interview: ambush marketing and 10 the olympics …we ain’t got no badges. we don’t need no...

Attendees learned about the need to breakdown barriers in trademark law last nightduring the opening ceremony of INTA’s130th Annual Meeting in the futuristic sur-roundings of Hall 1 in the ICC.

INTA President Rhonda Steeleexplained why this year’s Annual Meetinghas the theme “breaking down barriers.”She said that these barriers relate not onlyto the changing demands of a global mar-ketplace: “They also extend to new think-ing about non-traditional marks … to therelationship of trademarks with otherforms of IP, such as design rights, and mov-ing away from strictly national trademarkregimes toward regional and treaty-basedglobal systems such as Madrid.”

Steele said that she wants to use heryear as INTA President to look at the chal-lenges faced in the emerging markets andalso to acknowledge the issues that theseemerging countries have, such as the pro-tection of traditional knowledge, cultureand folklore—the subject of an INTAworkshop on Tuesday morning.

That is just one part of an innovative pro-gram devised by Meeting Co-Chairs PeterMunzinger of Bardehle Pagenberg DostAltenburg Geissler and Sara Blotner ofCitigroup Inc. Munzinger and Blotner lastnight gave an overview of the next threedays and highlighted the session on effectiveglobal branding on Monday morning as wellas the global coverage of the various indus-try breakouts, sessions and table topics.

Continued on page 29

Last night’s Welcome Reception created a mini-Berlin in the ICC, with a beer garden, thestreets Kurfürstendamm, Friedrichstrasse and Zimmerstrasse and a miniatureBrandenburg Gate. Guests were also greeted by costumed actors playing historical char-

acters, such as a German constable (who doubled as a magician) from 1910 and a womanperforming on a Leierkasten—a popular folk instrument played by Berlin street artists.Entertainment was provided by German jazz dinner band, the GENTS.

The story of how theSCHWARZKOPF hair carebrand grew from sales of €0.5billion in 1995 to €1.6 billionlast year was the centerpiece oflast night’s keynote speech byHans Van Bylen, executive vicepresident of Henkel.

Van Bylen described to atten-dees how the 105-year-oldbrand has been extended to“multiple dimensions,” as wellas how the main brand has beenused with sub-brands, such asDIADEM, TAFT and GLISS.He also illustrated how thePOLY COLOR brand has beentransformed over 10 years,

finally disappearing from pack-aging completely. While manyproducts are sold locally usingdifferent names, the packagingand advertising is harmonizedusing the ever-presentSCHWARZKOPF black-headicon.

SCHWARZKOPF has beendeveloped based on a six-partexpansion model, which VanBylen illustrated with a multi-axis graph. The six considera-tions are: geographies; cus-tomer/price segments; productsegments; target groups; cate-gories; and channels. Heexplained how these factors

had led to the brand being usedfor professional and retail haircolor, care and styling but notother products, while it is beingextended to take account ofnew target groups such as menand the ageing society.

Van Bylen said combiningglobal and local brands gaveHenkel “the best of both”: “Wetake the synergies and combinethe branding.” He stressed thatthis strategy made investmenteffective and efficient, thoughhe admitted it presents “chal-lenges for intellectual property.”

Continued on page 2

Monday, May 19, 2008 www.managingip.com

CONTENTS 2 • CITY GUIDE 22 • CAPTION COMPETITION 28 • PARTY PHOTOS 30-31 • SCHEDULE 32

www.inta.org 130TH ANNUAL MEETING, BERLIN

Daily NewsPUBLISHED BY

PROFILE: INTA PRESIDENT RHONDA STEELE 10

FEATURE: AMBUSH MARKETING AND THE OLYMPICS 12

INTERVIEW: CORNELIA RUDLOFF-SCHAFFER OF THE DPMA 15

Barriers come down in Berlin

Growth of a €1.6 billion brand

New attendees were welcomedand given an informal introduc-tion to the INTA AnnualMeeting at the First-TimeAttendee Orientation andCocktail Reception held yester-day afternoon.

Alan Drewsen, ExecutiveDirector of INTA, advised the300 first timers present to makethe most of their first AnnualMeeting by striking a balancebetween networking andattending the sessions, andexploring Berlin.

The event began with anaudio clip from a HumphreyBogart classic The Treasure ofthe Sierra Madre which wasplayed to outline the importanceof wearing your badge all thetime. “Badges? We ain’t got nobadges. We don’t need no badges.

I don’t have to show you anystinking badges”; it went, leavingthe audience chuckling.

Drewsen was joined by fivepanelists: Carolyn Knecht ofMotorola Inc., MaximilianKinkeldey of GruneckerKinkeldey Stockmair &Schwanhausser and JoshuaBraunstein of CT Corsearchtogether with Annual Meetingco-chairs Sara Blotner ofCitigroup Inc. and Peter J.A.Munzinger of BardehlePagenberg Dost AltenburgGeissler who all shared tips onhow to enjoy your first AnnualMeeting.

Some of their recommenda-tions were: to manage timewisely; to attend as many educa-tional sessions and table topicsas possible; to get involved in

other INTA activities; to makethe most of client meetings, andto leave enough time to explorethe city.

The panelists also stressedthe importance of not being tooaggressive while meeting newpeople. Knecht provided a simi-le to describe how to go aboutattending the first AnnualMeeting: “It is like dating. Youwant to meet new people in acomfortable environment. You

want it to be natural, and notbe forced or aggressive,” shesaid.

“Please don’t shove businesscards on people’s faces,” addedKinkeldey.

The session was followed by acocktail reception in the lobbywhere the audience, which most-ly consisted of young trademarkpractitioners, had an opportunityto meet one another and put theirnewly learned tips into practice.

Users of the Madrid System quizzed WIPOofficials and representatives of the Chineseand Korean national offices at an interactivesession yesterday morning.

About 100 users attended the session,including trademark owners and representa-tives. Two of the issues they raised duringopen exchanges with the panel were tightdeadlines in China and strict classificationrequirements in Korea. Both China andKorea have seen remarkable increases ininternational designations since joining theMadrid system in 1989 and 2003 respective-ly. In 2007, China was the most designatedcountry, while designations in Korea grew bymore than 73%.

During his presentation, Wen Xue, a seniorexaminer in the examination division of theTrademark Office in the State Administrationfor Industry and Commerce in Beijing saidthat only 15 days are allowed to file a reviewof provisional refusals of decisions on interna-tional designations at the Trademark Review

and Adjudication Board although in practiceforeign applicants can benefit from longertimes. He described this as a “comparativelyshort” time and added: “It’s particularlyimportant to keep close contact with yourChinese agent.” However, in response toquestions, he said the 15-day time limit mightbe extended under planned revisions to thetrademark law.

In Korea, the main issue for internationalapplicants is the need for specificity in thedescription of goods or services, and someusers noted that broad descriptions can berefused without alternative suggestions beingoffered. Kyung-Ohk Kim, a trademark exam-iner in the international trademark examina-tion team at the Korean Intellectual PropertyOffice (KIPO), confirmed that the “majorityof refusals” in Korea are due to the vaguenessor broadness of the goods or services descrip-tion. For example, she said descriptions suchas “colorant” or “cream” would likely berefused as too vague.

However, Kim added that the rules ondescriptions at KIPO are being reviewed, anda decision could be made later this year toallow broader descriptions or class headings.

A number of those in the audience alsoqueried delays in providing information onthe status of designations to users. AlanDatri, senior counselor in the office of theassistant director general at WIPO (pic-tured), noted that the International Bureauis developing a number of tools to providemore information more quickly to users andto increase electronic communication withnational offices. WIPO now sends informa-tion electronically to 49 out of 82 offices,and receives applications electronically fromsix offices.

Users’ tools that have been recently intro-duced include notification by registeredemail for all communication except the reg-istration certificate, e-renewal, online pay-ment of the fee balance by credit card or cur-rent account and free access to theROMARIN database (which contains infor-mation regarding all international marksrecorded under the Madrid System).Information on tacit-acceptance of designa-tions is due this year and the Gazette is set tobe fully searchable in 2009.

More radical reforms, such as abolishingthe requirement for a basic mark and intro-ducing the possibility of self-designation, maybe discussed at Working Group meetings laterthis year. Any such changes, even if agreed bythe Madrid Union, would be a long way offbut Datri said the fact they were being con-sidered demonstrated that Madrid “hasbecome a global system, catering for differentcountries.”

Ernesto Rubio, assistant director general atWIPO, told users: “It is inevitable that we willuse more and more web pages, web databasesand email.” Therefore, he said, meetings suchas that held yesterday were important inmaintaining “personal contact” betweenWIPO and users.

Euromoney Institutional Investor PLC

Nestor House, Playhouse YardLondon EC4V 5EX United KingdomTel: +44 20 7779 8682 Fax: +44 20 7779 8500Email: [email protected]

EDITORIAL TEAMEditor James Nurton Reporters Eklavya Gupte, Eileen McDermott and Peter Ollier

PRODUCTIONProduction manager Luca ErcolaniWeb designer João Fernandes

ADVERTISINGPublisher Daniel ColeTel: +852 2842 6941Email: [email protected] manager Tom St DenisTel: +1 212 224 3308Email: [email protected] manager Nicloa PriestTel: +44 20 7779 8682Email: [email protected] America manager Alissa RozenTel: +1 212 224 3673Email: [email protected]

Group publisher Danny WilliamsDirector Christopher Fordham

SUBSCRIPTION HOTLINE UK Tel: +44 20 7779 8999US Tel: +1 212 224 3570

EDITORIAL TEAMEditor James BushPhotography Robert LoScalzoDirector Randi Mustello

BUSINESS DEVELOPMENT TEAMJustin Hajny (Marketing), Paula Lee (Exhibitions & Sponsorship), Peg Reardon (Membership), Jesse Riggle (Design), Matthew C. Schmidt(Communications)Director Daryl G. Grecich

The INTA Daily News is produced by Managing Intellectual Propertyin association with the International Trademark Association. Printedby Möller Druck in Berlin. The INTA Daily News is also available onlineat www.inta.org and www.managingip.com. © EuromoneyInstitutional Investor PLC 2008. No part of this publication may bereproduced without prior written permission. Opinions expressed inthe INTA Daily News do not necessarily represent those of the INTAor any of its members.

Berlin city guide information © 2008 Time Out Group Ltd,www.timeout.com.

Berlin photos © 2008 Berlin Tourist Information, BerlinTourismus Marketing GmbH, reservation and information +49-30 / 25 00 25; www.visitBerlin.de

NEWS

NEWS 2-3

PROFILE

Antonio Campinos, INPI Portugal 4-5

Trademark Administrators Brunch 6

FEATURE

Fraud at the TTAB 7-9

PROFILE

Rhonda Steele, INTA President 10-11

FEATURE

Sport sponsorship 12-13

FEATURE

IP in the Middle East 14

PROFILE

Cornelia Rudloff-Schäffer, DPMA 15

FEATURE

Sarbanes-Oxley and IP 16-17

FEATURE

Trademark use in Europe 18

Classified advertising 19, 26

INTERVIEW

Katrin Steinberg, METRO 20-21

CITY GUIDE

Berlin: Arts & Leisure 22

PREVIEW

Global branding 23

INTERVIEW

Frank Meixner, Bayer 24-25

PREVIEW

Damages in trademark cases 27-28Vox pop 29

COMPETITION

Cartoon caption 29

Private reception photos 30-31

Schedule 32

CONTENTS

Continued from page 1

For example, in 1995 theSCHWARZKOPF brandaccounted for just 476 trademarkregistrations. Today, that figure is2,640 comprising 184 for theSchwarzkopf word, 178 for the

black head icon and 2,278 forother words combined withSCHWARZKOPF. Despite theexpansion, said Van Bylen: “Weare extremely disciplined in howwe deal with communicating thisbrand.” To demonstrate this, he

showed some TV advertising forvarious SCHWARZKOPF brand-ed goods, all with the same use ofthe revolving logo and the sametag line.

The growth of theSCHWARZKPOF brand hascoincided with Henkel’s trans-formation into a truly globalbusiness, which has a total of110,000 trademark registrations

in 198 countries, though VanBylen said that there remains a“huge job” in improving trade-mark protection in emergingmarkets. Despite the changesthat have taken place in Henkel’s132-year history, he said somethings remain constant.“Henkel’s leadership has alwaysbeen built on innovation andstrong brands.”

Users raise Madrid questions

Tips for first-time attendees

The €1.6 billion brand

A ttendees exploring the ExhibitionHall this year can pose for a photoin which they put themselves in the

shoes of former US president John F.Kennedy during his momentous speech inWest Berlin in 1963. Kennedy famouslydeclared that, as a free man, he wasproud to be able to say the words “Ichbin ein Berliner.” Some believe that

Kennedy made a linguistic gaffe herebecause a Berliner is known to some peo-ple as a kind of jelly doughnut, but mostlisteners agree that Kennedy’s meaningwas clear.

Elsewhere there is a sporting theme tomany of the exhibitions. At the NetNames booth people can win a soccerball and relieve their stress by taking

part in a virtual penalty shoot out. Atdarts-ip attendees can practice their aimby playing darts using a Nintendo gamesconsole.

The INTA booth this year allows peopleto compare real and fake products and seejust how close the counterfeiters can get indifferent industries. Fans of the Star Warsfilms can test their knowledge of the mer-chandise at a display entirely devoted toreal and fake merchandise from the ever-popular film franchise.

Just after the INTA booth, attendeestired out from all their sporting exer-tions can rest and try out one ofGermany’s many excellent beers andhave a snack before moving on to thesecond section of the Exhibition Hall.Here, Thomson West has decked out itsbooth in the style of James Bond inCasino Royale, complete with picturesof their managers dressed in tuxedos toadd a touch of style to round off the vis-itors’ experience.

The Exhibition Hall is open from 9:00a.m to 4:00 p.m. today and tomorrow, andfrom 10:00 a.m. to 2:00 p.m. onWednesday.

www.managingip.comINTA Daily News – Monday, May 19 2008 3

NEWS

Be a Berliner at INTAExhibition Hall

INTA’s anticounterfeiting exhibit in Hall 16

The city of Alicante in Spain is the gateway to a num-ber of desirable resorts on the Costa Blanca, mak-ing it popular with visitors from all over Europeand beyond. It has also of course been home to the

Community trade mark (CTM) office—OHIM or OAMI inits Spanish form—since the CTM system was founded in1996. The CTM, and its more recent sister the registeredCommunity design, have proven very successful with appli-cants, and most trademark practitioners have welcomedtheir development. However, the very success has recentlyraised unexpected debates about questions such as price, theCTM’s relationship with national rights and the interactionbetween OHIM and national offices. Antonio Campinos,new chair of OHIM’s Administrative Council, will now beregularly joining the tourist hordes flying to the city as hetakes on the mission of addressing the perceived tensions inEurope’s trademark system.

Two sources of tensionCampinos took over the chairmanship of the Office’sAdministrative Council—the body representing all EU mem-ber states that meets several times a year to decide on strate-gic issues at OHIM—earlier this year. Campinos, who hasbeen head of Portugal’s IP office since 2006 and has alsochaired WIPO’s Working Group on the Legal Developmentof the Madrid System, is under no illusions about the chal-lenges he faces in his new role. “In Portuguese we have asaying: we should call a cow by its own name. There is some

tension going on. It is clear for every-body to see.”

The tension he refers to has height-ened over the past five years—a periodwhich has seen the growth of the EU to27 member states and continuedincreases in demand for CTMs. Twoissues in particular have led people toquestion the nature of the relationshipbetween OHIM and in EU memberstates. The first is the level of OHIMfees. Thanks to the unexpected demandfor Community rights and the efficientrunning of the Office, within 10 yearsof opening it had a surplus of some€100 million, and the European Commission proposed cut-ting the fees. Reductions of up to 25% were introduced in2005, alongside programs to support national offices. But thesurplus has continued to build up, and in May last year EUmember states agreed to review fees again. The Commissionargues they should be reduced further, but some nationaloffices fear that cheaper CTMs will encourage applicants toseek EU rather than national protection, thereby overcrowd-ing the CTM register at the expense of national rights.

The second issue concerns national searches. When theCTM was set up in the 1990s, it included a provision requir-ing applicants to pay for a national search in each memberstate (except for those, such as France and Germany, that

opted out). But national searches werenever popular with applicants and, fol-lowing a review, it was decided to makethem optional (a compromise solution).That change came into effect in Marchthis year, but not without controversy:OHIM’s Budget Committee and an EUcommittee in Brussels, which both con-sist of member states, decided thatOHIM would pay the €4 differencebetween what applicants are chargedfor each national search (€12) andwhat the national offices receive (€16).Critics called this a “cross-subsidisa-tion” from OHIM to national offices,

which “set a dangerous and inequitable precedent.”

Improving communicationThese two issues both arise from the dual registration systemof CTMs and national rights that exists in Europe—indeed,the system could now be described as three-way with theoption of international registrations through the MadridProtocol available in all EU member states. The system iscomplicated because though the CTM exists outside ofnational rights, major decisions have to be agreed by repre-sentatives of EU member states—and specifically theAdministrative Council. Campinos says many of the tensionsin recent years have arisen from misunderstandings: “I feel

www.managingip.comINTA Daily News – Monday, May 19 20084

PROFILE: ANTONIO CAMPINOS

Taking the tension out of EuropeJames Nurton speaks to Antonio Campinos, chair of OHIM’s Administrative Council, about tensions between OHIM and EUmember states, the Madrid Protocol and promoting IP in Portugal.

that stress has been lost inside the Council on the relationshipbetween member states and the Commission and OHIM—there is a lot of work to do there.” He adds: “In my view, thecommunication has not been as good as it could be.”

That is something he will be aiming to improve, he says.“You have to explain and explain again and again and again

to ensure that what you’ve said hasbeen correctly understood.” He alsostresses the importance of timing,and allowing time for decisions to bemade: “You can then disagree butyou have time to explain and under-stand. It’s a democratic process.”

On the question of pricing, forexample, he says that the mostimportant point is to note the suc-cess of OHIM, especially under thepresidency of Wubbo de Boer since2000. “If you see what OHIMmanagement has been doing, theyare pushing this organization to the21st century.” He points to thework done to reduce pendencytimes and the effort now underwayto improve quality and says:“OHIM is doing fantastic work.”It is the efficiencies created by themanagement that have led to thesurplus, which in turn enables theOffice to cut fees, he points out: “Ifthere is a surplus then it is logicalto reduce the fees. The reality is itis due to sound management.”

Another area where he sees mis-communication is in the supportgiven by OHIM to national offices.This was enhanced following the feereduction in 2005, and is designed tohelp national offices in the EU devel-op. Figures released earlier this yearshowed that national offices receiveda total of €1.8 million from OHIM

last year. Some see this diversion of funds as the (popular)CTM helping out (less popular) national rights. But Campinosstresses that it is not about handouts: “The debate is going inthe wrong direction, about giving money to member states.But a Community agency has a role to play in harmonization:I believe in helping SMEs and in the European network.”

He stresses the need to work to modernize the nationaloffices and the “responsibility to help member states whohave been a democracy for 10 years now to modernizethemselves, in terms of IT and management.” He adds:“We don’t give them money, we give them resources. Themost advanced European countries should help the lessadvanced countries.”

As for the debate over the €4 “subsidy”, Campinos seesthis as a non-argument, as few applicants will opt for nation-al searches anyway. “It’s €4 multiplied by zero because noone will request a search report. They do their own before.”Campinos was speaking to the INTA Daily News beforeMarch 10, when the national searches became optional butthe early evidence supports his view: so far, only about 4%of applicants are requesting national searches.

Campinos, who started out as a banking lawyer beforejoining INPI as trademark director (a post he held for sevenyears before being appointed to the top job), is no stranger tochange. Within Portugal, he has redirected the Office to pro-mote IP in the economy (see box). At WIPO, he chaired theforum that led to the introduction of the trilingual regime forthe Madrid system and the repeal of the so-called safeguardclause—which he describes as “a major move forward.” Buthe emphasizes that there is more work to be done to developthe Madrid Protocol: “Now we have to concentrate on theProtocol and bring it to the 21st century.” There are propos-als before WIPO from Norway and Australia to remove therequirement for a basic mark, revise time limits and makeinformation more accessible. “The most efficient would be forthe company to choose their gateway without having to file anational trademark – without worrying,” says Campinos.“We want to have a more modern treaty if we can.”

Having proved his ability to get things done at WIPO,Campinos now has the opportunity to address the problemsand miscommunications in Europe. He hopes that, in his roleon the Administrative Council, he will be able to enhanceboth OHIM and the national offices in member states, result-ing ultimately in better services and lower costs for users.And he is clear that the priority is to solve the surplus ques-tion: “If we don’t use the surplus, others will use it on agri-culture or fisheries or whatever. The money will disappear tothings that have nothing to do with the IP system.” ■


PROFILE: ANTONIO CAMPINOS

Campinos describes Portugal’s IP office as“more small than medium”. Its 166 staff handleabout 400 patent applications each year andabout 20,000 trademark applications (roughlytwo per 1,000 inhabitants). While he says thatPortuguese businesses are among the leaders intrademark filing, he adds that “we are well, wellbelow where we should be” in terms of patents.He says that this is partly due to lack of invest-ment in R&D (which accounts for less than 1% ofGDP) and partly to the lack of an IP culture.

Since being appointed as head of the IPOffice, Campinos has been trying to remedythat deficit, by setting up links with small busi-nesses and universities to promote patenting.“The 20th century focused on protection andregistration. Since 2000 we have concentratedon promotion,” he explains, adding: “IP is notneeded inside my office but outside my office.”

The Office’s strategy aims to double publicinvestment and treble private investment inR&D, and also treble the number of filed patents.The strategy is in two phases. The first, runningfrom 2000 to 2007, involved the modernizationof INPI (and particularly the development ofonline services) and the promotion of the IP sys-tem in Portugal. As part of this, the Office isfinancing 44 small units of IP promotion in uni-versities and technology centers. The staff forthese units come from the institutions them-selves, but are financed by the IP Office. “Ifthey’re convinced that IP makes sense, they will

convince people much easier than we will,” saysCampinos. The aim is to encourage both univer-sities and industry in Portugal to protect morepatents and bring more of their ideas to com-mercialization. So far, the strategy has financial-ly supported 250 projects to promote the IP sys-tem while the network of offices has answered10,000 information requests, supported morethan 2,600 applications, and organized 300 sem-inars for more than 13,000 participants.

The results are already evident, in a 115%increase in inventions protected by Portugueseresidents and a 91% increase in trademark appli-cations. On the regional and international levelthe figures are even more striking: there hasbeen a 361% increase in CTM applications and359% increase in European patent applications.

The second phase of the modernizationstrategy starts this year and lasts until 2010. Itaims to create a real IP culture in Portugal andcomprises six goals, which include developinga new marketing strategy and further interna-tionalization.

The Office has also been active in makingtrademark information available. On April 11 thisyear it launched an online service providing afree search for Community trade marks andinternational marks—the only EU member stateto do so. The search complements the freesearches for national marks, which have beenavailable since April 2006. Around 88% of trade-mark applications in Portugal are filed online.

How Portugal is building an IP economy

A ttendees received tips for communi-cating effectively across cultures dur-ing Sunday’s annual Trademark

Administrators Brunch. 111 Attendeesturned up for the brunch, which took placein the ICC Berlin’s Funkturm Lounge.

The event was organized by theTrademark Administrators Subcommitteeand opened with remarks by INTAPresident Rhonda Steele, who began hercareer at Baker & McKenzie in Australia asa paralegal in the general trademarkdepartment. “I’m proud to be here, notonly as INTA President, but as a trademarkadministrator,” said Steele. “I understandthe challenges of being a trademark admin-istrator and I’m glad that INTA gives usaccess to programming that is relevant to our needs.”

One of the challenges facing trademark administra-tors working in a global economy is keeping track ofproper business etiquette when communicating withclients across a variety of cultures. Sheida Hodge, inter-cultural business management expert and president ofHodge International Advisors, provided attendees withtips for navigating some of the most common problemsfaced, which include avoiding faux pas when exchangingbusiness cards, dealing with language and accent barri-ers, emailing someone whose gender is unknown anddistinguishing proper greetings across different cultures.

Rhonda Hetman, a member of the TrademarkAdministrators Subcommittee, said that Hodge’s advicewas particularly relevant to trademark administratorstoday because they often deal with clients in many dif-

ferent countries on a daily basis. “Things like how toaddress a person you’re emailing are a huge issue forus,” said Hetman. “Most of the people in attendancehere have jobs that are very international in scope.”

The brunch was financially supported by BufeteMejia & Asociados, CT Corsearch, the TreadstoneGroup, Eli Lilly and Company and ThomsonCompuMark.

INTA, Thomson CompuMark, 7 for All Mankind,The National Hockey League and Circle R TrademarkServices Corp. also donated gifts for the event, whichwere raffled off to attendees. Some of the giveawaysincluded a free 2009 INTA Annual Meeting registra-tion, 100 Euros to spend in Berlin and free registrationfor the Trademark Administrators Conference inOctober.


NEWS

Trademark administrators get a lesson incross-cultural communication

Visit INTA’s Anticounterfeiting Exhibit in Hall 16 to learn more aboutanticounterfeiting initiatives.

Today’s Speakers:10:00 am Jordi Guell, IP Attorney–Currel Suñol (Spain)

10:30 am Paloma Castro, Director, Public Affairs and Head, BrusselsOffice–EBay EU Liaison Office (Belgium)

Alexandre Menais, European Director, Rights OwnerPartnerships–EBay EU Liaison Office (Belgium)

Louise Delcroix, European Antipiracy Manager–EBay EULiaison Office (Belgium)

11:00 am Natalia Gomensoro, Attorney-at-Law–Barbosa Caravia &Co. (Uruguay)

11:30 am Mark N. Mutterperl, Partner–Fulbright & Jaworski LLP (US)

12:00 pm Daretia Austin, Director, Trademarks–Time Warner (US)

12:30 pm Andres Moreno Gutierrez, Director–Gabriel Patent &Trademark Office (Bolivia)

1:00 pm Jennifer Hamilton, Trademark Counsel–Major LeagueBaseball Properties Inc. (US)

1:30 pm Uche Nwokocha, Partner–Aluko & Oyebode (Nigeria)

Wayne Paugh, Acting U.S. Coordinator for InternationalIntellectual Property Enforcement–U.S. Department ofCommerce (US)

2:00 pm Warren L. Zeserman, Associate GeneralCounsel–Hanesbrands Inc. (US)

2:30 pm Heather J. McDonald, Partner–Baker Hostetler (US)

3:00 pm R.J. Falconi, Vice President, General Counsel & CorporateSecretary–CSA Group (Canada)

INTA Daily News ANNOUNCEMENTS

Members of the INTA Trademark Administrators Subcommittee pose during the annualTrademark Administrators Brunch on Sunday.

Under section 1 of the US Lanham Act, trademarkapplicants must specify that a mark is being used incommerce, or that they have a bona fide intentionto use the mark in commerce, for all goods listed in

the application. A mark owner also must eventually sign a“declaration of use” specimen under section 8 of the LanhamAct, attesting under penalty of “fine or imprisonment, orboth” that “willful false statements may jeopardize the valid-

ity of the application or any resulting registration” and that“the mark is now in use in commerce; and all statementsmade of his own knowledge are true and all statements madeon information and belief are believed to be true.”

This provision presents a common pitfallfor trademark owners, who sometimes—ofteninnocently enough—end up using the mark ononly some of the goods claimed in the originalapplication. In today’s session CM02 ‘Fraudat the PTO’: A Barrier to the US Market?trademark practitioners and a USPTO judgewill discuss the perceived crackdown on theissue of fraud by the Trademark Trial andAppeal Board (TTAB) in recent years, andcover strategies for avoiding such a finding.

Medinol: a new era in fraudThe USPTO and trademark practitionersalike agree that the 2003 case Medinol v.Neuro Vasx signaled a new age in fraud casesat the TTAB. The case involved an applica-tion for the mark NEUROVASX, to be usedon “medical devices, namely, neurologicalstents and catheters,” which was granted toMedinol in 2000, following the applicant’ssigning of a statement of use. In 2002, NeuroVasx filed a petition for cancellation of themark, alleging that it was not being used forstents at the time of the signing of the state-ment of use. In response, Medinol said: “Atthe time the Statement of Use was prepared,the fact that the goods identified in theNotice of Allowance also included ‘stents,’ inaddition to catheters, was apparently over-looked.” Medinol went on to deny any alle-gations of deliberate fraud, and claimed thatits repeated attempts to have “stents” delet-ed from the application proved as much.

The TTAB’s response was one that servedas a “wake-up call to the profession,”according to Tony Fletcher of Fish &Richardson. The Board said: “Respondent’sexplanation for the misstatement (which weaccept as true)—that the inclusion of stentsin the notice of allowance was “apparentlyoverlooked”—does nothing to undercut theconclusion that respondent knew or should


FEATURE: FRAUD AT THE USPTO

Don’t fall into the fraud trapFraud cases at the US TTAB have become particularly numerous, posing a risk to the well-intentioned trademark owner. EileenMcDermott explains.

Fraud cases before the TTAB havebecome prolific in the US inrecent years, but many practi-tioners remain unaware of thepotentially debilitating conse-quences of a fraud charge. Since

a landmark 2003 case, applicants who cannot proveuse or intent to use their mark for all the goods orservices claimed in the application risk facing a fraudaction and ultimately losing their trademark rights.Foreign applicants, including those using the MadridProtocol route, may be particularly vulnerable if theyhave not sought local advice. Some practitionersbelieve the trend to find fraud reflects a desire tokeep the registry clear, but overleaf a TTAB judgedenies that charge. As more cases clarify the bound-aries, applicants need to watch developmentsand devise strategies to minimize the risks.

One-minute read

have known that its statement of use was materially incor-rect.” The Board therefore granted summary judgment infavor of Neuro Vasx on the issue of fraud.

The order was significant for several reasons. First,prior to Medinol, the TTAB had not drawn a bright line asto whether one’s subjective good faith was sufficient evi-dence to disprove fraud. “There were scattered casesbefore Medinol, but Medinol drew a black and white line,”says John Welch of Lowrie Lando & Anastasi in Boston,who also authors the TTABlog. “Medinol says, ‘forget[good intentions], you should have known.’ It made it realsimple,” says Welch.

Secondly, the Board’s decision to enter summary judg-ment in favor of Neuro Vasx represented a sua sponteaction. The motion for summary judgment had initiallybeen made by Medinol, which claimed that its action to

delete “stents” from the application should have made theissue moot. “The thing that stuck about Medinol is that,not only was it a summary judgment case, but the Boardtook it on sua sponte and then reached out to strike downthe whole registration,” says Bill Bryner of KilpatrickStockton.

Although the origin of the shift in the TTAB’s standard isnot fully clear, some practitioners speculate that it may belinked to the growing size of the trademark register: “Ashundreds of cases passed through the mill and asked ques-tions about use, [the TTAB] must have eventually come to arealization,” says Fletcher. “There are 3 million trademarksregistered and quite a few are in multiple classes and formany goods. That’s lots of stuff on the register that’s deadwood, and it’s expensive to clear by litigation. But if you cre-ate as a sanction even one item that could constitute fraud

and vitiate the entire registration, that can be effective.” Judge David Sams of the TTAB, who will be dissecting

the relevant case law at the TTAB and Federal Circuit dur-ing today’s session, denies that suggestion. “We have noagenda,” says Sams. “When an issue is teed up to us wehave to make decisions.”

John Welch adds another perspective on the issue:“Fraud’s kind of a harsh word,” says Welch. “It’s liketelling someone they’re a crook. So accusing people offraud is a shocker and it caught the eye of the bar [whorealized that] it’s a very solid way of winning an oppositionor cancellation. It’s all about winning these things, and thisis a way to do it relatively inexpensively.”

Whatever the reasons, it has become increasingly clear thatfraud cases can no longer be taken lightly, which CynthiaJohnson Walden says is the impetus for today’s session: “We’ll



Judge Sams of the TTAB will be reviewing the relevant case law relat-ing to fraud claims in today’s session. He will cover both TTAB andFederal Circuit cases, in order to bring a context to outside practition-ers. “I’ll be reviewing cases that the Board and the Federal Circuithave decided in order to help practitioners counsel clients withrespect to the fraud issue,” says Sams. “It’s very important.”

What key cases will you be covering in today’s session?Medinol v Neuro Vasx (2003) involved a situation where a party filed aStatement of Use on two items and only used one. It was challengedand the TTAB found it was fraud. We’ve seen a lot of similar pleadingssince then. The Board has never taken the position that it changed thelaw, but I think it’s the reason for the increased focus on the issue.

What would you say to those who feel the increased focuson fraud cases has to do with keeping the register clear?We only hear the cases that are brought to us. We have no agenda.When an issue is teed up to us we have to make decisions.

What cases have been important post-Medinol?Post-Medinol there have been a number of cases. There have been afew where there wasn’t a finding of fraud. In Maids to Order of Ohio

(2006) [see box] for instance, there was an accusation about havingused the mark in commerce improperly, but we found that there was agood faith belief of proper use, so we didn’t find fraud.

Do you know in how many cases the TTAB has found fraudsince Medinol?We don’t keep track of those numbers. I think cases have fallen on

either side of the fence since Medinol. The numbers do mostly fall onthe Medinol side though.

What about pre-Medinol? Were there a lot of fraud claimsstill?Before Medinol, the most common type of fraud case was when a partyswore they didn’t know their mark was being used in commerce [byanother party], but that was usually coupled with likelihood of confusionand just appended to that issue. Those aren’t so common these days.

Have you had any fraud cases involving the MadridProtocol or foreign applicants?I don’t know of any case with implications for Madrid. Most of thesecases involve US applicants.

What Federal Circuit cases exist?Torres v Cantina Torresella (1986) involved an appeal from the TTAB.The applicant filed a renewal application and claimed it was using theregistered mark on all items in the registration, but it wasn’t using itin the form in which it was registered for wine—it was using a mark,but not the one that was registered. The CAFC affirmed the Board’sdecision that this constituted fraud.

Interview: Judge David Sams, USPTO Trademark Trial and Appeal Board

www.sabaip.com

talk about the care with which people execute these state-ments of use,” she says. “You need to be extra careful aboutit, because it can jeopardize the whole filing.”

The foreign factor“Foreign applicants don’t have to include as much detailabout what products they’re using the mark for and don’thave to claim use—for that reason, foreign IP owners willcomprise an important part of today’s audience,” saysJohnson Walden. While the impact of fraud cases on for-eign applicants has yet to be fully felt, most agree that it’sonly a matter of time. “There hasn’t been a case on thepoint yet, but it could happen any day,” says JohnsonWalden. “The Madrid Protocol [for instance] makes it easy

to file on your own without local advice. We just want tomake sure that everyone’s aware of the pitfalls.”

Bill Bryner points to a 2007 case, Hurley Int’l LLC v.Volta, that may be one of the first to signal the potentialproblems posed to foreign applicants. In that case, anAustralian musical duo called “The Sign” filed a use-basedapplication to register their mark for entertainment-relat-ed services. Hurley, the opposer, discovered that the markwas not being used on some of the services in the US, andalleged fraud. The Australian couple attempted to amendtheir use-based application to a section 44(e) application,which allows foreign applicants to rely on their foreignregistration of the mark and does not require use prior toa US registration. However, the Board rejected the attempt,

and said that “the proposed amendment does not serve tocure a fraud that was committed.” The Board also reject-ed the couple’s assertions that they simply misunderstoodthe meaning of “use in commerce.”

Bryner says that cases such as these, plus several thatare “in the hopper” should be an indicator to foreignapplicants that they need to begin to “look long and hardat the goods they want to use and tailor their filingsaccordingly.” However, Bryner concedes that this can berestrictive for foreign applicants, who are allowed muchbroader descriptions of goods in their own countries.

Advice for applicantsSo how do applicants avoid this potentially crippling claim?According to Fletcher: “If you have a reasonable prospect ofusing [the mark], go ahead and list the goods. When you ini-tially file, if you’re claiming intent to use, there’s no clear lawon what constitutes an intent to use; the big problem does-n’t arise until you file a declaration of use in commerce.”

However, although the rule on what constitutes a “bonafide intent to use” is still muddy, one recent unpublishedcase, Intel Corp v. Emeny, suggests that the Board may betrying to define the concept more succinctly. In that case, theBoard said that a bona fide intent to use must be judged byobjective evidence, such as marketing plans and minutes ofdiscussions from meetings. Bryner says that this case “cou-pled with the cloud of Medinol” warrants more cautionarytactics. “I would suggest two things,” says Bryner. “First, bevery careful in particular about sworn statements of use. Ialmost suggest going down one by one on the goods—it willbe painful for the owner, but will pay at the back end.Second, as a practical matter, I see very little and almost noupside to filing multi-class applications. If you’ve got a markyou intend to use in multiple classes, the administrative has-sle of keeping up with six filings instead of one is out-weighed by Medinol. By filing multiple, single classes, youquarantine the one bad class and it won’t kill the rest.”

In addition to Tony Fitzgerald, who will give the USpractitioner’s perspective, and Judge Sams, who willreview the TTAB case law, today’s panel also will includeMargaret Ann Ramage of Alexander Ramage Associates inthe United Kingdom, who will present a UK standpoint. ■



Fraud claims sustainedHerbaceuticals, Inc. v. XelHerbaceuticals, Inc., Cancellation No.92045172 (March 7, 2008)Summary judgment on the ground of fraudgranted.

Sinclair Oil Corp. v. Kendrick, 85 USPQ2d1032 (TTAB 2007) Board granted summary judgment on theground of fraud, finding that the applicantfalsely claimed use of the mark for herservices when she had never offered suchservices.

Hachette Filipacchi Presse v. Elle Belle,LLC, 85 USPQ2d 1090 (TTAB 2007)The TTAB granted summary judgment on theground of fraud and canceled a registrationfor the mark ELLE BELLE, rejecting therespondent’s assertion that its presidentmisunderstood the statements made in itsoriginal use-based application.

Hurley Int’l LLC v. Volta, 82 USPQ2d1339 (TTAB 2007).Board granted summary judgment onground of fraud, despite foreign applicant’sclaims that they misunderstood the require-ments of Section 1(a), did not understand thelegal meaning of “use in commerce,” andhonestly believed that use in Australia wassufficient.

Sinclair Oil Corp. v. Kendrick, 85 USPQ2d1032 (TTAB 2007)TTAB said that applicant cannot “cure” fraudby moving to amend the application.

Standard Knitting, Ltd. v. ToyotaJidosha Kabushiki Kaisha, 77 USPQ2d1917 (TTAB 2006). The Board found that false statements madeto the PTO regarding use of the marks oncertain clothing items constituted fraud.

Fraud claim(s) dismissedTri-Star Marketing LLC v. Nino FrancoSpumanti S.R.L., 84 USPQ2d 1912 (TTAB2007) Board dismissed a petition for cancellation,finding that the respondent had not commit-ted fraud in obtaining and maintaining itsregistration for the mark RUSTICO for “winesand sparkling wines.”

Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899 (TTAB 2006). The Board rejected the petitioner’s fraudclaim and granted the respondent’s 2(d)counterclaim for cancellation, claiming thatthe petitioner failed to meet its “heavy bur-den” to prove fraud.

Haldex Brake Corp. v. Zikry, OppositionNo. 91160715 (TTAB 2006) (unpublished)The Board found that the applicant “may wellhave been unaware of the technical require-ments for an allegation of ‘use in commerce’under the Lanham Act.”

Recent fraud cases at the TTAB

SINGH & ASSOCIATES is dedicated to protecting, marketing and promot-ing intellectual property that facilitates businesses around the world. TheFirm’s robust knowledge management system is utilized to economicallyand efficiently service its clients. The firm’s practice covers the spectrum ofintellectual property services in the fields of trademark, copyright, design,trade dress, patents, geographical indications, etc. The services offeredinclude searches, watch service, registration applications, investigation, lit-igation, interferences, alternative dispute resolution, licensing, portfoliomanagement, corporate transactions, assignments, registered user agree-ments, strategy advisory and due diligences. The clientele catered is virtu-ally from all aspects of the industry, ranging from the infrastructure giants,to famous pharmaceutical corporations, software companies, transporta-tion service providers, financial experts, telecommunications, agro industryand e-commerce providers. The firm is especially known to keep abreastwith emerging technologies with vibrant ease in developing strategies tocounter threats to potential violations with pro-active measures undertakenon behalf of clients.

Professional Distinctions:• Substantial experience in all phases of trademark, design and copyright

prosecution matters.• Commendable successes in diverse range of intellectual property litiga-

tion including civil suits, criminal trials, enforcement raids, mediationsand numerous negotiations.

• Formidable credibility as strategic counsels due to the extensive practicebefore the administrative offices and courts.

SINGH & ASSOCIATESADVOCATES AND SOLICITORSN-30 GROUND FLOOR, MALVIYA NAGARNEW DELHI 110017 INDIAPh: 91-11-26680927, 26687993, 26680331Fax: 91-11-26682883E-mail: [email protected]: www.singhassociates.in

Rhonda Steele has been working to protect MarsIncorporated’s intellectual property in Asia-Pacificfor over 16 years. As Marketing Properties Managerfor the company’s Asia-Pacific region, Steele plays a

key role in protecting its more than 80,000 brands world-wide. But despite her present passion for IP, Steele says sheended up in both trademarks and Australia “by accident.”

Born in England, Steele spontaneously accompanied afriend on a 12-month working holiday to Australia whenshe was not long out of university. Soon after arriving,Steele took a job with Baker & McKenzie, as a secretaryfor the partner in charge of the IP department, who firstpiqued her interest in the field and who also handledSteele’s present role for Mars on a part-time basis. “Backin 1983, which is when I first had anything to do withMars, it was very small in Asia-Pacific,” says Steele. “Marshad some manufacturing in Australia and two multi-salesoffices, one in Hong Kong and one in Singapore, but theydidn’t really need someone on a full-time basis.”

After four years of working as a secretary, during whichtime her interest in trademarks continued to blossom,

Steele took a position as a paralegal inBaker & McKenzie’s general trade-mark department, before moving on toa senior paralegal position workingexclusively for Mars. “I did that forabout five years and absolutely lovedit,” says Steele. “I was helping to man-age their trademark portfolio in theAsia-Pacific region, doing all of theestablishment work, maintenance andenforcement and working with a net-work of lawyers.”

When Steele’s boss at Baker &McKenzie resigned, Mars asked Steeleto join their team full time. It was alsoat that point that Steele was first introduced to INTA, sinceher new boss at Mars, Garo Partoyan, was serving asPresident of the Association: “My first Annual Meetingwas in San Francisco in 1991. I was actually interviewedfor my job there [by Partoyan] so it seemed quite fortu-itous. I’ve only missed two Annual Meetings since then,

and both of those coincided withthe birth of my children.”

Such commitment reflectsSteele’s general enthusiasm fortrademark issues, and she hasvowed to bring new light to someless-familiar areas this year.

A new view on emerging marketsAs part one of her vision, Steele wants to place increasedemphasis on engaging emerging markets in the IP discus-sion in culturally sensitive ways: “For me, being the firstINTA president to come from the southern hemisphere,what I’ve been saying is that I want to turn the worldupside down and look at things from a different angle,”says Steele. “I want to take some of the emerging marketslike Latin America, Africa and the Middle East, India, andtake a different look at them. We have such a huge amountof expertise in North America and Europe—we have high-ly developed legal and trademark systems, but is simplytaking that experience and making it fit those southern


PROFILE: RHONDA STEELE

Tackling IP from down underINTA President Rhonda Steele tells Eileen McDermott that emerging markets and team spirit top the list of priorities for theAssociation in 2008.

Rhonda Steele says she wants to turn the world of IP on its head. As anon-lawyer who worked her way up the IP ladder through “on-the-jobtraining” and INTA’s first president based in the southern hemisphere, sheis well positioned to bring a fresh perspective to the Association. Steelemet with Eileen McDermott at INTA’s New York office just a few days intoher Presidency to discuss her goals for the 130th Annual Meeting and the

coming year: areas she plans to focus on include emerging markets and fostering internaland external alliances. Steele also explains how Mars’s IP group is structured, and how trade-mark work is handled, and advises practitioners not to avoid asking stupid questions.

One-minute read

“I want to take a different look atmarkets like Latin America, Africaand the Middle East and India”

hemisphere regions really the right way togo? I want to make sure that we have a dia-logue about what’s most appropriate forthose parts of the world, rather than whatwe think might be appropriate.”

Steele plans to attack this problem by revis-iting some trademark issues that seem to haverecieved less attention in recent years, such aspossible reasons for the slow adoption of theMadrid Protocol. “INTA supports Madrid,and yet a lot of countries haven’t acceded.Why is that? Is it because the system itself isn’tworking, or is it because there are some mythsout there that need to be busted, in terms ofthe impact of Madrid on companies and evenon the profession to some extent?”

Another key issue Steele would like toaddress is the practical impact of applyingconcepts, such as trademark dilution andnon-traditional marks, to markets that maynot be ready to cope with them.

Steele asks: “Dilution is a very familiar concept in theUS, but is that really what the southern hemisphere needsat this point in time? Are we ready to embrace that con-cept, or is there something else that needs to happen first?We have a lot of experience with non-traditional trade-marks in the US and in Europe, but with single color pro-tection, for instance, even a lot of the developed marketsare struggling with it. Is it really right and proper that weshould try to introduce those concepts too early in thesouthern hemisphere countries and then we end up in moretrouble than perhaps we are now?”

In addition to addressing these questions, Steele empha-sizes that she will continue the work of 2007 INTA presi-dent Dee Ann Weldon-Wilson who made issues such as anti-counterfeiting and leadership development her priorities.

Team spiritSteele’s second goal has to do with fostering both internaland external INTA alliances. “I want to generate a real teamenvironment within INTA,” says Steele. “We have lots ofvolunteers from all over the world doing fantastic work. I

think it would be a much more rewardingexperience if we could generate a broader teamenvironment for those people to work in.”

That team environment extends outside ofINTA as well, to partnerships with other IPorganizations. In March, INTA partnered forthe first time with IP Australia, an event aboutwhich Steele seemed visibly excited. The newPresident also plans to continue strengtheningINTA’s partnerships with organizations suchas the Asociación Interamericana de laPropiedad Industrial (ASIPI) and the ChinaTrademark Association.

“We need to look to the future and reachout to some of these parts of the world,” saysSteele. “If we want to get things done, part-nering is the way to go.”

Life on Mars(‘s IP team)Steele is one of Mars’s five marketing propertiesmanagers worldwide (all of whom happen to

be women, Steele notes). Each manager is supported by coor-dinating agents in their respective regions—Arent Fox in theUS; Clifford Chance in Europe; Al Tamimi in Africa, Indiaand the Middle East; Rouse & Co Hong Kong in North Asia;and Baker & McKenzie in Australia, New Zealand and SouthAsia. “These provide dedicated teams of people building rela-tionships, participating in all the education programs and act-ing as a dedicated Mars group,” says Steele.

Two of the company’s most important markets are Chinaand Japan, where infringers become more sophisticated eachyear, according to Steele. “They’re not just infringing yourtrademark anymore,” says Steele. “They’re copying yourtrade dress. For example, for Mars we have a cat food prod-uct called WHISKAS that has been uniquely packaged in apurple label. Now we’re finding—in China for example—that theydon’t copy anything other than thepurple color.” This presents signifi-cant problems, since laws on colorprotection are still vague almostworldwide.

Other concerns for Mars include tackling theuncharted territory of the Internet. Steele asks: “Wehaven’t suffered as much as others, but is that becausewe’re just not looking as much? You hear people talk-ing about cybersquatting, typosquatting, phishing, kit-ing, domain name parking, and all those sorts of things.The Internet is a huge, gaping challenge. It’s the nextfrontier.”

Presidential words of wisdomAsked to share her most important piece of advice for IPowners, Steele is characteristically humble. In addition towarning against ever attempting to get by without a regis-tration, Steele urges IP owners and professionals to main-tain a “constant thirst for knowledge”: “Educate yourself,because you may not necessarily always know best,” saysSteele. “Continuously explore and learn—never think youknow it all. I for one certainly don’t. Never be afraid toask. There could be a good answer on the end of that stu-pid question.” ■


PROFILE: RHONDA STEELE

Snack foodM&M’S SNICKERSTWIX DOVE (US)GALAXY (UK)

Pet food PEDIGREEWHISKASCESAR

Mars’s major brands “The introduction of the Daily

News was one of the best initiativesthat INTA has undertaken. It reallydoes keep you up to date, tells youwhat’s going on and in the backyou’ve got all your committeemeetings—it’s great.”

Steele on the INTA Daily News:

“If we want to get things done, partnering isthe way to go”

Spectators at the Olympics in Beijing this summer canenjoy some pretty obscure sports—synchronizedswimming, trampoline gymnastics (as opposed torhythmic gymnastics), synchronized diving, team

archery and dressage. But one competition going on at thesame time, for which no medals are awarded, is the battlebetween official sponsors and ambush marketers to associatetheir brands with the Olympics in the minds of consumers.

Few spectators notice this extra competition, exceptwhen the stunts hit the headlines. This happened at the2006 Football World Cup in Germany, when Dutch brew-er Bavaria gave away orange lederhosen bearing its logo tohundreds of its country’s supporters attending theNetherlands’ match against the Ivory Coast. SinceBudweiser was the official beer, stewards at the matchordered the fans to remove the offending items before let-ting them in, forcing some supporters to watch the matchin their underpants. Although this may seem like astunt that backfired, it guaranteed a large amountof publicity for the ambusher, and made the offi-cial sponsor seem like a killjoy for trying to pro-tect its legitimate rights as a sponsor.

Despite countries hosting big-ticket sportingevents passing specific legislation to protect therights of the sponsors, such ambushes keep onhappening. So how can the Olympic sponsorsensure they win the competition with would-beambushers this summer? And where do you draw the linebetween clever advertising and illegal ambushing?

The term ambush marketing was coined in the early1990s by Jerry Walsh, a marketing executive at AmericanExpress. Originally intended as a positive concept, it nowhas negative connotations and is defined as an attempt bya brand to associate itself with an event despite not havingpaid to be an official sponsor.

Ambush marketing is often split into two kinds; by asso-ciation and by intrusion. An advert run by MasterCardbefore the 1994 Winter Olympics with the slogan “If youare travelling to Lillehammer, you will need a passport, butyou don’t need a Visa!” is an example of the former.Although technically correct—American citizens did notneed a visa to travel to Norway—the campaign was clearlya dig at rival credit card company VISA, one of the Game’sofficial sponsors. Dutch brewer Bavaria’s lederhosen give-away is a classic example of intrusive ambushing.

Beijing—more sponsors, more protectionThis year’s Olympics has an unprecedented number of spon-sors. At the last count there are 12 worldwide Olympic part-ners, 15 China Olympic partners, 10 sponsors, 15 exclusivesuppliers and 17 suppliers. The sponsors have paid over $2billion, compared to just $338 million at Seoul in 1988. Thishas raised the stakes higher than ever before. As ChenXuemin, an attorney for Zhongzi Law Office in Beijing,who will be speaking tomorrow at session CT51 on SportSponsorship: Ambushes and Other Perils, says: “The harmthat ambush marketing can do to the marketing rights of theBeijing Olympic Games Organizing Committee as well as itspartners, sponsors and official suppliers is enormous.”

Although China still has the reputation of being a coun-try where IP protection needs to be improved, and wherecounterfeiting is perceived as widespread, the governmentknows that the world will be watching this summer andhas taken a number of steps to ensure that sponsor’s rightswill be protected. There is no specific provision in Chineselaw or regulation that clearly defines the act of ambushmarketing, according to Chen, but the rights are includedunder regulations on the protection of Olympic symbols,promulgated by the State Council of China and whichbecame effective after April 1, 2002.

Article 5 of these regulations gives a broad definition ofOlympic symbols and provides that any commercial use

without authorization from theInternational Olympic Committee,China Olympic Committee or theBeijing Olympic Games OrganizingCommittee (BOCOG) is an infringe-ment. In particular, the use of Olympicsymbols on goods or packaging, serv-ices, or in advertising, marketing andcommercial exhibition is restricted tosponsors. The anti-unfair competitionlaw, advertising law and consumerrights protection law could also beused to prevent ambush marketing.

BOCOG has been unafraid toenforce these rules. In September 2006 itwent after dairy products producerMengniu, warning it not to use the expressions “Exciting

2008 now starts with Mengniu” and “Common People’sOlympic games.” Mengniu complied. In early 2007

BOCOG criticized Swiss watch maker Tag Heuer, asponsor of China’s diving team, in which it claimedin an advert that it was supporting the team in theBeijing Olympics and was its official timekeeper,thus infringing the rights of official sponsor Omega.

One possible problem is that the exclusion zonearound the Beijing stadium has also not yet been

clearly defined. The venue itself will be “clean” (that is,devoid of any logos of non-sponsors) but the exact limitsof the exclusion zone around the stadium are not yetknown, something that is unhelpful for sponsors andpotential ambushers alike.

The clampdown has been accompanied by trainingand education programs for all official suppliers andsponsors to report any misuse of Olympic symbols,and a fierce crackdown on people selling fakeOlympic merchandise, especially of the five popu-lar mascots Beibei, Jingjing, Huanhuan, Yingyingand Nini. As a notice placed on China’s StateIntellectual Property Office website announced onMarch 17: “What will Olympic visitors think if theysee countless peddlers hawking fake Olympic mascots insubway stations, at night markets or on overpasses?”

Sponsoring Yao Ming—a tall orderDespite such good intentions, there are already signsthat ambush marketers have devised strategies to getround the regulations. Makers of sportswear face someof the fiercest competition to attract the attention ofconsumers during the Olympics. CCTV 5, China’s livesports channel, is now known as the Olympic Channeland will broadcast the entire event. Li-Ning sportsgoods, China’s largest sportswear maker, signed a two-year agreement in January 2007 with CCTV 5, whichstated that the presenters will wear Li-Ning clothing orbadges for at least a year. Official sponsor adidas isunlikely to see the funny side of this move, and as CCTVis already associated with the games “It is expected forthem to self censor,” according to Ross Parsonage, a

consultant with Rouse & Co in Beijing. Li-Ning and Nike have both also sponsored a

series of events known as the Good Luck Beijingevents that are designed to test the facilities of thestunning new stadiums that have been built inpreparation for the games. This is similar toexamples in the US where one sports equipment

maker sponsors a tournament, only to see a rivalbuy all the advertising space in the commercial

breaks when the event is broadcast on television.Sponsors might also need to manage high expectations

about the impact of the games. There are a lot of peoplefighting over a few stars. Sponsoring China’s basketballstar Yao Ming may seem like an excellent way to gain theattention of Chinese consumers, but the 7’6” HoustonRockets player already has deals with McDonald’s, Visa,Coca-Cola, Tag Heuer, Reebok and Apple. And, at time ofgoing to press, Yao’s NBA season is over after a foot injury,and his participation in the Beijing Olympics could be indoubt – a hammer blow to China’s hopes of a medal in thesport and of Reebok’s of achieving maximum exposure inthe country.

There are also questions that sponsorship may havebeen oversold for these games, with a record number ofsponsors including three official beers (TSINGDAO, BUD-WEISER and YANJING). However, some observers saythat in an Olympics of this size in China, there may beroom for extra sponsors.

So, how do the sponsors go about getting maximumbang for their buck? The classic trap to fall into, accordingto Parsonage, is not to take into account the number ofrights that are available, including licensing, merchandis-ing, TV rights, and to miss situations where rival brandscan buy up overlapping rights. It is also important toensure that rights are clearly defined.

Going too far? Some argue that ambush marketing is simply smart busi-ness practice. The issue was widely debated during the2006 FIFA World Cup in Germany. Lufthansa’s advertise-ments at the time of the tournament featured athletes,


FEATURE: SPORT SPONSORSHIP

Avoid the brand ambushHow can sponsors of sporting events avoid being upstaged by rivals who haven’t paid? Peter Ollier examines the subject oftomorrow afternoon’s session on sport sponorship.

The world’s attention will be on Beijing this summer as the Olympic Gamestake place. But some observers will be as interested in the off-the-fieldbattles between sponsors and unauthorized ambush marketers as thosecompetitions taking place between athletes. Sports events in recent yearshave seen ever more innovative efforts by brand owners who have notpaid to benefit from association with the event. China has taken strong

measures to stop such ambush marketing, but will it be enough? Will marketers try to findloopholes? And how can events organizers, and official sponsors, stop ambush marketing,particularly for events that only last a few weeks or even days? With many new laws aroundthe world designed to crack down on unauthorized advertising, a lot of events organizers willbe watching closely to see whether Beijing succeeds in beating the ambush marketers.

One-minute read

planes and a soccer ball and a logo to promote its brandalong with an invitation to share the passion withGermany’s soccer airline. But the official sponsor wasEmirates. Despite the clear attempt to associate itselfwith soccer and the world cup, Lufthansa wasclever enough to keep its advertising in the grayarea, and did not hear from FIFA’s lawyers.

But FIFA itself attracted the attention of thelawyers at Ferrero, a candy maker, for trying toregister trademarks that Ferrero thought wereoverly broad at the German Trademark Office andas Community trade marks. The marks were

opposed on the ground that it is not possi-ble to seek protection for names under

German law. The German FederalSupreme Court revoked the markFUßBALL WM 2006 in April 2006, afew months before the tournamentbegan. Ferrero Rocher has also objected

to UEFA’s EM 2008 word mark application, relating tothis summer’s European Football Championship in

Germany and Austria. Ferrero has a long tradition ofissuing cards of the German players before impor-

tant soccer tournaments such as the European orWorld Championships.

Julia Schönbohm, a partner at DLA Piper inFrankfurt and another speaker in tomorrow’ssession on ambush marketing, believes thatit is not necessary to enact new laws to

prevent ambush marketing in Germany, orelsewhere, and that instead FIFA should

educate the public about sponsors and do moreto protect and register the FIFA logo. She alsobelieves that if an advertising campaign does causeconfusion, then it is actionable using Germany’sunfair competition law and if it isn’t “then you justhave to put up with it.”

Despite this view a series of host countries have passed

anti-ambush marketing legislation over the past few years.South Africa, host of the 2010 FIFA World Cup, passedlegislation for the 2003 ICC Cricket World Cup thatrestricts ambush marketing, and the Australian govern-ment passed strict legislation for the 2000 OlympicGames. New Zealand is in the process of passing a MajorEvents Management Bill that will “protect major eventsand we will set out a list of criteria and make decisions ona case-by-case basis” according to Trevor Mallard, thecountry’s minister for economic development and sport.

The UK government has also passed a bill to protectsponsors for the 2012 Olympics which contains strict lim-its on use of a number of phrases including LondonOlympics 2012. But Switzerland has reversed this trend. In2006 the Swiss government tried to introduce an anti-

ambush marketing law that would have restricted all formsof soccer-related advertising campaigns. But a number ofthe cantons into which the country is divided and somesports associations argued that the bill would only help bigbusinesses and was not justified on competition grounds.The government then withdrew the bill but has pledged tomonitor the situation closely during the tournament.

Regardless of whether legislation is in place, ambushmarketers will still try their luck at any large-scale

sporting event and they always have the elementof surprise on their side—no-one knows whenand how they will strike. The Beijing Olympicsis a big event for China, and a number of patri-otic companies will want to associate them-selves with the celebration. This means that

while most eyes will be fixed on seeing the sport-ing excellence on track and field, trademark lawyers

can keep an eye on the battle between sponsors andambushers, which promises to be just as fierce. ■


FEATURE: SPORT SPONSORSHIP

Country: UKLegislation: London Olympics Bill Event: 2012 OlympicsPassed: December 2005Protects the words ‘Olympic’, ‘Olympiad’ and‘Olympian’, Olympic rings, Team GB andBritish Olympic Association logo, ‘London2012’, London’s bid logo and derivatives ofLondon2012.com, the 2012 Games logo andmascots (not designed yet), Olympic mottoCitius, Altius, Fortius/Faster, Higher, Stronger,The British Paralympic Association and teamlogos. Other banned words include games,medals, gold, silver, bronze, 2012 and spon-sor. Sale of unofficial merchandise will beillegal

Country: New ZealandLegislation: Major Events Management Bill

Events: 2011 Rugby World Cup, 2015 CricketWorld Cup and other international events. Passed: August 2007 Bans advertising within a 5 kilometer radiusof venues in “clean zones” such as venuepremises or areas nearby such as the adja-cent footpaths, road and parking lots), areasvisible from clean zones and on “clean trans-port routes” (motorways, state highways andrailway lines within 5km of the venue).

Country: West Indies(Antigua and Barbuda,Barbados, Grenada,Guyana, Jamaica, SaintLucia, St Kitts and Nevis,Trinidad and Tobago)Legislation: International Cricket Council

(ICC) Cricket World Cup West Indies 2007 Bill2006.Event: 2007 ICC World CupIdentical bill passed in each country hostingmatches.

Country: South AfricaLegislation: Amendments to the 1976 TradePractices Act and 1941 Merchandise Marks Act2003; First and Second 2010 FIFA World CupSouth Africa Special Measures Bill Events: 2003 ICC Cricket World Cup and 2010FIFA Soccer World CupPassed: 2002, 2003 and 2006Amends Merchandise Marks Act to allow gov-ernment to designate an event as protected,which makes it unlawful to abuse the right touse a trademark in the context of a spon-sored event. Anyone who contravenes theseprovisions commits a criminal offence.

Ambush marketing legislation

The classic trap to fall into is notto take into account the numberof rights that are available

For hundreds of years the Middle East was a key stag-ing post on the Silk Route linking Asia—with its lux-urious silks and ceramics—with the markets ofEurope. Now it is part of a new “junk route”, says

Tel-Aviv-based Shlomo Cohen, one of the pan-elists on today’s session CM52—Middle East:Brand Protection in Difficult Times. “Israel is amajor transshipment point for counterfeitgoods made in Asia and sent via the Gulf statesacross the Middle East to the West Bank andthrough Israel onto Europe,” he says.

Statistics from the European Union sup-port that view. Last year, the Commissionrevealed that China, India and United ArabEmirates (UAE) were responsible for morethan 80% of all counterfeit medicines enter-ing the EU in 2006. In the food sector Turkeyremains the main source. But senior officialsin the Commission admit that althoughCustoms were able to identify where thegoods had come from, it was difficult toprove where the products had been manufac-tured, given the increasingly circuitous routesbeing used by smugglers to avoid detection.

Transshipment and trade of counterfeitgoods through the Middle East is a big prob-lem for IP owners. The Gulf states, and theUAE in particular, are home to some of theworld’s busiest ports and most dynamiceconomies. But while the free trade zones inthe region help companies ship their goodsaround the world quickly and efficiently, theycreate headaches for IP counsel and Customsofficials trying to stem the trade in fakes.Many of these contain fakes made in some ofAsia’s most notorious counterfeit-manufactur-ing countries, which are then offloaded, splitup and sent across the region to their ultimatedestinations in Europe and the US.

The sheer volume of goods passingthrough the Middle East makes it very diffi-cult for Customs officers in the region tocontain the problem. In addition, politicalstrife in a number of countries means that IPis a low priority for many officials. SaysCohen: “Considering the turmoil in the WestBank and Gaza, IP is not on the agenda thereat all, let alone high up it.”

But it isn’t all bad news for IP owners.Since the implementation of the TRIPsAgreement, IP has been given a reasonablygood level of protection across the MiddleEast, says Cohen. Many governments are keento encourage IP-rich industries and are takingsteps to attract overseas investors. In the areaof IP, for example, the members of the GulfCooperation Council (Saudi Arabia, Bahrain,Kuwait, Oman, Qatar and the UAE) haveintroduced a unified trademark law, while theemirate of Abu Dhabi has set up a new courtspecializing in economic issues—including IPrights—and the authorities in Sharjah are con-sidering raising the administrative fines thatthe emirate levies on IP infringers.

Marketing to the Middle EastThe countries of the Middle East togetherhave a population that tops 200 million,making it an attractive market for IP owners.But when it comes to developing strategiesfor breaking into the market, IP ownersshould be careful not to fall into the trap of

treating it as a single entity, warns Cohen: “There are a lotof dichotomies. There are some countries where per capitaincome is among the highest in the world, and otherswhere it is among the lowest.”

Cohen will be joined at today’s session by Farrukh I.Khan, United Trademark & Patent Services, and JonParker, Rouse & Co. Internatonal, to discuss many of theimportant IP issues in the region. ■


FEATURE: MIDDLE EAST

How to crack the Middle East marketThe Middle East’s 200 million-plus potential consumers mean that the region has plenty to offer companies looking for newmarkets. But it also poses big challenges to IP owners, says Emma Barraclough.

Germany is the world’s fifth largest trademarkoffice judged by the number of applications,according to WIPO statistics. Situated in Munich,the Deutsches Patent- und Markenamt (DPMA,

or German Patent and Trademark Office) received morethan 76,000 trademark applications in 2007, a rise of5.3% on the previous year and proof of the continuedattractiveness of national rights in the EU.

However, those figures only tell part of the story of theimportance of Germany for brand owners. Communitytrade marks are also valid in Germany, as are internation-al (Madrid Protocol) registrations designating the country.In total, some 1.4 million marks were protected in thecountry at the end of 2007, about 55% of them nationalmarks, 30% CTMs and 15% international marks.

“In the years following the entry into force of the revisedTrademark Law in 1995, we had a real trademark boom,”says Cornelia Rudloff-Schäffer, who has been head of trade-marks, utility models and designs at the Office since October2006. “Since a trademark is initially valid for 10 years, theeffects of this boom have now surfaced again: both the num-ber of renewals and the number of cancellations in the regis-ter increased.” She adds that reclassification notices have alsorisen, as many applicants have adapted their applications tothe ninth edition of the Nice classification.

Rudloff-Schäffer heads a team of nearly 400, whichincludes 105 trademark examiners (75 of them in Munich,and 30 in a sub-office in Jena) of whom 34 are seniorexaminers who deal with objection cases. There are three

examining divisions and one cancellation division, as wellas sections for administration, initial processing and gener-al trademark administration matters.

“It’s a very vivid area, very relevant to the real world, withlots of daily challenges-not just in the law but in managementas well,” says Rudloff-Schäffer, who has spent most of hercareer in intellectual property. After a degree in law, politicsand journalism from Johannes Gutenberg University inMainz and research at the Max Planck Institute and LudwigMaximilian University in Munich, she worked for 10 yearsat the Federal Ministry of Justice, where she covered IP issuesincluding the German trademark regulation and ratificationof the Madrid Protocol and represented the country in EUand WIPO discussions. In 2001, she returned to Munich andthe DPMA, initially as head of the legal division.

She says that feedback from users indicates that most arehappy with the performance of the trademark examinationprocess. But there remain many challenges: “With regard to2008, I’m looking forward to improvements in the timeli-ness of filing receipts, transparency of examination servicesand the speed of opposition procedures.” A recent success-ful project was the introduction of support for applicants indrawing up lists of goods and services. “Errors in the listsof goods and services are the most frequent cause ofdelayed processing of trademark applications. Since 2006we have offered a special service to large applicants: theycan draw up a list of goods and services in cooperation withour staff before filing. These approved lists can be adoptedas they stand for further applications,” she explains.

Other recent innovations at the Office include theDPMAdirekt online filing service, introduced in October2006, which offers immediate acknowledgement, faster pro-cessing and a €10 discount on the €300 filing fee. “Nowthat our customers have overcome their reluctance to changetheir habits, online application figures have been increasing,”Rudloff-Schäffer told the INTA Daily News. Another inno-vation, introduced two years ago, is DPMAmarken, a systemused by all staff members to process trademark applications.

As one of the biggest of the European national offices, theDPMA provides a good example of how the three-way reg-istration framework (national, European and international)can work well, giving users a choice of systems to use,depending on their needs and the size of their intended mar-ket. Some practitioners have voiced fears that the populari-ty of the Community trade mark, reinforced by proposed feereductions, could upset this balance. Rudloff-Schäffer saysthis is a controversial area, with many different views to beconsidered, and in Germany it is a political matter handledby the Ministry. But she notes that “we are open-mindedabout discussions on future proposals concerning fee reduc-tions as far as they benefit the users and provided that thereis no negative impact on the quality of the service.” Thedecision about which route to use to file is “finally a mar-keting decision,” she says, with national offices suited toSMEs and those applicants who require rapid registration.But she stresses that other national offices in Europe mayhave different perspectives, and any changes will have to beagreed by member states at an EU level. ■


FEATURE: DPMA

James Nurton spoke to Cornelia Rudloff-Schäffer, head of the trademarks, utility models and designsdepartment of the German Patent and Trademark Office, about the trademark boom and the impact of the CTM.

Inside the DPMA

You’ve heard of Enron, of course—the energycompany brought down by accounting scandalsand financial mismanagement in 2001. You’veheard of Sarbanes-Oxley too—the tough legisla-

tion passed by the US Congress the following year that wasdesigned to prevent the reoccurrence of similar corporatemeltdowns. You’ve almost certainly heard your colleaguesin the accounts department and the financial law teamcomplain about the new rules and the obligations that theyplace on them. But you’re a trademark attorney—so youdon’t need to think about these kinds of things, right?

Well, unfortunately, you do. The Sarbanes-Oxley legis-lation requires public companies to assess, manage andmonitor their IP portfolios and disclose materi-al risks of IP threats and claims of infringe-ments. Although it applies to companies listedin the US, in theory the rules could also extendto companies headquartered elsewhere. In addi-tion, the rules that emerged in the US followingthe accounting scandals in the early part of thedecade are being closely watched—and in manycases adapted and adopted—by governmentwatchdogs in other parts of the world keen toimpose some tougher corporate governance andfinancial reporting rules of their own.

If you are not sure how you and your IPteam should respond to the new rules, a team ofIP and financial law specialists will be provid-

ing advice about the kind of thingsyou need to do to make sure thatyou comply with the obligationsset out in Sarbanes-Oxley at ses-sion today (IT01—IndustryBreakout—Financial Services:Sarbanes-Oxley: It’s No LongerJust for Corporate Lawyers).

In particular, the panel will discuss how the transparencyand reporting rules imposed by Sarbanes-Oxley affect trade-mark owners and practitioners, as well as share tips abouthow to raise awareness about IP rights and establish internalprocesses within corporations to comply with the legislation.

“IP is not really mentioned in Sarbanes-Oxley but partof the general requirements that come out of it are thatcompanies are expected to monitor and disclose IP events,including the relationship between their intellectual prop-erty position and their financial performance,” says Leo

Longauer, head of IP at Swiss-headquarteredUBS bank and the moderator of today’s session.That obligation is particularly important for IP-rich companies such as those in the pharmaceu-tical sector, but also places a heavy burden onthe growing number of businesses whose intel-lectual property is an increasingly importantpart of their assets and revenue.

Longauer says that the organizations that setthe accounting standards that companies use tomanage their books are now paying more atten-tion to intellectual property, and clarifying howit should be treated for accounting purposes.

But of course few accountants are specialistsin intellectual property and the role that it plays


FEATURE: IP AND FINANCIAL SERVICES

What Sarbanes-Oxley means for youCorporations are coming under greater scrutiny than ever, and it is not just the financiers and accountants that are affected.Emma Barraclough explains what trademark lawyers need to know.

1) Encourage good communication between different parts of your business.2) Ensure that IP policies tie in with the company’s wider strategic initiatives and business direction.3) Consider appointing a chief IP officer who is given executive authority and exposure to the

board of directors.4) Appoint dedicated personnel in charge of IP issues, rather than giving corporate counsel addi-

tional responsibly for managing intellectual property.5) Set up formal systems for managing and auditing IP within the company. This may involve

developing special software or setting up a special module within an existing ERP (enterpriseresource planning) system within the company.

6) During a transaction, employ specialist advisers to carry out IP due diligence and valuation.

Advice from the experts

“I have seen IP valuations during major acquisitions go awry because they were basedon assumptions about the asset that were simply wrong”

in a company’s business. That is why it is particularlyimportant that IP counsel help to explain the issues to theircolleagues in other parts of the business: “IP lawyers needto sit down with their tax and finance people and discussthe issues,” says Longauer. Gary Bender, an IP specialist atErnst & Young and a panelist on today’s session, agrees: “Ihave seen IP valuations during major acquisitions go awrybecause they were based on assumptions about the assetthat were simply wrong—for example, assumptions thateffectively extended the life of the patent portfolio thatformed a big part of the deal.” Such mistakes could haveexpensive consequences, as well as creating regulatoryheadaches for company executives who may be asked toexplain themselves in front of watchdogs such as theSecurities and Exchange Commission.

Communication within the company is a two-wayprocess that also enables IP lawyers, more familiar withmanaging trademark renewals and protecting their brands

from infringers than with the rules of the InternationalAccounting Standards Board, to understand how IP istreated in the company’s books. IP professionals shouldalso ensure that they communicate regularly with the peo-ple who develop and maintain the IT systems that are usedto monitor the business’s intangible assets. Says Bender:“Often the people managing a company’s trademarks anddomain names are removed from those that develop the

broader IT systems. It is not good practice to have thesekinds of functions explicitly defined. They need to be coor-dinated.”

Bender advises companies to establish procedures forregularly monitoring their IP assets. This may involveadding a new IP-specific section to the business’s existingenterprise resource planning (ERP) system, or developingnew software tools to manage the company’s IP rights—and to enable staff to carry out regular audits. Whateveroptions the company chooses, it needs to introduce writ-ten procedures explaining how often the IP is to be mon-itored, when and how the monitoring should be carriedout and how it should be done. Then the company’s exec-utives need to make sure that the policies are adopted aspart of the company culture: “It shouldn’t be on some-one’s C drive, or on an Excel spreadsheet. It needs to bemanaged in such a way that it survives employee attri-tion,” warns Bender.

While emphasizing the importance of developing aproper IP monitoring and auditing system, Bender saysthat companies should take their time to develop a strate-gy that meets their own business needs: “I have seen onelarge financial services firm that started to develop a pro-gram to value its IP but which didn’t understand when orhow to do it,” he says. “There was no coordinated busi-ness process for dealing with IP—there was just a sense ofurgency and knee-jerk reaction from the executive boardthat had seen other companies doing it. They wanted agold-plated IP program but had no idea of what madesense for their organization. Controls for their own sakecan be just as ineffective as having no controls as all.”

UpsideAlthough many practitioners regard the auditing andreporting obligations that Sarbanes-Oxley imposes onthem as an important but rather tedious chore, they couldalso have potential benefits for the company’s bottomline. Companies that carry out regular audits of their IPassets often discover that they have amassed rights thatthey no longer require and which they could abandon, oreven rights that they could sell or license to third partiesfor a profit. ■


FEATURE: IP AND FINANCIAL SERVICES

Passed by the US Congress in response to the financial scandals ofEnron and WorldCom, the Public Company Accounting Reform andInvestor Protection Act of 2002 (better known as Sarbanes-Oxley orSox) was designed to prevent the recurrence of such scandals andrestore investor confidence in the financial markets. It sought to dothis in four distinct ways: establishing a public oversight body inde-pendent of the audit profession called the Public Company AccountingOversight Board (PCAOB); strengthening auditor independence;strengthening audit committee requirements; and augmenting inter-nal control requirements with respect to financial reporting.

PCAOB’s main functions include registering public accountingfirms, promulgating auditing standards, inspecting registered pub-lic accounting firms and enforcing auditing standards.

Sarbanes-Oxley

“They wanted a gold-plated IPprogram but had no idea of whatmade sense for their organization”

The value attributed to IP in general, and toservice marks in particular, is an increasinglylarge proportion of the assets of banks,insurance companies, investment funds andstock exchanges. One case being heard inGermany at the moment has highlighted justhow much is at stake for businesses in thefinancial sector that make money fromlicensing—or from using—trade marks.

Stock exchanges and compilers of indicessuch as the FTSE 100 or the Dow Jones havetraditionally raised cash by licensing therights in their names to banks and financial

services companies that want to benchmarktheir products’ performance against the per-formance of certain listed shares.

So when Commerzbank decided to stoppaying Deutsche Börse for the right to usethe term DAX, the name of the German stockexchange index, after complaining aboutsharp increases in licensing fees, in-houselawyers in stock exchanges around the worldpaid attention.

The bank terminated its deal withDeutsche Börse and asked the courts to clar-ify that it was allowed to refer to the index

names in a neutral way, without the stockexchange’s consent.

In 2006, the District Court of Frankfurtruled in favor of Deutsche Börse, but thatdecision was overturned in February lastyear by the Court of Appeal in Frankfurt. Thecase is now on appeal before the FederalSupreme Court, which is not expected tohand down a ruling until 2009.

The case is being watched closely bybanks and exchanges around the world—many of whom are facing similar issues. Thestakes are high.

Financial service companies wake up to trademarks

Use—one short word that has caused no end ofproblems for trademark practitioners. Questionsabout intent-to-use, proving actual use and whateven qualifies as use have plagued trademark

owners worldwide. In Europe, a vigorous debate is nowtaking place over what constitutes genuine use of aCommunity trade mark and in particular whether theEuropean rules on the minimum use required to sustain amark are appropriate for a market that consists of 27member states. A workshop tomorrow will consider theseissues, and how they are being addressed in each memberstate, with some practical examples to illustrate the ques-tions that trademark practitioners face.

The use question in the EUUnlike the USPTO and certain other national trademarkoffices, OHIM—the office that registers and administersCommunity trade marks—is not required to address thequestion of use directly. There is no intent-to-use require-ment for CTM applicants, and the Office cannot cancelmarks for non-use on its own initiative.

However, Article 15 of the CTM Regulation providesthat owners must put their CTMs to “genuine use in theCommunity” (see text below) within five years of registra-tion. Article 50, which spells out the grounds for revoca-tion of a CTM, provides for a third party to apply formarks to be canceled if they have not been used in thistime. Today, 12 years after the launch of the CTM, hun-dreds of thousands of marks have been registered for atleast five years and the prospect of more being attacked onthe grounds of non-use is increasing.

Tomorrow’s workshop will see moderator Jean Pire ofGevers play the role of a candid client, who has a brand—a stylized cat design—that he wishes to protect in the EU.The cat is used in different colors and sometimes in associ-ation with the word LAVENDER. The client has two lines

of business: fruit juice and nuclear plants. The hypotheti-cal mark was registered nine years ago, and there are cor-responding marks in the Benelux and UK.

The other panelists will answer some of the questionshe has about genuine use, such as: As the mark is used intwo different lines of business, does he have to show use ineach one? If products were sold to a wholesaler, but neverput on the market to end consumers, does this constitute

use? What kind of evidence is neces-sary to show use and how should it bepresented? How far can the mark asused diverge from what is registered?Is partial use enough? And what areacceptable reasons for non-use?

As well as addressing the questionsregarding the CTM, the panelists willlook at how the EU Trade MarkDirective has been interpreted by courtsin all of the 27 EU member states.While EU trademark law is harmo-nized, says Olof Fickert of Herrero (oneof today’s panelists), “many differencesexist in national laws.” For example, hesays: “Not all countries request use of a trademark assuch—they might accept slightly modified use of a sign.” Inaddition, countries differ over whether use as a companyname constitutes use as a trademark. The panelists will lookat examples from different member states of cases where thecourts found that there was enough use, as well as caseswhere the opposite was found.

An additional problem, which they will address today, isthe dearth of case law in some countries. Says panelist ClaesAgnvall of Zacco: “Many countries do not have muchrecent practice. I will be looking at Denmark, Estonia,Finland and Sweden. In Estonia I think there is only onecase but in Denmark these issues are well reflected.”

The Maltese questionArticle 15 raises another issue that increasingly troubles sometrademark practitioners, namely what constitutes theCommunity and how extensive does the use need to be?When the Community trade mark was initially envisaged, theEU had 12 member states. Today, it has 27 including a num-ber of countries with small populations such as Malta,

Luxembourg, Cyprus and Estonia. Itmight grow further, with countriessuch as Turkey, Croatia, Macedoniaand other successor states ofYugoslavia interested in joining.

So the question is essentially: isuse in just one EU member state

sufficient to maintain a CTM if challenged for non-use? Inother words, can I use my mark just in Malta (population600,000) and thereby block other parties from using thatmark for the same goods anywhere in the EU (population500 million)? While the Regulation does not specificallyanswer this, at the time it was drafted the European Counciland Commission said that the answer is yes: one country isenough, provided the use is “genuine.” And that is the prac-

tice followed by OHIM today. That may have made sense atthe time, but many practitioners fear the rule is becomingoutdated as the EU grows and the number of CTMs regis-tered increases. In particular, some argue that national rightsrather than CTMs should be used where the applicant onlyintends to use the mark in one market. The test for use of aCTM, they argue, should be based on a proportion of themarket covered, or a number of countries.

So far, the European Court of Justice has not been askedto rule on what is the minimum requirement for use in theCommunity, though at least two cases have provided guid-ance on what constitutes genuine use (see box). Unless,therefore, the Regulation is changed or pertinent questionsare referred to the ECJ and it clarifies the law, the positionremains that genuine use in one country is enough. SaysAgnvall: “What we need is further practice. We need moreguiding decisions from the ECJ.” Tomorrow’s interactiveworkshop will help explain the law on use as it existstoday and how it can be applied to particular cases, butthat simple three-letter word is set to generate controversyfor many years yet. ■


FEATURE: EUROPEAN TRADEMARKS

Use it or lose itIf you own a CTM, you should put it to genuine use in the Community—or risk cancellation. James Nurton introduces some ofthe questions about what constitutes use of CTMs and national marks in the EU that will be addressed in a workshop tomorrow.

The apparently simple concept of use provides some of the most compli-cated questions in European trademark law. These have centered on whatconstitutes genuine use of a registered mark, and how much use in theCommunity is required to sustain a CTM. At a workshop today, panelistswill discuss the law as it affects CTMs and national marks in each of the 27EU member states, and will address specific questions as they arise from a

hypothetical trademark registration. While the law as written is clear enough and the ECJ hashanded down a few decisions on the question of use, the growth of the EU over the pastdecade raises new questions that require further elucidation from the courts. Tomorrow’sworkshop WT02 on Genuine Use Requirements in the EU will highlight some of thesequestions.

One-minute read

Ansul v Ajax (November 3, 2003—referredfrom The Netherlands, case C-40/01)In a dispute over the alleged non-use of themark MINIMAX, the Court said that the EUTrade Mark Directive “must be interpreted asmeaning that there is genuine use of a trademark where the mark is used in accordancewith its essential function, which is to guar-antee the identity of the origin of the goodsor services for which it is registered, in orderto create or preserve an outlet for thosegoods or services; ... When assessing whetheruse of the trade mark is genuine, regardmust be had to all the facts and circum-stances relevant to establishing whether thecommercial exploitation of the mark is real,particularly whether such use is viewed as

warranted in the economic sector concernedto maintain or create a share in the marketfor the goods or services protected by themark, the nature of the goods or services atissue, the characteristics of the market andthe scale and frequency of use of the mark.”

La Mer Technology v LaboratoiresGoemar (January 27, 2004—referredfrom UK, case C-259/02)In a dispute essentially over whether sales to awholesaler that did not reach the public consti-tute use, the Court echoed the answer given inAnsul, and added: “When it serves a real com-mercial purpose, in the circumstances citedabove, even minimal use of the mark or use byonly a single importer in the Member State con-cerned can be sufficient to establish genuineuse within the meaning of the Directive.”

Armin Haupl v Lidl Stiftung & Co (June14, 2007—referred from Austria, case C-246/05)Answering a question regarding when theperiod of use of an international mark hasto start, the Court said: “The ‘date of thecompletion of the registration procedure’ …must be determined in each Member Statein accordance with the procedural rules onregistration in force in that State.” Inresponse to a question regarding allowablereasons for non-use, it said the Directive“must be interpreted as meaning thatobstacles having a direct relationship with atrade mark which make its use impossibleor unreasonable and which are independentof the will of the proprietor of that markconstitute ‘proper reasons for non-use’ ofthe mark.”

ECJ cases on use

Article 15 Use of Community trade marks 1. If, within a period of five years following registration, the pro-

prietor has not put the Community trade mark to genuine use inthe Community in connection with the goods or services inrespect of which it is registered, or if such use has been sus-pended during an uninterrupted period of five years, theCommunity trade mark shall be subject to the sanctions provid-ed for in this Regulation, unless there are proper reasons fornon-use.

2. The following shall also constitute use within the meaning ofparagraph 1: (a) use of the Community trade mark in a form differing in ele-

ments which do not alter the distinctive character of themark in the form in which it was registered;

(b) affixing of the Community trade mark to goods or to thepackaging thereof in the Community solely for export pur-poses.

3. Use of the Community trade mark with the consent of the pro-prietor shall be deemed to constitute use by the proprietor.

Article 50 Grounds for revocation 1. The rights of the proprietor of the Community trade mark shall

be declared to be revoked on application to the Office or on thebasis of a counterclaim in infringement proceedings: (a) if, within a continuous period of five years, the trade mark

has not been put to genuine use in the Community in con-nection with the goods or services in respect of which it isregistered, and there are no proper reasons for non-use; ...

Extracts from the CTMRegulation

“Not all countries request use of a trademarkas such—they might accept slightly modifieduse of a sign”

STUDIO TORTAJORIO, PRATO, BOGGIO & PartnersEuropean and Italian Patent AttorneysCommunity and Italian Trademark and Design Attorneys

Head Office: Via Viotti 9 – 10121 TORINO – ITALYE-mail: [email protected] Internet: http://www.studiotorta.comEstablished in 1879


CLASSIFIED

Is your trademark

available in the EU?

We find out!Searching & Clearance

European Trademark Availability Search

Multisearch is the professional,convenient and cost effectivesolution for clearing trademarksin all of the EU countries.

Check our websitewww.multisearch.info

Multisearch is a Knijffservice

Knijff Trademark Attorneys,The Netherlands+31 294 490900

www.knijff.com

O.KAYODE & COBarristers, Solicitors, Patent & Trademark Agents

1st Floor, 77 Awolowo Road S W Ikoyi, Lagos, Nigeria Tel: 234 1 461 3120; 234 1 461 3121; 234 1 2707345 Fax: 234 1 4614003

E-mail: [email protected]; [email protected] Contacts: Lara Kayode, Funke Beecroft

www.okayode.com

DE SOLA PATE & BROWNAttorneys & Counselors

Caracas, Venezuela

Intellectual property attorneys specializing in trademarks, patents,copyrights, foreign investment, technology licensing, franchising,

trademark litigation and unfair competition.

Contact:Irene De Sola ([email protected]) and/orRichard N. Brown ([email protected])

[email protected]. 58-212-7939898Fax. 58-212-7939403

De Sola Pate & Brown Attorneys & CounselorsTorre Domus, 16th FloorAv. Abraham LincolnSabana GrandeCaracas, Venezuela

Est. 1944 “Global Experience

brought to Venezuela”

FREE WEB SEMINARGlobal Anti-Counterfeiting Strategies: Tackling Trans-shipment

Issues Using Customs and Other Enforcement TechniquesDate: June 19th, 2008 Time: 12 noon (EDT) / 9 am (PDT) / 5 pm (BST)

SPONSORS:

How long have you been with the company?I started working at METRO Group five and a half yearsago. Before this I was a lawyer in two quite well-knownprivate practice law firms in Hamburg for three years.After that I was hired by METRO and shifted toDüsseldorf to establish an IP and trademark department.It’s been a great challenge to build the department, and Iwas very excited about getting the job.

When I joined METRO Group its trademarks were lit-erally splattered all over the group, and the objective wasto centralize trademark management in order to profes-sionalize and optimize it.

For cost-saving reasons we in-sourced all trademarkregistration processes and took over from external lawyerswho had done that work in the past. At the same time theportfolio started to expand and diversified significantlysince the operational significance of retailers’ brands wasbeing paid much more attention to.

All together it has been a real management challenge tomeet all these requirements at the same time, and I am veryproud my team and I were able to fulfil them.

What are the main brands you have? We have METRO, which is the main brand since it is thename of the group and of our strongest sales line at thesame time. Other brands are our sales lines MAKROwhich is a sister company of METRO, REAL, GALERIAKAUFHOF and MEDIAMARKT/SATURN. Next to thatwe have a broad trademark portfolio for each of thesales lines.

What is the business model of METRO Group?METRO Group is focused on retail and wholesale infood and non-food products and is generating synergiesthereof. The drivers of success are internationalizationand innovation.

What are the strengths and weaknesses of the brandMETRO from a trademark law perspective?METRO has a tendency to be considered as descriptive,which makes it tough to protect the brand against dilu-tion. People who are using METRO as a brand or adomain name or as a component thereof always arguethat “metro” means metropolis or underground. Thatmay be correct to a certain extent in the English-speakingparts of the world. However, even in the US METRO hasbeen accepted by the USPTO as a trademark for a verybroad range of products and services which shows thateven in the US “metro” is to the largest extent not adescriptive term.

Also, in Spain we have a diffi-cult conflict with Madrid deMetro, which is the public trans-port system in Madrid and ownsextensive trademark rights in thebrand METRO. In our opinionthis is sufficient proof that metro isnot descriptive, and we make allendeavors to hold this up.

Another problem withMETRO is that we are offeringretail and wholesale services,which only recently became regis-trable services. Until thePraktiker decision of the ECJ in


INTERVIEW: KATRIN STEINBERG

Why METRO welcomes retail marksTrademarks for retail services were not established as being registrable in the EU until the Praktiker case was decided in 2005.Eklavya Gupte asks Katrin Steinberg, trademark counsel of the METRO Group, about how things have changed for the retailcompany since then.

Praktiker, a well-known German hypermar-ket chain, had its trademark PRAKTIKERdenied by the German Patent and TradeMark Office (Deutsches Patent- undMarkenamt).

The company had applied for a trademarkfor PRAKTIKER for the service of “retail tradein building, home improvement, gardeningand other consumer goods for the do-it-yourself sector.”

The Office disallowed the trademarkexplaining that the retail trade is not anindependent service and retail trade dealsonly with the distribution of goods.

Praktiker appealed to the Federal PatentsCourt (Bundespatentgericht), claiming that“the economic trend towards a service socie-

ty necessitated a re-appraisal of retail tradeas a service.”

The Court referred questions to theEuropean Court of Justice (ECJ), which ruledin favor of the company on July 7 2005. TheECJ confirmed that article 2 of the EuropeanTrade Marks Directive says that “a trademarkmay consist of any signs capable of beingrepresented graphically, particularly words,including personal names, designs, letters,numerals, the shape of goods or of theirpackaging, provided that such signs arecapable of distinguishing the goods or serv-ices of one undertaking from those of otherundertakings.”

The Court stressed that in the retailindustry the goal is the sale of goods to con-

sumers and that this trade includes, in addi-tion to selling, all the activity that goes on toencourage the consumers to buy.

Thus the Court stated that “for the purpos-es of registration of a trade mark for suchservices, it is not necessary to specify in detailthe service(s) in question. However, detailsmust be provided with regard to the goods ortypes of goods to which those services relate.”

The ECJ also noted that the Office forHarmonization in the Internal Market (OHIM)accepts service trademarks for the retailtrade as Community trade marks. This casehelped in defining the rules for retail trade-marks more clearly and trademarks for theretail industry have been easier to get sincethis judgement.

The Praktiker case and retail marks

“The fact thatretail and whole-sale can nowadaysbe registered as protected serviceshas made life mucheasier for us”

2005 retail and wholesale were considered auxiliaryservices to selling branded products, and prior to thePraktiker decision it had been impossible to get a trade-mark registration in most countries in the world, includ-ing our home base Germany.

Fortunately, the international landscape for IP inretail and wholesale looks very different now. Thisrequires and facilitates a completely new trademarkmanagement strategy.

How do you maintain control of the brands?Like any other attentive trademark owner we monitortrademark registrations worldwide and in many coun-tries we also monitor the registration of company names.With regard to METRO we try to approach our oppo-nents at an early stage of their using METRO in order tomake changes for them as little hurtful as possible.

How many trademark registrations do you have and in howmany countries?We have 15,000 registrations in 55 countries, most ofthem in Germany, eastern Europe and Asia.

How has the brand changed since you’ve been there?The brand itself has not changed from a legal perspective.However, the fact that retail and wholesale can nowadaysbe registered as protected services has made life mucheasier for us. Not only can we apply for what we areactually doing, but also the research for other partiesusing METRO for retail or wholesale has become mucheasier.

What has been the most challenging aspect in maintainingyour brand in today’s global environment?The greatest challenge is to keep METRO from acquiringa descriptive meaning. Indeed we put a lot of effort into it.At the same time we always need to watch out that ourreputation does not suffer any harm. Especially when ouropponents are small companies the public may raise thecriticism that Goliath is chasing David. Therefore, we mustbe consistent and systematic in our defense on the onehand but careful about how we approach each single caseon the other hand.

What do you like most about working in trademarks?I like that it requires a lot of strategic thinking, not onlywhen figuring out strategies on how to defend a trademark

but also when researching and reg-istering new trademarks interna-tionally at reasonable costs andwork expense. One always has tothink ahead and develop tactics onhow to get your marks in all trade-mark registers. Later on one has tofind a way how to handle global

conflicts with third parties. A lot of these conflicts have aninternational dimension, which is an aspect I really likeabout trademark work. ■


INTERVIEW: KATRIN STEINBERG

1996 METRO is formed through a mergerof the retail companies AskoDeutsche Kaufhaus, Kaufhof Holdingand Deutsche SB-Kauf. It goes on the stock market in thesame year and its shares are listedfor the first time on the DAX GermanStock Index. With a market capital-ization of DM 2.07 billion, METROended the year 1996 as one of the20 largest publicly listed companiesin Germany. The company expandsinto Romania and China.

1997 It advances its expansion andwholesale outlets are established inthe Czech Republic and Poland. Itsturnover abroad in 1997 accountsfor 7.1% of its total turnover.

1998 METRO shares outstrip all other DAX30 stocks and it goes on to stream-line its portfolio further. In 1998,business abroad already contributes35.2% to total turnover. Media Marktexpands into Poland.

1999 METRO liquidates its retail proper-ties and consistently expands itsinternational presence with 16METRO Cash & Carry wholesale out-

lets, 10 Real hypermarkets and 47nonfood specialty centers openabroad. The share of turnover generatedoutside of Germany grows to 39.2%.

2000 It develops into an internationallyoriented company with decentral-ized management teams. The share of its turnover generatedoutside of Germany grows to 42.2%.The group employs 220,000 peoplein 22 countries.

2001 80 new locations are added in 2001,including the first METRO Cash &Carry wholesale outlets in Russia.

2002 In November 2002, METRO AG takesa further step in consolidating itsposition as a modern, internationalwholesale and retail company andpresents itself on a worldwide scaleas the METRO Group. This positioning is supported by thebrand message: METRO Group—TheSpirit of Commerce. The Groupenters the Japanese andVietnamese markets.

2003 Business in eastern Europe and Asiaresults in a strong increase on

sales. METRO Cash & Carry opens itsfirst stores in Ukraine and India.

2004 By the end of the year, the group isactive in 30 countries. Three sales divisions celebratejubilees in 2004: Media Markt andSaturn mark their 25th year in busi-ness, METRO Cash & Carry turns 40and Galeria Kaufhof looks back on a125-year company history.

2005 The first METRO Cash & Carry whole-sale outlet in Serbia andMontenegro opens its doors. Realenters the Russian market andMedia Markt establishes a locationin Greece.

2006 MediaMarkt expands into Swedenand Russia, while Real enters theRomanian market. The takeovers of Wal-Mart Germany,and the stores of French hypermar-ket chain Géant in Poland, alsostrengthen Real’s market position.

2007 METRO Cash & Carry opens its firstwholesale store in Pakistan andMediaMarkt enters Turkey.

Source: METRO.DE website

METRO over the years

“The greatest challenge is to keep METROfrom acquiring a descriptive meaning. Indeedwe put a lot of effort into it”


AspriaKarlsruher Strasse 20, Wilmersdorf(030 890 68 88 10, www.aspria.de). This luxurious five-floor health and fitnesscomplex has a beauty centre, a 25 meterpool, saunas, a steam room, an ice room,restaurants, bars, and a sun terrace withsolariums and a view of central Berlin. Theclub offers massages and customized work-outs.

English Theatre Berlinat F40Fidicinstrasse 40, Kreuzberg (infor-mation 030 693 56 92, box office030 691 12 11, www.etberlin.de). English Theatre Berlin, Berlin’s English-lan-guage theatre group, continues with thesame high-quality program that directorsGünther Grosser and Bernd Hoffmeister havebeen presenting from the start: a mixture ofinternational guest shows, co-productionsand staged readings of new works.

Global Golf BerlinSchöneberger Ufer 7, Kreuzberg(030 22 69 78 44, www.globalgolf-berlin.net). This spectacular inner-city driving range hasmembers’ and non-members’ areas, but theclubhouse, the snack bar and the shop areopen to all. The members’ driving rangesoffer computerized swing-analysis and auto-matic teeing, along with chipping and puttinggreens. There’s also a non-members’ puttinggreen.

HAUKreuzberg (information 030 259 0040, box office 030 259 00 427,www.hebbel-am-ufer.de). The amalgamation of the former HebbelTheatre (HAU1), Theatre am Hallesches Ufer(HAU2) and Theatre am Ufer (HAU3) underMatthias Lilienthal has been hugely beneficialfor artists and audiences. The variety of workat these three Kreuzberg venues is terrific,and there’s a whirlwind of excitement aroundthe operation.

Kleine NachtrevueKurfürstenstrasse 116, Schöneberg(030 21 88 950, www.kleine-nachtrevue.de). Used as a location for many movies, KleineNachtrevue is as close as you’ll get to nostal-gic German cabaret-intimate, dark and deca-dent but very friendly. The nightly shows con-sist of short song or dance numbers sprinkledwith playful nudity and whimsical costumes.Special weekend shows vary from eroticopera to songs sung by a male reincarnationof Marlene Dietrich.

Konzerthaus Gendarmenmarkt 2, Mitte (030 203092 101, www.konzerthaus.de). This 1821 architectural gem by Schinkel wasall but destroyed in the war, but it was laterlovingly restored and now contains threemain concert spaces: the Grosser Konzertsaalfor orchestral events, the Kleiner Saal forchamber music, and the Werner-Otto-Saal,named after the businessman who financedits construction. The Berliner Sinfonie-

Orchester is based here, presenting a healthymixture of the classic, the new and the redis-covered. The Deutsches Sinfonie Orchesterand Berliner Staatskapelle also play regularly.

Olympiastadion Olympischer Platz 3, Charlottenburg(030 25 00 23 22, www.olympiastadion-berlin.de). The centrepiece of the 1936 Olympics, this isone of the best surviving examples of Nazimonumentalism. After years of neglect, thestadium was given extensive renovations anda new roof for the 2006 FIFA World Cup Final.The 76,000-seater bowl hosts the GermanCup Final and the ISTAF annual athleticsmeeting, as well as rock concerts and otherevents. There are no events this week, butyou can tour the venue: call the above num-ber for details.

PhilharmonieHerbert-von-Karajan-Strasse 1,Tiergarten (030 254 88 999,www.berlin-philharmonic.com). Home to the world renowned BerlinPhilharmonic Orchestra, the city’s mostfamous concert hall is also its most architec-turally daring cultural venue: it’s now a littledwarfed by its new neighbours at PotsdamerPlatz, but it’s a marvellous piece of organicmodernism. Its reputation for superb

acoustics is well deserved, but the soundquality does depend on where you sit: behindthe orchestra, the acoustics leave plenty tobe desired, but in front, the sound is heaven-ly. The structure also incorporates theKammermusiksaal, a smaller hall about whichthe same acoustical notes apply. The Berliner Philharmoniker was founded in1882, and has been led over the years bysome of the world’s greatest conductors; it’snow under the control of British conductorSir Simon Rattle. The Berlin Phil givesaround 100 performances in Berlin during itsAugust to June season, and puts on another20 to 30 concerts around the world. Sometickets are made available at a discountbefore performances. This week, the Breuninger Quartett play quar-tets by Debussy and Ravel on Wednesday May21. And then, from Friday 23 to Sunday 25,the Philharmonic perform works byBeethoven and Berlioz.

RenaissanceHardenbergstrasse 6,Charlottenburg (030 312 42 02,www.renaissance-theater.de). The Renaissance building is one of only tworemaining examples of work by OskarKaufmann, the premier Berlin theatre archi-tect of the early 20th century. It makes it agreat backdrop to the chansons evenings thatare stage in the upstairs salon, accompaniedby a full dinner. This week, look out for astaging of George Tabori’s Mutters Courage.

Staatsoper Unter denLindenUnter den Linden 7, Mitte (030 2035 40, www.staatsoper-berlin.de). The Staatsoper was founded as Prussia’sRoyal Court Opera for Frederick the Great in1742, and designed along the lines of a Greektemple. Although the present building datesfrom 1955, the façade faithfully copies that ofKnobelsdorff’s original, twice destroyed inWorld War II. From Sunday May 18 to TuesdayMay 20, the venue hosts With/Out Tutu, fea-turing works choreographed by WilliamForsythe, Clark Tippet and Jodie Gates.Chamber music is performed in the small,ornate Apollo Saal, also open for occasionalclub nights.

CITY GUIDE: ARTS & LEISURE

Adapted with permission from the Time OutBerlin Shortlist £6.99 available for online purchase at www.timeout.com/shop

© Time Out Group Ltd 2008Olympiastadion Photo: © www.visitBerlin.de

Konzerthaus Photo: © www.visitBerlin.de

BERLIN: ARTS & LEISURE

Globalization is a reality for brand owners today.The breakdown of trading borders, the spread ofcommunications and above all the speed andavailability of the Internet and mobile communi-

cations mean that strong global brands (think ofGOOGLE, SONY or NOKIA) are more powerful thanever. But entering new markets, which may have differentlanguages and cultures, presents special challenges to in-house counsel. These may require the consideration oflocalized branding, advertising or marketing campaigns-which may in turn have an impact on the value of thebrand itself.

During today’s session CM01-Effective GlobalBranding: Crossing Cultural and Economic Borders, whichstarts at 10:15 a.m., Ana Cashman of Playboy Enterprises,Paul Rawlinson of Baker & McKenzie London and SvenKlos of Klos Morel Vos & Schaap in The Netherlands willdiscuss ways of dealing with such issues.

One of the key questions for any brand owner to con-sider when launching a new brand or revising an old oneis whether to pursue a global or local strategy. This raisesquestions such as whether to translate the brand into locallanguages, or use non-Roman scripts. While there may beseveral advantages to translating a trademark or market-ing slogan, such a move could potentially dilute thebrand’s value and create confusion, which counterfeitersand rivals might be able to exploit.

During a roundtable on global brand strategies lastyear, Linda Heban, vice-president and chief trademark

counsel with Harley-Davidson, told Managing IP: “It’s justnot practical for us from a marketing perspective to haveto name the same product with different names in differentjurisdictions. We wouldn’t go down that path.” But,speaking in the same discussion, Joe Quigley, assistant gen-eral counsel with Nike, pointed out that sometimes youhave to draw a line: “I am curious when you are trying toclear something internationally and you have cleared it inevery country except, say, Spain, is there a cost-benefitanalysis to say: ‘Well, what are our sales in Spain or wheredoes Spain rank in terms of the importance to the busi-ness? Therefore we won’t let that hold up something thatthe marketing group just absolutely is in love with.’”

And, in some cases, failing to translate a brand into thelocal language can have devastating effects. Randall Frost,author of The Globalization of Trade, has written about howMicrosoft’s VISTA translates to “a disparaging term for afrumpy old woman” in Latvia and Motorola’s Hellomotoring tone sounds like “Hello, Fatty” in India. Other examplesof brands that do not translate well include the VauxhallNOVA automobile-No Va means don’t go in Spanish.

Much attention today is focused on the so-called BRICcountries (Brazil, Russia, India and China) and a key con-sideration in these (and other) markets is transliteration ofmarks into languages such as Mandarin, Hindi andRussian, which use non-Roman scripts. But transliterationalso presents challenges, particularly where languages arebased on characters rather than letters-as companiesincluding Sony Ericsson, Coca-Cola and Pfizer have discov-

ered in China. Companies have different strategies on thisquestion. In the roundtable, Heban said: “Particularly inChina we have transliterations of our core trademarks andmodel names all registered in China and we have domainnames with Chinese characters. We do that in Japan aswell” while Quigley commented that Nike rarely pursuestranslation or transliteration: “NIKE is a fairly simple markand not necessarily prone to a lot of issues with the locallanguage and we are pretty consistent in our branding.”

The virtual challengeThe Internet exacerbates many of these challenges as itallows companies to reach millions of consumers in aninstant and dramatically raises the stakes for brands thatare known worldwide, potentially opening the floodgatesfor counterfeiters and increasing the potential for piracyand brand confusion. User-generated content, keywordadvertising, domain name kiting and phishing all presentnew frontiers in brand protection and weigh heavily in acompany’s brand management strategy.

The challenges of online protection are bound toincrease, with new top-level domains (TLDs)-includinginternationalized domain names (IDNs)-on the horizon. InParis next month, ICANN’s board is expected to vote on apolicy framework regarding how new TLDs will be inte-grated into the domain name system. Brand owners couldsoon be faced with tough decisions about whether to reg-ister their rights online in many different languages, differ-ent texts and under different domains. ■


FEATURE: GLOBAL BRANDING

How to build brands globallyProtecting a company’s brand has become a new kind of challenge in the age of globalization and the Internet. EileenMcDermott previews today’s session on cross-cultural and multilingual branding and advertising.

How did you get into the company, and how long have youbeen with Bayer?I was admitted to the German bar 10 years ago in 1998. Inmy law studies we didn’t really focus on IP as a particularsubject so I did not really have a clue about IP at the begin-ning. It was rather by chance that after my studies I firstworked for a German law firm specializing in IP especial-ly patent litigation and other aspects of technical IP. AfterI had discovered the fascinating world of IP in that lawfirm I joined Bayer in 2001 in the trademark departmentand at the beginning of 2007 was appointed head ofBayer’s global trademark department after my predecessorhad retired.

How has the brand changed since you’ve been there?Bayer has gone through a very active M&A phase in thelast few years and due to that there have been substantialchanges in the group and our portfolio. For a very longtime, Bayer was a rather stable, traditional German com-pany. It is much more of a global player now than it has

been in the past. There was a big reorganization of thegroup in 2002–03. It now has certain pillars of opera-tions—Bayer Healthcare, Bayer CropScience and BayerMaterial Science. The Bayer model relies on these threebusinesses. The idea is that all our products are designedto benefit people and improve their quality of life—as ourslogan goes: “Bayer: Science for a better life.”

How many trademark registrations do you have?We have more than 110,000 active trademarks. Out ofthem 63,000 are national trademarks and the remaining30,000 include international trademarks and their designa-tions and Community trade marks.

What are the main brands you have? We have many brands, but the BAYER CROSS is ourstrongest and most valuable brand. It has a high brandrecognition and consumer awareness. Bayer is also stillassociated with ASPIRIN since the drug was invented andfirst launched by our company more than 100 years ago.

Bayer is still suffering from theconsequences of the two WorldWars, during which Bayer lost itstrademark rights in ASPIRIN insome countries—especially in theUnited States, where it is now ageneric term. However, in mostother countries ASPIRIN still is a


INTERVIEW: FRANK MEIXNER

M&A poses new challenges at BayerFrank Meixner, head of corporate trademarks at Bayer, tells Eklavya Gupte how his department has integrated different port-folios in response to Bayer’s mergers and acquisitions over the past decade.

Optimize your taxes on intellectualproperty revenues, the LuxembourgAdvantage

Structure your intellectual propertyat the heart of Europe

Dots for your ™. Build your domainstrategy to maximize your R.O.I

>>

Tax & Trademarks Session 9:00am to 10:30am / 1:30pm to 3:00 pmand Domain Name Session 10:45am to 12pm / 3:15pm to 4:30pmEach session will take place at the Maritim proArte Hotel,Friedrichstrasse 151.

Feel free to stop by or contact [email protected] for more information.

Luxem

bourg

The right place foryour trademarks anddomain namesJoin us on May 20th, 2008 at the Maritim proArte Hotel

Learn everything about Luxembourg’s new tax incentives and how tooptimize your Domain Names’ growth:

>>

>>

272 extensions and counting.The right tools to managedomains worldwide

>>

“It is a real challenge for pharmaceutical companies to get their trademarks approved by the regulatory bodies such as EMEA andthe FDA”

well-known brand and we were able to defend our trade-mark registrations.

What are the strengths and weaknesses of the brand(s)?We have stronger and weaker trademarks just like anyoneelse. But of course we try to avoid trademarks with a lowdistinctiveness since it is very difficult to defend andenforce them against third parties.

How many countries do you protect the trademarks in?We file trademark applications for all countries where acertain product will be sold. Since our business is activeworldwide we have an increasing number of globalbrands.

What measures do you take to police your brands?In cases of trademark infringement we have a reportingsystem with our affiliates abroad, and legal proceedings in

such cases are coordinated by the trademark department.We try to ensure that a prompt, appropriate and deterringlegal response is given to infringers.

Additionally, in its fight against product piracy and fakeproducts Bayer has established special anticounterfeitingfunctions that carry out investigations and take appropri-ate legal steps against networks of counterfeiters wherenecessary.

What are the biggest challenges in your job?The main challenge of my job is the increasing number ofM&A activities at Bayer and the subsequent integration ofthe acquired trademark portfolios.

What are the biggest challenges facing brand owners inGermany, the EU and globally?Apart from counterfeiting and infringement cases, it is areal challenge for pharmaceutical companies to get their

trademarks approved by the regulatory bodies such asEMEA and the FDA. The name rejection rate is incrediblyhigh and in most cases the process and its outcome arerather unpredictable. Parallel imports of pharmaceuticalproducts are also a never-ending story especially in the newEU member states.

What do you like most about working in trademarks?First of all I like the international scope and atmosphere. Ido not know any other department in my company with amore international scope of activity. At one moment youare dealing with a case in China, two hours later you aretalking about a project in Pakistan. And then a colleaguefrom Russia calls you. You get to interact with people fromrather different cultural backgrounds, which is both chal-lenging and interesting. Also, the trademark community israther special; most people working in this area are veryopen and have a broad horizon. ■


INTERVIEW: FRANK MEIXNER

Friedr Bayer et comp was founded on August 1,1863 in Barmen, Germany by dye salesmanFriedrich Bayer and master dyer Johann FriedrichWeskott. The company focused on the manufactureand sale of synthetic dyestuffs.

The financial foundation for expansion was laidin 1881, when Bayer was transformed into a jointstock company called Farbenfabriken vorm FriedrBayer & Co. Its workforce grew from three in 1863to more than 300 in 1881.

In the next 30 years, Bayer developed into achemical company with international operations.Although dyestuffs remained the company’s largestdivision, new fields of business were joining thefold. Bayer then created a worldwide sales organi-zation and by 1913 more than 8% of its revenuescame from exports.

Bayer’s growth was devastated by the FirstWorld War. The company was largely cut off fromits major export markets, and sales of dyes andpharmaceuticals dropped accordingly. The compa-ny’s US assets, including its patents and trade-marks, were confiscated in 1917 and auctioned offto its competitors.

A community of interests had already existedbetween Bayer, BASF and Agfa since 1905 and inorder to regain access to the vital export markets,these and other companies of the German tar dyesindustry joined together. Bayer transferred itsassets to IG Farbenindustrie and was deleted fromthe commercial register as a company.

In November 1945, the Allied forces confiscatedthe IG and placed all its sites under the control ofAllied officers.

The Allies finally gave permission for the com-pany to disperse and 12 new competitive compa-nies were created in the Federal Republic ofGermany. One of these companies wasFarbenfabriken Bayer AG, which was established onDecember 19, 1951.

By the 1950s, the company was allowed to acquireforeign affiliates as well, and the United States andLatin America were the focus of these activities. Aftera few acquisitions in the late 1970s Bayer gained animportant position in the US pharmaceuticals market.

In the 1990s Bayer’s acquisition and expansionactivities further intensified. By 2001 it hadacquired Aventis CropScience for €7.25 billion anda year later Bayer CropScience was launched as thefirst legally independent Bayer subgroup.

In January 2004 the BAYER CROSS trade markcelebrated its centennial.

History of the BAYERbrand


CLASSIFIED

We Provide Solutions on Demands.LIU LEE & ASSOCIATES

Patent & Trademark Attorneys

The New Leader in China IP ServiceSuite 25A01, 25/F., Hanwei Plaza Telephone: (86) 10 6561 00487 Guanghua Road, Beijing 100004, China Fax: (86) 10 6561 0646http://www.iplaw.cn Email: [email protected]

Providing pragmatic and global solutions since 1978

Our Intellectual Property service includes:

• Trademarks, designs and patents• Opposition and cancellation proceedings• Intellectual property rights protection• Arranging customs seizures and enforcement

Contacts

Angus ForsythTel: (852) 2533 2543 Email: [email protected]

Lai LamTel: (852) 2533 2545 Email: [email protected]

Head Office: 4/F & 5/F, Central Tower, No.28 Queen’s RoadCentral, Hong Kong

China Office: Suite 1704, Citic Plaza, 233 Tian He N. Road,Guangzhou 510613, China

www.sw-hk.com

1425 K Street N.W.; Suite 800, Washington, D.C. 20005Phone: 202-783-6040 Fax: 202-783-6031 Email: [email protected]

Patent, Trademark, Trade Dress, Copyright, Licensing, Unfair Competition,Intellectual Property Litigation, Searches & Counseling

Offices in COLOMBIA, VENEZUELA and PANAMA

Practice Areas: Intellectual Property, Franchise and

License Agreements, Unfair Competitionand Anti-Trust Law, Litigation

Other Legal ServicesHealth Registers, Litigation

Headquarters: Calle 64 3-41, Bogotá, Colombia Tel: (571) 2481211; Fax: (571) 4818304 www.iurismark.com Main contact: Diego MunozEmail: [email protected]

Your Associate from MYANMAR (Burma)

U MYINT LWIN LAW OFFICEAdvocate, Trademark Agent & Shipping

No.162, 1st Floor, 35th Street Tel 95 1 371 990 95 1 372 712Kyauktada, Yangon, Myanmar Fax 95 1 296 848 95 1 371 990P.O. Box 1126 Mobile 95 9 500 1976www.mipadvocate.com Email [email protected]

Times change – brand remains

since 1922Sojuzpatent offers the full range of services in all aspects of Intellectual Property

legal protection in Russia and abroad.13, Bldg. 5 Myasnitskaya Str., 101990 Moscow, Russia.Tel. +7 (495) 221-88-80/81 Fax. +7 (495) 221-88-85/86

www.sojuzpatent.com [email protected]


FEATURE: DAMAGES

“We want to try to demystify the wholeissue of damages—or monetary relief,which is broader than damages—intrademark cases,” says John Crittenden

of Cooley Godward Kronish, one of the speakers intoday’s workshop WM01—The Intersection of TrademarkLaw and Economics: Successfully Managing MonetaryClaims in Infringement Cases. To that end, Crittenden andhis fellow panelists have come up with two fictitious cases,which they will review and analyze during the interactiveworkshop.

Both cases involve the owner of the mark SCHRÖDER,a famous German sports cars brand. In the first case,SCHRÖDER’s owner, Schroeder AG, has discovered thatCar Parts Emporium (CPE) has been using its mark incon-sistently, causing consumers to mistakenly purchase prod-ucts that they believed were manufactured, endorsed, orsponsored by SCHRÖDER, when they in fact were not.

In the second case, Schroeder AG has discovered thatrenowned chef David Schroeder has opened his own chainof restaurants using the mark SCHROEDER’S CHE-QUERED FLAG. The restaurants have a motorsportstheme, which Schroeder AG alleges is a violation of itstrademark rights.

After reviewing each hypothetical situation, the panelwill address questions such as whether trademark infringe-ment or trademark dilution is a better cause of action forseeking monetary relief, which forms of damage are rele-vant to consider and how to measure them.

Damages around the worldThe session will also provide an overview of the legal prin-ciples governing damages in four key jurisdictions: the US,Germany, Japan and Mexico. “We want to get peoplethinking about the US in comparison to other countries:how are they different?” says Crittenden. Crittendenpoints out that inMexico, for instance, themaximum damagesaward is fixed at 40% ofthe sale price of theinfringing goods, while“exposure can be tremen-dous in the US.”

The rule on damages inGermany is similar to that

How to get your money’s worthEileen McDermott previews today’s workshop on damages in trademark litigation, and looks at challenges brand owners facein measuring monetary relief.

Trademark litigation is costly, and obtaining ade-quate monetary relief in infringement cases can betricky. In today’s workshop on assessing damagesin trademark cases, practitioners and experts willtackle a series of hypothetical cases and engagemembers in an interactive session aimed at edu-

cating trademark owners and attorneys about the process. The hypo-thetical cases address trademark dilution and infringement and involveinternational aspects; the panel will compare the law in Germany,Japan, Mexico and the US. In the US, for example, plaintiffs can chooseto recover lost profits and/or the defendant’s earnings from infringe-ment, and there are important issues to consider when making thatchoice. Getting your strategy right requires careful thought—but the rewards can be counted in the millions of dollars.

One-minute read

GermanyIt is established case law that a plaintiff whoproves infringement of a registered trademarkand who proves that the infringer acted willfullyor negligently can calculate its damages on thebasis of one of the following three methods:1. Skimming off defendant’s profits reaped from

the infringement;2. Recovering plaintiff’s own lost profits due to

the infringing acts of the defendant;3. Fictitious license fee (which license fee would

have reasonably been stipulated, if the defen-dant had asked for a license).

Japan1. InfringementThe remedies for infringement are preliminaryinjunction (if the registrant is using the mark),permanent injunction, monetary damages (calcu-lated on the basis of reasonable royalties) and/orlost profits. Preliminary (interim) injunctions areobtainable upon proof that there would beirrecoverable losses if the defendant’s infringingactivity is not stopped immediately. Japan doesnot have a punitive or treble damages system orattorney’s fees for willful infringement. 2. Unfair competitionAccording to Sections 2 and 7 of the Japanese UnfairCompetition Prevention Law, a person who negligent-ly infringes on the business interests of another per-son through unfair competition shall be liable tocompensate for damages and may be ordered torestore the business reputation of that person.

MexicoIn the Industrial Property Law, article 221 allowsdamages and losses to be claimed in the event ofa violation of the Law. Additionally, article 221 is ofthe same Law establishes that the affected partycan demand of the infringer 40% of the sale priceof every product or of the rendering of serviceswhich violate any of the industrial property rightsregulated by the Law.

United StatesA plaintiff who proves infringement of a regis-tered trademark, false designation of origin in vio-lation of Lanham Act section 43(a) (15 U.S.C. sec-tion 1125(a)), or willful trademark dilution in viola-tion of Lanham Act section 43(c) (15 U.S.C. section1125(c)) is entitled to recover:1) Defendant’s profits;2) Damages sustained by the plaintiff;3) Costs of the action (this does not include

attorney’s fees).In exceptional cases the court may award rea-

sonable attorney’s fees to the prevailing party.(Other amounts may be awarded for intention-

al counterfeiting)

Sources: Dr. Ekkehard Stolz, Attorneys Lichtenstein,Koerner & Partners (Germany)John A. Tessensohn, Shusaku Yamamoto (Japan)Ricardo Sanguino, Arochi, Marroquin & Lindner,S.C. (Mexico)John W. Crittenden, Cooley Godward Kronish (US)

Monetary relief available under the law“We want to get people thinkingabout the US in comparison toother countries: how are theydifferent?”

in the US. Plaintiffs may recover their own losses, defen-dant’s profits or hypothetical license fees and attorney’s fees.The proof that is required is also similar, but in the US, thecourt can choose to adjust the amount of damages based onits own discretion, while in Germany it cannot.

In Japan, meanwhile, damages for trademark infringe-ment are governed by both the Japanese Trademark Lawand the Japanese Unfair Competition Prevention Act,which allows the court considerable flexibility in using itsdiscretion to determine the damages amount, including theability to order expert testimony.

Ask the expertsIn the US, there are several ways of calculating damagesfor trademark infringement. A plaintiff can seek lost prof-its, which entails determining the amount of profits a partywould have earned if not for the infringing goods, or it canseek the defendant’s profits, which requires obtaining thedefendant’s financial records. In either scenario, there arevarious risks and rewards that need to be weighed.

That’s where one of today’s panelists, Brian Daniel, aneconomist with CRA International, comes in. “In mostinstances, there’s a requisite need for an expert to help with

calculating damages,” says Daniel, who often providesexpert testimony in trademark infringement cases. “Thetricky thing in trademark cases is that the court has the dis-cretion to amend what it deems an equitable amount,” headds. “Sometimes you can get both [plaintiff’s lost profitsand defendant’s profits] or a fraction of both. We often gofor both.”

One complication in seeking a plaintiff’s lost profits isthat it is somewhat of a hypothetical exercise: “It meanslooking back and even forward sometimes,” says Daniel.“Looking back to reconstruct who the parties involved

are, the historical level of sales, the pricing of productsand certain factors leading to a decline in sales that aren’tattributable to the defendant, such as problems in theeconomy. You have to look at all of the factors and iso-late what we call the ‘should have been’ or ‘but for’sales.”

When attempting to prove for-ward-looking losses, meanwhile, acompany must provide proof thatit would have made the claimedsales, which requires producing aproven track record and perform-ance history. However, when apreliminary injunction has been

issued, which is often the case, “it somewhat eliminatesthat claim,” says Daniel. “An injunction can limit theamount, but it doesn’t necessarily eliminate the fact-spe-cific analysis,” he explains. “One or two facts can makethe difference between a claim making sense or not.”

Another potential conflict for companies attempting torecover lost profits has to do with the need to share finan-cial records with the opposition. “The other side’s expertis entitled to review the books as well, and companies aresometimes reluctant to reveal that information,” saysDaniel. “Some get queasy about that, so if it’s a lost prof-

its calculation which requires them producing information,they’ll put forth a claim for defense profits only. It’s a risk-reward trade off. But if the judge or jury doesn’t agree,then they have nothing to fall back on, so it’s a strategicdecision. Most companies are comfortable though, andwill pursue any and all means available to them.”

There are challenges involved with recovering thedefendant’s earnings from the infringing goods as well.“The challenging issue there is getting access to the otherside’s business records,” says Daniel. “In the US, theburden of proving cost rests on the defendant, so theplaintiff has to prove the defendant’s revenue.”Although defendants are forced through discovery anddocument request to produce such records, Daniel saysthat the process of obtaining the requisite informationfrom the opposition’s accounting and finance depart-ments can often be lengthy and grueling.

Daniel will review the various methods for determiningdamages in each of the case studies presented duringtoday’s session, but promises that “it won’t be an overly-technical number crunching exercise.”

Also joining the panel will be 2004 INTA PresidentJaqueline Leimer of Kraft Foods, who will offer an in-house perspective on damages strategies. “Hopefully peo-ple will jump in and participate readily,” says Daniel. ■


FEATURE: DAMAGES

• $594.0 million: Cartier Int’l B.V. v. Liu,2003 U.S. Dist. LEXIS 6381 (S.D.N.Y. Apr. 16,2003)

• $26.5 million: Sands, Taylor & Wood v.The Quaker Oats Company, 18 U.S.P.Q.2d1457 (N.D. Ill. 1990), aff’d in part and rev’din part, 978 F.2d 947, 24 U.S.P.Q.2d 1001(7th Cir. 1992), cert. denied, 507 U.S. 1042(1993), on remand, 1993 WL 204092 (N.D.Ill. 1993), aff’d in part and rev’d in part, 34F.3d 1340, 32 U.S.P.Q.2d 1065 (7th Cir.1994), reh’g in part, 44 F.3d 579, 33U.S.P.Q.2d 1543 (7th Cir. 1995)

• $12.1 million: ALPO Pet Foods v. RalstonPurina Co., 997 F.2d 949, 27 U.S.P.Q.2d 1455(D.C. Cir. 1993)

• $4.3 million: Roulo v. Russ Berrie & Co.,Inc., 886 F.2d 931, 12 U.S.P.Q.2d 1423 (7thCir. 1989), cert. denied, 110 S. Ct. 1124(1990)

• $3.0 million: Taco Cabana Int’l, Inc. v.Two Pesos, Inc., 932 F.2d 1113, 19 U.S.P.Q.2d1253 (5th Cir. 1991), aff’d, 505 U.S. 763(1992)

Source: Brian M. Daniel, CRA International,Inc.

Significant US damages awards

The subjects of today’s hypothetical case study

“The other side’s expert is entitled to reviewthe books as well, and companies are sometimesreluctant to reveal that information”

Continued from page 1

All the speakers were keenthat attendees should taketime to get out and enjoythe sights, sounds and richhistory of Berlin. INTAExecutive Director AlanDrewsen began the openingceremony with a video thatunderlined the diversity ofattractions in Berlin, whilethe co-chairs emphasizedthe number of historical

sites, including the remain-ing parts of the Berlin Walland the memorial to theBerlin Airlift. For her part,Steele stressed the culturaltreasures on offer includingthe Gendarmenmarkt, theTiergarten and MuseumIsland.

Drewsen described thegrowth of INTA’s member-ship to over 5,500 andsaid: “It is the hard work

of all the volunteers andplanners that keeps INTAgrowing.” He praisedSteele for combining herduties as president with afull-time job for Mars thathad led to her beingranked number 11 onAustralian airline Qantas’sfrequent flyer list. Drewsenjoked that his high opinionof Steele had not been inany way influenced by theconstant flow of M&M’sthat had landed on hisdesk during the year.

Blechschaden perform popular international tunes at last night’s opening ceremonies

Opening ceremonies


INTA DAILY NEWS

Our trademark is a very important assetfor SEIKO and I enjoy going after thecounterfeiters in China and other Asiancountries. I enjoy getting assistancefrom external attorneys and trackingdown proof of infringement.

Satoshi Asami, Seiko Holdings Corporation, Japan

I started out working for a softwarecompany and did copyright work first.But I really enjoy the trademark workbecause the people who work in thisindustry are different. You can get toknow a wide variety of people and net-work very easily. I would say trademarkattorneys are definitely more relaxed.

Bernardo Tobar, Tobar & Bustamante Abogados, Ecuador

It’s really the international aspect. Unlikeother practices where work is very terri-torial, in trademarks you are alwaysworking in two or three jurisdictions atthe same time. I used to be an in-housecounsel and we would farm trademarksout. But it came to the point where wehad so many that I had to take it overand I got interested from there.

Andrew Ong, Ong Bagay-Villamor & Fabiosa, Philippines

I do branding for TV shows on cablechannels such as the Style Channel andE! ENTERTAINMENT TELEVISION. I work inLos Angeles so we get to see a lot ofcelebrities in our office such as RyanSeacrest, host of American Idol. P. Diddycame in and did a radio show the otherday.

Tami C. Solomon, Comcast Entertainment Group, U.S.

I like the fact that I see things in myday-to-day life that relate to what I do atwork. I drive my wife crazy because Ican’t go shopping without label reading.The curse for spouses of trademarklawyers is that they become the “ordi-nary person on the street” and arealways being asked questions relating totrademark law.

Christopher C. Hale, Blake, Cassels & Graydon LLP, Canada

VVOOXXPOPQUESTION: What doyou like most aboutworking in trademarks?

I like the fact that you work with a reallywide range of industries, from verydown-to-earth mechanical companies tovery specialized high-tech businesses.Also trademark lawyers tend to be verynice and have a good mentality.

Michaela Mentjes, Prüfer & Partner GbR Patentanwälte, Germany

What fascinates me is handling differentissues. The goodwill that a business cancommand depends on the value of itsbrand and we as trademark lawyers canreally contribute to brand development. Ispecialize in litigation and I love gettinginvolved in complicated trademarkcases.

Amit Mehta, ALG India Law Offices, India

Two things: the creativity and the factthat you can make money out of it! Whatattracts me the most is that trademarksare negative rights, whereas a lot ofother legal rights are positive rights. IPlaws define your space and enable youto stop others infringing on it.

Sumita Singh, Singh & Associates, India

It’s the kind of job that forces you towork in a lot of different areas, such asmarketing and economics. You need tohave knowledge, not just of the law, butmany other fields as well. So it’s a verymultidisciplinary job and you don’t getstuck working in one single area all thetime.

Elena Marangoni, Avvocato Elena Marangoni, Italy

The writer of the best caption for this year’s Berlin-themed cartoon will win an INTA publication of theirchoice. Send your caption, with your name and contact details, to [email protected] by 5:00 p.m.Tuesday May 20. Don’t forget you can still enter the Berlin quiz too. See yesterday’s INTA Daily News fordetails. Winners will be announced in the Wednesday issue. Check tomorrow’s INTA Daily News for moreopportunities to win.

Win an INTA publication of your choice!

I think trademark law is more fun thanother areas of IP because it deals withmarketing as well and is a bit lighterthan patent law for instance, which canbe very technical.

Felipe Dannemann Lundgren, Danneman Siemsen Advogados,Brazil

I enjoy the variety of situations thatarise in trademark law; every client hasdifferent needs. I think trademarks dealwith much more immediate commercialissues as well. Also, trademark peoplegive the best parties.

Antony Gallafent, Gallafents LLP, UK

Vivien Chan & Co hosted theannual brunch reception at the

Maritim proArte Hotel, which includedan extensive and mouth-watering buffet.

Rouse & Co. entertained guests atone of Berlin’s most renowned

Japanese restaurants, Shiro I Shiro.The 40 Seconds club was thelocation for Bardehle

Pagenberg’s al fresco champagnereception, where guests enjoyed spec-tacular views of Berlin from the club’spenthouse terrace.

Guests flocked to receive giftsfrom Lehman, Lee & Xu during

their exceptionally well-attendedbrunch reception at theIntercontinental hotel.

Kador & Partner hosted an ele-gant champagne reception in the

ballroom of the hotel Adlon. The roaring twenties was thetheme for the Lovells reception

and dinner at the Hotel Adlon.

Field Fisher Waterhouse held areception in the grand surround-

ings of the Bear Hall at the recentlyrenovated Altes Stadthaus.

Jackson Etti & Edu wowed guestswith authentic Nigerian music,

food and even traditional head gear atthe Intercontinental hotel.

CMS held their reception at theChina Club Berlin, where guests

tried their luck at a roulette table,enjoyed Chinese food and were enter-tained by magicians.

Trevisan & Cuonzo Avvocati, DeBrauw Blackstone Westbroek,

Bristows, Hengeler Mueller, RospattOsten Pross and Uría Menéndez heldtheir joint reception at the famedStaatsratsgebäude.

A Viking-themed party at theRadisson SAS hotel, hosted by

Groth & Co., offered guests a banquet-style feast with impressive views ofBerlin.

11

10

9

8

7

6

5

4

3

2

1


INTA DAILY NEWS

Yesterday’s receptions

4 5 6

3

1 2


INTA DAILY NEWS

7

9 10 11

8

Today’s Schedule: Monday, May 19, 2008All Events take place at the Internationales Congress Centrum (ICC) unless otherwise indicated.Consult the Final Program for times and locations of invitation-only events.

7:30 am – 5:00 pm REGISTRATION Entrance Lobby7:30 am – 5:00 pm HOSPITALITY (Breakfast 8:00 am – 10:00 am) Hall 14.2/15.2 & Hall 158:00 am – 10:00 am BREAKFAST TABLE TOPICS Roof Garden Lobby8:00 am – 10:00 am COMMITTEE MEETINGS

ACEC: China Subcommittee Hall 9ADR Committee Hall 7Anticounterfeiting Forum Project Team Room 44EIC: Design Rights Subcommittee Hall 8E-Learning Project Teams Room 28Enforcement: Courts & Tribunals Subcommittee Hall 4/5LRC: Latin America & Caribbean Subcommittee Room 29LRC: Middle East, Africa & South Asia Subcommittee Room 27LRC: U.S. Subcommittee Salons 11/12Roundtable Subcommittee—International—Asia, Africa and Europe Room 43Roundtable Subcommittee—U.S., Canada and Latin America Room 42

9:00 am – 4:00 pm EXHIBITION HALL Halls 15 – 1710:15 am – 11:15 am Europe Council Room 4410:15 am – 11:30 am CONCURRENT SESSIONS

CM01 Effective Global Branding: Cross-Cultural and Economic Borders Hall 1CM02 “Fraud at the PTO”: A Barrier to the U.S. Market? Hall 2CM03 Enforcement in Africa as Trade Barriers Ease Hall 3IM01 Consumer Products: Cross-Border Labeling and Related Requirements Hall 10WM01 The Intersection of Trademark Law and Economics: Successfully Managing Monetary Claims in Infringement Cases Hall 6

11:00 am – 12:30 pm Latin America & Caribbean Council Salons 11/1211:30 am – 12:30 pm Asia-Pacific Council Salon 2111:45 am – 1:00 pm CONCURRENT SESSIONS

CM04 An Ethical Odd Couple? Trademarks and Bankruptcy Hall 1CM05 Pulling Down Barriers to Entry: Spotlight on the People’s Republic of China Hall 2CM06 Europe: Possible Threats Arising from Dormant Marks Hall 3IM02 Alcohol: Potholes in the Road to Global Marketing and Advertising Hall 6WM02 Similarity in a Global Context Hall 10

1:15 pm – 3:15 pm LUNCHEON TABLE TOPICS Roof Garden Lobby1:15 pm – 3:15 pm COMMITTEE MEETINGS Level 2

ACEC: East Asia & Pacific Subcommittee Salon 21Enforcement: Monetary Remedies Subcommittee Salons 13/14INTA/ASIPI Conference 2010 Project Team Room 43Leadership Meeting 2008 Project Team Room 42LRC: Europe & Central Asia Subcommittee Room 56LRC: Pharmaceuticals Subcommittee Salons 11/12LRC: U.S Subcommittee Hall 6NTM: East Asia & Pacific Subcommittee Salon 19NTM: Latin America & Caribbean Subcommittee Room 29NTM: Middle East, Africa & South Asia Subcommittee Room 28Panel of Neutrals Halls 4/5The Trademark Reporter ® Committee Hall 7

3:30 pm – 4:45 pm CONCURRENT SESSIONS CM50 Universal Efforts to Combat Counterfeiting Hall 1CM51 Geographical Indications and Developing Countries Hall 3CM52 Middle East: Brand Protection in Difficult Times Hall 6CM53 A Tale of Two Trademarks: Trademark Protection in Common Law and Civil Law Systems Hall 2WM50 Resolving Disputes with ADR Hall 10

3:30 pm – 5:30 pm COMMITTEE MEETINGSACEC: Eastern Europe & Central Asia Subcommittee Salon 19Enforcement: Opposition & Cancellation Standards & Procedures Subcommittee Room 44INTA/WIPO Forum 2008 Project Team Room 42NTM: Europe & Central Asia Subcommittee Salon 21NTM: North America Subcommittee Hall 8Saul Lefkowitz Moot Court Competition Committee Room 43Treaty Analysis Committee Hall 9

interview: ambush marketing and 10 the olympics …we ain’t got no badges. we don’t need no...

Documents