Red Hot Chicago - Managing Intellectual Property

Transcription

PREVIEW: FILING
AT THE CHINA
TRADEMARK
OFFICE 3
www.inta.org
PROFILE: INTA
PRESIDENT DEE ANN
WELDON-WILSON 8
FEATURE: GLOBAL
PROTECTION – WIPO’S
ERNESTO RUBIO
INTERVIEWED 22-25
Daily News
P U B L I S H E D BY
129TH ANNUAL MEETING, CHICAGO
Monday, April 30, 2007
www.managingip.com
Red Hot Chicago
Renowned local band Marshall
Vente and the Chicago Blues
Review welcomed attendees to
the 129th INTA Annual Meeting
yesterday evening with top-notch
renditions of an assortment of
blues-infused pop classics. The
11-member band enthusiastically
covered favorites such as
“Mannish Boy” by Muddy
Waters, “Lady Marmalade” by
Labelle, “Stormy Monday” by TBone Walker, and “Ain’t Too
Proud to Beg” by The
Temptations.
The spacious hall featured 10
food stations celebrating the
diverse cuisines offered by a
selection
of
representative
Chicago
neighborhoods.
Attendees helped themselves to
rice rolls in Chinatown, an array
of different hummus and pita
chips in Greektown, tasty guacamole and tortilla chips at the
Mexican station and delectable
pastas and mouth-watering
tiramisu in Little Italy.
At the Chicago Stockyards
table, chefs served up roast beef
and brisket, commemorating
New City, Chicago’s famous
Union Stock Yard & Transit
Co., which was once the center
of the American meatpacking
district.
Whether they were gathered
in front of the band or sampling
the “red hot” fare, the few thousand Annual Meeting attendees
at the Welcome Reception took
advantage of the lively atmosphere to find old friends and
make new contacts.
Opening ceremony reports: page 2
What next for harmonization?
Trademark registrability criteria tops practitioners’ harmonization wish list, according to an exclusive INTA Daily News poll.
The poll, conducted online over the past
month, asked practitioners to nominate
the issue they would most like to see harmonized. Fifty-nine percent said trademark registrability, which was well ahead
of the other options – electronic filing,
rules on famous/well-known marks and
geographical indications. Respondents
could also nominate another issue they
would like to see harmonized.
The World Intellectual Property
Organization (WIPO) is now looking at
aspects of trademark law that could be
harmonized, after playing a key role in discussions which last year led to the signing
of the Singapore Trademark Treaty. That
Treaty updated the 10 year-old Trademark
Law Treaty and sets out how IP offices
should handle applications for (for example) non-traditional marks, if they accept
them.
Speaking to the INTA Daily News,
Ernesto Rubio, the deputy director of
WIPO in charge of trademarks, said that
the Organization is considering whether
there is any scope for harmonizing opposition procedures, in addition to the ways in
Chasing shadows in Hong Kong
US beer maker Anheuser-Busch
has won a victory over nine
“shadow companies” in Hong
Kong using an approach other
companies may now consider
replicating.
A shadow company is a company incorporated in bad faith
whose registered name includes
a trademark belonging to
another party. Counterfeiters
often incorporate these companies in Hong Kong to add an air
of legitimacy to their activities.
They usually do this by licensing their corporate names to
manufacturers – often in China
– who then produce trademarkinfringing products.
Many companies have suffered from this phenomenon,
including Panasonic, Toshiba,
Sanyo, and Adidas. In October
Matsushita Electric Industrial,
the
parent
company
of
Panasonic, made complaints
about 26 companies incorporated in Hong Kong, including
Japan
Panasonic
Group
Technology and Panesonic [sic]
Industrial Group.
Taking action against these
companies has proved difficult.
The Hong Kong Companies
Ordinance allows the Registrar
of Companies to strike off names
if they are “too like” the name of
another registered company. But
some IP owners say that the
Registrar interprets “too like”
very narrowly.
The Registrar can also use
the law to remove dormant
companies from the register, but
he or she needs to be sure that a
company is not in operation.
This can be difficult to prove:
filing an annual return or providing evidence of doing business in mainland China is sufficient to stop the removal
process.
Now Anheuser-Busch is celebrating a victory against shadow
companies. In January, the brewer sued the directors and, crucially, the shareholders of nine companies that were trading under
similar names. Earlier this
month, the Court ordered the
defendants to change their companies’ names and said that if the
shareholders did not comply then
lawyers from Lovells, the
firm representing AnheuserBusch, would be given the
power to sign special resolutions on behalf of the
shareholders to get the
name changed.
Frank Hellwig, senior
associate general counsel
for
Anheuser-Busch,
told the INTA Daily
News the outcome
was “an important
step in protecting our
rights and reducing
the
number
of
infringements we see
in China.”
“This recent decision of the Hong
Kong
Company
Name Registry makes
the process of eliminating
infringing
company names much
which applicants are requested to represent new types of trademarks.
“At the moment, different offices have
different requirements for the way in
which applicants represent nontraditional
marks such as smells, single colors, sounds,
and holograms. WIPO’s Standing
Committee will look into the possibility of
harmonizing the requirements that offices
ask applicants to fulfill,” said Rubio.
Poll results: page 27
more
straightforward,”
added
Hellwig.
“Nevertheless, litigation
against these sham companies in Hong Kong is time
consuming and costly. The
process could be simplified
by amending the Hong
Kong
Companies
Ordinance to provide a
procedure for objecting to company names
that incorporate the
trademarks of others.
We are pleased, however, with the recent
actions of the Hong
Kong Company Name
Register to eliminate
these infringing company names as an
interim measure.” The
Companies Ordinance
is due to be amended
in 2010 or 2011.
CONTENTS 2 • ANNOUNCEMENTS 4, 25 • PHOTO COMPETITION 28 • AFFILIATE PARTY PHOTOS 30-31 • SCHEDULE 32
NEWS
CONTENTS
News
2
Preview: South Asia
3
Report: Academic course
4
Report: New members’
reception
4
Announcements
Feature: Filing in China
Preview: Trademark ethics
Profile: Dee Ann
Weldon-Wilson
City guide: Eating in Chicago
City guide: The Blues
Feature: Anticounterfeiting
strategies
8-9
10
11
12
16-17
Interview: Steven Steger,
Brunswick
18-19
Classified advertising
19, 21
20
Feature: International
trademarks
22-23
Profile: Ernesto Rubio,
WIPO
24-25
Feature: A year at the ECJ
26
Poll: Trademark protection
27
Affiliate party photos
Schedule
“What do I know? I’m not a
trademark attorney ... I’m just a
CEO,” he joked. “[But] there is
no question that trademarks have
become the foundation of our
modern system of business... and
I congratulate all of you for helping us convey our unique identities to the consumers we serve.”
You are the “guardians” of
the brand “in the first line of
defense,” he said.
7
Preview: Internet
developments
Vox pop
brand, but it can take just one
incident, or one unhappy visit, to
break that trust. As a result, companies must ensure that they protect their brands.
Skinner also paid tribute to
trademark practitioners, admitting that he had confused trademarks and copyright until corrected by the head of McDonald’s
Trademark and Intellectual
Property Group.
5-7
14-15
Photo competition
trademark administrators in recent
history, with over 250 guests.
The chair of the Trademark
Administrators Subcommittee,
Kathy Merlino of Cozen
O’Connor, raised a champagne
toast to INTA, to trademark
administrators and to everyone
who made the festivities possible.
She also said she wanted to begin
a new tradition by making a State
of the Trademark Administrators
Subcommittee Address, in which
she summarized the work of the
Subcommittee’s four teams over
the past year.
The fashion show – the highlight of the afternoon – featured
models made up of members of
the Trademark Administrators
Subcommittee. Paul McGrady of
Greenberg Traurig and Barbara
Barron Kelly of CT Corsearch
played fashion show hosts and
the crowd roared with laughter
as the two demonstrated their
voguing abilities while being
introduced to Madonna’s song
“Vogue.”
Each of the 15 models paraded their office apparel down the
runway to tunes including “Let’s
Get it Started” and “Can’t Touch
This.” Representing “what not to
wear” were models wearing a
leather jacket-and-skirt ensemble
and a mini-skirt and T-shirt combination complete with fishnet
stockings.
Raffle prizes were donated by
retail
members
of
the
Subcommittee and included a
MOTOROLA RAZR phone, a
basket of AVON products and a
free registration for next year’s
Annual Meeting in Berlin.
4, 25
Preview: Survey evidence
Interview: Carrie Knecht,
Motorola
Trademark administrators strut their stuff
28
28-29
30-31
32
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EDITORIAL TEAM
Editor James Nurton
Deputy editor Emma Barraclough
Reporters Peter Ollier and Eileen McDermott
Additional reporting Shahnaz Mahmud, Jamie
McKay, Nick Pettifer
PRODUCTION
Production manager Luca Ercolani
Web designer João Fernandes
ADVERTISING
Publisher Daniel Cole
Tel: +852 2842 6941
Americas manager Tom St Denis
Tel: +1 212 224 3308
Europe/Africa manager Alex Eager
Tel: +44 20 7779 8682
Latin America sales executive Alissa Rozen
Tel: +1 212 224 3673
Group publisher Danny Williams
Director Christopher Fordham
SUBSCRIPTION HOTLINE
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Members of the Trademark
Administrators Subcommittee
flaunted their business casual
fashion sense during the annual
Trademark
Administrators
Brunch on Sunday.
“We wanted to do something
out of the box this year,” said
Rosemary Turpin, who headed the
Subcommittee’s brunch team. She
said the team had considered hiring
a motivational speaker, but ultimately decided on a fun fashion
show to highlight both the “do’s”
and “don’ts” of office attire.
The event, which included a
sprawling buffet, almost 60 raffle
prizes and departing gift grab
bags, certainly proved a success,
drawing the highest number of
How to build a brand
The CEO of a company that owns
one of the most recognizable trademarks in the world, and which is
headquartered less than 30 miles
from Chicago’s McCormick Place,
last
night
explained
how
McDonald’s has built one of the
most successful global brands.
Jim Skinner, whose company
owns more than 11,000 trademarks in 199 countries, told the
opening ceremony that there are
four key elements to brand building. Companies need to have a
distinct identity, be familiar,
make a special promise, and
build brand authority, he said in
the Keynote Address.
And he reminded the audience
that businesses must first create a
strong brand before they can
truly tap into the value of their
trademarks – the ownable and
legally protectable instruments
that support the brand.
“A valuable brand is more
than creating a famous mark ...
it’s creating a mark that stands
for something special,” Skinner
said. “At McDonald’s, we define
specialness as ‘the promise of a
relevant and differentiated brand
experience.’ That promise is
what turns a trademark into a
brand.”
In McDonald’s case, the company considers its specialness to
be the fast food restaurant’s eating experience and its association
with fun and youthfulness – a
spirit that the company encapsulates in the phrase “forever
young.” Skinner said that it is
this that describes the essence of
the McDonald’s brand.
But he went on to warn trademark owners that brands are ultimately very fragile. It takes years
to build trust from customers and
to build the strength of the
The challenge of change
EDITORIAL TEAM
Editor James Bush
Photography Robert LoScalzo
Director Randi Mustello
BUSINESS DEVELOPMENT TEAM
Managers Justin Hajny (Marketing), Matthew C.
Schmidt (Communications) and Peg Reardon
(Membership)
Designer Jesse Riggle
Director Daryl G. Grecich
The INTA Daily News is produced by Managing Intellectual Property
in association with the International Trademark Association. Printed
by Rider Dickerson in Chicago. The INTA Daily News is also available
online at www.inta.org and www.managingip.com. © Euromoney
Institutional Investor PLC 2007. No part of this publication may be
reproduced without prior written permission. Opinions expressed in
the INTA Daily News do not necessarily represent those of the INTA
or any of its members.
Chicago city guide information and photos:
www.choosechicago.com
INTA is paying increasing attention to emerging issues that affect trademarks on a global
scale, President Dee Ann Weldon-Wilson told
attendees last night. “These issues include
indigenous rights, intellectual property financing, development concerns, and the interplay
between trademarks and other forms of intellectual property,” she said in a speech at the
Annual Meeting Opening Ceremonies.
Weldon-Wilson added that, in an interconnected world, “it is important to adopt a global view of how these various developments
have affected not only trademarks in general
but also the setting of international norms
relating to trademark protection.” Recognizing
the relevance of regionalism, INTA has been
working closely with the European Union, and
intergovernmental and regional groups such as
APEC, ASEAN, OAPI, ARIPO and ASIPI.
She said that it will be necessary for INTA
and trademark practitioners to adapt to new
challenges and find new solutions to old
issues. This may mean rethinking conventional notions that have defined trademark
practice and protection for many years, such
as the principle of territoriality. It also
means recognizing the value of public
awareness and education in an era of blogs,
digital communication and media sophistication. “How do we reinforce this message
to a general public that is increasingly pragmatic, cost-conscious, and not necessarily
fond of lawyers? INTA needs to tap into this
psychology to make its voice heard more
effectively,” said Weldon-Wilson.
She added that “new tools and approaches
are constantly needed” in the battle against
trademark counterfeiting, and that INTA is playing a part in the global effort to seek progress on
this issue. Comparing INTA to a river, Weldonwilson said it is “always moving, always adapting to the surrounding terrain, but at the same
time shaping it, to get to where it needs to be.”
Profile of Dee Ann Weldon-Wilson: pages 8 to 9
NEWS
Networking tips
First-time attendees heard from the experts yesterday
about how to make the most of the INTA Annual Meeting
at the Orientation and Cocktail Reception.
Five video clips highlighted the important challenges
facing rookies, including timekeeping, getting familiar
with the program, networking effectively, finding answers
from the right people and getting involved to help plan
future events.
INTA Executive Director Alan Drewsen oversaw a
panel of five Annual Meeting veterans. Miles Zvi of IGT
warned newcomers not to overstretch themselves by trying
to do too much. He also advised first-timers to arrive at
meetings on time and to be sure to set aside some time to
see Chicago.
All the speakers agreed that the key to good networking
is not to aggressively pursue specific targets such as “five
India and
beyond
new business leads by the end of the Meeting,” but instead
to focus on making friends. Even if this doesn’t lead to new
business the first or second Meeting, over time these contacts will develop into fruitful business relationships.
Purvi Patel of Haynes & Boone LLP described the benefits of shaping the agenda by getting involved in INTA’s
committees but advised that, with more volunteers than
seats on committees, perseverance is needed to get a place.
Feeling slightly less nervous, the new attendees then
went next door to a cocktail reception where they could
start putting this advice into practice.
T
rademark owners can catch up on the latest legal
developments in some of the world’s fastest-growing economies today at session CM53 – a regional
update on India, Pakistan, and the Middle East.
India, home to more than a billion people, is growing at
9 percent each year, a rate of growth that is transforming the
lives of the country’s middle classes. It is unsurprising that
the country is increasingly attractive to multinational brand
owners. But IP owners face a number of challenges – from
high levels of counterfeiting to a judicial system that, while
well respected, can be frustratingly slow.
Luckily for brand owners, India’s judges
have been handing down some ground-breaking judgments over the past two years. In July
last year, for example, cigarette lighter maker
Zippo won a landmark injunction against a
similar-shaped product when the Delhi High
Court granted an ex parte injunction preventing the defendants from importing, marketing
or selling infringing lighters in India. It was
the country’s first case involving a registered
shape trademark since the Trade Marks Act
1999, which allowed shape marks to be registered, came into effect in September 2003.
In 2005, in Time Incorporated v Lokesh
Shrivastava, the same court recognized that
Time magazine’s red border design was distinctive and directly associated with the plaintiff’s magazine. In a move that signalled a new
tougher line against infringers, the Delhi High
Court ruled that the defendant’s Time Asia
Sanskaran magazine, which had a red border,
infringed Time magazine’s copyright and
trademarks. The Court imposed the first punitive damages to be awarded in an IP case.
Less than three months later the High
Court of Delhi granted an injunction to
India’s national software association NASSCOM, after a recruitment agency had posed
as the organization in phishing emails. It
was the first phishing case that the country’s
courts have dealt with.
Madrid beckons
But these significant judicial developments
are unlikely to be as important to brand
owners as one forthcoming change: in
February this year the Indian cabinet
approved a plan for the country to accede to
the Madrid Protocol.
If the proposal is backed by Parliament,
international trademark owners will be able
to use the Madrid System to extend their
rights to the world’s second most populous
country , and Indian applicants will be able
to extend their trademarks overseas. Ernesto
Rubio, assistant director general in charge
of trademarks at WIPO, which administers
the Protocol, has described the development
as “great news.”
Another country considering joining the
Madrid System is Pakistan, and WIPO’s Rubio
said he hoped to see it a member within the
next two to five years. The participation of
countries in South Asia and the Middle East in
the international trademark system is still relatively low: the only regional representatives in
the Madrid System so far are Iran and Syria.
But economic growth in the region could spur
more states to join, and more trademark owners to lobby for countries to accede.
The session is moderated by Farrukh
Irfan Khan of Pakistani firm United
Trademark & Patent Services. Panelists
include Samer A. Pharaon from AbuGhazaleh Intellectual Property in Jordan and
Jyoti Sagar of Indian firm K&S Partners.
www.managingip.com
INTA Daily News – Monday, April 30 2007
3
NEWS
A global university
Last year Susan Brady Blasco, an
IP administrator with Birch,
Stewart, Kolasch & Birch and cochair of INTA’s Academic
Subcommittee, received an email
from a trademark student from
the UK who had attended the
Association’s academic trademark course at the Annual
Meeting in Toronto.
“He said that his law school
professor had recommended a
book by Fred Mostert and that
he had told him ‘I’ve been taught
by Fred Mostert’,” she said. “He
said that having the opportunity
to be taught by people from each
different region in the world had
been a great experience.”
This year Blasco and her colleagues once again lined up a
packed two-day program for students taking the Survey of
International Trademark Law and
Practice Seminar on Saturday and
Sunday.
Eighteen
lecturers
explained trademark law issues in
places as far afield as the ASEAN
region, Russia, Central America,
the United States and Sub-Saharan
Africa. Among the tutors were a
former director of IP law at WIPO
and a professor at Chicago’s John
Marshall Law School (which
accredited the INTA course), as
well as trademark practitioners
from 15 jurisdictions.
There was similar diversity
among the students: the 31 participants taking the course this year
included lawyers, trademark
administrators, and law students
from Argentina, Colombia,
France, Japan and the United
States.
“It’s just like being at law
school,” said Blasco. She said that
many of the lecturers teach part
time at their local universities in
addition to being trademark practitioners. “They are used to teaching
and they’re good at it,” she said.
“Every year when I invite them
back I think ‘please just say yes.’”
INTA Daily News Announcements
At the INTA Anticounterfeiting Booth, Exhibition Hall visitors
examine the endless variety of goods subject to counterfeiting.
The Anticounterfeiting Booth also features a slate of speakers to
answer your questions about how to fight against fakes. For a
schedule of today’s speakers, see page 25.
4
www.managingip.com
The departure location for tomorrow’s golf tournament will be the Main Entrance of the Hyatt
McCormick Place. Departure time is 10:00 am.
Exhibition Hall Booth Changes
Getting the Deal Through is now at Booth 631 (was formerly Booth 323).
ENVI is now at Booth 103 (was formerly Booth 1007).
FEATURE: CTMO
Meeting the China Challenge
While for many companies China is the land of opportunity, with abundant labor and a rapidly expanding middle class, for
brand owners it has long been regarded as the ultimate challenge. Peter Ollier reports.
O
ver the past few years there has been a pattern in
China of legal changes creating minor improvements while the overall picture remains frustratingly complicated for brand owners. At the China
Trademark Office (CTMO), brand owners face severe
delays as the examiners deal with the growing numbers of
applications, making it harder to enforce rights against
trademark squatters. A session today aims to highlight the
main challenges and provide some tips on how to deal with
the China challenge.
Zhengfa Wang, a partner of China Patent &
Trademark Agent (HK), believes that so-called ghost
trademarks are the main problem in China at the moment.
The most common take the form of bad-faith registrations
that are not used but made purely to extort money from
brand owners. Some ghost trademark owners also seek
illicit income from manufacturing goods bearing the ghost
trademark.
“It is astonishing that the ghost trademarks exist in
such a huge number, increase at such a dreadful rate
and exist in so many varieties of forms,” says Wang. As
an example he cites the attempt by one trademark
squatter to register BEIJING OLYMPIC GAMES as a
trademark.
Often the names of famous people will be associated
with unlikely goods by enterprising trademark squatters.
For example the famous basketball player Yao Ming had
his name designated for the manufacture of beer and
steel pipes, while the name of film star Zhang Ziyi was
registered for an electric device for trapping and killing
bugs and expelling mice. One ambitious squatter even
tried to register the device of Zinedine Zidane’s headbutt against Marco Materazzi in the FIFA soccer World
Cup final.
The exorcists
Tactical applications
Wang believes that there are a number of ways to exorcise
the ghosts, though he admits that registering all trademarks in all classes is unfeasible. China has opposition, reexamination and cancellation procedures that can and
should be used, he argues. Brand owners can claim that the
mark conflicts with a prior right, is confusingly similar, is
devoid of distinctive character, has unhealthy influence,
was registered in bad faith and by unfair means or is diluting their trademark.
But all these ways of attack become meaningless if you
have to wait years and years for decisions to be made.
Delays at CTMO and the Trademark Review and
Adjudication Board (TRAB) have now reached serious
levels.
“The problem is massive, the situation is terrible and it’s
getting worse,” says Doug Clark, a partner in Lovells’
Shanghai office.
One reason for the rise in waiting times is simple: there
has been a rapid increase in the number of people applying to protect their trademarks in the country and the
CTMO is now the world’s largest receiving office. Figure
1 shows a substantial increase in applications over the
past 20 years. Although the number of trademarks being
processed has also risen, it has failed to keep pace with
demand.
Estimates for the size of the delays vary, but approximate figures are between 18 and 30 months to register
a trademark, five years to get a ruling in an opposition
hearing, and up to seven years for a decision from the
TRAB in a cancellation action. The time needed to register varies depending on the class. Class 25 for clothing, footwear and headgear suffers from the worst
delays.
Unfortunately, the unprecedented growth in applications
and the subsequent delay in processing oppositions have
led to a dramatic rise in tactical applications designed to
strengthen an applicant’s hand.
For example, Clark says that he advises clients to register as many variations on their trademarks as they can
“It is astonishing that the
ghost trademarks exist in
such a huge number”
rather than rely on opposing infringing marks. This in turn
further increases the workload of the already overburdened CTMO. Delays create more delays, and a vicious
circle is born.
This problem seems particularly acute at TRAB, where
Linda Chang, an executive in Rouse & Co.’s Shanghai
office, says she chased up a case that she filed in 2003 only
to discover that the organization is still hearing cases from
1999.
Delays in deciding trademark oppositions can also
affect infringement actions. In late 2005 the Supreme
Court stated that when there is a dispute over registered
trademarks, courts should not handle such cases but
should wait for the dispute to be dealt with by the
Trademark Office first.
Given the time it takes to get a decision, this can be disastrous for rights owners. For example, Danish shoemaker Ecco became a victim of this policy when a judge
refused to deal with an infringement case while the CTMO
www.managingip.com
5
FEATURE: CTMO
Figure 1: Trademark statistics in China 1982-2005
700,000
600,000
500,000
Applications for registrations
Registrations approved
400,000
300,000
200,000
100,000
1982 1983 1984 1985 1986 1987 1988 1989 1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005
was still deciding the outcome of an opposition action. The
alleged infringer is free to continue his actions until the
case is heard.
Clark argues that this is not compliant with Articles
41.1 and 42 of the TRIPs Agreement, which require WTO
members to make available to right holders civil judicial
procedures concerning the enforcement of any intellectual
property right covered by the Agreement. At the moment,
it could be argued that the courts are abdicating responsibility to the administrative level.
So is there a magic solution to all these problems? One
obvious answer is that the Office should recruit more
examiners and ensure they stay longer. Yang Yexuan,
deputy director general of TRAB, wrote in Managing
Intellectual Property in 2005 that pendency had become
“an urgent issue,” and said that a plan had been approved
to hire more examiners. This has led to some improvement
in the number of cases being processed but the issue is far
from being resolved.
Linda Chang proposes abolishing relative examination
6
www.managingip.com
as a solution to the pendency problem in a country where
applications keep rising year after year. Although this
might lead to a spate of bad-faith registrations, it would
speed up the system and shift responsibility on to companies to think more about what they should try and register.
Other practitioners disagree, arguing that this would
lead to a backlog of re-examination cases and, according
to Sandra Gibbons, a partner of Lloyd Wise in Hong
Kong, favor larger companies that can afford to police the
system themselves. “The only way is to appoint and train
more people,” she argues.
The CTMO has been looking at ways to improve the
pendency situation in the context of current revisions
to the China Trademark Law. This includes addressing
the question of whether abolishing relative examination is the solution. In a letter to the CTMO in
February 2007, INTA said that while abolishing relative examination might help reduce the considerable
backlog of pending cases under examination, it would
likely be offset by the lengthy opposition procedure if
no measures are taken to expedite the opposition procedure. The current presumptions of a registration’s
validity would also need to be changed in order to
facilitate trademark litigation.
Meanwhile, a number of minor improvements would
help make the system more user-friendly. At present,
despite the fact that it can take the CTMO years to refuse
an application or reject an opposition, applicants are given
only 15 days to appeal. For an applicant based overseas
for whom time differences make contact with the local
agent problematic, it can be difficult to make a decision
and prepare necessary documents in time.
Clark says that people should be given the right to
apply to a court to cancel a trademark, to help companies
such as Ecco. He would also like to see expedited procedures in TRAB. At the moment three people handle each
case. Although this probably helps to ensure consistent
decision making, it almost certainly does not help the
Board shift its backlog more quickly.
He suggests allowing clients to request an expedited
decision made by one examiner, on the grounds that “any
decision is better than no decision.” Time limits could also
be introduced, so that if a decision on an opposition or
cancellation has not been made after one year or 18
months it is deemed to have been rejected and you can
then appeal to the courts.
Other time-saving options include shifting to multiclass examination rather than considering one mark for
each class, as is required at the moment. This would temporarily slow down the system but in the long term could
make the process more efficient, says Horace Lam, the
head of IP at Lovells in Beijing. Some practitioners also
argue for a switch from first-to-file to first-to-use, “a more
equitable system,” according to Lam.
Many of the trademark owners and attorneys that the
INTA Daily News spoke to also requested greater transparency on the part of the trademark authorities. CTMO
published its examination guidelines in January 2006 and
introduced an online search service for trademarks – steps
that were welcomed by practitioners. But practitioners
would like to be able to have more contact with examiners
so that they can contact them directly during the examination or appeal process if they believe it is necessary.
FEATURE: CTMO
Short-term solutions
While the long-term solutions proposed are varied, in the
short term Lily Lei, a partner of Liu Shen & Associates,
believes that the only answer is to act as early as possible:
“When you begin to think about doing business in China,
get your trademarks registered.”
If the mark has well-known status then protecting your
brand becomes simpler. This first became possible in China
after it joined the Paris Convention for the Protection of
Industrial Property 20 years ago. While China has a reputation for being reluctant to grant these marks, especially
for foreign marks, in the last few years the process has
become easier. A ruling by the Supreme People’s Court in
2001 means that the CTMO is no longer the only authority capable of recognizing well-known trademarks. The
new trademark law later the same year contained provisions dealing with the protection of well-known marks. In
2003, new Rules on the Recognition and Protection of
Well-Known Marks provided for recognition of well-
known marks through the well-known mark owner’s submission of evidence of fame or on a case-by-case basis in
opposition on enforcement actions at the CTMO, cancellation actions at the TRAB or infringement proceedings at
the Administration for Industry and Commerce.
“When you begin to think
about doing business in
China, get your trademarks
registered”
Recognition of well-known marks is increasing, and in
2006 14 brands were recognized as well-known, according to figures from Wan Hui Da Intellectual Property
Agency. These included STARBUCKS and STARBUCKS
in Chinese (recognized in a lawsuit); KODAK; L’ORÉAL
and L’ORÉAL in Chinese; HONDA and the Chinese
equivalents of TOYOTA and PORSCHE.
Despite the progress in establishing marks as wellknown, brand owners are having difficulty registering 3-D,
certification and collective marks. For example, Lily Lei says
she has experienced trouble registering LEGO as a shape
trademark. So far it has been difficult to register a shape
without a word as examiners have argued that it is not distinctive. Few 3D trademarks have been successful so far.
The story is similar for certification marks, where Lei
has been trying to register a mark for STILTON cheese for
the British Cheese Association. After almost four years of
trying and “four or five” meetings with examiners the
mark is still not registered.
The trademark law is being further revised, and drafts have
been circulated for consultation. With so many issues to deal
with it is hard to see how everyone can be placated. Without a
doubt the problem of delays needs to be addressed urgently.
Get your ethics
points here
T
wo sessions being held today and
tomorrow will give attendees the
opportunity to learn about the latest
ethical issues affecting U.S. trademark practitioners and obtain CLE ethics credits.
The sessions will cover ethics issues that
arise when working with the USPTO, handling litigation in court and carrying out
investigations.
Ethics issues can arise in many ways for
trademark practitioners. For example, there
are rules to be followed when investigating
suspected infringing activity. These cover
contact with the opposing party, not making
false statements, and using third parties to
make test purchases or carry out other
investigative research. “The question there
is: does undercover activity violate ethical
rules?” said Craig W. Weinlein, of
Carrington,
Coleman,
Sloman
&
Blumenthal, LLP, who is moderating both
sessions.
Today’s session will look at how different
U.S. courts have analyzed that question in
recent cases, and to what extent there is uniformity in approach in different states,
including in some – such as South Dakota –
that trademark practitioners may not be
totally familiar with.
The role of investigators will also be
examined in tomorrow’s session, which will
focus on issues arising once litigation has
started, including conflicts of interest, privileged documents and dealing with the
opposing party during discovery.
SELECTED STATE BAR
REQUIREMENTS FOR MINIMUM CLE
California: 25 hours of CLE required
every three years, of which four hours
must be legal ethics and one hour must
be elimination of bias in the legal profession.
Illinois: 20 hours during first two-year
period, 24 hours during second twoyear period and 30 hours during all subsequent two-year periods. At least four
hours in each two-year period must be
in the area of “professionalism, issues
involving diversity, mental illness and
addiction issues, civility or legal ethics.”
New York: First two years of practice:
16 credit hours per year, of which three
must be in the areas of ethics and professionalism. Subsequent years: 24 credit hours each two years, of which four
must be in ethics and professionalism.
Texas: 15 hours required each year, of
which at least three must be in legal
ethics and/or professional responsibility.
www.managingip.com
7
PROFILE: DEE ANN WELDON-WILSON
Anticounterfeiting and BRIC countries
Three months into her term as INTA President, Dee Ann Weldon-Wilson tells James
Nurton why her priorities include anticounterfeiting, globalization – and mapping
out the long-term future of INTA.
D
ee Ann Weldon-Wilson, trademark counsel for
Exxon Mobil Corporation in Texas, has seen many
sides of the world of brands. After receiving a B.A.
degree from the University of Alabama in
Huntsville and a J.D. from Vanderbilt University School of
Law in Nashville, Tennessee, she was clerk to the
Honorable Julia Smith Gibbons of the U.S. District Court
for the Western District of Tennessee, an associate with the
law firm Fitch, Even, Tabin & Flannery and trademark
counsel for The Southland Corporation (now 7-Eleven,
Inc.) before joining Exxon in December 1989. “I’ve gone
where the trademark work took me,” says WeldonWilson, who is INTA President for this calendar year.
Lately, the work has taken Weldon-Wilson to increasingly far-flung destinations. In January this year, she spoke at
the Third Global Congress on Combating Counterfeiting
and Piracy in Geneva, and in March she visited São Paulo
for a joint INTA-ASIPI meeting. This week she returns to
Chicago, where she worked in private practice, to welcome
attendees to the 129th INTA Annual Meeting.
Counterfeiting and education
Weldon-Wilson’s work in the first three months of this
year demonstrates some of the priorities of her presidency.
Anticounterfeiting is one. As well as supporting the event
in Geneva, which worked to promote public-private partnerships to combat counterfeiting and piracy, INTA also
partnered with Harper’s Bazaar for its Third Annual
Anticounterfeiting Summit in New York in February. The
event featured a keynote speech from New York City
Police Commissioner Raymond W. Kelly, and came as
Mayor Michael Bloomberg issued a Proclamation designating February as Anticounterfeiting Month.
8
www.managingip.com
Weldon-Wilson says: “As INTA continues to expand its
reach and influence, we want to continue to emphasize the
importance of fighting counterfeiting.” The Association –
on behalf of all its member companies – is working with
other organizations, and with national and international
agencies, to tackle counterfeiting directly and also to highlight the dangers of cheap, fake goods, the damage they
can cause consumers and the criminal nature of those who
benefit from counterfeit sales. The INTA president has
seen first hand the counterfeiting of oil, lubricants and
even gas stations as well as the use of ExxonMobil’s marks
on closely related products (one recent case in China
involved spark plugs).
She identifies three priorities in the fight against
counterfeiting: increased penalties (both penal and
financial) for those found guilty; more regulation of
transshipment of goods, especially in free trade zones;
and, most importantly, greater education of consumers.
She says that education efforts need to recognize that
many counterfeit purchases are “not absolutely intentional,” so it is vital to explain the role of trademarks,
and the damage that buying fakes causes to society and
to the world economy. “It’s important for people to
understand trademarks are a communication tool – not
just for trademark owners but for consumers to know a
brand is the same quality as they purchased the time
before. A brand is a short-cut for them to identify the
qualities involved and to know who is standing behind
the product or service. They could be sorely disappointed in the quality and lack of warranty. We need to take
every opportunity we have to emphasize these issues.”
Above all, she says, education needs to explain that
counterfeiting “is a different form of stealing.”
Global commitment
Such efforts require the commitment of trademark owners,
as well as public sector agencies and those working in
international associations, on a global level. “With international communications and trade expanding, it is
increasingly important for companies to protect their
brands throughout the world and to do so as effectively as
possible. Every trademark owner is constantly evaluating
its trademark and domain name portfolio to meet the
evolving interests of consumers,” says Weldon-Wilson.
In October last year, INTA opened a Europe office,
headed by Europe Representative Christina Sleszynska, to
add to its offices in New York and Shanghai. The Brussels
office will better serve the one-quarter of INTA members
based in Europe by working with European institutions
and also hosting events. For example, in June this year
PROFILE: DEE ANN WELDON-WILSON
head INTA 2007 priorities
MAIN BRANDS OF EXXONMOBIL
Source: www.exxonmobil.com
EXXONMOBIL: Exxon Mobil Corporation was formed in 1999 by the merger of Exxon and Mobil. Since then, specialist businesses such as aviation fuel and lubricants, chemicals, asphalt/bitumen and marine fuels and lubricants have been marketed using
the EXXONMOBIL brand.
EXXON: The EXXON brand has been used for fuels, services and lubricants in the United States since the 1970s. It is also used
on service stations, convenience stores and credit card services.
ESSO: The ESSO brand is used internationally for fuels, service stations, convenience stores and lubricants and dates back
more than a century. The brand dates back to the Standard Oil Company (New Jersey), and was used as the primary fuels mark
in the United States until being replaced with EXXON in the 1970s.
MOBIL: The MOBIL family of brands covers advanced technology in fuels, lubricants and services and is used worldwide. MOBIL
oil is the official motor oil of NASCAR.
MOBIL 1: The MOBIL 1 family of brands covers products for engine and vehicle protection including oils, synthetic grease, transmission fluids and gear lubricants. It dates back a quarter of a century. Mobil 1 Racing sponsors NASCAR drivers Ryan Newman
and Kurt Busch and is a technology partner for the Vodafone McLaren Mercedes Formula 1 team.
MOBIL DELVAC: Heavy-duty lubricants for trucks have been branded as MOBIL DELVAC for nearly 80 years. Products include
engine oils, synthetic drivetrain fluids and high-performance greases.
ON THE RUN: ON THE RUN convenience stores are operated as franchises and are designed to offer fast, friendly service and
fresh products. They were started in 1984.
SPEEDPASS: An electronic means of payment, SPEEDPASS uses a small transponder attached to a key ring to pay for goods at
certain retailers and charge a check or credit card directly. The SPEEDPASS transponder is used by more than 5 million customers.
INTA is holding a conference on Community IP rights in
association with OHIM followed by a workshop for
European in-house counsel.
But, says Weldon-Wilson, INTA continues to look
beyond Europe and the United States. In particular, she
emphasizes the importance of the four most rapidly emerging countries in the world – Brazil, Russia, India and China
(known as the BRIC countries), which she says are
“reshaping global commerce.” These four countries
together make up half of the world’s population.
Developing markets present opportunities for pirates
and counterfeiters, as Weldon-Wilson acknowledges:
“There are many regions where we need to address the
counterfeiting issue – the Middle East, Far East, Latin
America.” But it is not just counterfeiting that needs to be
addressed. Another area is the protection of trade dress,
something that she has seen the importance of first hand –
for example in gas stations. “It is particularly important
where products are sold in countries where the languages
are different,” she says.
Demand for trade dress protection is “of continuing
importance all over the world and an area in which we
need to stay involved,” says Weldon-Wilson. WeldonWilson accepts that “the type and nature of protection differs from country to country,” but she believes that some
harmonization is required: “The minimum standard
should be available in every country.”
A tradition of change
The growth of INTA and particularly its international
membership mean that the Association must “keep its tradition of change,” says Weldon-Wilson. One of her roles as
President is to chair the Long Range Planning Task Force,
which is designed to ensure that INTA remains valuable to
all its members. The Task Force is now looking at how the
Association should develop over the next 15 to 20 years.
“By the end of 2007 we are expecting to have some preliminary conclusions that will address how INTA can best
serve its members, whether through education, policy
development, advocacy or other areas,” she explains.
From fugues to fuel
Weldon-Wilson first came to IP through her interest in
music, which she majored in at college. While taking IP
law courses she realized trademarks was the area in which
she wanted to specialize. “I was very fortunate to find my
niche early,” she says. She still plays the piano as a hobby,
and Bach is her favorite composer: “His type of logic is
consistent with that of lawyers,” she explains.
At ExxonMobil, she concentrates on trademark and
domain name work as part of what she describes as a “very
intelligent, capable and nice group.” Based in the Irving,
Texas office, near Dallas/Fort Worth International Airport,
Weldon-Wilson is part of a group of four trademark attorneys that handle all of the company’s trademark and related
work from selection and clearance through to enforcement,
managing a total of some 30,000 trademarks.
Responsibilities are divided along business lines, and she covers the fuels marketing business, including gasoline stations.
Asked what is the biggest challenge that trademark
owners face, she picks out the Internet: “Trademark owners are very interested in issues relating to the Internet and
how it will affect territoriality of trademarks. I think it will
be interesting to see it evolve.” In particular, she says that
the nature and evolution of the Internet, and particularly
the interactivity and user empowerment brought by Web
2.0, pose questions about the “balance of free use and
trampling on people’s rights.” She adds: “The issues we
have to face will evolve, but we will continue to work with
clients to develop new strategies to face new challenges.”
www.managingip.com
9
CITY GUIDE: FOOD
Where to eat in Chicago
Chicago – one of the world’s great cities for dining – has something for everyone to eat, whatever your taste, budget or timing. Here are a few highlights.
Steak your
claim
Get a Pizza the
action
Brunches and
brew pubs
Chicago’s steakhouses
offer all the usual cuts, as
well as fresh seafood and
other dishes. Gene &
Georgetti is one of the oldest, founded in 1941, while
Gibson’s is normally packed
and bustling. Just across
the road, Tavern on the
Rush offers outdoor dining
in good weather.
Reservations are recommended for all of them.
Chicago is known as the
Pizza capital of the world –
so don’t miss the chance to
grab one while you’re here,
whether you prefer
Chicago-style deep dish or
thin and crispy. Of the hundreds of Italian restaurants
in the city, three of the best
are D’Agostino’s (which has
three locations in Chicago);
Gino’s East (just off
Michigan Avenue), which
was started by two taxi
drivers and a friend in 1996;
and Pizzeria Ora. All offer
takeouts, and some take
orders online.
If you have an early-morning meeting, consider grabbing a Chicago brunch to
keep you going. The House
of Blues (see opposite)
offers an award-winning
Gospel Brunch with live
music accompanying the
all-you-can-eat Southernstyle buffet. Or try Lou
Mitchell’s all-day breakfast,
an 83-year-old Chicago
institution featuring homemade pastries and famous
omelettes. If beer is more
your thing, Goose Island
Brew Pub in Lincoln Park
offers a chance to sample
locally brewed beers and
visit the brewery – or you
can catch up on your
emails with free wireless
internet access.
Gene & Georgetti: 500 N. Franklin
St., (312) 527-3718
Gibson’s Bar & Steakhouse: 1028 N.
Rush St., (312) 266-8999
Tavern on the Rush: 1031 N. Rush
St., (312) 664-9600
D’Agostino’s Pizza and Pub: 752 N.
Ogden St., (312) 850-3247
Gino’s East: 633 N. Wells St., (312)
943-1124
Pizzeria Ora: 545 N. LaSalle St.
(312) 464-1872
House of Blues: 329 N. Dearborn
St., (312) 923-2000
Lou Mitchell’s: 565 W. Jackson Blvd.,
(312) 939-3111
Goose Island Brew Pub: 1800 N.
Clybourn St., (312) 915 0071
In a hurry?
Haute
cuisine
Truly haute in all senses of the
word is the Signature Room,
on the 95th floor of the John
Hancock Center, which offers
contemporary American cuisine and has a cellar with 250
wines from around the world.
You will find many other
restaurants offering top-notch
steak, ribs and American food,
especially along the
Magnificent Mile – or if you
fancy something lighter try
the Devon Seafood Grill, with
market-fresh fish from the
Pacific and Atlantic Oceans.
Named restaurant of the year
by the Chicago Sun-Times,
onesixtyblue is co-owned by
Michael Jordan. It offers modern, sophisticated food and is
located near the United
Center. Also for sports fans,
Harry Caray’s – named after
the late Hall of Fame baseball
announcer – is officially designated the “Home Plate” of the
Chicago Cubs.
Signature Room: 875 N. Michigan
Av., (312) 787-9596
Devon Seafood Grill: 39 E. Chicago
Av., (312) 440-8660
onesixtyblue: 1440 W. Randolph St.,
(312) 850-0303
Harry Caray’s: 33 W. Kinzie St.,
(312) 828-0966
Gods and
gauchos
Chicago’s immigrant communities have contributed
much to the city’s wideranging cuisine, so why not
celebrate the international
flavor of the INTA Annual
Meeting by tyring something
new? Two styles that are
well represented in Chicago
are Greek and Brazilian.
Greektown is west of downtown, between Washington
and Van Buren on Halsted
St., and is studded with speciality restaurants with
names such as Athena,
Parthenon and Greek
Islands. Roditys has offered
an extensive, good-value
menu since 1973. For
authentic gaucho-style eating, try a Brazilian restaurant such as the well-rated
Fogo de Chão or Brazzaz.
Roditys: 222 S. Halsted, (312)
454-0800
Fogo de Chão: 661 N. LaSalle St,
(312) 932-9330
Brazzaz: 539 N. Dearborn St., (312)
595-9000
However busy you are during the INTA Annual Meeting, you will have time to grab a VIENNA BEEF hot dog from a stand or at a sports
event. Created by Austria-Hungarian immigrants Emil Reichel and Sam Ladany in 1893, VIENNA BEEF hot dogs are still made to the same recipe over 100
years on. An authentic Chicago-style VIENNA BEEF hot dog is topped with yellow mustard, bright green relish, onions, tomato wedges, pickle spear, sport
peppers and a dash of celery salt served in a steamed poppyseed bun. The company made 250 million hot dogs last year and owns the World Record for the
longest hot dog ever (37 feet, 2 inches).
10
www.managingip.com
CITY GUIDE: BLUES
Discover the House of Blues
Nicholas Pettifer invites you to try out one of Chicago’s famous music venues.
A
t 329 North Dearbon, Marina City
sits Chicago’s House of Blues.
Whether you want to eat a meal,
watch a band or just drink a few
beers in atmospheric surroundings, the
House of Blues is a popular place to be.
You are just as likely to bump into a blues
legend at the bar as you are to catch a set
by bands or popstars who wish to add an
element of authenticity and credibility to
their tours. Artists lined up for the coming
months include Norah Jones, Elvis
Costello, Joss Stone and Joan Armatrading.
Jazz, gospel, Dixieland, blues and hiphop all have strong links to the Windy
City. From the piano riffs of Big Maceo
Merriweather to the chart topping beats
of Kanye West, “Chi-town” has been integral to the development of American
music and it is no surprise to find a House
of Blues here.
However, there is no larger brother to
the city (bar Jake and Elwood) than
Muddy Waters. He may have been born in
Mississippi, but Waters moved to Illinois
in 1943 and is now perceived by many as
the father of Chicago blues.
Aside from his music, it is well known
that Waters was an excellent southern style
cook. According to his website, “he often
entertained friends and family at his suburban Chicago home and it was certain that
he would be in his kitchen preparing a
feast to keep his guests satisfied.”
Southern food goes hand in hand with
the spirit of the blues and it is therefore an
It is hardly a surprise that many people
flock to the restaurant and attached bar.
On top of the first rate music on offer, the
restaurant’s excellent menu caters for those
with a taste for the south. Naturally
seafood, chicken and ribs are high on the
agenda, but all your other favorites are
cooked to give the feeling they have been
made from scratch. This is especially the
case on the starter menu where options
from the Stock Pot come highly recommended.
The venue’s humbly titled Music Hall is
modelled on the Estavovski Opera House
in Prague. But the décor is not entirely
eastern European. Indeed, the themes of
different areas are as diverse as the bands
that play the venue today. Gothic design is
mixed with East Indian themes and
Moroccan undertones fuse with Asian
aspects and, of course, styles from the
southern U.S. states.
This hodgepodge of cultural influences
blends well to create a surprisingly homely atmosphere, where what hangs on the
wall is just as interesting as the music
played, the food served or the drinks
poured.
essential addition to the music at the
House of Blues. The restaurant and the
main stage are separated, but they are by
no means mutually exclusive. Indeed,
music spills into the restaurant where live
blues is performed on the Back Porch Stage
every night at 9:00 p.m. Jessica Yell of the
House of Blues explains that “there is a
cover charge of $7 at the bar and most
people on hectic business trips love to
relax and watch an authentic Chicago
blues band.”
If you want to make a reservation at the
restaurant, call 312.923.2000 and then
select option two. The House of Blues can
be found at 329 North Dearborn, Marina
City, Chicago and there is valet parking
available. Visit www.hob.com for directions and further details.
www.managingip.com
11
FEATURE: COUNTERFEITING
Fighting the trade in fakes
In corporate board rooms and government agencies around the world, the problem of counterfeiting is being taken more
seriously than ever. Emma Barraclough looks at how industry and governments are responding to the challenge.
C
ounterfeiting is a trademark owner’s bad dream.
Counterfeiters pay little or no taxes, rarely have to
worry about corporate responsibility, and, worse still,
they offer cut-price products by free-riding off legitimate IP owners’ brand-building efforts and R&D dollars.
But while the problem is becoming more pernicious,
trademark owners are becoming ever more sophisticated
in fighting back. In January, hundreds of IP counsel, CEOs
and officials from national and intergovernmental enforcement agencies met in Geneva for the Third Global
Congress on Combating Counterfeiting and Piracy to
share ideas about how to tackle the problem.
John Dryden, deputy director of science, technology
and industry at the OECD, told the Congress that preliminary research by the organization estimates that the value
of counterfeit and pirated goods traded internationally in
2004 was US$176 billion. This number exceeds the gross
national product of entire economies such as Argentina
(US$173 billion), Ireland (US$167 billion), Israel (US$129
billion) and Venezuela (US$128 billion). Dryden said that
the latest OECD estimates, which are expected to be
released in a report later this year, exclude fakes made and
consumed within national borders, do not include the
prices charged to final purchasers and do not include the
costs of digital piracy.
But for those companies that make fighting fakes a priority, the situation is not all bad. Many pharmaceutical
companies are investing time and money in developing
sophisticated bar-coding technology that will allow pharmacists and consumers to validate the authenticity of
products; Louis Vuitton has waged a concerted campaign
in a number of countries to make commercial landlords
liable for products sold by their tenants that infringe the
luxury goods company’s trademarks; and Burberry, the
luxury goods maker, has put resources into tackling online
sales of counterfeits through websites, a policy that has
helped it track down the criminal syndicates behind the
individual sellers.
There are also simpler ways that IP owners can help to
protect themselves from the trade in counterfeits, particularly by working closely with Customs officials around
the world. That means that they have to ensure that they
understand the rules, says Jenni Rutter, partner with
Baker & McKenzie and a panelist in the Industry
Breakout Session IW01 (Pharmaceuticals and Healthcare
– Recent Developments in Anticounterfeiting). “It is
important that companies have a joined-up strategy,” she
says. In the session she will explain how Customs authorities in EU Member States apply the EU Customs
Regulation differently, particularly when it comes to the
communication deadlines they require trademark owners
to meet. The Regulation was designed to allow brand
owners to be able to write to an importer whose goods
have been stopped by Customs, inviting him to agree that
the goods be destroyed. That way they could avoid an
expensive lawsuit. But not all member states have imple-
RECENT EFFORTS TO CRACK DOWN ON THE COUNTERFEITERS
Around the world, trademark owners are urging governments to do more to fight fakes. In many countries the authorities are
responding. Here are some examples:
Argentina
The Customs Authority set up a Registry
of Intellectual Property Rights in April
that will allow trademark owners to register their trademarks at Customs and
receive notice of any imports or exports
of goods marked with those trademarks.
China
The Supreme People’s Court and the
Supreme People’s Procuratorate have
agreed on new rules that should make it
easier to prosecute infringers under the
criminal law. The revised Judicial
Interpretation will lower the criminal
prosecution threshold in copyright
infringement cases and increase the
level of penalties that judges can impose
in IP cases. The rules took effect on
April 5. One day earlier, China Customs
issued a notice dealing with confiscated
infringing goods. It says that if the if the
infringing marks cannot be removed
from the product entirely, then the
goods must be destroyed rather than
being auctioned off. In addition, rights
holders must be notified.
Europe
The European Commission has proposed
mented the rules and so it
can be tricky for brand owners to know when they may
be required to follow additional procedures. “It is very
important that brand owners
understand how member
states deal with the situation,” says Rutter.
In another session, CW01
– A Cryin’ Shame –
Counterfeit and Gray Market
Goods, practitioners, inhouse counsel and law
enforcement officials from
Europe and the United States
will discuss ways that brand
owners can make the most
effective use of Customs rules
to stop fake goods as well as
parallel imports from reaching their key markets.
PRELIMINARY HIGHLIGHTS OF THE OECD REPORT
The OECD is conducting a study into the economic impacts of counterfeiting and piracy. The full
report is expected to be published later this year, but preliminary findings were released in
January. Some of the highlights are:
12
•
The scope of products being counterfeited and pirated is broad and expanding, with a notable
expansion form luxury to everyday products.
•
Textile products are the most commonly infringed goods, according to Customs data, followed
by machinery and equipment.
•
27 out of the 30 OECD countries were identified as sources of counterfeit and pirated products
(only Iceland, Ireland and Sweden were not).
•
Close to 60 percent of seizures originate from China, Thailand, Hong Kong, Korea and
Malaysia.
•
Consumption patterns vary: for example, the Middle East is an important market for automotive parts, while Africa is a major destination for counterfeit drugs.
•
Over a third of respondents indicated a link with criminal networks and organized crime.
•
Counterfeit and pirated items traded internationally account for about US$176 billion, or about
2.4 percent of world trade in manufactures. This figures does not include fakes produced and
consumed within economies or the higher prices charged to final purchasers, nor does it
include digital piracy. This figure is higher than the GDP of Ireland.
www.managingip.com
a directive aimed at harmonizing rules
on the criminalization of IP infringement
across Europe. It is now being considered by the European Parliament and
member states. In March, the Legal
Affairs Committee of the European
Parliament gave its initial backing to the
plans, voting to introduce fines of at
least €300,000 and four years’ imprisonment in serious cases of breaches of
IP rights and €100,000 in minor cases.
The Committee also supported proposals to set up so-called Joint
Investigation Teams that would allow IP
owners to take part in the investigations, alongside the police.
The United States and the EU agreed an
IPR Action Strategy on Enforcement in
June 2006, which established closer
Customs cooperation, including more
data sharing, joint border enforcement
actions, joint enforcement in third countries and the creation of joint networks
of EU and U.S. diplomats in third countries to deal with IP protection.
United Kingdom
On April 6, 2007, Trading Standards officials were given the power to enforce UK
copyright law and the right to make test
purchases, enter premises and inspect and
seize goods and documents. “There’ll be
an additional 4,500 pairs of Trading
Standards eyes watching counterfeiters
and pirates,” said Trade and Industry
Minister Malcolm Wicks. “This will mean
more surprise raids at markets and boot
sales, more intelligence, more prosecutions
and more criminals locked up. IP criminals
should know that the UK is not a safe
place. Their risk of 10 years’ imprisonment
and unlimited fines is very real and from
this date forward a markedly higher risk.”
United States
The Stop Counterfeiting in Manufactured
Goods Act, H.R. 32 was enacted in March
2006. The law bans the trafficking of
counterfeit labels, emblems, containers or
similar labeling components that may be
used to facilitate counterfeiting; provides
for forfeiture of articles bearing or consisting of a counterfeit mark and proceeds of
any property derived from proceeds of, or
used in the commission of, a violation;
expands the definition of “trafficking” for
certain counterfeiting crimes and clarifies
that trafficking in counterfeit goods or
labels includes possession with intent to
traffic in such items.
LIU, SHEN & ASSO CIATES
Founded in 1993, Liu, Shen & Associates is a law
firm and also a patent and trademark agency
specializing in intellectual property and related
laws. The firm’s practice focuses on filing and
prosecuting patent applications, registering
trademarks, legal counseling on all phases of
intellectual property, and enforcement of
intellectual property including litigation.
Liu, Shen & Associates now has a staff numbering
around 270, which includes 28 attorneys at law
and 170 patent attorneys and patent engineers
with expertise that covers almost all technical
fields.
Serving thousands of clients including numerous
multinational corporations and world famous
brand owners, Liu, Shen & Associates has grown to be one of the largest
law firms and a leading intellectual property firm in China. The firm’s
well-received reputation around the world has been built on years of
great efforts to provide high quality services by the firm’s hundreds of
experienced professionals and well trained staff, and the firm will
continue its commitment to excellence in the years to come.
LIU, SHEN & ASSO CIATES
Hanhai Plaza (1+1 Plaza), 10th Floor, 10 Caihefang Road,
Haidian District, Beijing 100080, China
Tel: +86 10 6268 1616 Fax: +86 10 6268 1818
Email: [email protected] Website: www.liu-shen.com
INTA DAILY NEWS
www.managingip.com
13
FEATURE: SURVEY EVIDENCE
The science of surveys
The use of survey evidence in litigation is becoming more common – but also more complicated. Shahnaz
Mahmud and James Nurton preview today’s session on the use of surveys and profile consultant Gerald
Ford, whose business carries out consumer studies.
O
ne of the changes introduced in the U.S.
Trademark Dilution Revision Act last year made it
possible to file claims based on the “likelihood of
dilution” rather than “actual dilution.” Among
other things, this change could lead to greater prominence
for surveys in trademark litigation, as owners of famous
brands use surveys to prove that consumers associate
allegedly diluting marks with famous marks. If so, it will
provide a further boost for the use of survey evidence in
trademark cases, which has soared over the
past 30 years.
Surveys only began to be widely used in
U.S. litigation in the late 1970s, but since
then they have become crucial to many
trademark and other cases. According to
Gerald Ford, a partner in the marketing
research and consulting firm of Ford Bubala
& Associates who has reviewed a wide
range of federal opinions, in the period
1946-1980 there were just 18 surveys
offered in reported cases. From 1961 to
1980 there were 193 surveys offered, and
from 1981 to January 2007 there were
1,110.
The survey man
Ford is taking part in today’s session “The
Survey Blues: Litigation Survey Errors
Causing Exclusion or Reduced Weight.” He
first became involved in surveys in 1972,
shortly after beginning his teaching career at
California State University, Long Beach, in
the School of Business Administration,
where he focused on marketing. A student
approached him after class one day and said
he had a friend who was a lawyer who was
looking for a marketing expert to add some
insight in a case he was working on. That
friend was Robert Lyon, of counsel at law
firm Jeffer, Mangels, Butler & Marmaro. “If
it were not for that meeting with Bob Lyon
back in 1972, I would not be here today,”
says Ford.
“This was before survey evidence was
really being submitted as evidence to the
courts. During that meeting, Bob told me he
believed survey evidence was going to be the
next great change and he wanted to be in on
the ground floor,” he adds. This made an
impression on Ford and three years later he
launched a consulting business with two
partners, Dr. Annabelle Sartore and Stephen
Bubala. Part of the business focused, as it
does today, on surveys being used in litigation while another part specializes in commercial work (typically assisting a client
with brand positioning and competitive
analysis).
At this time, Ford also developed an
interest in trademarks. “Trademarks are the
love of my life,” he says, adding that it’s
because of trademarks that he’s had a “wonderful life” working in this field. So, when it
comes to surveys, those relating to trademarks are his favorite: he says it’s always a
surprise to learn what people do and don’t
believe. “A lot of the focus of our research
in the litigation area is on whether or not a
consumer may be confused by an infringing
brand,” he says.
Battle of the Calvins
A recent example of a case in which a survey
was a vital tool involved Calvin Klein, the
famous fashion house, and The Calvin
Clothing Company. Calvin Clothing had a
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federal trademark registration for CALVIN for boys clothing dating back to the 1930s. Calvin Klein developed his
brand of clothing in the 1960s, and it has since turned into
a major label. But Calvin Clothing sought to extend its
trademark into men’s and women’s fashions. In a case in
the Southern District of New York last year, Calvin Klein
presented consumer research evidence which helped the
court decide that allowing the extension of the CALVIN
brand would dilute Calvin Klein’s rights. Judge Rakoff of
the Southern District said that Calvin Clothing was too
late in its attempt to expand, and should have exercised its
right for expansion much earlier.
Ford says there are many such examples where surveys
have served an important role in a case, particularly where
false advertising is concerned. “Providing consumer data
that clearly shows confusion is a powerful tool,” he says.
Survey evidence is particularly important in determining
whether there is a likelihood of confusion, which may be
FEATURE: SURVEY EVIDENCE
difficult to assess by other means. But surveys have not
always been widely used.
Turning point
The late 1970s was when surveys really got going. One of
the first trademark cases in which survey evidence was
offered was between Union Carbide and Ever Ready Light
Company and concerned the EVER READY mark, owned
by Union Carbide. The company sued Ever Ready Light
Company alleging that it was manufacturing light bulbs
and placing the EVER READY trademark on them. A survey of consumers showed that they were clearly confused
as to the mark’s ownership. Says Ford: “The case relied
heavily on the survey to determine infringement.” The survey was accepted as admissible by the U.S. Court of
Appeals for the Seventh Circuit, which laid the ground
rules as to how surveys should be conducted – such as that
questions and the results of a preliminary survey should be
submitted to the court for a ruling on admissibility.
In 1984, the Seventh Circuit again addressed the role of
survey evidence, in a dispute between Piper Aircraft
Corporation and Wag-Aero, Inc. over the use of Piper’s
trademark rights. Piper had used surveys of owners of private planes to help establish likelihood of confusion but
Wag-Aero had objected to the evidence, saying that the
interviews constituted an improper survey universe and
that the results were hearsay. But the district court accepted the evidence, with some caveats regarding the credibility of the interviewers. The Seventh Circuit agreed, saying:
“We believe that the universe employed by Piper is sufficiently precise to warrant the district court’s finding of
admissibility … Although plaintiff could have restricted
the universe of the survey further, nothing compels it to
have done so.”
The year 1993 was the major turning point for survey
evidence and all evidence developed or presented by
experts. The Supreme Court addressed the admissibility of
expert evidence in a case between Jason Daubert and
Merrell Dow Pharmaceuticals. Daubert was one of many
children born with serious birth defects after his mother
had taken Bendectin, an anti-nausea drug made by Merrell
Dow, during pregnancy. Merrell Dow sought summary
judgment claiming its expert documents did not demon-
strate a link between Bendectin and the birth defects, while
the Daubert family submitted its own expert evidence,
based on in vitro and in vivo animal studies, pharmacological studies, and re-analysis of other published studies. The
district court granted summary judgment for Merrell Dow,
and the Ninth Circuit upheld the ruling, saying that the
plaintiffs’ submitted evidence had not yet been accepted as
reliable by scientists who had had an opportunity to closely examine and verify the methods.
In its ruling in Daubert, the Supreme Court said that
judges should act as gatekeepers, and only allow as evidence what is scientifically valid and pertinent to the case.
The case led to so-called Daubert motions, in which judges
decide whether the testimony of expert witnesses is relevant and reliable – before that testimony is presented to a
jury. The case also set out five questions that should be
asked before any new technique is accepted as admissible
evidence in court.
Ford says that the Daubert ruling had a significant
impact not just on the use of expert witnesses, but also on
surveys: “I think what has been made clear is that the
Supreme Court decision cemented the fact that the quality
of survey evidence will affect its admissibility.”
ASKING THE RIGHT QUESTIONS
The following are five “general observations” for judges to
ask, according to the Supreme Court in Daubert:
■ “a key question to be answered in determining whether
a theory or technique is scientific knowledge that will
assist the trier of fact will be whether it can be (and has
been) tested”
■ “[a]nother pertinent consideration is whether the theory
or technique has been subjected to peer review and
publication”
■ “in the case of a particular scientific technique, the
court ordinarily should consider the known or potential
rate of error”
■ “the existence and maintenance of standards controlling
the technique’s operation”
■ “‘general acceptance’ can yet have a bearing on the
inquiry”
More scientific
Since Daubert, trademark surveys have become more scientific, in order to meet the relevance and reliability
requirements, says Ford: “Today, as opposed to 30 years
ago, they are designed much like a pharmaceutical drug
test. Half of the consumers are assigned to a test cell
(which contains the alleged infringing trademark) and the
other half is assigned to the control cell (which contains a
non-infringing trademark) and represents the placebo part
of the test. This one contains the name that has caused
confusion for some.”
For example, he explains: “Our methodologies would
include Random Digit Dial (RDD), which involves conducting surveys over the telephone. We would also employ the
use of shopping center intercept surveys. This involves hiring a professional interviewing services group and asking
them to go to shopping centers across the country. They
would screen the public and once a person who hit a particular demographic is found, that person would be invited to
go to a private room to participate in a qualified interview.”
Such surveys are almost always done face-to-face or on
the telephone, although the Internet presents new opportunities for survey evidence. But Ford believes it will take
time before Internet surveys are widely accepted in court.
He points out that even today only 70% of the U.S. population uses the Internet. That means Internet surveys have
automatically lost 30% of the population, making it harder for them to claim to be accurate. Moreover, those who
use the Internet tend to have higher incomes and a better
education. He doesn’t rule out Internet surveys completely,
though. “I do think that Internet surveys will be an important factor in the future. The coverage allows for easy
access and can be done at a lower cost. But there are clearly issues that need to be worked on,” says Ford.
Today’s panel will address these topics and others relating to the use of surveys. It will be moderated by Paul
Reidl, associate general counsel at E & J Gallo Winery.
The other panelists are Jerre Swann, an IP partner at
Kilpatrick Stockton, and Shari Seidman Diamond, a professor at Northwestern University School of Law. Swann
will examine state-of-the-art survey evidence of today and
tomorrow and Diamond will discuss what the future holds
for survey evidence.
www.managingip.com
15
FEATURE: INTERNET
The Internet challenge
The rise of the Internet has created extraordinary marketing opportunities for companies, and many challenges for trademark
lawyers. Emma Barraclough explains more.
T
he Internet has revolutionized the way that companies do business, from allowing them to sell goods
online and bring their brands into consumer living
rooms and offices in a way unimaginable even 10
years ago, to enabling them to find out more than ever
about the people who buy their products. But while sales
and marketing staff are learning how to exploit the opportunities of e-commerce and pay-per-click advertising,
lawyers are facing the challenges of the darker side of the
Internet: taking on the cybersquatters, navigating their
way around the expanding, and potentially confusing,
domain name maze and dealing with rivals who use your
company’s trademarks to direct Internet surfers to their
company’s website. And the bad news for trademark owners is that some of the problems may get worse before they
get better.
Taking on the cybersquatters
Cybersquatting, for example, is on the rise, according to
figures from the World Intellectual Property Organization.
WIPO received more complaints about cybersquatters in
2006 than in any of the previous five years, prompting
calls for policy makers to consider how to respond to the
problem.
Last year 1,823 complaints alleging cybersquatting
relating to generic top-level domains (gTLDs) and country
code top-level domains (ccTLDs) were filed with WIPO’s
Arbitration and Mediation Center. This is the highest number of cybersquatting cases handled by the IP organization
since 2000 and a 25 percent rise on the number of cases
filed in 2005.
So what is causing the rise? WIPO blames a number of
factors. These include the effects of the use of computer
software to register expired domain names automatically
16
www.managingip.com
and redirect them to pay-per-click portal sites, the five-day
add-grace period (which allows refunds of registration fees
when domain names are returned within five days of registration – and gives rise to the practice of domain name
tasting), the proliferation of new registrars and the establishment of new domains. All of these have created greater
opportunities for the mass, often anonymous, registration
of domain names without specific consideration of thirdparty IP rights, says WIPO.
Many registrations are now made anonymously on a
Number of WIPO UDRP cases filed for TLDs
160
150
140
130
120
110
100
90
80
70
60
50
40
30
20
10
0
Source: WIPO
2002
2003
2004
2005
2006
serial basis. Traditionally, cybersquatting involved the registration of domain names by individuals seeking to sell the
so-called squatted domain name to the genuine rights
owner. But recently, domainers have been able to make
money from the large-scale automated registration of
domain names. They acquire domain name portfolios, buy
and sell domain names, and park domain names, claiming
a big share of the 100 million-plus domain names that are
now registered.
“Recent developments in the domain name registration system have fostered practices which threaten the
interests of trademark owners and cause consumer confusion,” says Francis Gurry, WIPO deputy director general. “Practices such as domain name tasting risk turning the domain name system into a mostly speculative
market.”
And he says that the speed at which domain names
change hands and the difficulty of tracking such mass
automated registrations have created new challenges for
trade mark owners wanting to pursue cybersquatters.
“With domain names becoming moving targets for rights
holders, due consideration should be given to concrete
policy responses,” he says.
In the meantime, Jonathan Cohen, a partner with
Shapiro Cohen in Canada who is speaking in the session
Internet Domain Names (CW03), says that trademark
owners must assess what action to take against cybersquatters depending on the circumstances of the attack.
“In principle, people being infringed by cyber pirates need
to consider taking some sort of action, whether that be
offensive or defensive. But it’s similar to when you set up a
domain name strategy in the first place: what action you
take depends on how much it will cost and what you want
to achieve.”
FEATURE: INTERNET
Since the Center launched the Uniform Domain Name
Dispute Resolution Policy (UDRP) in December 1999, it
has received more than 10,000 cases, covering 18,760 separate domain names (see chart). The cases filed with WIPO
suggest that cybersquatters follow news events and merger
activity closely. Last year, for example, 34 cases covering
64 domain names were filed with WIPO which were related in some form to the trademark TAMIFLU, used to treat
avian flu.
In addition, since registration of domain names in nonRoman scripts such as Arabic, Chinese, Cyrillic or Korean
became available a few years ago, the Center has received
60 cases involving such names, of which eight were
received last year. With the spreading of Internet connections and online commerce, the proportion of domain
name disputes of this type is expected to increase in the
future, says WIPO.
But while the number of cybersquatting cases and
domain name disputes may be on the rise, the good news
WHO’S EYEING YOUR NAME?
When it comes to domain name disputes, the United States
is leading the way. Not only do parties from the United
States top WIPO’s list of complainants in UDRP cases, they
are also more likely to be the respondent in any case relating to a disputed domain.
Most frequently named party countries in WIPO UDRP cases
Complainant
Respondent
1
United States
United States
2
France
United Kingdom
3
United Kingdom
China
4
Germany
Korea
5
Spain
Canada
6
Switzerland
Spain
7
Italy
France
8
Canada
Australia
9
Australia
Italy
10
The Netherlands
Russia
Source: WIPO
for trademark owners is that of the 7,328 gTLD cases
resolved, the Center has ordered the domain name to be
transferred to the complainant in 84 percent of cases.
Who to sue in cyberspace
The rise of the Internet has challenged traditional trademark rules, not least in the area of jurisdiction. The session CW03 Internet Domain Names starting at 11:45 a.m.
on Wednesday will consider this question in-depth. One
of the panelists, Dawn Osborne of Rouse & Co.
International’s London office, will look at the issue of
jurisdiction from a UK perspective. “Trademarks are territorial,” she says. “If there is no contract to consider, a
preliminary question in trademark cases is always
whether the trademark is registered or in the case of
unregistered trademarks protected in an EU member state,
which, in the absence of a contract, will usually govern
the choice of law.”
And Jonathan Cohen will consider some hidden jurisdiction issues. He says that if a company applies
for a ccTLD in one country, an entirely different country may have jurisdiction in the
event of any dispute because of a series of
contractual relationships between the
Internet governing body ICANN, the registrars and the ISPs.
Cohen says that the potentially negative
consequences of these types of often-overlooked jurisdictional issues make it essential
for trademark owners to formulate a clear
domain name policy for their business. If,
for example, you are a UK company that
exports to the rest of the European Union
and to the United States, and are looking to
sell your products in China, Cohen says you
need to consider which domain name you
need, and why, and which defensive ones
you might want to apply for as well.
“You should do an inventory and ask a
lot of questions. Part of the exercise is to
understand what the country code top-level
domains are all about, and how ICANN
rules operate. If your advisers don’t know,
you are less likely to be able to get good
advice.”
Also in the session, Dawn Osborne will
consider whether two parties, each of which
owns the same mark in a different EU member state, can coexist on the Internet. She
says that it appears to be becoming the general rule in Europe that in order to show
trademark infringement by a website, the
plaintiff must demonstrate a commercial
effect in the Member State concerned. “This
is a very good thing avoiding the blocking
effect that would be caused in other
Member States if an injunction could be
obtained in one member state based on mere
accessibility that would in effect lead to a
worldwide ban because it is very difficult to
control the geographical accessibility of web
sites on the Internet.”
She says it also avoids the possible stalemate situation if the two trademark owners
owning the same trademark in different
member states could succeed in getting
injunctions against the other in their home
countries. If this were the case, then it would
effectively mean that neither could use the
Internet as a form of distribution.
“It appears that if such a situation of two
different trademark owners owning the
same trademark in different member states
occurs then coexistence is achievable along
traditional lines that they will not actually
trade in each other’s territory.”
For more programs on the Internet, see
Monday’s session CM01 Muddy Waters:
Evolving Law and Policy in Internet
Advertising, examining keywords and
adware, and Monday’s workshop WM50
“Blues Clues”-Internet Investigations, an
interactive session where you will use your
laptop to learn new Internet research
strategies.
www.managingip.com
17
INTERVIEW: STEVEN STEGER, BRUNSWICK
A streamlined approach
Brunswick, which owns some of the oldest and most famous sports brands in the United States, is adopting a more
streamlined approach to protecting its trademarks. Steven Steger, deputy general counsel and chief IP counsel, tells Shahnaz
Mahmud how he is managing the process and why he is bringing more work in-house.
How long have you been with Brunswick?
I am deputy general counsel and chief IP
counsel for Brunswick. I joined Brunswick
in December 2003. Prior to joining the company, Brunswick had been one of my clients
when I was with Mayer Brown Rowe &
Maw in Chicago. Immediately prior to joining Brunswick, I was senior patent counsel
and global trademark counsel at Accenture.
I started my career with Brinks Hofer
Gilson & Lione, and moved to Mayer
Brown after two years with Brinks Hofer.
Brunswick is a Fortune 500 manufacturer of a variety of recreational products,
including boats, marine engines, fitness
equipment, and bowling and billiards
equipment. It is based in Lake Forest,
Illinois. In joining Brunswick, I was attracted by the opportunity to join a company
with such a fun and exciting product line.
I am a patent attorney by trade, with an
undergraduate degree in electrical engineering. When I was with Brinks Hofer, I
worked solely in the patent arena, primarily in litigation. At Mayer Brown, I was
more involved with broader intellectual
property counseling, particularly with
some of our smaller clients. It was in this
broader counseling that I began to deal
more with trademark matters. While
working for Accenture, I was responsible
for worldwide trademark matters, so the
transition to chief IP counsel at Brunswick
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was relatively smooth, including managing
the trademark portfolio. I enjoy working
on trademark issues – particularly in protecting our brands, which, in many ways,
are our most important assets.
Since I joined Brunswick, we have moved
to a more narrowly focused trademark registration program, wherein we focus our
registrations on our primary brands. While
our marketing strategies have not necessarily changed, this streamlined approach has
allowed us to more strongly protect our
most valuable brands. We are the leader in
most of the industries in which we participate, and have strong, recognizable brands,
such as SEA RAY, BOSTON WHALER,
BAYLINER and HATTERAS boats and
yachts, MERCURY MARINE engines,
LIFE FITNESS fitness equipment, and
BRUNSWICK bowling equipment, bowling
centers, and billiards equipment.
What is the business model?
Brunswick is a manufacturing company
that hosts a range of durable goods. It is
split by division. The company has billiards, bowling, fitness and marine divisions. Its marine engine company is
Brunswick’s primary division. I spend a
fair amount of time traveling throughout
the US, and Europe once in awhile, to our
local offices. At the moment, I’m being
kept pretty busy as we are selling off our
electronic marine GP navigators business
as it’s not core for us. I’m ensuring all of
the legalities are in proper order.
We also have a trademark paralegal at
corporate headquarters who is responsible
for filing applications for trademark registrations, coordinating clearance activity,
and docketing and maintaining our trademark portfolio throughout the world.
While we have historically relied heavily
on outside counsel to pay renewal fees and
annuities, we are in the process of bringing
much of this activity in-house. As we’re
moving more of the work in-house for
cost-efficiency purposes, we may look to
add another in-house lawyer this year. This
will also help as we expand and issues of
protection grow.
What is the history of the Brunswick brand?
Brunswick got its start in the billiards business in 1845 when a wealthy American
requested a table made for his home in the
state of Ohio. After that, word of mouth
spread and many requests translated into
the birth of the business. One of its early
manifestations was J.M. Brunswick
Billiard Manufacturing Company. But it
expanded pretty quickly.
Brunswick’s bowling division is foremost, as we got into the sport in 1890. We
now have roughly 100 bowling centers in
the U.S. The company manufactures the
full range of bowling gear, including bowling balls, shoes, lanes and pins. Brunswick
is one of the main drivers behind the automatic pin-setter, which it jointly created
with the Murray Corporation in 1954. We
launched the automatic pin-setter in 1956.
This actually catapulted bowling into
becoming a highly popular sport, also
causing company stock to skyrocket. Its
bowling business soon spread to Europe.
We got into the marine business in 1960,
with the acquisition of Owen Yachts and
Larson Boats. We only sell boats to dealers,
not directly to consumers. In the mid-80s,
Brunswick acquired the Sea Ray and the
Bay Liner, two of the best-known recreational boating models in existence. In the
INTERVIEW: STEVEN STEGER, BRUNSWICK
HISTORY OF THE BRAND
Brunswick Corporation is the oldest and largest manufacturer of recreational products in the
U.S. It was created by John Brunswick, who migrated to the United States from Switzerland
when he was 14. Brunswick landed in New York and took up several odd jobs, including
becoming an errand boy for a butcher. Later he moved to Pennsylvania where he took up a
four-year apprenticeship in a carriage shop. That apprenticeship was the foundation of the
family business he began in Cincinnati, Ohio after relocating there with his bride, Louisa
Greiner, in 1840.
Brunswick launched his woodworking shop in 1845, focusing on functional, high-quality
carriages. But he soon expanded the business into cabinetwork, tables and chairs. His
motto early on was: “If it is wood, we can make it, and we can make it better than anyone
else.”
By the mid-1840s, Brunswick’s business began to thrive.
The company crafted elaborate back bars to correspond to the billiards tables being sold to
taverns. Back bars covered the wall behind a bar serving functionally and decoratively at the
same time. These were considered status symbols and Brunswick soon began selling them
across the US and Canada.
The start of the 20th century saw Brunswick diversify further into tires for cars. This
replaced the bar fixtures once Prohibition began in 1920. The company also began to make
wood piano cases and phonograph cabinets. Because phonographs were in great demand,
Brunswick also began to manufacture its own line. This spawned its record label, which
housed such musicians as Duke Ellington, Cab Calloway and Benny Goodman. During World
War II, the company made wartime products, such as mortar shells, flares, assault boats, fuel
cells and floating mines.
mid-90s, we acquired the saltwater fishing
boat, the Boston Whaler which, as the legend goes, is “unsinkable.” In 1961, Life
Magazine featured photos of the boat being
sawed in half. The aftermath shots showed
the captain of the boat driving away with
only half of the boat. That acquisition was
a big coup. We now have 19 different boat
brands. Brunswick, in fact, is the biggest
recognized boat seller in the world.
Brunswick got into the fitness equipment industry in the late 1990s, purchasing Life Fitness, Hammer Strength and
ParaBody. In fact, these acquisitions turned
the company into the world’s largest manufacturer of high-end commercial and consumer fitness equipment.
There are a lot of other interesting
things tied to the Brunswick business history. For instance, Al Jolson (who became a
household name in 1927 after appearing in
the first talking picture, The Jazz Singer)
was once on the company board of directors and Duke Ellington used to be a part
of our now-defunct record label – as was
Cab Calloway. Brunswick also holds the
first patented rubber toilet seat from the
early 1900s.
What are the strengths and weaknesses of
the brand?
I really think the biggest strength of the
company is its history. This has led to
strong brands, and a strong following of
those brands everywhere. Brunswick has
very loyal customers. The Boston Whaler
boats have a huge following, for example.
I think one of its weaknesses is the
name association with certain geographic
places. Locations like New Brunswick,
Canada, and New Brunswick, New Jersey,
O.KAYODE & CO
www.okayode.com
How do you maintain control of the brands?
Because we have leading brands in each of
our industries, we do license the brands to
third parties for items such as apparel and
toys. We require approval over the quality
of any products being sold under our
brand names. We also require our licensees
to submit samples of the branded products, and closely police our marks. We
employ the use of watch services.
Do you protect any look-and-feel aspects
of the brand?
An interesting trademark registration we
have is on the shape of the Brunswick Gold
Crown billiards table, which we have been
selling in its current form since the 1960s.
We also have trademark registrations
around the world on the crown design
around the neck of our bowling pins, and
we own the trademark AIR HOCKEY for
use on air-powered table hockey games.
Since this interview was conducted,
Steven Steger has left Brunswick and
taken up the post of Vice President and
Chief Intellectual Property Officer for
Ygomi LLC
JACKSON, ETTI & EDU
Barristers & Solicitors, Patent & Trademark Agents
Barristers, Solicitors, Patent & Trademark Agents
1st Floor, 77 Awolowo Road S W Ikoyi, Lagos, Nigeria
Tel: 234 1 461 3120; 234 1 461 3121; 234 1 2707345 Fax: 234 1 4614003
E-mail: [email protected]; [email protected]
Contacts: Lara Kayode, Funke Beecroft
sometimes cause confusion as to who
owns the brands that we house.
Lagos office: RCO Court, 3-5 Sinari Daranijo Street, Victoria Island Annex, Lagos, Nigeria
Tel: +2341 4626841; +234 1 774 8012 Fax: +2341 2716889
Ghana office: No. 3 Emmause,2nd close, Akosombo House, Labone, Accra, Ghana
Email: sadelaniyan@jacksonettiandedu; [email protected]
www.jacksonettiandedu.com
We Provide Solutions on Demands.
LIU LEE & ASSOCIATES
Intellectual Property
Patent & Trademark Attorneys
The New Leader in China IP Service
Suite 25A01, 25/F., Hanwei Plaza
7 Guanghua Road, Beijing 100004, China
http://www.iplaw.cn
Telephone: (86) 10 6561 0048
Fax: (86) 10 6561 0646
Patents
Trademarks
Copyrights
License of Use
Agreements
Transfer of Technology
Trade Names
Health Registrations
Domain Names
Litigation
Bogota – Colombia
Phone: (57-1) 7442200
Fax: (57-1) 3214045
www.bc.com.co
www.managingip.com
19
INTERVIEW: CARRIE KNECHT, MOTOROLA
A driving force
Motorola has long represented innovation. Carrie Knecht, senior counsel for trademarks, tells Shahnaz
Mahmud how the company works closely with its global licensees to protect its brands in the rapidly
evolving telecoms industry.
How long have you been with Motorola?
I’ve been with Motorola for six years. Before
joining, I was an associate with Foley &
Lardner. I wanted to join Motorola because
you can truly see the future coming as the
technology is changing so quickly and we
are enmeshed deeply in it. Motorola’s law
department had a fantastic reputation; great
lawyers and good people, and that’s how it
has turned out to be. I was also attracted by
the fact that the company deals with a lot of
complex issues because, as I mentioned
before, of the technology. We have to
explain some of the new technology to the
examiners who may not have seen it before,
describing what it is and why it’s important.
I first became interested in trademarks
when I worked as a summer associate at
Dinsmore and Shohl in Cincinnati in 1988.
Linda Roesch, who is a partner at the firm,
gave me my first trademark project. I think
it was for Procter & Gamble. I really
enjoyed that project. When I started working for Foley & Lardner, I did both trademark and litigation work. I prefer trademarks because it’s more collaborative and
less confrontational. And I also enjoy the
creative aspects of trademark law, such as
playing with words and what they might
mean to consumers. Another thing I really
like about my job is that I get a global perspective. In addition to the United States, I
also deal with Europe and Asia.
What is the business model?
Motorola has three main business divisions.
The first is Mobile Devices. They make
mobile phones and accessories, such as wireless headsets. Then second is Networks and
Enterprise. This division includes secure,
mission-critical communications networks
for enterprise customers: for example, police
officers and firefighters who have a microphone attached to their shirts, or a computer on board their squad car. Enterprise communications includes the hand-held devices
that FEDEX delivery people carry and ask
you to sign. Connected Home is our third
division. They make cable television set-top
boxes, broadband networking equipment
and VOIP phones, as a few examples.
In terms of the trademark department, we
have two lawyers and two paralegals that
handle all of the divisions worldwide. We
rely heavily on outside counsel for searches,
20
www.managingip.com
DEVELOPMENT OF THE MOTOROLA BRAND
Motorola was founded in 1930 and is headquartered in Schaumberg, Illinois. The company’s name
was due to founder and president Paul Galvin, of Galvin Manufacturing Corporation, who was
preparing to introduce a new automobile radio and needed a brand that would leave an impression. Having combined “motor” and the popular word at the time of “ola,” Galvin felt he captured
the essence of sound in motion. Galvin and Elmer Wavering, who assisted in the design of the
radio, set out across the United States to show new dealers how to install their product.
Galvin recognized the need for a distribution network to make MOTOROLA radios accessible to
consumers. So, in 1934, his company made an agreement with BF Goodrich Company (which
sold rubber tires for cars) and car garages around the country to sell the MOTOROLA auto
radios (which could be done on credit). This created a strong reputation for the brand before
competitors hit the market.
But Galvin understood that a strong advertising campaign would further secure the MOTOROLA
brand. He placed adverts in magazines and on highway signs. Radio and film stars also
endorsed the product. He also made sure that in-store displays were placed prominently, giving
customers a chance to view and listen to the auto radio. Within a few years, the MOTOROLA
name was used on other products that extended into home entertainment and public safety.
These included a home entertainment radio, a two-way radio and a police cruiser radio receiver.
Because of Galvin’s canny sense for advertising, the MOTOROLA brand name was used so
much that he changed the name of the company in 1947. At the time, Galvin made this statement: “Our principal reason for making this change is looking to the future – and the greater
solidification of identification of who we are and what we have, the better we shall be known.”
prosecution and opposition. Having said
that, we do have corporate lawyers dedicated to each business unit in our global offices.
What is the history of the brand?
Motorola was first created in 1930 by Paul
Galvin, who was founder and president of
Galvin Manufacturing Corporation.
Galvin was searching for a distinctive
trademark to represent the company’s new
product, an automobile radio. Galvin
decided to use the word MOTOR to indicate motion and the suffix -OLA, to represent sound. Because it was marketed so
widely (as it was one of the first commercially successful automobile radios), people began referring to the company as
Motorola. The name of Galvin
Manufacturing Corporation was officially
changed to Motorola in 1947. To me,
Motorola is synonymous with high-end
communications and the future of communications.
What are the strengths and weaknesses of
the brand?
We have a great logo; it’s very visual and
people remember it. MOTOROLA definitely signifies high tech and “what’s coming next.” I think that’s the impression the
brand leaves with a person. But, as a result,
we get people trying to knock it off all the
time all over the world. We see people trying to register the brand for construction
services and restaurants – all kinds of silly
things, hoping we won’t notice.
How do you maintain control of the brand
in licensing?
We have very complex trademark licensing
standards built into our contracts with our
licensees. We work very closely with them
to approve every aspect of how their products (with our brand) get marketed. We
review each product. We even have someone from our design team provide input to
them. We have engineers dedicated to
working with the licensing team. They test
everything rigorously to ensure the quality
of the products is up to our standard.
Motorola invented the Six Sigma [Six
Sigma Quality Process in 1986], which
provides this rigorous measure.
Do you protect any look-and-feel aspects
of the brand?
We do, particularly through design patents
on the shapes of some of our products. For
instance, we would look to protect how a
keypad looks and operates. We are in the
midst of wrangling with NexTel on a sound
mark (the chirp sound). Marketers realize
that it’s not just sight that elicits an emotional response from the consumer. Taste and
smell have also been long traditions in leaving an impression, though sight and sound
are the most popular, in terms of marks.
How many countries do you protect the
trademarks in?
We’ve filed in pretty much every country
in the world. But what we do continuously is we update our registrations in each
country to include more products and
new technologies.
How has Motorola changed since you’ve
been there?
From the trademark perspective, we’ve gone
in and out of naming the phones; we’re back
into that now. I think the largest change for
the company as a whole was that we spun
off our semiconductor business to focus
more on our communications business.
Industry-wide, we’re seeing a lot of integration. In the past everything was separate; your cable TV, cell phones, land lines,
computers. But now, you can watch TV on
your cell phone. You can talk over the
Internet. You can take a video on your
phone and send it to someone’s desktop.
Voice, data and media are all converging.
And just look at ring tones. Ten years
ago ring tones didn’t even exist. Now, it’s a
huge business for the recording industry.
This convergence has boosted business for
the communications industry, particularly
those of us who deal with cell phones.
What other brands do you own?
What has been most challenging in
maintaining your brand in today’s global
environment?
We have a lot of other brands, like the
names of phones, such as PEBL and STARTAK. We also acquired Symbol
Technologies, a manufacturer and worldwide supplier of mobile data capture and
delivery equipment, at the end of last year,
so we will own all of their brands as well.
I would say counterfeiting is the single
biggest challenge. We invest a good deal of
resources to help diminish this problem.
For instance, we conduct raids and we
work with Customs to stop the import of
counterfeit goods. We take legal action
when possible.
INTA DAILY NEWS
DE SOLA PATE & BROWN
Attorneys & Counselors
Caracas, Venezuela
Intellectual property attorneys specializing in trademarks, patents,
copyrights, foreign investment, technology licensing, franchising,
trademark litigation and unfair competition.
Est. 1944
“Global Experience
brought to Venezuela”
Contact:
Irene De Sola ([email protected]) and/or
Richard N. Brown ([email protected])
www.desolapate.com
[email protected]
Tel. 58-212-7939898
Fax. 58-212-7939403
De Sola Pate & Brown
Attorneys & Counselors
Torre Domus, 16th Floor
Av. Abraham Lincoln
Sabana Grande
Caracas, Venezuela
Times change – brand remains
PATENTS TRADEMARKS ECUADOR & LATIN AMERICA
Reliable services for a fair fee
since 1922
Sojuzpatent offers the full range of services in all aspects of Intellectual Property
legal protection in Russia and abroad.
13, Bldg. 5 Myasnitskaya Str., 101000 Moscow, Russia.
Tel. +7 (495) 221-88-80/81 Fax. +7 (495) 221-88-85/86
www.sojuzpatent.com [email protected]
BERMEO & BERMEO LAW FIRM
Traditional Agents established in 1948
Email: [email protected] [email protected]
web: www.bermeolaw.com
World Trade Center Bldg. Tower B, 12th floor, P.O. BOX 17-12-881, Quito, Ecuador
Tel. 593 2 2545871 Fax: 593 2 2564620 and 2239333
Contacts
Angus Forsyth
Tel: (852) 2533 2543 Email: [email protected]
Lai Lam
Providing pragmatic and global solutions since 1978 Tel: (852) 2533 2545 Email: [email protected]
Our Intellectual Property service includes:
•
•
•
•
Trademarks, designs and patents
Opposition and cancellation proceedings
Intellectual property rights protection
Arranging customs seizures and enforcement
Head Office: 4/F & 5/F, Central Tower, No.28 Queen’s Road
Central, Hong Kong
China Office: Suite 1704, Citic Plaza, 233 Tian He N. Road,
Guangzhou 510613, China
www.sw-hk.com
www.managingip.com
21
FEATURE: INTERNATIONAL TRADEMARKS
Everything you always wanted to know
The expansion of the Madrid System to include 80 countries and the potential inclusion of India and Brazil means that it is no
longer an area that trademark owners and lawyers can afford to ignore. Peter Ollier looks at some of the issues that have
arisen over the last 12 months.
A
lthough widely used and increasing in popularity,
the Madrid System is complex. Of the 72 countries that are now members of the Protocol, 23
and the European Community belong only to that
treaty. The rest are also members of the Madrid
Agreement, signed in 1891, which adds another layer of
difficulty. And eight countries are members of the
Agreement but not the Protocol.
And that’s before you consider ambiguities in some of the
rules and the proposed amendments to fix these problems.
Today a concurrent session on the Madrid Protocol will give
an update on recent developments and look at the issues from
a U.S. and European perspective. But the panelists are also
keen to make the session interactive and encourage the audience to share their experiences. To that end participants will
be given a card when they arrive to can write down questions
anonymously for the moderator, R. Scott MacKendrick, a
partner of Ogilvy Renault, to ask the speakers.
“People are sometimes nervous about asking questions,” says Mark Holah, partner of Field Fisher
Waterhouse in London and a speaker at the session. The
idea is that attendees will feel emboldened to ask the questions that they might have been afraid to pose in person
when surrounded by their peers.
New members
Trademark lawyers from a number of new countries may
soon have to familiarize themselves with the intricacies of
the Madrid system. Israel will join later this year and some
other large countries are in the process of joining the
Protocol. At the end of January 2007, India announced its
intention to join, and Brazil’s government has signaled that
subject to Parliamentary approval it will join.
22
www.managingip.com
Agreement only
Protocol only
Agreement and Protocol
Total
The U.S.-Colombia free trade agreement has a clause
requiring Colombia to accede by January 1, 2009,
though the U.S. Congress has yet to ratify this treaty. At
present Cuba and Antigua-Barbuda are the only Latin
American or Caribbean countries that are members of
the Protocol. Further expansion is planned in Asia, where
19 countries are already members (see interview with
Ernesto Rubio page 24).
Matthijs Geuze, senior counselor at the office of the
8
23 (Including EC)
49
80
assistant director general for trademarks at WIPO,
explained that WIPO is also aiming to expand membership
in Africa and ensure that the four African countries that
are signed up to the Agreement only (Sudan, Egypt,
Algeria and Liberia) will join the Protocol.
Regulations
Once lawyers in these countries become familiar with the
system’s complications, they may then have to deal with a
FEATURE: INTERNATIONAL TRADEMARKS
about Madrid*
*but were afraid to ask
series of amendments, as WIPO looks to perform the near
impossible balancing act of improving and simplifying the
system while keeping all the signatories happy. A series of
proposals have been put forward that are “addressing
some important issues that need to be addressed,” according to Nadine Jacobson, partner of Fross Zelnick Lehrman
and Zissu.
The ultimate aim is to harmonize to the point where the
Agreement and the Protocol become one system, which
would make life much easier for trademark owners,
though the difficulties encountered at every stage of reform
mean that this is some way off. Trademark owners are not
yet sure that WIPO has found the right way forward.
Most controversy surrounds Article 9sexies of the
Protocol, known as the safeguard clause. It was designed
so that countries that had happily used the Madrid
Agreement for years (the Agreement was signed in 1891)
did not have to change their system when the Protocol was
signed in 1989. Paragraph one states: “Where, with regard
to a given international application or a given international registration, the Office of origin is the Office of a State
that is party to both this Protocol and the Madrid
(Stockholm) Agreement, the provisions of this Protocol
shall have no effect in the territory of any other State that
is also party to both this Protocol and the Madrid
(Stockholm) Agreement.”
Put simply, for those countries that belong to both the
Protocol and the Agreement, the rules of the Agreement
take precedence. The second paragraph states that a threequarters majority of the Assembly could repeal or restrict
the article 10 years after the Protocol entered into force.
This 10-year mark was reached in December 2005.
WIPO has set up a working group to review the safe-
guard clause. The group met in July 2005 and again in
June 2006, and in September of that year the Madrid
Assembly agreed to extend its mandate. It met again in
January of this year.
According to documents on WIPO’s website, the working group is considering a number of different options,
including repealing the safeguard clause together with
measures:
a) ensuring that the level of services provided by the
Offices of Contracting Parties to the Protocol is commensurate with the individual fees charged and the
length of the applicable refusal period, and
b) establishing more precise criteria and maximum levels
to be applied by Contracting Parties to the Protocol
when fixing the amounts of the individual fees they may
require.
The replacement conundrum
The working group is also considering the issue of replacement, dealt with in Article 4bis of the Agreement and
Protocol. This means that a mark that is the subject of a
national or regional registration in the Office of a
Contracting Party is deemed to be replaced by an international registration of the same mark. The office in whose
register the mark is recorded is required to note the international registration in its register. The office is also
required to notify the International Bureau of WIPO.
This seems fairly simple. But this procedure “hasn’t
been advertised or published anywhere,” according to
Mark Holah. This has led to a situation in which, in the
words of the working group’s latest document, “fundamental divergences appear to exist with regard to how
those provisions are interpreted.”
Some model procedures on how to implement replacement have been proposed, but the issue of different interpretations remains to be addressed. WIPO’s latest proposal (see interview with Ernesto Rubio, page 24) seems to be
to offer an open Internet forum on the issue in the hope of
building a consensus.
Successor states
Another new issue that has emerged this year is how to
deal with countries that break up. This was put to the test
when Montenegro declared independence on June 3, 2006.
Rule 39 of the regulations, which deals with this issue, was
amended to ensure that it applies to the Protocol as well as
to the Agreement. It states that a successor state whose territory was, before independence, a part of the Madrid
System has to deposit with the Director General a declaration of continuation that it will apply either the Agreement
or the Protocol.
On December 4, 2006, Montenegro declared that the
Agreement and the Protocol continue to be applicable in
Montenegro, and that it is possible to file a request for territorial extension to Montenegro. This test case could set a
precedent for when other new states, such as Kosovo,
establish themselves.
Specification of goods
Discussion will also touch on the issue of what happens to
specifications of goods on trademark application in different jurisdictions. WIPO follows the Nice Classification
system but in some countries, notably the United States,
national offices require that the description of goods be
very narrow and specific, resulting in a correspondingly
narrow international registration. These differences can
lead to refusals and notices of irregularity when trying to
extend your mark into different jurisdictions. The solution, according to Nadine Jacobson, is “to think about
how to specify in the beginning.”
With the increasing use and expansion of the Madrid
System, many more such queries are going to arise. Today’s
session today will aim to deal with the most fundamental
issues and, with the help of the question cards that will be
handed out at the start, to answer the queries that trademark owners have.
www.managingip.com
23
PROFILE: ERNESTO RUBIO, WIPO
Signing Singapore, managing Madrid
Ernesto Rubio, assistant director general of WIPO responsible for trademarks, spoke to Emma Barraclough about harmonization,
the growth of the Madrid system and which countries are the most likely to sign up next
It is just over one year since WIPO member states finalized the Singapore Treaty
on Trademarks (see box). What progress
has there been since?
The one-year period for countries to sign
the Treaty ended on March 27. More than
50 have already signed up, and that’s the
first indication – but a good one – that they
will accede. A number of countries are
going ahead with accession procedures and
Singapore itself has actually acceded. Now
we need another nine accessions for it to
come into force. We believe it is likely that
that will happen in a year or two from
now. That is actually quite quick by international standards, given that the accession process usually requires approval
from national legislatures.
Now that the Singapore Treaty has been
finalized, what areas of international
harmonization is WIPO looking at in the
area of trademarks?
There are a number of areas. First of all,
we are examining questions relating to
opposition procedures. There are a great
variety of systems used in different jurisdictions. Some countries provide for opposition procedures before registration, others allow for opposition after registration
(giving rise to a cancellation) and others
don’t provide for an opposition process at
all. We are also looking at the different
grounds for opposition that exist. WIPO’s
Standing Committee on the Law of
Trademarks, Industrial Designs and
Geographical Indications asked the
International Bureau to prepare a paper
looking at the different approaches. We
will present this to the Standing
Committee in May and then member states
will decide whether there are grounds to
attempt harmonization.
Secondly, we are looking at the representation of new types of trademarks. This
is somewhat related to the Singapore
Treaty. At the moment, different offices
have different requirements for the way in
which applicants represent nontraditional
marks such as smells, single colors, sounds,
and holograms. The Standing Committee
will look into the possibility of harmonizing the requirements that offices ask applicants to fulfill. The outcome of those discussions may be included in the regulations
of the Singapore Treaty.
24
www.managingip.com
The third issue we are looking at
relates to designs. This is an area where
the rules are very different around the
world. Some places have a registration
regime, some have a system of examination, sometimes designs are protected
under copyright law. There is a rather
gray area between three-dimensional
marks and designs. Some countries in the
Standing Committee have suggested that
the International Bureau look at formal
harmonization of designs, in the same
way that the Patent Law Treaty has harmonized formalities and procedures in
the area of patents and the Trademark
Treaty has done for trademarks. So the
question is whether we should have a
similar treaty dealing with procedures for
designs. The International Bureau is
preparing a paper identifying the questions to consider and a draft questionnaire to help us gather information on
what kind of systems exist.
The fourth area, which we will discuss
in the Standing Committee meeting in
May, relates to Article 6ter of the Paris
Convention, which prevents countries
from registering flags and other state
emblems as trademarks. The International
Bureau is preparing some guidelines on
this issue.
WIPO is also involved in discussions on
whether IP offices should be obliged to
provide applicants under the Madrid
System with a statement of grant of
protection that makes it clear whether
their mark will ultimately be protected.
What developments have there been on
this issue?
The Working Group on the Legal
Development of the Madrid System for
the International Registration of Marks
met in January in Geneva and will meet
again in May. There have been some proposals, especially from Australia, for
member states to provide additional services to applicants. Offices have been able
to issue a statement of grant of protection
since 2000, but it has only been on a voluntary basis. There are 15 offices that
issue them [Armenia, Australia, Benelux,
OHIM, Georgia, Hungary, Ireland,
Japan, Norway, Republic of Korea,
Singapore,
Sweden,
Syrian
Arab
Republic, Turkey and the UK]. It is some-
What recent developments have there
been relating to the Madrid System?
Statistics show a big growth in the number
of users (see box)
thing that is very useful for applicants for
an international registration. It is very
important for them to know as early as
possible whether their mark will be protected. We’re encouraging members to
issue the statements but Australia has
raised the possibility of gradually moving
towards making it compulsory. We’re
going to discuss it in May, but any decision will need to be approved by the
General Assembly because it would probably require an amendment to the regulations. This year may be too soon for that
to happen.
I think that there is a clear relationship
between international trademark protection and international trade. Companies
that file for international protection for
their marks are those that are ready to
move into export markets. It is quite significant that use by Italy and Spain has grown
so much. Asian countries are also taking a
bigger share. Five years ago they accounted for around 3 percent of filings but now
that figure is about 10 percent. It has
grown considerably but there is still room
for growth. I expect that trend to continue,
but it will happen faster when other Asian
countries join.
There are encouraging signs that India
will join, and we also hope that Indonesia,
Thailand and Pakistan will consider joining within the next two to five years. That
would make the system much more attractive to users. WIPO received a visit from
Indian officials in April with news about
plans to amend legislation to allow India
to join. At the administrative level we
know that they are taking steps to prepare
to join.
In relation to Brazil, we know that a
decision was taken at ministerial level
towards the end of 2006. We expect a
package of proposals to go to Congress
later this year. The IP Office has expressed
its support, as has the Federation of
Industries of the State of Sao Paulo. We’ve
also heard that Colombia will join, and
that should take effect on January 1, 2009.
The more countries that join, the more
attractive the system will be to users.
THE SINGAPORE TRADEMARK TREATY
In March 2006, WIPO member states met in Singapore to update the 10-year-old
Trademark Law Treaty. The new agreement says that IP offices can specify how they want
applicants to communicate with them, in anticipation that some countries might move
entirely to e-filing. WIPO member states also agreed to make the Treaty apply to all kinds
of marks. Although the Treaty does not envisage obliging states to accept nontraditional
marks, it sets out how an IP office should handle them, if it does accept them. The new
Treaty aims to simplify procedures for recording licenses, and trademark applicants in
jurisdictions that ratify the new Treaty will also benefit from new rules requiring IP offices
to relax any tough rules that they apply to IP owners who miss deadlines. WIPO members
also agreed to introduce compulsory relief measures for applicants who fail to get their
documents in on time. Rather than dismissing the application or canceling the trademark
registration, IP offices will have to offer either to extend the time limits, continue to
process the request or reinstate rights.
PROFILE: ERNESTO RUBIO, WIPO
What challenges does the growing use of
the Madrid system create for WIPO?
TRADEMARK OWNERS MOVE TO MADRID
I think we have adapted well. Today there
is no backlog in processing applications. By
the end of 2006 it was taking, on average,
five weeks from receiving the application to
notifying the contracting parties. We intend
to make it even quicker, but I think that’s
already a very reasonable period.
We have taken two measures recently to
help provide better services. On January 1,
2007, we put in place the Romarin database
so that applicants can now check on the status of their application free of charge. We
have also started to offer an electronic
renewal service and now we are looking at
new services we can provide. For example,
we are going to launch an open forum later
this year on the subject of replacement that
Figures released by WIPO in March show that
more trademark owners than ever are using
the system to protect their marks. A record
36,471 international trademark applications
were received in 2006, an 8.6 percent
increase on the year before. Applicants from
Germany led the list of top filers, for the 14th
consecutive year, followed by users in France
and the United States. Other countries saw a
significant growth in the number of applications originating from their countries. Italy,
for example, saw a 25.5 percent increase,
applications originating in Spain rose by 17.2
percent and Australia accounted for a 29.1
percent increase with 1,100 applications.
China was the most designated country in
international trademark applications.
Biggest users of the Madrid trademark
registration system
Country
Number of
Percentage of
applications total applications
under Madrid
Germany
6,552
18%
France
3,896
10.7%
United States
3,148
8.6%
Italy
3,086
8.5%
Benelux
2,784
7.6%
Switzerland
2,468
6.8%
United Kingdom
1,489
4.1%
China
1,328
3.6%
Spain
1,215
3.3%
Austria
1,197
3.3%
Source: WIPO
will last for around six months. This relates
to a situation where a trademark owner has
a number of national registrations and then
his home country joins the Madrid System.
The Treaty provides that the national registrations are replaced by an international
registration. It is a very useful provision for
those countries that joined recently, but we
are looking at ways of making the system
work better. In 2006 we issued model provisions on replacement that deal with
recording and notification issues. But on
some of the other issues relating to relevant
dates for the replacement, member states
interpret the rules differently. We have identified that this is an issue for some users. So
we are going to have a forum on the
Internet where users can give us their views
on how the system should work.
INTA Daily News
Announcements
The Whois Subcommittee of INTA’s Internet
Committee invites you to attend a special session:
Whois Briefing
Update on ICANN’s Whois initiatives, their negative impact on brand owners and how to make
your voice heard.
This briefing will be conducted twice for your convenience:
Tuesday, May 1:
10:00 a.m. – 11:00 a.m. – Room E352
2:00 p.m. – 3:00 p.m. – Room E351
The Whois domain name database presently contains each registrant’s identification and contact
information as well as contact information for
each domain name’s administrative and technical
contacts. This information is readily available to
any Internet user and is routinely relied upon for
enforcing intellectual property rights, verifying
important business information, and identifying
the origin of illegitimate activities, such as phishing schemes and spam.
Whois information is on the verge of being
stripped down to little more than a bare technical
contact who will have no legally enforceable obligation to pass on correspondence to the registrant, and who is unlikely to be of assistance in
effectively protecting and enforcing rights involving online matters. Last year, the Whois Task
Force of ICANN (the body charged with setting
Internet policy) unfortunately began taking steps
toward significantly limiting the information available through the Whois domain name database.
At these upcoming briefing sessions during the
INTA Annual Meeting, INTA’s Whois Subcommittee
will provide an update on this process and will
explain how brand owners can make a difference.
INTA Anticounterfeiting Exhibit
Today’s Speakers
10:00 a.m. Alina Halloran – Director of Client
Services – OpSec Security (United
States)
10:30 a.m. Donna Frazier Schmitt – Senior
Trademark Counsel – Eveready Battery
Company (United States)
Dr. Roberto J. Porcel – Partner –
Porcel & Cabo Law Firm (Argentina)
Jason M. Drangel – Partner – Epstein
Drangel Bazerman & James (United
States)
11:00a.m. Hoda Barakat – Partner – Al-Tamimi &
Company (United Arab Emirates)
11:30 a.m. Dr. Virginia Cervieri – Lawyer – Cikato
Lawyers (Uruguay)
Mark N. Mutterperl – Partner –
Fulbright & Jaworski LLP (United
States)
12:00 p.m. Michael D. Manson – Partner – Smart &
Biggar (Canada)
Stephanie M. Foster – VP and Senior
Counsel – Pearson Education Inc.
(United States)
12:30 p.m. Andres Moreno – Director – Gabriel
Patent & Trademark Office (Bolivia)
1:30 p.m. Bart A. Lazar – Partner – Seyfarth
Shaw LLP (United States)
Jennifer Ennis – Senior Trademark
Paralegal – Microsoft Corporation
(United States)
2:00 p.m. Dennis Haist – General Counsel – The
Steele Foundation (United States)
Samer A. Pharaon – Executive Director
– Abu-Ghazaleh Intellectual Property
(Middle East)
Lisa Rogan – Trademark Manager –
Acushnet Golf (United States)
2:30 p.m. Heather J. McDonald – Partner – Baker
Hostetler (United States)
3:00 p.m. R.J. Falconi – Vice President, General
Counsel & Corporate Secretary – CSA
Group (Canada)
www.managingip.com
25
FEATURE: EUROPEAN LITIGATION
From LEVI’S to LEGO – a year in court
It has been a busy year for Europe’s top courts in Luxembourg. James Nurton looks back at some of the most important cases
affecting trademark owners.
L
uxembourg is a busy place these days. The Court of
First Instance (CFI) of the European Court of Justice
(ECJ), which hears appeals arising from Community
trade mark (CTM) applications, received a record
143 IP cases in 2006. In the same period, the ECJ itself
received 23 cases. As the European Union’s top court, the
ECJ can be called on to give preliminary rulings in cases
before the courts in EU Member States. It is also the final
arbiter on disputes arising from the registration of CTMs
and Community designs at OHIM.
The result of all this activity is good news for trademark
owners, as it brings more consistency and quality in rulings,
says Alexander Klett, a partner of Gleiss Lutz in Germany
who is chairing a luncheon table topic (TM62) today on ECJ
case law. Judges at the ECJ are not necessarily IP specialists,
and have to deal with cases in many different areas.
Moreover, Community trade mark law is still relatively recent
so it has taken time for the Court to build up expertise in this
area. “The ECJ judges are more confident now in trademark
cases. They start to think about what the issues really are – a
development that we should really be grateful for,” says Klett.
Carl de Meyer, who is chairing tomorrow’s update on
the Community trade mark (CT01) adds that, with nearly
11 years of experience of the CTM system, many questions
(such as registrability of novel marks) have been settled:
“Most recent cases are applying principles established in
an earlier period.” Nevertheless, the past year has seen
some interesting decisions, in both appeals from OHIM
and national referrals, in which certain trends can be
observed. Two areas which have been addressed in a number of cases are (1) the similarity of marks and the risk of
confusion and (2) the scope of exclusive rights.
Are you confused?
Of a number of cases that have addressed similar trademarks in the past year, that between Sergio Rossi and Sissi
Rossi was one of the most eagerly awaited. The case dated
back to 1998, when Sissi Rossi filed a CTM application for
SISSI ROSSI in Classes 14, 18 and 26.
Sergio Rossi opposed the application in Class 18 (leather
and leather imitations) based on its own registrations for
MISS ROSSI for footwear in Class 25. The opposition was
upheld by the Opposition Division, on the grounds that the
goods were similar. However, that decision was overturned
by the First Board of Appeal, which said that the differences
between the goods outweighed their similarities and there
was therefore no likelihood of confusion.
That decision was upheld by the CFI and, in July last
year, by the ECJ, which said that the lower court had correctly “made an overall assessment of the similarity of the
marks in question and the likelihood of confusion on the
part of the public.”
“The court had the opportunity to make some clarification as to how the risk of confusion is to be construed,”
says Klett, adding that “each case is different and you can’t
always understand why the court goes one way rather than
another.” More decisions from the ECJ in this area are
expected in the coming year, as many cases that have been
decided by the CFI are pending before the higher court.
Scope of protection
The other area that has seen some interesting developments
in the past year affects the scope of the exclusive rights conferred by a trademark. In January this year, the ECJ finally
(after a long wait) gave its judgment in Adam Opel v.
Autec, a case where questions were referred from Germany
in a dispute over the use of a car company’s trademark on
scale models. In its decision, unusually, the court disagreed
with the Advocate General’s opinion in this case.
The Advocate General had excluded the fixing of the
OPEL Z logo on scale models from the monopoly conferred
by a trademark. But the ECJ said that a trademark owner can
prevent such use, if he has a trademark that is registered for
cars – in respect of which it is well known – and for toys, if
the use affects or is liable to affect the function of the trademark for toys. Whether it does affect the function is for the
national court to decide. “The Court made it clear that the
26
www.managingip.com
New IP cases at the Court of First Instance, 2000-2006
150
120
90
60
30
0
2000
2001
2002
2003
2004
2005
2006
FIVE RECENT ECJ CASES – AND ONE TO LOOK
FORWARD TO
OHIM v. Kaul GmbH (March 13, 2007): The ECJ said that
OHIM’s Boards of Appeal have “a wide discretion” to consider new evidence in appeals arising from Community trade
mark oppositions. This will make it less likely that opposing
parties can keep raising new evidence before OHIM.
Dyson Ltd. v. Registrar of Trade Marks (January 25, 2007):
The ECJ rejected vacuum cleaner company Dyson’s attempt
to register the transparent bin of its cleaner on the grounds
that the bin is a “mere property of the product concerned”
and so is not capable of constituting a trademark.
Nokia Corp. v. Joacim Wärdell (December 14, 2006): The
ECJ agreed with Nokia that, where there is a risk of future
infringement, even if the threat is not obvious, a Community
trade mark court may still issue an order prohibiting the
defendant from proceeding with infringing acts.
August Storck KG v. OHIM (June 22, 2006): The ECJ rejected two attempts by the maker of WERTHER’S ORIGINAL
sweets to obtain a Community trade mark for the shape of
the sweets and their wrapper.
Levi Strauss & Co. v. Casucci Sp.A. (April 27, 2006): The ECJ
clarified that judges must assess the public’s perception of a
trademark at the time of the alleged infringement, and not
at the time of giving the ruling.
LEGO v. OHIM: In its first decision in July last year, OHIM’s
Grand Board cancelled a Community trade mark for LEGO
bricks on the grounds that the shape of the trademark was
“necessary to obtain a technical result.” LEGO has appealed
the ruling to the CFI.
scope of rights of a trademark owner can also extend to use
on miniature automobiles – along the lines of the old Arsenal
case,” explains Klett, who is advising Adam Opel in the case.
Another case that addressed the scope of protection was
Montex Holdings v. Diesel, in which the ECJ ruled on three
questions referred from Germany regarding the transit of
goods. Montex Holdings (an Irish company which sews
together jeans in Poland before shipping them) shipped
jeans bearing a DIESEL label to Ireland. Diesel is a jeans
maker that owns the DIESEL trademark in numerous countries – but not Ireland. In December 2000, German
Customs seized a truckload of Montex’s jeans on the suspicion that they infringed Diesel’s German trademark.
In its ruling on November 9 last year, the Court said
that a brand owner can only prohibit the transit of goods
through an EU Member State “if those goods are subject
to the act of a third party” that involves them being put on
the market. The Court added that it is irrelevant whether
the goods come from within or outside the EU, and also
whether or not they infringe trademark rights.
The case was viewed as a further narrowing of the
trademark owner’s right, following a case in 2005 involving AQUAFRESH toothpaste, which found that goods
imported from outside the EU and stored in a warehouse
cannot be seized unless the brand owner can prove they are
intended for distribution outside the EU.
Future cases
“Courts have lost their fear of referring to the ECJ,” says Klett.
In the Adam Opel dispute, he says he was “amazed” that the
Nuremberg court agreed to refer questions to the ECJ, as it
had no history of doing so. The next test for Luxembourg’s
courts is likely to arise from the new EU Member States, particularly the 10 that joined in 2004. There may be questions
about the procedures for extending CTMs to these countries,
or from cases in national courts in countries such as Poland,
Hungary, the Czech Republic and Slovakia.
De Meyer, whose session tomorrow will include discussion of the extension of the CTM to the new Member
States, says this question highlights the tensions that are at
the heart of the CTM system: “We continue to have this
huge challenge that although this is a single instrument, we
will still have our national or regional reflexes that continue to linger on.” These national-EU tensions affect issues
such as what is perceived to be descriptive in different languages, and whether novel marks should be protected, as
well as questions about use of particular marks across several markets with different languages. “We’re all coming
from different backgrounds and cultures,” says de Meyer.
POLL: TRADEMARK PROTECTION
TM specialists want registrability harmonized
M
ore than half of trademark practitioners who
responded to an exclusive online poll for the
INTA Daily News believe that registrability criteria is the issue most in need of international
harmonization.
The poll was available for any trademark practitioner
to complete online. Fourteen questions covered issues such
as where are the key markets, which areas pose the biggest
challenges, new challenges on the Internet and how to
combat counterfeiting. Responses were anonymous, and
the poll prevented anyone from answering twice from the
same IP address.
The finding that 59 percent of those who responded to
the survey would like to see registrability criteria harmonized as their top priority comes as WIPO is looking at
how it can promote further international cooperation (see
interview with Ernesto Rubio, pages 24 to 25).
After registrability criteria, the other areas identified as
ripe for harmonization were electronic filing and the regulation of famous and well-known trademarks, both of
3. Do you use the Madrid Protocol to obtain
trademark protection?
1. Which area of trademark law would you most like to see harmonized?
Education
No response
6%
Electronic filing
No, never
23%
Enforcement
Genuine use
which were rated as a top priority by 13 percent of
respondents (see chart 1).
The importance of harmonization to trademark practitioners was also apparent in the answers to the question:
“What has been the most important recent development in
trademark protection?” (see chart 2). Sixty-one percent of
respondents said the Community trade mark system
(which enables applicants to obtain one trademark covering the whole of the EU) was the most important. In addition, 21 percent identified the expansion of the Madrid
58 percent of respondents
said they would be more likely
to use the Madrid Protocol if
more countries joined
Geographical indications
Registrability criteria
Rules on famous/
well-known trademarks
0
10
20
30
40
50
60
2. What has been the most important recent development in trademark protection?
Yes,
whenever
possible 33%
Sometimes
38%
4. Would you be more likely to use the Madrid
Protocol if more countries joined the System?
Community design
No response
5%
Community trade mark
Don’t know
21%
Internationalization
Increased protection of
well-known marks
Madrid System expansion
Uniform Dispute
Resolution Policy
0
10
20
30
40
50
60
Yes
58%
No
16%
System of international protection (which now covers 80
countries) as the most important.
The poll also asked respondents whether they use the
Madrid Protocol and whether they would be more likely to
use it if more countries joined. At present, there are some
gaps in the coverage of the Protocol, notably in Latin
America and parts of Asia. But a number of countries are
considering joining.
Seventy-one percent of respondents said they use the
Protocol either “sometimes” or “whenever possible”
with just 16 percent saying they never use it (chart 3). A
striking 58 percent said they would be more likely to
use the Protocol if more countries joined, with just 16
percent saying they would not be more likely to do so
(chart 4).
In tomorrow’s issue: more findings from the exclusive
INTA Daily News poll, covering the Internet, domain
names and future challenges.
www.managingip.com
27
VOX POP: YOUR VIEWS
VOX
POP
QUESTION: How has the
Internet changed trademark
practice?
It has made everything much
smaller. Brands that were previously jurisdiction-based are now
global. It means that borders
don’t really exist for brands and
that creates new challenges.
Lanning G. Bryer, Ladas & Parry, United States
It’s made it easier to be in contact with other intellectual property lawyers and to network. Also,
now we can view the weekly
trademark bulletin online.
Georgina Pianta, Abeledo Gotheil Abogados SC,
Argentina
It has had positive changes. Email
is a more reliable form of communication than the mail. It makes
searching easier too – you can
either do it yourself or there are
packages available that will help
you do it.
Jack H.E.G. van Dongen, HBN Law, Netherlands
Antilles
It can be harder to investigate
people who are using marks illegally on the Internet because it
can be harder to locate the
infringer. But it also offers trademark proprietors more opportunity to reach a much greater
market.
John E. I. Carrington, M. C. W. Todman & Co., British
Virgin Islands
INTA Daily News
PHOTO
COMPETITION
It has allowed for a lot more
infringement because people now
have more access to trademarks
and logos and can download them
easily. But it has made it easier to
do enforcement work because I
can learn about the people
infringing my clients’ marks.
Jill Jacobs, Seyfarth Shaw, United States
It has extended the scope of possible infringing activities and has
magnified the problem many
many times. It has also introduced problems that trademark
law was not intended to deal with,
such as the use of metatags.
Kwong Chi Keung, Sit Fung Kwong & Shum, Hong
Kong
The Internet basically enables me
to do my job because it allows me
to work in Mexico and do trademark filings at the USPTO. My job
would be impossible without the
Internet.
John M. Murphy, Arochi, Marroquín & Lindner, Mexico
Win an INTA publication of your
choice!
Each day the INTA Daily News is giving you the
chance to win an INTA publication of your choosing.
Today, we are inviting Annual Meeting attendees to
send in a photo they have taken since arriving in
Chicago. The photo should capture a unique
perspective on the city of Chicago, the INTA Annual
Meeting, or the world of trademarks.
The INTA Daily News editorial team will select a
winner based on the following criteria: quality,
originality, visual interest.
Send your photo (maximum one entry per person), with your
name and organization, by email to [email protected] by 5:00
p.m. Tuesday. Photos should be in .jpg format, can be color or
black and white, and should be no more than 3MB in size.
The winning photo, and the name of the photographer, will be
published in the INTA Daily News on Wednesday.
Tomorrow: look out for the INTA Daily News caption competition.
28
www.managingip.com
It has meant things have become
more flexible and faster. In
Paraguay, it has opened us to the
world and given us access to
information and legal decisions
that we can use to help us resolve
disputes back home.
Caroline Casseli, Sacco, Casseli & Gaona, Paraguay
We have to make searches on prior
domain name registrations and we
have to survey trademark infringements on the Internet. But it has
also made it easier to create databases of information about trademarks, their use, licensees, licensors, counterfeiters, and so on.
Gilbert Piat, @Mark , France
The Internet has made it easier
for marks to become known in
many countries and it also makes
it easier to show evidence of use.
Yoko Okumura, FUJIMarks Japan, Japan
MIP, proud
publisher of the
INTA Daily News
Visit us at booth #202
VOX POP: YOUR VIEWS
The Internet has become more of
an issue in India since the passing
of the 1999 Trade Mark Law in
2003. The main problem is the
judges are not aware of the
issues and are not properly
equipped.
Debasish Sen, D. Sen & Co., India
I deal with international coordination and the Internet has facilitated communications. We can do
electronic filing in the US directly
from Ecuador.
Monica Cortez, Paz Horowitz, Ecuador
The Internet has led to a greater
awareness of trademarks and also
opened up opportunities for
trademark infringement. It provides another opportunity for
corporations to promote their
business and their brands to the
world.
Martin Pollock, Spruson & Ferguson, Australia
You can do so much research and
you can get a good grasp of what
is going on before you retain an
outside agency to get into details.
But you have to police what your
clients are doing.
Karen Maher Davis, Gordon Feinblatt Rothman
Hoffberger & Hollander, PC, United States
Toby Butterfield, Cowan, de Baets, Abrahams &
Sheppard, United States
There is more communication
now. We send emails to all the
companies we represent – we only
meet at conventions like this.
Communicating electronically definitely makes things easier and
faster.
Nedda Cadenillas Reymer, Galvez Tafur Law Office
SCRL, Peru
You can work from home in your
underwear – remote access allows
you to respond to clients more
quickly. It’s also made infringement a lot less expensive – now
you just need $6.95 and you can
get a pay-per-click ad site.
Paul McGrady, Greenberg Traurig, United States
Everyone wants to have a trademark now. There’s an increased
emphasis on registering a mark
and owning it, when the real
power is the brand behind it.
It’s certainly made products and
services more available and
known. However, it solves one
problem and creates another with
the potential for commercial misuse of another person’s trademark.
Brian Banner, Rothwell, Figg, Ernst & Manbeck,
United States
It’s made the world much smaller,
it’s made the practice of trademark law more dynamic and it’s
keeping us all employed.
Charles Saunders, AstraZeneca Pharmaceuticals LP,
United States
Gilson on Trademarks
LexisNexis® Matthew Bender® is proud to announce that Anne
Gilson LaLonde has taken full authorship of the seminal treatise
“Trademark Law and Practice,” which is hereinafter being retitled
“Gilson on Trademarks.”
Some ten years ago Jerry Gilson created a plan for his daughter
Anne to succeed him as Author, and for the past six years she has
been Co-Author. This year she became Author, and Mr. Gilson
will continue as a very active collaborator. Anne Gilson LaLonde
is co-author of Trademark Protection and Practice and has worked
on the treatise since 1999. She graduated from the University of
Michigan Law School after serving as Book Review Editor of the
Michigan Law Review. She practiced at Sidley & Austin in
Washington, D.C. in the firm’s Litigation Practice Group before
her two-year judicial clerkship with Judge Norma Holloway
Johnson of the United States District Court for the District of
Columbia. She is a member of the Illinois and District of
Columbia bars and the bar of the United States Supreme Court.
LexisNexis Matthew Bender wishes to sincerely thank Jerry Gilson
for his unparalleled stewardship over the past three decades. He
has created one of the more authoritative works in American
jurisprudence and we are deeply proud of our long association with
such a noted legal scholar. We look forward to his continued guidance and wisdom.
www.managingip.com
29
INTA DAILY NEWS
1
2
3
4
8
9
10
11
Last night’s receptions
Blakes rounded off
Saturday evening with
jazz, drinks, and desserts at
the InterContinental Hotel.
Welsh & Katz began
2 Sunday
morning with a
1
30
vibrant brunch reception at
the Latin American-themed
Carnivale restaurant.
Guests were treated to
3 the
thrilling sounds of the
Shannon Rovers marching
www.managingip.com
band at Lehman Lee & Xu’s
brunch reception at the
Marriott Hotel.
Gowlings’ lunch reception
4 was
held in the refined
setting of the Drakes Hotel
ballroom.
The sun shone on guests
5 at
the Drinker Biddle
reception, held on the
Lakeview Terrace rooftop, celebrating the firm’s recent
merger with Gardner Carton &
Douglas.
Guests could absorb the
6 sights
and sounds of
Lincoln Park Zoo from the
Ladas & Parry 95th anniver-
sary reception held at the historical Cafe Brauer great hall.
Harness Dickey hosted
7 up
to 200 guests in a hospitality suite at US Cellular
Field, watching the Chicago
White Sox play the LA Angels.
The Peninsula Hotel
8 9 was
the venue for
INTA DAILY NEWS
5
6
7
12
13
14
both the Lovells and combined Herbert Smith/Gleiss
Lutz receptions where guests
made the most of the perfect
evening out on the terrace.
Howrey took over the
10 McCormick
Tribune
Freedom Museum for a reception where guests enjoyed
thought-provoking exhibits
dedicated to the First
Amendment.
Guests enjoyed a series of
11 paintings
by nationally
recognized Chicago artists at
Bardehle Pagenberg’s drinks
reception at The University
Club.
Field Fisher Waterhouse
hosted a reception at the
Civic Opera House where
guests enjoyed The Sympathy
Sounds string quartet with
canapés and fine wines.
De Brauw Blackstone
13 Westbroek,
Bristows,
Hengeler Mueller, Rospatt
12
Osten Pross, Intellectual
Property Rechtsanwalte,
Trevisan Cuonzo Avvocati
and Uría Menéndez co-hosted
a reception at The Signature
Room on the 95th floor of the
John Hancock Center where
guests enjoyed stunning views
of Chicago.
Guests at Baker &
McKenzie’s party at the
John G. Shedd Aquarium last
night donned custom-made
fedora hats before dining on
Asian, European, and Latin
American food just a fish tank
away from giant turtles and
manta rays.
14
www.managingip.com
31
Today’s Schedule: Monday, April 30, 2007
All Events take place at the McCormick Place Lakeside Center (MPLC) unless otherwise indicated.
Consult the Final Program for times and locations of invitation-only events.
7:30 am – 5:00 pm
7:30 am – 5:00 pm
8:00 am – 10:00 am
8:00 am – 10:00 am
8:30 am – 4:00 pm
10:00 am – 4:00 pm
10:00 am – 11:00 am
10:15 am – 11:30 am
11:45 am – 1:00 pm
1:15 pm – 3:15 pm
1:15 pm – 3:15 pm
3:30 pm – 4:45 pm
3:30 pm – 5:30 pm
REGISTRATION
HOSPITALITY
BREAKFAST TABLE TOPICS
COMMITTEE MEETINGS
ACEC: China Subcommittee
ADR Committee
Brand Protection Forum 2007 Project Team
EIC: Design Rights Subcommittee
EIC: Fair Use & Other Boundaries Subcommittee
EIC: Indigenous Rights Subcommittee
Enforcement: Courts & Tribunals Subcommittee
Enforcement: Preliminary Relief Subcommittee
TOPC: Technical Assistance Subcommittee
TOPC: USPTO Subcommittee
TOURS
EXHIBITION HALL
COMMITTEE MEETINGS
EIC Issues Council
LRC: East Asia & Pacific Subcommittee (ends at 12:00 pm)
PDA Europe Council
Trademark Administrators (TMA) Subcommittee (MSC)
CONCURRENT SESSIONS & WORKSHOP
CM01 Muddy Waters: Evolving Law and Policy in Internet Advertising (Keywords and Adware)
CM02 Regional Update: The People’s Republic of China
WM01 I’m Not Walkin’…I’m Talking’–Strategies for Drafting and Negotiating License Agreements
CONCURRENT SESSIONS
CM03 Ethics: Trademark Office Practice, Investigations and Unauthorized Practice
CM04 Trademark Protection vs. Civil Liberties
CM05 Breaking with Tradition: A Comparative View of Nontraditional Trademarks
CM06 Right of Publicity Around the World
IM01 Industry Breakout: Apparel, Cosmetics, Consumer Goods, Jewelry–Licensing Without Forms
IM02 Industry Breakout: Entertainment and Sports
IM03 Industry Breakout: “Shake Your Moneymaker”–Financial Institutions and Financial Services
LUNCHEON TABLE TOPICS
COMMITTEE MEETINGS
ACEC: Eastern Europe & Central Asia Subcommittee
Leadership Meeting 2007 Project Team
LRC: Latin America & Caribbean Subcommitee
LRC: U.S Subcommittee
Parallel Imports Committee
Planning Committee
The Trademark Reporter ® Committee
TOPC: China Trademark Office Subcommittee
TOPC: OHIM Subcommittee
Trademark Administrators Conference 2007 Project Team
CONCURRENT SESSIONS & WORKSHOPS
CM50 Enforcement of Trademark Rights in Latin America
CM51 IP Tax Problems and Protection
CM52 The Survey Blues: Litigation Survey Errors Causing Exclusion or Reduced Weight
CM53 Regional Update: India, Pakistan and the Middle East
WM50 “Blues Clues” – Internet Investigations
WM51 Introduction to Mediation in IP Disputes
COMMITTEE MEETINGS
Enforcement: Monetary Remedies Subcommittee
Enforcement: Trade Names Subcommittee
Geographical Indications Committee
International Amicus Committee
Portugal Forum 2007 Project Team
Level 2 - Lobby
Level 3 – Hall D1
Level 2 – E253
Level 2
E256
E271
E264
E263
E265
E262
E266
E261
E259
E260
Depart from MPLC
Level 3 – Hall D1
Level 2
E262
E266
E260
E271
Level 4 – E450a
Level 4 – E450b
Level 3 – E353b
Level 4 – E451a
Level 4 – E451b
Level 4 – E450a
Level 4 – E450b
Level 3 – E352
Level 3 – E350
Level 3 – E351
Level 2 – E253
Level 2
E264
E263
E262
E261
E265
E272a
E270
E272b
E256
E255
Level 4 – E451a
Level 4 – E451b
Level 4 – E450a
Level 4 – E450b
Level 3 – E353b
Level 3 – E353c
Level 2
E255
E272b
E270
E258
E265

Red Hot Chicago - Managing Intellectual Property

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