Meeting Distinctiveness Requirements for International Trademarks

Protecting Global Brands in the EU, UK, China, Canada, and More

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, May 25, 2021

Recorded event now available

or call 1-800-926-7926
Course Materials

This CLE course will guide trademark counsel for multinational companies on distinctiveness outside the U.S. The panel will compare and contrast the requirements and offer best practices for meeting the requirements in multiple countries.

Description

Different countries have different processes and requirements that brand owners must navigate in order to build brand portfolios and protect their brands. Most countries include distinctiveness as one of the essential requirements for registering a trademark or service mark. Under U.S. law, a trademark must either be inherently distinctive or have acquired a secondary meaning that distinguishes the goods and/or services prior to or during the examination of the federal application to obtain full protection. Marks may nevertheless be found to lack inherent distinctiveness after the required evidence is provided. For such marks--particularly descriptive and geographically descriptive marks, surnames, and trade dress among others--a showing of acquired distinctiveness can mean the difference between registration on the Principal Register, registration on the Supplemental Register, and abandonment of a federal application.

The challenge in the European Union is that a trademark must be or must have become distinctive in essentially all member states. Considering the variation in language and culture between EU countries, it can be difficult to show how consumer perceptions and market conditions in each of the countries supports a claim of EU-wide acquired distinctiveness. Additionally, in many non-U.S. jurisdictions, marks that are not inherently distinctive must acquire distinctiveness before their applications are filed. On the other hand, such jurisdictions may vary widely in their analyses and assessments of pre-registration use evidence. For example, the China National Intellectual Property Administration follows strict criteria, while Chinese courts will consider a non-exhaustive list of factors when determining if a mark has acquired distinctiveness.

Counsel for multinational companies face the challenge of seeking protection for marks around the globe. As a result, they must understand the different requirements for demonstrating distinctiveness and how to best plan to meet the requirements.

Listen as our authoritative panel of IP attorneys examines the requirements for demonstrating distinctiveness in different jurisdictions. The panel will compare and contrast the requirements and offer best practices for meeting those requirements around the world.

READ MORE

Outline

  1. What works and what doesn't to demonstrate acquired distinctiveness
    1. EU
    2. UK
    3. Canada
    4. China
  2. Acquired distinctiveness
    1. Treatment by respective courts
    2. Treatment by respective IP offices
  3. Best practices

Benefits

The panel will review these and other relevant issues:

  • What strategies have trademark applicants used to demonstrate distinctiveness in different jurisdictions outside the U.S.?
  • How have the courts of the respective jurisdictions treated proffered evidence of acquired distinctiveness?
  • What best practices should counsel employ to demonstrate acquired distinctiveness outside the U.S.?

Faculty

Asbell, Matthew
Matthew D. Asbell

Principal
Offit Kurman

Mr. Asbell assists clients in clearing, obtaining, enforcing, and defending trademark rights in the U.S. and throughout...  |  Read More

Frisbee, Matthew
Matthew L. Frisbee

Attorney
Leason Ellis

Mr. Frisbee assists clients with a variety of trademark matters, with an emphasis on U.S. trademark prosecution and...  |  Read More

Fuhrmann, Johannes
Johannes Fuhrmann

Partner
BomhardIP

Mr. Fuhrmann is an expert in all kinds of EUTM proceedings, with a special interest in the protection and enforcement...  |  Read More

Hood, Graham
Graham Hood

Partner
Smart & Biggar

Mr. Hood is sought after by brand owners focused on building and protecting their brands and reputations through...  |  Read More

Wang, Hongtao
Hongtao (Hunter) Wang

Partner
Beyond Attorneys at Law

Mr. Wang's practice focuses on all aspects of China trademark law and extends to copyright, domain name, unfair...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

Download