Patents County Court and the UKIPO Mediation scheme THANK YOU Philip Harris, Partner UK and European Trade Mark Attorney Solicitor Gill Jennings & Every LLP Broadgate House 7 Eldon Street London EC2M 7LH United Kingdom Telephone: +44 (0)20 73771377 Fax: +44 (0)20 73771310 [email protected] www.gje.co.uk Q&A For more information on any Thomson CompuMark products or services see: http://compumark.thomson.com Daan Teeuwissen Managing Partner Knijff Trademark Attorneys, The Netherlands Dr. Werner Sulzbach European Patent /Trademark Atty Prinz & Partner, Germany Perry Viscounty Philip Harris Partner UK and European Trademark Atty Latham & Watkins LLP, USA Gill Jennings & Every LLP, UK IN CLOSING This is all the time we have for today. Again, if you have additional questions you can contact Andreas Gerling at Thomson CompuMark [email protected] Thank you for attending and we hope to see you again at our future webinars. Thank you very much.