Lex Protector - Newsletter - August 2023

1. LEX PROTECTOR NEWSLETTER Streamlining Well-known Marks: Navigating the Nuances of Rule 124 Virtual and Physical Goods: The Evolving Landscape of Trademark Protection Notice to Public Listening Session: USPTO Seeks Feedback on Potential Changes to Attorney Recognition Rules Upcoming Physical Events! Trademark Watch Services Client Voices: Testimonials on Our Trademark Services

2. Streamlining Well-known Marks: Navigating the Nuances of Rule 124 The Delhi High Court's ruling has shed light on the intricate process of awarding trademarks a well-known status and protection in India. The landscape of well-known trademarks has witnessed significant advancements with the introduction of the Trade Marks Rules, 2017. A well- known trademark holds immense public recognition, signifying a strong connection with its user even for new products or services. Traditionally, establishing a trademark as "well-known" involved intricate legal processes and court battles. However, the Trade Marks Rules, 2017 revolutionized this concept by introducing a streamlined procedure for recognition of well-known marks. Under Rule 124, The trademark owners have a streamlined way to obtain recognition from the Registrar. As per the rule a mark can be declared well- known by courts as well as the Registrar. Under this rule trademark owner must submit TM-M Form and remit the specified fee to the Registrar. Once examined, the Registrar will Publish it and if no objection raised then the mark shall be included in the official list.

3. Nonetheless, regarding the necessity of adhering to Rule 124 procedures for trademarks already declared as well- known by a court. The case of TATA SIA Airlines v. Union of India exemplifies this controversy. It questions whether trademarks affirmed as "well- known" by courts should be subject to the same procedural route. Scrutiny of Rule 124 suggests that court-declared well-known bypass certain steps and proceed directly to publication and inclusion. an intriguing dispute emerged trademarks should The stipulation "request the Registrar" within Rule 124(1) clarifies its application. If a court designates a mark as well-known, filing of Form TM-M and fees becomes redundant. The Registrar's re-evaluation is not a requisite; publication in the Trade Marks Journal and inclusion in the List of Well-Known Trade Marks would suffice. Thus, Rule 124(1) to (4) can be bypassed; and Rule 124(5) has direct application.

4. Virtual and Physical Goods: The Evolving Landscape of Trademark Protection The digital age has blurred the once-clear demarcation between physical and virtual realms, especially in the context of e-commerce and online marketplaces. A recent decision by the Turkish Patent and Trademark Office (PTO) has set a precedent that is bound to reshape the future of trademark protection in the era of digital transformation. In the heart of the dispute was a trademark application submitted to the Turkish PTO, encompassing an array of physical goods and services under Class 25 and 35. This application encompassed items such as clothing, footwear, and accessories available both in physical retail shops and through electronic media. In opposition stood a US-based firm that already possessed a trademark for virtual fashion items, intended for use within online environments. These items, categorized under Class 9, mirrored the physical goods of the applicant, ranging from clothing to footwear. Furthermore, the US company’s retail services involving these virtual goods (under Class 35) and non-downloadable versions (Class 41) added another layer to the debate.

5. The heart of the contention was the discernibility and resemblance between physical and virtual goods in the domain of fashion. Can a virtual pair of shoes infringe upon the trademark of a physical pair? With the rising importance and influence of virtual goods and services in today's digital marketplace, this issue has gained prominence. The Turkish PTO's decision leaned towards recognizing the potential resemblance and commercial impact of online/virtual items to their real- world counterparts. Citing Article 6/1 of the Turkish Industrial Property Law, the application was rejected. The verdict underscored that online and virtual goods can, in fact, have a comparable commercial implication and public perception as physical goods. This landmark judgement not only accentuates the intricacies of trademark protection in the digital age but also sends a strong message to global entities. The distinctions between the physical and virtual realms are diminishing rapidly. As we tread further into the digital era, a re-calibration of our understanding of intellectual property is essential to ensure fair competition and protection for all stakeholders involved.

6. Notice to Public Listening Session: USPTO Seeks Feedback on Potential Changes to Attorney Recognition Rules The Trademark Rules of Practice enable USPTO recognition of qualified attorneys as representatives for applicants/registrants (37 CFR 11.14) Under the prescribed rules it is by way of filing of power of attorney, signing document on behalf of the applicant, or identification in submissions. While rules call for correspondence only with applicants after recognition ends (2.17(g)), customer feedback reveals that attorney representation persists and the attorney should be the only recipient of the trademark registration certificate, maintenance and renewal reminders, and any other correspondence. The USPTO extends emails for post-registration maintenance to both owners and non- recognized attorneys whose recognition has concluded, leading to confusion and waiver concerns 2.18(a). It also highlights a need for reconsidering procedures to ensure streamlined and accurate communication. The USPTO is soliciting feedback on potential modifications to the rules governing the duration of attorney recognition in 2.17(g). The changes aim to allow ongoing recognition in pending applications or registrationsuntil recognition concludes due to registration, ownership changes, or abandonment for applications, registration cancellation, expiration, shift in ownership, or post-registration acceptance or rejection. To address concerns, the USPTO considers removing attorney information after recognition-ending events, including deleting details from records before new rules are implemented.

7. In this regard a listening session is organised by the USPTO on September 26th, 2023, to gather feedback and opinions on potential revisions to the rules governing the duration of attorney recognition in trademark matters. Questions for Consideration Should the current rules persist, or do you support the proposed changes? Recommendations for managing the transition when attorney information is removed? Suggestions for simplifying withdrawal or re- recognition if the rule extends recognition? Individuals wishing to speak need to submit a written request which should include the person's name, affiliated organization (if any), and contact details and send it to TMPolicy@uspto.gov by September 15, 2023.

8. Upcoming Physical Events! The Global Intellectual Property ConfEx - New York New York is all set to host the premier event which is scheduled for the 17th of October 2023 at Executive Conference Center,1601 Broadway, New York. The goal is to unite a diverse range of legal experts spanning various industries and professionals like IP Counsel, Chief IP Officers, Patent Managers, and more. The event to showcase interactive round table discussions, case studies, keynotes by esteemed specialists, and exhibitions by top service providers. Round table discussions to include deliberations over strategies for identifying and controlling litigation data risks, IP litigation for balancing defence and offense, and issues like Patenting and Copyright for AI, while the keynote addresses will span over issues like Data Privacy, Cyber Security & GRC in the IP World, accelerating innovation with IP technology and trademark laws and regulations for brand value management in the USA. The event will keep participants informed about the most recent developments and advancements in the industry through insights shared by experts, as well as contributions from sponsors and exhibitors. Moreover, its an opportunity not just to connect with top executives and explore new business avenues but also exchange ideas, build networking for future collaborations.

9. Key Speakers Barry Schindler Partner, Greenberg Traurig LLP Kirk Sigmon Partner, Barner Witcoff Howard Suh Partner, Fox Rotschild LLP (Source: https://www.events4sure.com/gipc2023newyork)

10. Introducing our Trademark Watch Services As we strive to provide comprehensive legal solutions to our esteemed clients, we are excited to introduce a powerful tool in safeguarding their intellectual property - Lex Protector's trademark watch services. In today's dynamic business landscape, maintaining the integrity of a brand is paramount. Our trademark watch services offer a proactive approach to identify and address potential threats before they escalate. By partnering with Lex Protector, you can extend this invaluable service to our clients, demonstrating our commitment to their long- term success. As our valued partner, your endorsement of our trademark watch services can elevate client trust and satisfaction, setting us apart as a law firm that is committed not only to legal excellence but also to safeguarding the assets that drive our clients' business growth. To initiate a conversation about integrating trademark watch services into your client offerings, please reach out to our dedicated team. Together, let's reinforce our clients' confidence in their brand's security and take another stride towards their prosperity.

11. Client Voices Testimonials on Our Trademark Services Client Testimonial 1: I took service from Lex Protector for Trademark Registration. The principal legal associate Rutuparna Acharya helped me with process of Trademark Registration. I had very quick and clear response via email regarding my questions including registration, maintain, advice. I would definitely recommend this place to anyone else who needs an expert in this field. - Jeehee Kim Client Testimonial 2: “Amazing experience. Very professional and resourceful. I have used them for all my trademarks in several countries namely: USA, Mexico, Canada, Japan, Australia and China. They have helped me several times solving IP issues for my listings on amazon. Always available for quick questions over skype, anything they are not sure about they will be 100% transparent which is extremely important in trademarks and IP. Highly recommended for amazon business owners” - Waleed Al Saleh