INTABulletinThe Voice of the International Trademark Association

AssociationNewsAssociationNews

May 1, 2014 Vol. 69 No. 9

In This Issue

Law&PracticeChile 14European Union 14Germany 15India 15Israel 16Serbia 16United Arab Emirates 17United Kingdom 18United States 18, 19

FeaturesCombating Contributory Infringement 9 on the Internet

How to Protect Your Marks Under 13 the New China Trademark Law

AssociationNewsWelcome New Members 2

U.S. Department of Commerce 4 Announces Intent to Transition Key Internet Domain Name Functions

How INTERPOL Helps to Combat 5 Counterfeiting

Volunteer Spotlight Milan Milojevic 8 Janice Housey 8

See “Quebec” on page 3

See “Hong Kong” on page 3

Québec Superior Court Rules in Line with INTA Amicus Brief

Hong Kong Is Almost Here!

Last month, the Québec Superior Court issued its long-awaited decision in the case of Maga-sins Best Buy ltée et al. v. Québec (Procureur général) (2014 QCCS 1427 (Apr. 9, 2014)). The case involved several well-known, multinational retailers doing business in the French-speaking province of Québec against the Office québé-cois de la langue française (OQLF), the body in charge of applying and enforcing the province’s language laws, including the Charter of the French Language (Charter). The Court, in a thorough and well-reasoned decision, con-firmed that businesses can keep using their registered trademarks on public signs outside their premises in the province without the need to add French generic language.

The Canada Subcommittee of INTA’s Interna-tional Amicus Committee had filed an amicus brief and made submissions at the hearing to provide the Court with a balanced perspective on important issues of trademark law and policy raised in this matter. (See INTA Bulletin Vol. 68, No. 20, Nov. 1, 2013.)

At issue in this proceeding was the interpreta-tion of the Charter and its Regulations, which require that public signs and posters and com-mercial advertising in the province of Québec be predominantly in French, while providing an exception for “recognized trademarks” to appear exclusively in a language other than French.

For nearly two decades, the OQLF allowed businesses to display their registered trade-marks on public signs in a language other than French without the need to add French generic language. However, starting in 2010, the Office changed its position (without any legislative change) such that any trademark appearing on a public sign in Québec would be considered a trade name use and different provisions applied, requiring the translation of the trademark into French or the addition of French generic language.

In an important decision for trademark owners doing business in Québec, the Court noted

Following years of planning, INTA’s first-ever Annual Meeting in Asia is set to kick off in just one week. With record-breaking numbers of attendees from Asia, the most exhibitors the Meeting has seen in several years and a packed schedule of academic programming and social events, the Hong Kong Annual Meeting promises to be the Association’s most memorable event to date.

As of April 30, 8,343 total attendees had reg-istered for the Annual Meeting, with 2,334 of those coming from the East Asia & Pacific region. This will be the first time attending the Annual Meeting for nearly 734 regis-trants, and 160 of those first-timers come from mainland China.

The INTA Gala, themed “Pearl of the Orient,” is already sold out, as are the Trademark Ad-ministrators Brunch and the In-House Coun-sel Luncheon & Workshop. Representatives from 40 national and regional IP offices and associations, including many offices from ASEAN nations, will be attending, and several sessions will be conducted in Chinese.

On Monday, May 12, from 1:15 to 3:15 pm, high-level officials of the Chinese gov-

ernment, including Li Zhenzhong Deputy Director of the National Leading Group on the Fight against IPR Infringement and Coun-terfeiting; Yin Shaoping, Judge, Supreme People’s Court; and Professor Tao, Shanghai University and Dacheng Law Firm Shanghai Office, will take part in an advanced session on trademark and IP issues in China from a government perspective. They will provide updates on the new China Trademark Law and China’s national IP-protection strategy, among other topics.

Peter Kam-fai Cheung, Director of Intellectual Property and Registrar of Patents, Designs and Trademarks for the Hong Kong Intel-

May 1, 2014 Vol. 69 No. 92

AssociationNews

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2014 International Trademark Association

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

ChairBarbara Sullivan, Henry Hughes

Vice Chair Liisa Thomas, Winston & Strawn LLP

Co-Chairs, Features SubcommitteeElizabeth Buckingham, Dorsey & Whitney

Peter McAleese, AKRAN Intellectual Property Srl

Co-Chairs, Association News Subcommittee Barbara Barron Kelly, Corsearch

Katherine Dimock, Gowling, Lafleur, Henderson

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

Joseph Yang, Lee and Li, Attorneys at Law

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

Thomas Mudd, Zeiner & Zeiner

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

Carlos Corrales-Azuola, Corrales Core IP

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

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

Catherine Hoffman, Mayback & Hoffman

INTA Bulletin Staff Chief Executive Officer Etienne Sanz de Acedo

Director, Marketing and Communications James F. Bush

Managing Editor, News & Policy Eileen McDermott

Senior Periodicals EditorJoel L. Bromberg

DesignerEric Mehlenbeck

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

President Elect J. Scott Evans, Adobe Systems Incorporated

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

Vice President Lucy Nichols, The Center for Responsible Enterprise and Trade (CREATe)

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

Secretary Ronald Van Tuijl, JT International S.A.

Counsel David Fleming, Brinks Gilson & Lione

Welcome New Members1Place Patent Attorneys + Solicitors, Sydney, NSW, Australia2K Patentanwälte Blasberg Kewitz & Reichel Partnerschaft, Frankfurt am Main, GermanyA. A. & Associates, Saddar, PakistanAB Electrolux (publ.), Stockholm, SwedenABACIOGLU INDUSTRIAL PROPERTY SERVICES, Ankara, TurkeyABK, Dr. Krajnyak & Partner Law and Patent Office, Budapest, HungaryACOPAT, Bilbao, SpainAggarwal & Aggarwal, New Delhi, IndiaAgnieszka Przyborska Bojanowska Kancelaria Prawn-o-Patentowa, Zukowo, PolandAK Patent Attorneys, Tokyo, JapanAl Rowad International IP, Dubai, United Arab EmiratesAlam & Sabri, Lahore, PakistanAlegalis, Guatemala City, Guatemala Alex Ho & Co, Solicitors, Central Hong Kong, ChinaAlphinoor & Co, Yaounde, CameroonAmie Bensouda & Co LP, Banjul, GambiaAnderson & Associates, Temecula, CA, USAAppleyard Lees, Manchester, United KingdomARPE, Madrid, Spain

Asahi Group Holdings.Ltd., Tokyo, JapanAshoka Law Associates, New Delhi, IndiaAsunaro Patent Office, Chiyoda-ku, JapanATER WYNNE LLP, Seattle, WA, USAB&IP-JOOWON Patent and Law Firm, Seoul, South KoreaB.O.B. Consultants Pte Ltd, SingaporeBagay-Villamor & Fabiosa Law Firm, Mandaue City, PhilippinesBALESAIL IP LAW OFFICE, Beijing, ChinaBDO Unibank, Inc., Makati City, PhilippinesBeijing Dongfang Huizhong Intellectual Property Law Office (General Partnership), Beijing, ChinaBEIJING HUI & XIN IP LAW OFFICE, Beijing, ChinaBEIJING KPPC PATENT AND TRADEMARK LAW OFFICE, Beijing, ChinaBeijing Lawsing IP firm, Beijing, ChinaBEIJING TIANCHI & HONGFAN LAW FIRM, Beijing, ChinaBeijing Zhonghai Wisdom Intellectual Property Agent Co.,LtD, Beijing, ChinaBELLAVISTA LEGAL, S.L., Barcelona, SpainBhagwati & Co., Greater Mumbai, IndiaRabin & Berdo, PC, Washington, DC, USARovio Entertainment, Espoo, Finland

Royal Heritage, Ikoyi, NigeriaRuskin Moscou Faltischek, Uniondale, NY, USASecurity Industry Association, Silver Spring, MD, USASee-Out Pty Ltd, Toowong, QLD, AustraliaSeow & Associates, Kuala Lumpur, MalaysiaSephora, Boulogne Billancourt, FranceShah Net Technologies Pvt Ltd, Ahmedabad, Gujarat, IndiaShanghai Beshining Law Office, Shanghai, ChinaSimirna Patent & Consultancy Services, Istanbul, TurkeySungjoo D & D Inc., Seoul, South KoreaTashiro & Etoh Patent Bureau, Tokyo, JapanTigges Rechtsanwalte, Düsseldorf, GermanyTownsend & Lockett, Llc, Atlanta, GA, USATsingyihua Intellectual Property Law Firm, Beijing, ChinaUniregistry Corp., Grand Cayman, Cayman IslandsUnited Trademark & Patent Services, Ruwi, Muscat, OmanVanegas Umaña Abogados, Bogota, ColombiaVéron & Associés, Paris, FranceWragge & Co Llp, Guangzhou, ChinaYash & Associates, New Delhi, IndiaZafar & Associates, Lahore, PakistanZbsd Patent & Trademark Agent Ltd., Beijing, China

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AssociationNewsa clear distinction among trademarks, trade names (under the Canadian Trade-marks Act) and “firm names,” which the judge equated with corporate names. The Court agreed with INTA’s arguments and concluded that trademarks are a distinct legal concept, which are clearly dif-ferent from trade names and corporate names and are governed by their own set of rules.

In reaching that conclusion, the Court took note of INTA’s submissions with respect to the fundamental differences in nature and function between these legal concepts and, in particular, the importance for trademark own-ers of being able to protect the integrity of their trademarks around the world. These principles are enshrined in national trademark legislation

in different countries as well as in international treaties, such as Section 20 of the TRIPS Agreement, which was brought to the Court’s attention by INTA and mentioned by the judge in his decision.

Having found that trademarks, trade names and corporate names are fundamentally different, the Court consequently rejected the OQLF’s submission that trademarks displayed by businesses on public signs outside their premises are effectively used as trade names or corporate names, which would require the addition of French generic language.

The Court left it to Québec’s legislature to intervene and decide whether legislative

changes are necessary to better protect Québec’s French-language landscape against trademarks displayed in other languages, and particularly in English. It suggested, however, that this would require a consideration of the inherent challenges associated with trademark law, which is within Federal (not provincial) jurisdiction in Canada and is also governed by various international treaties to which Canada is a party. ■

Québec Superior Court Rules in Line with INTA Amicus Brief Continued from page 1

Jean-Sébastien DupontSmart & Biggar / Fetherstonhaugh, Montréal, Québec, Canada

Hong Kong Is Almost Here! Continued from page 1

Dechert Hosts INTA/USPTO Roundtable in Philadelphia

Craig Morris and Mary Boney Denison of the U.S. Patent and Trademark Office joined Glenn Gundersen (Dechert LLP, USA) as co-moderator of an INTA/USPTO roundta-ble on April 23 at the Dechert offices in Philadelphia. The INTA/UPSTO roundtable series is designed to help the USPTO better understand the needs of those using its services and to offer insights into USPTO operations.

lectual Property Department (HKIPD), will join INTA’s Unreal Campaign to deliver welcome remarks for the Unreal Campaign’s third student engagement program, co-organized by INTA and HKIPD, on Tuesday, May 13. This will be Unreal’s first student engagement session outside the United States (see box for more details on the Unreal student session in Hong Kong).

This year’s meeting will end with a Grand Fi-nale party at Hong Kong Disneyland, where at-tendees will enjoy their own private sections of the park (Grizzly Gulch, Mystic Point, Toy Story Land and FantasyLand) beginning at 7:00 pm. The park has also agreed to allow guests who arrive at 5:30 or later to enjoy access to the whole park until the finale begins.

INTA’s staff and officers look forward to seeing you there! ■

The Unreal Campaign’s third annual stu-dent engagement session in Hong Kong marks the first time Unreal will reach students outside the United States. The event is expected to include at least 50-60 Hong Kong youth between the ages of 14 and 21 from local Hong Kong schools. Welcome remarks will be deliv-ered by INTA President Mei-lan Stark (Fox Entertainment Group, USA) and HKIPD Director of Intellectual Property Peter Kam-fai Cheung; the session, which is being supported by Unreal Campaign sponsors Estee Lauder (Platinum), Gucci (Silver) and Fox Entertainment Group (Silver), will be conducted almost entirely in Cantonese (Ms. Stark’s remarks will

be delivered in English). Emily Wong of HKIPD and Vincent Lai from the Hong Kong Customs and Excise Department will provide an introduction to trademarks and counterfeiting, while Fornia Lo (Gucci, The Netherlands) will provide a brand own-er’s perspective. For more information, please contact INTA’s Manager, External Relations, Anticounterfeiting, Candice Li, at cli@inta.org.

Join Unreal in Hong Kong

May 1, 2014 Vol. 69 No. 94

AssociationNewsU.S. Department of Commerce Announces Intent to Transition Key Internet Domain Name FunctionsThis article was drafted by Internet Commit-tee members Alysson H. Oikawa (Baril Advo-gados Associados, Brazil); Sheldon H. Klein (Gray Plant Mooty, USA); Kiran Malancharu-vil (MarkMonitor, USA); and INTA External Relations Manager, Internet & the Judiciary, Claudio DiGangi.

In March 2014, the National Telecommu-nications and Information Administration (NTIA) of the U.S. Department of Commerce announced its intention to transition its stewardship of key Internet domain name functions—the IANA functions (see below)—to the global Internet community.

The announcement concerns the private-/public-sector management of fundamental Internet resources, such as domain names and Internet protocols. For brand owners, the proposed transition of the IANA functions is im-portant because it concerns both the technical stability of the Internet and the accountability to the public for these functions. As a first step, NTIA asked ICANN to “convene global stake-holders to develop a proposal to transition the current role played by NTIA in the coordination of the Internet’s domain name system (DNS).”

The “IANA agreement” relates to the set of the Internet’s technical coordination functions known as the Internet Assigned Names and Numbers Authority (IANA), which provides tech-nical coordination and management of the In-ternet’s DNS “root zone.” This includes, among other things, “assigning the operators of top-level domains, and maintaining their technical and administrative details.” More specifically, IANA “allocates and maintains unique codes and numbering systems that are used in the technical standards” (or “protocols”) that are essential for Internet-based communications.

NTIA stated the purpose of its announce-ment was to “support and enhance the mul-tistakeholder model of Internet policymaking and governance.”

History of IANAThe Internet developed as a result of collabo-ration between governments, through research funded by the U.S. Department of Defense, computer scientists and research institutions (part of the University of California system). Be-

fore the global Internet was created, a private network funded by the Department of Defense, called the Advanced Research Projects Agency Network (ARPANET), was established following years of research and experiment in network-ing technology. A set of technical functions related to the coordination of that private network was labeled the “IANA functions.”

In June 1998, the United States government stated it was “prepared to recognize, by entering into agreement with, and to seek international support for, a new, not-for-profit corporation formed by private sector Internet stakeholders to administer policy for the Internet name and address system.” Later that year, NTIA entered into a Memorandum of Understanding (MOU) with a nonprofit corporation named the Internet Corporation for Assigned Names and Numbers (ICANN). In light of the formation of ICANN, near the end of December 1998, the University of Southern California entered into a transition agreement with ICANN, transferring its role in performing the IANA functions to ICANN, effective January 1, 1999.

Since the time of ICANN’s formation, the U.S. Department of Commerce has delegated the IANA contract on a periodic basis through a public competitive-bid process. ICANN has maintained the IANA functions contract through this process; the current contractual term concludes in September 2015, at which time the contract can be renewed for a limited number of terms.

The NTIA AnnouncementOn March 14, 2014, NTIA announced “its intent to transition key Internet domain name functions to the global multistakeholder community.” This historic announcement signifies NTIA’s willingness to relinquish its responsibility for the IANA functions upon the satisfaction of several objectives. NTIA’s role has been the subject of ongoing geopolitical deliberations concerning the future gover-nance of the Internet.

NTIA called upon ICANN, which it felt was “uniquely positioned, as both the current IANA functions contractor and the global coordinator of the DNS,” to organize global stakeholders to develop an IANA transition proposal with

broad community support. The proposal must address the following four principles:

1. Support and enhance the multistakeholder model;

2. Maintain the security, stability and resil-iency of the Internet DNS;

3. Meet the needs and expectations of the global customers and partners of the IANA services; and

4. Maintain the openness of the Internet.

The announcement was followed by sev-eral congressional hearings and proposed legislation on the role of the U.S. Congress in authorizing the transition proposal that will be considered by NTIA for adoption.

For trademark owners, the proposed IANA transition is important because it relates to the ongoing security and stability of the Inter-net, ICANN’s accountability and transparency to the public, the globalization of ICANN and the IANA functions, and the role of both the public and the private sector in the gover-nance of these resources.

Next StepsICANN started the IANA transition process at its public meeting in Singapore in March 2014. On April 8, ICANN announced a public consultation period on its website and is now seeking public input on the process for devel-oping an IANA transition proposal for NTIA’s consideration. Community feedback is due by May 8, 2014. Trademark owners are encour-aged to participate in the transition process through associations such as INTA and through direct input to ICANN. INTA will continue to represent the interests of trademark owners through its Internet Committee in the ongoing public deliberations over the evolution of the Internet DNS.

ICANN’s next public meeting will take in Lon-don on June 22–26, 2014. The IANA transi-tion process will be a main item on ICANN’s agenda for the next several public meetings. The Intellectual Property Constituency (IPC) of ICANN will meet at INTA’s Annual Meeting in Hong Kong on Wednesday, May 14, from 10:30am to 12:30pm. ■

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AssociationNewsHow INTERPOL Helps to Combat CounterfeitingThe INTA Bulletin asked INTERPOL’s Office of Legal Affairs—which encourages countries to strengthen IP laws and helps to develop cooperation among international law-enforce-ment agencies—what its biggest challenges are, and how trademark owners and govern-ments can help.

What are the objectives of INTERPOL’s Office of Legal Affairs (OLA) in providing support to member countries in developing legal anti-counterfeiting responses?Combating transnational organized crime is a priority for INTERPOL. The fact that organized crime groups are now involved in counterfeit-ing activity, gaining financially from this crime and reinvesting the funds in other criminal activity, is a serious problem. OLA promotes a multidimensional approach to the issue, encouraging countries to strengthen their legal frameworks to successfully prosecute intellectual property crime. Complementing INTERPOL’s Trafficking in Illicit Goods and Counterfeiting Program, OLA assists with the development of cooperation among interna-tional law-enforcement agencies, promoting awareness of and supporting efforts to dis-mantle the criminal organizations involved.

INTERPOL’s legal assistance program aims to support states in setting up effective legal frameworks against illicit trade and counter-feiting and in training all actors involved in the criminal justice process (i.e., law en-forcement officers, prosecutors, judges and central governmental authorities in charge of international cooperation) to help them better understand the problem and carry out effec-tive prosecutions, including by familiarizing them with the use of international coopera-tion mechanisms.

What do you see are some of the biggest challenges in combating counterfeiting around the world through legal tools?Under most national domestic criminal laws, counterfeiting often is not viewed as a serious offense. This can be attributed to the fact that when prosecutions occur they usually focus on the illegal activity that took place within the jurisdiction, as opposed to any transnational elements of the offense. IP crime offenses

often have comparatively lenient penalties in comparison with other offenses that are viewed as more serious, and that do not fully recognize the connection between counter-feiting and transnational organized crime. It is important to address this to achieve more successful outcomes in court, outcomes to effectively deter offenders from recidivism.

A further challenge is pursuing those who have masterminded the scheme rather than merely prosecuting those involved in certain aspects for their individual role. This approach may bring some immediate results in terms of facilitating seizures and arrests, halting counterfeiting activity and securing payment of damages, but it does not necessarily have any long-term effect. Disrupting the organized criminal groups involved in this activity would be an approach with more long-term and wide-spread benefits, given that the same groups are involved in illicitly trafficking in various goods, such as drugs, arms and even human beings. Of course, this necessitates more effort, time and resources, and that poses an additional challenge.

A third issue is the way counterfeiting offenses are prosecuted in court. While the facts of a case may fit a strict counterfeiting or smug-gling offense under the relevant legislation within a jurisdiction, they may also satisfy the elements of other, related offenses. Prose-cutors will need to have recourse to different arenas of legislation dealing with IP crime, criminal law and customs legislation. Further, supporting criminal conduct should also be charged and prosecuted, such as offenses relating to corruption (bribery, abuse of public office), money laundering, fraud, forgery, etc. Other offenses, such as membership in crim-inal associations or organizations, conspiracy charges, etc., could also be considered, as it is via these charges that organized crime groups can be targeted and dismantled. These charges carry far heftier penalties than IP-re-lated charges.

A lack of expertise and experience in certain criminal law areas is also a consideration.

INTERPOL at-a-glanceOfficial Name: The International Criminal Police Organization—INTERPOL

Name of Head: Ronald K. Noble

Official Title: Secretary General

Date Appointed: 2000 (reelected 2010)

Length of Term: 5 years

Location: The General Secretariat of INTER-POL is located in Lyon, France.

Governance/Organizational Structure: INTERPOL’s structure is composed of INTERPOL’s General Assembly and Execu-tive Committee, the General Secretariat, a National Central Bureau in each of our 190 member countries, the Commission for the Control of INTERPOL’s Files and Advisors to this Commission. The General Assembly and the Executive Committee form the organiza-tion’s governance.

Number of Member Countries: 190

See “INTERPOL” on page 6

Ignoring or underesti-mating the connections between counterfeiting and transnational crim-inal groups leaves the latter with significant financial resources that are reinvested in other types of crime.

May 1, 2014 Vol. 69 No. 96

AssociationNewsFor example, participation in an organized crime group is a relatively new offense in most jurisdictions, and prosecutors and judges do not always have the requisite experience to prosecute and hear such cases. Providing the necessary training is essential.

One final challenge is utilizing international co-operation mechanisms for IP crime offenses, which normally is not intuitive for prosecutors working on these cases. Where offenses do not carry considerable penalties that make the crime serious, countries are hesitant to engage in formal processes for requesting mutual legal assistance or extradition, owing to time and cost concerns. If, however, countries could pursue evidence to be derived from other jurisdictions, they could more easily meet evidentiary burdens associated with charges related to involvement in an organized criminal group. This, of course, relies on the ability of police and prosecutors to make the necessary connections to other jurisdictions during the investigation phase and to pursue the actors involved in the scheme, rather than merely the individual perpetrator.

Are there particular changes to national civil or criminal laws you would like to see enacted that would facilitate enforcement against counterfeiting? Are there relevant international treaties, agreements or cooper-ation that might help?Serious consideration should be given to the penalties allocated to IP crime and counterfeit-ing. This will mean assessment by countries of the objective seriousness of the offense, taking into account factors such as the types of players involved (organized crime groups), the profits to be made and reinvested in crim-inal activity and the involvement of the same actors in other serious crime.

States should also consider the use of legis-lation on confiscation of proceeds of crime in counterfeiting offenses where it does not yet apply. As profits are the major motivator for criminals’ engagement in counterfeiting, a powerful tool to counter it would be to remove this incentive. Consideration could also be given to unexplained-wealth laws and their operation, and the ability to pursue proceeds in the absence of a conviction.

Currently, there is no globally applicable international instrument to support states in criminal investigations and/or international cooperation in criminal matters relating to IP infringements. The Agreement on Trade-Re-lated Aspects of Intellectual Property Rights (TRIPS Agreement) contains a section on criminal procedures but does not propose a cooperation mechanism in criminal matters (TRIPS Article 61). The following options could be used as effective legal bases for obtaining assistance from foreign authorities in investi-gating IP offenses:

• Cooperation on the basis of courtesy and/or reciprocity.

• Cooperation through general bilateral or regional extradition and MLA treaties—coun-terfeiting offenses fall within the scope of these treaties as long as they are punish-able above certain minimum thresholds.

• Cooperation through globally applicable criminal justice instruments, notably the UN Conventions Against Transnational Orga-nized Crime and Corruption (UNTOC and

How INTERPOL Helps to Combat Counterfeiting Continued from page 5

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

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

Before You Send That Cease and Desist Letter

Visit www.inta.org/ceaseanddesist

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AssociationNewsUNCAC), which have their own in-built coop-eration mechanism for countries that are party to these conventions. The UNTOC can be used against any serious crime involving an organized criminal group acting trans-nationally; the UNCAC addresses a group of corruption-related offenses that could be used by counterfeiters/smugglers to accom-plish their goals (bribery, for example).

Can you discuss any partnerships or events you’re involved with to help increase aware-ness about anticounterfeiting initiatives?OLA provides technical legal assistance, partic-ularly in relation to prosecution of cases, and the development of legislation. We also par-ticipate in events being held on the issue. For example, last year we attended INTA’s Annual Meeting in Dallas and gave a presentation at each of the regional meetings of the Anticoun-terfeiting Committee. This year we are a guest speaker at ECTA’s Annual Meeting. We engage with international organizations such as WCO, WIPO, OECD and UNICRI, presenting at their events. Together with WIPO, WCO, BASCAP and INTA, we host a regular Global Congress on Combating Counterfeiting and Piracy. INTERPOL also holds its own International Law Enforcement IP Crime Conference annually.

Are there any major initiatives underway within the organization that you would like to highlight?There are two major initiatives underway that OLA is seeking financial support to develop and launch.

The first, a joint INTERPOL/UNICRI initiative, is the creation of a jurisprudence database on IP-related matters. The objective is to provide judges, prosecutors and other interested stakeholders with a comparative tool to access civil and criminal case law in other jurisdictions on legal issues concerning IP infringements and IP crime, as well as analysis of global/regional trends relating to jurisprudence in international law. The initiative also targets policymakers and legislators by providing a tool collating relevant precedent and principles from differing jurisdictions, as well as allowing

them to assess and identify minimum interna-tional standards. This will help identify similar problems across different jurisdictions, track trends and set priorities, especially in a legal area of growing priority internationally.

The jurisprudence database will usefully complement WIPO’s database of IP-related legislation and illustrate the interpretation, use and developed principles of countries’ IP laws in practice. This case law database will constitute a powerful complementary tool for the delivery of technical legal as-sistance in IP-related matters and support training activities targeting judges and pros-ecutors, on the other hand, and policymak-ers and legislators, on the other.

It is important to note that the objective is not to collect all existing case law and jurispru-dence in the area of IP law, but rather to make a selection of the most relevant judgments, including those offering particularly creative interpretations and legal solutions. Specific attention will also be given to those cases and interpretations that have led to the success-ful application of organized crime legislation against IP crimes.

The second initiative is a Guide Develop-ing Prosecutorial and Judicial Capacities to Address Counterfeit and Related Criminal Offenses with Transnational Implications. Un-der this project, INTERPOL, in partnership with the International Institute of Higher Studies in Criminal Sciences (ISISC), seeks the necessary resources to (1) develop and publish a prac-tical guide for judges and prosecutors, with a view to facilitating the investigation, prosecu-tion and judgment of offenses relating to coun-terfeiting; and (2) build effective prosecutorial and judicial capacities in this field through the organization of training seminars in four target countries, identified on the basis of their need and interest in receiving technical assistance by INTERPOL.

As was stated above, counterfeiting often is not viewed as a serious problem under domestic criminal law. Additionally, ignoring or underestimating the connections between

counterfeiting and transnational criminal groups leaves the latter with significant financial resources that are reinvested in other types of crime.

While in many cases legislative changes would be necessary to strengthen the criminal justice response to counterfeiting and related offenses, generally the situation could improve if criminal justice officers adopted a different approach to the problem and were provided with the proper training to design more effec-tive prosecutorial strategies.

Prosecutors and judges need the requisite training to prosecute and hear cases involv-ing counterfeiting in the context of organized crime, to assist their understanding and apply appropriate available mechanisms for international cooperation, namely mutual legal assistance requests. If prosecutors were more familiar with such mechanisms, they would increase their chances of meeting the evidentiary burdens associated with prosecuting organized criminal activity under domestic legislation.

What advice or message do you have for trademark owners? How can they help?Trademark owners already play a major role in the fight against counterfeiting. Their knowledge of and expertise on their products are invaluable and provide assistance to law enforcement in the field. A further area of as-sistance is with the sharing of legal expertise regarding IP crime. We encourage trademark owners to continue their work with police and prosecutors and to share information, espe-cially where that information is able to assist in identifying the involvement of a particular organized crime group. Trademark owners play a vital role in the successful outcome of prosecutions. Through their expert and financial support to international organizations such as INTERPOL in their work sensitizing governments to the issues and challenges and providing tools for use by states’ prosecutors, judges and policymakers, trademark owners will assist in strengthening the fight against counterfeiting and IP crime. ■

Looking for a gateway to country-specific links for trademark offices, laws, domain name resources and more?

Find it in the Country Portal in INTA’s Global Trademark Research.

Visit www.inta.org/CountryPortals

May 1, 2014 Vol. 69 No. 98

VolunteerSpotlight

Milan Milojevic enjoys challenges. That is why he loves the civilized legal conflicts involved with his work as a successful trade-mark prosecutor and litigator in his law firm, MSA IP, in Belgrade.

Milan mostly deals with trademarks, with some patent, copyright and trade dress work. “Our clients range from large pharma com-panies down to very small businesses, which come from very mixed industries, such as au-

tomotive, chocolate, clothing, fashion industry and luxury and more. This variety makes our job so interesting, since the requirements can typically differ very much from one industry to the next, and of course also from large to small clients. One aspect of my job that I enjoy very much is that a good number of our clients act internationally so that we cannot focus on the Serbian perspective alone, but need to take into account and discuss the handling of matters with our associates from other countries as well.”

In trademarks, Milan’s (not so secret) passion is anything to do with anticounterfeiting. He is currently serving his third term on INTA’s Anti-counterfeiting Committee, as the chair of the Eastern Europe & Central Asia Subcommittee. Milan explains that he chose this committee because he wanted to bring the Eastern Euro-pean countries closer to the European Union, to OHIM and also to the CJEU. He considers anticounterfeiting to be his “baby.” Milan lobbied extensively for the implementation of anticounterfeiting rules into Serbian law specifically and Balkan law on a more general basis. He organized roundtables on the subject of anticounterfeiting to introduce the public in his country to what was happening, and says that when more and more people

came to such roundtables, this eventually led to actual changes being made to the law. Milan says that the close cooperation with for-eign associates is an invaluable asset in his work against counterfeiting.

Outside the office, the father of a son and a daughter (6 and 4) is married to a Spanish wife, whom he met in Florence during a hu-man rights course in his student days. She is the reason why Milan spent a couple of years in Alicante from 2001, where he opened an office for his previous law firm. Milan also enjoys running and, in particular, skiing with his entire family whenever he can.

Milan says his favorite trademarks are those of Lindt chocolate. Lindt chocolates always had an ideal, rather dreamlike quality for him, because his father, a film producer, brought them back from his travels. Another trademark Milan likes very much is the trademark used by the basketball club Partizan Belgrade, the most successful basketball club in Serbia.

Dr. Anke Nordemann-SchiffelBoehmert & Boehmert, Charlottenburg, Berlin, GermanyINTA Bulletin—Association News Subcommittee

Janice Housey became a trademark attorney after obtaining her J.D. from the Catholic University of America in Washington, D.C. Several years later, she attended her first INTA Annual Meeting, in Boston, Massachu-setts, in 1998. Attending INTA conferences and meeting colleagues from around the world have been crucial to Janice’s career.

Janice has worked on several INTA commit-tees, including a stint as Chair of the Law and Practice—Americas Subcommittee of the

INTA Bulletin Committee and Chair of the INTA Bulletin Committee. Janice thoroughly enjoyed this committee, working closely with dedicated INTA staff and exchanging ideas with commit-tee members from a multitude of countries. It was also a great way to keep up to date on international trademark topics. Janice is also a certified mediator and was appointed to the INTA Panel of Neutrals in 2012.

Trademarks are constantly on Janice’s mind, both literally and figuratively. She is energized by the strategy, whether it is a contentious matter or clearance or prosecution issues. Janice loves trademarks that tell a story, such as the BACARDI bat logo, which conjures the bat’s association with good health, good fortune and family unity in Cuban lore and is a reminder of the relationship between bats and the sugar cane necessary for producing BACARDI rum.

Janice would like to see the trademark community develop some cost-conscious solutions. Implementing such practices as mandatory mediation in the early stages of opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board would, she believes, help both parties get an early, neutral evaluation of the merits

of their case, thereby leading to resolution more efficiently.

Janice enjoys many activities, especially spending time with her two daughters, Rebecca, 12, and Maria, 10. Rebecca was born during the 2002 INTA Annual Meeting in Washington, D.C.; Janice remembers that at one of the receptions the restaurant manager jokingly pleaded with her, “Please don’t have your baby in my restaurant!” Janice adopted Maria from Guatemala when Maria was almost three years old. When the family is not taking care of their 15-year-old chihuahuas, Chip and Dale, they are involved in the Odys-sey of the Mind student coaching program, in which Janice has been a coach for four years. Janice and her daughters love travel and have visited several countries, including attend-ing the INTA Berlin Annual Meeting in 2008. All three took extensive Spanish classes in Guatemala last summer, and they are looking forward to visiting Hong Kong during this year’s Annual Meeting this month.

Katherine DimockGowling LaFleur Henderson, Toronto, CanadaCo-Chair, INTA Bulletin—Association News Subcommittee

9

FeaturesSusan M. Kayser and Lucy J. WheatleyJones Day, Washington, D.C., USA

Chiang Ling LiJones Day, Hong Kong SAR, China

Marc Groebl and Gregor StoerzingerJones Day, Munich, Germany

Alastair McCulloch and Francois HolmeyJones Day, London, UK

Emmanuel Baud and Edouard FortunetJones Day, Paris, France

Combating Contributory Infringement on the Internet

The views expressed herein are those of the authors and not of INTA nor Jones Day or any of its clients.

Is an Internet service provider (ISP), e-com-merce site or other sponsor of online content contributorily liable for a third party’s online infringing activities? The answer depends on a number of factors. These include:

• The company’s knowledge of third-party infringement;

• The amount of control the company can exert over third-party infringers; and

• The country in which action against the contributory infringers is taken.

This article first examines contributory liability for online infringement under the laws of the United States, China, the EU, France, Germany and the United Kingdom, and then recom-mends some strategies for building a case against online contributory infringers.

Contributory Liability for Online Infringement in Key JurisdictionsUnited StatesIn the United States, contributory trademark infringement exists at the common law level. To prevail on a claim for contributory trade-mark infringement, a plaintiff must show (1) knowledge of the infringement and (2) control of the infringing instrumentality. Proving knowl-edge requires showing that the defendant (a) intentionally induced a direct infringer to infringe or (b) continued to supply its products or services to one who it knew or had reason to know (“willful blindness”) was engaging in trademark infringement. To prove control by an online contributory infringer, a plaintiff must show that it had direct control and monitoring of the instrumentality used to infringe a party’s trademarks. For example, a trademark owner

must show that a host or sponsor has the abil-ity to stop the direct infringement by ceasing to provide its services to the direct infringer (e.g., an e-commerce site could remove listings or ban the member). The degree of knowledge and control required to create liability for online activity has been hotly debated; how-ever, three federal appellate decisions have provided some clarity on these requirements in recent years.

Proving Knowledge of Direct InfringementSeveral major decisions in the past three years have addressed the degree of knowledge an e-commerce site must have to face liability for contributory infringement. The issue of knowl-edge was central to the well-known online con-tributory infringement case Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), the first U.S. case to apply the contributory infringe-ment standard to an online marketplace. In Tif-fany, the U.S. Court of Appeals for the Second Circuit held that the online marketplace eBay was not liable for sales of counterfeit Tiffany products by eBay’s members. The court based this conclusion, in part, on the fact that while eBay had generalized knowledge that counter-feit Tiffany goods were sold on its platform, it did not have knowledge of specific infringing sellers or listings. The court found that eBay’s generalized knowledge that counterfeit Tiffany goods were sold on eBay by unknown sellers was insufficient to create liability.

After the Tiffany decision, it was unclear whether U.S. courts would require brand owners to show knowledge of infringement by proving that formal take-down notices were submitted for each instance of direct infringe-ment. The Ninth Circuit’s decision in Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011), clarified that a brand owner asserting contributory trademark infringement claims can show that an alleged contributory infringer has provided its services with actual or constructive knowledge that the users of its services are engaging in trademark infringement. Akanoc involved an ISP that hosted websites selling counterfeit goods. Akanoc did not follow Tiffany’s focus on knowl-edge of specific infringing listings, although the plaintiff in Akanoc also sent formal take-down notices with respect to specific infringing web-sites. The Ninth Circuit further clarified that a brand owner does not need to prove that a defendant intended to assist counterfeiting.

In Chloe SAS v. Sawabeh Information Services Co., No. 2:11-cv-04147-GAF-MAN, 2013 BL

286656 (C.D. Cal. Oct. 8, 2013)), a U.S. district court in California applied the Akanoc stan-dard, noting that intent could be imputed as a result of a knowing failure to prevent infringing actions. Six luxury brands sued an online B2B marketplace, TradeKey.com, for contributory infringement, alleging that TradeKey.com actively promoted and facilitated the sale of counterfeits in bulk by its members. Although the brands did not send any formal take-down notices, the court held that the B2B website was liable for contributory infringement on a motion for summary judgment, finding that it operated a virtual “swap meet” where it know-ingly allowed members to engage in wholesal-ing of counterfeit goods.

Similarly, in 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013), the U.S. Court of Appeals for the Tenth Circuit held that “knowledge” did not necessarily require knowledge of specific acts of direct infringement. The appellate court ruled that a company could be liable for the actions of its affiliate that directly infringed a competitor’s trademark. The affiliate posted advertisements online using the competitor’s trademark. The company argued that it could not be liable for its affiliate’s actions because it had thousands of affiliates and it did not know for several months which specific affiliate was infringing. The court rejected this argument, holding that where the company could have stopped the infringement by sending a blast email to all its affiliates, lack of knowledge as to which specific affiliate had infringed did not preclude liability for contributory infringement. “When modern technology enables one to commu-nicate easily and effectively with an infringer without knowing the infringer’s specific iden-tity, there is no reason for a rigid line requiring knowledge of that identity.” Id. at 1254.

Looking at these cases in total, knowledge sufficient for liability for contributory infringe-ment depends on the type of infringing activity, the nature of the services used by the direct infringer and provided by the online provider, and the online provider’s control over those services. Liability is not necessarily condi-tioned on whether the brand owner followed a formal notice and take-down procedure.

Control over the Instrumentality Used to Infringe In the online contributory infringement cases discussed above, an evaluation of the “control” element helps to explain the type of knowledge required and the ultimate finding as to liability. The ease and ability of the online provider or

May 1, 2014 Vol. 69 No. 910

Features

Settlement and coexistence agreements are intended to solve problems, not cause them.All too often, though, oversights can result in an arrangement’s unraveling.

Find out how to minimize the likelihood of recurring disagreements in the latest installment in the INTA Practitioners’ Checklist series, “Settlement & Coexistence Agreements,” by Arnold Ceballos, Pain & Ceballos LLP, Toronto, Canada, and Virginia Taylor, Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia, USA.

Visit www.inta.org/settlement

sponsor to stop online infringement appear to have played a major role in all the decisions against alleged contributory infringers.

In Akanoc, the Ninth Circuit upheld a jury’s finding that the web hosting company was liable for contributory infringement where some of the websites it hosted sold counter-feit goods. The court reasoned that the web host could unquestionably “pull the plug” by ceasing to provide its services and servers to the infringing websites, which would in turn stop the infringement. Chloe further empha-sized the service provider’s ability to control infringement, finding that factual evidence that the website monitored and controlled the member listings by preventing changes and optimizing listings amounted to sufficient “control” under Akanoc. Chloe, 2013 BL 286656, at *7-9.

In Tiffany, the court emphasized that eBay had invested over $20 million a year on anticoun-terfeiting efforts, that eBay had an established notice and take-down procedure that promptly removed infringing listings and that eBay had taken affirmative steps to identify and remove illegitimate Tiffany goods. The implication was that there was no feasible way that eBay could further “control” the infringement on its platform beyond the efforts it was already taking, without specific knowledge of which particular listings

were infringing or would infringe in the future.The 1-800 Contacts decision arguably synthe-sized the holdings in Tiffany and Akanoc as to the amount of “control” over the infringement required to show liability. In 1-800 Contacts, the defendant, Lens.com, argued that it did not know which of its affiliates were infringing. The court found, however, that the fact that the defendant had a simple and inexpensive way to control the infringement undercut its argument that it lacked the specific knowledge to be liable for contributory infringement.

The three cases discussed above indicate that, in practice, proving the control element for online contributory infringement may be highly dependent on a showing of an alleged contributory infringer’s practical ability, and affirmative steps taken, to detect and stop infringement. Defendants that can show, as in Tiffany v. eBay, extensive efforts to prevent infringement may be found not to have the requisite knowledge or ability necessary to control the infringement. On the other hand, defendants that could take simple affirmative steps to stop infringement, but fail to do so, cannot escape liability by professing ignorance as to the identities of individual infringers. The cases above also indicate the scope of activities that may subject a party to liability for online contributory infringement. In the United

States, any company that facilitates the provi-sion of online content by a third party, whether as an ISP, through e-commerce websites or by simple online advertising, may ultimately be held responsible for the third party’s infringing activities.

ChinaUnder Chinese law, a website or ISP is contributorily liable for a third party’s online trademark infringing activities as long as it has actual or constructive knowledge of the third party’s infringement.

Article 36 of the People’s Republic of China In-fringement Law provides that if an ISP is aware of infringement by a user of its network but does not take necessary measures, the ISP is jointly liable with the user.

Article 50(2) of the Implementing Regulations of the People’s Republic of China Trademark Law provides that facilitating trademark infringement by a third party constitutes infringement.

Article 24 of the Provisional Measures Govern-ing Activities in e-Commerce and Related Ser-vices provides that ISPs must take measures to protect, among other things, trademarks and trade names, and should take actions as required by the People’s Republic of China In-

Combating Contributory Infringement on the Internet Continued from page 9

11

Features

See “Infringement” on page 12

fringement Law when presented with evidence of infringement by their users.

The most famous case is Yinian (Shanghai) Fashion Trading Co., Ltd. v. Zhejiang Taobao Network Co., Ltd & Du Guofa. Taobao is one of the largest e-commerce sites, if not the largest e-commerce site, in China. It is akin to a Chi-nese version of eBay. Du Guofa opened shops on Taobao for selling clothing bearing cartoon bear logos that were similar to a registered trademark of Yinian. Taobao closed down the shops after receiving notice from Yinian. However, Yinian commenced a suit, claiming that Taobao should have done more, including blocking the opening by Du Guofa of further infringing shops on Taobao. The trial court and appeal court in Shanghai both agreed that Taobao should have done more and ruled that Taobao was jointly liable with Du Guofa.

European UnionGenerally, European trademark law does not expressly recognize contributory trademark infringement as a theory of liability. How-ever, online marketplaces and ISPs have an obligation under Article 14 of the e-Commerce Directive (Directive 2000/31/EC) to remove or disable access to any infringing information expeditiously upon becoming aware of it. Un-der the e-Commerce Directive, an intermediary can avoid liability for the information it hosts or stores if, “upon obtaining [actual] knowledge

or awareness [of illegal activities], [it] acts expeditiously to remove or to disable access to the information” (Article 14(1)(b)).

The Court of Justice of the European Union’s (CJEU’s) ruling in L’Oréal SA v. eBay Interna-tional AG (Case C-324/09, [2011] ECR I-6011 (CJEU July 12, 2011)) states that online marketplaces, such as eBay, cannot rely on the hosting defense provided by Article 14(1) where (a) they have taken an active role in the relationship between buyers and sellers or (b) they are “aware of facts or circumstances on the basis of which a diligent economic operator should have identified” an illegal ac-tivity and did not act to remove or disable the infringing information (id. para. 120). An online marketplace takes an active role when it “provide[s] assistance which entails, in partic-ular, optimising the presentation of the offers for sale in question or promoting those offers” (id. para. 116). This includes any behavior that goes beyond a neutral or merely technical or administrative position.

According to the CJEU, there are two further ways in which a marketplace operator may be “aware” and thus cannot rely on the described defense: (1) where the operator undertakes reasonable monitoring activities that show infringements and (2) where an operator receives notification of infringements from rights holders and fails to act expeditiously to

remove/disable the infringing information. The CJEU confirmed its position in Google v. Louis Vuitton (Joined Cases C-236/08–C-238/08 (CJEU Mar. 23, 2010)), refusing to impose lia-bility on Google for allegedly contributing to the counterfeiting of Louis Vuitton’s trademarks by means of its “AdWords” tool.

In addition, in a recent decision rendered on the basis of Directive 2001/29/EC (on copyright and related rights in the information society), the CJEU held that an ISP that allows its custom-ers to access protected subject matter made available to the public on the Internet by a third party may qualify as an intermediary whose ser-vices are used to infringe a copyright or related right. (UPC Telekabel Wien GmbH v. Constantin Film Verleih GmbH, Case C-314/12 (CJEU Mar. 27, 2014).) Accordingly, the CJEU ruled that a national court is entitled to grant an injunction aimed at prohibiting the ISP from allowing its customers to access such litigious content. While this decision was copyright-related, it might have an impact on similar situations where the litigious content at stake is violating trademark rights. Indeed, pursuant to Article 11 of the IP Rights Enforcement Directive (Directive 2004/48/EC), “Member States shall … ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellec-

Visit www.inta.org/tmr

ANNUAL REVIEW OF EU TRADEMARK LAW: 2013 in ReviewDon’t miss speakers Guy Heath (Nabarro LLP, United Kingdom) and Georg A. Jahn (Noerr LLP, Germany) at the new companion session on Monday, May 12, 3:30–4:45, at the Annual Meeting in Hong Kong!

Inaugural Issue: Vol. 104, No. 2Now available for tablets and mobile devices!

May 1, 2014 Vol. 69 No. 912

Featurestual property right, without prejudice to Article 8(3) of Directive 2001/29/EC.”

It should be noted that decisions by the European courts, such as the CJEU or the General Court of the European Union, are strictly binding only on the specific court of a Member State that submits a question (e.g., in a preliminary-ruling proceeding). Also, courts of the Member States and authorities that are concerned with the specific issues triggering the submission of a question to the European courts are bound by the decisions. Even though judgments technically are not binding on courts and administrative authorities in other Member States, they still have a strong persuasive effect with regard to the interpreta-tion of harmonized European law.

FranceLike that of the European Union, French trademark law does not expressly recognize contributory trademark infringement as a the-ory of liability. However, contributory trademark infringement may be punished under French criminal law where a person is complicit or involved in the infringing acts. While very few companies initiate infringement actions on the basis of criminal law, in at least two criminal cases French judges have sanctioned individu-als for their involvement in trademark infringe-ment. See, e.g., Case No. 94/01538 (Paris Court of Appeal Nov. 18, 1994); Case No. 94-85940 (French Supreme Court May 29, 1996) (sanctioning individual for his involvement in a trademark infringement case in which a com-pany used his surname, which was identical to a famous trademark, in order to promote services); Case No. 07/00860 (Pau Court of Appeal June 19, 2008) (finding company and several individuals liable for the sale of jewelry similar to the claimant’s trademark, on the basis both of infringement and of involvement/complicity in the infringing acts).

GermanyGenerally, in copyright and trademark law matters, German courts take the approach that third parties, such as ISPs, are not liable as perpetrators or participants. ISPs, however, may be liable for interference (Störerhaftung). To establish liability based on interference, a third party has to (1) deliberately and with proximate cause contribute to the procure-ment or maintenance of an unlawful en-croachment, (2) even though it was de facto and de jure possible and reasonable to pre-vent the direct infringement, and (3) violate reasonable control obligations. I ZR 73/05 (Bundesgerichtshof (BGH) (German Federal Supreme Court) Apr. 30, 2008), 27—Inter-netversteigerung III. Interestingly, contributory liability in unfair trade practices cases, and recently in some copyright and trademark

law decisions, is based on principles of direct infringement regarding duty of care or on participation (e.g., abetting).

The leading case for liability for interference on the Internet is Internetversteigerung III. The BGH found there was no liability for contribu-tory infringement where “trademark infringe-ments were not detectable in spite of the use of a reasonable filtering method and possible subsequent manual checks. If infringements are not recognizable even after the defendant, an online auction platform, has taken reason-able measures, there is no culpable breach of an obligation that could be penalized in summary proceedings.”

Subsequent decisions have confirmed that ruling (e.g., 3 U 216/06 (Oberlandesgericht (OLG) Hamburg (Hamburg Court of Appeals) July 24, 2008) and I ZR 139/08 (BGH July 22, 2010)—Kinderhochstühle im Internet) and have also shown that the requirements for reasonable control obligations can be flexible and extensive. Factors such as private or com-mercial activities, as well as the purpose of the respective Internet service (e.g., targeted only at infringing content), influence the degree of reasonableness and have to be evaluated in a case-by-case analysis. For example, in the recent high-profile case of RapidShare v. Senator, I ZR 85/12 (BGH Aug. 15, 2013), the BGH held that RapidShare had to comply with extensive control obligations because of its knowledge of the hazardousness of its service. The Federal Supreme Court held that even though RapidShare could not control all data uploaded on its service, it procured copyright infringements by, inter alia, offering its service anonymously, rewarding extensive use that typically was related to illegal activities, and failing to apply measures to prevent similar infringements in the future (e.g., regularly scanning the link collection for obvious in-fringements). In Internetversteigerung III, the BGH made an interesting remark: It observed that more extensive control obligations may be necessary when well-known or famous trade-marks, which are susceptible to infringements by third parties, are at stake. So far, however, the courts have not acted upon this remark.

United KingdomThird parties, and in particular online market-places, usually will not be found liable in the United Kingdom when their facilities do not inherently lead to trademark infringement and are capable of use in a way that does not in-fringe third-party marks. The leading authority for this principle is L’Oréal SA v. eBay Interna-tional AG, [2009] EWHC 1094 (Ch). The court held that eBay was not jointly liable for acts of trademark infringement carried out by the indi-vidual sellers who used the eBay site. It relied

on the principle set out in Credit Lyonnais v. ECGD, [1998] 1 Lloyd’s Rep. 19, namely that “mere assistance, even knowing assistance, does not suffice to make the ‘secondary’ party liable as a joint tortfeasor. What he does must go further. He must have conspired with the primary party or procured or induced his com-mission of the tort.” Even though eBay could be said to have facilitated the infringement of third-party trademarks and profited from such acts, that was insufficient to make it jointly liable. Some of the issues in this case (in rela-tion to Article 14 of the e-Commerce Directive, for example) were referred to the CJEU, whose decisions are discussed above.

SummaryBrand owners should carefully consider how to obtain jurisdiction over online entities, which may be located in jurisdictions with unfavorable or difficult-to-enforce trademark laws. In the United States, evidence that an online service provider “interacts” with local customers is vital to establishing jurisdiction. In Chloe SAS v. Sawabeh Information Service Co., a California federal district court found that it had jurisdiction over corporate defen-dants located in Pakistan and Saudi Arabia. The court found, among other things, that the corporate defendants’ “highly interactive web site” permitted businesses to offer for sale counterfeit luxury goods and was intended to be used by Californians. 2013 BL 286656, at *17. This decision followed prior cases such as Mavrix Photo, Inc. v. Brand Technologies, Inc., 647 F.3d 1218, 1229 (9th Cir. 2011), where the court considered, among other things, the “interactivity” of the defendant’s website in determining whether there was jurisdiction over the defendant.

Similar factors can support jurisdiction in other countries. For example, in the United Kingdom, jurisdiction will be found to exist where the website is “aimed and directed” at a consumer in the United Kingdom (Dearlove v. Combs, [2007] EWHC 375 (Ch)). This will ultimately depend upon the circumstances and, in particular, upon the intention of the website owner and what the reader will understand if he or she accesses the site (1-800 FLOWERS v. Phonenames Ltd, [2001] EWCA Civ 721).

In sum, the jurisdiction where a case is filed can dictate whether a claim for contributory infringement will be successful. But no matter what the country, it is critical for brand owners to actively police online infringement to com-bat counterfeiting. ■

13

FeaturesHow to Protect Your Marks Under the New China Trademark Law

Fuli ChenIPR Attaché to the United States, Chinese Embassy, Washington, D.C.

On August 30, 2013, the Standing Committee of the People’s Congress passed the draft text of the third revision to China’s Trademark Law, which enters into force on May 1, 2014. Here are some of the highlights.

1. The law broadens the scope of marks for which trademark registration can be re-quested. The relevant amendment deletes the requirement of visual representation and allows for the application of sound marks.

2. Procedures for the registration of a trademark have been simplified. The China Trademark Office (CTMO) will accept electronic filing for trademark applications, and will also accept applications for one trademark in multiple categories simulta-neously. The amendment indicates, for the first time, deadlines for examination and review by the CTMO and the Appeal Board for Review and Adjudication (ABRA).

3. Bad-faith registrations will be curbed. Trademark applications for goods that are identical or similar to those covered by a trademark that is already in use—if the applicant had knowledge of the existing trademark owing to a contract or business relationship, and if the owner of the existing mark opposes the application—will be rejected; trademark agents cannot apply for the registration of a trademark beyond commission from clients; registration for and use of trademarks must adhere to the general principle of goodwill.

4. Administrative enforcement of trade-marks is intensified. Infringers who have engaged in infringement of a trademark more than twice within five years will be punished more severely. Those who run an illegal business whose profit value exceeds

50,000 RMB will be fined a maximum of 20 percent of that amount; if the value is less than 50,000 RMB, they will be fined a maximum of 10,000 RMB.

5. Judicial protection of trademarks is made a priority. The new law identifies rules for determining actual loss; lists the rule of punitive compensation for 1–3 multiple(s) of actual loss under special conditions; and increases the maximum mandatory compensation for trademark infringement from 500,000 RMB to 3 million RMB.

Recommendations and ConclusionsChina is now the second-largest economy and the largest trading nation in the world. The country’s position will only continue to improve with the government’s historic decision in November 2013 to deepen comprehensive economic reform by opening China’s market even further to competition.

There are many elements to consider in ensur-ing business success in the Chinese market. One of the most important is knowing how

to protect your IP rights. Here are some key recommendations:

• Awareness of IPR is key. Consider how an IP protection strategy fits into the larger business goals. It is especially important to register IP rights in China before entering the Chinese market. And, of course, make sure to respect the IP rights of others.

• Have a reasonable IPR allocation plan. One must decide which trademarks to pro-tect in China, and how those marks will be recognized. For example, the owner should consider whether to apply for the same trademark in different classes or whether to apply for a similar trademark in the same class for defensive purposes, even if the owner does not intend to use such marks.

• Attack and defense. Like hands, both an offensive enforcement plan and good de-fense are needed. Under Chinese law, if your IP rights are infringed, you must take strong action to protect them. Conversely, if you are challenged for IP rights infringement, you must present a full defense. ■

Procedure Time Reference (months)

Extended Time upon Approval (months)

Response to an application for a trademark by CTMO

9 No

Review of refused trademark by CTMO, initiated by applicant

9 3

Opposition for published trademark after preliminary examination by CTMO, initiated by prior rightholder or privy or anyone

12 6

Review of opposition by CTMO, initiated by applicant

12 6

Nullity based on absolute reasons by ABRA, initiated by CTMO or anyone

9 3

Nullity based on relevant reasons by ABRA, initiated by prior rightholder or privy

12 6

Deadlines for Opposition and Review

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

Visit www.inta.org/Cancellations

May 1, 2014 Vol. 69 No. 914

Law&Practice

Contributor: Francisco SilvaSilva & Cia., Santiago

Verifier: Rodrigo Velasco-AlessandriAlessandri & Compañía, Santiago

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

Contributor: Constantin KletzerFiebinger Polak Leon & Partner Attorneys-at-Law, Vienna, Austria

Verifier: Alexander Schnider Baker & McKenzie Diwok Hermann Petsche Attorneys-at-Law, Vienna, Austria

The Chilean Industrial Property Court revoked a first instance decision issued by the National Institute of Industrial Property (INAPI) relating to registration of the mark CHAMPAGNE in Class 3. While INAPI had rejected the applica-tion for only some of the goods covered, the court rejected the application in its entirety.

In 2008, Rodrigo Cooper applied to register the trademark CHAMPAGNE, to protect several products in Class 3. (Application No. 808590, published June 20, 2008.) The Comite Inter-professionnel du Vin de Champagne filed op-position, claiming that Mr. Cooper’s application violated Article 19 and Article 20(e), (f) and (j) of the Chilean Industrial Property Law (Law 19.039), Article 10 of the Paris Convention and Article 22 et seq. of the TRIPS Agreement. The opponent indicated that the term “Cham-pagne” corresponded to a famous appellation of origin and that its use for other products would create confusion in the market. The ap-plicant responded that “Champagne” was not related to products in Class 3, so there would pose no risk of confusion of consumers.

In a resolution issued on April 27, 2012, INAPI rejected the opposition based on Article 20(e) and (j) of the Industrial Property Law, arguing that the protection granted by the appellation of origin CHAMPAGNE was applicable only with regard to products in Class 33. Neverthe-less, INAPI partially rejected the application for “soaps, essential oils, cosmetics and hair lotions” based on Article 20(f), finding that there was a risk of confusion. The trademark was accepted for “bleaching preparations and other substances for laundry preparations for cleaning,” among other products.

The opponent appealed the first instance decision.

In its ruling of September 24, 2013, the Indus-trial Property Court accepted the arguments of the appellant, revoking the first instance resolution and refusing the trademark for all products in Class 3. The court held that be-cause the term “Champagne” corresponded to a famous appellation of origin, it could not be used or registered in Chile by anyone who was

not a producer of said type of wine in France. Moreover, the court held, acceptance of the mark would induce consumers to believe that the products were originally from the French region of Champagne.

This case confirms that famous geographi-cal indications continue to have significant protection in Chile, and that they cannot be registered marks, regardless of the products to be protected.

In March 2014, the Court of Justice of the Eu-ropean Union (CJEU) issued a preliminary rul-ing in a revocation action brought against the trademark KORNSPITZ, owned by the Austrian baker Backaldrin. Backaldrin Österreich The Kornspitz Company GmbH v. Pfahnl Backmittel GmbH, Case C-409/12 (CJEU Mar. 6, 2014).

Under the KORNSPITZ trademark, Backaldrin produces a baking mix, which it supplies to bakers. The mix is worked into a bread roll, which is oblong in shape and has a point at both ends. With the consent of Backaldrin, those bakers, distributors and retailers sell the bread rolls to end users under the trademark KORNSPITZ, which is widely known in Austria. While most bakers and intermediaries know that the word mark KORNSPITZ has been registered as a trademark, many end users have come to perceive the mark as a common name for this type of bread roll.

The KORNSPITZ mark was attacked by a competitor, the Austrian company Pfahnl, for having become a common name for, in partic-ular, bakery products. Accordingly, the CJEU decided the case on behalf of the relevant

public. The Court ruled that a trademark is lia-ble for revocation according to Article 12(2)(a) of the European Trademarks Directive (Direc-tive 2008/95/EC) if it has become a common name for the covered product from the point of view solely of end users of the product. The perception of the intermediaries and retailers is not relevant, because they are not advis-ing the end users in their decision-making process, as is in case with pharmacists and physicians in relation to medicinal products available by prescription. This is in line with the Court’s ruling in Björnekulla Fruktindustrier (Case C-371/02 (ECJ Apr. 29, 2004)): if either party, end users or intermediaries, considers a trademark as a common name, its function as an indication of origin is not transmitted.

In order to have a trademark revoked under Article 12(2)(a), the development of the trade-mark into a common name must be “a conse-quence of acts or inactivity of the proprietor.” The CJEU decided that, apart from seeking injunctive relief from the competent authorities to prevent infringement of the trademark (see Levi Strauss (Case C-145/05 (ECJ Apr. 27, 2006)), para. 34), the proprietor is required

to operate a certain degree of brand vigilance and management to avoid revocation—for example, via labeling.

Finally, the CJEU ruled on a question gener-ated by the Austrian Supreme Court. Accord-ing to the CJEU’s ruling, the revocation of a trademark based on Article 12(2)(a) of the Trademarks Directive does not presuppose that there are other names for the product for which that trademark has become the com-mon name in trade. In contrast, the Austrian Supreme Court had revoked Sony’s trademark WALKMAN for lack of alternative names in trade for portable music-cassette players and upheld Ravensburger’s trademark MEMORY for card games.

CHILE Registration of CHAMPAGNE Rejected

EUROPEAN UNION CJEU Rules KORNSPITZ Generic

15

Law&PracticeGERMANY

German Court Disagrees with Court of Justice on Doctrine of Neutralization

INDIA Enterprise Successful in Establishing Trans-Border Reputation in India

Contributor: Ms. Disha DewanR K Dewan & Co., Pune

Verifier: Mr. Jatin TrivediY J Trivedi & Co., Ahmedabad

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

Contributor: Martin ViefhuesJONAS Rechtsanwaltsgesellschaft mbH, Cologne

Verifier: Ursula StelzenmüllerLichtenstein Körner & Partners, Stuttgart

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

In a decision handed down in February 2014, the German Federal Patent Court expressly dissented to the concept of neutralization of an aural similarity by visual or conceptual dif-ferences as elaborated by the Court of Justice of the European Union. Case 30 W (pat) 43/12 (German Federal Patent Court Feb. 13, 2014).

The underlying opposition proceeding related to the trademarks CINNOVEX and SINUVEX, registered for identical and similar goods in Classes 5, 29 and 30. As the applied-for mark SINUVEX is pronounced SI-NU-VEX in Germany and the opposing mark CINNOVEX is most likely pronounced TSIN-NO-VEX in Germany (rather than KIN-NO-VEX or—the Italian pronun-ciation—CHIN-NO-VEX), the court confirmed an aural similarity: The marks shared the same pronunciation rhythm and a very similar sequence of consonants and of vowels.

Regarding the visual differences between the conflicting marks, the court pointed out that they would in principle fall under the doctrine of “neutralization” as established by the General Court and the Court of Justice.

(See Case C-361/04 (ECJ Jan. 12, 2006)—PI-CASSO/PICARO; Case C-206/04 (ECJ Mar. 23, 2006)—SIR/ZIRH.) According to the doctrine, existing aural similarities between two marks can be neutralized through obvious visual or conceptual differences, thereby excluding a likelihood of confusion. However, confirming its decision of April 21, 2009 (Case 24 W (pat) 37/08—Xxero/Zero), the court expressly held that it would not follow this doctrine, but would adhere to the German practice as established by the German Federal Supreme Court, ac-cording to which it is sufficient that two marks are similar in merely one aspect—aurally, visually or conceptually. Even though the court did not explain its approach, past decisions have found that visual differences can hardly be relevant if a trademark is only spoken, for example when goods are ordered verbally.

Hence, the German Federal Patent Court con-firmed a likelihood of confusion on the basis of aural similarity.

This case shows that despite all the formal harmonization of European trademark law,

the national courts do not necessarily follow the General Court or the CJEU, even with respect to fundamental principles of trade-mark law. This is of particular importance in the context of trademark clearance searches: Had the trademark application for SINUVEX not been for a German national trademark registration but for a Community trade mark registration, the opposition proceeding would have been handled by OHIM, which would have applied the doctrine of neutralization, under which the trademark CINNOVEX might have turned out not to be an obstacle to the registration of SINUVEX.

In Enterprise Holdings, Inc. v. Enterprise Auto Rentals, Justice Manmohan Singh of the High Court of Delhi delivered a judgment in favor of the plaintiff against an entity using the trade name Enterprise Auto Rentals and the trade-marks ENTERPRISE and ENTERPRIZE. Enter-prise Holdings, Inc. v. Enterprise Auto Rentals, CS(OS) No. 489/2013 (Del. Mar. 11, 2014).

Enterprise Holdings had registered the trade-mark E-ENTERPRISE in Class 39 for vehicle rental and leasing services. Its word mark ENTERPRISE was pending registration in India. Enterprise Holdings was able to establish that it had been marketing its services in India since 2007, although it did not have any busi-ness presence there.

The defendant argued that “enterprise” was a common dictionary word and there were six other applications and registrations for trade-marks in Class 39 that included the word “en-terprise.” The defendant also stressed that the plaintiff had no local business presence and that its presence in India was only on the In-ternet. The plaintiff countered that its website had received more than 500,000 hits every year from Internet service providers based in India, and several people traveling from India had used its services outside the country.

The court observed that the requirement of a local business presence was formerly an element of a passing off action. However, the concept of passing off had undergone changes with the advent of technology and modernization. Therefore, a transformation had taken place, and courts could excuse the lack of a local goodwill and business if there was proof of substantial reputation and the business had some nexus in the ter-ritory where protection was sought. Justice Singh went on to say that the reputation of a business could transcend boundaries by virtue of its advertisement in newspapers, media circulation, expatriate reputation and other relevant factors.

Justice Singh also extended the principle of trans-border reputation to include the Internet. He relied on an earlier case, Cadbury UK Ltd v. Lotted India Corp. Ltd., in which the Delhi High Court observed that a merchant’s presenceon webpages of foreign origin and in social media was sufficient to show the trans-border nature of the merchant’s reputation despite the fact that the merchant had no activity in India at the relevant time. However, he added a rider to this broadened concept and opined that trans-border reputation would always be a question of fact in each case.

Justice Singh issued an interim order restrain-ing the defendant from using the trademark ENTERPRISE or ENTERPRIZE in relation to the business of offering vehicle rental and leasing services, and any related services under the name Enterprise Auto Rentals, which activities had created confusion and deception and infringed the plaintiff’s trademark.

This case sets the precedent for the protec-tion in India of those trademarks and service marks that have an international reputation and substantial Internet presence, even where the proprietor has no actual business within the country.

May 1, 2014 Vol. 69 No. 916

Law&PracticeISRAEL

Use of YEKEV KEREM BEN ZIMRA Held to Infringe Rights in YEKEV BEN ZIMRA

Contributors: Ronit Barzik-Soffer and Sonia ShnyderReinhold Cohn Group, Tel-Aviv INTA Bulletin Law & Practice—Middle East & Africa Subcommittee

Verifier: Miriam HackmeyGlusman & Co., Tel-Aviv

In a recent case, the Nazareth District Court ruled that the defendants’ use of the name Yekev Kerem Ben Zimra (Ben Zimra Vineyard Winery) for wines constituted an infringement of the plaintiffs’ well-known trademark YEKEV BEN ZIMRA (BEN ZIMRA WINERY), as well as passing off—despite the fact that Kerem Ben Zimra (Ben Zimra Vineyard) was the name of the village where both parties resided and operated their businesses. Ashkenazi v. Nach-mias, C.A. (Nazareth Dist.) 55513-11-13 (Nevo Jan. 13, 2014).

The parties, who were neighbors in the village of Kerem Ben Zimra in northern Israel, set up the Ben Zimra Winery in 2003. After a few months, however, the plaintiffs purchased the defendants’ share in the business and continued to market wines under the mark BEN ZIMRA WINERY (in Hebrew). Ten years later, the defendants started marketing wines under the mark BEN ZIMRA VINEYARD WINERY (in Hebrew). The plaintiffs petitioned for a permanent injunction against the use of that mark and for statutory damages.

The defendants claimed it was common knowl-edge that the Kerem Ben Zimra area had ex-cellent vineyards and wine. They argued, there-fore, that any goodwill should be attributed to that geographical area, and the plaintiffs could not claim exclusive rights in the name.

In response, the plaintiffs pointed out that although the Kerem Ben Zimra area was

indeed popular for growing vines, other local wineries and vineyards, while indicating their location on their bottles, used different names for branding.

The court determined that the word combi-nation in the defendants’ mark signified a winery located in the village named Kerem Ben Zimra. Therefore, the plaintiffs could not monopolize the village’s name, which was a geographical indication.

Analyzing the plaintiffs’ mark, the court held that the word “winery” was highly descriptive and thus non-distinctive; the combination “Ben Zimra” itself, being part of the village’s name, was also non-distinctive. Thus, the question was whether the combination BEN ZIMRA WINERY, used by the plaintiffs, had acquired secondary meaning through use.

The court determined that the plaintiffs’ evi-dence (mainly, a large investment in advertis-ing and promotion, large sales volume, many references in the media and operation of a successful visitor center), even without a con-sumer survey, established secondary meaning, and a well-known mark, with respect to the combination BEN ZIMRA WINERY.

Applying the “triple test” for likelihood of con-fusion (i.e., (1) similarity in look and sound; (2) similarity in type of goods and circle of custom-ers; and (3) other circumstances and common sense), combined with supplemental tests, the

court concluded that the marks at issue were highly similar and consequently there was a likelihood of consumer confusion.

Noting that it was not required to show that the marks were identical but, rather, to examine the general impression conveyed by each mark in its entirety, the court concluded that the names were so similar that the consumer, whose recollection was imperfect, could be mistaken.

The defendants claimed, among other things, that the difference between the bottles, as shown in the photos submitted as evidence, argued against the possibility of passing off; however, the court considered that these pho-tos demonstrated how similar the word marks were and how small the overall difference between them was.

Accordingly, the court ruled that the defen-dants had infringed the plaintiffs’ well-known (though unregistered) trademark and engaged in passing off; nevertheless, under the circum-stances, it did not award damages.

SERBIA Serbia Takes a Step Toward Specialized IP CourtsAs a result of the reorganization of the court system in Serbia, under the Law on Seats and Jurisdictions of the Courts and Public Prosecu-tor Offices (Official Gazette RS No. 101/2013) and the amendments to the Law on the Orga-nization of the Courts (Official Gazette RS Nos. 116/2008, 104/2009, 101/2010, 31/2011, 78/2011, 101/2011 and 101/2013), which came into effect on January 1, 2014, all intel-lectual property cases are now concentrated in the Commercial Court in Belgrade or the High Court in Belgrade.

Although these two courts are not specialized IP courts per se, the concentration of all IP cases in these courts will enable judges to hear a much larger number of IP cases and become more specialized in IP matters over time. This is similar to the situation in Slovenia and Hungary, where all IP cases are under the

jurisdiction of the courts located in Ljubljana and Budapest, respectively.

Until January 1, 2014, IP cases in which both parties were commercial enterprises were heard by the Commercial Courts (called District Commercial Courts until 2008). Where at least one of the parties was an individual, IP cases were heard by the High Courts (called District Courts until 2008). There are currently 16 Commercial Courts and 26 High Courts in Serbia. These courts rule on a wide variety of matters, and judges rarely get an opportunity to specialize in IP matters.

IP cases that were instituted before any of the Commercial Courts or High Courts outside of Belgrade, and that were still pending on January 1, 2014, were transferred to the Com-mercial Court or High Court, respectively, in

Belgrade. The exceptions are IP cases pend-ing before the Appellate Courts, which will be decided by the courts where the appeals were initially filed.

The change in the legislation has not affected the organization of the Administrative Court, which is the body in charge of administrative disputes involving decisions of the Patent and Trademark Office. There is one Administrative Court for the entire territory of Serbia, with its seat in Belgrade and offices in Kragujevac, Nis and Novi Sad.

Contributor: Gordana PavlovicCabinet Pavlovic, Belgrade, Serbia, and Brussels, Belgium

Verifier: Branka ToticDirector, Intellectual Property Office, Belgrade, Serbia

17

Law&PracticeUNITED ARAB EMIRATES

Power of Attorney Now Required for Trademark Filings and OppositionsThe Trademark Office in the United Arab Emir-ates announced that it will no longer accept any trademark applications without completed Power of Attorney (PoA), effective May 1, 2014.

The Trademark Office confirmed that the PoA should be duly legalized and notarized when filing and/or opposing any trademark applica-tion in the United Arab Emirates.

Contributor: Iman Salamehag-IP-news Agency, Amman, Jordan

Verifier: Amjad El-HusseiniAbu-Ghazaleh Intellectual Property, Dubai, United Arab Emirates

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

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

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

May 1 INTA/USPTO Roundtables Los Angeles, CA, USAMay 2 INTA/USPTO Roundtables Orange County, CA, USAMay 10–14 136th Annual Meeting Hong Kong SAR, ChinaJune 2–13 U.S. Roundtables Various U.S. CitiesJune 16–27 TMA Roundtables Various U.S. CitiesJuly 9 INTA/USPTO Roundtables Cincinnati, OH, USAJuly 28 INTA/USPTO Roundtables Alexandria, VA, USASeptember 2–12 TMA Roundtables Various U.S. CitiesSeptember 18–19 Internet, Innovation and ICANN: San Francisco, CA, USA The Evolving Landscape of the NetOctober 12–15 Trademark Administrators and Practitioners Meeting Arlington, VA, USAOctober 20–31 U.S. Roundtables Various U.S. CitiesNovember 11–15 Leadership Meeting Phoenix, AZ, USADecember 8–9 When Trademarks Overlap with Other Munich, Germany IP Rights Conference

May 1, 2014 Vol. 69 No. 918

Law&PracticeUNITED KINGDOM Website Keywords Can Constitute Trademark Infringement

Contributor: Carmela Rotundo ZoccoMetroconsult, Turin, Italy

Verifier: Alice GouldHGF Law LLP, London; UK

In February 2014, the High Court of Justice of England and Wales held that Amazon’s use of “Lush” as a keyword in its website search func-tion constituted infringement of the trademark LUSH. In addition, the court held that certain use of the “Lush” keyword in the Google search engine also constituted infringement. Cosmetic Warriors Ltd. & Lush Ltd v. Amazon.co.uk Ltd & Amazon EU SARL, [2014] EWHC 181 (Ch) (Feb. 10, 2014).

Lush is well known for its colorful soaps and bath bombs. Amazon is a large online shopping retailer that sells via its website, amazon.co.uk, its own goods and the goods of third parties. It is not authorized to sell LUSH-branded products through amazon.co.uk, but it purchased the word Lush as a keyword in Google and sells other LUSH-branded products from third-party suppliers.

The judge held that when a consumer typed the word “Lush” into the search box at ama-zon.co.uk and was presented with the opportu-nity to browse or purchase products competing with Lush soaps, but not the LUSH-branded products, this was trademark infringement. When a consumer typed the word Lush into

the search facility on the amazon.co.uk web-site, the first thing to happen after the letters “lu” were typed is that a drop-down menu appeared and various options were offered, such as “lush bath bombs,” “lush cosmetics” or “lush hair extensions.” The judge held that this use of the LUSH mark by Amazon damaged the origin function, the advertising function and the investment function of the LUSH trademark.

The other two activities that Lush objected to were the following:

• Amazon’s buying the “Lush” keyword and placing sponsored ads on google.com, including the words “Lush Soap at Amazon” and a link.

• Amazon’s buying the “Lush” keyword and placing sponsored ads that included words such as “Bath Bomb at Amazon” and a link. The word “Lush” did not appear in these ads.

In relation to the first activity, the judge held that online shoppers would not, without diffi-culty, ascertain that the goods involved were

not those of Lush Cosmetics, and ruled that this activity constituted trademark infringe-ment. Regarding the second activity, the judge ruled in favor of Amazon. He held that the aver-age online shopper would understand that the Amazon ad was just another ad from a trader/seller selling products similar to those being looked for by the Internet shopper. Therefore, ads that did not specifically mention the LUSH trademark were not infringing.

The case is a useful application of two earlier cases that were referred to the Court of Justice of the European Union (CJEU), Interflora v. Marks & Spencer (Case C-323/09 (CJEU Sept. 22, 2011)) and L’Oréal v. eBay (Case C-324/09 (CJEU July 12, 2011)). In those cases, the CJEU held that keyword advertising can consti-tute trademark infringement.

UNITED STATES TTAB Finds SHAPE Mark FamousIn a precedential opinion, the Trademark Trial and Appeal Board (TTAB or Board) refused registration for the mark SHAPES based on a likelihood of confusion with the mark SHAPE. Weider Publications, LLC v. D & D Beauty Care Co., LLC, Opposition No. 91199352 (T.T.A.B. Jan. 21, 2014).

D & D Beauty Care Company, LLC (Applicant) filed for the registration of the word mark SHAPES for “beauty salon services” under Sec-tion 1(b) of the Trademark Act. Weider Publica-tions, LLC (Opposer) opposed the registration based on likelihood-of-confusion and dilution grounds. Opposer claimed ownership of its series of registered SHAPE (word) trademarks, for, among other things, print and online maga-zines and various Internet content.

On the issue of likelihood of confusion, the TTAB first noted that fame for likelihood-of-con-fusion purposes under Section 2(d) of the Act was a concept distinct from fame for dilution purposes. “[F]ame for likelihood of confu-sion purposes arises as long as a ‘significant portion of the relevant consuming public …

recognizes the mark as a source indicator.’” The record showed that the circulation and the subscriber figures were of such a high magnitude that, combined with the high volume of unique Internet visits, they were compelling evidence demonstrating the fame of Opposer’s SHAPE magazine in print, online and app form. Additionally, the magazine had generated substantial revenues. Therefore, the Board held that Opposer had established that its SHAPE marks were famous for purposes of the likelihood-of-confusion analysis.

The TTAB easily determined that the marks at issue were confusingly similar in appearance, sound, connotation and commercial impres-sion. With regard to the relatedness of the goods and services, it cited Conde Nast Publi-cations Inc. v. Vogue Travel, 205 U.S.P.Q. 579 (T.T.A.B. 1979), a case that dealt with a print magazine, and held that “the logical underpin-nings of Conde Nast are equally, if not more relevant, in the digital age with the delivery of magazines now available via website and mo-bile apps.” The Board concluded that Opposer demonstrated a close relationship between

the types of articles that customarily appear in the SHAPE magazine and Applicant’s services. Additionally, both parties targeted women as the same demographic audience. Balancing the relevant du Pont factors, the TTAB held that confusion was likely, and consequently it sustained the opposition.

This decision is noteworthy because it appears to broaden the ability of a famous mark owner to object to registration of a mark by a third party based on the relatedness of the goods and services.

Contributor: Jean-François NadonLawyer and Trademark Agent, Montreal, Quebec, Canada

Verifier: Jeremy KaufmanFox Entertainment Group, Beverly Hills, California, USA

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

19

Law&Practice

UNITED STATES TTAB Crosses off Consideration of Family of MarksIn ruling that the applied-for mark OPTICROSS was likely to cause confusion with the reg-istered trademark OPTI, the Trademark Trial and Appeal Board (TTAB or Board) noted that consideration of a “family of marks” is not appropriate during an ex parte prosecution. In re Hitachi High-Technologies Corp., Serial No. 79110412 (T.T.A.B. Feb. 21, 2014) (preceden-tial).

The examining attorney denied the application for the trademark OPTICROSS filed by Hitachi High-Technologies Corporation (Hitachi), for “liquid chromatography apparatus and parts thereof,” on the ground that it was likely to cause confusion with the OPTI trademark and six other OPTI-formative marks owned by Optimize Technologies, Inc. (Optimize), as well as with Siemens Industry, Inc.’s trademark OPTICHROM. Hitachi filed a timely appeal.

At the outset, the TTAB emphasized that a “family of marks” may be properly established only in an inter partes proceeding and not an ex parte prosecution, where examining attor-neys lack the necessary resources to explore how the “family of marks” is utilized in the marketplace. The Board explained that “[t]he mere existence of similar registrations

does not establish a family, but rather there must be recognition by the public that the shared characteristic (or ‘family surname’) is indicative of a common origin.”

Analyzing likelihood of confusion based on Optimize’s OPTI mark, as it was the most similar to Hitachi’s mark, the TTAB began by assessing the relevant goods and channels of trade. The Board found that the parties’ goods were “legally identical.” Given that finding, it presumed that the channels of trade and classes of purchasers were the same.

Next, the TTAB considered and compared the “appearance, sound, connotation and commercial impression of the marks in their entireties,” recognizing that “the more similar the goods at issue, the less similar the marks need to be … to find a likelihood of confusion.” It found that any “differences in commercial impression” between the OPTICROSS and OPTI marks were “outweighed by similarities in sight and sound.”

Finally, the Board noted that even though it did not treat Optimize’s OPTI and OPTI-formative marks “under the rubric of a ‘family’ of marks,” it nevertheless could consider that “consum-

ers who may be familiar with various products in the Optimize product line, when confronted with [Hitachi’s] mark, would be likely to view the goods marked therewith as additional products from [Optimize].”

The TTAB found a likelihood of confusion and affirmed the examining attorney’s refusal to register. Applicants now know that because ex-amining attorneys may not consider a “family of marks,” to survive prosecution, applied-for marks cannot be confusingly similar to any one of a group of related prior marks—and must be capable of surviving consideration of all goods and services covered by any of the related prior marks.

Contributors: Rose Auslander and Hugo ArenasCarter Ledyard & Milburn LLP, New York, New York

Verifier: Iván G. MarreroPietrantoni Méndez & Alvarez LLC, San Juan, Puerto Rico

Ms. Auslander and Mr. Marrero are members of the INTA Bulletin Law & Practice—United States & Canada Subcommittee.

UNITED STATES Ninth Circuit: Trademark Act Provides

No Independent Cause of Action for CancellationIn a recent decision, the U.S. Court of Ap-peals for the Ninth Circuit affirmed the district court’s dismissal of a trademark cancellation claim under Section 37 of the Trademark Act, finding that the Act does not create an independent cause of action for cancellation of a trademark. Airs Aromatics, LLC v. Victoria’s Secret Stores Brand Management, Inc., Appeal No. 12-55276 (9th Cir. Feb. 28, 2014).

The predecessor to Airs Aromatics, LLC (Airs) began using the trademark ANGEL DREAMS in connection with the sale of perfume and personal care products in 1991. In 1999, Airs’ predecessor entered into a consent-to-use agreement with Victoria’s Secret Stores Brand Management, Inc. (Victoria’s Secret) allowing Victoria’s Secret to use the trademark DREAM ANGELS for certain personal care products in exchange for an annual fee. Litigation later ensued among Airs and its affiliates over the ownership of the ANGEL DREAMS marks, and the federal registrations were consequently cancelled. During the course of this litigation, Victoria’s Secret ceased making payments to Airs and filed applications to register the DREAM ANGELS mark for its products.

Airs, claiming ownership of common-law rights in the ANGEL DREAMS marks, filed a com-plaint alleging that Victoria’s Secret breached the consent-to-use agreement and the asso-ciated implied covenant of good faith and fair dealing. Airs sought cancellation of Victoria’s Secret’s registrations for DREAM ANGELS based on a likelihood of confusion. Victoria’s Secret moved to dismiss the action on the ground that Airs failed to sufficiently plead continuous use of the ANGEL DREAMS mark necessary to establish common-law owner-ship of the mark. The district court dismissed the case, finding that Airs lacked standing to pursue the cancellation claim because it had not adequately proven common-law rights in the mark ANGEL DREAMS. Airs appealed only the dismissal of its claim for cancellation of the trademarks.

The Ninth Circuit held that Section 37 of the Trademark Act, which gives district courts the power to order cancellation of a trademark registration “in any action involving a regis-tered mark,” specifies that cancellation may be sought only if there is an ongoing action involving a registered mark. The court noted

that each federal court of appeal that had directly addressed Section 37 had found that it “creates a remedy for trademark infringement rather than an independent basis for federal jurisdiction.”

The Ninth Circuit rejected Airs’ argument that its cancellation action was actually a poorly pleaded claim of trademark infringement (for which cancellation would be an appropriate remedy) because Airs failed to establish a protectable ownership interest in the ANGEL DREAMS mark.

Accordingly, the Ninth Circuit affirmed the district court’s judgment, dismissing the action with prejudice.

Contributor: Robert P. Felber, Jr.Waller Lansden Dortch & Davis, LLP, Nashville, Tennessee

Verifier: Timothy J. LockhartWilcox & Savage, P.C., Norfolk, Virginia

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INTA’s 136th Annual MeetingMay 10–14, 2014 | Hong Kong

Expand your professional knowledge and grow your portfolio of international clients at the world’s largest and most widely attended trademark conference. Whether you are a newcomer or a seasoned IP professional in Asian markets, the International Trademark Association’s Annual Meeting in Hong Kong presents the perfect chance to explore new opportunities in this dynamic and fast-growing region.

Register Until May 2: www.inta.org/2014INTAAMOr Register Onsite

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HongKong

136th Annual Meeting

May 10–14

2014