mardi, juin 29, 2010

New Zealand: Copycats have nothing to worry about: YEAH RIGHT

Copycats have nothing to worry about: YEAH RIGHT

Contributed by A J Park

For over a decade DB Breweries has entertained New Zealanders with its distinctive Tui Beer billboards. The black and red billboards are immediately recognizable, and the catchphrase "Yeah Right" has entered the New Zealand vernacular.

Like any successful promotion, the Tui billboards have attracted copycats wanting to ride on their success. DB's most recent scuffle involves the Bethlehem Community Church in Tauranga. The church has a billboard which reads: "Atheists have nothing to worry about! Yeah Right". The church has used the same layout and colours as Tui. However, it has replaced the Tui bird image with a dove and the brand Tui with the word 'spirit'. The billboard is such a good copy that some people think it is a genuine Tui advertisement.

The church's billboard raises interesting questions about DB's trademark rights, as well as copyright law and the Fair Trading Act. While the church may have arguable defences under the Fair Trading Act and Trademarks Act, it is unlikely to have the law on its side in any copyright infringement action.

Fair Trading Act

The Fair Trading Act provides that no person shall, in trade, engage in conduct that is misleading or deceptive, or is likely to mislead or deceive. 'Trade' means any trade, business, industry, profession, occupation, activity of commerce or undertaking relating to the supply or acquisition of goods or services or to the disposition or acquisition of any interest in land. Even though the billboard was misleading and deceptive, arguably the church has not breached the Fair Trading Act because it could argue that its spiritual services do not amount to engaging in trade.

Trademark rights

Tui owns a trademark registration for the mark YEAH RIGHT in the classification that covers beers. To infringe this registration, the church would have had to use the YEAH RIGHT trademark in the course of trade in relation to the goods the mark is registered for. Arguably the church has a defence to trademark infringement because: (i) it is not using the YEAH RIGHT trademark in relation to beer or similar goods; and (ii) it may be able to argue that it is not using the trademark in the course of trade.

Tui also owns a registration for a rectangle device where the right two thirds are black and the left third is orange. This registration covers beer and advertisement boards. Again, however, the church arguably also has a defence to infringement. First, because it is not using this trademark in the course of trade, and secondly, because it is not using the mark in relation to advertisement boards. While it is using an advertisement board to promote its message, it is not in the advertising industry. Instead, it is using the billboard in relation to spiritual services.

Copyright

The layout of Tui's billboards would qualify as a copyrighted work under the Copyright Act. The church clearly copied Tui's billboard and adapted it for its own purposes. Copyright, unlike trademark and fair trading laws, does not consider how or why the artwork was copied, or the goods promoted by the copied work. The fact that the church copied a copyrighted work is enough to infringe DB's copyright in the billboard design.

Comment

This is an important reminder to potential copycats. Copying someone else's artwork will probably infringe copyright whether it is used on the same goods and services or not. And copyright can be infringed without infringing the trademark or breaching the Fair Trading Act.

For further information on this topic please contact
Emma McBride at A J Park by telephone (+64 9 353 6809), fax (+64 9 356 6990) or email (emma.mcbride@ajpark.com).

 

Mexico: How to claim damages for IP violations

How to claim damages for IP violations

Contributed by Becerril, Coca & Becerril SC


Introduction

The Mexican Institute of Industrial Property is the body responsible for determining whether an IP infringement has taken place. It issues such a determination after the conclusion of an administrative proceeding, which is prosecuted in the same way as a full trial. These administrative proceedings are governed by the Industrial Property Law, which also establishes penalties for parties found guilty of infringement. These penalties range from a fine or an administrative arrest to the permanent closure of the infringer's business.

A common infringement action is initiated when the IP rights holder files an initial brief with the institute, alleging an infringement and enclosing evidence thereof. Once the institute accepts the claim, it notifies the alleged infringer. If the brief so requests, the institute may also inspect the alleged infringer's premises. The alleged infringer is then granted a short period in which to file a response. Following its admission of the response, the institute requires both parties to file final pleadings. The institute then renders its final decision. If it finds that an infringement of an IP right has been proven, it imposes an administrative penalty on the infringer.

In addition, the law establishes that a rights holder is entitled to claim appropriate compensatory damages under civil legislation by filing an independent action before a civil court. Compensation for material damages will be at least 40% of the sale price of each infringing product or service offered and sold by the infringer. However, the law fails to state when a rights holder should file the civil action to obtain compensatory damages.

When to claim

The lack of regulation on the appropriate point at which to file a civil action for damages has resulted in confusion among rights holders. In the past, some have initiated civil actions to claim for damages before obtaining a decision from the institute as to whether infringement has taken place.

In 2004 the Supreme Court set out a criterion: rights holders must wait until the administrative instance of litigation is definitively decided (ie, until the institute has issued a declaration of infringement) before initiating a civil action to claim damages from the infringer.(1) This decision was supported by the Supreme Court of Justice, which argued that civil courts are not specialist IP tribunals and thus cannot determine whether a violation of an industrial property right has taken place; rather, such courts are competent only to apply civil legislation. The law clearly identifies the institute as the expert administrative authority that is entitled to examine and determine infringements of industrial property rights.

However, it remained unclear whether this criterion applied only to industrial property or extended to claims for compensation for copyright violations. The case in which the criterion was established involved trademarks, which are classified as industrial property under Mexican law. However, cases of copyright infringement are treated differently, especially with regard to civil law.

Copyright and civil law

Under the Copyright Law, copyright infringements must be prosecuted and decided in an administrative proceeding by the institute - exactly like infringements of industrial property rights. However, although administrative proceedings to determine copyright infringement are supposed to be decided under the same rules as the industrial property rights matters, it was unclear whether the Supreme Court's criterion applied to copyright violations.

This uncertainty was based on the fact that:

  • both the law and the Civil Code regulate copyright, but the latter regulates it as a form of as personal property;
  • the law expressly contemplates that litigation proceedings for copyright violations may be prosecuted in the federal courts; and
  • monetary damages for copyright violations must be sought in the federal courts under both the law and the code.

In contrast, industrial property rights cases are regulated solely by the Industrial Property Law, which states that (i) litigation proceedings must be considered and decided by the institute, and (ii) any compensation must be sought from, and determined by, a civil court.

Civil courts began to admit and consider civil actions that were filed for copyright violations without the prior issuance of an administrative infringement decision from the institute. Civil court judges argued that they had competence to resolve such disputes, as civil legislation considers a copyright to be a form of personal property, and several judges maintained that they were competent to resolve disputes related to compensatory damages for personal property.

Supreme Court clarification

A decision issued by the Supreme Court of Justice in 2008 has provided a measure of clarity on this issue by stating that in order to request compensatory damages for copyright infringement, rights holders must have a prior declaration from the institute that a copyright violation has taken place. In this case, the court applied the same considerations and rules governing obligatory precedents related to violations of industrial property rights.

This precedent has subsequently been upheld by the Supreme Court of Justice. As in the case of industrial property rights violations, it argued that the civil courts do not specialize in IP matters and that the institute is the expert authority on issues of industrial and intellectual property. The main purpose of the Supreme Court's criterion was to ensure that civil actions for compensatory damages are not heard until the existence of an infringement has been established; such civil actions are not designed to establish whether an infringement has been committed. Referring to the purpose of the criterion, in 2008 the court stated that the same conditions apply to actions to obtain compensatory damages for both industrial property rights and copyright, even though the latter falls within the scope of civil rights. The main purpose of such cases is to narrow the scope of the civil action, so that it merely determines the amount of compensatory damages.

Closing the loophole

However, the 2008 standard is not yet obligatory. As a result, civil judges may still consider civil actions for compensatory damages in relation to copyright violations, even without a prior declaration from the institute. In such cases, therefore, civil judges must decide whether the defendant infringed an IP right before determining whether damages occurred as a consequence.

There is an urgent need for the federal courts to establish a binding precedent to determine when an affected party may request a civil court to determine compensatory damages for copyright infringement. This is essential in order to create a precise and efficient system through which an injured party can request compensatory damages for IP violations from the civil courts. This should allow IP rights holders to respond rapidly and defend their interests where their rights are infringed.

It is vital to establish clear criteria to determine when rights holders can file an action in order to claim compensation for infringement. In addition to encouraging rights holders to sue for damages, this would also deter offenders. The latter rationale is particularly significant for an IP regime in which rights holders must await the conclusion of lengthy administrative proceedings - which, including two levels of appeal, can last for over five years - in order to obtain a final determination that an infringement has taken place. At this point, a civil trial - potentially lasting another five years - still stands between them and any hope of compensation for the infringement. As a result, rights holders often decide not to seek compensation and sometimes choose not even to initiate an infringement action. This attitude encourages infringers to increase their unlawful activities.

Proposals are being contemplated that would improve the procedure for claiming damages. Among other things, they suggest bundling the two actions, so that the institute would determine not only whether an infringement had taken place, but also what compensatory damages to award. It is hoped that combining the two actions will make it easier and faster for rights holders to seek damages for infringement.

For further information on this topic please contact Juan Carlos Amaro Alvarado or Carlos Hernandez at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730), fax (+52 55 5263 8731) or email (camaro@bcb.com.mx or ).

Endnotes

(1) Case 31/2003.

 

Kenya: Proposed new Constitution to recognize IP rights

Proposed new Constitution to recognize IP rights

Contributed by Njoroge Regeru & Company


On May 6 2010 the attorney general published the proposed Constitution of Kenya.
(1) If passed in the forthcoming referendum on August 4 2010, it will bring a new constitutional order to the country.

The proposed Constitution seeks, among other things, to promote and protect some of the rights hitherto not specifically provided for in the current constitution, including IP rights. Article 11.2c will oblige the state to "promote the intellectual property rights of the people of Kenya". This particular provision is provided for under the heading 'culture' and will require the state to promote all forms of national and cultural expression, such as the arts. The state will also be obliged to ensure that communities receive compensation or royalties for the use of their culture and cultural heritage.

This provision seeks to ensure that Kenyan communities are protected from exploitation and the loss of elements of their cultural heritage to the wider world. Examples of such loss include the patenting of the kiondo – a hand-woven bag made from sisal with leather trimmings, originating in Kenya and mostly associated with the Kamba and Kikuyu communities – by an unknown Japanese entity;
(2) and the attempted registration of the word 'kikoi' as a trademark by a company in the United Kingdom.(3) A kikoi is a traditional cloth garment mainly found in East African countries such as Kenya and Tanzania and is used as a wrap by women. There is no specific ownership claim of the original weaving idea by any individual or community. In Kenya, for example, it is woven by different communities working under the auspices of micro, small and medium-sized enterprises.

Unlike the current Constitution, which has a general provision protecting persons against unlawful deprivation of property of any description, Article 40.5 of the proposed Constitution specifically provides that "the state shall support, promote and protect the intellectual property rights of the people of Kenya". Therefore, if the proposed constitution is passed during the referendum, it will be a welcome initiative among IP rights holders in Kenya.

For further information on this topic please contact
David Kimani at Njoroge Regeru & Company by telephone (+254 20 271 8482), fax (+254 20 271 8485) or email (david@njorogeregeru.com).

Endnotes

(1) In accordance with Section 34 of the Constitution of Kenya Review Act 2008 (9/2008).

(2) "Kiondo idea theft: an intellectual property myth", Sylvance Anderson Sange, Principal Examiner, Kenya Industrial Property Institute.

(3) "Loss of kikoi to the UK: an intellectual property drama", Sylvance Anderson Sange, Principal Examiner, Kenya Industrial Property Institute.

 

Ecuador: Intellectual Property Institute introduces exorbitant new fee regime

Intellectual Property Institute introduces exorbitant new fee regime

Contributed by Tobar & Bustamante Abogados


As of June 1 2010 the Intellectual Property Institute has increased the official fees that it charges for its services.

Distinctive signs

With regard to distinctive signs (ie, trademarks, trade names and slogans), the total cost for both applications and renewals has been raised from $82 to $116 – an increase of 41%. Furthermore, before June 1 2010 the fee to file an application was $54 and the fee payable for the issuance of the title – once the trademark has been awarded – $28. Following the changes there is no longer any requirement to pay for the issuance of the registration title: only a one-off fee of $116 is payable in order to initiate the procedure.

An unusually high fee for three-dimensional trademarks was fixed at $336. No explanation was given as to why the fee should be so much higher than that for other trademarks.

The official fee for filing oppositions is now between $80 and $100, which represents an increase of 25%.

Another fixed fee applies to the so-called 'well-known trademark declaration'. There is no legislation providing for a specific procedure to recognize well-known trademarks. Rather, in practice, this recognition has been granted as part of other procedures such as oppositions and administrative appeals. The fixed fee for this procedure is extremely high: the Intellectual Property Institute has set a fee ranging from $3,000 to $10,000.

Several questions arise from the establishment of this fee: how will the Intellectual Property Institute process well-known trademark declarations when no such procedure exists in law? What will happen to well-known trademark evidence filed in other types of procedure, and which can be used by the owner of the well-known mark in its defence – that is, does the Intellectual Property Institute also intend to charge this fee for such cases despite the fact that they are not established by the law?

Furthermore, a new rate has been created for the "procedure to renew a well-known trademark declaration". Since there is no specific procedure for making such a declaration, and therefore no expiry date for the declaration, how can there be a procedure to renew it? How can a fee be payable if there is no such procedure? The excessive level of the renewal fee should also be noted; between $3,000 and $10,000.

There appears to be no legal basis to charge fees for a well-known trademark declaration or for a renewal of such a declaration exists. Furthermore, the payable fees seem to be disproportionate.

Invention patents

The Intellectual Property Institute has also made drastic changes with regard to invention patents. The application fee has increased from $108 to $404 – an increase of 374%. The certificate issuance fee has increased from $54 to $204 – an increase of 378%. The cost of the patentability exam has also increased: the fee, which previously ranged from $54 to $266, has increased to between $196 and $964. A fee of between $196 and $964 was also introduced for new patentability exams carried out for changes in claims.

Overall, the official fees to register a patent in Ecuador will amount to between $806 and $1,572, depending on the fee determined for the patentability exam. Assuming the total cost of this process used to be between $216 and $428, the costs have increased by 370%.

As well as these costs, the costs of maintaining applications or registrations must be taken into account: before June 1 2010 these costs consisted of a one-off fee of $28 a year.
The table below shows the new costs regime.

Years from application date

Fee ($)

From date of application until the second year

104

From the second year until the seventh

148

From the seventh year until the 11th

228

From the 11th year until the 14th

320

From the 14th year until the 17th

428

From the 17th year until the 20th

572


The cost of filling oppositions has increased from $80 to $176.

The procedures to register utility model patents and industrial design patents are also subject to significant fee increases, although they have not yet reached the levels of the invention patent fees.

Certain other fees have also been increased. These changes have been questioned by many IP lawyers and some of these issues are already the subject of discussions with local authorities.

For further information on this topic please contact
Santiago R Bustamante at Tobar & Bustamante Abogados by telephone (+593 2 986 456), fax (+593 2 986 462) or email (sbustamante@tobarybustamante.com).

 

vendredi, juin 25, 2010

United Kingdom: Product shape protected in passing-off action

Product shape protected in passing-off action

Contributed by Reynolds Porter Chamberlain LLP


Introduction

For the first time since the three elements required for passing off were restated by the House of Lords 20 years ago in Jif Lemon,(1) a product shape has been protected in a passing-off action.(2) The High Court found that the shape of a vacuum cleaner, combined with some of its get-up, had sufficient reputation and goodwill to be protected in a passing-off action from competitors replicating the design and get-up.

The decision contradicts the principle that persons wishing to copy a design are free to do so where all relevant IP rights have expired.

Facts

The claimant manufactured a range of vacuum cleaners for commercial and domestic use. Its best-known vacuum cleaner was called the Henry. It was described as "having the appearance of rather a rotund cheeky chappie with its smiling face, bowler hat and name". The Henry was a tub shape in red plastic topped with a domed black lid, which some people recognized as a bowler hat. Below the bowler hat was a smiling face applied by decal. The 'nose' was the hole to which the vacuum hose was connected.

The claimant also made a range of commercial cleaners, with a smiling face and the word 'Numatic' in place of a name.

The defendant was involved in the vacuum cleaner aftermarket. At the beginning of 2008, it decided to manufacture and sell a replica of the Henry vacuum cleaner. The defendant wrote to the claimant, explaining its intention and making clear that it would not use the 'Henry' name or face. The defendant did not know at that stage what branding or colourways it would use. The claimant asserted goodwill in the appearance of the Henry vacuum cleaner, including the shape and get-up, and asked for undertakings that the defendant would not market a replica of the Henry. No such undertakings were provided.

In March 2009 the defendant exhibited a prototype of the Henry replica product at a cleaning exhibition. The prototype replica had no brand name nor face decals. Although it had a blue base - unlike the Henry, the bowler-hat lid was black. The prototype replica was based on a replica of one the claimant's Henry-like commercial machines.

There was significant interest in the prototype replica as a result of the exhibition and orders were placed. The claimant again sought undertakings that the defendant would not sell vacuum cleaners similar to the Henry. Again, no undertakings were provided. Therefore, the claimant commenced proceedings in May 2009.

In July 2009 the defendant undertook not to sell vacuum cleaners having the appearance of the prototype replica. Despite the fact that the defendant did not put on the market any vacuum cleaner similar to the Henry, the matter went to trial.

The court was asked to consider the following questions:

  • What, if anything, was the defendant threatening to do at the date of commencement of proceedings?
  • Did a threat exist after service of the defence?
  • Did anything which the defendant threatened to do amount to passing off?

Elements for passing off

In a get-up case, in order to succeed in a passing-off claim, the claimant must show:

  • goodwill or reputation attached to goods or services by association with the identifying get-up, so that the get-up is recognized by the public as being distinctive of the claimant's goods or services;
  • misrepresentation by the defendant to the public so that the public believes the defendant's goods or services to be those of the claimant's; and
  • actual or likely damage as a result of the misrepresentation.

Decision

Threat
The judge found that the defendant was threatening to distribute machines that looked like the prototype replica. Arguments that the replica had been unbranded and unfinished were rejected. The decision to change the appearance of the prototype replica after the commencement of proceedings was not part of its natural development. The threat ended after the defence was served.

At trial, it was not disputed that the get-up of the Henry had sufficient goodwill and reputation.

Misrepresentation
The judge considered whether the sale of the prototype replica - which lacked the smiling face decal and the name 'Henry' - would have constituted damaging misrepresentation.

The claimant supported its case by relying on a survey of 535 people; it served evidence from 25 of them. The judge criticized both the form of the survey and the questions asked, but held that they provided enough evidence for him to conclude that the shape and bowler-hat lid prompted a strong recognition of the Henry. Based on the oral evidence provided, the judge concluded that the design of the prototype replica conveyed the message that it was a genuine Henry. There was a likelihood that at least some members of the public would buy it in the belief that it was a Henry.

The judge considered that the Henry shape was not simply functional. It had acquired a secondary meaning, being recognized as having the appearance of a small person.

The absence of some of the features of the Henry get-up, such as the name and smiling face decal, was insufficient to avoid confusion; nor would branding have been enough to prevent that risk of confusion.

Comment

The decision is unlikely to lead to a flood of successful passing-off cases protecting product shapes, as the facts of the case were unusual.

The secondary meaning of the Henry shape sets this case apart from previous cases.(3) A feature of the case is that the judge was prepared to place some reliance on the survey evidence as showing the extent of recognition of the Henry. He stated that without the defendant's cross-examination, the claimant would have had no real evidential support to show the necessary ingredient of confusion from members of the public. It must be galling for the defendant to know that but for its cross-examination, it would probably have won. However, it would be a bold move not to try to challenge a claimant's 'confused' witnesses.

For now, at least, Henry is safe from competition from other "rotund cheeky chappies" in the vacuum cleaner market.

For further information on this topic please contact Andrew Hobson or Tamar Shafran at Reynolds Porter Chamberlain LLP by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (andrew.hobson@rpc.co.uk or tamar.shafran@rpc.co.uk).

Endnotes

(1) Reckitt & Colman Products Limited v Borden Limited [1990] 1 WLR 491.

(2) Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch), May 28 2010.

(3) Hodgkinson & Corby v Wards Mobility [1994] 1 WLR 1564.

 

Singapore: No love lost over Valentino: Court of Appeal rules on battle of fashion trademarks

No love lost over Valentino: Court of Appeal rules on battle of fashion trademarks

Contributed by Samuel Seow Law Corporation


In Valentino Globe BV v Pacific Rim Industries Inc
(1) the luxury fashion brand Valentino Globe BV failed in its bid to establish that its marks were well known in Singapore and also failed to prevent the registration of the mark EMILIO VALENTINO plus device by Pacific Rim Industries Inc.

Facts

In 2003 Application T03/20621F in Class 18 was filed on behalf of Pacific Rim. The mark was referred to as the 'EMILIO VALENTINO and "V" device mark'. Valentino Globe opposed the registration of the application.

Valentino Globe owns an array of Valentino trademarks of various designs, which were referred to in this case as the 'Valentino marks'.

Valentino Globe's opposition was dismissed on all grounds. The registrar of trademarks found the application mark to be inherently distinctive and capable of distinguishing Pacific Rim's goods from those of Valentino Globe. The registrar ruled in favour of Pacific Rim, and Valentino Globe appealed the decision to the High Court, where its case was dismissed in its entirety. The High Court judge upheld the registrar's ruling and accepted Pacific Rim's arguments.

Appeal to Court of Appeal

Valentino Globe pursued its objection to the application mark, filing Civil Appeal 46/2009 against the High Court ruling. In doing so, it relied on various provisions, including Sections 7(6) and 8(2) of the Trademarks Act 1999.

Pursuant to Section 8(2), Valentino Globe argued that the registration of the application mark should be disallowed because there was a likelihood of confusion on the part of the public, as the application mark was similar to the Valentino marks and was to be registered for similar or identical goods.

Pursuant to Section 7(6), Valentino Globe argued that the registration of the application mark should be disallowed on the grounds of Pacific Rim's bad faith.

Section 8(2) of the act provides that a trademark may not be registered if: (i) it is identical to an earlier trademark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or (ii) it is similar to an earlier trademark and is to be registered for goods or services identical or similar to those for which the earlier mark is protected. In either case there must be a likelihood of confusion on the part of the public.

In respect of the issue of confusingly similar marks, although only two of the Valentino marks could be said to be similar to the application mark, Section 8(2)(b) was deemed to apply.

The application mark was to be registered for Class 18 of the Nice Classification in respect of:

"leather and imitation leather, and goods made of these materials and not included in other classes; animal skins; hides; trunks and travelling bags; umbrellas; parasols and walking sticks; whips, harnesses and saddles."

Court of Appeal decision

Similarity
The court examined the three marks. It found that each mark consisted of a combination of text and design. The only element that was identical in all three marks was the word 'Valentino', but the font of the text was different in each case. The court held that the most that could be said of all three designs was that they were all based on the letter 'V'. To this extremely limited extent, there was a similarity between the application mark and the two appeal marks. The court considered that it could not reasonably hold that the application mark was similar to the two appeal marks.

The court noted that the appeal marks were registered in respect of Class 25 of the Nice Classification. It therefore found that the application mark was not registered in respect of identical or similar goods.

The court considered that the registration of the application mark would be unlikely to cause confusion on the part of the public. It noted that goods sold under Valentino Globe's brand were upmarket goods. The prospective purchasers of Valentino Globe's goods would be likely to come from a reasonably discerning section of the public and would not make foolish or hasty purchasing decisions. Valentino Globe's objection to the registration of the application mark on the basis of Section 8(2) therefore failed.

Bad-faith registration
Section 7(6) of the act states: "A trademark shall not be registered if or to the extent that the application is made in bad faith".

The court referred to the leading case of Gromax Plasticulture Ltd v Do & Low Nonwovens Ltd,
(2) in which it was held that:

"Plainly, [bad faith] includes dishonesty and… also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area [of trade] being examined."

The court also considered local case law. It had previously been held that once bad faith is established, the application for registration of a mark must be refused even if the mark would not cause confusion.(3) The court considered that although Valentino Globe was opposing the registration of the application mark, there was no difference in the burden of proving bad faith in the two scenarios. Therefore, the onus was on Valentino Globe to substantiate its grounds for opposing registration.

Valentino Globe strenuously argued that the High Court judge had failed to apply the proper test to determine the question of bad faith. Consequently, he had failed to take into account or failed to give proper weight to three main issues, of which two were addressed by the Court of Appeal. The court considered the third contention - that Pacific Rim had hijacked the Valentino marks because the application mark contained the word 'valentino' - to be without merit.

Valentino Globe contended that (i) Pacific Rim had copied the application mark from the trademark of Mr Emilio Valentino, and (ii) the proprietorship of the application mark in Singapore did not reside with Pacific Rim.

The court considered that Valentino Globe had to show not only that Pacific Rim's conduct in applying for the said registration fell short of normally accepted standards of commercial behaviour, but also that Pacific Rim knew of facts which would have been sufficient to make an ordinary person realize that such actions would be regarded as a breach of those standards.

Significantly, no evidence was adduced that, in deriving the application mark, Pacific Rim had copied the Valentino marks. It was also common ground that there was no connection between Emilio Valentino and Pacific Rim.

The EV mark incorporated the name 'Emilio Valentino', but this did not in itself suggest that Pacific Rim had copied the application mark from the EV mark. Pacific Rim had claimed that its president had created the application mark independently. However, the High Court judge had noted that counsel for Valentino Globe had not called on Pacific Rim's president to testify to the originality of her design.

The court stated that Valentino Globe had failed to make even a prima facie case of bad faith and had failed to discharge this burden of proof. For Pacific Rim, the burden of disproving an element of bad faith did not arise. There was nothing for it to rebut and no adverse inference was to be drawn against it.

The court found that Valentino Globe had no valid reason to object to the registration of the application mark. It considered that Valentino Globe had sought to acquire a monopoly on the use of the common name 'Valentino' to which it was not entitled. The appeal was dismissed with costs and the usual consequential orders.

For further information on this topic please contact Samuel Seow at Samuel Seow Law Corporation by telephone (+32 2 426 1414), fax (+32 2 426 2030) or email (samuelseow@sslawcorp.com).

Endnotes

(1) [2010] SGCA 14.

(2) [1999] RPC 367.

(3) Rothmans of Pall Mall Ltd v Maycolson International Ltd [2006] 2 SLR(R) 551.

 

Pakistan: Ignorance is no excuse: Competition Commission on fraudulent trademark use

Ignorance is no excuse: Competition Commission on fraudulent trademark use

Contributed by Vellani & Vellani


The Competition Commission is back after a two-month hiatus. Pursuant to a complaint by HD Michigan LLC and Bayerische Motoren Werke AG (BMW), it initiated an inquiry against ACE Group of Industries. Both HD Michigan and BMW alleged that: (i) ACE was manufacturing, marketing, selling and exporting leather jackets bearing HD Michigan and BMW's trademarks without the approval or authorization of the two companies; and (ii) such acts were fraudulent and constituted deceptive marketing practices under the Competition Ordinance 2010.

The Competition Ordinance defines deceptive marketing practices to include:

  • the distribution of false or misleading information that is capable of harming the business interests of another undertaking;
  • the distribution of false or misleading information to consumers, including the distribution of information lacking a reasonable basis and related to the price, character, method or place of production, properties, suitability for use or quality of goods;
  • a false or misleading comparison of goods in the course of advertising; or
  • fraudulent use of another's trademark, firm name or product labelling or packaging.

The commission forwarded both companies' complaints to ACE, which denied knowledge of the law and intent to deceive. ACE also offered to make amends.

The commission's report stated that:

  • the matter was one of deceptive marketing practices, as the two companies are well known to the general public in Pakistan and around the world and the logos and registered trademarks of the two companies are famous and readily associated with each of the companies;
  • the products advertised by HD Michigan and by ACE on their respective websites appeared identical - as such, there was every likelihood of confusion in the minds of consumers, who were likely to mistake ACE's goods for those of HD Michigan;
  • neither BMW nor HD Michigan had authorized ACE to use its trademarks;
  • ACE had admitted to using the trademarks of both companies.

Taking all of these facts into account, the report concluded that ACE's claim of ignorance of the law was not a tenable excuse; therefore, ACE was in violation of the provisions of the ordinance. Moreover, deceptive marketing practices have a direct impact on consumers and undertakings should be deterred from advertising their products in an unfair and misleading manner. Therefore, the report recommended that proceedings be initiated against ACE.

For further information on this topic please contact Samiya Fikree and Ferzeen Bhadha at Vellani & Vellani by telephone (+92 21 3580 1000), fax (+92 21 3580 2120) or email (samiya.fikree@vellani.com or ferzeen.bhadha@vellani.com).