INTABulletinThe Voice of the International Trademark Association

Law&Practice Law&Practice

July 15, 2013 Vol. 68 No. 13

In This Issue

CANADA Bill C-56 Poised to Make Its Mark

Law&PracticeCanada 1Costa Rica 7Iraq 7Korea 1United States 8-9

FeaturesTrademark Protection of Song Titles in India: A Dawn 6

AssociationNewsWelcome New Members 2

INTA’s New Disaster Preparedness and Business Recovery Plan for Trademark Practitioners 4

VolunteerSpotlightBrian Downey 3Alessandro Masetti 3

Canada’s federal government recently intro-duced Bill C-56, the Combating Counterfeit Products Act. The Bill amends the Copyright Act and the Trade-marks Act to strengthen anticounterfeiting measures available to brand owners, to allow for nontraditional marks, to introduce technical changes in trademark terminology and the prosecution of trademark applications, and to simplify some aspects of trademark opposition proceedings. Certain provisions of the Bill that are aimed at counterfeiting were reviewed in a previously published article.

Highlights of the Bill with respect to trademark prosecution and oppositions include the following:

• Thedefinitionof“trade-mark”willbeexpandedtoincludetheterm“signoracombinationofsigns,”whichexpresslyen-compasses nontraditional marks such as color, smell, taste, texture, sounds, moving images and holograms.

• “Wares”willbecome“goods,”usingpar-lance found in the trademarks legislation of many other countries.

• The Registrar of Trade-marks will be able to correct obvious errors in trademark reg-istrations within six months of issuance. The Registrar will also be able to reverse transfers of trademarks to new owners upon receipt of satisfactory evidence demonstrating that the transfer should not havebeenrecordedinthefirstplace.

• The Registrar will have the ability to grant an extension of time of up to one week, topermitanapplicanttofileanapplica-tion claiming Paris Convention priority. It will also no longer be necessary for the applicant to have a real and effective industrial or commercial establishment in the country where the application that is beingreliedonforprioritywasfiled.

• Divisional applications will be possible. This will allow prior use and proposed use claims that are contained in one applica-tiontobe“divided”inordertopermitthe

The Korean National Assembly has adopted a bill, introduced by the Korean Intellectual PropertyOffice(KIPO),thatwillamendtheKoreanTrademarkAct(TMA).Theamendedprovisions of the TMA, detailed below, will be effective from October 6, 2013.

Non-use Cancellation ActionsUnder the current TMA, non-use cancellation actions have no retroactive effect. In other words,anapplicationfiledbeforeaseniorconflictingmarkissuccessfullycancelledthrough a non-use cancellation action will remain blocked by the senior mark. Suc-cessful petitioners for non-use cancellation are instead granted an exclusive six-month periodtofileanapplicationforamarkidenti-cal or similar to the cancelled mark.

Non-use cancellation actions will have some limited retroactive effect under the amended Act. An applied-for mark that is blockedbyaseniorconflictingmarkwillbeable to overcome this citation if the senior mark is successfully cancelled by a non-use cancellation action.

However, the amended TMA will delete the provision for the exclusive six-month period. Therefore, once the amendments enter intoforce,petitionerswillhavetofileanap-plication for their mark as early as possible, even before introducing a non-use cancel-lation action, to avoid any risk of a third party’sfilinganapplicationforanidenticalor similar mark while the action is pending.

Prior Use of Names/Trade NamesUnder the amended TMA, a party that, with-out bad faith intent, uses its name, trade nameoranyotherpersonalidentifiersasa trademark, in accordance with custom-ary practices, will be able to continue such use without risking trademark infringement claims from the owner of an identical or similar registered mark, as long as such use started before the application date of the identical/similar registered mark.

One of KIPO’s goals with this reform of the TMA is to give greater protection to the own-ers of small businesses in Korea. Previous

KOREA Amendments to the Trademark Act

See “Korea” on page 8

See “Canada” on page 7

July 15, 2013 Vol. 68 No. 132

AssociationNews

INTA Bulletin CommitteeTo contact the INTA Bulletin Committee, email bulletin@inta.org.

ChairWalter Palmer, Pinheiro Palmer AdvogadosVice ChairBarbara Sullivan, Henry Hughes

Association NewsRosemary Brkopac, BrandProtectFrank Hiscox, Lewis and Roca LLPFeaturesJan Gerd Mietzel, Pellon & Associados Europe LLPLiisa Thomas, Winston & Strawn LLP

Law & Practice: Asia-PacificJohn Hackett, A J ParkLaw & Practice: EuropeJaap Bremer, BarentsKrans N.V.Peter McAleese, Barzano & ZanardoLaw & Practice: Latin America & CaribbeanJamal Smith, Thornton SmithLaw & Practice: Middle East & AfricaCharles Shaban, Abu-Ghazaleh Intel-lectual PropertyLaw & Practice: United States & CanadaLisa Iverson, Neal & McDevitt, LLC

INTA Bulletin StaffChief Executive OfficerEtienne Sanz de AcedoDirector, Publishing & Online ResourcesJames F. BushManaging Editor, News & PolicyEileen McDermottAssociate Editor, INTA BulletinJoel L. BrombergDesignerEric Mehlenbeck

INTAOfficers&CounselPresidentToe Su Aung, BATMark Ltd.Vice PresidentMei-lan Stark, Fox Entertainment GroupVice PresidentGabrielle Olsson Skalin, InterIKEA Holding Services S.A.TreasurerJ. Scott Evans, Yahoo! Inc.SecretaryRussell Pangborn, Microsoft Corp.CounselMichael Metteauer, Fulbright & Jaworski LLP

Althougheveryefforthasbeenmadetoverifytheaccuracyofitemsinthisnewsletter,readersareurgedtocheckindependentlyonmattersofspecificinterest.TheINTA 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 bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2013 International Trademark Association

Welcome New MembersF & S Intellectual Property, Beijing, ChinaFIDAL, Neuilly-sur-Seine, FranceFinance Scholars Group, Austin, Texas, USAForbes Anderson Free, London, United KingdomGardere, Arena y Asociados, S.C., Mexico City, MexicoGorgeous Gangsters, Toronto, Ontario, CanadaGuillen & Asociados, Tegucigalpa, HondurasHart IP Law & Strategies LLC, Golden, Colorado, USAHCA Management Services, L.P., Nashville, Tennessee, USAHernandez-Marti, Valencia, SpainHill, Kertscher & Wharton, LLP, Atlanta, Georgia, USAI.P. LAW – PERU, Surco, PeruIP Skill, Turin, ItalyIPAN Intellectual Property Associates Network, Munich, GermanyIP-Protect, Tunis, TunisiaJP Mitchell IP & Technology Law, Hampton, United KingdomKakinuki Law Office, San Rafael, California, USAKATZ & LOPEZ, Panama City, PanamaKawaguti & Partners Intellectual Law Firm, Tokyo, JapanKorea Institute of Patent Information, Seoul, South KoreaKutzenberger Wolff & Partner, Cologne, GermanyLancers Network Limited, New Delhi, IndiaLas Vegas Sands Corp., Las Vegas, Nevada, USALaw Office of Vikram Grover, New Delhi, IndiaLaw Offices of Gene Bolmarcich, West Babylon, New York, USALevy Guido & Levy, Buenos Aires, ArgentinaLeyva, Montenegro, Trigueros, Abogados, S.C., Benito Juarez, MexicoLifang & Partners, Beijing, ChinaLin & Partners Law Firm, Quezon City, PhilippinesLuedeka Neely Group, P.C., Knoxville, Tennessee, USA

Maceda & Asociados, San Salvador, El SalvadorMacPherson Leslie and Tyerman LLP, Calgary, AB, CanadaMagnum IP Legal Services, Melbourne, VIC, AustraliaMajor League Baseball Players Association, New York, New York, USAMatsuura & Associates, Tokyo, JapanMcHale & Slavin, P.A., Palm Beach Gardens, Florida, USAMesa & Mesa, Santo Domingo, Dominican RepublicMethod Law Professional Corporation, Toronto, Ontario, CanadaMonserratt & Asociados, Caracas, VenezuelaMorris Polich & Purdy LLP, Los Angeles, California, USAMullin Law PC, Richardson, Texas, USAMyohyangsan Attorneys, Pyongyang, North KoreaNithi Murugesu & Associates, Colombo, Sri LankaNixon Peabody LLP, Rochester, New York, USANovagraaf Group, Amsterdam, NetherlandsNovick, Kim & Lee, PLLC, Vienna, Virginia, USANu Skin International, Inc., Provo, Utah, USANurmansyah & Muzdalifah Advocates, Jakarta, IndonesiaONEWORLD Intellectual Property LLC Tripoli, Tripoli, LibyaOOO IPnovus, Moscow, Russian FederationOrrick, Herrington & Sutcliffe LLP, Sacramento, California, USAOut Fit 7 Limited, Limassol, CyprusOytac Law Office, Istanbul, TurkeyPalmer & Partners, Beijing, ChinaPatton Boggs LLP (Dallas Office), Dallas, Texas, USAPavlov & Co, Sofia, BulgariaPenaherrera, Ponce & Salvador, Quito, EcuadorPowers Law Firm, Los Gatos, California, USAPPR Asia Pacific ltd, Causeway Bay, Hong Kong SAR, ChinaPython & Peter, Geneva, SwitzerlandRafael Campo Asociados, Bogotá, ColombiaRalston IP, Sydney, NSW, AustraliaRamu & Associates, Mumbai, India

Rembrandt IP Management, LLC, Bala Cynwyd, Pennsylvania, USARockwell Automation, Inc., Milwaukee, Wisconsin, USAS.P.A. Ajibade & CO., Lagos, NigeriaSaba Intellectual Property, Amman, JordanSchinders Law, Guangzhou, ChinaSergio Fernandez & Asociados Attorneys and Counselors, Asunción, ParaguayStrategyIP, A Professional Law Corporation, Irvine, California, USAStudio Legale Tsclex, Milan, ItalyStudio Moderna, Ljubljana, SloveniaSwarovski AG, Triesen, LiechtensteinTakahashi, Hayashi and Partner Patent Attorneys, Inc., Tokyo, JapanThe Licensing Company Limited, London, United KingdomThe Noblitt Group, PLLC, Scottsdale, Arizona, USAThe Norwegian Board of Appeal for Industrial Property Rights, Oslo, NorwayTLT LLP, London, United KingdomTOMI International Patent & Trademark Office, Taipei, TaiwanU Nyunt Tin Associates International Ltd, Yangon, MyanmarUghi e Nunziante Studio Legale, Milan, ItalyUIP Law Firm, Guangzhou City, ChinaVanrell Propiedad Intelectual Abogados, Montevideo, UruguayVinson & Elkins, Houston, Texas, USAWillams & Connolly LLP, Washington, DC, USAWoolworths Limited, Bella Vista, NSW, AustraliaYOGO Patent & Trademark Agency Limited Company, Guangzhou, ChinaYoung Basile, Chicago, Illinois, USAZacco, Malmö, Sweden

3

VolunteerSpotlight

Brian Downey is a trademark attor-ney of counsel in the IP department at Barnes & Thornburg LLP, in Columbus, Ohio, USA. “OnethingIloveaboutmyworkasoutsidecounsel is that I get to be actively involved in allaspectsoftrademarklaw,”hesays.“Ifitinvolves trademarks, you’ll find me doing it on a daily basis: from scouring search reports to filing a motion at the TTAB, from taking a de-

position to negotiating a license or pursuing cybersquattinglitigation.”

Some things Brian does not love are the way technological advances and the globalization of businesses continue to erode territorial boundaries of commerce. Complicating mat-ters further for trademark professionals and clients are jurisdictional inconsistencies in trademark law, especially in the area of non-traditional marks.

Brian, an INTA participant since the start of his trademark law career, and currently serving on the Development of Rights Subcommittee of the Emerging Issues Committee, lauds the or-ganization for its work to address such global issues while enhancing practitioners’ expertise through ongoing educational programs and a plethora of professional contacts. Still, he says, new programs are needed, perhaps in-tensifying outreach to small-business owners, complete with educational opportunities and supporting materials.

“Withtheavailabilityofonlinefiling,Ireceivean increasing number of calls from people who wastedafilingfeetryingtodoitthemselves,”

saysBrian.“Theirmistakesgenerallystemfrom a lack of basic understanding of trade-marklawsandtheapplicationprocess.”A veteran of numerous INTA Annual Meetings, he has some advice for colleagues planning onattending.“Ifyouwanttoguaranteethatsomething will not make it there, just put it in mysuitcase,”Downeysays.“InbothBerlinandSeattle, I found myself baggage-less for days and desperately seeking clothing stores to find meeting-appropriate apparel. Ironically, my wife’sluggagemadeitjustfinebothtimes.”

When it comes to a favorite trademark, the veteran attorney reveals a sentimental streak: HIGHLIGHTSFORCHILDREN.“Talkaboutarepository of goodwill! Just the mention of HIGHLIGHTS in the United States immediately gets people talking about fond childhood memories of their favorite feature, such as HIDDEN PICTURES or GOOFUS AND GALLANT. The mark just symbolizes great memories and goodvalues.”

Alessandro Masetti is currently the Managing Partner of the law firm of Bar-zanò & Zanardo and head of the Trademark Department at the firm’s Rome office. He received his J.D. from the University of Rome, is qualified as an Italian Trademark Attorney

and is admitted to practice before OHIM.Not many managing partners of European law firms can say they have worked for a nationally known U.S. firm as well. Alessandro is one of them. He was a visiting foreign lawyer in the Washington, D.C., office of Patton Boggs back in 1989–1990.

Three years later, he attended his first Annual MeetingofINTA(whichwasthentheU.S.TrademarkAssociation(USTA))—in1993,inNew Orleans. Alessandro has attended every Annual Meeting since then. He has been ac-tively involved in committee work since 1996, and is currently a member of the Trademark Administrators(TMA)Committee.

Alessandro believes that the most important issue in trademark law today, and an area INTA shouldaddressinthefuture,is“theharmoni-zationofdifferentculturesandexperiences.”He has done his part on this issue, working for years to expand the international reach of INTA.(Hiseffortsinthisregardarededicatedespecially to Daryl Grecich, who was a good

friend of Alessandro’s and a leader within INTA forthatcause.)Alessandrohasalsogivenpre-sentations at many INTA events, both in Italy and in the United States.

Asked about his favorite trademark, he politely avoids disclosing it, for reasons of political correctness.

Alessandro is just as busy outside the office as he is with his law firm and INTA commit-ments.Inhispersonallife,hehas“threemaininterests:myfamily(Ihaveawonderfulwifeandfivechildren);rugby(fourofmychildrenare playing and I am actively involved in the Rome Capitolina Club and the Italian national federation);andthecountryside(mywifeandI are trying to create a little natural paradise in the Umbria region with animals and a wonder-fullandscape).”

Miriam D. TrudellSheridan Ross P.C., Denver, Colorado, USAINTA Bulletin Association News Subcommittee

Barbara Barron KellyCorsearch – Wolters Kluwer Corporate Legal Services, Chicago, Illinois, USAINTA Bulletin Association News Subcommittee

July 15, 2013 Vol. 68 No. 134

AssociationNews

What would you do if you were unable to walk intoyourofficetomorrow,forthenexttwoweeks or even a month? What kind of plans doesyourofficehaveinplaceintheeventofa natural disaster or catastrophic event?

That is the question that the Law Firm Com-mittee’s Disaster Preparedness and Business Continuity(DPBC)ProjectTeamhasattemptedto answer on behalf of INTA members. In recent months and years, the issue of disaster preparedness has become critical as a result of the forces of nature our members have encountered throughout the world. From earth-quakes in Japan and New Zealand to Super-storm Sandy in the United States, disasters are an unexpected reality that deserve and require advanced planning, particularly given the deadline-oriented nature of trademark prac-tice. The DPBC Project Team has developed a Disaster Preparednessand Business Recovery Plan that is available to INTA members and is intended to enable a law practice to recover from a range of emergency situations.

Essential to the drafting of the Plan is a real-istic understanding of how such emergencies have affected our colleagues. To that end, the DPBC Project Team has extensively inter-viewed INTA members who have experienced

recent disasters. Some of the key questions and considerations are outlined below, along with answers provided by a member of ourcommitteewhosesingle-officelawfirmendured Hurricane Sandy from its location in the eye of the storm.

Where would the firm relocate if it lost its office space and all equipment for one week, one month, or longer?Prior to last year’s catastrophic event … in whichthefirmlostpower,thefirmhadnorelocationcapabilitiesifitlostitsofficespaceand its equipment for a one-month period of time. People merely had to work from home using virtual-network connections. Since that time,thefirmhascontractedforadisasterrecovery site, which includes the ability to set up20workstations.Thefirmhasalsobackedup all its computer data in a cloud.

If an emergency causes the firm to be relocated or displaced, how would the firm communicate with its client base that it is “up and running” and that client data are safe?Thefirmcancommunicatewithitsclientbasetoadviseclientsthatitis“upandrunning”throughemails,throughthefirm’swebsite,and through a company that it has contracted with to email all clients advising of the avail-abilityofthefirm.

How would the firm find and maintain contact with its employees in the event of an emergency?Thefirm’splantofindandmaintaincon-tact with its employees in a disaster area is through cloud-based email management soft-ware,throughthefirm’sintranet,andfurther,again, through a blast email, phone message or text message.

How are your data backed up, how can they be accessed, and how long would it take to be “up and running” in the event of an emergency?Allofthefirm’sdataarebackeduptotapeand a cloud, which can then be accessed throughvirtual-networkconnections.Thefirmwouldbe“upandrunning”lessthanonehourfollowing an emergency.

How long would it take for your firm to return to business activities once the disaster has passed?Based on the contingency preparations that thefirmhasnowundertaken,onceadisasterhaspassed,thefirmcanpartakeinbusinessas usual with very little lead time. To the extentthereisanydamagetothefirm’spri-marylocation,thefirmhassetupanoffsitedisaster recovery site where it will have ac-cess to computer work stations to access its data, which are now stored in a cloud. During adisaster,ashasbeenexperienced,thefirmwas able to acquire industrial generators from remote locations, so that local employees couldsetupaskeletonofficeinourpresentspace.

What plans does your firm have in place in the event that trademark office deadlines are missed because of a disaster?In terms of dealing with the potential of misseddeadlines,thefirmisvigilantinanticipating disasters, where possible, in that if it appears that there is a possibility of a problem that might interrupt the operation of thefirm,attorneysareadvisedofallupcom-ing deadlines, and the need to contact clients and also to advise foreign associates of the possibility of a disaster, so that no deadlines will be missed.

INTA’s New Disaster Preparedness and Business Recovery Plan for Trademark Practitioners

Nicole Rizzo SmithRopes & Gray LLP, Boston, Massachusetts, USA

Paul KochanskiLerner, David, Littenberg, Krumholz & Mentlik, LLP, Westfield, New Jersey, USA

Disaster Preparedness and Business Continuity (DPBC) Project Team, Law Firm Committee

Looking for a gateway to country-specific links for trademark offices, laws, domain name resources and more?

Find it in the Country Portal in INTA’s Global Trademark Research.

Visit www.inta.org/CountryPortals

5

Features

The title of an intellectual creation such as a book,amovieorevenasongprovidesafirstimpression of the work in the minds of reader, viewer and listener. To attract attention, own-ers of these works adopt catchy titles and promote their works using various innovative methods. The process of selecting a good title requires a lot of effort, including research and analysis of market trends.

When someone else adopts this title for his own trade, however, without any authorization from the owner of the work, it raises serious questions not only about the validity and justificationofthethirdparty’sadoptionofthe title but also about the exclusivity of the rightsoftheowner.Itcanbedifficulttostopthe unauthorized use of movie and song titles on commercial products.

Limits of Copyright Protection for Titles of Creative WorksWhile copyright law protects the intellectual property of creative works like songs, movies or books, the titles of these works generally are not protected under copyright law unless thetitleisa“substantialpart”oftheworkitself. This can be a problem for owners of copyrighted works in the entertainment in-dustry who would like to use the titles of their works on merchandise used to promote the songs or movies. One example is the promo-tion of a recent Bollywood movie, Ra-one. The title of this movie has been used on various products(includingtoysandstationery)thathave been sold in connection with the promo-tion of the movie.

Trademark Protection for TitlesWith the increase in movie- and song-related merchandising, it is likely there will be more trademarkfilingsinIndiaformovieandsongtitles. For example, Sony Music Entertainment India Pvt. Ltd applied for the registration of the title of its copyrighted song “WhyThisKolaveriDi?”(ApplicationNo.2246257,filedDec.8,2011)ona“proposedtobeused”basis to cover, inter alia, material on physical platforms and nonphysical/digital platforms. Why This Kolaveri Di?, the last two words of which are taken from the Tamil phrase for “murderousrage,”isoneofthebiggesthits

on YouTube in India. Sony’s application repre-sentsthefirsttimeapartyhastriedtoobtaina trademark registration for a song title in India. The application is still pending.

Although a trademark registration has never issued in India for a song title, registra-tions have issued for similar items, such as advertisement punch lines, quotations and television commercial jingles. For example, Nike International Ltd. has obtained an Indian registration for its well-known phrase JUST DO IT. Similarly, the owner of a trademark registrationfortheslogan“WritesSmoother,Darker.LastsLonger”wasabletostoptheinfringing use of its slogan by a competitor (Hindustan Pencils Pvt. Ltd. v. Suneja Copy Products,(2009)39PTC648(Del.)).

In these cases, some legal issues have emerged that would likely apply in the situ-ation of song titles. Of particular interest in the song and movie title situation is the question of who is entitled to the regis-tration:thefirstpersonorentitytofileatrademark application to register the song or movietitle(evenifthatpersonorentitydoesnot own the rights in the underlying movie orsong),ortheownerofthecopyrightinthemovieorsong?Theseareissuesoffirstim-pression,astherearenospecificprovisionsunder Indian trademark law.

The object of a trademark registration is not to protect an individual expression of an idea but to protect brand identity in relation to a particular class of goods or services. The ba-sic criteria for registrability of a mark are the

mark owner’s actual use of or intent to use the mark in relation to particular goods and services and whether the mark has the ability to denote the origin of the goods or services.

If a particular mark is not capable of being used on goods or services, it is not registrable under Indian law. Further, Indian trademark law does not allow registration of a trademark to continue if the mark remains unused for fiveyears.Thus,iftheapplicanthasnointen-tion of using the song/title mark for particular goodsandservices,butfilesanapplicationtostop others from obtaining a registration, this could be viewed as unfair under the Trade Marks Act, 1999. It might be appropriate to relax this condition for registration in the case of song titles, in order to protect the intellec-tual property of the song creator.

Assuming the party does intend to use a movie title as a mark in connection with merchandise, the title may be registered to protect the brand identity of the merchan-dise if the title is distinctive or has acquired secondary meaning in the course of its use as part of a particular work. It is still not clear whether acquired distinctiveness could apply to song titles, though in theory it is possible.

To illustrate this point, take the example of Ko-laveri Di, which achieved extensive popularity in India in a very short period of time. Accord-ingtoWikipedia,withinaweekoftheofficialrelease of the video of this song, it received morethan3.5millionviewsonYouTube,

Jatin Y. TrivediY. J. Trivedi & Co., Ahmedabad, IndiaINTA Bulletin Features Subcommittee

Trademark Protection of Song Titles in India: A Dawn

See “Song Titles in India” on page 6

A scene from the “Why This Kolaveri Di?” music video.

July 15, 2013 Vol. 68 No. 136

FeaturesSong Titles in India Continued from page 5more than 1 million shares on Facebook and extensiveexposureonTwitter;becamethetopdownloaded song on mobile devices within thefirst18daysofrelease;andwasthefirstTamilfilmsongtopremiereonMTVIndia.Thisextensive exposure suggests that even within a very short period of time, the title of a song may achieve secondary meaning.

Even if the song title is being used or is in-tended to be used as a mark and even if the phrase has acquired distinctiveness, there couldbedifficultiesinregisteringamarkthatis composed of common dictionary words.

Of general concern, not for just song titles but for any trademark in India, is that there are almost452languagesinIndia.Thismakesthe statutory prohibition against registration of common dictionary words a challenge. Indeed, if that prohibition were strictly fol-lowed, it is possible that no mark would be registered. Thus, only those words that are commoninsignificantpartsofIndiashouldbe deemed unregistrable. Another solution

would be to grant a conditional registration that confers rights throughout all of India except in a particular state where the word or words is or are common in the local language.Another major point to consider is that the song titles often are just one or two words. Copyright law would not prohibit use of those words in any subsequent song by other lyricists if such use carried novelty. But giving trademark protection to song titles could cre-ate a risk that subsequent artists would not have rights over their creations, which could be considered to inhibit their creativity.

Should every popular song title be entitled to protection under the Trade Marks Act? Thiswouldbeadifficultsituation,sincemostsongshaveastheirtitlescommonwords,fitto describe the songs. For example, Vande Mataram, the national song of India, has various popular versions. If one party got the right to use the song title as a trademark on the basis of reputation of one version of the song, others would be precluded from using it, even for their promotional use.

If the use of a song title as a trademark is of such nature that it creates an association of the mark with the original work, the original title should be protected. If the song title is uniqueandisidentifiedwithasongoranalbum, the goal of the second comer could be nothing other than to trade off the popular-ityandidentificationofthatmarkwiththefamous song. In these cases, the song title is being used for its associative or endorsement power, and use of the title on merchandise produced by a different manufacturer would create an issue of likelihood of confusion.

ConclusionA fundamental principle of intellectual prop-erty rights is to protect the creator from any kind of infringement. Thus, even if unauthor-ized use of a song title does not fall within thestrictdefinitionofcopyrightinfringement,the title should still be entitled to trademark protection. This might require a relaxation of the requirement of use in cases where the song title owner has no intent to use the mark on merchandise. ■

Navigate the legal and regulatory landscape and stay ahead of the branding and social media curve!

Register today: www.inta.org /2013branding

&

October 3–4, 2013Chicago, Illinois

Attend this conference and gain a better understanding of how to best protect your company’s or client’s interests, and how legal and marketing can work together more effectively toward a common goal.

CLE will be offered. Early registration discounts apply through July 17.

7

Law&Practice

Contributor: Lorraine M. FleckPerry+Currier Inc., Toronto, Ontario

Verifier: Neil P. MellishipClark Wilson LLP, Vancouver, British Columbia

Both are members of the INTA Bulletin Law & Practice—United States & Canada Subcommittee.

CANADA Bill C-56 Poised to Make Its Mark Continued from page 1

prior use claims to proceed to registra-tion while the proposed use claims continue in a separate application. Mergers of registrations that stem from an original application that was divided will also be permitted.

• Itwillbepossibletofilecertificationmarkapplications on a proposed use basis. Currently, such applications can be based only on prior use in Canada.

• Counterstatements in opposition proceed-ings will need only state that the applicant intends to respond to the opposition. The current practice of many practitioners is to

address each and every allegation in the Statement of Opposition.

The Trade-marks Opposition Board will be empowered, in certain circumstances during an opposition, to refuse some goods/services and to allow the mark to issue to registration for the remainder of the goods/services.

The Bill has undergone its second reading, andtheremaybesignificantchangestothelegislation before it is implemented. If passed into law with many of the proposed changes inplace,itwouldmarkthefirstmajorreform

of Canada’s trademarks legislation since 1954.WhilethereisachancetheBillmaynot be passed before the current session of Parliament ends, it is likely to be revived in the next session, later in 2013. ■

InarulingissuedonMay2,2013(No.470-2012),theTribunalRegistralAdminstrativo(TRA)cancelledthetrademarkPOPEYESCHICKEN&BISCUITS(logo)inClass43attherequest of AFC Enterprises, Inc., owner of the well-known Popeyes food franchise.

A Costa Rican company, Popeyes Chicken & Biscuits, S.A., registered the POPEYES CHICK-

EN & BISCUITS trademark in 2010, prompting AFCEnterprisestofileforcancellationofthemark on various grounds. AFC Enterprises argued that the mark was too similar to its own word mark, POPEYES, registered in Classes 29 and 30 in 1988 and 1989, respectively.

The TRA’s main reason for granting the cancel-lationwasthattheservicesinClass43—“res-taurantandfoodservices”—andtheproductsinClasses29and30—“meat,fish,poultry”and“bread,pastryandconfectionery”—wererelated, and therefore the marks were confus-ingly similar.

There were other arguments, including that

POPEYES was a notorious mark and that AFC Enterprises had previously used the trademark in Costa Rica, but the TRA did not consider it necessary to analyze them.

COSTA RICA POPEYES CHICKEN & BISCUITS Too Similar to Existing Mark

Contributor: Carlos Corrales AzuolaCorrales Core IP, San José, Costa Rica

Verifier: Edy Guadalupe PortalPortal & Asociados, San Salvador, El Salvador

Both are members of the INTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee

TheTrademarkOfficeofErbil,thecapitalofKurdistan Al Iraq Region, announced that changes to the trademark regime in Kurdistan will be the same as those adopted by the Trade-markDirectorateofBaghdad.(KurdistanPresi-dency Council, Decision No. 3306, Apr. 1, 2013, publishedintheKurdistanOfficialGazette.)

Accordingly, as of June 1, 2013, the following rules apply:

1. The charges previously issued by the Ministry of Finance of Kurdistan are cancelled. However, the charges will be appliedintheregistrationphases(search,filing,publicationandregistration),whichare set forth in the amended Trademark Law(LawNo.21of1957).

2. All trademark applications that have been accepted and published will be subject to the previous trademark charges.

3. The new trademark charges will be ap-plied according to the newly adopted tar-iff. Charges will be paid in each registra-tionphase,includingexamination,filingand publication, as well as for assign-ment, change, merger and cancellation.

4. The amended Trademark Law will be enforced with respect to the legal period for publication and registration, which includes a grace period of 90 days for third-party opposition after the publication ofthetrademark(s)intheOfficialGazetteof Kurdistan.

5. Applicationsfortrademarkswillbefiledusing the legal forms available at the

TrademarkOfficeofKurdistaninArabicand Kurdish.

It is worth mentioning that trademarks already registered in Baghdad may be protected in the KurdistanRegion.Thisrequiresacertifiedcopyofthecertificateofregistrationofthesubjectmark,attachedtoacertificationletterfromtheTrademark Directorate of Baghdad addressed totheTrademarkOfficeofErbilconfirmingtheregistration of the trademark in Baghdad. Note that there is a charge for this service.

Contributor: Iman Salamehag-IP-news Agency, Amman, Jordan

Verifier: Akeel KadouriAbu-Ghazaleh Intellectual Property, Baghdad, Iraq

IRAQ Baghdad Trademark Changes Adopted in Erbil

July 15, 2013 Vol. 68 No. 138

Law&Practice

In McDonald’s Corp. v. Cambridge Overseas Development Inc., 106 U.S.P.Q.2d 1339 (T.T.A.B.Mar.22,2013)(precedential),theTrademarkTrialandAppealBoard(TTABorBoard)rejectedtheparties’stipulationforanadditionalfivedaystorespondunderTrade-markRule2.119(c)afterthepartiesagreedtoaccept service by email.

Inthisoppositionproceeding,thepartiesfileda stipulation with the TTAB to accept service byemailunderRule2.119(b).TheyalsostipulatedtoretainthefiveadditionaldayssetforthunderTrademarkRule2.119(c)tofileand/or serve responsive documents. Section CofRule2.119,whichgoverns“Serviceandsigningofpapers,”statesthat“[w]heneveraparty is required to take some action within a prescribed period after the service of a paper upon the party by another party and the paper isservedbyfirst-classmail,‘ExpressMail,’or

overnightcourier,5daysshallbeaddedtotheprescribedperiod.”

The TTAB referred to the 2007 Miscellaneous Changes to Trademark Trial and Appeal Board Rules, which expressly states that Rule 2.119(c)will“notapplytoservicebyelectronictransmission(emailorfax).”72Fed.Reg.42242,42250(Aug.1,2007).Relyingonthisexpress language, the TTAB held that while service by email is permissible, parties that stipulate to accept service by email while also attemptingtoretaintheadditionalfive-dayperiod“haveimpermissiblycircumventedtheprovisionsof[the]rule.”

The Board also found that this circumvention violates Trademark Rule 2.127. It explained that, by stipulating to email service and an ad-ditionalfivedaystorespond,thepartiesinthiscasehad“essentiallyagreedtoanautomatic

extensionoftimetofileareplybrieforamo-tionunder[FederalRuleofCivilProcedure]56(d).”UnderRule2.127,extensionsoftimetofilereplybriefsormotionsunderRule56(d)are expressly prohibited.

In conclusion, the TTAB advised that parties may“stipulatetoacceptservicebyfirst-classmail but also to serve simultaneously a courtesy e-mailcopyofanyfiling.”Utilizingthisapproach,parties can communicate via email regarding service and also take advantage of the addi-tionaltimetorespondunderRule2.119(c).

Contributor: Jessica (Godell) BahrNeal & McDevitt, LLC, Northfield, Illinois

Verifier: Adam SiegartelProskauer Rose LLP, New York, New YorkINTA Bulletin Law & Practice—United States & Canada Subcommittee

UNITED STATES Want Five Extra Days for Service? Then Don’t Serve by Email

interpretations of the law had reduced the ability of these owners to protect themselves against attacks by new-trademark owners and had forced many of them to modify their trade names as a consequence. KIPO is hop-ing with this amendment that small-business owners in Korea will be able to continue their prior fair use of their trade name without interference from owners of new identical or similar trademarks.

Relief MeasuresThe amendments include relief measures for applicantswhofailtofilearesponsetoanofficeactionwithinthetwo-monthdeadline.Such applicants will be granted an additional two-monthperiodfromthedeadlinetofilearequest to reopen the examination of their ap-plications.Theresponsetotheofficeactionwillhavetobefiledincombinationwiththerequest to reopen the examination. ■

KOREA Amendments to the Trademark Act Continued from page 1

Contributor: Nayoung KimKim & Chang Intellectual Property, Seoul INTA Bulletin Law & Practice—Asia Pacific SubcommitteeVerifier: Joong-hyo KimChoice Kim Intellectual Property Law, Seoul

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Law&PracticeIn a nonprecedential opinion, the Trademark TrialandAppealBoard(TTABorBoard)sus-tained the opposition of Katz Communications, Inc.(Opposer)againstKatzMarketingSolu-tionsLLC(Applicant),findingthattheAppli-cant’s mark KATZ MARKETING SOLUTIONS, for “businessmarketingconsultingservices,”waslikely to cause confusion with the Opposer’s KATZmark,covering“independentmediasalesrepresentationservicesinthefieldsofradio and television broadcasting and consult-ingservicesinconnectiontherewith.”However,the Board dismissed the Opposer’s claim of fraud on the U.S. Patent and Trademark Office(USPTO).Katz Communications, Inc. v. Katz Marketing Solutions LLC, Opposition No. 91191178(T.T.A.B.Feb.21,2013).

Specifically,theOpposerallegedthattheAppli-cant committed fraud on the USPTO when the Applicant’s CEO signed the oath in the KATZ MARKETING SOLUTIONS trademark applica-tion swearing that no other entity had the right to use the mark in commerce, despite having received a cease and desist letter from the Opposer informing the Applicant of its rights in its various KATZ marks. Citing In re Bose Corp.(580F.3d1240,91U.S.P.Q.2d1938,

1939(Fed.Cir.2009)),theTTABdismissedthe fraud claim because the Opposer did not provetheApplicant’sfraud“‘tothehilt’withclearandconvincingevidence.”TheOpposernever made the cease and desist letter part oftherecord,sotheBoardhad“virtuallynoinformation”aboutitscontents.Withoutsuchevidence, the Opposer failed to prove that the Applicant had actual knowledge of the Oppos-er’s rights in any KATZ or KATZ-formative mark whenitfiledtheKATZMARKETINGSOLUTIONSapplication or that the Applicant believed its use of its mark was likely to cause confusion.

Although the Opposer alleged rights in vari-ous KATZ-formative marks, including federal registrations and common-law marks, the TTAB limited its likelihood-of-confusion analysis to the Opposer’s registered marks and, par-ticularly,itsKATZregistration(whichwastheclosestregistrationtotheApplicant’smark).The Opposer did not establish that it owned a family of KATZ marks or had common-law rights in any KATZ mark.

The TTAB held that there was similarity of the services recited in the Applicant’s application and the Opposer’s registration because the

Applicant’s“marketingconsultingservices”included the Opposer’s consulting services in connection with radio and television media sales representation.

TheBoardalsofoundthat“KATZ”wasthedominant term in the Applicant’s mark andthat“MARKETINGSOLUTIONS”merelydescribed the Applicant’s services. Thus, KATZ and KATZ MARKETING SOLUTIONS were similar in appearance, sound, meaning and commercial impression.

Accordingly, the TTAB sustained the opposition on the likelihood-of-confusion ground, dis-missed the opposition on the fraud ground and refused registration of the Applicant’s mark.

UNITED STATES Katz Fight! TTAB Finds No Fraud on the USPTO

Contributor: Lori J. ShyavitzMcCarter & English, LLP, Boston, MassachusettsINTA Bulletin Law & Practice—United States & Canada Subcommittee

Verifier: Janice Housey Symbus Law Group LLC, McLean, Virginia

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