W IPO DirectorGeneral FrancisGurry was reap-

pointed for a second six-year term this week. At anExtraordinary GeneralMeeting in Geneva, mem-ber states backed hisappointment after he waselected by the CoordinationCommittee in March.

In an interview with the INTA DailyNews conducted last month, before theGeneral Meeting, Gurry said he hoped tomake WIPO’s services—such as the MadridProtocol and Hague Agreement “truly glob-al” in his second term. He also said that thereis room to improve the quality of service incertain areas, including both those systemsand the Arbitration and Mediation Service.

“We have a major drive on to improvequality of services in the Madrid System—it’sabout responsiveness, making sure customerscan find someone who can attend to theirneeds quickly and painlessly, and respondingto their queries and needs in a rapid manner,and not leaving the impression they are deal-ing with a faceless bureaucracy,” he added.

He also stressed the importance of

keeping costs down, so thatthe systems are accessible toSMEs and start-ups. “Wehave not raised fees in thewhole of my first term, noteven inflation adjustment,”said Gurry.

Gurry cannot attendINTA this week himself dueto a prior commitment, but

congratulated the Association on holding itsfirst meeting in Asia: “It demonstrates theinternational nature of INTA and recog-nizes where markets are developing mostrapidly.” He added that Hong Kong is “awonderful meeting place.”

WIPO has a stand in the Exhibit Hall andwill host the annual Madrid System UsersMeeting tomorrow, at which DeputyDirector General Binying Wang will be pres-ent. “The MSUM has been invaluable for usin inspiring reform effort,” said Gurry.

本周，WIPO 总干事 Francis Gurry 被重新

任命，开始第二个六年任期。今年三月，

协调委员会对他进行了任命，在日内瓦举

行的特别成员大会上，成员国对于他的本

次任命给予支持。

今年三月，Gurry 在成员大会召开之前

接受了《INTA 每日新闻》（INTA Daily

News）的采访，他表示希望在第二个任期

内努力将 WIPO 的服务，如《马德里议定

书》(Madrid Protocol) 和《海牙协定》(

Hague Agreement)，“推向全球”。他

还表示，某些领域的服务质量仍有提升空

间，其中包括那些系统和仲裁调解服务。

“我们具有提升马德里系统服务质量的

主要动力，这与响应能力有关，即确保客

户能快速轻松地找到可满足他们需求的人

，确保快速响应客户的咨询和需求，确保

不给客户留下懒散的官僚作风印象。”他

补充说。

他还强调降低成本的重要性，从而确保

中小企业和创业公司可获取这些系统。

Gurry 说，“我在首个任期内未提高费用，

也未因通货膨胀而进行调价。”

因事先承诺，Gurry 不能参加本周 INTA

年度会议，但对协会首次在亚洲举办会议

表示祝贺： “这体现出 INTA 的国际化本质

，并显示出哪些市场发展最快。” 他补充

说，香港是“一个绝佳的会议举办地。”

WIPO 在展览馆设有一个展台，并将于

明 日 举 办 马 德 里 系 统 用 户 年 度 会 议

(MSUM)，届时，副总干事 Binying Wang

将出席会议。Gurry 说，“本次马德里系统

用户年度会议意义重大，将启发我们不断

做出改进。”

C hina’s new Trademark Law, whichcame into effect on May 1, bringsabout many important changes.

Many of the revisions aim to increase deter-rence and speed up proceedings, and shouldbe largely welcomed by brand owners.

Increased deterrenceThe new law looks to address what some seeas a lack of deterrent effect of the old laws. Themost obvious change is the six-fold increase inthe statutory damages maximum, fromRMB500,000 to RMB3 million (USD$80,000to USD$480,000). Furthermore, the law nowallows for punitive damages of up to threetimes the damages where the infringement isserious and committed in bad faith.

The new law also increases deterrence inother ways. Jack Chang of the Quality BrandsProtection Committee says that the new lawmakes it easier for authorities to confiscateand destroy equipment used by infringers.“Under the old law, equipment used for mak-ing counterfeit goods could be confiscated and

destroyed only if it was ‘exclusively used’ forcounterfeiting, even though TRIPs used thelanguage ‘predominantly used’,” explainsChang. “The new law, however, adopts thelanguage used in TRIPs, which should helpwith enforcement efforts.”

Stepping on the gasThe new law also looks to speed up many ofthe procedures used by brand owners.It hasseveral statutorily mandated timelines forproceedings before the CTMO and theTrademark Review and Adjudication Board(TRAB). For example, an application forcancellation based on non-use must bedecided within nine months of the applica-tion. Similarly, registration examinationsmust also be completed in nine months,while an invalidation action based on rela-tive grounds must be decided in 12 months.

Related to this goal is the move to limitbad faith actions. Oppositions based on priorrights, such as claims that a mark is confus-ingly similar to an existing registration, can

now be brought only by interested parties,such as the holder of the prior right.

However, one such change has raisedconcerns. Under the new law, a mark thatsuccessfully survives an opposition is nowimmediately registered. Hui Huang of WanHui Da warns that this can be a big prob-lem for legitimate brand owners, becausethe mark can now be used even if the oppo-nent initiates invalidation proceedings.

“No civil action can be filed against thistrademark, except by the owner of a well-known trademark or other prior rights,”Huang explains. “This means that, duringthe entire invalidation procedure, which cantake several years all together, the trade-mark is free to build a reputation...whichmight, eventually, become an argument toresist the invalidation.”

Despite these concerns, many rightsholders say that the changes in the law aregenerally positive. There is hope that it willbuild on the progress China has made inimproving brand protection.

Interview 2 | Quiz 测试 9 | Annual Report 8 | Schedule 12 | Weather 27°C

China’s new Trademark Lawimproves brand protection

Download the AnnualMeeting app for the fullprogram and speakerdetails, maps, traveladvice and more!

INTA APP

Education Sessions This year’s diverseprogram features more than 143speakers from 34 countries.

Table Topics Over 200 moderateddiscussions for groups of ten peoplewill focus on a variety of timely issues.A selection of topics will be offered inEnglish, Arabic, French, German,Japanese, Mandarin, Portuguese andSpanish.

Exhibition Hall Gain access to over 100exhibitors displaying the latestadvances in IP-related technology,products and services that can saveyou time and money at the office.

Networking Opportunities• 2014 Gala: May 10• Speed Networking: May 11–14• Welcome Reception: May 11• Grand Finale: May 14

教育会议 今年的多元化计划将安排来自

34 个国家的 143 位演 讲者。

圆桌主题 超过 200 场有主持人的十人小

组讨论，探讨各类时事问题。各类主题

将提供英语、阿拉伯语、普通话、法语

、德语、日语、葡萄牙语及西班牙语等

版本。

展厅 参观 100 多家展览商的展台，了解

知识产 权相关技术，产品和服务的最新

发展，有助于贵公司省时省钱。

联谊机会

• 2014 年特别晚宴：5 月 10 日

• 即时交流会：5 月 11 日至 14 日

• 欢迎招待会：5 月 11 日

• 盛大闭幕会：5 月 14 日

INTA AnnualMeeting highlights

DailyNewsPublished by

www.inta.org www.managingip.com

Saturday, May 10, 2014 136th Annual Meeting, Hong Kong

Six more years for Gurry at WIPO |Gurry 继续为 WIPO 效力六年

Baycrest (CC licence)

INTA Da i ly News Saturday, May 10 2014 www.manag ing ip .com2

This year is the first INTA Annual Meetingoutside Asia.But not the last one! That is one of the big shifts we want-ed to bring to INTA. This is the first time we have gone toAsia. It is going to be our biggest ever INTA Meeting out-side of the US. In 2017 we will be going to Vienna andhopefully in 2020 we will be going back to Asia.

What are you most looking forward to in HongKong?For the first time we are going to have a full Asia track aspart of the program for the Annual Meeting. That meansif somebody would like just to be educated on IP mattersand trademark matters in Asia, they will have that option.That is an amazing thing.

Another big highlight is that for the first time we areusing a language other than English. We are going to have

sessions in Chinese. For example, we are going to have asession with Chinese officials talking about the changes inregulation there and I think that is a great opportunity forour international membership to know what is going on inChina and also Asia in general.

A third thing I would like to highlight is that we aregoing to have quite a few IP offices from ASEAN countriesattending. Plus, of course, you have the networking, theeducation and the social element of course, which is verynice as well.

How did you end up at INTA?I was in private practice many years ago in differentSpanish and international law firms, always dealing withIP and with competition law. Then I moved to OHIM(Office for Harmonization in the Internal Market) andspent 15 years there.

What are some of the challenges andachievements in your first year as CEO?One of the important things that happened last year was weapproved the Strategic Plan 2014-2017. That is about pro-tection of trademarks, internationalization, communicationand service to our members. One of the big challenges is totranslate the Strategic Plan into specific projects and initia-tives to ensure we accomplish what we approved.

INTA is a very strong association. But the world ischanging and we need to permanently adapt to thosechanges. That means that we need to prepare the associa-tion for the future. This can only be achieved through asolid foundation in terms of management and resources,sustainability and systems and processes.

And of course we are a brand owners’ association andthis means protecting trademarks and related rightsaround the world through strong advocacy, communica-tion, partnership and service to all our members.

This year we started with a trip to India, where we metwith different officials. More recently, INTA PresidentMei-lan Stark and myself went to China and to Japanwhere we met with officials. Now we are having the

Interview Etienne Sanz de Acedo | 访谈录

Taking a strategic approach |采取战略性方法Etienne Sanz de Acedo has had a busy year since taking over as INTA CEO,implementing a new four-year strategic plan and gearing up for this year’sAnnual Meeting. Michael Loney spoke to him about his role.

在担任国际商标协会 (INTA) 的首席执行官后，Etienne Sanz de Acedo 度过了繁忙的一年，他已经制定下一个新的四年战略计划并为今年的年度会议做好了准备。Michael Loney 讲述了他的岗位职责。

You create. We protect.

COHAUSZ & FLORACK Patent Attorneys and Attorneys-at-lawBleichstraße 14 . D-40211 Düsseldorf . Germany . Phone +49 211 90490-0 . Fax +49 211 90490-49mail@cohausz-florack.com . www.cohausz-florack.com

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: email@deepnfar.com.tw www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

Annual Meeting in Hong Kong. Later this year, we areplanning on going to Latin America. We are trying to coverall the different regions of the world.

Tied in with that, you have created eight GlobalAdvisory Councils. What was the reason for that?As part of its commitment to be truly global INTA has cre-ated eight different Global Advisory Councils, six of thembeing regional and two being country specific: one for Indiaand one for China. We used to have Regional Councils.They were composed of people from that region who weresitting as chairs or co-chairs of the various subcommittees.I had the opportunity last year in Dallas to attend some ofthose councils. I found them very interesting, I thought theyhad great potential, but I found them a little too informal.I got the sense that not everybody was participating and theinformation stayed within that council.

We felt there was a great opportunity but we needed tomake sure first that these councils advise us and that all theinformation from the councils reaches all the membership.That’s why we moved from regional to global councilsbecause the purpose is to advise the INTA president as wellas the INTA CEO in three areas: advocacy in that region;how to get more corporate members in that region; andcommunicating better about what is going on in thatregion. Those Advisory Councils will meet four times ayear: they have phone calls in February and September,and meet face to face during the Annual Meeting and dur-ing the Leadership Meeting. The work of these councils isthen shared with all members via the Global Report. InApril we issued the first Global Report, which looks atwhat is happening in the different regions of the world.

There is a great potential within INTA and we need todevelop that potential. This is why we are reviewing someof our processes and reviewing how we are organizedinternally to see how we can cope with that demand.

今年是第一次在亚洲举办 INTA 年度

会议。

但 不 会 是 最 后 一 次 。 这 是 希 望 为

INTA 带来的重大改变之一。这是我

们第一次在亚洲举办会议， 也是我

们 在 美 国 境 外 举 办 的 规 模 最 大 的

INTA 会议。2017 年，我们的会议将

移师维也纳，我希望 2020 年我们能

重返亚洲。

您对香港最期待的是什么？

这是我们第一次拥有完整的亚洲足迹

，并将其作为年度会议计划安排的一

部分。这就意味着如果有人想要了解

亚洲的知识产权事务和商标事务，我

们就会提供相关选项。这是很了不起

的。

另外一个亮点是我们将第一次使

用英语以外的语言。我们将举办中文

会议。举例而言，我们将邀请中国官

员探讨中国的管控变化，而且我觉得

这是我们的国际会员了解中国和亚洲

整体发展的好机会。

我想强调的第三件事是我们将邀

请东盟国家的一些知识产权局参会。

除外，您还获取人脉互联、教育和社

交因素，这也非常重要。

您最后怎么会考虑在 INTA 任职？

多年前，我曾在西班牙及国际多家律

师事务所任职，负责处理知识产权和

竞争法业务。之后我调任至欧洲内部

市场协调局，并在那里度过了 15 年

的时间。

我觉得是时候有所变化了。INTA

就很自然成为我的选择。

它与先前的工作比较起来如何？

这是一份完全不一样的工作。以前我

是站在商标局这一边，现在我在商标

所有者和业界这一边，两边的视角完

全不同。但是，目的都是为了促进商

标的发展。

担任首席执行官的第一年，您遇到哪

些挑战并取得哪些成就？

去年发生的最重要的事情之一是我

们批准了 2014-2017 年战略计划。

该计划的内部是商标保护、国际化

以及与会员的沟通和为他们提供的

服务。所遇到的最大挑战之一是如

何将战略计划转变成具体的项目和

活动，并确保我们的行为遵照所批

准的计划。

INTA 是一个非常有实力的协会。

但这个世界在不断变化，我们需要随

时适应该变化。这就意味着我们必须

为协会的未来做好准备。我们只有通

过在管理和资源、可持续性和制度及

流程方面打好坚定基础，才能实现这

样的目标。

当然，我们是一个品牌所有者协

会，这意味着必须通过针对所有会员

的有力宣传、沟通、合作和服务，保

护全世界的商标和相关权利。

今年年初，我们曾到访印度，并

与不同官员见面。最近，INTA 的总

裁 Mei-lan Stark 和我走访了中国和

日本，拜见了那里的政府官员。现在

，我们在香港举办年度会议。今年晚

些时候，我们计划将前往拉美。我们

希望走遍全世界的不同地区。

您已经设立了八个全球顾问委员会。

这是为什么呢？

作为对实现真正全球化的承诺的一部

分，INTA 已经设立了八个不同的全

球顾问委员会，其中六个为区域性，

而另外两个则是国家性的：一个是印

度，一个是中国。

我们过去设有地区委员会。它们

由地区内担任附属委员会主席或联合

主席的个人组成。我去年在达拉斯有

机会参加了一些该顾问委员会的会议

。我发现会议非常有趣，我想他们潜

力很大，但是不够正式。我发现并不

是所有人都能参与，信息只能停留在

该委员会内。

我觉得这是一个好机会，但我们

首先必须确保这些会议能够为我们提

供顾问服务，而且来自该委员会的所

有信息能够传递至所有会员。我们要

从地区委员会变身为全球委员会，致

力于在三个领域为 INTA 总裁及首席

执行官提供顾问服务：即该地区的宣

传事务；如何在该地区吸引更多企业

会员以及更好地宣传该区目前的进展

状况。很多顾问委员会每年举办四次

会议：在二月和九月举办一次电话会

议，并在年度会议和领袖会议期间举

办面对面会议。委员会的这些成果最

后通过全球报告与所有会员分享。今

年四月，我们发行了第一份全球报告

，报道了世界各地不同地区目前的发

展情况。

INTA 内部潜力巨大，我们需要挖

掘这种潜力。这正是我们为何要审核

一些流程和内部组织方法，以了解如

何应对这种需求的原因所在。

Interview Etienne Sanz de Acedo | 访谈录

www.manag ing ip .com INTA Da i ly News Saturday, May 10 2014 3

I f you’ve served your term as aCommittee Chair or Vice-Chair, oreven completed a three-year period on

the INTA Board of Directors, what comesnext? A new Project Team aims to ensurethat the great pool of leadership experi-ence and talent in INTA does not go towaste.

Tish Berard of Hearts On Fire, who wason the Board for three years until lastDecember and has also chaired the In-House Practitioners Committee, is one ofthe Co-Project Team Leaders, whichincludes former members of the Board ofDirectors, past Committee chairs and pastCommittee Vice-Chairs as well as currentmembers of the Leadership DevelopmentCommittee. “We have a wealth of knowl-edge and skill-sets and we are pairing thatwith a great group of Committee mem-bers,” she says.

Berard says the Project Team’s first goalis to identify what opportunities there are

for former leadersto help in the workof INTA through itsCommittees. Thiscould includespeaking at confer-ences or webinars,mentoring or workingwith young practitioners. “If there are pastleaders that have ideas about things theywould like to see, or opportunities theycould fit into, we’d love to hear fromthem,” says Berard.

Fellow Project Team member MarinaStipanac of Perley-Robertson, Hill &McDougall, who has served on variousINTA Committees, adds: “We’re going tobe working with a large list of past lead-ers. Hopefully we will be able to create alarge pool that will be a resource in thefuture, beyond the current Committeeterm.” To start with, the Team will bereaching out to some former leaders fol-

lowing the AnnualMeeting.

At its meetingthis week, theProject Team willidentify particularCommittees andS u b c omm i t t e e s

who might benefit from past leaders’experience and may also see if there arelessons to be learned from other organiza-tions. But Stipanac says the Project Teamalso looks forward to hearing fromCommittee members with particularneeds: “We hope other Committees willthink of us, for example when they need aspeaker for a conference or a webinar. Itmight promote new ideas if they knowthis resource is available.”

The Project Team has 12 members atpresent, and held its first conference callin February. It was inspired by RudyGaines of Marksmen, Chair of theLeadership Development Committee,who recognised a need to capture andbuild on the experience of past leaders.“We have a lot of talent to draw upon,”said Berard. “We want to make the bestuse of that in whatever way we can –whether that is speaking, mentoring orjust sharing ideas.”

INTA Da i ly News Saturday, May 10 2014 www.manag ing ip .com4

Introducing the Past Leaders Project Team

“We have a lot of talent to draw upon”Tish Berard

“We hope otherCommittees will think of us”Marina Stipanac

The INTA Daily News is produced

by Managing Intellectual Property

in association with the

International Trademark

Association.

Photography by Graham Uden.

Printed by ieMedia Asia Limited.

The INTA Daily News is also

available online at www.inta.org

and www.managingip.com.

© Euromoney Institutional

Investor PLC 2014.

No part of this publication may be

reproduced without prior written

permission. Opinions expressed in

the INTA Daily News do not

necessarily represent those of the

INTA or any of its members. Full

production credits at

www.managingip.com/about-

us.html

www.manag ing ip .com INTA Da i ly News Saturday, May 10 2014 5

101domain, Inc. 625

Acumass 325

Advance China IP Law Office

430, 432

Afilias 434

African Regional Intellectual

Property Organization (ARIPO) 334

Agency TRIA ROBIT 711, 713

AIPPI 138, 140

ALIAT LEGAL Intellectual Property

& Business Laws 715

ALIPO, Asia Liuh Intellectual

Property Office 724

Anaqua 523

Andra Musatescu Law & Industrial

Property Offices 714

Andrade & Andrade Intellectual

Property-Ecuador 719

AppDetex 536, 538

Asia IP 242

Bayramoglu Law Offices LLC 134

Beijing Dorunto Intellectual

Property Service Co., Ltd. 716, 718

Beijing Gaowo International

Intellectual Property Agency 411

Beijing Golden Bridge IP Agency

721

Beijing Hua Law Firm 241

Beijing Sanyou Intellectual

Property Agency Ltd. 125

Beijing Sino-American Tianlu

Intellectual Property Agency

Co., Ltd. 421

Beijing Sunhope Intellectual

Property Ltd. 629

BizSolution Information Technology

(Beijing & Toronto) 607, 609

Boss & Young Patent And

Trademark Law Office 233

Brandma.co Ltd. 710, 712

BrandShield 611, 613

Caribbean Trademark Services -

George C.J. Moore, P.A. 401

CheckMark Network 407

China Business Law Journal

(CBLJ) 440

China Internet Network

Information Center 707, 709

Chongqing Southwest Trademark

Office Co., Ltd. 727

Christodoulos G. Vassiliades

& Co. LLC 316

Cislo & Thomas LLP 717

Computer Packages Inc. (CPI) 508

Copyright Clearance Center 543

Corsearch 601

CPA Global 533

CSC Digital Brand Services 215

Darts-Ip 425

Dennemeyer Group 501

Digital Coding & Tracking

Association 335, 337

DomainTools 123

Dragon Intellectual Property Law

Firm 118, 120

Duong & Tran Intellectual Property

Law Firm 436

E.M. Hwang & Partners 615, 617

Envoy International Limited 246

Federation of the Swiss Watch

Industry FH 433

Getting the Deal Through 646

Global Patent Annuity Fees

Payment Agency Co., Ltd. 342

Globalaw 623

Globe-Law Law Firm 621

Grant Thornton Alyafi IP Group225

Guangdong Innopat Intellectual

Property Co., Ltd. and Zhongshan

Kechuang Patent Agent Co., Ltd. 438

Guangzhou UTC Intellectual

Property Co., Ltd. 339

Hengdu Law Offices 132

Hong Kong Trade Development

Council 642, 644

House of ports / Dipcon ab 729

HSM IP (formerly Appleby

Intellectual Property Services Ltd.)

308

Identify.com 525

India Business Law Journal

(IBLJ) 440

INLEX IP EXPERTISE 332

Innotrack Intellectual Property

Law Firm 136

inovia 115

Intellectual Asset Management

(IAM) 345

Interamerican Association of

Intellectual Property (ASIPI) 314

International Trademark

Association (INTA) 733

Investip International Intellectual

Property Agency 627

IP FORWARD 728

IP Mirror 540, 542

IPPro The Internet / IPPro Life

Sciences 616

IRANTM.COM 122

Jily IP Law Office Co., Ltd 135

The John Marshall Law School 220

Joseph Lee & Associates Ltd. 415

JPO/JETRO 515, 517

Katzarov SA 114, 116

Kingxin International Intellectual

Property Agency Co., Ltd. 139

Kondrat IP Law 726

Korean Intellectual Property Office

(KIPO) 318, 320

Leaders League 417

Lehman, Lee & Xu 315

LexisNexis 403

The Luzzatto Group 511, 513

Maccabim.com Ltd. 442

MAILCLUB SAS (SafeBrands) 141

Managing IP 124

Markify 725

Marksmen Inc. 224

Mikhailyuk, Sorokolat

& Partners - Patent and

Trademark Attorneys 216, 218

Minds + Machines 340

MOK POON IP & LAW FIRM 437

Morningside Translations 732

.nyc – The Official Domain For

New York City 633

New gTLD Disputes 614

Nicholas Weston Lawyers & Trade

Marks Attorneys 439

Novagraaf 209

O P Solutions, Inc. (PATTSY) 405

OAPI Organisation Africaine de

la Propriété Intellectuelle 121

OHIM 323

ORLOVLAW – RUSSIA IPR 341

Oxford University Press 409

PACIFIC PATENT MULTIGLOBAL

238

Panawell & Partners, LLC 336, 338

PatentAttorney.com 720

Patrafee 533

Patrix IP Helpware 301

PETOŠEVIĆ 237, 239

Pham & Associates 222

Prominence IP Services (Shenzhen)

Limited 142

RWS Group 117

SMD International, Member

of SMD Group 514

Safenames LTD 423

San Diego Convention Center

Corporation 731

SBZL IP Law Firm 119

See-out Pty Ltd. 143

Shah Net Technologies Pvt Ltd

Intellectual Property Management

Software Solutions 444

Singh & Associates 331, 333

Sjiem Fat & Mahabir 413

Standard Trademark Registration

Service Ltd. 545

SUGIMURA International Patent

& Trademark Attorneys 610, 612

SUNYU INFOTECH 240

Thomson Reuters 101

Trademark Clearinghouse 635, 637

TrademarkNow 547

Trademarks & Brands Online

(TBO) 146

uFaker 419

Uniregistry 145

VALIPAT 701

Verisign 441, 443

VIVANCO & VIVANCO – Latin

America 619

WebTMS 500, 502

Western Union Business Solutions

244

World Intellectual Property

Organization (WIPO) 201

World IP Review (WIPR) 144

World Trademark Review (WTR) 343

Yellow Brand Protection 723

ZA Central Registry (NPC) 137

Zuykov & Partners 232

The Exhibition Hall is open Sunday from 12:00 am to 5:00 pm, 10:00 am to4:00 pm Monday and Tuesday and 10:00 am to 2:00 pm Wednesday.

Exhibitors/Booth Number

Exhibitors

INTA Da i ly News Saturday, May 10 2014 www.manag ing ip .com6

www.manag ing ip .com INTA Da i ly News Saturday, May 10 2014 7

INTA Da i ly News Saturday, May 10 2014 www.manag ing ip .com8

Data

www.manag ing ip .com INTA Da i ly News Saturday, May 10 2014 9

WIPO will host its annual Madrid System Users Meetingtomorrow from 11:00 am to 2:00 pm. The System saw arecord year, with the number of member states growingto 92 and the number of applications increasing 6.4% to46,829. Ahead of the Meeting, the INTA Daily Newspresents some more key statistics.

Record year for Madrid System

0

10,000

20,000

30,000

40,000

2009

2010

2011

2012

2013

Madrid System registrationtrends

0

20,000

40,000

60,000

80,000

100,000

120,000

140,000

160,000

180,000

2009

2010

2011

2012

2013

Number of rights holders

Class: 9

Class: 35

Class: 42

Class: 25

Class: 5

Class: 41

Class: 3

Class: 16Class: 30

Class: 7

Class: Other

Top classes designated (2013)

Rank Applicant Number

1 Novartis 228

2 Zentiva 114

3 Egis 111

4 L’Oréal 109

5 Boehringer 107

Ingelheim Pharma

6 Boquoi Handels 98

7 Nestlé 91

8 Actavis 90

9 Philips Electronics 86

10 Henkel 79

Top 10 applicants 2013

Source for all data: WIPO Statistics Database and Madrid Yearly Review 2014

Kristina Rosette @kristinarosetteTime to pack for my Hong Kongtrip to see my 8500 closestfriends and talk about#newgTLDs at #INTA14.

Edy G. Portal @edygportalHappy packing for the biggestIP conference of 2014! Don’tforget your raincoats andumbrellas! #INTA14

IP Cyprus @IPCyprusWe will share ideas, we willdevelop our skills, we will meetnew friends and we will be partof #INTA14 history!

#INTA14

Today’s quiz question |测试

In how many countries has theINTA Annual Meeting been

held? | 国际商标协会曾经在多

少个国家举办过年会呢？

Send your answer tocontest@inta.org by midnighttonight. Winner announced on

Wednesday

Win INTA goodies!

What factors are considered by judges whendeciding the size of damage awards in India?Binny Kalra: The factors taken into consideration to calcu-late damages include: • Profit earned by the defendant. • Actual or prospective loss caused to the plaintiff’s busi-

ness and reputation. • Factors to enhance the aforesaid damages, such as puni-

tive and exemplary damages, include reputational loss,as well as the bad faith of the defendant and the overalleffect of the defendant’s infringing activities. The trend of awarding punitive and exemplary damages

started with the decision in Time Incorporated v. LokeshSrivastav in which the court awarded compensatory dam-ages of INR500,000 (USD$8,200) and punitive damagesof INR500,000 for infringement of the TIME trademark.In Amar Nath Sehgal v. Union of India, the court observedthat compensatory damages may be paid where the actsand commissions of the defendants violate the establishedrights of the plaintiff.

In software piracy cases such as in MicrosoftCorporation v. Kiran, courts have held that where thedefendant willfully, intentionally and flagrantly violatesthe copyrights and trademarks in question, damages mustfollow for deliberate and calculated infringement.

What types of evidence should brand ownerspresent to support their request for damages? Pravin Anand: The onus of proof in order to establish thedamage incurred as a result of the infringing activity is onthe plaintiff.

The evidence to substantiate actual damages mustinclude:• Price of the infringing goods.• The time period of business of the defendant.• Data concerning sales made by the defendant during

the relevant time period. This can be establishedthrough evidence such as invoices and books ofaccount.

• Percentage of royalty in the concerned industry.• Quantum of infringing goods seized during the execu-

tion of Court Commission.The evidence to establish damage to goodwill and rep-

utation may include:• Complaints received, such as those in respect of quality

or performance of the products.• Contracts lost as a result of the infringing activity.

Factors which form evidence to justify grant of punitiveor exemplary damages include documents to show knowl-edge on the part of the infringer and prior relationshipwith the right holder such as employer-employee, dealer-ship, supplier or distributor.

The aforesaid are just some examples of the type of evi-dence that may be adduced and the nature of evidence willvary based on the facts and circumstances of a case.

What other forms of judicial relief are availableto rights holders?Anand: At the interim stage, the relief and orders whichcan be claimed and obtained include:i) Anton Pillar orders – A Court Commissioner can be

appointed by this ex parté order to visit the defendant’spremises and search and seize the infringing goods.These goods may either be taken into custody or left ontrust with the defendants after they are sealed. TheCommissioner will thereafter file his report to the Courtgiving details of the proceedings.In cases where such orders for inspection and preserva-tion of evidence of infringement are necessary, the partymay seek appointment of a Court Commissioner. Theprocedure to appoint a Court Commissioner is provid-ed under Order 26 of the Code of Civil Procedure,1908. Court Commissioners may be also appointed fora scientific investigation or for making local investiga-tions or for several other purposes.

ii) Mareva Injunction – Courts have passed these ordersrestraining the defendant from disposing off assets dur-ing the pendency of the suit.

iii) Norwich Pharmacal orders – Rights holders can also getNorwich Pharmacal orders, which are orders directinga third party to disclose information. In Souza Cruz v.N K Jain (known as the Hollywood case), the courtdirected the Commissioner of Customs and Excise atHyderabad to disclose the complete details of infringingcigarettes being exported to Ukraine.

iv)Discovery – At any time during the pendency of the suit,the court may order the production, upon oath, of suchdocuments as are in the possession or power of a party.For this purpose, the party seeking discovery may filean application requesting the court to direct the otherparty to provide the requisite information or materialsto the applicant. In addition, a party can also seek

inspection and discovery of any document relied uponby the opposite side by sending a notice under the CivilProcedure Code, 1908. Further, a party may also makean application to court seeking leave to deliver inter-rogatories in writing to the opposite party. These inter-rogatories are answered by the opposite party, by anaffidavit within 10 days or within such time that thecourt may allow.Following the conclusion of the trial, relief such as per-

manent injunction is usually claimed. Under Section 135 ofthe Trade Marks Act 1999 and Section 108 of the PatentsAct 1970, the plaintiff is entitled either to damages or toan account of profits. By contrast, under the Copyright Act1957 Section 56, the plaintiff may be entitled to damages,accounts and even conversion damages, unless the defen-dant establishes that they were not aware and had no rea-sonable grounds for believing that copyright was beingviolated.

Infringing goods, and particularly those which havebeen seized under an Anton Piller order, are consideredcase property during the pendency of the suit and if thesuit goes to trial, they are liable to be forfeited ordestroyed. The plaintiff can seek delivery-up of infringinggoods or seek the destruction of the infringing goods.

Kalra: A right holder can also seek a declaration fromthe Court that the mark is well-known upon conclusion ofthe lawsuit. Under Section 2 (zg) of the Trade Marks Act,1999, a well-known trademark in relation to any goods orservice, means a mark which has becomes so to the sub-stantial segment of the public which uses such goods orreceives such services that the use of such mark in relationto other goods or services would be likely to be taken asindicating a connection in the course of trade or renderingof services between those goods or services and a personusing the mark in relation to the first mentioned goods orservices.

Under Section 11(8) of the Act, where a trademark hasbeen determined to be well known in at least one relevantsection of the public in India by any court or Registrar, theRegistrar shall consider that trademark as a well-knowntrademark for registration under this Act.

The Trade Marks Registry in India maintains a list,which currently contains 62 marks which have beendeclared as well-known.

How can rights holders get preliminaryinjunctions against infringers? Anand: In order to obtain preliminary relief in the form ofa preliminary injunction, the following conditions must besatisfied:i) the plaintiff has prima facie valid rights and title;ii) there is, prima facie, an infringement on the part of the

defendant;

Sponsored discussion Guide to judicial relief in India

How to use the Indian courts to maximize brandprotectionPravin Anand and Binny Kalra of Anand and Anand discuss how brand owners can get the judicial relief they needto fight against infringers in India

In software piracy cases such as in Microsoft Corporation v. Kiran, courtshave held that where the defendant willfully, intentionally and flagrantlyviolates the copyrights and trademarks in question, damages must followfor deliberate and calculated infringement.Binny Kalra

Factors which form evidence to justify grant of punitive or exemplarydamages include documents to show knowledge on the part of theinfringer and prior relationship with the right holder such as employer-employee, dealership, supplier or distributor.Pravin Anand

INTA Da i ly News Saturday, May 10 2014 www.manag ing ip .com10

iii)the balance of convenience is in favor of the grant of aninjunction; and

iv) the plaintiff will suffer an irreparable injury if aninjunction was denied.The court will look at the whole case, the strength of

the case of the plaintiff and that of the defense, as held inFranz Xaver Huemer v New Yash Engineers. The injunc-tion may be refused where the plaintiff is found guilty ofacquiescence or where there has been an unexplained delayin initiating proceedings.

Ex parté injunctions, where no notice is served on thedefendants, will be granted where it appears that the objectof granting the injunction would be defeated by the delayof giving notice to the defendants.

Are John Doe orders available in India?Kalra: In India, a John Doe order is generally referred to asan ‘‘Ashok Kumar’’ order. The John Doe procedure is aneffective mode of enforcing rights as a Court Commissioner,being an officer of the court, has the power to ascertain thenature of the infringing activity. Once this is obtained, allsuch infringers may be impleaded as parties to the lawsuit.A John Doe order is passed where on an application madeby the claimant, the Court, if satisfied, directs the CourtCommissioner to inspect and seize counterfeit products notjust from the named defendant but also unidentified defen-dants who are indulging in counterfeiting activities.

• For example, in 2011, the Delhi High Court in LouisVuitton Malatier v. Arvind Aggarwal passed a John Doeorder, where the plaintiff was granted liberty to executeany number of raids for a period of two months, in aparticular market in New Delhi where counterfeit LouisVuitton products were sold and to implead every partyfound dealing in such products as defendants in the suit.

What tips do you have for companies looking toprotect their brands in India?Anand: Each case is different and rights holders need tofind solutions based on those unique facts. However, rightsholders can benefit from taking an active approach to find-ing and solving problems:• Keep your eyes and ears open – a few reliable investiga-

tive agencies offer genuine leads on counterfeits ataffordable rates.

• Prompt action – once a violation comes to the rightholder’s attention, it must be acted upon promptly by acease & desist notice or a lawsuit or as advised.

• Benefits of being proactive – Look beyond issues such ajudicial delay as there are huge long term benefits oftaking proactive steps against infringers.India is a large country with great diversity, solutions

therefore cannot be boilerplate. Each case is to be assessedbased on its facts and creative solutions must explored forthe best possible resolution of the dispute.

Sponsored discussion Guide to judicial relief in India

www.manag ing ip .com INTA Da i ly News Saturday, May 10 2014 1 1

Managing Partner, Anand and Anand

Practice area/industryfocusIntellectual property; litigation and dispute resolution

Career highlightsPravin Anand, managing partner of the firm, complet-ed his law studies in New Delhi in 1979 and since thenhas been practicing as an advocate and a patent andtrademark attorney.

He has been a counsel in several landmark IPcases involving the first Anton Piller Order (HMVcases); the first Mareva Injunction Order (Philipscase); the first Norwich Pharmacal Order (HollywoodCigarettes case); moral rights of artists (Jatin Dascase); recognition for pro-bono work for rural innova-tors at the grass root level (National InnovationFoundation Award – Government of India); India’s firstframing case (TATA diamonds case); first order underthe Hague Convention (AstraZeneca case) and themost recent big ticket patent litigation cases filedagainst Novartis, Pfizer and Roche.

He is the chairman of the IPR promotion advisorycommittee (IPAC) constituted by the government ofIndia, and IT committee set up by FICCI. He is thepast president of the Asian Patent AttorneysAssociation (APAA India) and was director on theboard of INTA from 2006 to 2008. He is President ofboth AIPPI and FICPI (Indian group). He has appearedas an expert witness before parliamentary commit-tees to give evidence on amendments to trademark,patent and copyright laws.

He is a co-author of the two volumes of Halsbury’sLaws of India on intellectual property and serves onthe editorial board of several international IP jour-nals. He is the author of the India chapter inCopyright Throughout the World – WEST (ThomsonReuters).

Pravin Anand

Senior Partner, Anand and Anand

Practice area/industryfocusLitigation and dispute resolution

Career highlightsShe has more than 20 years’ experience in intellectu-al property spanning a wide range of subjects in seri-ously contested IP Litigation. Ms Kalra has a strongappreciation and valuable knowledge of criticalstrategies for litigation against a backdrop of thetreatment of IP issues in the Indian courts.

Ms. Kalra contributed to the India chapter on litiga-tion surveys in “International Intellectual PropertyLitigation” (Sweet & Maxwell) and regularly con-tributes articles to various publications.

Ms. Kalra features as leading lawyer in the Asia IPProfiles 2013 Listing.

Ms. Kalra features as a recognized lawyer for IPLitigation in the Asialaw Leading Lawyers 2014Listing.

Binny Kalra

Today’s Schedule | Saturday, May 10, 2014All events take place at the Hong Kong Convention and Exhibition Centre (HKCEC) unless otherwise indicated.

7:00 am – 8:00 am Academic Course Networking Breakfast S427

8:00 am – 5:00 pm Academic Course on International Trademark Law—Day 1 S428

8:00 am – 5:00 pm Tour Desk Mezzanine

2:00 pm – 8:00 pm REGISTRATION Mezzanine and Convention Hall Foyer

2:00 pm – 8:00 pm HOSPITALITY Hall 3FG

2:00 pm – 8:00 pm INFORMATION BOOTH Mezzanine

4:00 pm – 5:00 pm First Time Attendee Orientation Convention Hall BC

7:00 pm – 8:00 pm 2014 INTA GALA EVENT RECEPTION JW MARRIOTT HOTEL—HONG KONG MARIOTT BALLROOM

8:00 pm – 11:00 pm 2014 INTA GALA: Pearl of the Orient JW MARRIOTT HOTEL—HONG KONG MARIOTT BALLROOM

2014 Pre-Annual Meeting receptions

Bogotá, Colombia Buenos Aires, Argentina Chennai, India Istanbul, Turkey London, UK

Moscow, Russia Munich, Germany New Delhi, India New York, United States Pretoria, South Africa

Rio de Janeiro, Brazil Shanghai, China Stockholm, Sweden Vienna, Austria Warsaw, Poland

Miami, United States

Quito, Ecuador

Zurich, Switzerland