If the next AIPPI Congress in Milannext September seems a long way off,you might like to consider registeringfor one of the many AIPPI eventsscheduled for the next few months.

These include:

• ASEAN Regional Meeting – KualaLumpur, Malaysia, March 2016

• From IP to NP (AIPPI Israel) – TelAviv, Israel, March 14-15 2016

• 4th IP Law Seminar (AIPPI Turkey) –Istanbul, Turkey, April 7-8 2016

• Symposium (Finnish and Swedishgroups) – Helsinki and Stockholm,April 21-22 2016

The Kuala Lumpur event (illustrat-ed) will be AIPPI’s “first regional con-ference in Asia”, according to KarenAbraham of Shearn Delamore, and anAIPPI Assistant Secretary General. It isexpected to bring together the lead-ers of the national and regional AIPPIgroups in the region as well as officialsfrom government, administrative andenforcement bodies. “It is an opportu-nity to focus on discussing harmonisa-tion – will it work and how?” saidAbraham.The event is particularly timely as

the ASEAN countries are movingtowards a common market and havecommitted to join the MadridProtocol. The recently agreed trans-Pacific Partnership is also likely to bediscussed. The event demonstratesthe association’s willingness toembrace geographical diversity, saidAbraham: “AIPPI is coming to you!”

Diverse perspectives on the chal-lenges of managing innovation inan increasingly politicised climate

were provided yesterday by in-house coun-sel from 3M, Canon and Embraer at alunchtime discussion. Dean Harts of 3Msaid that his company recently received its100,000th patent, while Kenichi Nagasawasaid Canon had some 860 people working inIP worldwide. By contrast, said WanderStange Menchik, Embraer has only beendealing with IP since 2006 and has an in-house team of just four people.

“Our competitors are much larger andhave a stronger IP tradition. We’re stilllearning,” he said, speaking in Portuguese.He said his priorities are to ensure that IPassets are protected appropriately, to get thehighest value out of the assets while also

checking the company is not infringing oth-ers’ rights, and to structure the assets in thebest possible way – something that isbecoming more of a challenge: “The fiscalincentive law in Brazil is being reviewed andthat could be a major obstacle if you investin Brazil.”

On the positive side, there are few com-petitors and not much litigation in the avia-tion industry. But Embraer faces challengesarising from open innovation and coopera-tion: the company has more than 200 con-tracts with partners all over the world, includ-ing with universities and research institutes.Managing the IP rights and open innovationin that context can present difficulties.

Nagasawa faces somewhat differentproblems, which include the exponentialgrowth in patents; the threat from patent

assertion entities; 3D printing enablingmanufacture at home; and what he calledthe “IP crossover” of different rights. Hetraced the evolution of an industry such ascameras from mechanical to electronic toIT-based technology, with the latter bring-ing additional features such as WiFi andGPS. Progression to each stage is accom-panied by “a great increase in the numberof patents embedded in a single product,”said Nagasawa.

Harts said that 3M is active in 200 coun-tries, and two-thirds of its sales are outsidethe US; he compared his experience ofpatent and trade secrets disputes inGermany, Japan, the US and Korea. “TheUS is the most expensive jurisdiction forpatent enforcement – but also the mostexpensive for defendants,” he commented.

Attendees at a panel session yester-day received some advice on how todeal with a bad faith use of their

trade marks. Tobias Cohen Jehoram from De Brauw

Blackstone Westbroek in the Netherlandsanalysed two CJEU cases involving badfaith: Lindt v Hauswirth in 2009 and

Malaysia Dairy v Ankenævnet for Patenter ogVaremærker in 2013.

In the latter, Yakult claimed MalaysiaDairy had registered a trade mark in Malaysiaand a shape mark in Denmark similar to itssmall plastic bottle for a milk drink in badfaith. An important facet of the CJEU deci-sion was that it determined that the appli-

cant’s knowledge that a third party is using aconflicting mark is not in or of itself bad faith.It said that in order to establish bad faith it isnecessary to take into account all relevantfactors at the time of filing the application.

Cohen Jehoram gave some advice fordealing with bad faith applications and

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Continued on page 2

Strategies for dealing with bad faith

Three views from in-house

Panellists were invited to “tame thebeast” of functionality in a panelon industrial designs yesterday

morning, which also served as an appetiserahead of the Working Question on designfunctionality scheduled for debate at nextyear’s AIPPI Congress in Milan.

Design law is one of the least har-monised areas of IP, not least in the termi-nology used, Chris Carani of McAndrewsHeld & Malloy said. One issue that contin-ues to cause difficulty is the exception,common to most laws, that covers func-tional attributes. Speakers from theUnited States, China, Brazil and the EUdiscussed various cases where functionali-ty had been addressed (see images).

These cases raise two policy questionsregarding functionality, said Carani: first,what is the test to establish whether adesign is eligible for protection? And, sec-ond, what is the scope of protection whenparticular elements of a design are dictatedsolely by function – should any aspects ofthe design be disregarded?

On the first, as Sara Ashby of ReddSolicitors in the UK illustrated, many testshave been proposed, including the multi-plicity of forms theory, the alternativedesigns theory, the aesthetic considerationtest and the primarily functional test. She

discussed the Lindner v Franssons case, con-cerning industrial cutters, where the OHIM3rd Board of Appeal said that a design isfunctional if its “characteristic features”pursue a purely technical function.

Carani said that in the US there has

only been one case where the FederalCircuit has found that a design was solelydictated by function: it concerned a keyblade where only the blade itself wasclaimed. In Brazil, said Lucas Gaiarsa ofGaiarsa Ferreira & Meyer, the statutory

exceptions are clear, but he added: “Thelaw is there but the application is notalways something you understand completely.”

On the second question (whether todisregard aspects of the design in infringe-ment cases), Lila Wu of CCPIT Patentand Trademark Law Office said China’scourts had been clear that “any design fea-ture with technical function should not beconsidered and should be removed fromthe comparison of infringement”. As anexample, she cited a case involving an elec-trical power unit, where the plug holeswere held to be functional. Ashby pointedto a European dispute involving a Dysonvacuum cleaner, where a transparent binwas held to be functional (it lets you seethe dirt).

Cases such as these could be examplesof where “claim construction ends upbeing claim destruction”, said Carani. Thediscussion demonstrated, he added, thatthere is no clarity on this topic: “HopefullyAIPPI can help.” The Working Questionnext year is expected to cover all the rele-vant policy issues and tests and it may evenbe necessary to ask the fundamental ques-tion “Do we need a functionality exceptionand what are we trying to prevent?” saidCarani.

registration. “Make sure you have sufficientevidence,” he said. “The threshold for prov-ing bad faith is high.”

The applicant’s intention is a subjectivefactor that needs to be proven by means ofobjective evidence. If possible, providematerials such as emails and other corre-spondence that show the applicant knew orshould have known about your mark and hisintention at the time of filing, he advised.

Cohen Jehoram warned it is impossibleto prove beyond doubt that the CTM pro-prietor possessed the necessary mens reawhen filing to register the contested mark,but the burden of proof can shift whenenough probabilities are shown.

Danny Awdeh of Finnegan began his pres-entation by highlighting US presidentialhopeful Donald Trump last month asking fora website called stoptrump.us to be takendown on the grounds that it infringes his trade

marks and was registered in bad faith. He thenanalysed four Trademark Trial and AppealBoard cases in the US dealing with bad faith:L’Oreal v Marcon in 2012, Telefonos De Mex vEstrada in 2010, Edom Laboratories v Lichterin 2012, and Taiwan SemiconductorManufacturing v Semiconductor ManufacturingInternational in 2010.

Some bad faith uses can be fairly blatant.In TelMex, Estrada alleged that he intendedto use the mark AUDITORIO TELMEX onfacilities for events such as sports. Heclaimed to have never heard of the opposereven though he had lived in Mexico for 30years and lived 10 miles from the AuditorioTelmex arena.

“So the TTAB found he had been so disin-genuous and it was so obvious he was tryingto trade off the reputation of TelMex theyfound Estrada exhibited ‘not only bad faithbut a general lack of respect for the applica-tion and opposition process’,” related Awdeh.

Awdeh gave some helpful strategies fordealing with bad faith. These cases are high-ly fact intensive so the burden is on the plain-tiff to prove the facts, he said.

Bad faith filings can be addressed throughopposition/cancellation proceedings beforethe TTAB and litigation in federal court. Butthe TTAB only has the authority to decideregistration issues, so if a trade mark ownerwould like an injunction or damages, it willneed to pursue relief through federal courts.

He said the best evidence of bad faith orfraud usually comes from the applicant orregistrant itself. “Trade mark owners shouldtake early discovery to obtain documentsand written admission surrounding theselection of the mark at issue,” he said. Inaddition, a live deposition may revealmotives indicative of bad faith or fraud.

Mariangela Sampaio from Unilever Brasilnoted a number of cases in this country.These included Speedo suing a former part-ner and an Apple case against the Brazilianregistrant for IPHONE.

She gave several pieces of advice for pro-tecting trade marks against bad faith.“Whenever possible try to seek the well-known status of the trade mark,” was one ofher suggestions. “In Brazil it is possible toseek well known status through a specificprocedure.”

Another strategy was to check what otherregistrations those you believe are acting inbad faith are owned by those. If they have alarge number of registrations that appear tohave been made in bad faith this could helpyour case. “Evaluate what other trade marksand publications the company involved inthe conflict has in order to check whetheryou could use this argument in yourdefence,” said Sampaio.

Fathoming functionality for designsNews

2 AIPPI CONGRESS NEWS Wednesday 14 October 2015

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Continued from page 1

Potatoes were on the menu at yester-day’s session on collective marks andgeographical indications. Armed

with promotional golf equipment and cud-dly toys, and sporting a potato-themed tie,Patrick Kole of the Idaho PotatoCommission illustrated why the state ofIdaho in the United States (“a place I’mproud to call home”) produces “the bestpotatoes in the world”.

Idaho’s elevation, soil quality and historyof farming all contribute to its strong potatoindustry. “We depend on a lot of things tomake our agricultural products unique. Ageographical indication is a connection tothe soil combined with unique qualities ofworkmanship that go into the product,” saidKole, who noted that Idaho potatoes cancommand a premium of up to 50 cents per5lb bag.

To protect and promote the Idaho potatobrand, the state created the Idaho PotatoCommission in 1937. Governed by ninecommissioners, it has a $13.5 million annualbudget. Since its launch, the Commissionhas spent over $400 million on promotingthe brand.

But, said Kole: “There are legal prob-lems that come when you become success-ful,” which means an enforcement pro-gramme is essential. Potato manufacturers

from other regions have sought to capitaliseon the Idaho name: the Commision spent$13 million on one court case against aparty that was putting Canadian potatoesinto Idaho bags.

Kole’s potato presentation accompanieda discussion on the panel about the relativemerits of collective marks and geographicalindications. Sandra Leis of DannemannSiemsen set out the similarities and differ-ences between the two means of protectionin several useful charts. She also noted thatthere is very little harmonisation around the

world, but that it is evolving thanks to therecent Geneva Act of the Lisbon Agreement,numerous bilateral agreements and discus-sions about extending protection underArticle 23 of TRIPs to other agriculturalproducts such as cheese.

Volker Schoene of Loschelder comparedthe enforcement of collective marks and GIs,using the German brand Dresdner Stollen asan example. He concluded that “GIs are thestrongest” as public as well as private lawsanctions are available, and public authori-ties may take action. When the chips are

down, GIs can also be enforced against bothlocal non-members of the community andnon-local producers.

A lively discussion included questionsfrom the audience on the scope of GIs andthe possible mashing of different rights, aswell as recent trends in various countries,demonstrating that this issue continues to bea hot potato.

Then Kole handed out some more cuddlytoys to the audience members who hadattended the whole session. And with that,the session finished – just in time for lunch.

Food for thought on GIsNews

AIPPI CONGRESS NEWS Wednesday 14 October 2015 3

A few differences

Collective marks Geographical indications

Names or designs Names only

10-year term No fixed term

Goods/services from collective entity Goods from geographical area

May be cancelled for non-use Can only be cancelled if GI requirements change

Presumption of quality Guarantee of quality

The difficulty of getting through adouble examination by two agen-cies when trying to get a trade mark

registered was discussed in the pharma tracksession “Don’t miss the (right) mark” yester-day. The differing experiences of Brazil, theUS, Canada and the Philippines wereanalysed by panellists.

Jacques Labrunie of Gusmao Labrunie inBrazil moderated the session and revealedthis issue is a big problem in his country.Trade marks are regulated by both thepatent and trade mark office and the healthsurveillance agency Anvisa.

This causes many problems. “It is a lot ofwork for all the Brazilian pharmaceuticalindustry concerning the trade marks,” hesaid. “You have the trade mark regulated atthe BPTO and at Anvisa so you need to allowmore time to think about it [when attempt-ing to register a mark],” he said. “And theyhave different rules to each other.”

Before choosing a trade mark, you mustsee if it is available at the BPTO and checkwith Anvisa that there are no confusinglysimilar names registered.

“The understanding of confusion is a lit-tle bit different as well,” said Labrunie. “Sohaving these two agencies is a challenge inBrazil.”

Anvisa issued a new rule, Number 59, inOctober 2014, which introduced new regu-lations of pharmaceutical names and marks.This eliminated the requirement for threeseparate letters to disassociate similar wordsigns, extended Anvisa’s discretionary poweron regulating names and marks, and includ-ed some definition of elements of the regulation.

US, Canada and thePhilippinesMatthew Asbell from Ladas & Parry in theUS explained that his country also has anonerous double process. USPTO registra-tion considers prior federal marks, distinc-tiveness and significance, and compliancewith other statutes, but FDA approval is alsorequired. The FDA analysis needs no priori-ty, and uses POCA phonetic and ortho-graphic computer analysis, scripting reviewof what a mark may look like when hand

written. It also reviews packaging for the rel-ative size of the company and internationalnon-proprietary names (INNs).

The FDA approval process can causefrustration because there are limited legalarguments available and the rationale forrefusal is not always given.

“That the FDA doesn’t always give a rea-son makes it a bit of a challenge,” said Asbell.“Some legal steps can be taken but some-times it is just guesswork [for why approvalwas not given], which makes it problematic.”Applicants can look to assistance from theWHO if the stem is included or file a citi-zen’s petition asking for the reason fordenial.

“There is a higher standard at the FDA,”Asbell said. He added that the doubleprocess should be done simultaneously toavoid what he called a “train wreck scenario”,where an application is accepted by theUSPTO but then rejected by the FDA.

Asbell also revealed that new rules werereleased in September covering biosimi-lars. Biosimilars will be approved based on:a high similarity to an FDA-approved bio-logics product; no clinically meaningfuldifferences in terms of safety, purity andpotency; the same clinical result with nodifference in safety or efficacy when alter-nating with the reference product; andavoiding inadvertent substitution without intervention of an MD.

“It remains to be seen how this will beimplemented because this is a new guidancethat only came out a month ago,” said Asbell.

Steven Garland from Smart & Biggar inCanada said his country has a similar doubleprocess challenge. He said the sweepingchanges to its Trademark Act last year willhave a big impact. “The Act has been funda-mentally amended and will be coming intoforce in 2017,” he said. “It will have an effecton pharmaceutical companies and brands.”

The requirement for use has disappeared.But to keep a mark there must be use, withchallenges allowed after three years. “Youcould imagine if you are a pharmaceuticalcompany, this could become problematic,”said Garland, noting the long approvalprocess to register a drug. “It remains to beseen how that is treated,” he said.

Another change is anything filed afterJune 13 2015 will require inclusion of brandname assessment. One possible result is thatHealth Canada will refuse to issue a notice ofcompliance if the brand name is deemedunacceptable and the sponsor does not wishto move forward.

Health Canada brand name assessmentwill include initial brand name review fornaming practices that could render the pro-posed name misleading, all brand names willalso require a LASA (look alike sound alike)assessment (subject to some exceptions),and the sponsor must assess whether there is

a likelihood of confusion between a pro-posed name and other product namesauthorised for use in Canada. “They aremore onerous and I think fair to say morecomplex,” said Garland of the requirements.

Rowani Nakan of Cruz Marcelo &Tenefrancia in the Philippines said there is“is a disconnect between the IP Code andFDA” in her country. In contrast to the othercountries discussed, the double process isless of a challenge in the Philippines. “Unlikethe US, our FDA does not have a stringentprocess,” she said.

The FDA does not allow registrationsidentical to those already registered with theFDA, but it doesn’t check with IPO registra-tions. “The FDA doesn’t care about what theIPO has in its database,” she said.

If challenges are made, the FDA merelynotifies the opposer that IP matters arebeyond its jurisdiction and should beaddressed to the IPO or the relevant courts.

Nakan concluded with some recommen-dations. Since the Philippines IPO and FDAindependently evaluate the validity of a pro-posed mark, applicants should comply withboth IPO and FDA requirements. While theFDA does not yet have a specific rule inplace against the use of an INN as a brandname, applicants should refrain from usingthe INN because they will encounter chal-lenges in registering the brand name as atrade mark, she said.

Attendees heard about the continu-ing effects of the US SupremeCourt’s verdicts on patent eligibili-

ty in yesterday’s “Personalised Medicine”pharma session.

Adrian Looney of Pfizer noted the impactof the Court’s Myriad decision, which saidDNA is not allowed to be patented. “That isa big issue for us in pharma and also the diag-nostic world,” Looney said. “In oncology,almost 50% of the compounds are either nat-ural products or derived from natural prod-ucts. That is going to make it more difficult

and what I am advising my scientists whenthey are looking at natural extracts is that weare going to have to have the conversationvery early in the process and sometimes themolecule we want to develop we aren’t goingto develop.”

He noted that one compound concerns atreatment for Alzheimer’s. “It might be theexception to the rule but we still would havepreferred to patent it in the US.”

Also in the session, Hugo Caro, head ofFerrer Internacional, gave an update on thenew patent law in Spain. Article 6 of the new

law passed in July 2015 contains a text mir-roring Article 54 of the European PatentConvention. This stipulates that novelty willreside in the disease to be treated, the dosagerequired, the technical effect, synergies withother compounds and the group of patientsto be treated.

In the case of European patents, theSpanish courts would normally accept thevalidity of Swiss-type claims filed or having apriority date earlier than January 29 2011and the validity of purpose-limited productclaims granted by the EPO in accordance

with decision GO2/08, he noted.“At present there is not sufficient case

law interpreting the scope of the terms‘treatment’, ‘treating’, ‘use to treat’ andsimilar expressions, but one could expect aSpanish court to interpret these termsaccording to their new natural meaning,”

Double trouble for trade markapproval

News

4 AIPPI CONGRESS NEWS Wednesday 14 October 2015

The Myriad difficulties of patenting

There was what Assistant SecretaryGeneral Ralph Nack called an“exciting and controversial” debate

on compulsory licensing yesterday, featuringrepresentatives of the pharmaceutical indus-try and lawyers from India, Brazil, Thailandand the US.

The context was the recent grant of com-pulsory licences for medicines in countriessuch as India, Indonesia and Thailand.Manisha Desai of Eli Lilly in the US said thatgranting compulsory licences leads to uncer-tainty for businesses – adding “the worstthing for us is uncertainty” as it means lessincentive to invest and long-term increasesin costs.

But Rodolfo Martinez of Martinez &Associates in Brazil said: “It is unfair to usethe expression ‘uncertainty’ when you’replaying by rules established 100 years backin the Paris Convention.”

He later added: “I don’t think the com-pulsory licence is a positive instrument. Butyou have to look at the domestic market ineach country. In a country like Brazil wherethe government is footing the bill, pricebecomes a matter of interest.”

Guilherme Leser of Merck (MSD) inBrazil noted that policies on compulsorylicensing are often driven by political consid-erations, making it difficult to predict long-term trends. Brazil, for example, has its sec-ond health minister within a year. “I don’tsee any pharmaceutical company investingin R&D in a country where there is uncer-tainty,” he added. Merck had a compulsorylicence granted on a drug in Brazil in 2007.

The panel, chaired by HariSubramaniam of Subramaniam &Associates, discussed recent cases includingthe pending Lee Pharma v AstraZeneca casein India, concerning compulsory licenceapplications for the drugs Onglyza andKombiglyze. They also addressed thenational and international legal frameworksand whether importation can or cannotconstitute working an invention, and

Brazil’s so-called Productive DevelopmentPartnerships (PDPs), designed to promotetechnology transfer in the country.

It was a session that did not offer anyeasy answers, but did show the strength offeeling on all sides. As Desai, who was bornin India, said: “I want to see the environ-ment improve so Indians can have access toour latest medicines. There is no certaintythat is going to happen.”

Strong feelings on compulsorylicensing

News

AIPPI CONGRESS NEWS Wednesday 14 October 2015 5

Felipe Claro, AIPPI President is keep-ing a close watch on a number ofimportant IP issues.

“Worldwide harmonisation has beenfrom the very beginning the biggest issue forthe association,” he says. “And enforcementhas become very important in the Latin-American region, where we need to see howthe Latin-American economies fit within theIP structure to better succeed. Early IPawareness initiatives are also welcome toeducate young people and to reduce theimproper use of IP rights.”

AIPPI’s study of topical IP issues pro-vides a way forward, he says, not only for IP

owners but also for IP users and regulators.The Rio Congress takes place between theWorld Cup 2014 and the Olympic Games2016, and Brazilian IP firms hosted areception last night at the MaracanãStadium. “This is a powerful message at atime when IP is permeating the daily livesand the many sports activities enjoyed byBrazilians in all walks of life,” says Claro,who is from Chile.

AIPPI’s goal is to have a positive impact onthe understanding of IP around the world.

“If you look at it from a distance, you willsee that AIPPI is always dealing with changeand it is always promoting positive change

globally, so that the IP world can becomeless complicated and better understood byeveryone,” he says.

The association is also trying to have apositive impact in other ways. For example,AIPPI’s commitment to environmental pro-tection has moved the Association to applyfor observer status before the UnitedNations Framework Convention on ClimateChange. In addition, the Rio Congress is theassociation’s first paperless Congress, whichClaro says “is a giant step forward in the pro-tection of the environment” for AIPPI.

Another important part of IP is prior art.“It is the reason why exclusive protection isgiven to IP innovators for a certain periodof time. So we should also include prior artin the IP equation and the governmentalbodies in charge of keeping this informa-tion available should redouble their effortsto maintain cheap, integrated and userfriendly databases, which are accessible toall market players.”

Another issue on which AIPPI is keep-ing a close watch is plain packaging. It istaking a strategic approach to how it is

trying to exert influence. A decision in theWTO dispute on Australia’s plain packag-ing measures is expected in the first part of2016. AIPPI considered the possibility offiling an amicus brief submission. ItsAmicus Brief Committee analysed the prac-tice before the WTO concerning the filingof amicus briefs and publicly availablematerial concerning the present status ofthe proceedings, and concluded that anyamicus brief it filed would more usefully bedeployed at the appellate stage, rather thanat what might be characterised as the ‘firstinstance’ panel stage.

“AIPPI believes its preferred coursewould be more effective because the scopeof the panel decision will be known, permit-ting a more targeted and detailed focus inany brief filed” explains Claro. “Accordingly,AIPPI will continue to monitor develop-ments in the WTO proceedings. AIPPI’sResolution on Plain Packaging passed at itsExCo meeting in Helsinki, Finland inSeptember 2013 is a public document thatcan be used by anyone in any submission orbrief filed at the panel stage.”

Claro outlines AIPPI’s biggest issuesWorldwide harmonisation, prior art and plain packaging are among the biggest issues on AIPPI’s radar at themoment, says Felipe Claro, this year’s President of the association

Interview AIPPI President Felipe Claro

6 AIPPI CONGRESS NEWS Wednesday 14 October 2015

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“If you look at it from a distance, you will see that AIPPI is always dealing with change and it is always promoting positive change globally, so that the IP world can become less complicated and better understood by everyone”

Claro told AIPPI Congress News at lastyear’s event in Toronto that a goal was tomake the association more flexible and ben-eficial to members. He says this remains agoal, and is being approached in three ways.One is extensive changes modernisingAIPPI’s statutes and regulations, andupdating its terminology, which should beconfirmed at its General Assembly and

Executive Committee meetings in Rio. Thesecond is more proactive efforts to formNational Groups in key regions of theworld, as demonstrated by two newNational Groups being admitted in Rio.The third is increased visibility with gov-ernmental organisations including IPoffices, resulting in the observer status atOHIM in Alicante.

“More visible to the members may bethings such as the recent recruitment of anExecutive Director. John Bochnovic is herein Rio and the new website we will open afterRio by the end of October,” says Claro.

Increasing AIPPI’s LatAmmembershipThis year’s Congress has been a great oppor-tunity for AIPPI to increase its presence inLatin America by showing new attendees whatthe association does and how it does it.

“We want to attract more new Latin-American members to show them the AIPPIwork and experience, so that they can active-ly participate in the future and have astronger voice in the Committees, theExecutive Committee and other AIPPI bod-ies,” says Claro.

He notes the Brazilian Association ofIntellectual Property (ABPI) has been gen-erous in agreeing to change their annualmeeting format this year. “The ABPI and itsmembers are putting all their efforts intosupporting the AIPPI Congress,” he says.“The result is that the single largest NationalGroup representation at the Congress willbe from Brazil.”

Claro identifies a number of IP challengesin the region.

“Latin America needs to diversify and

improve its productive structures, train pro-fessionals, decentralise management andinvest in innovation and education toreduce the underlying frustration of devel-oping countries and to catapult theireconomies to be, one day, globally IP compliant,” he says.

He says attention has now shifted to therecent adoption of the Trans-PacificPartnership, which will need to beapproved by the legislatures of the 12countries involved.

“This is a tool that some Latin Americancountries now have at hand,” he says. “Thefact that the TPP covers around 40% ofglobal trade and also that the IP standardshave been raised in several respects is some-thing that should keep AIPPI busy for quitea while.”

He adds: “However, my personal concernis that I do not see initiatives to have thesenew IP standards replicated within theTRIPs Agreement; without that, this impor-tant WTO global treaty could lose its effica-cy and risks becoming obsolete if these stan-dards and vital matters (such as the internet)remain outside its scope. Obviously no onewants to see this happen. AIPPI is deter-mined to offer whatever assistance it can tohelp in having more countries embrace thesenew IP standards.”

InterviewAIPPI President Felipe Claro

AIPPI CONGRESS NEWS Wednesday 14 October 2015 7

Free riders try to take advantage ofthe reputation attaching to a trademark. This can be a tough problem

to tackle because a likelihood of confusionis traditionally required to succeed in anaction against a free rider.

But trade mark and unfair competitionlaws have evolved in a number of jurisdic-tions to provide broader protection againstfree riding. This includes recent decisionsnot requiring a likelihood of confusionwhere the public has made a connectionbetween the sign used by the free rider andthe trade mark. This has been taken asproof that the free rider has taken unfairadvantage of the reputation of the trademark.

Today’s working question will examinethe exact status of any available protectionagainst free riding. It is not always clearwhether the protection can be evoked atall, and, even if it can, the requirements for

protection and the scope of protection canbe unclear. The working question willexplore whether changes to the status quoare desirable.

Graciela Pérez de Inzaurraga ofArgentinian law firm Hausheer Belgrano& Fernández is the chair of the Q245working committee. She says free riding isa common problem. “But when this situa-tion arises some trade mark laws – not inall jurisdictions, but in some jurisdictions– are not yet equipped to deal with thisissue because there is not confusion,” shesays.

Free riding is seen as a problem becausethey are taking advantage of something thetrade mark owner has invested time andmoney in building a reputation around. DeInzaurraga notes some situations wherethe use may be legitimate, however, forexample in comparative advertising or ifthere has been prior use in good faith.

Finding some consensus The Reporter General received 47 reports forthis working question. The reports revealbroad consensus on the issue.

“There was consensus, apart from somejurisdictions, that there should be legislationto prevent this use and there was also consen-sus on what could be called enhanced protec-tion,” de Inzaurraga says. “Let’s say it is outsidethe boundaries of confusion to have thisenhanced protection, the mark that’s beingenforced should be well known or at leastknown in the relevant segment of the public orshould have a unique distinct character.”

Most groups responded that their jurisdic-tions provide for protection against the takingof unfair advantage of trade marks. However,exceptions to this were Australia, Brazil,Canada, Egypt, Russia, the United States andVenezuela. The US is strongly against a statu-tory provision on free riding because it wouldcreate conflicts with existing statutes, prece-

dents and policies, lead to litigation and possi-bly be unconstitutionally vague and indefinite.

A majority of the groups also agreed thatthere should be protection against similar use.But the summary report notes that a signifi-cant minority disagrees, meaning there isprobably not sufficient basis for a resolutionon this aspect.

The reports reveal most countries havemultiple causes of action available that can beinvoked cumulatively, in many cases at leastunder trade mark law and unfair competitionlaw.

The plaintiff generally bears the burden ofproof but the defendant bears the burden ofproving any defences it invokes. However, inBrazil this burden can be shifted if the con-sumer is deemed by the court to be in a lessfavourable position to produce evidence. InUruguay, the burden of proof can be shifted ifit is clear that one party has evidence in its pos-session that it does not reveal.

What to do when your brand getstaken for a rideFree riding of trade marks is up for discussion at this year’s Congress in Working Question 245 “Taking unfairadvantage of trademarks: parasitism and free riding”. Michael Loney reports

Preview Q245

8 AIPPI CONGRESS NEWS Wednesday 14 October 2015

WHAT HAS BEEN YOUR HIGHLIGHT OF THIS YEAR’S CONGRESS?

Daniel SánchezOlivares, Mexico City, MexicoThere were interesting topics. I wasinterested in hearing about copyrights. I

always learn when I come to AIPPI.

Ana Amélia MontenegroLicks AdvogadosRio de Janeiro, BrazilThe FRAND panel was amazing. That wasthe highlight. They gave us a great

overview of United States precedents. I thought it wasvery interesting as a Brazilian attorney. Our firm handlesa lot of cases in this area.

Paula ClancyClancy + Brion RaffoulOttawa, CanadaThe dancers at the cultural event, for sure.It was eye popping. It put Toronto to

shame, and we’re Canadian. We had the Cirque duSoleil but that was tame in comparison to this!

RP BhattacharyaDe Penning & De PenningKolkata, IndiaWe enjoyed the discussion on FRAND. Itsaid how standard essential patents are

being looked at and how it is impinging uponcompetition law. It was very interesting because it hasgot a lot of impact for India also. We are having a lot oflitigations on the same thing.

Carolina Celis EspinosaOlarte Moure & AsociadosBogota, Colombia The best part of it was the “Doublejeopardy” panel. Here in Brazil there is

Anvisa that checks the regulatory issues of the patents.They have been denying some patents based on what theysay are technical concepts but in truth it is not that. So ithas been really complicated for solicitors. It is interesting.

Tammy TerryOsha LiangHouston, USAThe highlight was to reconnect with all theAIPPI friends. This is my second time. The

working committees have worked very efficiently so that’sbeen great and it has been good to see that a lot of thepeople that we saw last year really did return this year.

Natalie Raffoul, Clancy + Brion RaffoulOttawa, CanadaThe green technology session yesterday Ithought was very good. That’s the

politically correct answer. But the dancers are the oneeveryone wants to hear about!

Dean PelletierPelletier LawChicago, USAI would say the opportunity to network.This is the first time I have been to the

Congress, and it was as good as I expected.

Luis SchmidtOlivaresMexico City, MexicoIt was a wonderful venue and greatCongress!

VOXPOP

Forty-one of the groups submitting reportsbelieve there should be protection against thetaking of unfair advantage of trade marks asdefined in the working guidelines. OnlyAustralia, the Republic of Korea, the US andVenezuela did not agree. Australia said that ithas enough checks and balances in place, mak-ing further cause of action unnecessary.

A large number of groups deem harmoni-sation in the area of free riding desirable,although disagreeing with this notion were theCzech Republic, Egypt, Hungary, NewZealand, the Republic of Korea, the US andVenezuela.

No consensusNo clear consensus for protection emergedfrom the reports. Some suggestions for therequirements for protection included a cer-tain level of reputation, a connectionbetween the invoked trade mark and the signused by the third party, some kind of unfairadvantage, and with the trade mark ownergenerally bearing the burden of proof.

Some suggestions against and/or limita-tions to the protection included parody,freedom of expression, comparative

advertising, prior use in good faith, “duecause” and “fair use”.

The groups generally agree that it shouldat least be possible to invoke the protectionin civil proceedings. Many also find that itshould be an option in criminal and adminis-trative proceedings.

De Inzaurraga notes, however: “Therewas no consensus in achieving a definitionfor what is taking unfair advantage of anoth-er party’s trade mark. Consensus with regardto definitions is difficult to arrive at.”

She concludes the preliminary draft reso-lution that the working committee has beenworking on looks good. “It is meaningful andmakes a stand in connection with the topic,”she says. “Based on the reaction of delegatesto the preliminary draft I think the debate willbe centred on what requirements need to bemet to trigger this special protection. Thatwill be one of the key topics to be debated. Asecond topic will be concerning defences tobe [raised in enforcement actions].”

Working Question Q245, Taking unfairadvantage of trademarks: parasitism and freeriding, will be discussed today from 8.30am to12.00pm. Delegates yesterday debated and voted on Working Questions Q244 and Q247

Preview Q245

AIPPI CONGRESS NEWS Wednesday 14 October 2015 9

News

10 AIPPI CONGRESS NEWS Wednesday 14 October 2015

Fernandez Secco Ayer por la noche en The CulturalEvening en el Copacabana Palace. @AIPPI_ORG

@abpi_brasil #AIPPI #ABPI @isaferuy

Graeme Boocock PhD I can think of worse ways tokill an hour between meetings! #AIPPI2015

@AIPPI_ORG

Vanrellip Non traditional Marks soundslike a Mark,smell like a Mark #AIPPI

#AIPPI2015

ASIPI Hoy Presidente de ASIPI moderadordel panel sobre Marcas No Tradicionales

durante Congreso de AIPPI en Rio de Janeiro

Juan Pittaluga Siempre es un gustocompartir con mis colegas y amigos de

@LlipCia @AIPPI_ORG #riodejaneiro

Citemark IP Interesting session about badfaith trademark registration. #Aippi

#AIPPI2015

Richard P. Beem The next #Embraer will bea small entrepreneurial company. Wander

Stange, #IP Head, Embraer #patent #AIPPI

WIPO WIPO is at the #AIPPI2015 World

Congress in Rio de Janeiro. Come visit us

at booth 32-33! http://ow.ly/Tl6l2

Ray Farrell Time to vote on resolution re:Inventorship of Multinational Inventions at

@AIPPI_ORG 2015 World Congress in Rio

IP Federation Alan Johnson of Bristowsdiscusses the Unified Patent Court (UPC) at

AIPPI in Rio de Janeiro

Curtis Behmann Evening fun atCopacabana Palace. Finally found out why

our photos are on our name badges!

#AIPPI2015 @AIPPI_ORG

Noel Courage For one evening, everyoneat #aippi2015 is from #Brazil! @aippi_org

#samba

TWEETS

Monday night’s Cultural Evening at the Copacabana Palace Hotel

The Women in AIPPI reception on Monday evening

Luiz Leonardos & Advogados hospitality suite Bristows brunch at Duo on Sunday

Ci vediamo a Milano!AIPPI World CongressMilan, Italy, September 16-20 2016

INDIAMerck (MSD) last week won a favourabledecision in its battle with Glenmark overgeneric versions of its diabetes drugs Januviaand Janumet. Justice AK Pathak of the DelhiHigh Court said the generic versions violat-ed Merck’s patent for sitagliptin, andordered it to stop selling its rival productsand to pay Merck’s costs. Glenmark can seekto appeal the decision. The litigation datesback to 2013.

IRELANDThe Irish Times and The Times ofLondon have resolved a dispute over thelatter’s use of “The Times Irish edition”for its digital version in Ireland. The IrishTimes had alleged trade mark infringe-ment but the Dublin High Court declinedto grant an injunction in July. The Court

was informed on Monday that the casehad now settled, according to theGuardian newspaper.

NEW ZEALANDA New Zealand High Court judge has ruledthat the country’s trade minister Tim Grosershould “reconsider his decision” to notrelease information about the Trans-PacificPartnership trade negotiations. The judgesaid there was “no lawful basis” for the infor-mation to be withheld. Law professor JaneKelsey, Consumer NZ and Greenpeace hadasked for a judicial review of Groser’s refusalof their request for information under theOfficial Information Act.

An agreement on the TPP was reachedbetween 12 nations last week. The news ofthe agreement was met with much criticismbecause the actual text was not released.Wikileaks leaked what it said was the full IPchapter late last week.

UNITED KINGDOMThe government has declined to strengthenmeasures against “copycat packaging” fol-lowing a consultation. Trade mark owners inthe UK have long campaigned for a civilinjunctive power to tackle unfair commercialpractices, arguing that Trading Standards isoverstretched and has only brought one case

in the past seven years. But the Departmentfor Business, Innovation and Skills (BIS)said it was not yet persuaded that a changewas necessary. The British Brands Groupdescribed the announcement as “deeply dis-appointing”.

UNITED STATESApple could have pay more than $862 mil-lion in damages to Wisconsin AlumniResearch Foundation – the University ofWisconsin-Madison’s licensing arm – aftera jury in Wisconsin said the technologygiant infringed a patent for improvingprocessor efficiency. The jury said thepatent was valid and the technology wasused in Apple’s A7, A8 and A8X processorsin the iPhone 5S, 6 and 6 Plus and versionsof the iPad.

A trial has been scheduled to determinedamages. Judge William Conley ruled thatApple could be liable for up to $862.4 mil-lion in damages. The case involves USpatent no 5,781,752 entitled “Table BasedData Speculation Circuit for ParallelProcessing Computer”.

WARF sued Apple in January 2014.WARF also sued Apple again last month,alleging infringement by the company’s lat-est chips, the A9 and A9X, which are used inthe iPhone 6S and 6S Plus, and the iPad Pro.

UNITED STATESFashion designer Stella McCartney is suingSteve Madden for selling a “knock-off” ver-sion of her Falabella bag. In a suit filed in theSouthern District of New York last week,McCartney’s lawyers sued for trade dressinfringement, unfair competition, deceptivetrade practices, trade dress dilution anddesign patent infringement

“Plaintiff’s FALABELLA Collection ofbags, with their distinctive trade dress,achieved prominence in the fashion indus-try, and after Plaintiff obtained design patentprotection for its design, Defendant beganimporting and selling a tote bag, that,although virtually identical in appearance toPlaintiff’s design, is a poorly-made copy,”says the complaint.

McCartney is seeking an injunctionagainst Steve Madden.

News

AIPPI CONGRESS NEWS Wednesday 14 October 2015 11

News in brief

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08.30 – 12.00 Plenary Session IV Q245 Segovia I-IV (2nd Floor)

08.30 – 10.00 Panel Session VIII Inventor remuneration: the global puzzle Louvre I-II (Ground Floor)

08.30 – 10.00 Panel Session IX ISP liability: a rundown on takedowns (and more) Louvre III-IV (Ground Floor)

10.00 – 10.30 Coffee break Exhibition Area

10.30 – 12.00 Panel Session X Post grant oppositions: a game changer? Louvre I-II (Ground Floor)

10.30 – 12.00 Panel Session XI Mediation in IP cases: expedient or coercive? Louvre III-IV (Ground Floor)

12.15 – 13.00 General Assembly Queluzes I-VII (First Lower Level)

13.00 – 14.00 Networking Lunch Area Multiuso (Second Lower Level)

14.00 – 18.00 Executive Committee II Segovia I-IV (2nd Floor)

15.30 – 16.00 Coffee break Exhibition Area

20.00 – 22.30 Closing Dinner Jockey Club

TODAY’SSCHEDULE:

WEDNESDAY 14 OCTOBER 2015