BulletinThe Voice of the International Trademark Association July 15, 2009 Vol. 64 No. 13

IN ThIs Issue 2 AssociAtion news

Creating the Perfect Partnership

Welcome New Members

INTA Requests Members’ Comments on USPTO Proposal to Restructure Class 9

Roundtable Roundup

Member spotlightDan and Janice Bereskin

6 FeAturesHow to Work with In-House Trademark Counsel

8 LAw & PrActiceeuROPeAN uNIONCFI Clarifies That Restitutio Relief Is Available for Appeal Deadlines

GeRMANYAmendment of German Trademark Act

TAIWANMaxim’s Catering Limited’s Famous Trademark Rejected for Registration

Ferrero Rocher Package as a 3D Trademark Has Acquired Distinctiveness

INTA Attends OhIM Administrative Board’s May session as ObserverINTA Board of Directors member Gabrielle Olsson-Skalin (Inter IKEA Holding Services SA) represented the Association in the public sessions of the OHIM Ad-ministrative Board and the joint Administrative Board–Budget Committee meetings, both held on May 5, 2009. INTA, along with AIM, BusinessEurope, ECTA, and MARQUES, enjoys observer status at OHIM Administra-tive Board meetings in Ali-cante.

The Administrative Board and the Budget Committee both consist of one represen-tative from each EU Member State (primarily represent-ing national trademark of-fices), one representative of the European Commission, and their alternates. The five NGOs joined WIPO and the Benelux Office for Intellectual Property, which already were entitled to attend OHIM Board meetings as observers.

Discussions dur-ing the May 5 ses-sions focused on issues addressed in the September 2008 Joint Meet-ing Conclusions of the Administrative Board and Budget Committee. That meeting discussed the introduction of a proposal to re-duce CTM appli-cation and registration fees (which took effect May 1), establish a Cooperation Fund of €50 million for projects related to harmonization between OHIM and national trademark offic-es, and distribute 50 percent of CTM renewal fees to national offices.

OHIM proposed a management board to ad-minister the Cooperation Fund by setting out a work program and overseeing project propos-als. The management board would comprise ex-

perts or special advisors from the business com-munity invited to evaluate proposals and advise the president of OHIM on the activities of the

Fund. (OHIM has since re-fined its proposal and issued a written consultation on an “Initiation Note for the Co-operation Fund,” which has been circulated to members and observers of OHIM’s Administrative Board and Budget Committee.)

The May meeting also ad-dressed the long-anticipated forthcoming review of the CTM and national trade-mark systems, scheduled to be launched by the European Commission this summer.

Before the public session on May 5, INTA and the other users’ organizations met with the Chairs of the

Administrative Board and Budget Committee, along with European Commission and OHIM representatives. A tour of OHIM’s Alicante of-fice followed.

In early June, INTA organized a meeting at its office in Brussels with the other observer organizations to assess the outcome of the Administra-tive Board meet-ing and the joint meeting with the Budget Commit-tee. The associa-tions decided to

produce a joint letter which was recently sent to Dr. Margot Fröhlinger (Director of the Knowl-edge-Based Economy Unit, Directorate Gen-eral for the Internal Market in the European Commission). The letter outlines the organiza-tions’ shared expectations for the forthcoming review along with a few key concerns related to the September 2008 joint agreement.

The next Administrative Board meeting will be held in November 2009.

INTA Representative to the OHIM Administrative Board Gabrielle Olsson-Skalin (Inter IKEA Holding Services SA) prepares for the Board’s May 2009 public meeting

Representing Trademark Owners Since 1878July 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

Creating the Perfect PartnershipMany in the legal profession view in-house and outside counsel as being at two ends of a spectrum. In an attempt to debunk this perception and to help create a healthy and mutually beneficial relationship between the two, seasoned attorneys presenting the perspectives of in-house and law firm decision-makers recently gathered at an INTA event to provide candid insights and advice on how to narrow the gap and to provide quality services that will keep clients happy.

Chaired by Célia Ullmann (Philip Morris International) and Joseph Norvell (Norvell IP llc), “Creating the Perfect Partnership: In-House and Outside Counsel Relations During the Global Recession,” was held in London on June 12, 2009, before an audience that rep-resented 34 different countries. Many from the law community attended this one-day event, which included presentations as well as an interview with an in-house counsel.

In a global scenario of cost-cutting and recession, clients want to get the best legal counsel and value for the money. This conference showed attendees that meeting the client’s needs, and possessing a strong understanding of its business as well as the direction in which it is headed, need to be at the top of your priority list.

In the first session, “Meeting In-House Counsel’s Expectations When Outside Counsel Budgets Are Tight,” moderated by Katrina Burchell (Unilever PLC) and presented by Dolores Moro (BATMark) and Michael Schaeffer (Harmsen & Utescher), in-house and outside coun-sel provided valuable information to help both work together toward a common goal. The bottom line was that communication, collaboration, cost-effectiveness and careful adherence to instructions were essential to achieving this goal.

Ms. Burchell, Tove Graulund (Zacco) and Paul Rawlinson (Baker & McKenzie) brought to light important issues related to farming out work in “Outsourcing Legal Work While on a Budget to Law Firms.” Keeping in mind the hard times, the session emphasized budgetary restraints that occur when obtaining in-house and external advice with time and related ethi-cal concerns.

The next session on “Preparing a Winning Response to an RFP (Request for Proposal) When Legal Budgets Are Being Slashed” was presented by Shelley Duggan (Procter & Gam-ble) and Mr. Norvell. The panelists suggested that firms preparing an RFP focus on getting to know the potential client, and underscored that the main reason companies float an RFP is to ensure that they obtain quality—not to save on costs. Obviously clients look at the fees, but equally important is the need for the trademark lawyer to be the “brand protector.”

David Stone (Simmons & Simmons) and Emma Stopford (GlaxoSmithKline) gave sage advice and practical tips on “Getting the Most from Foreign Associates.” In an effective ques-tion and answer format, the speakers provided valuable information on what in-house coun-sel is looking for, and what law firms need to do in order to get their business and keep them satisfied and well represented.

“How Outside Counsel Can Get To Know The Business Of Their Clients” emphasized ways to bond with your client. Ms. Ullmann and Scott E. Thompson (Greenberg Traurig LLP) explained that information can be tapped from public sources including the Internet, business news, legal news and information databases. They also suggested that it was a good idea to keep abreast of and identify industry trends.

The final presentation, “Providing Excellent Service to In-House Clients During Tough Economic Times,” by Verena von Bomhard (Lovells) and Eric L. McFadden (CGI Technolo-gies and Solutions Inc.) stressed that in tough times, providing legal advice was simply not enough to retain your client. However, they warned that counsel should guard against provid-ing overzealous assistance, such as setting up automatic reminders by flagging emails sent to the client. The idea is to be an assistant—not a nuisance.

The catchwords for the event were understanding, communication, collaboration and cost-effectiveness.

Overall the event was refreshing and funny. It also provided a rare opportunity to indulge in a heart-to-heart discourse with in-house counsel and to really get to know what they think, how they think and what they want. INTA plans to hold this event in New York in Spring 2010, so if you missed the program in London, you’ll have another opportunity to attend next March. Meanwhile, don’t miss the article “How to Work with In-House Trademark Counsel,” be-ginning on page 6 of this issue of the INTA Bulletin.

Gunjan Paharia, Zeus iP, new Delhi, indiaintA Bulletin Features—Members, Benefits & Services Subcommittee

AssociAtion news

www.inta.org 3Vol. 64, No. 13

INTA Requests Members’ Comments on usPTO Proposal to Restructure Class 9The U.S. Patent and Trademark Office (USPTO) recently submitted a proposal to the World Intellectual Property Organization (WIPO) suggesting the restructuring of Class 9 of the Nice Classification (Ninth Edition) into three separate classes. The proposal is expected to be included on the agenda of the upcoming Preparatory Working Group of the Nice Agreement, which will be held in October. (See www.inta.org/go/USPTOClass9Proposal and www.inta.org/go/USPTOClass9ProposalChart).

The USPTO reasons that, following the growth of the computer industry and the increased sophistication in the science and research fields, Class 9 has grown to an unwieldy size. The Office points out that Class 9 now includes items of very disparate natures, such as abacuses and sunglasses, and advocates that separating Class 9 into “more discrete subject matter classes” would allow for more efficient and logical anticipatory searching and facilitate the administration of trademarks in offices around the world.

Under the proposal, Class 9 would continue to include scientific, nautical, surveying, weighing, measuring, signaling, checking (su-pervision), lifesaving and teaching apparatus and instruments, and fire-extinguishing apparatus.

A new class would be created to encompass apparatus and in-

struments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

Another new class would include apparatus for recording, trans-mission or reproduction of sound or images; photographic, cinemato-graphic and optical apparatus and instruments; calculating machines, data processing equipment and computers; computer software and goods consisting of machine readable data and information; data car-riers and information carriers that are machine readable; and appara-tus and instruments for electronic telecommunication.

The USPTO has considered various options on how to number the new classes, and ultimately reasoned that the least problematic approach would be to add the classes as Class 50 and Class 51, leav-ing Classes 46–49 available for possible future service classes.

The USPTO has proposed additional changes and transfers to other classes, which are set forth in a separate, detailed list (www.inta.org/go/USPTOOtherClassProposals).

If you would like to receive a copy of the referenced documents, or if you wish to provide your input on this matter, please contact Carla Schwartz at cschwartz@inta.org as soon as possible. INTA welcomes your views and, pending responses received, may seek to arrange an interchange with the USPTO.

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 to attend daily lunches and 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.

early registration ends August 28, 2009.

TRADeMARK ADMINIsTRATORs

CONfeReNCeseptember 20 – 22, 2009

Chicago Marriott Downtown Magnificent MileChicago, Illinois, USA

AssociAtion news

Representing Trademark Owners Since 1878July 15, 20094

Roundtable Roundup

A November 2008 roundtable in Bucharest was sponsored by Andra Musatescu Law & Industrial Property Offices and took place at the State Office for Patents and Trademarks headquarters. Speakers included representatives of the Romanian PTO, Customs Office and Supreme Court.

Roundtables were held in several cities in Canada the weeks of January 19 and February 2 on “Trade-mark Modernization and the Act.” A total of more than 120 attendees met at events in Montréal (hosted by BCF), Ottawa (hosted by Gowlings), Toronto (hosted by Blake Cassels & Graydon), Calgary (also hosted by Blakes), Vancouver (hosted by Bull Housser & Tupper) and Halifax (host-ed by Boyne Clarke). The guest speaker at each of the roundta-bles was Lisa Power, Director of the Trade-marks Branch of the Canadian Intellectual Property Office.

Spoor & Fisher hosted a roundtable in Centurion, South Africa, on February 11, on practical implementation of the proposed amendments to the Trade Marks Act 194 of 1993 by the Intellec-tual Property Laws Amendment Bill 2007. Fleurette Coetzee, the Registrar of Trade Marks, was among the attendees.

The first INTA roundtable in Finland was held in helsinki on January 27. Sponsored by Benjon, the discussion focused on the protection of well-known marks. Speakers included Kaisu Korpua (Nokia Corporation) and Tuulimarja Myllymäki from the Finnish PTO.

H. K. Acharya & Company, India hosted a roundtable meet-ing product design and product packaging on March 10 in Ahmedabad. Topics discussed included registration and enforce-ment, and whether trademark law or design law provides greater protection.

A roundtable on “Definition of the Significant Target Public in Trademark Law” took place on March 12 in stuttgart. Hosted by Kleiner Rechtsanwälte, the event featured Prof. Dr. Anja Steinbeck, Director of the Institute for Intellectual Property and Copyright at the University of Cologne, who spoke about how to define the significant target public.

AssociAtion news

www.inta.org 5Vol. 64, No. 13

Trademarks have played a significant role in the lives of Daniel and Janice Bereskin, one of the few father-daughter teams of INTA. Dan is the founder of the Canadian firm Bereskin & Parr, where he has “lived” for over 40 years. Beginning his legal career as a patent attor-ney, Dan says that he drifted to trademarks almost by acci-dent. He soon found that his trademark work was at least as challenging and interesting as his earlier patent work, if not more so, and decided to stay.

One of Dan’s first trademark matters involved securing reg-istration for the term PARMA for meats. At the time, Dan knew nothing about the sig-nificance of Parma, Italy, and its geographic association with a certain type of ham. (In an interesting twist, the Cana-dian Federal Court of Appeal recently sustained the registration of PARMA on the basis that most Canadians are as uninformed about Parma as Dan was in the 1960s!) Things certainly have changed for Dan since then. He has traveled far and wide, often through INTA, and has met and made friends with people in the far corners of the earth. Dan generally brings his photography and/or cycling equipment with him, so he can spend time enjoying those hobbies wherever the road takes him.

Dan has been involved with INTA since 1965, when he attended the Annual Meeting in the Pocono Mountains of the U.S. state of Pennsylvania. He has remained closely connected to the Association over the years, serving on a number of committees, including The Trademark Reporter® Committee, where he originally served as the author of the Notes from Canada. In addition, he has served on the Association’s Board of Directors and as its Legal Counsel. Dan believes that the protection of well-known marks against counter-feiting and dilution is one of the more pressing problems for the profession to address today.

Dan is highly admired and respected professionally and is con-sidered one of the top attorneys in his field. However, perhaps no one looks up to him as much as the juniors whom he has mentored over the years. Dan has always made it a priority to ensure that these young people achieve personal satisfaction in their work, through exposure to cutting-edge issues and through interacting with other trademark professionals from whom they could learn.

It is certainly fitting that Dan inspired his own daughter, Janice, to follow in his footsteps. Janice started at Bereskin & Parr by work-ing in the mailroom during her university days. After her gradu-ation, she was given more responsibility at the firm, working her way up through the ranks. Ten years ago, Janice placed first in the Canadian trade-marks agent examination, and ultimately joined her father as a full-fledged member of the firm.

Janice was originally drawn to the field of fashion. She opted against pursuing a career in that field but has certainly kept up her interest. As with her dad, keeping fit is also one of Janice’s passions. Whenever work and family (a/k/a Kylie and Jake—her young chil-dren) allow, she is off running, spinning, playing tennis or lifting weights.

Janice first attended the INTA Annual Meeting in 2000. Since

Marie Lussier, Chitiz Pathak LLP, Toronto, Ontario, CanadaintA Bulletin Features—Members, Benefits & Services Subcommittee

Dan and Janice Bereskinthen, she has served on the Programs Committee and the Annual Meeting Project Team, including working on the 2009 Annual Meeting in Seattle. She also serves on the Young Practitioners Sub-committee. Janice constantly strives to create attractive programs

featuring important and rel-evant content and dynamic, provocative speakers.

Anyone who has seen either Janice or Dan in a social setting can truly say that they both radiate warmth and charm and genuinely enjoy connect-ing with others. Through their involvement with INTA, both have established close ties with many foreign associates and in-house counsel, on both professional and personal lev-els.

Dan says that if he were not practicing law he would enter-

tain the thought of being a writer of novels or screenplays. After all that he has witnessed over the years, and the many people he has met, it certainly would be entertaining to read a fictional account of an INTA Annual Meeting or a mystery involving trademark law.

Both Dan and Janice are extremely talented and versatile people, and the Association is certainly fortunate to have both of them as volunteers.

INTA’s

e-LeARNING PROGRAMsThe Perfect Solution for the Busy Professional

INTA’s e-Learning programs are a cost-effective and innovative way to sharpen your trademark knowledge and earn CLE credit. These internet-based courses are equipped with various interactive materials, and are ideal for a variety of professionals who want to learn trademark basics.

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

Trademark Trial and Appeal Board (TTAB) Basics e-Learning ProgramOctober 5 – 9, 2009

Trademark Basics e-Learning ProgramAugust 3 – 31, 2009

Madrid Protocol Basics e-Learning ProgramAugust 3 – 31, 2009 and October 5 – 9, 2009

memBer sPotLiGht

Representing Trademark Owners Since 1878July 15, 20096

how to Work with In-house Trademark Counsel

Trademark professionals, like lawyers in other fields, need to de-velop and maintain business to progress in their careers. Very of-ten, it is in-house counsel who evaluate the performance of outside trademark professionals and determine whether to engage new firms and trademark professionals. With this in mind, we asked several in-house counsel at different companies to respond to a series of ques-tions in order to provide some insight into how they use, select and evaluate outside firms and trademark professionals. Although some of our respondents asked that their comments be kept anonymous in accordance with company policy, the responses we received were informative and enlightening, and they should be of valuable assis-tance in developing and maintaining good trademark professional and client relationships.

Use of Outside Professionals

Reflecting what appears to be a common desire among compa-nies, a representative of Rubbermaid stated: “We prefer to handle as much as possible in-house to save money. We send out a project ba-sically only when we don’t have the resources in-house to handle the project.” One respondent of a large international consumer prod-ucts company who wished to remain anonymous explained that there are clear benefits to having individuals in-house and dedicated to a single client who handle matters whenever possible.

Other companies have identified specific projects that they con-sider best suited for outside counsel. Tiki Dare (Sun Microsystems) explained: “We use U.S. coordinating counsel as our agent for U.S. prosecution, international prosecution and most of our dispute work. We also use outside counsel for some domain name work and clearance projects. We use a non-attorney outside firm for renew-als. We believe this outsourcing model gives us the right balance of close, effective business partnering by a small team internally, expert outside counsel where needed and cost efficiencies.” Even companies that seek to do as much work in-house as possible may outsource such things as clearance and prosecution matters when necessary owing to limited resources.

Among the counsel responding to our questions, there appears to be a consensus that outside counsel should handle litigation. As Rob Doerfler (SVP Worldwide) explained, “I simply do not have the time or resources to follow each litigation matter.” Josh Burke (General Mills) concurred, advising that inter partes proceedings, litigation and non-U.S. prosecution were all handled by outside counsel.

Considerations in Selecting Outside Counsel

When asked what they look for when selecting outside counsel, different respondents cited different qualities, such as “experience,” “practical” and “having depth.” However, they all mentioned cost. And, depending on the industry, in-house counsel may even take into account potential outside counsel’s non-legal experiences.

For example, Martha Cecil-Few (Hershey) said that, especially for non-U.S. counsel, she may consider whether the potential counsel “actually go shopping.” Specifically, she will want to know whether they can identify infringing products or “identify products being sold by Hershey locally [and] bearing trademarks that our market-ing representatives have not yet told us about.” Mr. Doerfler read-

ily agreed: “I always appreciate when outside counsel advises me of counterfeit goods or questionable trademark use in the local mar-ket.” Michel Megelas (Blue Mountain Wallcoverings) said that his company looks at “the competence of the attorneys we are dealing with, not only from a legal perspective but from a business perspec-tive as well.”

Mr. Doerfler explained: “While costs are incredibly important in these considerations, I am more often concerned by the ability of outside counsel to discern our needs and to CLEARLY commu-nicate our position and options.” He acknowledged, however, that cost remains an important factor: “I will often look for midlevel associates and midsize firms that will provide me excellent legal support without the large firm costs.” An even more important consideration, Ms. Cecil-Few reasoned, was value. “If an expensive partner can give an answer in 15 minutes, while it would take a less expensive attorney an hour to provide the same answer, we would rather hire the more expensive partner.” Mr. Burke viewed quality of services as coming first, cost second. “[C]ost is not the deciding factor, but it is important. If someone charges a premium rate, we expect phenomenal service.”

Joe Quigley and Kevin Brown (Nike) spoke very favorably about being able to leverage outside counsel’s technology, such as an ex-tranet that allows for global access. This makes it much easier to understand the status of the company’s marks. The receipt of timely and accurate information is very important in ensuring quick en-forcement—for example, in dealing with counterfeit goods. Mr. Quigley and Mr. Brown were also of the view that having a good relationship took precedence over cost, though they acknowledged that they did like to use smaller firms that were good but less ex-pensive.

Many respondents described strategies that involve building strong relationships with multiple firms. For example, while Rub-bermaid prefers to have one major firm in each country that handles the bulk of the work in that jurisdiction, it also likes to have one or two secondary firms in case there is a conflict or a second opinion is needed. Ms. Cecil-Few said: “We prefer to work primarily with one firm in one country with respect to one type of legal matter. However, we also like to have a relationship built with other firms in case there is a conflict of interest with the first. We may also hire additional firms if we are looking for different areas of expertise.” An anonymous respondent from a U.S.-based company said his prefer-ence was to spread work among three U.S. firms, adding, “It keeps everyone on his or her toes.”

Marketing to In-House Counsel

We asked our respondents whether they mind when outside counsel with whom they have not worked ask to be considered for future projects. Ms. Dare said that, when searching for new coun-sel, “I prefer to initiate contact myself and will use my professional network to identify outside counsel and other vendors if I have new needs.” Mr. Doerfler was even more frank: “Any unsolicited brochures or marketing materials are thrown out/deleted without review.”

When a firm is looking for new counsel, INTA can be a helpful resource. Mr. Doerfler said he uses the Association’s Membership Directory to identify potential outside counsel and takes advantage of the opportunity to meet and speak with them at INTA events. Mr. Megelas implored potential counsel who were taking the trou-ble to introduce themselves to be prepared. Specifically, he recom-

Michael D. Andrews, Andrews Robichaud, Ottawa, Ontario, Canada, and James A. Dimitrijevs, Baker Hostetler, Cleveland, Ohio, USA. Both are

members of the intA Bulletin Features—Policy & Practice Subcommittee

FeAtures

www.inta.org �Vol. 64, No. 13

mended that a trademark professional offering his or her services “do a bit of research and present something that will…have some tangible results for our company.”

Several of our respondents stated categorically that they do not like to be approached by outside counsel with whom they have not previously met. “I mind being approached,” said Mr. Burke. “I meet new lawyers regularly through INTA and otherwise, and prefer to contact them if and when I’m looking for new counsel.” Mr. Brown was even more emphatic. “I HATE being approached by unsolicited outside counsel. I don’t like being hustled like a streetwalker at con-ferences—this drives me crazy.” However, one of our anonymous respondents conceded that he did not mind being approached by new counsel.

Firm Versus Individual Reputation and Ability

Most of our respondents regarded the reputation of the attorney doing the work as being more important than the reputation of the firm. Mr. Megelas allowed that “while under certain circumstances the reputation of the firm may be considered, the overriding factor will always be the reputation and competence of the actual lawyers involved.” At Nike, the actual counsel involved is the only determi-nation. As Mr. Brown put it, “We want the lawyer, not the name on the door.” Mr. Burke of General Mills also focuses on actual coun-sel. “Reputation of a firm doesn’t win a case for me.”

Performing the Work

When considering the specific experience of a particular attor-ney, in-house counsel seem to be most comfortable initially working with a partner-level lawyer who can see the big picture. Ms. Dare likes to work with someone “who is comfortable thinking creatively

about accomplishing a practical business result.” At some point, Ms. Cecil-Few wants to see the partner “begin passing that work along to less-experienced attorneys whom he closely supervises and edu-cates.” Mr. Doerfler elaborated on that point: “If I see a seasoned attorney handling perfunctory legal operations, it’s time to move the practice.” For Mr. Megelas, there is a distinction between expe-rience and competence: “‘Less experienced’ does not translate into ‘less competent’; therefore, I encourage the use of associates and paralegals so long as the senior counsel on file plays a supervisory role.” Nike’s counsel expressed a particular preference for working with an experienced paralegal rather than a third-year associate.

We asked our respondents whether litigation experience or me-diation experience was more important when selecting outside counsel. Most of the respondents who had a preference considered litigation experience more important. Mr. Brown pointed out that mediation experience is relevant only in English-speaking countries and that Nike has in-house people who handle mediation. “Nike looks for counsel that can get it done—someone who can solve the problem legally.”

Billing Preferences

The prospect of flat-fee billing seemed to appeal to all of our re-spondents, although their experiences with it vary. Ms. Cecil-Few expressed a desire to use flat-fee arrangements for package review. Jeffrey Michel (WMS Gaming) was also open to the idea; “I have only paid hourly for litigation,” he said, “but I would welcome al-ternatives.” Mr. Doerfler, however, told us that “for U.S. and U.K. counsel, I prefer hourly, because the overall rates are hyperinflated

INTA’s eXAMINING euROPeAN TRADeMARK Issues AND DeVeLOPING NeW sTRATeGIes CONfeReNCeDECEMBEr 3 – 4, 2009 | VIeNNA, AusTRIAJoin the International Trademark Association (INTA) in the historic city of Vienna, Austria, on Thursday, December 3, and friday, December 4, 2009, as it takes an advanced-level look at recent trademark law developments in Europe and provides you with an opportunity to meet WIPO Director General francis Gurry and OHIM President Wubbo de Boer during onstage interviews. Gain practical tips, valuable insights, updates on important issues, astute analyses of case law, and guidance from an esteemed faculty of trademark law experts, on topics such as:

• 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/VIeNNA2009 to learn more and register now.

eARLY ReGIsTRATION eNDs NOVeMBeR 2, 2009.

Continued on next Page

FeAtures

Representing Trademark Owners Since 1878July 15, 20098

Work with In-house Trademark Counsel Continued from Previous Page

and I don’t need to be charged premiums for perfunctory work—which I find insulting.”

All the respondents said that they expect some services to be pro-vided by their outside counsel without charge, to show counsel’s commitment. For example, Ms. Dare expects outside counsel to “provide occasional training at internal meetings.” Our respondents from Rubbermaid, Nike, Hershey and SVP Worldwide expect coun-sel not to charge for “miscellaneous” advice given in short phone conversations or email exchanges. Mr. Megelas did not want to be charged for file transfers, and Nike’s counsel very much appreciated having occasional visits from outside counsel without charge.

Availability and Responsiveness

Our respondents expressed a respect for the “free time” of their outside counsel. Ms. Cecil-Few, for example, stated that she would

use out-of-office contact information only in “emergency situa-tions.” However, the respondents also desire a level of commitment from outside counsel that ensures they will be available when the situation warrants it. Mr. Megelas expressed it this way: “If given prior notice of potential emergencies, [outside counsel] should be reachable.” Mr. Brown concurred: “I want to know how to get a hold of counsel if I have an emergency—if privacy is too guarded, then I will look elsewhere.”

Communicating with In-House Counsel

When matters such as office actions are to be reported to in-house counsel, Ms. Dare said the report should be sent within a day or two and should include an analysis of the concerns raised by the examiner. The respondent from Rubbermaid and Mr. Megelas from Blue Mountain Wallcoverings expressed no specific expectation re-

Use of Outside Professionals

• Mostly used for prosecution outside company’s jurisdiction and for inter partes proceedings and litigation

Considerations in Selecting Outside Counsel

• Experience and pragmatism• Quality first, but cost an important second factor• Timely (within 24 hours), succinct, clear and creative

responses• Effective use of technologies• In-depth understanding of company’s business and goals• Development of strong relationship

Marketing to In-House Counsel

• Unsolicited approaches, brochures and marketing materials not effective, and may in fact have the opposite effect of what was intended

• INTA is a helpful resource• Be prepared by becoming aware of company’s business and

goals• Provide tangible suggestions

Firm Versus Individual Reputation and Ability

• Reputation and competence of professionals involved are of paramount importance

• Reputation of firm is a secondary consideration

Performing the Work

• Senior, experienced counsel should oversee and supervise work• More routine work should be handled by qualified and

supervised but less expensive personnel

Billing Preferences

• While flat-fee billing has its appeal, hourly rates for litigation are more common

• Simple exchanges and some routine administrative services are expected to be provided without charge

• Occasional visits and internal training sessions without charge are appreciated

Availability

• In the case of urgent matters, outside counsel is expected to be available as needed

Responsiveness

• Initial response expected within 24 hours• Response time also depends on circumstances

Communicating with In-House Counsel

• Expectation of analysis of office actions should be confirmed with in-house counsel

• Practical advice preferred over academic advice• Be succinct and clear but do provide some context• Informal is preferred to formal• Formal opinions should be provided only when requested

by in-house counsel• Where deadlines are involved, reminder and follow-up

letters are welcomed

What Annoys In-House Counsel

• Do not overstaff or overlawyer cases• Overcharging will not be tolerated• Include prior correspondence and other materials when

relevant and warranted• Be clear and concise• Be respectful of in-house counsel’s ability and time • Arrogance is not appreciated• Avoid duplication and wasteful use of time and resources• Ask questions to establish expectations

how to Work with In-house Trademark Counsel: A snapshotThe following is a snapshot of many of the things in-house counsel consider when dealing with outside counsel.

FeAtures

www.inta.org 9Vol. 64, No. 13

garding the time within which to receive an office action report, but Mr. Megelas said that he did expect the report to include an analysis of the office action, while Rubbermaid does not expect such an analysis in the initial report. Similarly, when U.S. counsel is over-seeing the work of counsel in other jurisdictions, Ms. Dare said she expects U.S. counsel to review and evaluate the analysis of the non-U.S. counsel, whereas other respondents indicated that they do not want U.S. counsel to undertake review and evaluation of the foreign counsel’s analysis.

When outside counsel corresponds with in-house counsel, it is important for outside counsel to have an understanding for the in-house counsel’s preferences with regard to the formality of the correspondence. While all of our respondents said they preferred practical rather than academic advice, there was some disagreement about how they wanted that advice delivered.

For example, Mr. Megelas desires more formal communication initially, to provide context for the issue, with, shortly afterward, follow-up correspondence that is less formal and more directly to the point. Ms. Dare likes to see “an email (no attachments) with a one- or two-sentence summary of the next step or decision point, the deadline and the recommendation.” Further background can then be provided below in the same correspondence “if it hasn’t been discussed recently and won’t be fresh in my mind.” A simi-lar perspective was described well by Ms. Cecil-Few: “I prefer the least formal communication possible that will allow me to be up to speed (know all the background facts without having to search for prior correspondence) immediately upon reading the new com-munication. If that requires some background, then background is appropriate. However, if we have been in communication about that matter recently, then I don’t need to be reminded about the background.”

Our Rubbermaid respondent and Mr. Megelas said that informal communication that gets directly to the point is always preferred. As Mr. Megelas put it, “I do not need to spend money for a pretty letter.”

Mr. Doerfler concurred with that assessment. “I like my counsel to send me efficient status reports and clear, specific bullet points requiring my feedback,” he said. Mr. Burke likewise indicated that “short is good. Although I still like knowing the rationale for any particular suggestion, I’m not interested in funding a law review article.” Nike’s counsel also voiced a preference for brevity, saying they want to be advised what to do and why, but in two paragraphs maximum. “If I want a written opinion, I will ask for it,” Mr. Brown said. “I don’t need a fully researched legal opinion on everything, and I don’t want to pay for it if I have not asked for it.”

When recalling her best experience with outside counsel, Ms. Dare described a situation where working with outside counsel was “like working with a smarter clone of myself.” The attorneys “could usually anticipate my next question, respond nimbly and succinctly, and stay focused on our shared, pragmatic business goal.” There was in addition a level of trust that allowed her and the outside coun-sel to “readily admit and take responsibility for our mistakes and quickly move to correction.” Ms. Dare acknowledged that “[the] legal culture is intolerant of mistakes and often unforgiving, and I prize business partners who can manage this gracefully.”

Similarly, Ms. Cecil-Few described her best experience working with outside counsel as one in which, “through a common knowl-edge of our trademark portfolio and Hershey’s policies, we have

come to think alike.” In particular, she appreciates outside counsel who take the initiative and copy her on their correspondence with others in her organization when she has given counsel permission to speak directly to the client: “I appreciate both being copied on all correspondence and having specific matters brought to my atten-tion (counsel to counsel, without the client) when necessary.”

When asked about the need for multiple reminders about the need for instructions for upcoming due dates, Mr. Megelas said: “Reminders should continue to be sent until instructions are re-ceived. If [there has been] no response from in-house, I would ex-pect a phone call as a last-ditch effort.” Our respondents all said that they expect to get reminders and follow-ups from outside counsel regarding upcoming deadlines.

What Annoys In-House Counsel

We asked our respondents, “What bugs you the most about out-side counsel?” The responses were varied.

Ms. Cecil-Few cited correspondence that asks for a response re-lating to past correspondence but does not attach that correspon-dence. “I don’t have the time to go through hundreds of emails or files looking for that piece of electronic or hard-copy paper,” she said. Mr. Doerfler disliked incoherent communications. Both Mr. Megelas and our respondent from Rubbermaid wanted their outside counsel to provide unequivocal advice.

When asked what bothered her the most where outside counsel were concerned, Ms. Dare cited a lack of responsiveness. She and the other respondents all said that they expect responses to email messages or voice messages within one day. However, the respon-dent from Rubbermaid pointed out that the initial response may be merely an acknowledgment that the message has been received; “how quickly they respond to me substantively depends on the cir-cumstances.”

All of the respondents were unanimous in their disdain for over-staffing of cases. “I hate seeing a new name for the first time when I get a bill,” commented Josh Burke. Mr. Brown put it another way: “Do not over-lawyer a file.”

Mr. Brown also noted that Nike does not like to be “bombarded” with constant warnings about risk notwithstanding the company’s clear instructions. Equally disliked was any sort of haughty attitude by outside counsel. “We look for creative solutions—pigheadedness is not appreciated,” he said. Mr. Megelas very much agreed with that view, noting that he did not like “being talked down to by outside counsel who still believe in the outdated stereotype that in-house counsel are second-rate attorneys.”

On a more practical note, Nike’s counsel hate the wasteful dupli-cation of having the same piece of correspondence sent by fax, by email and by regular mail. Late responses are also very irritating, es-pecially when outside counsel are very prompt in sending invoices.

The responses that we received provide helpful guidance for stan-dard practices to be employed by outside counsel when dealing with in-house counsel. However, they also highlight that particular cir-cumstances and personal preference may dictate what practices are employed. Therefore, it is best for all involved to discuss these is-sues and establish clear expectations. In responding to the question about what bugs him most about outside counsel, one anonymous respondent revealed that that he gets irritated most by outside coun-sel who “don’t even ask the questions about how to communicate with me, and what my expectations are.”

FeAtures

Representing Trademark Owners Since 1878July 15, 200910

Provision is made in the Community Trade Mark Regulation (CTMR) for relief known as restitutio in integrum to assist those who, having taken “all due care required by the circumstances,” fail to comply with a time limit in dealing with OHIM (Office for Harmonization in the Internal Market). However, restitutio relief is not available for all deadlines. In Omnicare, Inc. v. OHIM, Astellas Pharma GmbH (Case T 277/06), the Court of First Instance (CFI) was asked to adjudicate whether an application for restitutio in inte-grum was available when the unobserved time limit is the time limit to file an appeal.

Article 78 of the CTMR establishes the prerequisites for and ex-ceptions to an application for restitutio in integrum. The exceptions are listed in Article 78(5), which provides that the relief is not appli-cable to the following: (1) the time limit for filing an application for restitution in integrum; (2) the time limits related to the filing and substantiation of an opposition; and (3) “the time limits referred to in … Article 78a.” Article 78a relates to the continuation of the proceedings and enables any party to proceedings before OHIM who has omitted to observe a time limit vis-à-vis the Office to ob-tain the continuation of the proceedings. That article, like Article 78, contains a number of exceptions; specifically, Article 78a(2) lists a number of provisions to which the continuation of the proceed-ings is not applicable. One of these provisions is Article 59 of the CTMR, which establishes the deadline for filing an appeal.

The CFI held that in Article 78(5), the phrase “to the time limits referred to in … Article 78a” could not be interpreted to mean that

euROPeAN uNIONCFi Clarifies That Restitutio relief is Available for Appeal Deadlines

the time limits laid down by the provisions referred to in Article 78a(2) were also to be excluded from the scope of application of Article 78.

The CFI reasoned that such time limits are not “referred to” in Ar-ticle 78a of the CTMR. It further affirmed that the legislature could not possibly have intended that restitutio in integrum did not apply to the deadline to file an appeal, because this was contradicted by the absence of an express reference to Article 59 in the list of excep-tions. If the legislature had intended to remove any doubt on that point, it could reasonably have been expected to do so expressly.

Additionally, Article 42 of the CTMR, establishing the time limit for filing an opposition, is referred to both in Article 78a and in Article 78(5). If restitution in integrum were not available under the provisions cited in Article 78a(2), the legislature would have had no need to be redundant by making reference to that same provision within Article 78(5).

Last, as Article 78(5) limits the procedural rights granted by Ar-ticle 78 to the parties, the CFI found that the provision should be interpreted strictly.

Therefore, the Court considered that the action should be upheld, and the application for restitutio in integrum was referred back to OHIM for a decision.

Contributor: Darren Olivier, Bowman Gilfillian John & Kernick, Johannesburg, South Africa; Verifier: Laura Alonso, Howrey Martinez Lage S.L., Madrid,

spain, intA Bulletin Law & Practice—Americas Subcommittee

The Trademark Reporter seeks 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 information on proposed

article topics, 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

®

In order to improve the legal opportunities of the proprietors of protected designations in Germany, the German Trademark Act was amended on May 28, 2009. The amendments will become effective within the next few months.

In particular, the owners of older nonregistered trademarks, com-pany names or work titles are now legally entitled to base opposi-tions against younger trademarks on these rights. Before the amend-ment, oppositions against younger trademarks could be based only on registered older Community Trade Marks, German trademarks or German designations of international trademarks.

Further, the amendment provides for a direct appeal to the Ger-man Federal Patent Court in cases where a trademark application is rejected by the German Patent and Trademark Office based on absolute or relative grounds for nonprotection. Previously, some de-cisions of refusal by the German Patent and Trademark Office were subject only to a provisional appeal before a senior examiner at the Patent and Trademark Office before an appeal to the Federal Patent Court was admissible.

GeRMANYAmendment of German Trademark Act

Contributor: Michaela Huth-Dierig, Boehmert & Boehmert, Munich; Verifier: Wiebke Baars, Taylor Wessing, Hamburg. Both are members of the

intA Bulletin Law & Practice—Europe & Central Asia Subcommittee

LAw & PrActice

www.inta.org 11Vol. 64, No. 13

In 2005, the famous Hong Kong–based company Maxim’s Cater-ing Limited filed a trademark application for HONG KONG MEI XIN PASTRIES in Chinese characters in Taiwan.

In January 2008, the Taiwan Intellectual Property Office (TIPO) cited the prior trademark registration for MEI XIN in Chinese characters (Reg. No. 43779, Nov. 1, 1970) as a basis for rejecting the HONG KONG MEI XIN PASTRIES application on grounds of likelihood of confusion of relevant consumers. A subsequent ap-peal filed by Maxim’s was rejected by the Committee of Appeal of the Ministry of Economic Affairs.

Maxim’s further appealed to the Intellectual Property Court (es-tablished in July 2008) on the following grounds:

• Maxim’s was founded more than 52 years ago.• Maxim’s is famous for dining services, moon cakes and pastries.• According to the market survey conducted by A.C. Nielsen, Max-

im’s moon cake has been the best-selling product in this category for 10 consecutive years in Hong Kong. Therefore, on seeing the mark HONG KONG MEI XIN PASTRIES in Chinese charac-ters, the relevant consumers should be able to associate it with Maxim’s.

• The owner of the cited prior trademark registration, Jellico Food Co., Ltd. (Jellico), is famous for its trademark JIN JIN & Chi-

TAIWANMaxim’s Catering Limited’s Famous Trademark rejected for registration

nese characters and produces mainly jellies and juice bars.• Jellico’s products are distributed mainly through grocery stores

and supermarkets; the levels of brand awareness of Jellico’s and Maxim’s products are different. Thus, the likelihood of confusion of relevant consumers indicated by the TIPO and the Committee of Appeal should not exist.

The court compared the applied-for mark HONG KONG MEI XIN PASTRIES with the prior-registered trademark MEI XIN. It noted that HONG KONG was a geographic name and PASTRIES was descriptive of the products claimed. Thus, Maxim’s mark lacked distinctiveness. As both marks designated similar goods and con-tained the Chinese characters Mei Xin, the court found that these similarities might cause confusion among consumers. Further, Tai-wan applies the first-to-file principle, and common-law protection is not applicable. As a result, on October 30, 2008, the court rejected the trademark application filed by Maxim’s, to protect the trade-mark rights of the owner of the prior-registered trademark, Jellico.

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

In October 2008, the Taiwan Intellectual Property Office (TIPO) issued a decision rejecting the opposition filed against the 3D trade-mark application bearing the famous packaging design for Ferrero Rocher’s globally known hazelnut chocolate. The decision of the Committee of Appeal of the Ministry of Economic Affairs rejecting the subsequent appeal was upheld by the Taipei High Administra-tive Court on grounds of acquired distinctiveness (Case 97A/No. 1206, Oct. 23, 2008).

In November 2004, the Italian company Ferrero S.p.A. filed a 3D trademark application showing a golden foil sphere on a brown paper plate. Hong Da Chang Trading Company filed an opposition against Ferrero’s trademark, claiming the following:

1. The opposed trademark lacked distinctiveness;2. The golden aluminum foil and brown paper plate of the opposed

trademark were designed primarily for utilitarian purposes, the former providing heat insulation and the latter preventing the chocolates from rolling, a device generally used in chocolate wrappings; and

3. The label at the top of the opposed trademark was similar to the appellant’s prior trademark registration (with application date of May 1, 1996) for FOREVER ROSERY & Device.

Following the TIPO’s rejection of the opposition and of the op-ponent’s subsequent appeal, Hong Da Chang filed a further appeal to the Taipei High Administrative Court. The Court, after review-ing the case, found as follows:

TAIWANferrero Rocher Package as a 3D Trademark has Acquired Distinctiveness

• The court confirmed that the opposed trademark lacked inher-ent distinctiveness.

• According to the evidence submitted by Ferrero, the opposed trademark had been in use in Taiwan’s market since 1988, with related marketing expenses consistently exceeding US $115 million annually from 1993 to 2004. Therefore, the opposed trademark had acquired distinctiveness.

• As the functions of wrapping papers and color combination could all be achieved by other designs of packages, the opposed trademark’s design of a golden foil sphere and brown paper plate was not the only packaging choice available to other chocolate manufacturers. Consequently, the opposed trademark did not violate the Trademark Act.

• Because the label of the opposed trademark was FERRERO ROCHER, which was different in meaning, pronunciation and appearance from Hong Da Chang’s mark FOREVER ROSERY & Device, the opposed trademark was not similar to the appellant’s trademark.

Based on the above findings, the court rejected the appeal filed by Hong Da Chang and ruled in favor of Ferrero. The ruling is subject to further appeal.

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

LAw & PrActice

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ROUNDTABLE: Trademark Investigation in the United States and Abroad September 14 – 25, 2009Various U.S. cities

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

Examining European Trademark Issuesand Developing New StrategiesDecember 3 – 4, 2009Vienna, Austria

132nd Annual MeetingMay 22 – 26, 2010Boston, Massachusetts, USA

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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

INTA Roundtables are perfect opportunities for trademark professionals to network and informally discuss topics of mutual interest with colleagues. These popular and affordable two-hour discussions are hosted and facilitated by INTA members and are held during the lunch hour or at the end of the work day.

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.