INTABulletinThe Voice of the International Trademark Association

AssociationNews AssociationNews

November 1, 2011 Vol. 66 No. 19

AssociationNewsProfessors and PTO at 2011 Advanced SymposiumPage 4

In This Issue

FeaturesIndian Affidavits of Use 12

Law&Practice European Union 14Switzerland 15Yemen 15

AssociationNewsWelcome New Members 2Volunteer Spotlight 7 Julia Huston Olaf GillertRoundtables 8

Continued on page 3

Washington, D.C. played host to 220 trademark practitioners from 22 nations around the globe seeking insight into legal developments on Internet issues. Sessions during the two-day program in September covered topics such as the introduction of new gTLDs, UDRP reform and responses to trademark violations in social media.

The conference was opened by INTA Executive Director Alan Drewsen, who noted that it had been 13 years since INTA’s first Internet conference was held and reflected that “so much has happened since then affecting trademark practitioners and the public.” Mr. Drewsen thanked conference co-chairs J. Scott Evans (Yahoo! Inc., USA) and Caroline Chicoine (Fredrikson & Byron, P.A., USA), for assembling “a stellar faculty to present the conference.”

INTA President Gerhard Bauer (Daimler AG, Germany) cautioned that while innovative online platforms have created opportunities, measures must be taken to protect users

from confusion and unauthorized use. “Consumers and organizations must be confident the Internet is a safe and reliable place to do business,” Mr. Bauer said.

The first session, “What’s Behind the New Technology?”, kicked off with Google’s Maile Ohye’s presentation, which focused on how search engines work and how to attract searchers to websites. The exuberant

Stellar Faculty Sheds Light on InternetIssues at Washington, D.C. Conference

New ICANN Chairman Meets with INTA LeadersINTA recently welcomed Dr. Stephen Crocker, the current Chairman of the Inter-net Corporation for Assigned Names and Numbers (ICANN), to a series of meetings in Washington, D.C. As someone who worked on developing the original protocols that helped lay the foundation for the modern Internet, Dr. Crocker’s involvement in the Internet spans several decades. After chair-ing ICANN’s Security and Stability Advisory Committee (SSAC) from 2002 until Decem-ber 2010, he was elected Chairman of the ICANN Board on June 24, 2011.

Dr. Crocker addressed the INTA Board of Directors on September 19 as part of INTA’s global government relations program, and delivered the keynote address to the attend-ees of INTA’s Trademarks and the Internet Conference on September 22.

In light of ICANN’s decision earlier this year to proceed with a program for introduc-ing new generic top-level domain names (gTLDs), Dr. Crocker spoke on the potential impact of new gTLDs to brands and con-sumers, and the importance of trademark protection within the proposed expansion of the domain name system. Discussions also touched on new Internet security specifi-cations, known as Domain Name System Security Extensions (DNSSEC), as a means for protecting intellectual property and con-sumers from forged Internet data.

INTA renewed its commitment to playing a leading role in representing and educat-ing the trademark community on Internet issues and stressed the importance of continued private-sector participation in the coordination of Internet resources to ensure ICANN’s decisions further the public interest. Dr. Crocker will continue his dialogue with the trademark community by speaking at INTA’s European Conference on Trademarks and the Internet taking place in Dublin on December 9. Visit www.inta.org/2011EUInternet for more information and to register.

2011 Internet Forum co-chairs Caroline Chicoine (Fredrikson & Byron, P.A.) and J. Scott Evans (Yahoo! Inc.).

FeaturesNavigating Around Section 21 of the UK Trade Marks Act Page 10

November 1, 2011 Vol. 66 No. 192

AssociationNews

INTA Bulletin CommitteeTo contact a member of the INTA Bul-letin Committee, send an email to the managing editor at bulletin@inta.org.

ChairJanice Housey, Symbus Law GroupVice ChairWalter Palmer, Pinheiro Palmer Advo-gados

Association NewsMarie Lussier, Chitiz Pathak LLPKen Taylor, MarksmenFeaturesValerie Brennan, Hogan LovellsAlexander Klett, Reed Smith LLP

Law & Practice: Africa, Central Asia,Eastern Europe & Middle EastCharles Sha’ban, Abu-Ghazaleh Intel-lectual PropertyLaw & Practice: Asia–PacificBarbara Sullivan, Henry Hughes Patent & Trademark AttorneysLaw & Practice: EuropeWiebke Baars, Taylor WessingChristoph Gasser, Staiger, Schwald & Partner Ltd.Law & Practice: Latin America & CaribbeanJohn Murphy, Arochi, Marroquin & Lindner S.C.Law & Practice: United States & CanadaTimothy Lockhart, Willcox & Savage PC

INTA Bulletin StaffExecutive DirectorAlan C. DrewsenDirector, PublishingRandi MustelloManaging Editor, INTA BulletinJames F. BushAssociate Editor, INTA BulletinJoel L. BrombergManager, Marketing and Brand StrategyDevin Matthew ToporekDesignerEric Mehlenbeck

INTA Officers & CounselPresidentGerhard R. Bauer, Daimler AGPresident ElectGregg Marrazzo, Estée Lauder Inc.Vice PresidentToe Su Aung, BATMark Ltd.Vice PresidentBret Parker, Elizabeth Arden, Inc.TreasurerMei-lan Stark, Fox Entertainment GroupSecretaryLucy Nichols, Nokia CorporationCounselDale Cendali, Kirkland & Ellis LLP

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2011 International Trademark Association

Welcome New MembersAaron | Sanders PLLC, Nashville, Tennessee, USAA.I.T.S.CO., Ahmedabad, IndiaAfric-Propi-Conseils, Ouagadougo, Burkina FasoAmerican Farm Bureau Federation, Washington, DC, USAAlpha International for Intellectual Property, Kuwait City, KuwaitApplied Materials, Inc., Santa Clara, California, USAArchitelos, Inc., Leesburg, Virginia, USAArochi, Marroquin, Lindner & Asociados SLP, Barcelona, SpainAvanir Pharmaceuticals, Inc., Aliso Viejo, California, USABaker Williams Mathiessen LLP, Houston, Texas, USABR Abogados, Santa Ana, Costa RicaBrandstrike Limited, London, UKbrandsymbol, Charlotte, North Carolina, USABrian D. Edmonds, Barrister & Solicitor, Patent & Trade-mark Agent, Toronto, Ontario, CanadaCameron LLP, Washington, DC, USACIPSELAW, Mexico, Distrito Federal, MexicoCNP Legal Services, Corona Del Mar, California, USADeborah A. Nilson, PLLC, New York, New York, USAFayer Gipson LLP, Los Angeles, California, USAFiners Stephens Innocent LLP, London, UK

Freedman & Associates, Ottawa, Ontario, CanadaGlobal Intellectual Property Company Ltd, Wan Chai, Hong Kong SAR, ChinaGordon & Rees LLP, Miami, Florida, USAGraceKennedy Limited, Kingston, JamaicaHavel, Holasek, & Partners, Prague, Czech RepublicHill & Associates Ltd, Causeway Bay, Hong Kong SAR, ChinaHMLG Moodley Reddy, Pretoria, South AfricaHoda Barakat, Dubai, United Arab EmiratesICM Registry LLC, Palm Beach Gardens, Florida, USAIntepat IP Services Pvt Ltd, Bangalore, IndiaIPMAX Law Firm, Hanoi, VietnamIsidore & Associates LLP, Roseau, DominicaJensen Law Firm, Los Angeles, California, USAJones Day, Washington, DC, USAKalka & Baer, LLC, Atlanta, Georgia, USAKeller Williams Realty, Inc., Austin, Texas, USAKnowledge Universe Education LLC, Portland, Oregon, USALavan Legal, Perth, AustraliaKrizman Law LLC, Cherry Hill, New Jersey, USAMaschoff Gilmore & Israelsen, Park City, Utah, USAMeijer, Inc., Grand Rapids, Michigan, USAOffice Depot, Inc., Boca Raton, Florida, USAOffices of Yusuf S. Nazroo, Port Louis, Mauritius

PSA, New Delhi, IndiaSal & Caldeira Advogados, Limitada, Maputo, MozambiqueSandoz International GmbH, Holzkirchen, GermanyScherer Smith & Kenny LLP, San Francisco, California, USAShuffle Master, Inc., Las Vegas, Nevada, USASmith Risley Tempel Santos LLC, Atlanta, Georgia, USAStryker Orthopaedics, Mahwah, New Jersey, USASWISS REPORT AG, Brunnen, SwitzerlandTaft Stettinius & Hollister LLP, Cleveland, Ohio, USAThe Law Crest, Lagos, NigeriaThomas Trademark and Copyright Legal Services, Durham, North Carolina, USATory Burch LLC, New York, New York, USATracFone Wireless, Inc., Miami, Florida, USAValent U.S.A. Corporation, Walnut Creek, California, USAVenable LLP, New York, New York, USAWestern Digital, Irvine, California, USAWorld Trade Centers Association, Inc., New York, New York, USAZ5 Brand Protection Consulting, Santa Ana, California, USAZynga Inc., San Francisco, California, USA

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AssociationNewsengineer encouraged brand owners to “do something cool to separate yourself from others” and warned that low-quality content is on Google’s radar.

The next session, “To the Right of the Dot,” focused on the dangers and pitfalls of using trademarks as gTLDs. Perhaps dashing some hopes, Fabricio Vayra (Time Warner Inc., USA) indicated that “we are at a place where [the new gTLDs] will launch.” Stacey King (Richemont International Ltd, UK) amused the audience by drawing a parallel between the introduction of the new gTLDs and the five stages of grief. Paul D. McGrady, Jr. (Greenberg Traurig, LLP, USA) urged brand owners to show up en masse to protect their interests at ICANN.

During the session “Developing and Protecting a Brand for the Internet Age,” Katrina Burchell (Unilever, PLC, UK) counseled that “if you don’t know how the Internet works you will have some problems. If you are not engaged you cannot give pragmatic advice.” Alice.com founder Mark McGuire advised brand owners not to “throw your weight around and shut people down. Realize what you are doing is out in public. Heavy-handed behavior winds up backfiring.” During “Doing More with Less: Effective Strategies for Policing Your Brand While on a Tight Budget,” Debra Hughes (American Red Cross, USA) suggested that brand owners engage violators in social media rather than try to silence them.

At the following day’s session “ICANN and Trademarks: Why Can’t We Be Friends?” Kristina Rosette (Covington and Burling, LLP, USA) described ICANN’s multistakeholder process and cited structural issues as the reason for some disagreements between ICANN and the trademark bar. J. Scott Evans weighed in to the discussion with the warning

that the application process for the new gTLDs “is just not baked yet. There will be a lot of missteps, so be flexible and prepared. If there is an RFP, respond.” During the session “UDRP: The Next Ten Years,” Ari Goldberger (ESQwire.com P.C., USA) suggested that attorneys contact domain owners before filing a case. He said he counsels domain owners to “forget about the principle, it’s all about money.”

During the luncheon break, special guest speaker Dr. Stephen Crocker, Chair of the Board of ICANN, promised brand owners that “ICANN will continue to improve the new gTLD program to ensure rights are protected. We are operating in a far more cautious mode than we could have.” He asked why attorneys, who are committed to protecting clients, are not recommending to their clients that they support the program. Dr. Crocker shared his belief that one of the challenges of innovation is that “we don’t know what all the answers are.”

After lunch, the attendees returned to the session “Know When to Hold ‘Em.” Christine Haight Farley (American University, USA) shared some best practices for sending cease and desist letters; she cautioned, “Don’t send one if you don’t intend to follow through, and don’t overstate your claims.” Two more sessions on social media followed, where topics such as the trademark owner’s tolerance to violations in social media and social responsibility in social media were discussed. The conference then wrapped up, with the presenters receiving a standing ovation from the crowd.

Jean-Francois Vanden Eynde (e-Brand Services S.A., Luxembourg) was one of the enthusiastic attendees. “The conference was of high interest to me, as we see that companies,

whether US-based or EU-based, are all facing the same problem: There is no control over the Internet and over social media. News travels at the speed of light, and reputations can be tarnished within a second. The solution lies certainly in the monitoring but also in the way to respond. We have noticed at this conference that cease and desist letters, as well as take-down notices, are not always the solution.”

For Pedro Martini de Castro Visconti (Dannemann Siemsen, Brazil), “INTA’s conference on issues concerning trademarks and the Internet was a great opportunity to stay abreast of the new top-level domains and all the major concerns that trademarks owners have towards the unknown possibilities that may originate from it, such as the monopoly of generic TLDs (.bank; .shoes; .sports) and the dispute resolution systems that have been designed to assist in this new step of the virtual world.”

Diego Fernandez (Marval, O’Farrell & Mairal, Argentina) concurred. “I came all the way from Argentina, looking forward to catching up on all new trends in connection with trademarks and the Internet, particularly regarding the new gTLDs. The seminar was an extraordinary opportunity to share valuable information and thoughts with my colleagues and the speakers, all of whom have a very deep knowledge of the topic.”

Those attendees having information overload from the sessions were pleased to see that all presentation materials, along with a 209-page course book, were provided for reference via an attendee portal on the INTA website. ■

Stellar Faculty Sheds Light on Internet Issues Continued from page 1

Rosemary Brkopac BrandProtect, Mississauga, Ontario, CanadaINTA Bulletin Association News Subcommittee

Contact the Managing Editor at tmr@inta.org or visit www.inta.org/tmr

The Trademark Reporter seeks contributions from trademark professionals and is particularly looking to expand its coverage of international issues by international writers.

November 1, 2011 Vol. 66 No. 194

AssociationNewsThis September, trademark practitioners assembled in Washington, D.C., to attend the 2011 INTA Advanced Trademark Symposium. The Symposium, held over a day and a half, featured panelists representing Internet companies, the U.S. Patent and Trademark Office (USPTO) and the academic world. The event was chaired by David S. Fleming (Brinks Hofer Gilson & Lione, USA) and Janice Bereskin (Bereskin & Parr LLP, Canada), who opened the conference by introducing a distinguished panel of trademark experts from the Internet industry.

The first session was moderated by Laura Covington (Yahoo! Inc., USA), who led the group through many examples of Web 2.0 platforms illustrating that “social media is more than just Facebook and Twitter.” Alexander Macgillivray (Twitter, Inc., USA) tackled the issue of rights protection, noting that “the Twitter trust and safety team who work with trademark issues are in constant training for what to do if a trademark is being used online.” He indicated, however, that Twitter values humor and stands behind parody accounts. Emily Burns (Google,

USA) urged brand owners who have YouTube issues to “try and resolve trademark disputes with the uploader. You are likely to get better results for the mark owner, the uploader and the YouTube community. Uploaders can be completely oblivious that they are infringing.” Doug Wood (Reed Smith, USA) suggested that when pursing trademark issues in social media, brand owners should consider “what is the damage, and if I do anything will I increase the damage.”

During the “Update on Trademark Law in the European Union,” Anna Carboni (Powell Gilbert, UK) provided an update on recently decided cases. Next, Alexander von Muhlendahl (Bardehle Pagenberg, Germany) discussed the reform of European trademark law based on the EU Trademark Systems Study, and advised marks owners to renew marks twice before giving up their national mark. During the final session of the day, “The USPTO in 2011,” INTA welcomed Chief Judge Gerard Rogers and Commissioner of Trademarks Deborah Cohn. Judge Rogers explained that the Bose decision changed the standard for finding fraud at the USPTO. Ms. Cohn spoke about the Office’s goal of increasing outreach to stakeholders and users, including to INTA members via the USPTO Subcommittee and through sessions held around the country. At the conclusion of the presentation, attendees were invited to a cocktail party, which provided them with the opportunity to network with colleagues and discuss the day’s events.

The second day’s sessions opened with a lively discussion on “Secondary Liability.” Simon Chapman (Lewis Silkin LLP, UK) mentioned that in light of the L’Oréal v. eBay decision of July 2011, “intermediaries are going to have to change their model and respond differently

to complaints.” Andrew Bridges (Winston & Strawn, USA) addressed the infringement issue; he acknowledged that “it is absolutely impossible to regulate all activity on sites such as Facebook.”

For the final session, “Hot Topics and Burning Issues,” INTA was honored by the presence of J. Thomas McCarthy (McCarthy Institute for Intellectual Property and Technology Law, USA). Professor McCarthy told the group that “everything has changed in the last ten years.” He shared his belief that “cease and desist letters need to be tailored to recipients, and the Goldilocks rule should be applied—avoid extremes.” He emphasized that overenforcement may lead to shaming campaigns and that “the real risk is not genericness.” Professor Christine Haight Farley (American University, USA) touched on the application process for the new gTLDs. Professor McCarthy had the last word at the conference, cautioning that dilution law was a minefield: “Courts are all over the map, and giving legal advice is very tricky.”

At the conclusion of the event, co-chair Janice Bereskin reflected, “We were thrilled to have six very talented panels on topics that we know were of great interest to our advanced audience.” Co-chair David Fleming summed up the reasons for the success of the conference: “This program was a terrific opportunity for seasoned trademark professionals to share ideas with leading experts on issues ranging from social media to secondary liability and functionality.”

Professors and the PTO Take the Stage at 2011 Advanced Trademark Symposium

Rosemary Brkopac BrandProtect, Mississauga, Ontario, CanadaINTA Bulletin Association News Subcommittee

2011 Symposium co-chairs Janice Bereskin (Bereskin & Parr LLP) and David S. Fleming (Brinks Hofer Gilson & Lione)

Supplies are very limited, so order yours today at www.inta.org/catalog

Order Additional Copies of the 2011–2012 Membership DirectoryMake sure you and your colleagues are always connected to INTA members by using one of two convenient methods to order:

1. Through INTA’s online publications catalog at www.inta.org/catalog 2. Using the order form found inside every copy of the

Membership Directory

This indispensable reference is part of an annual series that covers both U.S. and international trademark case law and unfair competition jurisprudence. Yearly reviews provide details and commentary on developments in trademark law and practice and trends in disposition of matters by the courts worldwide. Conveniently published in two volumes – available separately or in a combined set at a reduced price the Handbook is an invaluable resource.

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Volume I / United States $89.952011656 pages

Volume II / International $89.952011684 pages

Combined Set $149.95Both Volumes

(Paperback / Annual Series)ISBN 0-939190-62-1

International Trademark Association655 Third Avenue, 10th Floor, New York, NY 10017 - 5617 USA

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AN ESSENTIAL RESOURCE FOR:• Intellectual property practitioners• Corporate legal departments• Law libraries

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Contents ►

2011Trademark Law Handbook

• Stay current on both U.S. and worldwide trademark law and practice.• Benefit from the insight, commentary and analysis of expert practitioners in more than 50 jurisdictions.• Research essential information on what the courts find persuasive.

Volume I (United States) provides analysis and commentary on decisions of the Court of Appeals for the Federal Circuit (CAFC), the Trademark Trial and Appeal Board (TTAB), the United States Court of Appeals – with over 600 cases reviewed.

Volume II (International) covers recent developments in trademark practice in decisions handed down by tribunals in over 50 jurisdictions worldwide.

PUBLICATION TITLE QUANTITY MEMBER NON-MEMBER SUBTOTAL

2011 Trademark Law Handbook Vol. I (2011TLH1) US $89.95

2011 Trademark Law Handbook Vol. II (2011TLH2) US $89.95

2011 Trademark Law Handbook Vol. I & II (2011TLHC) US $149.95

PLEASE NOTE:ORDERS WILL NOT BE PROCESSED WITHOUT SHIPPING AND HANDLING CHARGES (5% IN THE CONTINENTAL UNITED STATES; 15% IN ALL OTHER LOCATIONS.)

Subtotal

NY Sales Tax (if applicable)

Shipping & Handling

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Annual Review of Developments in Trademark Law and PracticeTheodore H. Davis, Jr., Jordan S. Weinstein, Authors (Volume I / United States)Matthew Harris, Paul Tackaberry, Peter E. Wild, Editors (Volume II / International)

PART ILIKELIHOOD OF CONFUSION

PART IIEX PARTES CASES

United States Court of Appeals for the Federal Circuit

Geographic DescriptivenessConvention on the Elimination of All Forms

of Racial Discrimination (CERD) Genericness Internet-Based Specimen of Use

Trademark Trial and Appeal BoardIdentification of Goods Descriptiveness Proving Acquired Distinctiveness Through

Ownership of Prior Registration Service Incidental to Sale of Goods False Suggestion of Connection with

Persons (Government Agency) Simulation of Insignia of the United States Genericness Functionality Specimen Is “Substantially Exact

Representation” of Mark in Drawing Internet-Based Specimen of Use Primarily Merely a Surname/“Historical

Figure”Exception Disparagement

PART IIIINTER PARTES CASES

United States Court of Appeals for the Federal Circuit

Fraud

Evidence of Record in a Cancellation Proceeding

Overcoming the Presumption of Abandonment

Payment of Filing Fee with Motion for Leave to Amend

Trademark Trial and Appeal Board Descriptiveness Deceptive Misdescriptiveness Genericness of Product Configuration Partial Issue Preclusion Acquired DistinctivenessInherent Distinctiveness of Personal

Names Standing Likelihood of Confusion in Multiple-Class

Applications Bona Fide Intent to Use Fraud: Is Fraud on the Wane? Dilution Procedural Issues Motion Practice

Acquisition of Trademark Rights Use in Commerce Distinctiveness Nonfunctionality

Establishing Liability Proving Use in Commerce by Defendants Likelihood of Confusion Counterfeiting Dilution Section 43(a) Claims Cybersquatting Claims Recovery for Fraudulent Procurement

of Registrations State and Common-Law Claims Secondary Liability

Joint Tortfeasor and Personal Liability

DefensesLegal Defenses Equitable Defenses

RemediesInjunctive Relief Monetary Recovery

Constitutional Matters The First Amendment The Seventh Amendment

Procedural Matters Declaratory Judgment Actions StandingJurisdictional IssuesVenueAbstentionExpert Witness Testimony Extraterritorial Application of the Lanham Act Sanctions Class Certification Court Review of, and Deference to,

United States Patent and Trademark Office Decisions

Evidentiary Matters Discovery-Related Matters Necessary Parties Intervenors Attorney Disqualification

Judicial Authority Over Federal Registrations and Applications

TABLE OF CASES

PART IGENERAL

UseDescriptivenessDistinctivenessLikelihood of ConfusionBad FaithFamous and Well-known MarksAcquisition of Trademark RightsExhaustion of Trademark RightsCoexistence Agreements

PART IIREGISTRATION

RegistrabilityObjectionable FeaturesExamination and OppositionAmendmentsPost-Registration Evidence of Use

PART IIIENFORCEMENT

Infringement ProcedureDefensesRemedies Loss of Trademark RightsCourt Proceedings

TABLE OF MARKS

JURISDICTIONSArgentinaAustriaBeneluxBrazilBulgariaCanadaChileChina, People’s RepublicColombiaCommunity Trade MarkCourt of Justice of the European UnionCzech RepublicDenmarkEcuadorEl SalvadorFinlandFranceGermanyGreeceHondurasHong KongIcelandIndiaIranIrelandIsrael

ItalyJapanJordanKosovoLatviaLithuaniaNew ZealandNigeriaNorwayParaguayPeruPolandPortugalRepublic of South AfricaRomaniaRussian FederationSerbiaSingaporeSloveniaSouth KoreaSwitzerlandTaiwanThailandTurkeyUkraineUnited KingdomUruguayVietnam

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2011Trademark Law HandbookInternational Trademark Association

Contents

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VolunteerSpotlight

Julia Huston is chair of Foley Hoag’s Trademark, Copyright and Unfair Competition Practice Group in Boston, Massachusetts, USA. Starting her career with Hutchins, Wheeler & Dittmar, Julia moved to Bromberg & Sunstein, where she discovered trademark law. She joined Foley Hoag in 2009. Julia enjoys hav-ing “a 360-degree trademark practice.” She oversees numerous prosecution matters but continues to be actively involved with litigation, transactional and licensing matters, which round out her practice.

Raised in Ohio, Pennsylvania and New Jersey, Ju-lia moved to Boston to attend Boston University and never left. She received undergraduate and graduate degrees in education and psychology, in addition to her law degree.

Julia has been involved with INTA and its commit-tees for over 15 years. She says that “volunteer-ing for INTA has brought me many professional benefits, while providing me with a way to ‘give back’ to the trademark community.” One of her proudest moments was spearheading the adop-tion of the Model State Trademark Bill (MSTB) in Massachusetts, including testifying before the Massachusetts legislature. The MTSB was signed into law in 2006. Currently, Julia is work-ing on a guide to parallel imports. She explains, “The guide is intended to be a practical resource for large companies and small companies that may have never had to address the issue of parallel imports.” Julia believes that “every trade-mark practitioner should be a member of INTA and find a way to become actively involved.”

Julia would like the Association to become more involved in the famous marks doctrine, as there is uncertainty as to whether a famous mark used outside the United States will be protected from deliberate copying within the United States. “As the courts are not addressing the issue in a con-

sistent manner, I would be delighted to see INTA advocate for a legislative solution.”

Julia’s favorite trademarks are those that are “creative and playful,” such as the SCVNGR mark (pronounced scavenger) for mobile gaming technology. She also is fond of the whole grains certification mark owned by the Whole Grains Council, which she successfully prosecuted internationally and gets to see on many items in her kitchen.

Before becoming a lawyer, Julia was a special education teacher for children with severe spe-cial needs. She says that “if I stopped practicing law—which I hope never happens—I would do something related to teaching.” In addition to her legal practice, Julia is passionately involved with several causes, including providing free civil legal services to the poor. She serves as president of Greater Boston Legal Services and is an officer of the Boston Bar Association. In her free time, she travels with her husband and takes day trips on their small plane with her “appropriately named” two-year-old daughter, Skye.

Olaf Gillert, partner at the inter-national law firm Taylor Wessing, had an “international” background before he started working on trademarks.

During his studies in Bochum, Germany, Olaf worked for concert promoters and started to develop an interest in copyright and media law. Olaf continued his studies in Geneva, then completed a two-year internship in

Houston, Texas, USA, where he continued to sharpen his “legal swords” in copyright and media law. He then pursued an LL.M. degree at the University of Houston, where he was first exposed to trademark law. After he re-turned to Germany, his focus shifted gradually to trademark law. Olaf enjoyed this area of law very much and likes that his advice can be “seen” in real life.

After attending his first INTA Annual Meeting (Amsterdam, in 2003), Olaf joined the INTA Bulletin Committee and then the Adjunct Professor Task Force, the predecessor of the Adjunct Professor Special Interest Group. He enjoyed his work with this group, which included many enthusiastic volunteers who were not involved in any (other) official INTA committee.

Olaf, who teaches at the University of Witten / Herdecke, now is co-chair of the Adjunct Professor Special Interest Group, which is part of the Academic Committee. The group plans to create a repository of syllabi and a bibliography of teaching materials on INTA’s My Powerful Network community. During the

2011 Annual Meeting, his group worked with professors J. Thomas McCarthy and David J. Franklyn to present the session “Walking the Walk: Effective Teaching Methods for Adjunct Trademark Law Professors.”

Olaf likes any kind of “unconventional” trade-mark. “They give you the chance to explore undiscovered legal areas and are therefore challenging in every aspect,” he says.

If he were not in the trademark field, Olaf probably would be writing travel guides, because travel is one of his favorite hobbies. He is considering publishing a “Trademark Attorney’s Adventure Travel Guide” to describe the most popular places to seize counterfeit goods. This international side ties in with Olaf’s past experiences, including his work during high school and at the university, when he chauffeured and took care of musicians, actors and celebrities on their European tours.

Frances JaglaLeydig, Voit & Mayer Ltd., Seattle, Washington, USAINTA Bulletin Association News Subcommittee

Peter MüllerMüller, Schupfner & Partner, Munich, GermanyINTA Bulletin Association News Subcommittee

November 1, 2011 Vol. 66 No. 198

AssociationNewsRoundtables

“Customs Surveillance for Trademarks in Guatemala” was the subject of a roundtable hosted by Möller Attorneys at Law at the Spanish Chamber of Commerce in Guatemala City. The guest speaker was Gustavo Adolfo Pineda, head of the International Treaties and Con-ventions Unit of the Guatemala Customs Intendancy.

An international update on developments at WIPO was the subject of a Tokyo roundtable hosted by Konishi & Nakamura. Attendees learned about recent developments regarding the Madrid System and discussed how Japanese brand owners can deal with the fact that they are sometimes obliged to re-apply for a trademark in Roman let-ters for purposes of a Madrid application.

Muñiz, Ramirez, Perez – Taiman & Olaya Attorneys at Law hosted a roundtable in Lima on the matter of Andean objections and the application of Article 147 of Decision 486. The guest speaker was Veronica Perea, Deputy Director of the Trademark Office, who was representing the Director of the Trademark Office, Patricia Gamboa.

LG Electronics hosted a roundtable in Seoul that examined the impor-tance of trademarks to business and how to increase their value. At-tendees compared the benefits of trademark ownership and enforce-ment to those of other forms of intellectual property and discussed cross-cultural brand management focusing on Asia.

The planned implementation of the Madrid Protocol in Thailand and Non-Traditional Trademarks were the topics of discussion at a round-table in Bangkok hosted by Siam Premier International Law Office. Guest speakers were Watchara Piakaew, Thailand Department of Intellectual of Property, and Jennie Ness, regional IP attaché from the U.S. Patent & Trademark Office.

Attendees at a roundtable in Tirana hosted by Petošević discussed Albania’s new Customs Watch. Guest speakers were Genti Cani, Director of IP Protection at Albanian Customs, and Matthew Lamberti, Intellectual Property Law Enforcement Coordinator for Eastern Europe from the US Embassy in Sofia.

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AssociationNewsRoundtables

A roundtable entitled: “Implication of New Decree 97 on Counterfeit Enforcement Procedures”, was held at the Kim Do Hotel in Ho Chi Minh City and sponsored by INTA’s Anticounterfeiting Committee. At-tendees discussed how cases are handled under Decree 97 and the implication of this on counterfeit enforcement procedures.

Attendees engaged in a speed networking event preceding an interac-tive discussion on Trademark Enforcement and Pre-Litigation Strate-gies in Bangalore.

INTA Roundtables

Learn new

strategies

Address issues

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November 1, 2011 Vol. 66 No. 1910

Features

Section 21 of the Trade Marks Act 1994 lurks like a dangerous reef in the sea of U.K. trade-mark laws. A large number of lawyers, most of them from outside the United Kingdom, have foundered on this reef and as a result may well have lost clients and themselves been dragged into litigation. This article is designed to place upon Section 21 a large navigational beacon to alert trademark attorneys to its dangers.

Section 21 states that where a person threat-ens another with proceedings for infringe-ment of a registered trademark in the United Kingdom, then, if the threat is groundless, the person aggrieved by the threat may bring pro-ceedings against the person who made it. The claimant in any such action is entitled to a declaration that the threat was unjustified, an injunction to restrain the continuation of the threat and damages for any loss sustained as a result of the threat.

Legal Rationale for the Provision

The reasoning behind Section 21 is that under English law it has for some time been recognized that intellectual property rights, especially registered ones, carry with them a responsibility that the owner has to exercise toward the general public. If the owner uses its intellectual property rights in a cavalier fashion and, for instance, starts unjustifiably threatening not the owner of an allegedly infringing mark but rather shops selling goods that are badged with an allegedly infringing mark, it is likely that such threatening behav-ior will put off the shopkeeper from selling the badged goods. It is mainly toward this poten-tial abuse of registered IP rights that Section 21 is targeted.

Section 21 extends to any threat based on a trademark registered in the United Kingdom. This includes a threat to bring proceedings in the United Kingdom in reliance upon a Com-munity trade mark.

Requirements for Action Under Section 21

A “Threat”There are two main elements a claimant must show to bring a successful action under

Section 21. First of all, it must be shown that a threat has been made. The threat need not be in a letter to the person aggrieved. It could be made orally or by way of a circular to a number of parties. Also, the threat need not be made in just one document or circular; it can be the result of piecing together different communications that in combination can be taken as a threat.

The contents of any threat have to be con-strued in a practical matter. It will be for the judge to decide the effect that the alleged threat would have on an ordinary reader. This is a jury-type question for a judge, and he or she will make a decision based on the matrix of facts that surrounds the alleged threaten-ing behavior.

Section 21 defines exceptions to groundless threats. If the threat is made to a primary infringer—for instance, an infringer that is ac-tually applying the mark to its goods or pack-aging or that is importing badged goods into the United Kingdom, or an infringer that is supplying services under a mark—such threat is excluded from the definition of groundless. However, the Section 21 reef is not so simply negotiated as by relying entirely upon these exceptions.

In one of the lead cases on threats, Prince Plc v. Prince Sports Group Inc. ([1998] FSR 21), the party making the threat claimed that the threat fell under the primary infringer exemption because the party threatened only supplied services. The court, however, found that the letter in which the threat had been made was not expressly limited to the supply of services under the mark and threatened to take more general action against the alleged infringer. The effect of this was the party mak-

ing the threat could not claim that the letter fell within the exemption, even though the alleged infringer in fact only supplied services under the relevant mark.

This narrow interpretation of the exception was upheld by the Court of Appeal in a recent case, Best Buy Co. et al. v. Worldwide Sales Corporation Espana S.L. ([2011] EWCA Civ 618). In that case the defendant relied on the fact that the claimant only supplied services and that the “threat” letter demanded that the claimant stop using the trademark in relation to the supply of services. However, the letter also demanded that the claimant stop marketing and advertising using the trademark, and that was held to be sufficient for the defendant’s threat to be outside the exemption.

Therefore, the exemptions have to be very carefully watched, and the drafting of any letter, even to a primary infringer, has to stick rigidly to the terms of Section 21. If the writer does not do this, he or she runs the risk of foundering on the reef of Section 21.

A “Person Aggrieved”The other element necessary for a success-ful action is that the person bringing the action be a “person aggrieved.” This is a very simple hurdle for the claimant to negotiate. Clearly, the person who is directly threatened would be a person aggrieved. However, any person, or company, that can show that its commercial interests have been, or are likely to be, adversely affected in a real way by the threat would be deemed to be aggrieved. For instance, if a person can show that his or her customers or suppliers have been threatened by a third party, he or she would be a person aggrieved.

Defenses to Claims Under Section 21

As Section 21 is titled “Groundless Threats,” it is clearly a defense to any action to say that the threat was not groundless. The best way to do this is to show that there has been a trademark infringement. If a defendant in a ground-less threat action pleads in defense that there has been a trademark infringement,

Navigating Around Section 21 of the UK Trade Marks Act: Dangers and Risks from an Often Overlooked Provision

11

Features

Ian Craig Field Fisher Waterhouse LLP, London, UK

the claimant may counterclaim and seek to invalidate the mark or may claim that the mark should be revoked. This would turn the threatened action into a more straightforward trademark infringement action, with the twist that damages may be awarded against the owner of the mark if it transpires that there has not been a trademark infringement or if the mark is invalidated or liable to be revoked, so the threat of proceedings was indeed ground-less.

Section 21 also provides that it is not a groundless threat merely to notify a party that you own a registered trade-mark. However, an owner relying upon the “mere notification” exemption should be extremely careful not to go further than simply stating something to the effect that it is notifying the party that a mark is a registered trademark and appears on the Trade Mark Registry under a given number, as more than this could lead to problems.

Possible Defendants in a Section 21 Action

There is a final element to Section 21 that makes it such a navigational hazard for attorneys. A claimant suing for groundless threats can bring the action against any per-son who has made the threat. This includes not just the attorney’s client but also the at-torney’s firm and the individual attorney who has written the threatening letter. The effect of this could be that the attorney who found-ers on the reef of Section 21 not only loses a client but also could end up paying the dam-ages for the client and having the firm, and him- or herself, sued by the aggrieved party.

Prince Plc v. Prince Sports Group Inc. is a classic example. The U.S. counsel for Prince Sports Group wrote a cease and desist let-ter to Prince Plc, a company in the United Kingdom that was engaged in the supply of software services, and inadvertently made a threat under Section 21. The attorneys found themselves and their client the subject of

successful proceedings brought by the ag-grieved company.

Summary

There are obviously times when an attorney writing a cease and desist letter has to be bold and resolute and simply make threats with the clear understanding that the client is prepared to go into battle for trademark infringement. However, it is also important for clients and at-torneys to understand that if they are not care-ful, the inadvertent threat made, even orally, to sue based on any registered trademark in the United Kingdom can give rise to Section 21 proceedings. The answer to this problem may well be to seek advice from attorneys who understand the best way to navigate the reef of Section 21. Informed trademark practitioners should recognize the beacon planted upon Section 21 and be aware of these issues before they put themselves, and their clients, on the wrong side of an action for groundless threats.

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November 1, 2011 Vol. 66 No. 1912

Features

In trademark prosecution, the threat of infringement of the mark and a potential need to obtain an injunction usually are not at the forefront of the applicant’s mind. In India, how-ever, use claims contained in (or omitted from) the application can have a significant effect on the outcome of a later dispute. It is important that both the applicant and its counsel give sufficient consideration to submitting use information to the Indian Trademark Office, in order to better position the trademark owner to initiate and defend challenges.

Types of Affidavits of Use

There are three types of Affidavits of Use that may be filed in India: Affidavit of Prior Use (sup-porting use of the mark that has begun before the application is filed); Affidavit of Bona Fide Intention to Use (supporting the intent, before the application is filed, to use the mark after filing); and Affidavit of Commencement of Use (supporting use of the mark that began after the application was filed).

When to File Affidavit of Commencement of Use

At the time of filing an application in India, an applicant must indicate whether the mark is in use. If use had not begun at the time of filing, an applicant may indicate that use has begun by filing an Affidavit of Commencement of Use. An Affidavit of Commencement of Use can be filed at any time during prosecution of the application (which typically takes between one and two years).

Benefits of Filing Affidavit of Commencement of Use

Whether to file an Affidavit of Commencement of Use voluntarily is usually a decision left to the applicant. Although the Trademark Office has the right to require an applicant to file an Affidavit of Commencement of Use, it rarely does so. However, the filing of the Affidavit can be helpful to the applicant in a number of ways.

Defending against cancellation actions. The Affidavit can be helpful in defending against a post-registration cancellation action (“rectifica-

tion”) at the Trademark Office. Under Section 47(1)(a) of The Trade Marks Act, 1999, a petitioner can file a cancellation action on the grounds that (1) the registrant did not have a bona fide intent to use the mark and (2) the registrant has not, in fact, used the mark in relation to the goods and/or services covered.

In American Home Products Corporation v. Mac Laboratories (AIR 1986 SC 137), Mac Laboratories had filed for the cancellation of American Home Products’ trademark TRISTAN. The Supreme Court held that for a mark to be cancelled under Section 47(1)(a) both grounds of that section must be satisfied.

Thus, a registration is not vulnerable to a “lack of a bona fide intent to use the mark” challenge if the mark is eventually used. It is important to note that such use can begin after registration, as long as it commences at least one month before the cancellation action is brought.

Naturally, the fact that an applicant filed an Affidavit of Commencement of Use makes the applicant’s use of its mark more apparent, and may dissuade third parties from filing a cancel-lation action based on lack of intent to use.

Establishing priority. It is important to remem-ber that India is a first-to-use jurisdiction. As such, the date of first use can be more important in trademark disputes than the application filing date. An alleged infringer can seek to rely on its own prior use as a defense. If the plaintiff has an Affidavit of Use on file, there is a public record of when the plaintiff’s use began, which can be cited as corroborative evidence in any subsequent legal proceedings, such as a lawsuit. Merely having an earlier filing date would not automatically make the plaintiff’s mark a prior mark in enforcement proceedings or in opposition/rectification pro-ceedings; instead, an Affidavit of Commence-ment of Use might be needed, to help provide support for this position.

An Affidavit of Commencement of Use can gar-ner more support from the court in a lawsuit. In Anand Kumar v. Haldiram Bhujia Wala (80 (1999) DLT 26), during the prosecution of its application, the defendant filed an Affidavit of

Use supporting the application, claiming use of the mark only within the state of West Bengal. This persuaded the Delhi High Court to exclude the state of West Bengal from the purview of the injunction order against the defendant. The Affidavit of Use was sufficient to persuade the court that the defendant’s rights were superior in that geographic area.

Although it is possible to raise a prior use de-fense even in the absence of such an Affidavit, the onus of proof is more burdensome. To make up for the absence of a contemporane-ously filed Affidavit of Use or subsequently filed Affidavit of Commencement of Use, evidence would have to be filed before the court, which would likely cost more than filing an Affidavit during prosecution.

Although an applicant could file an Affidavit of Commencement of Use just before seeking an injunction, the court likely will give more cre-dence to an Affidavit filed in the normal course, before the injunction proceedings became imminent, than one prepared and filed on the eve of commencement of legal proceedings. Thus it is useful to put on record the date of commencement of use by filing an Affidavit in the Trademark Office as early as possible.

Third, filing the Affidavit will put the applicant in a better position to defend a non-use chal-lenge. India gives registrants a five-year grace period in which non-use is permitted without others’ having the ability to bring a cancella-tion action based on non-use. Nevertheless, an alleged infringer can defend itself from an infringement or passing off claim by alleging and establishing non-use by the registrant, even within the five-year grace period. If an Affidavit of Commencement of Use is already on record with the Trademark Office, others may be deterred from bringing a cancellation action or defending an infringement action on grounds of non-use.

How to File Affidavit of Commencement of Use

The Affidavit of Commencement of Use must include the date of first use in India (month and year are sufficient). Even if use has not commenced for all of the goods and/or ser-

Indian Affidavits of Use: A Tool for Effective Trademark Prosecution and Enforcement

13

Featuresvices filed for in the application, an Affidavit af-firming commencement of use of only some of the goods/services claimed in an application can be useful. Specifically, upon registration of the mark, the Affidavit can be effective for all “allied and cognate” (i.e., related) goods/ser-vices. In determining whether goods/services are “allied and cognate,” the court considers factors such as consumer sophistication, channels of trade, methods of sale and the nature of the goods/services themselves. For example, for an application covering tea and spices under Class 33, if the applicant used the mark in connection with tea in May 2008, the applicant may file an Affidavit of Com-mencement of Use for tea, omitting spices. The applicant could enforce the resulting reg-

istration against spices as well as tea because tea and spices would be considered “allied and cognate” goods.

The original Affidavit, signed on stamp paper (official government paper used in legal docu-mentation, which can be provided by one’s Indian counsel) and notarized, is filed with the Trademark Office. Other than the cost of the stamp paper, there is no official fee charged by the Indian Trademark Office for the filing of Affidavits of Use.

Final Thoughts

Even though filing an Affidavit of Commence-ment of Use is recommended, current Trade-

mark Office practice in India suggests it is not fatal to an applicant’s position if the applicant does not voluntarily file the Affidavit. However, as discussed above, having evidence of use already on file can be very helpful if it is neces-sary to take quick action to stop an infringer or defend against a third-party challenge.

Andrew Price & Rebecca LiebowitzVenable, LLP, Washington, D.C., USA

Sheja EhteshamALG India Law Offices, New Delhi, India

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November 1, 2011 Vol. 66 No. 1914

Law&Practice

Contributors: Jamal S. Smith Thornton Smith, Tortola, British Virgin Islands

Verifiers: Christoph Gasser Staiger, Schwald & Partner Ltd., Zurich, Switzerland

Mr. Smith is a member of the INTA Bulletin Law & Practice—Latin America & the Caribbean Subcom-mittee. Mr. Gasser is co-chair of the INTA Bulletin Law & Practice—Europe Subcommittee.

EUROPEAN UNION The Hammer and Sickle Still Poses a Threat in HungaryOn September 20, 2011, the General Court of the European Union issued its judgment in Couture Tech Ltd v. OHIM (Case T-232/10). British Virgin Islands–based Couture Tech Ltd. was appealing OHIM’s decision rejecting its application to register a mark involving the emblem of the former Soviet Union on the ground that registration of such a mark would be regarded as contrary to public policy and accepted principles of morality by a substantial section of the relevant public.

OHIM’s DecisionIn 2006, Couture Tech filed an application with OHIM for registration of the hammer and sickle design as a Community trade mark. Both the examiner and the OHIM Second Board of Ap-peal found that the mark consisted of an exact representation of the emblem of the former USSR. The hammer and sickle and the five-pointed red star are considered to be “sym-bols of despotism” according to the laws of Hungary. Relying on similar legislation in Latvia and the Czech Republic, OHIM found that the proposed trademark would be regarded as

contrary to public policy and accepted prin-ciples of morality by a substantial section of the relevant public of that part of the EU where the public had been subjected to the Soviet regime. Couture Tech appealed to the General Court against OHIM’s decision.

The General Court’s DecisionThe General Court made three basic points in dismissing Couture Tech’s appeal. First, it indicated that in certain circumstances the public policy or accepted principles of moral-ity in a single member state of the EU may be considered a sufficient basis on which to re-fuse an application. It is, therefore, necessary, when considering the concepts of public policy and accepted principles of morality, to take into account those particular circumstances that could influence the perception of the relevant public in an individual member state. Second, the Court found that the legislation of the member states concerned was sufficient evidence on which to assess the public’s per-ception of a mark relying on the symbols of the former USSR; consequently, it was appropriate

to take the legislation into account, not be-cause of its normative value but to support the findings of fact as to the existence of a public policy. Finally, and as a result of the other two points, the Court held that OHIM did not com-mit an error in finding that the applied-for mark was contrary to public policy and accepted principles of morality.

It remains open to Couture Tech Ltd. to file an appeal with the Court of Justice of the EU within two months of notification of the Gen-eral Court’s decision.

EUROPEAN UNION Requirements for a Slogan to Be

Accepted as a Community Trade Mark

Contributor: Guillaume Mortreux Novagraaf France SA, Paris, France INTA Bulletin Law & Practice—Europe Subcommittee

Verifier: Bill LadasSJ Berwin LLP, London, UK

In Meredith Corp. v. OHIM (Case T-524/09, Sept. 7, 2011), the EU General Court had the opportunity again to consider the criteria that govern the examination of an advertising slogan under Article 7(1)(b) of the Community Trade Mark Regulation (Regulation No. 207/2009) (CTMR), namely that the slogan must be distinc-tive.

The Second Board of Appeal of OHIM (Sept. 23, 2009) confirmed the examiner’s decision that the applicant’s mark BETTER HOMES AND GARDENS was not eligible for registration under Article 7(1)(b) CTMR with respect to insurance services.

Meredith Corp. appealed to the General Court, which concurred with the Board of Appeal in finding that the mark BETTER HOMES AND GAR-DENS was devoid of any distinctive character and therefore could not be registered.

The General Court referred to well-established law that it is inappropriate to apply to advertis-

ing slogans criteria that are stricter than those applicable to other types of marks, but it reiter-ated that meeting these requirements is harder for advertising slogans than for “traditional” word marks.

The Court concluded (like the Board of Appeal) that the meaning of the word mark BETTER HOMES AND GARDENS would be understood unequivocally by the English-speaking portion of the public. It agreed with the Board’s character-ization of the mark as “banal,” holding that it did not present—in light of the rules of English syntax, grammar, phonetics or semantics—an unusual nature (there was no originality). The mark would be understood directly, without any particular mental exertion, as alluding to the fact that the services applied for aid in acquiring better homes and gardens.

To conclude, the General Court distinguished the decision of the Court of Justice in Audi v. OHIM (Case C-398/08), regarding the mark VORSPRUNG DURCH TECHNIK (a mark that

could have “a number of meanings, or consti-tute a play on words or be perceived as imagina-tive, surprising and unexpected and, in that way, be easily remembered”), on the basis that the mark BETTER HOMES AND GARDENS was “not particularly original or resonant” and that it did “not require at least some interpretation or thought on the part of the relevant public.”

The General Court therefore refused registra-tion of the mark for Class 36 services on the ground that it was not distinctive.

This judgment of the General Court is available online at www.curia.europa.eu.

15

Law&Practice

Source: Ministry of Industry and TradeTrademark Office, Yemen

Contributor: Ibtisam Awadat ag-IP-news Agency, Amman, Jordan

Verifier: Aatef Abdul-Moula Abu-Ghazaleh Intellectual Property (AGIP), Sana’a, Yemen

YEMEN Official Fees for Trademark Services IncreasedThe Council of Ministers in Yemen has issued two ministerial decrees stipulating an increase in the fees for trademarks and geographical indications and for industrial design services.

As announced in Ministerial Decree No. 178 of 2011 (trademarks and geographical indica-tions) and Ministerial Decree No. 149 of 2011 (industrial designs), the increase in official fees is effective from October 1, 2011.

Implementing Regulations related to trade-marks have been released, and registration procedures have been amended as follows:

• Filing and registration fees have been merged.• The 8th Edition of the Nice Classification has

been adopted without local subclassifica-tion; note that marks designating all goods in Class 33 and/or alcoholic beverages in Class 32 cannot be registered in Yemen.

• Official fees for filing a trademark in black and white and in color are now the same.

• There will be a second publication of trademarks upon registration, including the mark’s number, the applicant’s name and the date of the publication upon filing.

• The Trademark Office will not issue certifi-cates for renewal, change of name, change

of address, merger or assignment.• Requests to cancel license agreements can

be submitted to the Trademark Office.

Contributor: Marco Bundi Meisser & Partners, Klosters

Verifier: Christoph GasserStaiger, Schwald & Partner Ltd., Zurich

Mr. Bundi is a member of and Mr. Gasser is co-chair of the INTA Bulletin Law & Practice—Europe Subcommittee.

SWITZERLAND No Protection for Scent of AlmondThe Swiss Federal Administrative Court has up-held the Swiss Federal Institute of Intellectual Property’s (IGE’s) decision rejecting protection for a smell mark of roasted almonds.

The applicant sought to register a smell mark that was de-scribed as a “recipe for the production of the smell of roasted almonds in a conven-tional kitchen,” with

the addition of vanilla, cinnamon and sugar. The mark itself contained the exact ingredients in the form of a recipe and the way to prepare the scent. However, the IGE refused to register the mark, as it was depicted only as an image; the smell itself was not depicted. Based on the guidelines of the IGE, currently there is no method for a graphical depiction of smells

that satisfies the legal requirements. However, the admission of smell marks is generally not excluded. In this case, owing to lack of representability, the IGE held that the descrip-tion of a recipe would not be precise enough to describe the mark.

The owner appealed the decision to the Swiss Federal Administrative Court. While the Court reiterated that the IGE as a matter of principle accepted smell marks, it denied protection on the ground of lack of graphical representability. The Court stressed that the trademark register may fulfill its publicity function only if the ob-ject of protection is clearly and unambiguously defined. In addition, it referred to the European Court of Justice’s decision in Sieckmann (Case C-273/00), according to which a description of the smell is not precise enough to protect it. Even if some jurisdictions, such as Benelux or OHIM, allow the registration of such marks,

their practice is not binding on or decisive for Switzerland.

This decision highlights the difficulty in pre-cisely formulating a smell mark. Until there are exact means to describe a scent, registration of such marks will be rejected in Switzerland. The decision (B4818/2010, May 23, 2011), which has since become final, is available online in German at www.bvger.ch.

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