Monthly Archives: December 2016

News story: 1 January 2017: Changes to the NICE classification system

Applicants and attorneys can familiarise themselves with the changes to the classification system before it comes into force.

A summary of all changes introduced in the general remarks and explanatory notes in the new edition and the changes approved to the alphabetical list of goods and services are available:

1 January 2017: Changes to the NICE classification system
(MS Word Document, 27.8KB)

Any questions arising from this notice please contact Darrel Hendy on 01633 811148 or e-mail

Source: UK IPO News

Unreal Campaign: French International School of Hong Kong


On November 21, I (Thierry Dubois, Managing Director Asia Pacific of the Federation of the Swiss Watch Industry FH and a member of one of INTA’s Anticounterfeiting Committee) was invited to present INTA’s Unreal Campaign in a private school in Hong Kong. The French International School (“FIS”) welcomed the campaign from the time the idea was first proposed. Because I had been a student at FIS from kindergarten all the way to the French Baccalaureat, the school was suggested as the venue for the Unreal Campaign event in Hong Kong.

The Unreal Campaign presentation took place in an FIS classroom. Twenty-five teenagers attended, all from the thirteenth grade, which is the last year of school before they graduate to the International Baccalaureat (IB). The teenagers present were all from the International Section of the school, where lessons are given in English during the PSHE (Personal, Social, Health and Economic) Education Class. It is a central part of the school’s welfare program and is, in the students’ senior year, linked to the FIS Personal Profile, the IB Learner Profile, and the IB’s Approaches to Learning Skills. 

After a brief introduction of the speaker, we delved into Unreal PowerPoint presentation, which really caught the attention of the teens. Perhaps they were particularly focused because counterfeiting is a problem that is often seen in Asia. They could therefore easily relate to the subject at the core of the Unreal Campaign.

HongKongBlog_Unreal_121916_v2.jpgI also presented some slides containing photos that had been taken during raids my company and I had undertaken earlier this year against assemblers and manufacturers in China. The images illustrate the poor working conditions in counterfeiting factories: the bad lighting, the dreadful ventilation, and the filth and disarray of the facilities. The images show teenagers (or sometimes children) employed in these factories that manufacture fake products and in the shops that sell them.

I also included some press clippings that discussed fake pet food, fake car parts, fake cosmetics, fake infant formula milk, and fake medicine—real, but dramatic cases that “plucked the heart strings” of the teens participating.

As I showed the photographs and articles, we invited the audience of teenagers to comment on what they were seeing.

I strongly believe in a philosophy of authenticity in life, and shared it with the class. I learned from teachers that the teenagers took this philosophy on board and even repeated it in discussions a few days later in class. They now understand that buying a fake is an act that reflects a state of mind. If one can accept a fake watch, then one should also be able to accept fake medicine. If you are not willing to accept fake medicine, then the correct attitude is to say “no” to all fakes, whatever they are!

If you are interested in organizing an Unreal event in your region, please contact Laura Heery at Thank you to the Unreal Campaign 2016 Sposnors, Tilleke & Gibbins. Without thier support, these outreach events would not be possible. Learn more about the sponsorship oppurtunities here

Category: Counterfeiting; Asia
Published: 12/23/2016 7:37 AM
BlogTag: Unreal Campaign; Unreal; Unreal Sponsorship Program; Anticounterfeiting; Counterfeit; Counterfeiting

Source: TM NEWS

Speech: Baroness Neville-Rolfe speech at SAIC event in London

I’m delighted to be here today to talk about the UK’s trade mark systems and share some of my reflections on brands.

As Minister for IP, I appreciate the important role that branding plays in the UK economy. But, what some of you may not know is that I also have first-hand experience of brands in a business environment. Having worked at Tesco, ITV and PWC, I’ve seen the impact a strong brand has on company turnover.

In the UK and China, brands shape our culture and our lives and many of us remember fondly the brands that we grew up with.

Brands are increasingly becoming international – where once we had brands with significance only in one country, brands now increasingly cross boundaries to become part of a global narrative.

The digital revolution has changed our lives significantly and at every level – from how we call a cab to how we purchase goods. And Chinese companies (such as Alibaba, Baidu, and Xiaomi who are here today) are increasingly at the cutting edge of this.

Policy makers have a responsibility to adapt to our changing world and its systems and – of course– intellectual property is no exception. It’s important that IP is able to support the challenges of progress, of innovation and commerce.

Importance of brands

In the UK, branded companies are associated with higher wages, greater productivity, and stronger export performance. One pound (£1) invested in R&D in the branded sector delivers almost twice as much added value as the same amount invested in the non-branded sector, and a trusted brand will find it much easier to extend into new product lines and launch themselves in new international markets. Whilst the numbers may not be exactly the same in China, I’m certain that the benefits of branding are similar.

Of course, the impact of branding goes wider than economic benefit for the companies concerned: brands must deliver on their promises to sustain and build their growth, they must innovate continually to retain the loyalty of their customers, which of course means greater choice, quality and benefit for consumers as a whole.

IP system

Branding relies heavily on intellectual property rights, and I believe that robust domestic IP systems play an integral role in giving brands the opportunity to thrive.

The trade mark system is key for brands looking to build and protect their identity. Ours functions well; last year we received over 54,000 applications for UK national marks. Our examiners take just 5 days to complete the first examination and, including the opposition period, a registered trade mark can be obtained in under four months. I know the filing figures are dwarfed by those experienced by the Chinese trade mark office and that presents its own challenges .

But in any system – no matter how successful – there is always room for improvement. As we all know, the UK voted to leave the European Union. But currently we are still members and as such, we are progressing with the transposition of the revised EU Trade Marks Directive which has to be implemented by January 2019. In general, the UK supported the reform package which we consider provides for a modernised system and brings clear business benefit making the process for trade mark protection easier, cheaper and clearer to use.

When we leave the EU, it will affect organisations who have existing EU Trade Marks and Registered Community Designs. Let me assure you that my officials at the Intellectual Property Office are working hard to find the right solution to this complex issue. I met with users of the system immediately following the referendum and it was clear that users of the system are eager to be involved in helping find the best solution.

We can’t talk about brands without touching on the topic of enforcement. Everyone thinks of online infringement as only affecting copyright, but this isn’t the case. The growth in websites across the world selling counterfeit goods is also a concern. This affects everyone – consumers cannot tell that the goods are counterfeit and may pay the brand market rate for a cheap and shoddy fake, and brand owners lose out on the revenue from their products.

That is why our Police Intellectual Property Crime Unit has suspended over 13,000 websites selling counterfeit goods, investigated property crime worth £34.5 million concerning counterfeit goods of digital piracy, and arrested 66 people for fraud, counterfeiting and cyber enabled offences. All this in only three years.

Relationship with China

I hope that we can continue to work together and learn from each other. Our IP systems can be quite different, but this has not stopped us from building up a strong relationship.

We both understand the importance of a balanced IP framework, we both share the vision of a world in which global challenges are addressed by innovation and we both understand that this is not possible alone.

This year has been extremely successful for our relationship:

  • in August I visited China accompanied by a delegation of Judges and representatives from the IP Professions and participated in the 2016 UK-China IP Symposium.
  • the IPO has witnessed MOUs on IP protection between the China Britain Business Council and Alibaba, Tencent, Baidu and respectively.
  • we also agreed some key outcomes as part of the Economic and Financial Dialogue discussions led by the Chancellor last month –including closer collaboration on registration and enforcement of trademarks and changes to trade mark practice in China that will tackle systematic bad faith applications.

When I visited, I saw that British brands are becoming increasingly popular with Chinese consumers. Brands such as Whittards and Fortnum and Masons who have seen progress in the Chinese IP system. Our retailers are visible in shopping malls and e-commerce platforms:

  • New Look have 90 physical stores across China;
  • Debenhams are bringing “online to offline” retail innovation to China, with a physical showcase driving online sales; and
  • British SMEs are participating in e-commerce activity, with Cambridge Satchel prominent in Alibaba’s “singles day” event, and 20 UK beauty brands due to feature in a JD Worldwide pop-up promotion in the new year.

And this is by no means one-way traffic. British consumers have been familiar with Chinese brands such as Tsingdao beer and Lenovo laptops for years. And now a new generation of Chinese consumer brands is entering the UK, for example I am delighted that Chinese fashion brand Urban Revivo is due to open its first UK store by the end of 2017.

As a former businesswoman, I welcome these investments and the expanding retail links between our two countries.

I am also delighted that we are able to host Vice Minister Liu and delegations from the State Administration for Industry and Commerce, the Chinese Judiciary and academia, and several high profile brands themselves.

To support our strong and continued business engagement, we must think carefully about how we support businesses on both sides – to be able to navigate each other’s trade mark systems and take advantage of the opportunities offered in each other’s markets. And we must keep up the good work we’re doing to provide information to Chinese companies about how to protect their IP in the UK and Europe as well as supporting British businesses looking to work in China.

I’ve seen – first hand – how strong this relationship is. When I visited China in August, I discussed with Vice Minister Liu the importance of cases being dealt with based on their merits. I was pleased to see that two cases have been resolved recently in favour of the British companies involved – which shows that the Chinese system can work for UK companies that engage with it.

We have a number of shared problems also, including global IP enforcement and the rise in issues surrounding trade mark applications not being made in good faith. We have much to work together on and have much to learn from one another.


So, to conclude, I believe that the UK-China relationship will continue to thrive. Both British and Chinese businesses have a great deal to gain from investing in their brands and, as governments, we must work in partnership to make sure that we do all we can to give businesses the competitive frameworks in which they can be successful.

I look forward to continuing our work together. Thank you for your time.

Source: UK IPO News

Unreal Campaign Launched in Peru


On November 30, 2016, the Unreal Campaign made a presentation at Skinner School in Lima, Peru. This was the first time that the Unreal Campaign presented programs in Peru. Skinner School is a private school founded in 1983 that uses the learning method of Cognitive Emotional Learning. 

Both Mrs. Adriana Barrera, Unreal Campaign Committee member, and Mr. Jean-Carlo Costa, INTA member, conducted the presentation for an audience of 35 students ranging in age from 15 to 17 years old. The audience also included five Skinner School teachers.

The hour-long presentation included a display of the Unreal Campaign learning materials and three Unreal Campaign Spanish videos.

It was a productive morning during which students showed their interest in trademark protection and enforcement. Throughout the presentation, students asked many questions regarding trademark law, the protection of trademarks, and the ways in which counterfeiting goods and services are attacked and taken off the market. The presentation became a truly interactive session, during which teachers, students, and Unreal speakers involved themselves in a variety of valuable discussions. 

We were surprised to find that the students had little previous knowledge of trademark and other intellectual property rights, but we were impressed by the students’ eagerness to learn and by their quickness to grasp new ideas. 

Students and teachers also asked if this training would be conducted in other schools in the future, as they noted it would be important for all Peruvian teenagers to experience the Unreal Campaign program.

Finally, the presenters invited students to join and follow Unreal Campaign on Facebook, Twitter, and YouTube.

Mrs. Ana Reyna, Skinner School academic coordinator, thanks the Unreal Campaign and the International Trademark Association for giving their students such a fruitful presentation.

We continue to present the Unreal Campaign learning materials in other Peruvian schools during 2017.

If you are interested in sponsoring or volunteering with the Unreal Campaign, please contact INTA’s Coordinator Laura Heery ( Thank you to the 2016 Unreal Campaign Sponsors, Tilleke & Gibbins. 


Published: 12/16/2016 5:55 AM
BlogTag: Unreal Campaign; Anticounterfeiting; Counterfeit; Counterfeiting; Unreal Sponsorship Program; Peru

Source: TM NEWS

Many Milestones for INTA in 2016!


Where has the time gone? Even though it has been a whirlwind year for me, I cannot believe it’s already December and my presidential term is coming to an end. Thank you all for making the past 12 months so productive and enjoyable. As we take a moment to reflect upon our personal and professional accomplishments of the past year, let’s also applaud ourselves for the amazing work we have done as an Association in 2016.

Ronald_Africa_121516.jpgWe’ve expanded geographically. This year our Association has celebrated many milestones around the world. In March we officially opened our Asia-Pacific Representative Office in Singapore. In September we celebrated the tenth anniversary of the Brussels Office. And in October we announced the opening of our Latin America Representative Office in Santiago, Chile, which will take place in the first semester of 2017.

We’ve sent delegations to Argentina, Cambodia, Canada, Colombia, Chile, China, India, Japan, Malaysia, Mexico, Panama, Peru, Philippines, Singapore, South Africa, Thailand, Vietnam, and the UK. These delegations enable us to expand our advocacy and presence globally and to strengthen our relationships with key stakeholders and government officials around the world. In September, the Board of Directors held its first meeting in Beijing, exemplifying the importance of China to the global trademark community. Likewise, we hosted our first conference in Africa in over 20 years. The Building Africa with Brands conference took place in Cape Town, South Africa, and attracted more than 200 attendees from 36 countries.

We’ve expanded substantively. In January we began a new committee term with an expanded committee structure, introducing 12 new committees and a Programming Council.

Ronald_IPSingapore_121516.jpgThe newly formed Communications Group, which includes the Unreal Campaign and the Public and Media Relations Committees, is raising awareness about the value of trademarks throughout the non-IP world. The Unreal Campaign has also expanded globally, hosting approximately 30 events for students, including events in 12 new countries. The Impact Studies Committee (ISC) published its first impact study last week. INTA and ASIPI collaborated on this study to determine the impact of trademark-intensive industries on the economies of Chile, Colombia, Mexico, Panama, and Peru. The study has been published in Spanish and is available here. The English version of the study will be published in January 2017. INTA is already collaborating with BASCAP on a study of the economic and social impact of counterfeiting and piracy, and separately on an economic impact study of the ASEAN region.

The Resources Group continues to update and expand its various publications, including the sixth issue of The Trademark Reporter for 2016 and a new searchable practice guide, Enforcement: An International Litigation Guide, that covers the many facets of trademark litigation in more than 40 jurisdictions.

Our Advocacy Group also began 2016 with a number of new committees. The Copyright, Designs, and Indigenous Rights Committees, for example, demonstrate how INTA is expanding its scope with regard to related rights. On the other hand, the newly formed Brands and Innovation Committee is looking into the relationship between brands/trademarks and innovation.

Ronald_ASIPI_121516.jpgOn behalf of INTA, our Advocacy Group submitted numerous testimony and comments in multiple jurisdictions during the course of 2016. This year they also submitted three Amicus Briefs in the United States and are actively seeking similar opportunities in Europe. The Designs Committee presented a resolution to the Board during the Leadership Meeting. Titled “Hague Agreement Concerning the International Registration of Industrial Designs,” the resolution encourages all countries and intergovernmental organizations to accede to the Hague Agreement and urges new members of the Hague System to enact implementing legislation for the registration and enforcement of design rights.

We’ve examined the role of in-house counsel. This year, I formed a presidential task force to review the role and position of in-house trademark counsel within their companies, the level of influence they have in their companies, and their career opportunities. In November at the Leadership Meeting, the task force presented its final report to the Board. The work on the recommendations from the task force will continue in 2017.

We hosted our largest-ever Annual Meeting. More than 10,000 of us descended on Orlando, Florida, this past May for our 138th Annual Meeting. Wow! And next year we will celebrate yet another incredible milestone for INTA: our third Annual Meeting in Europe! I look forward to joining everyone in beautiful Barcelona, Spain, in May. On a personal note, this year I have had the privilege of participating in so much of INTA’s educational program. The Programming Council and the Education Department are doing amazing job in expanding the scope of INTA’s educational offerings and bringing more events to more members in more parts of the world. Check out the program for 2017.

Feature_Ronald_Blog_121516_V3.jpgWe’re planning for the future. For some time now we have been working on our 2018–2021 Strategic Plan. We have taken a holistic approach in developing this plan, seeking input from stakeholders both within and outside the IP community—including academics, business leaders, lawmakers, marketers, and consumers. This has helped us to develop an inclusive and forward-thinking Strategic Plan that offers a clear framework to guide all of our future activities. In March, the Board of Directors will review a final draft of the plan.

We have accomplished much this year. With this, my final message as our president, I have only begun to scratch the surface…. INTA is a member-run organization. Our achievements in 2016 are a testament to the passion and commitment with which we engage the many challenges we face in our daily work and in our industry, with which we pursue INTA’s mission, and with which we build our Association and community.

It has been an honor to serve as your president in 2016. Thank you to everyone who has helped us continue to grow and expand. I can’t wait to see what we will accomplish together in 2017. See you in Barcelona.

Published: 12/20/2016 6:05 AM

Source: TM NEWS

INTA Encourages the Next Generation of European IP Lawyers


What is fascinating about IP law? On November 21, a group of about 23 students from the Instituto de Empresa Law School from Madrid (IE Law School), Spain, got a glimpse of IP law’s allure at the INTA Europe Representative Office in Brussels. The event was part of a study visit in Brussels where the students visited European Union Institutions and private-sector organizations. 

The visit to INTA consisted of a short introduction about the Association and a presentation on trademark law given by Ignacio Lazaro (PETOŠEVIĆ). This was the second time that the IE Law School had visited INTA (the first time being in November 2014, thanks to the European Law Students’ Association).

Milesh Gordhandas, INTA Advisor, Europe Office, talked about the importance of trademarks in the economy (with reference to the “IP Contribution” study by the European Patent Office/European Union Intellectual Property Office), INTA’s role in trademark protection, and the Association’s academic activities—such as the recently launched Ladas Memorial Award essay competition for 2017. Students asked questions about the Association’s committee structure and how to become involved. 

Ignacio Lazaro then took the floor and tackled the central question: “Why trademark law?” He started with a brief overview of the Spanish, European, and international legislation and then moved on to explain the dual nature of the work of a trademark lawyer: prosecution and enforcement. 

Despite its somewhat common perception as a dull, administrative activity, prosecution can be an appealing and demanding field for lawyers. Mr. Lazaro demonstrated the appeal of prosecution when he challenged students’ knowledge of various famous cases, such as the BABY- DRY case. He noted that a high degree of expertise is needed to avoid the pitfalls of trademark registration and introduced the concept of “absolute grounds” for trademark registration refusals. The students asked several detailed questions, and Mr. Lazaro then discussed ways in which trademark applicants can avoid these registration pitfalls, either by administrative actions (i.e., by creating a more precise description of the sign for a registration application)—or, if appropriate, by a business strategy focused on brand development and acquisition of trademark distinctiveness through use. 

Mr. Lazaro then presented some real-life examples of enforcement, which is the second major area of activity for trademark lawyers. He highlighted the relevance of following the process in all its steps, from the identification of a violation to the implementation of enforcement measures. The questions that followed concerned the fight against counterfeiting in China by local authorities. Students asked questions on other non-enforcement-related topics as well, such as the criteria used in determining whether a trademark has become generic.

In summary, the students were fascinated by trademark law. As trademarks are strictly linked to the perception of a sign, and as the examination and registration of signs may sometimes seem arbitrary or subjective, this area represents a particularly challenging and exciting field for future lawyers, and INTA’s presentation helped the IE Law School students recognize this challenge. INTA thanks Ignacio Lazaro for his support and looks forward to hosting further educational events for students!

For more information about INTA’s academic activities, including individual academic memberships for students and professors, visit

Category: Academics; Europe
Published: 12/15/2016 5:33 AM
BlogTag: Academics; Europe

Source: TM NEWS

Sponsor and Exhibit at the 2017 Annual Meeting


​INTA’s Annual Meeting is the largest trademark and IP event in the industry, and at no other venue will you have as many opportunities to demonstrate your products and services, develop new leads, and forge new relationships with leaders in the IP arena. More than 100 trademark solution providers, law firms, media companies, and trade associations benefit yearly from exhibiting at INTA’s Annual Meeting.

Generate new sale leads and increase your firm’s visibility at the Annual Meeting in Barcelona! Secure a spot in the Exhibition Hall today to reach your target audience and drive the success of your strategic marketing plan.

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​For more INTA videos, please visit the YouTube page.  

Published: 12/13/2016 7:05 AM
BlogTag: Annual Meeting; Sponsorship

Source: TM NEWS

News story: Don’t have a fake Christmas

Criminal intellectual property (IP) offences are also known as “IP crime” or “counterfeiting” and “piracy”.

Counterfeiting can be defined as the manufacture, importation, distribution and sale of products which falsely carry the trade mark of a genuine brand without permission and for gain or loss to another. Counterfeits can bring many dangers to us as consumers. From fake alcohol to children’s costumes…if it can be made, it can be counterfeited. Make sure you understand the risks.

Do you really know what you’re getting for Christmas?

We recently broadcast live talking about IP crime and the dangers and impact of buying counterfeit goods in the run up to Christmas. Visit our Facebook page to watch the video and find out more.

Don’t have a fake Christmas

A short animation on the dangers of buying counterfeit goods:

Don’t have a fake Christmas video

Source: UK IPO News