INTA Bulletin

INTABulletin
The Voice of the International Trademark Association
AssociationNews
AssociationNews
Nominations for INTA’s Board of Directors,
Officers and Counsel
On November 12, 2014, the Annual Meeting
of Members will be held at 8:30 a.m. at
INTA’s Leadership Meeting in Phoenix, Arizona, USA, in order for the voting members
of the Association to consider the following
persons for the INTA Board of Directors:
Board of Directors
Nominees for Term Ending
December 31, 2015
Tish Berard, Hearts On Fire Company LLC
(USA)
J. Scott Evans, Adobe Systems Incorporated
(USA)
Joseph Ferretti, PepsiCo, Inc./Frito-Lay, Inc.
(USA)
David Lossignol, Novartis Pharma AG
(Switzerland)
Ronald van Tuijl, JT International S.A.
(Switzerland)
Nominees for Term Ending
December 31, 2017
Catherine Boudot, Biofarma (France)
Peter Dernbach, Winkler Partners (Taiwan)
Elisabeth Escobar, Marriott International, Inc.
(USA)
Elena Grimme, Microsoft Corporation (USA)
Brenda M. Wood Kahari, B.W. KAHARI
(Zimbabwe)
Stacey Keller, Citigroup Inc. (USA)
Christy Susman, Jack Daniel’s Properties,
Inc. (USA)
Zeeger Vink, Lacoste S.A. (France)
Neil Wilkof, Dr. Eyal Bressler Ltd. (Israel)
Brian J. Winterfeldt, Katten Muchin
Rosenman LLP (USA)
In This Issue
AssociationNews
Term Ending December 31, 2015
Gustavo Giay, Marval, O’Farrell & Mairal
(Argentina)
Law&Practice
TMAP Attendees Take Home Trademark Tips
3
INTA Raises Awareness with Madrid-Focused Seminars in India
3
Recent Roundtables
6
In-House Idea Exchange: Anticounterfeiting Best Practices
7
Volunteer Spotlight Dana Bentata
Mike Mlotkowski
9
Feature
10
Interview: Ljiljana
Kuterovac, State
Intellectual Property
Office of the Republic
of Croatia
Directors Continuing to Serve
See “Nominations” on page 2
A Turning Tide: Arbitrating International Trademark Disputes
and the Importance of the New
WIPO Arbitration Rules
November 1 2014 Vol. 69 No. 20
Argentina13
Austria13
Burundi13
Ecuador14
European Union
14, 15
Israel15
Italy16
Jamaica17
Singapore18
United States
19
Uruguay19
Prior to her appointment as Director General of
the State Intellectual Property Office of Croatia
(SIPO) in June 2012, Ljiljana Kuterovac served
as Deputy Director General and before that
Assistant Director General in charge of the Department for the Development of the Intellectual Property System (formerly the Information
and Cooperation Department). She joined the
SIPO in September 1999, and before taking
the above-mentioned managerial positions
had worked as head of section, senior advisor,
and advisor in the fields of patents, IP information and cooperation with the stakeholders in
industry and the R&D sector. Previously she
had worked as a researcher at the University
of Zagreb, Faculty of Electrical Engineering and
Computing, in the fields of power engineering
and electrical machines.
How did you come to work in trademarks/
intellectual property?
Starting my career as a researcher in the
R&D sector, I developed an interest for further
practical application of the research results,
which led to an interest in the patent field. After joining the SIPO I was first trained in patent
examination. After acquiring the required skills
I started to work in the field of cooperation with
stakeholders (users of the IP system) and the
See “Interview” on page 4
AssociationNews
Nominations for INTA’s Board of Directors,
Officers and Counsel Continued from page 1
Shwetasree Majumder, Fidus Law Chambers
(India)
Dana Northcott, Amazon.com, Inc. (USA)
Junghoon Kenneth Oh, LG Display Co., Ltd.
(South Korea)
Purvi Patel, Haynes and Boone, LLP (USA)
David Stone, Simmons & Simmons LLP (UK)
Tiffany Trunko, Pfizer Inc. (USA)
Fabricio Vayra, Time Warner Inc. (USA)
Vanni Volpi, GUCCI (Italy)
Term Ending December 31, 2016
Lori Ball, Molson Coors Canada (Canada)
Susan Brady Blasco, Muncy, Geissler, Olds &
Lowe, PLLC (USA)
Brian Brokate, Gibney Anthony & Flaherty
(USA)
Zhen (Katie) Feng, Hogan Lovells (Shanghai)
Intellectual Property Service Co. Ltd. (China)
Jomarie Fredericks, Rotary International (USA)
INTA Bulletin Committee
To contact the INTA Bulletin Committee,
email [email protected].
Chair
Barbara Sullivan, Henry Hughes
Vice Chair
Liisa Thomas, Winston & Strawn LLP
Co-Chairs, Features Subcommittee
Elizabeth Buckingham, Dorsey &
Whitney
Peter McAleese, AKRAN Intellectual
Property Srl
Co-Chairs, Association News
Subcommittee
Barbara Barron Kelly, Corsearch
Katherine Dimock, Gowling, Lafleur,
Henderson
Co-Chairs, Law & Practice: AsiaPacific Subcommittee
Chetan Chadha, Chadha & Chadha,
An Intellectual Property Law Firm
Sheila Henderson, Richemont International
Limited (UK)
Cathy Lueders, MasterCard International
Incorporated (USA)
Geri Lynn Mankoff-Elias, Kate Spade &
Company (USA)
David McDonald, Johnson & Johnson (USA)
Rick McMurtry, Turner Broadcasting System,
Inc. (USA)
Elizabeth Pearce, American International
Group, Inc. (USA)
Karin Sandberg, Harmsen Utescher (Germany)
Officers and Counsel
At the Leadership Meeting, the Board will
vote on the following nominations for
Officers and Counsel:
President: J. Scott Evans, Adobe Systems
Incorporated (USA)
President Elect: Ronald van Tuijl,
JT International S.A. (Switzerland)
Vice President & Secretary: Joseph Ferretti,
PepsiCo, Inc./Frito-Lay, Inc. (USA)
Vice President: Tish Berard, Hearts On Fire
Company LLC (USA)
Treasurer: David Lossignol, Novartis Pharma
AG (Switzerland)
Counsel: David Fleming, Brinks Gilson & Lione
(USA)
Immediate Past President and Ex Officio:
Mei-lan Stark, Fox Entertainment Group (USA)
Co-Chairs, Law & Practice: Europe &
Central Asia Subcommittee
Mary Bleahene, FRKelly
INTA Bulletin Staff
INTA Officers & Counsel
Chief Executive Officer
Etienne Sanz de Acedo
President
Mei-lan Stark, Fox Entertainment Group
Thomas Mudd, Zeiner & Zeiner
Director, Marketing and
Communications
James F. Bush
President Elect
J. Scott Evans, Adobe Systems
Incorporated
Managing Editor, News & Policy
Eileen McDermott
Vice President
Gabrielle Olsson Skalin, Inter
IKEA Holding Services S.A.
Co-Chairs, Law & Practice:
Latin America & the Caribbean
Subcommittee
Martín Chajchir, Marval, O’Farrell
& Mairal
Carlos Corrales-Azuola, Corrales Core
IP
Chair, Law & Practice: Middle East &
Africa Subcommittee
Ghaida Ala’Eddein, Saba & Co. IP
Co-Chairs, Law & Practice: United
States & Canada Subcommittee
Robert Felber, Waller, Lansden,
Dortch & Davis
Catherine Hoffman, Mayback &
Hoffman
Senior Periodicals Editor
Joel L. Bromberg
Designer
Eric Mehlenbeck
Vice President
Lucy Nichols, The Center for
Responsible Enterprise
and Trade (CREATe)
Treasurer
Joseph Ferretti, PepsiCo, Inc./
Frito-Lay, Inc.
Secretary
Ronald Van Tuijl, JT International S.A.
Counsel
David Fleming, Brinks Gilson & Lione
Joseph Yang, Lee and Li,
Attorneys at Law
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.
© 2014 International Trademark Association
2 November 1, 2014 Vol. 69 No. 20
AssociationNews
TMAP Attendees Take Home Trademark Tips
INTA’s 2014 Trademark Administrators and
Practitioners (TMAP) Meeting, held in Arlington, Virginia, October 12–15, was attended by
more than 400 trademark professionals. The
program included a variety of interactive and
engaging sessions to arm attendees with the
latest practice and industry tips in managing
global trademark portfolios.
Three days of programming educated attendees
on a wealth of topics, including leadership development; customs and anticounterfeiting issues;
litigation; online enforcement; effective presentation techniques; crossover IP and fluid marks;
the Internet; ethics; and legislative updates from
OHIM, the USPTO and the China IP Attache.
“Social Media: The Shifting Landscape” featured Tamara Carmichael of Loeb & Loeb and
Katie Staba of Re:Sources USA, who discussed
the myriad ways that trademarks are used in
social media and how to implement social media and digital policies. They discussed topics
such as the use of hashtags in clearing the
use of a title for promotion. A major takeaway
from the session was that brand owners must
exert control over content that is posted: plan
ahead, monitor online presence continuously,
enforce wisely and always be aware of platforms’ terms of service.
Another session, “TM5: Global Harmonization Efforts,” gave an in-depth overview of
the Trademark Trilateral Partnership and
the TM5—an outgrowth of the Partnership—
and its efforts to assist companies in doing
business in the global market. Speakers Mary
Boney Denison of the U.S. Patent and Trademark Office (USPTO) and Nicolas Vigneron of
the Office for Harmonization in the Internal
Market (OHIM) gave an overview of projects
spawned from this cooperative framework,
which is led by the Japan Patent Office, OHIM,
the USPTO, the Korean Intellectual Property
Office and China’s State Administration for
Industry and Commerce.
Left to Right: Craig Morris (United States Patent and
Trademark Office, United States), Nicolas Vigneron (Office for Harmonization in the Internal Market, Spain),
Daniela Rojas (Hilborne Hawkin & Co., United States)
(Moderator), Mark Kudlacik (CheckMark Network, United
States) and Chen Fuli (Embassy of the People’s Republic
of China in the United States, China)
Finally, INTA staff provided demonstrations on
the Association’s Global Trademark Resources
to illustrate the valuable information available
to trademark administrators and practitioners
as part of an organization’s INTA membership.
Next year’s event, which will be in Alicante,
Spain, will mark the first TMAP Meeting to be
held outside the United States.
INTA Raises Awareness with Madrid-Focused Seminars in India
Recently, INTA hosted two seminars on the
Madrid Protocol—in Chennai on October 17
and Mumbai on October 18. In Chennai, the
seminar was jointly hosted by the Confederation of Indian Industry (CII) and the Tamil
Nadu Technology Development and Promotion
Center (TNTDPC) and sponsored by S.S. Rana
& Co. In Mumbai, the program was sponsored
by Lex Orbis. The Chennai event attracted an
interest from several Micro Small and Medium Enterprises (MSME); Mumbai attendees
included representatives of large pharmaceutical companies.
Senior representatives from the Office of the
Registrar of Trade Marks, Shri N. Babu (in
Chennai) and Shri R.A. Tiwari (in Mumbai),
shared the news that since the Madrid Protocol came into effect in the country, on July 8,
2013, India has been designated in 10,594
applications, of which 7,763 have been registered at the International Bureau of WIPO.
The Office of the Registrar of Trade Marks
has received around 200 applications from
Indian trademark holders seeking international
protection of their trademarks Of these, 176
have been certified and forwarded to the WIPO
International Bureau. Eighty-six Indian-owned
trademarks have been registered at the International Bureau.
The seminar was kicked off by Alan Datri,
representing WIPO. Mr. Datri’s presentation
provided an overview of the Madrid System
and included interesting statistics on International Registrations in force through Madrid,
as well as India-specific figures. The audience
found it helpful to learn of the tools available
through WIPO, such as the fee calculator and
Madrid Goods and Services (MGS).
Sujata Chaudhri (Sujata Chaudhri IP Attorneys,
India) shared her insights as a prior U.S. practitioner who has used the Madrid System on
behalf of her clients. Her presentation focused
on an in-depth analysis of filing strategies for
large and small businesses, using case studies. The session not only was highly interactive
but also demonstrated that the system is not
a panacea and that companies must carefully
consider their strategy before deciding whether
to file nationally or through Madrid.
In the last session, Stefan Edhammer (Clarke,
Modet & Co., Spain) encouraged the use of
the Madrid System, showing that the advantages outweighed the inherent difficulties. He
also provided tips on circumnavigating some
of these difficulties, such as avoiding unnecessary national refusals and achieving cost
savings through replacement, versus renewal,
of the national registration.
INTA hopes that there will be a significant increase in Madrid applications originating from
India as a result of awareness programs such
Left to Right: Alan Datri (representing WIPO, Switzerland),
Sujata Chaudhri (Sujata Chaudhri IP Attorneys, India)
and Stefan Edhammer (Clarke, Modet & Co., Spain)
as these. The Association will revisit this topic
in New Delhi on February 7, 2015, as part of
its conference, “India Emerged: Protecting Your
Brand in India’s Evolving Economy.”
INTA members may be interested in accessing
a document titled “Guidelines for Functioning
Under the Madrid Protocol,” which is available
from the Office of the Controller General of Patents, Designs and Trade Marks. The Office has
also set up a specific email address (madrid.
[email protected]) for submission of queries relating
to the functioning of the Madrid Protocol in
India. Additionally, members can access the online database Practitioner’s Guide to the Madrid
Agreement and Madrid Protocol through INTA’s
Global Trademark Resources page.
3
AssociationNews
Interview: Ljiljana Kuterovac Continued from page 1
promotion of protection and management of IP
rights; in the process I became well acquainted
with all types of IP rights, including trademarks
as the most widely used form of IP protection. Later on I supplemented this acquired
practical knowledge with deeper theoretical
knowledge on IP rights and their management.
What do you like most about IP?
The intersection in IP of different disciplines—
law, economics, technology, design, creative
industries—and the endless possibilities to
explore the different aspects and use of the
field are what I like most.
What do you enjoy most about your job?
As the head of the national IP office, which
is in charge not only of the daily operational
work on IP granting proceedings but also of the
development of the national IP system and its
international aspects and policies, my job is
extremely versatile. It gives me an opportunity
to develop relations and partnerships with
different stakeholders and thus contribute to
supporting innovation and creativity across the
board. Since in the course of my work I meet
different people, from inventors and creators,
business people and scientists to national and
international policymakers, each day I have the
opportunity to widen my perspective not only
on IP but also on different aspects of economic and social activities.
What are the biggest challenges you face?
My biggest challenge is implementing best IP
practices in Croatia, especially in light of the
present difficult economic environment and
under the circumstances of increasing austerity
measures imposed on state administrations. In
this respect, my challenges are twofold. On the
one hand, I have to ensure efficient operation of the Office—in particular, efficiency and
quality of examination—with available limited
resources, and ensure that we are keeping
pace with the development of the EU and the
The Croatian
business sector still
seems to consider
IP protection an
operational issue
for their legal
departments, rather
than part of the
business strategy.
international IP system. On the other hand, we
have to find ways to encourage Croatian industry, SMEs and the R&D sector to make better
use of the IP system for boosting their activities
and business. Since Croatia is still a relative
newcomer in the market economy, practice of
effective use of IP is still not very widespread
in business and society as a whole. With the
accession to the EU there are new opportunities for Croatian companies in the EU market,
but there are also certain threats in terms of
competition with the companies that are more
skilled in managing IP rights.
Are there particular changes to the trademark laws that you would like to see enacted, and is there any pending IP legislation
that might help?
In the course of preparing for accession to the
EU, Croatia modernized its IP laws, including
the Trademark Law, and has fully harmonized
them with the EU standards. As is well known,
there is ongoing reform of the EU trademark
law, in which we are also taking part as a
Member State, and which, once concluded and
implemented, will hopefully further contribute
to better consistency of trademark protection at
the national and EU levels. For possible further
fine-tuning of the national trademark law we
would need more input from the users, which is
currently lacking. The Croatian business sector
still seems to consider IP protection an operational issue for their legal departments, rather
than part of the business strategy.
What steps has the government taken in
recent years to improve IP protection?
In recent years Croatia has been focused
mostly on improving the enforcement of IP
rights, as the lack of efficient enforcement
of rights has been identified as the weakest part of the national IP system. With the
assistance of different EU programs we have
strengthened the administrative capacity of
the enforcement bodies and established close
cooperation and efficient coordination not only
among them but also with the organizations
of the rights holders. Now, as an EU Member
State, we have complemented activities at
Can nontraditional marks be registered?
Yes. In 2013, the number of related filings
at the SIPO was as follows: three-dimensional marks, 9; color per se, sound marks,
holograms, movement marks and position
marks, none.
Name of Head: Ljiljana Kuterovac, MSEE,
LLM
Position Within the Government: Government agency/body. SIPO is a stand-alone
organization whose operations are overseen
by the Ministry of Science, Education and
Sports as competent ministry. The Director
General is responsible to the government
and to the minister of the overseeing ministry
for his/her work and for the work of the SIPO.
Official Title: Director General
Madrid member? Yes.
Appointed: June 12, 2012
Year of accession: The Madrid Agreement has
been in force in the Republic of Croatia since
October 8, 1991, and the Madrid Protocol
since January 23, 2004.
Total Annual Trademark Filings, 2013:
6,485 (national, 1,919; Madrid, 4,566)
SIPO at-a-Glance
Official Name and Acronym: State Intellectual Property Office of the Republic of Croatia
(SIPO)
Length of Term: Not regulated; the term lasts
until it is revoked.
Location: Ulica grada Vukovara 78, Zagreb,
Republic of Croatia
4 November 1, 2014 Vol. 69 No. 20
Number of Madrid Fillings, 2013: 4,566.
Number of Trademark Examiners: 6
Does the Office operate under a first-to-use
or a first-to-file system? The SIPO operates
under a first-to-file system.
AssociationNews
the national level with those at the EU level,
especially within the framework of the EU
Observatory on Infringements of Intellectual
Property Rights. Most recently we have focused especially on intensifying specialization
of the national judges in IP matters, which is
essential for ensuring an efficient and consistent system of IP protection.
What kinds of trends have you noticed in
filings recently?
We have noticed that applicants are increasingly filing an extensive list of goods and
services for which registration is requested.
The use of class headings is more and more
often replaced by a listing of all the goods/
services from a particular class of the Nice
Classification. This creates very long lists and,
as a consequence, additional work in classification, as well as in opposition or cancellation proceedings.
As an expected consequence of the accession
of Croatia to the EU, international trademark
filings through the Madrid System designating
Croatia are decreasing. In the same vein, national filings based on the converted CTM (A)
show a gradual increase from July 1, 2013, the
day of accession of Croatia to the EU.
What are the reasons for those trends, in
your opinion?
The reason for the first trend can be found
in the requirement of sufficient clarity and
precision in the identification of the goods
and services for which the protection of the
trademark is sought. This was influenced by
the Court of Justice’s (CJEU’s) ruling in the IP
TRANSLATOR case (Case C-307/10 (CJEU June
19, 2012)), followed by the Common Communication on the Common Practice on the
General Indications of the Nice Class Headings
of all trademark offices of the EU.
The increase in national filings based on
the converted CTM (A) is a consequence of
the accession of Croatia to the EU and the
implementation of the provisions of the CTM
Regulation. These changes became effective
in the Republic of Croatia on July 1, 2013.
The decrease in international trademark registrations designating Croatia is a direct consequence of last year’s accession of Croatia to
the EU. The users of the Madrid System tend
to designate the EM (the European Union) as a
whole, thus covering the territory of Croatia for
the protection sought.
Can you discuss any partnerships or events
you’re involved with to help increase awareness about IP rights?
As mentioned earlier, recently we have been
focused on the improvement of enforcement
of IP rights in Croatia and have established
partnerships among the IPR enforcement bodies and stakeholders from the private sector.
One of the most active fields of cooperation in
this respect is the raising of public awareness
about the negative consequences of counterfeiting and piracy. As a part of joint activities
in this field we have launched a national campaign, “Stop Counterfeiting and Piracy,” and as
a most prominent part of this campaign we or-
The increase in
national filings
based on the
converted CTM is a
consequence of the
accession of Croatia
to the EU and the
implementation of
the provisions of the
CTM Regulation.
ganized a traveling public event that included
a cultural and entertainment aspect, supported by authors and other rights owners, and an
educational and informational part, supported
by the SIPO and enforcement bodies. Thus,
the citizens could learn firsthand from the
enforcement officers about the risks of buying
counterfeit and pirated goods, and at the
same time they could learn from the creators
and legitimate business about the importance
of IP rights for their viable work and operation.
The campaign attracted interest and positive
reactions from the citizens, as well as from
the media, so it contributed to the increased
public awareness of IPR issues.
Are there any major trademark-related projects underway within the Office?
As a part of final technical preparation for the
accession to the EU we have recently joined
major trademark projects of the European
Trademarks and Designs Network established
by the Office for Harmonization in the Internal
Market (OHIM) and the national trademark
offices of the EU Member States. We have
been part of the two most prominent projects—
TMView and TMClass—from day one of our EU
membership, and technically even before.
In the framework of the OHIM Cooperation
Fund, the Office recently joined a project aimed
at establishing common quality standards for
the trademark offices, with a view to enhancing their performance and achieving further
harmonization and comparability. Within the
framework of this project, during the second
quarter of 2014, process maps and quality
indicators were defined in cooperation with the
OHIM team. After internal testing and verification, the quality statistics for trademarks and
industrial designs for the Office will start to be
uploaded in the Quality Portal of the European
Trademarks and Designs Network.
Aside from these cooperation projects, there is
a major IT project underway in the Office. With
a view to enhancing quality and efficiency of
the Office business processes, including the
ones related to the trademarks, we are migrating the whole IT system to a new technology
platform and a new document management
system. The project is well underway, and we
hope we will be able to finalize it in the first
half of the next year.
What advice or message do you have for
trademark owners looking to expand into
Croatia?
The main message would be that they can expect quality service from and the professional
support of the SIPO in trademark registration
proceedings. We would also encourage them
to take advantage of the convenience and
cost savings provided by the e-filing system
for filing trademark applications in Croatia.
We encourage less-experienced users to take
advantage of our Information Centre (better
known as INCENTIV, which is the abbreviation of its name in Croatian), which provides
a free-of-charge help desk for users, as well
as the different trademark search services,
which they may find useful in the pre-filing or
post-grant process. In respect of the previously
mentioned observed recent trends in filings
relating to the creation of lists of goods and
services, users should be aware that submission of an extensive list of goods and services
requires an extensive formal and substantive
examination process, which may extend the
registration process and expose them to
opposition or cancellation proceedings that
otherwise might have been avoided.
What one major goal would you like to accomplish for the Office during your career?
In the times ahead, I would like to see increased recognition of the importance of an
efficient IP system in Croatia, warranting the
appropriate resources necessary to focus better on the needs of the users in a less stressful
and more stable environment. This would allow
us to rise even more efficiently to the challenges of an increasingly complex IP system and
thus contribute to boosting innovation and
creativity.
■
5
AssociationNews
Recent Roundtables
Santiago, Chile
On October 15, Alessandri Attorneys at Law
hosted a discussion on the possibility of plain
packaging legislation for cigarettes becoming a reality in Chile. Such a law is currently
being considered by the country’s Senate.
Notable speakers included Felipe Claro,
President of AIPPI; Carolina Belmar, the Di-
Stuttgart, Germany
A roundtable hosted by Kleiner Rechtsanwälte in Stuttgart, Germany, on October 8
examined trademark issues from the perspective of in-house counsel. The event drew 27
Warsaw, Poland
Sołtysiński Kawecki & Szlęzak invited 80
attendees to the Hotel Bristol on September
23 for a roundtable discussion on the conditions that must be met in order to register
the shape of a product or its packaging as
a trademark. The panelists also reviewed
how to enforce rights to such trademarks,
Seoul, South Korea
rector of Trademarks of the National Institute
of Intellectual Property (INAPI); and Eileen
Frodden Kelly, Legal Advisor on International
Affairs of INAPI. The 23 attendees heard from
these speakers as well as representatives
of international tobacco companies British
American Tobacco and Phillip Morris, and
engaged in a discussion so interesting that it
lasted more than two hours.
attorneys and lawyers and included a report
on new decisions of the Court of Justice of
the European Union and the Federal Court of
Justice of Germany, as well as an interactive
discussion.
which has become more important following
a recent decision by the Court of Justice
of the European Union related to registration of the Apple store layout as a service
trademark. Guest speakers included judges
Mirosława Wysocka, Beata Piwowarska and
Andrzej Kisielewicz. The panelists agreed
that the plain shape of packaging and products is difficult to register as a trademark
in Poland due to lack of distinctiveness;
the Polish Patent Office and OHIM normally
request that the applicant provide evidence
of secondary meaning acquired by the 3-D
trademark on the date of filing of the trademark application. In relation to enforcement
of such trademarks, the biggest challenge is
producing evidence of genuine use.
that have made it easier to block bad-faith
filings and filings likely to cause dilution.
On September 19 at Hanol Law Offices in
Seoul, 17 attendees received an update
on recent changes in trademark law and
significant court decisions in Korea. Topics included revisions to the Korean Trademark Act
Lima, Peru
A roundtable hosted by Muñiz, Ramirez, Perez-Taiman & Olaya Abogados on August 28
in Lima, Peru, addressed the question of secondary meaning under Decision 486, which
establishes the legal framework for industrial property in all member countries of the
Andean Community (Peru, Colombia, Ecuador
and Bolivia). Ray Meloni Garcia, Director of the
Peruvian Trademark Office (INDECOPI), spoke
to 25 attendees about the criteria taken into
consideration by INDECOPI to determine
secondary meaning of a trademark; cases
in which INDECOPI has granted secondary
6 November 1, 2014 Vol. 69 No. 20
meaning to certain signs; and the importance
of secondary meaning in defending IP rights.
Attendees learned the following:
• A trademark must be used in the market
for three years in order to acquire secondary meaning;
• There must be strong evidence to prove
secondary meaning, such as invoices of
commercialization, investment in advertising and market research;
• There must be exclusive and continuous
use of the trademark; and
• It is enough to prove use in one member
country of the Andean Community, but the
public must be the one who consumes the
product or receives the services.
AssociationNews
In-House Idea Exchange: Anticounterfeiting Best Practices
Aparna M. Dave
Wells Fargo Bank, N.A., Houston, Texas, USA
In-House Practitioners Committee--Idea Exchange
Teleconferences Project Team
In September 2014, corporate counsel from
a number of countries representing a range
of industries—including technology, hospitality, oil and gas, pharmaceuticals and luxury
brands—took part in two In-House Practitioners
Committee Idea Exchange teleconferences
on “Best Practices in Anticounterfeiting.” The
Idea Exchanges were moderated by Michelle
Brownlee (Bose Corporation, Framingham,
Massachusetts, USA), Shannon King (Chevron
Corporation, San Ramon, California, USA) and
Claire Kimball (Turner Broadcasting System,
USA).
The sale of counterfeit goods continues to
be a significant issue facing consumers,
governments and companies across a variety
of industries throughout the world. The
continued expansion of the Internet, along
with the rapid rise of social media and online
marketplaces, has further complicated the
landscape of trademarks, allowing counterfeiters to produce and sell goods with reach
to consumers across the globe.
Topics from the two Idea Exchanges included
the following:
1. Which department is responsible for oversight of anticounterfeiting activities?
2. What type of consumer education or interaction do you have with your customers
about counterfeits? What type of anticounterfeiting technology does your company
use?
3. What measures does your company take
to address the sale of counterfeit items in
online marketplaces?
4. How do you demonstrate the value of anticounterfeiting programs?
5. What are the pros and cons of collaborating
with other brands?
Organizational Oversight of Anticounterfeiting Activities
For most corporate participants, the law
department (in particular, the Intellectual
Property/Trademark Group) is at the heart
of anticounterfeiting decisions, often as the
strategy driver, with the business unit providing input. A few of the companies centralize
responsibilities within the trade compliance
area. Some companies have put together a
cross-functional team of key stakeholders,
such as corporate security, manufacturing,
marketing, e-commerce, public relations and
brand protection teams, to act in a coordinated
manner in order to aid in investigation, communication and decision making. Nearly all
companies work closely with local attorneys,
outside counsel and/or other resources, including regional corporate offices. Even where
the law department does not take the lead or
make decisions, typically it is involved, at least
in an advisory capacity.
See “In-House” on page 8
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7
AssociationNews
In-House Idea Exchange: Anticounterfeiting Best Practices Continued from page 7
To that end, the budget sometimes comes
from legal and at other times from the business unit, often depending on the business
model and the product to be protected. Sophisticated tracking systems can measure against
how much money the company would have
made and the salaries to keep those employees who work on anticounterfeiting measures.
Additionally, some companies evaluate the
budget not only by looking at sales but also
by accounting for consumer protection, health
and safety concerns and the high risk to the
consumer and industry.
Protecting and Educating
Consumers
Trademark owners should take steps to educate the public about their trademarks on an
ongoing basis. Companies turn to the Internet,
social media, trade organizations and even
their own customers to help raise awareness
of counterfeiting. They engage and educate
consumers on the benefits of buying authentic
goods through social media posts and pushes.
YouTube allows companies to provide demonstrations, visuals and general tips on how to
identify counterfeit items. Customers and influencers can be the best allies; they can post
real versus fake items on social media and
promote the value of the genuine goods, for
example. There are a number of ways to utilize
corporate websites—for example, (1) creating
an educational page on authentic goods and
the risks of buying counterfeit items; (2) providing an online form or contact information,
such as an email address, to submit evidence
of suspected infringement; or (3) offering a list
of authorized sellers or even publishing industry guidelines on “bad actors” and poor quality
standards for products. Traditional methods,
such as a dedicated “counterfeit hotline” or
“street teams,” also are utilized. Additionally,
turning to competitors for information, best
practices and industry intelligence can help a
company to combat counterfeiting. INTA’s own
Unreal Campaign seeks to combat counterfeiting by educating teens on the value of trademarks and the social and economic harms of
counterfeit goods.
Strategies for Handling Online
Counterfeit Sellers
The instant global reach and anonymity of
the Internet have made it much easier for
counterfeiters. What are some of the corporate
8 November 1, 2014 Vol. 69 No. 20
participants doing to combat this online proliferation of counterfeit goods? The one consistent approach was to actively and aggressively
monitor the marketplace, focusing particularly
on the top sites. Using a trusted vendor can
help in identifying infringements across the
Web, including social media channels.
As some of these marketplace sites are more
difficult to deal with than others, developing
a strong relationship with a corporate representative from the main sites or conducting a
meeting with one of these marketplace sites
may result in a more timely and effective re-
Customers and
influencers can be
the best allies.
sponse. Even still, cost-effectiveness is one of
the key complaints, because once an infringing
product is identified, counterfeiting established
and the item removed, it invariably pops up
somewhere else on that site or on another site.
Industry and competitor relationships can be
useful. Some companies have considered
banding together to go after certain marketplace sites. Several similarly situated companies will send cease and desist letters at
the same time or proceed with joint litigation
in hopes of overwhelming these infringing
parties. However, some participants noted,
this alliance can make it a little slow to react
because companies are not as nimble when
trying to move a project or issue forward.
Keeping Up with Technology
There are numerous anticounterfeiting technologies, ranging from basic effective methods
to sophisticated and secure ones. Holograms,
security inks and special printing techniques,
and other visible features continue to be popular. Allowing consumers to find and view basic
patterns and holograms to identify authentic
goods can help to minimize counterfeiting. The
disadvantage with these is they may be easily
copied and may require frequent revision.
Hidden features, where the general public is
not aware of the details, may also be used, but
often this requires specialized knowledge and
training. There are also sophisticated, secure
technologies that may be utilized, including
tracking and tagging systems, but these may
involve significant implementation costs.
Making Customs Your Ally
The consensus was that companies should
engage in the following three steps as part of
protecting their intellectual property, in coordination with working with and using customs
authorities to help enforce their rights:
1. Register core brands (or secondary marks
if needed) with domestic and foreign trademark authorities;
2. Record trademark registrations with
domestic and foreign customs authorities;
and
3. Monitor the Internet and online marketplaces for fake products.
Once a company has registered and recorded
a mark and has started to monitor, an essential requirement is to provide training and
procedures for the customs agents. Factors
to consider include which locations are of
key importance for the brand—places where
the company gets the most bang for its buck.
Training sessions conducted by a local corporate office or counsel can greatly aid customs
officials, as well as help them develop a good
relationship with the company.
China, Thailand, Eastern Europe and “entry
points” such as Panama, South Africa, Uruguay and Argentina were noted as countries
where companies were most actively working
with customs.
One challenge addressed was that if a company constantly changes anticounterfeiting
technology, markings and measures to keep
ahead of infringers, it becomes difficult to keep
the customs and other enforcement agents
informed of the latest changes in identifying
marks and of other anticounterfeiting measures for the company’s goods. To tackle this
problem, some participants utilize the World
Customs Organization’s Interface Public-Members (IPM), a global anticounterfeiting online
and mobile application tool that provides
frontline customs officers with real-time data
to distinguish features between counterfeit
and genuine products.
■
VolunteerSpotlight
After internships with Ladas & Parry LLP in
New York, Nestlé in Switzerland and Citibank
in Venezuela, Dana obtained an LL.M. in
Intellectual Property from George Washington
University. Then she joined her family’s law
practice, Bentata Abogados, in Caracas, Venezuela. About six years ago she moved to the
United States, where she continues to serve
clients who need assistance with intellectual
property matters in Venezuela. Relocating to
the United States has allowed Dana to interact
in person with clients about specific matters
more frequently.
Dana Bentata
Although she comes
from a family of intellectual property attorneys,
Dana Bentata wasn’t predestined to become
one herself. Rather, she chose the profession
because it allowed her to put many of her
diverse talents and interests to good use.
Dana brings her creative skills to the aid of her
clients when she helps them select distinctive
marks. Indeed, she finds, generating positive
results for clients is one of the most rewarding
aspects of her career. Dana also finds satisfaction in addressing the challenges that new
developments bring. She readily admits that “I
enjoy the creativeness of practicing trademark
law in view of the constant new challenges
arising from all the different industries with the
incessant creation of technology.”
originally intended to pursue a professional career as an
engineer. Having also earned an MBA, he was
working as a research engineer for Chrysler
Corporation. Then came a career change, and
he ended up attending law school at Rutgers
University. After graduation, Mike was a patent
attorney with the Office of Patent Counsel
at Mobil Oil Corporation before moving on
to manage Mobil’s technology law office in
Fluent in three languages, Dana has done
pro bono work in mediation for the U.S. Equal
Employment Opportunity Commission (EEOC)
in Atlanta, assisting Spanish-speakers without
a knowledge of English. She devotes much of
her spare time to the many hobbies that draw
on her creative spirit: reading books, playing
the piano, using her keen eye in arranging
objets d’art, and—something she particularly
enjoys—framing using various techniques.
Dana also enjoys film: she has served on the
selection committee for the Atlanta Jewish
Film Festival.
Dana has been active in INTA for 25 years,
since the time she was a law student. In
particular, she has been involved in committee
work for many years. Having served on the
Alex MacKay
Stites & Harbison, PLLC, Nashville, Tennessee, USA
INTA Bulletin--Association News Subcommittee
Princeton, New Jersey. In 1995, he assumed
the position of Chief Trademark and Copyright
Counsel for Mobil, a role that expanded in
1998 to include responsibility for special IP
projects. During the Exxon-Mobil merger, Mike
was responsible for handling merger-related IP
issues, including negotiations at the Federal
Trade Commission.
Dispute Resolution Committee’s Programming
Subcommittee. He feels that the committees
have made a demonstrative contribution to the
state of trademark practice worldwide. For the
past 20 years, Mike, together with Paul Kilmer
(Holland & Knight, USA), has been responsible
for maintaining INTA’s white paper on “U.S.
Economic Sanctions and Anti-Boycott Laws.”
Lately this role has expanded to include an
effort to gain “General License” status for IP
rights protection in North Korea, a complicated
task involving INTA’s lobbyist. Mike has also
enjoyed his role as a contributor to the INTA
Bulletin, where several of his articles have
been published over the years.
Following a brief stint with ExxonMobil, Mike,
together with a former Mobil colleague, Peter
Roberts, founded the predecessor to their firm,
Roberts, Mlotkowski, Safran & Cole (RMSC), in
2000. Over the years, RMSC, which is located
in McLean, Virginia, has grown into a practice
with approximately 50 people, and for Mike
and Peter it remains a source of great pride.
Mike Mlotkowski
Online Reference Committee last term, she is
now a member of the Famous & Well-Known
Marks Committee. Dana describes herself as
shy, though anyone who has walked through
an INTA hotel lobby with her would argue the
point, as she appears to have friends all over
the globe. She credits INTA committees with
helping her get to know many fellow members,
as a result of working together in small groups.
Mike was introduced to INTA in 1995, when
he attended the Annual Meeting in San Diego.
Quickly recognizing the benefits of INTA membership, Mike found the organization the most
dynamic one he had ever joined. As Mobil’s
Chief Trademark Counsel, he had never had so
many friends! Of course, things changed somewhat when Mike left ExxonMobil to become an
outside counsel; however, that has not altered
his view that membership in the Association
has been the single most important factor in the
growth of his career and the success of his firm.
Having worked on several INTA committees,
Mike is currently a member of the Alternative
Mike and his wife, Joan, have two children,
Jessica and Michael Jr.; a newborn grandson,
Jackson; and a bulldog, aptly named Mr. Tank.
Jessica, a former lead singer and guitarist in
several DC-area rock bands, is now an archivist
for Louisiana State University in Baton Rouge.
Mike Jr., a former college All-American, College
World Series MVP and professional baseball
player, is now a government contracts attorney
in the DC area.
Katherine Dimock
Gowlings, Toronto, Canada
Co-Chair, INTA Bulletin—Association News
Subcommittee
9
Features
A Turning Tide: Arbitrating International Trademark Disputes and the Importance of
the New WIPO Arbitration Rules
James Morrison
Allens Linklaters, Sydney, Australia
In 1968, The Trademark Reporter published
an interesting article by Francis J. Sullivan
on whether arbitration was a suitable means
of resolving trademark disputes. (Francis J.
Sullivan, “Is Arbitration Suitable for Trademark
Problems?” 58 TMR 782 (1968).) Sullivan did
not intend to argue “in support of or against
arbitration”; however, he concluded that while
“[a]rbitration is not a perfect system for resolving all differences[,] it does provide a method
by which the parties can expeditiously obtain
a hearing and a decision.” In his view, if the
issues at stake were complicated or involved
a substantial sum of money, a new question
of law or injunctive relief, litigation might be
preferred to arbitration. One can only wonder
whether Sullivan would be as reluctant to take
sides between litigation and arbitration today,
considering the substantial increase in the
number, size and complexity of cross-border
transactions involving trademark and branding
issues compared with 1968, when modern
international arbitration was still in its infancy.
Fast forward to 2014, where cross-border
transactions can involve multiple trademarks
registered in different jurisdictions, as well as
associated unregistered rights, including trade
names. The transaction may be effected by
any combination of license, franchise, distribution, development, joint venture, settlement
or coexistence agreements. Also, in order to
cover multiple trademarks and jurisdictions,
a transaction can involve numerous contracts
and parties; often that results in its being
subjected to laws and drafted in languages different from those of the jurisdictions where the
trademark rights exist. These factors present
challenges for any system of dispute resolution. However, they also provide opportunities
for arbitration, given its inherent flexibility and
adaptability compared with litigation.
For instance, national courts are creatures of
their own territorial jurisdictions, legal systems
and languages. This can limit a national
court’s ability to consolidate related disputes
involving trademarks registered in other countries and can lead to parallel proceedings in
different jurisdictions. Some courts may also
not have the necessary resources or technical
expertise (in terms of either the relevant trademark issues, the applicable foreign law and/or
language skills) to decide the matter correctly
and efficiently. Additionally, there may be concerns that a national court may be partial to
one side and that through litigation the details
of the dispute and transaction will become
Imitation May or May Not Be Flattery
Food and beverage industry manufacturers and large national
supermarket chains share a mutually dependent relationship, and either
would likely be reluctant to damage it in a full-blown dispute over a “look
alike” product. To better understand the views of both sides — and to
know where and when to draw the line — see “Trade Dress in the Food
and Beverage Industries: Manufacturer’s and Retailer’s Views” by Mark
Hiddleston, Elkington and Fife LLP, London, United Kingdom, and Richard
Young, Quarles & Brady LLP, Chicago, Illinois, United States, in INTA’s
exclusive member service Industry Perspectives series.
Visit inta.org /IndustryPerspectives
10 November 1, 2014 Vol. 69 No. 20
public. These factors can prolong disputes,
increase costs and complicate enforcement.
By contrast, an arbitration agreement, if carefully drafted, can bind multiple parties and allow
disputes arising out of different contracts and
trademarks registered in different jurisdictions
to be consolidated into a single matter and
dealt with in a confidential dispute resolution
proceeding. Also, because in arbitration the
parties can participate in the appointment of the
tribunal, there is a greater opportunity to ensure
that any decision maker is not only neutral but
also skilled and experienced in deciding the specific cross-border trademark-related questions
under the governing law and in the language
agreed upon by the parties. And, importantly, by
virtue of the United Nations Convention on the
Recognition and Enforcement of Foreign Arbitral
Awards (New York, 1958), international arbitral
awards, unlike court judgments, can be enforced
in some 150 countries.
In recent times, arbitration has also overcome
some of its own shortcomings in resolving
trademark disputes. While infringement claims
have historically been the monopoly of the
court in the jurisdiction where a trademark
is registered, domestic legal systems now
increasingly permit parties to agree to resolve
infringement claims in arbitration after a
Features
dispute has arisen (although in most countries
the effect of any decision will be enforceable
against only the parties to the arbitration).
Also, arbitration traditionally has been limited
in its ability to protect the interests of intellectual property rights holders on an interim basis
pending the constitution of the arbitral tribunal, which sometimes can take two months.
Without a mechanism like the new emergency
arbitrator procedure (described below), the
only forum where a party can obtain urgent
relief until the appointment of the tribunal
is in a national court (which often is the very
place the parties sought to avoid by agreeing
to arbitrate).
2014 WIPO Arbitration Rules
The new WIPO Arbitration Rules are the most
recent example of arbitration’s developing to
meet the specific challenges presented by the
globalization of IP transactions. The new Rules
came into effect on June 1, 2014, replacing
the 1994 version, which was last updated in
2002. While this latest update retains the core
features of the previous Rules, a number of recent innovations, which are aimed at addressing some of the challenges and shortcomings
described above, have been incorporated. In
addition, the WIPO Arbitration and Mediation
Center (WIPO Center) has maintained the full
suite of its mediation, expedited arbitration
and expert determination services, as well as a
helpful range of model clauses.
Emergency Relief Proceedings
Article 49 of the new WIPO Arbitration Rules
establishes a process by which emergency
relief may be obtained before the constitution
of the tribunal. Within, normally, two days of
receiving an application for emergency relief
(which it must notify to the other parties), the
WIPO Center appoints an emergency arbitrator, with broad discretionary powers in terms
of the emergency relief that may be ordered
and the procedure to be followed. There may
be a short exchange of written submissions
and, if necessary, a short hearing (in person
or by telephone conference), following which
the emergency arbitrator renders a decision,
in the form of a reasoned order, within as little
as one to two weeks of his or her appointment. The emergency arbitrator’s powers end
with the establishment of the tribunal or if an
arbitration has not commenced within 30 days
of the WIPO Center’s receipt of the application. The emergency arbitrator may not act
as an arbitrator in any subsequent arbitration
relating to the dispute without the agreement
of the parties.
Joinder and Multiple Parties
The new WIPO Arbitration Rules provide a
helpful framework for the procedure, timing
and requirements for joining third parties
(which previously were somewhat uncertain).
Article 46 confirms that joinder must be based
on the consent of all the parties concerned
(including the third party to be joined) and
requires the tribunal to consider all relevant
circumstances of the case, including the stage
of the arbitration. The joinder application must
be made in the Request for Arbitration, the Answer to the Request or, if later, within 15 days
of the requesting party’s acquiring knowledge
of the circumstances it considers relevant for
The new WIPO
Arbitration Rules
are the most
recent example
of arbitration’s
developing to
meet the specific
challenges presented
by the globalization
of IP transactions.
a joinder. Additionally, Article 18 contains a
more flexible procedure, which now applies
by default to cases involving the appointment
of three arbitrators and those where multiple
claimants and/or multiple respondents are
required but are unable jointly to nominate a
co-arbitrator (e.g., where one of the multiple
claimants/respondents has conflicting interests or is not participating). In those circumstances, the WIPO Center has the discretion
to appoint one arbitrator on behalf of the
multiple claimants/respondents or both of the
co-arbitrators for each side (including where it
is necessary to ensure equal treatment of the
parties). The co-arbitrators then will appoint
the presiding arbitrator within 20 days after
the appointment of the second arbitrator.
Consolidation
While consolidating related claims and separate arbitrations concerning related facts and
issues can provide procedural efficiencies and
reduce the likelihood of conflicting decisions,
previously there had been some uncertainty
in terms of the circumstances in which such
consolidation should occur. Article 47 of the
new WIPO Arbitration Rules provides a clear
procedure for making and deciding consolidation requests. Specifically, where an arbitration
is commenced concerning a subject matter
substantially related to that in dispute in other
arbitral proceedings pending under the new
Rules, the WIPO Center may, if the parties
and any appointed tribunal agree, and after
all relevant circumstances (including the
stage reached in the pending proceedings)
are considered, order the consolidation of the
new arbitration with the pending proceedings.
Interestingly, it appears that Article 47 does
not preclude the WIPO Center’s consolidation
of proceedings commenced under different
arbitral rules, provided the other requirements
are satisfied.
Arbitrator Appointments
The appointment of the arbitral tribunal often
is described as the most important step in an
arbitration. Currently, WIPO’s List of Neutrals
surpasses 1,500 arbitrators, mediators and
experts from all over the world, who are highly
specialized in IP disputes, including those
relating to trademarks. Under Article 19 of
the new WIPO Arbitration Rules, where it is required to appoint a sole or presiding arbitrator,
the WIPO Center may draw upon the List of
Neutrals by providing the parties with detailed
profiles of three or more suitable candidates,
to be ranked by each side in order of their preference for appointment. In doing so, the WIPO
Center takes into account the nationalities
of the parties and their representatives and
the venue of the proceedings, as well as the
candidate’s experience and expertise in the
governing law, the relevant trademark-related
issues and the language of the arbitration and
underlying transaction. The role of the WIPO
Center and the List of Neutrals in this process is a valuable resource in a cross-border
trademark dispute, where it can be difficult to
identify arbitrators who are not only qualified
in light of the various complexities of the case
but also independent and impartial.
Expedition
While the WIPO Expedited Arbitration Rules
(which apply, by default, shortened time limits
and expedited procedures) remain available
for use in respect of suitable transactions
and disputes, the new WIPO Arbitration Rules
also include a number of flexible features that
ensure that even complex cases can move
forward in a timely fashion. For instance,
unlike some other institutional rules, Article
10 expressly permits a claimant to file the
Statement of Claim and supporting evidence
together with the Request for Arbitration. This
can assist in moving a case forward promptly,
including because it provides a respondent
with the option under Article 12 of submitting
the Statement of Defense and supporting evidence together with the Answer, so that each
side’s case can be before the tribunal by the
time it is appointed. Also, within 30 days after
See “A Turning Tide” on page 12
11
Features
A Turning Tide: Arbitrating International Trademark Disputes and the Importance of
the New WIPO Arbitration Rules Continued from page 11
its establishment, the tribunal is now required
under Article 40 to conduct a preparatory
conference with the parties (which may be in
person or by telephone or video conference
if suitable). An early preparatory conference
assists in organizing and scheduling the subsequent proceedings in a time- and cost-efficient manner.
Confidentiality
Confidentiality and privacy are particularly
important for cross-border trademark disputes,
where publicity of even the mere existence
of proceedings can be harmful to a brand.
Together, Articles 52 and 74–76 of the new
WIPO Arbitration Rules provide a comprehensive confidentiality regime, tailored specifically
to IP disputes, that prohibits disclosure of the
existence of the arbitration, information provided during the arbitration and any award. These
provisions also detail careful procedures by
which the tribunal may determine disputed
claims of confidentiality, including through the
appointment of neutral confidentiality advisors, and order special measures to protect
that information should it be disclosed.
As it turns out, Sullivan, gazing into his crystal
ball over 40 years ago, was accurate in identifying the potential for arbitration to provide an
effective alternative to litigation for resolving
trademark disputes. Indeed, recent statistics
of the major arbitral institutions, including
WIPO, indicate that arbitration and mediation
are now the preferred dispute resolution mechanisms for cross-border transactions and that
there has been an important increase in the
number of cases involving intellectual property
and trademark issues. In fact, with initiatives
such as the new WIPO Arbitration Rules, which
have sought to tackle head-on the challenges
of cross-border IP transactions, the tide may
have permanently turned toward arbitration for
international trademark disputes.
When
Trademarks
with OTHER IP RIGHTS
Munich, Germany
December 8–9
Strong IP Protection Requires the Right Tools
Join leading authorities at advanced-level sessions to discuss the emerging issues in this area and achieve a
solid understanding of the many opportunities and pitfalls of intersecting rights.
Topics include:
• How can product designs be protected as two- or three-dimensional marks and through other IP laws?
• How can trademark law protect artistic works and unregistered geographical indications?
• How can trademarks be subject to unfair competition law, comparative advertising statutes or consumer protection, privacy and right of publicity laws?
Don’t Miss
· Antonio Campinos, Office for Harmonization in the Internal Market (OHIM) (Spain) will speak about the
future of trademarks.
· Christoph Ernst, Ministerialdirigent, German Federal Ministry of Justice (Germany) and Mihály Ficsor,
Vice President for Legal Affairs, Hungarian Intellectual Property Office (Hungary) will take part in a
special lunchtime VIP interview session.
For more information and to register please visit: www.inta.org/2014tmoverlap
12 November 1, 2014 Vol. 69 No. 20
■
Law&Practice
ARGENTINA New Geographical Indication for CORDERO PATAGÓNICO
The Ministry of Agriculture, Livestock and
Fishery, through Resolution No. 326 (Sept.
4, 2014), has acknowledged, registered and
protected the geographical indication (GI)
CORDERO PATAGONICO (“Patagonian lamb”),
and its unique method of production.
GIs have been defined as “indications which
identify a good as originating in the territory of
a country, or a region or locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographical origin.” Law 25,380
(2001), as amended, provides the legal basis
for the protection of GIs and Appellations of
Origin for agricultural and food products in
Argentina.
Neuquen, Rio Negro, Chubut, Santa Cruz and
Tierra del Fuego and islands of the South Atlantic and the district of Carmen de Patagones
in the Province of Buenos Aires.
The logo approved for the commercialization
and identification of sheep meat products
covered by the newly established GI is shown
below.
Patagonian lamb is known for its low-fat, tasty
and tender meat, with a relevant supply of
omega 3 fatty acids. Raised in the Argentine
Patagonia, one of the less-contaminated areas
of the world, with different pastures that have
an effect on the taste and flavor of the meat,
this lamb has certain unique characteristics.
These have now been protected by this GI.
The logo should be used only on products of
the area as a guarantee of origin by those
manufacturers with the right to use it.
Contributor: Claudia Serritelli
De las Carreras & Chaloupka, Buenos Aires
Verifier: Martin Chajchir
Marval, O’Farrell & Mairal, Buenos Aires
Ms. Serritelli is a member and Mr. Chajchir is cochair of the INTA Bulletin Law & Practice—Latin
America & the Caribbean Subcommittee.
The GI CORDERO PATAGONICO is restricted to
a specific area of the country, located south of
the Colorado River, formed by the provinces of
AUSTRIA MEDIAWIKI Distinctive for Computer Software
The international trademark MEDIAWIKI
(I.R.No. 1127711), owned by Wikimedia Foundation, Inc., was refused protection in Austria
for “computer software for collaborative
editing of the content of websites and website
management.” The Legal Department of the
Austrian Patent Office argued that the relevant
audience would regard the term MEDIAWIKI,
without undertaking any complicated mental
operations, as a combination of the known
term “WIKI” with the description “MEDIA.”
Therefore, the designation should indicate only
that software marked with the term enables
the operation of an information platform
(“Wiki”) whose contributions refer to media
and transmission of communications.
On recourse, the Vienna Upper Provincial Court
(VUPC), which, since January 1, 2014, has had
exclusive jurisdiction for recourses or appeals
against resolutions or decisions of the Austrian
Patent Office, reversed the Legal Department’s
decision and granted the trademark
MEDIAWIKI protection in Austria. It held that
even if both parts of the term, that is, “MEDIA” and “WIKI,” should be used by the public
according to their specific meanings, the
combined term would not be understood exclusively as a reference to “computer software for
collaborative editing of the content of websites
and website management” without further
consideration and intermediate mental steps.
(Case No. 34R 77/14i (Vienna Upper Provincial Court Sept. 8, 2014).)
Furthermore, the VUPC said that there is a
“lack of any distinctiveness” when the public
is required to associate a term with goods or
services immediately, without further considerations, precisely, directly, exclusively and without the faintest possibility of the term’s having
any other meaning. This represents a landmark for Austria, since—while it was previously
agreed that, as long as a minor distinctiveness
exists, registration must be granted—a precise
definition of “minor” or the specific qualities
thereof had never been articulated.
Contributor: Peter Israiloff
Barger, Piso & Partner, Vienna
The Trademark Reporter Committee
Verifier: Barbara Kuchar
Gassauer-Fleissner Rechtsanwälte GmbH, Vienna
BURUNDI Renewal Requirement For All Trademark Registrations
The current Intellectual Property Law of Burundi was enacted on July 28, 2009. One of the
most significant changes imposed by this law
was a fixed duration of ten years from the filing
date for trademark registrations, which is renewable for like periods. Under the law in force
prior to July 28, 2009, registrations remained
in force indefinitely without requiring renewal.
The trademark registry of the Ministry of Trade,
Industry and Tourism had advised that the pro-
visions of the old law still applied to cases filed
before July 28, 2009, and that such trademark
registrations did not require renewal. Now,
however, the registry has announced that all
trademarks registered under the old law will
have to be renewed. The first renewal date for
all such registrations is ten years from the date
on which the new law was enacted—that is,
July 28, 2019.
Contributor: Stephen V. Le Feuvre
Lysaght & Co., St. Helier, Jersey, Channel Islands
Verifier: Naja Abu Jneid
Saba IP Head Office, Beirut, Lebanon
13
Law&Practice
ECUADOR Increase in Official Fees
In 2012 Ecuador implemented a very significant government fee increase for patent- and
plant varieties–related matters, which in some
cases represented increases of over 1,000
percent. This increase was allegedly justified
by the need to apply similar fees to what
Ecuadorian individuals are forced to pay in
other countries when applying for intellectual
property rights protection.
A similar fee increase was ordered in August
2014 for trademark matters. Such increase
represents up to 80 percent of the existing
fees. The highest increases apply to registration, renewal, assignment/merger/name
change, and change of address proceedings.
Over the last two years, the Ecuadorian Intellectual Property Office (IEPI) has been working to
implement new electronic tools to facilitate and
accelerate administrative proceedings, which,
IEPI asserts. would justify these increases.
Contributor: Xavier Rosales
Corral Rosales Carmigniani Pérez, Quito
INTA Bulletin Law & Practice—Latin America & the
Caribbean Subcommittee
Verifier: Francisco Pérez
Pérez Bustamante & Ponce, Quito
Description
Fees Prior to Aug. 2014 (US $)
Current Fees (US $)
1. Registration (per class)
116
208
2. Renewal
116
208
3. Assignment, merger and name change
56
101
4. Change of address
56
101
5. Opposition or answer to an opposition
100
140
6. Reconsideration action or answer to a reconsideration action
120
170
7. Administrative appeal or answer to an administrative appeal
192
272
8. Cancellation or nullity action against a registration
304
430
9. Registration of license and transfer of technology agreements
40 (each)
72 (each)
EUROPEAN UNION Bad Faith Extended to Cover “Free Riding”
An application will be filed in “bad faith” if the
real purpose of that application is to “free-ride”
on the reputation of an earlier mark, even if
that earlier mark is no longer used.
The SIMCA mark was registered as a Community trade mark (CTM) in 2008 in Class 12.
The CTM registration was then transferred to
Simca Europe (SE). The intervener applied to
invalidate the registration on the ground that it
had been obtained in bad faith.
The intervener’s group began use of the SIMCA
mark in relation to vehicles in the 1930s, but
had stopped use of the mark in the 1970s.
Despite this, the intervener still owned figurative registrations containing SIMCA, and it
was possible to buy used vehicles bearing the
SIMCA mark.
The OHIM Cancellation Division refused the
application for invalidity, but this decision was
overturned by the OHIM Board of Appeal. SE
14 November 1, 2014 Vol. 69 No. 20
then filed a further appeal to the General Court.
Adding to the guidance set out by the European Court of Justice (ECJ) (now the Court of
Justice of the European Union) in Chocoladefabriken Lindt & Sprüngli (Case C-529/07 (ECJ
June 11, 2009)), the General Court held that
in deciding whether an application has been
filed in bad faith, the relevant factors to consider include whether the applicant knew that
a third party was using the mark applied for
and the “commercial logic” behind the filing of
the application.
There was clear evidence that the original
owner of SE’s registration knew about the
intervener’s use of the SIMCA mark when the
application was filed—and that the applicant’s
“purpose was to preserve the ‘marvellous’
SIMCA mark for posterity.”
The General Court found that the Board of
Appeal was entitled to find that the intention
of the applicant was to “free-ride” on the rep-
utation of the intervener’s mark and that, as a
consequence, the application had been filed in
bad faith. The General Court therefore rejected
SE’s appeal. (Simca Europe Ltd v. OHIM–GIE
PSA Peugeot Citroen, Case T-327/12 (GC (Fifth
Chamber) May 8, 2014).)
Following this decision, brand owners in the
European Union have a greater chance of
preventing others from obtaining registrations
for the brand owner’s historical marks, even if
those marks are no longer being used.
Contributor: Mark Holah
Sipara, Oxford, United Kingdom
Verifier:Tom Albertini
J A Kemp, London, United Kingdom
Both are members of the INTA Bulletin
Law & Practice—Europe & Central Asia
Subcommittee.
Law&Practice
EUROPEAN UNION CJEU Rules on Validity of Shape Marks
In Hauck GmbH & Co. KG v. Stokke A/S et al.
(Case C-205/13 (CJEU Sept. 18, 2014)), the
Court of Justice of the European Union (CJEU)
has given a helpful interpretation of certain
provisions of the Trade Marks Directive (Directive 2008/95/EC), namely Article 3(1)(e)(i),
which prohibits the trademark registration of
shapes resulting from the nature of goods, and
Article 3(1)(e)(iii), which prohibits the registration of shapes that give substantial value to
the goods.
Stokke has offered, since 1972, a highchair
called the Tripp Trapp chair. In the late 1990s,
it obtained a three-dimensional trademark registration for its chair in the Benelux countries.
The German company Hauck manufactures,
distributes and sells two chairs, which it has
named “Alpha” and “Beta.” Stokke brought
an action in the Netherlands claiming that
Hauck’s chairs infringed its copyright in the
Tripp Trapp chair and its registration as a Benelux trademark. On Hauck’s counterclaim for a
declaration of invalidity of Stokke’s mark, the
District Court of The Hague declared the registration invalid (but upheld Stokke’s copyright
infringement claim).
only artistic or ornamental value, but would
also be applicable in circumstances where the
shape lends significant aesthetic value to the
product (as is, arguably, the case in relation to
Stokke’s Tripp Trapp chair).
The CJEU’s ruling appears to indicate that there
should be a declaration of invalidity of Stokke’s
three-dimensional mark. However, this question
will ultimately have to be decided by the Dutch
courts when the proceedings are resumed.
In the proceedings before the CJEU, only the
question of the validity of Stokke’s three-dimensional mark was at issue. With respect
to the absolute ground for refusal of shape
marks that result from the nature of the goods
themselves (Article 3(1)(e)(i)), the CJEU held
that this applies not only to a shape that is
indispensable to the function of the goods
but also to a shape that is linked to one or
more essential functional characteristics of
the product. Furthermore, the Court ruled that
the concept of a shape that gives substantial
value to the goods (Article 3(1)(e)(iii)) cannot
be limited purely to a shape or products having
Contributor: Florian Traub
Squire Patton Boggs (UK) LLP, London,
United Kingdom
Verifier: Mark Holah
Sipara, Oxford, United Kingdom
Both are members of the INTA Bulletin
Law & Practice—Europe & Central Asia
Subcommittee.
Sports Apparel with Three-Stripe Design Infringed
ISRAEL adidas’s Trademarks Despite No Likelihood of Confusion
On July 30, 2014, the Tel Aviv District Court
(sitting as the court of first instance) held that
the import and sale of lower-end sports apparel bearing three stripes on sleeves and trouser
legs constituted infringement of the registered
trademarks of adidas AG, because the marks
used were almost identical to adidas’s marks
and thus, unlike the situation in a case of
similar marks, no likelihood of confusion had
to be shown. The court held that there was no
likelihood of confusion because of the prominent use of the importer’s name (Batash) on
the infringing goods and the vast difference
in price and quality, but this did not affect the
determination of trademark infringement.
However, in the absence of likelihood of confusion, use of the three stripes was held not
to constitute passing off, for which likelihood
of confusion is a statutory requisite, and,
moreover, was not recognized as dilution of
adidas’s triple-stripe mark. The district court
cited the Supreme Court’s recent ruling in
adidas AG v. Yassin that, while the court-made
doctrine of dilution does not require likelihood
of confusion, dilution in the absence of any
confusion should be applied only in unusual
cases—for example, where lack of confusion
resulted from a totally different type of goods.
(adidas AG et al. v. Batash et al., CA (TA Distr.)
2028-08 (Tel Aviv Dist. Ct. July 30, 2014).)
Dilution should not apply to cases where
there is no likelihood of confusion between
goods of the same type. In line with this ruling,
the district court held that as there was no
likelihood of confusion, it was unlikely that
consumers would associate the quality of the
defendant’s products with adidas. The judge
therefore concluded that the defendant’s use
of the triple-stripe mark did not dilute or affect
adidas’s reputation.
goods; a statement of account and damages
were refused in light of the defendant’s negligible profits.
The decision was not appealed to the Supreme
Court.
Contributor: Ronit Barzik-Soffer
Reinhold Cohn Group, Tel Aviv
INTA Bulletin Law & Practice—Middle East &
Africa Subcommittee
Verifier: Ron Klagsbald
Ron Klagsbald Law Offices, Herzliya
INTA Bulletin—Features Subcommittee
The court awarded a permanent injunction
and ordered the destruction of the infringing
15
Law&Practice
ITALY Office Guidelines on Use of Class Headings After IP TRANSLATOR Decision
On April 16, 2014, the Italian Patent and
Trademark Office issued a communication
on the interpretation of the class headings of
the Nice Classification and the way products
and services should be described in Italian
trademark applications. This is further to the
decision of the Court of Justice of the European Union (CJEU) in the IP TRANSLATOR case
(Case C-307/10 (CJEU June 19, 2012)) and the
analysis of the same made by OHIM and the
national trademark offices of the EU countries.
Since May 20, 2014, the Italian Patent and
Trademark Office has not accepted a trademark owner’s declaration attesting that protection is sought for all products and services in
a class where the class heading is used. Class
headings do not automatically cover all the
products and services in a class but are to be
interpreted literally.
Furthermore, 11 out of the 197 general descriptions included in the Nice class headings
were considered to lack the requisite clarity and
precision. Consequently, they cannot be accepted without further specification. These general
indications are set out in the table above.
Class
General Indication
6
Goods of common metal not included in other classes
7
Machines
14
Goods in precious metals or coated therewith
16
Goods made from these materials [paper and cardboard]
17
Goods made from these materials [rubber, gutta-percha, gum, asbestos and mica]
18
Goods made of these materials [leather and imitations of leather]
20
Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone,
ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all
these materials, or of plastics
37
Repair
37
Installation services
40
Treatment of materials
45
Personal and social services rendered by others to meet the needs of individuals
found in the Nice Classification, applicants can
refer to the tools TM Class and G&S Manager,
made available by OHIM and WIPO, respectively. If a term is new and is not included in the
said databases, in order to classify it, it will be
necessary to reference products similar to the
chosen one.
For trademark applications that refer to products and services by names that cannot be
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Contributor: Carmela Rotundo Zocco
Metroconsult, Turin
INTA Bulletin Law & Practice—Europe & Central
Asia Subcommittee
Verifier: Anna Maria Bardone
Porta, Checcacci & Associati, Milan
Law&Practice
JAMAICA Supreme Court Rules No Likelihood of Confusion for 3M Marks
In May 2014, the Supreme Court of Judicature
of Jamaica, Civil Division, issued its ruling in
3M Company’s appeal against the decision of
the Registrar of Industrial Property allowing the
registration of the mark 3M & Design, applied
for by Manufacturera 3M. S.A. de C.V. (3M Co.
v. Manufacturera 3M. S.A. de C.V. & Registrar
of Industrial Property, Claim No. 2013 HCV
00372, [2014] JMSC Civ 90 (Sup. Ct. May 30,
2014) (Sykes, J.).)
3M Company (3M) holds several Jamaican
registrations for the word mark 3M and various
stylized marks incorporating 3M—in particular,
the stylized mark shown below. In 2008, 3M
opposed the application by Manufacturera 3M.
(M3M) for its own stylized mark 3M & Design,
a color version of which is illustrated below
(the actual application was filed for black and
white only).
On December 21, 2012, the Registrar issued a
decision allowing registration of M3M’s mark.
3M appealed against the decision.
The Supreme Court found that there was no
likelihood of confusion between the marks
because the marks were not similar and the
respective goods were not similar, clearing the
path to registration of M3M’s mark.
The Court began by exploring the relevant
provisions of the Trade Marks Act, 1999 (TMA)
within the context of the EC Trade Marks Directive, which, Mr. Justice Sykes said, provided a
template for the Jamaican laws. The Court also
addressed persuasive precedents on the concept of likelihood of confusion from the Court
of Justice of the European Union (CJEU).
In its assessment of the similarity of the
marks, the Court deemed the marks “not
identical” owing to their conceptual and visual
differences. Despite the fact that both marks
featured the elements “3” and “M” and notwithstanding their aural similarity, the Court
found that the grasshopper design included in
M3M’s mark was a “significant feature,” and
overall it did not accept that the marks were
even similar within the meaning of the TMA.
The Court likewise determined that the
goods were not similar, despite the fact that
the goods of each proprietor—which, generally
speaking, covered machinery and spare parts for use
in the sugar cane industry—belonged to the same
international classes (7, 11 and 12). The Court
found that the relevant average consumers of
M3M’s products were not “ordinary consum-
ers” but were instead specialized consumers
with specialized knowledge of their industry
(sugar and rum manufacturing). Thus, it was
unlikely such consumers would be misled.
Furthermore, the average consumer of 3M’s
goods was not likely to come into contact with
M3M’s goods. The goods of the two proprietors were not found to be in competition. This
analysis led the Court to rule that there was no
likelihood of confusion on the part of consumers with respect to the two marks.
Despite 3M’s mark’s being arguably well
known and in the face of substantial evidence supporting that conclusion, the fact
still remained that there was no likelihood of
confusion and, thus, there were not sufficient
grounds to deny registration of M3M’s mark.
Notably, the Court emphasized its prudence
in showing “full respect for the Registrar’s
decision[s]” on trademark matters, as the
“Registrar’s reasoning…may reveal nuances
in application, which would be missed by the
untrained eye and mind.”
Contributor: Katherine Van Deusen Hely
Caribbean Trademark Services, West Palm Beach,
Florida, USA
INTA Bulletin Law & Practice—Latin America &
the Caribbean Subcommittee.
Verifier: Dianne Daley
Foga Daley, Kingston, Jamaica
Avoid Regrets Further Down the Line
Settlement and coexistence agreements are intended to
solve problems, not cause them. All too often, though,
oversights can result in an arrangement’s unraveling.
Find out how to minimize the likelihood of recurring
disagreements in “Settlement & Coexistence Agreements”
in INTA’s Practitioners’ Checklists series, available
exclusively to INTA members.
Visit www.inta.org/practitionerschecklists
17
Law&Practice
SINGAPORE ANGRY BITE Chews Up Opposition
Kimanis Food Industries Sdn Bhd filed an
application to register its mark ANGRY BITE
(the “Applicant’s Mark”) in Singapore in
respect of goods in Class 30. (Application
No. T1204840G, filed Apr. 5, 2012.) Rovio
Entertainment Ltd., best known for its game
franchise Angry Birds, opposed the application
on the following grounds:
• The Applicant’s Mark was similar to the
Opponent’s ANGRY BIRDS mark (the “Opponent’s Mark”), registered in Classes 3, 9, 14,
16, 18, 20, 21, 24, 25, 27–30, 32–36, 38,
41 and 43, such that there was a likelihood
of confusion. Moreover, the Opponent’s
Mark was well known in Singapore and well
known to the public at large.
• The opposed application was contrary to the
provisions of the law of passing off and the
law of copyright.
In examining the similarity of the marks in
question, the Registrar relied on the step-bystep approach, which states that the examination should be based on (1) similarity of
marks, (2) similarity of goods and (3) likelihood
of confusion arising as a result of the first
two elements. In applying the three-step test,
the Registrar took the view that there was no
visual or conceptual similarity between the
marks at issue, and that, while there was a
certain degree of aural similarity, it would not
result in a likelihood of confusion based on a
comparison of the marks in their entireties.
While the Opponent’s Mark was well known in
Singapore, it could not, the Registrar held, be
considered to be well known to the public at
large: Trademarks that were well known to the
public at large formed a “rare and exclusive
class,” and the Registrar was of the view that
the Opponent had not submitted sufficient
evidence to support its assertion. For example,
the sales/promotion figures submitted by the
Opponent were not sufficient.
Applicant’s Mark
Opponent’s Mark
With respect to passing off, the Registrar
found that there was no misrepresentation, in
the same vein that there was no likelihood of
public confusion, and therefore the passing-off
claim did not succeed. The claim of copyright
infringement likewise failed; the Registrar
found that the Opponent failed to establish
that any copying had taken place because
there was no substantial similarity between
the Applicant’s Mark and the Opponent’s
Mark. (In re Trade Mark Application by Kimanis
Food Industries Sdn Bhd, [2014] SGIPOS 10
(Aug. 18, 2014).)
It is worthy of note that in the Preliminary Comment the Registrar mentioned that “there is
nothing objectionable in being ‘inspired’ per se
in that, not everything ‘inspired’ by an existing
work is necessarily objectionable.” As this case
clearly articulates, an evaluation of similarity
of marks should be based on a consideration
of each mark as a whole, especially when one
of the marks at issue is a composite mark.
The decision is unique in that the Registrar
clearly enunciated that whether or not a mark
“inspired” by an existing work can ultimately
be regarded as objectionable will depend on
whether an opponent can establish one of the
grounds of opposition in the Act, which in turn
is very much dependent on the particular facts
of each case. It further highlights that a markfor-mark comparison must be done to assess
similarity, such that a word mark or a device
mark by itself should not be compared with a
composite mark.
Contributor: Gladys Mirandah
patrick mirandah co. (s) pte. ltd., Singapore
Verifier: Ravinran Kumaran
Relianze Law Corporation, Singapore
INTA 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.
November 4
November 11–15 November 18
December 8–9
INTA-USPTO Roundtable
Leadership Meeting
The Implementation of the Italian Opposition System
When Trademarks Overlap with Other IP Rights Conference
Rochester, New York, USA
Phoenix, Arizona, USA
Vicenza, Italy
Munich, Germany
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.
18 November 1, 2014 Vol. 69 No. 20
Law&Practice
Evidence That Product Design Had Acquired
UNITED
STATES Distinctiveness Is Brushed Aside
The recent precedential decision of the
Trademark Trial and Appeal Board (TTAB or
Board) in In re Koninklijke Philips Electronics
N.V. (Serial No. 85092079 (T.T.A.B. Sept.
26, 2014)) illustrates the type of evidence
required to prove acquired distinctiveness for
product designs. In this case, the applicant,
Koninklijke Philips Electronics N.V. (Philips),
sought to register the design of a toothbrush
head (shown below) for “toothbrush head for
electric tooth brushes” in Class 21:
The U.S. Patent and Trademark Office examining attorney rejected the application on the
ground that the applied-for mark failed to
function as a mark because it consisted of a
nondistinctive product design, which was not
registrable absent proof of acquired distinctiveness. The examiner found the applicant’s
evidence of acquired distinctiveness insufficient. Philips appealed to the TTAB against the
decision.
Philips’s evidence of acquired distinctiveness
comprised the following: (1) a statement that
its use of the mark was substantially exclusive
and continuous for at least five years prior to
the application date; (2) a claim of ownership
of a prior registration that had been cancelled
for failure to file a declaration of continuing
use; (3) proof that Philips had sold over 72
million units, which had generated over $500
million in revenue; and (4) evidence that competitors were making replacement toothbrush
heads and advertising them as replacements
for Philips’s product.
The TTAB affirmed the examiner’s refusal to
register, finding that Philips failed to prove acquired distinctiveness. It held that in the case
of product design applications, the evidence
“must relate to the promotion and recognition of the specific configuration embodied
in the applied-for mark and not to the goods
in general.” Thus, the critical inquiry was not
sales or substantial and continuous use.
Instead, the focus was on whether “the product design [was] being used and advertised
in the marketplace in such a manner that
consumers associate[d] the product design
with a particular applicant, and therefore
view[ed] the product as emanating from a single source.” Such evidence, the Board held,
should include “look-for” advertisements that
told consumers to look for certain identifying
features of the product design and thereby
educated consumers that such features functioned as a source indicator.
Philips did not submit any evidence of its
product packaging, sample advertisements
and advertising budgets. This omission proved
fatal. The TTAB disregarded the evidence of
copying because it could not determine in an
ex parte proceeding whether the competitors
in question were trying pass off their products
as the applicant’s or were merely manufacturing products that were compatible with
the applicant’s toothbrushes. The Board also
held that a cancelled prior registration had no
probative value in a claim of acquired distinctiveness.
Philips has not yet appealed the TTAB’s decision.
In view of the Board’s determination, applicants seeking to prove that their product
designs have acquired distinctiveness should
submit evidence that shows consumers recognize the design rather than the product itself.
Contributor: Jeremy Kaufman
Fox Entertainment Group, Los Angeles,
California, USA
Verifier: Iván G. Marrero
Pietrantoni Méndez & Alvarez LLC, San Juan,
Puerto Rico
Both are members of the INTA Bulletin Law &
Practice—United States & Canada Subcommittee.
URUGUAY No Exclusive Rights on “GRAND” in GRAND CENTRAL Trademark
On May 13, 2014, the Contentious Administrative Court (CAC) affirmed a decision issued
by the National Directorate of Industrial
Property’s (MIEM’s) trademark arm, which
granted registration for the trademark
GRAND CENTRAL to Apple Inc. in Classes
9, 38 and 42, but without exclusive rights
over the word “GRAND.” The CAC based its
decision on Article 4, paragraphs (9)–(11),
of the Uruguayan Trademark Law (Law No.
17.011, Sept. 25, 1998), which prohibit the
registration of trademarks that are descriptive, generic or not fanciful.
In its opinion, MIEM argued that “GRAND”
described the products and services covered
by the GRAND CENTRAL trademark, or at least
that it meant a quality of said products and
services. MIEM concluded that because the
term was used to describe a quality or characteristic of products and services, it was not
capable of registration as a trademark under
Uruguayan trademark law.
Apple appealed MIEM’s decision before the
CAC on the ground that the term “GRAND” did
not necessarily describe the products and services covered by its trademark. The company
contended that “GRAND” was a suggestive
term but was not descriptive of the products
and services covered. As suggestive terms are
capable of trademark protection, Apple argued
that registration of the GRAND CENTRAL trademark should have been granted with exclusive
rights over GRAND.
The CAC upheld MIEM´s decision and affirmed
the denial of exclusive rights over GRAND.
The Court found that the meaning of the word
“GRAND” in Spanish was “big,” “important,”
“impressive” or “splendid” (grande, importante, impresionante, espléndido), and that
those terms served to describe certain qualities and characteristics of the products and
services identified by the trademark. Hence,
such terms were not capable of trademark
registration under Uruguayan trademark law.
In addition, the CAC stressed that adjectives
such as “big,” “important,” “impressive” and
“splendid”—words synonymous with GRAND—
were, when used in connection with products
and services in Classes 9, 38 and 42, positive
in nature. Hence, the CAC argued, every business person would like his or her products and
services to be identified with those adjectives.
Therefore, the CAC concluded that such positive adjectives should be free for use by any
person within the Uruguayan marketplace.
Contributor: Juan Lapenne
Fox & Lapenne, Montevideo
INTA Bulletin Law & Practice—Latin America & the
Caribbean Subcommittee
Verifier: Matias Cikato
Cikato Lawyers, Montevideo
19
Save the date for
INTA’s 137th Annual Meeting
May 2–6, 2015 | San Diego, California, USA
Look forward to these highlights:
• Almost 300 customized educational offerings, including 33 general educational sessions, more than
250 table topics, users’ group meetings with leaders from several national and regional trademark offices,
a 2-day course on International Trademark Law and Practice with 18 course segments, a 2-day Basic Mediation
Training, the Trademark Administrators’ Brunch and more.
• Special offerings for IP professionals at corporations of all sizes, including the In-House Practitioners Luncheon
and Seminar, the In-House Practitioners Reception and a new series of Industry Exchanges.
• New hassle-free ways to conduct business in the Convention Center by booking one of 4 different types of
meeting spaces.
• More than 30 official networking events, including the INTA Gala, the Sunday evening Opening Ceremony and
Welcome Reception, the Grand Finale and a new array of smaller networking excursions.
• Over 100 committee, project team and Global Advisory Council meetings.
• Exhibition hall with more than 100 exhibitors and numerous sponsorship opportunities to help you spread
the word about your company and make new connections.
We expect more than 9,500 trademark professionals from all over the world to attend!
www.inta.org/2015AM
#INTA15
Exhibitions and Sponsorship
To inquire about sponsorship or exhibition opportunities for
INTA’s events, visit www.inta.org or email [email protected]
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