Happy Mid-Autumn Festival!

First of all Happy Mid-Autumn Festival 中秋節 to you all! For those of you who did not have the pleasure of staring to the moon together with hundreds of picknicking and moon cake eating families in Victoria park here is a quick primer of the event.

IP Dragon was delighted to receive an email of Professor Peter K. Yu, who revisited the DS362, 'Measures affecting the protection and enforcement of intellectual property in China in a paper called "The TRIPs Enforcement Dispute". Professor Yu recommends everbody who needs to devise a strategy to improve the enforcement of IPRs in China the following principles:

1. Understand provincial and local differences;

2. Take the long view;

3. Appreciate local solutions on their own terms;

4. Don't hide the ball (market access disputes should not be framed as intellectual property violations);

5. Beware of difference engineers (who make differences look bigger than empirical anyalisis justifies).

These principles sound all very sound to me. If you are interested in the subject of whether China is compliant to TRIPs you might want to read my thesis (of which Professor Peter K. Yu was the co-advisor).

More good news: IP Dragon, your purveyor of anything related to IP in China, was selected by the U.S. Library of Congress to be archived. The process will start next Tuesday and you can also find IP Dragon as of October via the Library of Congress.

Picture: Danny Friedmann

Chinese Coffee Cats, Obscene Brand "Star Tuuuut" and the Difference Between B and F

Do you remember the Starbucks versus Xingbake case? See here. But there are many more coffee(copy)cats in China, see here. Confusion between the Starbucks and Star tuuuut might has a lot to do with culture or rather language. Confusion might not be so big in Western countries (although it was about the tort: passing-off and dealt with an unregistered trademark in a Common Law country, it reminded me of the Advocaat case), but for many Chinese the difference between a B and F in the second syllable might not have a big impact on the total picture of the word.
IP Dragon received this picture of a coffee shop in China. Not completely PC but then again it's Friday.

Thank you P.

TGIF, so have a good weekend!
IP Dragon

Research: Through Fake Sunglasses You Will See Reality Differently, Behave More Unethical, Feel Less Authenic

Remember IP Dragon's post of April, 2009: 'Faustian Pact Anno 2009: Receive Counterfeit Products, Loose Your Soul'.

Francesca Gino (Kenan-Flager Business School, University of North Carolina in Chapel Hill), Michael I. Norton (Harvard Business School) and Dan Ariely (Fuqua Businss School, Duke University) wrote an interesting paper for Psychological Science about the experiments, which shed light on the influence of wearing fake sunglasses.

Conclusions:

Wearing counterfeit products makes individuals:
- feel less authentic;
- increases their likelyhood of behaving dishonestly;
- increases their likelyhood of judging others as unethical.

Read their paper in Psychological Science (10 PDF pages) here.

IP Dragon Speaks at 3rd Global Forum on Intellectual Property, Singapore, January 6 and 7, 2011

IP Dragon is very honored he is invited by the IP Academy of Singapore to speak at the 3rd Global Forum on Intellectual Property, Raffles City Convention Centre, on January 6 and 7, 2011. This years theme is very actual: "Turbulent Times: Onwards and Upwards for Intellectual Property?"

I am very impressed by the learned line-up and I am very sure special things will happen when so much IP passionate scholars and practisioners fill up the same Singaporean space.

The Chairman of the IP Academy, professor David Llewelyn, and author of the book 'Invisible Gold in Asia' which will be reviewed on this blog soon, and the following IP scholars and practisioners will be present:

• Stan Abrams, Author of China Hearsay blog / Of counsel at Golden Gate Law Firm /IP Professor, Beijing’s Central University of Finance and Economics Law;
• Dr Tanya Aplin, Reader in IP Law, King's College, London;
• Justice Richard David Arnold, Judge of the High Court, Chancery Division;
• Ms Toe-Su Aung, General Counsel, Anti-Illicit Trade, BATMark Ltd;
• Mr Shamnad Basheer, Founder, Spicy IP Blog, Ministry of HRD Professor in IP Law, National University of Juridical Sciences, India;
• Mr Bruce Berman, CEO, Brody Berman Associates (US);
• Judge Prof. Dr. Joachim Bornkamm, Presiding Judge, Federal Supreme Court of Germany;
• Prof Robert Burrell, Professor of Queensland;
• Mr George Chappelle, EVP, Chief Operating Officer, Solocup;
• Ms Peggy Cheung, Partner, Jones Day (Hong Kong);
• Mr Dimitrios Drivas, Partner & Chair, Global Intellectual Property Practice Group, White & Case LLP, New York;
• Ms Karen Fong, Managing Partner, Rouse Legal (UK);
• Mr Danny Friedmann, Consultant, IP Dragon Blog;
• Ms Dominique Grigg, Barrister (Dominique Grigg Chambers), Queensland;
• Prof Hugh Hansen, Professor, Fordham University School of Law, New York
• Mr Albert Ho, Head of the Intellectual Property Investigation Bureau, Hong Kong Customs & Excise Department;
• Prof Justin Hughes, Senior Advisor to the Under Secretary of Commerce for Intellectual Property / Professor of Law, Cardozo Law School, New York;
• Mr John Hull, Partner and Head of IP, Memery Crystal LLP (London),
• Dr. jur. Kristina Janusauskaite, Attorney at Law (Lithuania);
• Prof Anette Kur, Research Fellow, Max Planck Institute for Intellectual Property, Competition and Tax Law;
• Prof Spyros Maniatis, Director, Centre for Commercial Law Studies, Queen Mary, University of London;
• Mr Batur Oktay, Director and Corporate Counsel at Starbucks Coffee Company;
• Ms Marilee Owens, General Counsel, BetBrain;
• Ms Anna Panka, Associate, Jacobacci & Partners (Milan);
• Hon. Robert van Peursem, Vice President, District Court The Hague, The Netherlands;
• Mr Guy Proulx, Managing Director, Transpacific IP Management Group Pte Ltd;
• Dr Meir Perez Pugatch, Senior Lecturer, University of Haifa in Israel, IP Policy & Commercialisation of Knowledge Assets/ Director of Research, the Stockholm Network;
• Hon. Randall R. Rader, Chief Judge, U.S. Court of Appeals for the Federal Circuit, Washington DC;
• Mr Robert Raskopf, Partner, Quinn Emanuel Urquhart Oliver Hedges LLP;
• Prof Jan Rosén, Professor, University of Stockholm;
• Ms Gayatri Roy, Partner, Luthra and Luthra;
• Mr David Ruder, VP (Memberships), RPX Corporation / Chair of Trademark Asset Management Committee, IAFS / Founder of Terrier IP Investments LLC;
• Mr Mustafa Safiyuddin, Partner, DSK Legal
• Prof Wang Qian, Professor, East China University of Political Science and Law, Shanghai;
• Mr Victor Wang, Senior Partner, Allbright (Shanghai);
• Mr Richard Wilder, Associate General Counsel for Intellectual Property Policy, Microsoft Corporation;
• Prof Peter Williamson, Professor of International Management, Judge Business School, University of Cambridge / Chairman, Tactical Global Management / Joint Author of “Dragons at Your Door”
• Prof Marry Wong, Professor of Law & Chair, IP Programs, University of New Hampshire School of Law
• Prof Peter K. Yu, Kern Family Chair in Intellectual Property Law / Director, Intellectual Property Law Center, Drake University Law School, Des Moines, IA
• Dr Daphne Zografos, Lecturer, University of Reading

For an updated list of speakers, see here.

What Can A Famous Food Brand Do Against Footwear Using Its Mark?

As a vegetarian I do not frequent the many McDonald's fastfood joints that can be found in China and which turn the slim people obese, just as they did with the American and European populations. I am not really certain what is on sale inside a McDonald's, but when I was in Shenzhen near the beach I was surprised to see that McDonald's has been diversifying into toe slippers. You could say, well that is not really diversifying, because toes could be considered meat too, although not dead meat. Then again, maybe it was not the fast food chain's idea to put its trademark on the slippers. Let's assume that they did not. What could a(n) (in)famous company such as McDonald's do against such unauthorised use of their mark?

April 23, 2009, China's Supreme People's Court promulgated the 'Interpretation on the Application of the Law Concerning Several Issuels Regarding the Trials of Civil Disputes Relating to the Protection of Famous Trademarks' (Judicial Interpretation on Famous Trademarks judicial interpretation).

So since that time the judicial interpretation clarifies that a famous trademarks registered in certain product/service classes is protected against a mark that is identical or similar but on products/services that are dissimilar.

See Article 10 Judicial Interpretation on Trademarks:

"If the plaintiff files a motion to enjoin the defendant from using a trademark, which is identical with or similar to its famous registered trademark, or enterprise name on dissimilar commodities, the people's court shall, in light of the concrete circumstance of the case, make a ruling after comprehensively taking into account the following factors:

1. the distinctiveness of the said famous trademark;

2. how well the famous trademark is known by the relevant general public that use the commodities using the trademark against which the lawsuit is filed or using the enterprise name;

3. the connection between the commodities using the famous trademark and the commodities using the trademark against which the lawsuit is filed or using the enterprise name;

4. other relevant factors."

This is based on China's WTO obligations to comply to TRIPs.

See Article 16 (3) TRIPs:

"Article 6bis of the Paris Convention (1967) shall apply, mutatus mutandis, to goods or services which ar not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likeley to be damaged by such use."

This goes further than article 6bis of the Paris Convention of which China is a member since 1985.

See 6bis Paris Convention:

(1) "The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibitthe use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential partof the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith."

So if we apply article 10 Judicial Interpretation on Famous Trademarks.

(1) I think we can come to the conclusion that McDonald's is a distinctive mark;

(2) And that it is well known to the relevant general public (because of its ubiquitous existence); (3) So what exactly is the connection between the commodoties of the famous mark and the dissimilar commodities of the mark that might infringe upon it? What is the connection between food and footwear? McDonald's could argue that the association with toe slippers is not conducive for fueling an appetite for its food, save for some foot fetishists. And this could dilute the brand.

(4) Other relevant factors, could be perhaps the popularity of the McDonald's toe slippers. Are they sold all over China, or just at the beach of Shenzhen. In other words the extend of the (potential) damage for the fast food chain.

Photo/text Danny Friedmann

Q&A on Trademark Proactive (TP), Tipi and Indian Givers

I was delighted by the questions after I uploaded my Asia Pacific IP Forum presentation in Hong Kong to Slideshare: 'How Social Media Challenge the Brandscape for Trademark Holders' in which I propose a solution for trademark holders: Trademark Proactive (TP).

Below I will explain some key points of TP:

Why should a trademark holder give away some of its rights? Social media users will use or abuse trademarks, whether trademark holders want it or not. Because of the characterisics of Social Media the spreading of damaging content can hardly be stopped. However, with TP they do not give away any right. To be proactive a trademark holder engages with the Social Media users and regains some of its control by authorising some use of the trademark under certain conditions.

Rob Polet, President, CEO and Chairman of the Management Board of Gucci Group put it this way at a presentation at Google Zeitgeist Europe 2010 (starting from minute 38): "How do we manage this community of Facebook? Friends that we have. 660,000 for the Gucci Brand. And I said, well you interact with them. You ask them everything they want to tell you. Ah, but they might say something which is bad about us. That's exactly what you like to know. Yeah, but it'll be public. But you know what? We better have it saying it to you, then being public, and saying to their friends anyway."

And Dan Cobley, marketing manager of Google gave an interesting TED presentation about what physics taught him about marketing: "The lesson from physics is that entropy always increases, it's a fundamental law. The message for marketing is that your brand is more dispersed, you can't fight it, so embrace it, and find a way to work with it."

Why do service providers need to assume liability?
Service providers (such as Facebook, Twitter and Blogger) are more and more setting up the rules. Therefore it is fair they should also be held liable for non-enforcement of these rules. This will be pushing service providers to come up with Terms of Use that are effectively enforceable. In other words, Social Media could become more or less restrictive than trademark law, on a contractual basis. So far the Social Media sites' business model is advertising paid by trademark holders. Therefore it is justified that the trademark holders get something in return: enforcement of their trademarks.

What makes an effective and efficient enforcement of trademark authorisations possible?
Social Media could automatically compare the request for a third level domain name or content which mentions a trademark, and one database in which trademark holders have given exactly what is possible with their trademarks and under what conditions. Enforcement could be also automatically, without elaborate notice and take down procedures.

What kind of trademark use and under what kind of conditions could a trademark holder proactively authorise to a Social Media user?
A trademark holder could for example proactively authorise that a Social Media user could use a trademarked logo online, to illustrate an article about the brand, under the condition that the logo is not altered, and that the logo is linked to the official website of the brand. Or the logo could be altered, or used in parody, or used in comparative advertising (only in jurisdictions where this is allowed).

Why is the symbol of TP a tipi?
TP stands for Trademark Proactive, but can be pronounced as tipi. The tipi refers to a place where disputes can be solved. When the first Europeans came into contact with native Americans and for example they were cold, the Indians provided them with blankets. When they did not need the blankets anymore, the Indians wanted the blankets back. This lead to the misperception that the Indians wanted their presents back. That is how the saying: "Indian giver" came into being. Of course the Indians did not give a present, but just the right to use the blanket. TP should also give more clarity about how social media users are authorised to use trademarks.

What is next?
Feedback of trademark holders needs to be incorporated into a more definitive proposal.
Feedback to Danny Friedmann is welcome: ipdragon at gmail dot com

Mickey, Pokémon and Dooly Still Banned From Chinese Prime Time TV

September 30 to October 5, 2010, the second China International Animation Copyright Fair will be held in China's animation capital Dongguan, Guangdong province. Read an article by Tan Jing for News Guangdong here.

In 2010 foreign animations, such as Mickey Mouse (US), Pokemon (Japan) and Dooly (South Korean) have substantial mature industries, are still banned from prime time, a measure which started on September 1, 2006. The rationale behind the discriminatory measure is to support the fledgling domestic animation industry and to protect Chinese children from too much foreign exposure.

"The positioning of the second animation copyright fair will be clearer in order to focus on copyright protection and trade."

The American cartoon series The Transformers was provided to China Central TV (CCTV) free of charge, because they anticipate making money with the merchandise. Chinese animation companies are too small (at least in 2006), according to Crystal Wong of Asia Times, read here.

Anglo-Chinese Memorandum of Understanding on Copyright

Intellectual property minister Wilcox and the president of the National Copyright Administration of China (NCAC) Liu Binjie signed a Memorandum of Understanding (MoA) on Copyright, read more on the UK Central Office of Information site here.

Uncreative Brand, Creative Brand in China

Uncreative Brand

In Yangshuo, next to Guilin, Guangxi province, you can see one of the most characteristic mountains of China. But if you bike through the village, you will notice some interesting shops as well. Almost next to each other you can see a shop that embodies the old copycat mentality and one that characterises the new creative brandbuilding mentality.

adivon, easily recognised as a blatant adidas clone, has some remarkable things to say on its corporate website about branding and trademarks:

"The company has always adhered to the marketing philosophy of human-oriented and loyalty-led and been upright and creditable. We are competing for first place in the industry and targeting for gold medal in the market as we are to create it into a Chinese famous trademark and international famous brand." See here.

It even has a webpage dedicated to "brand honor" which shows eight certificates including

- From 2008 the annual message trust the quality of the top ten brands";

- 500 Chinese brands

- Top Ten China Industry Brand Campaign

- Famous brand products in Fujian

Talented IP student at CUHK, Brian Chen, illuminated me about the meaning of the Chinese characters of Adivon (阿迪王 pronounced as "a di wang"): "Chinese consumers use 阿 (a) 迪 (di) short for adidas. The brand is taking advantage of the association with adidas and by adding 王 (wang), which means king, it even implies it is better."

Creative Brand

But only a few shops to the right one will find one of the most creative and esthetical Chinese brands I have ever seen: Mulinsen, a shoe brand, that wants to have a green image (the question is whether this is justified, since the shoe industry is a rather polluting industry with a big water footprint, read here) is of course because of the characters used. Mu 木 means tree; lin 林 means forest and sen 森 means many trees. So all characters amplify each other, sort of alliteration with Chinese characters, and then the logo with four times the character 木 (or two times 林) is a very distinctive mark.

Mulinsen is also:

- Fujian famous brand

- Chinese famous brand

Photos/text Danny Friedmann

How Social Media Challenge the Brandscape for the Trademark Holders

Stan Abrams (China Hearsay), Chris Bailey (Rouse), Xie Lin (CUHK) and I gave presentations about the impact of Social Media on intellectual property (and vice versa).

My presentation focused on social media and trademark law. In this presentation I tried to shed light upon the challenges trademark holders are facing in these times of social media. With the solutions I propose I hope I can start a discussion about a more proactive role for trademark holders. Stan Abrams of China Hearsay called my proposal "a very provocative vision of the future".

Your feedback is welcome (ipdragon at gmail dot com)

Danny

How social media challenge the brandscape for trademark holders

View more presentations from ip dragon.

Q & A on Trademark Proactive, Tipi and Indian Givers, see here.