AAFA – Knock It Off! Paula Jill Krasny (312) Baker & 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 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

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 3 Trademark Registrations Not vulnerable to cancellation / enforceable –Non-use –Declarations of use –Renewals –Licenses not recorded

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 4 Use of Registrations in Policing & Enforcement Watch services Registering trademarks with Customs Cease and desist letters Proving fame or well-known status

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 5 Trouble Spots Asia Eastern Europe Latin America PRC Russia Paraguay

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie Watch List Countries BelarusGuatemalaPeru BelizeHungaryPoland BoliviaIndonesiaRomania BrazilItalySaudi Arabia CanadaJamaicaTaiwan ColombiaLithuaniaTurkmenistan Costa RicaMalaysiaUzbekistan Dominican RepublicMexicoVietnam EcuadorPakistan

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 7 Unfortunate & Expensive Consequences Indonesia –DIESEL –DAVIDOFF Russia –ANNE KLEIN –ALDO Romania –STARBUCKS Colombia –CARTIER

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 8 Welcome to China!

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 9

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 10

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 11

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 12 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

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 13

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 14 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

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 15 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

Protecting Your Brand on a Global Scale ©2007 Baker & McKenzie 16 Recommendations - Building Your Global Trademark Portfolio Customs –Registering your trademarks –Training programs Contracts –Leases –Distribution and license agreements –Local review