BulletinAssociation Continues Fight Against Counterfeiting in 2008

The Voice of the International Trademark Association July 15, 2008 Vol. 63 No. 13

Following the Fourth Global Congress on Com-bating Counterfeiting in Dubai earlier this year, INTA has continued to promote anticounterfeit-ing initiatives around the world.

Key Anticounterfeiting Conference in Brussels

On May 13, the Eu-ropean Commission’s Directorate General for the Internal Market organized a high-level Conference on Counter-feiting and Piracy in Brussels with members of the European Parliament and major stakehold-ers. Participants discussed the most important aspects of counterfeiting and piracy and ex-plored means to enhance the fight against those practices. INTA President Elect Richard Heath (Unilever plc, lower photo) spoke as part of the event’s first panel.

The Commission indicated that this is not a one-time event but should be the starting point of long-term strategy mobilizing both industry and public authorities to jointly combat counterfeiting and piracy. An exhibit organized by a number of associations—includ-ing INTA—showcased counter-feited and pirated goods and was the center of attention during cof-fee breaks (upper photo).

In the United States, Federal and State Legislation Advances

As the second session of the 110th U.S. Con-gress progresses, legislation to support the U.S. Government’s approach to fighting counterfeit-ing and piracy is moving forward. In the House of Representatives, a bill on “Prioritizing Re-sources and Organization for Intellectual Prop-erty Act of 2007” (H.R. 4279) overwhelmingly passed with a vote of 410–11. This bill seeks to improve IP protection and enhances the capaci-ty for enforcement and coordination activities.

INTA has been fully engaged in this process, providing the House with written testimony

and meeting with com-mittee staff to recommend provisions for inclusion in the bills. INTA has en-dorsed an approach calling for collaborative interna-tional enforcement efforts, enhanced civil and crimi-nal penalties, and the ad-dition of “exportation” of counterfeit products to the law’s prohibitions. Fur-ther, INTA has been seek-

ing a bar against the transshipment of coun-terfeits through Free Trade Zones. The current focus is on the Senate, with the goal of passing legislation before the session concludes.

At the U.S. state level, activity continues with work towards introducing legislation based on the INTA Model Anti-Counterfeiting legisla-tion. Legislation has passed in Virginia and Florida that increases penalties for trademark infringement and for possession of counterfeit

goods.

Canadian Event on IP Crime

On June 24–26, INTERPOL and the Royal Canadian Mount-ed Police, in partnership with Underwriters Laboratories, held the 2008 International Law En-forcement IP Crime Conference in Halifax, Nova Scotia, Canada. The conference attracted more than 300 enforcement govern-

ment agencies and industry representatives from around the world. Speakers and attendees discussed best practices in effective IP crime programs and customs enforcement. Case studies on successful government partnerships on international counterfeiting cases were also presented. Mark Mutterperl, of Fulbright & Jaworski LLP and chair of the North America Subcommittee of INTA’s Anti-Counterfeiting and Enforcement Committee (ACEC), and Michael Manson, of Smart & Biggar and mem-ber of the ACEC’s North America Subcommit-tee, spoke on managing IP crime prosecutions. Also attending was Candice Li, INTA External Relations Manager, Anticounterfeiting.

2 AssociAtion newsFast Answers on New ADR Hotline

INTA Bulletin Board

Member SpotlightF. Peter MüllerAmanda Samuel

Europe Update

INTA’s New Latin America Council Meets in Berlin

5 FeAtures

Protection of Shapes Under Indian Law

Protection of Fictional Characters and Celebrities in the European Union

8 LAw & PrActiceBAHRAINNew Grace Period for Responding to Industrial Property Official Actions

CANADAIntention to Resume Use Cannot Excuse Non-Use in Summary Cancellation Proceedings

CHILEChilean Supreme Court Accepts First Annulment Appeal in a Trademark Matter

COLOMBIANotorious But Suggestive Marks Provide Limited Protection

GERMANYNew Decision Puts Internet Auctions on Notice

LIBYATrademark Office Initiates New Procedure for Authentication of Documents

SYRIAIsrael Boycott Declaration No Longer Required

UNITED ARAB EMIRATES60-Day Period to Submit Power of Attorney for Trademark Applications

UNITED STATES Rebuttable Presumption Against Fraud When Application Is Amended Before Publication

IN THIS ISSUE

Representing Trademark Owners Since 1878July 15, 20082

INTA’s Alternative Dispute Resolution (ADR) Committee is pleased to present the ADR Hotline, an innovative and free resource now available to all Association members through the INTA website.

Many companies have disputes around the world, ranging from oppositions or cancella-tion actions to civil litigation. Given the escalating cost of litigation, information relating to the ADR alternatives in a specific country can be an very useful tool for companies and the trademark practitioners assisting them. The ADR Hotline is designed to fill this need.

To use the ADR Hotline, simply go to the INTA website (www.inta.org), click on the ADR button, followed by the ADR Hotline link; then scroll down and click on the geo-graphic region of interest. This brings up a list of seasoned trademark practitioners in that region who have volunteered to provide 30 minutes of free consultation to assist with ques-tions about available ADR alternatives. You can contact the mentor by phone or by email. These volunteers are grouped by North America, South Asia, Africa, Europe and Central Asia, East Asia and the Pacific, and Latin America and the Caribbean. Each mentor has a minimum of 10 years of trademark experience and has established experience in ADR. Many of them are also members of INTA’s Panel of Neutrals.

Additional information relating to ADR resources by region will be added to the ADR Hotline portal in the months to come. The ADR Committee welcomes new volunteers who meet the qualifications and are willing to donate their time to the ADR Hotline. The ques-tionnaire and instruc-tions for submitting your application are contained in the ADR Hotline page on the INTA website.

INTA Bulletin BoardCami Dawson Boyd has joined Friedman & Feiger in Dallas, Texas, USA, as a partner and as chair of the intellectual property department.

Martin Ekelund, formerly with Inter IKEA Holding Services S.A. in Brussels, Belgium, has joined ESAB Group in Gothenburg, Sweden, as senior IP counsel.

Stephen J. Kontos and Maureen T. Shannon have joined the Bloomfield Hills, Michi-gan, USA, office of Rader, Fishman and Grauer, PLLC as associates.

Tiffany Trunko has been named assistant general counsel of Pfizer Inc. in New York City.

Zürcher, Montoya & Zürcher, the IP department of Zürcher Odio & Raven, has an-nounced that it will be known as Zürcher Law. The firm is in San José, Costa Rica.

INTA BulleTIN COMMITTEETo contact a member of the INTA Bulletin Committee, send an email to the managing editor at bulletin@inta.org.

ChairKay Rickelman, Spoor & Fisher

Vice ChairJanice Housey, Latimer, Mayberry & Matthews

Feature Articles: Members, Benefits & ServicesMary Donovan, Donovan & Yee LLPJoan Pinaire, Realogy Corp.

Feature Articles: Policy & PracticeGuy Heath, NabarroMona Lee, DW Partners

Law & Practice: AmericasDaphne Maravei, Blake, Cassels & Graydon LLPWalter Palmer, Pinheiro Palmer Advogados

Law & Practice: Asia–PacificConnie Carnabuci, Freshfields Bruckhaus Deringer

Law & Practice: Europe & Central AsiaSusie Arnesen, Sandel, Loje & WallbergVanessa Bouchara, Bouchara & Associes

Law & Practice: Middle East & AfricaStephen Goldberg, Spoor & Fisher

INTA BulleTIN STAFFExecutive Director Alan C. Drewsen

Director, Publishing Randi Mustello

Managing Editor, INTA BulletinJames F. Bush

Associate Editor, INTA BulletinJoel L. Bromberg

Designer Jesse Riggle

oFFiCErS & CounSELPresidentRhonda Steele, Mars, Incorporated

President ElectRichard Heath, Unilever P.L.C.

Vice PresidentHeather Steinmeyer, WellPoint, Inc.

Vice PresidentGerhard Bauer, Daimler AG

TreasurerGregg Marrazzo, Kimberly-Clark Corporation

SecretaryToe Su Aung, BATMark Ltd.

CounselD. Peter Harvey, Harvey Siskind LLP

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.

© 2008 International Trademark Association

Fast Answers on New ADR Hotline

By: Molly Buck richard, richard Law Group, Dallas, texas, usA, and ray Geraldson, Pattishall, McAuliffe, newbury, Hilliard & Geraldson LLP,

chicago, illinois, usA. Both are members of the ADr committee

A comprehensive guide to Trademark Cancellations is now available!

INTA’s newest online publication, Trademark Cancellations, provides searchable information on trademark cancellation practice and procedure in 100 jurisdictions worldwide. Available exclusively to members at no additional cost, the database offers a clear, concise and practical overview of the availability of cancellation proceedings, applicable grounds, the procedures to be followed, the venue for bringing such proceedings, representation, time scales and estimated costs, as well as the rights of appeal.

Visit www.INTA.ORG/GO/INFOPUB to start taking

advantage of this and all of inTA’s online resources today!

AssociAtion news

www.inta.org 3Vol. 63, No. 13

F. Peter Müller, German and European patent and trademark attorney and mediator, is a partner with the German IP law firm Müller Schupfner (offices in Munich and Hamburg). Pat-ent and trademark law probably run in his blood, as he is the third generation of Müllers at the firm. Peter studied electrical engineering in Munich and Lund (Sweden). After briefly considering a career in business consulting, he decided to follow in the family footsteps, completing the necessary legal studies at the University of Hagen, where he later also obtained his degree in mediation.

His first trademark assignment—which he still vividly recalls—consisted of trying to attain a Class 12 registration for the word mark TOP STEEL, for winter tires with steel reinforcements. By virtue of his patent knowledge, Peter was able to convince the judges that a winter tire has various steel inlays and that qualities differ substantially, thus preventing the all-too-likely mere descriptive-ness refusal.

Peter’s involvement with INTA started when he attended the 1996 Annual Meeting in San Diego. Since then he has served the organization in various positions. From 1998 to 2007, he was a member of the ADR Committee, which he chaired during the 2006–2007 term. Currently, he is devoting his time to the INTA Bulletin Committee. Peter feels that his career has benefited a lot from his involvement with INTA, not only by facilitating contact with people from all over the world (many

of whom he has become very good friends with over time), but also by providing an outstanding opportunity to enhance his capabilities in teambuilding, project management and leadership. He describes his work on the ADR Committee as an “eye-opener with respect to cultural differences in negotiating and handling disputes.”

In his free time, Peter enjoys mountains as well as various modes of transportation: “I love hiking up the Bavarian mountains, snow-boarding down the Bavarian mountains, driving an American HARLEY-DAVIDSON motorcycle through the Bavarian mountains and flying a CESSNA airplane over the Bavarian mountains.”

Being asked to name one thing people don’t (yet) know about him, he replied that most people are at present unaware of the fact that he and his wife are expecting a second daughter—a state of ignorance sure to be altered upon publication of this Member Spotlight.

By: Jan Gerd Mietzel, doctorate student, university of Düsseldorf, Germany, intA Bulletin Features–Members, Benefits & Services Subcommittee

Amanda Samuel is part of the intellectual property team at Colgate-Palmolive Company in New York City, where she oversees trademark and copyright issues involving the company’s oral care products.

Amanda was introduced to the world of trademarks when she began her legal career at Weil, Gotshal and Manges LLP in 1997. Her mentors at Weil, Gotshal and her work on transactional matters involving brands convinced her of her strong interest in trademarks—and she decided to point her career in that direction.

In 2002, Amanda joined Colgate-Palmolive, where she met Bret Parker (now with Wyeth and chair of the Emerging Issues Committee). Bret, a strong proponent of INTA, ensured that Aman-da accompanied him to her first Annual Meeting in Washington, DC, only two months after starting at Colgate.

She found that first meeting to be somewhat overwhelming, but that did not stop her from attending future INTA events. Amanda believes INTA provides an excellent opportunity for in-house counsel to meet with local outside counsel and to address business issues. At INTA meetings, she also forges ties with other in-house counsel; these relationships are an invaluable asset to resolve

disputes in an efficient and fair manner.Amanda brought this spirit to her work on the Membership Committee, where she coordinated two receptions for the young practi-

tioners of INTA, to introduce younger trademark lawyers to each other and to the Association. She now works on the Regular Members Committee, where she will help develop surveys regarding in-house compensation, staffing, benchmarks and the like.

Reaching out to others and learning from and working with them are vital to Amanda. She is not one to sit back and watch the world go by, and she demonstrates this in all aspects of her work and life. Amanda loves to travel to far-off regions of the world. Her favorite destinations to date include Ethiopia and Thailand, as well as a trip to Cuba that included salsa dance and percussion lessons!

Amanda also hits the ground running—literally. She has two New York City marathons under her belt and is training for her third.In the world of trademarks, Amanda is hopeful that countries will eventually reach greater harmony in terms of their laws. Working with

a multinational company, she must contend daily with complexities arising from regional markets and she looks forward to the day when the world might present a more global marketplace.

By: Marie Lussier, chitiz Pathak, toronto, ontario, canada, intA Bulletin Features–Members, Benefits & Services Subcommittee

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LE BRAZILNon-Conventional Marks: Why Not Protect Them in Brazil?Please note: The presentation and debate will be in Portuguese.

Tuesday, September 2, 2008 2:00 p.m. – 5:00 p.m.

Location:Offices of Dannemann SiemsenRua Marquês de Olinda, 70Rio de Janeiro RJ

Guest Speaker:Representatives from the Brazilian Patent and Trademark OfficeRepresentatives from Brazilian associations of the industrial property area

Moderators:José Antonio B.L. Faria Correa, Dannemann SiemsenAntonella Carminatti, Carminatti Schulz

Fee: R$ 80,00 / per personRegistration and Information:

by email: sleis@dannemann.com.brby fax:+55 21 2553 1812

INTA Hosts EU/US IPR Stakeholders Working Group Meeting in BerlinINTA hosted a meeting of the EU/US IPR Working Group in Berlin on May 16. These meetings are organized twice a year by the European Commission and the U.S. Department of Commerce to bring together European and American stakeholders to discuss the EU/US IPR En-forcement Action Strategy, and to seek input on future transatlantic efforts to build enforcement of IPR in third countries. Co-chaired by Luc Devigne (European Commission, Directorate General for Trade) and Wayne Paugh (U.S. Department of Commerce), the meeting brought together some 50 representatives of industry, INTA members and U.S. and European trade associations.

European Commission Officials Attend INTA Annual Meeting in BerlinLuc Devigne, Head of Unit for Intellectual Property, Government Pro-curement at DG TRADE, and Alvydas Stancikas, Head of Unit for En-forcement of Industrial and Intellectual Property Rights, DG MARKT, attended INTA’s Annual Meeting in Berlin on May 20. Both participat-ed in meetings of the Geographical Indications, Parallel Imports and Anticounterfeiting and Enforcement Committees, and held meetings with committee chairs, members and INTA staff.

INTA Meets with DG SANCOIn April, INTA Europe Representative Christina Sleszynska and INTA volunteer Geert Glas, of Allen & Overy LLP in Brussels, met with Eli-ana Garces-Tolon, in charge of digital and information society in the cabinet of EU Consumer Protection Commissioner Kuneva. They dis-cussed Internet-related issues of particular interest to INTA, such as the increasing availability of counterfeits over the Internet and fraud tactics such as phishing, cybersquatting and others that are concerns for trademark owners but also increasingly risks for Internet users.

Association Responds to Consultation on Combating Counterfeit MedicinesIn May, INTA submitted comments to a public consultation regarding a proposal for combating counterfeit medicines for human use. Pre-pared by the Anticounterfeiting and Enforcement Committee, Parallel Imports Committee and the Legislation and Regulation Committee’s Pharmaceutical Subcommittee, the Association’s comments ad-dressed the definition of “market authorization holder” and issues about imported medicines and transshipment.

INTA Attends Second SME IP Handbook Project MeetingIn June, Ms. Sleszynska and INTA Assistant Europe Representa-tive Milesh Gordhandas attended the second meeting of the SME IP Handbook Project, part of the European Commission’s Entrepre-neurship and Innovation Programme. The handbook will be targeted at companies from the textile, clothing, leather, footwear and furni-ture sectors. INTA is a member of the project’s Advisory Committee.

OHIM Launches New WebsiteThe Office for Harmonization in the Internal Market (OHIM) launched its new website on July 1. The revamped version is intended to pro-vide users with easier access to trademark and design registration tools, and the site will make basic information more accessible for new users who are unfamiliar with the Office’s processes. The Of-fice notes that the new website does not imply any change to the electronic tools themselves, though new versions of CTM and RCD e-filing are expected to be introduced in early 2009.

EP Adopts Resolution on Anniversary of Customs UnionThe European Parliament recently adopted a Resolution on the 40th Anniversary of the EU Customs Union, welcoming the progress achieved in the establishment of the Customs Union and reiterating the Parliament’s support for implementation of a common European Customs Strategy beyond 2013.

France Assumes EU Presidency Slovenia handed over the Presidency of the EU to France on July 1. During its six-month leadership role, Slovenia oversaw numerous issues affecting intellectual property rights, including the Anti-Coun-terfeiting Trade Agreement (ACTA), the accession of Ukraine into the World Trade Organization, discussions with Korea on IP rights as part of its ongoing EU Free Trade Agreement negotiations, and a high-level trade and economic dialogue with China. France is expected to continue to pursue negotiations on ACTA and on Free Trade Agree-ments dossiers.

For more information on European policy news of importance to trademark owners, see the monthly Europe update on www.inta.org, or contact inTA Europe representative Christina Sleszyn-ska at csleszynska@inta.org.

inTA’s new Latin America Council Meets in BerlinOn May 19, 2008, at INTA’s 130th Annual Meeting in Berlin, Ger-many, the Association’s Latin America Council held its inaugural meeting. The Council was recently formed, following recommen-dations from the 2007 Presidential Task Force on Latin America led by INTA Treasurer Gregg Marrazzo, of Kimberly Clark Corpora-tion.

The Council will help INTA meet its goals in Latin America by bringing greater coordination to the numerous committee projects and will serve as a forum for interaction between INTA’s Officers and regional leaders.

For the 2008-2009 term, the Council will be chaired by Iris Quadrio, of Marval, O’Farrell & Mairal in Buenos Aires. Other members of the Council include representatives of committees in both the Policy Development and Advocacy (PDA) and Education, Information & Services (EIS) Groups, Association staff and Laura Cruz, INTA External Relations Manager for Latin America.

The Council will meet at the Annual and Leadership Meetings.

euroPe uPDAte

www.inta.org 5Vol. 63, No. 13

Protection of Shapes Under Indian Law

The definition of “mark” under the Indian Trade Marks Act, 1999, includes the shape of goods. However, the scope of protection of shape marks is unclear, as statutory protection for shapes of goods was introduced in 2003.

Certain cases decided before the Act came into force have set the trend for interesting times ahead in the development of jurispru-dence on the protection of shape marks under trademark law in India. The legal dilemma in this regard is created by the availabil-ity of overlapping theories of protection under patent, design and trademark law in relation to the shape of goods.

Where a shape is useful and exclusively forms part of a new prod-uct, it may be protected as a utility patent for a term of 20 years. In such cases, the shape may not be registered as a trademark in view of specific exclusions under Section 9 of the Act. These exclusions preclude registration of a shape as a trademark if the shape is neces-sary to obtain a technical result or results from the nature of the goods themselves or gives substantial value to the goods.

As these factors also bear directly on the distinctiveness of the shape, a case for passing off may also not be made in respect of such a shape, even if the shape has acquired a reputation through exclusive use as a result of the monopoly conferred by the grant of patent. The reason for this is that as a matter of law, it may be determined that such a product cannot be manufactured or repre-sented in any other form except for the shape in question. Thus, such a shape is not able to serve as a source identifier. This possible conclusion is based only on argument, as this theory has not been tested in a court of law and hence is an open issue.

The question that is likely to provide a more interesting debate is whether the shape of goods may be protected under the principles of design law or trademark law. What makes this issue even more interesting in India is the fact that the definition of “design” under the Designs Act, 2000, excludes a trademark. This debate may be settled by reference to a decision of the Delhi High Court, which—though pronounced before the Act came into force—provides some assistance on the seemingly overlapping protection under the en-actments relating to designs and trademarks. In Corning Inc. & Ors. V. Raj Kumar Garg & Ors., 2004 (28) PTC 257, the single judge of the Delhi High Court (the highest court in the state of Delhi) clarified the fundamental distinction between a trademark and a design:

[A] “trademark” signals to the mind, the source or identity of the producer/manufacturer of the article, whereas a “de-sign” appeals to the eye and attracts the consumer/purchaser. A “trademark” may also be attractive and appealing to the eye but it should be directly relatable to the producer/manufactur-er of the goods whereas the “design” may be merely appealing or attractive to the eye and need not give any indication to the consumer/purchaser about the identity of the manufacturer or producer of the article.” (emphasis supplied)

The court also held that a design protects only the features of shape and configuration. This distinction is significant because, in view of the inclusion of shapes in the definition of “trademarks” under the Act, it may be concluded that whereas trademark law protects the shape of goods, design law merely protects the features of such shapes.

With regard to the issue of distinctiveness, there is no case law

relating specifically to shape marks. However, the pronouncements on get-up or product packaging or trade dress (collectively, “trade dress”) may provide guidance on the path that the courts are likely to take when faced with such an issue. It has been consistently held that trade dress cannot be inherently distinctive, and while a claim of passing off is available, even in respect of an unregistered de-sign, the plaintiff claiming passing off has to prove that the trade dress has acquired secondary meaning or goodwill or reputation (collectively, “reputation”) in the market in relation to the trade dress. Such reputation need not be based on use in India alone but may also be in the form of transborder reputation of a trademark that has traveled into India. Such cases have also indicated that the amount of evidence that is required to establish reputation in rela-tion to a shape mark is likely to be more than that which is required to demonstrate reputation of a word mark.

In view of the foregoing, the basic principles for protection of shape marks in India may be summarized as follows:

• Shapes are protected under trademark law in India.• Shapes are not likely to be considered inherently distinctive.• The amount of evidence required to establish the reputation of

a shape mark is likely to be more than is required in the case of a word mark.

• In order to prove likelihood of confusion or passing off, the entire trade dress of the competing products, including word marks used in relation thereto, is likely to be given weight.

We await the further development of jurisprudence in this sphere of the law.

By: Abhishek Malhotra, DsK Legal, new Delhi, india

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FeAtures

Representing Trademark Owners Since 1878July 15, 20086

Trademark Administrators Conference

october 12 – 15, 2008Arlington, Virginia, USAinTA’s Trademark Administrators Conference will bring together

non-attorney trademark professionals from around the world

Last year, attendees from more than 30 countries came together to discuss the issues most important to trademark administrators and paralegals. Join your colleagues at this year’s Trademark Administrators Conference to take part in the comprehensive, practical and timely educational sessions that reach out to all experience levels.

Topics for Discussion Include:• Internet Hot Topics and Website Resources • Marketing, Brand Identity and Re-Branding • Worldwide Clearance • New TTAB Rules and the Impact on Your Job • Non-Traditional Trademark Filings • Strategies for Protecting Designs • Current Developments in the Global Counterfeit Landscape • Review of Emerging Issues Around the World

Visit www.inta.org/go/tmaconference2008 for more information. Register by September 12, 2008 to take advantage of the Early Bird Savings!

One of the most valuable assets in today’s entertainment industries is the established characters that audiences throughout the world have come to recognize.

In the context of IP protection, “real-life” celebrities and fictional characters from book or movie franchises have a lot in common. For both, traditional IP law still seems to struggle with establishing an international standard of protection. Where a system of protect-ing the economic value of either celebrities or fictional characters has been established, it is usually through the adaptation of rights that were not originally conceived of as serving the entertainment industry’s commercial exploitation rights.

A full overview of all IP rights available for this purpose is beyond the scope of this article. Instead, this article will focus on trademark law. Still, it has to be borne in mind that in the protection of fic-tional characters, national copyright and unfair competition law will come into play, just as the right to publicity will be important in protecting celebrities.

Trademark law, however, provides a number of key advantag-es—in particular, the temporally unlimited protection it may pro-vide. Thus, while copyright in characters such as Sherlock Holmes and Conan the Barbarian has fallen into the public domain, their respective Community trade marks (CTMs) are still in full force. Also, proving the chain of title for a registered trademark often is significantly easier than for a copyright owned by a community of heirs. Finally, for simple terms that may not be subject to copy-right, such as characters’ names, obtaining a registered trademark may be the only viable way of protection (see e.g. UK Trade Marks Registry decision O-391-03, excluding the possibility of obtaining copyright protection for the name “Nellie the Elephant”).

While obtaining a relevant trademark within the EU may be a relatively easy process, not every use of a character’s name or like-ness by either the owner or a third party is considered use as a trade-

Protection of Fictional Characters and Celebrities in the European Union

By: Jan-Peter ewert, unverzagt von Have, Hamburg, Germany mark. Thus, the greatest challenge to trademark protection often arises after the registration process.

Registration proceedings for fictional characters or celebrities usually are quite straightforward, but certain absolute grounds for refusal have to be borne in mind. Surprisingly enough, in register-ing CTMs, OHIM has in the past shown more leniency than have some national European trademark offices.

For example, in the classic TARZAN trademark case, the English Court of Appeal refused to grant trademark protection for the term TARZAN in Class 9 in respect of films and magnetic tape record-ings and in Class 28 in respect of games, toys, playthings, and gym-nastics and sporting articles ([1970] RPC 450). The court held that “Tarzan” could no longer be regarded as an invented word but had passed into the language. Therefore, the word Tarzan was held not to be registrable because it referred directly to the subject matter of the goods for which it was to be registered.

The England and Wales Court of Appeal later ([1999] RPC 567) applied the same reasoning to the application for several trademarks related to famous entertainer Elvis Presley, even denying a registra-tion of the term ELVIS for soap. The court held that to market those goods under the mark ELVIS would obviously seek to evoke the name and memory of Elvis Presley; but it would seek to do so as descriptive of a popular hero, not as distinctive of the connection between the soap and the proprietor of the mark.

On a similar notion, German courts have repeatedly held that a famous character from actual or literary history cannot be registered for goods (such as books or films) that may directly deal with this classic character, but may very well be registered for other goods, such as soap (see e.g. German Federal Patent Court [FPC], Case No. 28 W (pat) 44/07—JESSE JAMES; German Federal Court of Justice [FCJ], Case No. I ZB 19/00—WINNETOU). The German courts also name other iconic characters such as Mary Stuart, Don Quixote and Sherlock Holmes in this context, arguing that such marks are clearly descriptive regarding a book or film’s content. This

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FeAtures

www.inta.org �Vol. 63, No. 13

means that a trademark application in Class 9, 16 or 41 would face absolute grounds for refusal.

In contrast, OHIM has readily registered CTMs such as TAR-ZAN (CTM Reg. 1117183), ELVIS PRESLEY (CTM Reg. 4406385), JESSE JAMES (CTM Reg. 3412401), WINNETOU (CTM Reg. 2735017) and SHERLOCK HOLMES (CTM Reg. 1263342) for books, films and related goods.

It should be noted that even German courts consider only the names of truly famous characters as being descriptive in nature. No such limitation applies to the registration of rather unknown char-acters as trademarks (see FPC, Case No. 32 W (pat) 33/06—“Percy Stuart”). However, the German courts’ restrictive jurisdiction also extends to a character’s visual representation. Thus, the application for a photograph of famous actress Marlene Dietrich was rejected for all types of goods that might deal directly with the depicted person (FPC, Case No. 29 W (pat) 147/03).

As for the general registrability of a person’s name, the European Court of Justice (Case C-404/02—Nichols) has held that even very common personal names may be registered as trademarks. In this context, it should be remembered that under European law, such a trademark generally cannot be used to prevent another person of the same name from using his or her name in commerce (see Article 6.1.a. of the EC Trademarks Directive and Article 12(a) of the CTM Regulation). However, where no such bona fide right in the personal name exists, a trademark based on a famous ce-lebrity’s name may enjoy a significant scope of protection against remotely similar trademarks, as shown in the conflict between the trademarks BORIS BECKER and BORIS (FPC, Case No. 24 W (pat) 243/95).

Once a trademark is registered, the owner is faced with the sec-ond challenge: enforcing it against third parties. After all, the CTM courts responsible for deciding cases dealing with the infringement and revocation of CTMs are national courts, which generally fol-

low their respective national jurisdiction regarding protection of characters and celebrities.

Where classic characters from actual or literary history are to be exploited, it makes sense to make certain alterations from their originals. Interestingly, in developing the animated feature film Mu-lan, The Walt Disney Corporation chose not to use the name of the historical figure Hua Mulan, for whom the heroine was loosely based, but rather substituted the fictional name Fa Mulan. It failed, however, to file a timely application for this trademark, which led to a series of conflicts with third parties that had applied for the trade-mark FA MULAN in anticipation of the film’s release (see OHIM Case No. R 1187/2000-2 of August 7, 2002).

Furthermore, newly invented characters generally do not suffer the same critical review as classic cultural icons do, as the German and British trademark registrations for HARRY POTTER show (trademarks DE 30012566.6 and UK 2206369). In general, the earlier a trademark is applied for and the less popular the character is at the time the application is filed, the easier the trademark will be to obtain, because at that point the trademark will not be con-sidered descriptive to the general public.

Looking at recent unpublished trademark office decisions, a turn-ing point occurs when a character becomes the subject of an entry in the Wikipedia online encyclopedia, for Wikipedia seems to have become an unofficial resource for many trademark office officials in determining whether the general public will understand a term as being descriptive in a certain sense.

Finally, it must be borne in mind that a trademark is only part of a protective strategy. In some jurisdictions, it may provide relatively little protection when compared to other IP rights such as the right to publicity, and copyright or unfair competition law. Registering a trademark is always a significant way, however, to visibly stake one’s claim in an IP asset and add yet another weapon to the IP attorney’s arsenal.

Join experts from INTA and the World Intellectual Property Organi-zation (WIPO) at this one-day, advanced-level conference, as they discuss topics that go beyond the normal scope of trademark profes-sionals but still have a large impact on their practice. WIPO officials and prominent industry and law firm practitioners will examine these evolving intellectual property rights, including concerns unique to each and issues that arise when the two areas overlap.

Reasons to attend this forum:• Develop an integrated strategy for the timely acquisition, mainte-

nance and management of trademark and design registrations.

• Acquire valuable skills and receive practical tips on finding the best route to registration.

• Learn about the latest developments at WIPO and future perspec-tives of the Madrid System.

• Network with WIPO experts as well as colleagues and trademark and design experts from around the world.

FOR MORE INFORMATION, VISIT www.INTA.ORG/GO/INTA-wIPOCONFERENCE2008.

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TRADEMARkS AND DESIGNSSEptEmBER 24, 2008BRuSSElS, BElgium

LOOkING BEYOND THEBORDER OF TRADEMARkS

FeAtures

Representing Trademark Owners Since 1878July 15, 20088

On April 16, 2008, the Chilean Supreme Court accepted the first annulment appeal (Recurso de Casación en el Fondo) in a trademark matter. This new type of appeal first became possible when the Chilean Trademark Law (Law No. 19,039 of January 24, 1991) was modified in 2005. It can be used when a decision by the second instance Industrial Property Court contains errors of law that sub-stantially affect the dispositive portion of the decision. Before 2005, it was possible to appeal to the Supreme Court in trademark cases only via a complaint appeal, which required proof of the existence of serious abuses by the second instance judges.

An application by Angel Custodio to register the trademark IMAGINACION to cover “educational and training services; train-ing for medium-level technician services; continuing education courses for teachers; consultancy services related to educational is-sues; organization of exhibitions with educational and cultural pur-poses; organization of contests, conferences and congresses” in Class 41 was published in January 2003. The Chilean company Correa y Correa Consultores opposed the application based on its trade-mark registration for IMAGINACCION CORREA y CORREA CONSULTORES covering “services related to the organization of cultural events” in Class 41.

The Head of Industrial Property Department acknowledged that the two marks in conflict were similar and that the services were closely related. The opposition was only partially accepted, and the trademark IMAGINACION was accepted for registration with re-spect to “educational and training services; training for medium-level technician services; continuing education courses for teachers; consultancy services related to educational issues.”

CHILE

Contributor: Francisco J. Silva, Silva & Cia, Santiago; Verifier: Cristóbal somarriva, Mackenna, irarrázaval, cuchacovich & Paz, santiago. Both are members of the intA Bulletin Law & Practice–Americas subcommittee

Chilean Supreme Court Accepts First Annulment Appeal in a Trademark MatterOn appeal, the Industrial Property Court confirmed the first in-

stance decision in its entirety.Correa y Correa Consultores then filed an annulment appeal be-

fore the Supreme Court, arguing that the second instance decision contained errors of law that substantially affected the decision. Spe-cifically, the company argued that the judges, without being autho-rized by law, distinguished between the Class 41 services covered by the application, accepting the mark for some of them and rejecting the mark for others. As the services covered by the two marks were almost the same, Correa y Correa Consultores argued that it would be impossible for Mr. Custodio to use the mark for some of the services and not for the others.

The Supreme Court granted the appeal and reversed the partial registration of the trademark IMAGINACION. It found finding that “the prohibition established by law … refers to the confusion that might be produced in relation to previously registered or filed trademarks that cover products, services, or commercial establish-ments belonging to same class or related classes, that is, the law es-tablishes an impediment considering only the class related, without allowing or authorizing the judge, when deciding to reject or allow a mark to registration, to distinguish between the products or ser-vices that are covered by a class.” Consequently, the second instance judges were prohibited from distinguishing between the services in Class 41 in order to partially register the mark.

On April 4, 2008, Canada’s Federal Court of Appeal (FCA) released its decision in Scott Paper Ltd. v. Canada (Attorney General) (2008 FCA 129). The decision arises from a summary cancellation pro-ceeding initiated under Section 45 of the Canadian Trade-marks Act. The decision is significant because the FCA expressly over-turned prior jurisprudence that allowed trademark owners to main-tain registrations that they had not been using in situations where the owners filed clear evidence of an intent to resume use in the near future.

The FCA decision came almost six years to the day after the Reg-istrar of Trade-Marks first asked Scott Paper to file evidence of use in Canada of its registered trademark VANITY between April 29, 2002, and April 29, 1999. Scott Paper was unable to file such evi-dence because it had not used the mark for 13 years prior to the initiation of the summary cancellation proceedings.

While special circumstances may be, in certain cases, sufficient to excuse non-use, Scott Paper did not provide any reasons for the long period in which the VANITY mark had not been used in Canada. Despite this, the Registrar declined to expunge the mark, because Scott Paper had filed evidence confirming that it had planned to begin use of the mark even before the summary cancellation notice

CANADAIntention to Resume Use Cannot Excuse Non-Use in Summary Cancellation Proceedings

contributor: Justine whitehead, stikeman elliott LLP, ottawa, ontario; Veri-fier: Amalia Trister, Goodmans LLP, Toronto, Ontario. Both are members of the

intA Bulletin Law & Practice–Americas subcommittee

had been received, and had, in fact, subsequently begun using the mark. Relying on previous jurisprudence from the Federal Court of Appeal, the Registrar found that this intention to resume use con-stituted special circumstances excusing the non-use.

In confirming that the Registrar had erred in coming to this de-termination, the FCA noted that special circumstances can excuse non-use only where they refer to the actual reason for non-use. It therefore follows that any intention to resume use cannot constitute special circumstances, as such information is irrelevant to the rea-sons for the prior non-use, even where there is a good faith inten-tion to resume use.

The FCA decision affirms that the general rule in Canadian sum-mary cancellation proceedings is that absence of use is penalized by expungement. While there is an exception to this general rule where the absence of use is due to special circumstances, such circum-stances would not be found in most cases of non-use.

LAw & PrActice

www.inta.org �Vol. 63, No. 13

On February 22, 2008, the Colombian Trademark Office deter-mined that under certain circumstances notorious marks may not benefit from an absolute or wide scope of protection.

Productos Familia S.A. filed an opposition against the trademark EN FAMILIA, applied for by Colombia Movil S.A. to distinguish services in Class 38. In its opposition, Productos Familia alleged that its mark FAMILIA was famous, prestigious and widely known throughout the country in relation to various hygiene products and would be harmed by the registration of the mark EN FAMILIA. These allegations were supported by evidence consisting of sales statistics, market studies and public opinion polls, which were pro-vided to the Trademark Office for the evaluation of the notoriety of the mark.

After reviewing the evidence, the Trademark Office declared the mark FAMILIA notorious, especially when used to distinguish toi-let paper, napkins, paper towels and paper handkerchiefs.

In analyzing the likelihood of confusion, the Trademark Of-

contributor: Felipe rubio, Humberto rubio & co. Lawyers, Bogotá, intA Bulletin Law & Practice–Americas subcommittee;

Verifier: Emilio Ferrero, Cavelier Abogados, Bogotá

notorious But Suggestive Marks Provide Limited Protection

COLOMBIA

A new procedure regarding the authentication of some documents required for filing trademark applications has been applied by the Libyan Trademark Office with effect from June 1, 2008.

Documents such as the Power of Attorney and the extract of the entry of the applicant company in the Commercial Register should now be authenticated by the Libyan Ministry of Foreign Affairs, after being legalized by the Libyan consulate in the applicant’s home country.

Previously, it was only required to legalize the Power of Attorney and the extract up to the Libyan consulate in the applicant’s home country.

LIBYATrademark office initiates new Procedure for Authentication of Documents

contributor: Hala shamlawi, Abu-Ghazaleh intellectual Property Amman, Jordan; Verifier: Mohammad Abu-Ghazaleh,

Abu-Ghazaleh intellectual Property, tripoli, Libya

On June 9, 2008, the Directorate of Industrial Property (DIP) at the Bahraini Ministry of Industry and Commerce issued a com-muniqué, announcing that the grace period for responding to In-dustrial Property Office notifications pertaining to opposition and refusal cases will be 90 days from the date the official notification is received.

The communiqué, which targeted all industrial property agents in Bahrain, also states that an extra day will be allowed if the con-cluding day of the grace period falls on a weekend or an official holiday. Requests for extensions of time will result in a maximum extension of 30 days after the expiry of the initial 90 days.

BAHRAIN

source: communiqué issued by the Directorate of industrial Property, Bahraini Ministry of industry and commerce, June 9, 2008.

contributor: Hala shamlawi, Abu-Ghazaleh intellectual Property, Amman, Jor-dan; Verifier: Charles Sha’ban, Abu-Ghazaleh Intellectual Property, Amman, Jordan, intA Bulletin Law & Practice–Middle east & Africa subcommittee

New Grace Period for Responding to industrial Property official Actions

fice considered the marks to be similar. However, even though the plaintiff’s mark had been recognized as notorious, the Office found no likelihood of confusion or dilution among consumers, since the defendant’s mark covered services related to “telecommunications through a personal computer system,” which were not associated with the plaintiff’s mark. In addition, the mark FAMILIA was found to be suggestive and weak, and unable to hold a monopoly. As such, the Trademark Office declared the opposition groundless and granted the registration for the EN FAMILIA mark for services in National Class 38.

This decision sets an important precedent, limiting the scope of protection of notorious marks that are suggestive or weak.

The German Federal Court of Justice (FCJ), in a landmark decision of April 30, 2008 (I ZR 73/05), confirmed that once providers of Internet auction services have been advised of an obvious trademark infringement, they are legally obligated not only to block specific offers by third parties but also to take appropriate steps in order to avoid similar infringements in the future. The court held that while Internet service providers are not subject to unreasonable obliga-tions of inspection, they are obliged to take feasible and reasonable inspection measures.

GERMANY

contributor: Michaela Huth-Dierig, Boehmert & Boehmert, Munich, intA Bulletin Law & Practice–europe & central Asia subcommittee;

Verifier: Roberto Kunz-Hallstein, Kunz-Hallstein, Munich

New Decision Puts Internet Auctions on Notice

The FCJ was deciding a case in which counterfeits of ROLEX watches had been explicitly offered as replicas and the Internet auc-tion provider had previously been aware of earlier infringements of the same kind.

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www.inta.org 11Vol. 63, No. 13

In a precedential decision, the U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) held that where the identification of goods in a trademark application is amended prior to publication, the applicant is entitled to “a rebut-table presumption that [the applicant] lacked the willful intent to deceive the Office.” University Games Corp. v. 20Q.net Inc. (Opp. Nos. 91168142, 91170668, T.T.A.B. May 2, 2008).

20Q.net Inc. filed two applications to register the mark 20Q for online computer games. University Games Corporation, the owner of a federal registration for the mark TWENTY QUESTIONS for a board game, opposed 20Q.net’s applications. 20Q.net filed a counterclaim requesting cancellation of the TWENTY QUES-TIONS mark.

20Q.net discovered that the identification of goods in Univer-sity Game’s original use-based application to register TWENTY QUESTIONS included T-shirts, paper products and videos. In response to an office action, University Games had removed those goods from its application. 20Q.net alleged that University Games committed a fraud on the USPTO by misrepresenting the goods it was selling in its original application. It sought summary judg-

UNITED STATES

contributor: robert P. Felber, Jr., waller Lansden Dortch & Davis, LLP, Nashville, Tennessee; Verifier: Donna A. Tobin, Baker & Hostetler, LLP,

new York, new York. Both are members of the intA Bulletin Law & Practice–Americas subcommitee

Rebuttable Presumption Against Fraud when Application Is Amended Before Publication

ment on its counterclaim requesting cancellation of the TWENTY QUESTIONS registration, asserting that the misrepresentation by University Games in its original application could not be cured by the subsequent amendment deleting the goods.

The TTAB cited Hurley International LLC v. Volta, 82 U.S.P.Q.2d 1339 (T.T.A.B. 2007) for the proposition that “a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication.” It held that University Games was entitled to a rebuttable presumption that it had no willful in-tent to deceive the USPTO because it amended its application prior to publication.

One TTAB judge, concurring in part and dissenting in part, ex-pressed the view that corrective action taken by an applicant prior to registration and prior to any actual or threatened challenge to the application or registration should preclude a fraud claim.

The Trademark Office in the United Arab Emirates has issued a communiqué announcing that all trademark registration agents who filed trademark applications with an undertaking to submit the pertinent Power of Attorney at a later stage, have 60 days from the date of filing to submit the Power of Attorney.

The communiqué, which was issued June 11, 2008, also states that technical examination procedures for such applications will cease unless the Power of Attorney is submitted by the due date.

An extension of 30 days may be granted if an official letter re-questing the same is submitted to the Ministry of Economy and Commerce.

UNITED ARAB EMIRATES

Source: Communiqué issued by the Trademark Office, June 11, 2008.contributor: Hala shamlawi, Abu-Ghazaleh intellectual Property, Amman, Jor-dan; Verifier: Charles Sha’ban, Abu-Ghazaleh Intellectual Property, Amman, Jordan, intA Bulletin Law & Practice–Middle east & Africa subcommittee

60-Day Period to Submit Power of Attorney for Trademark Applications

Syrian Prime Minister Mohammad Naji Al-Otari approved on June 4, 2008, as per Directive No. 4964/1, to exempt all new trademark, patent, industrial drawing and design applications from the Israel Boycott Declaration requirement. Accordingly, all foreign first-time applicants not listed on the Boycott List can file their applications in Syria without having to provide the Boycott Declaration.

The Prime Minister’s approval came in response to a recommen-dation suggested by the Economic Committee in May 2008. The effective date of the Boycott Declaration waiver was not decided by the Property Protection Department.

SYRIA

Source: Directive No. 4964/1, issued by the Syrian Cabinet on June 4, 2008. contributor: Hala shamlawi, Abu-Ghazaleh intellectual Property, Amman, Jor-dan; Verifier: Charles Sha’ban, Abu-Ghazaleh Intellectual Property, Amman, Jordan, intA Bulletin Law & Practice–Middle east & Africa subcommittee

Israel Boycott Declaration No Longer RequiredPrior to this directive, applications accepted by the Registrar

were referred to the Boycott Office to clear the applicant’s company name. First-time applicants with no prior clearance were required to submit the Israel Boycott Declaration. Once such clearance was obtained, the application could proceed to registration.

The Trademark Reporter is seeking contributions from practitioners and other trademark professionals, professors, and students, and is particularly looking to expand its coverage of international issues authored by international writers. Both INTA members and non-members may submit articles for publication.

Contact the Managing Editor at tmr@inta.org or visit The Trademark Reporter portion of INTA’s website at www.inta.org for more information on proposed article topics, submission guidelines, and deadlines.

The Law Journal of the International Trademark Association

UNITED STATES ANNUAL REVIEW

The Sixtieth Year of Administration of the

U.S. Trademark (Lanham) Act of 1946

Theodore H. Davis, Jr. Jordan S. Weinstein

Vol. 98 January-February, 2008 No. 1

®

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The Workshop provides corporate trade-mark owners the opportunity to discover how other trademark owners in Europe protect their brands and trademarks through proper strategic planning and use of best practices. The topics in this year’s benchmarking workshop will deal with in-house matters and interactions, as well as matters and interactions with the “outside world.”

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