FeaturesCounterfeit PharmaceuticalsPage 6

2011 Volunteer Service Award NominationsPage 5

INTABulletinThe Voice of the International Trademark Association

On May 26, 2011, the Supreme Court of Canada issued its much-awaited decision in Masterpiece Inc. v. Alavida Lifestyles Inc., and in doing so overturned the previous rulings of the Federal Court Trial Division and Federal Court of Appeal. INTA was an Intervener in the case and saw the Court adopt its position.

The appellant, Masterpiece Inc., began op-eration in the retirement residence industry in the western Canadian province of Alberta in 2001. In addition to its trade name, it em-ploys several unregistered MASTERPIECE-for-mative trademarks, including MASTERPIECE THE ART OF LIVING. The respondent, Alavida Lifestyles Inc., filed an “intent to use” applica-tion to register the trademark MASTERPIECE LIVING on December 1, 2005, for similar services. Its application went unopposed and issued to registration once Alavida had commenced use in the eastern Canadian province of Ontario.

Masterpiece’s subsequent efforts to register its own trademarks were unsuccessful be-cause of Alavida’s prior filing. The result was that Masterpiece brought an application to the Federal Court of Canada to expunge the registration. It challenged the registration’s validity on the ground that Alavida was not the person entitled to register the trademark MASTERPIECE LIVING because its trademark was confusing with Masterpiece’s prior-used trade name and trademarks.

Both the Federal Court and Federal Court of Appeal rejected the application on the basis that there was no likelihood of confusion. It appeared that, in reaching its decision, the Federal Court of Appeal had taken into ac-count the fact that the parties’ trade names and trademarks were not used in the same

AssociationNews

Canadian High Court Upholds National Scope of Trademark Protection

In This Issue

Law&Practice Australia 8China 9 European Union 10Macedonia 10New Zealand 9United States 11

AssociationNews Canadian Supreme CourtColombia Congress Approves MadridWelcome New Members USPTO Trademark DashboardVolunteer Spotlight Margaret Fitzpatrick Rudy Gaines

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June 15, 2011 Vol. 66 No. 11

AssociationNews

Colombian Congress Approves Madrid ProtocolOn May 31, 2011, the Plenary of the House of Representatives of Colombia’s Congress approved Bill 163 for accession to the Madrid Protocol. The Senate approved Bill 061 last December, so the House’s action concludes the required legislative readings. Presidential sanction and Constitutional Court approval are still required before accession takes ef-fect. INTA applauds the strong commitment of Colombia’s authorities and members of Congress to advance IP through legislation that will allow Colombia to become a member of the Madrid Protocol.

In securing congressional passage, INTA has been working closely with authorities and contributed its expertise at the time of public deliberations in the Senate. INTA members with subsidiaries in Colombia (Ideal Standards International BVBA, Leviton Manufacturing Co., Nestlé, Novartis Pharmaceutical, Perfetti, Red

Bull and Thane International) wrote letters in support of the legislation last October. Close consultations have been maintained through-out the process with WIPO as the administer-ing organization of the Protocol.

In a formal letter to INTA, Representative Eduardo Jose Castaneda Murillo stated “Colombia’s accession to the Madrid Protocol and its incorporation to our legal system en-tails having an adequate system that will be instrumental for the internationalization and expansion of Colombia’s trade abroad, and will lead the way to those abroad wanting to bring their products to our country.”

During the House hearings, Representative Castaneda had cited statistics showing that in 2010, 25,989 trademark applications were presented in Colombia of which 15,769 were

Continued on next page

AssociationNews

Continued on page 3

June 15, 2011 Vol. 66 No. 112

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, MH2 Technology Law Group LLPVice ChairWalter Palmer, Pinheiro Palmer Advo-gadosAssociation 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 ToporekDesignerJesse Riggle

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

C&S.LOGOS Patent and Law Office, Seoul, South Korea

Calcagno Law, Washington, DC, USA

Canadian Chamber of Commerce, Ottawa, Ontario,

Canada

Cleary Gottlieb Steen & Hamilton LLP, New York, New

York, USA

Conyers Dill & Pearman (Cayman) Limited, Grand

Cayman, Cayman Islands

Cooper Legal Group, LLC, Independence, Ohio, USA

CPZ - Centar Za Patente d.d., Zagreb, Croatia

CreateIP, Christchurch, New Zealand

DAE-A International IP & Law Firm, Seoul, South Korea

Daeju International Patent & Law Firm, Seoul, South

Korea

Danfoss A/S, Nordborg, Denmark

Deal China Consulting, Shanghai, China

DEI Holdings, Inc., Vista, California, USA

Delos, LLC, Great Falls, Virginia, USA

DeMont & Breyer, LLC, Holmdel, New Jersey, USA

Dhingra & Singh - Attorneys at Law, Delhi, India

DLA Phillips Fox, Sydney, Australia

Dr. Janusz Fiolka Law Office, Krakow, Poland

Dramatists Guild of America, New York, New York, USA

Estudio Llona & Bustamante Abogados S.A.C., Lima,

Peru

Fenwick & West LLP, San Francisco, California, USA

Fidal Direction Internationale, Paris, France

CorrectionsMatteo Scaglietti has founded his own law and IP conusulting firm in Vignola (Modena), Italy. His firm affiliation was incorrectly listed in the 2011 An-nual Meeting Attendee Directory.

Lawrence Siskind’s firm name is Harvey Siskind LLP. The firm’s name was incorrect in the list of Lefkowitz Moot Court Competition volunteers in the April 15 Bulletin.

Welcome New Members

made by residents of Colombia and 10,220 rep-resented foreign applications. This translates to 60% national applications, following a period (1995-2001) in which foreign applications dom-inated. This trend demonstrates that Colombian entrepreneurs are increasingly aware of the

importance of intangible assets in trade.

As other trading partners in Latin America join Colombia in recognizing the value of the Madrid Protocol for their own businesses and the value of trademarks on a global basis, they

can be expected to follow Colombia’s lead and join the Madrid System. ■

For more information, contact Laura Cruz, INTA External Relations Manager for Latin America, at lcruz@inta.org

Colombian Congress Approves Madrid Protocol Continued from previous page

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AssociationNewsgeographical area. If indeed geography had been relevant, Alavida operating in the east could have claimed there was no confusion between its trademarks and Masterpiece’s trade name and trademarks because on December 1, 2005, Masterpiece was operating only in Alberta.

It was on this issue and this issue alone that INTA sought and was granted leave by the Court to intervene as an amicus curiae. The Association argued that the fact that the par-ties’ trade names and trademarks were not used in the same geographical area was irrel-evant to the determination of likelihood of con-fusion. In particular, it was urged that Sections 6(2) and (4) of the Canadian Trade-marks Act clearly required that likelihood of confusion be determined on the basis that the trade name and trademarks at issue are used in the same area (the hypothetical marketplace), irrespec-tive of whether this is in fact the case.

The Supreme Court of Canada fully agreed with INTA’s position on this issue. Justice Rothstein, on behalf of the Court, noted that the hypotheti-cal marketplace test reflects the intention of the legislature to provide a national scope of protec-tion for registered trademarks in Canada.

Does Expense of Goods and Services in Ques-tion Diminish Likelihood of Confusion?

In what is an important clarification of one of the factors used in assessing likelihood of confusion, the Court rejected the ap-proach adopted by the lower courts. The trial

judge had held that the more expensive the services at issue, the more consumers will take time in making their purchase decision and thus be less likely to be confused. The Supreme Court in its analysis reverted to first principles. Justice Rothstein invoked the tradi-tional test for determining confusion, namely that it must be assessed from the point of view of the initial impression of an average consumer when first dealing with the trade-mark used in association with the services at issue. Indeed, Justice Rothstein indicated that even though the initial confusion may subsequently be resolved by reason of careful deliberation by the consumer, this does not negate the fact that the first consumer reac-tion in this case was one of confusion.

The Court noted that there was nothing in Alavida’s registration that restricted its use to upscale markets. It also criticized the trial judge’s consideration of Alavida’s actual use of its mark, noting that this did not reflect the entire scope of the exclusive rights that Alavida was granted upon achieving registration. The trial judge had emphasized that Alavida’s use of MASTERPIECE LIVING had been in the nature of a slogan accompanying its corporate identity, whereas Masterpiece had used the word MAS-TERPIECE to identify the company itself.

Diminished Role for Survey and Linguistic Experts in Assessment of Confusion

The Supreme Court went out of its way to criti-cize the work of the survey experts employed

in the case. The Court seemed to be saying that whether consumers would be likely to be confused was an issue for the trial judge to assess and that experts had little role to play. Indeed, it went so far as to suggest that court officials charged with case management of files should seriously consider whether such evidence is even necessary, especially in view of its expense to the parties.

Conclusion

It goes without saying that the successful appellant was the author of much of its own misfortune in the lower courts. Had Master-piece applied to register its own trademarks earlier and/or opposed Alavida’s application based on its prior use before the application issued to registration, it would not have had to incur the effort and expense involved in its struggle to reach the nation’s highest court for relief.

The decision itself is a welcome clarification to the test of confusion in the areas of geographi-cal use, the importance of the expense of goods and services, and the role of experts.

INTA thanks counsel for the Intervener, Daniel Bereskin and Mark Robbins (Bereskin & Parr LLP), as well as other members of the International Amicus Committee, including Asia-Pacific/Canada Subcommittee Chair Ian MacPhee (Lapointe Rosenstein Marchand Melançon LLP), for their efforts in bringing the Masterpiece amicus brief to fruition. ■

The U.S. Patent and Trademark Office has launched a Trademark Data Visualization Cen-ter Dashboard at www.uspto.gov/dashboards/trademarks to provide greater visibility to information about trademark applications and pendency through visual metrics.

The Dashboard shows that Trademark Opera-tions pendency has reached historically low levels. A current sampling of the statistics shows a 2.7-month pendency to first ac-tion, with a 96 percent quality level. Total pendency—defined as the average time from filing to registration, notice of allowance or abandonment—runs at approximately 10.9 months, with nearly a 98 percent quality rate.

Trademark Operations desires to maintain con-sistent monthly first-action pendency within a 2.5–3.5-month range, with disposal pendency at 12.5 months or less.

Trademark Operations has a goal of achiev-ing low levels of pendency while maintaining and increasing quality. One way the USPTO will improve and measure quality is through the “excellent Office Action” initiative. This quality

metric is measured by excellence of the initial search strategy, decision making and writing.The Trademarks Dashboard will give everyone access to measures presenting trademark pendency, quality, application filings, registra-tions and an assessment of inventory for pend-ing applications. The Data Visualization Center, which will be updated quarterly, will track the past three years of performance metrics to show trends as well as targets. A dedicated mailbox has been set up for public comment at tmdashboard@uspto.gov.

Canadian Supreme Court Upholds National Scope of Trademark Protection Continued from page 1

USPTO Update: Data Visualization Center Dashboard

Scott D. WoldowSmith, Gambrell & Russell, Washington, DC, USA Trademark Office Practices USPTO Subcommittee

June 15, 2011 Vol. 66 No. 114

VolunteerSpotlight

Rudy Gaines is one of the founding members of Marksmen and a longtime INTA volunteer. He likes “being part of a close-knit company that manages to do good work while bringing a little irony to the business of trademark enforcement.” He also enjoys his participation in INTA and the larger trademark

community, noting that “INTA is kind of the movable feast in this world and it doesn’t mat-ter whether you show up at the Annual Meet-ing or a simple roundtable, it’s never boring.”

Rudy currently serves on the Leadership Development Committee, working closely with the Leadership Transition team to craft a document intended to serve as a template for committees to ensure a smooth transition from outgoing to incoming leadership. “I’m rarely surprised at how much I don’t know,” he says, “but when it came to the intricacies of INTA policy—I was really surprised at how much I didn’t know. Hopefully our work will help fill in the blanks for other members of the Association.”

Rudy hopes many readers enjoyed his “Phil Donahue moment” at the Annual Meeting in San Francisco, moderating a panel on becom-ing a committee member, assuming a leader-ship role, and the challenges and rewards that come with it. He is thankful, though, that there

was no storming of the stage.

In his other life, Rudy is very proud of his alma mater, Auburn University, and the mighty War Eagle football team for winning their first national championship in his lifetime. He’s also a screenwriter who has worked with every major studio and has production credits, which he generally prefers to keep under his movie hat. He has an agent, but these days writes only when time allows. Beating all of the above by a mile, though, Rudy and his wife Courtney recently returned from Ethiopia with their adopted son, Yoftahe, who is six months old and the culmination of their successful naviga-tion of the long and crazy road of international adoption. According to Rudy, “Yofti kills his daddy daily.”

Margaret Fitzpatrick feels she “pretty much has the perfect career” working as a trademark agent with the firm of Gowling Lafleur Henderson LLP in Vancou-

ver, British Columbia, Canada. “One of the things I love best about my job is that every day involves a different challenge,” she says. “Even after 20 years in trademarks, I’m still learning new things on the job because our clients’ businesses span the globe and cover a very broad range of goods and services—every-thing from food items to luxury cars.”

On a day-to-day basis, the Vancouver na-tive deals with trademark clearance, brand strategies, new applications, legal arguments, contentious issues and exciting new marketing plans and products. The global flavor of Mar-garet’s work picks up on her previous career, when she worked for an international hotel chain at overseas postings from Egypt to Tahiti “and everywhere in between.”

Margaret has attended INTA Annual Meetings since 1998 and has been an active committee

member since 2003. She currently serves on the Law Firm Committee and previously was a member of the Trademark Administrators Committee. She cites the use of trademarks in social media as a very important industry is-sue, as well as piracy in emerging markets and changes in trademark law around the globe as harmonization is implemented.

Margaret has enjoyed all of the various INTA projects she’s been involved with, especially because she now counts many committee members among her roster of international friends and among some of her best friends. Outside of work, she likes to spend time with friends and family, travel and dine out.

Barb Barron KellyCT Corsearch, Chicago, Illinois, USAINTA Bulletin Association News Subcommittee

Frank HiscoxLewis and Roca LLP, Mountain View, California, USAINTA 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.

Show your support for distinguished volunteers active in INTA.

Call for Nominations July 11–August 26

Volunteer Service AwardsINTA’s Volunteer Service Awards recognize exemplary service by Subcommittee Chairs, committee members and non-committee volunteers during the past year. Eligible nominators – the Board of Directors, Officers, Counsel, Past Presidents and Past Counsel, Committee Chairs and Vice Chairs and INTA Staff – will receive an email with a link to the nominations portal on Monday, July 11. If you are not eligible to make nominations, but know of someone who is deserving of a 2011 Volunteer Service Award, please pro-vide that information to an eligible nominator after July 11.

• Advancement of Trademark Law Recognizes individuals whose efforts during the year have led to the advancement of substan-tive trademark law and practice.

• Advancement of Committee or Subcommittee ObjectivesRecognizes committee members whose initiative and demon-stration of creative thinking during the year helped to significant-ly advance a committee or subcommittee’s objectives.

• Advancement of the Association Recognizes individuals who have most notably advanced the objectives of INTA outlined in the Association’s Strategic Plan.

New this year! Pro Bono Volunteer Service Awards This year INTA introduces two new Volunteer Service Awards cat-egories, recognizing outstanding pro bono service by individuals and organizations:

• Pro Bono Legal Services Provided by Individuals Recognizes individuals who have shown a significant commitment to provid-ing trademark and related intellectual property pro bono legal services during the year.

• Pro Bono Legal Services Provided by Organizations Recognizes organizations that have demonstrated a significant development or expansion of programs for providing trademark and related intellectual property pro bono legal services during the year.

Learn more about awards categories and past winners by visiting www.inta.org/VolunteerAwards

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June 15, 2011 Vol. 66 No. 116

Features

Jane SteinbergGowling Lafleur Henderson LLP,Ottawa, Ontario, CanadaINTA Bulletin Features Subcommittee

It is largely impossible to separate counter-feiting legal issues from trademark law, as a counterfeit product essentially consists of a false representation regarding the identity of a product and/or its source. What could be more trademark in nature than that? The difference comes in the scope of the “taking” or “infringe-ment,” and sometimes in the consequences. While trademark infringement is generally a matter of civil law, counterfeiting not only infringes a trademark owner’s rights but does so in such an egregious way that criminal penalties often apply.

Because of the obvious public health implica-tions, drug counterfeiting has attracted justifi-able attention in the international community. Apart from constituting fraud and theft on several levels, passing off a counterfeit drug as the original product directly affects public health. This has triggered concern and action at the highest national and international levels and has spawned the creation of multiple other bodies that are keen to minimize the counterfeiting problem. Public bodies want to be seen as cracking down on an obvious public health problem without being viewed as the enforcers of private property rights (i.e., as agents of large drug companies).

U.S. Food & Drug Administration

On October 8, 2010, the U.S.-based Partner-ship for Safe Medicines (www.safemedicines.org), a group of organizations and individuals focused on education efforts regarding coun-terfeit drugs, hosted a first annual Counterfeit Drug Interchange Conference. Its keynote speaker was the top official in the U.S. Food & Drug Administration (USFDA), Margaret Hamburg, M.D., who assumed the position of Commissioner of Food and Drugs on May 18, 2009.

Dr. Hamburg’s speech recounted facts that are

not pretty. In some parts of the world, between 30 and 50 percent of medicines used to treat serious diseases are counterfeit. Dr. Hamburg further noted that problems relating to coun-terfeiting have become more complex over the past decade as the drug supply chain has changed, permitting new entry points through which counterfeit drugs can infiltrate the medi-cine supply. Large parts of legitimate manu-facturing operations have moved offshore. According to Dr. Hamburg, nearly 40 percent of the drugs Americans take are imported and nearly 80 percent of the active ingredients in medicines on the U.S. market originate from overseas sources. The USFDA has taken or is taking the following steps to address the crisis of counterfeit drugs:

• Ranked 1,000 active ingredients in order of the likelihood that they will be copied or adulterated for economic gain. These in-gredients have been targeted for additional testing at the border.

• Working on “track and trace” standards, which would provide for unique identifiers for legitimate pharmaceutical products as they move through the supply chain.

• Established overseas posts in China, Eu-rope, India and Latin America and is doing so in the Middle East.

• Collaborating with the World Health Organi-zation (WHO) and the Permanent Forum on International Pharmaceutical Crime so that anticounterfeiting efforts can be coordinat-ed.

• Setting up a new Drug Integrity and Security Program, which will focus specifically on is-sues such as counterfeiting.

• Reconstituting its internal Counterfeit Work-ing Group to help coordinate efforts across the USFDA.

• Working with Congress on legislation the USFDA needs for new (as yet unspecified) regulatory tools.

World Health Organization

Like the USFDA, WHO is heavily involved in efforts to combat pharmaceutical counter-feiting. It is a member of the International

Anti-Counterfeiting Coalition, which in turn has as its members approximately 60 nonprofit organizations. In 2006, WHO created an Inter-national Medical Products Anti-Counterfeiting Taskforce (IMPACT). IMPACT includes all WHO member states as well as China and several non-governmental organizations (NGOs). It also has representatives from INTERPOL, the Organization for Economic Co-operation and Development (OECD), the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO). IMPACT has numer-ous working groups, including a technology group that is working on unique identifiers such as bar codes, holograms, radio frequency identification (RFID), infrared invisible codes and invisible digital graphics.

The efforts of WHO and IMPACT have been weighed down by controversy over the defini-tion of counterfeiting and over what the role of WHO and IMPACT in the battle against coun-terfeit drugs should be. More information on this controversy can be found in a think tank’s December 2001 paper, available at www.cha-thamhouse.org.uk/research/global_health/current_projects/counterfeit_medications/.

While there is widespread agreement that there must be efforts to halt the counterfeit-ing of drugs, all those involved need to ensure that definitions of counterfeiting do not restrict trade in legitimate generic drugs. There is also a perception in some areas that anticoun-terfeiting efforts are more about protecting private IP rights than about preserving public health. In fact, some believe that by prioritizing the fight against counterfeiting, WHO has com-promised its role as a “public” health agency. As a consequence, WHO member states have gone so far as to set up an intergovernmental group to determine WHO’s role in anticounter-feiting efforts. This group was to make recom-mendations on WHO’s role by May 2011.

Meanwhile, WHO and IMPACT have carried on their efforts. WHO has cautioned that more than 50 percent of drugs purchased on the Internet from sites that conceal their real addresses are counterfeit. This resulted in an

Counterfeit Pharmaceuticals: Developments in Canada, Europe and the United StatesThe Tension Between Private Property Rights and Public Health

7

Features

international anticounterfeiting week (October 5–12, 2010), which targeted online sales. Operation Pangea III, conducted in support of IMPACT, was a robust effort, coordinated by INTERPOL, the World Customs Organization, the Permanent Forum on International Phar-maceutical Crime, the pharma industry and the electronics payment industry and involv-ing 45 countries. It resulted in the shutdown of multiple websites and the seizure of many counterfeit drugs. The trouble is that new online sources always seem to crop up. While successful, Operation Pangea III followed on the heels of Operations Pangea I and II, not to mention Operation Mercury and Operation Apothecary.

The Partnership for Safe Medicines touts some very real successes in its anticounterfeiting efforts. However, it also refers to a January 7, 2011, Safety Alert from the USFDA. The Alert warns that criminals are posing as FDA special agents and other law enforcement personnel as part of an international extortion scam that involves the sale of counterfeit drugs. The FDA website (www.fda.gov/ICECI/CriminalInves-tigations/ucm239309.htm) points out that while arrests have been made, the scheme is likely to continue.

Council of Europe’s Medicrime Convention

The Committee of Ministers of the Council of Europe adopted the Council of Europe Medicrime Convention in December 2010. This Convention criminalizes the counterfeiting of drugs and medical devices. The Conven-tion will be open for signature this year and will come into effect on a date to be set by the Committee of Ministers. Once in effect, it will oblige parties to criminalize the manu-facturing of counterfeit drugs as well as the supplying, offering to supply and trafficking in them. An explanatory report points out that because the Medicrime Convention focuses on the protection of public health, it does not cover any issues relating to the infringement of intellectual property rights, “as it was felt that intellectual property rights are generally

adequately protected” at both the national and the international level. The Pharmaceuti-cal Research and Manufacturers of America (PhRMA) (www.phrma.org) disagrees, saying that weaknesses in drug safety controls have been exacerbated by inadequate IP remedies and that civil trademark laws are not capable of singlehandedly protecting drug distribution channels.

However, some industry members have used the laws aggressively and effectively. In a July 8, 2010, article in Businessweek, reporter Simeon Bennett recounts the story of Martin Hickman. Hickman sold counterfeit VIAGRA medicine over the Internet, investing the mil-lions he made in a villa in Spain’s Costa del Sol, a BENTLEY automobile and a diamond-studded ROLEX watch. He was apparently sentenced to jail for all of three months, with his Internet site continuing to operate while he was incarcerated. On the day of Hickman’s release, however, Pfizer served him with a civil suit for trademark infringement, recovering a $2 million out-of-court settlement.

Canada

Canada is joining other countries in upgrad-ing its efforts to combat counterfeit drugs. A new policy, dated May 14, 2010, addresses the issue of counterfeit health products. The new policy applies to all suspect and con-firmed counterfeit health products (excluding food). In the background to the policy, it is acknowledged that counterfeit medicines endanger public health, threaten the reputa-tions of genuine brands and erode consumer confidence in the supply chain. The primary objective of the policy is to manage risk and to have counterfeit products removed from the market using the most appropriate level of intervention. In applying the policy, Health Canada’s Inspectorate will collaborate with other stakeholders, including other govern-ment bodies, provincial regulators, healthcare professionals, industry representatives, the Royal Canadian Mounted Police (RCMP), the provincial and territorial colleges of pharmacy and similar foreign regulatory agencies.

Anti-Counterfeiting Trade Agreement

Intellectual property rights are not being ignored at the international level, either. The Anti-Counterfeiting Trade Agreement (ACTA), which is general in nature as opposed to being limited to medicines, aims to establish an international framework to aid parties to the Agreement in combating the infringement of IP rights, including infringements through counterfeiting and piracy. The INTA website includes the final text of ACTA, released on December 6, 2010. The Association has stated its support for the ACTA provisions that set out higher standards and greater cooperation on anticounterfeiting measures, stronger border enforcement, enhanced criminal penalties and increased cooperation between industry and government. INTA has highlighted two favor-able changes reflected in the final ACTA text that it says are an improvement over current rules in the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). One change is the ex officio authority that is given to authorities to initiate investigation, legal action or criminal enforcement. The other is that border measures are now applied to commercial goods sent in small consignments. (A popular way to circumvent enforcement has been to transmit counterfeit goods in multiple small consignments.) INTA has proposed some suggestions for improvement to the latest text. ACTA will now need to be approved by each negotiating country in accordance with its internal procedures.

Conclusion

There is much hard work being devoted to eradicating counterfeit medicines within the confines of acceptable international param-eters, some of which expressly separate anticounterfeiting efforts from IP enforcement. All in all, a sometimes confusing but generally positive array of anticounterfeiting measures is being employed in the particularly challenging field of medicine. ■

June 15, 2011 Vol. 66 No. 118

Law&PracticeIn an appeal from the Registrar of Trade Marks in a non-use removal action, the Federal Court of Australia considered three issues. Austin, Nichols & Co. v. Lodestar Anstalt, [2011] FCA 39 (Feb. 4, 2011) (Cowdroy, J.).

Standing

Trademark owner Lodestar challenged Austin’s standing in relation to non-alcoholic bever-ages in Class 32 but not for beers or Class 33 goods. The court was bound by the joint judgment of four judges of the Australian High Court in the Health World case, requiring “per-son aggrieved” to be liberally construed on the basis of “trade rivalry” of the parties, not by reference to minute product analyses. Accord-ingly, Austin did not need to trade or intend to trade in non-alcoholic beverages in Class 32.

Obstacles Excusing Non-use

The trademark owner argued that non-use of its WILD GEESE trademark on alcoholic bever-ages (especially whiskey) should be excused because of worldwide litigation in relation to the trademark, product sourcing difficulties and promotional impediments.

The Federal Court held that Section 100(3)(c) of the Trade Marks Act 1995 excuses non-use

only when external events not brought about by the voluntary act of the trademark owner so disrupt the trade in the owner’s goods as to cause the non-use in the relevant period, whether or not other traders are similarly af-fected. The owner must show that “but for” the impediment of a “trade character,” the trade-mark would have been used on the goods in the relevant non-use period. The events cannot include, for example, personal illness.

The court found no basis to excuse non-use. It held that:

1. Worldwide litigation and product sourcing issues did not cause the non-use in Austra-lia, as these issues had not prevented use in other jurisdictions; and

2. The restrictions on promotion were very limited.

Discretion

The discretion not to remove an unused mark is broad, does not require exceptional circum-stances and is exercised reasonably in the light of the public interest in expunging un-used marks and the private rights of the par-ties. Nonetheless, binding precedent required a sufficient reason to retain the registration in the face of the non-use applicant’s prima

facie entitlement to removal.

The court retained the registration for limited goods (whiskey), taking into account the follow-ing factors:

• Substantial use of mark overseas before and after the non-use period in 34 coun-tries;

• Various industry awards and a limited public profile in Australia;

• The legal and financial detriment to the owner if the mark were expunged;

• The relatively short period the mark had not been used;

• Difficulties in sourcing product;• The non-abandonment of the trademark;• That wine (the non-use applicant’s goods of

interest) and whiskey could be distinguished so separate registrations for WILD GEESE for wine and whiskey in the name of different owners would not lead to confusion.

AUSTRALIA Federal Court Uses Discretion to Retain Registration Despite Non-use

Contributor: Brett DoyleClayton Utz, Sydney, Australia

Verifier: Barbara SullivanHenry Hughes, Wellington, New ZealandChair of INTA Bulletin Law & Practice— Asia-Pacific Subcommittee

Register at www.inta.org/2011TMA

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Trademark Administrators Conference

9

Law&PracticeIn January 2011, the Beijing High Court upheld the decision of the Beijing First Intermediate People’s Court in the Nissan case, allowing the cancellation of the trademark RICHAN JIAHE (“Richan” is the same as NISSAN in Chinese characters and also means “Japanese prod-ucts”) based on its similarity to two separate registered trademarks owned by Nissan.

In April 2006, Nissan filed an application to cancel the trademark RICHAN JIAHE (regis-tered in April 2001 for lubricating oils), citing its registered famous trademarks NISSAN (in Chinese characters) and NISSAN & Device. The RICHAN JIAHE mark was cancelled in April 2009 by the TRAB (Trademark Review and Adjudication Board, the administrative author-ity under the State Administration for Industry & Commerce (SAIC), which is responsible for handling trademark disputes), and an appeal was filed with the Beijing First Intermediate People’s Court.

The Intermediate Court held that Nissan provided substantial evidence of use in China

between 1979 and 1995, prior to the registra-tion of its marks. As such, Nissan had estab-lished the well-known status of the trademarks NISSAN (in Chinese characters) and NISSAN & Device in China through their continuous use in advertising. Further, the Chinese media uses the expression “Nissan cars” to refer to Nissan’s products. The Court therefore found that use of “Nissan” had become directly linked to Nissan and that consequently the name enjoyed a high reputation in China.

The Intermediate Court also held that Nis-san’s marks were highly distinctive in terms of wording and design. It found that as the contested mark RICHAN JIAHE was similar in wording and design to Nissan’s marks and that as it was used for lubricating oils, which were related to the goods in connection with which Nissan used its famous trademarks, use of the RICHAN JIAHE mark on lubricating oils resulted in confusion of the public and damage to Nissan’s trademark rights. In addition, there was evidence indicating that the registrant of RICHAN JIAHE had also applied for the

registration of the names of other famous car manufacturers, such as Toyota and Honda, for use with lubricating oils. Consequently, the Intermediate Court held that the registrant intended to confuse consumers.

The cancellation decision was upheld by the High Court.

In light of the above, should trademark owners be able to provide substantial evidence of use of their marks in China prior to the application dates and should the marks be granted “well-known” status, the mark owners may be able to rely on this to cancel registered marks and in opposition proceedings, even if the marks are for different classes of goods and/or services.

CHINA Pre-Registration Use Relevant to Establishing Mark’s Fame

Contributor: Vivien ChanVivien Chan & Co., Hong Kong, Beijing & Shanghai

Verifier: Julia Hongbo ZhongLee and Li – Leaven IPR Agency Ltd., BeijingINTA Bulletin Law & Practice— Asia-Pacific Subcommittee

Pabst Brewing Company applied to register the trademark PRIMO in relation to beer. New Zea-land Milk Brands Limited opposed registration based on its substantial use of the identical trademark PRIMO in relation to flavored milk and on related registrations of the PRIMO mark covering milk and milk products. Pabst Brewing Co. v. New Zealand Milk Brands Ltd, [2011] NZIPOTM 3 (Mar. 30, 2011).

New Zealand Milk’s prior PRIMO trademark registrations did not provide a successful ground of opposition, as none of the covered goods were considered to be similar to beer.

However, New Zealand Milk established that it had developed a significant reputation in the New Zealand marketplace in relation to its PRIMO flavored milk, before the priority date of Pabst’s trademark application. While the Assis-tant Commissioner of Trade Marks noted numer-ous differences between flavored milk and beer, she held that New Zealand Milk had established each of the following grounds of opposition:

• Use of the PRIMO mark in relation to beer was considered “likely to deceive or cause

confusion,” contravening Section 17(1)(a) of the Trade Marks Act 2002. The Assistant Com-missioner found that each party marketed its beverage products with similar surfing themes aimed at men aged 25–40. This meant that people would be “caused to wonder” whether there was a trade connection between the two products—such as a licensing arrangement, or endorsement, or whether PRIMO beer was a “line extension” of PRIMO milk.

• As use of PRIMO for beer was likely to deceive or cause confusion, the use would also contravene Section 9 of the Fair Trading Act 1996 and therefore be “contrary to law,” contravening Section 17(1)(b) of the Act.

• Pabst’s use of the PRIMO mark in relation to beer would be “taken as indicating a connec-tion in the course of trade between [beer] and [New Zealand Milk], and would be likely to prejudice the interests of [New Zealand Milk],” contravening Section 25(1)(c) of the Act. Pabst’s use of the PRIMO mark in relation to beer would indicate a connection in the course of trade with New Zealand Milk because the marks were identical and would both be used

in the beverage industry. Pabst’s use of the identical mark in relation to beer would also be likely to prejudice New Zealand Milk, be-cause it would lead to confusion and dilute the distinctiveness of New Zealand Milk’s mark and there would be a negative association of PRIMO milk with alcoholic beverages.

The decision demonstrates the breadth of grounds available to the owner of a well-known mark in New Zealand in trademark opposition proceedings. In this case, the opposition was successful even though the reputation of the opponent’s well-known mark related to goods that were dissimilar to the goods covered by the opposed application and even though the mark was not registered in New Zealand for the spe-cific goods for which it had become well known.

NEW ZEALAND Confusing Beer and Milk

Contributor: Nick HolmesDavies Collison Cave, Melbourne, Australia

Verifier: Barbara SullivanHenry Hughes, Wellington, New ZealandChair of INTA Bulletin Law & Practice— Asia-Pacific Subcommittee

June 15, 2011 Vol. 66 No. 1110

Law&PracticeIn his Opinion dated March 31, 2011, the Advocate General (AG) of the Court of Justice of the European Union expressed the view, with reference to a question referred by the Spanish Supreme Court, that Article 27 of the Community Trade Mark Regulation (CTMR) excludes the possibility of considering the hour and minute of an application for the purposes of establishing priority. (Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros v. Boys Toys SA, Case C-190/10 (AG Mar. 31, 2011).)

Under Article 27, the filing date of a CTM appli-cation is that on which the complete documen-tation is filed with OHIM, subject to payment of the relative fee within one month.

The case arose from the filing, on the same day but at different times, of applications that were then the object of opposition proceedings in Spain. More specifically, the opponent elec-tronically filed two CTM applications at OHIM on December 12, 2003 (at 11:52 am and at 12:13 pm), while the applicant filed a national application at 5:45 pm on the same day.

The Spanish Patent and Trademark Office (OEPM) rejected the opposition, holding that the CTM rights were not prior rights. On ap-

peal, the OEPM held that the filing date of the CTM applications was later than that of the op-posed national application because, under Ar-ticle 27, the filing date of the CTM applications was to be considered the date on which OHIM received the application fees. Subsequently, the Superior Court of Justice of Madrid held that the filing date of the CTM applications was the date on which the filing was completed at OHIM (February 7, 2004) and not the date on which the application was sent electronically.

The AG noted that the date on which an appli-cation is filed electronically is to be considered the filing date, on the condition that the formal requirements for the attribution of a filing date have been met. Otherwise, the filing date will be later, corresponding to the date on which such formalities have been completed.

With regard to whether the actual time of filing could be considered in establishing the priority of applications having the same date, the AG justified his view that the “filing date” should be interpreted as referring only to the calendar day by making reference to the Paris Conven-tion, a literal interpretation of Article 27 of the CTMR and Rule 5 of the implementing regula-tion (Regulation (EC) No. 2868/95); to OHIM guidelines establishing Central European time

(GMT+1) as relevant for establishing a priority date but not a priority “time”; and to the practi-cal difficulties of an alternative interpretation (including the four time zones of the EU).

In this respect, the AG observed that the pur-pose of e-filing was to modernize and facilitate access to trademark protection, not to estab-lish a “real time” priority regime.

Finally, the AG observed that the marks in con-flict were therefore destined to coexist but that coexistence was an inevitable phenomenon in the EU’s multinational and multifaceted trademark system.

The Court of Justice is expected to confirm the AG’s opinion.

On February 23, 2011, the Parliament of the Republic of Macedonia ratified amendments to the Law on Industrial Property, which came into force on March 5, 2011.

The primary reason for amending the Law on Industrial Property is that, recently, the Law on Quality of Agricultural Products began regulating Protected Designations of Origin (PDOs) and Protected Geographical Indications (PGIs) for agricultural and dairy products. Thus, the provisions for protection of such products had to be removed from the Law on Industrial Property. Other products with a PDO or PGI re-

main under the scope of the Law on Industrial Property.

Another significant change concerns the State Market Inspectorate’s enforcement activities. The Law on Industrial Property now obligates the State Market inspectors temporarily to detain counterfeit goods placed on the market, while the old law did not clearly specify what was to be done with such counterfeits. Under the old law, instead of detaining the goods, the inspectors often issued orders for those goods to be removed from the market, but the goods were not destroyed and their fate was

unknown. The amendments introduce the pos-sibility of out-of-court settlement.

Finally, the fines for infringers have been reduced, and now range from EUR 700 to EUR 6,000; the maximum fine before the amend-ments was EUR 8,000.

EUROPEAN UNION Not the Right Time for Change in Filing Date Regime

MACEDONIA Macedonia Adopts Amendments to Industrial Property Law

Contributor: Peter McAleeseBarzanò & Zanardo, Rome, Italy

Verifier: Alexandra Dellmeier-BeschornerLexDellmeier, Munich, Germany

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

Contributor: Živka Kostovska-Stojkovska PETOŠEVIĆ, Skopje

Verifier: Branko PetkovskiBINSO Intellectual Property Agency, Skopje

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Law&Practice

In a precedential decision, the USPTO’s Trade-mark Trial and Appeal Board (TTAB) held that the mark KUBA KUBA was primarily geographi-cally deceptively misdescriptive when used in connection with cigars and other tobacco prod-ucts. Accordingly, the TTAB affirmed the refusal to register the mark under Section 2(e)(3) of the Lanham Act. In re Jonathan Drew, Inc., Se-rial No. 77099522 (T.T.A.B. Jan. 28, 2011).

The TTAB stated that a mark is primarily geo-graphically deceptively misdescriptive if (1) the mark’s primary significance is a generally known geographic location; (2) the relevant public would likely believe that the goods originate in the place named in the mark (i.e., a “goods/place associa-tion” exists) when in fact the goods do not come from that place; and (3) the misrepresentation is a material factor in the consumer’s decision.

With respect to the first factor the TTAB said, “Because KUBA looks and sounds similar to Cuba, with no other recognized and/or pertinent meaning attached to that particular spelling, we find that the primary significance of KUBA is the geographic meaning of Cuba. Furthermore, the repeated use of KUBA does not alter its impression as a geographic term.” Accordingly, the TTAB held KUBA KUBA would be perceived as a mere misspelling of “Cuba,” a generally known geographic location, and would not have another significance to the relevant public.The TTAB’s analysis of the “goods/place asso-

ciation” was brief. The TTAB said that because the evidence showed Cuba is famous for producing cigars and tobacco but the appli-cant’s cigars are not from Cuba and would not incorporate Cuban seed tobacco, “the relevant public would be likely to believe that appli-cant’s cigars offered under the mark KUBA KUBA come from Cuba, i.e., that a goods/place association exists, when in fact the goods will not come from that place.”

Finally, the TTAB addressed whether this mis-representation was material to the consumer’s decision. The TTAB said, “In order to establish a prima facie case of materiality there must be some indication that a substantial portion of the relevant consumers would be materi-ally influenced in the decision to purchase the product or service by the geographic meaning of the mark.” The TTAB highlighted the impor-tance of the second factor when analyzing this third factor, stating that “it has been consis-tently held . . . that a strong or heightened goods/place association, which we have here, is sufficient to support a finding of materiality.”

Based on the TTAB’s determination that the primary significance of the mark was Cuba, and in view of the demonstrated reputation of Cuban cigars, the TTAB said it could “infer that at least a substantial portion of consum-ers who encounter KUBA KUBA on applicant’s cigars are likely to be deceived into believing

that the cigars come from Cuba,” thus support-ing a finding of materiality. The TTAB rejected the applicant’s argument that direct evidence of actual public deception was required and held that although the relevant public’s understanding of a mark may be shown by direct evidence such as consumer testimony and surveys, the public’s understanding may also be inferred from indirect or circumstantial evidence, such as reference materials and third-party website content.

In its final paragraph the TTAB rejected the applicant’s argument that because of the U.S. embargo on Cuban products consumers would not likely believe that the applicant’s goods origi-nated in Cuba. Citing decisions from 1997 and 2000, the TTAB explained that it had previously considered and rejected this embargo argument and said that “applicant has offered no evidence that the embargo on Cuban products would have any effect on the perception of KUBA KUBA as a geographically deceptive term.”

UNITED STATES TTAB Snuffs Out KUBA KUBA for Cigars

Contributor: Adam D. SiegartelProskauer Rose LLP, New York, New York

Verifier: Lisa A. IversonNeal & McDevitt, LLC, Northfield, Illinois

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

Since May 10, 2011, it has been possible to obtain certified copies of either CTM (Community trade mark) application requests or CTM registra-tions from the CTM-ONLINE database. These certified copies are automatically generated and can be downloaded by the user via a direct link from the CTM-ONLINE detail page and from the Online Access to CTM files of the relevant CTM.

In the list of documents, an icon appears next to the document for which a certified copy can be downloaded. Clicking on the icon will gener-ate a certified copy of the document in PDF format. The PDF document can be opened for printing or saving.

The following elements are on each page of the document as header and footer: a unique identification code, a “copy” stamp, the signature of the OHIM staff person responsible for issuing certified copies, date of the certified copy, CTM number and page numbering. The date indicated is the date when the certified copy was automatically generated.

The automatically generated certified copy has the same value as a certified copy sent on paper and can be used in either electron-ic or printed format. Any authority to which the automatically generated certified copy is

submitted can verify the original document using the unique identification code given in the certified copy. This service is free of charge.

EUROPEAN UNION OHIM’s New Automatically

Generated Certified Copies

Contributor: Michaela Huth-DierigBoehmert & Boehmert, Munich, Germany

Verifier: Wiebke BaarsTaylor Wessing, Hamburg, Germany

Ms. Huth-Dierig is a member of and Ms. Baars is co-chair of the INTA Bulletin Law & Practice—Europe Subcommittee.

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