IP LITIGATION Litigation strategies for the international IP professional

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1 IP LITIGATION Litigation strategies for the international IP professional Protecting non-traditional marks in Mexico A guide to changes in India s patent laws Blocking The Pirate Bay in Italy Plus updates from India Norway Italy Poland Mexico Germany Benelux UK A supplement to Copyright

2 DOING BUSINESS IN CHINA ISN T GETTING ANY EASIER. Whether you have already taken your knocks or are about to dip your toe in the water, you need experienced and nimble legal counsel to help you navigate your success. With offices in Beijing, Shanghai and Hong Kong, we deliver results to clients from around the world. Whether you re setting up a joint venture, facing a dispute, fighting counterfeiters or tangling with tax authorities, we d like to be in your corner. BEITEN BURKHARDT INTERNATIONAL LAW FIRM CHINA PRACTICE BEIJING HONG KONG SHANGHAI MUNICH (ASIA-DESK)

3 IP LITIGATION LITIGATION STRATEGIES FOR THE INTERNATIONAL IP PROFESSIONAL TRADEMARK 04 REMFRY & SAGAR Vikram Grover and V Mohini discuss strategies in tackling trademark cases in India 08 BORENIUS & KEMPPINEN Ben Rapinoja outlines how to use and construct cease and desist letters to protect trademarks in Finland 12 IP LAW GALLI Cesare Galli discusses the state of trademark law in Italy and the protection against parasitical imitations 17 PATPOL Tomasz Rychlicki illustrates the case of Tiffany & Co in its bid to protect its mark in Poland 20 GOODRICH RIQUELME Y ASOCIADOS Enrique Diaz and Paolo Ordoñez discuss the scope of non-traditional marks in Mexico 22 VOSSIUS & PARTNER Dr. Mathias Kleespies and Paul Kretschmar discuss the use of preliminary injunctions as a remedy against trademark infringement in Germany PATENT 25 MODIANO Micaela Modiano gives an overview of IP protection in Italy 28 BORENIUS & KEMPPINEN Ben Rapinoja on the Merck v ratiopharm patent infringement case in Finland and its wider implications 30 GOODRICH RIQUELME Y ASOCIADOS Satoshi Yoshiki discusses the process for getting generic drugs to the market in Mexico 33 KHAITAN & CO Jose Madan and Ashish Gupta explain recent changes in patent law in India 38 PATPOL Malgorzata Zielinska-Lazarowicz and Jaroslaw Markieta offer a guide to patent litigation in Poland 43 VOSSIUS & PARTNER Georg Andreas Rauh analyses the implications of antitrust laws on patent enforcement in Germany 47 TILLEKE & GIBBINS INTERNATIONAL Areeya Ratanayu and Kawin Kanchanapairoj discuss the course of action for patent litigation in Thailand 51 WITHERS & ROGERS Nicholas Wallin gives an overview of the role of the litigators certificate in the UK COPYRIGHT 54 BORENIUS & KEMPPINEN Kristiina Harenko writes about the copyright case involving Finland s traditional Karelian pastries and the computer programme used to produce them 57 TREVISAN & CUONZO Julia Holden and Silvia Pugnale assess industry attempts to block The Pirate Bay website in Italy JURISDICTIONAL FOCUS 60 VONDST ADVOCATEN Silvie Wertwijn and Hidde Koenraad discuss the impact of the Intel v Intelmark case in the Benelux countries 63 BRYN AEROFLOT AS Lill Grimstad gives an overview of patent litigation in Norway From the publishers of: Copyright Editor: Rebecca Evans Tel: +44 (0) Supplement editor: Khurram Aziz Tel: +44 (0) Sales director: Chris Dooley Tel: +44 (0) Legal publishing manager: Nicholas House Tel: +44 (0) Marketing Manager: Justine Boucher Tel: +44 (0) Head of production: Fleur Cage Designer: Nicola Hobday Editorial director: Nicola Whyke Services and subscriptions IP subscriptions manager Helen James Tel: +44 (0) Fax: +44 (0) Asia Pacific Subscriptions Grant Rowles Tel: Customer Services Tel: +44 (0) Fax: +44 (0) Published by: Informa Law, Telephone House, Paul Street, London EC2A 4LQ, UK Printed by: Latimer Trend & Company Ltd Tel: Whilst every effort has been made to ensure that the information contained in this journal is correct neither the editor and contributors nor Informa UK Limited can accept any responsibility for any errors or omissions or for any consequences resulting therefrom. Informa UK Limited 2009, and contributors. The contents of this journal are protected under the copyright law of the United Kingdom, the Berne Convention and the Universal Copyright Convention. Any unauthorised copying of the journal may be in breach of both civil and criminal law. Infringers will be prosecuted. IP Litigation

4 K REMFRY & SAGAR TRADEMARK LITIGATION Trademark suits won at interlocutory stage? Complexities of trial in India Vikram Grover and V Mohini of law firm Remfry & Sagar discuss strategies in tackling trademark cases in India The Indian judiciary s outlook is, on the whole, very progressive and recent trends have gone a long way in boosting the confidence of businesses in the country. However, one aspect which sullies the good work is the huge backlog (the largest in the world) of pending cases and the resultant delays in concluding trials. Over thirty million cases are pending and more often than not, it takes years for a matter to reach trial from the date of its institution. Intellectual property suits are no different; these being instituted and tried in courts engaged in, inter alia, real estate, matrimonial, succession and recovery issues. Very often, it is said that Intellectual property matters are decided at the interlocutory stage the losing party choosing to settle rather than battling it out to the end. But what if settlement cannot be achieved? What if a litigant is dissatisfied with the outcome at the interlocutory stage? What if damages and a permanent injunction are the object of the litigation? In such cases, trial ensues with a long wait for final resolution. The High Court of Delhi, perhaps having achieved the distinction of receiving the maximum number of trademark suits in India, may take at least three-five years to conclude trial and pronounce the judgment and decree. However, there are Courts which may take more than 10 years. This reality underlines the importance of interim relief as an immediate and effective remedy for trademark owners a fact which the judiciary itself acknowledges. The Supreme Court has held that the grant of an interim injunction is a matter requiring exercise of the discretion of the court and the following tests are applied to test the plea of interim injunction: (i) whether the plaintiff has a prima facie case; (ii) whether balance of convenience is in favour of the plaintiff; and (iii) whether the plaintiff would suffer an irreparable injury if the defendant is not restrained the underlying objective being protection of the plaintiff against injury for which it could not be adequately compensated in damages if the suit were resolved in its favour at the trial. In fact, courts in India are known to adopt a proactive stance insofar as reputed trademarks are concerned and grant interim injunctions, ex parte and/or inter parte. Usually, trademark suits in India draw to a close upon completion of the interlocutory proceedings. If an interim injunction is granted restraining the defendant from using a trademark pending final decision in a suit, the defendant is quite reluctant to contest the suit up to its conclusion. Also having successfully halted the misuse, the plaintiff may not pursue trial diligently. However, for a rightful owner of a trademark who is refused interim relief, continuing the proceedings to their logical end is the subject matter of 4 IP Litigation 2010

5 TRADEMARK LITIGATION REMFRY & SAGAR K The High Court of Delhi, perhaps having achieved the distinction of receiving the maximum number of trademark suits in India, may take at least three-five years to conclude trial and pronounce the judgment and decree a conscious decision. It has been seen that on refusal of interim relief, the defendant employs various tactics to thwart and delay trial. It is for these reasons that trademark practitioners in India are constrained to advise that trademark suits are usually won (or lost) at the interlocutory stage. Beyond the interlocutory stage lies the somewhat arduous world of trial, where the rights of both parties must be conclusively determined on the basis of the evidence led. Evidence any species of proof which tends to prove or disprove any matter in question is governed by the provisions of the Indian Evidence Act (originally passed by the British parliament in 1872). The statute revolves around two types of evidence, oral and documentary evidence. All facts except contents of documents may be proved by oral evidence and further, oral evidence must in all cases be direct. That is to say, if the evidence refers to a fact which could be seen, it must be the evidence of a witness who can testify that he saw it. On the other hand, facts in dispute may be proved through documents as well either by primary or secondary evidence. Primary evidence is the document itself produced for the inspection of the court while secondary evidence means and includes certified copies of an original, copies made from an original through a process which ensures accuracy of the copy etc. For example, the photograph of an original document would constitute secondary evidence. Trial is preceded by framing of issues an exercise crystallising the dispute in the form of questions and pinning the burden of proof. Caution should be exercised to avoid coining irrelevant questions and the onus must fall correctly. Once issues are framed, parties are required to furnish a list of witnesses who would be produced in Court to prove the respective cases of the parties. Witnesses competent to testify, having an understanding of the nature of the dispute, knowledge of the relevant facts and documents and ability to communicate must be deliberated beforehand. It is expected of witnesses to prove facts which are within their knowledge and documents that form the basis of the claims/defence. Next, the testimony of witnesses, that is, examination-in-chief by a verbal or sworn statement followed by cross-examination by the opponent, and re-examination at the discretion of the litigant producing the witness, subject to approval by the court, is recorded. Where the witnesses cannot travel, parties can consider having a commission appointed which would travel to record evidence. Such recourse may, however, be expensive. The plaintiff s emphasis should be on examination-inchief so that the facts in issue are outlined succinctly. Cross-examination of witness would relate to relevant facts but need not be confined to the facts to which the witness testifies in examination-in-chief. Counsels over emphasise on crossexamination as it brings forth critical evidence, especially if a witness contradicts previous testimony. The intention is to extract favourable facts from the witness, or to impeach the credibility of the witness to minimise the weight of adverse evidence. Counsels conducting trial revel in technicalities frustrating the basic aim of dispensation of justice and fair play. Novel techniques are used and various impediments created to slow down the process of trial. This is more typical of a defendant since its endeavour is to pressurise the plaintiff into losing interest in prosecuting its case. Judicial notice has been taken of this fact by the High Court of Delhi in a case where the conduct of the defendant in delaying trial and creating technical hurdles in cross-examination of witnesses (who travelled from abroad for testimony) was frowned upon and hefty costs imposed. Whilst tactical moves aimed at derailing the trial cannot be totally avoided, small measures can go a long way in protecting the plaintiff s interest if the proceedings culminate in trial. It should always be the endeavour of the plaintiff to place on record the best possible documentary evidence, in terms of quality and admissibility, right at the inception of the suit as any delay in producing the same may be marred with legal and technical complexities. It is commonplace for a defendant to have an issue framed on the institution of suit especially when the plaintiff is a corporation based outside India. Empowering lawyers associated with the office of the plaintiff s attorney by way of a power of attorney to initiate the suit on behalf of the plaintiff is usual practice. This expedites signing and filing of papers with the court. However, such nomination may be riddled with problems if not followed carefully. Questions may be raised on the veracity of the statements contained in the document and the authority of the persons to empower others. Further, the court may enquire whether the lawyer constituted attorney of a party is also acting as a counsel in the matter. It is noteworthy to point out that the Madras High Court has recently held that a constituted attorney who is an advocate may act as a Counsel so long as there is no conflict of interest in the discharge of his professional duty and his duty as the constituted attorney. IP Litigation

6 REMFRY & SAGAR Remfry & Sagar ATTORNEYS-AT-LAW TRADE MARK PATENT DESIGN COPYRIGHT 7 Remfry House at the Millennium Plaza Sector 27, Gurgaon New Delhi National Capital Region, India Tel : Fax : & B (Old No.202) Avvai Shanmugam Salai, Gopalapuram Chennai , India Tel & Fax :

7 TRADEMARK LITIGATION REMFRY & SAGAR K Beyond the interlocutory stage lies the somewhat arduous world of trial, where the rights of both parties must be conclusively determined on the basis of the evidence To embroil the issue even more, the (Indian) Code of Civil Procedure mandates that in suits filed by or against corporations, pleadings may be signed and verified on behalf of the corporations by the secretary or by any director or other principal officer of the corporation who is able to depose the facts of the case. It has been observed that in trademark suits filed by a plaintiff through a constituted attorney, great emphasis is laid by the opponent on the constituted attorney being merely authorised to sign and verify the pleadings on behalf of the plaintiff and not institute the suit. However, another provision of the Code of Civil Procedure contemplates appointment of a recognised agent to act on behalf of the appointing party. This may come to the rescue of the plaintiff which has chosen to appoint a constituted attorney provided the power of attorney (empowering the constituted attorney) is duly executed before a notary. The Supreme Court has also endorsed the view that once an original power of attorney which has been duly notarised is produced, the court should presume that all necessary requirements for the proper execution of the power of attorney have been fulfilled and the suit treated to have been validly instituted. It is best to avoid controversy. Plaintiffs should either sign and verify the Statement of Claim themselves or consider appointing individuals from their subsidiary/affiliate or lawyers not working on the matter in question. The appointment of attorneys for instituting, signing and verifying the lawsuit should be cased in a power of attorney which is executed by authorised personnel before a notary. The plaintiff, if a corporation, could append the resolution to the power of attorney, where the initiation of the suit and execution of the power of attorney therefore are recorded and approved. It is not to say that the judiciary and/or the legislature are unconcerned by the lacunae in the Indian judicial system. The (Indian) Code of Civil Procedure has been amended to ensure speedy disposal. It curtails unnecessary adjournments and envisages payment of costs to compensate for delays caused by adjournment to the other party. Courts are also now doing away with oral testimony. Not only this, post granting an interim injunction, the Delhi High Court has, in a few instances dispensed with the cross-examination of witnesses and directed the parties to prove their case on the basis of examination-in-chief and documentary evidence. There are other instances where the High Court of Delhi has refused to pass any interim orders and directed trial to be completed within a few months so as to decide issues once and for all. In one such matter, cross-examination of witnesses was waived on account of the parties consenting that there was no dispute on the facts included in the suit and documents read in evidence without formal proof. In a very encouraging move, the Supreme Court recently directed subordinate courts to decide IP cases within four months from filing. Recognising that parties primarily litigate on the issue of interim injunction and the main suit languishes for years, it has been observed that the emphasis must shift from temporary relief (by virtue of an interim injunction) to final settlement in suits pertaining to trademarks, copyrights and patents. It has also opined that the hearing in a suit should continue day-to-day until all witnesses in attendance are examined. The observations of the Supreme Court may have a far-reaching impact on IP litigation in the country. If the pronouncement is followed religiously by the courts, trial would assume tremendous significance in that grant of interim reliefs may be debated intensely and not awarded easily. The fate of litigation will boil down to the evidence led before the court and its appreciation. Whether or not such change is in the offing retarded by insufficient infrastructure and paucity of judges trial should be an integral constituent of any litigious strategy. K AUTHORS Vikram Grover is a partner in the Firm and leads the trademark litigation team. He holds a Bachelor Degree in Sciences (Majoring in Zoology) from the University of Delhi. Conferred with a Bachelor in Laws (Honours) from the University of Leeds, UK and Masters in International Commercial Law from the University of Nottingham, UK. He is an advocate and solicitor of the Supreme Court of England and Wales. In over 13 years in the profession, he has gained experience in diverse areas of Intellectual Property and corporate laws. He regularly attends several international conferences and is a member of AIPPI and APAA. V. Mohini is a senior associate involved in contentious trademark work. After completing her degree in Law in the year 2004 from the University of Delhi, she started her career in a litigation firm and joined Remfry & Sagar in the year She has been providing strategic counseling on trademark enforcement and represents clients before courts and Intellectual Property Appellate Board. IP Litigation

8 K BORENIUS & KEMPPINEN TRADEMARK LITIGATION Cease and desist letters in trademark infringement cases in Finland Ben Rapinoja of Borenius & Kemppinen outlines how to use and construct cease and desist letters to protect trademarks in Finland Cease and desist letters (or warning letters) are widely used and are a practical tool for the rights holder to react to possible infringement of its legally protected intellectual property rights. Protection against suspected infringements of intellectual property rights and reacting to such business risks are an essential and integral part of the business and IPR strategy in many companies. The first step taken in enforcement of a company s exclusive rights is often to inform the identified counterpart about the rights of the holder and the possible infringement of that right with a request for the counterpart to cease all suspected infringing activities. In most cases the right addressee for the cease and desist letter is a competitor, but according to Finnish case law, it may also be possible to submit the letter to third parties, such as the re-sellers of the infringing products. In such situations some further prerequisites have to be taken into account. By sending the cease and desist letter the holder of the right tries to prevent the imminent or ongoing suspected infringement. The normal approach, especially in Finland, would be that the letter is submitted only to the parties that would have the legal status of a respondent in a possible court action on alleged infringement of intellectual property rights. While drafting the cease and desist letter it should be carefully considered whether third parties should be informed about possible infringement before the respondent has had the possibility and reasonable time to respond to possible claims of infringement. On cease and desist letters and trademark disputes In trademark disputes, it is typical that a cease and desist letter is submitted to the suspected infringer at first. Quite often these means are sufficient and parties settle the matter and reach an out-of-court solution to avoid lengthy litigation. Taking this into account, it can be noted that a cease and desist letter can be a very effective IP tool for trademark holders protecting and enforcing their exclusive rights. The same applies to licensees of certain trademark rights. If the dispute cannot be solved amicably and the cease and desist letter will not be helpful with this regard, it may lead to court action. The average timeframe for court proceedings is largely identical for registered and unregistered trademarks, although the burden of proof that rests upon an unregistered trademark owner may slow down the proceedings somewhat and make it more difficult to obtain an injunction. The average duration of a trademark infringement case before the Helsinki District Court has currently been between one-and-a-half and two years. Decisions in trademark infringement cases may be appealed to the Helsinki Court of Appeal. 8 IP Litigation 2010

9 TRADEMARK LITIGATION BORENIUS & KEMPPINEN K While drafting the cease and desist letter it should be carefully considered whether third parties should be informed about possible infringement before the respondent has had the possibility and reasonable time to respond to possible claims of infringement The appeal proceedings generally take from one to two years. District Court decisions in injunction applications are usually given reasonably swiftly sometimes even within a couple of days, where necessary. The swiftest (and most typical) way of responding to unauthorised trademark use is by seeking an injunction, which may be initially granted on an ex parte basis. The court may grant an injunction either before or during the main proceedings, to remain in force until the main action has been finally settled. Before an injunction can be executed, the claimant is usually ordered to provide adequate security for any financial damage suffered by the defendant as a result. According to the Finnish Trademarks Act, a claim for reasonable compensation and damages can cover only a period of five years before the filing of legal proceedings. The right to compensation lapses after this period. However, a claim for damages may be brought for infringement through use that occurred prior to registration, provided that the claim is brought within a year of registration of the trademark in question. At the request of a right holder whose trademark rights have been infringed, the court may order that, where practicable, an infringing mark attached without authorisation on goods or their packaging, leaflets, commercial documents or the like be erased or altered in such a way as ensures it can no longer be misused. If this cannot be achieved in any other way, the court will order that the infringing materials be destroyed or modified in a specified manner. Upon request, the court may also order that the material be surrendered to the claimant against payment. Regardless of whether infringement is deliberate, the public prosecutor or the court may order that the offending materials be confiscated if the plaintiff so requests and where considered necessary provides adequate security for any financial damage suffered by the defendant as a result. Taking all these consequences of full-scale trademark litigation into account, it is clear that careful consideration is needed for any and all cease and desist letters. Special attention and consideration needed especially if the letter is submitted to third parties If the decision is taken to send the letter to the third party, attention should be paid to the drafting of the letter. According to Finnish case law, the letter is not allowed to state claims or demands that are defamatory, inappropriate, misleading or are not otherwise based on law. Information given out in the letter has to be relevant and requirements have to be formulated clearly. The wording of the letter has to be in a reasonable relation to the probability of the alleged infringement. The infringement allegations should be less than definite and should preferably be worded to express concern regarding possible infringement. In other words, instead of definitely asserting that a certain product, for example, infringes certain designated intellectual property rights, such as a trademark right, the letter should suggest that the product may infringe the right of the holder, unless the infringement is affirmed by a final and un-appealable court decision. In addition to this, it should be carefully considered whether and to which extent the grounds of the statement for the alleged infringement are explained in the letter. Subcontractors, re-sellers and customers do not necessarily have the same capabilities to evaluate the probability of the alleged infringement that the manufacturer of the product has and this may lead to significant loss in demand of the products or services manufactured and provided by the alleged infringer. Therefore, the information concerning the consequences of the alleged infringement and the legal status of the addressee has to be accurate and based on law. When drafting the cease and desist letter to re-sellers and customers of the company particular attention should be paid to the wording of the text by avoiding expressions and wordings that could lead to an overly pressing tone. This is important especially when the holder of the allegedly infringed right has a dominant market position or it has an otherwise strong position in the specific market segment. The stronger the market position of the company, the more seriously must the addressee take the message received and this can lead to unexpected consequences for the addressee. It can be noted that in Finnish law, the same principles should be applied with the letters submitted to third parties as well as with the letter to suspected infringing parties. On recent Finnish precedent regarding cease and desist letters It must be noted that the aforementioned are to be taken only as a general rule which applies to every intellectual property right to a certain extent. When dealing with, for example, a possible trademark infringement, the special requirements of the said trademark legislation and regulation must be carefully studied before drafting any cease and desist letters. IP Litigation

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11 TRADEMARK LITIGATION BORENIUS & KEMPPINEN K When drafting the cease and desist letter to re-sellers and customers of the company particular attention should be paid to the wording of the text by avoiding expressions and wordings that could lead to an overly pressing tone Design rights are also analogous to trademark law in this respect. The holder of a design right, Fiskars Ltd (also referred to as the Right holder here), sent a cease and desist letter to the resellers of the product manufactured by the competitor of the Right holder, namely Rediviva Ltd ( Defendant ). The marketing of the product in Finland was carried out by a third party under the licence agreement with the Defendant. In the letter, the Right holder claimed that the product of the Defendant infringes the design right of the Right holder and that the re-seller should halt sales of the alleged infringing products to consumers. Prior to sending the letters to re-sellers, the Right holder had provided an opinion from a patent agent whether their product will be covered by design. The patent agent had formed an opinion that the part of rake which was manufactured by the Defendant, was substantially similar to the one covered by the design held by the Right holder. Thereafter, the Right holder sued the licensee of the Defendant for the infringement of the design right. In the judgement of the Helsinki District Court, the court held the infringement of the Right holder s design but Helsinki Court of Appeals found that the product sold by the licensee did not infringe the design right in suit. Also the Market Court rejected the appeal of the Right holder, based on the grounds of unfair business practices. The Finnish Supreme Court stated that even though the Right holder had the acceptable grounds for sending the letters, the formulation and the contents of the letters as whole, were likely to give an erroneous impression that the design of the Right holder was undisputed. The court held that actions taken by the Right holder, the sending of the letters to the re-sellers of the rake products was against fair business practices. According to the court the assessment of the justification of the letters should be done by taking into account 1) whether the reason for sending the letter was something other than protection of the holders right 2) if the wording of the letters included expressions that are false or misleading 3) if the manner of representation is unsuitable or against good business practices and 4) if they have been sent to the parties that can affect the supply and demand of the allegedly infringing products or is likely to harm the business of the addressee. Inappropriate in this case seems to be first and foremost the manner of proceedings the Right holder used when it approached the re-sellers of the products and especially the formulations of the requirements to halt the alleged infringement and compensation for the consequences. The court stated that taking into account the market position of the tight holder, contents and tone of the letters, the addressees may have got the wrong impression of the actual realisation of the infringement, the consequences of the infringement and the status of the addressees. As a consequence of the actions taken by the right holder, the re-sellers refrained from selling the rake products. The court stated also that the requirements for the compensation for the damages would be fulfilled in the case at hand. The court referred the case to the district court for the decision. What can be learned from the rake case? After the Supreme Court ruling in the above-discussed rake case it can be noted, especially in Finnish law and the main principles of the Finnish Unfair Business Practices Act, that a false or misleading expression concerning one s own business or the business of another may not be used in business if the said expression is likely to affect the demand for or supply of a product or harm the business of another is valid and should be strictly applied. An expression that refers to irrelevant circumstances or that is presented or formulated in an unsuitable manner may not be used in business if the said expression is likely to harm the business of another. It thus goes without saying that careful consideration and special attention is needed whenever a cease and desist letter will be submitted in Finnish jurisdiction. K AUTHOR Ben Rapinoja is a wellknown patent and IP litigator in Finland and heading B&K s experienced IP Litigation and Life Sciences & Pharmaceuticals practices. Ben has particular experience in the field of patents and trademarks but his contentious practice covers also many other areas of intellectual property, marketing law and regulatory affairs as well as disputes and arbitration proceedings related to commercial contracts, licence agreements and technology transactions. Ben advises on business law related questions and in commercial contracts and corporate transactions with particular emphasis on pharmaceutical and high-tech industries. Ben is one of the leading legal experts in Finland in the life sciences and pharmaceutical sectors. Ben has been a B&K partner since IP Litigation

12 K IP LAW GALLI TRADEMARK LITIGATION Enhanced protection of trademarks in the Italian legal system Cesare Galli of IP Law Galli discusses the state of trademark law in Italy and the protection against parasitical imitations The question of the protection of trademarks against parasitical exploitation carried out to the detriment of their holders by nonauthorised third parties (so-called free riders) has become an increasingly key issue in the debate on the protection of these rights in Italy, so much so that reflections on the likelihood of confusion, especially for the latter, have become progressively less topical. Despite recurrent attempts at restyling, the notion of likelihood of confusion no longer seems able to effectively fight against all the new phenomenon of the infringement which must now be tackled, at least for the trademarks and signs which are the most famous and thus most threatened. In fact, for these trademarks it is their very reputation which makes it highly unlikely that the public will be mistaken as to the origin of products which, due to the differences between the imitators mark and the mark to be protected, and well-known by the public, or between the products bearing their respective trademarks (often of a quality which is visibly very different or belonging to product types and sectors famously not frequented by the holder of the imitated trademark), in addition to the marketing methods employed, are patently non-original. In relation to these situations, it is therefore necessary to avail ourselves of the laws which now protect the trademark also beyond the likelihood of confusion. Since these rules were first introduced into Italian law, by Legislative Decree no. 480/92 which implemented EEC Directive 89/104, their centrality has been increasingly confirmed, so much so that they have also imposed themselves on rulings of the ECJ, which first broadened the scope of trademarks to which protection under Art. 5.2 of the Directive is applied, covering all trademarks known to the public in the sector in which they are used (see ECJ, 14 September 1999, C-375/97, General Motors); then stated that this protection also applies when the products bearing the conflicting trademarks are of the same kind or of similar kinds (see ECJ, 9 January 2003, C-292/00, Davidoff); and finally stated that the common requirement for protection against unfair advantage and detriment is that there be a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them (see ECJ, 23 October 2003, C-408/01, Adidas/Fitnessworld). So this connection, i.e. the calling to mind of the other s famous trademark, even though it may only be psychological, seems to emerge as the common denominator of the two situations of advantage and detriment considered by Art. 5.2 of the Directive, being analogous to the likelihood of association, as it was defined prior to implementation of the Directive in Benelux case law. 12 IP Litigation 2010

13 TRADEMARK LITIGATION IP LAW GALLI K The Italian courts strengthened trademark protection significantly in Italy, in that they considered unlawful and forbade any parasitical activity, even when the imitator s sign is used only for decorative, aesthetic or descriptive purposes Extended protection of famous trademarks in Italian case law Going also beyond these teachings of EU case law, the Italian courts strengthened trademark protection significantly in Italy, in that they considered unlawful and forbade any parasitical activity, even when the imitator s sign is used only for decorative, aesthetic or descriptive purposes. In particular between 2006 and 2009 a number of key decisions protected the most well-known marks against any use in trade of a sign which is the same or similar which can result in trading off the renown of the imitated mark, even if there is no likelihood of confusion, consistently giving weight to all factors which may influence the public s actual perception of the trademarks. In this respect, a landmark case is Bulgari s.p.a. vs Kocsis et al. (Court of Milan, order 1 September 2006). In this case the Specialised IP Division of the Court of Milan ruled in favour of the holder of one of the international level trademark symbols of Italian creativity in the field of luxury goods (BULGARI), represented by our firm, in a dispute between this trademark and a pseudonym (Brigitta Bulgari) used by a pornographic actress in the performance of services relating to the world of entertainment (cinema, shows and nude calendars). From this point of view, the court also ruled out the possibility of the plaintiff invoking the exception of Art. 7.1 of EC Directive 89/104 relating to the use of one s own name, both because it may operate only in relation to a real name and not to a pseudonym, and also because the effected use still, for what concerns the method of use, seems contrary to the principles of fair practice, and thus does not comply with the limit imposed by the final clause of Art. 7.1 of EC Directive 89/104, as outlined by EU case law (see, in particular, ECJ, 17 March 2005, C-228/03). As a result the court forbade the parties involved in economically exploiting the actress s pseudonym including the latter to make any use of this pseudonym in economic activity, even should if it is affected without a distinctive function. In so doing the court clarified that any use in economic activity of another s renowned mark which may lead to a likelihood of confusion or damage the distinctive character or repute of the trademark, or allow the user to take unfair advantage of the distinctive character or repute of the trademark, constitutes infringement of the mark. Another landmark case is Ferrari s.p.a. vs Globo s.r.l. (Court of Milan, order 6 August 2008), where the court of Milan accorded protection as a trademark to the red colour and overall appearance of a product, in the case in question, the universally renowned red colour of Formula 1 cars of Ferrari likewise represented by our firm and the equally renowned red-white livery used by Ferrari in some of the most recent Formula 1 championships and also registered by Ferrari as a Community trademark. Protection was granted against the use of these marks for fantasy toys replicating Formula 1 cars whose colour and livery (and in some cases the affixing of stickers with signs similar to the prancing horse logo and to the marks of Ferrari s sponsors in the Formula 1 championship) meant the inevitable bringing to mind of Ferrari, if not actual confusion with the original products made by its licensees. The order therefore protected as a trademark and, in actual fact, as a trademark with a reputation the colour red linked to Formula 1 cars and to toys replicating such cars, emphasising once more the perception of the target market, which in this field recognises that the colour red used as a background or, in any case, a predominant colour for the car is a trademark which is unequivocally linked to Ferrari. In the same perspective with its ruling of 20 October 2009, the court of Milan granted a further petition to Ferrari against another infringer (Promotive s.a.s.), stating that this recognisability (and thus the exclusive right of Ferrari) concerned the entire field of Formula 1 and car racing championships, with all connected products, including clothes and merchandising, provided that they bear any reference to Formula 1 races. It is worth reporting also Pin Up Stars s.r.l. vs Sironi et al. (Court of Milan, order 27 August 2007), where the Specialised IP Division of the Court of Milan ruled on the question of infringement of trademarks by marks which are only partially similar in a case in which the owner of one of the most famous Italian swimming costumes and beachwear marks, Pin Up Star, reported infringement of the trademark by a casual clothing producer using a mark (Upstar), that was similar only to one part of the trademark, not including all the heart of the trademark. Nevertheless the Court granted the requested protection, enjoining use of the mark and ordering seizure of the goods bearing the mark and the infringer s accounting books so that compensation and profit restoration could be assessed. What is interesting about this decision is, firstly, that more formal methods were discarded in ascertaining likelihood of confusion. These are based on abstract and general characteristics (identification of the heart of the mark, identity or difference at a conceptual level, the extent to which the goods bearing the marks have a close product affinity). The decision, on the contrary, concentrated directly on the IP Litigation

14 K IP LAW GALLI TRADEMARK LITIGATION The decision, on the contrary, concentrated directly on the consumer perception of the mark, according to the settled case law of the ECJ, which has been proposing this criterion for years in order to resolve interpretative problems raised by EU legislation on trademark matters consumer perception of the mark, according to the settled case law of the ECJ, which has been proposing this criterion for years in order to resolve interpretative problems raised by EU legislation on trademark matters (EC Directive 89/104 and the European Community Trademark Regulation). In this case, what was of particular importance was the fact that the two marks were used in the field of fashion, in which it is common practice to launch second lines of famous trademarks, bearing marks which only reproduce one part of the characterising features of the principal mark. Equally noteworthy is that the decision ruled that the likelihood of confusion also included the linkage, i.e. use of a mark which is not sufficiently different to a famous trademark and brings to mind the latter. Protection against linkage is, in fact, the typical protection enjoyed by trademarks having a reputation, i.e. the most famous marks. This was unquestionably the case for the mark in suit (Pin UP Star) in its field. In the case in point, however, the court disregarded the repute of the trademark but still held that linkage was important as a form of confusion or association. This confirms that, in reality, the traditional likelihood of confusion is increasingly a past scenario, or at any rate, a scenario which concerns less famous trademarks. The new frontiers of infringement, and thus also those of the protection of more famous brands, relate more to the forms of parasitic exploitation of the communication value of these marks by non-authorised third parties. Protection against look-alikes The Italian Courts also granted extensive protection against look-alikes, i.e, in cases in which it is not the trademark but other elements outside the trademark the original box of the products bearing the trademark, its label and such like which are copied. A landmark case in this respect is Ghidini Cipriano s.p.a. vs Alexander s.r.l. (Court of Milan, decree 17th January 2006). In this case the Specialised IP Division of the Court of Milan, called upon by a company operating in the field of household utensils and world leader in the production of wine accessories, issued an ex parte decree (later upheld by a court order which was not appealed against and became final), which protected the shape of a product against an identical copy, even though this shape was registered neither as a trademark nor as a design. In fact, the court ruled that the identical copy of a product which was well-known on the market, albeit registered neither as a trademark nor as a design, may be considered unlawful, both as infringement of an unregistered trademark, which is forbidden by the IP Code, and as an act of unfair competition, not only from the point of view of slavish imitation (which postulates the existence of a likelihood of confusion), but also from that of the appropriation of qualities, i.e. of parasitical linkage to the renown of the imitated product and the business image of its producer. Before this ruling was issued the protection was uncertain for nonregistered marks, and in particular for the shape and external appearance of the product and its packaging, which are rarely registered as trademarks or designs. When imitation gives rise to a likelihood of confusion, it is most certainly covered by Art. 2598, no. 1 Civil Code, on confusing unfair competition, which also includes slavish imitation, understood as imitation which leads the consumer to believe that the imitator s product comes from the same source as the original, or that its production is, in any case, authorised by the manufacturer of the original. If, however, the consumer does not mistake the copy for the original, because the method of sale of the copy makes it clear that it does not come from the same producer, this protection may not be invoked. This gave imitators an easy escape route. However, the law on unfair competition also provides for another typical situation, i.e. the appropriation of qualities, disciplined by Art no.2 of the Civil Code, which is also considered applicable in cases of the so-called publicity by linkage, in which another s mark is used in a non-confusing way but in such a way as to still give rise to recall to the benefit of the imitator s product, as happens for example when its use is preceded by expressions such as type, model, etc. Many had already wondered if even nonconfusing imitation of shapes could be connected to this situation, when we have exploitation of the renown enjoyed by the imitated product on the market. This point was not even clarified by the IP Code, which counted unregistered marks (including the shapes of goods) amongst IP rights, extending the typical system of sanctions (description, seizure, destruction order and assignment etc.) already provided for registered trademarks to unregistered trademarks, but without specifying either the pre-requisites for being given this protection or the precise scope of protection. Legal theorists then asked whether the same protection as that given to registered trademarks should also be given to unregistered trademarks, naturally only within the limits, including territorial limits, of the achieved renown. The Court of Milan, in the decree examined hereunder, responds in the affirmative to both questions, ruling, in the case in question, that the (unregistered) shape of the product may be protected against infringement, at essentially the same conditions as those for registered trademarks, against unfair competition, 14 IP Litigation 2010

15 TRADEMARK LITIGATION BORENIUS & KEMPPINEN K In the case in point, however, the court disregarded the repute of the trademark but still held that linkage was important as a form of confusion or association precise imitation and appropriation of qualities with the simultaneous detriment to the business image of the petitioner. Likewise the Court of Naples in the case Deborah Italia s.p.a. vs Eurostyle s.p.a. (Court of Naples, 6th Augist 2009) ascertained imitation of the exterior individuating characteristics of some types of cosmetics packaging as unregistered trademarks. As such, these rulings represent important progress in the strengthening of the protection of goods shape against imitations especially from the Far East. These imitations are now frequently effected by tracing by means of digitalising the original goods with an electronic feeler or laser system, which also makes it possible to save on costs for the design of the moulds. Highly efficient anti-infringement juridical instruments Contrary to what is often heard, Italy s antiinfringement juridical instruments have become highly efficient. In particular the Italian Civil Courts enjoy excellent levels of efficiency in responding to infringement for what concerns the use of urgency measures (injunction, seizure, order to withdraw goods from the market) and instruments of judicial investigation of evidence (description order, normally granted ex parte). This has been especially the case since 2003 when 12 Specialised IP Divisions were set up at 12 courts and Courts of Appeal, with exclusive competence to decide on civil actions relating to trademarks, patents, copyright and unfair competition linked to these rights and their violation. Said emergency measures are examined and granted with great speed (normally a few days, in the case of measures protecting trademarks and designs, very often granted ex parte; a few months in the case of measures protecting patents). An injunction is usually backed up by a fine for each violation, to be paid to the holder of the violated right. Violation of a right is also subject to a criminal sanction (a prison term of up to three years or a fine) under Art. 388 CC. Urgency measures, ordered by an individual judge appointed for each case by the president of the competent Specialised Division, are re-examined by a panel of three judges belonging to the same Division. Said panel does not include the first judge and it, in turn, decides very quickly (normally one-two months). Use of these measures very often means that first instance proceedings may be avoided as extra-judicial agreements can be reached based on acceptance by the infringer of the court order and on payment by the infringer of a sum agreed by the parties. This is aided by the fact that seizure and description often also involve the accounts of the alleged infringer and thus facilitate calculation of any compensation. At the end of first instance proceedings, in addition to a final injunction and order to withdraw counterfeit goods from the market, always backed up by a fine, the goods may be handed over to the holder of the violated right or destroyed at the expense of the infringer. The infringer is also ordered to pay compensation and give up profits made from the infringement. With implementation of EC Directive 2004/48 in 2006, which amended Art. 125 CIP, the holder of a violated right may receive a sum which corresponds either to the infringer s profits or to his own lost profits, whichever is the greater. Compensation for any further damage, such as expenses for responding to the infringement or damage to image, may also be added to said sum. Compensation for damage to image is frequently calculated as a fraction of the advertising expenses of the holder of the violated right which were nullified by the infringement, or the cost of an advertising campaign to eradicate the negative impact of the infringement on the public. The judge can also order publication of his ruling at the expense of the infringer, both at interim stage (although this is rare) and at the end of first instance proceedings. These rules, together with the clear tendency of the courts to make the exclusive right accorded by distinctive signs subject (and commensurate with) the meaning which it presents to the public, highlighting this perception of the public as a linchpin of the system, in countrast with formalistic interpretations, contribute to make the Italian IP an efficient and reliable judiciary for trademark protection and in the fight against infringement, which allows the owners of renowned trademarks to re-appropriate positive externalities connected to the messages incorporated in their trademarks. K AUTHOR Head and founder of IP Law Galli and professor of IP Law at the University of Parma, Cesare Galli handles litigation regarding all branches of IP Law, often tackling cross-border problems too. In 1999 he obtained the first Italian final ruling on biotech patents. Likewise in 2004 he secured the first Italian ruling on the validity of a computer implemented invention patent and in 2005 and 2008 key decisions on the extended protection of renowned trademarks. Since 2005 he has been a Member of Governmental Boards of Counsels in the IP field and in 2009 was also called to join the EU Observatory on Piracy and Infringement. IP Litigation

16

17 TRADEMARK LITIGATION PATPOL K The Polish Courts follow EU law in protecting reputed trademarks Tomasz Rychlicki of Patpol illustrates the case of Tiffany & Co in its bid to protect its mark in Poland The latest judgment of the Polish Supreme Administrative Court in Warsaw is an example proving that the protection of reputed trademarks in Poland is in accordance with EU law. Two US companies were involved in a dispute before Polish courts over their trademarks with a word element TIFFANY. The District Administrative Court in Warsaw in its recent judgments of 24 July 2008, case numbers VI SA/Wa 237/08 and VI SA/Wa 238/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation s appeals against the Polish Patent Office s decision of 19 March 2007, case numbers Sp. 68/04 and Sp. 69/04, regarding cancellation of the right of protection for word-figurative trademarks TIFFANY R and Tiffany & Broadway Inc. R which were registered in class 25 for shoes. The cancellation proceedings were started by Tiffany & Co. from New York. The New York company claimed not only the similarity between the subject signs, but also a breach of its over 150-year reputation in the field of jewellery products. During one of the hearings before the Polish Patent Office, Tiffany & Co. provided evidence of a witness regarding the reputation and common knowledge of the Tiffany & Co. brand. The witness stressed that although in post-world War II Poland the Tiffany brand was not present on the market, the press (women s magazines and other publications) wrote about Tiffany & Co. as a provider of luxurious jewellery. The New York-based company also argued that the use of the TIFFANY trademark for goods such as footwear was a parasitic activity consisting in using another trademark s reputation and bringing unjustified financial profits to the holder of national registrations. The court has confirmed the findings of the Polish Patent Office that the TIFFANY trademark enjoys reputation even though it had not been registered in Poland. Judge Olga Zurawska-Matusiak decided that renowned signs or snobbish signs (sic!) do not need to be generally known to the public. It is sufficient if they are known to the relevant group of the public, to whom such signs are addressed, namely the customers of luxury goods. If there is an international reputation of a mark it also covers Poland. Tiffany & Broadway Inc. Div. of Texpol filed a cassation complaint with the Supreme Administrative Court. The Supreme Administrative Court, in a judgment of 8 July 2009, case number II GSK 1111/08, ruled that the old version of the Polish Trade Mark Act (TMA) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, do not explicitly provide for any special protection for unregistered reputed trademarks. However, the doctrine and Polish case law has already accepted the concept that such protection may be provided according to the regulations set forth under Article 8(1) of the TMA: A trademark shall not be registered if it is contrary to law or to the principles of social coexistence. In particular, a conflict of a trademark with the principles of social coexistence as it was commented from a subjective perspective means that the contradiction/variance with the principles of social coexistence may concern the conduct/ behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of IP Litigation

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19 TRADEMARK LITIGATION PATPOL K another kind, if the registration was intended to use the reputation of the other trademark, or it was a threat to such reputation, was excluded under the subject Article. A trademark application that was filed in contradiction to the principles of social coexistence shall be regarded as an application filed in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark, as specified under Article 8(1) of the TMA, do not directly refer to the relationship between the sign that was applied for and any other competing trademark, however, in accordance with the accepted interpretation of that provision, in case of infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior of the applicant (its actions done in bad faith). The assessment of applicant s actions, which was driven by the desire to use a reputation of the other trademark, should therefore also vary according to the circumstances, (the applicant s motifs), and not only relate to the trademark itself. The application for the right of protection of a trademark that was filed with the intent to use the other trademark s reputation should be judged as an application that was filed in breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trademark or unregistered reputed trademark. However, when deciding on the interpretation of Article 8(1) of the TMA, which allows for protection of unregistered reputed trademarks in Poland, it should also be noted that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This involves a lot of caution, so that the importance of trademark registration is not depreciated without justified reasons, and is not reduced to a purely formal procedure that has no importance. The Polish case law (for instance the judgment of the Supreme Administrative Court of 9 May 2008, case number II GSK 506/07), already established a rule that in case of a famous trademark and its reputation, besides its recognition, it must also be characterised by the following features reaching a certain level: Market share/participation (both quantity and value of the goods sold); Range and long-lasting effect of advertising the product bearing a trademark; Territorial and temporal range of use; Licences granted for the use of the mark, quality of goods bearing the mark; Value of a given sign in assessment of an independent financial institution; Size and extent of expenditures spent on promotion of a mark; The relationship between the prices of subject goods; If (and to what extent) the mark is used by a third party. The Supreme Administrative Court also noted that the Community case law provides for several fundamental conditions for the recognition of a trademark as a reputed one. These are as follows: Knowledge of the trademark among a significant group of customers; Contribution of the mark to the market, Intensity and geographic scope of the use, Intensity of associating the goods with the sign, The size of expenditures on advertising and promotion of the mark. The Supreme Administrative Court cited inter alia the judgment of the Court of Justice of the European Union of 14 September 1999 in a case C-375/97 General Motors, judgments of the Court of First Instance (CFI) of 13 December 2004 in case T-8/03 El Corte Ingles and the CFI judgment of 25 May 2005 in case T-67/04 the Spa Finders. It is also clear that the reputation of a trademark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trademark as a reputed one in Poland, then the argument of the international reputation of a trademark is not sufficient. A basic requirement for a party seeking recognition of the reputation of a mark in a specific country is provision of information such as market share in terms of both quantity and value of the goods sold. The First Directive 89/104/EEC of 21 December 1988 does not preclude a possibility of granting the protection to unregistered reputed trademarks under the national law. Just to keep it in order, it is worth adding that the Polish Act of 30 June 2000 on Industrial Property Law (IPL) of 30 June 2000, published in the Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, provides under Article 132(2)(iii) that: A right of protection for a trademark shall not be granted, if the trademark: (iii) is identical or similar to a renowned trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it, without due cause, would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly. The protection of registered trademarks is further specified under Article 4(4)(a) of the Directive. The trademark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on provisions of Article 131(2)(i) of the IPL. A right of protection shall not be granted for a sign, if (i) it has been applied for protection with the Patent Office in bad faith. The Supreme Administrative Court ruled that the provisions of Article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks as specified under national law, and it would be difficult to agree with argumentation that the First Directive 89/104 is an example of the so-called complete harmonisation, as said in the judgment of the Court of Justice of the European Union of 9 January 2003 in case C -292/00 Davidoff & Cie S. A. Therefore, the Supreme Administrative Court annulled the questioned judgment of the District Administrative Court and returned the case for reconsideration according to specific guidelines. In addition, the Polish Patent Office was ordered to pay a sum of 1200 PLN to Tiffany & Broadway Inc. Div. of Texpol Corporation as reimbursement of costs of the cassation compliant. K AUTHOR Tomasz Rychlicki is a lawyer with Patpol and patent attorney trainee. He is a graduate of the Centre of European Law at the University of Gdansk. He also studied international IP law as part of a master s of law programme at the Chicago-Kent College of Law. Mr Rychlicki handles copyright, trademark and domain name cases, as well as customs seizures. IP Litigation

20 K GOODRICH TRADEMARK LITIGATION The shape of a product cannot be exclusively protected as a design mark Enrique Diaz and Paolo Massimi of Goodrich Riquelme y Asociados discusses the scope of non-traditional marks in Mexico Trademark protection systems around the globe differ substantially from each other. In some of them, the range of protection regarding distinctive elements is very wide. Some systems allow the protection of non-traditional trademarks, such as colours, shapes, moving images and holograms. There are even some that allow the registration of non-visible signs, such as sounds, fragrances, tastes and textures. The Mexican trademark system, besides being registration orientated, is a lot more conservative when it comes to distinctive signs that may be protected. According to Mexican IP law, only visible signs may be registered as trademarks, so the protection on non-traditional trademarks in our system is very limited. In fact, the only real non-traditional trademark that may be protected in Mexico is the 3-D trademark, which by statutory provision may refer to a package, wrapping, the container or bottle or to the shape of a product itself. The Mexican market has turned into a very competitive field, which has pushed companies and individuals to try to protect the shapes of their products, so they may provide them with a very important competitive leverage against their competitors. They, therefore, have to be very cautious when it comes to choosing the correct protection method. In practice, it is difficult to obtain the registration of the shape of a product by itself, namely because of the lack of knowledge and incorrect criteria applied by the examiners of the Mexican Industrial Property Institute (IMPI) or because many of the products intended to be registered are generic and/or descriptive. It is very important to remember that as a general rule, in Mexico we do not have trade dress protection, with the exception of franchises, and we do not have the common law concept to acquire distinctiveness. If we focus exclusively on trademarks, according to the Mexican Industrial IP law, a product may be protected as a design mark and/or as a 3-D trademark. The differences regarding the protection given by these two figures are substantial and in most of the cases unknown by their applicants, so it is not unusual for corporations and individuals to get confused about the real scope of protection obtained with the corresponding registrations. It is a common need for a corporation or individual to try to protect as strong as possible their trademark rights regarding the goods they commercialise, and in Mexico, the most common concern is related to the protection of the physical and visual characteristics of the products. It is here where most of the errors are made when it comes to trademark protection. In the practice, we have faced several situations in which corporations or 20 IP Litigation 2010

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