In May 2017, our Intellectual Property expert, Virginia Nichols, joined over 10,000 other specialists at the 139th Annual Conference of the International Trademark Association (INTA), this year held in Barcelona, Spain.
The INTA Conference is a chance to meet up with existing and potential overseas Associates, strengthening our network of professionals around the world, and to attend education sessions, table-top discussions and committee meetings covering developments in Intellectual Property laws and practice around the world.
Here are some of Virginia’s top tips from this year’s conference:
• The UK rights of the owners of existing European trade marks will continue to be protected (by one of seven potential mechanisms yet to be selected).
• However, given the uncertainty, if UK is an important market, the safest option is definitely to protect separately in UK and Europe.
• The confusion around Brexit it likely to give rise to new trade mark scams.
• Licence agreements relating to “Europe” should be reviewed.
• The situation regarding copyright laws between EU the UK is even more complicated.
• One of the reasons it remains difficult to challenge East Asian trademarks filed in “bad faith” is that since some of the local languages have no equivalent for the concept – proactive registration remains the best strategy.
• Chinese marks have been removed for “bad faith” on the basis of video taped confessions witnessed by two Notaries – a very high standard of proof may be required.
• Use for export only (OEM use) may be insufficient to maintain your rights in China; the mark should be used in China to identify the source of the goods.
• Pakistan and Bangladesh are expected to join India and Sri Lanka as part of the Madrid International trade mark filing system.
• Although a number of indicative searches for trade mark availability can give a good first check, there is no substitute for a local agent in foreign language countries.
• Mediation continues to provide a useful forum for exploring creative solutions to IP disputes.
• It remains important to identify your trade marks ™ to avoid becoming generic and losing your rights.
• Countries and regions seeking to protect their own unique brands need to start by establishing their local reputation and rights at home, to have more success overseas.
If you have any questions about your IP, please contact Virginia.