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 [email protected]. Chair Barbara Sullivan, Henry Hughes Vice Chair Liisa Thomas, Winston & Strawn LLP Co-Chairs, Features Subcommittee Elizabeth Buckingham, Dorsey & Whitney Peter McAleese, AKRAN Intellectual Property Srl Co-Chairs, Association News Subcommittee Barbara Barron Kelly, Corsearch Katherine Dimock, Gowling, Lafleur, Henderson Co-Chairs, Law & Practice: AsiaPacific Subcommittee Chetan Chadha, Chadha & Chadha, An Intellectual Property Law Firm 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 of copies or viewers to [email protected]. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein. © 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 [email protected]. ■ 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: • • • • • • 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 [email protected] 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 [email protected] 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 [email protected] www.inta.org Visit the INTA Bulletin on www.inta.org to download the current issue or to search issues from January 1, 2000, to the present. Email Addresses INTA Bulletin: [email protected] Member Services: [email protected] Programs: [email protected] Job Bank: [email protected] Policy & Advocacy: [email protected] Public Relations: [email protected] Publications: [email protected] Roundtables: [email protected]
© Copyright 2024