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LimeGreenIP News

Hong Kong: How do I draft my arbitration agreement for IP disputes?

In our earlier article, we discussed the implications of the Arbitration (Amendment) Ordinance 2017 and the factors to consider when deciding whether to settle Intellectual Property Right (“IPR”) disputes by arbitration.

Since arbitration can only take place with the consent of all parties, a crucial first step is to create a valid, enforceable arbitration agreement that reflects the consensus of the parties. In the majority of cases this will be the “arbitration clause” included in the parties’ agreements and contracts.

A poorly drafted arbitration clause can cause time-consuming and costly delays to the arbitration process, and in a worst-case scenario, could even result in the clause being declared invalid or unenforceable.

In this article we identify some key issues to note when drafting an arbitration agreement.

Drafting of Arbitration Clauses – A basic arbitration agreement should at least cover the following:

Scope of the arbitration agreement

Have your arbitration clause wide to cover all disputes arising out of or in relation to the contract, including pre-contractual and tort claims, unless you intend to carve out disputes for separate determination e.g. if you want a mechanism for expert determination for pricing or technical disputes.

Words such as “disputes relating to” or “arising in connection with” rather than “arising under” are best used to avoid the risk that certain claims or disputes are found to be outside the jurisdiction of the arbitral tribunal, and to avoid unnecessary argument, although there is a presumption that parties intend to have a one stop adjudication of disputes.

Composition of the arbitral tribunal

The number of arbitrators, either one or three, should be specified. The choice of the number of arbitrators depends on the size and complexity of likely disputes, the need for technical expertise, and the importance of cultural representation – having a party-appointed arbitrator that understands how companies from certain countries operate, and their systems and processes.

Method of selecting the tribunal

The method of selecting arbitrators is usually provided either in the institutional rules or in the arbitration clause. A sole arbitrator is appointed by the institution in default of agreement by the parties. For a tribunal of three, the claimant and respondent (or joint claimants or joint respondents) nominate one arbitrator each, with the third arbitrator, who acts as the presiding arbitrator, nominated by either the two party arbitrators or the institution, for confirmation by the institution of their appointment. Consideration should be provided in the arbitration clause for the two party arbitrators or the parties to choose the presiding arbitrator if the institutional rules state that the presiding arbitrator shall be chosen by the institution. Some institutional rules also require that the parties choose their party arbitrator from the institution’s list or panel of arbitrators. If that is the case, the parties should stipulate in their arbitration clause that they can appoint party arbitrators who are not on the institution’s panel. If there is no requirement for the sole arbitrator or presiding arbitrator to be a nationality other than that of the parties in the institutional rules, then this should be stated in the arbitration clause. Continue Reading

Hong Kong relaxes regulations on product placement: Episode two

The Communications Authority (“CA”) recently issued its decision to relax existing regulations on indirect advertising (commonly known as product placement) in television programmes (“TV programmes”) and to lift bans on advertisements for undertakers and associated services. We have previously discussed the CA’s decision in September 2017 to review its Generic Code of Practice on Television Programme Standards and Generic Code of Practice on Television Advertising Standards (together, the “Codes“) in our article: Opening the door for product placement in Hong Kong?

The CA conducted a one-month public consultation in April this year to gauge public views on its relaxation proposals, which were devised from an industry consultation with domestic TV licensees and studies conducted on TV advertising regimes in other major jurisdictions around the world. 63% of the respondents in the public consultation agreed that a general prohibition on indirect advertising (subject to exceptions on the types of TV programmes) should be lifted.

Major Changes suggested by the CA

Read more on our Global Media and Communications blog

U.S. – Reframing the Test for Genericness in the Soft Drink Wars

Royal Crown Co., Inc. v. The Coca-Cola Co., 2018 WL 3040163 (Fed. Cir. June 20, 2018)

In late June, the Federal Circuit issued  an opinion in the year-long litigation between Royal Crown Co., Inc. (“RC”) and The Coca-Cola Co. (“TCCC”) over the registrability and, correspondingly, the inherent protectibility of the term ZERO as applied to low calorie/low carbohydrate beverages. In its reversal, the Federal Circuit offered some useful clarification regarding the legal and evidentiary standards for evaluating genericness and the role of secondary meaning in such evaluations.

Factual Background

This case arose out of RC’s oppositions to a series of 17 trademark applications filed by TCCC to register ZERO-formative marks for soft drinks and sports drinks including, inter alia, SPRITE ZERO, COCA-COLA ZERO, FANTA ZERO, POWERADE ZERO, etc. At the time of TCCC’s filings, multiple companies were marketing their own ZERO-named beverages and had applied to register ZERO-formative marks for various types of soft drinks. Then and now, TCCC was a dominant player in the soft drink marketplace.

During examination of TCCC’s applications, the PTO requested a disclaimer of “zero” on the ground that ZERO was merely descriptive of a beverage with low calorie or carbohydrate content. TCCC declined the PTO’s disclaimer request, arguing successfully that the term had acquired distinctiveness under Section 2(f) as part of a family of ZERO marks. RC’s opposition followed.

In its oppositions, RC argued in the alternative that the term ZERO (1) was merely descriptive of attributes of the associated goods and could thus not indicate the source of TCCC’s goods or that (2) was generic when applied to certain beverage products and could thus never indicate the source of goods. When the Board dismissed RC’s oppositions, RC appealed to the CAFC.

The Federal Circuit’s Decision Continue Reading

Moscow: Asia IP seminar review

At the end of June, Hogan Lovells inaugurated its new office premises in Moscow with Partner Natalia Gulyaeva hosting the first seminar of our Russia-Asia IP series with Vietnam IP Counsel Nga Nguyen and Hogan Lovells Fidelity China Senior Associate Julia Peng.

More than 20 business leaders from the professional services, automotive, consumer products and technology industries enthusiastically expressed interest in understanding how foreign businesses deal with IP issues in Asia, from protecting and defending IP rights to monetizing IP benefits in this region.

During this interactive seminar, Natalia Gulyaeva provided a well-balanced overview on the wealth of opportunities that the Asia market is offering against the cultural challenges that Russian companies may encounter.

Nga Nguyen discussed effective IP enforcement and anti-counterfeiting actions in Vietnam, Laos, Cambodia and Myanmar while Julia Peng presented the “whack-a-mole game” and “game of wits” strategies against counterfeits in China. Our speakers also shared case studies and practical tips for brand owners looking at doing business in Asia.

The presentations were followed by a lively Q&A session with the audience demonstrating a great interest in protecting IP in Asia. The questions varied from methods of trap purchases in China to strategies of trademark prosecution in Vietnam, Laos and Myanmar and best practices of collaboration with the local Asian partners.


For more information, please consult the relevant trademark resources for Russia, China and Vietnam on LimeGreen IP – our free knowhow platform – or contact our speakers via their bio links above.

Why automotive companies in the connected car and autonomous driving industry need to review their trademark portfolios

With the momentum building in the trend towards connected and autonomously driven vehicles, automotive companies should review their trademark portfolios to ensure that their key marks are covered for goods and services in this space.

Dr. Andreas Renck, Alicante Office Managing Partner at Hogan Lovells, sees the established practice of classification of goods and services provided under a given brand as the foundation of any trademark portfolio. Companies in the United States and Europe use the World Intellectual Property Office’s Nice Classification (NCL) to classify their trademarks and thus ensure their protection. NCL comprises 45 categories under which applications can be classified; Classes 1 through 34 are for products, and 35 through 45 are for services. Under these classes, each mark must be designated for specific products and/or services.

In this hoganlovells.com interview, Dr. Renck discusses emerging issues that are impacting the traditional trademark registration process, and offers tips to help automotive companies protect their brands as the automotive and mobility industry continues to expand.

Access the interview transcript here

Total Brand Care: Protecting your brand when a product liability disaster strikes

Organizations invest a lot of time and money into creating and developing their brand, but a poorly handled product liability issue can leave your brand damaged, cause a loss in consumer faith and attract negative interest from regulators and the media – and that’s not to mention the negative impact on your share price. That’s why you must be prepared for a product liability issue before it occurs, so that you can act quickly and efficiently when facing multiple inquiries from regulators, customers, the media and insurers. An effective strategy places your brand in a strong position.

In Episode Two of our Total Brand Care series, Valerie Kenyon (Partner, London) and Phoebe Wilkinson (Partner, New York) talk to James Nurton about the steps you should take to prepare for when a product liability disaster strikes to ensure that your brand comes out on top.

Watch the full clip here.

You can find out more about our Total Brand Care offering on our website.

The EU Commission is set to address the challenges of three-dimensional printing

Additive manufacturing, more commonly called “three-dimensional printing” or simply “3D printing“, is a truly fascinating technology. Whilst the first experiments date back to the 1960s, with the first meaningful industrial applications following in the 1980s, only throughout the last couple of years has the technology really gained momentum. Meanwhile, the market is growing rapidly. The European Commission’s forecast for the EU sees a business worth about €10 billion by 2021. However, as is often the case with disruptive technologies, the lack of legal certainty, especially regarding intellectual property and civil liability, causes a problem. There is a risk that the market development could be impaired and hampered from reaching its full potential. Against this background, MEP Joëlle Bergeron has now taken the initiative of tackling the issue by introducing a proposal for a new regulatory framework.

Background

In February 2017, Joëlle Bergeron suggested implementing a procedure on “three-dimensional printing, a challenge in the fields of intellectual property rights and civil liability” (2017/2007(INI)). Her report was first referred to and debated within the Parliament’s Committee on Legal Affairs (JURI), which then unanimously adopted the proposal on 20 June 2018 (see the details here). This was followed by a plenary vote on 3 July 2018. The parliamentarians adopted the initiative with an overwhelming majority: 631 votes out of 677 in favor, 27 against and 19 abstentions (see the video footage of the plenary session, from 5:32 onwards).

Notable is that the Treaty on the Functioning of the European Union (TFEU) does not provide the Parliament with a right to introduce legislative initiatives. This is the Commission’s monopoly. However, according to Article 225 TFEU, the Parliament, acting by a majority of its component Members, has the right to request the Commission to submit any appropriate proposal on matters on which it considers that a Union act is required for the purpose of implementing the Treaties. This is the process now being kicked-off by the plenary vote. Continue Reading

Brexit: Commission publishes important notice on impact on customs enforcement of IP rights

Last month, the European Commission published a notice to stakeholders on the impact of the UK’s withdrawal from the EU on customs enforcement of IP rights.  The underlying message is that, unless the UK and the EU agree otherwise, the UK will no longer be part of the EU rules on customs enforcement of IP rights post-Brexit. This is important for rights holders because customs enforcement is a critical tool in the fight against counterfeit goods*. Any rights holders who have made or are planning to make a UK application for customs enforcement that applies to one or more other EU member states may want to consider re-filing or making their application in another EU member state in order to be certain of getting the benefit of enforcement in the EU-27 post Brexit. It is not clear at this stage whether and in what form the EU and the UK will come to an agreement on customs enforcement as part of any wider deal on customs arrangements.

Customs Applications made post-Brexit

As matters presently stand, when the UK leaves the EU, applicants for enforcement by customs authorities of IP rights will no longer be able to submit EU applications to UK customs authorities. EU applications submitted in one of the EU-27 Member States will remain valid in the EU27 as of the withdrawal date even if the customs authorities of the United Kingdom are amongst the customs authorities requested to take action. Continue Reading

Total Brand Care: Brand creation – get it right from the start

A strong brand can be one of your most valuable assets.  It’s a tool to communicate, build loyalty and drive new revenue.  But effective brand management is not just about trademarks – there are many other legal issues that can impact positively or negatively on your brand’s reputation and value.  Businesses must break down the silos between marketing, business and legal departments to ensure that there is a consistent approach to brand management.  A holistic and collaborative strategy will save you time and money in the long-run.

In this first installment of our Total Brand Care video series, Lloyd Parker, Head of IP – Asia Pacific and Middle East, and Office Managing Partner for our Tokyo office, talks to James Nurton about the idea behind the Hogan Lovells Total Brand Care concept and why brand management is more important than ever in today’s globalized and digital world.  Lloyd provides an insight into what makes a strong brand and why it’s critical to get brand creation right from the start – involving stakeholders from across the organization.

Watch the full clip here.

You can find out more about our Total Brand Care offering on our website.

UKIPO responds to consultation on implementing Trade Marks Directive

The UK Intellectual Property Office (IPO) has published its response to its consultation on the implementation of the Trade Marks Directive 2015 (the “Directive”), which ran from the 19th of February to the 16th of April of this year. The consultation focused on the proposed wording of the draft Trade Marks Regulations 2018 (which will implement the Directive). The Directive aims to harmonise the conditions for obtaining and continuing to hold a registered trade mark so that they are, in the main, identical in Member States. The UKIPO says that its policy is to limit the amendments to UK trade mark law to those which are necessary but nevertheless there are a number of substantive changes to UK trade marks law being proposed. We outline the most significant proposed changes below:

Article 3: Removal of requirement for graphic representation

The Directive has removed the requirement in Article 3 for marks to be ‘graphically represented’. The new requirement is that marks be represented in a clear and precise manner. This means non-standard marks, such as sounds, colours and smells can be represented more accurately using new technology. In its response the IPO says that it intends to enable applications to be submitted “using the widest range of digital file formats that is technically possible with our current systems”. Further guidance on filing requirements for new mark types and acceptable file formats will be published in the coming months. Continue Reading