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17 Nov

How to Register a Copyright in China

Posted by Sergiy Sivochek

Copyright registration process in China is relatively straightforward, fast, and inexpensive. The process is described in details here: COPYRIGHT REGISTRATION PROCESS IN CHINA

12 Nov

How to Protect a Brand in China

Posted by Sergiy Sivochek

China presents enormous business opportunities, but many Western companies find that full realization of those opportunities is often impeded by the widespread infringement of intellectual property in China. Trademark infringement, sales of counterfeit products, copyright piracy, trademark squatting, cybersquatting and other similar problems may have a significant negative effect on brand owners’ revenue streams and overall profitability. 

Although intellectual property protection in China presents unique challenges, brand owners are not without options. To contuinue reading, please click here:  BRAND PROTECTION IN CHINA
12 Nov

Brand Protection and Trademark Enforcement Options in China: Diagram

Posted by Sergiy Sivochek

Click on the image below to see the full-size diagram showing the available options:

11 Nov

Trademark Application Process in China in a Diagram

Posted by Sergiy Sivochek

Click on the image below to see the full-size diagram showing the process for registering a trademark in China:

 

27 Aug

INTELLECTUAL PROPERTY PROTECTION OF LOGOS

Posted by Sergiy Sivochek

Images can have a very powerful impact on human minds and they have the potential to do a better job getting a message across compared to words. Smart businesspeople realize all that very well, which is precisely why so many companies utilize logos in advertising. 

Properly used and protected, a logo can become a mighty symbol encapsulating all the qualities and goodwill associated with a product or a company.  Take a look at the random selection of logos below. I do not think there are many people who need further explanation as to which product stands behind each logo: 
 
 
The marketing value of logos can be truly amazing, and some logos can be worth millions.  Without proper legal protection, however, that value can quickly diminish. Trademark and Copyright are the main two forms of legal protection available to logos...
 
01 Jun

Decision in the Gucci vs. Guess Case Issued. Gucci Prevailed, But...

Posted by Sergiy Sivochek

A NY district court issued a decision in the three-year legal battle between Gucci and Guess over the latter company's alleged infringement of Gucci’s trademarks and a trade dress. Guess was found to have infringed three of the marks, as well as the trade dress, but Gucci did not receive anywhere near the amount of compensation it sought, with Gucci’s procrastination in enforcement and absence of evidence of actual damages being some of the factors that lowered the amount of award.

The complaint was filed by Gucci more than three years ago, on May 6, 2009, alleging that Guess infringed the following four of Gucci’s trademarks and a trade dress:
 
(1) The Green-Red-Green Stripe mark (“GRG Stripe”)
 
 
(2) The Repeating Interlocking GG Pattern
 
 
(3) The Diamond Motif Trade Dress
 
 
(4) The Stylized G Design mark (“Stylized G”)
 
and
 
(5) The Script Gucci Design Mark ("Script Gucci")
In its 116 page opinion, the judge found Guess to be an intentional and willful infringer. But the court also found that Gucci’s delay in bringing the claim unduly prejudiced Guess and that Gucci provided no evidence of actual damages, as well as failed to meet its burden of proof in its request for royalties.
 
In the end, the court permanently enjoined Guess from using the three trademarks and the trade dress and ordered Guess to disgorge its profits received from using the trademarks.
 
As to the Script Gucci mark, the court found that the script mark used by Guess (shown below) did not infringe.
 
 
Gucci was awarded $4,66 million, while both companies received the following message from the judge:
 
“Over the past three years, the parties have put in countless hours and spent untold sums of money, all in the service of fashion – what Oscar Wilde aptly called “a form of ugliness so intolerable that we have to alter it every six months.”  With the instant disputes now resolved, and with Gucci’s entitlement to the relief noted above, it is my hope that this ugliness will be limited to the runway and shopping floor, rather than spilling over into the courts.”
 
Not surprisingly, Guess did not admit losing the case, instead making the following statement through its CEO Paul Marciano:
 
“Guess shares the sentiment expressed by the Court that disputes like this should be resolved by companies rather than spilling over into the courts. ...
 
“Gucci's lawsuit asked for damages of approximately, $100 million dollars,
tripled. The opinion and order resulted in an award of damages of
approximately $2.5 million against Guess and our handbag and belt licensee and approximately $2 million against our footwear licensee. ..
 
"The results in this case show that Gucci grossly overreached in
its claims and the entire case could have been avoided with a single letter or phone call."
 (You can read the entire press release here: bllomberg.com)
 
The case is Gucci America v. Guess Inc., 09-4373, U.S. District Court, Southern District of New York (Manhattan).
 
 
 
31 May

Top 100 Most Valuable Global Brands - 2012 Ranking Released

Posted by Sergiy Sivochek

The global marketing and advertising company Millward Brown released its annual “Brandz Most Valuable Global Brands” ranking, providing information about the value of the top 100 brands from various industries. 

Valued at just under $183 billion, Apple was named the most valuable brand for the second year in a raw, followed by IBM, Google and McDonalds. All top ten brands are listed below.
 
You can see the whole chart of top 100 brands on the Millward Brown’s website by clicking on the image below.
 
Top 100 Brands Chart:
 
In addition to the chart, Milward Brown also published its annual Top 100 Report, providing insight on of a brand’s value components, sharing tips on sustaining a brand’s relevance and other providing other advice on brand building.
 
The entire report is available here:
 
 
30 May

Just Another Reason As to Why a Preliminary Search Alone is Not Enough to Properly Clear a Proposed Trademark

Posted by Sergiy Sivochek

There are many reasons as to why a preliminary trademark search alone is not enough to properly clear a proposed trademark.  This is just another example that even such specialized trademark databases and great preliminary search tools as CT Corsearch or Saegis have their limitations.

Look at the below table showing how current CT Corsearch’s U.S. state databases are.  As you can see, databases of some states are 5-8 years old, while the databases of the absolute champion Puerto Rico have not seen an update since early 2002, and New Hampshire doing just slightly better than Puerto Rico.

I would like to be able to show you a similar chart from Saegis for comparison, but I could not even find it, despite digging around extensively and calling Saegis with this question. Instead of providing a clear answer regarding how updated their databases are, Saegis advised me to visit websites of various Secretaries of State and look for information regarding how often a specific state releases trademark information to the public. Not the answer I was hoping for, but that is all I got.

25 May

The USPTO is Changing Its Practice Regarding Requirements For Specimens and For Declarations of Use

Posted by Sergiy Sivochek

As of now, the USPTO requires that applicants/registrants submit one specimen of use per class in support of a use-based application, allegation of use or post-registration affidavit of continued use.  Starting June 21, 2012, that rule changes.The USPTO will now be allowed to require additional specimens, information, documentation or exhibits from applicants/registrants to ensure a mark is actually in use in commerce. This is the actual text of the rule:

"In order to help assess and ensure the accuracy of the trademark register, the United States Patent and Trademark Office (“USPTO”) is revising the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to allow the USPTO to: Upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark. These revisions aim to ensure the ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration, and thereby reduce costs and burdens on the public."
 
 
A copy of the rule is available here:
 
24 May

Burberry vs. John Doe

Posted by Sergiy Sivochek

On May 18, 2012, Burberry won a $180 million award in its two related law suits against a network of infringers operating numerous websites selling Burberry knock-offs. In its default judgments, the court also ordered that numerous *burberry* domain names owned by the defendants be transferred to Burberry and that the funds in the defendants’ PayPal accounts be seized to partially satisfy the judgment.   You can read more about these cases here and here.  The court’s orders in these cases are available here: Burberry Ltd. (US) et al. v. John Doe 1 et al., case number 1:11-cv-08306, and Burberry Ltd. et al. v. John Doe 1 et al., case number 1:12-cv-00479

Of course, Burberry deserves congratulations, but the fact that the default judgments were issued does not necessarily mean Burberry will collect the entire $180 million or even a significant portion of the award. I just doubt somehow that the defendants’ PayPall accounts hold anything remotely close to that amount. Plus, the defendants appear to reside in China, and they did not even bother to appear in court, which makes it a safe bet they will not rush to comply with the court’s orders either. I will not be surprised if they simply ignore the orders and register a bunch of new websites offering their “Burberry” sunglasses for sale at $10 apiece.  
 
Does this mean Burberry’s victory is meaningless as far as fighting infringement? Not at all. After all, Burberry shut the infringing websites down, sent a good message out there and got some additional good tools for its future fight against infringement (though I remain skeptical about the amount of cash Burberry will get from those PayPal accounts). I just disagree with some of those news outlets that try to paint these default judgments as a victory of nearly epic proportions.  Instead, I think this victory should be taken for what it is – another successful round in what sometimes reminds the game of whac-a-mole.  
 
Congratulations to Burberry.
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