BulletinThe Voice of the International Trademark Association October 1, 2008 Vol. 63 No. 18

IN ThIs Issue Association Participates in Public Meeting on ACTA Treaty 2 AssociAtion news

India Professors and Association Representatives Visit INTA

INTA Bulletin Board

Member spotlightJochen Pagenberg Sheldon Burshtein

4 FeAtures

When Does the Doctrine of Foreign Equivalents Apply?

5 LAw & PrActiceANDeAN COMMuNITYFinal Approval Given to Amendment to Decision 486

ARGeNTINATrademark Disclaimers in Argentina

BRAZILFederal Appeals Court Rejects Special Protection for Famous Marks in Abstract

euROPeAN uNIONThe Boomerang Case and the Importance of Respecting Procedural Rules

GeRMANYGeography and Trademarks: When Size Matters

IRANNew IP Law to Take Effect in Early 2009

LIThuANIADisclaimer in Trademark Registration vs. Copyright

Unilateral Consent to Use Trademark as Company Name Deemed Irrevocable

PORTuGALNew Industrial Property Code Comes into Force

TAIWANGuidelines for Evaluating Penalties for IP-Related Offenses

Taipei High Administrative Court Confirms Consumer Recognition of B & Q

Draft Amendment to Trademark Act Broadens Types of Acceptable Applications

uNITeD KINGDOMRevamp of Procedural Rules

2009 INTA MeMBeRshIP ReNeWAL hAs BeGuN!Please check your mailbox and email for your INTA membership renewal notice.

By renewing your membership now, you will maintain your eligibility to receive the member registration rate for the Annual Meeting in 2009!

Renew your membership online at www.inta.org/apps/renewal, or mail or fax your renewal payment to INTA’s Customer Service Department

Questions? Email customerservice@inta.org, call +1-212-768-9887, x 1730 or fax +1-212-768-1234

Did you know that you can add additional names to the online 2009 – 2010 INTA Membership Directory?

One of the best ways to promote your organization is to include additional directory listings (ADL) in the Membership Directory:

1. Members are eligible to add up to 5 additional names for a fee of US$200 per name.

2. The names will be listed in the online directory and also the print Membership Directory to be published in 2009.

3. Please use the renewal process to add names to your listing.

INTA and representatives from the Interna-tional Chamber of Commerce’s (ICC’s) Busi-ness Action to Stop Counterfeiting and Piracy (BASCAP) initiative participated in a public meeting organized by the Office of the U.S. Trade Representative on September 22, 2008, calling on all negotiating governments of the Anti-Counterfeiting Trade Agreement (ACTA) to work towards significantly strengthening in-ternational guidelines and standards that would lead to more effective national IP enforcement regimes.

INTA and ICC stressed the risks to econom-ic development, consumer safety and interna-tional trade from the worldwide proliferation of counterfeiting and piracy. The groups reiter-ated that the essential aim of ACTA negotiating parties must be to establish laws and systems sufficient to reduce IP theft. To date, efforts by legitimate businesses and law enforcement officials have not kept pace with criminals; ex-isting international IP enforcement standards have not sufficiently empowered governments to tackle the problem currently eroding intel-lectual capital and economic growth.

INTA and ICC have coordinated more than 20 industry associations worldwide—many of which are located in ACTA negotiating coun-tries—to provide informal input to the treaty-negotiating process. Collectively, businesses have attempted to provide a common, global perspective on topics including recommenda-tions on the agreement’s general framework as

well as considerations for border measures and civil enforcement.

Given ACTA’s importance, INTA and ICC have encouraged the negotiators to stay true to their announced objective to significantly deter IP theft. “We believe this can be accomplished only if the negotiating countries take a compre-hensive approach to creating ACTA and devote the necessary time and resources to ensure that it becomes a truly higher standard for govern-ments,” said INTA Executive Director Alan C. Drewsen. “We remain optimistic that ACTA will become a reality and raise the profile and the protection of trademarks.”

ACTA has enormous potential to raise the global bar on IP protection, and ICC Secretary General Guy Sebban has welcomed the progress of the negotiating parties, though he cautioned that “in order to be relevant, ACTA must de-liver significant improvements over existing multilateral guidelines by establishing stronger international standards for government perfor-mance on intellectual property enforcement.”

INTA and ICC BASCAP appreciate the USTR’s efforts to hold a public forum on the negotiations—which had included only offi-cials from the participating countries and for which draft texts have yet to be released—and stand ready to provide further expertise to the negotiations.

For more information, contact INTA Ex-ternal Relations Manager, Anticounterfeiting, Candice Li at cli@inta.org.

Representing Trademark Owners Since 1878October 1, 20082

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

ChairKay Rickelman, Spoor & Fisher

Vice ChairJanice Housey, Latimer, Mayberry & Matthews

Feature Articles: Members, Benefits & ServicesMary Donovan, Donovan & Yee LLPJoan Pinaire, Realogy Corp.

Feature Articles: Policy & PracticeGuy Heath, NabarroMona Lee, DW Partners

Law & Practice: AmericasDaphne Maravei, Blake, Cassels & Graydon LLPWalter Palmer, Pinheiro Palmer Advogados

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

Law & Practice: Europe & Central AsiaSusie Arnesen, Sandel, Loje & WallbergVanessa Bouchara, Bouchara & Associes

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

INTA BulleTIN sTAffExecutive Director Alan C. Drewsen

Director, Publishing Randi Mustello

Managing editor, INTA BulletinJames F. Bush

Associate editor, INTA BulletinJoel L. Bromberg

Designer Jesse Riggle

oFFiCErS & CounSELPresidentRhonda Steele, Mars, Incorporated

President electRichard Heath, Unilever P.L.C.

Vice PresidentHeather Steinmeyer, WellPoint, Inc.

Vice PresidentGerhard Bauer, Daimler AG

TreasurerGregg Marrazzo, Kimberly-Clark Corporation

secretaryToe Su Aung, BATMark Ltd.

CounselD. Peter Harvey, Harvey Siskind LLP

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication.

For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org.

INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.

© 2008 International Trademark Association

INTA Bulletin BoardBryna Scott has joined FlasterGreenberg in Philadelphia, Pennsylvania, USA.

Tiffany Trunko has been appointed global head of the Trademark Department at Pfizer Inc., New York, New York, USA.

The INTA Bulletin Board announces job changes or other significant career news about individuals who belong to INTA member organizations. Submit items to bulletin@inta.org.

india Professors and Association representatives Visit inTAOn August 7, in collaboration with the U.S. Department of State, INTA hosted a del-egation of Indian law professors and IP association representatives. The purpose of the delegation’s visit was to learn more about INTA’s activities and functions and to help foster relationships between organizations.

Peg Reardon, Manager of Membership Development, showcased the volunteer-led nature of INTA and the Association’s evolution over its 130-year history. Claudio DiGangi, Exter-nal Relations Manager, Internet & Judiciary, briefed the delegation on the performance of the Internet Corporation for Assigned Names and Numbers in regard to its governance of issues affecting trademark rights on the Internet. Candice Li, External Relations Manager, Anticounterfeiting, highlighted anticounterfeiting as one of the Association’s highest priori-ties and outlined the activities of the Anticounterfeiting & Enforcement Committee and INTA’s partnership with the Global Congress on Combating Counterfeiting and Piracy. Delegation members also received briefings on recent INTA activities and policy work, focusing on Asia and the Middle East.

INTeRNATIONAL fORuM ON ANTI-COuNTeRfeITING: PRACTICAL sOLuTIONs TO VexING PROBLeMsDecember 4 – 5, 2008 | Hilton Arc De triompHe Hotel | pAris, FrAnce

Global counterfeiting is a multi-billion dollar haven for criminal networks and organized crime, growing at a fevered rate. What was once thought to be limited to only luxury goods is now a massive and increasing worldwide dilemma which ignores national boundaries and has spread throughout various industries, impacting virtually every consumer product imaginable. To learn how to effectively fight this growing concern, join INTA as counterfeiting experts discuss:

• The Fire Fight In France: Implementation of the Enforcement Direc-tive and Amendments to the IP Code

• The Internet Inferno: Negating the use of Web 2.0 and mobile tech-nology by counterfeiters

• Being in the Hot Seat: Ways to make the pirates pay – Proceeds of crime in the UK and Landlord tenant liability in the U.S.

MARK YOuR CALeNDAR AND VIsIT WWW.INTA.ORG/GO/eDuCATION fOR MORe

INfORMATION!

IN ThIs ReD-hOT fAKe MARKeT…IT’s TIMe TO fIGhT

fIRe WITh fIRe!

AssociAtion news

www.inta.org 3Vol. 63, No. 18

Dr. Jochen Pagenberg is a founding partner of Bardehle Pagenberg, one of the leading IP boutique firms in Europe. The firm has offices located in Munich, Düsseldorf, Paris, Alicante and Barcelona.

Five years after being admitted to the bar, Jochen teamed with a two of his longtime friends to launch Bardehle Pagenberg. He had two goals: that he have the freedom and flexibility to continue his academic work and that the firm have an international presence. He reflects: “I had regarded my ac-tivity as an attorney from the beginning as an ideal possibility to combine scholarly work and practice, and I always wanted to contribute to the development of law.” In the early days, Jochen says, he never dreamed the firm would enjoy such prominence; but thanks to a couple of landmark cases—one a patent case in the airline industry, the other a copyright case concerning the popular French comic-book character Asterix—the firm was capitulated into the limelight. Phenomenal growth soon fol-lowed, and today the firm has 70 attorneys covering all fields of IP law.

The emphasis in Jochen’s own practice is on patent and trademark litigation and licensing. In 2007, he was nominated as Germany’s leading lawyer for trademark legal expertise and Germany’s highest-ranking lawyer for patent expertise. Jochen has written more than 80 articles on many as-pects of IP law, as well as five books and numerous case notes. He feels that “only specialized judges

should decide cases in the field of IP law, which, in my opinion, is the only guarantee of quality and consistency.” His scholarly work is also manifested in his many years of lecturing at several universities such as the CEIPI at Strasbourg; the Franklin Pierce Law Center in Concord, New Hampshire; Alicante University; and the Munich Intellectual Property Law Center, the International Master program of the Max-Planck-Institute in Munich.

Jochen has contributed tremendously to INTA in his over 20 years of service, most recently as chair of the OHIM Subcommittee. Of his involvement he says, “INTA work widens the horizon considerably and often provides a fascinating discourse on comparative law free of charge, which is very useful for the practical daily work. Of course, in addition you will always meet interesting people and establish valuable professional relations.”

Away from the office, Jochen indulges in his passion for water sports. Because he lives near a lake in Bavaria, he is able to fully enjoy a number of outdoor activities, such as sailing, windsurfing, diving and swimming. His dream is to have a dog that would love the water as he does, like a Retriever or a Labrador; but his busy schedule, with lots of travel involved, currently does not allow for keeping a pet. His family members also lead busy lives, with his wife being a patent judge and his son studying at a technical university, so Jochen probably will wait until he retires before this dream comes true.

By: rosemary Brkopac, BD-BrandProtect, Mississauga, ontario, canada, intA Bulletin Features–Members, Benefits & Services Subcommittee

sheldon Burshtein As a lawyer with a diverse background in architecture and engineering, Sheldon Burshtein was drawn to intellectual property law. His practice as a partner of Blake, Cassels & Graydon LLP in Toronto, Canada, includes all aspects of IP and technology law, but Sheldon especially enjoys working with trademarks because he believes “they bring you closest to people and the marketplace.”

Although he has done work in virtually every industry, Sheldon particularly enjoys the sports, entertainment and media side of his practice. From Blake’s offices overlooking the Rogers Centre and the Air Canada Centre, he reflects on challenges like aligning interests in the sports industry, such as those of the sanctioning bodies and leagues, teams, players, facilities, broadcasters and sponsors, in situations where branding issues have significant value.

Given that he handles significant Internet, e-commerce and related work in the context of trade-marks, Sheldon notes with interest the evolution of the Internet from “a culture that was initially dismissive of trademark rights.” He says, “Although significant strides have been made to impose trademark law on Internet activity over the last decade, there is still far to go at a practical level.”

Away from the office, Sheldon puts his architectural background to use, as illustrated by a project where he designed and built a fully functioning 1950s diner in the basement of his home. He has

been known to dispatch a vintage convertible Cadillac to pick up friends, including INTA members, for an evening of food, 1950s music and fun in his Hillhurst Diner, which features 1950s décor, a soda fountain counter, a booth with a jukebox and genuine diner fare at 1950s prices.

Sheldon has been a tremendous contributor to INTA for more than 25 years, during which time he has held membership on many committees. He sat as a member of The Trademark Reporter ® (TMR) Editorial Board and was the first Canadian contributor to the Canada section of the TMR’s International Annual Review. The driving motivation behind his longtime commitment to INTA is his belief that it is important to give back to the profession, and Sheldon gen-erously acknowledges that his participation has resulted in his receiving more than he donates, especially in the way of the rich and rewarding friendships he has formed over the years.

By: rosemary Brkopac, BD-BrandProtect, Mississauga, ontario, canada, intA Bulletin Features–Members, Benefits & Services Subcommittee

MeMBer sPotLight

Representing Trademark Owners Since 1878October 1, 2008�

When Does the Doctrine of Foreign Equivalents Apply?

As our world becomes more and more interconnected, it is inevi-table that companies will seek to protect marks that consist of—or contain—foreign-language words. This raises interesting questions about how we compare a mark in two different languages. Can the two be confusingly similar?

In the United States, when determining whether an application for a foreign mark should be issued, the U.S. Patent and Trade-mark Office (USPTO) has relied on the “doctrine of foreign equivalents.” Under this doctrine, the USPTO will elect to translate the foreign mark first, and then compare it to other marks. The doctrine is not always ap-plied, and is limited to circumstances where American consumers would be likely to translate the term in their heads. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondée en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005) (“The doctrine should be applied only when it is likely that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.’”)

When to Apply the Doctrine

If the doctrine is to be applied only when American consumers are likely to translate the term in their heads, the first issue to ad-dress is what constitutes the relevant public whose knowledge of the foreign language might lead them to translate—or not trans-late—the foreign term. Is it the average American, or the average American with knowledge of the foreign language? For the Trade-mark Trial and Appeal Board (TTAB), it is the average American with knowledge of the foreign language. And as a result, the TTAB will more likely than not apply the doctrine.

For example, in In re Thomas, the TTAB indicated that the marks MARCHE NOIR and BLACK MARKET MINERALS were simi-lar and that the doctrine should be applied. 79 U.S.P.Q.2d 1021, 1025 (T.T.A.B. 2006). The TTAB found persuasive the fact that French was a common language. Indeed, for cases involving foreign language terms, the scope of “ordinary American purchaser” will necessarily mean the “purchaser who is knowledgeable in English as well as the pertinent foreign language.” In re La Peregrina Ltd., 86 U.S.P.Q.2d 1645, 1647 (T.T.A.B. 2008). It thus appears that for any analysis before the USPTO, when two marks are being com-pared, the automatic conclusion will be that the relevant public speaks the language in question, and that therefore the doctrine of foreign equivalents will apply.

Likelihood of Confusion

To overcome a finding of confusion, especially before the TTAB, the company with a foreign language mark will need to establish that even if two marks mean the same when translated, consum-ers would be unlikely to engage in a translation. In La Peregrina, the applicant attempted to argue that consumers would be unlikely to translate LA PEREGRINA into its English equivalent (“the pil-grim”), and instead would immediately think of a well-known pearl by that name. The TTAB found, however, that insufficient evidence

was submitted to show that the majority of the relevant public (bilingual Americans, or Americans with a knowledge of Span-ish) would not translate the term. Because there was not enough evidence to show that consumers would not translate the term, the TTAB concluded that “consumers of applicant’s goods would translate ‘la peregrina’ as ‘the pilgrim.’” 86 U.S.P.Q.2d at 1649.

Some applicants have been able to demonstrate that consumers are not likely to translate the foreign words by, for example, dem-onstrating that the words themselves have come to take on a mean-ing in English. This was the conclusion that the TTAB reached in an often-cited case involving the marks TIA MARIA (for res-

taurants) and AUNT MARY (for canned fruit). The TTAB conclud-ed that confusion was unlikely, as consumers would not translate the term TIA MARIA but would con-tinue to think of it in their minds in Spanish. The TTAB thus concluded that the mark TIA MARIA could

be registered, even in light of the prior trademark registration for AUNT MARY. In re Tia Maria, Inc., 188 U.S.P.Q. 524 (T.T.A.B. 1975). One year earlier, the TTAB reached a similar conclusion in Le Continental Nut Co. v. Le Cordon Bleu S.A.R.L., 181 U.S.P.Q. 646 (C.C.P.A. 1974). In that case, CORDON BLEU, even though it meant “blue ribbon,” was found not likely to be confused with BLUE RIBBON, because CORDON BLEU had a meaning of its own in the English language and that meaning was different from “blue ribbon.”

Confusion Between Two Non-English-Language Words

In some cases the question is whether two non-English words are likely to be confused. For example, in Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49 U.S.P.Q.2d 2018 (T.T.A.B. 1998), the TTAB determined that the doctrine should be applied, because the relevant consuming public did not need to be fluent in both languages “to readily understand the connotations” of the two marks in question: DUE TORRI (Italian for “two towers”) and TRES TORRES (Spanish for “three towers”). In applying the doctrine, the TTAB indicated that consumers who knew TRES TORRES wine and brandy might be confused by the use of DUE TORRI when used with wine. Id. at 2018. The TTAB does not al-ways apply the doctrine when both marks are in a foreign language. For example, in Safeway Stores, Inc. v. Bel Canto Fancy Foods, Ltd., the TTAB declined to apply the doctrine and translate the French BEL AIR and the Italian BEL ARIA, noting not only that the doc-trine was not required in every case but also that the doctrine need not be applied when the words in question “have more than one recognized meaning.” 5 U.S.P.Q.2d 1980, 1982 (T.TA.B. 1987).

Conclusion

As the global marketplace grows, there will be more and more applications filed to register marks that contain foreign-language words. Companies seeking to register non-English-language marks in the United States may find the doctrine of foreign equivalents applied to their applications. If so, they may be required to jus-tify why their foreign-language words are not confusingly similar to prior uses of the same or similar term in a different (typically, English) language.

By: Liisa M. thomas, winston & strawn LLP, chicago, illinois, usA, intA Bulletin Features–Policy and Practice subcommittee.

The author thanks Daniel Pozdol for his invaluable research assistance.

Under the doctrine of foreign equivalents, the examining office translates a foreign-language mark and then compares it to

marks in the home language.

FeAtures

www.inta.org �Vol. 63, No. 18

Unlike some other jurisdictions, Argentina does not expressly regu-late in its Trademark Law the disclaimer of the unregistrable com-ponents of a trademark. There is only one administrative rule on the matter, Disposition No. 70 of the Argentine National Institute of Industrial Property (INPI), which merely establishes the formalities required to request a disclaimer, be it voluntarily or in response to an office action.

As a result of such a limited regulatory framework, in practice, very few trademark applications include disclaimers at filing. More-over, only rarely are disclaimers required by the examiners during prosecution.

As a consequence, and despite the fact that the Argentine Trade-mark Law (Law No. 22.362 of December 26, 1980) expressly bars the registration of terms that are generic, descriptive or in common use at the time an application is filed, a considerable number of registrations contain generic terms.

A case in point is the trademark BUENACARNE, granted on April 11, 2008, under Reg. No. 2,224,257 for the full class heading of Class 29.

“Buenacarne,” an invented word meaning “good meat,” com-prises two Spanish words, buena (good) and carne (meat). The ap-

ARGeNTINATrademark Disclaimers in Argentina

contributors: raquel Flanzbaum and Manuel Alonso, Mitrani caballero ojam Abogados, Buenos Aires; Verifier: Claudia Serritelli, De las Carreras & Cha-

loupka, Buenos Aires, intA Bulletin Law & Practice–Americas subcommittee

plication had been filed without any disclaimer, but, upon request from the examiner, the applicant disclaimed the words “buena” and “carne” individually. The registration issued, but it is weak to the point of nonexistence, as the applicant relinquished the essential components of the overall mark.

Thus, the risk lies not in the INPI’s rejecting applications for lacking the appropriate disclaimers, but rather in its indiscriminate-ly accepting them. Applicants would be well advised to determine before filing whether the words in their marks have any meaning in the vernacular, and what, if anything, will be left of their marks if the words are disclaimed.

While in some countries disclaimer of both parts of a composite mark will still allow the owner to enforce rights against an identical mark, in Argentina—at least in some cases—the owner of such an “empty registration” might not even have the right to prevent the use of an identical mark.

In two decisions rendered on July 15, 2008 (Docket Nos. 33 W (pat) 90/06 and 91/06), the German Federal Patent Court held that a trademark that consists of a geographical indication (GI) and a de-scriptive business indication can nevertheless qualify for registration if the GI does not have to be kept free for general use by competi-tors because competition in that area is not likely to exist.

The decisions dealt with the name and logo GUT DARß for a farming estate (Gut means “farming estate”) located in the middle section, called Darß, of the peninsula Fischland-Darß-Zingst in the Baltic Sea.

The trademark applications for GUT DARß sought protection, inter alia, for agricultural products. Thus, the trademark could be considered to be a descriptive designation referring to goods origi-nating from a farming estate in the Darß region. In general, the fact that there is no other agricultural enterprise in the Darß re-gion would not be a sufficient argument for the registrability of the trademark, as German trademark practice recognizes the general interest in keeping descriptive designations free for future competi-tors. However, the Federal Patent Court, balancing mutual inter-

GeRMANYGeography and Trademarks: When size Matters

contributor: Martin Viefhues, Jonas rechtsanwaltsgesellschaft mbh, co-logne; Verifier: Roberto Kunz-Hallstein, Dr. Kunz-Hallstein

Rechtsanwälte/Law Offices, Munich

ests, emphasized the unique specific circumstances of this case.The Darß region is hardly more than 100 square kilometers, and

almost half of that area is covered by the farming estate Gut Darß, while most of the other half of the region is covered by forest. The remainder of the area consists of four little villages and beaches. Therefore, it is not possible that other agricultural enterprises could be established in the Darß region with a size that would qualify them as a Gut. Accordingly, the Court held that there was no need to keep the designation GUT DARß free for competitive use.

Furthermore, the Court held, GUT DARß was distinctive. Even those people who knew Darß as a geographic designation would re-alize that the overall combination GUT DARß referred to a specific enterprise. This conclusion was based on the fact that it has become common practice in certain business sectors to use company names consisting of a geographic designation and a business description, which are correctly interpreted as distinctive names.

Thus, companies located in small areas with a particular geo-graphic name have a good chance of registering their names as trademarks if the geographic name is combined with a business indication that creates a composite name. However, the scope of protection of such a trademark would be rather narrow and would neither create a right in the geographic term itself nor create a right in combination with a different kind of business indication.

LAw & PrActice

Representing Trademark Owners Since 1878October 1, 20086

Following the provisions of the TRIPS Agreement, the Brazilian Industrial Property Law affords special protection for famous trade-marks in all fields of activity. Once a mark is recognized as famous (or “highly reputed”), this status is duly recorded by the Brazilian National Institute of Industrial Property (INPI) and the mark en-joys special protection for a period of five years. However, according to the federal resolution in force since September 6, 2005, the rec-ognition of fame has high standards of proof and must be requested only within an opposition, infringement action or administrative nullity proceeding at the INPI.

This provision caused controversy among trademark specialists, some of whom argued that the recognition of fame could also be made through mere declaratory judgments in court, rather than only incidentally within infringement and nullity lawsuits.

In August 2008, the Brazilian Federal Court of Appeals in Rio de Janeiro rendered a relevant decision for trademark owners regarding the status of the trademark ABSOLUT as famous. According to the Court, fame is a result of public appraisal, and the recognition of this status should be based on the statutory procedures established by the INPI’s resolution, rather than on judicial pronouncements

BRAZILFederal Appeals Court rejects Special Protection for Famous Marks in Abstract

Contributor: Leticia Provedel, Veirano Advogados, Rio de Janeiro, intA Bulletin Law & Practice–Americas subcommittee;

Verifier: Rodrigo Borges Carneiro, Dannemann Siemsen, Rio de Janeiro

made in the abstract. In other words, the Court found that the re-quest for recognition of famous mark status should not occur in the absence of actual or potential infringement of trademark rights.

It is worth mentioning that if a request for recognizing a mark as famous is made within an infringement action before the state courts, the effects of such recognition are enforceable only between the parties to the litigation. For a judicial declaration of fame to be enforceable against all third parties and duly recorded by the INPI, the request must, under most circumstances, be made before the federal courts, with intervention of the INPI as a party to the lawsuit.

Brand owners should therefore seek recognition of the status of their marks as famous in Brazil within oppositions, nullity proceed-ings or infringement proceedings in order to achieve complete spe-cial protection.

By decision rendered June 25, 2008, in K. B. & UAB Restoranu Grupe FORTAS v. AB Ragutis (Case No 3K-3-160/2008), the Su-preme Court of Lithuania ruled that a component of a trademark that infringes an author’s copyright may not be disclaimed in the trademark registration.

The plaintiffs, K. B. and UAB Restoranu Grupe FORTAS, sued one of the oldest breweries in Lithuania, AB Ragutis, for copyright infringement. The plaintiffs additionally sought revocation of the defendant’s trademark on grounds of likelihood of confusion be-tween the trademarks and bad faith application.

K. B. created the mark FORTAS and transferred all copyrights to UAB Restoranu Grupe FORTAS, a restaurant services company; the latter company then registered FORTAS as a trademark for vari-ous catering services. UAB Restoranu Grupe FORTAS and AB Ra-gutis had signed a long-term cooperation agreement under which they both undertook to protect the reputation of the trademark FORTAS. AB Ragutis then registered a similar trademark for beer.

The Supreme Court rejected UAB Restoranu Grupe FORTAS’s claim to revoke defendant’s trademark registration on the ground of likelihood of confusion as the trademarks were registered for different goods and services. It also dismissed the claim that the application had been filed in bad faith, as the plaintiff and the de-fendant had entered into the long-term cooperation agreement. The Court noted that “when determining whether the application was made in bad faith one should take into consideration the factual circumstances at the time of submission of the application, but not circumstances that developed after that.”

Even though the Supreme Court remanded the case to the Court of First Instance for examination of the factual circumstances re-garding the claim of copyright infringement, it ruled that “when a component of a trademark infringes a copyright, said component

LIThuANIADisclaimer in Trademark registration vs. Copyright

contributor: rima stasinskaite, Law Firm Lideika, Petrauskas, Valiunas ir Partneriai Lawin, Vilnius;

Verifier: Inga Lukauskiene, Metida Law Firm of Reda Zaboliene, Vilnius

may not be disclaimed in the registration of the trademark as a dis-claimer does not eliminate the infringement of the exclusive rights of the author or any other owner of the copyright. A disclaimer to a certain component of the trademark means that nobody is en-titled to possess exclusive rights to this component. Registration of a trademark may be revoked in respect of some goods and/or services for which the mark has been registered, but not in respect of some components of the mark.”

This decision is significant, as the relation between copyright and disclaimer in the trademark registration was interpreted for the first time in Lithuanian case law. This is a final decision.

The Trademark Reporter is seeking contributions from practitioners and other trademark professionals, professors, and students, and is particularly looking to expand its coverage of international issues authored by international writers. Both INTA members and non-members may submit articles for publication.

Contact the Managing Editor at tmr@inta.org or visit The Trademark Reporter portion of INTA’s website at www.inta.org for more information on proposed article topics, submission guidelines, and deadlines.

The Law Journal of the International Trademark Association

UNITED STATES ANNUAL REVIEW

The Sixtieth Year of Administration of the

U.S. Trademark (Lanham) Act of 1946

Theodore H. Davis, Jr. Jordan S. Weinstein

Vol. 98 January-February, 2008 No. 1

®

LAw & PrActice

www.inta.org �Vol. 63, No. 18

On May 3, 1999, two individuals filed with OHIM an application for registration of the following figurative trademark.

Further to the filing, this trademark was assigned to Boomerang TV SA.

The company El Corte Ingles filed an opposition against the reg-istration of the applied-for mark based on the following earlier-reg-istered trademarks:

El Corte Ingles also argued that these trademarks were well known in Spain, Ireland, Greece and the United Kingdom.

In the course of the opposition procedure, the applicant restrict-ed the services in the application to: “cinema and recording studios, rent of videos, concourse (scattering), installation of television and

euROPeAN uNIONThe Boomerang Case and the importance of respecting Procedural rules

Contributor: Vanessa Bouchara, Cabinet Bouchara Avocats, Paris, France, co-chair of the intA Bulletin Law & Practice–europe &

Central Asia Subcommittee; Verifier: Darren Olivier, Bowman Gilfillan John & Kernick, Johannesburg, South Africa

radiophones, production of films.”El Corte Ingles’s opposition was rejected, and that decision was

confirmed by the Board of Appeals of OHIM and the Court of First Instance.

The opposition was rejected on procedural grounds, as the op-ponent failed:1. To prove the existence of its earlier rights and submit transla-

tions, in the language of the proceedings, of such marks; or2. To submit sufficient documentation to prove that the use of

the BOOMERANG mark was sufficient for the mark to have become well known.

The new facts and evidence that El Corte Ingles produced be-fore the Board of Appeals were rightly refused by the Board at its own discretion. New facts and evidence cannot be submitted to the Court of First Instance, as that court must assess the correctness of the Board’s decisions based on the same set of facts and evidence.

The Court of First Instance considered that the Board of Appeal was right in reviewing only the facts that met the requirements.

This decision confirms that the Court of First Instance strictly applies the rules regarding the production of evidence in opposition proceedings.

The Iranian parliament has approved the new IP law of Iran, which will take effect by January 22, 2009. The PTO currently is working on the relevant bylaws. The most important changes are as follows:

• Industrial designs will receive protection.• Trade names will be protected, even without registration.• A late payment fee will be introduced for trademark and pat-

ent renewal. • Trademarks will be vulnerable to cancellation by third parties

before the court after three years from the registration date as a result of non-use. However, trademarks will not be cancelled if it is proven that non-use is due to force majeure.

• New opposition procedures will be introduced with regard to trademark applications.

• A two-month time period will be provided in which to file a petition before the court against a PTO decision.

• Broader protection for IP owners against infringers and coun-terfeiters will be introduced.

• New restrictions on patents not allowed for registration will be introduced.

• There will be no time limit for third parties to file a cancella-tion action against a registered trademark before the court.

• Official fees will be reviewed every five years.

IRANnew iP Law to Take Effect in Early 2009

Contributor: Alireza Laghaee, Law Offices Dr. Ali Laghaee & Associates Inc. International, Tehran, Iran; Verifier: Manar Al-Ghezawi,

Abu-ghazaleh intellectual Property, Amman, Jordan

On August 14, 2008, after more than six months of negotiations, the Andean Community Commission approved Decision 689, which provides a mechanism allowing Andean Community mem-ber countries to modify certain articles of Decision 486 (the Com-mon Intellectual Property Regime for Andean countries) through national legislation.

The Peruvian government promoted the initiative, and on the first vote Colombia, Ecuador and Peru approved the Decision, while Bolivia was the only country to oppose it. See INTA Bulletin Vol. 63 No. 16 (September 1, 2008).

On the second vote, the countries’ positions remained the same, and therefore the Decision was adopted by absolute majority.

Article 1 of Decision 689 authorizes member countries to study and develop certain Decision 486 dispositions with regard to proce-dure, patents, trademarks, border measures, geographic indications and denominations of origin.

Regarding trademark matters, the Decision allows for multiclass applications, stipulation of time periods in order to fulfill formal requirements and the possibility of recording license or use agree-ments.

ANDeAN COMMuNITYFinal Approval Given to Amendment to Decision �86

contributor: Magali garcía ruiz huidobro, clarke Modet & co., Lima, Peru; Verifier: Luz Helena Villamil, Villamil IP Legal Services, Bogotá, Colombia

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Representing Trademark Owners Since 1878October 1, 20088

On June 17, 2008, the Supreme Court of Lithuania rendered a de-cision restricting the rights of the trademark owner to revoke his consent to use a trademark as a company name.

In UAB Solvex Baltic v. UAB Scandihouse (Case No 3K-3-335/2008 (S)), the owner of the trademark SCANDIHOUSE peti-tioned the defendant to change its company name. The parties had entered into a lease agreement under which, among other things, the plaintiff consented to the defendant’s use of its trademark SCAN-DIHOUSE as a company name and registration in the Register of Legal Entities. The defendant registered its name as UAB Scandi-house, but after a few years the plaintiff decided to terminate the lease agreement and consequently asked the defendant to change its company name, which the defendant refused to do.

The Supreme Court dismissed the plaintiff’s claim. It ruled that giving consent to use one’s trademark as a company name is not of the same nature as an assignment of rights to the trademark or the granting of a license to use the trademark. Nevertheless, when giving such consent the trademark owner accepts and confirms that the use of his trademark in the company name does not infringe his rights in the trademark. Such consent is a unilateral contract.

The Court held that once the defendant had received and imple-mented the plaintiff’s consent to use the trademark as the company name (i.e., it registered the name in the Register of Legal Entities), the plaintiff lost the right to revoke its consent unilaterally. The Court noted that the consent agreement did not include any pro-visions regulating its termination or validity, nor did it mention that the validity of the consent was linked to the validity of the lease agreement—that is, the consent lacked a provision stating that upon the occurrence of particular circumstances the defendant would have to change its company name.

Accordingly, the Supreme Court ruled that the defendant did not infringe the plaintiff’s rights of the trademark owner when it refused to change its company name, and it ordered the plaintiff to pay the costs of the litigation. This is a final decision.

LIThuANIAunilateral Consent to use Trademark as Company name Deemed irrevocable

contributor: rima stasinskaite, Law Firm Lideika, Petrauskas, Valiunas ir Partneriai Lawin, Vilnius;

Verifier: Inga Lukauskiene, Metida Law Firm of Reda Zaboliene, Vilnius

On August 20, 2008, the Taiwan Intellectual Property Office (TIPO) published the draft amendment to the Trademark Act of 2003. The changes to the existing Trademark Act were proposed in response to trademark practitioners’ and proprietors’ opinions and suggestions regarding the Act as well as Taiwan’s obligations under international treaties and agreements. The draft includes the revisions of 38 articles, augmentations of 23 articles and deletions of 8 articles.

The following notable changes are included in the draft:

• In an unprecedented move, the types of acceptable trademark applications will be broadened to cover all distinctive marks that can be represented graphically. According to Article 5 of the draft, motion marks, scent marks and hologram marks will be acceptable for registration. However, to be granted registra-tion, the marks must be able to be precisely and accurately rep-resented by symbols in the form of diagrams and/or writing.

• Exhibition priority rights will be enforced. In order to pre-vent a third party from registering a trademark displayed at an exhibition, an applicant that displays a mark at an exhibi-tion will be eligible to claim the exhibition date as the priority date when filing a trademark application bearing the displayed mark. This provision applies regardless of whether the exhibi-tion takes place in Taiwan or in another country. The trade-mark application must be filed within six months after the exhibition date.

• The licensing of trademarks will be split into exclusive and nonexclusive license categories.

• Applicants that unintentionally miss official deadlines for at-tending to the registration fees will be allowed to apply for restoration of rights.

According to the TIPO, the draft is subject to further amendment and is expected to become effective in approximately one year.

TAIWANDraft Amendment to Trademark Act Broadens the Types of Acceptable Applications

Contributor: Tony Chen, A & Finet International Patent & Law Office, Taipei; Verifier: Tzu-Nan Huang, Secure International Patent & Trademark Office,

taipei

In an attempt to adopt fairer and more appropriate penalties for intellectual property law violations, the Judicial Yuan, Taiwan’s gov-erning judicial body, promulgated Guidelines for Weighing Penal-ties for Intellectual Property-Related Offenses. The Guidelines be-came effective as of July 1, 2008.

These Guidelines apply to violations of the Trademark Act, the Copyright Act and IP-related provisions of the Fair Trade Act and the Criminal Code. In determining penalties, consideration will be given to the Guidelines’ purpose of deterring and punishing IP vio-lations and educating the public about IP protection. The factors to be considered in weighing penalties include (1) the offender’s back-

TAIWANGuidelines for Evaluating Penalties for iP-related offenses

contributor: Joseph s. Yang, Lee and Li, taipei,intA Bulletin Law & Practice–Asia-Pacific Subcommittee;

Verifier: Su-mei Lee, Deputy Director of Trademark Office, IPO, Taiwan

ground (prior conviction, education, life and work experience); (2) damage incurred by and/or profit obtained from the violation; and (3) the offender’s efforts to compensate the victim. Where a situa-tion calls for either an increase in or a reduction of the penalty—for example, where a repeat offense or a confession is involved—a max-imum margin of 15 percent may be imposed. The Guidelines also provide a formula for evaluating penalties for multiple offenses.

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www.inta.org 9Vol. 63, No. 18

The Portuguese Industrial Property Code published on July 25, 2008, comes into force on October 1, 2008.

The new Code includes several significant changes in the Por-tuguese IP law. Its general purpose is to simplify and speed up the procedures before the Trademark Office.

One of the most relevant and practical changes is that the fil-ing of periodical Declarations of Intent to Use (DIUs) is no longer required in order to keep a Portuguese trademark registration or an international trademark registration designating Portugal in force.

Further, the new law provides that trademarks for which DIUs were not filed in the past will no longer be subject to cancellation on this ground.

This specific change became effective immediately after publica-tion, on July 26, 2008.

Trademarks will still be subject to cancellation if they are not used during a consecutive period of five years.

Because of the high number of distinctive signs provided for in the previous Law, which in many cases led companies into error about how to properly protect their IP rights, business names and business signs will no longer be registrable. Upon request from the owner, existing business names and business signs will be subject to the rules established for logotypes.

PORTuGALNew Industrial Property Code Comes into force

Contributor: Paulo Monteverde, Raul César Ferreira (Herd.), Lda., Lisbon; Verifier: Elsa Canhão, A Tecnal, Lda., Lisbon

An important change for logotypes is that in the future specifica-tion of the goods and services to be covered will be mandatory. This change aims to clarify the scope of protection of logotypes, which has been the subject of some controversy over the years.

Several procedural deadlines have been reduced, including those concerning extensions of time to file oppositions, counterstatements or replies to provisional refusal decisions issued by the Trademark Office.

The filing of belated oppositions will no longer be admissible regardless of the reason why the opposition was not timely filed. However, it will now be possible to ask for proceedings to be sus-pended for a longer period of time. This is particularly relevant when the parties enter into settlement negotiations.

To make sure that the Trademark Office database provides ac-curate and updated information regarding the status of IP rights, whenever an appeal from a Trademark Office decision is lodged, communications between the Trademark Office and the Lisbon Court of Commerce should be made electronically.

On July 24, 2008, the Taipei High Administrative Court confirmed the Taiwan Intellectual Property Office’s (TIPO’s) decision accept-ing B & Q PLC’s opposition to the trademark application for BQ HOUSE! NATIONAL REAL ESTATE NET BEST QUALITY filed by National House Exhibition Limited Company. The deci-sion was based on the reasoning that broader protection should be provided to trademarks known by consumers (Case 97A/No. 880, July 24, 2008).

In February 2006, National House filed its trademark applica-tion, designating the following services:

• Real estate purchasing/selling and renting/leasing agency;• Connections of the global Internet for computer information;

and • Transmissions of computer terminal communications.

B & Q had registered its trademark B & Q in Taiwan and vari-ous other areas. It claimed that National House’s trademark would be likely to confuse consumers because of its similarity to B & Q’s trademark, as both marks contain the capital letters B and Q. The opposition was filed on that basis.

The TIPO pointed out that as the letters B and Q were signifi-cantly enlarged in the opposed mark, it was similar in appearance to B & Q PLC’s trademark. Moreover, both marks designated the provision of similar services, namely Internet communications. As the two marks were likely to cause confusion, the TIPO invalidated

TAIWANTaipei High Administrative Court Confirms Consumer recognition of B & Q

Contributor: Tony Chen, A & Finet International Patent & Law Office, Taipei; Verifier: Tzu-Nan Huang, Secure International Patent & Trademark Office,

taipei

the opposed mark in November 2007.National House appealed to the Taipei High Administrative

Court, arguing that the overall appearance of the two marks was distinctively different. The appellant also asserted that the TIPO compared the two marks based solely on the letters B and Q and completely disregarded other characteristics of the opposed mark. National House also pointed out that the TIPO’s decision effec-tively meant an approval of B & Q PLC’s monopolistic abuse of trademark rights for the letters B and Q.

The court concluded that the appearance and pronunciation of the two marks were similar and that the services designated under the two marks were highly related. Also, after reviewing the evi-dence, which included B & Q PLC’s worldwide trademark registra-tion certificates and marketing and advertising materials, the court confirmed that B & Q PLC had been using the mark B & Q as the company name to operate its business for almost four decades. In addition, the court confirmed that the trademark was internation-ally registered in many jurisdictions. The court reasoned that as the B & Q mark would be familiar to the relevant consumers, it should be afforded broader protection. As a result, the appeal was rejected.

The decision is subject to further appeal.

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www.inta.org 11Vol. 63, No. 18

From October 1, 2008, trademark attorneys practicing in the UK will be using a new set of procedural rules: The Trade Marks Rules 2008. The last time the rules were republished as a whole was in 2000, but they have been revised no less than seven times since then.

For global brand owners, there are two important changes:

• The opposition period has been reduced to two months from the advertisement date but is now extendable by a further month (this must be by an electronic application via the website of the UK Intellectual Property Office unless the Registrar permits otherwise). This change will allow the recent-ly introduced fast-track applications to proceed to registration in as little as three months. (INTA supported the two-month period without extension.)

• The requirement to order certified copies of priority ap-plications has been abolished except when such copies are expressly requested by the Registrar. This brings the UK into line with the practice at OHIM, where online checks of prior-ity claims have been made on its own initiative for some time. At present, the UK office only receives about 800 trademark applications claiming priority each year.

Significant changes have also been introduced to the proce-dures to be followed in contentious proceedings before the Of-fice, such as oppositions, post-grant invalidation proceedings and applications for revocation based on non-use. The most notable of these is that periods that were three months under the old rules will now drop down to two months or be set at the discretion of the Registrar. In the opposition procedure, the parties may now have a cooling-off period of up to 18 months, which comes in two installments of 9 months each. This extension to 18 months is ob-tained if both parties confirm that they are seeking to negotiate a settlement.

The UK Office will now have much greater powers to case man-age applications. Once a counterstatement has been filed within the two-month period, it is now for the Registrar to specify periods within which evidence and submissions may be made.

Non-use proceedings are also simplified. The proprietor still must file his counterstatement within the shortened period of two months, but he will be allocated a further period of at least two months for submitting the evidence of use. This considerably re-moves the pressure on proprietors who receive unexpected attacks on their trademarks.

In place of the previous rules permitting case management con-ferences and prehearing reviews, there is a new rule giving the Reg-istrar somewhat more flexible powers. There is a clear intention signaled here that the Office intends to be more efficient and expeditious going forward.

Because it is not uncommon for trademark proprietors to move away from the address they used when the application was filed, trademarks not infrequently are lost because the proprietor knew nothing about the proceedings that had been started. This problem

uNITeD KINGDOMrevamp of Procedural rules

contributor: Barbara e. cookson, Filemot technology Law Ltd, London, intA Bulletin Law & Practice–europe & central Asia subcommittee;

Verifier: Guy Heath, Nabarro LLP, London, co-chair of intA Bulletin Features–Policy & Practice subcommittee

has now been addressed by a completely new procedure for setting aside such decisions. If the proprietor was unaware of the decision, he can apply within six months of the decision date to have it set aside. This does, of course, considerably extend the period of un-certainty for a brand owner who is trying to clear the way to use a new mark. Accordingly, in proceedings of this type, account must be taken of any prejudice that may be caused to the other party to the original proceedings.

In order to comply with the Singapore Trademark Law Treaty, the provisions for alteration of time limits have been relaxed. All time limits may now be extended whether the application is made before or after the time limit expired. There is a schedule of time limits that are not flexible, and to get these extended the Office must be at least partially at fault. These are mainly time limits such as that for filing a notice of opposition or a counterstatement, which previously could not be extended at all. Late extensions must be requested within two months. First extensions of time for flexible time limits not involving another party will now be automatic. In contentious proceedings, the current standards for the application of the Registrar’s discretion are likely to continue to apply.

The official fees payable remain unchanged. Representatives will be expected to pay official fees more promptly. The grace period from the filing date of two months for payment of fees without loss of an application date has been reduced to one month. Representa-tives will also be asked to deal with classification objections more quickly than previously, as the minimum period for response has also been reduced to one month. This is a flexible time limit and can be extended.

Although anyone can act as a representative in trademark matters before the UK Office—whether legally qualified or not—applicants and parties to proceedings are required to have an address for ser-vice, which must be within the European Economic Area or in the Channel Islands for an application but is still required to be within the UK for other proceedings unless the Registrar otherwise directs. The Registry had proposed to permit anyone within the European Union to deal with it, but this met with strong resistance from the profession and there will be further discussions with the European Commission on this point. Meanwhile, ITMA, the professional body of qualified trademark agents in the United Kingdom, is hoping to persuade the Ministry of Justice that trademark practice should be a reserved activity, as it is in the United States.

The full text of the new rules, which are contained in Statutory Instrument No. 1797 of 2008, is available on the UK government website at www.opsi.gov.uk/si/. The UK Office will be holding sem-inars on the new trademark rules in autumn 2008 and details will be publicized on their website at ipo.gov.uk.

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rounDtABLe: internet enforcement— “who, what and where Are we to search?”october 20 – 31, 2008Various U.S. citiesFor Trademark Administrators and Paralegals

Leadership Meetingnovember 12 – 15, 2008Boca Raton, Florida, USA

international Forum on Anticounterfeiting:Practical solutions to Vexing ProblemsDecember 4 – 5, 2008Paris, France

Learned Professors trademark symposiumJanuary 9, 2009San Diego, California, USA

saul Lefkowitz Moot court competition• regional competitionfebruary �, 2009Various U.S. cities• national FinalsMarch 21, 2009Washington, D.C., USA

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