IN THIS ISSUE

SPECIAL FEATURE

.COM.AU Gets a Makeover

WORLD UPDATE

What Does TrafFix Meanfor Trademark Owners?

ASSOCIATION NEWS

Lefkowitz Competition

Advanced Trademark Symposium 2001

INTA Participates in APECGovernment Industry Workshop

LAW & PRACTICE

BENELUXUse of a Trademark Considered

BRAZILForeign Companies May Now Register Domain Names Under Brazil’s ccTLD

KOREAProtection of Pending Trademarks

REPUBLIC OF MOLDOVA Amendments to the Trademark Law and Appellations of Origin

UNITED STATESU.S. Supreme Court Clarifies Functionality Defense to Trade Dress Infringement

IN THE NEWS

Snapple Battle in Israel

Company Name Wins over Domain Name Registrant in Japan

U.S. Trademark Applications Mirror Stock Market

BEHIND THE SCENES

INTA’s Book Publishing Team Hard at Work

READING REVIEWThe Community Trademark

Trademark Filing On-line—Part IIUsers share their opinions of online trademark filing systems in various jurisdictions.

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Bulletin APR 15, 2001

THE VOICE OF THE INTERNATIONAL TRADEMARK ASSOCIATION VOL. 56, NO. 8

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MICHAEL WOLNIZERDAVIES COLLISON CAVE

Sydney, NSW Australia

THE NAME POLICY ADVISORY PANEL of the .auDomain Administration (auDA) has released its finalpublic consultation report concerning proposedchanges to domain name policy in Australia. A num-ber of the changes proposed have significant benefitsfor trademark owners.

In particular, single entities would be allowed toown more than one domain, and a dispute resolutionprocedure modeled on the Internet Corporation forAssigned Names and Numbers Uniform Dispute

Resolution Policy (ICANN UDRP) would be intro-duced. One other notable change would be that atrademark application or registration could be used toobtain a .com.au domain. Under the current system,only company names can be used to apply for a.com.au domain name. If introduced, these changeswill herald a major improvement of the domain namesystem in Australia from a trademark owner’s perspective.

CONTINUED ON PAGE 2

.COM.AU Gets a MakeoverAustralia Plans Reform of the .COM.AU Domain Name Space.

11

NOELANI NITZHIROE & ASSOCIATES

Gifu, Japan

THIS IS PART II of a two-partseries on on-line filing. Part I, featured in Volume 56, Issue 7,discussed on-line trademark filingin Canada, Germany, OHIM, theUnited Kingdom and the UnitedStates. This report will discussonline filing in Australia, HongKong, Japan, Korea, Central andSouth America, Mongolia, NewZealand and Singapore.

Of the jurisdictions surveyed inthis issue, three currently haveelectronic filing systems in place:Australia, Japan and Korea. Eachimplementation reflects very dif-ferent uses of technology.

AustraliaIP Australia offers a web-basedon-line application form withpayment accepted by credit cardat www.ipaustralia.gov.au/trade-

marks/T_reg.htm. However, theon-line instructions warn that cer-tain types of marks should still befiled in paper form, includingsound, color, scent and shapemarks. The on-line applicationform does cater to all such marksexcept sound marks–the systemdoes not currently support thelodgment of sound files with theapplication.

The on-line filing system isquite popular with users.Currently, about 15 percent oftrademark applications are filed inthis manner. No application num-ber is received on filing; rather, a“pre-filing” number is given. The

application number is assigned inthe order of filing along withpaper applications.

IP Australia has comprehensiveplans to institute electronic services for renewals and othermatters, based on a study anduser surveys.

The office also has anXML/EDI (extensible markuplanguage/electronic data inter-change) system planned for highvolume users. This will bedesigned to integrate with thetrademark practitioner’s own sys-tem software. The XML/EDI sys-tem for high-volume users hasbeen in trial mode for about ayear. However, users were neededto help test the system and, untilrecently, only a few were found,because early users encounteredtechnical difficulties.

While the system allows theOffice to receive trademark detailselectronically, it does not as yet

CONTINUED ON PAGE 9

Under the current system only company names can be used toapply for a .com.au domain name.

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On February 16, 2001 auDA released thesecond, and final, public consultationreport. The closing date for public submis-sions was Friday March 23, 2001.

Following the public consultationprocess, the Panel will deliver its final rec-ommendations to the auDA Board in April2001. It is likely that any changes todomain name policy will be implementedduring the second half of 2001.

The Panel’s terms of reference encompassall second level domains (2LDs) in the .aunamespace. However, from a trademarkowners perspective the .com.au 2LD is themost relevant.

The current eligibility and allocationpolicies for .com.au include:• One entity may only own one domain

name;• The domain name must correspond with

the commercial name of the applicant orbe a contraction of the applicant’s commercial name;

• An effective dispute resolution procedureis not available;

• An applicant must warrant that the

registration and/or use of the domainname does not breach any third partyrights.The second public consultation report

includes a number of recommendations.The most important from a trademarkowner’s perspective include:• Abolition of the one domain name per

entity rule;• Expansion of eligibility criteria to include

a trademark application or registration inAustalia which corresponds to the domainname;

• The introduction of a dispute resolutionprocedure modeled on the ICANN

UDRP;• Requirement for an applicant to file a

Declaration confirming its bona fideintention to use the domain name licensefor the purpose envisaged by the relevant2LD. AuDA has also endorsed the introduction

of a limited number of new 2LDs. A sepa-rate public consultation process will be heldto determine what these should be and howthey should be managed.

INTA’s Domain Name System GovernanceSubcommittee submitted comments to auDA on behalf of the Association.

.COM.AU Gets a MakeoverCONTINUED FROM PAGE 1

INTA Bulletin • April 15, 2001 Vol. 56, No. 82

Recommendations in the

Second Public Consultation Report• Abolition of the one domain name

per entity rule;

• Requirement for an applicant to filea Declaration confirming its bonafide intention to use the domainname license for the purposeenvisaged by the relevant 2LD;

• The introduction of a dispute resolution procedure modeled on the ICANN UDRP;

• Expansion of eligibility criteria toinclude a trademark application orregistration in Austalia which corresponds to the domain name.

With INTA’s 123rd

Annual Meeting is less

than a month away,

please keep in mind the

following key points.

Opening Ceremonies

Doors will open for the Opening Ceremonies on Sunday, May 6th at 5:35pm. Soon after, the San Francisco Cable Car Chorus will impress participants with harmonious melodies.

Special Guest Speaker

Immediately following the entertainment, don’t miss INTA President, Kim Muller’s remarks as well as special guest eBay President, MargaretWhitman whowill speak about her company’s forays into cyberspace.

Meeting Credentials

If you have already registered, please don’t forget to bring your officialmeeting credentials, which include your name badge and Expocard. Yourcredentials will be your key to the Annual Meeting.

CLE Registration Made Easy!

CLE credit for attending sessions at the Annual Meeting will take place atthe meeting site. Just stop by the CLE Pavilion in Hall A and swipe yourExpocard. CLE certification will not be issued after the Annual Meeting.

Attention!

Annual

Meeting

Attendees

April 15, 2001 Vol. 56, No. 8 • INTA Bulletin 3

World•Update

BRUCE EWINGDORSEY & WHITNEY

New York City, USA

THE U.S. SUPREME COURT’S decision onMarch 20 in TrafFix Devices, Inc. v.Marketing Displays, Inc. (see this issue, Law& Practice, page 7) will necessarily haveimportant consequences for those claimingtrademark or trade dress protection in product configurations or product featurespresently or formerly covered by utilitypatents. However, the ramifications of thedecision for trademark owners, generally, oreven for product-configuration trademarks towhich utility patents do not apply, are far lessclear.

While explicitly not foreclosing completelythe possibility that trademark or trade dressprotection could be established in a productconfiguration or feature disclosed in patentclaims, the Supreme Court’s holding inTrafFix will plainly make it more difficult toclaim trademark or trade dress rights in anyfeature of a product that is or was the subjectof utility patent protection.

In this respect, the Court’s opinion goesfurther than the position taken in the case bythe INTA. In its amicus brief filed with theSupreme Court, the INTA emphasized theimportance of the issue of functionality tothe question before the Court and ques-tioned the emphasis given by the SixthCircuit to the existence of utility patent protection for the product features at issue tothe inquiry into functionality. Thus, theINTA advocated the view that claims of utili-ty in a product feature “may be highly proba-tive of functionality.”

The TrafFix decision is more categoricaland establishes a presumption of functionali-ty for product features disclosed in a utilitypatent, a presumption that the opinionmakes clear will be difficult to overcome.

When viewed in combination with theSupreme Court’s decision last year inWal-Mart Stores, Inc. v. Samara Brothers, theTrafFix decision could be read to reflect aconcern on the part of the Supreme Courtabout expansive claims of trademark protec-tion in product features or product configu-rations. Indeed, both decisions make it moredifficult to establish trademark rights in theseaspects of a product.

However, neither decision forecloses trade-mark protection for such types of trade dress.Given the Court’s prior holding in Two Pesos,Inc. v. Taco Cabana, Inc., recognizing that theappearance of a product (there, the appear-ance of a restaurant) can be protectable tradedress, the Wal-Mart and Traffix decisions areperhaps more properly viewed as reasonablelimits on the scope of trade dress protection,rather than harbingers of a widespread erosion in the scope of trade dress rights.

The TrafFix decision does not address oneimportant question that may be of greaterinterest to trademark owners, namely,whether the present or former existence ofdesign patent protection for a particularproduct configuration or feature has anyimpact on the issue of trademark protection.At present, many courts and commentatorsview the existence of design patent protec-tion as evidence that a particular productconfiguration is non-functional. However,the TrafFix case may call into question thevalidity of this principle. If so, the impor-tance of the TrafFix decision will grow, as theimpact of its holding will be broadened tocover an entirely new class of product fea-tures and configurations presently protectedunder trade dress law.

What Does TrafFix Mean for TrademarkOwners?

Roundtable CircuitBrazilThe Exhaustion of Rights in the MERCOSUL South TradeCommunity

July 04, 2001During the morning

GUERRA ADVOGADOS ASSOCIADOSRoner Guerra FabrisRua São Carlos, 1113 -FlorestaPorto AlegreRio Grande do Sul Brazil

Tel: +55-51-346-1100Fax: +55-51-346-1228E-mail:mail@guerralaw.com.br

The Court ruledthat the prod-uct featuremust not befunctional inorder to merittrade dress protection.

One of TrafFix’s devices.

INTA Bulletin • April 15, 2001 Vol. 56, No. 84

ON MARCH 5 AND 6, trademarkprofessionals from eighteen coun-tries on six continents gathered inNew York for INTA’s thirdAdvanced Trademark Symposium.Before considering “The Challengeof the Future to Trademark Law,”however, those attending had toovercome false forecasts of the bliz-zard of the century, as airlines can-celled flights for what turned outto be only an inch of slushy snowover two days.

As was true of prior advancedprograms, the format was deliber-ately interactive. The bookends forthe sessions were keynote speechesby Kent Willets of Kimberly-Clark, who explained and showedhow branding themes are expressedin different cultures with differenttongues, and Hikoh Okuda ofSony corporation, who explainedthe business and marketingphilosophies that have put Sony inthe forefront of the world consumer electronics market.

Exploring the possibilities ofglobal trademark law, Co-ChairTony Fletcher of Fish &Richardson led an informal groupdiscussion of substantive possibilities. Breakout sessions, ledby leading industry professionals,

included discussions on international treaties, multinational trademark laws, and ModelActs/Uniform Codes as possiblevehicles for harmonizing world-wide trademark law.

Co-Chair Isabel Davies ofEversheds in London, then led anextended discussion, with JusticeRobin Jacob of the UK RoyalCourts of Justice and Eric Wilbersfrom WIPO, devoted to interna-tional dispute resolution, judicialissues and alternative dispute resolution. Many participated with provocative ideas.

The second day saw SteveWeinberg of WeinbergCummerford Legal Group inPhoenix lead a panel and audiencediscussion of global trademarkmanagement, with special consid-eration to Internet aspects of management and enforcement.Mr. Weinberg then assembled panelists for a consideration oftrademark survey methods on twocontinents, including the newerdilution surveys.

Flight cancellations preventedtwo scheduled speakers fromreaching New York, so with uncertainty about travel outward,the symposium adjourned inmidafternoon, leaving the participants to reflect on the manycomplexities foreseeable from the diversity of views elicited on many issues.

Lefkowitz Competition 10th Saul Lefkowitz Moot Court Competition Marks a Milestone for BNEF

MARCH 17, 2001 marked a special occasion for the BrandNames Education Foundation, highlighting the tenth anniver-sary for the National Finals of the Saul Lefkowitz Moot CourtCompetition.

Established to introduce law students to the challenging andvaried issues involved in trademark and unfair competition law,the competition was named for the late Saul Lefkowitz. Mr.Lefkowitz served in the U.S. Patent and Trademark Office formore than 30 years, including tenure on the Trademark Trialand Appeal Board, from its inception and as Chairman from1975-1981. Dedicated to the further development of trademarklaw and practice, he is most particularly and fondly rememberedas a mentor to young practitioners, helping them develop anunderstanding of trademark law and procedures.

In further tribute to Saul Lefkowitz, and to commemorate theoccasion of the 10th Anniversary, during the Awards Ceremony,the Law Firm of Finnegan, Henderson, Farabow, Garrett &Dunner, generously presented the Foundation with a check for$5,000.00 in support of the competition.

In February highly competitive Regional oral argument com-petitions were held in New York, Chicago, Atlanta, and SanFrancisco. Based equally on brief plus oral argument scores, theregional winners were Suffolk University Law School (East),Washington University School of Law (Midwest), EmoryUniversity School of Law;(South) and Whittier Law School(West). The competition’s popularity continues to grow eachyear, attracting over 60 teams from law schools nationwide for2000-2001.

National Finals, awarding cash prizes totaling over USD $4,000, were held in Washington, D.C., at the U.S. Courtof Appeals for the Federal Circuit. The appeal was argued beforedistinguished jurists from the United States Court of Appeals forthe Federal Circuit and the Trademark Trial and Appeal Board ofthe U.S. Patent and Trademark Office.

The awards ceremony ended with the presentation of theinaugural Dolores K. Hanna National Best Brief Award, toWashington University School of Law.

ASSOCIATION News

Grave wintery weather warningskept some would-be participantsand speakers at home.

AdvancedTrademarkSymposium2001The Challenges of the Future to Trademark Law

Breakout sessionsincluded discussionsabout possible vehiclesfor harmonizing globaltrademark law.

National SecondPlace Team,Qadir Wahid andKristen Cataldo of Suffolk UniversityLaw School

April 15, 2001 Vol. 56, No. 8 • INTA Bulletin 5

INTA Participates in APECGovernment Industry Workshop

Register for a seminar in a city near you!

Trademarks 101Fundamentals

Acquire a firm grasp of trademarks, their use andprotection, in a concise, single day of instructionat INTA’s TRADEMARKS 101: Fundamentals.

Learn from experienced trademark practitionersthe definition of a trademark and the various symbols, words and devices that may be used asa trademark.

Find out how to select a trademark, the process

for registering your trademark and how to prop-

erly maintain your registration.

The experienced legal faculty also will discusshow litigation may be necessary to protect yourtrademarks. And finally, you’ll discover the issuesand concerns of using trademarks on the Internet.

Who should attend?

• Attorneys with little or no trademark law back-ground seeking “how-to” instruction;

• New associates or new members of a corporate law department

• New trademark administrators and paralegals;

• Marketing, advertising and public relations pro-fessionals.

Don’t miss this opportunity to acquire a firm

understanding of trademarks, their use and

protection.

June 4, 2001

Philadelphia,

June 11, 2001

Houston, TX

June 13, 2001

Minneapolis, MN

June 15, 2001

San Francisco, CA

AN INDUSTRY-GOVERNMENT

Workshop on IP enforcement washeld in Sydney, Australia on March22, 2001 in conjunction with a regu-lar meeting of the Asia–PacificEconomics Co-Operation (APEC)Intellectual Property Experts Group(IPEG). The Sydney Workshop fol-lowed an earlier Industry-Government workshop on enforce-ment (focusing on the automatedindustry) held in conjunction withthe last IPEG meeting in South Koreain July 2000.

The purpose of the workshop wasto stimulate progress towards a morestructured, practical co-ordination ofindustry and government efforts onintellectual property rights in theAPEC region.

INTA, through the activities of theAPEC Sub-Committee of the TreatyAnalysis Committee, has a history ofregular involvement with the APEC-IPEG meetings.

Rhonda Steele, Marketing PropertyManager for ASIA Pacific, Mars Inc.(Australia), and a member of theBoard of Directors of INTA, repre-sented INTA at the Workshop.

Marion Heathcote of DaviesCollison Cave, Australia, and Chairof the APEC Subcommittee, who wasinstrumental in organizing INTA’sinvolvement in this workshop, wasalso in attendance.

The workshop was comprised ofboth plenary sessions as well as fourgroup discussions focusing on com-puter software enforcement issues,branded goods enforcement issues,enforcement within collective admin-istration systems, and enforcementand a strategic approach to IPR man-agement. The group discussions wereled by various industry leaders, IPright holders and their representa-tives.

Ms. Steele gave a presentation enti-

tled, “Branded Goods EnforcementIssues.” The content revolved aroundINTA’s interests in trademarksenforcement in the Asia-Pacificregion. It is INTA’s general belief thatit is in the interests of all nations tohave strong enforcement of intellectu-al property rights. INTA’s activities inthe APEC region were highlighted, inparticular the promotion of effectivelegislation in APEC countries and thepreparation of various issue briefs asrequested by APEC–IPEG. Ms. Steelewas also able to draw upon the expe-riences of her corporate backgroundin order to provide practical and use-ful contributions to the discussion ondifficulties faced by IP rights holdersin the region. Ms. Steele’s presenta-tion was well received as evidenced bythe lively interaction and exchange ofideas that followed.

INTA presented to the attendinggovernment officials, a copy of therecently released publication TradeMark Anti-Counterfeiting in Asia andthe Pacific Rim, edited by Nils VictorMontan, Executive Vice President ofINTA. Further information about thepublication was also made available tothe 150 workshop participants,including representatives from boththe private and public sector.

The involvement of INTA in theworkshop provided an excellentopportunity to reinforce INTA’s dedi-cation to a strong partnership withAPEC member economies, and itscommitment to work with differentregional organizations to assist indeveloping all aspects of intellectualproperty protection and enforcement.

It is INTA’s general beliefthat it is in the interestof all nations to havestrong enforcement ofintellectual property.

For complete program and registration details,visit our web site at: www.inta.org/forums/2001/101/TM101.html

or call Membership Services at 212-768-9887.

INTA Bulletin • April 15, 2001 Vol. 56, No. 86

Law+Practice

BENELUX

Use of a TrademarkConsidered The concept of “use” of a trade-mark (as defined in the ECTrademark Directive and theBenelux Trademark Law) andthe meaning of Article 46 of theTrade Related Aspects ofIntellectual Property Rights(TRIPS) Agreement, were con-sidered in a decision of theBelgian Court of Appeals in thecase Algotax v. Low LandFashions International BV et al(Brussels Court of AppealsNo.AR 1999/KR/452, February27, 2001).

Low Land Fashion had beenenjoined from selling clothingproducts bearing the infringingmark ACROSS.

To comply with the injunc-tion, Low Land re-labeled about85,000 garments with a newlabel pasted over the infringingone. The new labels were poorlyaffixed and started to fall off theproducts so that the infringingmark became visible again.

The trial court issued a newinjunction to remedy the situa-tion. Low Land conceded thatthere was a new trademarkinfringement after the labels hadfallen off, but disagreed withplaintiff Algotex’s contentionthat even the sale of garmentson which an infringing trade-mark was pasted over (thus evenbefore the labels fell off) consti-tuted trademark infringement.

Low Land urged that trade-mark law only prohibits the“use” of a trademark and thatthere was no such “use” whenthe infringing trademark was

rendered invisible by labelingover the mark.

But the lower court issued aninjunction requiring Low Landto remove the old labels beforeaffixing the new ones. Algotexalso argued that under theBenelux trademark law, the mereexport of products bearing aninfringing trademark is also con-sidered an infringement inBenelux, even if the infringingsigns are never visible to thepublic there (“Champion” deci-sion of the Benelux Court ofJustice of 13 June 1994, B.I.E.1995, 266, R.W. 1994-1995,389).

Low Land appealed the deci-sion. The court of appeals ruled:•”use” of a trademark, in the

sense of the Benelux trademarklaw, means inter alia, affixingthe mark on a product or onits packaging;

•There is no use of a trademarkif the public, who is confront-ed with these products or ser-vices, within or outside theBenelux territory, cannot per-ceive the mark;

•If, therefore, a mark which wasunlawfully affixed to a producthas been rendered impercepti-ble, before leaving the manu-facturer’s premises, by the past-ing over with a new label, sothat the public can not see theold label, the use of the oldlabel must be considered ashaving ceased; Article 46 of the TRIPS

agreement does not affect this,since this Article relates to judi-cial measures, which can beordered against products thatwere already held to be counter-feit.

SOURCE: Bruno Vandermeulen, Bird &

Bird, Brussels; VERIFIER: Robert M.

Kunstadt, R. Kunstadt P.C., New York.

BRAZIL

Foreign CompaniesMay Now RegisterDomain Names UnderBrazil’s ccTLDThe Brazilian Domain NameRegistration Authority (FAPESP), has adopted a newpolicy allowing foreign compa-nies to register domain namesunder the Brazilian countrycode top level domain (ccTLD)(.br), starting March 6, 2001,thus ending a strongly criticizedlocal presence requirement.

According to a news bulletinpublished in FAPESP’s web siteat www.registro.br, foreigncompanies may now register adomain name in Brazil througha local attorney. The attorneyshould request on the registrant’sbehalf an identification numberto be issued by the BrazilianRegistrar to replace the local cor-porate fiscal registration numberused by all Brazilian companies.

Once having determined theavailability of a second leveldomain name throughFAPESP’s Internet search tool,the foreign company should exe-cute a power-of-attorney and anaffidavit of activity, the lattercontaining the company’s fullname, address, telephone num-ber, corporate objective andactivities, as well as the nameand title of its legal representa-tive.

Both documents must benotarized and legalized before

the nearest Brazilian Consulateand translated into Portugueseby a sworn translator. The com-pany’s local attorney will thenfurnish such documents toFAPESP, together with a copy ofits corporate fiscal registrationnumber and a letter indicatingthe registrant’s local ID.

Moreover, on March 19 theBrazilian Registrar adopted anew rule which requires the for-eign registrant to sign an affi-davit stating that it will establishpermanent activities in Brazilwithin a 12 month period.

The ten-domain name limitrule per Registrant still standsand will now apply to foreigncompanies, with the declaredpurpose of dampening the activ-ities of cybersquatters. TheBrazilian ccTLD .com.br is thecountry’s most popular, repre-senting over 92% of all registra-tions. However, other restrictedBrazilian ccTLDs exist and maybe sought by registrants uponproof of proper qualification. Acomplete and updated list of allBrazilian ccTLDs may beobtained atwww.registro.br/dpn.html.

The Brazilian Registrar hasnot adopted ICANN’s UDRPor any other alternative disputeresolution system and all dis-putes over an improperly regis-tered domain name must beresolved either amicably orthrough a court action.SOURCE: Rodrigo Affonso O. P. Santos,Momsen, Leonardos & Cia, Brazil;VERIFIERS: Rafaela Borges WalterCarneiro, Dannemann, Sao Paolo,Brazil; Erica Aoki, Moreira Lima,Royster & Ohno Advogados, SaoPaulo, Brazil

April 15, 2001 Vol. 56, No. 8 • INTA Bulletin 7

•The introduction of the con-cepts of well-known marks andgeographical indication;

•Trademarks consisting only ofdesignations that are geograph-ical names are not registrable;

•Letters of Consent are takeninto consideration;

•Assignment agreements comeinto effect with respect to thirdparties from the date of therecordal of the agreement inthe Patent Office of Moldova (but not from the date of theagreement as under prior law).At the request of third parties

a registration can be cancelledafter continuous non-use of theregistered trademark during noless than five years, providedthat the trademark owner doesnot submit substantive reasonsin explanation of such non-use(e.g., limitations on import orother requirements of publicauthorities).

The amended law applies toall trademark and appellation oforigin applications pending onMarch 14, 2001. Applicableprovisions of legal protection aredetermined under the legislationeffective on the application filingdate. Trademark registration cer-tificates issued before theamended law came into effectare subject to legal regulationswith respect to such certificatesissued in accordance with theamended law. SOURCE: Antonina Pakharenko-Anderson, Pakharenko & Partners,Kiev, Ukraine; VERIFIER: TatyanaSimanenkova, “INVENTIE-MDV” S.A.,Kishinev, Republic of Moldova

USA

U.S. Supreme CourtClarifies FunctionalityDefense to TradeDress InfringementOn March 20, 2001, the UnitedStates Supreme Court clarifiedthe issue of whether trade dressprotection is available for a fea-ture claimed in an expiredpatent. In TrafFix Devices, Inc. v.Marketing Displays, Inc., theSupreme Court held that thepresence of a product feature inthe claims of a utility patent is“strong evidence” that the prod-uct feature is functional. Oneseeking to establish trade dressprotection in that feature must“carry the heavy burden ofshowing that the feature is notfunctional.”

The Court further held that,regardless of whether a productfeature is the subject of anexpired patent or not, tradedress protection can be assertedonly in features that are notfunctional and that the test forfunctionality is whether the fea-ture “is essential to the use orpurpose of the article or if itaffects the cost or quality of thearticle.”

Marketing Displays, Inc.(MDI) owned a patent on aportable traffic sign stand. Afterthe patent expired, TrafFixDevices, Inc. began marketingan identical product. MDI suedTrafFix in the United StatesDistrict Court for the EasternDistrict of Michigan assertingtrade dress infringement andclaiming that the design of thesign stand was protectable tradedress.

The District Court ruledagainst MDI on the trade dressissue, holding that no reasonabletrier of fact could find that MDIhad established secondary mean-ing in its alleged trade dress and,in any event, that the design wasfunctional. The United StatesCourt of Appeal for the SixthCircuit reversed the decision,holding that the District Courterred both in finding that MDIfailed to show a genuine issue ofmaterial fact regarding sec-ondary meaning in its allegedtrade dress and that the tradedress was functional.

The Sixth Circuit stated thatthe test of functionality waswhether exclusive use of a fea-ture “put competitors at a signif-icant non-reputation-related dis-advantage” and under that testthe asserted trade dress was notfunctional since it took “littleimagination” to conceive of thedual spring design and that thedual spring design is the essen-tial feature of the asserted tradedress.

The Supreme Court reversedthe Sixth Circuit, holding thatMDI is barred from claimingtrade dress rights in the dualspring design and stated furtherthat MDI competitors are notrequired to pursue alternatedesigns.

The Supreme Court furtherheld that the test applied by theSixth Circuit, though accurate,was not a comprehensive oneand that the appropriate test waswhether the feature is essentialto the use or purpose of the arti-cle or if it affects the cost orquality of the article. Source: Theodore D. Lienesch,Thompson Hine & Flory LLP, Dayton,Ohio, USA; Verifier: Cynthia K.Nicholdson, Hale and Dorr LLP,Washington, D.C. USA.

KOREA

Protection of PendingTrademarksIn order to enforce trademarkrights in Korea, the trademarkshould be registered in Korea.However, a pending trademarkmay now provide a basis formonetary compensation oncethe trademark is registered.

According to the newlyrevised Korean Trademark Law,Article 24bis, an owner of apending trade mark (“appli-cant”) may send a warning letterto a possible infringer of themark. After the pending trade-mark has been accepted and reg-istered, the trademark owner canclaim against the possibleinfringer monetary damagewhich might have occurred dur-ing the period between the dateof warning to the date of regis-tration.

The new provision will beeffective as of July 1, 2001 andis applicable to trademark appli-cations filed on or after July 1,2001.SOURCE: Dukkyu Choi, DK Choi &Partners, Seoul, South Korea; VERIFIER:Moon-Young Chung Patent & LawOffice, Seoul, South Korea

REPUBLIC OFMOLDOVA

Amendments to theTrademark Law andAppellations of OriginAmendments to the TrademarkLaw and Appellations of Originof the Republic of Moldovacame into force on March 14,2001. The Amendmentsinclude:

U.S. TrademarkApplications MirrorStock MarketAttention, day traders! Want toknow what the U.S. stock marketis doing? Simply check the num-ber of trademark applicationsbeing filed at the U.S. Patentand Trademark Office (PTO).For the last several years the vol-ume of new applications has cor-related closely to the Nasdaq, theU.S. stock index weighted mostheavily toward technology shares.

Anne Chasser, the PTO’sAssistant Commissioner forTrademarks, acknowledges thetrend but is hesitant to character-ize it as a causal relationship. “It’suncanny, how the trademark fil-ings do correlate, but I don’tthink it’s a definitive economicmodel,” she says. “I don’t know ifwe can say Nasdaq drives trade-marks or trademarks drive theNasdaq.”

Andy Gibbs, CEO ofPatentCafe.com, a web site thatdisseminates news and informa-tion about various aspects ofintellectual property, was appar-ently the first to note how thevolume of trademark applicationsfiled with the PTO in the past sixyears has tracked the Nasdaq’srise and fall. He attributes thecorrelation largely to the well-known boom and recent partialbust in “dot-com” businesses.

Gibbs claims that commercialInternet expansion has beenaccompanied by a rush to filetrademark applications for“.com” domain names and otherbrand names used in the world-wide web’s virtual market. Inaddition, the ease and conve-nience of the PTO’s new on-linemethods for filing and trackingtrademark applications (i.e., “e-TEAS” and “PrinTEAS”) may

have encouraged more businesses,especially computer-savvy “neweconomy” businesses, to file andprosecute trademark applications.

Gibbs doesn’t advocate usingthe rate of trademark applicationfilings as a predictor of stocktrends. However, he suggests thatoverall growth in the market maybe signaled by increased filing oftrademark applications, as com-panies often seek to registermarks in conjunction with intro-ducing new goods or services.Similarly, a decline in applica-tions could suggest that compa-nies are cutting back on spend-ing, including spending tolaunch new product lines, andtherefore that market expansionis unlikely in the near term.SOURCES: US Trademark ApplicationsLatest NASDAQ Predictor?“www.cafezine.com, March 21, 2001;“Trademarks on the Mark withNasdaq,” Legal Times (Washington),March 19, 2001; EDITORS: Timothy J.Lockhart and Anna J. Kurian, Hogan &Hartson L.L.P., Washington, D.C., U.S.A.

Snapple Battlein IsraelThe Israeli Internet Society(ISCO-IL) Advisory CommitteePanel (ACP) has issued a rulingagainst Sara Vidal, holder of thedomain name Snapple.co.il, inresponse to a challenge by theSnapple Beverage Company.The ISCO-IL is the body incharge of registering domainnames in Israel and commonly

mediates domain name disputesthrough its panel rather thanthrough litigation.

Ms. Vidal claimed to have reg-istered the name as a web site forher consulting company, SnappleConsulting. She argued that nomisrepresentation existed becausethe web site included a messagethat the site was unrelated to thebeverage company.

Snapple countered that Ms.Vidal had initially provided herservices from an alternate sitewith a different name, challengedthe authenticity of SnappleConsulting as a legitimate busi-ness, and claimed that Ms.Vidal’s refusal to transfer thename for a reasonable fee wasclear evidence of cybersquatting.

Ms. Vidal’s case was nothelped by the fact that that sheand her associates had also regis-tered domain names under sever-al other famous trademarks suchas coke.co.il, and hersheys.co.il.In addition, the registration ofthe Snapple domain name suspi-ciously coincided with a largepromotion campaign by thecompany in the local market.

Ms. Vidal may appeal theACP’s decision in favor ofSnapple as,“The losing party hasthe option of trying to overturnit in court.” Doron Shikmoni,president of the ISCO-IL, statesthat it is customary to allow suffi-cient time for such action priorto transfer of a name.

Cybersquatting in Israelappears to be on the decline, andthis is attributed to earlier rulingsagainst cybersquatters in Israel incases involving Disney andHabitat, among others. SaysShikmoni, “These precedentshave discouraged people fromregistering domain names in badfaith, as it no longer appears to

In THE News

In the News is a compilationof articles about trademarklaw and business, abstractedfrom news publications fromaround the world. This issue,topics in the news are:

SNAPPLE.CO.IL

itoyokado.co.jp

U.S. Stock Market

INTA Bulletin • April 15, 2001 Vol. 56, No. 88

allow the automatic transfer of these details on tothe Office database. This enhancement is beingdeveloped and is expected to be introduced laterthis year.

The policy driving the establishment of the sys-tem was the Federal Government’s On-line ActionPlan, which required many government services tobe available electronically by 2001. Another con-sideration was to improve the business flow of theOffice by reducing the amount of paper applica-tions and improving transmission and capture oftrademark details. However, the correspondingbenefit to users is not as clear since the result ofusing the XML/EDI system has increased theworkload significantly. This could happen wheretrademark details are entered on a firm’s own sys-tems and then entered into the XML/EDI system.Contributing Editor: Kim Nicholson, Davies Collison Cave,Sydney, NSW, Australia

Hong KongHong Kong provides forms online for download-ing and has plans to implement electronic filingby the end of 2002. Interestingly, the IntellectualProperty Office issued the new release regardingthe public tender for the system as part of aneffort to be “environmentally friendly.” The onlineforms can be found at www.info.gov.hk/ipd.Contributing Editor: Shirley Kwok, Vivien Chan & Co., HongKong

Japan

The Japanese Patent Office (JPO) system relieson proprietary software installed on computers atthe trademark practitioner’s office. Applicationsmay be prepared in either of the popular wordprocessing programs in Japan, Ichitaro or Word.

Trademark logos are filed using .gif, .bmp or.jpeg attachments. Shape and color marks may befiled using the e-filing system. The JPO encour-ages use of the electronic system by imposing extrafiling charges for paper filings.

Paper applications may still be filed in situationswhere the electronic filing system is closed andpost offices are still able to provide a postmark.Payment is done through the trademark practi-tioner’s account with the JPO. Once the filing iscomplete, an application serial number is receivedimmediately. Most other transactions may be doneelectronically, except for those including otheroriginal documents, as is the case with assign-ments.

The weakness of the current system is that itdoes not allow for the submission of evidenceregarding detailed trademarks, evidence of actualtrademark use or explanations of goods. Usingpaper applications, this type of evidence can besubmitted together with an initial application tosupport applications that are potentially problem-atic because of descriptiveness issues—descriptionsof goods or services not commonly known.

The JPO system works well, as it must, giventhe essentially mandatory nature of electronic fil-ing in Japan. Because filing in Japan must alwaysbe done via a licensed professional, the JPO hasno need to make the system more readily availableto the public.

KoreaThe Republic of Korea (South Korea) began tooperate its electronic filing system for trademarkson January 1, 1999. The electronic filing system isbased on proprietary software. Individual appli-cants and attorneys may use the system. By usingthe system, it is possible to file applications quick-ly and exactly and obtain documents issued by theKorean Patent Office. The system also coversother intellectual property registrations handled bythe Korean Patent Office–patents, utility models,and designs. The electronic filing systems’ intro-duction has been a success. Since its implementa-tion, most patent attorneys use the system to fileapplications and obtain other documents. Contributing Editor: E.M. Hwang, E. M. Hwang & Partners,Seoul, Korea

Central and South America

None of the jurisdictions in Central or SouthAmerica with World Wide Web presences current-ly have electronic filing in place. However, theintellectual property offices of several countriesmake forms available through their web sites. Theforms can be found for Argentina atwww.mecon.gov.ar/inpi/, for Brazil atwww.inpi.gov.br, and for Panama atwww.mici.gob.pa/comintf.html

Mongolia, New Zealand and SingaporeMongolia, New Zealand and Singapore provideforms online for downloading. However, thesemust still be filed using the traditional methods ofdelivery. The forms can be found for Mongolia atwww.mongol.net/ipom/application.htm, for NewZealand at www.iponz.govt.nz, and for Singaporeat www.ipos.gov.sg.

Trademark Filing On-line–Part IICONTINUED FROM PAGE 1

be good business to engage incybersquatting.”SOURCE: Israel.internet.com, March 26,2001; EDITOR: Mary De Longis,Guinness UDV North America, Inc.,Stamford, Connecticut

Company Name Winsover Domain NameRegistrant in JapanOn March 14, 2001 theArbitration Center for Industrial Property issued one ofits first decisions related todomain names under the newdispute resolution policy imple-mented last fall by JPNIC, theJapanese registrar. A real estatecompany in Kanagawa prefectureregistered the domain name:“itoyokado.co.jp” in July 1999,opening its web site in Novemberthat year. Ito Yokado Co. is aleading supermarket chain inJapan. The registrant had operat-ed the web site as an on-line mallwith links to various retailersincluding Ito Yokado Co.

The arbitrator held that theunrelated company unjustly reg-istered and used the companyname as a domain name. In addi-tion, the arbitrator pointed to thedomain name registrant’s offer onthe web site to sell the domainname for a “minimum bid price”of a billion Yen (about USD $8.5million dollars) in April 2000.SOURCE: “Yoka-Do” Prevails Over DomainName Registration, Gifu Shinbun, March15, 2001; Ito-Yokado Files ComplaintOver Domain Name, Nihon KeizaiShimbun, January 17, 2001; EDITOR:Noelani Nitz, Hiroe and Associates,Gifu, Japan

April 15, 2001 Vol. 56, No. 8 • INTA Bulletin 9

TO PREVIEW GO TO: www.inta.org/pubs/preview/index.shtml

With a new feature brought to you by INTA Publications, you canpreview the content of selected titles at your convenience, beforeyou purchase them.

Go to the link below to view the full table of contents and selectsample segments of any–or all–of these titles:

Trademark Anticounterfeiting in the Pacific Rim

The Community Trade Mark

Trademark Searching

Protection of Nontraditional Marks

Trademark Law & the Internet

See for yourself just how comprehensive these treatments are.Exceptional values, they offer you the benefit of having expertinsight on trademark law and practice issues at your service.

INTA Bulletin • April 15, 2001 Vol. 56, No. 810

IN VOL. 56, NO. 6 of the Bulletin (Mar.15, 2001), we published an abstractof an article from the February 5,2001, New Jersey Daily NewsExpress bylined CBSMarketwatch.com regardingMicrosoft Corporation’s XBOX™video game system. Contrary towhat we reported, Microsoft statesthat the launch of the video gamesystem will not be delayed onaccount of any trademark disputeover the XBOX name. A spokesper-son for Microsoft confirmed that thecompany has received office actionsfrom the U.S. Patent and Trademark

Office (U.S. PTO) citing a prior ITUapplication by Tech Inspirations ofFlorida on some of its trademarkapplications for XBOX, but statesthat the company is confident that ithas the right to use the mark andthat the issues in the U.S. PTO willbe resolved to its satisfaction. TheXBOX video game system is sched-uled to launch this fall in NorthAmerica and Japan.

THE BULLETIN RECEIVED an article fromJean Pire of Gevers & Partnersabout the first oral hearing in anEuropean Community trademarkopposition. The article was editedsubstantially and additional informa-tion added, in order to conform toour Law & Practice section stan-dards. It was reported in Vol. 56, No.6 of the Bulletin (Mar. 15, 2001),crediting Mr. Pire for the submis-sion. Mr. Pire has advised us that in

light of our editing, he wishes not tobe associated with the item. He alsostates that the opposer was notGeneral Foods France as we report-ed, but Kraft Jacobs Suchard Franceand Holywood S.A.S. (Mr. Pire’s sub-mission did not contain the namesof the opposing parties, and there-fore we reported the trademarkowner of record as shown on theSAEGIS service.) We thank Mr. Pirefor his clarification of the names ofthe parties. The INTA Bulletinreserves the right to make, in its dis-cretion, editorial changes to anyitem offered to it for publication.

IN VOLUME 55, ISSUE 5, under “On theMove,” Mr. Evan Katz was listedincorrectly as the new Director of1GlobalPlace. Mr. Katz is a memberof the Board of Directors. The CEOand President of 1GlobalPlace isMr. Marc Holtenhoff.

CorrectionsClarifications

Preview INTA’s Publications

MARY MCGRANEPublication Manager &PEP Group CoordinatorE-MAIL: MMCGRANE@INTA.ORG

PHONE: +1(212) 642-1733

IF TITLES SUCH AS The CommunityTrade Mark, Protection of NontraditionalMarks, and Trademark Anticounterfeitingin Asia and the Pacific Rim sound famil-iar, they are just some of the publica-tions that INTA Members, in conjunc-tion with staff, have launched for 2001.

On average INTA maintains anannual catalog of more than twenty-fivetitles, and produces twelve or moreproducts a year, including annual sup-plements to major treatises and newtitles. Over time, INTA’s book publica-tions have not only contributed to theAssociation’s growth and prestige, theyhave served as an authoritative voice forthe trademark profession by dealingwith current topics on a timely basis.

Behind INTA’s diligent group of vol-unteer authors, is a small team of hard-working staff members that advises,edits and guides the various projectsfrom start to finish. This issue, theINTA Bulletin goes behind the sceneswith INTA’s Publications Staff: MaryMcGrane, Michael Cestaro, and BillMartin.

What is unique about INTA’s publications compared to other commercial publishers?

Michael: The material we publish has avery specific audience and our titles,such as Anticounterfeiting in Asia and thePacific Rim, are geared toward this nichemarket.

Mary: In fact, with somewhat less riskthan other commercial publishers, weare able to cover items of different levelsof complexity and wider geographicalscope. Moreover, all of our authors andeditors are volunteers. It is not unusualfor a principal contributor to put inhundreds of hours of effort over one totwo years without any financial compensation.

Bill: And that is what makes the differ-ence. Since all of the contributors areINTA Members, readers can meet theeditors in an informal setting duringINTA’s larger meetings. It certainly givesit a more personal touch when youknow that the editor of your favoritepublication is also a major business contact.

What significant changes, associatedwith INTA publications, have takenplace over the last ten years?

Mary: The number and range of titleshas grown dramatically over the last tenyears. We moved in to a limited numberof electronic titles starting about eightyears ago, and are exploring on-line applications now. Since a 12-year arrangement with West Publishingended in 1994, all publishing operationshave been supported in-house. That’s apretty remarkable achievement for bothmembers and staff.

What expectations do you have forthe near future?

Mary: Working with the PublicationsBoard, we are taking a fresh look at ourprocedures and goals. We want to betteridentify member needs and preferencesfor new subjects and formats, stayresponsive to the Association’s priorities,and continue to offer high quality andexceptional value.

Bill: The department has been workingon new ways to promote INTA’s publi-cations. One new technique we havedeveloped is an electronic “brochure”that contains excerpts of selected titles(see opposite page). Interested partiescan go on-line and preview the full tableof contents and sample segments of abook before deciding to purchase it.

BEHIND THE ScenesINTA’s Staff Book Publishing Team, Hard at Work

April 15, 2001 Vol. 56, No. 8 • INTA Bulletin 11

Responsibilities: Mary is responsible for thecoordination and management of all publishing operations. History: In addition to her many years withINTA publishing, Mary comes from a distin-guished editing and writing background.

Responsibilities: Michael is responsible forcoordinating manuscript preparation andcopyediting for volunteer book editors andauthors in order to produce a final product.History: Editor for American Lawyer;Freelance editor and writer for MatthewBender. JD from Rutgers Law School andBachelor of Arts in English.

Responsibilities: Bill works closely with printers and graphic artists to determine thelook and feel of each publication. He is alsoprimarily responsible for coordinating the production of INTA publication materials.History: Bachelor of Arts inCommunications/Film from HofstraUniversity. Communications Professional atthe Advertising Research Foundation.

R. MICHAEL CESTAROPublication EditorE-MAIL: MCESTARO@INTA.ORG

PHONE: +1 (212) 642-1736

BILL MARTINProduction CoordinatorE-MAIL: WMARTIN@INTA.ORG

PHONE: +1(212) 642-1732

12 INTA Bulletin • April 51, 2001 Vol. 56, No. 8

EDITORS: JULIAN GYNGELL,ALLAN POULTER, PETER

BROWNLOW

THIS RECENTLY SUPPLEMENTED

(Release #1/December 2000),revised, and expanded editionoffers commentary and analysison core tenets, the pertinent reg-ulations and implementingrules, application contents andprocedure, search considerations,registrability, seniority, opposi-tions and observations, groundsfor revocation, assignments andother transfers of marks,infringement, and litigation.Included in the Appendix arefull texts of the Regulation andImplementing Rules, referencecopies of the Application andGeneral Authorization forms,the Guidelines ConcerningProcedures Before OHIM(General Provisions,

Examination Guidelines,Opposition Proceedings), aninvaluable Case Index of ECJdecisions, Advocate Generalopinions, OHIM and NationalCourts decisions, and more.

Let seventeen expertEuropean practitioners lead youthrough the intricacies of CTMlaw, practice and procedure inthis newly updated, and singlemost comprehensive resource onthe subject.

$175.00 Members; $225.00 Non-Members1999/2000 - Second Edition750 pages; Looseleaf /SupplementsISBN 0-939190-31-1

Price includes all supplementsthrough December 2000. Futuresupplements priced separately.Update service may be canceledat any time.

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BULLETIN EDITORIAL BOARD

John CrittendenEditor in Chief

Cooley Godward LLP, San Franciscojcrittenden@cooley.com

Thomas DrescherExecutive Editor, Law & Practice:

The AmericasSquire Sanders & DempseySan Francisco, California

Olga NedeltscheffExecutive Editor, Law & Practice: Europe,

Middle EastThe Philip Morris Europe S.A.,

Lausanne, Switzerland

Trevor StevensExecutive Editor, Law & Practice: Asia, Africa

Davies Collison Cave, Sydney

Fred Carl III Executive Editor, Features

Bayer Corporation, Elkhart, Indiana

Naeran RubioManaging Editornrubio@inta.org

To reach an INTA department by e-mail, please contact:

Executive Director: executivedirector@inta.org

The Trademark Reporter: tmr@inta.org

The Bulletin: bulletin@inta.org

Administration & Finance: adminfinance@inta.org

Meetings: meetings@inta.org

Publications: publications@inta.org

Communications: communications@inta.org

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Membership Services: membershipservices@inta.org

Job Bank: jobbank@inta.org

TM Affairs & Policies: tmaffairs@inta.org

Brand Names Education Foundation: bnef@inta.org

© 2001 International Trademark Association

Although every effort has been made to verify theaccuracy of items carried in this Bulletin, readers areurged to check independently on matters of specificconcern or interest.

U.S. RoundtablesApril 9–April 23, 2001 Multiple Locations

Hong Kong RoundtableApril 27, 2001Central, Hong Kong

Annual MeetingMay 5--May 9, 2001 San Francisco, USA

Corporate RoundtablesJune 4--June 15, 2001 Multiple Locations

For more information log on to the INTA web site atwww.inta.org or callMembership Services, +1 [212] 768-9887,Ext 157 or Fax: +1 [212] 768-7796

The CommunityTrade MarkRegulations, Practice andProcedure--Updated &Revised Second Edition

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