Bulletin 2 Association News

Association Leaders Participate in Australia APEC Events

INTA Delegation Promotes Madrid Protocol in Guatemala

Member Spotlight: Charles Gielen

5 Features

A Brief Guide to Trademark Application Examination Procedures in Korea

Pretexting Is Not a Naughty Word

8 Law & Practice

ALGERIA Increase in Official Fees

COLOMBIA New Decree Allows Customs to Stop Counterfeit Goods at Borders

KOSOVO PTO Likely to Open in the Near Future

MEXICO Strike Against Counterfeit Medicines

MOZAMBIQUE New Taxes to Be Collected for Services Rendered by the Institute of Industrial Property

UNITED STATES Trademark Trial and Appeal Board Allows Citation of All Decisions

UZBEKISTAN Denunciation of the Madrid Agreement

11 INTA Bulletin Board

The Voice of the International Trademark Association March 1, 2007 Vol. 62, No. 5

IN ThIS ISSUEThird Global Congress on Combating Counterfeiting Recognizes Shared Challenges and Common GoalsMore than 1,000 delegates from 107 countries met at the Third Global Congress on Combat-ing Counterfeiting and Piracy, held in Geneva, Switzerland, on January 30 and 31, 2007. INTA President Dee Ann Weldon-Wilson presented opening and closing remarks at the meeting, which was convened by the World Intellectual Property Organization (WIPO), the International Criminal Police Organization (Interpol) and the World Customs Organiza-tion (WCO) with the support and cooperation of INTA, the Global Business Leaders Alliance Against Counterfeiting (GBLAAC), the Inter-national Chamber of Commerce (ICC) and the International Security Management Association (ISMA). The Congress brought together high-level representa-tives for a series of addresses and discus-sion sessions designed to continue efforts initiated by the First and Second Global Congresses in 2004 and 2005 and numerous regional meetings.

In her remarks, Ms. Weldon-Wilson stressed INTA’s support for international harmoniza-tion of criminal laws against counterfeiting. Such harmonization would strengthen enforce-ment efforts by setting minimum standards for prosecution, adjudication and sanctions; iden-tification, tracing, freezing or seizure of assets, and confiscation of the proceeds of criminal activity; and jurisdiction.

She also spoke on INTA’s advocacy against unrestricted transshipment and transit of goods through free trade zones and free ports. Such unrestricted transshipment contributes signifi-cantly to the global spread of counterfeit goods.

“INTA looks forward to continuing its work within the [Congress] steering group and indeed the entire Congress to implement these strategies, which are critical to winning the global fight against counterfeiting,” Ms.

Weldon-Wilson said.At the Second Global Congress in 2005, partici-

pants identified four priority areas in which action was recommended: Raising Awareness, Improv-ing Cooperation and Coordination, Building Capacity, and Promoting Better Legislation and Enforcement. This year’s Congress discussed prog-ress made and discussed ideas for new initiatives in each of those four areas:

Raising Awareness The Congress noted the need to tailor anticounterfeiting communications to specific audiences based on their geographi-cal location, socioeconomic status and age. Also,

there should be efforts to communicate with the illiterate. Anticounterfeit-ing awareness campaigns should focus on reducing consumer demand for counterfeit goods and should incorporate the experiences of entre-preneurs and artists to counter the perception that counterfeiting affects only wealthy, foreign IP owners.

Improving Cooperation and Coordination Suggestions in this area included encouraging the further development and use of databases contain-ing IP-enforcement information that tracks trans-national movement of counterfeit goods. Such databases include the WCO Customs Network and the Interpol Database on International Intel-lectual Property Crime. Interpol Secretary General Ronald K. Noble said, “Interpol’s new database on international intellectual property crime will take ... cooperation to a new level by making informa-tion provided by private companies available to law enforcement worldwide to assist in their inves-tigations into those involved in counterfeiting.”

Another proposal involved strengthening coop-eration between customs authorities and businesses by providing a simple, no-cost customs registration system that will help small- and medium-sized en-terprises use customs border enforcement systems.

Building Capacity The Congress recommend-

See GLOBAL CONGRESS on next Page

Left to right: WIPO Deputy Director General Michael Keplinger, WCO Secretary General Michel Danet, INTA President Dee Ann Weldon-Wilson

Representing Trademark Owners Since 1878March 1, 20072

Association NewsGlobal Congress FROM PREvIOuS PAGE

ed implementing security and authentication technologies to the greatest possible extent, including in the field of digital content, to help prevent infringement, identify infringers and obtain evidence.

The Congress also supported the use of e-learning programs to train personnel involved in anticounterfeiting and other enforce-ment activities. Both the WCO and WIPO offer e-learning programs applicable to anticounterfeiting efforts.

Promoting Better Legislation and Enforcement In accord with INTA’s harmonization proposal, the Congress considered a new international legal regime on anticounterfeiting as a response to the cross-border criminal dimension of counterfeiting and piracy and as a way to avoid safe havens for IP criminals.

Another idea involved developing a set of good practices for legitimate businesses, for example, shippers or telecommunica-tions companies, that are used by infringers to move or transmit counterfeit and pirated materials.

In addition to the four areas outlined at the Second Congress, the Congress also focused discussions on the health and safety risks of counterfeit goods, particularly pharmaceuticals.

WCO will host the Fourth Global Congress on Combating Counterfeiting and Piracy in the first quarter of 2008.

VIETNAMTopic: Trademark Rights Enforcement in Vietnam: New IP Law and Its ImpactConducted in Vietnamese and English.

March 15, 20079:00 a.m. – 11:30 a.m.

Location of roundtable:The International Conference Center - Conference Room 318 11, Le Hong Phong Street, Ba Dinh District, Hanoi, Vietnam Tel: 84-4-8457758

host:Pham & Associates

Guest Speakers: Two Guest Speakers from The Ministry of Science and Technology and The National Office of Intellectual Property

To obtain registration information for this event, contact the host: Nguyen Thi Phi NgaTel: +84-4-8244852, 8265524, 8250163, ext. 227Fax: +84-4-9435925, 8265331, 8244853Email: hanoi@pham.com.vn, hanoi@phamlaw.com.vn, vietnam@phamlaw.com.vn

For more information visit www.inta.org/go/education to view all of INTA’s roundtables

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S MALAYSIATopic: Breaching the Barrier: Means & Methods for Convincing Companies of the Importance of Trade MarksFriday, March 9, 20079:00 a.m. – 1:00 p.m.

Location of roundtable:The Malaysian Intellectual Property Association (MIPA) OfficeW-10-17, Menara Melawangi, Pusat Perdagangan Amcorp, 18 Jalan Persiaran Barat,46050 Petaling Jaya, Selangor Darul Ehsan

hosts:Advanz Fidelis Sdn Bhd

Moderator:Mr. Jern Ern Chuah, Advanz Fidelis Sdn BhdFacilitators:Mrs. Caroline Francis, Ram Rais & PartnersMs. Karen Abraham, Shearn Delamore & Co. Ms. Linda Wang, Tay & PartnersMr. Michael Soo, Shook Lin & Bok

To obtain more information, and to register for this event, kindly contact:Debbie David, Advanz Fidelis Sdn BhdTel: +60-3-7957-1472Fax: +60-3-7958-5030Email: debbie@advanz.com.my

For more information visit www.inta.org/go/education to view all of INTA’s roundtables

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On January 30 and 31, 2007, INTA Treasurer Gerhard Bauer, Olof Fickert, Chair of the Trademark Office Practices Committee’s Madrid System Subcommittee, and Laura Cruz, External Rela-tions Coordinator for Latin America, visited Guatemala as part of a delegation promoting the Madrid Protocol.

A key component of the two-day visit was a series of private meetings with members of AMCHAM/Guatemala, the Guatema-lan Association for Export and the National Registry Office. These meetings allowed INTA to establish contact with key Guatemalan institutions and officials.

On the second day, with the assistance of its member Consor-tium of Central America, INTA hosted a government seminar on the benefits of the Protocol. Key participants included represen-tatives of the U.S. Patent and Trademark Office and the World Intellectual Property Organization. Guatemalan vice Minister of Economy Enrique Lacs and Director of the National Registry Carlos Eduardo Illescas also participated.

INTA Delegation Promotes Madrid Protocol in Guatemala

www.inta.org Vol. 62, No. 5 �

Association NewsINTA made positive strides in its Asia-Pacific relations through its recent participation in a series of Asia-Pacific Economic Coopera-tion (APEC) meetings in Australia.

From January 28 to 30, 2007, INTA was a sponsor of a major regional IP symposium in Sydney, organized by the Australian government in association with APEC. The symposium, “Trading Ideas—The Future of IP in Asia-Pacific,” attracted more than 500 policymakers, IP practitioners, brand owners and academics from the region and beyond, including heads of IP offices throughout the Asia-Pacific, Canada, Europe, Latin America and the United States. Speakers from industry, government and academia dis-cussed current and future challenges facing IP offices, profession-als and businesses in APEC economies, such as patent backlogs, counterfeiting and piracy, geographical indications and traditional knowledge.

INTA President-Elect Rhonda Steele gave a presentation on trademark issues in regional and free trade agreements. In addition to introducing INTA’s model framework proposals on trademark issues in free trade agreements, which the Association relies on to provide input to governments negotiating bilateral and regional agreements, Ms. Steele highlighted certain key issues that INTA particularly supports, or hopes to see reinforced or treated more consistently across such agreements:

• Accession to international treaties such as the Trademark Law Treaty (and, in future agreements, the Singapore Treaty on the Law of Trademarks) and the Madrid Protocol, which would facilitate harmonization with internationally accepted IP standards

• Enforcement standards that go beyond Part Three of the TRIPS agreement

• Expanding the scope of protectable marks to include a range of visible and non-visible signs

• Well-known marks protection, in particular the application of the WIPO Joint Recommendation on Well-Known Marks

• The need for provisions on geographical indications (GIs) to be consistent with the WTO TRIPS Council decision of 2005, which states that the core principles of IP protection, namely priority, exclusivity and territoriality, should be fol-lowed in deciding conflicts between GIs and trademarks

Ms. Steele, who is senior trademark adviser for Asia-Pacific at Mars Inc., also participated in a panel discussion on the future

of IP in Asia-Pacific, during which she said that the region could benefit from greater consistency in areas such as trademark office procedures and laws and practice.

Other INTA delegates at the symposium were Treaty Analysis Committee Chair Kee-Leng Tan, Emerging Issues Committee Chair Barbara Sullivan, Parallel Imports Committee Chair Annette Freeman, Board member Marion Heathcote, APEC Subcommittee member Albert Terry, and Asia-Pacific External Relations Manager Piin-Fen Kok. Papers and presentations from the symposium are available at www.tradingideas.org.

Prior to the symposium, INTA representatives were invited to attend the 24th APEC IP Experts’ Group (IPEG) meeting in Canberra on January 24 and 25 and to give a presentation on the Singapore Treaty on the Law of Trademarks (Singapore TLT), adopted by WIPO member states in March 2006. Ms. Kok gave the presentation and highlighted the treaty’s benefits for trade-mark owners. Such benefits include a reduction of administrative burdens and costs associated with complying with trademark office procedures and greater legal certainty arising from the standard-ization of such procedures, which would facilitate enforcement of trademark rights. She offered INTA’s cooperation in analyzing the potential implications of treaty accession (or adherence to its standards) for trademark law and practice in APEC economies.

In November 2006, INTA’s Board of Directors adopted a resolu-tion endorsing the Singapore TLT, which builds on the 1994 Trademark Law Treaty by further harmonizing trademark office administrative procedures. The Board Resolution is posted on www.inta.org.

APEC comprises 21 economies across the Asia-Pacific, North America and Latin America. The IPEG, which includes IP officials from member economies, meets twice a year to discuss IP coopera-tion and harmonization. More information about the organization can be found at www.apec.org.

Association Leaders Participate in Australia APEC Events

Register now to save US $300 on theAnnual Meeting registration fee.

But hurry, the Early Bird Discount ends March 9, 2007!

This year’s Annual Meeting will provide more than 7,500 international trademark professionals with an abundance of educational, networking and business opportunities, including:

• Keynote address by Jim Skinner, Vice Chairman and Chief Executive Officer of McDonald’s Corporation

• Skill-building workshops, industry breakouts, educational sessions and table topics on the hottest trademark issues

• The Exhibition Hall, featuring more than 80 service providers

• Many opportunities to earn CLE credit

Register before March 9, 2007 for the Early Bird Savings of US $300!

The Trademark Reporter is seeking contributions from practitioners and other trademark professionals, professors, and students, and is particularly looking to expand its coverage of international issues authored

by international writers. Both INTA members and non-members may submit articles for publication.

Contact the Managing Editor at tmr@inta.org or visit The Trademark Reporter portion of INTA’s website at

www.inta.org for more information on proposed article topics, submission guidelines, and deadlines.

Representing Trademark Owners Since 1878March 1, 2007�

Association NewsMember Spotlight: Charles Gielen

Dr. Charles Gielen, of NautaDutilh in Am-sterdam, received a 2006 INTA President’s Award for his outstanding contribution to the internationalization of the Association over the past decades. In presenting the award at INTA’s Leadership Meeting in Phoenix, Arizona, uSA, 2006 INTA President Paul Reidl said of Dr. Gielen, “As long as I have known him, and that is a very long time, he has always—and I do mean always—asked, ‘But what about the European implications of that? What about the international implications?’ We hear that less and less now because he taught us to think internationally at the outset.”

Besides his INTA activities, Dr. Gielen is an adjunct professor and frequent author on trademark and other intellectual property issues. For many years he has been a standing advisor to the government of the Netherlands on trademark and design law. Dr. Gielen also holds leadership positions in the International Association for the Protection of Intellectual Property (AIPPI).

How many years have you been practicing in the field of trademarks?I started to work in the intellectual property field in the mid-seventies.

What drew you to trademark law?Since being admitted to the bar in 1971, I have been working in the corporate and competition law departments of my firm. In the mid-seven-ties, I started to work for one of the then-lead-ing experts in IP litigation in the Netherlands, Leo Wichers Hoeth, and his younger partner Willem van Manen. Soon thereafter, I got in-volved in pending trademark litigation matters.

What was your first job in this area?One of the first cases I remember was a case for Johnson & Johnson with respect to the trade-marks COMBICILINE and COMBIMYCINE.

How long have you been involved with INTA activities?The first INTA conference I attended was the Toronto meeting in 1984. I never forget the year of this meeting, since, together with my Dutch colleagues, Remco de Ranitz and Severin de Wit, we decided almost under the Niagara Falls to start a new review of intellectual prop-erty law in the Netherlands. In fact, this project effectively started in 1985, and that’s why I never forget the year 1984.

What INTA activity or committee have you particularly enjoyed working on, and why?I have been active in a number of committees and other bodies of INTA, such as the Anti-Counter-feiting & Enforcement Committee and the Inter-national Amicus Committee, for which I chaired the Europe Amicus Subcommittee. I very much enjoyed working on the last-mentioned commit-tee and in particular being active with respect to the first amicus briefs that were filed with the European Court of Justice. I served on the Board of Directors twice. The first time was when I was asked to replace the late Mario Arigucci, who died suddenly. I also served on the Executive Commit-tee of the Board, as well as on the Nominating Committee.

What is the best aspect of your practice?Serving clients and helping them to find solutions for their problems. The challenge of continuously inventing new solutions for what seems to be obvious is probably one of the best aspects of my practice as a litigator.

Are there any particular areas on which you think INTA should focus in the future?INTA should focus more on the relationship between trademark law and other areas such as human rights, psychology (market surveys), etc. Furthermore, INTA should continuously focus on redefining the notions of what a trademark is and the scope of protection of distinctive designs.

Do you have any favorite trademarks? If so, which ones?One of my favorite trademarks is COCA-COLA, and that is probably also because my firm has acted for The Coca-Cola Company for the past 30 or 40 years. It has always been a pleasure to pro-tect and defend the trademarks of this company.

Another one I like very much is a trademark of Dutch origin, namely WE, used for clothing. I still think that using a personal pronoun for fashion is very original. It is not an easy one to protect, but it has given me a lot of satisfaction that the courts accepted the distinctiveness of it in several cases. Having been able to keep such a pronoun exclusive to itself, the company suc-ceeded in making WE a very well-known brand in the Benelux territory. It was even possible to win a dilution case against a Tv channel wishing to operate under the mark ME.

Dr. Charles GielenNautaDutilhAmsterdam

See GIELEN on Page 11

www.inta.org Vol. 62, No. 5 5

A Brief Guide to Trademark Application Examination Procedures in KoreaBecause the Republic of Korea is a first-to-file (as opposed to first-to-use) jurisdiction that follows civil-law traditions, being first to file for and obtain trademark registration is crucial in protecting one’s trademark rights in this country. The person who achieves this will own the right to use and prevent others from using the mark, regardless of whether a third party (or, for that matter, the registrant) used the mark prior to the date of the application. Generally, the only exception to this rule is if the mark is well known as indicating the goods and/or services of the contesting party at the time the application was filed. However, in Korea, the standard for proving that a mark is well known is very high and, therefore, not easily satisfied.

KIPO’S INTERNAL GuIDELINES

Considering the central role that registration plays in protecting one’s trademarks in Korea, it is helpful to know the Korean Intellectual Property Office’s (KIPO’s) basic procedures for examining trademark applications. Perhaps the most perplexing aspect of this process is how the KIPO determines whether goods or services are similar to one another.

Even though the KIPO has adopted the Nice Classification system, it uses internal guidelines carried over from the country’s prior national classification system for purposes of determining whether goods or services are similar to one another. These guidelines further break down goods and services into subclasses and assign each good and service a “similarity code number.” Generally, goods or services that have the same similarity code number are considered to be similar, and goods or services that have different similarity code numbers are considered to be dissimilar. While there are some exceptions, for the most part similarity code numbers are the same for goods or services falling under a single subclass and are different for goods or services falling under different subclasses.

The KIPO’s internal guidelines have been amended effective January 1, 2007, for the purpose of more closely aligning classifications and descriptions of goods and services with the Ninth Edition of the Nice Classification. Nevertheless, the KIPO still uses its similarity code numbering system to determine whether goods or services are similar to one another.

A CLOSER LOOK AT CLASS 5: PHARMACEuTICAL AND VETERINARy PREPARATIONS

By way of example, the KIPO’s internal guidelines contain nine subclasses for Class 5. Among the goods that fall under Subclass 4 of Class 5 are “insect repellants for dogs,” “semen for artificial insemination,” “poisons,” “dandruff treatment preparations,” “sunburn ointments,” “cocaine,” “laxatives” and “deodorants other than for personal use.” Under strict application of the guidelines, an examiner would find these goods to be similar.

By way of comparison, “baby food other than powdered milk” falls under Subclass 1 of Class 5, whereas “powdered milk for babies” falls under Subclass 3 and “baby vitamins” falls under Subclass 4 of Class 5. Thus, in this case, under strict application

of the guidelines, an examiner would find these goods to be dissimilar.

In view of the above, it is advisable to think broadly when designating goods or services in a trademark application. By doing so, an applicant may be able to prevent or at least delay third parties from obtaining registration for the applicant’s mark for goods or services considered by the KIPO to be dissimilar to the applicant’s goods or services but considered by the applicant to be similar.

For instance, when applying for a mark, a baby food manufacturer, in addition to designating “baby food other than powdered milk,” may also want to designate “powdered milk for babies” and “baby vitamins.” By obtaining a registration covering these latter goods, the manufacturer would reserve to itself the right to prevent others from using its mark for such goods, at least for three years and probably longer, inasmuch as registrations (or designations in registrations) are not susceptible to cancellation for non-use until three years after the mark’s registration date. Even then, the very existence of the registration may serve as enough of a deterrent that the potential cancellation action petitioner will select another mark to use, particularly in cases where very little investment in the petitioner’s mark had been made up to that point.

TRADEMARK PROTECTION AS AN INvESTMENT IN ThE FuTuRE

What level of protection should be sought for any given trademark is a business decision. Clearly, the greater the level of protection that is sought, the greater the associated up-front costs will be. The difficulty lies in the fact that the value of trademarks varies widely from mark to mark and that an applicant cannot know in advance the full earning potential of any given mark, especially if it is not yet in use. Thus, factors such as the anticipated popularity of the goods or services for which the mark will be used, the level of importance that marks in general hold in the industry within which the applicant operates, the planned frequency and duration of use of the mark, how widespread infringing activities might be in the relevant industry and jurisdiction, and budget constraints should all be considered vis-à-vis the amount of business the applicant conducts or anticipates conducting in the jurisdiction in question and the jurisdiction’s intellectual property regime.

In the end, it is a cost-benefit analysis that is more of an art than a science. Despite the uncertainties, devoting sufficient attention and resources to preventive measures such as filing for trademark registration—including defensive registration—may prove to be less costly than battling problems that may later arise from the failure to employ such measures in the first place.

By: Mona A. Lee, DW Partners, Seoul, Korea, INTA Bulletin Features–Policy & Practice Subcommittee

Features

Representing Trademark Owners Since 1878March 1, 2007�

All of these rules apply with equal force to the lawyer and any non-lawyer working directly for that lawyer.

THE PROHIBITION AGAINST MISREPRESENTATION

Although a pretext inherently involves some level of deception, courts generally have found that using a pretext to gather basic information about suspected wrongful activities does not violate the ethical rules against misrepresentation.

A New Jersey court found no violation of New Jersey’s equiva-lent of Model Rule 8.4(c) when the plaintiff ’s attorneys and their agents contacted the defendants’ sales representatives to buy items bearing the name and likeness of John Lennon to show violation of a prior consent order. Apple Corps Ltd. v. International Collec-tors Society, 15 F. Supp. 2d 456, 459-65, 475-76 (D.N.J. 1998). There, the court found that while Rule 8.4(c) was not explicitly limited to material misrepresentations, it simply did not cover misrepresentations of identity or purpose while gathering evidence. Id. at 475. The New Jersey court reasoned that courts, ethics com-mittees and grievance committees do not condemn such behavior by undercover agents in criminal cases or discrimination testers in civil cases. Id. Additionally, the court found that Rule 8.4(c) should be read in conjunction with Rule 4.1, which prohibits mis-representations of material fact. Consequently, the court interpret-ed Rule 8.4(c) as targeted only at “grave misconduct.” Id. at 476.

under comparable facts, a New York court similarly declined to exclude evidence obtained by undercover investigators because “hiring investigators to pose as consumers is an accepted investiga-tive technique, not a misrepresentation.” Gidatex, S.r.L. v. Cam-paniello Imports, Ltd., 82 F. Supp. 2d 119, 122 (S.D.N.Y. 1999). The court found that New York’s Rule 8.4(c) sought to protect parties from being tricked. Id. The court found no violation of the rule, because the investigators did not interview the salespersons or trick them into making statements they would not otherwise have made as part of the transaction. Id.

Other trademark cases confirm by implication that gathering evidence under pretext does not violate the rules against misrep-resentation. See, e.g., Louis vuitton S.A. v. Spencer Handbags Corp., 765 F. 2d 966 (2d Cir. 1985); Cartier v. Symbolix, 386 F. Supp. 2d 354 (S.D.N.Y. 2005); Philip Morris uSA Inc. v. Shalabi, 352 F. Supp. 2d 1067 (C.D. Cal. 2004); Weider Sports Equip. v. Fitness First, Inc., 912 F. Supp. 502 (D. utah 1996). The decisions in these cases do not explicitly discuss possible violations of ethics rules against misrepresentation, but simply accept and rely on evidence obtained under pretext. While in most cases the inves-tigators simply posed as customers, vuitton involved a relatively elaborate pretext, with the investigator posing as a casino owner interested in funding a counterfeiting scheme to obtain evidence against distributors of counterfeit bags. 765 F. 2d at 968-69.

The takeaway from this body of case law is that although some courts may be more flexible in their application of ethical rules, to avoid penalties for misrepresentation, an attorney should direct the investigator only rarely to go beyond posing as a customer or other character with whom the target normally interacts. Discus-sions between the investigator and the target should be limited to matters that would normally be addressed in the transaction under investigation.

In the now-familiar story involving privately ordered investiga-tions of members of Hewlett-Packard’s board of directors, the use of a common investigative tool—pretexting—resulted in a series of unwelcome consequences. When it became public that private investigators misrepresented their identities to solicit information, the chairwoman of Hewlett-Packard’s board of directors resigned, high-ranking persons were charged with multiple crimes and the company paid a multimillion-dollar settlement to resolve civil claims filed by the California attorney general.

Gathering the necessary evidence for trademark litigation, prosecution or clearance often requires lawyers to hire private investigators to ascertain whether and how certain entities are us-ing trademarks. For obvious reasons, the investigator usually must use some form of a pretext to contact an investigation target. The consequences that befell Hewlett Packard are reason enough to consider what consequences a lawyer or client risks in hiring a pri-vate investigator who will engage in pretexting to obtain evidence.

WHAT IS PRETExTING?

Pretexting can refer to various actions. In the broadest sense, it can include any conduct involving a pretense or falsity. The u.S. Federal Trade Commission, however, defines pretexting more nar-rowly, as the practice of obtaining someone’s personal information under false pretenses. Indeed, it was this narrow definition that was directly implicated in the Hewlett-Packard case, as the investiga-tors impersonated others in order to obtain the personal telephone records of certain board members and journalists.

Trademark investigations, in contrast, usually do not require the solicitation of personal information. Nonetheless, even if an investigation involves pretexting only in the broad sense, a lawyer who practices or directs investigative activity that includes pretex-ting risks several ethical violations and possible exclusion of the evidence at trial.

EThICAL IMPLICATIONS FOR LAwyERS

A lawyer’s ethical obligations generally track those set forth in the American Bar Association’s Model Rules of Professional Conduct. The conduct acceptable under these rules varies by state because of variations in the actual text of the Model Rules adopted and differences in judicial interpretations of the rules. The dearth of relevant case law in many jurisdictions also creates uncertainty as to how courts will apply the rules. Despite these limitations, there are certain guideposts.

Broadly speaking, when an investigator working for a lawyer uses a pretext to obtain information, questions arise as to the lawyer’s compliance with two principal obligations under the Model Rules: (1) the duty of truthfulness; and (2) the obligation to avoid communications with a represented party.

The duty of truthfulness imposed by Model Rule 8.4(c) proscribes conduct involving dishonesty, fraud, deceit or misrepre-sentation. Model Rule 4.1 also prohibits a lawyer from knowingly making a false statement of material fact or law to a third person and from failing to disclose a material fact under certain circum-stances.

To protect the attorney-client relationship, Model Rule 4.2 generally prohibits a lawyer from communicating directly with a “represented” person without consent of the person’s lawyer.

Pretexting Is Not a Naughty Word

Features

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THE RuLE AGAINST CONTACTING REPRESENTED PARTIES

The strict obligation to avoid all direct communications with a represented party requires more complex consideration. Although the communication issue is of greater concern once litigation has commenced, contact prior to the start of litigation may also pose problems.

The main complexity with Model Rule 4.2 stems from the ambiguity as to which individuals in an organization count as “represented parties.” For example, New Jersey’s version of Rule 4.2 provides that only the “organization’s litigation control group”— that is, selected senior management employees—is not to be contacted. The Model Rule itself, like other states’ versions, simply does not elaborate on who comprises the “represented party.” The absence of direction has resulted in differences among jurisdictions, as courts have announced a range of positions on which employees are within the prohibited contact group. Weider Sports Equip., 912 F. Supp. at 510.

For example, finding communications in violation of the South Dakota equivalent of Rule 4.2, a South Dakota court excluded evi-dence at trial of recordings made by a private investigator on visits to plaintiffs’ snowmobile stores. Midwest Motor Sports, Inc. v. Arctic Cat Sales, Inc., 144 F. Supp. 2d 1147, 1149 (D.S.D. 2001). In discussing whether a salesperson to whom the investigator spoke was a represented party within the meaning of Rule 4.2, the court noted the variety of tests that have emerged, from the “blanket” test—making all employees a “represented party”—to the “control group” test—defining “representative party” as only the most senior management officials. Id. at 1154-55. The test adopted by the South Dakota court covered the communication with the sales-person, because the investigator attempted to elicit specific admis-sions from the employee that would have been offered against the corporation at trial. Id. at 1156-58.

In Gidatex, the New York court found that the sales representa-tives contacted by private investigators were “represented” parties under the applicable standard for Rule 4.2. 82 F. Supp. 2d at 124-25. However, the court found that the purpose of Rule 4.2 is to preserve the proper functioning of the attorney-client relation-ship, and because the investigators simply posed as consumers and spoke to nominal parties to gather information on normal business routine, the policies underlying the rule were not implicated. Id. at 122. Consequently, the New York court found no real violation and denied the motion to exclude the evidence obtained by the investigators. Id. at 126.

Since the standard for identifying who is a “represented party” varies from u.S. state to state, what may be a permissible investiga-tion in one state may be impermissible in another. Therefore, in deciding on using an investigator who will operate under a pretext, an attorney should carefully evaluate the applicable “represented party” standard, the stage of the dispute and the extent of informa-tion sought by the pretext. Typically, however, if only low-level employees are contacted and the conversation is limited to normal transactional banter, a violation of Rule 4.2 will not be grounds for sanctions or exclusion of the resulting evidence.

If any uncertainty exists as to the identity of the individual being contacted, and litigation has commenced, a party could consider an ex parte discovery order prior to the investigation to ensure

admissibility of the evidence subsequently obtained. See Flebotte v. Dow Jones & Co., Inc., Civ. Act. No. 97-30117-FHF2001 (D.Mass. 2001) (finding contact under pretext with opposing party acceptable where defendant in an employment discrimina-tion case obtained an order prior to sending an investigator to con-firm that plaintiff ran a masseur business while claiming inability to find alternate employment).

THE BOTTOM LINE

Overall, a lawyer should exercise caution when hiring an investi-gator likely to use pretexting in gathering information. In order to avoid possible violations of the applicable ethical rules against mis-representation and contact with represented parties, any pretexting should rarely go beyond disguising the identity of the investigator and the purpose of the contact.

The investigator should focus contacts on non-managerial employees and limit any inquiry to information that would reason-ably be likely to be shared with any member of the public with whom the target routinely interacts. Care should also be paid to jurisdictional differences in the applicable ethical rules, as some states may allow for an expanded use of a pretext and in some states the boundaries are unclear. Attorneys must be familiar with these parameters to enhance their clients’ use of gathered evidence at trial.

By: Felicia Boyd, Faegre & Benson LLP, Minneapolis, Minnesota, uSA, INTA Bulletin Features–Policy & Practice Subcommittee; Jeya-malar Paul, Faegre & Benson LLP, Minneapolis, Minnesota, uSA

hONG KONGTopic: “Shadow Boxing: Registering shadow companies in Hong Kong to assert trade mark rights in the People’s Republic of China – unfair advantage or legitimate loophole?”

March 28, 200712:30 p.m. – 2:30 p.m. (lunch provided)

Location of roundtable:Freshfields Bruckhaus Deringer11F, Two Exchange Square8 Connaught PlaceCentral, Hong Kong

host:Freshfields Bruckhaus Deringer – Connie Carnabuci

To obtain registration information for this event, please contact:Marlo Osborne-SmithBusiness Development ManagerFreshfields Bruckhaus DeringerTel: +852-2913-2611Fax: +852-2810-6192Email: marlo.osborne-smith@freshfields.com.au

For more information visit www.inta.org/go/education to view all of INTA’s roundtables

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Representing Trademark Owners Since 1878March 1, 20078

Law and Practice

On December 22, 2006, the Colombian government issued Decree 4540, which regulates border measures for infringements of IP rights.

In the new decree, preventive measures are instituted to control counterfeit merchandise from entering or leaving Colombia. The owner of an IP right may request that Customs clearance be suspended until the competent authority decides a simultaneously filed judiciary claim for false trademark or infringement of IP rights.

The request for preventive measures must be filed before the Customs and Taxes Authority (DIAN) in a written petition en-closing the corresponding power of attorney, a description of the infringing merchandise and the necessary evidence. DIAN must issue its decision in three days. If the decision determines that the goods should be suspended at Customs, the petitioner must post a bond. Additionally, the petitioner must prove in the next ten days that a separate judiciary action for infringement of intellectual property has been filed.

This is an important development for the protection of IP rights in Colombia and substantially adds to DIAN’s prior efforts to stop infringement activities. In September 2005, DIAN began to organize a database registry to enable Customs officers to contact IP owners (or their representatives) when goods being imported or exported were suspected of being infringements. However, before the new Decree, suspected goods could not be stopped at the border.

Contributor: Monica wolf, wolf Abogados Asociados, Bogotá; veri-fier: Luz helena villamil, villamil IP Legal Services, Bogotá

COLOMBIA

New Decree Allows Customs to Stop Counterfeit Goods at Borders The General Prosecutor’s Office (PGR) seized 11 tons of counter-

feit medicines and arrested six individuals as a result of raids ex-ecuted in Mexico City, Guadalajara and Morelia during November 2006, according to PGR Bulletin No. 1431/06.

While they might look like genuine products, counterfeit medicines may contain no active ingredients, the incorrect active ingredients or may be of inappropriate dosage or may be con-taminated. These problems represent the most dangerous kind of counterfeiting, as fake drugs not only deceive consumers but also represent a threat to public health. Counterfeit medicines do not help individuals treat their illness or condition and usually cause harmful side effects—even death.

The PGR’s actions were the outcome of amendments to the Mexican Health Law and to the Federal Code of Criminal Pro-ceedings (FCCP) that went into effect on May 26, 2006, by which Articles 464, 208 bis and 464 ter of the Federal Health Law were amended and Section Xv was added to Article 194 of the FCCP, with the intention of combating counterfeiters of medicines.

Criminal actions based on this new legislation, together with a trademark enforcement proceeding, can create a “sandwich effect,” strengthening actions against counterfeiters of medicines using labels or packages in an attempt to link the counterfeited product to a legitimate mark. It is hoped that adequate enforcement with collaborative efforts by the competent Mexican authorities may fortify the protection of public heath, as well as the interests of the companies affected by counterfeiters and send a strong signal to entities involved in this activity.

Contributor: Saul Santoyo, uhthoff, Gomez Vega & uhthoff, S.C., Mexico City; verifier: Adolfo Ocejo, PepsiCo, Inc./Frito-Lay, Inc., Mexico City

MEXICO

Strike Against Counterfeit Medicines

Various LocationsMarch 15 – �0, 200�

Anticounterfeiting from the Trademark Administrators Perspective

Don’t miss this opportunity to network with local trademark administrators and paralegals and be back at the office by lunchtime.

There’s still time to register!

These popular workshops provide you with the opportunity to delve into topics of particular interest to you and your profession as a trademark administrator. The March 2007 programs on anticounterfeiting will help you:

• Learn about the basic procedures you need to know and how to choose the best and most effective strategies against counterfeiters

• Find out about tools available to you• Expand your resources on both a global and local level• Share tips on how to stay ahead of the counterfeit

game• Learn what common pitfalls to avoid

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ATLANTA

BOSTON

ChICAGO

DALLAS

LOS ANGELES

NEW YORK

PhILADELPhIA

SEATTLE

WAShINGTON, DC

www.inta.org Vol. 62, No. 5 �

KOSOVO

PTO Likely to Open in the Near FutureThe opening of an independent patent and trademark office (PTO) in Kosovo is anticipated in the near future. Officials in the Industrial Property Department of the Ministry of Industry and Trade have indicated that they are prepared to open the PTO as soon as the law giving them authority to do so is promulgated by the Special Representative of the united Nations Secretary General (SRSG), thus making it law in Kosovo.

The law was passed by the Assembly of Kosovo on December 18, 2006. It generally takes four to six weeks for the law to be translated and to reach the SRSG’s office. Shortly thereafter, the document should be signed.

It is anticipated that when the PTO opens, the holders of Serbian registrations will have a 12-month period within which to revalidate their registrations in Kosovo. Requests for revalida-tions will have to be accompanied by documents evidencing valid registration at the Serbian PTO.

In the meantime, the enforcement of IP rights in Kosovo continues to be possible. Recently, a division within the united Nations Mission in Kosovo, the Political Economic Crime and Corruption unit, pledged its assistance to trademark owners bat-tling infringement in the region.

Contributor: Slobodan Petosevic, SD PETOSEvIC, Belgrade, Serbia; verifier: Dejan P. Bogdanovic, Mikijelj Jankovic & Bogdanovic, Bel-grade, Serbia

UNITED STATES

Trademark Trial and Appeal Board Allows Citation of All DecisionsThe Trademark Trial and Appeal Board (TTAB), in a Notice contained in the January 23, 2007, edition of the Official Ga-zette, announced a change in its policy concerning the citation of opinions to the TTAB. Previously, TTAB decisions not designated as precedential were not citable to the TTAB and, if cited, were disregarded. However, the TTAB has changed its policy to allow the citation of any TTAB decision.

Although the TTAB will now permit citation of all of its deci-sions, those decisions that are designated as not precedential will not be binding. Nevertheless, non-precedential decisions may be cited for whatever persuasive value they might have. The TTAB will continue its practice of considering precedential decisions as binding.

Furthermore, the TTAB will continue to designate final deci-sions as either precedential or not precedential. However, orders issued in response to motions will be considered not precedential unless specifically designated as precedential.

The Notice can be found on the u.S. Patent and Trademark Office website at www.uspto.gov/web/offices/com/sol/og/2007/week04/patcita.htm

Contributor: Jessica S. Sachs, Harness, Dickey & Pierce, P.L.C., Troy, Michigan; verifier: Leigh Ann Lindquist, Sughrue Mion, PLLC, Washington, DC

Join friends, colleagues and Sue, the world’s largest T. Rex, at Chicago’s world-renowned Field Museum. Enjoy exhibitions, conversation and dancing throughout the evening as you experience a cross-continental journey that combines the cultures of the world.

The INTA Gala is a perfect opportunity to entertain your business associates and make new acquaintances. It is also the occasion to recognize INTA award recipients, including winners of INTA’s academic programs, as well as outstanding volunteers and leaders of the Association.

Tables sell quickly; don’t delay in making your reservations.Cost: US $2,500 for a table of ten persons; US $250 per individual.When reserving a table, please submit a list of your guests.

For more information, email gala@inta.org, visit www.inta.org/go/chicago or call Customer Service at +1-212-642-1700.

Advanced reservations required.

Black tie formal dress

Chicago, Illinois, USASaturday, April 28, 2007

7:00 p.m. – 11:00 p.m.

Start the Annual Meeting in style at

the black tie INTA Gala!

T H E F I E L D M U S E U M

www.inta.org Vol. 62, No. 5 11

Law and Practice

INTA Bulletin BoardChehrazade Chemcham has joined the New York City office of Fulbright & Jaworski as an associate. She was previously INTA’s External Relations Manager for Europe.

Jill Sarnoff Riola has joined Akerman Senterfitt as a shareholder in the firm’s Orlando, Florida, USA office. She was previously with the Orlando office of Baker & Hostetler.

Jordan A. Sigale, Edward H. Rice and Marina N. Saito have joined Loeb & Loeb’s Chicago office. They come from Sonnen-schein Nath & Rosenthal LLP.

The INTA Bulletin Board announces job changes or other significant career news about individuals who work for INTA members. To submit an item for consideration, send a brief message with the individual’s name, position, firm and firm location to bulletin@inta.org.

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 page ten sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein. To learn more about sponsorship opportunities and policies, visit www.inta.org.

The Director General of the World Intellectual Property Organiza-tion (WIPO) has announced the deposit by the Government of the Republic of uzbekistan, on January 3, 2007, of its instrument of denunciation of the Madrid Agreement Concerning the Inter-national Registration of Marks.

Pursuant to Article 15 of the Madrid Agreement, and as indi-cated by the Republic of uzbekistan, the said denunciation shall take effect, in respect of the Republic of uzbekistan, on January 1, 2008.

Source: Madrid (Marks) Notification No. 168 issued by wIPO, Ge-neva, Switzerland; Contributor: Claus Eckhartt, Bardehle Pagenberg Dost Altenburg Geissler, Munich, Germany

UZBEKISTAN

Denunciation of the Madrid Agreement

If you were not practicing law, what would you be doing?Although I really enjoy practicing intellectual property law, I also love mountaineering. If I had to choose anything else than the law, I would probably like to become a mountain guide.

Name one thing that people don’t know about you.I love the mountains and although some people might know it, trekking, climbing and skiing are among my favorite activities. I still hope that at the occasion of the next INTA conference being held in Seattle that I can climb the summit of Mt. Rainier.

By: Gunjan Paharia, Zeus IP, New Delhi, India, INTA Bulletin Fea-tures–Members, Benefits & Services Subcommittee

Gielen CONTINuED FROM PAGE 4

Ministerial Diploma No. 188/2006, dated December 13, 2006, fixed a new price table for services rendered by the Institute of Industrial Property (Instituto de Propriedade Industrial). In addi-tion to increases in taxes that are often significant, the Institute will charge for some services that previously involved no fee.

There are some doubts about the constitutionality of the new price table because, according to the terms of the Constitution of the Republic of Mozambique, taxes and levies are created or modi-fied by law of the Assembly of the Republic (Parliament) and not by simple ministerial diploma. There are also some doubts about the date the new price table became effective, as the Ministerial Diploma states that it will be in force 60 days after the date of its publication, which was several weeks after December 13, 2006.

Contributor: Katia Cristo, Marcas e Patentes de Moçambique, Ma-puto; verifier: António de vasconcelos Porto, vasconcelos Porto & Associados - Sociedade de Advogados, Maputo

MOZAMBIQUE

New Taxes to Be Collected for Services Rendered by the Institute of Industrial Property

The Algerian government has recently revised the official fee sched-ule in connection with the registration of trademarks and designs.

By virtue of Article No. 111, published in local Official Gazette No. 85, dated December 27, 2006, the fees for most trademark- and design-related matters have doubled in comparison with their former levels. The new rates are applicable on all new applications filed beginning January 1, 2007.

Contributor: Saba & Co. IP, head Office, Lebanon; verifier: Saba & Co. IP, Algiers, Algeria

ALGERIA

Increase in Official Fees

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ES ThIS IS ThE PERFECT PLACE TO MEET

WITh LOCAL COLLEAGUES AND DISCUSS TRADEMARK ISSUES IN DEPTh

Topic: Trademark Dilution Revision Act

Dates: April 2 – 16, 2007

Held in multiple u.S. cities, these roundtables are designed to fit into your busy schedule.

Visit www.inta.org/go/roundtables to register and for more information.

International Trademark Association655 Third Avenue, 10th FloorNew york, Ny 10017 uSA+1-212-768-9887 • f: +1-212-768-7796www.inta.org • info@inta.org

March 10 – 1�, 200�INTA–ASIPI ConferenceSão Paulo, Brazil

March 12, 200�Roundtable: Border Enforcement of IP Rights in Korea Seoul, Korea

March 15, 200�Roundtable: Trademark Rights Enforcement in Vietnam: New IP Law and its Impact Hanoi, Vietnam

March 15 – �0, 200�Trademark Administrator Workshops: AnticounterfeitingVarious u.S. cities

April 2 – 1�, 200�Roundtable: Trademark Dilution Revision ActVarious u.S. cities

April �, 200�Mediation SeminarParis, France

April � – 20, 200�Alternative Dispute Resolution Online CompetitionFor Eu law students

April 28 – May 2, 200� 12�th Annual MeetingChicago, Illinois

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

ChairMary DeLongis, vF Sportswear, Inc.

Vice ChairKay Rickelman, Spoor & Fisher

Feature Articles: Member Benefits & ServicesPatrick Gallagher, Fulbright & Jaworski L.L.P.

Feature Articles: Policy & PracticePatricia Wilczynski Brozek, Wilczynski Brozek Law

Law & Practice: AmericasJanice Housey, Roberts, Mlotkowski & Hobbes, P.C.

Law & Practice: Asia-PacificLindsay Esler, Deacons

Law & Practice: Europe and Central AsiaClaus Eckhartt, Bardehle Pagenberg Dost Altenburg Geissler

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

STAFFExecutive Director Alan C. Drewsen, International Trademark Association

Director, Publishing Randi Mustello, International Trademark Association

Managing Editor, INTA BulletinJames F. Bush, International Trademark Association

Associate Editor, INTA BulletinJoel L. Bromberg, International Trademark Association

Designer Jesse Riggle, International Trademark Association

OFFICERS & COUNSELPresidentDee Ann Weldon-Wilson, Exxon Mobil Corporation

President ElectRhonda Steele, Mars, Incorporated

Vice PresidentRichard Heath, unilever P.L.C.

Vice PresidentHeather C. Steinmeyer, Blue Cross and Blue Shield Association

TreasurerGerhard R. Bauer, DaimlerChrysler AG

SecretaryGregg Marrazzo, Kimberly-Clark Corporation

CounselDavid H. Bernstein, Debevoise & Plimpton LLP

INTA Department Email AddressesCustomer Service: customerservice@inta.orgMeetings & Programs: meetings@inta.orgJob Bank: jobbank@inta.orgMembership: membership@inta.orgPublications: publications@inta.orgPublic Policy: tmaffairs@inta.orgPublic Relations: publicrelations@inta.orgRoundtables: roundtables@inta.orgSponsorship & Exhibitions: sponsorship@inta.orgThe Trademark Reporter®: tmr@inta.org

© 2007 International Trademark Association

Mark Your Calendars

Although every effort has been made to verify the accuracy of items carried in this

newsletter, readers are urged to check independently on matters of specific concern or

interest. The INTA Bulletin primarily 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.

Exhibitions and SponsorshipTo inquire about sponsorship or exhibition opportunities for INTA’s events, visit www.inta.org.

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