1. law, govt and politics

INTABulletin
The Voice of the International Trademark Association
February 1, 2015 Vol. 70 No. 3
AssociationNews
AssociationNews
U.S. Supreme Court Rules
in Line with INTA Amicus
Brief in Hana Bank case
China Delegation Expands Engagement with
Government, Industry and IP Associations
INTA held its first of two Delegation visits
to China this year from January 19-23.
INTA 2015 President J. Scott Evans led the
series of seminars, government meetings
and membership functions, accompanied
by Co-Chair of the In-House Practitioners
Committee, Chris Turk; INTA CEO, Etienne
Sanz de Acedo; China Chief Representative,
Seth Hays; and Anticounterfeiting Advisor,
Maysa Razavi.
The U.S. Supreme Court ruled on January
21, 2015, as advocated by INTA in its amicus
brief, that “trademark tacking” cases require
a determination of whether two different
iterations of the same mark create the same
“continuing commercial impression,” and that
the inquiry is therefore a question of fact to be
decided by a jury.
INTA Delegation visiting China’s Supreme People’s Court.
Government Meetings
China Trademark Association
On January 20, INTA’s delegation met with
Secretary General Jiang Ruibin of the China
Trademark Association (CTA). INTA and CTA
relations have been expanding over the past
year, following the first meeting with Secretary General Jiang in May 2014 at the Hong
Kong Annual Meeting. The two organizations
have been exchanging delegations to each
other’s events, most recently with INTA 2014
President Mei-lan Stark attending the China
Trademark Festival in Suzhou in November.
CTA has been busy implementing a new
testing system for trademark agents, to
enhance regulatory oversight in line with the
recently amended Trademark Law. Interested in international practice on this topic,
INTA will explore conducting a global survey
of jurisdictions that test their trademark
bars and provide these best practices to its
counterparts in China and elsewhere.
Another notable initiative of CTA is the formation of the China Brand Research Institute, in
See “China” on page 3
In This Issue
AssociationNews
Welcome New Members Feature
2
UKIPO Examines Future Impact of 3D Printing on IP Laws
7
European Trademark Searching for Non-European Practitioners:
Eight Factors to Consider When
Assessing the Risk Behind Your
Brand Launch
Interview: Mike O’Neil
8
Law&Practice
UKIPO Successfully Combats 6
Fraudulent Trademark Office Notices
Advancing the Trademark Profession Through Mentoring
10
Volunteer Spotlight
Anne Gundelfinger
12
Committee Spotlight: Famous and Well-Known Marks Committee
13
Committee Spotlight: Non-Traditional Marks Committee
14
15
Australia19
Chile20
Finland20
Hong Kong
21
India
21, 22
Syria22
United States
23
Trademark tacking refers to the right of trademark owners to modify their marks over time
without losing priority of use. In limited circumstances where the original and revised marks
create the “same, continuing commercial
impression,” the doctrine of trademark tacking
may be invoked.
In Hana Financial, Inc. v. Hana Bank (argued
on December 3, 2014), the Court considered
the question of whether the Ninth Circuit Court
of Appeals correctly affirmed a jury determination in favor of Hana Bank (Respondent) in
finding that it had priority use of the “Hana”
trademark as a result of the doctrine of trademark tacking. Hana Financial, Inc. (Petitioner)
contended that the Ninth Circuit erred by treating tacking as a question of fact, rather than a
question of law.
INTA argued in its amicus brief that the continuing commercial impression inquiry is an
“inherently factual” inquiry and thus is best left
to the fact-finder, not the Court.
In an opinion delivered by Justice Sonia Sotomayor, the U.S. Supreme Court agreed 9-0 with
that analysis. “When the relevant question is
how an ordinary person or community would
make an assessment, the jury is generally
the decision maker that ought to provide the
fact-intensive answer,” said the Court.
The Court found Hana Financial, Inc.’s view
that tacking is a question of law to be decided
by a judge unpersuasive, and said that any fear
of juries improperly applying the relevant legal
standard can be mitigated by crafting careful
jury instructions.
See “Hana” on page 6
AssociationNews
Welcome New Members
Noli IP Solutions PC., San Diego, California, USA
OuttenIP Counsel & Attorneys, Nassau, Canada
P. Angelides & Co LLC, Nicosia, Cyprus
Pallett Valo LLP, Mississauga, Ontario, Canada
PETOSEVIC SARL, Bertrange, ­Luxembourg
Philip Harris, Barrister, Birmingham, United Kingdom
Prospect Law Firm, Ho Chi Minh City, Vietnam
Rising Tide GmbH, Schaffhausen, Switzerland
SC&C Taking IP Practices Further Inc.,
Ottawa, Ontario, Canada
Spiegel Sohmer Inc., Montréal, QC, Canada
Strategic IP Information Pte. Ltd., Singapore
Swiss Pharma International AG, Zurich, Switzerland
Taxiarchis PC, Boston, Massachusetts, USA
Teledyne Technologies Incorporated, Thousand Oaks,
California, USA
Textron Systems, Hunt Valley, Maryland, USA
The Amatong Law Firm, PLLC, Houston, Texas, USA
The Law Office of Wesley Parks, Denver, Colorado, USA
The Trump Organization, New York, New York, USA
TM TKO, LLC, Franklin, Tennessee, USA
Vox Populi Registry, Saint Peter, Barbados
Walker IP, South Melbourne, VIC, Australia
Young Basile Hanlon & Macfarlane P.C.,
Troy, Michigan, USA
Yuen Law LLC, Singapore
Z&F INTELLECTUAL PROPERTY, Wuhan, China
Zancaner Costa e Spiewak, São Paulo, Brazil
Zing Legal, Evanston, Illinois, USA
Searchable database on the cancellation practice and
procedure in more than 85 jurisdictions worldwide
Trademark Cancellations on INTA’s Global Trademark Resources Page
Visit www.inta.org/Cancellations
INTA Bulletin Committee
To contact the INTA Bulletin Committee,
email bulletin@inta.org.
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
Co-Chairs, Law & Practice: Europe &
Central Asia Subcommittee
Mary Bleahene, FRKelly
INTA Bulletin Staff
INTA Officers & Counsel
Chief Executive Officer
Etienne Sanz de Acedo
Thomas Mudd, Zeiner & Zeiner
Chief Knowledge Officer
James F. Bush
President
J. Scott Evans, Adobe Systems
Incorporated
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
Editor-in-Chief
Eileen McDermott
Editor
Joel L. Bromberg
Graphic Designer
Eric Mehlenbeck
President Elect
Ronald Van Tuijl, JT International S.A.
Vice President and Secretary
Joseph Ferretti, PepsiCo, Inc./
Frito-Lay, Inc.
Vice President
Tish Berard, Hearts On Fire
Company LLC
Treasurer
David Lossignol, Novartis Pharma AG
Counsel
David Fleming, Brinks Gilson & Lione
Catherine Hoffman, Mayback &
Hoffman
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
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© 2015 International Trademark Association
2 February 1, 2015 Vol. 70 No. 3
AssociationNews
China Delegation Expands Engagement continued from page 1
partnership with local universities. This Institute
should provide a platform for the trademark
community to link up with businesses and conduct research, such as producing a list of the
top 500 brands in China.
INTA will continue its deepening exchange with
CTA. The Association looks forward to hosting
a large delegation of CTA members at the Annual Meeting in San Diego. Additionally, INTA
anticipates attending CTA’s Trademark Festival
this year in October.
State Administration of Industry and Commerce
Following the meeting with CTA, INTA’s delegation headed to the State Administration
of Industry and Commerce (SAIC) to conduct
a meeting with Department Director Mdm.
Liu Yan of the International Cooperation
Department and two deputies from the China
Trademark Office and the Trademark Review
and Adjudication Board. Joining the delegation
for this meeting was Dr. Huang Hui of WAN HUI
DA and Chair of the Trademark Office Practice
Committee—China Subcommittee.
Last year was a busy one for SAIC, with the
implementation of the new Trademark Law
in May of 2014. SAIC provided an overview of
their trademark operations, noting the high
numbers of applications and correspondingly high number of examiners needed—2.28
million applications last year required over
1,000 examiners, employed directly or through
outsourcing. SAIC also noted that it was the
top jurisdiction for Madrid System filings.
Ms. Liu also overviewed the proactive enforcement campaigns undertaken by SAIC, which
included some 63,300 cases, of which 33,300
were trademark infringement cases.
Meeting. A delegation also recently visited the
New York offices on Friday, January 30, 2015.
Despite the very busy schedule across the
board, from registration to enforcement, SAIC
was proud to note that it is currently meeting
the time limit of nine months for examination,
as required by the statute.
NLGO has been focused on the topic of Online
Counterfeiting as a chief priority for 2014.
Notably, Mr. Tan mentioned that enforcement
officials, in partnership with intermediaries
were able to use “big data” to prevent repeat
infringers from posting fake goods numerous
times on a site. By analyzing data in aggregate,
such as the wording of posts, IP addresses
and other data points, online market places
were able to efficiently and effectively reduce
the number of infringing goods posted online.
INTA has been closely watching and supporting
the efforts of NLGO to fight online counterfeiting, providing opportunities for government,
brand owners and online intermediaries to
have productive discussions (see below for
INTA’s education seminar on the subject).
2.28 million trademark
applications in China
last year required over
1,000 examiners.
INTA hopes to continue engaging SAIC officials,
whether through future delegation visits or
through invitations to INTA educational events
at its meetings and conferences.
Office of the National Leading Group
On January 21, INTA held a meeting at the
Ministry of Commerce (MOFCOM), which
included representatives from the Office of the
National Leading Group on the Fight against
IPR Infringement and Counterfeiting (NLGO),
the Department of Treaty and Law and the
American Legal Affairs Department. Leading
the group was NLGO Director, Division of Supervision and Liaison, Tan Jian.
INTA hosted delegations from NLGO over the
course of 2014, not only at its headquarters in
New York, but also in Hong Kong at the Annual
NLGO and INTA discussed not only the practical
aspects of fighting infringement, but the social
and psychological dynamics involved in the
selling and purchasing of infringing goods. Both
sides agreed that educating youth should be a
priority. INTA introduced its Unreal Campaign,
the Association’s educational program for
high school students, which includes online
videos and in-classroom sessions run by INTA
members. While the Ministry of Education is
not included among the ministries overseen by
the National Leading Group, there are various
efforts underway to raise awareness of the
dangers of counterfeiting among China’s youth.
See “China” on page 4
Be a part of and learn more about the exciting developments in intellectual property in India! This must-attend
conference will give you vital information on recent trademark law and practice developments in India including:
• Madrid Protocol and National Route
• ICANN: Update on the New gTLD Program and Other Hot Topics
• Parallel Imports
Learn more and register at www.inta.org/2015India
3
AssociationNews
China Delegation Expands Engagement continued from page 3
One major project for MOFCOM is assisting
Chinese companies with protection of their
IPR abroad. INTA is currently undertaking research with partners on the extent of bad-faith
registration of Chinese brands abroad, and
will share this data with the larger community
when it becomes available.
Supreme People’s Court IP Tribunal
On Friday, January 23, INTA concluded its
meetings with Chinese government officials
by meeting with the Chief Judge of the Supreme People’s Court (SPC) IP Tribunal, Song
Xiaoming, Judge Wang Yanfang and other SPC
members. INTA was delighted to host SPC
judges at its Online Counterfeiting seminar
(see below) and to meet at the Supreme
People’s Court—a truly a prestigious location to
conclude the week of government meetings.
The meeting’s discussion developed from the
topic of online counterfeiting. Judge Song noted that e-commerce is becoming the norm for
shopping, and certainly figures for online sales
reflect that—as demonstrated by the immense
sales incurred during China’s Singles’ Day (November 11). As part of China’s “new normal,”
online commerce will be a primary driver of
middle class consumption.
Both sides were eager to share information.
The SPC on World IP Day publishes 10 most
relevant cases of influence from the previous
year, and trademarks play a leading role. INTA
and the global community look forward to this
year’s publication.
WIPO China
Last year, WIPO established an office in China.
INTA visited Lu Guoliang and Zhang Junqin,
WIPO’s China representatives, in the stunning
classic hutong (Chinese courtyard) setting.
strategies earlier in the week, highlighting the
importance of China to the Madrid System. He
noted that China is the number one destination of filings, and ranked about sixth in terms
of originating applications.
As part of China’s “new
normal,” online commerce will be a primary
driver of middle class
consumption.
Importantly, China is currently in the midst
of the legislative process for accession to
the Hague Treaty on Designs. While it might
take some time for amendments of the laws
to bring China into the Hague System, there
remains some need for education within the
Chinese IP community. INTA has a strong focus
on designs, and the need for international harmonization will become increasingly important
as designs evolve as a means of brand protection in light of technological developments; for
example, in the area of 3D printing.
IP Attaché Luncheon
INTA convened a group of IP attachés from the
USPTO, OHIM, France, the UK, and the Japan
External Trade Organization (JETRO), as well as
leaders from the European Chamber of Commerce and the American Chamber of Commerce
to learn from and discuss the topics of importance to this group over an informal lunch.
INTA has been a strong supporter of government-to-government exchange on IP and has
close relationships with IP attachés based in
numerous countries. INTA also looks forward
to partnering with larger business associations
on trademark-focused topics.
Education Seminars
Lu Guoliang and Zhang Junqin (WIPO, China),
INTA President J Scott Evans and INTA CEO
Etienne Sanz de Acedo.
Mr. Lu had kindly participated as a speaker in
INTA’s seminar on brand building registration
4 February 1, 2015 Vol. 70 No. 3
Online Counterfeiting
On Wednesday, January 21, officials from
NLGO, SAIC’s Consumer Protection Bureau,
the Ministry of Public Safety, the SPC and the
General Administration of Customs joined INTA
members for a lively discussion on the issue of
Online Counterfeiting.
Joining the industry panel were Davide Follador (IP Key, China), David Ho (Alibaba Group,
Hong Kong), Shawn Yun (NBA Properties,
China) and Jan Wei (SanDisk, China). All sides
agreed that technological and commercial
developments outpaced the law and that all
stakeholders have been struggling to keep up.
Further interaction—such as that facilitated by
INTA at this meeting—between government,
brand owners and online intermediaries is necessary to combat the problem.
INTA would like to thank George Chan (Simmons & Simmons, China) and He Jing (Anjie
Law Firm, China) for moderating the two panels and the Anticounterfeiting China Subcommittee for organizing the seminar.
Chinese Companies Building Brands Abroad
INTA hosted a half-day seminar focused on
Chinese brands expanding abroad. The event
included speakers from both large and small
enterprises in China, multinational corporations, association representatives from the
Quality Brands Protection Committee (QBPC),
CTA and experts from OHIM and WIPO who
discussed international registration strategies
and methods.
The seminar was so well attended that it was
standing-room only and exceeded its allotted
time, as participants continued to raise questions well over half an hour beyond schedule.
Questions included practical topics such as
“how can SMEs afford to protect their brands?”
and—for one well-established brand—“what
would you have done differently early on?”
INTA will continue to provide support to SMEs
and established brands in China that seek
information about international practice, as
Chinese brands increasingly enter the ranks of
the top valued brands in the world.
Membership Events
Non-Member Corporate Dinner
On Wednesday, January 21, INTA hosted a
“New Year’s Dinner” for Chinese non-member
enterprises to further educate them about the
benefits of INTA membership. The event was
organized through the MOFCOM Investment
Promotion Bureau. These companies largely
hailed from technology and state firms such
as CETC International Co.,Ltd.; ZTE Corporation; China Siwei Surveying and Mapping
Technology Co., Ltd.; Lvanchina Co., Ltd; and
Information Technology Co.Ltd., Wuhai Branch.
Mr. Evans remarked that the event was a great
indication that INTA can serve the needs and
interests of Chinese firms. The Association
looks forward to working with many of those
that attended in the future.
INTA would like to thank He Jing (Anjie Law Firm,
China) for his kind organization of this event.
AssociationNews
Annual Meeting in San Diego, including new
and improved features, such as “Plan Your
Own Event,” exclusive meeting rooms and the
new premium hospitality area space.
INTA President J Scott Evans with representatives of
about 30 local companies.
Pre-Annual Meeting Reception
Dozens of INTA members showed up for a
Pre-Annual Meeting Reception in Beijing on
Thursday, January 22. Mixing and mingling
with INTA’s Leadership delegation, members
were able to learn about changes to this year’s
Technology Conference Guest Speaker
Rounding out the Delegation, Mr. Evans
addressed a technology conference on Friday,
January 23. Firms came from across the spectrum of China’s IT space. INTA emphasized
the importance of trademarks as a form of IP,
noting that research conducted by the USPTO
in 2012 and by the European Patent Office
and OHIM in 2013 indicate that trademark-intensive industries contribute significantly to
employment.
INTA greatly appreciates the efforts of Li Yongbo (Unitalen, China) and the organizers of the
conference, Beijing Hand-shield IP Consulting,
for the opportunity to address this group.
The Delegation helped to further deepen
INTA’s longstanding relationships with SAIC,
SPC, CTA and NLGO. Following a year of close
interaction between the NLGO and INTA, the
Association was able to start 2015 (and end
the Chinese year) with a standing-room only
seminar on online counterfeiting, bringing
together the three main players—government,
brand owners and intermediaries—under one
roof to discuss the issue and explore solutions.
INTA looks forward to conducting another Presidential Leadership Delegation visit to China
later this year and to making similar progress
on the wide range of issues affecting brand
owners inside and outside China.
If you represent an INTA trademark owner and
would like to participate in future delegation
visits, please contact INTA’s Chief China Representative, Seth Hays at shays@inta.org.
■
March 26–March 27, 2015
Be part of INTA’s major regional conference in Japan. Network with trademark professionals and meet
government officials while learning about:
•
•
•
•
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Strategies for nontraditional trademarks.
The latest developments and trends in the ASEAN Community.
Geographical indications.
Online counterfeiting.
What in-house counsel expect from outside counsel.
Maximizing the value of your brand.
Learn more and register at www.inta.org/2015Japan
5
AssociationNews
U.S. Supreme Court Rules in Line with INTA Amicus Brief continued from page 1
INTA applauds the Court’s analysis, which does
not preclude judges from serving as gatekeepers in determining whether legal barriers exist
to a finding of trademark tacking, but will ensure that—absent such barriers—a fact-based
approach is taken.
INTA’s amicus brief was written by Anthony
Dreyer (Skadden, Arps, Slate, Meagher & Flom,
USA), who is the Chair of the International
Amicus Committee—United States Subcommittee, and Mark Mutterperl (Bracewell & Giuliani,
USA) and Steven Pokotilow (Stroock & Stroock
& Lavan, LLP, USA), who are both members of
the International Amicus Committee—United
States Subcommittee.
■
UKIPO Successfully Combats Fraudulent Trademark Office Notices
The UK’s Advertising Standards Authority (ASA)
recently upheld two complaints made by the
UKIPO in relation to misleading mailings sent
by Trademark Renewal Service Ltd. and Patent
and Trademark Agency Ltd.
These companies have been the subject of
other complaints at the ASA, and the rulings
highlight the growing problem of fraudulent
notices seemingly sent from IP offices demanding payment for renewal or maintenance
of registrations.
In December, the UKIPO also announced that
fraudulent OHIM and EPO invoices were being
sent to UK companies and individuals, and
included examples of the misleading notices.
The USPTO and WIPO websites have also
posted warnings that include names of known
perpetrating “companies” and examples of
these fraudulent letters. OHIM has stated that
it receives more than 500 letters per year from
its users expressing doubts about fake invoices or lodging complaints after having made
payments to a fraudulent company.
In response to the problem, last year OHIM
launched its Anti-Fraud Network. The initiative
covers four areas: IT measures, communi-
cation, legal action and cooperation. INTA
was represented at the first meeting of the
Anti-Fraud Network, held in June 2014 in Alicante, by Bénédicte Linden (Gevers, Belgium),
who is a member of INTA’s Trademark Office
Practices Committee—OHIM Subcommittee.
INTA will continue to work with IP offices and
other authorities to publicize these notices
and to educate consumers and businesses
about how to spot them. For more information,
visit INTA’s Fact Sheet on “Unsolicited Offers
for Trademark-Related Services in the United
States,” which is currently being expanded to
include international coverage.
Host a Pre–Annual Meeting Reception in your city!
Volunteer to host and you’ll help attendees learn more about the INTA Annual Meeting while offering an
opportunity to network and meet new professionals. You can host Pre–Annual Meeting Receptions from
January 15 to March 2 at a venue of your choice.
All hosts will receive exposure in the INTA Daily News and on the INTA website.
Contact Sharón R. Aguayo at saguayo@inta.org for more information.
6 February 1, 2015 Vol. 70 No. 3
AssociationNews
UKIPO Examines Future Impact of 3D Printing on IP Laws
On January 20, the UKIPO released the
findings of a two-part study it commissioned
to review the IP implications of 3D printing
technology. The study, titled “A Legal and
Empirical Study into the Intellectual Property
Implications of 3D Printing,” found that, while
there is no immediate need to enact laws
regulating 3D printing, there is the potential for
infringement-related issues down the line. INTA
has been closely monitoring the development
of 3D technologies and will host a conference
on March 10–11 to examine the implications
for trademarks and other IP rights.
Study I of the UKIPO study, which included
an empirical analysis of 17 online platforms
dedicated to the sharing of 3D designs for 3D
printing, revealed some potentially problematic
trends for IP owners. For instance, it found
that Computer Aided Design (CAD) files—which
often provide the blueprints for 3D printing—
carrying the label “fashion” attracted a higher
number of views. Study I also found that there
is a plethora of tools available that make it
possible for an average user to modify CAD
files. For this reason, more clarity will be needed on the copyright status of CAD files, the
report said. Whether or not CAD file designs
are covered as artistic works under copyright
law remains unclear in most jurisdictions.
In Study II, the report examined the commercial impact of 3D printing on various sectors,
focusing on three key categories: “Replacement Parts,” “Customised Goods” and “High
Value Small Status Goods.” It found that the
automotive and domestic appliance aftermarkets are unlikely to be significantly affected
by 3D printing within the next decade, as the
current technology does not allow for printing parts of a sufficient quality to replicate
the relevant components. “However, as the
technology continues to grow, steps should be
taken in relation to traceability of spare parts,
particularly in the car spare parts sector,” the
report said.
The key recommendations to government included a warning against premature legislative
or judicial action. However, it was recommended that the UKIPO establish a Working Group
to provide clarity on the copyright status of CAD
files, to consider how to trace 3D-printed spare
parts and to be dedicated to the various IP issues 3D printing is likely to trigger in the future.
For online platforms, the report recommended education for consumers on the different
types of licenses available to protect their
3D printing designs, as well as monitoring of
“spin-offs” and “byproducts” offered by online
platforms as their numbers continue to grow.
Finally, the report advised industry to consider
licensing CAD files more widely in order to
avoid potential monopoly situations and to
employ a “pay-per-print” business model for
3D CAD files, which would eliminate the need
to send files directly to consumers.
In September 2014, the French National
Institute of Industrial Property released a
similar study on 3D Printing and its impact on
IP, which also analyzed the broader economic, legal and societal implications of the new
technology.
INTA’s two-day conference on 3D printing will
examine cutting-edge developments in this
realm, such as the phenomenon of 3D-printed
firearms, the role of patents in 3D printing and
how laws governing product safety/product
liability and export control will cope with 3D
printing. Register here to attend.
Hear legal experts, policy makers and industry thought leaders address the legal issues stemming from the
ongoing, widespread use of 3D printers. Find out the answers to:
•
•
•
•
How will 3D printing challenge IP laws and affect the value of IP?
What are appropriate responses and solutions to such challenges?
What are the ingredients for 3D printing–driven IP disruption?
How can the growth of 3D printing technology be assisted while protecting the value of intellectual property?
Learn more and register at www.inta.org/2015-3DPrinting
7
Interview
Mike O’Neil: From Politics to Surveying, Helping to Clear Up IP Confusion
Mike O’Neil embraces the various labels that
have come to define him: pollster, survey
researcher and political junkie chief among
them. During the 2014 INTA Leadership Meeting in Phoenix, Dr. O’Neil headlined the INTA
Political Action Committee Reception by explaining how he predicted and interpreted the
outcome of the 2014 U.S. midterm elections,
which tipped congressional power in favor of
the Republican Party. A survey researcher by
training, he has focused his career on scientifically assessing public opinion across a range
of areas—purposes which have included both
general and trademark litigation. Politics, however, have been a personal passion. While IP,
and particularly trademarks, has traditionally
been a non-partisan issue, Dr. O’Neil explains
to the INTA Bulletin how even seemingly benign issues may become sticking points given
divided government.
Can you describe your background and the
nature of your work?
I got two degrees from Brown University
in Rhode Island, USA, and a Ph.D. from
Northwestern University in Illinois. I also did
graduate work at the National Opinion Research Center of the University of Chicago and
postdoctoral studies at the Survey Research
Center of the Institute for Social Research at
the University of Michigan. These are generally
considered the two leading university-based
survey research programs in the world. My
training is in survey research and measuring
opinions—skills that are applicable across a
wide range of fields. In addition to marketing
research, I have dabbled in political research,
which I regard as a personal hobby. I am a political junkie—so that’s what I do for fun. I also
have a public affairs radio show which feeds
the political junkie beast in me.
Survey research, done right, entails a lot of
training. Since survey research/polling is an
unregulated field, anyone can claim expertise. But getting your work accepted varies
by realm. Courts are particularly demanding;
they want to see not only serious academic
credentials, they also carefully scrutinize your
research approach. The academic world of
“peer review” also generally keeps substandard research from being published. But in
the commercial or political worlds, it is caveat
emptor (“buyer beware”).
What does the job entail?
When you are measuring people’s opinions,
there are certain core principles that apply.
These are essentially the same whether you’re
measuring someone’s preference for toothpaste or presidential candidates, or measuring whether consumers are confused by a
8 February 1, 2015 Vol. 70 No. 3
similar-sounding name (as you would measure
in trademark litigation).
We start by asking whether a survey is even
the most appropriate means of data collection.
Sometimes there are archival data available
than can answer our questions better. In
others, qualitative methods, like a focus group,
may be more appropriate.
If we determine that a survey is appropriate,
we need to make technical judgments about
mode of administration—whether the research
is conducted in-person, over the Internet, by
telephone, or by some other means. We need
to select a sample that is representative of
a population. We need to apply knowledge
of question writing to make the questions as
clear and unambiguous and unassailable as
possible. We need to supervise the execution
of data collection, and we need an analysis
strategy to interpret the data collected.
In the last several
years, litigation research has evolved into
most of what we do.
Those are all considerations, and answers
vary based on many factors. It depends on the
nature of the question, the context in which
it’s going to be used and the budget. Some
methods are cheaper than others, but usually
it’s a trade-off between that and quality. The
methods that are the most defensible are also
usually the most expensive. Not always, but
most of the time.
You’ve been referred to as both a “pollster” and a
“survey researcher”—what’s the difference?
There really isn’t a distinction anymore. Historically, people who are academically trained
have been more comfortable calling themselves survey researchers. Commercial and political types tended to use the term “pollster.”
But realists figured out that if the world calls
you a pollster, you are one. A colleague of mine
years ago wrote an amusing piece about it in
which he explained that “poll” is a four-letter
word of Anglo Saxon derivation (like all our
dirty words) which implies the prosaic task of
“counting heads.” “Survey” is of French derivation (and therefore considered classier) and
has the more cerebral connotation “to look
over.” But, in practice, words mean what they
are used to mean. So there’s no difference.
What types of research do you handle most often?
Litigation is an interesting sub-specialty, and
in the last several years it’s evolved into most
of what we do. If I were to think back over the
last 35 years, for most of that time litigation
was actually a very tiny part of our practice—we
did market research, public policy and issue
polling. But, for the last several years, we’ve
developed a reputation in the legal community,
and I enjoy the intense challenge of that type
of work.
Why do you say legal research is challenging?
When you present your work in court, it has
to withstand far more intense scrutiny than
in any other venue. In litigation you expect
to be deposed by an opposing attorney who
will subsequently cross-examine you in court.
Their objective is not to be fair, their objective
is to win. If they can destroy your credibility,
they have helped their case. So you have to be
twice as good. So you not only have to adhere
to the highest possible scientific standards,
you have to avoid anything that even looks like
it might be imperfect. So, for example, if you
employed a method that actually was correct
but is not widely accepted—it might be very
clever, it might even be path-breaking—you
don’t try to take that into court because what
courts like to see is something that’s tried and
true and has been used forever. You want a
method you can defend because everyone has
done it forever and it’s an accepted, scientific
practice. In court, your work has to not only be
unassailable, it has to look unassailable.
Let me contrast that with scientific or academic research. There, your work gets peer-reviewed before it can be published. But the
Interview
reviewers are fair; they only want to ensure
that only good work gets published. And in the
commercial market research—in politics and in
media—there is little review of what you do.
Frankly, I enjoy the challenge of having a
top-notch attorney try to challenge our work; it
keeps you on your toes.
So what trends have emerged over the last 35 years
in your research?
Survey research has been used since the late
1930s and early 1940s. Back then, almost
all survey research was conducted in person,
because telephones were not universal. By the
1970s, phone subscriber rates became nearly
universal, and almost all survey research was
done over the phone due to practicality, cost
and control. In a centralized phone room,
which we ran for 30 years, you’ve got your
interviewers in a room where you can monitor them and make sure they’re asking the
questions in an identical fashion, so you can
implement stringent quality control measures.
Since the 1970s, however, every year respondent resistance has increased incrementally.
People are busier, they are saturated by telemarketing and the volume of surveys they’re
being asked to do has increased exponentially.
So, it’s getting harder and harder to survey
over the phone. The industry’s problem is that
there is no viable alternative to the telephone
that has universal coverage right now. We’re
seeing the very beginning attempts to use webbased surveys and even resurrect older forms,
such as mail surveys, but if you’re trying to get
something admitted into court, you can forget
using pretty much anything except a phone
survey. Even though there is respondent resistance on the phone, it’s much, much worse on
the Internet. People just hit “delete”; they don’t
click on your link. On the phone, we can have a
professional try to persuade you to interview. It
is harder than it used to be, but is still far more
effective than any viable alternative.
You’d like to think that
in the IP area everyone has a common
interest in IP protection and that politics
wouldn’t get in the way
of sound policy.
And courts’ acceptance of survey research has
had a complete turnaround during my career.
Thirty or 40 years ago, there were serious
questions about whether you could even use
survey research in court. There were court
cases that said survey research is hearsay, you
can’t use it. But, for over 20 years this is no
longer seriously debated. Survey research is
widely accepted in court. For certain types of
cases, it is hard to see litigation without survey
research to bolster claims.
How do trademark litigation cases differ from the
general litigation surveys you do?
Trademark cases are specifically focused on
demonstrating consumer confusion, or a lack
of confusion. Since such cases depend entirely
on consumer perceptions, that requirement
just screams for survey research; I don’t see
how else you could make or defend such a
claim without it. Other litigation cases, like employment claims, depend more on facts than
perceptions. For these the issues are more
likely based on issues of recall rather than perception. But the general principles of survey
research still apply whether you are assessing
facts or perceptions.
As a political junkie, how do you think IP issues will
fare in the current government, which has become
divided along party lines?
IP is a non-partisan issue, and that’s the only
thing that gives us some measure of hope.
The only question is, has the political well
become so poisoned now that people can’t
work together even on issues where they’re
not in fundamental disagreement? You’d
like to think that in the IP area everyone has
a common interest in IP protection and that
politics wouldn’t get in the way of sound policy.
I hold out a lot more hope for 2015 than 2016;
by next year everything gets subordinated to
Presidential politics.
Settlement and coexistence
agreements are intended to
solve problems, not cause them.
Find out how to minimize the likelihood of recurring disagreements in the
latest installment in the INTA Practitioners’ Checklist series, “Settlement
& Coexistence Agreements,” by Arnold Ceballos, Pain & Ceballos LLP,
Toronto, Canada, and Virginia Taylor, Kilpatrick Townsend & Stockton LLP,
Atlanta, Georgia, USA.
Visit www.inta.org /settlement
9
AssociationNews
Advancing the Trademark Profession Through Mentoring
Law Firm Committee—Authorship Project Team
The word “mentor” originates with Homer’s
Odyssey. While Odysseus fights in the Trojan
War, he entrusts the care of his household to
Mentor, who serves as teacher and overseer of
Telemachus, Odysseus’s son. Our present-day
view of a mentor is someone who advises or
trains, especially when the mentee is a younger colleague. However, in practice, mentoring
can, and should be, so much more.
The Authorship Project Team of INTA’s Law
Firm Committee spoke with several trademark
practitioners, including Marc Lieberstein, a
partner in the New York office of Kilpatrick
Townsend & Stockton; Michelle Marsh, a partner in the New York office of Kenyon & Kenyon;
Nick Redfearn, Deputy CEO of Rouse and
a partner in the firm’s Jakarta office; Laura
Ganoza, a partner in the Miami office of Foley
& Lardner; Mario Augusto Soerensen Garcia, a
partner in the Rio de Janiero office of Soerensen Garcia Advogado; and Nancy Hampton,
a trademark administrator at Cowan Liebowitz & Latman to understand how mentoring
relationships function in everyday practice. The
committee thanks them for their perceptive
and practical advice.
The Benefits of Mentoring Relationships
Mentoring has been important for generations
in the legal profession. Attorneys and administrators know that schooling, exams and
licenses alone are not sufficient preparation
to practice trademark law. Additionally, most
schools do not teach the business of running a
law practice or how to negotiate the corporate
jungle. In order to bridge this gap, mentoring
has played an important role in helping many
in the legal profession to become proficient,
well-rounded practitioners.
Mentors not only provide substantive or
procedural legal guidance to their mentees,
but can be invaluable in helping to establish
career goals and taking steps toward realizing
them. They can provide personal contacts to
help mentees find internships, externships and
locate job possibilities. Mentors can introduce attorneys and paralegals to professional
resources, information resources and organizations such as INTA. When a mentee starts
a new position, a mentor can help with the
adjustment to a new firm’s culture. In addition,
a mentor can guide an attorney who wants to
strike out on his or her own.
10 February 1, 2015 Vol. 70 No. 3
Mentoring can also benefit a more senior
lawyer. For example, if you are adding practice
areas to your firm, access to a lawyer with
experience in that area of the law can dramatically reduce your learning curve. Additionally,
an attorney or paralegal making a lateral move
to a new firm can benefit from a mentor within
the firm, who will help the newcomer navigate
internal procedures, clients and go-to people.
Mr. Lieberstein, a mentor to alumni and students from his law school, has had numerous
mentors throughout his career. His mentors’
influence on his career has been far-reaching.
He notes that his mentors taught him “decision-making processes, strategic approaches
to professional development and advancement
within a firm, writing skills, negotiation and
litigation strategies.”
Most schools do not
teach the business of
running a law practice
or how to negotiate the
corporate jungle.
Mentoring can also be beneficial to the
mentor. A study conducted in the Journal of
Vocational Behavior showed that compared
to professionals who did not mentor, people
who served as mentors within their workplace
“reported greater job satisfaction and commitment to their organization.” In addition to
career-related benefits, there are also health
benefits. A 2012 Psychology Today article
states that “research has shown that helping
others two hours per week over an extended
period of time reduces the likelihood of dying
by 40 percent.”
Mentoring Programs: Formal and Informal
Mentoring programs can come in all shapes
and forms. A large or midsize firm may have
a formal mentoring program. Ms. Marsh says
that her firm has a formal mentoring program
where each entering associate is assigned a
mentor. She truly enjoys “working with younger associates who are eager to learn,” and
helping them “find their way in the practice of
law.” Mr. Redfearn has been involved in both
informal and formal mentoring programs. He
believes “formal ones can work if there are
clear goals and it is not overstructured and
too much work. Informal ones are better, but
run the risk that some people will miss out.
Human Resources’ job should be to make
sure everyone has sufficient mentoring, one
way or another.”
Ms. Ganoza similarly espouses the benefits
of informal mentoring relationships. Many
develop naturally and organically, which
can be an advantage over a forced formal
relationship that may ultimately prove to
be unsuccessful. An informal relationship
developed outside of a place of business can
provide a fresh perspective. Notwithstanding,
Ms. Ganoza believes that a combination of
informal relationships and successful formal
mentoring programs is the best way to go.
The informal relationship provides the outside
perspective, while the formal program ensures
that someone is looking out for young lawyers
in the workplace.
Mentors can come from outside organizations, be in-house counsel or be experts with
whom attorneys work on cases. If attorneys
work at a boutique firm or are solo practitioners and don’t have the luxury of a company mentoring program, bar associations
and trade associations are great sources of
mentors. In addition, attending roundtables,
participating on committees and attending
the INTA Leadership Meeting and Annual
Meeting can all facilitate informal mentoring.
“One of my mentors was an expert witness
who taught me a lot about marketing when
I became a partner,” says Ms. Marsh. “He
helped me formulate a marketing plan and
checked in on me every quarter to see if I was
executing on the plan.”
In fact, one does not need to look at mentors
in the traditional sense. Mr. Garcia finds mentors everywhere, even in books and movies. He
asks, “Who has not learned with Santiago from
The Old Man and the Sea, Don Vito Corleone
or Don Juan DeMarco, or even Rocky Balboa?”
Clearly, mentoring figures are all around us.
Mentoring in the Trademark Field
While mentoring is important in general in the
legal field, the specialized field of trademark
law can present its own challenges: particularly with respect to advising clients, client
development and building a career in a niche
practice. A mentor can advise how to speak
to your clients, especially if the client is not
trademark savvy. Ms. Ganoza advises that a
mentor in the trademark field can teach you to
communicate the sometimes archaic language
AssociationNews
of trademark law in simple English, tempered
with business sense.
When working with clients, trademark attorneys need to be not only experts in their
field, but should also understand the broader
business goals of inventors, brand managers
and marketing professionals. Mr. Redfearn
has taught his mentees that trademark clients
do not exist in a vacuum of trademark law.
He believes that “the true and correct answer
is the business answer” and that trademark
professionals need to support and understand
the bigger picture.
Sometimes a practitioner’s entire basis of
trademark law is learned on the job from
mentors. Ms. Hampton received her trademark
foundation from attorneys at her current employer, where she has been since 1983. She
pays it forward in her supervisory position by
training and supporting numerous individuals
in her department throughout the years.
Ms. Marsh notes that trademark practice is detail-oriented and has taught her mentees that
“the devil is in those details.” Ms. Hampton
agrees that as a trademark administrator, the
lesson that should be passed on to mentees is
to “be precise in every aspect.”
A mentor should not just be there for the
day-to-day, but to assist you in planning your
trademark career. Ms. Ganoza advises senior
associates to be the “go-to trademark person
to attorneys outside of your group. This way,
you can develop a stream of work and personal relationship with clients outside of the
trademark department.”
The most beneficial information mentors
can pass on to mentees in regards to client
development, advises Ms. Marsh, is “network, network, network.” Due to the nature of
trademark law, clients can be individuals or
companies in any type of business or venture.
Thus, as clients can come from anywhere, it
is important to let everyone know what your
capabilities are—“from your hairdresser to your
college roommate,” says Ms. Marsh.
Based upon these practitioners’ sage advice,
the subcommittee has come up with the top five
tips for a successful mentoring relationship:
1. Be Honest, Patient and an Active, Open Listener.
In order for any mentoring relationship to work,
the mentor and mentee need to be open and
honest. Mr. Lieberstein believes that the key
to a successful mentor/mentee relationship
is “listening and responding.” He advises that
both the mentor and mentee should listen to
each other, and should respond to facilitate
the relationship. It is this give and take in
the relationship that will ultimately help the
mentee feel that the mentor was helpful. Follow-ups should be responsive and substantive.
If a mentor cannot provide that appropriate
follow-up, then the mentor should be honest
and up front about it, and try to enlist others
that might be able to assist the mentee.
Both parties must genuinely want to be there
in order for the relationship to work.
Conversely, mentees should be responsive,
specific about their inquiries, show initiative
and also demonstrate that they have used the
advice provided.
Mr. Garcia concurs that mentoring needs to be
open and positive. In addition, he notes that
the point of mentoring it is to help the others
to find their way—not your way. Likewise, Ms.
Hampton finds that the key to a successful
mentor/mentee relationship is “mutual respect and patience.”
2. Set Goals for the Relationship.
Setting up a road map with attainable goals
should be part of your initial plan in a mentoring relationship. If you are looking to increase
your substantive knowledge of law, grow your
client base, take on a leadership role within
your firm or with an outside organization, or
all of the above—create next steps. When you
meet, review accomplishments, discuss roadblocks you may have encountered and develop
steps to overcome them.
Ms. Marsh notes that setting goals for the mentee is key. In addition, goals set at the outset
of a relationship or a career may change with
time. Ms. Ganoza notes that it is important to
recognize that you will need different mentors
at different times in your life. Of course, sometimes a mentor is just a sounding board. She
notes that sometimes you just need affirmation
on your position from your mentor.
3. Develop a Timeline.
Although it is critical to lay out the logistics of
your meetings at the outset of the relationship,
it is just as important to be flexible; things
come up and cancellations are inevitable.
Always be thankful and respectful of the
person’s time. Discuss whether you prefer to
communicate by email or phone. With all the
alternative communication methods available,
mentoring can sometimes be done online to
save time. Although the Internet saves time,
it’s always best to have some face-to-face feedback and communication. In order to make the
most efficient use of time, you may also plan to
invite your mentee to observe you in a hearing
or trial, or to events of mutual interest.
4. Be Open to Feedback and Constructive Criticism.
A relationship can truly flourish when a mentee
is open to feedback. Ms. Marsh says, “I have
learned a lot about the challenges that they
face—some are the same challenges I faced
and some are different. It is important to listen
and try not to solve every problem for them but
give them useful guidance.” According to Ms.
Ganoza, the mentor needs to care and want
to become involved, and the mentee needs to
take advantage of the advice and relationship.
Both parties must genuinely want to be there
in order for the relationship to work.
5. Reverse the Role.
Mentorship should be a reciprocal relationship. According to Ms. Ganoza, a mentee may
show a mentor a new way of looking at things.
In addition, working with younger practitioners
may assist more seasoned ones. Ms. Hampton
finds that her younger colleagues “are quite
savvy to new technologies,” which can aid the
practice as a whole.
Receiving useful information on substantive legal issues, tips on the use of new technology to
enhance practice and new points of view from
mentees are some of the things a mentee can
do to give back in the relationship.
In keeping with the theme of the INTA 2014
Leadership Meeting, “Looking Back, Looking
Forward,” look back to a time in your career
when someone helped you find your way. Pay
it forward and mentor someone in your firm
or in an organization such as INTA. You may
find that the relationship will help more than
that one individual; it may advance INTA and
the trademark profession as a whole. You may
even find some unexpected benefits.
11
VolunteerSpotlight
Anne Gundelfinger
Anne Gundelfinger, Global Intellectual
Property Vice President of Swarovski, has
led numerous INTA committees, chaired the
1999 Annual Meeting and served as INTA
President in 2005. She is one of a handful
of practitioners who has had such a steady
presence in the life of the Association that
she has helped to shape the face of the global trademark bar.
Anne started her IP career at the Silicon
Valley firm of Fenwick & West, representing
mostly high-tech clients on a variety of sales,
marketing and branding issues. In the early
1990s, Anne joined Sun Microsystems,
where she founded the trademark practice.
Her favorite project was designing the trademark licensing strategy that enabled Sun to
establish Java as an industry standard while
maintaining control over the JAVA trademark—now one of the high-tech industry’s
most revered ingredient brands. In 1997,
Anne moved to Intel Corporation, where she
built the trademark practice into one of the
most respected in-house trademark groups
in the world. Anne later moved on to roles
within Intel as Vice President for Global Sales
& Marketing Legal and Global Public Policy,
before her retirement. In 2013, Anne joined
Swarovski, fulfilling a long-time aspiration to
live and work in Europe.
Anne has been an active member of the
Association for over 20 years. As INTA
President, Anne met and spoke before
high-ranking European, Chinese and U.S.
government officials and NGOs. She is one
of the contributors to the U.S. Trademark
Dilution Revision Act, and as INTA President,
testified before the U.S. Congress in favor of
its passage, paving the way for better protection of famous brands. She has co-authored
numerous friend-of-the-court briefs on key
trademark issues filed with the U.S. Supreme
Vol. 104, No. 6
TRADEMARK USE ISSUE
Now available for tablets and mobile devices!
The Concepts of Use of a Trademark Under
European Union and United States Trademark Law
Tara M. Aaron and Axel Nordemann
The Balancing of Fair Use and Exclusivity—
Trademark Rights Under the Chinese Trademark Law:
A Third Amendment Perspective
George Fu and Cathy Wu
…and much more!
Visit www.inta.org /tmr
12 February 1, 2015 Vol. 70 No. 3
Court, the European Court of Justice and
other courts worldwide.
In Anne’s own words, INTA has been one of
the most rewarding aspects of her career. “It
has allowed me to work with colleagues from
all over the world and to participate in important IP policy debates. Trademarks went
‘global’ before other areas of IP law. INTA
helped me ride that wave, which has been a
great experience!” shares Anne.
Anne and her husband, Mark Davis, a Google
engineer, love to travel and have recently
started cycling. “Our last cycling tour was
through the route des vins in Alsace, France,
where we ate and drank more than we cycled
off,” admits Anne with a smile. “Mark is a
lead architect for Internationalization at
Google. Our careers, while wildly different,
share the focus of making things work in a
more global world. We are both ‘globalists,’”
says Anne.
Milena Mishev
McCarthy Fingar, LLP, White Plains, New York, USA
INTA Bulletin—Association News Subcommittee
AssociationNews
Committee Spotlight: Famous and Well-Known Marks Committee
Winnie Tham
Amica Law, LLC, Singapore
Chair, Famous and Well-Known Marks Committee
The Famous and Well-Known Marks (FWKM)
Committee is composed of six subcommittees
divided geographically: Canada, East Asia &
Pacific, Europe and Central Asia, Latin America
& the Caribbean, the Middle East, Africa and
South Asia (MEASA) and the United States. As
such, it is an ideal platform to exchange ideas
and learn about famous and well-known marks
among people who share a passion for this
area of law!
The mission of the FWKMC is to evaluate treaties, laws, regulations and procedures relating
to protection for famous and well-known marks,
and also to focus on developing and advocating policies and position to advance balanced
protection of famous and well-known marks.
The foundational work of all the subcommittees is based on preparation of country reports
to evaluate the current status of FWKM law in
their region, keeping up with legislative developments and monitoring case law. This provides a good basis from which we can identify
potential issues and projects to work on. There
is a wide range of FWKM protection across
the globe; and the focus of each subcommittee may be quite different. In some regions/
countries, there is no FWKM law yet and the
challenge is to advocate its introduction. On
the other hand, in other countries, the issues
may surround the interpretation of law which is
already established, and determining whether
FWKM law is in line with INTA’s position. Some
of this work has also resulted in contributions
to the INTA Bulletins.
• Proposing the introduction of a Letters of
It has been a busy term, but highlights of the
committee’s projects include:
All of the subcommittees have also been
working on a committee-wide project to
develop a Practitioner’s Toolkit, which looks
into the practical requirements for proving
a mark is well known, and what type of
evidence is most useful in different jurisdictions. The aim is to make this resource
available to all INTA members.
• Contributions to INTA submissions to the
Canadian Intellectual Property Office (CIPO)
regarding the Proposed Amendments to the
Trade-marks Regulations 2014;
Protest procedure before the CIPO;
• Analysis of priority versus use for well-known
trade marks in Europe and Central Asia;
• Organization of an INTA roundtable in Peru;
• Engaging with government IP officials in the
various regions and IP organizations, such
as the Japan Intellectual Property Association; and
• A recent project undertaken by the U.S.
subcommittee that looks at dealing with
public relation/social media aspects for
brand owners when enforcing their rights in
a famous mark.
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
13
AssociationNews
Committee Spotlight: Non-Traditional Marks Committee
Janne Glæsel
Gorrissen Fedespiel, Copenhagen, Denmark
Chair, Non-Traditional Marks Committee
Kiran Dharsan
Seiter Legal Studio, Santa Monica, California, USA
Vice Chair, Non-Traditional Marks Committee
The Non-Traditional Marks Committee’s mission is to evaluate treaties, laws, regulations
and procedures relating to the protection of
non-traditional trademarks (NTMs), such as
sound, color and trade dress, and to develop
and advocate policies to advance balanced
protection for NTMs. It is divided into six
regional subcommittees: Canada, the U.S., Europe and Central Asia, MEASA, East Asia and
Pacific and Latin America and the Caribbean.
Current Projects and Achievements
Each subcommittee is involved in various
projects in line with the committee’s mission and objectives. In the more developed
countries where NTMs (visible and non-visible) are currently registrable under their
existing trademark laws and regulations,
for example the United States and Europe,
the subcommittees are focused on ongoing
projects. In countries where NTMs are either
not yet registrable or where only visible
NTMs are registrable, the subcommittees are
working very hard to establish a connection
with the relevant trademark office (TMO) or
government officials for purposes of holding a
discussion/interaction to consider amending
the trademark laws to incorporate NTMs, in
line with other developed countries.
Highlights of the projects undertaken by the
relevant subcommittees are as follows:
United States:
• Continuously reviewing and commenting on
regulations relating to NTMs and tracking
relevant case law developments;
• Tracking key NTM filings in the USPTO
and assessing NTM search options on the
USPTO site, with the goal to identify possible
recommendations with respect to how such
applications are examined and regarding search options. The subcommittee is
presently in discussion with USPTO Deputy
Commissioner for Trademark Operations,
Mary Boney Denison.
Europe and Central Asia:
• This subcommittee is involved in a Mock
Trademark Application Case, which is a continuing project first initiated by last term’s
subcommittee. The subcommittee intends
to transform the results of the Mock Trade
14 February 1, 2015 Vol. 70 No. 3
Mark Application Case into a user-friendly
format so that they can be published to a
wider INTA audience as a useful resource.
• Presently working on ways to educate
non-Community Trade Mark (CTM) offices on
NTMs best practice.
Canada:
• Tracking the legislative changes related to
Bill C-8, the Combating Counterfeit Products Act, which was passed on December
9, 2014. The legislation redefines the term
“trade-mark” more broadly and in a manner
that specifically encompasses many types
of NTMs. The subcommittee will provide
analysis regarding the NTMs aspect of the
Bill, as well as the effect of the amendments
for NTMs owners.
• Tracking the status of NTMs on the Cana-
dian Register as well as monitoring common law court decisions and Trade-marks
Opposition Board decisions to determine
whether any decisions are of interest to
NTMs owners in Canada. The subcommittee is in discussion with Darlene Carreau,
Trade-marks Office representative, regarding
upcoming amendments to the Trade-marks
Act, Canada becoming signatory to various
IP-related treaties and how these developments will affect practice in Canada.
Latin America and the Caribbean:
• One of the main objectives for the subcommittee has been to approach the various
TMOs in Latin America and the Caribbean to
discuss the advancement of, and to educate
them on, NTMs. The subcommittee has held
and will continue to hold roundtables and
workshops to exchange information and to
provide information on NTMs.
• Following the amendment process of the
Chilean Trademark Law and the probable
amendment to Mexican IP laws as a consequence of the negotiations to enter into the
Trans-Pacific Partnership (TPP) Agreement.
By means of this amendment, it is likely
that the term “trademark” will be defined as
broadly as possible so as to allow protection
of “colors” and non-visible signs.
East Asia and Pacific:
• Preparing and updating a NTMs country
chart which outlines the current trademark
laws pertaining to NTMs in the various countries to identify one or more countries where
NTMs are not yet registrable or where there
is a need for further development.
• Presently, the subcommittee is looking into
holding roundtables in 2015 in countries
that are still in the development stages of
Committee Objectives
1.To focus on improving local legislation
and regulations relating to NTMs, or perceived inconsistent application of the law
by the trademark offices or the courts,
or both; develop a strategy for regulatory
or legislative changes to improve the law
and its application in relevant countries,
or education (government roundtables)
to encourage further consideration of the
issues within those countries;
2.To develop a strategy for improving the
searching capabilities of NTMs in various
countries;
3.To gather and analyze the materials prepared by the subcommittees regarding
acquired distinctiveness of NTMs during
the registration process and in enforcement proceedings and identify areas for
improvement;
4.To monitor, report and discuss regularly
on judicial and administrative decisions
on NTMs with the express purpose of
determining any developing trends;
5.To investigate the overlap of NTMs with
other areas of IP protection (to be coordinated with the Related Rights Committee); and
6.To create a template presentation that
will have basic information on NTMs to
pass to the next subcommittee chairs.
This general template can be used for
presentations to local offices and can be
tailored to a specific jurisdiction.
accepting and protecting NTMs.
• Working closely with the Programs Commit-
tee in the planning of an upcoming forum in
Japan where NTMs is one of the topics to be
presented.
MEASA:
• Working on ways to meet with local
TMO personnel to provide INTA member
resources to the TMOs in all aspects of
NTMs. A number of local offices struggle with NTM-related issues and many
countries are not progressing at the pace
at which they could, purely due to a lack
of clarity and information regarding NTM
applications and prosecution.
The NTM Committee as a whole is determined
and motivated to achieve as many of its
objectives as possible, and the subcommittees
are working closely to advance and develop
protection for NTMs.
Features
European Trademark Searching for Non-European Practitioners:
Eight Factors to Consider When Assessing the Risk Behind Your Brand Launch
Jessica Le Gros
Baker & McKenzie LLP, London, UK
Trademark availability searching has a common
aim around the world: to identify whether a
proposed mark is available to be registered and
used. While a broadly similar legal framework
underlies all trademark searching, each country will approach each mark slightly differently,
in the context of its culture, language, laws and
Register. The countries of the European Union
are no exception. There are, however, some key
facts to know about trademark searching in
Europe in order to fully understand and assess
the risks of brand launches there, including
one or two possible surprises.
The basic search analysis in Europe will be
familiar to trademark specialists:
• Is the mark inherently registrable? In other
words can it function as a badge of origin,
or is it precluded from doing so because it is
generic, descriptive or in some way devoid of
distinctive character?
• Are there any prior rights related to marks
which are identical or confusingly similar
for identical or similar goods or services
(noting that greater similarity in the marks
can offset lesser similarity in the goods
and vice versa)? The test here is described
as the “global appreciation” test because
it involves weighing a number of different
factors, including the aural, visual and conceptual similarities of the marks and how
consumers might encounter, react to and
remember the marks.
• Is there any enhanced protection for any of
the prior rights through use?
• Is there any vulnerability in any of the prior
rights because of non-use, genericism or
because the mark should not have been
registered in the first place as it is not inherently registrable?
Factor #1. There Is an Overlay of National and
Regional Systems and Laws.
There are three possible Registers that may
house conflicting prior trademarks, and rights
can also exist through use of “more than mere
local significance” (Community Trade Mark
Regulation, Article 8(4)(a)), which can include
use as Protected Geographical Indications
and, in some cases, trade or business names.
1.At the individual country level there are
national rights. The ways in which national
rights are applied for, examined, challenged
and registered broadly accord with the European position due to harmonization. In practice, however, there are some key differences. For example, while applications in many
EU countries will achieve registration within
six months to a year, in Cyprus, registration
takes between 18 and 24 months. Some
offices examine and will refuse trademark
applications on the basis of earlier registered rights that are confusingly similar to
the applications at hand. However, many
now only perform absolute grounds checks
during examination and leave prior rights
issues to proprietors. There are differences
in dispute procedures too; for example,
Italy has only relatively recently introduced
opposition proceedings.
2.Overlaying national rights is the Community Trade Mark (CTM), which offers
a unitary trademark right covering all
28 member states of the EU (and some
smaller, related territories such as
Guadeloupe, Gibraltar and Azores, and
others, due to their special relationships
with different EU member states). This
is an economical way to get trademark
protection in the EU, and the system is
widely used. CTM filings increased nearly
6 percent from 2012 to 2013, continuing
a trend, with over 100,000 marks applied
for annually. See OHIM’s office page.
3.In addition, every country in the European
Union, apart from Malta, is a member of
the Madrid Union, which provides for rights
through the International Registration. This
operates as a bundle of national rights
managed centrally. It offers significant cost
and logistical advantages for filing and subsequent maintenance of registrations, although there are some potential downsides
to International Registrations, including the
qualifying conditions around the proprietor’s
commercial location and continuing vulnerability of the mark if the base application or
registration is lost within the first five years
from grant of the International Registration.
Applications for International Registrations
grew 6.4 percent between 2012 and 2013,
with over 49,000 marks applied for.
Factor #2. Distinctiveness Standards Vary by National Registry and by the Relevant Consumer.
Distinctiveness is important to both registerability and to weighing the likelihood of
confusion. A nondistinctive mark may be
vulnerable to cancellation for invalidity. The
likelihood of confusion will increase if the
marks under consideration are similar in highly
distinctive elements, while if the only elements
At-a-Glance: Eight Factors to
Consider in European
Trademark Searching
1. There Is an Overlay of National and Regional Systems and Laws.
2. Distinctiveness Standards Vary by
National Registry and by the Relevant
Consumer.
3. Distinctiveness and Confusing Similarity
Must Be Assessed in Different Languages.
4. Adding a “House Mark” Doesn’t Avoid
Confusion and Further Applications of
This Principle.
5. Specification Practice and the Assessment of Similarity Vary by Registry.
6. Assessing Whether a Mark Vulnerable for
Non-Use Is Not Always Straightforward.
7. Co-Existence of a Number of Apparently
Confusingly Similar Marks on Register Is
Not Enough.
8. Assessing Whether Earlier Marks Have
Enhanced Protection Through Use Can
Be Tricky.
in common are weakly distinctive, the marks
are less likely to be confusingly similar. It is no
longer common practice in Europe to require
disclaimers for nondistinctive elements of
composite marks, so it is up to the searcher
to determine whether particular elements of
prior marks are to be considered as part of
the scope of protection of the earlier mark.
The judgment in the NOW TV case warned
against the practice of Registries accepting
nondistinctive marks when accompanied
by only a “figleaf of distinctiveness” (in this
case, some figurative elements surrounding
the word “NOW”), although it is common for
searchers to come across what might appear
to be descriptive or nondistinctive marks that
have achieved registration. (The High Court
of England and Wales in Starbucks (UK) Ltd v
British Sky Broadcasting Group Plc & Others
[2012] EWHC 1842 (Ch).)
The above all seems relatively straightforward
until you consider that each of the national
Registers in Europe has varying standards in
relation to both inherent registerability and
distinctiveness. Marks from a U.S. or UK perspective, which might be considered descrip-
See “Trademark Searching” on page 16
15
Features
European Trademark Searching for Non-European Practitioners continued from page 15
tive or of low inherent distinctiveness, may
be validly accepted for registration in many
European countries. Consider the following two
examples:
1.In Case C-421/04, Matratzen Concord AG
v. Hukla Germany SA, March 9, 2006, a
German mattress manufacturer was unsuccessful in invalidating a Spanish national
registration for MATRATZEN on the basis
that the word “matratzen” means mattresses in German. The EU Court of Justice
(which is the highest court of the European
Union, and also referred to as the CJEU),
confirmed that a mark that is nondistinctive
or descriptive in one member state may
not be so in another. Such a trademark
would only be unregistrable if the relevant
consumer in the member state (in this case
Spain) was capable of identifying the meaning of the term. However, the registration of
such a mark would not necessarily prevent
all use of that term by other traders, for
example, in a purely descriptive sense, such
as in a German language catalogue to refer
to mattresses.
2.In a recent case, the mark DOGHNUTS was
registered in Spain for “pastry products and
preparations” and “round-shaped dough
biscuits” in class 30, and subsequently
formed the basis of a successful opposition against a CTM application for BIMBO
DOUGHNUTS for identical goods. The CJEU
took the view that the word “doghnut” or
“doughnut” did not exist in Spanish and
therefore consumers would perceive the
mark as a fanciful or invented term, and
so it was likely to be confused by Spanish
consumers with the later application BIMBO
DOUGHNUTS. (Case C 591/12, Bimbo SA v.
OHIM, 8 May 2014.)
So, we must take into account two things when
assessing the strength of prior rights. First, in
markets where English is not widely spoken,
consumers may not understand the meaning
of even common English words or phrases.
Second, many national Registries operate with
very low bars to registration around distinctiveness. When a search report shows national
rights that appear very descriptive or weak, it
shouldn’t be assumed that they will be necessarily vulnerable to cancellation for invalidity or
that the proprietor will be reluctant to enforce
them, or that consumers are less likely to
confuse them.
the marks conceptually similar (calling to mind
“femenino,” meaning feminine), and would
pronounce the “v” and “b” in the middle of
each mark identically, despite the fact that the
degree of attention paid to pharmaceutical
goods is ordinarily high. (Case T 324/13, 16
July 2014.)
Factor #3. Distinctiveness and Confusing Similarity
Must Be Assessed in Different Languages.
As we have seen above, while the CTM is a unitary right, it must operate across 28 countries
with 24 official languages. As a result, some
understanding of the likely reaction and understanding of consumers to your proposed mark
in each market must be sought. If a likelihood
of confusion exists in one country or language,
it may be sufficient to block your CTM.
Factor #4. Adding a “House Mark” Doesn’t Avoid
Confusion and Further Applications of This Principle.
In many countries around the world, the advice
to “add the house brand” is a common way of
seeking to avoid confusion with an earlier registered right. In Europe, the Medion decision
(of the CJEU), and subsequent extensions of
the application of it, means that adding even
a highly distinctive mark to a mark which is
identical to a prior registered mark will not
necessarily diminish the risk for confusion,
even where the prior mark could be thought of
(by some) as weakly distinctive.
In ARMACELL, the EU General Court (which is
an arm of the Court of Justice, and the first appellate court from the Community Trade Mark
office (OHIM) Board of Appeal) confirmed that
the marks ARMAFOAM and NOMAFOAM were
likely to be confusingly similar for
non-English-speaking consumers who would
not understand the meaning of the English
suffix “FOAM,” and that they were not required
to take into account the likelihood of confusion
amongst English-speaking consumers. (Case
C-514/06, Armacell Enterprise GmbH v. OHIM,
September 18, 2008.)
A recent case also emphasized the importance
of pronunciation in different languages. In
Endoceuticals, Inc v. OHIM, the CJEU found
that the marks FEMIBION and FEMIVIA were
confusingly similar, primarily because Spanish
consumers would consider the beginning of
INTA’s Practitioner’s Guide to the
Madrid Agreement and Madrid Protocol
This searchable database offers practical information on member
countries’ practices and procedure in obtaining, maintaining and
enforcing registrations through the Madrid System.
Visit www.inta.org/MadridProtocol
16 February 1, 2015 Vol. 70 No. 3
These principles apply to any language of any
section of the EU. It is purely coincidental that
many of these examples relate to Spanish
consumers and language.
For example, the mark LIFE had been registered for certain electronic devices. The defendant, Thomson Multimedia, used a composite
mark, THOMSON LIFE. The court decided that,
as part of the overall comparison of the two
marks, if the earlier mark plays an “independent distinctive role” in a later composite
mark, the marks are likely to be confusingly
similar. The addition of a distinctive company
name did not assist Thomson Multimedia.
(Case C-120/04, Medion AG v. Thomson
Multimedia Sales Germany & Austria Gmbh,
October 6, 2005.)
Later cases have applied the principle even
where the added element is not the house
brand or company name, or where the earlier
Features
mark is not identically reproduced, such as in
the Aveda Corporation v. Dabur India Limited
case ([2013] EWHC 589 (Ch)) (High Court of
England and Wales).
In order to be sure of avoiding the application of the principle outlined in the Medion
decision, it is necessary to show that the
earlier mark no longer plays an independent,
distinctive role in the later composite mark
and therefore is not confusingly similar. This
has been found to be more likely when the
earlier mark is combined in the later mark as
one of three or more components, or if it is
conjoined to other components such that it
removes the independent distinctive role of
the earlier mark. For example, the EU General
Court decided that NATURAVIVA and VIVA were
not confusingly similar because of the way in
which the additional NATURA element flowed
into and combined with VIVA. (Case T 107/10,
Procter & Gamble Manufacturing Cologne
GmbH v. OHIM, 29 September 2011.)
Factor #5. Specification Practice and the Assessment of Similarity Vary by Registry.
Similarity between the marks is one limb of
the global appreciation test, but identity or
similarity between the goods and/or services
is the second. Understanding whether goods
and services terms are likely to be considered
similar is therefore key to assessing risk.
It used to be the case that each Registry
adopted its own specification practice, usually
either reading class headings as providing
protection for all goods or services categorized
in that class, regardless of whether that would
be clear from the plain meaning of the words
in the class heading, or to mean that protection is given for all items listed in the heading
according to their ordinary and natural meaning. These two approaches are described as
“covers all” or “means what it says” .
The IP Translator case required the court to decide which approach was correct. (Chartered
Institute of Patent Attorneys v. Registrar of
Trade Marks, Case C-307/10 (CJEU June 19,
2012).) Rather than opt for one or the other,
the court held that “the specification must
be sufficiently ‘clear and precise’ to allow the
competent authorities and economic operators to determine the extent of the protection
sought under the respective mark.” This has
triggered a change of practice at the CTM
Registry, because while some class headings
were sufficiently clear and precise that they
functioned to cover all goods or services in the
class, others were not. Now, each CTM applicant wishing to cover all goods or services in
a class can indicate precisely that when filing
an application, with the result that all of the
alphabetical listing of terms in that class will
be included in the specification. For existing
marks, the assumption is that the proprietor
intended to cover all items in the class and it is
required to confirm this if the mark is challenged or used as the basis of an opposition.
National Registries have applied this ruling in
differing ways.
So, when reviewing prior marks, you must
consider whether specifications, including
class headings, cover all the goods or services
in the class or only those listed (or other more
complex permutations of this ruling). This can
have a significant impact on your risk assessment and will require a detailed understanding
of specification practices around Europe.
In addition, some trademark professionals in
Europe believe that the CTM Register is cluttered, meaning that there are a large number
of unused or overbroad marks on the Register,
making it increasingly hard to advise on the
risk of adopting new marks based on the state
of the Register alone.
If a likelihood of confusion exists in one country or language, it may
be sufficient to block
your CTM.
A number of factors contribute to the problem:
the pricing structure, which encourages applications in at least three classes; the practice
of applying for all terms in a class rather than
a list of specific goods and services of interest;
and the fact that marks remain on the Register
until they are actively challenged by third
parties, as there is no routine proof-of-use requirement. In addition, there is no requirement
to have a genuine intention to use the mark.
Brand owners need to be prepared to investigate further marks that are registered and
ask whether they are in use, what the real
commercial interest of the proprietor is and
whether they are vulnerable to cancellation. All
of these steps take additional time and money
and can be hard to assess accurately.
A recent Common Communication of the
Practice of the Scope of Protection of Black
and White Marks has introduced, at the CTM
level and at many of the national Registries,
a new practice in relation to comparing an
earlier mark in black and white to a later,
otherwise identical, mark in color. Previously,
the prevailing view was that a mark registered
in black and white offered protection for all
color combinations and, a recent case appears
to have reaffirmed this principle in the context
of genuine use, where the Court of Appeal of
England and Wales stated that a mark in black
and white was “registered without any colour
limitation and so is registered in respect of all
colours.” (Specsavers International Healthcare
Ltd & Ors v Asda Stores Ltd (Rev 1) [2014]
EWCA Civ 1294.)
This new practice means that, for the purposes
of Registry proceedings (specifically, when assessing if a mark has been put to genuine use,
in order to claim priority, and for comparing
marks in opposition), marks in black and white
will no longer be considered identical to the
same mark in color. Instead, in many circumstances, you will need to argue that either the
differences in color don’t alter the distinctive
character of the mark, the differences are
insignificant or that the marks are instead
similar, instead of identical, and therefore you
will need to prove a likelihood of confusion.
This practice impacts risk assessments in
relation to whether a prior mark is vulnerable
for non-use and the likelihood of success in
possible oppositions. See OHIM’s Common
Communication.
Factor #6. Assessing Whether a Mark Vulnerable for
Non-Use Is Not Always Straightforward.
While CTMs are not subject to a proof of use
requirement in the course of ordinary prosecution or maintenance of the mark, they are
vulnerable to revocation for non-use (on the
application of a third party or in a counterclaim) if they are not put to genuine use in the
EU within a period of five years after registration. Are you able to discount a mark located in
a search as being vulnerable, or will an earlier
proprietor be reluctant to enforce its mark and
expose it to partial or full revocation? Unfortunately, this is not necessarily a straightforward
question in the EU.
The CJEU in the ONEL case held that the territorial borders of the member states should
be disregarded in the assessment of whether
a trademark has been put to “genuine use in
the Community.” “A Community trade mark
is put to ‘genuine use’ when it is used in
accordance with its essential function and for
the purpose of maintaining or creating market
share within the European Community for
the goods or services covered by it … taking
account of all the relevant facts and circumstances, including the characteristics of the
market concerned, the nature of the goods or
services protected by the trade mark and the
territorial extent and the scale of the use as
well as its frequency and regularity.” (Case C
See “Trademark Searching” on page 18
17
Features
European Trademark Searching for Non-European Practitioners continued from page 17
149/11, Leno Merken BV v. Hagelkruis Beheer
BV, December 19, 2012.)
As a result, the geographical scope of use is
not the only criterion when assessing vulnerability; significance must be placed on whether
there is a real commercial exploitation of the
mark in the course of trade to the extent that
would be expected in the relevant economic
sector to maintain or create a market share in
the EU. This is obviously a much more complex
analysis than determining whether use has
taken place in one, two or more countries, and
is one that will be hard for brand owners to
perform based on information obtained during
clearance searches.
Factor #7. Co-Existence of a Number of
Apparently Confusingly Similar Marks on
Register Is Not Enough.
It is quite common to see, in search results, a
number of registered marks which appear to
be confusingly similar, all co-existing. Can this
assist us in determining whether our proposed
mark can also co-exist with prior registered
marks disclosed in search reports? While it
may give some practical comfort (the earlier
parties don’t seem to be litigating against each
other), it does not prevent a finding that one or
more of the earlier marks can prevent use or
registration of the proposed mark.
The EU General Court addressed this issue
in the BOOMERANG case, ruling that mere
co-existence on the Register is irrelevant when
determining whether marks are likely to be
confused. Evidence of peaceful co-existence
in the marketplace may be taken into account,
but only in “special circumstances” assessed
on a case-by-case basis, and with caution, as
there may be particular factors allowing such
peaceful co-existence; for example, a prior
rights agreement between the rights holders
in question. Again, this is of little assistance
when searching, as search results alone do
not reveal where marks co-existing on the
Register are also co-existing peacefully in the
market. Ultimately, extensive use investigations still will be needed to eliminate such
prior marks as posing a significant risk. (Case
T-285/12, Cartoon Network, Inc. v. OHIM and
another, October 2, 2013, decision of the EU
General Court.)
Factor #8. Assessing Whether Earlier Marks Have
Enhanced Protection Through Use Can Be Tricky.
Marks encountered in a search may have
additional protection, allowing them to block
the registration of similar marks in relation to
dissimilar goods, because they have a reputation acquired through use. Whether a mark
qualifies for this additional protection means
asking whether it is “known by a significant
part of the public concerned by the products
or services covered by that trade mark, in a
substantial part of the territory of the European Community.” In the PAGO case, the CJEU
found that reputation in Austria (one member
state) was sufficient. (Case C-301/07, PAGO
International GmbH v. Tirolmilch registrierte
Genossenschaft mbH, October 6, 2009.)
However, this doesn’t establish that reputation
in one member state will always be enough,
and assessing reputation remains a difficult
question for trademark searchers.
The recent Specsavers case has also highlighted that, in the context of infringement, if a
mark is registered in black and white but used
extensively in color, this can have a bearing
on the likelihood of confusion and therefore
the scope of protection of the earlier mark. In
that case, Specsaver’s mark was registered in
black and white but used extensively in green,
and the CJEU found that “where a Community
trade mark is not registered in colour, but the
proprietor has used it extensively in a par-
When You Need to Know
Whether undertaken as an assessment of trademark rights
or an evaluation of the adequacy of internal management
systems, a trademark audit has to be thorough to offer an
accurate picture of a company’s brand name activity. For
tips on navigating the myriad details associated with the
exercise, see “Trademark Audits” in INTA’s exclusive
Practitioners’ Checklists series.
Visit www.inta.org /practitionerschecklists
18 February 1, 2015 Vol. 70 No. 3
ticular colour or combination of colours with
the result that it has become associated in
the mind of a significant portion of the public
with that colour or combination of colours, the
colour or colours which a third party uses in
order to represent a sign alleged to infringe
that trade mark are relevant in the global
assessment of the likelihood of confusion or
unfair advantage.” (Case C 252/12, Specsavers International Healthcare Ltd, Specsavers
BV, Specsavers Optical Group Ltd, Specsavers
Optical Superstores Ltd v. Asda Stores Ltd, July
18, 2013.)
Again, it will fall to the brand owner to conduct
detailed use investigations before it can
determine whether a prior mark could prevent
the brand owner from obtaining or using its
proposed mark, because the earlier mark has
enhanced protection for dissimilar goods or for
a particular color or color combination, neither
of which is apparent from the Register.
Conclusion
European trademark practice must balance
a number of varying registration systems
and practices, bound together by the aim of
harmonization, and still attempt to account
for different languages, cultures and consumers. In order to fully assess the commercial
and legal risk of launching a new brand, it is
important to understand the ways in which
these systems provide protection to registered
and unregistered rights, and how consumers
will view, pronounce and understand marks
across the EU’s 28 member states. Interpreting European trademark availability searches
means grappling with the application of the
eight factors above and being prepared to take
on additional investigation and analysis before
filing your trademark application or commencing use.
■
Law&Practice
AUSTRALIA High Court Tests the Registrability of Foreign Words as Trademarks
The High Court of Australia has recently confirmed the test for assessing distinctiveness of
trademarks, including trademarks comprising
foreign words. Cantarella Bros Pty Limited v.
Modena Trading Pty Limited [2014] HCA 48
(December 3, 2014).
Background
Cantarella Bros Pty Limited (Cantarella) owned
trademark registrations for ORO and CINQUE
STELLE for coffee. It brought trademark
infringement proceedings against Modena
Trading Pty Limited (Modena). Modena argued
that its use of ORO and CINQUE STELLE
(Italian words meaning “gold” and “five stars”)
indicated the quality of its goods. Modena also
counterclaimed that Cantarella’s trademark
registrations should be canceled because
the words were not inherently adapted to
distinguish Cantarella’s coffee products from
those of other coffee companies, citing their
common use by other traders.
The primary judge ruled that Modena had
infringed Cantarella’s trademark registrations.
Although Italian speakers would understand
the meaning of ORO and CINQUE STELLE, “ordinary” Australians would not understand the
significance. Cantarella’s registrations were
therefore upheld.
Modena appealed to the Full Federal Court
to cancel Cantarella’s registrations for ORO
and CINQUE STELLE. The Full Court applied a
test focusing on whether other coffee traders
would wish, acting honestly, to use ORO and
CINQUE STELLE in relation to their own goods.
Modena’s appeal was successful.
The Majority Decision of the High Court
The High Court (by a majority of four to one)
allowed Cantarella’s appeal. Modena’s applications to cancel the registrations failed. The Court
held that the trademarks ORO and CINQUE
STELLE are distinctive when used for coffee.
The judges noted that, when assessing the
registrability of a trademark, its “ordinary
signification” is important. Determining the
“ordinary signification” is equally important if the trademark is a word in a foreign
language. However, it is not the translated
meaning of the word which is critical (although it may be relevant). “What is critical
is the meaning conveyed by a foreign word
to those who will be concerned with the relevant goods” (paragraph 48).
The majority judges emphasized the importance of differentiating between words which
make a “covert and skilful allusion” to the
goods in question versus words which make a
“direct reference” to the goods
Also important is who comprises the “audience.” The High Court affirmed that the
consumer, rather than trader, was the focus
of its assessment as to the “ordinary signification” of words. In the context of coffee
being “a commodity and a familiar beverage
consumed by many” the target audience is to
be widely construed.
The judges found that the available evidence
did not establish that ORO and CINQUE STELLE
“convey a meaning or idea sufficiently tangible
to anyone in Australia concerned with coffee
goods as to be words having a direct reference
to the character or quality of the goods” (paragraph 73). Modena’s evidence as to the apparent descriptiveness of the terms when used
by traders was not, in the opinion of the High
Court, sufficient to detract from this finding.
The High Court therefore concluded that
in Australia, ORO and CINQUE STELLE are
inherently adapted to distinguish Cantarella’s
coffee products from those of other traders.
The trademark registrations were reinstated.
Contributor: David Moore
Henry Hughes IP, Wellington, New Zealand
Verifier: Marion Heathcote
Davies Collison Cave, Sydney, Australia
Before You Send That Cease
and Desist Letter
Without proper forethought and thorough planning, a cease and desist letter can
create more problems than it was ever intended to solve. See Cease and Desist
Letters in INTA’s Practitioners’ Checklists series for help in plotting the best course
of action. This addition to the members-only series of helpful training tools in
Global Trademark Resources — by Kevin Collette, Ryan Swanson & Cleveland, PLLC,
Seattle, Washington, USA — joins other checklists on key tasks and functions.
Ensure that critical considerations are not overlooked.
Take advantage of this valuable resource today.
Visit www.inta.org/ceaseanddesist
19
Law&Practice
CHILE Court of Appeals Dismisses Case Alleging Malicious Use by Distributor
On June 3, 2014, the Court of Appeals confirmed a first instance decision in which the
criminal actions filed by Epson, Canon, Lexmark
and Hewlett-Packard (the companies) against a
distributor, IRC Chile Ltda., were dismissed.
A criminal action was filed in 2010 by the companies against IRC Chile Ltda., which commercializes alternative ink cartridges that included
the companies’ trademarks on the products.
The plaintiffs alleged that the inclusion of their
marks constituted a violation of IP law as an
unauthorized use of a registered mark, which
could create confusion among consumers.
The criminal action was based on the alleged violation of Article 28(a) and (c) of the
Industrial Property Law (19.039), which forbids
and punishes by fine those who “maliciously
use, for commercial purposes, a trademark
identical or similar to another registered for
the same goods,” and “Those who make
use, for commercial purposes, of containers
or packaging materials bearing a registered
trademark and not being entitled to use it or
not having previously erased it, unless the
marked packaging intended to package products different and unrelated to those protected
by the trademark.”
The prosecution did not base its accusation
on the counterfeiting of the cartridges nor on
the intention to mislead consumers, but on the
fact that Article 28(a) provides that the use of
a third party’s trademark, knowing that it was
registered to said third party, constitutes malice.
The seller, in its defense, argued that the box
containing the cartridge, and the cartridge itself, presented a different graphic appearance,
and in addition included the words “compatible
with,” and “remanufactured,” so there was no
intention or possibility to create confusion. Also,
the seller argued that the cartridge included a
trademark registered by the seller (MERCURY),
and that the inclusion of trademarks belonging
to the companies was to ensure consumers’
ability to correctly identify the product needed
for their corresponding printers. Therefore,
there was no malicious use.
In its resolution issued on May 13, 2014, the
court dismissed the actions filed, arguing
that, in its opinion, there was no violation of
the law, as it could not be concluded that the
use of the marks was malicious, because the
cartridge and the corresponding boxes also
included a different mark (MERCURY, registered by the seller), which had a different
graphic appearance, and they included the
words “compatible with,” and “remanufactured,” so there was no intention or possibility to create confusion.
Contributor: Francisco Silva
Silva & Cia., Santiago
INTA Bulletin Law & Practice—Latin America &
the Caribbean Subcommittee
Verifier: Pablo Cariola
Sargent & Krahn, Santiago
Emerging Issues Committee
FINLAND Appropriation of Goodwill: New Trends in Finnish Practice
The Finnish Market Court has traditionally
rejected claims based on appropriation of
goodwill. However, last year’s Market Court
decisions, the latest on November 18, 2014,
show that appropriation of goodwill has
gained a foothold as an independent ground
for action under the Finnish Unfair Business
Practices Act (1978/1061).
The Market Court decision MAO 121/12
(Granströms Båtvarv) was a turning point. In
the case, the Market Court stated that there is
appropriation of goodwill when a trader, for its
own advantage, makes use of the value that
has been created through efforts by another
entrepreneur. A further condition was that the
goods in question are so well known that they
are associated with the other entrepreneur. The
Market Court emphasized that appropriation of
goodwill does not require a risk of confusion.
In the most recent Market Court case MAO
809/14, Valio claimed that Bunge Finland
appropriated the goodwill in the VOIMARIINI
and OIVARIINI products by marketing a com-
20 February 1, 2015 Vol. 70 No. 3
peting butter–vegetable oil spread under the
name KEIJURIINI. The Market Court noted that
VOIMARIINI and OIVARIINI were well-known
trademarks but concluded that in consumers’
minds “RIINI,” which is also used in other
competitors’ product names, mainly refers to
the nature of the butter–vegetable oil spread.
Bunge Finland consequently did not create an
association with the OIVARIINI or VOIMARIINI
products. This was further enhanced by the
fact that KEIJU is a known mark for Bunge
Finland’s products and KEIJURIINI mainly refers
to the KEIJU products. See also the corresponding outcome by the Supreme Court in the
trademark infringement case KKO 2012:12
(Voimariini, Oivariini/Ingmariini).
MAO 809/14 and other past case law show
that even though appropriation of goodwill is
now accepted as an independent ground for
action, the threshold is high. The applicant
must show that the subject of appropriation (a
trademark, trade name, other IPR or concept)
is original (or clearly has a secondary meaning),
independent and well known to such a degree
that it is associated with the entrepreneur and
that the claimed unfair marketing creates an
association with the subject of appropriation.
Most of the cases decided so far could have
been prosecuted as trademark infringement
cases as well. It is recommendable in each
potential case to assess carefully whether the
case should be prosecuted as a trademark (or
other IPR) infringement case and/or under the
Finnish Unfair Business Practices Act, keeping
in mind both procedural aspects and aspects
relating to the scope of injunction that can
be rendered. Notably the Market Court has
become the exclusive court for civil intellectual
property-related proceedings in Finland as of
September 1, 2013. It is now possible to have
a case tried on the basis of both trademark
infringement and unfair business practices in
the same proceedings.
Contributor: Åsa Krook
Attorneys at Law Borenius Ltd, Helsinki, Finland
Verifier: Susie P. Arnesen
Sandel, Løje & Partnere, Copenhagen, Denmark
Law&Practice
Court Rules Against “TWG” Company Name
HONG
KONG Based on Trademark Rights
On December 3, 2014, the Court of Appeal (CA)
upheld a judgment of the High Court ruling that
TWG Tea Company Pte. Ltd. and its subsidiaries (TWG Tea) had infringed and passed off
trademarks of Tsit Wing Group of companies
(Tsit Wing). (Tsit Wing (Hong Kong) Company
Ltd and others v. TWG Tea Company Pte Ltd
and another, CACV 191/2013.)
the luxurious IFC shopping mall in Hong Kong
on December 8, 2011, under signs incorporating TWG.
Tsit Wing, a trader of principally coffee and
tea products, has been conducting business
in Hong Kong since 1932. Among various
registrations, in 2006 Tsit Wing registered two
marks containing TWG for goods including coffee and tea. Such TWG marks, which stand for
“Tsit Wing Group,” were adopted in conjunction
with the celebration of the 75th anniversary of
the business.
One of the noteworthy aspects of the case is
that in considering a claim for trademark infringement, the CA confirmed that comparison
is not confined to the plaintiff’s marks as they
are actually used, but the defendant’s marks
must be compared to a notional and fair use
of the plaintiff’s marks. Thus, the CA said the
exclusive right of the plaintiff embraces use of
its registered marks in whatever color scheme
it deems fit. The CA also said that. although the
evidence shows that the TWG marks are often
used together with the Tsit Wing name, this
does not reduce Tsit Wing’s exclusive right in
the TWG trademark registrations.
TWG Tea, being part of The Wellness Group in
Singapore, adopted TWG for its name in 2008.
TWG Tea claimed TWG to be an abbreviation of
The Wellness Group. It opened a tea salon in
The CA’s decision upheld the High Court’s
ruling that, among other types of relief, TWG
Tea is restrained from using the TWG mark for
its tea salon and related businesses.
It is also noteworthy that TWG Tea had argued
that its marks were not similar to Tsit Wing’s
in certain overseas opposition proceedings
against Tsit Wing’s marks, but later dropped
those arguments in the Hong Kong litigation.
The trial judge was also not convinced by TWG
Tea’s suggestion that it had informed Tsit Wing
of the opening of the tea salon and did not find
it surprising that TWG Tea later abandoned
(but only at a very late stage) the defense that
it was using its own name in accordance with
honest practice.
Considering the conduct of TWG Tea, the
trial judge awarded higher than usual costs
to Tsit Wing.
Contributor: Ellen K. Wan
China Patent Agent (H.K.) Ltd., Hong Kong
Verifier: Simon C.C. Chan
Woo Kwan Lee & Lo, Hong Kong
Full Bench Upholds Power of Courts to Examine
INDIA Validity of Trademark Registration at Interim Stage for Limited Purposes
In a recent decision of December 23, 2014,
the Full Bench of the Bombay High Court,
while adjudicating two separate matters—Lupin Ltd. v. Johnson & Johnson and Shakti
Bhog Foods Limited v. Parle Products Private
Limited—delivered a combined judgment
settling the contradictory standards of various
High Courts of India. The issue at hand was
the power of civil courts to question the validity of registration of a plaintiff’s trademark
at an interlocutory stage when the defendant
takes up the defense of invalidity of registration of the plaintiff’s trademark in an infringement suit.” The Full Bench, while deciding the
above issue in the affirmative, emphasized the
requirement of having “a very high threshold
of prima facie proof.”
The appellant/plaintiff’s main contention was
that the purpose of obtaining a trademark
registration would be defeated if courts were
permitted to consider a plea of invalidity of a
trademark at the interim stage. On the other
hand, the respondent/defendant contended
that if the court was held powerless in this
respect, justice would not be served and the
defendant would be deprived of an important
right of defense conferred on it by the statute.
The Full Bench, on consideration of the issues,
held that “in cases where the registration of
a trade mark is ex facie illegal, fraudulent or
shocks the conscience of the Court, the Court
is not powerless to refuse to grant an injunction, but for establishing these grounds, a very
high threshold of prima facie proof is required.
It is, therefore, open to the Court to go into the
question of validity of registration of plaintiff’s
trade mark for this limited purpose, to arrive at
a prima facie finding.”
The decision will have a major impact on trademark litigation practices in India, and it will be
interesting to see how often the Courts take up
the question of validity of registered marks.
The decision is final subject to appeal at the
Supreme Court.
Contributor: Sharabh Shrivastava
Chadha & Chadha, New Delhi
Verifier: Gaurav Miglani
Worldwide Intellec, New Delhi
21
Law&Practice
INDIA Tobacco Products Packaging and Labeling Rules Come Into Force
The Central Government of India has now
introduced the Cigarettes and Other Tobacco
Products (Packaging and Labelling) Amendment Rules, 2014, which shall come into
force on April 1, 2015. These Rules stem from
the Cigarettes and Other Tobacco Products
(Prohibition of Advertisement and Regulation
of Trade and Commerce Production, Supply
and Distribution) Act, of 2003, which prohibits
the advertisement of, and provides for the
regulation of trade and commerce in, production, supply and distribution of, cigarettes
and other tobacco products. Though there
have been certain amendments to the Rules
in previous years as well, the present amendments are significant, and India now joins the
list of countries which have the biggest health
warnings on labels and packaging of cigarette
and other tobacco products.
The aforementioned amendment states that
specified health warnings shall now cover
at least 85 percent of the principal display
area of the package of cigarettes and other
tobacco products of which 60 percent shall
cover pictorial health warning, whereas 25
percent shall cover textual health warning.
This is a significant increase from the earlier
prescribed area of 40 percent of the principal
display of the package.
In order to ensure that the health warnings
are consistent across all products, the text for
the textual health warnings and the pictures
to be used for the pictorial health warning are
being provided by the Central Government.
These specified health warnings shall be
rotated every 24 months, as opposed to 12
months under the earlier rules. The notification also bars any matter or statement
that is inconsistent with or detracts from the
specified health warning as inscribed on the
tobacco product package.
Though the current amendments do not result
in plain packaging, it substantially decreases
the space available for the tobacco companies
to display their trademarks or the area which
they can use for branding. The tobacco companies will have to make the best use they
can of the remaining 15 percent space.
In a concomitant development, a High Court
in India in July 2014, allowed a writ petition
strongly recommending the Central Government to consider the feasibility of implementing the plain packaging of cigarettes and other
tobacco products. Considering the aforementioned amendments, it will be interesting to
see how the Central Government deals with
this recommendation.
Contributor: Anupam Pandey
Obhan & Associates, New Delhi
Verifier: Bharath Subramanian
Anand and Anand, Chennai
SYRIA Increase in Official Publication Fees in Syria
By virtue of the Ministerial Decree No. 1999
of November 13, 2014, issued by the Syrian
Ministry of Interior Trade and Consumer
Protection, which was disclosed just recently
without an earlier notice, the official publication and search fees will be increased as of
January 1, 2015.
Such an increase will be applied to publications fees of trademarks/designs applications
and renewals as well as the recordals thereof.
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
22 February 1, 2015 Vol. 70 No. 3
Contributor: Iman Salameh
ag-IP-news Agency, Amman, Jordan
Verifier: Mohammad A. Azmeh
Abu-Ghazaleh Intellectual Property, Syria
Law&Practice
UNITED STATES Non-Use Abandonment Fight Spews International Venom
Under Section 66(a) of the U.S. Lanham Act
(Sec. 66 (15 U.S.C. §1141f), owners of international trademark registrations can extend
trademark protection into the United States
without proving prior use of the marks in the
United States. However, under the Trademark
Act, a registered mark can become abandoned if it is not used. In Dragon Bleu (SARL)
v. VENM, LLC, Serial No. 91212231 (TTAB Dec.
1, 2014) (precedential), the Trademark Trial
and Appeal Board (TTAB) decided how long
and when that non-use must occur to create
a presumption of abandonment for Section
66(a) marks.
VENM, LLC applied for the mark VENM for
dance costumes. Dragon Bleu (SARL) opposed
based on likelihood of confusion with its
VENUM mark for martial arts apparel. VENM
counterclaimed based on fraud, non-use and
abandonment. Dragon Bleu moved to dismiss
those counterclaims. The TTAB dismissed
the counterclaims, and in doing so, clarified
the requirements to prove abandonment of
Section 66(a) registrations.
Under the Trademark Act, a mark is abandoned “[w]hen its use has been discontinued
with intent not to resume such use. ... Nonuse
for 3 consecutive years shall be prima facie
evidence of abandonment”. Therefore, to
survive a motion to dismiss on grounds of
abandonment, a plaintiff must plead facts
that would either establish three years of
non-use or less than three years of non-use
coupled with proof of intent not to resume
use. Normally, the three years begins from
the date that the applicant files its specimen
of use, which is typically prior to registration.
However, Dragon Bleu’s registrations were
granted pursuant to Section 66(a), which does
not require use of the mark prior to registration. Thus, the TTAB had to determine when
the three-year abandonment clock begins
ticking for Section 66(a) registrations.
Citing an analogous appellate court decision,
the TTAB held that for Section 66(a) registrations, the three years of non-use is measured
from the registration date. It reasoned that
while Section 66(a) does not require use prior
to registration, it does not excuse non-use
after registration. Accordingly, the registration
date is the earliest possible commencement
date for the abandonment clock.
Finding that VENM failed to plead either three
years of non-use from the registration date
or less than three years coupled with intent
not to resume, the TTAB dismissed VENM’s
abandonment claim, but granted VENM 30
days to replead.
Contributor: Jeremy Kaufman
Fox Entertainment Group, Los Angeles, California
Verifier: Jessica J. Godell Bahr
Re: Sources USA, a member of the Publicis
Groupe, Chicago, Illinois
Both are members of the INTA Bulletin Law &
Practice—United States & Canada Subcommittee
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.
February 6
India Emerged: Protecting Your Brand in
India’s Evolving Economy
New Delhi, India
February 17–February 27
TMA Roundtables: Managing Global Enforcement Matters Various U.S. cities
March 10–March 11
3D Printing /Additive Manufacturing:
Cutting Edge IP and Business Implications
New York, New York, USA
March 16–27
U.S. Roundtables
Various U.S. cities
March 26–March 27
Springtime for Trademarks in Japan
Tokyo, Japan
May 2–May 6
137th Annual Meeting
San Diego, California, USA
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 meetings@inta.org for the latest information.
23
Register Today 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,
Academic Day, Career Development Day, the Trademark Administrators Brunch and more.
• Special offerings for IP professionals at corporations of all sizes, including the In-House Practitioners Workshop
and Luncheon, the In-House Practitioners Reception and a new series of Industry Exchanges.
• New hassle-free ways to conduct business in the San Diego 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, a new array of smaller networking excursions and the Grand Finale to expand your client
and referral network.
• 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 register!
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 sponsorship@inta.org
www.inta.org
Visit the INTA Bulletin on www.inta.org to download the current
issue or to search issues from January 1, 2000, to the present.
Email Addresses
INTA Bulletin: bulletin@inta.org
Member Services: memberservices@inta.org
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