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Fish & Richardson China Agent (HK) Ltd China Patent Agent (HK) Ltd Kristen McCallion Justin Jiang Johnson Li Principal creation attorney Patent attorney [email protected] [email protected] [email protected] Kristen McCallion is a principal in the Justin Jiang received his LLM in civil and Johnson Jiang Li is a patent attorney, New York office of Fish & Richardson commercial law from Renmin University trademark attorney and attorney at and chairs the firm’s group. She and protection: of China in 2009 and passed the National law at China Patent Agent (HK) Ltd. He represents businesses in the consumer Bar Examination in 2007. He joined obtained his BS in electromechanical products, internet, media and interactive China Patent Agent (HK) Ltd in 2011. engineering and LLB in IP law in China entertainment industries. Ms McCallion Mr Jiang is experienced in trademark and also worked at a US law firm, where advises clients on proper trademark searches, applications for registration, he received further training in US patent adoption and use to increase brand a multifaceted approach renewals, licence recordals, assignments, litigation and licensing. Mr Li’s practice awareness and maximise the value of oppositions, cancellations and reviews covers all aspects of contentious and non- trademark portfolios. With her clients, on refusal, as well as trademark contentious trademark issues (including she develops both domestic and foreign administrative litigation and trademark licensing, negotiation and contracts). In trademark filing programmes, thereby Practitioners from China, Germany and the United States discuss how to manage the brand lifecycle, infringement cases. His working languages addition to his daily work as a lawyer, he securing registration protection on a global exploring how counsel can ensure robust, innovative and effective creation and protection strategies are Chinese and English. is active in legal research and is a regular scale, fortifying brand strength and reducing speaker at IP events. the costs associated with foreign trademark disputes. Ms McCallion also represents and management a brand is anchored around a trademark. to use a mark, it is highly advisable to While the creation trademark owners in trademark opposition process is where much of a brand’s real can comprise a word, search for older rights. In addition, a and cancellation proceedings before the US value comes from, subsequent protection design, symbol or combination thereof trademark watch should be installed to Trademark Trial and Appeal Board. strategies ensure that, once established, which is used to identify products and keep the rights holder informed about are not destroyed by infringers services and signify their source and the activities of competitors so that it can seeking to capitalise on their goodwill. quality. A trademark can be a slogan (eg, take all measures necessary to prevent With this in mind, World Trademark Nike’s “Just do it!”), a colour (eg, brown the registration of identical or similar Review assembled a panel of industry for UPS or magenta for T-Mobile), product trademarks. experts from key jurisdictions – Johnson packaging or product configuration With respect to the types of trademark Li and Justin Jiang of China Patent (eg, the shape of the Coca-Cola bottle which can be registered, applicants Agent in China; Christian Thomas of or the wrapper on a Tootsie roll) or the can choose from olfactory marks, Kuhnen & Wacker in Germany; and distinctive lay-out of a store or restaurant sound marks, three-dimensional (3D) Kristen McCallion, Catherine Stockell (eg, the Apple store or a McDonald’s marks, slogans, colour marks, figurative and Cynthia Walden of Fish & Richardson restaurant), and can even extend to marks and word marks. In general, the in the United States – to examine the sound marks (eg, the roar of the MGM requirements for all of these types of role of trademark counsel in the creative lion) and scent marks. All of these marks mark are not high and are quite similar process, consider techniques to promote can be registered with the US Patent and – although it can sometimes be difficult internal awareness of trademark law and Trademark Office; although descriptive to convince an office that an applied-for explore practical strategies to enhance terms, product packaging, product mark is distinctive. brand protection in different media and configuration, colour marks, sound marks Fish & Richardson markets. and scent marks all require a showing of Johnson Li (JL): To protect a brand Fish & Richardson Catherine Stockell KUHNEN & WACKER Intellectual acquired distinctiveness in order to qualify in China, it is crucial to get the Cynthia Walden Of counsel Law Firm From a legal perspective, what for registration. underlying trademark registered since Principal [email protected] Christian Thomas an unregistered mark is protectable [email protected] are the various aspects of a Partner brand that need to be considered Christian Thomas (CT): In Germany only if it is well known. Several aspects Catherine Stockell is of counsel in the [email protected] in terms of securing protection and the European Union, it is always should be considered for trademarks. Cynthia Walden is a principal in Fish & New York office of Fish & Richardson. Her and are there any restrictions advisable to conduct prior trademark The first is the type of right – whether the Richardson’s Boston office and is the practice emphasises various aspects of Christian Thomas specialises in on the types of right that can be searches in order to avoid (or at least mark comprises words, devices, letters, firm’s trademark and copyright practice counselling with respect to the clearance, IP-related litigation and prosecution (in registered? reduce) problems after registration. Since numbers, 3D marks, colour combinations, group leader. Ms Walden is well known adoption, registration and protection of particular trademarks, domain names, the responsible offices do not search for sounds or a combination of these. for providing business advice to clients trademarks and copyright; trademark unfair competition, copyright, design Cynthia Walden (CW): The term ‘brand’ is older marks, merely registering a mark Additionally, in terms of registration, on all aspects of brand protection and prosecution and maintenance in the United and counterfeiting). He studied law at often used synonymously with the term is no guarantee that no older rights are the trademark must be distinctive and enforcement in the United States and States and abroad; trademark, copyright Ludwig-Maximilians-University in Munich ‘trademark’, but a brand also incorporates being infringed. Thus, before starting there must be no prior similar or identical countries around the world. Her practice and patent licensing; counselling with and joined the Bar in 2005. Dr Thomas a reputational and emotional component involves working with clients on all aspects respect to the IP aspects of mergers, obtained his PhD from the University of tied to the feelings and associations which of trademark law, including building and acquisitions, divestitures and secured Salzburg in 2009. Before joining Kuhnen consumers have about a company and developing strategic global portfolio and financings; trademark opposition and & Wacker, he worked for a law firm in its products and services. Brands are brand management plans. In addition to cancellation proceedings before the Australia. He frequently lectures and created and cultivated through consumer An internal usage manual is an essential legal her significant experience in trademark Trademark Trial and Appeal Board; writes on IP-related matters. Dr Thomas experience with the underlying products issues, Ms Walden advises clients on and trademark and copyright protests, represents cases before the German civil and services in the marketplace and a document for protecting a company’s business branding, advertising, corporate due settlements, litigation and appeals. courts, the Trademark Office, the EU company’s brands are among its most diligence and trademark licensing matters, Office, the Federal valuable assets. First and foremost, though, and product identity as well as the protection and enforcement Patent Court, the general courts and the of copyright. European Court of Justice. 84 | APRIL/MAY 2017 www.WorldTrademarkReview.com Fish & Richardson China Patent Agent (HK) Ltd China Patent Agent (HK) Ltd Kristen McCallion Justin Jiang Johnson Li Principal Trademark attorney Patent attorney [email protected] [email protected] [email protected] Kristen McCallion is a principal in the Justin Jiang received his LLM in civil and Johnson Jiang Li is a patent attorney, New York office of Fish & Richardson commercial law from Renmin University trademark attorney and attorney at and chairs the firm’s copyright group. She registered trademarks or applications China Patent Agent (HK) Ltd China Patent Agent (HK) Ltd of China in 2009 and passed the National law at China Patent Agent (HK) Ltd. He represents businesses in the consumer with respect to similar or identical goods Bar Examination in 2007. He joined obtained his BS in electromechanical products, internet, media and interactive or services. Finally, the trademark must Justin Jiang Johnson Li China Patent Agent (HK) Ltd in 2011. engineering and LLB in IP law in China entertainment industries. Ms McCallion not be similar to symbols of governments Trademark attorney Patent attorney Mr Jiang is experienced in trademark and also worked at a US law firm, where advises clients on proper trademark or international organisations, and [email protected] [email protected] searches, applications for registration, he received further training in US patent adoption and use to increase brand cannot deceive or mislead the public or renewals, licence recordals, assignments, litigation and licensing. Mr Li’s practice awareness and maximise the value of be contrary to public policy or accepted Justin Jiang received his LLM in civil and Johnson Jiang Li is a patent attorney, oppositions, cancellations and reviews covers all aspects of contentious and non- trademark portfolios. With her clients, principles of morality. commercial law from Renmin University trademark attorney and attorney at on refusal, as well as trademark contentious trademark issues (including she develops both domestic and foreign of China in 2009 and passed the National law at China Patent Agent (HK) Ltd. He administrative litigation and trademark licensing, negotiation and contracts). In trademark filing programmes, thereby In some organisations it can Bar Examination in 2007. He joined obtained his BS in electromechanical infringement cases. His working languages addition to his daily work as a lawyer, he securing registration protection on a global be hard to get stakeholders to China Patent Agent (HK) Ltd in 2011. engineering and LLB in IP law in China are Chinese and English. is active in legal research and is a regular scale, fortifying brand strength and reducing understand the contribution that Mr Jiang is experienced in trademark and also worked at a US law firm, where speaker at IP events. the costs associated with foreign trademark trademark counsel can make searches, applications for registration, he received further training in US patent disputes. Ms McCallion also represents and management a brand is anchored around a trademark. to use a mark, it is highly advisable to While the creation to the brand creation process. renewals, licence recordals, assignments, litigation and licensing. Mr Li’s practice trademark owners in trademark opposition process is where much of a brand’s real Trademarks can comprise a word, search for older rights. In addition, a How can counsel best state their oppositions, cancellations and reviews covers all aspects of contentious and non- and cancellation proceedings before the US value comes from, subsequent protection design, symbol or combination thereof trademark watch should be installed to case and position themselves as on refusal, as well as trademark contentious trademark issues (including Trademark Trial and Appeal Board. strategies ensure that, once established, which is used to identify products and keep the rights holder informed about creative partners rather than administrative litigation and trademark licensing, negotiation and contracts). In brands are not destroyed by infringers services and signify their source and the activities of competitors so that it can roadblocks to creativity? infringement cases. His working languages addition to his daily work as a lawyer, he seeking to capitalise on their goodwill. quality. A trademark can be a slogan (eg, take all measures necessary to prevent are Chinese and English. is active in legal research and is a regular With this in mind, World Trademark Nike’s “Just do it!”), a colour (eg, brown the registration of identical or similar JL: Ultimately, counsel should ensure speaker at IP events. Review assembled a panel of industry for UPS or magenta for T-Mobile), product trademarks. that stakeholders realise that their work experts from key jurisdictions – Johnson packaging or product configuration With respect to the types of trademark is vital to the normal operation of the Li and Justin Jiang of China Patent (eg, the shape of the Coca-Cola bottle which can be registered, applicants company and the creation of value. For Agent in China; Christian Thomas of or the wrapper on a Tootsie roll) or the can choose from olfactory marks, example, in-house trademark counsel of simply rejecting a proposal, counsel a manner which trademark counsel can Kuhnen & Wacker in Germany; and distinctive lay-out of a store or restaurant sound marks, three-dimensional (3D) may work closely with the corporate should take the time to explain why a defend and protect for years to come. Kristen McCallion, Catherine Stockell (eg, the Apple store or a McDonald’s marks, slogans, colour marks, figurative legal team and other departments, certain mark could cause issues and get and Cynthia Walden of Fish & Richardson restaurant), and can even extend to marks and word marks. In general, the such as the marketing, advertising, involved in the process of creating and How important is an internal in the United States – to examine the sound marks (eg, the roar of the MGM requirements for all of these types of communications and product line finding a suitable trademark – as far as trademark usage manual and role of trademark counsel in the creative lion) and scent marks. All of these marks mark are not high and are quite similar management departments. Aside from this is possible. what key elements should it process, consider techniques to promote can be registered with the US Patent and – although it can sometimes be difficult filing and prosecuting trademarks, include? internal awareness of trademark law and Trademark Office; although descriptive to convince an office that an applied-for in-house trademark counsel may need to Catherine Stockell (CS): Collaboration is explore practical strategies to enhance terms, product packaging, product mark is distinctive. review advertising materials, manuals, key to this effort. In order to transition CT: This is really something that varies brand protection in different media and configuration, colour marks, sound marks internal and external communications, from a roadblock to a trusted partner, from client to client. Some clients are Fish & Richardson markets. and scent marks all require a showing of Johnson Li (JL): To protect a brand packaging materials, company websites it is imperative for trademark counsel heavily involved in trademark licensing Fish & Richardson Catherine Stockell KUHNEN & WACKER Intellectual acquired distinctiveness in order to qualify in China, it is crucial to get the and technical specifications for the proper to understand their clients’ business, and for them, it is very important to Cynthia Walden Of counsel Firm From a legal perspective, what for registration. underlying trademark registered since use of trademarks. Trademark counsel is to listen to the branding goals of the have a clear and exhaustive manual for Principal [email protected] Christian Thomas an unregistered mark is protectable therefore an essential part of the business marketing department, to explain issues trademark usage. The same is true for [email protected] are the various aspects of a Partner brand that need to be considered Christian Thomas (CT): In Germany only if it is well known. Several aspects team responsible for protecting an from a brand protection perspective and bigger companies, which need to ensure Catherine Stockell is of counsel in the [email protected] in terms of securing protection and the European Union, it is always should be considered for trademarks. organisation’s valuable trademarks rather to proactively offer alternative means of that their marks are properly used by all Cynthia Walden is a principal in Fish & New York office of Fish & Richardson. Her and are there any restrictions advisable to conduct prior trademark The first is the type of right – whether the than a roadblock to creativity. accomplishing the branding goals – in departments. This can be achieved by Richardson’s Boston office and is the practice emphasises various aspects of Christian Thomas specialises in on the types of right that can be searches in order to avoid (or at least mark comprises words, devices, letters, other words, work in collaboration with the implementing an internal trademark usage firm’s trademark and copyright practice counselling with respect to the clearance, IP-related litigation and prosecution (in registered? reduce) problems after registration. Since numbers, 3D marks, colour combinations, CT: One of the best ways to achieve marketing department. When assessing manual, which should usually contain a group leader. Ms Walden is well known adoption, registration and protection of particular trademarks, domain names, the responsible offices do not search for sounds or a combination of these. understanding is to have personal the availability of a proposed new mark, number of key elements. for providing business advice to clients trademarks and copyright; trademark unfair competition, copyright, design Cynthia Walden (CW): The term ‘brand’ is older marks, merely registering a mark Additionally, in terms of registration, meetings or (at least) frequent conference discuss the issues in terms that are most The first is how the trademark should on all aspects of brand protection and prosecution and maintenance in the United and counterfeiting). He studied law at often used synonymously with the term is no guarantee that no older rights are the trademark must be distinctive and calls with the responsible persons. These important to marketing – for example, is be used (this is crucial to guarantee that enforcement in the United States and States and abroad; trademark, copyright Ludwig-Maximilians-University in Munich ‘trademark’, but a brand also incorporates being infringed. Thus, before starting there must be no prior similar or identical provide an opportunity to explain the the mark available for use irrespective of all departments use the trademark in the countries around the world. Her practice and patent licensing; counselling with and joined the Bar in 2005. Dr Thomas a reputational and emotional component legal situation and sometimes even registration, is it available for registration correct size, font and colour). Second, involves working with clients on all aspects respect to the IP aspects of mergers, obtained his PhD from the University of tied to the feelings and associations which result in the creation of new trademarks. and is it protectable? specify what types of product should of trademark law, including building and acquisitions, divestitures and secured Salzburg in 2009. Before joining Kuhnen consumers have about a company and Explaining to a client why a certain If the answer to any of these questions carry the mark (this is important to developing strategic global portfolio and financings; trademark opposition and & Wacker, he worked for a law firm in its products and services. Brands are trademark should not be chosen (and is no, suggest alternative variations guarantee that the mark is used only for brand management plans. In addition to cancellation proceedings before the Australia. He frequently lectures and created and cultivated through consumer used) is crucial to sensitise him or her which may address the concerns raised. those products for which it is registered). her significant experience in trademark Trademark Trial and Appeal Board; writes on IP-related matters. Dr Thomas experience with the underlying products not only to the potential risks, but also Even if marketing does not accept your Conversely, are there any products on issues, Ms Walden advises clients on and trademark and copyright protests, represents cases before the German civil and services in the marketplace and a to the potential opportunities. A client suggestions, it will start the ball rolling on which the trademark should not be used? branding, advertising, corporate due settlements, litigation and appeals. courts, the Trademark Office, the EU company’s brands are among its most who understands these is usually open productive discussions as to how it can Sometimes a company is forced (eg, by diligence and trademark licensing matters, Intellectual Property Office, the Federal valuable assets. First and foremost, though, to comments from legal counsel. Instead successfully reach its branding goals in agreements or a legal situation) to ensure as well as the protection and enforcement Patent Court, the general courts and the of copyright. European Court of Justice. www.WorldTrademarkReview.com APRIL/MAY 2017 | 85 ROUNDTABLE CO-PUBLISHED EDITORIAL

that a trademark is not used on certain name and graphic identities should be symbol or device or any combination goods or services – a good manual can significantly larger than any reference to thereof, or any false description of help to avoid inadvertent infringements). the trademark. For instance, if references origin or false or misleading description Finally, specify where (ie, the territory) are made to a Lenovo product, the full or representation of fact which the trademark can be used and include a name of the product must be referenced at misrepresents the nature, characteristics, special usage guide for social media. the first and most prominent mention (eg, qualities or geographic origin of goods, ‘Lenovo® computers’). services or commercial activities. Kristen McCallion (KM): I would argue that Advertising can be misleading if it a trademark use manual is an important Once a brand identity is chosen is deceptive or if it has the tendency tool to have for every type of company – and protection is in place, to deceive, even if it is literally true. large and small. It promotes consistency attention turns to building Determining whether an ad is misleading in how the company’s trademarks are used identity. One way to do this or deceptive depends on how it is and displayed to consumers, and ensures is through advertising. What perceived by a substantial portion of proper use of trademarks by marketing constitutes misleading or prospective purchasers. Surveys are the and business executives. A manual can deceptive advertising in your most common method for measuring range from just a few pages to 100. It jurisdiction? whether advertising is misleading or should clearly set forth rules for creating deceptive. Brand owners should take a unified, consistent and identifiable JL: According to the relevant Chinese care to ensure that all claims made presence for the company’s brand names, laws, ads must not be deceptive or in advertising are truthful and can be taglines and logos. Some of the key misleading to consumers and advertisers substantiated. If photographs of the elements include advising readers of: are responsible for the truthfulness product are used, they should depict • the proper colour, size and placement of of an ad’s content. The following are the actual product as a consumer would logos when used on brochures, emails, considered misleading or deceptive experience it. If comparative claims letterheads, advertising and websites; advertising in China: are made regarding another company’s • the proper font or typeface for any • ads which contain the national flag, products or services, these should be stylised word mark or logo design; and national emblem or national anthem independently verified. Anyone who • the precise colour palette of corporate or the names of government organs or may be damaged by false or misleading branding, which often includes a government functionaries; advertising can pursue an action in reference to the proper Pantone colours • ads which contain words such as ‘state federal court under the Lanham Act. The and their allocated numbers. level’, ‘highest level’ or ‘the best’; Federal Trade Commission (FTC) is also • ads which fail to make distinct and empowered to take action against unfair Justin Jiang (JJ): Ultimately, an internal clear the specifications, place of origin, or deceptive advertising that involves usage manual is an essential legal uses, quality, price, manufacturer, health or safety claims or might result in document for protecting a company’s validity period or promises – if any – of economic injury. business and product identity. The key the goods or the content, form, quality, elements which should be included in price or promises – if any – of the CT: In Germany, there is a very strict such manuals include permissible use services offered; Unfair Competition Act, which sets out (ie, specifying the products or services • ads which fail to address data, statistics, the conditions under which an ad will be designated by the trademark and the survey results, excerpts or quotations; classed as misleading or deceptive. The kinds of use of the mark that are regarded and following are examples of advertising as permissible) and the relationship • ads which falsely claim that a product is measures which are governed by the act: between marks and products or services patented. • Sales promotions, such as rebates, (ie, by using accurate, descriptive taglines, premiums and free gifts are prohibited such as ‘for use with Lenovo computers’ CW: In the United States, advertising unless the seller states the conditions or ‘designed using Lenovo computers’). is considered false or misleading if it of participation in a clear and A good manual should also address the contains the use of any word, term, name, unambiguous manner. use of trademark symbols (eg, when referencing any trademark, to mark it with a TM or ® sign) and attribution (ie, that all marketing materials bearing the trademarks should include a trademark Brand owners should take care to ensure that all attribution, such as “Lenovo is a registered trademark of Lenovo Group Limited”). claims made in advertising are truthful and can Finally, consider appearance – company names or logos, products or services be substantiated

86 | APRIL/MAY 2017 www.WorldTrademarkReview.com • Advertising that is liable to impair Fish & Richardson Fish & Richardson freedom of choice for consumers or other market participants by way of Kristen McCallion Catherine Stockell psychological pressure, unreasonable Principal Of counsel and non-factual influence or in an [email protected] [email protected] inhumane manner is prohibited. This applies in particular to activities Kristen McCallion is a principal in the Catherine Stockell is of counsel in the exploiting consumers’ lack of New York office of Fish & Richardson New York office of Fish & Richardson. Her business awareness (in particular that and chairs the firm’s copyright group. She practice emphasises various aspects of of children), gullibility, anxiety or represents businesses in the consumer counselling with respect to the clearance, exigency. products, internet, media and interactive adoption, registration and protection of • The act also prohibits the allegation entertainment industries. Ms McCallion trademarks and copyright; trademark or circulation of facts concerning advises clients on proper trademark prosecution and maintenance in the United the goods, services or business of a adoption and use to increase brand States and abroad; trademark, copyright competitor, the proprietor or a member awareness and maximise the value of and patent licensing; counselling with of the board which are liable to damage trademark portfolios. With her clients, respect to the IP aspects of mergers, the operation of the business or the she develops both domestic and foreign acquisitions, divestitures and secured credit of the proprietor, unless those trademark filing programmes, thereby financings; trademark opposition and facts can be proven to be true; the securing registration protection on a global cancellation proceedings before the burden of proof falls on the person scale, fortifying brand strength and reducing Trademark Trial and Appeal Board; alleging or circulating the facts. the costs associated with foreign trademark and trademark and copyright protests, • Misleading advertising is prohibited disputes. Ms McCallion also represents settlements, litigation and appeals. per se. As an example, it is misleading trademark owners in trademark opposition to advertise goods if the quantities held and cancellation proceedings before the US in stock are not adequate to satisfy Trademark Trial and Appeal Board. anticipated demand (so-called ‘decoy offers’). An inventory level is deemed to be adequate if it is sufficient for two days’ (anticipated) sales. Advertisements which provides guidance editorial content which is financed by • It is also misleading to base sales on how to ensure that advertising is the advertiser is generally prohibited. promotions on price cuts if the original truthful and not misleading. For those According to the Supreme Court, it is (higher) price has applied for an who engage in native advertising, the crucial that the nature of the content be unreasonably short period (so-called key point to remember is that it must be evident to the average observer at first ‘moon price advertising’). clear that the content is recognisable as glance and not after careful analysis. The • Comparative advertising is permitted, advertising and not editorial content. Teleservices Act, which applies to online but only under very strict conditions. The FTC recommends including clear services, establishes that commercial and prominent disclosure of advertising communications must be clearly Native advertising is a content to avoid any risk of deception. distinguishable. Therefore, concealed relatively new phenomenon. advertising in online media or blogs Who regulates this and what CT: Although native advertising is is prohibited under both competition restrictions are in place? regarded as a comparatively new form of and telemedia regulations. In addition, advertising, it is already subject to far- telemedia content is subject to specific CW: ‘Native advertising’ refers to reaching legal and self-regulating rules guidelines issued by the Interstate digital advertising which appears to designed to ensure that campaigns are Broadcasting Agreement. be embedded or assimilated into the clearly distinguishable as advertising. surrounding content (eg, news, featured This is designed to eliminate any JJ: In China, native advertising is primarily articles, product reviews, infographics, leeway for legally deceiving users with regulated by the Advertising Law and computer games, emails, entertainment regard to the advertising character of Interim Measures for the Administration or other material) in such a way that the content – known as ‘surreptitious of Internet Advertising. Native advertising it is not readily recognisable as paid advertising’. The core of these provisions is regulated by the administrations for advertising. The FTC regulates native are so-called ‘recognisability’ or industry and commerce, at different levels. advertising under its authority to ‘separation’ principles. The recognisability The Advertising Law stipulates that: “mass combat deceptive and unfair practices, principle is established in the Unfair media should not in any way publish an and has issued an Enforcement Policy Competition Act for all types of media. advertisement in the disguise of a news Statement on Deceptively Formatted For example, advertising disguised as report. Whenever an advertisement

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is published in mass media, for not to a team to monitor brand-related activity JJ: I agree that the phenomenon of cease mislead consumers, a clear indication and take measures to prevent brands from and desist letters going viral should be should be shown to distinguish it from being infringed. If a user is reluctant to given serious consideration. Although non-advertising information”. In addition, rectify his or her behaviour, the social the sender may label the cease and desist the interim measures states that: “an media site may have to suspend his or her letter as ‘privileged and confidential’, internet advertisement should be able to account. Finally, in the wider environment, recipients may still make such letters be clearly recognisable by the customers laws regulating such activities urgently public and condemn the senders as that it is a kind of advertisement by a need to be enacted. These should make it bullies, creating a PR crisis. As such, remarkable indication ‘advertisement’. Paid clear that the user’s brand-related activity before sending such letters, research search advertisements should be clearly should comply with trademark law and the recipient in order to assess its likely separated from organic search results.” that social media sites should be legally reaction. Additionally, personalise the able to intervene in a user’s brand-related letter by using a tone that is appropriate Social media is equally activity in a timely manner. to the situation. In some cases, polite important; yet there are many language may bring a favourable pitfalls in this environment. A recent phenomenon is cease reaction, while aggressive words are less What strategies should be put in and desist letters going viral likely to bring about a desirable response. place to monitor brand-related online, causing headaches for If a cease and desist letter does go viral, activity and discussion – both by those tasked with protecting the sender’s PR team and legal team internal staff and in the wider brands. To what degree should need to work together to deal with the environment? this be taken into account when resulting crisis. The sender may be able considering action and what is to explain the situation to the public so CT: In our opinion, it is crucial to monitor the best response when letters that they understand that the recipient’s activities on social media carefully. While go viral? behaviour is indeed an infringement of the same regulations generally apply to its rights. advertising on social media as to print KM: It should very much be taken into media, the people responsible for social account. Before firing off a cease and CT: While it is important to explain the media are often different from those desist letter, it is important to consider potential risks of a cease and desist letter responsible for other advertising activities the real-world effects of an overly to the rights holder, if it has a good case it and thus they do not always have the aggressive letter going viral, which can will not usually fear the fact that a cease same experience. Staff should thus receive quickly have a negative impact on the and desist letter may be made public. regular training about the potential risks sender’s image. The best step is to try to Further, German courts provide swift of advertising on social media, while prevent this from occurring. Toning down assistance where cease and desist letters the company’s trademark usage manual the language in a letter and taking the are published online – such publications should establish strict criteria on how to time to communicate – in plain English infringe the rights holder’s personal use a company’s trademarks. – the business’s concerns can go a long rights and therefore it is possible to way towards communicating the matter request a preliminary injunction, which KM: Setting up and enforcing social effectively and achieving the desired is usually issued within three days. media guidelines is certainly a good idea. result. If you are faced with a negative Effective guidelines include a variety of viral campaign, act fast to acknowledge Licensing offers a quick – and rules and practice pointers, which include it and do not avoid it or let it simmer – potentially lucrative – route to both legal advice (eg, do not copy content this will simply inflame the issue. Also, expansion and brand building. from third parties) and practical advice be transparent. A public explanation of When entering into partnerships, (eg, pause before posting and use your why the letter was sent is often received what are the key legal best judgement). positively and will quickly undermine the considerations for trademark negative reaction. counsel? JJ: The following strategies should also be implemented by social media sites to monitor brand-related activity and to help brands. First, social media network sites should set up their own internal regulations concerning brand- Before firing off a cease and desist letter, it is related activities which make clear what kinds of activities are prohibited important to consider the real-world effects of an and the consequences of breaching this overly aggressive letter going viral prohibition. Second, it should establish

88 | APRIL/MAY 2017 www.WorldTrademarkReview.com CT: So many different aspects need to be Fish & Richardson KUHNEN & WACKER Intellectual considered. The first and most important Property Law Firm question is always whether a licence will Cynthia Walden be exclusive or non-exclusive. Further, it Principal Christian Thomas is vital to ensure that trademark usage is [email protected] Partner clearly stipulated and that the licensee [email protected] knows exactly what it is allowed to Cynthia Walden is a principal in Fish & do with the mark – and what it is not. Richardson’s Boston office and is the Christian Thomas specialises in Royalties are also an important topic, firm’s trademark and copyright practice IP-related litigation and prosecution (in but the way that these are determined group leader. Ms Walden is well known particular trademarks, domain names, varies from case to case. Aside from these for providing business advice to clients unfair competition, copyright, design contract issues, it is also important to on all aspects of brand protection and and counterfeiting). He studied law at ensure that the licensing partner fits with enforcement in the United States and Ludwig-Maximilians-University in Munich the brand philosophy and is a reliable countries around the world. Her practice and joined the Bar in 2005. Dr Thomas partner. Since a trademark needs to be involves working with clients on all aspects obtained his PhD from the University of used after the five-year grace period for of trademark law, including building and Salzburg in 2009. Before joining Kuhnen non-use in Germany and the European developing strategic global portfolio and & Wacker, he worked for a law firm in Union, a licence might also be of interest brand management plans. In addition to Australia. He frequently lectures and to a rights holder if it is unable to use the her significant experience in trademark writes on IP-related matters. Dr Thomas mark for all goods and services itself. We issues, Ms Walden advises clients on represents cases before the German civil often encounter situations where rights branding, advertising, corporate due courts, the Trademark Office, the EU holders are not using their trademarks for diligence and trademark licensing matters, Intellectual Property Office, the Federal all goods and services and want to avoid as well as the protection and enforcement Patent Court, the general courts and the the risk that marks will be cancelled for of copyright. European Court of Justice. non-use. A licence is an easy solution, as use by the licensee counts as use of the trademark. shares your business values, and that CT: Opening up additional growth JL: When entering into licensing the proposed products or services opportunities is a central objective for partnerships, there are a number of key are natural extensions of the original short and long-term cooperation between legal considerations. For instance, if brand and compatible from a consumer brands. Moreover, cooperation often the licence needs to be recorded with perspective (eg, rum spirits and rum helps to enhance the brands’ profiles and the national trademark office, then it cakes). Aside from the definition of the address new target groups. Co-branding is crucial that the trademark is also licensed goods or services, the key terms partnerships offer further benefits, such registered. The scope of the licence in any licence agreement are exclusivity, as potential synergies and mutual cost should not go beyond the goods specified royalty, term, termination, geographic saving through cost sharing. However, under the mark and the licensor should scope, ownership and, especially in the co-branding may be a double-edged closely supervise the quality of the goods United States, quality control. In the sword and the potential risks should not to which the licensee intends to apply United States, the absence of quality be underestimated. For example, there its mark. In return, the licensee should control provisions can be fatal to a may be a risk of negative transfer in case guarantee the quality of the goods to licence agreement and, in extreme cases, of incompatible brand connotations or which it intends to apply the mark. to the brand itself. Further, aside from quality-related problems; a brand may legal considerations, quality control is even risk losing some of its own core CS: If carried out properly, licensing a necessary element in any trademark customers. Thus, before entering into a is a terrific means of expanding the licence from the business perspective brand cooperation, the following issues reach, recognition and fame of a of safeguarding the original brand’s should be considered and (if necessary) brand. However, it is important to reputation. dealt with in the contract: control brand expansion in a way that • Does the brand cooperation provide protects the brand’s core values. As Another market strategy is to any real rational or emotional benefit such, before engaging in a licensing launch co-branded products in or advantage to consumers? What is the programme, establish a business plan association with third-party market potential? which articulates your licensing goals. brands. What are the main • Are the other brand’s marketing Also bear in mind that you are entering contractual considerations objectives in line with those of your into a business relationship with this when entering into such brand? entity, so be sure that the licensee relationships? • Do the partner brands fit together with

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regard to image and price relation? • Will the brand values and the positioning of your own brand be supported or even improved by the Co-branding may be a double-edged partner brand? • How strong are your own and your sword and the potential risks should partner’s brands? not be underestimated CW: While co-branded products can be an excellent way of expanding business and creating new revenue opportunities, parties can test whether the co-branding important marks, making it essential unless the agreement governing the relationship is working and then decide that they be maintained). co-branding arrangement is carefully whether to extend it. In addition to written, co-branding can also present a the normal conditions for terminating KM: In the United States, a mark must be real risk to a brand’s value. To ensure the agreements, co-branding agreements used in commerce in order to obtain and best outcome, co-branding agreements may be terminated for failure to meet renew a federal trademark registration. should include clear provisions which specified threshold performance levels Generally speaking, with goods, this confirm: or violation of IP restrictions, such as means that the mark is used on or in close • ownership and control over the use of counterfeiting, misuse or dilution of a connection to a product which is shipped the underlying brands; party’s marks. Branding and marketing across state lines – although there are • the scope of permitted use of the specifications then cover the appearance additional ways for a trademark to be parties’ respective brands; and positioning of the respective brands used in commerce. One important issue • obligations to provide each other with (eg, location, colour, size and proximity) to consider when deciding whether to the opportunity to review and approve and any modification of the brands, as maintain a mark which is not currently promotional materials and to ensure well as the types of marketing employed. in use is whether there is any basis for the quality of the co-branded products; Finally, co-branding agreements maintaining it before the USPTO. A • the duration of the agreement; generally involve the licensing of one or representation to the USPTO that a mark • the geographic scope of the agreement; more trademarks between the parties is used in commerce when it is not could • termination provisions which specify which should cover guidelines for use constitute fraud, rendering the registration when and how the agreement may of the respective brands, trademarks vulnerable to cancellation. be terminated and what happens to and other IP assets by the co-branding remaining co-branded products in this partners. CT: We often encounter situations where event; clients look into their trademark portfolio • the financial terms of the agreement; Finally, brands evolve over time and revitalise older marks which have not • an agreement to cooperate in and some marks may be used been used for a longer time. This usually enforcement efforts; short term as part of the wider comes with lower costs and fewer risks • warranty and indemnification brand-building effort. What compared to creating and installing a totally provisions; and issues need to be considered new brand. In addition, sometimes a new • that the agreement may not be when deciding whether to brand is needed quickly in order to launch transferred or assigned without the maintain marks which are not new products – in such situations it can written consent of the other party. currently in use? be highly advantageous to have a portfolio which includes older, unused trademarks. JL: When entering into a relationship JJ: As far as China is concerned, the However, since unused trademarks do to launch co-branded products in following may need to be considered when also cost money and also require some association with third-party brands, deciding whether to maintain marks which administrative work, the brand owner the co-branding agreement should be are not currently in use: should consider carefully whether it wants commercially beneficial to both parties • whether the mark may be put into use to renew an unused trademark. Another and should include articles specifying in the future (ie, although the mark may potential risk is that a third party might whether the co-branding partner is not be used currently, the registrant file a cancellation proceeding due to non- permitted to enter into other third- may need to maintain it if the mark is to use, which could involve additional costs. party agreements. Another important be used in future); and However, in our daily practice, we have contractual consideration relates to terms • whether the mark was filed for never experienced such a case which could and termination. Typically, the initial defensive purposes (such marks can not be solved amicably (eg, by entering term should be relatively short (eg, two prevent third parties from diluting into a licence agreement, following the to three years) and renewable, so that the the registrant’s house marks or other guidance mentioned previously).

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