BulletinThe Voice of the International Trademark Association May 15, 2009 Vol. 64 No. 10

IN ThIs Issue Trademark Concerns highlighted at International ICANN MeetingFrom March 1–6, 2009, Mexico City, Mexico played host to the 34th international meeting of the Internet Corporation for Assigned Names and Numbers (ICANN). The meeting was at-tended by over 1,200 participants from 100 countries, and featured decisions on emerging domain name system policy issues.

The meeting concluded with the ICANN Board of Directors passing a resolution to ini-tiate further policy discussions on trademark protection issues in ICANN’s Draft Applicant Guidebook (DAG) for new gTLDs.

Implementation Recommendation Team

Prior to its meeting in Mexico City, ICANN received public comments on its procedure for introducing new gTLDs. In the public com-ments the Internet community raised broad concerns over intellectual property, consumer protection, economic and technical issues in the process for introducing new gTLDs.

Attempting to address the trademark protec-tion concerns, the ICANN Board adopted a resolution requesting that the Intellectual Prop-erty Constituency (IPC) form an Implementa-tion Recommendation Team (IRT) to propose solutions to the trademark protection issues in the proposed Draft Applicant Guidebook.

IRT participants volunteer in an individual capacity, and several INTA members with ex-pertise in the interplay between trademarks and the domain name system are serving on the

IRT in an effort to better protect trademarks in the new gTLD process.

The IRT has issued a preliminary draft re-port, accessible at: www.icann.org/en/topics/new-gtlds/irt-draft-report-trademark-pro-tection-24apr09-en.pdf. The IRT was sched-uled to post its final report by May 24, 2009 for public consideration and comment. Trade-mark owners and interested parties can submit comments to the IRT by sending an email to: irtp-draft-report@icann.org.

The IRT recommendations will also be dis-cussed at the next public ICANN meeting, scheduled to take place June 21–26, 2009 in Sydney, Australia. Further consultations on new gTLDs have also been tentatively planned to take place in London and New York in July, 2009.

The IRT’s recommendations will be con-sidered by ICANN in its next revision to the Draft Applicant Guidebook. ICANN plans to publish its third iteration of the Guidebook in September 2009 before its public meeting in Seoul, Korea.

INTA members interested in new gTLDs or those planning to attend the next public ICANN meeting in Sydney, Australia should contact INTA External Relations Manager, Claudio DiGangi, at cdigangi@inta.org, for more information on IP-related events at the meeting.

2 AssociAtion newsWelcome New Members

Get Involved! Be Part of an INTA Committee

Emerging Issues Committee Explores New Frontiers

Member spotlightKelly McCarthy Mary Squyres

INTA Welcomes Delegation of European Law Students

6 FeAtures

Google AdWord Advertising and German Trademark Law: Is Use of a Third-Party Trademark as a Keyword Infringing?

Litigating Trademarks in Canada

9 LAw & PrActicePhILIPPINesIP Digitization Program

Amendments to Uniform Rules on Appeal

POLANDRegional Administrative Court in Warsaw Hands Down Decision in BOSS Case

suDANNew Trademark Regulations Issued

INTA President Richard heath speaks at 14th uNIFAB ForumINTA President Richard Heath (Unile-ver PLC) spoke at the Fourteenth Euro-pean Intellectual Property Forum held by Union des Fabricants (UNIFAB) in Paris on April 7–8.

Mr. Heath addressed an audience of more than 200 representatives of primar-ily French industry, private practice and public and governmental authorities on “Consumer Awareness: Is a European Campaign Possible?” His presentation included comments on the impact of the economic crisis on the fight against counterfeiting and why consumers buy counterfeits challenges.

From left: Benoît Battistelli (Director General of INPI, the French PTO), Mercedes Erra (chair of Euro RSCG Worldwide), Mr. Heath and Bruno Parent (Director General of the General Directorate for Competition Policy, Consumer Affairs and Fraud Control).

Representing Trademark Owners Since 1878May 15, 20092

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, Løje & WallbergVanessa Bouchara, Bouchara & Associés

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 & CounSELPresidentRichard Heath, Unilever P.L.C.

President electHeather Steinmeyer, WellPoint, Inc.

Vice PresidentGerhard Bauer, Daimler AG

Vice PresidentGregg Marrazzo, Kimberly-Clark Corporation

TreasurerToe Su Aung, BATMark Ltd.

secretaryBret Parker, Wyeth

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.

© 2009 International Trademark Association

Welcome New MembersA ONE SOLUTION, Jakarta, Indonesia; Adamson Jones, Nottingham, U.K.; Al-Bayan Legal Consultants Firm Consultants and Advocates, Amman, Jordan; Al-otaishan Intellectual Property & Technology Law Firm (AIPT), Riyadh, Riyadh, Saudi Arabia; Andrade & Andrade, Quito, Ecuador; Assured TM, Windsor, U.K.; Beijing Huize Chengxin IP Agency Co., Ltd, Beijing, China; Beijing Sino-American Tianlu Intellectual Property Agent Co., Ltd, Beijing, China; Big Fish Games Inc., Seattle, WA, U.S.; Biosensors International Group, Ltd., Newport Beach, CA, U.S.; Blum & Grob Attorneys at Law Ltd., Zurich, Switzerland; Borochov, Korakh & Co, Tel-Aviv, Israel; Brown Rudnick LLP, Boston, MA, U.S.; Cabinet Gilles Vercken, Paris, France; CareerBuilder, LLC., Chicago, IL, U.S.; Cervieri Monsuarez & Associates, Montevideo, Uruguay; Cormier Reiss, Paris, France; Cotters Patent & Trade Mark At-torneys, Sydney, NSW, Australia; DeLio & Peterson, LLC, New Haven, CT, U.S.; De Ranitz Advocatuur, The Hague, Netherlands; Directed Electronics Inc., Vista, CA, U.S.; Dobel, Porto Alegre, Brazil; Duane Morris LLP, Newark, NJ, U.S.; e/n/w/c Natlacen Walderdorff Cancola Rechtsanwälte GmbH, Vienna, Austria; Erik M Pelton & Associates, Falls Church, VA, U.S.; Fernandez Lacort & Associates, Buenos Aires, Argentina; Financial Planning Standards Board, Denver, CO, U.S.; Frankfurt Kurnit Klein & Selz, P.C., New York, NY, U.S.; GE Cheng & Co. Ltd., Beijing, China; Gilead Sciences Inc., Foster City, CA, U.S.; Global Regismark, San Rafael Escazu, Costa Rica; Goltsblat BLP, Moscow, Russian Federation; Guandique-Segovia-Quintanilla - GSQ, San Salvador, El Salvador; Guangzhou Panyu Huanan Motors Group, Guang-zhou, China; Helsinn Healthcare SA, Lugano, Switzerland; Henlin Gibson Henlin, Kingston, Jamaica; Holla Associates, Bangalore, India; Internet Crimes Group, Inc., Princeton, NJ, U.S.; Kemboy and Company Advocates, Nairobi, Ke-nya; Klein Solicitors, London, U.K.; Knobbe Martens Olson & Bear LLP, San Francisco, CA, U.S.; Lang & Rahmann, Duesseldorf, Germany; Langlet, Carpio y Asociados, S.C., Mexico City, Mexico; Law Firm Thanos Masoulas & Part-ners, Athens, Greece; Law Office Delia Enache, Bucharest, Romania; Law Office of Jason Zedeck, Los Angeles, CA, U.S.; Law Office of Michael E. Hall, Fairfax, VA, U.S.; Law Office of Omar Al Rasheed, Riyadh, Saudi Arabia; Legasis Partners, Mumbai, India; Lush Cosmetics, Poole, U.K.; MarkSecure, S.A., Managua, Nicaragua; McAfee & Taft, Oklahoma City, OK, U.S.; Mejia Es-cobar & Asociados, San Salvador, El Salvador; Metz Lewis LLC, Pittsburgh, PA, U.S.; Minervas Law Office, Hanoi, Vietnam; Nameshield, Angers, France; Ngwa-for & Partners, Yaounde, Cameroon; NIETO, Olivos, Buenos Aires Province, Ar-gentina; Nixon Peabody, Paris, France; Ogilvy Renault LLP, Toronto, ON, Canada; Okonjo, Odiawa, & Ebie, Lagos, Nigeria; Oladipo Okpeseyi & Co., Lagos, Nigeria; Oppenheim Law Firm, Budapest, Hungary; Orsingher–Avvocati Associati, Milan, Italy; Pacific Rim Advisory Council, Toronto, ON, Canada; Patrick Mirandah (Thailand) Co. Ltd., Bangkok, Thailand; Peter Bernasconi & Partners Law Firm, Lugano, Switzerland; Peter G. Mack, McLean, VA, U.S.; Pinto Ruiz & Del Valle, Barcelona, Spain; Powers Law Firm, Los Ga-tos, CA, U.S.; Public Interest Registry (PIR), Reston, VA, U.S.; Quarles & Brady LLP, Chicago, IL, U.S.; Reyes Fenig Asociados SC, Mexico City, Mexico; Richard A. Stuart Attorney-at-Law, Belize, Belize; RPmacau Intellectual Property Services Limited, Macao, Macao; Sanderson & Co, Essex, U.K.; Sara Eisner Richter, Esq., Atherton, CA, U.S.; Saraswat & Co., Agra, India; Shandong Qianhui Trademark Office Co., Ltd., Jinan, Shandong Prov-ince, China; SK Sport and Entertainment, London, U.K.; Stagio Assessoria em Propriedade Industrial Ltda., Joinville, Brazil; Suluk & Kenaroglu Law Of-fice, Istanbul, Turkey; Thorpe North and Western, Salt Lake City, UT, U.S.; Union Patent Service Centre, Hong Kong, Hong Kong; United Trademark & Patent Services, Beirut, Lebanon; Universidad de Monterrey, San Pedro Garza García, Mexico; Weeks, Kaufman, Nelson & Johnson, Solana Beach, CA, U.S.; Wragge & Co LLP, Munich, Germany; Wu & Partners, Attorneys At Law, Taipei, Taiwan

AssociAtion news

www.inta.org �Vol. 64, No. 10

tion is eligible to serve on a committee. Being on a committee is a great opportunity to work with other INTA member volunteers on important issues and projects and to further your own professional development.

The application form for the two-year committee term will be accessible online from June 1–30. For more information on com-mittees and to apply online, please visit www.inta.org/go/commit-tees.

emerging Issues Committee explores New FrontiersOne of INTA’s primary goals is to develop, advocate and help implement policies that will advance the interests of its members. INTA’s Emerging Issues Committee (EIC) serves two distinct pur-poses in furtherance of that objective—identifying and then ana-lyzing new and evolving issues of interest to brand owners.

Identifying New and Evolving Issues

One of the EIC’s greatest challenges is to keep on top of global new developments in order to identify those that should be exam-ined. To facilitate the evaluation of new issues and their assignment for substantive analysis as needed, the EIC recently created the Issue Identification Subcommittee.

INTA’s membership without question is one of the single most valuable resources for early notice of important emerging issues. In its efforts to encourage and facilitate INTA members’ involvement in this process, the Issue Identification Subcommittee is examining how to most effectively solicit, gather, analyze and share informa-tion concerning developing issues identified by INTA members and other sources. In the meantime, the EIC and the Issue Identifica-tion Subcommittee encourage you to submit for consideration any important new or evolving issues by email to Carla Schwartz, INTA External Relations Coordinator, Europe, at cschwartz@inta.org.

Analyzing Unique Topics

The second—but no less crucial—function of the EIC is to un-dertake substantive examination of developing issues that do not have a logical “home” within INTA’s other committees. In fulfilling this role, the EIC currently oversees three subcommittees: Indig-enous Rights, Design Rights, and Fair Use and Other Boundaries.

The Indigenous Rights Subcommittee is examining the interplay between the legal regimes that protect trademark and related IP rights and indigenous peoples’ claims to rights in cultural knowl-edge and expressions. The subcommittee faces real challenges in an-alyzing the relationship of those distinct rights and in attempting to identify common ground between conceptions of property that in many respects are fundamentally incompatible. This subcommittee

is monitoring national and international developments concerning the protection of indigenous rights, assessing the current scope of protection afforded under the laws of various jurisdictions and has been involved in discussions on those issues at the World Intellec-tual Property Organization in Geneva.

The Design Rights Subcommittee is examining the relationship between design rights and trademark rights and has established three task forces, to assess (1) the relative scopes of trademark and design rights in various jurisdictions; (2) the differences and rela-tive merits of filing systems as compared to examination systems for registration of designs; and (3) the possibility of gaining protection for design rights in the absence of registration.

The Fair Use and Other Boundaries Subcommittee comprises three task forces, whose respective goals are (1) assessing issues related to restrictions on unauthorized event-based, or “ambush,” marketing; (2) analyzing and comparing regulatory schemes for comparative advertising; and (3) assessing treatment of parody in the trademark context in jurisdictions around the world.

Given the unsettled and often controversial nature of the issues evaluated by the EIC’s subcommittees, a detailed understanding of how different legal regimes around the world treat a given issue is crucial to each subcommittee’s task. As with issue identification, INTA’s members are the greatest and most valuable resource for the EIC’s substantive subcommittees. Many of you may have been asked, either recently or at some time in the past, to respond to a survey on a topic being examined by the EIC. The EIC and its sub-committees thank those of you that have been solicited, and encour-age you to complete the survey and submit the results in a timely manner. Your thoughtful responses form the essential groundwork for INTA’s future activities and are critical to the review and analysis of the important and unresolved issues being examined by the EIC’s substantive subcommittees.

John c. nishi, Dickinson wright PLLc, Ann Arbor, Michigan, usA,vice chair of the emerging issues committee

Get involved! Be Part of an inTA Committee in 2010-2011!Make a difference! Join an INTA committee for the 2010–2011 committee term!

One of INTA’s most important assets is the talented and commit-ted group of volunteers who serve on its committees. Committees are central to INTA’s mission of representing trademark owners, and committee members take part in a variety of work, including advocacy, program planning, publishing and public education.

Any individual employed by a current INTA Member organiza-

AssociAtion news

Representing Trademark Owners Since 1878May 15, 20094

Kelly McCarthy is a partner at the law firm Sideman & Bancroft LLP in San Francisco, California, USA. Her daily duties include handling a wide range of intellectual property matters, with a focus on trademark prosecution and enforcement.

“I really enjoy working with clients to devise a filing strategy appropriate for their specific needs, bud-get and expected growth,” Kelly says. “On the flip side, when clients’ already well-established brands become threatened by infringers, counterfeiters and the like, I enjoy working with counsel all over the world to devise a game plan to protect the client.”

“Trademarks found me,” is the way Kelly describes her first involvement in the industry. This happy discovery occurred when she was a first-year associate in Silicon Valley, “right as the dot-com bubble burst.” “As luck would have it, a large client had just transferred a huge trademark portfolio to our firm, and the partner in charge was looking for a grunt to help with it.” Kelly ducked the layoff scythe by making herself indispensable. Today, “eight years and one firm move later, that client is still with me.”

Kelly became involved in INTA because a partner at her former firm told her, “If you are going to be a trademark attorney, you’d better join INTA or no one in the trademark bar will take you seriously. Plus they have great parties.” Those words were true. Kelly has enjoyed not only the parties but also

serving on the Academic Subcommittee of the Membership Services Committee. One of her favorite activities is the student project team, which she currently co-chairs. “It’s a great group, and we plan events for the student members of INTA, including panels on Careers in Trademark Law and receptions and events at the Annual Meeting.”

When she is not working on trademarks, Kelly spends her spare time at the local humane society. “I am very involved in animal rescue work, and I teach family dog-training classes three hours a week.” Those activities are, she feels, therapeutic. “The worst day at the office can be made much better when it ends with playing with puppies and teaching people how to establish a lifelong relationship with their dog.” In addition, Kelly works with “problem dogs” that have suffered trauma or abuse or that have behavior issues; her reward comes when one of these dogs is adopted by a loving family.

Something INTA Bulletin readers may not know about Kelly is that she is expecting a baby boy in August. “This will be quite an adventure, but I am sure it will be just like training a puppy, right? OK, maybe not.”

Ken taylor, Marksmen inc., chapel Hill, north carolina, usAintA Bulletin Features—Members, Benefits & Services Subcommittee.

Mr. taylor was also the author of the Member spotlight of erin Hennessy in the May 1, 2009 intA Bulletin.

Mary squyres began work in trademarks at Sears, Roebuck and Co. in 1982. “I did everything backwards,” Mary says—“started in-house, then went to a firm, started with international trademarks, and then went to U.S. trademarks, then back to international.” Today she is chair of the International Trademark Practice Group at the law firm Brinks Hofer Gilson & Lione in Chicago, Illinois, USA, and the majority of her work is focused on non-U.S. litigation.

“In most of the jurisdictions where we litigate there are civil code legal systems. Frankly, I think it is much more sensible, because it avoids the costly headaches of discovery.” Mary also manages all aspects of trademark portfolios for clients in non-U.S. jurisdictions.

Mary first became involved in INTA when she landed at Brinks in 1991. Previously, she had served on the board of directors of the International Anti-Counterfeiting Coalition (IACC) as the Sears rep-resentative. At INTA, she has worked on various committees over the years, including the Madrid Protocol, but has found speaking at the organization’s forums emphasizing international trademark work her most rewarding experience.

Ten years ago, Mary published Trademark Practice Throughout the World, a three-volume treatise that is a companion to Trademarks Throughout the World, which she describes as “the Bible for those of us

handling international portfolios.” Professor Nanette Norton from Loyola School of Law, a former partner at Brinks, is now coauthor for the annually updated treatise.

The most important issue in trademark law today is, Mary feels, counterfeiting. “I am gratified to see such an emphasis on it throughout the world,” she says. “It shows that all jurisdictions are now coming to recognize the value of trademarks in their economy and protecting their citizens.”

Mary’s favorite trademark is WATERFORD. “I know that it may soon become defunct, but it will always have goodwill for me.” She reminisces about the first significant gift from “my sweetie” of 25 years, Paul Leonard—a WATERFORD hurricane lamp “which still burns!” and in a real way led to “two handsome and smart Irish baby boys, Patrick and Christopher, who are now 22 and 23.” For Mary, the brand represents the quality and tradition of the Irish culture, a significant part of her family background, “even though some Welsh is in there, too—Go Irish!”

When not working on trademarks, Mary likes traveling, reading and knitting. “Most people probably don’t know that I really love to knit. It’s very relaxing. It satisfies my creative urges, and it provides great gifts for friends and family. I even knitted an afghan for Car-dinal Francis George of the Archdiocese of Chicago when he was ill a few years ago.”

Ken taylor, Marksmen inc., chapel Hill, north carolina, usAintA Bulletin Features—Members, Benefits & Services Subcommittee

MeMBer sPotLigHt

www.inta.org 5Vol. 64, No. 10

inTA Welcomes Delegation of European Law StudentsOn April 7, 2009, INTA’s New York headquarters hosted 20 stu-dents from the Rotterdam chapter of the European Law Students’ Association (ELSA) as part of the chapter’s Legal Excellence Course, an annual academic program for its top students.

This year’s Legal Excellence Course, which took place in New York, was a ten-day program focusing on intellectual property. The course included visits to law firms, IP organizations and New York University, providing students with insight into various aspects of IP law and careers in the field.

INTA staff, led by Senior Academic Programs Coordina-tor Carin Diep-Dixon, provided an overview of the Association and its membership, as well as an opportunity to work within specific trademark policy areas. Claudio Di Gangi, External Relations Manager for Internet and the Judiciary, explained the relationship between trademarks and the Internet and described current issues facing ICANN and trademark owners, particularly the expansion of new generic top-level domains and its potential ef-fects. Candice Li, External Relations Manager for Anti-Counterfeit-ing, presented an update on INTA’s role on the steering committee of the Global Congress on Combating Counterfeiting & Piracy and the current negotiations for the multilateral Anti-Counterfeiting Trade Agreement, along with a number of policy issues and public health concerns resulting from counterfeit products. INTA Execu-tive Director Alan Drewsen answered questions posed by students

regarding the Association’s activities, such as why INTA member-ship is beneficial for practitioners, as well as trademark law in gen-eral. Also taking part were Peg Reardon (Membership Manager) and Carla Schwartz (External Relations Coordinator for Europe), who gave an overview of INTA’s current work with Europe-focused committees and ongoing activities in Brussels, in particular the ne-gotiations to reduce Community Trade Mark fees.

INTA welcomes the oppor-tunity to meet with future IP lawyers and has been engaging in discussions with other ELSA chapters since mid-2008 within the framework of ELSA’s Inter-national Focus Programme on IP Law. In July 2008, INTA was represented at ELSA’s Sum-mer University in Cluj-Nap-oca, Romania, by Crina Frisch (Frisch & Partners, Bucharest), who gave a presentation on the protection of famous and

well-known marks and counterfeiting. In October 2008, INTA’s Europe Representative Office in Brussels welcomed a delegation of 20 students from ELSA Poland, during which Brussels-based INTA members Gordana Pavlovic (Cabinet Pavlovic) and Antonieta Ar-curi (Kirkpatrick SA) presented an overview on the basics of trade-mark law and on life as a trademark lawyer.

ELSA International is an independent, nonprofit, nonpolitical association run by and for law students and young lawyers who have demonstrated a commitment to international issues. ELSA Interna-tional has close to 30,000 student members in 36 countries.

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es PeRFORM esseNTIAL TRADeMARK ReseARCh WITh INTA’s

eXCLusIVe ONLINe PuBLICATIONs AND ResOuRCesAvailable free only to INTA members

searchable Online Databases

• Trademark Cancellations: International Practice and Procedures

• Country Guides: Basic Information on Trademark Registration Worldwide

• International Opposition Guide: Comparative Practice and Procedures

• Practitioner’s Guide to the Madrid Agreement and the Madrid Protocol

Additional Resources

• Country Portals

• Trade Dress Image Library

Publications

• INTA Bulletin

• The Trademark Reporter® (TMR)

Visit WWW.INTA.ORg/INFOPuB to start taking advantage of these online publications and resources.

AssociAtion news

Representing Trademark Owners Since 1878May 15, 20096

An issue hotly debated in various European countries is whether the use of a third-party trademark in identical or similar form as a keyword for Google’s so-called AdWord advertising constitutes a use of such trademark in a manner that the trademark owner is entitled to prevent under the European Trademarks Directive (Di-rective 89/104/EEC). In mid-2008, the Austrian Supreme Court and the highest French civil court, the Cour de Cassation, made references for preliminary rulings to the European Court of Justice (ECJ) on this issue. The ECJ has not yet rendered a decision on these matters.

In Germany, courts of first instance and courts of appeals were split in this regard. On January 22, 2009, the German Federal Su-preme Court (Bundesgerichtshof ) rendered three decisions in three different cases concerning AdWord advertising, which were fully published in mid-March. In two of these cases, the Supreme Court rejected the plaintiff’s claims. In the third matter, the Supreme Court stayed the proceedings and referred to the ECJ a question of interpretation of the European Trademarks Directive.

Case Law in Germany Before January 22, 2009

Until the beginning of this year, it was hotly disputed between different courts in Germany whether the use of a third-party trade-mark or other trade designation as a keyword for Google’s AdWord advertising constituted a relevant use of such mark or designation. Even if this question was answered affirmatively, courts were split with respect to whether such use led to a risk of confusion and, thus, infringement. While some courts took this view, others argued that there was no risk of confusion if the advertisements were clearly separated from the regular search results in Google, were marked as

advertising and did not themselves contain the third-party mark in question. Because of this conflicting case law, it was hoped that the recent decisions by the Federal Supreme Court would provide clear guidelines to courts in similar cases in the future.

Federal Supreme Court Decisions of January 22, 2009

The “pcb” CaseIn the first of the three cases, the defendant had used the abbre-

viation “pcb” (a common abbreviation for “printed circuit board”) as a keyword for AdWord advertising. The plaintiff owned the reg-istered trademark PCB-POOL. As the defendant had selected the keyword option “broad match,” its advertising was also displayed in cases in which a user inserted the plaintiff’s trademark as a search term in Google. There was no doubt that there was at least a high degree of similarity between the goods in question.

The Federal Supreme Court, unlike the Court of Appeals, held that it appeared doubtful whether the use of the keyword in this case constituted a relevant use of a trademark. According to the Supreme Court, this could not be assumed if the respective keyword was not repeated in the advertising itself and there was no other reference to it.

The Supreme Court further pointed out that there could be no infringement because “pcb” constituted a merely descriptive term, the use of which was permitted under the German Trademark Act. According to the Court, this did not change simply because the option “broad match” was selected. Even if this led to search re-sults that could include distinctive, protected marks that merely contained the descriptive term, the use of the descriptive term was permitted under the Trademark Act. As descriptive use was found here, the Court held that it did not have to refer the matter to the ECJ. The Supreme Court also rejected other claims for injunctive relief under the Trademark Act.

Google AdWord Advertising and German Trademark Law: is use of a Third-Party Trademark as a Keyword infringing?

Alexander Klett, reed smith, Munich, germanyintA Bulletin Features—Policy & Practice subcommittee

invest in your career at this must-attend event for non-attorney trademark professionals.

Trademark protection is one of the single-most important issues facing major corporations today. Whatever your expertise level, at INTA’s Trademark Administrators Conference, you will find cutting-edge educational sessions that provide comprehensive, practical and timely information on the latest trademark issues critical to your professional success and the organization you represent.

This program allows you to engage with clients and colleagues and gain trademark education while earning CLE credits. You’ll be able attend daily lunches and evening receptions, and find solutions to your toughest trademark problems in the Exhibition Hall.

Topics for discussion include:

• Due diligence in acquisition• Country law updates• Nontraditional trademark filings• Ten most common trademark mistakes• Ethics - trademark use investigations• Survival in the current economic climate• Review of emerging issues around the world• Business etiquette for the trademark professional

Visit www.inta.org/go/tmaconference2009 to learn more and register now!

TRADeMARK ADMINIsTRATORs

CONFeReNCeseptember 20 – 22, 2009

Chicago Marriott Downtown Magnificent Milechicago, illinois, usA

FeAtures

www.inta.org �Vol. 64, No. 10

The “Beta Layout” DecisionIn the second case to be decided in late January, the dispute con-

cerned an alleged infringement of a company name. The defendant’s corporate name was Beta Layout GmbH. Here again, the goods in question were circuit boards. The plaintiff had used the keyword “Beta Layout” for Google AdWord advertising. Use of that keyword as a search term in Google showed advertising by the plaintiff, even though, as before, the advertising did not contain the term “Beta Layout.”

After the defendant sent a cease and desist letter, the plaintiff filed for declaratory judgment, claiming that there was no infringement. In this case the Court could not find a merely descriptive use of the keyword. However, it still rejected the infringement action and granted the declaratory relief sought. The Court held that there was no risk of confusion under the provisions in the German Trademark Act on infringement of company names if the AdWord advertising results were displayed separately from the regular search results and if the search term itself was not part of the advertising displayed. In addition, the Court rejected the unfair competition law claims asserted by the defendant

The Federal Supreme Court did not refer this matter to the ECJ because the protection of company names is purely the object of German domestic law and not an issue of interpretation of the Eu-ropean Trademarks Directive.

The “Bananabay” CaseIn the third case, however, the Federal Supreme Court did not

finally decide the matter. This case concerned the use of the term “Bananabay” as a keyword for AdWord advertising in connection with adult products. The plaintiff owned an identical trademark. It claimed that the defendant’s use of “Bananabay” as a keyword con-stituted trademark infringement. The lower courts agreed.

As this case concerned neither a merely descriptive use of a mark nor the use of a company name, the Federal Supreme Court was obliged to make a reference to the ECJ for guidance on whether the use of the trademark as a keyword for Google AdWord advertising constituted a relevant use of the mark according to Article 5(1)(a) of the European Trademarks Directive. (That provision states that “[t]he proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade … any sign which is identical with the trade mark in relation to goods or ser-vices which are identical with those for which the trade mark is registered.…”)

In its referral, the Federal Supreme Court does not clearly state how it would decide the matter. The Court seems to indicate, how-ever, that it would lean toward deciding as it did in the “Beta Lay-out” case. In particular, the Court says that, given that the AdWord ads are clearly marked and separated from the regular search results and that there was no reference to the mark in the advertising it-self, it appeared far-fetched to assume that users would make a con-nection between the search term used and the advertising showing separately from the search results.

Summary

As the courts in Austria and France were slightly more prompt than the German Federal Supreme Court in referring to the ECJ the question of whether the use of a third-party trademark as a keyword in AdWord advertising is infringing, the ECJ decisions in these mat-ters can be expected in the summer of 2010. Despite the fact that the German Federal Supreme Court seems to lean toward assuming a permitted use rather than an infringement in the specific scenario of the “Bananabay” case, users of third-party trademarks should still be careful until the ECJ has spoken on the issue.

INTA’s eXAMININg euROPeAN TRADeMARK Issues AND DeVeLOPINg NeW sTRATegIes CONFeReNCeDECEMBEr 3 – 4, 2009 | VIeNNA, AusTRIA

Mark your calendars – Plans are underway for INTA’s annual December conference in Europe. This year’s advance-level conference, to be held at the InterContinental Hotel in the heart of Vienna, will feature practical information and recent trademark law developments in Europe, including:

• Optimizing your Trademark Portfolio in an Economic Downturn • Dilution after INTELMARK, L’Oréal v. Bellure and NASDAQ • Update from WIPO • Trademark Enforcement in the Balkans and Beyond • Comparative Advertising – What You Can and Won’t Get Away With • Designs and Nontraditional Trademarks • Cost-Effective Enforcement Strategies • U.S. and E.U. – A Special Relationship

Visit www.inta.org/go/education to learn more and register now!

FeAtures

Representing Trademark Owners Since 1878May 15, 2009�

Litigating Trademarks in CanadaArnold ceballos, Pain & ceballos LLP, Vaughan, ontario, canada

intA Bulletin Features—Policy & Practice subcommittee

Canada is a federation. Under its constitution, powers to legislate over various matters are divided between the federal government and ten provincial governments. This constitutional division of powers affects which court can hear trademark disputes. As a result, foreign trademark owners should be aware that, while both Canada’s Federal Court and its provincial courts have concurrent jurisdiction over most matters relating to intellectual property, there are some important differences between the two types of courts.

Canada recognizes common-law trademark rights based on use, including actions for passing off. In addition, Canada has a feder-ally enacted Trade-marks Act that provides additional remedies. In particular, Section 7(b) of that Act has codified the common-law action for passing off.

As set out in Section 20 of the Federal Courts Act, both the Federal Court and the provincial courts have jurisdiction to hear trademark disputes, including lawsuits alleging infringement of a federally registered trademark. However, under both the Trade-marks Act and the Federal Courts Act, only the Federal Court has jurisdiction to expunge or amend a federal trademark registration. The provincial courts can rule that a trademark registration is in-valid only as between the parties to a dispute, but they cannot order the registration to be expunged.

The Federal Court is a purely statutory court, with no inherent jurisdiction. This means that the court can hear only matters for which it has been granted jurisdiction. These include intellectual property, admiralty and income tax cases. The court cannot hear, for example, contract or tort cases, which must be heard by a provincial court. Provincial courts have exclusive jurisdiction with respect to any actions at common law, including a purely common-law pass-ing-off action. However, the Federal Court can consider matters outside of its jurisdiction, such as reviewing a relevant contract, if the matter is incidental to a dispute that is properly before it.

As a result of these constitutional requirements, actions brought in Federal Court should have a tie to the federal jurisdiction, such as being brought pursuant to the Trade-marks Act. On the other hand, an action for passing off along with a tort, such as interference with

economic relations or defamation, should be brought in a provincial court. It is possible in Canada to have parallel litigation occurring in both levels of court over the same matter. For example, an action for infringement and passing off may be brought in a provincial court, while at the same time a separate proceeding is brought in Federal Court to expunge the registration at issue. In some cases, one of the actions may be stayed while the other proceeds.

In either case, parties should be aware of issues regarding the po-tential limitation of actions depending on which court one chooses. The Trade-marks Act does not contain a limitation period for bring-ing an action. The Federal Courts Act, however, states in Section 39 that provincial statutes of limitation apply in Federal Court actions if the parties and cause of action are within a province. Otherwise, the Federal Courts Act sets out a six-year limitation period.

Despite the ability to bring most trademark cases in either the Federal Court or a provincial court, in practice most trademark liti-gation is conducted in Federal Court. There are a number of reasons for that. One of the most significant is based on the greater experi-ence that the Federal Court and its judges have in dealing with in-tellectual property cases. This can make it easier to litigate the case, because not as much time and effort will be spent trying to educate the judge about trademark law, as would be the case in a provincial court. Another advantage of proceeding in Federal Court is that an injunction granted in Federal Court will be enforceable across the entire country, which is not the case with an injunction granted by a provincial court. Historically, actions brought in Federal Court often have been heard more quickly, although lately they have been subject to greater delays.

While most trademark cases are heard in Federal Court, there is no requirement to bring them in that court; in fact, the Federal Court may not be the proper forum in some cases. Thus, a dis-pute that, for example, is limited to trademark issues in only one province or that involves misappropriation of trade secrets will not necessarily be the same as one involving infringement of a registered trademark across Canada when it comes time to initiate legal pro-ceedings in Canada. Foreign rights holders should therefore keep in mind these important differences in Canada’s courts and consider the various factors discussed above when considering where to com-mence proceedings in Canada.

Creating the Perfect Partnership: in-House and outside Counsel Relations During the global RecessionFor In-House and Outside Trademark CounselJune 12, 2009 | London, u.K.Hosted by BATMark Limited

This one-day program is filled with useful and practical information that will help you and your business counterparts understand each other’s needs and expectations in these challenging economic times.

• Learn what law firms can do to meet in-house expectations • See how other companies and firms are dealing with the troubled economy • Discover what companies are looking for from their foreign associates • Find out how law firms can provide excellent service to in-house clients • Gain useful tips on preparing winning responses to requests for proposals • Learn how outside counsel can get to know the business of their clients better • Hear about the type of work in-house counsel are outsourcing, including the possible

ethical issues, and how they select firms to do the work

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FeAtures

www.inta.org 9Vol. 64, No. 10

The Intellectual Property Office of the Philippines (IPPhil) was ex-pected to complete its digitization program for trademarks by the end of April 2009. This program includes trademark and patent information from 1931 to 2007. The digitization of patent infor-mation, which was completed on March 31, is undergoing testing. The digitization of trademark-related information, except for the Declarations of Actual Use, was partially completed in December 2008 and was uploaded to the trademark search system, one of the e-services available from IPPhil.

Because the trademark search system is still undergoing quality assurance testing, the user may still find some errors in the informa-tion reflected in the system. Therefore, the new TMSearch 3 system will run in parallel with TMSearch2, which will serve as a backup. (TMSearch2 was uploaded in December 2008, but users experi-enced some difficulties in using that system; hence, it will eventually be superseded by the improved version TM Search 3.)

IPPhil’s digitization program is expected to be launched within the next three months. The program is partly funded by the World Intellectual Property Organization (WIPO) under the Philippines–WIPO bilateral cooperation program for 2008 to 2010. It aims to provide an efficient system of storage, access to information and easy retrieval of documents by the public.

PhILIPPINesIP Digitization Program

contributor: editha r. Hechanova, Hechanova Bugay & Vilchez, Makati,intA Bulletin Law & Practice—Asia-Pacific Subcommittee;

Verifier: Anthony Peralta, Cochingyan & Peralta, Makati

IPPhil has introduced a number of innovations to make trade-mark searches and filing easy and more economical:

• In December 2004, IPPhil introduced TM Online, which al-lows for electronic filing of trademark applications and a 20 percent reduction in government fees. However, this mode of filing does not yet attract the bulk of filers.

• On February 16, 2009, IPPhil introduced the Trademark Elec-tronic Filing System, which allows applicants that are not us-ing TM Online to submit their applications in digital format. The Office has done away with the requirement to submit ten small facsimiles of the mark whose registration is sought, and is requiring instead the submission of one clear representation of the mark.

• Traditional filings of paper applications are still available.

An applicant can, therefore, choose to file in any of the above three modes; however, only electronic filing thru TM Online will result in a 20 percent reduction in government fees.

On February 9, 2009, Adrian S. Cristobal, Jr., Director General of the Intellectual Property Office of the Philippines (IPPhil), issued Office Order No. 12, Series of 2009, entitled “Amendments to the IPO Uniform Rules on Appeal,” to streamline rules and procedures in resolving cases involving intellectual property rights. The Office Order took effect on February 24, 2009, or 15 days from its publi-cation on the IPPhil website and in newspapers of general circula-tion. The amendments are as follows:

• Interlocutory orders are not appealable to the Director General.• On meritorious grounds, a motion for extension for an additional

period of 15 days to file the appeal may be granted.• The number of copies of the appeal memorandum required to be

filed is reduced to two legible copies.• The requirement for the certification of non-forum shopping is

deleted.• If the appeal memorandum is filed and the requisite fee is paid,

but the memorandum is not accompanied by the decision and the proof of service to the adverse party and Bureau Director con-cerned, the Director General shall order the appellant to com-plete its submissions within five days from receipt of notice.

• All motions, except for motions for extension of time to file ap-peal or any pleading, shall be deemed submitted for resolution once filed.

PhILIPPINesAmendments to uniform rules on Appeal

contributor: editha r. Hechanova, Hechanova Bugay & Vilchez, Makati,intA Bulletin Law & Practice—Asia-Pacific Subcommittee;

Verifier: Anthony Peralta, Cochingyan & Peralta, Makati

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Visit www.inta.org/go/elearning to learn more and register today for these upcoming e-Learn-ing programs:

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LAw & PrActice

www.inta.org 11Vol. 64, No. 10

The Registrar General of Intellectual Property at the Sudanese Min-istry of Justice has issued a new trademark regulation, No. 1/2009, that will regulate the work process of trademark agents in the coun-try.

As of July 1, 2009, a power of attorney will need to be submitted when filing, registering or renewing trademarks, whether the agent is inside or outside the country. In addition, any document submit-ted in a language other than English or Arabic must be translated by an authorized translation office in Sudan.

Other items in the new regulation have been effective since April 6, 2009. These include, but are not limited to, the following:

• All powers of attorney issued outside Sudan must be legalized at the Sudanese Consulate in the country concerned. Legaliza-tion at any embassy other than that of Sudan is not acceptable.

suDANNew Trademark Regulations Issued

source: registrar general of intellectual Propertyat the sudanese Ministry of Justice

contributor: nada Zaitoon, Abu-ghazaleh intellectual Property news Agency (ag-IP- news Agency), Amman, Jordan; Verifier: Mohd Elhaj, Abu-Ghazaleh

intellectual Property (AgiP), Khartoum, sudan

If there is no Sudanese Embassy in the country concerned, the documents should be legalized at a Sudanese Embassy in the closest country.

• Lawyers acting as IP agents on behalf of clients domiciled with-in Sudan are only required to submit a simply signed power of attorney unless the action is a recordal of assignment, license and renunciation of filed application or opposition, wherein a notarized power of attorney would be required.

This is an update on the case published in the INTA Bulletin Vol. 63 No. 22 (December 1, 2008), in which the Supreme Administrative Court in Warsaw ruled that the matter concerning the trademark BOSS should be transferred back to the Regional Administrative Court for reexamination (Case No. VI SA/Wa 1483/08).

The case concerned the question of recognition of the trademark BOSS of Hugo Boss as a mark having a reputation, as well as recog-nition that use of the trademark BOSS on cheap cigarettes should be deemed detrimental to the reputation of that mark.

In its decision of February 6, 2009, the Regional Administrative Court dismissed the Patent Office’s decision of September 20, 2006, which had cancelled the trademark registration for BOSS LIGHTS, registered for cigarettes in the name of Reemtsma Cigarettenfabrik-en GmbH, and remanded the case to the Patent Office for reexami-

POLANDregional Administrative Court in Warsaw Hands Down Decision in BoSS Case

contributor: Anna Zakrocka, Patpol, warsaw,intA Bulletin Law & Practice—Europe & Central Asia Subcommittee;

Verifier: Dorota Komor, Komor Kosmala Legal Offices, Warsaw

nation. In accordance with the arguments set forth by the Supreme Administrative Court in its decision of May 9, 2008, the Regional Court ordered the Patent Office to reexamine the case and clearly indicate whether the reputation covered the company name Hugo Boss or the trademarks BOSS, and to indicate the particular pieces of evidence confirming the reputation.

The Patent Office will now have to reexamine the case. If it ad-mits that the reputation of the trademark BOSS was proved, it will have to indicate which particular pieces of evidence in the files shall be regarded as confirming the mark’s reputation.

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WWW.INTA.ORgVisit the INTA Bulletin on www.inta.org to download the current issue or to search issues from January 1, 2000 to the present.

e-Learning: ttAB BasicsJune 1 – 29, 2009Anywhere via the Internet

trademark Basics crash course for summer AssociatesJune 4, 11, 18 & 25, 2009New York, New York, USA

rounDtABLe: How the usPto treats Fraud in trademark ApplicationsJune 8 – 19, 2009Various U.S. citiesFor trademark administrators and paralegals

creating the Perfect Partnership: in-House and outside counsel relations in the global recessionJune 12, 2009London, UK

rounDtABLe: Madrid Protocol—A View from the united states July 13 – 24, 2009Various U.S. cities

trademark Administrators conferenceSeptember 20 – 22, 2009Chicago, Illinois, USA

Leadership Meetingnovember 11 – 14, 2009Miami Beach, Florida, USA

exhibitions and sponsorshipTo inquire about sponsorship or exhibition opportunities for INTA’s events, visit www.inta.org or email sponsorship@inta.org

MArK your cALenDArsMArK your cALenDArsINTA ROuNDTABLesThroughout the united states and Across the globe: Conveniently meet with colleagues and stay current on the hottest trademark issues

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INTA offers three types of Roundtables on a variety of topics:

• U.S. Roundtables (in various U.S. cities)

• Trademark Administrators Roundtables (in various U.S. cities)

• International Roundtables (in various international cities)

Learn more about at-tending and/or hosting INTA Roundtables at www.inta.org.