AAFA – Knock It Off! Paula Jill Krasny [email protected] (312) 861-2822 Baker & McKenzie International is a Swiss Verein with member law firms

AAFA – Knock It Off!

Paula Jill [email protected](312) 861-2822Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an “office” means an office of any such law firm.

Protecting Your Brand on aGlobal Scale

Protecting Your Brand on a Global Scale

©2007 Baker & McKenzie 2

Trademark Registrations

• Property Rights– Territorial– First to File– First to Use

• Where to file– Where products are sold– Where products will be sold– High risk counterfeiting territories



Trademark Registrations

• Not vulnerable to cancellation / enforceable– Non-use

– Declarations of use

– Renewals

– Licenses not recorded



Use of Registrations in Policing & Enforcement

• Watch services

• Registering trademarks with Customs

• Cease and desist letters

• Proving fame or well-known status



Trouble Spots

• Asia

• Eastern Europe

• Latin America

• PRC

• Russia

• Paraguay



2007 Watch List Countries

Belarus Guatemala PeruBelize Hungary PolandBolivia Indonesia RomaniaBrazil Italy Saudi ArabiaCanada Jamaica TaiwanColombia Lithuania TurkmenistanCosta Rica Malaysia UzbekistanDominican Republic Mexico VietnamEcuador Pakistan



Unfortunate & Expensive Consequences

• Indonesia – DIESEL– DAVIDOFF

• Russia– ANNE KLEIN– ALDO

• Romania– STARBUCKS

• Colombia– CARTIER



Welcome to China!









Landlord Liability - China

• Relatively new strategy, globally– Goal to convert landlords into partners

• China program started 2004– Burberry, Chanel, Gucci, Louis Vuitton, Prada

– April 2006 decision against Silk Market

– Recognized as national precedent by Supreme Court

• 23-brand coalition established early 2006– Building on case precedent, expanding to four cities





Landlord Liability – Goals of the Coalition

• Adoption of standard leases– Achieved in Guangzhou, Shanghai and Shenzhen

• Government support – Some landlords fined– Pressing landlords to negotiate with brand owners

• Two-Strike rule for ejection of tenants– Provided under leases– Local governments also forcing ejections

• Targeting repeat offenders– Put all penalty decisions on-line– Future: criminal cases against three-time offenders



Recommendations - Building Your Global Trademark Portfolio

• Secure trademark registrations– Countries where you are selling product

– Where your product is counterfeited/knocked-off

– Where you intend on doing business

– BEFORE you commence discussions with a potential distributor or licensee



Recommendations - Building Your Global Trademark Portfolio

• Customs– Registering your trademarks

– Training programs

• Contracts– Leases

– Distribution and license agreements

– Local review

Documents

AAFA – Knock It Off! Paula Jill Krasny [email protected] (312) 861-2822 Baker & McKenzie International is a Swiss Verein with member law firms