WIPO FOR OFFICIAL USE ONLY

DL302E FINAL EXAM

SESSION 2, 2019
Student Version

WIPO Academy Advanced Distance Learning Course on Trademarks, Industrial Designs

and Geographical Indications (DL302E19S2)

FINAL EXAM

Please provide the information required under nos. 1, 2 and 3 before proceeding. This page
should serve as a cover page when you upload your completed final exam paper.

1. Last Name, Name: Mardiyah, Rizki

2. Email address: rizkimardiyah3@gmail.com

3. Tutor: SHAFIU ADAMU YAURI

I, [ Rizki Mardiyah ], hereby affirm that this final exam represents my own written work
and that I have used no sources and aides other that those cited. All passages quoted
from publications, websites or paraphrased from external sources are properly cited and
attributed as mentioned under the Regulations & Plagiarism Warning below.

Please read carefully the instructions below before you complete and submit your final exam:

It is estimated that completing this exam will take you around 8 hours of work. However, you
will be permitted to complete this exam during a period of approximately 9 days, on your own
schedule.

Your response to the final exam questions should be saved as Word document (Word 95 and
above). Upon completing your work, please upload your document in the final exam module
where you see ‘Add submission’.

You have until December 15, 2019, to upload your completed paper.

SUBMISSION OF EXAM: Please note that your exam must be uploaded onto the course and
not sent by email.
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REGULATIONS & PLAGIARISM WARNING

• We are very interested in your own thoughts and writing in response to the questions in
the exam. This is for your benefit – to show you have really learned the material to qualify for
the WIPO certificate. It is also for our benefit – to demonstrate that the materials we use and
our teaching techniques are effective.

Please adhere to the number of words that is suggested.

• WIPO Academy will check all submitted final exams for plagiarism, excessive
referencing and for exams which are identical or in which evidence of copying is apparent.
Failing to acknowledge and cite other people’s work or ideas, close paraphrasing, using
passages verbatim without referencing, extreme referencing (without any original work done by
the student), and copying other students’ work is considered academic dishonesty by WIPO
Academy. The Academy will record the incident, and the reasons for failing the exam in the
personal file of the concerned participants for future reference.
• Special focus is given to exams submitted by participants who share the same computer
during the course, come from the same Organization or University, in order to avoid the problem
of similar exams being submitted.

• Accordingly, responses to the questions in the final exam should be original.

• Final exams which have been reported with apparent plagiarism/copying will be returned
without being marked, resulting in failure to pass the exam.

• WIPO Academy recommends that students use appropriate citation styles, for example
use:
 Harvard referencing guide 2010 :
http://www.biosocsoc.org/sbha/reference/harvard_referencing_guide.pdf,
 Open University Harvard guide to citing references
http://www.open.ac.uk/libraryservices/documents/harvard_citation_hlp.pdf
 APA style: www.apastyle.org and http://www.apastyle.org/learn/quick-guide-on-
references.aspx
 Chicago manual of style: http://www.chicagomanualofstyle.org/tools_citationguide.html

and include a bibliography at the end of the final exam containing the necessary information for
the grader to identify the sources cited.

The 2010 Harvard Referencing Guide defines plagiarism in the following manner:
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“1.2 Plagiarism

Plagiarism is passing off the work of others as your own. This constitutes academic theft
and is a serious matter which is penalised in assignment marking. The following extract
is from the Anglia Ruskin University Academic Regulations (2010). For full details see:
Anglia Ruskin University. 2010. Anglia Ruskin University Academic Regulations. [online]
3rd edition. 2010 Available
at: < http://web.anglia.ac.uk/anet/academic/academic_regulations.phtml> Anglia Ruskin
University http://libweb.anglia.ac.uk/referencing/harvard.htm 5

“10.7 Plagiarism and collusion are common forms of assessment offence. They are
defined as follows:

“Plagiarism”

10.7.1 Plagiarism is the submission of an item of assessment containing elements of

work produced by another person(s) in such a way that it could be assumed to be the
student’s own work.

Examples of plagiarism are:

• the verbatim copying of another person’s work without acknowledgement

• the close paraphrasing of another person’s work by simply changing a few words or
altering the order of presentation without acknowledgement
• the unacknowledged quotation of phrases from another person’s work and/or the
presentation of another person’s idea(s) as one’s own.

10.7.2 Copying or close paraphrasing with occasional acknowledgement of the source

may also be deemed to be plagiarism if the absence of quotation marks implies that the
phraseology is the student’s own.

10.7.3 Plagiarized work may belong to another student or be from a published source
such as a book, report, journal or material available on the internet.”
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QUESTION 1

Pineapple Inc., a company incorporated in the USA, has developed a peculiar and distinctive
interior design for its restaurants and has successfully registered such design in its home
country as a trademark for services.

The CEO of Pineapple Inc. plans to open a few new restaurants in Germany and asks
your advice on the following matters:

i) Is there any chance to obtain a trademark registration for the same design and
for the same services in Germany? (5 points)

ii) Which rules of the Paris Convention, of the TRIPs agreement and of the EU
Directive on trademarks are relevant to answer the question? (5 points)

iii) The fact that the interior design of the restaurants has already been registered in
the USA as a trademark is relevant, according to the Paris Convention, to answer
the question about its registration in Germany? (5 points)

iv) Can you provide any advice on the technique that should be used to draft the
trademark application in Germany, particularly as long as the description of the
“sign” is concerned? (5 points)

(20 points, max. 700 words)

QUESTION 2

After graduating from business school, Aadi spent some time traveling all over the world to learn
from foreign cultures, their history and economies. In Munich, Germany, he visited the
Octoberfest and some local breweries, and instantly fell in love with the rich history and art of
beer brewing. After returning home to Mumbai, he starts to develop a business plan for his own
craft beer brewery, inspired by what he has seen, learned and tasted during
his extended travels. Aadi decides to name his beer “Thirst“ and, in
addition to that name, to register and use the below logo which he has
seen somewhere while traveling, and which he likes for its pure design:
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Aadi plans to start the international sale of his beer via his online shop as soon as possible. He
is now turning to you as his trusted trademark attorney with the following questions:

(a) The name and the logo for my beer shall not only be used in India but also in Denmark,
Belgium, Germany as well as in Switzerland, Norway and Argentina since I am
expecting beer enthusiasts from these beer-loving nations to purchase the beer in my
online shop. How can I obtain trademark registrations in all of these countries most
effectively and cost-efficiently? Could you please describe the potential registration
routes, including information on their advantages, if any? (5 points)

(b) Please explain to me the main steps of the application process for a national trademark
from the preparation of an application through its registration? (2 points)

(c) Could there be any obstacle regarding the application for my product name, and if I
include the logo in the trademark? (5 points)

(d) Due to my limited financial resources, I plan to obtain protection in the above mentioned
countries at this stage. Should my business prove to be successful quickly, however, I
would like to have the opportunity to add more countries within the next five months or
so. What is your advice? (2 points)

(e) Is there any risk if I apply for a national trademark which I will use as the basis for an
International Registration, and it is then cancelled in the fourth year after its registration?
(3 points)

(f) What if someone else has already registered the word mark “Thirsty” for “bar services” in
Class 43 – does this have an impact on my plans? (3 points)

Please write an email to Aadi advising him on each of his questions.

(20 points, max. 500 words)

QUESTION 3

Charlie has just come back from a trip in France and decides to publish in its public profile on an
online social network a fairly critical assessment on the quality of a well-known French brand of
sparkling water. Can the owner of the trademark sue Charlie for trademark infringement,
asserting that his statements are false and unjustified?

(10 points: max 200 words)

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QUESTION 4

Slim Designs Ltd is a company registered in the European Union (EU). It manufactures
and supplies dining room furniture across the United Kingdom (UK). The dining tables that the
company manufactures embody wooden sculptures imitating 3D shapes of apples, bananas
and oranges which occupy a small part in the middle of the surface of the tables. Whereas the
sculptures do not add any technical value, many restaurant customers prefer these tables to
others when dining. They say the designs of the sculptures arouse their appetite and lead to
imagination of the taste of the food that is being prepared for them.

Another Asian company known as PIE Inc. also manufactures and supplies dining tables in one
of the countries in the Asian continent. The relevant law on designs in force in this country offers
protection on the basis of absolute novelty of designs. On his visit to London, the CEO of PIE
Inc. saw the dining tables manufactured by Slim Designs Ltd. and was particularly impressed
by the 3D sculptural designs of different fruits that are fixed on the dining tables. Now, the CEO
directs his workers to reproduce the 3D sculptural designs in the dining tables manufactured by
PIE Inc. Instead of reproducing the full sculptural designs, he instructs them to make a half
reproduction of Slim Designs Ltd.’s 3D design so that the PIE Inc.’s sculptural design should
look like half-moon or a letter D.

a. PIE Inc. plans to export its dining tables to the EU. Its CEO approaches you for advice;
he particularly wants to know if he can successfully export the tables to the EU without
infringing any rights (5 points). He further asks you to advise him on a number of
counterclaims he may put forth in the event Slim Designs Ltd. sues him for design
infringement (5 points).

b. Slim Designs Ltd has learned that the law on designs in force in the country where it
has its sit will soon be amended. Following such amendment – which will not affect the
current registered designs protection regime under Industrial Designs Act – designs in
this country will no longer enjoy copyright protection. He has further been informed by
the legal officer of Slim Designs Ltd that the country where PIE Inc. is incorporated is
about to propose a Bill on design law. As a result of such a Bill, which no doubt will be
passed into law, the current Industrial Designs Act will be repealed to provide for
copyright protection of industrial designs only. The CEO of Slim Designs Ltd. plans to
export the dining tables bearing the 3D sculptural designs manufactured by his company
to the country where PIE Inc. has its sit. He asks you to advise him on the chances of
success of such exportation both before (5 points) and after (5 points) the amendment of
the above mentioned Industrial Designs Act

(20 points: max 700 words)

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QUESTION 5:

Molla Mohammad, a farmer from a village in the heights of Cape Town, South Africa, decided to
apply personally to the South African Companies and Intellectual Property Office for the
registration of the Trademark ''CHITOS CHI'', which is a fruit that grows in the village of "Chi" (a
village of 106 people) in Western Cape region of South Africa. He filed the application and it
was refused, based on the fact that the name is generic and therefore not registerable.

After due consultation with the village Chief and Elders, they decided to authorize Molla
Mohammad to pursue the registration of "Chitos Chi" as a "Collective Trademark", and not as
an individual trademark or an "Appellation of Origin". A great deal of efforts has been put by
generations of "Chis" for many years to preserve the identity of that fruit. Thus, they agreed that
the people of Chi should be the owners of the collective mark (not a single individual), and that
they will use it according to the rules that they themselves would lay down.

a) Considering that the people of Chi want to have the ownership of the sign “Chitos Chi”
and not only the right to use it, do you think that their choice to register a collective
trademark instead of an appellation of origin is appropriate? (5 points)

b) Is there any reason to believe that the South African Companies and Intellectual
Property Office should register “Chitos Chi” as a collective trademark, considering that it
has already refused to register the same sign as an individual trademark? (5 points)

c) Is there any international provision that could help the people of the village of Chi in
obtaining protection abroad for “Chitos Chi”? (5 points)

(15 points, max 200 words)

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QUESTION 6

Johnson, the owner of a well-known trademark CEDI, is a successful business man in

FATHERLAND and MOTHERLAND (not true countries). Whereas CEDI enjoys a status of a
registered trademark in FATHERLAND, protection by way of registration of this mark is not
available in MOTHERLAND. This is notwithstanding the fact that Johnson has been using CEDI
in MOTHERLAND for more than ten years thus earning the mark an appreciable degree of
notoriety in this country. Johnson has discovered that Peter & Sons Ltd. has lodged an
application with the relevant authority in MOTHERLAND seeking to register the trademark CEDI
in relation to goods and services that are identical to those in respect of which Johnson uses the
mark. Johnson opposes such an application, but the opposition fails on the ground that the
Trademarks Act in force in MOTHERLAND does not provide for protection of unregistered
trademarks.

Now that Johnson plans to establish business in Italy, he does not want to ruin his investment
as it happened in MOTHERLAND. He approaches you with a request to do the following:

 Analyse any strategic mistakes Johnson might have made in relation to his business in
MOTHERLAND (7.5 points)

 Give him any strategic advice that may enable Johnson to properly position his business
in Italy. (7.5 points)

(15 points: max 300 words)

Total 100 points

End of Exam

___________
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SUBMISSION
Answer 1:

i) Yes, there is a possibility to obtain the Trademark for service protection for the peculiar and
distinctive restaurant interior design, as in the case for Apple (they are granted for the same
protection in Germany), provided that the condition for regisration of the Germany rules are
satisfied.
ii) Relevant rules of the Paris Convention
Article 6 [1]; Condition for regisration
Relevant rules of TRIPS
Article 15; Protectable subject matter
The basic rule is that any sign or any combination of signs, shall be capable of constituting a
Trademark as long as it is capable of distinguishing the goods or services of one
undertaking from those of other undertakings. Members of the union may make registrability
depends on distinctiveness acquired through use and may require that the sign be visually
perceptible.
Article 15 [1], 16 [2], 16 [3]; Service mark to be protected in the same way as marks
distinguishing goods.
Relevant rules of EU Directive
Article 2 and Article 3 [1] of the TM Directive
 From the wording of art.2 that designs are among the categories of signs capable of
graphic representations, designs or layout of a restaurant by means of an integral
collection of shapes, curves, colors and arrangements could constitute for a trademark
regisration, provided that it is capable of distinguishing the products or services of one
undertaking from thet of others.
 On the issue of distinctiveness, the distinctive character of a sign must be assesed by
means of art. 3 [1][b] and must satisfy the regisration requirements in art 3 [1].
 Provided that the condition of art.2 and art. 3[1] are satisfied, a sign depicting the
interior design of a restaurant could be registered not only in respect of the goods but
also for services.
iii) According to Paris Convention art. 6[3], a mark duly registered in a country of a union shall
be regarded as independent of marks registered in other countries of the union, therefore
the fact that the mark is already registered in USA doesn’t affect its registrability in other
countries of the union, including Germany. Also, according to Paris Convention art. 6 [1], the
conditions for the filling and regisration of Trademark shall be determined in each country of
the union by its domestic legislation. So, in principle every member of the union are free to
provide their standard of protection.
Other thing that should be noted is that the regisration in the country of origin is not
necessary, but in some cases would help making it easier to obtain for the same protection
in other countries of the union.
iv) Some advice on the technique of drafting, particularly in the descriptions of the sign:
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 Pineapple Inc. should fill in the application of regisration its specific/unique elements of
the interior design that communicate the message of the brand (not every single
details of the elements of the design), which in combination (floor plan, furniture layout,
color combinations, painting, etc), its appearance or atmosphere capable of serving as
a source identifying function. When its successfully serve as a source identifier it will
be more likely to obtain a greater distinctiveness criteria for the protection.
 Pineapple Inc. must ensure that their interior design are uniform and consistent in all of
their establishment, regardless of the size and shape of the building or space, to
establish a secondary meaning.

Answer 2:

a. The most efficient and cost effective way to obtain regisrations in multiple countries
mentioned above is through Madrid System. Madrid System provide a centrally
administered system for obtaining a bundle of trademark regisration in separate
jurisdictions. The above mentioned countries, with the exception of Argentina are among
the member of the system, and thus protection can be seek by this means.
Some benefits of Madrid Systems are:
1. A single app in one language and one set of fees for multiple territories. This centralized
system will make it easier to expand protection to a new markets.
2. Saving time and money by filing one application rather than a bundle of national
applications, such a cost-effective ways because no need of paying for translator and
hire a representative in each countries.
3. Changes subsequent to regisration will effect for several contracting parties in simple
procedural steps.

For Argentina, since it is not a member of the system, the application for protection may
require to be filed in separate application and forwarded to Argentina Trademark office.

b. Complete the Trademark application form, this include contact details, specific graphic
illustration of the trademark, a description of the goods or services to be protected grouped
under the appropriate Nice classification, class 32 for beers and brewery; class 33 for
alcoholic beverages. After the form is meticulously filled out, the application can be filed
through the online filling available at the official website www.ipindia.nic.in, with handling
the required fees.
c. Regarding the product name “thirst” for a beer, it might be found that the name bear a
relationship to the associated goods Aadi tends to market. The country of origin and the
other designated countries of registration might refuse the application on the ground of
lacking distinctive character with regard to the goods it is applied for. Regarding the logo, it
is clear that Aadi cannot use the logo, since the logo is identical to that of EU flag. The
trademark office will refuse on the ground of art. 6ter of Paris Convention.
d. Aadi will enjoy the benefit of priority rights lasting 6 months from the date of filing, thus he
can add more countries within this period. The business doesn’t need to be proved
successful quickly, since actual use of the mark shall not be permitted as a condition for
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filing and at least 3 years must have passed for the actual use as the ground for refusing
the application.
e. Yes, there is a risk. International registration depends on the basic mark for a five year
period, thus if within five year period the national registration be cancelled, international
registration too will suffer from the cancellation, this is usually called central attack.
f. Yes, even though they both don’t fall within the same classes, the two are considered as
similar with regard to their distribution channel and complementarity to each other. The two
might cause a likelihood of confusion by the relevant public that they are come from the
same origin.

Answer 3:

The main issue to be assesed for answering this question is whether or not the assessment
published by Charlie is false or can be considered as a defamatory comment. To be considered
defamatory a comment must notably cause a serious harm to the company reputation and this
must be demonstrated by actual or likely financial loss, furthermore a statement cannot be
defamatory if it is true or an honest opinion based on facts.

In todays global market place, online reviews have become a standard practice. The review
might be positive or negative. There are no special rules that apply to the internet or social
media when it comes to defamation. Therefore, traditional defamation analysis applies to online
content as it would to any other written publication.

Most reviews including an assessment are protected under the freedom of speech laws,
however a court can find Charlie guilty of defaming the sparkling water business if he post
factually incorrect accusations. But since it is mentioned in the case that his assessment is fair,
the bussiness can go with other option instead of going to a court. The bussiness can request
charlie to take down his critical assessment or combat it directly through a gracious response.

Answer 4:

Answer 5:

a. Since the people of chi want to own the sign and want to use it according to the rules that
they themselves would lay down, the choice of collective mark is more appropriate.
Different from appelation of origin which belong to government, collective mark constitues
a private property which the control is in the hand of its member as the owner.
b. The use of collective mark will give rewards to the people of chi for the efforts they have
been put for generations; it is a great tool to promote unique local products such as chitos
chi; it will help streghthen the business by allowing them to create a joint image that
identifies their product in the market while at the same time reducing individual investment.
Furthermore a unique collective mark product can represents a competitive advantage in
the international market.
c. Paris Convention
 National treatment, art.2(1)
 Right of priority, art.4
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 Common rules on collectiveWIPO FOR OFFICIAL USE ONLY

trademark, art.7bis
Madrid Agreement & protocol
Instrumets for efficient and effective international regisration.
TRIPS
Art.21 of TRIPS contains provisions of Paris Convention provisions, thus jurisdictions part
of the WTO are required to accomodate the protection of collective trademarks.
EC Regulation on The Community Trademark
Regulation No. 40/94 art. 65-72

Answer 6:

a. Johnson should be aware from the the first time he introduce his products, that in
MOTHERLAND, unlike in any other jurisdictions, is a first to file country where an
unregistered trademark, however well-known cannot obtain protection and afford ground
for opposition. If he known and considered it thoroughly earlier, he would seek other
solution regarding the non-registable trademark (by means of using other trademark and
by utilizing other IP protection such as trade dress, industrial design). Doing business
under non registrable trademark especially in the country that doesn’t provide protection
for unregistered trademark is very risky. Even though having well-known trademark
extends additional protection beyond what standard trademark protection can offer, having
the mark acknowledged as well-known is not easy. Moreover there is no standard
regarding the definition of well-known mark, even a famous company in one country may
struggle to protect their mark overseas.