INTABulletinThe Voice of the International Trademark Association

AssociationNewsAssociationNews

February 15, 2014 Vol. 69 No. 4

In This Issue

Law&PracticeBrazil 9European Union 9India 10, 11Serbia 11 Singapore 12United States 13, 14

FeaturesAre Registered Trademarks and 7 Designs Immune Against an Infringement Action?

AssociationNewsTrademark Office Profile: Tan Yih 1 San, Intellectual Property Office of Singapore

INTA and Other IP Associations 1 Comment on Implementing Regulations to PRC Trademark Law

Welcome New Members 2

Saul Lefkowitz Competitors 5 Get Grilled

Volunteer Spotlight

James Luo 6

Theo Yates 6

IPOS Chief Executive Tan Yih San

Trademark Office Profile: Tan Yih San, Chief Executive, Intellectual Property Office of Singapore

INTA Weighs In on Imple-menting Regulations to China Trademark LawMeeting the Demands of a

Booming IP MarketChief Executive Tan Yih San tells the INTA Bulletin what the Intellectual Property Office of Singapore (IPOS) is doing to meet the challenges associated with a 30 percent increase in trademark filings over the last four years, and how the Office is working with governments and industry to further estab-lish Singapore as an Asian “IP hub.”

What do you like most about working in IP?IP is the “blue ocean” industry in an increas-ingly globalized world. With IP, we hope to empower creators and innovators in busi-nesses as they seek to gain a competitive edge and venture out into the market. I am personally thrilled and humbled by the vast opportunities that we have here at IPOS to contribute to and be a part of this field.

What are the biggest challenges you face?Coping with the fast-growing number of appli-cations year on year for the last four years has proven to be a considerable but happy challenge. IPOS is committed to delivering quality and service excellence despite this in-crease in demand for IP services. The move

to expand our team of trademark examiners and simplify the registration process is a major undertaking aimed at ensuring greater efficiency and reducing pendency.

Are there particular changes to the trademark laws that you would like to see enacted, and is there any pending IP legis-lation that might help?We would do well to render IP legislation more accessible to business owners as they move across borders, through harmonization and simplification of trademark laws.

See “IPOS” on page 3

See “INTA Comments” on page 5

INTA submitted comments on February 7 to China’s State Council Legislative Affairs Office (SCLAO) congratulating the government on its third Trademark Law Revision, which will take effect on May 1, 2014, and offering recommendations to further clarify its draft Implementing Regulations for the law. The As-sociation was joined by several other organiza-tions in suggesting improvements that would provide more certainty for trademark owners.

INTA’s main recommendations include:

• Extending the proposed deadlines for sub-missions in order to take into consideration the time burden of the parties.

• Creating greater transparency in the op-position procedure given recent changes that have eliminated appeals of a negative opposition.

• Providing clear definitions for “serious” infringement for the purposes of administra-tive fines.

• Providing clear guidelines on determining “heavier fines” for large-scale or sustained infringements.

In addition, INTA’s comments encouraged clar-ifying the Implementing Regulations to more fully explain how Article 7 of the new Trade-mark Law Revision, which requires applicants for trademark registration to abide by the prin-ciple of “good faith,” will specifically address the issue of “bad faith” registrations.

The new law includes a general provision stating that trademark applications should be submitted in good faith, and expands upon sev-eral provisions relating to bad-faith registration. These include provisions targeting trademark agents who act in bad faith and applicants for marks that are identical or similar to an existing trademark when the applicant has had a “prior relationship” to the trademark owner. However, the Implementing Regulations fail to

February 15, 2014 Vol. 69 No. 42

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.© 2014 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, Barzano & Zanardo

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 StaffChief Executive Officer Etienne Sanz de Acedo

Director, Legal Resources & Communications James F. Bush

Managing Editor, News & Policy Eileen McDermott

Associate Editor, INTA Bulletin Joel L. Bromberg

Designer

Eric Mehlenbeck

INTA Officers & CounselPresident Mei-lan Stark, Fox Entertainment Group

President Elect J. Scott Evans, Adobe Systems Incorporated

Vice President Gabrielle Olsson Skalin, Inter IKEA Holding Services S.A.

Treasurer Joseph Ferretti, PepsiCo, Inc./ Frito-Lay, Inc.

Secretary Ronald Van Tuijl, JT International S.A.

Counsel David Fleming, Brinks Gilson & Lione

AAMHAS IP Consultant, Jakarta, Indonesia Abida IP Consulting, Cheshunt, Herts, UK Abida IP Consulting Ltd, Royston, UK ABP Patent Network AG, Zürich, Switzerland Adrian M Trioli Patent and Trade Mark Attorney, East Melbourne, VIC, Australia Advokatfirman ReklamJuridik AB, Stockholm, Sweden AIP Patent & Law Firm, Seoul, South Korea Akiyama & Associates, Tokyo, Japan AKRAN Intellectual Property, Rome, Italy Alacayir Law Firm, Istanbul, Turkey Altacit Global, Chennai, India Ananda Intellectual Property, Bangkok, Thailand Apisith & Alliance Ltd., Bangkok, Thailand Ashida & Kimura Patent Attorneys, Tokyo, Japan Ashurst LLP, Munich, Germany Asian Pacific International Patent & Trademark Office, Taipei, Taiwan Asian Paints Limited, Mumbai, India Asian Trademark Company, Ahmedabad City, Gujarat, India Axis Legal (Australia) Pty. Ltd., Surry Hills, NSW, Australia

Bayramoglu Law Offices LLC, Las Vegas, NV, USA Beijing Golden Bridge IP Agency Co,. Ltd, Beijing, China Beijing Knowkey Intellectual Property Agency, Beijing, China Beijing Yingke (Guangzhou) Law Firm, Guangzhou, China Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Berlin, Germany Blumenthal Richter & Sumet, Bangkok, Thailand BPE Solicitors LLP, Cheltenham, UK BrandIT GmbH, Zürich, Switzerland Bross & Partners, Hanoi, Vietnam BSkyB Group plc, Middlesex, UK Burns IP & Commercial, Melbourne, VIC, Australia Cabinet Christian Doucet Avocats, Paris, France Cabinet Fojou, Yaoundé, Cameroon Cahit Suluk IP Law Firm, Istanbul, Turkey CAPRI, Paris, France Cath Kidston Limited, London, UK China IPwell International Law Firm, Shanghai, China Clairvolex Knowledge Processes Pvt. Ltd., Gurgaon, Haryana, India Cloudigy Law PLLC, Mclean, VA, USA

Clyde & Co., Riyadh, Saudi Arabia Clyde & Co., Dar es Salaam, Tanzania CMS Hasche Sigle, Berlin, Germany Colin Ng & Partners LLP, Singapore Conkle & Olesten, Los Angeles, CA, USA Dai Tin & Associates Co. Ltd., Hanoi, Vietnam De Gaspari Osgnach S.r.l., Padova, Italy De Justo Legal, Madrid, Spain Delicato Vineyards, Napa, CA, USA Diaz Reus & Targ, LLP, Miami, FL, USA Dipcon AB, Jonsered, Sweden Dittmar & Indrenius, Attorneys Ltd, Helsinki, Finland ECCO Sko A/S, Bredebro, Denmark Eliezri Intellectual Property, Tel Aviv, Israel Escano Sarmiento & Partners Law Offices, Pasig City, Philippines Evergreen Valley Law Group, San Jose, CA, USA Ezratty-Farhi Law Firm, Bnei Brak, Israel f & e patent, Bergisch Gladbach, Germany Ferguson Enterprises, Inc., Newport News, VA, USA Fir Hill Consulting, Hampshire, UK Fiskars Corporation, Helsinki, Finland

Welcome New Members

3

AssociationNews

See “IPOS” on page 4

One problem my colleagues are trying to solve is in the area of smell marks, which face challenges in meeting the requirement of graphic representation. For a smell mark to be deemed acceptable for examination, the applicant must be able to represent the scent visually. It is difficult to accept applications where consistent, non-arbitrary and mean-ingful graphic representations of the marks cannot be produced. IPOS believes that the use of digital scent technology to create a dig-ital representation of a smell may be a useful consideration in the steps toward resolving this issue. The idea is still in the formative stages, and legislation may have to be amended when a viable solution is found.

What steps has the government taken in recent years to improve IP protection?Improving IP protection is an ongoing effort. International surveys have ranked Singapore’s IP regime as one of the best in the world. Singapore is ranked second in the world and top in Asia for having the best IP protection in the World Economic Forum’s Global Compet-itiveness Report 2013/14. The Political & Economic Risk Consultancy Report 2011 had similarly ranked Singapore top in Asia for our IP protection efforts. This business-friendly IP regime has bolstered the confidence of local and international companies, including Rolls-Royce, Procter & Gamble, Bayer, Nestlé, 3M and DHL, to choose Singapore as a location for investment in business and R&D.

To further boost IP protection efforts, Singa-pore convened an IP Steering Committee, chaired by Mr. Teo Ming Kian, Chairman of Me-diaCorp Pte. Ltd., to formulate plans to guide our IP developments. The committee has since consulted more than 200 IP professionals from more than 100 local and foreign compa-nies and organizations in our quest to build a better IP regime for Singapore.

Singapore is also developing IP dispute reso-lution capabilities, so that IP disputes can be brought here for expeditious and effective res-olution through litigation or alternative dispute resolution. To encourage the use of mediation, IPOS is working with WIPO’s Arbitration and Mediation Center to facilitate resolution of disputes arising from IPOS proceedings. The program has been a great success since its introduction in 2012.

What kinds of trends have you noticed in filings recently?There has been a healthy increase in the num-ber of trademark filings over the years, with applications (by class) rising to a new record of 39,671 in 2013 from a total of 30,481 in 2010. This translates to a 30 percent increase over the last four years.

What are the reasons for that trend, in your opinion?The surge in trademark filings signals a healthy confidence within the business sector in

Singapore’s growing importance as a business market. Companies recognize the value that trademark protection can provide, which in-cludes market share, licensing and franchising value, and even sales value.

Can you discuss any partnerships or events you’re involved with to help increase awareness about IP rights?IPOS is actively involved in the ASEAN Working Group on IP Cooperation (AWGIPC), which aims to drive the development of a business-friendly IP regime in the ASEAN region. Singapore believes that adopting a cooperative stance among the ASEAN nations by leveraging each one’s strengths and experiences will help to bolster the international IP regime as a whole while still respecting their diversity. Singapore is currently the chair of this collaborative committee, which involves all 10 heads of IP offices in the ASEAN region.

IPOS also works closely with WIPO on various IP initiatives, such as the enhancement of IP dispute-resolution capabilities and the running of regular workshops on IP systems and proce-dures to increase awareness about IP. Recent workshops include those on the Madrid and Hague systems, as well as one for regional journalists for the purpose of raising aware-ness on IP and its attendant issues in the media. IPOS will continue to work closely with WIPO to plan more workshops and initiatives to

Official Name: Intellectual Property Office of Singapore (IPOS)

Name of Head: Tan Yih San

Official Title: Chief Executive

Appointed: June 1, 2011

Location: Manulife Centre, Singapore

Position Within the Government: IPOS is a Statutory Board under the Ministry of Law.

Madrid Member? Yes.

Year of Accession: Madrid Protocol entered into force on October 31, 2000.

Number of Madrid Filings, 2013In 2013, 221 international applications were filed through Singapore as the office of origin. The number of International Regis-trations designating Singapore in 2013 was 8,864 applications (18,799 total classes), an increase of ca. 19% from 2012 (total classes increased ca. 20%).

Can nontraditional marks be registered? Yes. There were 180 applications for registration of nontraditional marks filed in 2013, which is almost a sixfold increase from 2012.

Which categories of nontraditional marks have been applied for? There were 75 color marks, 100 three-dimensional shape marks or

aspect-of-packaging marks, 4 sound marks and 1 movement mark.

Number of Trademark Examiners: As of Novemer 26, 2013, IPOS had 34 trademark examiners. The team is currently expanding.

Total Annual Trademark Filings, 2013: 21,245 applications (39,671 total classes).

Does the Office operate under a first-to-use or a first-to-file system? IPOS operates under a first-to-file system. Priority is officially established when the applicant first files for a trademark application in a country that is a member of the Paris Convention or the World Trade Organization. However, Singa-pore employs a first-to-use rule for obtaining trademark rights, meaning that the first person to use a mark in Singapore generally will have rights over a person who files a trademark application at a later date.

IPOS at-a-Glance

Trademark Office Profile: Intellectual Property Office of Singapore Continued from page 1

February 15, 2014 Vol. 69 No. 44

AssociationNewsinvolve more individuals in the IP ecosystem, such as the creative industries.

To promote IP awareness in Asia, IPOS has also organized two runs of IP Week @ SG—a premier annual, IP-centric event and nexus for IP thought leaders and industry experts to share and discuss IP trends, information and updates. The number of local and international attendees at the recent event in August 2013 tripled from 2012, signifying increased interest and awareness in IP. During the IP Week 2013 Gala Dinner, IPOS and WIPO inaugurated a WIPO-IPOS Innovation Award, which recog-nized top local corporate users of the Madrid System. A Memorandum of Understanding (MOU) was forged between IPOS and INTA at the week-long event to collaboratively further the development of projects and programs in the field of trademarks.

Are there any major trademark-related projects underway within the Office that you would like to highlight? Specifically, are there any major technology changes/projects in the works?IPOS is looking at rolling out an integrated IT system to streamline and harmonize common procedures across all registries. The new system seeks to improve operational efficiency, maximize turnaround time and provide cus-tomer-friendly and value-added services.

What advice or message do you have for trade-mark owners looking to expand into Singapore?Singapore provides a robust, efficient, stable and predictable environment for protection and exploitation of trademarks. With respect to enforcement, trademark owners have a range of remedies to choose from, such as the common-law doctrine of passing off, obtaining compensation via civil infringement actions,

or criminal prosecution with the assistance of the Singapore Police Force. Trademark owners may also seek border enforcement measures to prevent the importation of infringing goods.

Who from the Office will be attending the INTA Annual Meeting in Hong Kong? Why do you think it is an important event, and what do you hope to achieve there?We have been sending a team to participate in the INTA Annual Meeting since its inception. This great event provides an excellent platform for us to meet with our stakeholders across the world in one single location. We welcome the meeting in Hong Kong, as it is a recognition of the increased importance of the Asian market. We are certain that it will be yet another suc-cess, and hope that all our Asian counterparts will join us there. ■

Visit inta.org/perfectpartnership

Learn from colleagues and share best practices on how to maintain the perfect partnership with your existing clients.

Maintaining thePerfect Partnership

March 4–5 | New York, NY | New York Marriott Marquis

Tips to Strengthen Your Partnership with Your Clients

Join us in New York City for an intermediate-to-advanced–level program designed as a continuation of the very popular “Creating the Perfect Partnership Conference” that was previously offered in London and New York. Numerous in-house and outside practitioners are slated to give attendees guidance and share best practices to maintain the perfect partnership and keep clients returning for more.

Trademark Office Profile: Intellectual Property Office of Singapore Continued from page 3

5

AssociationNewsINTA Comments on Implementing Regulations Continued from page 1

On Saturday, February 8, law students gath-ered in courtrooms in Atlanta, Dallas, Chicago, New York and San Francisco for the regional round of INTA’s 23rd annual Saul Lefkowitz Moot Court Competition. The competition pro-vides students with the opportunity to develop their brief writing and oral advocacy skills around a mock case.

This particular case was heard before an ap-pellate court, which involves an entirely unique set of challenges for the students—most notably a “hot bench” of judges composed of INTA vol-unteers, who were more than willing to play the part. The judges helped to impart the “real-life” experience that law students gain through par-ticipation in moot court competitions.

Like real appellate benches, the judges were quick to interrupt the litigants—even during their opening remarks—and continuously pep-pered them with questions to keep them on their toes. Their questions dug deep, challeng-ing the students to think outside the box and to consider not only how this case could turn out in terms of precedent case law, but also how it could play out in real life.

For example, in the New York courtroom, the judges raised the issue of social media and how it is changing the landscape of trademark

law. This caught some students off guard, teaching them a valuable lesson: while the litigant’s chief goal is to win the case, the final decision may have a lasting impact on future cases, and this is always an important consid-eration for the court.

After each session, the judges deliberated and then provided the students with a personal, individualized critique that cov-ered presentation skills, interaction with the judges, court procedures and knowledge of the law. They also shared a wealth of advice—from performance and delivery tactics to the importance of “knowing the bench” and saying only what needs to be said to specific presentation tips for the appellate court. One judge even offered tips for how to arrange case notes on the podium.

The day ended with an awards ceremony at each of the five regional competitions,where awards were presented for best brief, best oral argument, and first, second and third place overall. INTA congratulates the Regional Award Winners and thanks all of the students and INTA members who participated.

The first and second place winners from each region will meet in Washington, D.C., on March 15 for the National Finals.

Saul Lefkowitz Competitors Get Grilled

Photo: Eric Aguayo (ericaguayophotography.com)

address how this good-faith clause will affect bad-faith registration on a practical level.

The period for public comment on the Imple-menting Regulations closed on February 10. INTA looks forward to seeing the final version

of the regulations, and to commenting on the judicial interpretations of the law, which are still being drafted. The Association is also working on comments to China’s Trademark Review and Adjudication Board rules, which are due on March 11.

China’s new trademark law is a major step forward and will help to ensure that trade-mark owners can effectively enforce and defend their rights, which will in turn protect consumers and promote fair and effective commerce. ■

Looking for case summaries and images from trade dress infringement decisions in more than 60 countries?Find it in the Trade Dress Image Library in INTA’s Global Trademark Research.

Library: http://www.inta.org/TradeDress

February 15, 2014 Vol. 69 No. 46

VolunteerSpotlight

Andrea AndersonHolland & Hart LLP, Boulder, Colorado, USAINTA Bulletin Association News Subcommittee

James Luo is the Managing Director of Lawjay Partners in Beijing, China, where he was recently named a “Top Ten IP Lawyer in Beijing”

by the Beijing Bar Association. James majored in English in college, and he holds numerous advanced degrees in IP law, including an LL.B. from Renmin University of China and an LL.M. from King’s College London, the University of London, where he also served as a visiting scholar. More recently, in 2004, he did post-graduate research in IP law at Franklin Pierce Law Center in Concord, New Hampshire, USA.

James’s practice involves litigation in several fields, including trademark, copyright, software and unfair competition law. His favorite area of practice, however, is criminal enforcement against counterfeiters.

Active in INTA since 2007, James chaired the China Subcommittee of INTA’s Anticounterfeit-ing Committee in 2010–2011. During his ten-ure James developed many enduring personal relationships with fellow subcommittee mem-bers. In addition to these, he feels that the most important and most gratifying aspect of his committee work with INTA was the securing of an amendment of China’s Trademark Law that will increase maximum statutory damages

to RMB 3 million from the previous limit of RMB 500,000, effective May 2014.

The most important issue facing most INTA members is, James feels, enforcement of their marks in China. He hopes that the Association will soon take up a comparative study of OEM liability in the United States, China and other countries.

James’s favorite trademark is COCA-COLA, /可口可乐, not just because he likes the way the beverage tastes but also because “the Chinese character trademark for Coca-Cola perfectly matches COCA-COLA phonetically and implies that the product is good-tasting.”

Outside of work, James’s interests include tennis and ice skating. He plans to take up golf soon. When he is not participating in one of these sports, he likes to catch up with his friends at a local pub.

Theo Yates, the owner of Yates IP in Ottawa, Ontario, Canada, has spent the past decade dealing with all aspects of protecting trademarks, designs and domain

names in Canada and abroad. A hands-on practitioner, he works closely with clients to achieve a keen understanding of the business behind their brands.

“Speaking with my clients about their specific strategies, their future goals and how trade-marks can play a supporting role is critical, especially with a clientele that ranges from in-ternational manufacturers to national retailers to a local chocolate shop,” Yates says. “That’s where it all starts.” The complex legal machi-nations simply follow.

Yates pursued a career in Geographic Informa-tion Systems before a part-time trademark and patent office job sparked his passion. “I discov-ered that I truly enjoyed the nature of the work and learning about the role trademarks play in protecting brands and brand identity,” he recalls. “And I quickly decided that a career working with brand owners was the right one for me.”

While he enjoys the challenge of guiding clients through myriad jurisdictional trademark laws and practices—including some unique to Canada—Yates welcomes efforts to increase harmonization of international trademark laws. He feels that “harmonization of international trademark laws may provide a more reason-able expectation of the scope of trademark rights and how the rights may be enforced across jurisdictions.”

An active INTA member, Yates credits the As-sociation with “bringing me out of my comfort zone” through Annual Meetings and profes-sional networking. He also touts the benefits of exposure to new issues and ideas—a function he furthers via INTA’s Emerging Issues—Limits on Trademark Rights Subcommittee. “This has been very educational for me professionally,” Yates says, “because we frequently are dealing with aspects of trademark law that do not come up in my day-to-day work.”

Yates cites LAND ROVER and Visa’s GO WORLD as favorite trademarks because they “create a go-anywhere, do-anything feeling”—one that mirrors his personal lifestyle.

Warm weather finds the Ottawa resident ca-noeing, camping and fishing with his wife, Lisa, and two daughters, Kaatje and Ophelia. Cold Canadian winters find the family hurtling down toboggan hills, ice skating and snow shoeing together. Yates, an avid home brewer, also squeezes in time to craft his own signature la-gers and ales to share with family and friends.

Barbara Barron KellyCorsearch|Wolters Kluwer, Chicago, Illinois, USACo-chair, INTA Bulletin Association News Subcommittee

7

FeaturesAre Registered Trademarks and Designs Immune Against an Infringement Action? A Comparative Analysis of the CJEU’s FCI and Celaya Decisions

In Fédération Cynologique Internationale v. Federación Canina Internacional de Perros de Pura Raza (Case C-561/11 (CJEU Feb. 21, 2013) (FCI), the Court of Justice of the European Union (CJEU) clarified, in a request for a preliminary ruling, that a senior Commu-nity Trade Mark (CTM) can be enforced against the use of an infringing junior CTM without the junior CTM’s having to be invalidated first. By this decision the CJEU applied to CTMs a rule that it had already established for Regis-tered Community Designs in the Celaya case (Celaya Emparanza y Galdos Internacional SA v. Proyectos Integrales de Balizamientos SL. Case C-488/10 (CJEU Feb. 16, 2012)).

In a 2010 decision, the Commercial Court of Alicante raised the question of whether

an infringement action against the use of a junior CTM could be brought only if the junior CTM was previously or simultaneously declared invalid. That court had already re-ferred to the CJEU a corresponding question in relation to Registered Community De-signs (see Salvador Ferrandis, “Door Closed to ‘Defensive’ Registration of Community Designs in Infringement Proceedings,” INTA Bulletin, vol. 68 no. 18, Oct. 1, 2013).

The question arose in light of a 1994 decision by the Supreme Court of Spain confirming the doctrine of immunidad registral, according to which the registration of a trademark protects said mark—in other words, makes it immune—against infringe-ment proceedings.

In FCI, the CJEU, following its decision in Cel-aya, took a formal and pragmatic approach. It held as follows:

1. Article 9(1) of the Community Trade Mark Regulation (CTMR) (Council

Regulation (EC) No. 207/2009) allows the trademark owner to prevent a third party from using the contested trade-mark without distinction, regardless of whether the third party has its own trademark registration.

2. The proceedings to invalidate a CTM and to prevent its use are two different proceedings with different objects, which exist side by side.

3. It would significantly weaken the senior CTM if the junior CTM had to be inval-idated (in a lengthy OHIM proceeding) before a court action for trademark infringement could be started.

The decision is convincing not only because of its result but also for another reason: For the imunidad registral doctrine to apply, the rights arising from the respective registra-tions would need to be capable not only of excluding junior rights holders from using

Martin ViefhuesJONAS Rechtsanwaltsgesellschaft mbH, Cologne, Germany INTA Bulletin Law & Practice—Europe & Central Asia Subcommittee

A picture might indeed be worth a thousand words, but there could be times when opting to use a logo rather than referring to a brand by name just isn’t worth the possible fallout. James Trigg and Harris Henderson (respectively of Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia, USA and Winston-Salem, North Carolina, USA) assess such risks in “Using Third-Party Logos in Down-loadable Applications, Games, and Other Online Materials,” the newest entry in INTA’s exclusive member service Industry Perspectives series. While there are not always clear rules, a developer can find guidance on where the proposed use of another party’s logo falls on the spectrum of risk.

Ensure that critical considerations are not overlooked. Take advantage of this valuable resource today.

Colorful Choice or Headache?

Visit www.inta.org /fairuse

See “Registered Trademarks” on page 8

February 15, 2014 Vol. 69 No. 48

Featuresspecific trademarks or designs but also of preventing senior rights holders from exclud-ing the (junior) trademark or design owners from using their registered rights.

This raises the question: Is there, or is there not, a positive right to use?

Article 19(1) of the Community Design Regu-lation (Council Regulation (EC) No. 6/2002) provides: “A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it.”

In contrast, Article 9(1) of the CTMR pro-vides: “A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade [(a) an identical mark for identical goods or services; (b) an identical or similar mark for identical or similar goods or services, where there is a likelihood of confusion of the public; or (c) an identical or similar mark for dissimilar goods or services, where the CTM has a reputation in the Community and where use of the other mark would take unfair advan-tage of, or be detrimental to, the distinctive character of the CTM].”

This difference in wording could well be inter-preted to mean that only the Community Design Regulation confers a positive right to use.

There is no real need to debate this issue here, however. Even if a trademark registra-tion did in fact confer a positive right to use, that would justify the owner’s own use and be

relevant in the context of the CJEU’s decision in FCI only if it was an incontestable right.

Registered Community DesignTo qualify for protection as a Registered Community Design, a design requires novelty and individual character. According to the concept of design law, there cannot be a second right in an identical design or a de-sign that confers the same overall impres-sion. If the junior design does not confer a sufficiently different overall impression (and is therefore infringing), it lacks individual character and therefore cannot be protected under design law.

The fact that the registration procedure for Registered Community Designs amounts to an essentially formal, expeditious check, which does not require any substantive examination for compliance with the require-ments for protection prior to registration and which does not provide for a phase during which the owner of an earlier-registered de-sign can oppose registration, does not affect the conceptual uniqueness of design rights.

In Celaya, the CJEU concluded that it was unnecessary to invalidate a junior Registered Community Design before prohibiting its use because of the lack of examination regard-ing novelty and originality and the lack of a possibility to oppose registration. The Court supported this conclusion by the distinc-tion that the Community Design Regulation makes between an infringement action relat-ing to a Registered Community Design and an application for a declaration of invalidity.

However, the different proceedings are not the cause of the system’s duality, but a con-sequence thereof.

Instead, it is the conceptual uniqueness of a design right that could confer a right to use said design. If the junior design lacks novelty or individual character, the junior design right does not actually exist. In this case, there is nothing that could justify its use and, thus, nothing that would have to be in-validated in a first step. The owner of the ju-nior design registration does not have a right to use the design, as the right did not come into existence, and the owner of the senior design registration does not need a right to use the design, as there is nobody who could prohibit the use (unless the prohibition was founded on a legal basis other than a senior design right—for example, a senior trade-mark right). It is this concept that allows the senior user to contest the use of the junior

design without first invalidating its registra-tion; the registration does not “immunize” the use of the design.

Community Trade MarkIn contrast to designs, trademarks do not re-quire novelty or individual character in com-parison to other trademarks. Trademarks are not conceptually unique. According to the concept of trademark law—at least, Commu-nity trademark law—there can be a second, identical trademark even for identical goods or services. Under European law, different owners can register identical trademarks and have them coexist. Because a prior right is not considered an absolute but only a relative ground of refusal, there is no ex officio examination of whether the same trademark already exists. OHIM will not step in by itself. It is up to the owner of the senior trademark to oppose the registration of a junior trademark, regardless of whether it is (just) confusingly similar or identical to the respective prior registration.

Without a conceptual uniqueness, a junior CTM does come into existence with regis-tration and—at the same time—into coexis-tence with the senior CTM. This requires a balance of interests: A right to prevent the use of the junior trademark would affect the junior trademark owner’s right to use its trademark, while the right to use the junior trademark would affect the senior trademark owner’s right to prevent third parties from using a conflicting mark.

As a fundamental rule of law, every owner of a right has to respect the rights of others. Such coexistence requires resolving a conflict between coexisting but contradictory posi-tions. Deciding in favor of the senior trade-mark, trademark law makes this valuation by applying the principle of priority. Senior rights are privileged. Although these principles were not expressly set out in FCI, they support the CJEU’s decision in that case.

It is the application of the fundamental rule that any right finds its limits in the rights of others, together with the principle of priority, that “encumbers” every trademark regis-tration and allows a senior user to contest the use of the junior trademark without first having to invalidate its registration. Prohib-iting the use of the junior trademark merely activates this “encumbrance” on the junior registration. Registration does not make a trademark immune. ■

Settlement and coexistence agree-ments 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 likeli-hood of recurring disagreements in the latest installment in the INTA Practi-tioners’ Checklist series, “Settlement & Coexistence Agreements,” by Arnold Ceballos, Pain & Ceballos LLP, Toronto, Canada, and Virginia Taylor, Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia, USA).

Are Registered Trademarks and Designs Immune? Continued from page 7

9

Law&PracticeBRAZIL INPI Extends Pilot Project on Mediation in Trademark Disputes

EUROPEAN UNION General Court Considers “Double Function”

of an Element in a Complex Trademark

Contributor: César D. CarvalhoGouvêa Vieira Advogados, Rio de Janeiro

Verifier: Rodrigo A. de Ouro Preto SantosOuro Preto Advogados, Rio de Janeiro

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

Contributor: Susanna HeurungKotitschke & Heurung Partnerschaft, Munich, Germany

Verifier: Ingrida Karina-BerzinaRaidla Lejins & Norcous, Riga, Latvia

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

As announced on January 8, 2014, on the homepage of the Instituto Nacional de Propriedade Industrial (INPI), the mediation pilot project instituted by the INPI last year (Resolution 84/2013) has been extended in-definitely. The project originally was scheduled for completion by the end of December 2013. Parties in mediation proceedings adminis-tered by the INPI under the project are exempt from the payment of administrative charges for processing the mediation requests.

The pilot project will benefit the ten first media-tion requests administered by the INPI in 2014.

The INPI will administer the mediation pro-ceedings in cases that involve solely trade-mark owners based or resident in Brazil. In cases involving at least one owner that is based abroad, the proceedings will be ad-ministered by the World Intellectual Property Organization (WIPO).

In addition, for the time being, the parties to the mediation, whether it is administered by

the BPTO or WIPO, are exempt from INPI fees for analysis of the settlement and issuance of a technical opinion. When the INPI issues its 2014 schedule of charges, however, fees for this service will be charged when the media-tion is administered by WIPO.

It is important to note that the INPI is not a party to the mediation proceedings and any settlement that may be executed by the parties is not binding upon it. However, before the conclusion of the mediation proceedings, the mediator can, with the authorization of the parties, submit the settlement to the INPI in order to verify its feasibility. The INPI will issue a technical opinion on the feasibility of the settlement and, if necessary, note whether any changes are required (Normative Instruc-tions 23/2013, 28/2013).

The mediation service for disputes involv-ing intellectual property rights was created by the INPI, in collaboration with WIPO, on July 15, 2013. It aims at resolving disputes expeditiously by helping the parties to identify

flexible, out-of-court solutions and to reach mutually satisfactory settlements.

Trademark owners in the course of opposition, appeal or nullity administrative proceedings may seek mediation. The examination of the trademark application will remain stayed for 90 days, to allow the parties the opportunity to conclude the mediation proceedings. One extension, for 90 days, is allowed.

The General Court of the European Union recently ruled on the likelihood of confusion between a figurative mark and a word mark where the letter “S” could be perceived as be-longing either to the letter group “IBS” or to the word “Solutions.” IBSolution GmbH v. OHIM–IBS AB, Case T-533/12 (GC Nov. 7, 2013).

In July 2009, IBSolution GmbH (Applicant) applied for the registration as a Community trade mark (CTM) of the word mark IBSolu-tion, to cover various services in Classes 35, 41 and 42. The application was opposed based on the figurative mark IBS (see below), registered for services in the same classes. The OHIM Opposition Division upheld the op-position, and the Applicant’s appeal was dis-missed. In particular, the OHIM Second Board of Appeal relied on the fact that the services concerned were similar or identical and the most distinctive element of both marks, IBS, was identical as well.

In response, the Applicant filed an action before the General Court, seeking to reverse the Board of Appeal’s decision. It claimed that the marks concerned were not similar owing to a lack of phonetic and conceptual similarity and a low degree of visual similarity. The Applicant argued that the Board of Appeal had incorrectly duplicated the letter “S” of the mark IBSolution by dividing the mark into two elements—“IBS” and “Solution.”

The General Court confirmed the finding of the Board of Appeal. It could not be ruled out, said the court, that consumers would pronounce the mark applied for by duplicating the consonant “S” insofar as this letter could be perceived as belonging to the letter group “IBS” and as being the first letter of the word “Solution.” Therefore, the marks were similar from a visual and phonetic point of view.

The court conceded that the Board of Appeal had incorrectly assumed conceptual similarity between the marks, as the letter groups “IB” and “IBS” have no meaning and the word “Solution” appears only in the contested mark. However, it held that this mistake did not invalidate the Board’s find-ing regarding similarity, as the marks were similar both visually and phonetically.

Consequently, the General Court found that there was a likelihood of confusion between the marks, and it upheld the Board of Ap-peal’s decision.

At first sight, the court’s decision may seem surprising. However, it is well established in EU case law that the relevant public will perceive a mark as a whole and will not proceed to analyze its various details. Therefore, in the present case, the contested mark IBSolution could not artificially be separated into the ele-ments “IB” and Solution.” Moreover, the letters “IBS” were quite prominent in the contested mark, so that there was a danger of confusion between that mark and the earlier mark IBS.

February 15, 2014 Vol. 69 No. 410

Law&PracticeINDIA Onus on Owner to Rebut Ground of Non-use in Rectification Proceedings

Contributor: Jatin TrivediY.J Trivedi & Co., Ahmedabad

Verifier: Disha DewanRK Dewan & Co., Mumbai

Both are members of the INTA Bulletin Law & Practice—Asia-Pacific Subcommittee

Learn more about INTA events, including international roundtables, networking receptions, e-Learning, academic competitions and more, at www.inta.org/programsDates 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.March 4–5 Maintaining the Perfect Partnership New York, NY USAMarch 7 Annual Meeting early registration ends! Register onlineMarch 15 Saul Lefkowitz Moot Court Competition—National Finals Washington, DC, USAMarch 17–20 U.S. Roundtables Various U.S. Cities April 10 INTA/USPTO Roundtables Indianapolis, IN USAApril 23 INTA/USPTO Roundtables Philadelphia, PA USAMay 10–14 136th Annual Meeting Hong Kong SAR, ChinaJune 2–13 U.S. Roundtables Various U.S. CitiesJune 16–27 TMA Roundtables Various U.S. CitiesSeptember 2–12 TMA Roundtables Various U.S. CitiesSeptember 18–19 Internet Conference San Francisco, CA USAOctober 12–15 Trademark Administrators and Practitioners Conference Arlington, VA USAOctober 20–31 U.S. Roundtables Various U.S. CitiesNovember 11–15 Leadership Meeting Phoenix, AZ USA

Recently, the Intellectual Property Appellate Board (IPAB) rendered a decision that clarified the issue of onus of proof of use in rectifica-tion proceedings. M/s ITC Ltd v. M/s. Cadbury Schweppes Overseas Ltd, ORA/25, 26, 28, and 29/2005/TM/KOL (IPAB Oct. 31, 2013).

M/s ITC Limited (Applicant) had filed four applications for removal of the trademark CADBURY’S CHOCOLATE ECLAIRS, registered by M/s. Cadbury Schweppes Overseas Ltd (Respondent) in Class 30. All four matters were heard together based on similarity of issues. The Applicant filed third-party affidavits to prove the ground of non-use, but the Re-spondent filed only the registration certificates obtained in various countries.

It is a well-settled principle in Indian law that the onus in rectification proceedings lies on

the applicant to establish the grounds on which rectification is sought. The onus may be shifted, however, in the course of the hearing. (See Indo-Pharma Pharmaceutical Works Pvt. Ltd. v. Farbenfabriken Buyer Ag, (1975) R.P.C. 545 (remarks of Chief Justice Kantawala).) Here, the IPAB held that the onus was on the Respondent to prove use of its mark, and proof of registration in other countries alone was insufficient. The IPAB further held that if, as in this case, the respondent does not appear to rebut the ground of non-use, the tribunal may conclude that the respondent has not used the mark even after several years of registration and may order the mark cancelled for non-use.

It should be noted that the Respondent did not argue the matter on the merits, as it was in the process of withdrawing its registered mark.

This case clarifies the general rule that the initial onus is on the applicant but once discharged by the applicant it shifts to the respondent, and the respondent must produce documentary evidence to support its use of its mark. Registration certificates from other countries are not sufficient.

11

Law&PracticeINDIA

IPAB Removes Well-Known Mark, Holds Law Should Not Be Stretched to Indulge in Trade Restraint

Contributors: Sharabh Shrivastava and Swati BhanotChadha & Chadha, New Delhi

Verifier: Gaurav MiglaniWorld Intellec, New Delhi

In M/s Nirmal Industrial Control Pvt. Ltd. v. M/s Nirma Chemical Works Pvt. Ltd. (ORA/133/2010/TM/AMD (IPAB Sept. 13, 2013)), the Intellectual Property Appellate Board (IPAB) removed the registered trade-mark NIRMA, owned by M/s Nirma Chemical Works Pvt. Ltd. (Respondent), based on a can-cellation petition filed by M/s Nirmal Industrial Controls Pvt. Ltd. (Applicant). In its decision the IPAB condemned both the excessively mo-nopolistic attitude of the Respondent and the absolutist position taken by the Registry.

The Applicant filed the petition after its ap-plication for registration of its mark NIRMAL was turned down by the Registry, mainly on the ground of the mark’s deceptive similarity to the Respondent’s registered trademark NIRMA in Class 6. The Applicant asserted that its mark had been in continuous use since 1973, whereas the Respondent had applied for registration of its mark as a pro-posed mark, for a proposed product category, metal products, in 1984. It further argued that despite the fact that more than five

years had elapsed since the impugned mark was entered in the register, the Respondent had not used its mark for the goods covered under Class 6 until the date of filing the can-cellation petition and in fact had used its reg-istration only to prevent rightful proprietors from acquiring valuable statutory protection for their marks. The Respondent contended that the mark NIRMA was well known in the market and registered in all classes under the Trade Marks Act. It further argued that its mark was registered in 100 countries and its goods sold through 2 million retailers to more than 400 million consumers.

The IPAB, after carefully scrutinizing the doc-uments and arguments put forth by both par-ties, observed that despite the Respondent’s efforts there was no credible evidence to prove use of the impugned mark in respect of the goods for which it was registered in Class 6. It further opined that even though NIRMA might be a well-known mark, the trademark law should not be stretched to indulge in trade restraint. Therefore, the IPAB held that the

Registry had erred in holding that “NIRMAL” was deceptively similar to “NIRMA.”

Consequently, the Board allowed the petition and ordered that the registered trademark NIRMA in Class 6 be removed from the register.

In addition to condemning the monopolistic attitude of the Respondent, the IPAB raised questions about the conduct and knowledge of the concerned official at the Registry. It pointedly advised the Registry not to act as a hand-holding emissary for proprietors of well-known marks, but instead to stay focused on the merits of each case.

SERBIA U.S. Companies Not Required to Deposit Security for Litigation Costs

Contributor: Gordana Pavlovic Cabinet Pavlovic, Brussels, Belgium

Verifier: Ian StarrD. Young & Co., Southampton, UK

In a decision handed down in March 2013, the Commercial Appellate Court of Serbia rec-ognized the right of a U.S. company to sue in Serbia without depositing security for litigation costs, even when the company does not have a presence in Serbia.

On November 9, 2010, Skechers, a famous U.S. producer of sneakers, sued Safran, a Serbian company that imported and sold sneakers with a design similar to Skechers’ SHAPE-UPS sneakers, for trademark and copy-right infringement and unfair competition.

Safran requested that Skechers deposit security for litigation costs. It argued that Skechers did not have a presence in Serbia and there was a risk that the company would not reimburse Safran for its litigation costs if Safran prevailed in the suit. The United States is not a signatory to the 1954 Hague Conven-tion on Civil Procedure, which provides for free access to courts.

Skechers refused to deposit the requested security. It argued that under the 1881 Treaty

on Commerce between Serbia and the United States, which provides that Serbian and U.S. citizens are to have full reciprocity and access to the courts, it was not required to deposit money as security for litigation costs. Safran countered that the Treaty was no longer appli-cable because there was no factual reciprocity.

The Serbian Commercial Court (the first instance court) refused Safran’s request. On appeal, the Commercial Appellate Court remanded the matter to the Commercial Court and instructed it to seek an opinion from the Ministry of Justice. The Ministry of Justice con-firmed that the Treaty was in force but it held that there was no factual reciprocity between the United States and Serbia because Serbian citizens living in the United States are required to deposit security for litigation costs when suing in a state in which they do not reside.

The Commercial Court ordered Skechers to deposit security for litigation costs. Skechers then appealed. The company argued that Serbia and the United States are bound to respect the 1881 Treaty until it is revoked

via a special procedure provided by the Treaty. Skechers argued, further, that the United States does respect the Treaty; in support of its position it cited Kolovrat v. Or-egon, 366 U.S. 187 (1961), a U.S. Supreme Court decision explicitly holding that the Treaty must be respected.

The Commercial Appellate Court refused Sa-fran’s request for security for litigation costs. The Court’s decision is final.

Although judgments and decisions in Ser-bia do not set precedents, they do serve as guidance for judges for future cases. The above decision affirmed that the 1881 Treaty on Commerce between the United States and Serbia is in force and must be honored until it is terminated or suspended through a specially prescribed procedure.

February 15, 2014 Vol. 69 No. 412

Law&Practice

Without proper forethought and thorough planning, a cease and desist letter can create more problems than it was ever intended to solve. See the new INTA Practitioner’s Checklist on Cease and Desist Letters for help in plotting the best course of action. This addition to the members-only series of helpful training tools in Global Trademark Resources — by Kevin Collette, Ryan Swanson & Cleveland, PLLC, Seattle, Washington, USA — joins six other checklists on key tasks and functions.

Ensure that critical considerations are not overlooked.Take advantage of this valuable resource today.

Before You Send That Cease and Desist Letter

Visit www.inta.org /ceaseanddesist

SINGAPORE Court of Appeal Differentiates Opposition and

Infringement Proceedings

Contributor: Kho Shu Yan (Qiu Shuyan)Gateway Law Corporation, SingaporeINTA Bulletin Law & Practice—Asia-Pacific Subcommittee

Verifier: Sheena JacobATMD Bird & Bird LLP, Singapore

In November 2013, the Singapore Court of Appeal, in a detailed reasoned decision in Staywell Hospitality Group Pty Ltd v. Starwood Hotels & Resorts Worldwide, Inc. ([2013] SGCA 65 (Nov. 29, 2013)), differentiated opposition proceedings from infringement proceedings.

On March 3, 2008, Staywell Hospitality Group Pty Ltd filed an application to regis-ter a series of two marks that included the name PARK REGIS in Singapore, in respect of, inter alia, marketing and hospitality services. Sheraton International, Inc. and Starwood Hotels & Resorts Worldwide, Inc. (collectively, the Starwood group), which cur-rently own and operate 32 ST REGIS hotels worldwide, opposed the application.

On the issue of similarity and confusion, the Principal Assistant Registrar of Trade Marks found that the competing marks and services were similar and, accordingly, that there was a likelihood of confusion among the public as to the source of Staywell’s services. Overall, the opposition therefore succeeded.

On appeal, the Singapore High Court took a different approach and reversed the Registry’s decision. Despite finding that the compet-ing marks sounded alike and perhaps were conceptually similar, the High Court ultimately held that these marks would not be confused. In coming to its conclusion, the Court found that Staywell had taken steps to “differentiate its services” from those of Starwood, and in particular noted that the parties operated in different service categories--Starwood used its ST REGIS mark in 6-star luxury hotels, while Staywell operated 4-star business hotels. The High Court observed that the evidence did not reveal any indication that Starwood had any intention of moving into the 4-star business hotels segment, in which the PARK REGIS mark operated.

On final appeal, the Court of Appeal consid-ered at length the concept of notional fair uses of the mark applied for. It queried what would be the situation if the 4-star PARK REGIS hotels decided to move into the 6-star segment, where the ST REGIS hotels were op-erating. The Court, for the first time, explicitly

recognized that opposition proceedings were different from infringement proceedings, in that in the former the court must have regard to the full range of actual and notional uses of the competing marks.

The Court of Appeal concluded that in this case there was a sufficient likelihood of confu-sion by reason of the similarity of the compet-ing marks and the covered services. There-fore, it allowed the appeal, and the Starwood group’s opposition to Staywell’s registration of the mark PARK REGIS succeeded.

This decision makes clear the test to be ap-plied in determining likelihood of confusion in opposition proceedings in Singapore.

13

Law&PracticeUNITED STATES TTAB Finds HOLISTIC Merely Descriptive of Cat Food

Contributor: William F. Wilson Waller Lansden Dortch & Davis, Nashville, Tennessee

Verifier: Louise ArnottNeal & McDevitt, Chicago, Illinois

The Trademark Trial and Appeal Board (TTAB or Board) found that the mark HOLISTIC was merely descriptive under Section 2(e)(1) of the Trademark Act, affirming the examining attorney’s refusal to register HOLISTIC for “cat food” in Class 31. In re Midwestern Pet Foods, Inc., Serial No. 85128946 (T.T.A.B. Nov. 13, 2013) (not precedential). The TTAB based its decision on evidence demonstrating that the word HOLISTIC described an important feature of the applicant’s cat food, namely, it “nour-shi[es] the whole cat.”

Applicant Midwestern Pet Foods, Inc. (Mid-western) asserted that HOLISTIC was not descriptive but rather suggestive because the term had varied definitions such that it did not immediately describe a certain character-istic of cat food. Instead, it “convey[ed] [Mid-western’s] ability to provide healthy, healthful foods that aim to keep your whole cat in good shape” and “connot[ed] a sophisticated level of pet food formulation.” Highlighting Midwestern’s website, the examining attorney contended that HOLISTIC described a signifi-cant characteristic of the applicant’s cat food. Specifically, the website described Mid-western’s “holistic approach to nutrition” by providing ingredients that “nourish the whole cat.” Third-party registrations also illustrated that HOLISTIC was a commonly used term in the cat food industry.

According to the TTAB, HOLISTIC “immediately inform[ed] the customer” that Midwestern’s cat food “nourish[ed] the whole cat.” The ex-amples of third-party registrations presented by the examining attorney demonstrated sufficient use in the cat food industry for the Board to find that the mark was descriptive for cat food.

After refusing to disclaim HOLISTIC, Midwest-ern also argued that EARTHBORN HOLISTIC, which it had registered over five years previ-ously as a trademark for dog food, constituted a unitary expression, while reasoning that the terms had opposite meanings and were “suggestive of a new age lifestyle.” The TTAB, however, held that “if the elements are so merged together that they cannot be regarded as separable elements, the mark is a single unitary mark and not a composite mark and no disclaimer is necessary.” In re EBS Data Processing, Inc., 212 U.S.P.Q. 964, 966 (T.T.A.B. 1981). Both words, HOLISTIC and EARTHBORN, retained their separate mean-ings and were not “so merged together” that they “cancel[ed] one another out.” Therefore, the descriptive meaning of HOLISTIC was not replaced by a new and combined meaning.

Midwestern further contended that the unitary aspects of EARTHBORN HOLISTIC had been recognized and that consistent treat-

ment should be applied for cat food without disclaiming HOLISTIC. The TTAB found that “ownership of an incontestable registration does not give [an] applicant a right to register the same or similar mark for different goods or services, even if they are closely related to the goods or services set forth in the incon-testable registration.” In re Best Software Inc., 63 U.S.P.Q.2d 1109, 1113 (T.T.A.B. 2002). While dog food and cat food are in the same category as pet foods, the TTAB found them to be different products.

This case highlights a common misconcep-tion among brand owners in expanding a company’s product line. There is no statutory right to register an incontestable trademark for additional and/or different goods and services. A registered mark is incontestable only in the form registered and for the goods and services claimed. Here, the Board recog-nized that although dog food and cat food are similar, they are distinct products; therefore, it could treat the contested mark as separate from and unrelated to the registered mark.

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

Visit www.inta.org/Cancellations

February 15, 2014 Vol. 69 No. 414

Law&PracticeUNITED STATES

TTAB Accepts Applicant’s Conditional Amendment to Narrow Its Identification of GoodsIn a precedential decision, the Trademark Trial and Appeal Board (TTAB or Board) granted a motion by applicant Stryker Corpo-ration (Stryker) seeking a conditional amend-ment to narrow its identification of goods notwithstanding the objection of opposer Johnson & Johnson (J&J). Johnson & Johnson v. Stryker Corp., Opposition No. 91209134 (T.T.A.B. Dec. 5, 2013).

J&J opposed Stryker’s application based on an alleged likelihood of confusion between Stryker’s applied-for mark MICROFX, for use with “surgical instruments,” and J&J’s registered trademark MICROFIX, for use with “suture anchors.” Stryker sought to narrow its identification of goods, which J&J contested, by conditionally stating its willingness to accept judgment as to its broader identification of goods. Stryker did not obtain J&J’s consent for such amendment, but instead obtained the consent of Microflex Corporation, which opposed Stryker’s application in a separate proceeding. In determining whether to accept a contested amendment to an identification of goods, the TTAB requires certain conditions,

including the applicant’s consent to the entry of judgment on the grounds for opposition with respect to the broader identification of goods or services as published. The principal question before the TTAB was whether Stryker met such condition.

In this regard, Stryker made seemingly inconsistent statements. In its initial motion papers, Stryker conditioned its acceptance of judgment as to the broader identification of goods on the TTAB’s grant of registration. As it does not grant or issue registrations, the TTAB assumed that Stryker meant to say that the condition was the Board’s grant of judgment in Stryker’s favor. However, in its reply brief, Stryker conditioned its acceptance of judg-ment as to the broader identification of goods on the Board’s acceptance of the amended identification and, if not granted, requested to be heard at trial on both its broader identifica-tion and its proposed narrowed identification.

Given certain expressions in Stryker’s reply brief to the effect that it intended to obviate any doubt and facilitate the resolution of the

other opposition to the application in question, the TTAB reconciled the foregoing inconsis-tencies and understood Stryker’s position to be that if the proposed amendment was accepted, Stryker would accept judgment against it on the broader range of goods. Con-sequently, Stryker’s motion was granted and the TTAB accepted the amendment to narrow its identification of goods. Judgment in favor of J&J was entered with respect to the mark as applied to the goods covered by the broader description, except as amended, and the Board confirmed that the instant case would proceed to trial based on Stryker’s amended identification of goods.

Contributor: Ivan G. MarreroPietrantoni Mendez & Alvarez LLC, San Juan, Puerto Rico

Verifier: Jessica Godell BahrRe: Sources USA, Chicago, Illinois Both are members of the INTA Bulletin Law & Practice—United States & Canada Subcommittee

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