INTABulletinThe Voice of the International Trademark Association May 15, 2015 Vol. 70 No. 9

In This Issue

Law&PracticeBrazil 15China 15, 16, 17European Union 18United Kingdom 19United States 19, 20

FeatureScope and Validity of Nontraditional 12 Trademarks in the EU: Some Recent Developments

AssociationNewsWelcome New Members 2A Review of Parallel Import Laws 6 in Latin AmericaEnforcement Committee Reinforces 7 Policy on Non-Use Cancellation Grace PeriodsIn-House Idea Exchange: 8 Social Media Best PracticesVolunteer Spotlight 9 Hugo Mersan Antonio TaviraCommittee Spotlight: 10 Alternative Dispute Resolution CommitteeRecent Roundtables 11

See “Building Bridges” on page 3

AssociationNews AssociationNewsNew Committee, New Connections: Why INTA Is Building BridgesThe Building Bridges Task Force—one of Im-mediate Past President Mei-lan Stark’s three 2014 Presidential Task Forces—delivered its report to INTA’s Board of Directors in March 2015. The report focused on the need to “build bridges,” both internally and externally and to commit to the task of reaching out beyond IP associations by adding a dedicated committee, among other recommendations. Here, Building Bridges Task Force Co-Chairs Marion Heathcote (Davies Collison Cave, Australia) and Nick Wood (Com Laude, UK) spoke with the INTA Bulletin about some of the key recommendations, how the new committee will work and what the next steps are. Many of these points were reiterated by INTA CEO Etienne Sanz de Acedo during his Opening Ceremonies Address at the 2015 Annual Meeting.

Why “Building Bridges”—what does that mean? Nick Wood (NW): INTA has an impressive

track record of success at representing the interests of trademark owners. Both Immediate Past President Mei-lan Stark and now President J. Scott Evans wanted to build on this by exploring ways of fostering partnerships with IP and non-IP associations. We defined Building Bridges as “targeted advocacy in order to create sustainable pos-itive relationships.” Building Bridges is not

Best Attendance Ever for San Diego Annual Meeting

Marion Heathcote (Davies Collison Cave, Australia)

Nick Wood (Com Laude, UK)

INTA welcomed nearly 10,000 registrants to its 137th Annual Meeting in San Diego from May 2–6. It was the best attended Annual Meeting in the Association’s history, and included more than 1,500 registrants from East Asia and the Pacific, 208 from the Middle East and North Africa, 295 from South Asia and 184 from Sub-Saharan Africa.

This year’s Opening Ceremony included a keynote address by Walter Robb, Whole Foods Co-CEO; a state of the Association interview with INTA CEO Etienne Sanz de Acedo and a speech from INTA President J. Scott Evans on brand ambassadorship.

The Board of Directors passed two Resolu-tions on parallel imports and plain packag-ing. INTA also used the occasion to sign of a memorandum of understanding (MOU) with the Philippine Intellectual Property Office. And registrants enjoyed five days of packed pro-gramming; numerous networking opportunities and much more.

A full report on the Annual Meeting will be published in the June 1 issue of the INTA Bulletin. For detailed, on-site reports from each day of the meeting, read the INTA Daily News, published in conjunction with Managing IP magazine.

May 15, 2015 Vol. 70 No. 92

AssociationNews

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 bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2015 International Trademark Association

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

ChairBarbara Sullivan, Henry Hughes

Vice Chair Liisa Thomas, Winston & Strawn LLP

Co-Chairs, Features SubcommitteeElizabeth 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: Asia-Pacific SubcommitteeChetan Chadha, Chadha & Chadha, An Intellectual Property Law Firm

Joseph Yang, Lee and Li, Attorneys at Law

Co-Chairs, Law & Practice: Europe & Central Asia Subcommittee Mary Bleahene, FRKelly

Thomas Mudd, Zeiner & Zeiner

Co-Chairs, Law & Practice: Latin America & the Caribbean SubcommitteeMartín Chajchir, Marval, O’Farrell & Mairal

Carlos Corrales-Azuola, Corrales Core IP

Chair, Law & Practice: Middle East & Africa SubcommitteeGhaida Ala’Eddein, Saba & Co. IP

Co-Chairs, Law & Practice: United States & Canada SubcommitteeRobert Felber, Waller, Lansden, Dortch & Davis

Catherine Hoffman, Mayback & Hoffman

INTA Bulletin Staff Chief Executive Officer Etienne Sanz de Acedo

Chief Knowledge Officer James F. Bush

Strategist, Communications Content Eileen McDermott

Manager, CommunicationsJean-Claude Darné

EditorJoel L. Bromberg

Graphic DesignerEric Mehlenbeck

INTA Officers & CounselPresident J. Scott Evans, Adobe Systems Incorporated

President Elect Ronald Van Tuijl, JT International S.A.

Vice President Joseph Ferretti, PepsiCo, Inc./ Frito-Lay, Inc.

Vice President Tish Berard, Hearts On Fire Company LLC

Treasurer David Lossignol, Novartis Pharma AG

SecretaryAyala Deutsch, NBA Properties

Counsel David Fleming, Brinks Gilson & Lione

Welcome New MembersChediak Advogados, Rio de Janeiro, BrazilCHG CZERNICH RECHTSANWÄLTE, Innsbruck, AustriaChoice Hotels International, Inc., Rockville, Maryland, USAChristopher Russell Cook & Co., Lusaka, ZambiaChuma Anosike & Co., Lagos, NigeriaCititrust International Inc., Belize City, BelizeCitizen Business Expert Co, Ltd., Tanashi-cho, JapanCittone & Chinta, LLP, New York, New York, USAClairvolex Inc, San Jose, California, USAConway & Partners, Rotterdam, NetherlandsCornwall Stodart, Melbourne, VIC, AustraliaCorp Law El Salvador, San Salvador, El SalvadorCouncil of Better Business Bureaus, Inc., Arlington, Virginia, USACronje & Co. - Namibia, Windhoek, NamibiaCruz & Cia Abogados, Santiago, ChileCSL Behring, Marburg, GermanyCSR Technology Inc., San Jose, California, USACuatrecasas, Goncalves Pereira, Lisbon, PortugalD Law Partners Law Office, Istanbul, TurkeyDahan Law PLLC, White Plains, New York, USADaimler Greater China, Beijing, ChinaD’Ambrosio & Menon, Houston, Texas, USADaniel, Brantley & Associates, Charlestown, Saint Kitts and Nevis

De Lima Assafim e Advogados Associados., Centro, BrazilDe Santiago (DS & V, SC), Mexico City, MexicoDeAnna-Patent, Munich, GermanyDecker & Braun, Luxembourg, LuxembourgDEI Holdings, Inc., Vista, California, USADennis L Hall, Attorney, pllc, Scottsdale, Arizona, USADEXCOM INC, San Diego, California, USADometic Group, Solna, SwedenDuckor Spradling Metzger & Wynne, San Diego, California, USAEast & Concord Partners, Beijing, ChinaeBay D.C. office, Washington, DC, USAEisenführ Speiser, Munich, GermanyE-Mark Intellectual Property Law Office, Beijing, ChinaEversheds, London, United KingdomFechner Rechtsanwalte PartmbB, Hamburg, GermanyFernandez del Castillo y Asociados, Mexico City, MexicoFernandez-Davila & Bueno, Lima, PeruFibbe Lightner LLP, Houston, Texas, USAFirm Forward, LLC, Houston, Texas, USAFLENER IP LAW, LLC, Chicago, Illinois, USAFormula One Management Limited, Biggin Hill, United KingdomFranke Hyland, Macquarie Park, NSW, AustraliaFranklin Gomes Advogados, São Paulo, BrazilGalgut and Galgut, Johannesburg, Gauteng, South Africa

Garono Law, Palo Alto, California, USAGibson, Dunn & Crutcher LLP, Los Angeles, California, USAGlobal Legal Group, London, United KingdomGoodman Mooney, LLP, Costa Mesa, California, USAGordon & Rees LLP, San Diego, California, USAGreenberg Traurig, LLP, Las Vegas, Nevada, USAGregory T. Bradford, Rancho Santa Fe, California, USAGroupon Inc., Chicago, Illinois, USAGuangdong Yonghua IP Management Co., Ltd., Guangzhou, ChinaGVA Abogados, La Paz, BoliviaHajHasan & Taha Law Firm (JORLAW), Amman, JordanHarbottle & Lewis LLP, London, United KingdomHepworth Browne, Leeds, United KingdomHermawan Juniarto, South Jakarta, IndonesiaHERRERA DIAZ ABOGADOS, Bogota, ColombiaHitachi Data Systems Corporation, Santa Clara, California, USAHologram Industries, Bussy-Saint-Georges, FranceHonda Patents & Technologies North America, LLC, Torrance, California, USAHPCD International, Oranjestad, ArubaHyperion Global Partners, Sugar Land, Texas, USAIdeaLegal, PC, Portland, Oregon, USA

3

AssociationNews

See “Building Bridges” on page 4

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about campaigning for short-term change but developing long-term trust. We recommended that Bridge Building should be focused initially on trademark issues, then brand-related mat-ters and from time to time on non-trademark issues proposed by interest groups within INTA. This focus helped us to create a hierarchy of targets, which includes members of INTA who are not active, peer trademark organizations, then other IP organizations and finally organi-zations such as government departments with some responsibility for IP. In other words, we took a very structured approach to the task.

Marion Heathcote (MH): This is all a recogni-tion that the notion of trademarks is evolving as business becomes more global. J. Scott has repeatedly spoken about the need to broaden our understanding of trademarks to the concept of brands—what we do is bigger than just trademarks. So Building Bridges is about relationship-building—both in and outside the trademark space.

We also realized during our research that one of the bridges we have to start building is an internal one, by improving the transparency

and level of knowledge within the organiza-tion. So it is a testimony to the commitment of the Association that we’re going to have a Building Bridges Committee to help acceler-ate that part of the process.

What will the Committee do?NW: As one of its first tasks, the Committee will create a Bridge Building Plan that comple-

New Committee, New Connections: Why INTA Is Building Bridges Continued from page 1

The Benefits of Building Bridges—From the Task Force Report

• Bridge building with peer group IP organizations can promote best practice trademark protection and enforcement including in the developing world;

• Bridge building with governments can advance harmonized, effective trademark legisla-tion and promote fair competition;

• Bridge building with members of INTA enhances participation within INTA, the sharing of knowledge and the effectiveness of committees/volunteering;

• Bridge building with non-IP organizations such as trade groups involved in single-issue advocacy raises INTA’s profile and relevancy as the global organization that speaks for trademarks and associated consumer interests;

• Bridge building with organizations involved in non-IP aspects of evolving technologies and new expanding market areas of likely interest to brand owners enables opportunities for mutual awareness and a forum to raise issues of brand owner concern and appropriate consumer protection; and

• Bridge building with the media promotes public understanding of the value of trademarks and related rights in society and their relevance to innovation.

May 15, 2015 Vol. 70 No. 94

AssociationNewsments INTA’s strategic plan. In practical terms, this means that the Committee will be refining some core messages about INTA, then setting priorities. These messages should be sim-ple—for example, INTA is open and welcomes cooperation; and INTA can be a trusted partner who stands by you; INTA is flexible and values expert guidance from partners on regional, national and local needs.

MH: During the Annual Meeting we met as a Task Force and with INTA CEO Etienne Sanz de Acedo and our sister task forces [the Commit-tee Structure, Participation and Function and the Brands and Innovation Task Forces] to

flesh the plan out more, and we will continue to work on this through the Panama Leader-ship Meeting. We’d like to have the Committee come together there so we can explain our report. Of course, we then want the Committee to evolve beyond our initial recommendations.

What are some of the other key recommendations you’d highlight?MH: We thought that the concept of bridge building needed to be owned at a high level by the CEO and the Board, so we recommended that it be outlined clearly in the Strategic Plan. There should be regular reporting, a commit-tee to help drive it, staff time dedicated to it.

Using some of our past leaders will also be key—we have an incredible wealth of talent in Past Presidents and Board members. There is also within the INTA membership a vast range of knowledge and diverse experiences to be identified and tapped into.

NW: Initially, we concentrated on process and strategy to ensure that bridge building can become embedded within INTA as a sustain-able and affordable way of working. We were very cautious about recommendations made in isolation without knowledge of INTA’s re-sources and operational constraints. That said, the Task Force came up with some ideas—for

New Committee, New Connections: Why INTA Is Building Bridges Continued from page 3

Mark your calendar for INTA’s first ever Trademark Administrators and Practitioners Meeting (TMAP) in Alicante, Spain, home to the Office for Harmonization in the Internal Market (OHIM). OHIM is the European Union agency responsible for managing Community trademarks and designs.

TMAP is designed for trademark professionals responsible for or involved in European trademark portfolio management and lawyers interested in European trademark practice. This meeting will feature:

• various educational sessions including the latest developments on European trademark law, global clearance, filing, litigation and enforcement strategies in Europe.

• opportunities to meet with OHIM officials and examiners.

• networking lunches and receptions to enhance relationship-building with colleagues from Europe and beyond.

Visit www.inta.org/2015tmap

A L I C A N T E . S P A I N o c t o b e r 1 3 t h — 1 5 t h

Trademark Administrators & Practitioners Meeting

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AssociationNews

Name / Position Organization LocationMarion Heathcote, Partner, Task Force Co-Chair Davies Collison Cave Sydney, AustraliaNick Wood, Managing Director, Task Force Co-Chair Com Laude London, United KingdomMilesh Gordhandas, Coordinator–Europe Representative, Office Task Force Staff Liaison (until July 29, 2014, the Staff Liaison was Carla Schwartz)

International Trademark Association (INTA)

Brussels, Belgium

Karen Abraham, Partner Shearn Delamore & Co. Kuala Lumpur, MalaysiaPravin Anand, Managing Partner Anand And Anand Advocates New Delhi, IndiaGerhard Bauer IP-Bauer Stuttgart, GermanyTheodore Davis, Partner Kilpatrick Townsend & Stockton LLP Atlanta, Georgia, USABrenda Kahari, Partner B. W. Kahari Harare, ZimbabweCameron Olsen, Head of Legal International Brand Management Ltd. London, United KingdomCamila Santamaria, IP Senior Attorney Federación Nacional de Cafeteros

de ColombiaBogotá, Colombia

Ellen Shankman, Head of Firm Ellen Shankman & Associates Rehovot, Israel

Task Force Membership and Experience/Structure

example, creating a pool of “Ambassadors”—who can help on the ground; maintaining an up-to-date database of IP organizations; creat-ing a Building Bridges training product for INTA members, sub-divided by geographies, and sharing this freely; and auditing members of INTA so we know who belongs to which other IP organizations and what the priorities of these organizations are.

What are the next steps? NW: Etienne and the Board asked us some very detailed follow-up questions, which we are in the process of answering. For example, they wanted us to outline the qualities the chair of

the Building Bridges Committee should have and to consider how a Bridge Building plan and cycle of activities can feed into the INTA Strategic Plan. They also want us to flesh out our ideas for the Bridge Building Ambassadors.

How will these recommendations benefit INTA members? NW: Bridge building is not a self-contained ac-tivity. It should touch every member and every part of INTA. We hope Bridge Building will raise INTA’s profile and relevancy as the global orga-nization that speaks for trademarks. INTA does not have all the answers to trademark issues, but we hope it can be seen as an organization

that listens and learns, with significant re-sources that it can mobilize to find an answer.

MH: One always works better collegiately than in silos. By enhancing our relationships and having a greater understanding, more can be achieved collectively. What we need to do right now in the IP world is come to some type of agreement with respect to options for moving forward when addressing ever-evolving and new challenges to brand owners. ■

INTA’s International Oppositions Guide This searchable database offers over 100 country profiles on the structure of trademark opposition practice and procedure including:

• general provisions• applicable grounds• alternatives to opposition• opponent issues• filing requirements• post-filing stages and procedures

Visit www.inta.org /iog

May 15, 2015 Vol. 70 No. 96

AssociationNewsA Review of Parallel Import Laws in Latin AmericaParallel Imports Committee—Latin America & Caribbean SubcommitteeLatin American countries have varying po-sitions with respect to parallel imports (i.e., branded goods that are imported into a market and sold there without the consent of the own-er of the trademark in that market). Members of the Andean Community of Nations—Colom-bia, Peru, Ecuador and Bolivia—have regulated the issue under Decision 486 of the Andean Community, which supports the concept of international exhaustion of trademark rights and allows parallel imports when the product in question has not been modified or altered in the course of trade. International exhaustion regimes allow for trademarked goods that have been sold by the IP right holders in a particular jurisdiction to be resold in regions other than the country or region of origin. However, cer-tain internal regulations of individual countries establish limitations to the types of parallel imports that may enter.

Some countries in Latin America and the Caribbean do not regulate parallel imports. Venezuela recently struck down its more modern IP law in favor of adopting its previous law, passed in 1955, which favors the national exhaustion of rights. Brazil expressly estab-lishes the national exhaustion of rights, with some exceptions. One of the exceptions refers to the “local manufacture obligation” provided by the Brazilian legislation. If the exploitation of the patent (and use of the trademark) is made through importation of the product, third parties are allowed to import such product that has been placed in the “market.” In this case, parallel imports are admitted.

Like the Andean Community, other countries in Latin America allow for parallel imports and apply an international exhaustion regime, such as Argentina, Chile, Costa Rica, El Salvador, Guatemala, Mexico, Netherlands Antilles and Uruguay. However, as with the Andean coun-tries, national IP laws limit the types of parallel

imports allowed. The Law of Competition of Argentina limits parallel imports when the products are of bad quality. The Income Tax Law prohibits parallel imports when taxes are not paid before being imported into Argentina and the Consumer Protection Law of Argentina also prohibits the entrance of products that are of bad quality. Chile requires the informa-tion on a particular label to be verifiable, so trademark owners can initiate actions against some parallel import products that fail to meet this requirement.

In Mexico, an international exhaustion regime applies. Mexico’s Industrial Property Law also clearly indicates that a trademark registration shall not be enforceable against any person marketing, selling and distributing products bearing a trademark after such products have been legally introduced within the Mexican ter-ritory. There have been at least three attempts to modify or reform the current Mexican Customs Law; these were ultimately rejected by the Congress. During the 8th Amendment to the 2011 Foreign Trade Resolution, the Mexican Customs Authority created a “Trade-mark Owners Database,” which contemplates the possibility of providing more attention and surveillance for the brands registered there. However, trademark owners have no obligation to register their trademarks in this database, there are no sanctions and the Customs Authority has no legal right to pursue any trademark infringement.

In 1995, the MERCOSUR member countries—Argentina, Brazil, Paraguay, Uruguay and Vene-zuela—signed the “Protocol on Harmonization of Intellectual Property Norms in MERCOSUR in the Field of Trademarks, Indications of Source & Appellations of Origin”(MERCOSUR/CMC/Decision No. 8/95), which included a provision that could be interpreted as sustain-ing the principle of international exhaustion.

Indeed, Article13 of the Protocol provides that “The registration of a trademark shall not prevent the free circulation of the trademarked products, legally introduced into commerce by the owner or with his authorization. The Party States undertake to include in their respective legislations measures that provide for the exhaustion of the right granted by the registra-tion.” Only Paraguay and Uruguay have ratified this Protocol.

In conformity with this Protocol, Paraguay has included a provision in its Trademark Law No. 1294/1998 that adopts the principle of inter-national exhaustion, which sets forth that “free circulation of products bearing marks, lawfully introduced into the market in any country by the owner or with his authorization, based on registration of the mark, may not be prevent-ed, provided that the products, together with their containers and packaging, have not been altered, modified or damaged.”

Although no immediate changes to legislation in the region are being discussed at this time, the Committee is hopeful that the newly adopt-ed INTA Board Resolution on parallel imports titled, “A ‘Material Differences’ Standard for International Exhaustion of Trademark Rights,” will open the door for those countries not willing to make radical changes to their international exhaustion regimes. INTA’s reso-lution allows for the option to restrict entrance to those products with “material differences,” which includes any difference (physical and non-physical) between the parallel import and the original product that may defeat the consumer’s legitimate interests.

To read more about the Board Resolution, which was passed during the 137th Annual Meeting in San Diego, visit the Policy and Advocacy section of INTA.org, under Board Resolutions.

Visit www.inta.org/programs

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AssociationNewsEnforcement Committee Reinforces Policy on Non-Use Cancellation Grace PeriodsIn most jurisdictions, trademarks are subject to cancellation and removal from a trademark register if use has not commenced during a prescribed period of time. Many practitioners and trademark owners face uncertainty in calculating these periods, referred to as “non-use grace periods,” however, as both the time frame in which use must commence and the date from which to begin calculation of that time vary among jurisdictions. This causes confusion in relation to national registra-tions, and also in relation to those cases filed through the international registration (the Madrid Protocol) system.

To address this uncertainty, the Opposition & Cancellation Standards and Procedures Sub-committee of INTA’s Enforcement Committee conducted a survey of 65 jurisdictions to iden-tify specific differences in practices affecting the calculation of non-use grace periods.

After analyzing the survey results, the Subcom-mittee identified several trends among nation-al and international registrations. Regarding national registrations, the majority of countries (49 out of 65) calculate the non-use grace period from the date of actual registration of a trademark. Other methods of calculation included: from the filing of the trademark appli-cation; from the end of the opposition period or conclusion of any opposition proceedings; and from the date of publication of grant of protection.

In the case of international registrations, the Subcommittee noted that despite a single application, the calculation of the non-use grace period varies from country to country, with no clear majority position. In cases where no Notification of Refusal has been issued, a slight majority of countries calculate the non-use grace period from the date of international registration (28 out of 65). Almost as many

countries calculate it from the date of decision about grant of protection (or publication of such decision) (24 out of 65). In cases where a Notification of Refusal has been issued, the survey indicates that the majority of the countries surveyed calculate the non-use grace period from the date of decision about grant of protection (33 out of 65). Among the countries which commence the non-use grace period from the date of filing of the internation-al registration, nearly half (8 out of 21) would not allow provisional refusal as a valid reason to justify non-use.

Based upon the results of these surveys, the Subcommittee developed a report and proposed that jurisdictions harmonize the date from which non-use grace periods would begin to toll. In particular, these jurisdictions should calculate the date by which both national and international registrations become vulnera-ble to cancellation for non-use from the date when all procedures before the national or regional office for the mark to be protected as a registered mark have been concluded. This

includes opposition periods and proceedings in jurisdictions which provide for post-registra-tion opposition.

In addition to these findings, the Subcommit-tee members took into consideration INTA’s existing policy on non-use grace periods as set forth in the Association’s Model Law Guide-lines. The Guidelines state that jurisdictions should begin calculating the non-use grace period “after the date when all procedures for registration of that mark have been completed (i.e. after exhaustion of any periods post-reg-istration whereby the registration may be opposed) . . . .” The recommendation set forth in the Subcommittee’s report is in line with INTA’s existing policy, but takes it a step further to acknowledge specifically that the calculation of non-use grace periods with respect to inter-national registrations should also be given the same treatment without any disparity.

This distinction between the Subcommittee’s recommendation and the Model Law Guide-lines was noted by the Policy Development & Advoacy Council during a presentation of the Subcommittee’s report to the Council in April. It was suggested that the Subcommittee’s recommendation be kept in mind and incor-porated into future revisions of the Model Law Guidelines.

A special thanks to all of the Opposition & Can-cellation Stadnards and Procedures Subcom-mittee members who contributed to the report, to Subcommittee Chair, Vikram Grover, and to Leslie Skinner and Martha Savoy, Chair and Vice-Chair of the Enforcement Committee.

49 out of 65 jurisdictions calculate the non-use grace period for national registrations from the date of actual registration of a trademark.

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 Resources.

Visit www.inta.org/CountryPortals

May 15, 2015 Vol. 70 No. 98

AssociationNewsIn-House Idea Exchange: Social Media Best Practices

In March 2015, corporate practitioners from a number of countries representing a range of industries took part in two In-House Idea Exchange teleconferences on “Best Practices in Social Media,” presented by INTA’s In-House Practitioners Committee. The Idea Exchanges were moderated by Aparna Dave (Wells Fargo Bank, N.A., Houston, Texas, USA) and Dori Hummel (General Mills, Inc., Minneapolis, Minnesota, USA).

The growth of social media as a medium for communication and product promotion has created new challenges for brand owners. The Idea Exchanges brought together in-house trademark practitioners to discuss how their companies address these challenges.

Topics from the two Idea Exchanges included the following:

1. How does your company manage social media?

2. What strategies does your company use to engage with third parties who use your trademarks on social media platforms?

3. What strategies does your company use to avoid IP infringement claims for content posted on social media platforms?

4. How does your company deal with bloggers or celebrities who post on social media about your company’s products or services?

Social Media ManagementParticipants discussed the myriad ways that their companies use social media, including sweepstakes, contests, promotions, customer service and internal company discussions. There were variations among companies as to what policies were in place regarding social media. Some companies have standalone policies governing the use of social media. Oth-er companies have incorporated social media concerns into existing company policies. A few companies have policies pertaining to em-ployee “social media ambassadors,” who are encouraged to post company-provided social media content on their own pages. Companies had different approaches as to which depart-ments within the company were responsible for managing posting to social media and which personnel within the legal departments

supported social media. In most cases, trade-mark lawyers worked together with other mem-bers of the legal department to oversee social media issues. In some cases, companies had lawyers whose jobs were focused primarily on social media issues.

Engagement with Users of the Brand on Social MediaOne of the biggest challenges that brands face with social media is the increased visibility of trademark disputes. Many participants remarked that the likelihood that cease and desist letters may be publicized through social media has led them to exercise greater care in which matters they decide to pursue and how they communicate their concerns to a party that has misused a trademark. Some partici-pants discussed alternative ways of trying to resolve issues regarding trademark misuse, such as phone calls or in-person visits to the offender’s business in order to try to avoid bad publicity.

Strategies to Avoid Infringement of Others’ IPAnother concern that was discussed by partic-ipants was the possibility of infringing others’ IP rights by social media posts. In particular, participants mentioned the risks of mentioning events or celebrities’ names in content posted on social media and the potential for the use of hashtags to give rise to trademark infringe-ment complaints. Participants also discussed

how they go about clearing the use of content that is submitted by fans of the brand, such as photographs or videos entered into a contest. The level of scrutiny in legal review of social media content varied among participants. For some companies, the volume of social media posting was so high that they do not have the bandwidth to give legal review to all content. Rather, they focus on educating the employees who create social media posts so that they will be able to identify issues that need legal review. For other companies, all content put out on social media is reviewed by the legal department.

Policies for Bloggers/InfluencersParticipants discussed how their companies take precautions to ensure that posts by celebrity endorsers and bloggers comply with U.S. Federal Trade Commission guidelines and other advertising regulations around the world. Most companies enter into agreements with parties that receive compensation or benefits in exchange for promoting products or services. In such agreements, the blogger typ-ically would be responsible for disclosing that he or she has received compensation from the company whose products are being reviewed. Companies that have brand ambassador programs, in which employees promote com-pany-created content through the employees’ own social media posts, typically require em-ployees to identify themselves as employees of the company, and may even incorporate this information into the posts that are provided to the employees to ensure that it is included.

It was apparent from the discussion in the two Idea Exchange teleconferences that while companies face similar issues regarding the use of social media, there was no one-size-fits-all approach to addressing the issues. Companies have different approaches to their own use of social media and to their reaction to uses of their brands by others on social media. The lively discussion gave participants the opportunity to gain some insight into these various approaches. In-house practitioners are encouraged to participate in future Idea Exchange events on other topics of interest.

To propose a topic for a future Idea Exchange, please contact Ryan O’Donnell at rodonnell@inta.org.

Michelle BrownleeBose Corporation, Framingham, Massachusetts, USAIn-House Practitioners Committee, Idea Exchange Teleconferences Project Team

The likelihood that cease and desist letters may be publicized through social media has led [some companies] to exercise greater care in which matters they decide to pursue and how they communicate their concerns.

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VolunteerSpotlight

Hugo MersanHugo Mersan and his two older brothers, Oscar and Carlos, are partners in the law firm

of Mersan Abogados, which was founded by their father in 1943. Although the firm’s main practice was initially concentrated in tax and corporate law, their father put Hugo to work in the IP area, which at that time was a very small practice area. As the IP side of the prac-tice continued to grow, Hugo took the reins. Now, Hugo has a successor to his IP practice in his daughter, Lorena, who has joined him as an associate in the firm.

Hugo enjoys participating in INTA Annual Meet-ings and sees them as excellent opportunities to meet with clients, catch up with old friends and colleagues and visit new places. Hugo looks back with fondness on the San Antonio Meeting of 1997 as one of the most enjoyable. He also fondly recalls the Annual Meeting in Amsterdam, where he received an award from British American Tobacco for successfully resolving a number of cases against manufac-turers of counterfeit cigarettes in Paraguay. He is now looking forward to the Orlando meeting, as the Disney World experience makes him feel like a child again.

Hugo plays tennis, but what he enjoys most is motor racing. He participates in events with antique cars. Currently, he is president of the Paraguayan Automobile Club and a member of the World Motor Sport Council of the Fédéra-tion Internationale de l’Automobile (FIA). He is past-president of the South American Automo-bile Sports Federation and currently serves as the FIA’s vice president of Sport for South America. Hugo is a steward in the World Rally Championships and an avid fan of FIA Formula One racing.

Hugo usually spends his vacation with family and friends in Brazil or Uruguay, or may escape from the hot weather of Paraguay to go skiing. On weekends, Hugo tries to avoid the office and relaxes by playing tennis, fishing or visiting the countryside with family and friends.

Antonio TaviraAntonio Tavira got his first real taste of the in-ternational trademark business at the Spanish firm of Elzaburu, following a stint in the insur-ance field. Now a managing partner there, he has plied his craft as a trademark attorney for more than 17 years. “It has been very exciting and educational to work with so many profes-

sionals from all around the world,” he says. His client relationships have expanded even further with Antonio’s long-standing INTA mem-bership, which includes two years of service on each of three different committees: the Law Firm Committee, Membership Committee and Dilution & Well-Known Marks Committee.

The trilingual practitioner—fluent in Spanish, English and French—has worked with a host of clients dealing with well-known trademarks throughout his career and has served as an authorized representative before the Office for Harmonization in the Internal Market (Marks & Designs).

When it comes to his favorite trademark, Anto-nio’s loyalty shines through: it is ELZABURU

“It can be a difficult name to pronounce coming from the north of Spain, but so easy to know and recognize when you are in the pro-fession,” he says. “In fact, we have an official association called Leading Brands of Spain Forum formed by the 100 top Spanish brands, and Elzaburu is part of it.”

The firm is celebrating its 150th year in business this year—an accomplishment that in-

cludes the filing of American inventor Thomas Edison’s first patents in Spain and Portugal.

Antonio, an avid reader, says he has found his hobby dovetails nicely with his global perspec-tive and newfound interest in world finances: “I have been very interested during the last five years in economics and the financial crisis,” he says. “I have read very good books, such as Colossal Failure of Common Sense, based on the collapse of the world financial system in 2009, as well as others that help us under-stand our recent history.”

While the Spanish native and resident travels extensively in his professional capacity, home is where his heart is. Antonio says he spends as much time as possible enjoying life with his family—his wife, two sons and two daughters. An energetic group, they enjoy numerous activ-ities together, ranging from golf to skiing, and from listening to music to taking long hikes in the countryside.

Bernard MaloneBaker & McKenzie, Buenos Aires, ArgentinaINTA Bulletin—Association News Subcommittee

Barbara Barron KellyCorsearch, Chicago, Illinois, USAINTA Bulletin—Co-Chair, Association News Subcommittee

May 15, 2015 Vol. 70 No. 910

AssociationNewsJames TumbridgePillsbury Winthrop Shaw Pittman LLP, London, UK

Conny SchmittGrunecker, Munich, Germany

Mr. Tumbridge serves as Chair and Ms. Schmitt serves as Vice-Chair of the Alternative Dispute Resolution Committee.

Committee Spotlight: Alternative Dispute Resolution Committee

The Alternative Dispute Resolution (ADR) Com-mittee has at its heart the tasks of promoting and raising awareness of the benefits of ADR. In the current term, the Committee was keen to ensure that all forms of ADR received atten-tion, and not just mediation, which has been its historic focus. The Committee includes three subcommittees:

1. The Outreach Subcommittee, which handles governments, courts, offices and associations;

2. The Programming Subcommittee, which deals with programs and educational issues; and

3. The Standards & Measurement Subcom-mittee, which addresses the improvement

of tools for measuring the success of the mediation panel and the organization of training courses for INTA’s mediators by approving training providers and creating resources.

One of the ADR Committee’s important roles is overseeing a panel of trademark media-tors, formally called the “Trademark Media-tors Network,” but recently re-branded as the “Panel of Trademark Mediators.” This group of talented people from INTA provides a set of mediators located across the globe who understand trademark law. The mediation group has been one of the most success-ful INTA ADR programs, and with renewed branding, and the soon to be announced revised criteria, the group will remain a great resource for the future.

Because the ADR Committee has many high-level private practice attorneys, one of its initiatives has been to connect with the In-House Practitioners Committee to ensure the programs offered are suited to in-house needs. The Committee has been delighted with the response to the programing and hopes that the 2016 Annual Meeting could have a larger ADR component. The Committee is presently

considering showcasing a mock mediation as well as an interactive discussion on ADR provisions in agreements. This builds on the webinars and presentations with which Com-mittee members have been involved in this term in Israel, Portugal, France, the UK and the United States. Committee members have also participated in an event in Brazil and are hoping to arrange translations of a successful mediation video, which is available in English on the INTA.org website.

The 2015 Annual Meeting again hosted mediation training on the opening weekend in San Diego, and, after several years of work, INTA and WIPO entered into a Memorandum of Understanding (MOU) designed to foster greater links between the ADR Committee and the promotion of ADR. All in all, it’s been a good start and it is expected that this level of active programing will continue through the rest of the term.

Visit www.inta.org/tma

INTA’s New and Updated

Trademark Administration is an expanded and enhanced online version of INTA’s classic print training tool on trademark practice and procedures. In its new online format, checklists, practice tips, sample forms and many more valuable resources are available to each employee at your INTA membership location at no additional cost!

Topics to look out for include:

• Trademark Administration–The Who, How, What and Why by Mary Donovan• Trademarks in Business Transactions by Lanning Bryer• Searching and Clearance by Glenn Gundersen• U.S. Trademark Registration by David Anderson

Visit www.inta.org/tma to learn more about Trademark Administration and how it can help you in your daily work today!

Trademark Administration

11

AssociationNewsRecent Roundtables

Beijing, ChinaGlobe Law Firm invited 30 attendees on February 6, 2015, to discuss the concept of “malice” and its influence in trademark authorization and infringement cases. The conversation covered topics including the

identification of “malice” in trademark squat-ting; malicious infringement; application of the principle of good faith in Chinese Trade-mark Law; and the impact of malice on the amount of compensation recovered. Speak-ers included partners from Globe Law Firm and Mr. Dong Baolin, former Deputy General Director of the China Trademark Office.

Beijing, ChinaOn March 20, 2015, Brandma Co. hosted 19 trademark professionals for a roundtable discussion on “Digital Assets Management—How to Prevent your Brand from Domain Name Abuse, Online Trademark Counterfeiting and Infringement.” Speakers, including Brandma

Co. CEO Ching Chiao, reviewed the challenges of detecting and enforcing against the sale of counterfeit goods online; the current status and difficulties of digital asset management; ways to get up-to-date information, trends, rules or Internet regulations to better protect digital assets; and tackling domain name abuse, among other topics.

Lima, PeruINDECOPI’s Director of Distinctive Signs, Ray Meloni, discussed Peruvian perspectives on non-traditional trademarks with Non-Tra-ditional Trademarks Committee members Maria del Carmen Arana (Estudio Colmena-res & Asociados) and Pedro Vilhena (Kasznar Leonardos Advogados) during an April 7 roundtable in Lima.

Twenty-seven INTA members attended the roundtable, “Distinctive character in non-traditional marks,” organized by the Non-Traditional Trademarks Committee. The central focus of the discussion was on the assessment of the distinctive character of non-traditional signs. Mr. Vilhena said that

distinctiveness may be defined as the gap between the semantic content of a sign in relation to a product or service. Thus, the difficulties from assessing distinctiveness in non-traditional marks arise from the lack of knowledge of the semantic contents of non-traditional signs.

Throughout the event, Mr. Meloni provided insightful declarations about the present and the future status of non-traditional marks in Peru. According to him, there are 15 sound marks currently in force, but no application for smell marks has ever been filed. Given that the use of most types of non-traditional signs cannot be evidenced in invoices, Mr. Meloni clarified that INDECOPI tends to be more flexible in the analysis of proof of use of

non-traditional marks, citing advertising ma-terial and notary certified facts as examples of suitable types of evidence.

Paris, FranceA roundtable titled, “The new French and European Custom Regulations: A look back on the first year of application,” was organized on March 24, 2015, by Regimbeau to discuss the role and new powers of the European and French customs offices and also new Europe-an and French customs regulations. European Regulation n° 608 has been in force since January 1, 2014, and the new French Law has been in force since March 11, 2014. Thirty attendees heard from speakers including Mme Nadine Babonneau, Adjointe au chef du Bureau E1, Section contrefaçon et propriété intellectuelle, Direction générale des douanes

et des droits indirects, regarding the results of customs activity in 2014 for IP matters. Points covered included new types of IP rights con-cerned, the new proceedings created by the EU Regulation, such as simplified destruction, and the difficulties for customs officers and IP owners to effectively file the necessary docu-mentation to implement the new proceedings. Attendees had questions about procedures for the destruction of counterfeit goods, which demonstrated a need for IP owners to be bet-ter informed about the process. Attendees also had questions about costs associated with storage and destruction of counterfeit goods.

May 15, 2015 Vol. 70 No. 912

FeaturesScope and Validity of Nontraditional Trademarks in the EU: Some Recent Developments

Carmel CorcoranInsignia IP Services Ltd., Cambridge, UKINTA Bulletin Features Subcommittee

Harmonized trademark laws are in force throughout the EU. These provide that both national and Community Trade Marks (CTMs) may consist of “any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their pack-aging, provided that such signs are capable of distinguishing the goods or services of one un-dertaking from those of other undertakings.” (Article 2 of the Trade Marks Directive; Article 4 of the Community Trade Mark Regulation) The word “sign” is a general term meant to include all candidates which may constitute a trade mark; however, not all signs will be sufficient for this purpose.

This statement clearly includes trademarks comprised of conventional alphabetic, nu-meric, and word elements, as well as those comprised of graphical design and shape elements, as examples of registrable marks. However, these are simply examples and do not exclude from registration unconventional trademarks (otherwise known as nontradition-al trademarks) such as smell, touch or taste marks, or sound, color, hologram or movement marks, provided they are able to meet the following criteria:

• The mark applied for must be a sign;

• It must be capable of graphical representa-tion; and

• It must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

In the leading case of Sieckmann [Sieckmann v. Deutches Patent und Markenamt [2002] E.C.R. I-11737, especially paras 47–55], it was held that in order to be registrable, an unconventional trademark must contain a graphical representation of the mark which is sufficiently clear, precise, self-contained, easily accessible, intelligible, durable, unequivocal and objective so the relevant trademark office would be able to examine the application and otherwise deal with the trademark and, even more importantly, so that the public and com-petitors would know with certainty the scope of the rights claimed. These criteria are known as the Sieckmann criteria.

Prior to Sieckmann, it was possible to register simple written descriptions of smells, such as “the smell of fresh cut grass” for tennis balls, and “the scent of raspberries” for diesel fuels. However, in Sieckmann, the Court of Justice of the European Union (CJEU) specifically rejected as insufficiently precise an attempt to register the smell of cinnamon by means of a variety of simple and increasingly complex written descriptions, and it rejected an actual sample of the smell on the basis that it would be subject to deterioration. The result is that,

while the registration of a smell mark remains a theoretical possibility, it is for all intents and purposes a practical impossibility. The same problems that face smell marks also seem to extend to touch and taste marks.

Other types of unconventional trademarks may encounter specific difficulties in meeting one or more of the Sieckmann criteria, although it is usually possible to register such an uncon-ventional trademark by framing the application in an appropriate manner.

Color MarksIn the case of Libertel [Libertel Groep v. Bene-lux Merkenbureau C-104/01 [2003] E.T.M.R. 63], the CJEU considered an application for a color described as “orange” and unaccom-panied by any color code or other type of limitation. The Court held that a sample of a color on paper was not sufficiently durable to constitute a proper graphical representation, but that a sample of the color together with a written description which defined the color applied for by reference to an internationally recognized color identification system (for example, Pantone or RAL) would be sufficient.

The CJEU in Libertel stated that to qualify as a sign capable of functioning as a trademark, the mark applied for must be capable of conveying a trademark message to the relevant public (i.e., that sector of the public to whom the goods and services are directed) and the Court queried whether an application for a pure color

Avoid discovery delays by drafting properly worded discovery requests directed at information relevant to the issues in dispute. See “Discovery Requests in Trademark Cases Under U.S. Law” in INTA’s Practitioners’ Checklists series for an outline of topics to help you create an individualized discovery checklist.

Visit www.inta.org/discoveryrequests

Discovery: Understand the rules and overcome the challenges.

13

Featuresunlimited in scope is capable of functioning as a “sign” because “normally a colour is a simple property of things.” Applying this principle in later cases, the CJEU has held that the color gray applied to machinery would be perceived simply as a property of the manufacturing process or as a colored casing [Anreas Stihl AG & Co KG v. OHIM, Case T-316/00].

In the subsequent case of Heidelberger Bauchemie [Heidelberger Bauchemie [2004] E.T.M.R. 99 CJEU], the CJEU considered an application for a sample showing two col-ors, together with the written description “The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels,” for building products. The CJEU held that this description was insuf-ficiently precise or uniform to comply with the Sieckmann criteria. The CJEU went on to find that the description did not actually constitute a single sign but “numerous different combina-tions,” the registration of which would result in “the abuse of trademark law in order to obtain an unfair competitive advantage.” In order to constitute a sign, the application should have clearly set out the context in which the two colors applied for were to be used.

A recent illustration of the type of problem which may face an application for an ambigu-ously described color application is shown in the case of Société des Produits Nestlé S.A. v. Cadbury [Société des Produits Nestlé S.A. v. Cadbury UK Ltd [2013] EWCA Civ 1174]. In that case, the English Court of Appeal dealt with an attempt by Cadbury, the chocolate manufacturer, to register the color “purple” for chocolate confectionery. The application contained a broad claim to the color purple “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”

The Court of Appeal rejected the application because it did not constitute one sign but many. The application was so broad and ambiguous that it potentially included multiple “purple” marks of unspecified appearance and presentation as well as multiple marks of un-specified color provided that “purple” was the predominant color. Clearly, the possession of such a registration would confer an enormous competitive advantage upon Cadbury, but the Court of Appeal held that this would be an un-fair advantage and would constitute an abuse of trademark law.

It can be seen that under existing case law and practice, trademark applications to regis-ter a clearly defined color shade, for example, the Pantone Red 18.1663TP applied to the sole of high-heeled shoes [Case R0371/2009-

2]; or a description of a color or combination of colors applied to the shape of goods, for ex-ample, the color combination green and yellow applied to agricultural machinery [BCS v. John Deere, Case T-137/08 BCS SpA v. OHIM, ECR II - 04047, does not face particular problems. However, applications to register a color, or combination of colors, which is/are unlimited in form are far more problematic.

Shape, Hologram and Moving Image MarksThe registration of three-dimensional shape marks in the EU faces specific difficulties because harmonized trademark laws provide that shapes which result from the nature of the goods themselves, or which are necessary to obtain a technical result or which give sub-

stantial value to the goods, are not registrable as national trademarks or CTMs. In particular, the very recent decision of the CJEU in Voss of Norway ASA v. OHIM (Case C-445/13 P) confirms the difficulty of obtaining (and of defending against an action for invalidity) a CTM registration consisting of the design of a product or the shape of its packaging. Voss possessed a CTM registration consisting of a somewhat unusual transparent cylindrical bottle shape which featured a non-transparent cap with the same diameter as the bottle in relation to beverages. A competitor sought to invalidate the CTM on the basis it lacked distinctive character. On behalf of Voss it was argued there was a presumption of validity in relation to a CTM registration, so Voss should not have the burden of showing the mark was perceived as a trademark by consumers of beverages in the invalidity action, but the Applicant should demonstrate the shape was not perceived as a trademark. The CJEU reject-ed this argument and found the registration invalid on the basis that it was not significantly different from the shape of other bottles and did not depart from the norms or customs of the beverage sector.

However, there is no particular barrier to reg-istering the two-dimensional representation of a shape by filing an image such as a photo or drawing thereof provided it constitutes a sign and it is described with sufficient precision

to comply with the Sieckmann criteria. But problems occur when the nature of the sign is unclear or when the graphic description that is given potentially includes multiple signs, so that neither the trademark authorities nor the trade and public can be sure of the scope of the monopoly granted to the registered propri-etor by inspecting the Register of Trade Marks.

For example, the UK Intellectual Property Office (UKIPO) will not accept vague and uncer-tain written descriptions that may cover more than one mark, such as “The mark consists of a drinking vessel made of leather” or “The mark comprises a rugby themed restaurant, several photographs of which are shown.” [UKIPO Work Manual, Ch. 1, para 2]. However, it will accept applications for holograms or moving images that provide each of the vari-ous views, together with a description which is sufficient to show all material features of the mark applied for [Sony Ericsson’s Application R 443/2010-12; UKIPO Work Manual, Ch. 2, paras 5.1 to 5.2].

The type of ambiguity that is not acceptable is shown by a recent case in which the English Court of Appeal dealt with an appeal from Dyson, the vacuum cleaner manufacturer, against the refusal of the UK Registrar of Trade Marks to accept its application to register the transparent collection chamber of a vacuum cleaner for “all conceivable shapes.” The CJEU agreed with the Registrar that the description was insufficiently clear or precise to meet the Sieckmann criteria. It went on to state that “such non-specific subject matter would give Dyson a competitive advantage by excluding competitors from using any form of transpar-ent collecting bin.” [Dyson Ltd. v. Registrar of Trade Marks, C-321/03, CJEU]

Applying the same rationale, the English Court of Appeal recently upheld the invalidity of Mattel’s existing UK registration for a blank ivory-colored Scrabble tile accompanied by the written description “on the top surface of which is shown a letter of the Roman alpha-bet and a numeral in the range 1 to 10.” [JW Spear & Son Ltd, Mattel Inc and Mattel UK Ltd v. Zynga Inc [2013] EWCA Civ 1175] The Court rejected Mattel’s argument that this descrip-tion was no more vague than plain word marks because the undefined scope of the alpha-betical and numerical additions which could potentially be added to the top surface of a tile would result in protection for multiple signs, including numerous third-party registered trademarks, such as 3M, 02 and F1. The reg-istration was canceled on the basis that it was not for one sign and the sign was not identified clearly, precisely and objectively enough.

Applications to register a color, or combination of colors, which is/are unlimited in form are far more problematic.

See “Scope and Validity” on page 14

May 15, 2015 Vol. 70 No. 914

FeaturesSound MarksMarks that cannot be perceived visually face particular difficulty in complying with the re-quirement for graphical representation.

In the case of Shield Mark, the CJEU held that a written description of a sound mark might be sufficient to comply with the Sieckmann crite-ria in theory [Shield Mark [2004] E.T.M.R. 33 CJEU]. However, the Court also rejected several written descriptions of various sound marks including “cockcrow”; “the trade mark consists of an onomatopoeia imitating a cockcrow”; and sequences of musical notation on the ba-sis that each was insufficiently clear or precise to make it possible to determine the scope of protection sought.

Following Shield Mark, the Office for Harmo-nization in the Internal Market (OHIM) has subsequently refused to register the simply described sound mark “click” [Qlicksmart Pty Ltd’s Application [1999] E.T.M.R. 335], as well as MGM’s application to register a sound de-scribed as “the roar of lion and . . . represent-ed by the spectogram above mentioned” to-

gether with a spectogram. [[2004] E.T.M.R. 34] However, it has been stated that a sonogram might be acceptable as a graphical represen-tation because it conveys more nuances and sound characteristics than musical notation, and the UKIPO will accept a graphical descrip-tion of a sound mark which is comprised of a stave, clef, rests and musical notes.

More recent advances in technology mean that there are now available nongraphical means of identifying a sound mark which are sufficiently clear, precise, self-contained, easily accessible, intelligible, durable, unequivocal and objective to satisfy the Sieckmann criteria (for example, by means of a digital file). At the same time, the trademark offices of the EU have developed an increasing capacity to ac-cept the filing and storage of such “nongraphi-cal” types of trademarks.

As part of the overhaul of the overall func-tioning of the trademark system in Europe, in February 2014, the EU Presidency published a compromise text for proposed amendment to the Trade Mark Directive and the Commu-

nity Trade Mark Regulation to liberalize the requirement for graphical representation. The legislation is currently awaiting its second reading before the European Parliament in July of this year; at first reading, the amendment was approved that “a sign should be permitted [for registration] in any appropriate form taking account of generally available technology which enables the competent authorities and the public to determine with precision and clarity the subject matter of protection.” (www.europarl.europa.eu)

Once in place, this important development should facilitate the filing of electronic files as sufficient representations of sound marks. This development should also assist in the filing of complex visual marks. Unfortunately, however, this change is unlikely to assist those proprietors that wish to obtain registration in the EU of a trademark comprised of a smell, taste or touch—at least until it is accompanied by a technological advance which enables the precise reproduction of a smell, touch or taste by means of an electronic or computer file.

Scope and Validity of Nontraditional Trademarks continued from page 13

Learn more about INTA events, including international roundtables, networking receptions, e-Learning, academic competitions and more, at www.inta.org/programs

Dates and topics subject to change. Contact meetings@inta.org for the latest information.

INTA Calendar of EventsPlan your calendar with these INTA events and stay up to date on issues that affect your trademarks—domestically, regionally and globally.

June 2 USPTO Roundtable Boston, Massachusetts, USA

June 8–June 19 TMA Roundtables: Strategizing…Left and Right of the Dot Various U.S. cities

June 25 USPTO Roundtable Phoenix, Arizona, USA

July 10 USPTO Roundtable New York, New York, USA

July 13–July 24 US Roundtables: Non-Traditional Trademarks: Various U.S. cities Prosecution and Enforcement Strategies

September 28–October 9 TMA Roundtables: Aspects of Trademark Due Diligence Various U.S. cities in M&A Transactions

15

Law&Practice

CHINA Michael Jordan May Not Win Right to His NameRecently, the Beijing Intermediate People’s Court made trial judgments of first instance in the administrative litigation against the China Trademark Review and Adjudication Board (TRAB) in 78 trademark dispute cases involving the mark 乔丹 (Qiao Dan, in Chinese Pinyin), instituted by plaintiffs Michael Jordan and Nike. The other party to the disputes was the Chinese company Qiaodan Sporting Goods Inc. (Qiaodan).

The dispute focused on whether or not 乔丹 is exclusively associated with 迈克尔•乔丹 (Mi-chael Jordan, in official Chinese translation).

The Beijing First Intermediate People’s Court concluded that 乔丹 is a common American surname, and refers to different persons using it as either first names or second names. Therefore, Qiaodan’s use

and registration of 乔丹 as a trademark did not constitute infringement upon Michael Jordan’s right to his name, nor did it consti-tute an act of unfair competition. It decided 68 cases in favor of Qiaodan.

The plaintiffs have appealed to the Beijing High-er People’s Court for a trial of second instance.

Besides these administrative law suits, in February 2012, Michael Jordan filed a civil lawsuit against Qiaodan for infringement upon his right to his name before the Shang-hai Second Intermediate People’s Court, claiming RMB 50 million (about $8 million) as damages. Afterwards, Qiaodan also initiated a civil lawsuit for infringement of its right of reputation against Michael Jordan. To date, both civil cases are pending.

The ongoing series of cases between Qiao dan and Michael Jordan potentially will become landmark cases and have piqued the interest of the Chinese public. On the one hand, the 乔丹 mark has gained a very high degree of consumer recognition in the market, and on the other hand, the Court must strike a balance between the public and individual interests.

Contributor: Guizeng (Wayne) LiuYuanhe United Intellectual Property Partners/Yuanhe Partners, Beijing, China INTA Bulletin Law & Practice—Asia-Pacific Subcommittee

Verifier: Juan WangBrandma.Co Limited, Hong Kong SAR, China

BRAZIL Highly Renowned Status Granted to Trademark FUSCA On August 19, 2013, Ordinance no. 107/2013 of the Brazilian National Institute of Indus-trial Property (INPI), which came into force on March 10, 2015, introduced new provi-sions for the examination of highly renowned marks. The Ordinance governs Section 125 of the Brazilian Trademark Law (Law no. 9.279/1996), which states that “Marks registered in Brazil and deemed to be famous shall be afforded special protection in all fields of activity.”

In addition, Ordinance no. 107/2013 is so far the only rule expressly dealing with the concept of trademark dilution.

Under the Ordinance, a trademark whose fame and renown have exceeded its original scope, and is recognized by a significant part of the public for the prestige and quality of the products or services bearing it, deserves

special status. Such status is meant to protect highly renowned marks against reproduction or imitation, even in the absence of similar-ities between goods and services, so as to decrease the risk of dilution of the distinctive power of a highly renowned mark and of po-tential parasitical benefit.

INPI’s very first favorable decision for a highly renowned mark has afforded special protec-tion to the trademark FUSCA, which identifies Volkswagen’s BEETLE in Brazil. Among other documented evidence provided was the following:

• A quite significant part of the public at large is familiar with the FUSCA trademark. “Of 2,002 individuals who participated in a sur-vey, 81 percent of them have at least heard about said mark and 97 percent sponta-neously associated it with automobiles.”

• The survey disclosed that 77 percent of the individuals have a perception that the FUSCA mark is a highly regarded mark and 73 percent are of the opinion that it signi-fies prestige, reputation and reliability.

This decision reveals that examination of highly renowned marks will follow extremely strict criteria; the submission of surveys which provide conclusive evidence of the mark’s reputation and association with quality and prestige seems to be critical.

Contributor: Ana Lúcia de Sousa BordaDannemann Siemsen Advogados, Rio de Janeiro, Brazil

Verifier: Valdir De Oliveira Rocha FilhoVeirano Advogados, Rio de Janeiro, BrazilINTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee

Searchable database on the cancellation practice and procedure in more than 85 jurisdictions worldwideTrademark Cancellations on INTA’s Global Trademark Resources Page

Visit www.inta.org/Cancellations

May 15, 2015 Vol. 70 No. 916

Law&PracticeCHINA Beijing High Court Defines Fair UseZhongke Lianshe (Beijing) Network Technolo-gy Research Institute (Zhongke) registered 无懈可击 wuxiekeji (TM No. 8327863), desig-nated to be used on shampoo and hair con-ditioner and similar goods. Unilever (China) co., LTD, and its authorized dealer (Unilever) were found to be using 无懈可击 (WuXieKeJi) and 无屑可击 (WuXieKeJi) on the packaging of Qingyang Shampoo, its official website and weibo, TMALL, a network promotional link and in a television advertising campaign. Zhongke claimed Unilever used a Chinese character that was identical or similar to its registered trademark on the same goods without autho-rization, which infringed its exclusive trade-mark right. The First Instance Court found that Unilever did not infringe. The Beijing Third Intermediate People’s Court upheld the First Instance decision on June 17, 2014.

The case was concerned with whether Uni-lever’s use of 无懈可击 would fall into the scope of fair use specified according to Article 49 of the old Implementing Regulation of the Trademark Law of the PRC, which corre-sponds with Article 59 of the new Trademark Law. If it is determined that the case consti-tutes fair use, the trademark holder has no right to prohibit others from properly using its trademark. Article 49 states: “Where a regis-tered trademark contains the generic name or model number of the goods concerned or a device depicting the goods, directly represents the quality, primary raw materi-

als, functions, intended purposes, weight, quantity, or other characteristics of the goods, or contains a place name, the owner of the exclusive right to use that trademark shall have no right to prohibit any fair use of the trademark by others.”

The court held that 无懈可击 is a Chinese idiom with concrete meaning, rather than a meaning invented by Zhongke. Consequent-ly no one can be prohibited from using the trademark within the meaning of the idiom. In this case, Unilever used the disputed idiom as a promotional slogan to prescribe and high-light the quality, function and purpose of the shampoo. Because both 无屑可击 (“dandruff resistance”) and 无懈可击 (“unassailable”) have the same pronunciation and differ only in a single word, “dandruff,” and the word “dandruff” cannot be disputed, the Court held that Unilever’s use fell within the meaning of fair use and did not infringe Zhongke’s trademark right.

The court said that, in most cases, Unilever combined the disputed idioms as an adjective with other words describing the quality and function rather than indicating the source of the goods. The disputed idioms were used as a trademark with CLEAR 轻扬（Qingyang) rather than a descriptive mark. Also, Qing-yang itself has a certain reputation, which would not cause confusion to the general public when identifying the sources of goods.

In this case, the court illustrated the differ-ence between descriptive use and use as a trademark. Descriptive use refers to the use of descriptive words or describes the char-acteristics of goods to enable the relevant public to identify the specific characteristics of goods and/or services and would not be consistently associated with the goods or the service provider. Trademark use refers to the trademark serving to identify the sources of goods or services among the general public in commercial activities that could establish a consistent association between the trade-mark and the goods or service provider.

When determining whether a use constitutes a descriptive use or use as a trademark, a court should take into consideration the following factors, including but not limited to: the meaning of the words themselves, the purpose and method of use (whether com-bined with the trademark or used alone) and the degree to which the brand is recognized by the general public.

Contributor: Joseph JG ShangBeijing Dacheng Law Offices, Beijing, ChinaINTA Bulletin Law & Practice—Asia-Pacific Subcommittee

Verifier: Wiky WangForidom Intellectual Property, Shanghai, China

This Practitioners’ Checklist is intended to provide basic guidance and a list of “things to remember” when a practitioner assumes responsibility for an existing trademark portfolio previously managed by others.

Assuming Responsibility for a Trademark Portfolio

Visit www.inta.org/practitionerschecklists

17

Law&Practice

Determine the requirements of each applicable jurisdiction where your to-be-assigned trademark assets are located. This fact sheet also covers key questions on assets to be assigned, execution requirements, the assignor and assignee, consideration and taxation, checking and correcting chain-of-title issues, and miscellaneous provisions.

Trademark Assignment Agreement Checklist

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CHINA Beijing High Court Defines Trademark DistinctivenessUrumqi Henna Cosmetics Co., Ltd, applied to cancel the registration of trademark 海娜HENNA with the graphic of a flower (TM No. 3984640)

granted in February 2007, designated to be used on hair dyes and cosmetics under Class 3. The disputed trademark was registered by Zhang Xianwen, the director of Xinjiang Jin Haina Biological Technology Development Co., LTD. The grounds of the cancellation applica-tion were that 海娜 (HENNA), as transliterated from the Uygur language, is collectively known as a plant and its products, which are mainly used as, or as an ingredient in, cosmetics, and henna is the generic name of these products.

In January 2013, the China Trademark Review and Adjudication Board (TRAB) upheld the disputed trademark. The judge found henna is the generic name of Camphire (camphor) with no distinctiveness; therefore, no one could claim the exclusive trademark rights to 海娜 or HENNA for hair dyes and cosmetics. However, the disputed trademark is composed of a char-acter and a graphic. The graphic element is a significant and main portion of the trademark which renders the disputed trademark recog-

nizable as a whole; therefore, the registration of the disputed trademark cannot be consid-ered a violation of Article 11(1) of the China Trademark Law because the law refers to “only a direct representation of the characteristic of goods concerned.”

The Beijing First Intermediate People’s Court maintained the determination of the TRAB in the first instance. The Beijing High People’s Court ruled against the First Instance decision and determined that the disputed trademark does not have distinctiveness and requested the TRAB to render a new decision (2014) Gao Xing Zhong Zi No. 1205.

The judge found that distinctiveness is the fundamental requirement of a registered trademark. Distinctiveness is determined by the relevant public and classes of products or services as a whole. In accordance with the China Trademark Law, a trademark registration would be granted if the applicant disclaims the exclusive right to use the portion of the trade-mark containing the descriptive elements, or if the descriptive elements are integrated with other elements so that the trademark as a whole has overall distinctiveness. However, if the portion abandoned is the distinctive part, or if after other elements are incorporated the disputed trademark still would be considered as a direct representation of a characteristic

of the goods (such as material, function, pur-pose, weight or amount) to the general public, the disputed trademark would not be consid-ered as distinctive.

The court said that, as a generic name of the products, 海娜 (HENNA), does not have a distinctive characteristic. The relevant general public in China usually identifies the trademark by means of characters; therefore, 海娜 HEN-NA is the main part of the disputed trademark for identification purposes. Whether the trade-mark can be distinguished should be deter-mined by whether the disputed trademark can acquire overall distinctiveness with the graphic of a flower. The natural shape of henna is a flower. Therefore, even though the disputed trademark includes a graphic element, it can-not be considered as having acquired distinc-tiveness substantively as a whole. Therefore, the court found that the disputed trademark directly represents a characteristic of goods, which is a violation of Article 11(1).

Contributor: Joseph JG ShangBeijing Dacheng Law Offices, Beijong, ChinaINTA Bulletin Law & Practice—Asia-Pacific Subcommittee

Verifier: Wiky WangForidom Intellectual Property, Shanghai, China

May 15, 2015 Vol. 70 No. 918

Law&Practice

InterplayBETWEEN TRADEMARKS, GEOGRAPHIC NAMES AND INDICATIONS

DECEMBER 10 – DECEMBER 11 ROME, ITALY

Visit www.inta.org/GI2015

Mark your calendar for INTA’s 2015 European Meeting on Geographical Indications–Interplay between Trade-marks, Geographic Names and Indications–to take place in Rome, Italy, December 10–11.

Geographic indications are a central topic of debate in current international trade agreement talks and Europe is facing important policy choices on how to protect the names of products that have a link with a specific geographic place.

Join INTA’s experts from around the world including representatives from the European Commission; Hungarian IP Office; OHIM, Mexican Institute of Industrial Property, WIPO and WTO to gain insight into the economic benefits of Geographic indicators as well as brand owners’ strategies and potential benefits of association with a PGI or PDO.

Details on the educational program and networking opportunities will be available soon and registration will launch in September 2015 on the INTA website.

.eu

EUROPEAN UNION Proprietor of an Earlier CTM with Reputation in the

EU Can Act Against Later National MarksOn March 24, 2015, Advocate General (AG) Nils Wahl delivered his Opinion in Case C-125/14 [Iron & Smith Kft. v Unilever NV]. This case concerned a request for a prelim-inary ruling by the Court of Justice of the European Union (CJEU) as to the correct inter-pretation of Article 4(3) of Directive 2008/95/EC approximating the EU law relating to trade-marks (TMD).

Article 4(3) TMD allows the proprietor of an earlier Community Trade Mark (CTM) with rep-utation in the EU to act against later national marks, if the use of the latter is detrimental to or takes unfair advantage of the reputation of the earlier CTM.

Relying on one of its earlier CTMs, Unilever in-voked that provision in opposition proceedings against a Hungarian trademark application of Iron & Smith. The Hungarian Intellectual Property Office (HIPO) found that Unilever’s

CTM was well known in the UK and Italy, and that therefore it enjoyed a reputation in the EU. Although the opposing CTM was not well known, or not even known at all, in Hungary, the HIPO held that the opposed Hungarian application would take unfair advantage of Unilever’s CTM and refused it. Iron & Smith brought an appeal to the Budapest Municipal Court, which had doubts whether the condi-tions of Article 4(3) TMD were met and asked the CJEU for clarification.

In view of the unitary character of a CTM, AG Wahl opined that an earlier CTM need not be reputed in the country in which Article 4(3) TMD is relied upon]. The reputation in one EU country alone can be sufficient, provided that this territory constitutes a substantial part of the EU. However, in order to rely on Article 4(3) TMD in national proceedings, AG Wahl opined that unfair advantage can only occur if a “com-mercially pertinent proportion” of the relevant

national public establishes a link between the marks at issue. This is only possible if the earlier CTM is known by a weighty proportion of the public in that country where the dispute is pending. Otherwise, the national mark cannot damage the reputation of the earlier CTM. Ac-cording to AG Wahl, the proportion of the public that knows about the earlier CTM “need[s] not to be as high as that required for reputation.”

Contributor: Dr. Tobias Dolde and Philipp HofmannNoerr Alicante IP, S.L, Alicante, Spain

Verifier: Thomas MuddZeiner & Zeiner, Prague, Czech Republic

Mr. Mudd is Co-Chair and Mr. Dolde is a member of the INTA Bulletin Law & Practice—Europe & Central Asia Subcommittee.

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Law&Practice

UNITED STATES TTAB Finds PORNO JESUS DisparagingIn a precedential decision, the Trademark Trial and Appeal Board (TTAB) upheld a refusal under Section 2(a) of the Lanham Act on the grounds that PORNO JESUS for DVDs and video recordings “featuring music videos, adult themed content, glamour photography, and adult entertainment” may disparage Chris-tian-Americans. In re Matthew Beck, Serial No. 85/767,380 (TTAB Mar. 19, 2015).

The issues on appeal were refusals on grounds that the mark (a) consists of or comprises immoral or scandalous matter, and (b) may disparage or bring into contempt or disre-pute persons, institutions, beliefs or national symbols. The TTAB did not reach the scandal-ous refusal as it found the applied-for mark disparaging under the applicable two-part test: (1) what is the likely meaning of the matter in question, and (2) if the meaning refers to an identifiable person, institution, beliefs or national symbols, may the meaning be “disparaging to a substantial composite of the referenced group.”

As to the first prong of the test, the Board noted there was “no dispute” that Jesus refers to Jesus of Nazareth upon whom the Christian faith is based, and “porno” refers to pornog-raphy. In light of the evidence of record, the Board found that PORNO JESUS as a whole

meant “Jesus of Nazareth partaking of acts related to pornographic or sexually explicit materials.” When the mark was considered in connection with the DVDs and video record-ings listed in the application, the meaning was the same.

Turning to the second prong of the test, the Board found that the evidence showed that several Christian denominations oppose pornography and consider it “to be harmful and not in conformance with the tenets of Christianity.”

The applicant argued that Jesus is identi-fied with other religions such as Islam and Judaism, and there was no evidence showing that Jesus pointed uniquely to Christians. The Board ruled that this is not a requirement: “the mere fact that Jesus plays a role in religions other than Christianity does not diminish the potential for the mark PORNO JESUS to be disparaging … [and] it suggests that additional religious groups may be disparaged to some degree by the mark.”

In addition, the fact that there were third-party registrations incorporating the term JESUS for marks with some characteristics similar to the applicant’s mark does not bind the Board. Even if there were “‘administrative error … [,

that] does not mean that the agency must for-go applying the standard in all other cases.’” Those earlier registrations also did not cover pornographic materials.

The TTAB acknowledged there was evidence of record showing a sub-genre of Chris-tian-themed pornographic movies, but noted this sub-genre suggests that in general por-nographic material does not reflect Christian beliefs. Moreover, the applicant’s goods were not restricted to Christian-themed pornog-raphy, and the examining attorney was not required to show that the entirety or even the majority of Christian-Americans may be dis-paraged by the mark. The TTAB held that the examining attorney met the burden required: a substantial composite of Christian-Americans may be disparaged by the mark PORNO JESUS.

Contributor: Leigh Ann LindquistSughrue Mion, PLLC, Washington, D.C., USA

Verifier: Rose AuslanderCarter Ledyard & Milburn LLC, New York, New York USA

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

UNITED KINGDOM UKIPO Limits the Amount of Evidence That Can Be

Filed in Opposition and Cancellation ProceedingsThe UK Intellectual Property Office (UKIPO) has published Tribunal Practice Notice (TPN) 1/2015, which came into effect on April 30, 2015. This limits the amount of evidence that can be filed in trademark proceedings before the UKIPO without permission being obtained.

This change of practice has been introduced because of the volume of evidence filed by some parties in opposition and cancellation proceedings before the UKIPO. The TPN notes that in several recent cases, parties had filed over 1,000 pages of evidence, much of which was deemed to be irrelevant and unnecessary.

The TPN gives guidance on the types of evidence that, in most cases, is unlikely to be needed. For example, the TPN states that a company’s full annual report shouldn’t be filed

if only a few pages are needed, and that it is never appropriate to file copies of hundreds of Internet pages without a proper explanation of what they show.

Under the new practice, all evidence filed on or after April 30, 2015, must include a maximum of 300 pages, with this limit falling to 150 pages for evidence in reply. These limits do not include written submissions filed with evidence.

If a party wants to file more than the permitted number of pages of evidence, it must attend a Case Management Conference and persuade a hearing officer that evidence beyond the permitted limit is appropriate.

If a party ignores the permitted limits, the UKIPO may decide to exclude the evidence

filed or require the party to amend its evi-dence, and there could be severe cost conse-quences for the party ignoring the limits.

This change of practice should enable unnec-essary costs to be avoided for both the UKIPO and parties by keeping them from having to review irrelevant evidence.

Contributor: Mark HolahBird & Bird, London, UK

Verifier: Tom AlbertiniJ A Kemp, London, UK

Both are members of the INTA Bulletin Law & Practice—Europe & Central Asia Subcommittee.

May 15, 2015 Vol. 70 No. 920

Law&Practice

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Avoid Regrets Further Down the LineSettlement 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.

UNITED STATES Monster Truck Design Found to Be DistinctiveIn a precedential decision, the Trademark Trial and Appeal Board (Board) reversed the refusal of the U.S. Patent and Trademark Office (USPTO) to register a design mark on grounds that the design failed to function as a service mark. In re Frankish Enterprises, Ltd., Serial No. 85494703 (February 27, 2015) [precedential].

Frankish Enterprises, Ltd. (applicant), applied to register a design mark consisting of a “truck cab body in the design of a fanciful, prehistoric animal” for entertainment services in the na-ture of competing at motor sports events and monster truck exhibitions.

The USPTO refused registration of the mark, arguing that the proposed mark was trade dress, which is not inherently distinctive and would not be perceived as a source indicator for the services to identify and distinguish the applicant’s services from those of any other monster truck designs because “monster trucks normally appear in a wide variety of de-signs.” The USPTO also rejected the specimens of use on grounds that they included the words JURASSIC ATTACK and therefore disagreed with the drawing of the mark.

The Board stated that “it is settled that while trade dress in the nature of product design can never be inherently distinctive, product packaging trade dress and trade dress for services can be inherently distinctive.” In this case, the applicant was not seeking registration of its design as a product, but rather for services.

In next determining whether the applicant’s trade dress was in fact inherently distinctive,

the Board recited a four-part test to determine the inherent distinctiveness of trade dress that involved inquiring whether the trade dress is:

• A common basic shape or design;

• Unique or unusual in the particular field;

• A mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or

• Capable of creating a commercial impres-sion distinct from the accompanying words.

The Board noted that the elements of the test are merely different ways to ask whether the design, shape or combination of elements are so unique, unusual or unexpected in the mar-ket that one can assume without proof that it will automatically be perceived by customers as an indicator of origin.

The Board concluded that the applicant’s three-dimensional, fanciful prehistoric animal

design mark met the test for inherent distinc-tiveness and was unique and unusual in the monster truck field. As such, it would be “readi-ly perceived as identifying” the applicant’s monster truck services.

The Board also found the specimens of use acceptable because the three-dimensional design mark was distinctive, unique and creat-ed a commercial impression as an indication of origin separate and apart from the words JURASSIC ATTACK found in the specimens.

The Board reversed the failure to function refusal and the specimen refusal.

Contributor: Robert P. Felber, Jr.Waller Lansden Dortch & Davis, LLP, Nashville, Tennessee, USACo-Chair of the INTA Bulletin Law & Practice—United States & Canada Subcommittee

Verifier: Lisa IversonNeal & McDevitt, LLC, Northfield, Illinois, USA

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