Bulletin 3 Association News

Trademark Administration Paralegal Symposium in Munich

4 Features

Trademark Protection in the Russian Federation: Cyrillic-Script and Russian-Language Considerations

Court-Facilitated Mediation: A View from Both Sides of the Atlantic

6 Law & Practice

DENMARKUse of FISHERMAN for Vodka Shots Prohibited

FRANCE ECJ Explains Likelihood of Confusion Factors with Respect to Distinctiveness, Marketing of Earlier Mark

ISRAELApplication for Vodka Label Is Denied Because of Confusing Similarity to ABSOLUT Vodka

NEW ZEALAND Opposition Proceedings Receive Vote of Confidence from the Court of Appeal

NIGERIA Appointment of New Registrar-General

TAIWAN New IPR Courts

Planned Changes to Patent and Trademark Appeals UNITED STATES First Circuit Upholds Finding That M4 Is Generic for a Type of Rifle

Information on Foreign Websites and in Foreign Publications May Be Relevant in Discerning Consumer Impression

Applicant in Opposition Proceeding Amends Basis, But Board Finds Fraud

11 INTA Bulletin Board

The Voice of the International Trademark Association July 15, 2007 Vol. 62, No. 13

IN ThIS ISSUE

the plaintiff used to describe its resorts.Novelty argued that there was absolutely no risk

of confusion for the public and that no buyer had purchased units because of the possible associa-tion with Amanresorts. Therefore, the defendant aruged, there would be no possibility of damage to Amanresorts’ interest. Furthermore, it said, the companies ran totally different types of business.

The High Court rejected the defendant’s contentions, and on May 11, 2007, rendered its decision in favor of the plaintiff. It ruled that the condominium project must be renamed, as the use of the name AMANUSA was likely to cause dam-age to the plaintiff ’s goodwill.

This decision, which is subject to appeal, comes nearly ten years after the introduction of well-known marks in the Singapore Trade Mark Act 1999.

Contributor: Gladys Mirandah, patrick mirandah co., Singapore; Verifier: K. Sukumar, Ravindran & Associ-ates, Singapore

As reported in the Singapore daily Straits Times, the Singapore High Court has for the first time declared a mark to be well known.

The case involved Amanresorts Group’s trademark infringement claim against Nov-elty Pte Ltd. At issue was the use of the name AMANUSA, which Novelty had chosen as the name of a condominium project. It is also the name of a well-known luxury resort on the Indonesian island of Bali, which is one of the 18 Amanresorts properties around the world.

Amanresorts claimed that the use of the mark would confuse consumers and “lead to the gradual whittling away and eventual erosion of the uniqueness and exclusivity associated” with the resort’s brand. Further, the plaintiff claimed to have suffered loss and damage to its brand AMAN, which it believed it rightfully owned. Moreover, Novelty had advertised its AMANUSA homes as an “exclusive … private hideaway,” which was similar to the expression

Landmark Decision on Well-Known Marks in Singapore

Board Adopts Resolution Setting Targets for Criminal Sanctions Against Counterfeiting

counterfeiting be treated as a transnational crime, because in many instances (a) it is committed in more than one country; (b) it is committed in one country but a substantial part of its preparation, planning, direction or control may take place in another country; (c) it is committed in one coun-try but may involve an organized criminal group that engages in criminal activities in more than one country; or (d) it is committed in one country but has substantial effects in another country.

2. Criminalize Laundering of Proceeds of Crime Resulting from Counterfeiting

Counterfeiting activities can lead to a significant accumulation of wealth. But counterfeiters must hide the illicit origin of their funds. That hiding constitutes money-laundering, which is technically defined as the concealment or disguising of the illegal origin of the proceeds of crime.

In the context of globalization, counterfeiters take advantage of the ease of moving capital, ad-vances in technology and increases in the mobility

On June 20, 2007, INTA’s Board of Directors adopted a resolution urging harmonization and improvement of the international legal frame-work for criminal sanctions against trademark counterfeiting.

The Anticounterfeiting & Enforcement Committee (ACEC), which drafted the resolu-tion, recognizes the shortcomings in treating counterfeiting solely as a trade issue—for example, in the TRIPS Agreement. Thus the resolution is based on the ACEC’s belief that it has become necessary to promote and engage in dialogues that explore options for harmonizing criminal sanctions against counterfeiting.

The resolution sets out four objectives for governments and international institutions to consider when entering into such dialogues:

1. Recognize Counterfeiting as a Transnational Organized Crime

Organized counterfeiting groups cross national borders and frequently affect many countries at once. Therefore, INTA urges that See CRIMINAL SANCTIONS on next Page

Representing Trademark Owners Since 1878July 15, 2007�

Association Newsof people and commodities, as well as the significant diversity of legal provisions in various jurisdictions. As a result, assets can be transferred very quickly from place to place and, through exploita-tion of existing legal asymmetries, eventually appear as legitimate assets, available to serious offenders and criminal organizations anywhere. These assets can be used to finance criminal opera-tions, reward past crimes and serve as incentives for future ones. Therefore, INTA urges the criminalization of the laundering of the proceeds of crime resulting from counterfeiting, to ensure that counterfeiters are not profiting from their crimes.

The criminalization of the conduct from which substantial il-licit profits are made does not by itself adequately punish or deter professionally organized counterfeiting groups. Even if arrested and convicted, some of those offenders will be able to hide their illegal gains for personal use and for maintaining their criminal enter-prises’ operations. Despite some sanctions, the perception is likely to remain that crime pays in such circumstances and that govern-ments are ineffective in removing the means for criminal groups to continue their activities even if individuals are convicted and incar-cerated. Practical measures to keep offenders from profiting from their crimes are necessary. Therefore, INTA advocates implementa-tion of strong confiscation regimes providing for the identification, freezing, seizure and confiscation of money and property acquired as a result of trademark counterfeiting.

3. Remove Jurisdictional Gaps Affecting Counterfeiting Offenses

Counterfeiters frequently try to evade national regimes by moving between countries or engaging in acts in more than one country. Jurisdictional gaps enable fugitives to find safe havens. In cases where a professionally organized counterfeiting group is ac-

Criminal Sanctions CONTINUED FROM PREvIOUS PAGE

tive in several countries, each of which may have jurisdiction over the group’s conduct, there is no mechanism for those countries to coordinate their efforts.

Therefore, INTA urges the removal of jurisdictional gaps, such as those that enable fugitives to find safe havens by moving be-tween countries or engaging in acts in more than one country. This will increase the likelihood that no serious trademark counterfeit-ing crime will go unpunished and that all parts of the crime will be punished where they take place.

4. International Harmonization of Sanctions Against Counterfeiting

It is necessary to ensure that the prosecution of and penalties applied to counterfeiters around the world are comparatively symmetrical and commensurate to the harm inflicted by and the benefits derived from their criminal activities. Currently, the penal-ties for counterfeiting differ significantly from one jurisdiction to another, reflecting different national traditions, priorities and poli-cies. Therefore, the Association urges the international harmoniza-tion of prosecution, adjudication and sanctions against trademark counterfeiting so that a harmonized minimum level of deterrence is applied throughout the world.

The complete text of the resolution is available in the Policy Development & Advocacy section of www.inta.org.

For more information, contact Faisal Daudpota, INTA Anti-counterfeiting Manager, at fdaudpota@inta.org

TRADEMARK ADMINISTRAToRSCoNFERENCELong Beach, California, USA

october 1 – 3, �007

Join your colleagues at the premier annual event for non-attorney trademark professionals this october!

The program will provide comprehensive, practical and timely information on trademark issues such as:

• Internet and Domain Name Updates• International Trademark Use and International Review• International Searching Strategies• Marketing and Trademarks

At this three-day Conference, take advantage of the opportunities to learn, earn CLE credit, be challenged, discover new resources in the Exhibit Hall, reconnect with old friends and make new ones.

Mark your calendar, and check www.inta.org/go/education for further details.

www.inta.org Vol. 62, No. 13 3

Association NewsTrademark Administration Paralegal Symposium in Munich

verena von Bomhard (Lovells, Spain) reported on the latest devel-opments with regard to Internet and GPS services. The day’s final session was presented by Marc Groebl (Howrey LLP, Germany), who explained the various forms of trademark searches.

“I wanted to hear how other companies handle their trademark and domain name portfolio,” remarked Nadine Ollwitz (Henkel KGaA, Germany). “It is good to hear that the problems are the same.”

Sabrina-Lee Jungbauer (Taylor Wessing, Germany) appreciated the presenters’ insights into their companies’ organization, noting

that “this understanding makes our legal work easier.”

During the second day, James R. Cady (Howrey LLP, United States) and Ulrike Nöff (Red Bull GmbH, Austria) spoke on practical issues, developments and problems concerning International Registrations under the Madrid System. This issue was the focus of the following session on the extension of International Registrations to the United States, which was led by Dr. Gudren Irsa-Klingspiegl (Schönherr Rechtsanwälte GmbH, Austria), Susan M. Freedman (Nixon Peabody, United States) and Rebecca L. Roby (Baker & Hostetler LLP, United

States). The lively discussion that followed revealed that proving respective use and the question of fraud are issues that frequently face trademark specialists outside the United States as well.

Another topic given much attention was European Community trade marks. Participants were able to learn about providing proof of use before the Office for Harmonization in the Internal Market. Achim Bender (OHIM, Spain) gave an interesting overview on the legal provisions and illustrated these with examples from the latest case law. In addition, attendees heard practical advice from Dr. Maximilian Kinkeldey (Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Germany) on how to properly file use documents.

After a short walk, Symposium par-ticipants had the opportunity to visit the

German Patent and Trademark Office and to learn more about e-filing of German trademarks. Another highlight was the ride on the paternoster elevator, which took attendees to the building’s tenth floor, from where they had a windy but fantastic view of Munich.

Far too early came the last session, in which Beate Schmidt (OHIM, Spain) gave an interesting overview of current develop-ments with regard to nontraditional European trademarks.

All attendees agreed that the Symposium was a success. They look forward to attending INTA’s May 2008 Annual Meeting, which will also take place in Germany, this time in Berlin.

By: Christine Neuhierl, Grünecker, Kinkeldey, Stockmair & Schwanhäuss-er, Munich, Germany; Prepared by INTA Bulletin–Features Members, Benefits & Services Subcommittee

On June 25 and 26, 2007, more than 60 trademark lawyers, para-legals and trademark professionals gathered for INTA’s Trademark Administration Paralegal Symposium in Munich, Germany—the first time that INTA had hosted such a symposium in Munich. This city was a natural choice, as the German Patent and Trade-mark Office, the German Federal Patent Court and the European Patent Office are located there. Another new aspect was that most of the presentations were in German. The Symposium attracted specialists not only from German-speaking countries, but also from European countries such as Italy, Spain and the United Kingdom, as well as from Brazil, China, Jordan, Paraguay, Peru and the United States.

Christel Canthal de Piérola (Piérola & Asociados, Peru) was glad to come to the meeting all the way from Lima, Peru: “We have many clients from Germany, and the Symposium helped me to un-derstand their way of thinking and their legal background.”

The speakers’ willingness to share trademark strategies with was well-re-ceived by attendees. “It was interesting to hear that besides applying for a trade-mark and registering the corresponding domain, companies also try to register generic terms as domains,” said Jean-Francois vanden Eynde (avantiq, Luxembourg). “I was pleased to hear how other compa-nies handle their trademark and domain name portfolios.”

The first day started with a lively and illustrative introduction by Prof. Dr. Guido Kucsko (Schönherr Re-chtsanwälte GmbH, Austria), who made attendees aware of intercultural problems of communication.

The next session focused on managing a multinational trademark portfolio. Cé-lia Ullmann (Philip Morris International Management SA, Switzerland) gave practical insights into her work, explain-ing her company’s approach and how it collaborates with local counsel. She was followed by Katrina Burchell (Unilever P.L.C., United Kingdom), who stressed the importance of free access to data in managing a trademark portfolio of 155,000 trademarks. Susanne Sourell (DaimlerChrysler AG, Germany) discussed the different working fields of her firm’s various divisions and the conflicting interests that arise.

Dr. Joachim Renner (Henkel KGaA, Germany) and Astrid Wäber (Red Bull GmbH, Austria) spoke on managing a domain name portfolio. They provided background information on “do-main squatting” and presented strategies for protecting trademarks infringed by domain names.

After lunch, the Symposium continued with a session on practical aspects of the classification and formulation of goods and services. Noélle Moutout of WIPO gave advice on how to avoid irregularities in classification by formulating precise terms. Dr.

Left to right: Felipe Dannemann Lundgren, Sabrina-Lee Jungbauer, Nadine Ollwitz and Jean-Francois Vanden Eynde

Representing Trademark Owners Since 1878July 15, 20074

Features

Trademark rights in the Russian Federation can be acquired only through registration. Given the significant differences not only be-tween Russian and English (and other Roman-alphabet languages), but also between the characters of their alphabets, it is important to consider the manner in which trademarks are registered in Rus-sia in order to ensure an adequate level of trademark protection.

Although Russian trademark law does not require registration of the Russian-language version of a mark, it is generally advisable to secure registered trademark protection in both Roman and Cyrillic characters.

In terms of brand promotion in the Russian Federation, registra-tion in the Russian language using Cyrillic characters can be very beneficial from a marketing perspective, since most advertising in Russia must appear in the Russian language. Even though foreign-language trademarks registered and used in Russia are not subject to this requirement, consumer expectations should be taken into account. Whereas a decade or so ago, a product labeled with a brand in the English language using Roman characters would have enjoyed popularity in Russia simply by virtue of its foreign origin, now Russian consumers tend to expect a foreign product to be marketed and sold in their native language.

The issue of registering in both Roman and Cyrillic characters is also relevant when assessing the likelihood of confusion between marks for purposes of enforcement. It is not always safe to assume that registration of a mark in Roman characters will prevent its use and registration in the Cyrillic script, or vice versa. Marks are con-sidered confusingly similar in Russia by virtue of their phonetic, visual and/or semantic similarities and the overall impression they convey. In many cases, an English-language trademark depicted in Roman characters will convey quite a different overall impression than the Cyrillic version of the mark.

Multiple approaches should be considered when adapting a mark into Cyrillic. The mark can be either transliterated on a let-ter-by-letter basis or transcribed based on the way it is pronounced as a whole. For example, the English-language GREEN GIANT mark can be transliterated as ГРИН ГИАНТ or transcribed as ГРИН ДЖАЙЭНТ.

Alternatively, the mark can be translated into a corresponding word in the Russian language. (For example, GREEN GIANT can be translated as ЗЕЛЕНЫЙ ВЕЛИКАН.) It is also important to determine whether the adopted Cyrillic version of the mark has any negative meaning in the Russian language and/or is appealing to the Russian consumer when spoken.

None of these methods, taken individually, will ensure complete protection in Russia. For example, a mark that is simply translated into Russian from its English equivalent may not bear any phonet-ic resemblance to the English-language version, and consequently a phonetically similar Russian-language mark may be permitted to coexist with the English-language version.

Accordingly, the most effective strategy for the protection of trademarks in Russia is to register and use the trademark in various formats, including:

1. the original English- or other home-language version of the trademark;

2. a phonetically similar Cyrillic adaptation of the trademark;

Trademark Protection in the Russian Federation: Cyrillic-Script and Russian-Language Considerations

3. the Russian-language translation of the mark in Cyrillic characters, if such a translation exists; and

4. the brand logo (if applicable).

The obvious downside in securing multiple registrations for a single mark is the cost involved, particularly in the case of large trademark portfolios. Russian trademark law does not provide for the filing of a series of applications; accordingly, each version of the mark must be the subject of a separate application.

In order to reduce costs, some trademark owners have taken to filing a single application for both the Roman and the Cyrillic ver-sions of the mark. However, there are considerable risks associated with this strategy. If the mark is used only in the Cyrillic version or only in the Roman-character version, but not in the combination Cyrillic-Russian version as registered, the registration could be at risk of cancellation for non-use. Moreover, a combination Cyril-lic-Roman registration may have little value in an infringement action. So, unless the mark will be used in the combination Cyril-lic-Roman format, it is not advisable to register it in this format.

It is also important to bear in mind that the approach taken to the protection of marks in the Russian Federation will not be equally applicable to all of the states within the Commonwealth of Independent States (CIS), most of which have official languages other than Russian. Many also have legislative restrictions on the use of foreign-language trademarks in their jurisdiction. Compa-nies doing business in the CIS should consider legal protection of their brands in the local language.

By: Susan J. Keri, Bereskin & Parr, Toronto, INTA Bulletin Features–Policy & Practice Subcommittee; Verifier: Anastassia Sinitsyna, Gowlings Inter-national Inc., Moscow

U.S

. R

oU

ND

TA

BL

ES ThIS IS ThE PERFECT PLACE To

MEET WITh LoCAL CoLLEAGUES AND DISCUSS TRADEMARK ISSUES IN

DEPTh.

ToPIC: Trademark Trial and Appeal Board (TTAB) Practice

DATES: July 16 – 30, 2007

Held in multiple U.S. cities, these roundtables are designed to fit into your busy schedule.

Visit www.inta.org/go/roundtables to register and for more information.

www.inta.org Vol. 62, No. 13 �

Court-Facilitated Mediation: A View from Both Sides of the AtlanticImagine that your client, a U.S. company, is involved in a dispute with a business from the United Kingdom. Suit is likely to be filed in one venue or the other. In which venue would your client more likely find itself participating in mediation or another form of alternative dispute resolution (ADR) as a way to help resolve the conflict? The availability of ADR programs might even be a consideration in choosing the forum for litigation. Of course, the parties are always free to agree to try ADR on their own, but how and when do the courts in these jurisdictions offer court-sponsored programs or otherwise encourage the use of ADR?

In the United States, the answer may actually depend on which court will hear your client’s case. As a result of the Alternative Dis-pute Resolution Act of 1998, federal courts—to varying degrees—typically encourage the parties to engage in ADR efforts. At one end of the spectrum, the Northern District of California directs the parties to select and participate in one form of ADR, which could include mediation, a settlement conference before a judge, arbitration or Early Neutral Evaluation (a program where the neu-tral provides the parties with an objective and early, nonbinding evaluation of the case). This court even selects and trains neutrals, who serve on a panel of available mediators, arbitrators or early neutral evaluators; the neutrals are then available to the parties that select those options, at very little, if any, cost.

A survey of several U.S. district courts confirms that most feder-al courts will encourage, if not order, parties to attempt resolution through an ADR procedure before allowing them to go to trial. While not all courts have a panel of volunteer neutrals, all will be happy to let the parties seek out-of-court ADR opportunities.

But some courts take a less active role and simply ask the parties to “consider” using ADR. In those courts, the parties are merely required to discuss whether they would benefit from any private or court-sponsored ADR. The District of Oregon, the Eastern Dis-trict of California and the Middle District of Georgia are among the courts that encourage, but do not compel, ADR discussions.

In contrast to the position in some parts of the United States, ADR is not compulsory in the United Kingdom. various vol-untary mediation schemes exist within the court system—for example, in the Court of Appeal—as well as in the Intellectual Property Office (IPO). Individual judges can also play an influen-tial role in encouraging parties to mediate. The bottom line, how-ever, is that the parties can refuse to go to mediation. This follows a Court of Appeal judgment in the conjoined appeals of Halsey v. Milton Keynes NHS Trust and Steel v. Joy (2004) 1 WLR 3002, which held that compelling parties to participate in ADR would likely be an unacceptable constraint on the access to the court and, therefore, a violation of Article 6 of the Human Rights Act 1998.

Instead of ordering ADR, the courts and the Intellectual Property Office indirectly encourage the parties to participate, because an “unreasonable refusal to mediate” can have economic consequences. Normally, the prevailing party can claim the major-ity of its costs back from the losing party. However, in Dunnett v. Railtrack PLC (2002) CILL 1861, the court held that a successful defendant could be deprived of costs where it had unreasonably refused to mediate. In the Halsey case, the court indicated that the burden was on an unsuccessful party to show why the normal rule

on costs should not apply, and identified a number of factors the court could take into account in determining whether a refusal to mediate was unreasonable. The factors include:

• whether the nature of the dispute made it suitable for ADR;• the merits of the case—whether the party had a reasonable

belief that it had a strong case;• the extent to which other settlement methods had been at-

tempted;• whether the costs of ADR would be disproportionately high;• whether any delay resulting from ADR would be prejudicial;• whether the court encouraged the parties to mediate; and • whether the ADR had a reasonable prospect of success.

Using these criteria, and going one step further than the court did in Dunnett, the Technology and Construction Court (in P4 Limited v. United Integrated Solutions PLC (2007) BLR 1) ordered a party that had unreasonably refused mediation to pay costs when it normally would have received costs. The judge noted that most cases were suitable for mediation and that the settlement correspondence between the parties alone was not a substitute for mediation, where clients can interact with each other and a neutral third party and can discuss the central issues.

Imposing costs sanctions on successful litigants that have unreasonably refused to mediate is an indirect way of encouraging mediation, but there is evidence that it works. In a recent Ministry of Justice report, the authors concluded that voluntary media-tion began to rise steeply following the decision in the Dunnett case. (Professor Dame Hazel Genn et al., “Twisting Arms: Court Referred and Court Linked Mediation under Judicial Pressure,” Ministry of Justice Research Series 1/07, May 2007). The report further suggested that the Dunnett decision “encouraged or fright-ened” litigants and their lawyers into trying mediation. Thus, the deterrent effect of costs sanctions can be very powerful: a litigant can choose not to mediate—but only if it is prepared to take the risk of paying a financial penalty.

Whether, as in the United States, courts officially sponsor (or at least strongly encourage) mediation, or, whether, as in the United Kingdom, courts indirectly encourage mediation by imposing economic consequences for not doing so, courts on both sides of the Atlantic recognize the benefits of ADR.

By: Dawn Osborne, Rouse Legal, London, ADR Committee; and Susan O’Neill, Hanson, Bridgett, Marcus, Vlahos & Rudy, LLP, San Francisco, California, INTA Bulletin Features–Policy & Practice Subcommittee

To learn more about ADR or to find out about INTA’s ADR Program, visit the INTA website at www.inta.org/go/adr

Representing Trademark Owners Since 1878July 15, 20076

Law and PracticeDENMARK

Use of FIShERMAN for Vodka Shots Prohibited On April 24, 2007, the Danish Supreme Court ruled in favor of the proprietors of the trademark FISHERMAN’S FRIEND, the U.K. company Lofthouse of Fleetwood Ltd., thereby prohibiting the sale of vodka shots under the name FISHERMAN by the Dan-ish company Nortlander A/S.

Lofthouse has been selling lozenges in Denmark since 1977 un-der the trademark FISHERMAN’S FRIEND in small striped bags with the picture of a fishing boat. In 2001, Nortlander began sell-ing vodka shots in Denmark under the name FISHERMAN with a label showing the picture of a fisherman. Lofthouse requested that Nortlander stop using the name as well as the label, stating that its mark FISHERMAN’S FRIEND was well known and that use of the name FISHERMAN for alcoholic beverages infringed its trademark rights. When Nortlander refused, Lofthouse filed a court action with the Maritime and Commercial Court in Copen-hagen, requesting that Nortlander be prevented from producing, marketing and selling alcoholic beverages under the name FISH-ERMAN and, furthermore, be ordered to change its labels.

The Maritime and Commercial Court did not consider the trademark FISHERMAN’S FRIEND to be well known, and

FRANCE

ECJ Explains Likelihood of Confusion Factors with Respect to Distinctiveness, Marketing of Earlier MarkIn T.I.M.E. ART Uluslararasi Saat Tcareti ve dis Ticaret AS v. OHIM, Case C-171/06 (March 15, 2007), the European Court of Justice (ECJ) was asked to clarify some of the factors that should or should not be considered when determining whether there ex-ists a likelihood of confusion between two opposing marks.

T.I.M.E. ART filed a Community trade mark application for QUANTUM to cover “watches, clocks etc” in Class 14. The ap-plication was opposed by the owner of the French registration for QUANTIÈME, which designated “watches” and other goods in Class 14.

OHIM upheld the opposition, finding that there was a likeli-hood of confusion on the part of the relevant public, as the goods concerned were either identical or similar and the marks were visu-ally, phonetically and conceptually similar. The Board of Appeal (Board) annulled the Office’s decision. Surprisingly, it stated that despite the identity or similarity between the goods and the simi-larity of the marks at issue, the appropriate factor to consider, in determining whether there was a likelihood of confusion, was how the goods weare marketed. The Board accordingly held that as the goods designated under the earlier mark were sold via the French supermarket chain E. Leclerc, there was no likelihood of confusion with the later-filed mark, which was used on goods sold in outlets other than E. Leclerc.

Upon appeal to the Court of First Instance (CFI), the issue of what factors to consider when comparing opposing marks was central to the proceedings. The CFI stated that the specific circumstances of how the goods under an earlier mark are actually

therefore allowed Nortlander to use the trademark FISHERMAN for its vodka shots. However, the Court did prohibit the use of particular labels showing the picture of a fisherman along with the trademark FISHERMAN.

Lofthouse filed an appeal with the Supreme Court. Based on the same material produced during the lower court proceedings, the Supreme Court reached a different result: it considered the mark FISHERMAN’S FRIEND to be well known and held that Nort-lander’s use of the mark FISHERMAN for vodka shots took unfair advantage of the goodwill attached to FISHERMAN’S FRIEND. Since the FISHERMAN’S FRIEND products have often been marketed in connection with sports, the Court also found that Nortlander’s use of the FISHERMAN mark could be detrimental to the repute attached to FISHERMAN’S FRIEND.

Nortlander was ordered to pay DKK 500,000 (USD 90,000) in damages and compensation.

Contributor: Susie P. Arnesen, Sandel, Løje & Wallberg, Copenhagen; Verifier: Niels Lund-Johansen, Chas. Hude A/S, Copenhagen

marketed were not to be taken into consideration for establishing a likelihood of confusion. Furthermore, the CFI held, it is of limited importance that the earlier mark has a weak distinctiveness, as the question is not whether the earlier mark is distinctive but whether there is a likelihood of confusion between the two opposing marks.

The CFI ruled that in examining the similarities between the opposing marks, the Board had wrongly assessed the criteria for examining conceptual differences and similarities. In light of the interdependence between the relevant factors, any conceptual dif-ferences between the marks could be offset against the similarity between the goods only where at least one of the marks had a clear and precise meaning that the relevant public could easily under-stand. Having found that neither mark was easily understood by the average French consumer, the CFI concluded that there was a likelihood of confusion and annulled the Board’s decision.

The ECJ, finding that the appeal by T.I.M.E. ART against the CFI’s decision was largely unfounded and partly inadmissible, reaf-firmed the points considered by the CFI.

Specifically, the Court held that the earlier mark’s lack of distinc-tiveness was not the test for finding a likelihood of confusion, as this would be contrary to the nature of Article 8(1)(b), Communi-ty Trade Mark Regulation. Furthermore, the specific circumstances in which the products under an earlier mark are marketed should not be the basis for establishing a likelihood of confusion on the part of the relevant public.

Contributor: Vanessa Bouchara, Cabinet Bouchara Avocats, Paris; Veri-fier: Edmund Harrison, Venner Shipley LLP, London

www.inta.org Vol. 62, No. 13 7

In a recent judgment, the Court of Appeal of New Zealand indicated that considerable weight should be given to the Trade Mark Commissioner’s findings in considering an appeal of a trademark opposition. Stichting Lodestar v. Austin, Nichols & Co. Inc. [2007] NZCA 61 CA94/05. However, it remains to be seen whether New Zealand courts will follow this guide in practice.

The case essentially involved a determination as to whether the respective trademarks WILD TURKEY and WILD GEESE were so similar as to lead to confusion. The Assistant Commissioner rejected the opposition, on the basis that there was no confusing similarity between the marks. On appeal, Gendall J of the High Court of New Zealand found that the marks were confusingly similar. The judge considered that the idea or concept of the mark was critical, so that the contextual similarity of the marks was likely to lead to confusion.

The Court of Appeal reversed the High Court judge’s deci-sion, allowing the appeal. In so doing, it held that the High Court should have deferred to the Assistant Commissioner’s expertise:

Our starting point is the observation of Hoffmann LJ in Re Grayan Building Services Ltd [1995] Ch 241 at 254:

“[T]he standards applied by the law in different contexts vary a great deal in precision and generally speaking, the vaguer the standard and the greater number of factors which the court has to weigh up in deciding whether or not the standards have been met, the more reluctant an appellate court will be to interfere with the trial judge’s decision.”

[29] We endorse that view. In the present context, the determi-nation of whether a proposed trade mark entails the possibility of confusion is a vague standard that can be influenced by any number of factors. Similarity is a matter of degree (The Euro-pean Ltd. v. The Economist Newspaper Ltd. [1998] FSR 283 at

NEW ZEALAND

opposition Proceedings Receive Vote of Confidence from the Court of Appeal288) and the decision as to whether two marks are similar is one that is influenced by many possible considerations….

[30] In our view, this was a case where deference by the High Court to the expertise of the Assistant Commissioner was called for. We say that because the conclusion reached by the Assistant Commissioner, in relation to an issue calling for an evalua-tive assessment on her part, appears to us to be a conclusion which cannot be fairly characterised as wrong. She adopted an orthodox approach to the task and directed herself appropri-ately as to the legal test she had to apply. Having done so, she reached a conclusion which involved a value judgment on the likelihood of confusion or deception, which appears to us to be soundly based. That being the case, the High Court Judge ought not to have embarked on a reconsideration of the issue without considering, and giving weight to, the Assistant Commissioner’s conclusion. He was, of course, entitled to reach a conclusion contrary to that reached by the Assistant Commissioner, but not to do so without giving weight to her views. If he had done that, we believe that he would have upheld the Assistant Commis-sioner’s decision. We are satisfied that that should have been the outcome of the High Court appeal.

This case may provide some assistance for practitioners consid-ering the prospects of succeeding in an appeal from an IPONZ decision. The case supports the view that substantial weight should be given to the Assistant Commissioner’s findings in the original hearing. However, anecdotal feedback indicates that New Zealand courts may not necessarily adopt this approach, which gives some hope to parties seeking to appeal a New Zealand opposition deci-sion.

Contributor: Nick Holmes, Davies Collison Cave, Melbourne, Australia; Verifier: Clive Elliott, Shortland Chambers, Auckland, New Zealand

Taiwan’s Intellectual Property Office (TIPO) plans to revise and simplify its appeals process for its administrative cases. In the future, patent and trademark appeals to the TIPO, for example in opposition or cancellation cases, will be reviewed by a panel of examiners rather than a single examiner.

In addition, appeals cases will be handled as disputes between two private parties rather than as between the TIPO and the ap-pellant. For example, in the past, a party opposing a trademark registration was essentially taking action against the TIPO. The TIPO had no obligation to keep the opposer informed as to the response and position of the trademark applicant.

Under the new structure, a party filing or appealing an opposi-tion or cancellation will have the right to know more about the opposing party’s arguments and deadlines and to take a more active role in the process.

Contributor: Laura W. Young, Wang and Wang, Taipei; Verifier: Alex C. Hung, J&J Attorneys at Law, Taipei

TAIWAN

Planned Changes to Patent and Trademark Appeals The Judicial Yuan’s proposal to create a separate court system of

Intellectual Property Courts has been passed by Taiwan’s Legisla-ture. The new court system, long desired by foreign companies, will be established this year. The change should also help speed up IP litigation, as the new courts will have judges who specialize in intellectual property and thus will have experience in the field and will be more confident in making decisions. A separate IPR Public Prosecutor’s Office will also be created.

The move is seen as a significant improvement, as IP rights holders should be able to command immediate attention for their complaints, rather than having to wait for prosecutors to handle violent crimes before they have time for IP cases.

Contributor: Laura W. Young, Wang and Wang, Taipei; Verifier: Alex C. Hung, J&J Attorneys at Law, Taipei

TAIWAN

New IPR Courts

Representing Trademark Owners Since 1878July 15, 2007�

Law and PracticeNIGERIA

Appointment of New Registrar-General Effective June 12, 2007, Hadjia J.K. Ahmadu-Suka was appointed the new Registrar-General of the Nigerian Trademarks, Patents & Designs Registry. Ms. Ahmadu-Suka is the first woman to occupy this position in recent times.

Prior to her appointment, which took immediate effect, Ms. Ahmadu-Suka was one of the senior assistant registrars at the office.

A transition period is expected during which Hadjia (as she is fondly referred to) will familiarize herself with the responsibilities of the office of the Registrar-General. As a first step, she met with all accredited agents at the Registry to discuss the challenges ahead, with a view to revamping the Registry’s image.

Indeed, the appointment of a new registrar comes amid much anticipation of a general overhaul of the operations. Some of the most pressing areas requiring attention are the irregular publication of journals (the last edition was in June 2006), space constraints, an outdated filing system and non-computerization of records (everything is being done manually), service of documents (particularly in opposition proceedings) and delays in registration processes.

Contributor: Uwa Ohiku, Jackson, Etti & Edu, Lagos; Verifier: Marlies Allan, Allan & Ogunkeye, Lagos

The Deputy Trademark Registrar denied an applica-tion to register the mark IMPERIAL vODKA & Device in Class 33 with respect to beverages, find-ing it was confusingly similar to the trade dress of ABSOLUT vodka. In re Israeli Trademark Applica-tion No. 173,021 – IMPERIAL vODKA & Device (in Class 33), Decision of the Deputy Trademark Registrar, May 20, 2007.

The Deputy Registrar held that the trade dress of ABSOLUT vodka met the criteria of a well-known trademark despite the fact that it was not regis-tered in Israel. Accordingly, it was entitled to broad protection. Therefore, despite minor differences be-tween the marks, as well as price differences between the applicant’s product and ABSOLUT vodka, there was definitely a likelihood of confusion. This was especially the case as the products at hand are com-modities that the average consumer picks up from the shelf based on the consumer’s imperfect recollec-tion of the main visual elements of the well-known get-up of ABSOLUT vodka.

Also, the applicant’s use of similar colors (black text over blue text in handwriting style, compared with blue text over black text in handwriting style in ABSOLUT vodka) increased the likelihood of con-fusion, and raised the assumption that the applicant attempted to take a free ride on ABSOLUT vodka’s immense goodwill. In addition, the idea of using a reference to monarchy (which is suggested by the name IMPERIAL) is also associated with the trade dress of ABSOLUT vodka, which includes an image of a Swedish king.

The Deputy Registrar held that the text “vodka IMPERIAL is produced according to a special recipe of highest quality ingredients,” which was part of the applied-for mark, was descriptive and laudatory and therefore ineligible for registration.

Contributors: Dan Adin & Eran Liss, Adin-Liss, Law Of-fices, Tel Aviv; Verifier: Nahum Gabrieli, Adv., Seligsohn Gabrieli & Co., Tel Aviv

ISRAEL

Application for Vodka Label Is Denied Because of Confusing Similarity to ABSoLUT Vodka

In Colt Defense LLC v. Bushmaster Firearms, Inc., Case No. 06-1696 (1st Cir. May 18, 2007), the U.S. Court of Appeals for the First Circuit upheld a trial court’s grant of summary judgment to Bushmaster in a trademark infringement case brought by Colt over use of the mark M4. The trial court determined that M4 was generic for a type of rifle and canceled Colt’s federal registration for the mark.

As evidence that M4 was generic, Bushmaster submitted several publications using M4 as a generic term for a type of rifle, and demonstrated that at least 15 gun manufacturers used M4 to describe their products. Bushmaster also argued that Colt had used M4 generically in a patent application.

Colt responded that (1) its registration, standing alone, should preclude sum-mary judgment; (2) articles in publications using M4 generically were of “limited significance”; (3) another competitor, Heckler & Koch, had acknowledged the mark’s validity in a settlement agreement; and (4) the U.S. military, in settling a dispute with Colt, had acknowledged the M4 rifle to be “designed by Colt.”

The First Circuit rejected each of those arguments. The court acknowledged that Colt’s registration for M4 created a rebuttable presumption of the mark’s validity. Once Bushmaster rebutted that presumption, however, Colt could not rely on the registration alone to overcome a motion for summary judgment.

The appellate court also found Colt’s arguments regarding the media articles unpersuasive, noting that the articles were directed at the relevant consumers. It discounted statements supporting Colt’s registration in the settlement with Heckler & Koch, noting that negotiated terms had little relevance to the public’s understanding of the mark. The court similarly discounted the agreement with the U.S. military, noting that if M4 were not generic, and the military changed suppliers, “it could lead to the absurd result of the military being prevented from identifying the weapon by use of the very classification system that it originally ha[d] devised.”

Contributor: Kevin W. Grierson, Willcox & Savage P.C., Norfolk, Virginia; Verifier: Jessica S. Sachs, Harness, Dickey & Pierce, P.L.C., Troy, Michigan

UNITED STATES

First Circuit Upholds Finding That M4 Is Generic for a Type of Rifle

www.inta.org Vol. 62, No. 13 �

ThE BUSINESS oF BRANDS FoRUMNew York, New York, USA | September 10 – 11, 2007

PRESENTING A NEW PERSPECTIVE oN TRADEMARKS – FRoM ThE PoINT-oF-VIEW oF ThE BRAND!

This two-day forum will offer a change of pace on trademark education by emphasizing both multi- and interdisciplinary approaches to brand protection for goods and services.

Join your colleagues as business, marketing and trademark experts address actual marketplace issues while outlining best practices to explore the communication and interaction between marketing and trademark professionals who leverage brand value.

Topics at this program will include:

• Collaboration between Marketing and Legal Professionals• Developing brands from the ground up• Perspectives on the value of the brand• Extending brands internationally• Near misses and direct hits in the branding wars

BRING yoUR CoMPANy’S MARKETING DEPARTMENT – ThIS INFoRMATIoN WILL BE VALUABLE To ThEM Too!

VISIT WWW.INTA.oRG/Go/BUSINESSoFBRANDS To REGISTER ToDAy!

The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision of the Trademark Trial and Appeal Board (TTAB) finding the term ASPIRINA for analgesic goods to be merely descriptive. In re Bayer Aktiengesellschaft, Case No. 06-1279, Serial No. 78/212,751 (Fed. Cir. May 24, 2007).

Bayer AG applied for registration of the mark ASPIRINA for analgesic goods. The examining attorney handling the application refused registration on the ground that the applied-for mark was merely descriptive of the goods. The TTAB affirmed that refusal on appeal. Bayer then appealed the TTAB’s decision to the Federal Circuit.

The evidence of record before the Federal Circuit consisted of dictionary definitions, Spanish-English translations, GOOGLE search results, Bayer’s webpage aspirina.com in both English and Spanish, excerpts from NEXIS news reports, and copies of regis-trations for ASPIRINA in Spanish-speaking countries and of an international registration for the mark providing protection in 20 other countries. The appeals court considered all of this material to determine the purchasing public’s understanding of the term ASPIRINA. Although some of the evidence supported registra-

UNITED STATES

Information on Foreign Websites and in Foreign Publications May Be Relevant in Discerning Consumer Impression

tion of the ASPIRINA mark, the court found that the TTAB’s decision was supported by substantial evidence. It held, moreover, that where there is conflicting evidence in the record as to whether a term is merely descriptive, the court must affirm the TTAB’s decision under the deferential “substantial evidence” standard of review.

The court did disagree with a portion of the TTAB’s decision. Specifically, the TTAB had concluded that the NEXIS service excerpts from foreign publications were of little probative value. The Federal Circuit found, however, that “information originating on foreign websites or in foreign news publications that are acces-sible to the United States public may be relevant to discern United States consumer impression of a proposed mark.” It concluded that foreign information sources must be evaluated on a case-by-case basis. Here, given the growing availability of use of the Internet for news and other materials, the court found that the foreign refer-ences were relevant.

Contributor: Leigh Ann Lindquist, Sughrue Mion, PLLC, Washington, D.C.; Verifier: Jessica S. Sachs, Harness, Dickey & Pierce, P.L.C., Troy, Michigan

www.inta.org Vol. 62, No. 13 11

INTA Bulletin BoardDonald M. Cameron and R. Scott MacKendrick, formerly of Ogilvy Renault LLP in Toronto, are pleased to announce the formation on June 1, 2007, in Toronto of Cameron MacKendrick LLP, a boutique firm specializing in intellec-tual property law. Joining Mr. Cameron and Mr. MacKendrick are associates Yuri Chumak and Christina Capone Settimi, also both formerly of the Toronto office of Ogilvy Renault.

Susan Keri has joined Bereskin & Parr in Toronto as a partner. She was previously with Gowling Lafleur Henderson in Toronto. Ms. Keri is a member of the INTA Bulletin Features–Policy & Practice Subcommittee.

Juan Carlos Ojam, Mercedes Bullrich, Ignacio Bereterbide and Raquel Flanz-baum, together with their team of attorneys and patent and trademark agents, are now practicing with the new law firm of Mitrani Caballero Ojam in Buenos Aires. Their group was formerly with the law firm known as Bruchou, Fernandez Madero, Lombardi & Mitrani.

Carlos D. Simões and his team joined DSL-Lawyers in Macau in July 2007. He previously headed the IP practice at C&C Lawyers for over ten years.

Mario Soerensen Garcia and 22 attorneys, technical professionals and paralegals have formed Soerensen Garcia Advogados Associados, an intellectual property, technology and related commercial law firm, with offices in Rio de Janeiro and São Paulo, Brazil. Mr. Soerensen Garcia and his colleagues decided for strategic reasons to separate from Di Blasi, Parente, Soerensen Garcia & Associados, S.C.

N. Meyer Zohn has joined the Washington, D.C. office of Rader, Fishman & Grauer PLLC, as an associate.

The INTA Bulletin Board announces job changes or other significant career news about individuals who work for INTA members. To submit an item for consideration, send a brief message with the individual’s name, position, firm and firm location to bulletin@inta.org.

INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein. To learn more about sponsorship opportunities and policies, visit www.inta.org.

UNITED STATES

Applicant in opposition Proceeding Amends Basis, But Board Finds FraudIn a citable decision, the Trademark Trial and Appeal Board (TTAB) permitted the applicant to amend the basis of her application for the mark STACCHI’S CO. 1996 & Design from “in use” to “intent to use” but found that the applicant committed fraud on the U.S. Patent & Trademark Office (USPTO) when she filed her application. Sinclair Oil Corp. v. Sumatra Kendrick, Opposi-tion No. 91/152,940 (T.T.A.B. June 6, 2007).

The applicant filed a use-based application for a mark for retail store services. After the application was published for opposition, Sinclair Oil filed an opposition based on likelihood of confusion. It later added non-use and fraud claims. The fraud allegation was based on the applicant’s willful, false and material misrepresentation of fact when she claimed use in commerce with respect to the services listed in the application when in fact she had not used the mark for those services. Sinclair moved for summary judgment on its non-use and fraud claims. The applicant responded and filed a request to amend the basis of her application from use to intent to use.

The TTAB granted the applicant’s amendment. The applicant properly submitted a verified dec-laration as to her bona fide intent to use the mark for the services listed in the application as of the application’s filing date.

The TTAB next considered Sinclair Oil’s sum-mary judgment motion as to fraud. In discovery, the applicant admitted that she did not use the mark for the services listed in the application. In response to the summary judgment motion, the applicant claimed to have incorrectly answered discovery and claimed to have used the mark for the listed services. She submitted no evidence in support of her use claims.

In finding that the applicant committed fraud on the USPTO, the TTAB noted that statements regarding use of a mark on identified goods or services are material to registration. At the time the applicant filed her application, she knew or should have known that she had not used the mark for the specified services. Since a mate-rial representation was made in the application, the TTAB found the application void ab initio. The intent-to-use basis could not cure the false misrepresentation.

Contributor: Leigh Ann Lindquist, Sughrue Mion, PLLC, Washington, D.C.; Verifier: Kevin W. Grierson, Willcox & Savage, P.C., Norfolk, Virginia

WhAT’S CooKING IN EURoPE?AN ADVANCED DISCUSSIoN AND CRITICAL REVIEW oF

TRADEMARK PRACTICE, PRoTECTIoN AND ENFoRCEMENTDecember 3 – 4, 2007 | Lisbon, PortugaL

JoIN yoUR CoLLEAGUES IN LISBoN To GET A FLAVoR FoR ThE CURRENT TRADEMARK CLIMATE IN EURoPE!

Designed for experienced in-house corporate and outside practitioners, a distinguished faculty will present an in-depth discussion of the legal mech-anisms and strategies to protect trademarks in the EU and the broader global implications.

This program is the perfect opportunity to satisfy your appetite for trade-mark knowledge with topics covering:• Whether the Madrid Protocol has so far lived up to its promises and has

met users expectations• The impact “use” requirements on the Community Trade Mark (CTM)• Counterfeiting and how to handle the enforcement of IP rights in Cus-

toms• Updates on recent trademark decisions from the European Court of

Justice, Court of First Instance and the OHIM Board of Appeals• Aspects of U.S. practice likely to affect practitioners in Europe• Outside counsel as business partners

And if the educational delights are not enough, you also get to enjoy the culinary wonders of Portuguese cuisine.

Visit www.inta.org/go/whatscooking to register today

International Trademark Association655 Third Avenue, 10th FloorNew York, NY 10017 USA+1-212-768-9887 • f: +1-212-768-7796www.inta.org • info@inta.org

July 16 – 30, �007Roundtable: TTAB PracticeVarious U.S. cities

September 10 – 11, �007The Business of Brands Forum New York, New York, USA

october 1 – 3, �007Trademark Administrators Conference Long Beach, California, USA

october 1 – 1�, �007Roundtable: Trademark Prosecution for LawyersVarious U.S. cities

November 7 – 11, �007Leadership MeetingOrlando, Florida, USA

December 3 – 4, �007International Forum: What’s Cooking in Europe?Lisbon, Portugal

December 3 – 4, �007International Trademark BasicsCambridge, Massachusetts, USA

May 17 – �1, �00�130th Annual MeetingBerlin, Germany

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

ChairMary DeLongis, VF Sportswear, Inc.

Vice ChairKay Rickelman, Spoor & Fisher

Feature Articles: Member Benefits & ServicesPatrick Gallagher, Fulbright & Jaworski L.L.P.

Feature Articles: Policy & PracticePatricia Wilczynski Brozek, Wilczynski Brozek Law

Law & Practice: AmericasJanice Housey, Roberts, Mlotkowski & Hobbes, P.C.

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

Law & Practice: Europe and Central AsiaClaus Eckhartt, Bardehle Pagenberg Dost Altenburg Geissler

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

STAFFExecutive Director Alan C. Drewsen, International Trademark Association

Director, Publishing Randi Mustello, International Trademark Association

Managing Editor, INTA BulletinJames F. Bush, International Trademark Association

Associate Editor, INTA BulletinJoel L. Bromberg, International Trademark Association

Designer Jesse Riggle, International Trademark Association

oFFICERS & CoUNSELPresidentDee Ann Weldon-Wilson, Exxon Mobil Corporation

President ElectRhonda Steele, Mars, Incorporated

Vice PresidentRichard Heath, Unilever P.L.C.

Vice PresidentHeather C. Steinmeyer, Blue Cross and Blue Shield Association

TreasurerGerhard R. Bauer, DaimlerChrysler AG

SecretaryGregg Marrazzo, Kimberly-Clark Corporation

CounselDavid H. Bernstein, Debevoise & Plimpton LLP

INTA Department Email AddressesCustomer Service: customerservice@inta.orgMeetings & Programs: meetings@inta.orgJob Bank: jobbank@inta.orgMembership: membership@inta.orgPublications: publications@inta.orgPublic Policy: tmaffairs@inta.orgPublic Relations: publicrelations@inta.orgRoundtables: roundtables@inta.orgSponsorship & Exhibitions: sponsorship@inta.orgThe Trademark Reporter®: tmr@inta.org

© 2007 International Trademark Association

Mark your Calendars

Although every effort has been made to verify the accuracy of items carried in this

newsletter, readers are urged to check independently on matters of specific concern or

interest. The INTA Bulletin primarily 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.

Exhibitions and SponsorshipTo inquire about sponsorship or exhibition opportunities for INTA’s events, visit www.inta.org.

PRSRT STDU.S. POSTAGE

PAIDNEW YORK, NY

PERMIT NO 4666

USPS APPROVED POLY FSM881