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INTABulletin
The Voice of the International Trademark Association
August 1, 2013 Vol. 68 No. 14
AssociationNews
Law&Practice
EUROPEAN UNION
ICANN Adopts GAC Advice on Whois,
Security Enhancements
INTA representatives last month participated
in the second meeting this year of The
Internet Corporation for Assigned Names
and Numbers (ICANN), which was held July
14—18 in Durban, South Africa.
Many of the developments that have occurred between ICANN’s last meeting in Beijing and the Durban meeting should result in
stronger protections for trademark owners.
Safeguarding New gTLDs
Following a request for public comment in
April—to which INTA’s Internet Committee
replied with extensive recommendations—
ICANN’s Board of Directors held several
meetings to consider and adopt advice from
its Government Advisory Committee (GAC)
on the introduction of new generic top-level
domains (gTLDs).
In particular, ICANN accepted the GAC’s
input on implementing additional safeguards across each new gTLD that will be
introduced over the coming years. The new
protections are outlined below:
Whois Verification and Checks
ICANN is finishing the development of a
new Whois tool that will provide the ability
to check false, incomplete or inaccurate
Whois data. The tool is being designed to
allow ICANN’s staff to begin to “proactively
identify potentially inaccurate gTLD data
registration in gTLD registry and registrar
services, explore using automated tools,
and forward potentially inaccurate records
to gTLD registrars for action; and to publicly
report on the resulting actions to encourage improved accuracy.” In light of this
activity, ICANN has agreed to implement
the GAC’s advice that checks identifying
registrations in a gTLD with deliberately
false, inaccurate or incomplete Whois
data be conducted at least twice a year. To
achieve this, ICANN will perform a periodic
sampling of Whois data across registries in
an effort to identify potentially inaccurate
Association Welcomes
Specsavers Decision on
Genuine Use and Color
The Court of Justice of the European Union
(CJEU) has further clarified how the use of a
composite trademark can still include genuine
use of a separately registered mark that forms
only one of the components of that composite
mark. In addition, the CJEU has given guidance on trademarks registered in black and
white but used predominantly in a particular
color by the trademark owner, such that the
public associates that mark and color with
the trademark owner, and whether there is
confusion and infringement through use of
that color or a similar color by a third party.
Specsavers International Healthcare Ltd v.
Asda Stores Ltd, Case C-252/12 (CJEU July
18, 2013).
See “ICANN” on page 3
In This Issue
VolunteerSpotlight
AssociationNews
Welcome New Members
2
Jüri Käosaar
Bradley Cohn Plaintiff’s Trademarks
4
4
Features
Law&Practice
What’s in a Name? Comparing
Rights and Recoveries for False
Suggestion of a Connection in the
United States and Germany
Argentina9
Brazil10
Colombia10
European Union
11–12
Iran13
North Korea
13
New Zealand
14
Russia15
United States
16–17
5
The CJEU’s decision was largely in line with
the conclusions of INTA that were set out in
the amicus brief the Association submitted on
behalf of Specsavers in the proceedings.
Specsavers is the largest chain of opticians
in the United Kingdom. Its business logo has
the word “Specsavers” written across two
overlapping dark-green ovals. Specsavers had
registered a series of Community trade marks
(CTMs) in respect of its brand. including a
wordless logo featuring the overlapping ovals
without the word “Specsavers.” The company
See “Association Welcomes Specsavers”
on page 11
AssociationNews
Welcome New Members
Aiger UK Limited, Birmingham, UK
Amicus Law Chambers Ltd., Hamilton, Bermuda
Anudari IP Attorney, Ulaanbaatar, Mongolia
AVA LAW GROUP, Tehran, Iran
Bejin Vanophem & Bieneman PLC, Detroit, Michigan, USA
Bourgoing Abogados, Mexico City, Mexico
Brand Developers Ltd., Auckland, New Zealand
Burness Paull & Williamsons LLP, Glasgow, UK
China Confaith Intellectual Property Agency Co., Ltd.,
Shantou, China
Crocs, Inc., Niwot, Colorado, USA
Deloitte, Atlanta, Georgia, USA
Dominion Enterprises, Norfolk, Virginia, USA
eBrand Services S.A., Leudelange, Luxembourg
Eubelius CVBA, Kortrijk, Belgium
Farrer & Co., LLP, London, UK
Ferrante Intellectual Property, Shanghai, China
Field Fisher Waterhouse LLP, Hamburg, Germany
Franks & Co, Sheffield, UK
Front Burner, LLC, Dallas, Texas, USA
Furman IP Law & Strategy PC, Regina, Saskatchewan,
Canada
GRATA Law Firm, Almaty, Kazakhstan
Imperial Intellectual Property Investments, Harare,
Zimbabwe
Kipatent.com, Jersey City, New Jersey, USA
Kramer Levin Naftalis & Frankel LLP, Menlo Park,
California, USA
Lane IP Limited, London, UK
Lawyers at Large LLC, Tiburon, California, USA
Leverage Legal Group, Albuquerque, New Mexico, USA
Lisa Kritzman Esq. LLC, Cherry Hill, New Jersey, USA
Manning Fulton & Skinner, P.A., Raleigh, North Carolina, USA
May & Pursch-May, Solingen, Germany
Pereira Legal Marketing, Montevideo, Uruguay
Reinhardt Law Firm, Manhasset, New York, USA
Ryder LuMazzeo Konieczny, Colmar, Pennsylvania, USA
SalmonSkolnick LLP, New York, New York, USA
San Diego Law Firm, San Diego, California, USA
Schmeiser, Olsen & Watts LLP, Latham, New York, USA
SCIARRA & ASOC., Montevideo, Uruguay
Seltzer Licensing Group, New York, New York, USA
Seyfarth Shaw LLP, Houston, Texas, USA
The Licensing Company Limited, Fort Worth, Texas, USA
Ulmer & Berne LLP, Chicago, Illinois, USA
Ulmer & Berne LLP, Cincinnati, Ohio, USA
Ulmer & Berne LLP, Cleveland, Ohio, USA
Venable LLP, Los Angeles, California, USA
Webster, Chamberlain & Bean, LLP, Washington, DC, USA
WIPS, Vienna, Virginia, USA
Yoon & Yang, Seoul, South Korea
INTA’s Practitioner’s Guide to the
Madrid Agreement and Madrid Protocol
This searchable database offers practical information on member
countries’ practices and procedure in obtaining, maintaining and
enforcing registrations through the Madrid System.
Visit www.inta.org/MadridProtocol
INTA Bulletin Committee
To contact the INTA Bulletin Committee,
email [email protected].
Chair
Walter Palmer, Pinheiro Palmer
Advogados
Vice Chair
Barbara Sullivan, Henry Hughes
Association News
Rosemary Brkopac, BrandProtect
Frank Hiscox, Lewis and Roca LLP
Features
Jan Gerd Mietzel, Pellon & Associados
Europe LLP
Liisa Thomas, Winston & Strawn LLP
Law & Practice: Asia-Pacific
John Hackett, A J Park
Law & Practice: Europe
Jaap Bremer, BarentsKrans N.V.
Peter McAleese, Barzano & Zanardo
Law & Practice: Latin America &
Caribbean
Jamal Smith, Thornton Smith
Law & Practice: Middle East & Africa
Charles Shaban, Abu-Ghazaleh Intellectual Property
Law & Practice: United States &
Canada
Lisa Iverson, Neal & McDevitt, LLC
INTA Bulletin Staff
Chief Executive Officer
Etienne Sanz de Acedo
Director, Publishing
& Online Resources
James F. Bush
Managing Editor, News & Policy
Eileen McDermott
Associate Editor, INTA Bulletin
Joel L. Bromberg
Designer
Eric Mehlenbeck
INTA Officers & Counsel
President
Toe Su Aung, BATMark Ltd.
Vice President
Mei-lan Stark, Fox Entertainment Group
Vice President
Gabrielle Olsson Skalin, Inter
IKEA Holding Services S.A.
Treasurer
J. Scott Evans, Yahoo! Inc.
Secretary
Russell Pangborn, Microsoft Corp.
Counsel
Michael Metteauer, Fulbright &
Jaworski LLP
Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of
the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to
any item offered to it for publication. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number
of copies or viewers to [email protected]. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.
© 2013 International Trademark Association
2 August 1, 2013 Vol. 68 No. 14
AssociationNews
ICANN Update from Durban Continued from page 1
records. ICANN will also maintain statistical
reports that identify the number of inaccurate Whois records identified.
(consistent with applicable law and any related procedures) for abusive conduct, including
suspension of the domain name.
Mitigating Abusive Activity
ICANN announced no change to its current
policy on singular and plural gTLDs, which potentially allows both versions of the same new
gTLD to coexist. There have been concerns
within the trademark community that such a
system could lead to consumer confusion and
additional defensive registrations.
ICANN will mandate that new gTLD Registry
Operators require their Registrars to include
in their Registration Agreements a provision
prohibiting registrants from “distributing malware, abusively operating botnets, phishing,
piracy, trademark or copyright infringement,
fraudulent or deceptive practices, counterfeiting or otherwise engaging in activity contrary
to applicable law,” and providing consequences for such activities, including suspension of
the domain name.
Security Checks
ICANN will include a provision in the New
gTLD Registry Agreement requiring Registry
Operators periodically to conduct a technical
analysis to assess whether domains in its
gTLD are being used to perpetrate security
threats, such as pharming, phishing, malware
and botnets. The provision will also require
Registry Operators to maintain statistical
reports on the number of security threats
identified and the actions taken as a result of
the periodic security checks. Registry Operators will maintain these reports for the agreed
contracted period and provide them to ICANN
upon request. The contents of the reports will
be publically available as appropriate.
Documentation of Inaccurate Records
As detailed above, ICANN will maintain statistical reports that identify the number of inaccurate Whois records identified as part of the
checks to identify registrations with deliberately
false, inaccurate or incomplete Whois data.
Registry Operators will be required to maintain
statistical reports on the number of security
threats identified and the actions taken as a
result of the periodic security checks. Registry
Operators will maintain these reports for the
agreed contracted period and provide them to
ICANN upon request. The contents of the reports will be publically available as appropriate.
Making and Handling Complaints;
Consequences
Registry Operators will be required to ensure
that there is a mechanism for making complaints regarding malicious conduct in the
TLD. ICANN will also mandate that new gTLD
Registry Operators provide consequences
GAC Objects to .amazon
On July 18, the GAC issued a Communiqué to the ICANN Board advising that it
had reached consensus on “GAC Objection Advice” regarding the “.amazon”
application. ICANN’s Applicant Guidebook stipulates that if the GAC advises
that it has reached consensus on an
objection to a particular application, it
will create “a strong presumption for the
ICANN Board that the application should
not be approved.”
In Durban, INTA provided its views to the
ICANN Board on the interplay between
trademarks, new gTLDs and geographic
terms. In particular, INTA highlighted that
public law does not recognize an exclusive right of states to geographic terms,
and that trademark laws and international treaties must be recognized in the
Board’s consideration of objections based
purely on a national sovereignty interest.
On a separate issue, ICANN has determined
that the Registry Operator of a “Generic
String” may not impose eligibility criteria that
limit registrations exclusively to a single person or entity and/or that person’s or entity’s
“Affiliates.” For the first time, ICANN defines
“Generic” as a “string consisting of a word or
term that denominates or describes a general
class of goods, services, groups, organizations or things, as opposed to distinguishing
a specific brand of goods, services, groups,
organizations or things from those of others.”
Additional GAC Advice on New gTLDs
The ICANN Board continues to consider how
to address GAC advice pertaining to broad
categories of new gTLDs, including those
domains that are connected with regulated
markets or that raise heightened consumer
protection concerns and other sensitivities.
As a temporary measure, ICANN will defer
moving forward with the contracting process
for these strings, pending further dialogue
with the GAC. ICANN is also holding off on a
decision for providing protection to the names
of intergovernmental or international non
governmental organizations.
New Registrar Accreditation
Agreement (RAA)
ICANN has adopted a new form of its Registrar Accreditation Agreement (RAA), and will
require that all New gTLD Registry Operators
use the agreement. As a result, all domain
names sold in new gTLDs will be subject to
the terms of the new RAA.
Some enhanced features are requiring the
creation of an “abuse point of contact” at
each registrar, a limited Whois verification and
validation—either email address or phone number—and new provisions governing a registrar’s
obligations for its resellers. The new agreement
also contains stronger contractual compliance
measures, including broader suspension and
termination tools.
With respect to Proxy and Privacy services, the
new RAA will require that information be made
available on items such as customer service
processes and when a provider will relay information on the underlying user of the domain
name registration. While ICANN did not address
all of the recommendations from INTA and
the intellectual property community regarding
these services, a formal accreditation program
for service providers may be developed under
ICANN’s policy development process.
Next Meeting
ICANN’s next international meeting will take
place in Buenos Aires, Argentina, November
17—21. INTA’s Internet Committee will continue to participate with ICANN on issues of
concern to the trademark community. If you
have questions about participating at ICANN,
please contact INTA External Relations Manager Claudio DiGangi at [email protected]
■
3
VolunteerSpotlight
all countries of the European Union. Advising
clients on obtaining trademark rights in the
most northern Baltic state, Jüri deplores that
the practices relating to, for example, the inherent registrability of marks in the individual
member states, as contrasted with those of
OHIM, still diverge too strongly to talk of true
harmonization. He believes that INTA should
make efforts to address this issue with OHIM
in order to enhance the attractiveness of
Europe as a marketplace.
Jüri Käosaar,
managing partner
and founder of the patent and trademark
agency Käosaar & Co., based in Tallinn and
Tartu, Estonia, has worked in the trademark
field since 1992. Jüri became active in INTA
around the same time, and has served on a
variety of committees over the years. Besides
his trademark practice, Jüri focuses on patent work, with an emphasis on mechanical
engineering.
An area of importance to Jüri is the full harmonization of trademark practice throughout
By the same token, Jüri believes that a more
uniform and consistent practice is also
needed in relation to drafting the wording
of the specification of goods and services
in the different jurisdictions. While the Nice
Agreement for the International Classification of Goods and Services provides a basic
language framework, there are, Jüri says,
significant differences in the approaches,
so that wording that is acceptable in one
jurisdiction may not be in another. He cites,
by way of example, the discrepancy between
the practice at the USPTO and OHIM, which is
particularly apparent as regards International
Registrations filed under the Madrid System.
ing, when portable manufacturing facilities
will be readily available to the general public?
I think about things like that,” Cohn says.
So do educators who are teaching and
conducting research to better inform the
trademark practitioners of today and tomorrow. To recognize outstanding teaching in
the field, INTA awards its Pattishall Medal—
named for the late Beverly Pattishall, coauthor of the first law school textbook devoted
to trademarks and trade identity law—every
four years.
Bradley Cohn—a partner at Chicago’s
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP—finds that pondering the future of the
trademark field is a natural occupational hazard.
Identifying and addressing new challenges in a
rapidly evolving environment is critical to survival
and success. One example Cohn cites is counterfeiting—a problem that transcends borders and
hurts businesses and consumers alike.
“Will trademark owners be prepared for the
next challenge in this area, such as 3D print-
4 August 1, 2013 Vol. 68 No. 14
“There are many talented educators in our
field who are publishing important works and
inspiring and mentoring the next generation of
trademark practitioners,” says Cohn, a longtime INTA member who serves on the medal
committee. “Giving them an opportunity to be
recognized affirms and encourages their very
important professional contributions.”
This is high praise from an accomplished
attorney whose longtime practice includes
litigation, clearance work, prosecution and
corporate transactions in the trademark and
advertising fields.
Jüri’s favorite trademarks are the well-known
pencil brands FABER-CASTELL and BLACKWING 602, which are, of course, connected
with his great passion for pencils. Jüri has
been collecting pencils since 1969, when he
graduated from Tallinn Polytechnic Institute
as an engineer. As a future constructor, he
was given three black pencils bearing the
golden letters “Toison d’Or,” produced by the
Czechoslovakian pencil manufacturer Bohemia Works. Since then, he has been avidly
collecting pencils, and now has gathered over
16,000 of them, received from friends from
all parts of the world who share his passion.
His collection can be viewed at the firm’s
website, www.kaosaar.ee.
Jüri points out that, like other luxury consumer brands, quality pencils from well-known
manufacturers are being copied. The more
well known a brand is, such as the famous
KOH-I-NOOR pencils, the more likely one is to
find look-alikes.
Claus Eckhartt
Bardehle Pagenberg, Munich, Germany
INTA Bulletin Association News Subcommittee
“My work also seems to involve marketing
folks who are already at the printer and calling to ‘confirm’ use of a new trademark or
slogan that they never asked to be cleared,”
Cohn says pointedly. “I sometimes wonder
if these folks have their own annual conference where they discuss ways to try to foil
their trademark counsel!”
A diehard Chicago baseball fan, Cohn says
the trademarks that best describe him are
CUBS (eternal optimist) or WHITE SOX (hardworking). “My father is from the North Side
of Chicago and my mother is from the South
Side, so I cannot choose between the two!”
Outside of his professional pursuits, Cohn
enjoys outdoor activities, such as hiking,
camping and cross-country skiing—with family and friends. He also likes playing cards
and board games, and tackles crossword
puzzles and cryptograms “when it’s dark out,
which happens a lot in Chicago winters.”
Barbara Barron Kelly
Corsearch/Walters Kluwer, Chicago, Illinois, USA
INTA Bulletin Association News Subcommittee
Features
What’s in a Name? Comparing Rights and Recoveries for False Suggestion of a
Connection in the United States and Germany
Christian Lemke
Heissner & Struck, Hamburg, Germany
Rachel B. Rudensky
Akerman Senterfitt, West Palm Beach, Florida, USA
INTA Bulletin Features Subcommittee
Protection in the United States
Many brand owners are familiar with the normal protections afforded the brand names of
products and services and the provisions of
the U.S. Trademark Act preventing a likelihood
of consumer confusion between products’
brand names (Trademark Act Sec. 2(d), 15
U.S.C. § 1052(d)). Fewer are familiar with protections afforded the names of natural persons or institutions, who do not necessarily
sell products. In the United States, the Trademark Act protects persons, living or dead, and
institutions from trademarks that may falsely
suggest a connection, disparage or bring
them into contempt or disrepute (Trademark
Act Sec. 2(a), 15 U.S.C. § 1052(a)).
While the traditional trademark law in the
United States focuses on the goals of protecting the public from source confusion over
trade symbols and protecting the trademark
owner’s investment in its trademark as
property, Section 2(a) of the Trademark Act
protects natural persons and institutions from
misappropriation of their names or identities,
even where those names or identities are
not used to sell closely related goods, or any
goods at all. This section protects against an
invasion of privacy or infringement of the right
of publicity, and does not rely on the trademark test of a likelihood of confusion.
The Four-Factor Test of Notre Dame v. J.C.
Gourmet Food
The leading case concerning Section 2(a) is
the decision of the Court of Appeals for the
Federal Circuit in University of Notre Dame
du Lac v. J.C. Gourmet Food Imports Co., 703
F.2d 1372 (Fed. Cir. 1983). In that case, the
University of Notre Dame appealed from the
decision of the U.S. Patent and Trademark
Office (USPTO) dismissing the University’s
opposition to the registration of the mark
NOTRE DAME & Design by a European cheese
importer. While affirming the USPTO’s decision, the court recognized that Section 2(a)
had evolved out of the concepts of the rights
of privacy and publicity and was intended to
protect the name of an individual or institution that was not technically a trademark
upon which a likelihood-of-confusion claim
could be based. The Federal Circuit found
that, even while there might be no trademark
confusion as to the source of goods, Section
2(a) prevented the violation of a person or
institution’s right of privacy or publicity. 703
F.2d at 1375.
This case announced a four-factor test for
determining whether there is a false suggestion of association under Section 2(a):
(1) Is the mark the same as, or a close
approximation of, the name or identity
previously used by another person or
institution?
(2) Would the mark be recognized as such,
in that it points uniquely and unmistakably to that person or institution?
(3) Is the person or institution whose name
is reproduced by the mark connected
with the activities performed by the
trademark applicant under the mark?
(4) Is the fame or reputation of the person
or institution such that, when the mark
is used with the applicant’s goods or
services, a connection with the person or
institution would be presumed?
MOHAWK(s), NAFTA and the First Factor
Under the first factor, an applicant cannot take
a significant element of the name of a person
or institution and avoid a Section 2(a) refusal
by eliminating one or more elements. So long
as the element that was taken would still be
unmistakably associated with that person
or institution, the first factor is satisfied. For
instance, in In re White, 80 U.S.P.Q.2d 1654
(T.T.A.B. 2006), an application to register the
mark MOHAWK for cigarettes was refused on
the ground that when MOHAWK was used on
cigarettes, it could “falsely suggest a connection with the federally recognized tribe the St.
Regis Band of Mohawk Indians of New York.”
The applicant’s argument that its proposed
mark MOHAWK was not a close approximation
because the mark lacked the terms “St. Regis”
and “New York” was unavailing.
Similarly, the mere fact that the applicant
adds matter to a person’s or institution’s
name will not itself avoid a Section 2(a) bar.
In In re North American Free Trade Association, 43 U.S.P.Q.2d 1282 (T.T.A.B. 1997), the
applicant’s addition of a picture of a globe to
a service mark with the letters “nafta” did not
differentiate the mark enough to preclude a
Section 2(a) refusal based on a false suggestion of a connection with the North American
See “False Suggestion” on page 6
Looking for a gateway to country-specific links for trademark
offices, laws, domain name resources and more?
Find it in the Country Portal in INTA’s Global Trademark Research.
Visit www.inta.org/CountryPortals
5
Features
False Suggestion of a Connection in the United States and Germany Continued from page 5
Free Trade Agreement, which is known by the
acronym NAFTA.
Finally, the proposed mark need not be the
same as the actual name of the relevant person or institution to be barred under Section
2(a). In Buffett v. Chi-Chi’s, Inc., 226 U.S.P.Q.
428 (T.T.A.B. 1985), folk singer Jimmy Buffett
opposed registration of the term MARGARITAVILLE for restaurant services on the ground
that the mark falsely suggested a connection with his persona within the meaning of
Section 2(a). The USPTO’s Trademark Trial
and Appeal Board (TTAB or Board) agreed,
finding that there was significant evidence to
support the argument that Jimmy Buffett and
his famous song “Margaritaville” were closely
associated and identified with each other.
The Poet of Margaritaville, Hemingway and
the Second Factor
Notre Dame’s second factor requires that the
mark be recognized as uniquely and unmistakably pointing to a specific person or institution.
Frequently, evidence sufficient to show that
the mark is a close approximation of a name
or identity under the first factor suffices to
show that the mark uniquely and unmistakably
points to that name or identify. For example,
in Buffett, the plaintiff used evidence such
as press clippings referring to him as “Jimmy
(Margaritaville) Buffett,” “The Monarch of
Margaritaville” and “The Poet of Margaritaville”
to demonstrate that the term MARGARITAVILLE
pointed uniquely and unmistakably to him.
The applicant’s intent is important in evaluating whether the mark points uniquely to the
individual or institution. For example, in In re
Sloppy Joe’s International Inc., 43 U.S.P.Q.2d
1350 (T.T.A.B. 1997), the Board was persuaded that the applicant intended to draw
an association between his restaurant and
the writer Ernest Hemingway as a result of
his use of Hemingway’s likeness in the mark,
his sponsorship of celebrations and festivals
honoring Hemingway’s life and work, and the
fact that his restaurant was the “Home of
the Papa Hemingway Look-A-Like Contest.”
Id. at 1354. Likewise, in Association pour la
Defense et la Promotion de L’Oeuvre de Marc
Chagall dite Comite Marc Chagall v. Bondarchuk, 82 U.S.P.Q.2d 1838 (T.T.A.B. 2007),
the Board found intent in a letter from the applicant to the petitioner proposing a cooperative arrangement to market the vodka product
under the MARC CHAGALL mark.
The threshold to prove intent is quite low. In
NAFTA, the TTAB found that the applicant’s
very name, North American Free Trade Association, was almost identical to the North
American Free Trade Agreement, and that at
the time it filed its application and adopted
its mark, the applicant was very well aware
How to Prepare for an Emergency:
A Disaster and Business Recovery Plan
Is your trademark practice prepared to react and recover
in the event a disaster strikes?
Natural disasters happen and now more than ever it’s essential your office is
equipped with a plan. That’s why INTA’s Disaster Relief/Business Continuity
Project Team of the Law Firm Committee developed a comprehensive Disaster
and Business Recovery Plan that enables a legal department, law firm or sole
practitioner to handle and to recover from a range of emergency situations that
have the potential to disrupt an office’s normal activities and operations.
Be prepared! Visit www.inta.org /disasterrecovery
6 August 1, 2013 Vol. 68 No. 14
that NAFTA was an acronym for the treaty. The
Board held that the applicant’s “knowledge of
the proposed treaty provided evidence of [the]
applicant’s intent in adopting its mark to identify the NAFTA treaty.” 43 U.S.P.Q.2d at 1282.
The LAPD and the Third Factor
The third factor in the Section 2(a) false suggestion analysis is whether there is a commercial connection between the applicant and
the opposing individual or institution related to
the particular goods and services, which can
be obvious from the adversarial nature of the
opposition or cancellation proceeding.
In an ex parte context, the applicant usually
is required to prove that there is a connection. There must be a specific endorsement,
sponsorship or the like of the particular
goods and services, but it is acceptable if
that endorsement is merely implied. Thus,
for example, in In re Los Angeles Police
Revolver & Athletic Club, Inc., 69 U.S.P.Q.2d
1630 (T.T.A.B. 2004), the Board reversed
the refusal to register the mark TO PROTECT AND TO SERVE, applied for by a police
athletic club. The identical phrase was the
well-known slogan of the Los Angeles Police
Department (LAPD). In this case, the Board
found that although there was no formal
agreement between the applicant and the
LAPD, the evidence showed that the LAPD
Features
had “openly advanced the commercial activities of [the] [a]pplicant”; consequently, it
found that there was “a substantial commercial connection between [the] applicant and
the LAPD.” Id. at 1633.
The King of Swing and the Fourth Factor
The last question is whether the person’s or
institution’s name or identity is of sufficient
fame or reputation that a connection with
such person or institution would be presumed
when the applicant’s mark is used on its
goods. In In re Jackson International Trading
Co. Kurt D. Bruhl GmbH & Co. KG, Serial No.
77600412 (T.T.A.B., July 11, 2012), the Board
affirmed a refusal to register the mark BENNY
GOODMAN COLLECTION THE FINEST QUALITY
(stylized) for fragrances, cosmetics, leather
goods and clothing, finding that the mark
falsely suggested a connection with the late
band leader Benny Goodman.
Benny Goodman—known as “The King of
Swing”—made his name in the 1930s and
remained a popular jazz composer and musician even as the genre lost widespread popularity to other genres of music. Accordingly,
the applicant argued that few music lovers
under 30 would recognize Benny Goodman’s
name. The TTAB was unpersuaded, finding
that “Benny Goodman remains a well-known
figure among a sufficient segment of the
population as to support finding a false suggestion of a connection.” Op. at 9.
Although a separate finding of likelihood of
trademark confusion under Section 2(d) of
the Trademark Act may increase the likelihood that a court will find false association
under Section 2(a), it does not make it absolute. Alternatively, a finding of no likelihood of
trademark confusion does not eliminate the
chance that a court may find false association
under Section 2(a).
Protection in Germany
Under the Community Trade Mark Regulation (CTMR) (Council Regulation (EC) No.
207/2009, Feb. 26, 2009) and the European
Trademarks Directive (European Parliament
and Council Directive 2008/95/EC, Oct.
22, 2008), which have been implemented
in Germany by the provisions of the German
Trademark Act (Markengesetz, or MarkenG),
the principles of protecting names and identities are similar, but still different.
Names as Trademarks
With regard to the protection of a personal
name as a trademark, Article 4 of the CTMR
provides that “a Community trade mark may
consist of any signs capable of being represented graphically, particularly words, including[, inter alia,] personal names.” Similarly,
Section 3(1) of the MarkenG provides that “any
signs, particularly words, including personal
names, … which are capable of distinguishing
the goods or services of one undertaking from
those of other undertakings may be protected
as trade marks.” However, in order to preserve
rights in a CTM or a German trademark after
the grace period of five years, the mark must,
in general, be used for the goods or services
in respect of which it is registered (Art. 15(1)
CTMR; Sec. 26(1) MarkenG).
Protection Beyond the Trademark Sphere
On the other hand, personal names are protected under Section 12 of the German Civil
Code (and the national legislation of other
member states of the European Union) without
any requirement of use of the name for certain
goods or services or any use in commerce.
Section 12 provides as follows: “If the right of
a person to use a name is disputed by another
person, or if the interest of the person entitled
to the name is injured by the unauthorized use
of the same name by another person, the person entitled may require the other to remove
the infringement. If further infringements are
to be feared, the person entitled may seek a
prohibitory injunction.”
According to settled case law, Section 12
of the German Civil Code does protect the
names (including pseudonyms that are known
and thus have acquired a secondary meaning) of natural persons as well as the names
of legal entities, including public bodies and
nonprofit organizations.
However, an opposition against a CTM or
a German national trademark may not be
based on name rights under Section 12.
Don’t Oppose—Just Cancel
Under Article 8(4) of the CTMR, an opposition
against a CTM application may be based only
on a “non-registered trade mark or…another
sign used in the course of trade of more than
mere local significance.” Under Section 42
of the MarkenG, only “the proprietor of an
earlier trademark may give notice of opposi-
tion” against the registration of the contested
trademark. Thus, proprietors of name rights
other than trademarks or signs used in the
course of trade or commercial designations
are not entitled to file oppositions against
CTM applications or German trademarks.
However, pursuant to Section 13(1) of the
MarkenG, “[t]he registration of a trade mark
may be cancelled where another person…
has acquired a right other than the rights
specified in Sections 9 to 12 [(i.e., other than
trademarks or other commercial designations)
before the date of priority of the registered
trademark] throughout the entire territory
of the Federal Republic of Germany.” Under
Section 13(2) of the MarkenG, “other rights”
within the meaning of Section 13(1) includes,
inter alia, “rights in a name,” including names
under Section 12 of the German Civil Code.
While, as explained above, an opposition
may not be based on such “rights to names”
(other than those used in commerce), the proprietor is entitled to file a request for cancellation before the German Patent and Trademark Office (GPTO) under Section 51(1) of the
MarkenG. If the proprietor of the registered
trademark does not object to the cancellation
within two months of service of the notice of
the application for cancellation by the GPTO,
the registration shall be cancelled (Sec. 53(1)
MarkenG). If the proprietor of the registered
trademark objects to the cancellation within
the two-month deadline, the proprietor of the
prior name right may file an action for cancellation before the courts of ordinary jurisdiction (Sec. 55 MarkenG).
The CTMR contains quite similar provisions:
Pursuant to Article 53(2)(a) of the CTMR, a
CTM shall be “declared invalid on application
to the Office [Office for Harmonization in the
Internal Market, or OHIM] or on the basis of
a counterclaim in infringement proceedings
where the use of such trade mark may be prohibited pursuant to another earlier right under
the Community legislation or national law
governing its protection, and in particular…a
right to a name.”
Moreover, the owner of a prior name right
may seek injunctive relief and claim omission, disclosure and damages under Sections
12, 823 and 1004 of the German Civil Code
See “False Suggestion” on page 8
7
Features
if the use of a trademark (or other name or
designation) in Germany infringes his prior
name rights—always on the condition that, as
provided by Section 12, “the interest of the
person entitled to the name is injured by the
unauthorized use.”
Domain Names, Vodka and the
Catholic Church: Specifics of
Protection Under German Law
According to settled case law of the German
Federal Court of Justice (FCJ) (Bundesgericht),
an unauthorized claim to a name under Section 12 of the German Civil Code is present
when a third party, without the right to bear
a specific name, used said name without
authorization, thereby causing confusion
regarding affiliation and infringing the legitimate interests of the party rightfully bearing
the name. (See, e.g., FCJ, Dec. 2, 2004, Case
I ZR 92/02—Pro Fide Catholica; FCJ, June 14,
2006, Case I ZR 249/03—Stadt Geldern.)
Confusion regarding affiliation does not exist
only if a name is used in order to designate
another person or his goods or services,
though. It is sufficient that the claimant is
associated with facilities, goods or products
with which he has no connection. These conditions may exist, for example, if the name of
another natural or legal person is used as an
Internet domain name (see, e.g., FCJ, Nov. 22,
2001, Case I ZR 138/99—shell.de; FCJ, June
26, 2003, Case I ZR 296/00—maxem.de),
particularly if the domain name consists of
the name of a city, county, state or other public body or authority, which are also entitled to
name rights under Section 12 of the German
Civil Code (see FCJ, Sept. 9, 2006, Case I ZR
201/03—solingen.info).
On the other hand, the owner of a name may
not prohibit a descriptive use of its name or
part of its name, even if a portion of the public
incorrectly draws an association with the
owner of the name. (See FCJ, Dec. 2, 2004,
Case I ZR 92/02—Pro Fide Catholica, in which
the Federal Court of Justice rejected claims
under Section 12 of the German Civil Code
by a diocese of the Catholic Church against a
publishing company that published Catholic
literature under the title “Pro Fide Catholica”).
In Ivan Rebroff, the Higher Regional Court
(Oberlandesgericht, or OLG) of Stuttgart
denied claims under Section 12 of the German
Civil Code by the singer who used the stage
name Ivan Rebroff against the use and registration of the trademark REBROFF … VODKA.
The court held that stage names of artists can
be subject to protection under Section 12 of
the German Civil Code, but it denied likelihood
of confusion between the artist’s assumed last
name and the trademark, and thus held that
the public would not incorrectly associate the
Protect Your Trademark Portfolio
These members-only INTA resources provide practical information on trademark
opposition and cancellation in jurisdictions worldwide.
International Opposition Guide: Comparative Practice and Procedures
Searchable database of country profiles on the structure of trademark opposition practice and
procedure, including general provisions, applicable grounds, alternatives to opposition,
opponent issues, filing requirements, and post-filing stages and procedures.
Visit www.inta.org/oppositions
Trademark Cancellations: International Practice and Procedures
Searchable database of country profiles on practical information on trademark
cancellation practice and procedure, including availability of cancellation proceedings,
applicable grounds, venue for bringing such proceedings, representation, time frames,
estimated costs and rights of appeal.
Visit www.inta.org/cancellations
8 August 1, 2013 Vol. 68 No. 14
trademark REBROFF … VODKA with the singer.
(See OLG Stuttgart, Apr. 27, 2001, Case 2 U
2004/00—Ivan Rebroff.)
According to settled case law, Section 12 of
the German Civil Code shall not apply if an
infringement of a trademark or another sign
protected under the MarkenG is in dispute.
In these circumstances, the provisions of the
MarkenG shall take precedence and supersede
Section 12 (see FCJ, Nov. 22, 2001, Case I
ZR 138/99—shell.de). Thus, in the case of a
conflict between trademarks, or between trademarks and company names or “titles of works”
as defined by Section 5 of the MarkenG, the
claimant may not successfully base its claims
on Section 12 of the German Civil Code if the
action is not founded under the MarkenG (e.g.,
if there is no likelihood of confusion).
Summing It Up
Both Section 2(a) of the U.S. Trademark Act
and Section 12 of the German Civil Code
protect natural persons and institutions from
misappropriation of their names or identities,
even where those names or identities are
not used to sell closely related goods, or any
goods at all. However, there are considerable
differences between German and U.S. law
regarding how conflicts between trademarks
used in commerce and names not used in
commerce are resolved.
■
Law&Practice
ARGENTINA Proposed Bill Would Set Standard for ISP Liability
Unlike the European Union and the United
States, Argentina has no legislation addressing the liability of Internet Service Providers
(ISPs) in connection with third-party-generated content.
•
Therefore, when analyzing cases involving ISP
liability, courts have resorted to general civil
law damages principles and have applied the
standards either of fault (based on Sections
509 and 1109 of the Argentine Civil Code)
or of strict liability (based on Section 1113).
While no final decisions on the merits have
yet been rendered, there are cases pending
before the Argentine Supreme Court.
•
To address this problem, a draft bill addressing ISP liability was submitted to the Argentine
Congress on March 27, 2013. It includes the
following key provisions:
•
•
•
•
ISPs are defined as technological intermediaries that allow access, connection
or interconnection to the Internet, as well
as the transmission, hosting, posting,
direction and search of content and
information, including but not limited to
Internet access providers, cache service
providers, hosting service providers and
search engines.
Content is defined as any information,
file, data or message of any nature
•
to which access is enabled through
telematics networks.
In general, ISPs will not be held liable for
any content uploaded or generated by
any third party unless the ISP has actual
knowledge that such content is illegal
under the laws of Argentina or that it
infringes upon third parties’ rights and
it fails to remove or block access to the
content.
Particularly in cases where ISPs serve
merely as technical intermediaries or
provide Internet access, they will not be
held liable for any content as long as
they do not create or alter the content
and do not select the addressees.
It is understood that ISPs will have actual
knowledge once they are formally served
with notice of a court decision ordering them to remove or block access to
certain content.
Search engines operating under the
country code top-level domain (ccTLD) .ar
(the ccTLD corresponding to Argentina)
should include in their websites an email
address through which consumers may
submit their claims as an alternative to
court actions.
Nothing in the draft bill should be interpreted as limiting ISPs’ ability to implement self-regulatory systems providing
alternative mechanisms for the notifica-
•
tion, removal, suspension or blocking of
any content suspicious of being infringing, as long as any such mechanism
does not imply a lower level of protection
than that of the draft bill.
Any legitimate party has the right to institute court action before the judge of its
domicile and request the court to issue a
preliminary injunction ordering the ISP to
remove or block any infringing content. The
court may issue the requested injunction
without first hearing from the accused
party by ordering the applicant to provide a
prima facie showing of his rights.
In summary, if this draft bill is passed, ISP
responsibility will be considered under the
standard of fault instead of strict liability. This
means that ISPs will be held liable for infringing third-party content only if they have effective knowledge that such content is infringing
and they fail to remove or block access to it.
Contributor: Diego Fernández
John Marshall Law School, Chicago, Illinois
The Trademark Reporter Committee
Verifier: Martín Chajchir
Marval, O’Farrell & Mairal, Buenos Aires, Argentina
INTA Bulletin Law & Practice—Latin America & the
Caribbean Subcommittee
Introducing the Lefkowitz
Moot Court Competition’s
NEW Fifth Region!
Now in its 23rd year, INTA’s Saul Lefkowitz Moot Court Competition has expanded to nearly 100 teams from various
law schools across the United States. With that growth comes a new fifth region based in Dallas, Texas!
Save the date! Regional Oral Arguments will be held on Saturday, February 8, 2014.
For more information, or to volunteer as an oral argument or brief reading judge, visit
www.inta.org/lefkowitz or contact Carin Diep-Dixon at [email protected]
9
Law&Practice
BRAZIL Superior Court Allows Both Moral and Material Damages Claims
Recently, the Brazilian Superior Court of
Justice (STJ) ruled on a Special Appeal filed by
San Remo Empreendimentos Comerciais Ltda.
(Appellant) against a decision issued by the
São Paulo State Court of Justice in a lawsuit
against the company São Paulo Alpargatas S/A
(Appellee). One of the few of its kind rendered
by a Brazilian national court, the STJ’s decision
corrected the State Court’s failure to recognize
the different legal bases for and effects of
material and moral damages.
The parties had entered into a trademark
license agreement by which San Remo granted
São Paulo the right to use its most important
trademark, DRIBLE. According to the Appellant’s claims, the Appellee did not exert the
necessary business efforts to use and defend
the reputation of the trademark through its
failure to trade the whole range of branded
products, by trading low-quality branded
products, by not creating a sales team for the
products and by not carrying out marketing ac-
tivities to boost the sales of branded products.
As a result, the trademark DRIBLE suffered a
significant loss in business value.
San Remo filed a lawsuit requesting the
recovery of “moral damages caused to the
trademark DRIBLE by the omission of the
[defendant].” Later on, it filed a second lawsuit, aimed at recovering “material damages
consisting of the loss of the trademark value
since the execution of the license agreement.”
The first instance judge for this second lawsuit
rejected the claims, clarifying that this would
be a case of lis pendens, given that the substantial damages were to be ruled on in the
scope of the first lawsuit. The São Paulo State
Court of Justice affirmed this holding.
The matter was sent to the STJ, the court responsible for third instance decisions concerning federal legal matters in Brazil. The Rapporteur, Justice Nancy Andrighi, whose opinion was
adopted by all of her peers, wrote: “Appellant
has requested the recovery of moral damages
(first lawsuit) and later the recovery of material
damages (second lawsuit); the analysis of the
second lawsuit, based on an essentially distinct
legal asset, cannot be barred by lis pendens,
even if the wording of the claims is similar.”
(San Remo Empreendimentos Comerciais
Ltda. v. São Paulo Alpargatas S/A, REsp No.
1.368.210-SP (STJ June 4, 2013).)
A motion for clarification and a special appeal
based on the STJ’s regulations may still be
submitted, but there is little chance of their
substantially changing the scope of the decision. The lawsuits will then be returned to the
first instance judges for regular proceedings.
Contributor: Pedro Vilhena
Veirano Advogados, São Paulo
Verifier: Wilson Pinheiro Jabur
Salusse Marangoni Advogados, São Paulo
Council Delivers Guidelines for Analyzing
COLOMBIA Alleged Confusingly Similar Marks
On May 23, 2013, the Council of State, the
highest contentious court in Colombia, issued
a decision in connection with a nullity claim
processed under Dossier No. 11001-0324000-2003-00183-01 and filed in 2003 by
Kellogg Company, owner of the trademark ZUCARITAS in Class 30. The claim challenged the
Superintendence of Industry and Commerce’s
(SIC) resolutions that granted registration of
the trademark ZUCOSOS, also in Class 30, in
the name of Société des Produits Nestlé S.A.
stressed on each mark and the shared consonants and/or vowels, will determine whether
the marks are confusingly similar.
In addition, a commonly used term that forms
part of a trademark will not be taken into
consideration, given that such terms cannot be
monopolized.
The Council of State ruled that the marks ZUCARITAS and ZUCOSOS could not be deemed
confusingly similar. The decision affirmed the
validity of SIC’s resolutions and settled the dispute between two well-known breakfast cereal
trademarks.
The court further stated that the prevailing
criteria of jurisprudential and industrial property experts emphasize that the most relevant
element of a trademark registration is the
wording, which generates brand awareness
among consumers. Therefore, in the comparison of trademarks SIC will focus on the word
elements, taking into consideration the abovementioned guidelines.
Specifically, the court held that, in comparing
word marks, the length of the word, as well as
the number of syllables, the syllable that is
While this interpretation does not require
amendment of the Andean Community’s
industrial property regime, the court said that
10 August 1, 2013 Vol. 68 No. 14
applicants must take the announced criteria
into account when selecting their trademarks,
as well as when deciding whether to file an opposition against a third party’s mark.
In the Council of State’s view, following these
practices will help applicants to avoid oppositions to or rejections of their own applications,
as well as reduce the amounts spent attempting to impede the registration of applications
that, upon analysis, clearly do not infringe the
applicant’s rights.
Contributor: Jorge Chávarro
Cavelier Abogados, Bogotá
INTA Bulletin Law & Practice—Latin America & the
Caribbean Subcommittee
Verifier: Luz Helena Adarve
Cardenas & Cardenas, Bogotá
Law&Practice
EUROPEAN UNION Association Welcomes Specsavers Decision Continued from page 1
also had CTM registrations for SPECSAVERS
as a single word mark.
The defendant, Asda (the name often appears in all capitals), operates a chain of
supermarkets that includes optician services.
In October 2009, Asda organized a marketing
campaign through various media that was
designed to relaunch its optical business,
with the clear aim of taking market share
from Specsavers. The advertising campaign
used two slogans that made deliberate reference to the firm’s competitor: “Be a real spec
saver at Asda” and “Spec savings at ASDA.”
In addition, ASDA used a logo (right) comprising two abutting, not overlapping, white ovals
together with the words “ASDA” and “Opticians” written across them in light green,
the same color green also being used as the
background color to the abutting white ovals.
Specsavers promptly brought an action
against Asda alleging that the defendant’s
logo infringed its trademarks under Articles
9(1)(b) and 9(1)(c) of the Community Trade
Mark Regulation (CTMR) (Regulation No.
207/2009).
The UK High Court held that some aspects of
Asda’s marketing campaign did not infringe
Specsavers’ trademarks. The court found
Specsavers’ trademark for the wordless logo
invalid for non-use, and consequently infringement in this regard was not considered.
On appeal, however, the UK Court of Appeal
held that Specsavers’ figurative marks could
prevent Asda from using the slogans and
logos in its advertising campaign.
The Court of Appeal referred two main questions to the CJEU. The first was whether
the plaintiff’s use of the double-oval logo
jointly with the word “Specsavers” constituted
genuine use of the wordless mark as well.
The second question was whether the color
green, which Specsavers has always used to
represent its wordless logo mark and which
Asda used in its advertising, was relevant to
the assessment of likelihood of confusion
and taking unfair advantage.
Defendant’s Logo
In its amicus brief, INTA had argued, in respect of the first question, that where a trader
has separate CTM registrations for a graphic
device mark and a word mark and uses the
two together, such use is capable of amounting to use of the single graphic device mark.
The Association further argued that it makes
no difference if the word mark is superimposed over the graphic device or if the trader
also has the combined mark registered as a
CTM, as long as the average consumer perceives each and all of the marks as functioning as a trademark.
The CJEU found that “the condition of “genuine use,” within the meaning of [the relevant]
provisions of the CTMR, may be fulfilled where
a Community figurative mark is used only in
conjunction with a Community word mark that
is superimposed over it and the combination of those two marks is itself registered
as a CTM, to the extent that the differences
between the form in which the combined
trademark is used and that in which it was
registered do not change the distinctive character of that trademark as registered.”
With regard to the second question, on the
relevance of the use of the particular color
green to the assessment of infringement,
the CJEU ruled that where a CTM is not
registered in color but the owner has used
it extensively in a particular color, with the
result that the mark has become associated
with that color in the mind of a significant
portion of the public, that color is relevant
in the global assessment of the likelihood of
confusion or unfair advantage. Likewise, the
Court decided where the potential infringer
is itself commonly associated with the color
used for the mark, such as Asda’s green in
this case, such association can potentially
counteract confusion or association with
the earlier mark. The answer to the second
question reflects INTA’s position as set out in
its amicus brief—that actual use of color (by
either party) can indeed be relevant in the
assessment of trademark infringement.
Tom Scourfield (CMS Cameron McKenna LLP,
UK), Simon W. Tracy (Bear & Wolf IP LLP, UK)
and Fleur Folmer (NautaDutilh N.V., The Netherlands), wrote INTA’s brief, assisted by other
members of the Amicus—Europe Subcommittee.
Contributor: Fleur Folmer
NautaDutilh N.V., Amsterdam, The Netherlands
Amicus Committee—Europe Subcommittee
Verifier: Mary Bleahene
FRKelly, Dublin, Ireland
INTA Bulletin Law & Practice—Europe & Central
Asia Subcommittee
Searchable database on the cancellation practice and procedure
in over 85 jurisdictions worldwide?
Trademark Cancellations on INTA’s Global Trademark Research Page
Visit www.inta.org/Cancellations
11
Law&Practice
EUROPEAN UNION Use Is Still Key When It Comes to Shape Marks
Voss of Norway ASA, a producer of bottled water, registered a three-dimensional Community
trade mark (CTM) depicting a cylindrical glass
bottle with a non-transparent cap, for beverages in Classes 32 and 33 (CTM No. 3156163,
registered Dec. 3, 2004). In July 2008, Nordic
Spirit AB applied for a declaration of invalidity
in respect of Voss’s trademark. The Cancellation Division of OHIM (Office for Harmonization in the Internal Market) rejected Nordic’s
application; however, OHIM’s First Board of
Appeal reversed the rejection and granted
Nordic the declaration of invalidity. The Board
determined that beverages were almost always
sold in containers bearing a verbal or graphic
sign that enabled consumers to differentiate between products. Customers were not
used to choosing among forms of unmarked
packaging and would not rely on the shape of
a container without having been exposed to
the shape for a sufficient time to enable them
to recognize it at a glance (as, for example, in
the case of the COCA-COLA bottle). The Board
concluded that bottles for beverages usually
were cylindrical and that the lack of a narrow
neck made Voss’s bottle only a mere variant
of other containers available on the market.
Indeed, the Board found, a similar bottle had
been on the market in the past. Voss took the
matter to the European General Court.
The General Court found that the Board of
Appeal had applied the correct test (based on
case law precedent), namely that an assessment of the distinctive character of a threedimensional mark is made through examination of whether the mark departs significantly
from the norms and customs of the sector
concerned. The Court agreed with the factual
finding that the Voss bottle was a mere variant
of existing bottles. Per the Court, average con-
“[E]ven if the applicant’s bottle is one of a
kind,” the Court said, “that does not by itself
mean that it departs significantly from the
norms and customs of the sector and that
it therefore has distinctive character.” (Voss
of Norway ASA v. OHIM, Case T-178/11 (GC
(First Chamber) May 28, 2013).)
This case demonstrates that it is still very difficult to get a three-dimensional shape mark
for packaging such as this registered without
evidence that the mark has, in fact, acquired
distinctiveness through use, even if the bottle
is “one of a kind.”
Voss has leave to appeal the decision on
points of law only, so this case may not have
reached its definitive conclusion just yet.
sumers were not in the habit of making assumptions about the origin of goods based
on the shape of the packaging, and it could
be more difficult to establish distinctive character for a three-dimensional mark than for
a word or logo mark so that customers could
distinguish it without detailed examination.
Contributors: Dawn Osborne and Aneeqa Meedin
Palmer Biggs Legal, London, UK
Ms. Osborne is a member of the INTA Bulletin Law
& Practice—Europe & Central Asia Subcommittee
Verifier: Martin Viefhues
JONAS, Cologne, Germany
INTA Bulletin Law & Practice—Europe & Central
Asia Subcommittee
&
October 3–4, 2013
Chicago, Illinois
Navigate the legal and regulatory landscape and stay ahead of the
branding and social media curve!
Attend this conference and gain a better understanding of how to best protect your company’s or client’s
interests, and how legal and marketing can work together more effectively toward a common goal.
CLE will be offered.
Register today: www.inta.org /2013branding
12 August 1, 2013 Vol. 68 No. 14
Law&Practice
IRAN McDonald’s Logo Deemed Famous
Parting with the General Court, the Court of
Appeal recently held that an Iranian company
could not register a mark that was similar to
McDonald’s famous M logo.
Mazand Malt Corporation had registered a
logo with the letter M for production, packing
and sale of seeds and malt concentrate, puree
and fruit paste, tomato paste and nonalcoholic
beer in Classes 29, 30, 32, 35 and 39. This
logo was very similar to the M logo registered
by McDonald’s, and McDonald’s therefore
moved to cancel Mazand’s newly-issued trademark registration.
The McDonald’s trademark application did not
include some of the goods that Mazand had
applied for—for example, fruit paste and tomato
paste—in the above-mentioned classes. However, McDonald’s claimed that it had applied to
register its logo before Mazand and that the M
logo was a famous trademark. McDonald’s also
argued that the defendant’s trademark was
similar to the McDonald’s logo in script, appearance and pronunciation, and hence it would be
misleading to ordinary consumers.
The General Court held that Mazand’s logo,
which includes a green leaf, one black and
gray M logo and one blue M logo [pictured],
was not too similar to McDonald’s logo to
mislead and confuse ordinary consumers.
Therefore, the court rejected the plaintiff’s
request to cancel the defendant’s registration.
McDonald’s appealed the decision.
The Court of Appeal reversed, ruling that the
lower court’s decision was not correct for the
following reasons:
1. Mazand’s logo was unquestionably similar to that of McDonald’s.
2. Because both logos were either registered in the same classes or overlapped
in many classes, goods bearing the
Mazand Malt Corporation logo would
mislead and confuse ordinary consumers
as to the source of the goods.
3. The plaintiff’s trademark application was
filed prior to the defendant’s application,
giving McDonald’s priority.
4. In accordance with Article 32 of the
Iranian Patents, Industrial Designs, and
Trademarks Act and Article 6bis (1) of
the Paris Convention, the imitation of
famous trademarks for similar goods is
prohibited.
As there is no clear precedent regarding
famous marks in Iran, it is interesting that the
Court of Appeal recognized the McDonald’s
logo as a famous trademark, while the General
Court did not.
Contributor: Hossein Badamchi, Ph.D.
Reza Badamchi & Associates, Tehran, Iran
Verifier: Charles Shaban
Abu-Ghazaleh Intellectual Property,
Amman, Jordan
Chair, INTA Bulletin Law & Practice—Middle East &
Africa Subcommittee
NORTH KOREA Specific License Required for U.S. Applicants
The U.S. Treasury Department’s Office of
Foreign Assets Control (OFAC) has advised that
it is interpreting its North Korean sanctions as
requiring that parties obtain a Specific License
to register, maintain and protect their intellectual property rights, including trademark rights
in the country.
A Specific License is effectively a permit issued
by OFAC in response to an application by a
particular individual or company regarding an
activity that would otherwise be prohibited by
an embargo or sanctions program. Specific Licenses are granted by OFAC on a discretionary
basis. Each Specific License bears a control
number that can be verified with OFAC.
Once obtained, a Specific License will permit a
U.S. entity to engage and pay a North Korean
attorney or representative to protect and
pursue its trademark rights. The same Specific
License may include permission to pay fees to
the North Korean government for the protection of trademark rights.
Requests for a Specific License to allow payment of intellectual property fees and costs in
North Korea should be made in writing to the
Office of Foreign Assets Control, Department of
the Treasury, Treasury Annex, Washington, DC
20220, telephone: (202) 622-2480. A request
must include the following information:
1. Purposes of the license;
2. Name of the individual or company
requesting the license;
3. Identity of the prospective payees;
4. Amount of prospective payments; and
5. Whether the request is in relation to
a new filing, an existing registration or
right, or a contentious matter (opposition, cancellation or litigation).
Contributor: Paul F. Kilmer
Holland & Knight LLP, Washington, DC, USA
INTA Bulletin Law & Practice—Features
Subcommittee
Verifier: Michael J. Mlotkowski
Roberts Mlotkowski Safran & Cole, PC,
Washington, DC, USA
Alternative Dispute Resolution Committee—
Outreach Subcommittee
13
Law&Practice
NEW ZEALAND High Court Sets Out Test for Reply Evidence
The New Zealand High Court recently confirmed the correct interpretation of “evidence
strictly in reply” in trademark proceedings.
Parties exchange evidence during trademark
proceedings before the Commissioner of Trade
Marks. There are three stages of exchange.
First, an opponent (or applicant for rectification, revocation or a declaration of invalidity)
files evidence to support the opposition (or
application). The applicant (or the owner of the
registration) may then file its evidence. The
opponent (or applicant for rectification, revocation or a declaration of invalidity) may then file
evidence “strictly in reply.”
In Scotch Whisky Association v. The Mill
Liquor Save Ltd ([2012] NZHC 3205 (Nov. 30,
2012)), Justice Kós held that the Assistant
Commissioner of Trade Marks was correct to
exclude five statutory declarations sought to
be adduced as evidence in reply in opposition
proceedings. Justice Kós summarized the “real
test” as “whether: (a) The ‘reply evidence’
could have been filed in support of the notice
of opposition…; and (b) the dominant purpose
for its being adduced in reply is to support
the original notice of opposition, as opposed
to responding directly to something said in
evidence from the applicant.”
Evidential matters form a significant component of proceedings before the Commissioner
of Trade Marks, and often may be determinative. The High Court’s decision is yet to be
tested on a range of fact situations. However, it
shows that parties should ensure that key evidence is adduced at the earliest opportunity.
Contributors: Edward Butler and Barbara Sullivan
Henry Hughes, Wellington
Ms. Sullivan is Co-Chair of the
INTA Bulletin Committee
Verifier: John Glengarry
Buddle Findlay, Auckland
INTA’s 2013 Leadership Meeting
Registration opens late July.
More than 1,000 INTA volunteers will convene to exchange ideas, attend advanced-level educational sessions,
conduct committee business and network with colleagues from around the world.
Visit www.inta.org/leadership
14 August 1, 2013 Vol. 68 No. 14
Law&Practice
RUSSIA Specialized IP Court Now Functioning
As previously reported, Russian Federal
Constitutional Law No. 4-FKZ of December 6,
2011 introduced a new, specialized court, the
Intellectual Property Rights Court (“IPR Court”),
into the Russian judicial system. (See INTA
Bulletin, Vol. 67 No. 6, March 15, 2012.) Law
4-FKZ provided that the IPR Court had to be
established no later than February 1, 2013.
On July 2, 2013, after a five-month wait,
the Plenum of the Supreme Arbitrazh (Commercial) Court of the Russian Federation
announced that the IPR Court would start its
operations the next day. On July 3, the IPR
Court, which is located in Moscow, began to
take on cases concerning IP rights, including
patents, trademarks and trade secrets.
Pending IPR cases that were filed with the
regular Russian courts before July 3, 2013,
will not be transferred to the IPR Court, and
the courts where these cases were initially
filed will adjudicate them. However, all new IPR
cases will be filed with and considered by the
2013
new IPR Court within its jurisdiction. If a case
involves both IPR and non-IPR claims (e.g.,
breach of contract), generally the IPR Court,
not the regular court, will adjudicate the case.
Article 26.1 of amended Federal Constitutional
Law No. N 1-FKZ of December 1, 1996, titled
“On the Judicial System of the Russian Federation,” provides: “[T]he court for intellectual property rights is a specialized commercial court
that, within its jurisdiction, considers cases regarding protection of intellectual property rights
as a court of first instance [i.e., a trial court] and
cassation instance [i.e., an appellate court].”
Although the IPR Court existed on paper before
February 1, 2013, it did not function until July
owing to some institutional issues. However,
during this period, 13 judges and support staff
were appointed. In the future, the Court will
consist of at least 30 judges.
The staff of the IPR Court consists of 15 advisors who have some technical background
in different arts and technologies and who
may assist judges on technical issues on a
permanent basis. In addition, the Court may
call on specialists in certain fields of science
and technology to participate in trials. Such
specialists may give only oral opinion and
recommendations to the Court.
Future decisions of the IPR Court will be
published on the Court’s website. Although an
English version is not yet available, the website
contains all the necessary information and provides search functionalities.
Contributor: Tatiana V. Petrova
Sojuzpatent, Moscow, Russia
Verifier: Maxim A. Voltchenko
Duane Morris LLP, Philadelphia, USA
Both are members of the INTA Bulletin Law &
Practice—Europe & Central Asia Subcommittee.
HOT TM TOP
ICS
in theMEASARegion
DUBAI, UNITED ARAB EMIRATES | DECEMBER 9–10
Save the date!
INTA’s first-ever conference for trademark owners and legal
professionals in the Middle East, Africa, South Asia and beyond.
Leading trademark experts and government officials will discuss:
• Public-Private Partnerships
• Trademark Valuation
• Dispute Resolution
• Customs Border Measures
• Well-Known Marks
• Licensing Issues in the Region
• Regional hot IP topics, and more!
Check back in August 2013 for more information and to register. CLE will be offered!
Visit www.inta.org/Dubai2013
15
Law&Practice
UNITED STATES Court Findings Do Not Have Preclusive Effect on TTAB Proceedings
The Court of Appeals for the Federal Circuit
(CAFC) held that challenges in the Trademark Trial and Appeal Board (TTAB or Board)
were broader in scope than a trademark
infringement action. Therefore, said the
Court, a finding of lack of infringement did
not have a preclusive effect in a related TTAB
action. (Claim preclusion deals with whether
you can file a second suit based on the
same claim filed in an earlier lawsuit; issue
preclusion deals with whether you can relitigate an issue that was litigated in an earlier
case). Also, a vacated judgment on a lack
of dilution that was voluntarily dismissed on
remand cannot operate as issue preclusion
or claim preclusion. The TTAB’s decision was
reversed and the proceeding was remanded
to the TTAB for further consideration. Levi
Strauss & Co. v. Abercrombie & Fitch Trading
Co., Appeal Nos. 2012-1495, 2012-1496
(Fed. Cir. June 18, 2013).
In 2006, Levi Strauss had opposed and then
attempted to cancel Abercrombie’s registration for a stitching design that was a mirror
image of its well-known Arcuate (bow-shaped)
pocket stitching design, which was the subject
of multiple federal trademark registrations. The
following year, Levi Strauss sued Abercrombie in
U.S. district court, claiming that the defendant’s
use of the stitching design at issue in the TTAB
proceeding infringed and diluted its Arcuate
mark. The TTAB action was suspended pending
the disposition of the district court case.
The district court held that there was no
infringement (and no dilution). In a partially
successful appeal, the Ninth Circuit held,
in agreement with INTA’s amicus brief, that
marks do not need to be “identical or nearly
identical” to support a finding of likelihood of
dilution by blurring. Subsequently, however,
the federal court action was voluntarily terminated and the TTAB proceeding resumed.
Abercrombie filed a motion for summary
judgment. The Board held that the district
court decision barred the TTAB proceeding
on the ground of issue preclusion. Abercrombie’s claim of claim preclusion failed
because of significant differences between
the “transactional facts” required for a TTAB
action and an infringement action.
The CAFC noted that the district court consid-
ered only whether the one product on which Abercrombie was actually using the mark (jeans)
infringed Levi Strauss’s marks. The opposition
required the TTAB to analyze whether any of the
goods for which Abercrombie sought registration would lead to a likelihood of confusion.
Also, the trademark application and registration
process assumes “all” channels of trade, while
a trademark action in federal court examines
the real-world market conditions.
This decision reminds practitioners that a
trademark action in federal court and a TTAB
action are not necessarily interchangeable.
Specifically, a district court’s findings may not
necessarily bar a TTAB action on issue preclusion and/or claim preclusion grounds.
Contributor: Janice Housey
Symbus Law Group, LLC, McLean, Virginia
Verifier: Lisa Iverson
Neal & McDevitt, LLC, Northfield, Illinois
Ms. Iverson is Chair of the INTA Bulletin Law &
Practice—United States & Canada Subcommittee.
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24 hours a day, from anywhere in the world. Equipped with this valuable
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Visit www.inta.org/e-learning
16 August 1, 2013 Vol. 68 No. 14
Law&Practice
UNITED STATES File History of Cited Registration Not Automatically of Record
The Trademark Trial and Appeal Board (TTAB or
Board) held that it would not consider the file
history of a cited registration that had not previously been made of record in the applicant’s
appeal, and consequently it partially affirmed
the examiner’s refusal to register. In re Sela
Products, LLC, Serial No. 77629624 (T.T.A.B.
Mar. 26, 2013) (precedential).
The applicant, Sela Products, LLC, sought to
register the mark FORZA for, generally, audiovisual installation components, including mounting brackets in Class 6 and power components
in Class 9.
The U.S. Patent and Trademark Office refused
registration of the application based on a
likelihood of confusion with two registrations
for FORZA-formative marks owned by separate
third parties, both for goods in Class 9:
•
•
FORZA POWER TECHNOLOGIES (FORZA
meaning “force,” with POWER TECHNOLOGIES disclaimed), for, generally, power
supplies, including surge protectors; and
FORZA MILAN! (FORZA meaning “go”;
thus, “Go, Milan!”), for a number of
goods, including optical and electrical
cables (see below).
On appeal, the applicant sought to rely on
statements made by the owner of the FORZA
POWER TECHNOLOGIES registration during its
prosecution. The TTAB held that such statements could not be considered because the
registration file history was not made of record
by the applicant. Moreover, even if the statements were considered, they “[could] not be
viewed as binding judicial admissions, since
a decision maker may not consider a party’s
opinion relating to the ultimate legal conclusion of likelihood of confusion (particularly in
another case) as a binding admission of fact.”
Turning to the likelihood-of-confusion refusals,
the TTAB agreed with the applicant that the
FORZA MILAN! mark did not create a likelihood
of confusion with the applicant’s mark, and
instead focused on the FORZA POWER TECHNOLOGIES registration.
The TTAB found that the marks, goods and
channels of trade were similar, such that
confusion was likely. The Board was not
persuaded by the applicant’s arguments that
(1) the channels of trade were different (the
applicant’s direct-to-installers versus the
registrant’s retail channels); (2) the applicant’s
purchasers were sophisticated commercial
contractors (usually, consumer sophistication
may obviate potential confusion in the case of
otherwise confusingly similar marks; here, the
TTAB instead held that commercial contractors’ knowledge of the industry would reinforce potential confusion); and (3) the FORZA
POWER TECHNOLOGIES mark was weak, owing
to a large number registrations for FORZA and
FORCE-formative marks for similar electrical
power-related or power supply-related goods
and services.
Accordingly, the TTAB affirmed the refusal
based on the FORZA POWER TECHNOLOGIES
citation and reversed the refusal based on the
FORZA MILAN! registration.
Contributor: Elizabeth K. Brock
Harness, Dickey & Pierce, PLC, Troy, Michigan
INTA Bulletin Law & Practice—United States &
Canada Subcommittee
Verifier: Jessica (Godell) Bahr
Neal & McDevitt, LLC, Northfield, Illinois
Upcoming Issue: Volume 103, Number 4
• Jerre Swann explores the evolution of dilution in the United States
• Martin Senftleben analyzes whether public domain preservation in
EU trademark law can serve as a model for other regions
• Anne Gilson LaLonde attempts to unravel the mysteries of the U.S.
Supplemental Register
• Junko Izumi reviews three-dimensional trademark registration in Japan
• Ladas Memorial Award Professional Winners Yvette Liebesman and
Benjamin Wilson discuss marks of resold goods
• Ladas Memorial Award Student Winner Ukeme Jeter comments on
new gTLD expansion and its impact on government regulation and
trademark owners
Contact the Managing Editor at [email protected] or visit www.inta.org /tmr
17
INTA 2013 Calendar of Events
Plan your calendar with these INTA events and stay up to date on
issues that affect your trademarks—domestically, regionally and globally.
September 19 September 23–October 4
October 3–4
October 10
October 15–November 25
November 12–16 December 9–10
INTA-USPTO Roundtable
U.S. Roundtables
Branding and Social Media Conference
INTA-USPTO Roundtable
TMA Roundtables
Leadership Meeting
Hot Trademark Topics in the
MEASA Region Conference
Glen Allen, VA USA
Various U.S. Cities
Chicago, IL USA
New York, NY USA
Various U.S. Cities
Miami Beach, FL USA
Dubai, UAE
Learn more about INTA events, including international roundtables, networking receptions,
E-Learning, academic competitions and more, at www.inta.org/programs
Dates and topics subject to change. Contact [email protected] for the latest information.
Exhibitions and Sponsorship
To inquire about sponsorship or exhibition opportunities for
INTA’s events, visit www.inta.org or email [email protected]
www.inta.org
Visit the INTA Bulletin on www.inta.org to download the current
issue or to search issues from January 1, 2000, to the present.
Email Addresses
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