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JJTOWARDS GLOBALTRADEMARK LAW

TOWARDS GLOBALTRADEMARK LAW

In association with

Dedicated issue: Towards Global Trademark Law SUPPLEMENT #1 | 2003

ZIVKO MIJATOVIC & PARTNERS

LAW OFFICEINTELLECTUAL PROPERTY ADVISERS

Established 1939

The late Djura Z. Mijatovic, a prominent lawyer and former Chairman of the Belgrade Bar Association, founded ourfirm in 1939. In the early sixties, Djura Z. Mijatovic was also appointed secretary-general of the Yugoslav BarAssociation and the second senior partner, Zivko Dj. Mijatovic, was previously working as the Manager of the TradeMark Department of the Yugoslav Patent and Trade Mark Office. Our current Senior Partner Djura Z. Mijatovic J.R.is a Barrister and the member of Middle Temple, London.

Our primary activity is the protection of all kinds of Intellectual Property Rights including Trade/Service Marks,Patents, Designs and Unfair Competition in the countries of Central and Eastern Europe. We also have an office inAlicante, Spain, dedicated to the protection of European Community Trade Marks. Other activities of our firminclude Copyright Law, Licensing Agreements, Cooperation, Product Registration, opening of representation offices,etc. For the past sixty years our firm has been rendering services to a large number of multinational companies, thelist of which may be obtained upon request.

We are pleased to offer our legal services in Central and Eastern Europe. We are able to provide our clients with allkinds of legal services in the fields of Intellectual Property, Copyright, Unfair Competition and Commercial Law. Weare at your disposal for any of the above-mentioned services in the following countries:

ALBANIAAUSTRIA

BOSNIA AND HERZEGOVINABULGARIA

CROATIACZECH REPUBLIC

HUNGARYMACEDONIA

POLANDROMANIA

SLOVAK REPUBLICSLOVENIA

YUGOSLAVIA (SERBIA AND MONTENEGRO)PROTECTION OF EUROPEAN COMMUNITY TRADE MARKS

All our offices operate under the Central Docketing System, whereby all the correspondence is directed to ourHead Office in Alicante, Spain, the details of which are as follows

Head Office (for all correspondence)ZIVKO MIJATOVIC & PARTNERS

P.O. Box 111Playa San Juan03540 Alicante

Spain

Tel. Nos. ++ 34 96 515 42 44++ 34 96 526 34 74

Fax Nos. ++ 34 96 516 03 63++ 34 96 526 96 91

e-mail: [email protected]: www.zm-p.com

CONTENTS

Towards GlobalTrademark Law

6 | FIRST THINGS FIRSTK Why does the world need global trademark law?

The case for harmonisation of trademark law is argued by Olga Nedeltscheff, head of trademarks for Philip Morris InternationalManagement SA, and editor-in-chief of the INTA bulletin.

12 | A GLANCE AT 2003K Toe Su Aung of BATmark Limited outlinesthe issues identified as the key concerns forINTA in Europe.

18 | THE BIG THREEK Kim Muller, a past president of INTA, iscurrently a special advisor to the USDepartment of Commerce Public AdvisoryCommittee. He outlines the Association’s keyobjectives for US policy in 2003.

20 | BUILDING BETTER LAWK Maria del Carmen Arana, of Peru’sEstudio Colmenares, outlines the programmeset forth for development of trademark issuesin Latin America

23 | RIDING THE TIGERK Jeannie Smith, the chair for INTA’s Asia-Pacific Subcommittee of the LegislationAnalysis Committee, outlines the goals beingpursued in Asian jurisdictions.

28 | BRIDGING THE GULFK Rawan Makram Sunna outlines aninitiative to harmonise the laws of six nationsin the Middle East, and the barriers that haveappeared.

32 | EUROPE EXPANDS EASTK The European Union welcomes 10 newmember states as from 1 May 2004.Solicitor Tasneem Haq of London law firm,Field Fisher Waterhouse, explores theconsequences of the enlargement of theEuropean Union upon the CommunityTrade Mark system.

36 | TWO SIDES OF A STORYK Shirley Kwok, trademark specialist withGreater China lawfirm, Vivien Chan & Co,compares the two extremes of opinion aboutthe results of China’s efforts at intellectualproperty enforcement.

40 | EXTENSION OR EXTINCTION?K The tobacco industry may soon find its oneexisting route to market – brand extensions –closed by a flurry of national legislation. SiânCroxon and Richard van Schaik lead a teamof DLA specialists in this review of currentand future options for the tobacco companies.

44 | IS THAT SPORTING? K Dominic Farnsworth, of Lewis Silkin,reviews the use of trademarks in sportsbusinesses worldwide.

50 | SHOCK OF THE NEWK Brett Doyle and Dhiraphol Suwanprateeplead a Baker & McKenzie team in examiningthe various approaches taken to non-traditional marks in Australia and Thailand.

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JJTOWARDS GLOBALTRADEMARK LAW

TOWARDS GLOBALTRADEMARK LAW

In association with

Dedicated issue: Towards Global Trademark Law SUPPLEMENT NO.1 | 2003

From the publishers of

trademark WJRLD

Managing Editor: Jacqueline NunanTel: +44 (0) 20 7017 [email protected] Manager:Paul Thoroughgood Tel: +44 (0) 20 7017 4173 [email protected] Manager: Beverley McGrath Tel: +44 (0) 20 7017 5154 [email protected] Executive:Owen Bridgeman Tel: +44 (0) 20 7017 5269 [email protected]

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Published by Informa Law, Informa House, 30-32 Mortimer Street, London W1W 7REwww.ipworldonline.com

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Whilst every effort has been made to ensure thatthe information contained in this journal is correctneither the editor and contributors nor InformaProfessional can accept any responsibility for anyerrors or omissions or for any consequences resulting therefrom.

© Informa Professional 2003, and contributors. The contents of this journal are protected under thecopyright law of the United Kingdom, the BerneConvention and the Universal Copyright Convention.Any unauthorised copying of the journal may be inbreach of both civil and criminal law. Infringers willbe prosecuted.

Don’t missSUNDAYINTA will celebrate its 125th Anniversarywith Grand Opening Ceremonies from 5pmto 6.15pm on Sunday, with the meeting'sco-chairs - Charles Gielen of Nauta Dutilh inthe Netherlands, and Helen Hill Minsker ofBanner and Witcoff Ltd in the United States- welcoming delegates and offering apreview of the 2003 Annual Meeting.

MONDAYA mock argument before INTA's CTM Courtwill explore all the key issues confrontingtrademark specialists dealing with theCommunity Trade Mark. While the issue ontrial is hypothetical, the expertise is not:Judges Bornkamm of the Federal SupremeCourt of Germany, Meij of the ECJ's Court ofFirst Instance in Luxembourg, and Numannof the Dutch Supreme Court in theNetherlands will preside.

TUESDAYKeynote speaker Andrew Prozes, chiefexecutive of Reed Elsevier's LexisNexisGroup, will discuss his vision for the legalservices firm, and the specific initiativesunderway to help protect trademarks in theglobal market. Mr Prozes was appointedchief executive of LexisNexis Group in 2000;previously, he served as executive vicepresident and chief operating officer ofWest Group, part of the ThomsonCorporation.

WEDNESDAYWith the USA due to accede to the MadridProtocol before the end of 2003, the time isripe to brush up on skills in this area.INTA's Advanced Madrid Strategies aims toeducate trademark specialists from aroundthe world in the techniques required tomaximise the benefits of the Madrid route.Speakers include Clark Lackert of King &Spalding in the US, Caroline Casalonga fromBureau DA Casalonga-Josse in France,Marcus Hoppberger of the World IntellectualProperty Organization, and Mary M Squyresfrom Brinks Hofer Gilson & Lione in the US.

Light a fireE very month, Trademark World publishes a range of

articles on the topics making news in trademark law. Wewant to squeeze in as much variety and mission-critical

information as possible, so those articles tend to be diverse, succinct and relatively brief. Twice ayear, however, we have the opportunity to explore a topic in greater depth.

Towards Global Trademark Law represents Trademark World’s first dedicated supplement of2003, and as is traditional, we have produced it to complement the gathering of experts that takesplace every year at the International Trademark Association’s Annual Meeting. Trademark law,and more specifically, international law and harmonised practice, will be the key concepts beingdissected, debated and analysed before, after and throughout INTA. Our intention here is to providefuel for that intellectual fire: a collection of articles that explores different aspects of harmonisationand globalisation efforts worldwide.

Few bodies do as much to advance the cause of globalisation as the International TrademarkAssociation, so it is fitting that Towards Global Trademark Law opens with a number of articles bysenior figures from INTA. Various authors from jurisdictions chart their region’s progress towardsharmonised law, and outline the initiatives INTA has undertaken to drive this progress. Informa Lawwould like to thank INTA for agreeing to participate in this supplement: quite clearly, TrademarkWorld’s mission to build expertise in trademark law and business is one shared by INTA.

Drawing its membership from the ranks of some of the world’s multinational brand owners, it ishardly surprising that the Association is driven to encourage a truly global approach to intellectualproperty worldwide. Law firms, too, find themselves working across borders and in multiplejurisdictions, and see strong advantages to common standards and practices. In Towards GlobalTrademark Law, we explore initiatives to advance these goals in various regions, as well asassessment of how far away globalisation really is in some key brand sectors.

The authors showcased here span a wide range of practices and represent every major continent,if not jurisdiction. From pharmaceutical trademarks to sports, tobacco advertising to colour marks,each article takes an international view, and can guarantee to build your knowledge of the broaderinternational context in which trademark law must operate.

Whether as conversation starter or luncheon table topic, we hope they will serve you well. For thoseattending INTA, we wish you a productive and enjoyable conference. For those not able to make it thisyear, we are confident much of the spirit of the gathering is expressed in the following pages.

Jacqueline NunanManaging EditorTrademark World

From the editor

TOWARDS GLOBAL TRADEMARK LAW

4 Towards Global Trademark Law | 2003 www.ipworldonline.com

Tendingthe flameA s international communication and trade expand, the whole world seems to grow smaller.

And, as we increasingly do business globally, our brands must likewise be protectedthroughout the world. Clearly, globalisation creates an imperative for harmonised

international trademark laws and procedures. Since 1878, the International Trademark Association (INTA) (formerly the United States

Trademark Association) has worked worldwide for the interests of trademark owners, and hasdedicated itself to the support and advancement of trademarks and related intellectual property aselements of fair and effective international commerce.

As a leading advocate for the interests of trademark owners, INTA has fostered effectivetrademark laws and policies worldwide and sought to harmonize their implementation. TheAssociation, often in cooperation with other national, regional and international intellectualproperty organizations, has encouraged the adoption of and adherence to trade agreements andmultinational treaties.

In addition to its work in public affairs, INTA has fully supported a global educational program.The INTA Annual Meeting this year in Amsterdam is just one example of this initiative. Moreover,the Association has already held programs in Shanghai and Beijing in 2003, and its yearlyTrademarks in Cyberspace program will be held in both Shanghai and Washington, DC.Throughout this year, INTA also will conduct educational programs devoted to different aspects ofthe Madrid Protocol, including a forum co-sponsored with WIPO in Geneva.

I would like to thank Trademark World for devoting this edition to Towards Global TrademarkLaw, as well as highlighting INTA’s 125th Anniversary and its work in international trademarklaw. INTA’s members are at the heart of the Association’s work throughout the world and it is inthis vein that articles for this edition reviewing steps towards harmonisation and INTA’s workregionally in Europe, the Asia-Pacific region, Central and South America and the United States,have been written by INTA member experts in the intellectual property field.

Kathryn Barrett ParkPresident, International Trademark AssociationTrademark Counsel, General Electric Company

From the presidentMembers by region

Members by region

INTA today


TOWARDS GLOBAL TRADEMARK LAW

South Asia

North America

Middle East & North Africa

Latin America & the Caribbean

East Asia & Pacific

Europe & Central Asia

Sub-Saharan Africa

Key

25%

1,077

57 82

561

457157

1,967

13%

10%4%

45%

1% 2%

JJA RATIONALE


The case for harmonisation of trademark law is argued by Olga Nedeltscheff,head of trademarks for Philip Morris International Management SA, and editor-in-chief of the INTA bulletin.

T rademarks have been in use since ancienttimes, as markings first placed on objectsby the makers to indicate source, and they

have expanded exponentially along with thespread of commerce. Consumers identify withathe brand of preference, indicative of a certainlevel of quality and, augmented by advertising,an ideology or a lifestyle. At first, each mark wasdistributed only as far as the maker’s goods weresold or marketed.1 Salvaged shipwrecks haveshown that goods such as urns for olive oil orwine were marked and shipped to other lands.By such means, it was possible to identify thesource of the goods.

Fast- forward to the 21st century andtrademarks are everywhere – goods circulateglobally and the marks connected with them areused and protected worldwide. Marks such asCOCA- COLA and MARLBORO are recognizedall over the world. They serve an efficient function:trademarks reduce the amount of time it takes fora consumer to decide to select and purchase theitem in question because theyit relays certain typesof information to the purchaser.2 The consumermay be familiar with the brand or selection ofbrands, and based on purchases in the past,chooses the item bearing a particular mark.

Traditionally, trademarks indicated the sourceof origin and a level of quality. Today, it is the latterthat predominates, as trademarked goods are madein many places under the watchful eye of thetrademark owner/licensor. The consumeridentifies a certain level of quality with a particularbrand, and makes purchasing decisions based onsuch experiences. Repeated purchases of the samebrand reinforce the level of quality, and help tocreate the goodwill associated with the brand.

In the last century, tThe accessibility of traveland proliferation of marks have contributed tointense demands on trademark owners – - toregister their ever-increasing numbers of marksto keep ahead of the competition, and to defendand maintain the acquired trademark rights, notonly within local jurisdictions but globally aswell. It is for this reason that harmonisedtrademark law became necessary to maintain thetrademark’s important role in the globalcommercial process. .

Trademark laws developed as an outgrowth

of local conditions, expanding in certaincountries where industry was becoming moreimportant than agriculture. Initially slow instarting, trademarks began to have greatercommercial importance in the late 19th century.

And by the latter part of the 1870s,manufacturing was becoming capable ofproducing increasingly greater numbers andvarieties of goods, all needing trademarks todistinguish them from the products ofcompetitors.

First steps Concurrent with the Paris InternationalExposition, the first Congress on IndustrialProperty was held in 1878.3 At the Congress,which brought together representatives ofnumerous European countries, there was anapparent desire to make possible efficientprotection of trademarks. This meeting resultedin the Paris Convention of 1883, a first formalstep for harmonised, if not global, trademark law.

The Paris Convention, which covers bothpatents and trademarks, has been amendedrepeatedly;, the last version dates to 1967 in

Stockholm.4 It remains to this day one of thebasic vehicles for national treatment, andrecognition of priority and well-known marks.

The Madrid Agreement, established in 1891,was developed toas a further extendsion of theconcept of providing protection in a number ofcountries through one office.5 The MadridAgreement provides an advantage in that, on thebasis of a home registration, an InternationalRegistration can be extended to designatedcountries through one industrial property office,which issues one registration covering all suchjurisdictions. It is possible to renew and torecord assignments (and changes of name andsimilar administrative actions) via the WorldIntellectual Property Office (WIPO) in Geneva.Licenses are also possible to record, but facemore local restrictions.

However, obtaining an internationalregistration is dependent upon the industrialproperty office of the home country and, underthe Madrid Agreement, the applicant must havea home registration before the InternationalRegistration can be obtained. An additionaldisadvantage is what is known as “central attack”:

In summary

J Harmonised trademark laws have become necessary as commercial networks expanded

from local to regional, and then international markets. International brand owners

must have the opportunity to protect and maintain marks on an international basis

J International initiatives under the Madrid Protocol, TRIPs, and Trademark Law Treaty

are complemented by regional pacts such as the Andean Pact and , the Pan-American

Treaty in the Americas, and the Community Trademark (CTM) in Europe

J INTA has consulted with governments, intergovernmental bodies and enforcement

groups such as Customs Authorities to present trademark owners’ positions on best

practice and necessary standards

J Progress has been impressive: similar cases are now addressed in a variety of

countries in offering information and arguments before judges in varying jurisdictions

around the world. Several countries, such as Pakistan and the Hong Kong Special

Administrative Region, have implemented provisions outlined in INTA’s Model Law

Guidelines, which present the most advanced aspects of common law and civil code

statutory trends impacting trademarks

First things firstK Why does the world need global trademark law?

A RATIONALE


the resulting international extensions aredependent upon the home registration for thefirst five years of the international registrationterm. If for any reason the home registration iscancelled or voided, all extensions fail.

The Madrid Protocol, which is a treatyparallel to the Madrid Agreement, has been ineffect since 199689.6 The Protocol allows home

applications to act as bases, and in the event thatthe application does not issue to registration, theinternational registration can be converted tonational applications maintaining the Protocolpriority date. There is also a default provisionknown as the “safeguard clause,” which requiresthat where a country is a member of both theAgreement and the Protocol, and the otherextensions are to Protocol countries, the rulesand regulations of the Protocol will apply.

The Protocol has prompted adherence bycountries heretofore not members of the MadridAgreement including the United Kingdom,Japan and now the United States, the lattermostthrough no small efforts by the InternationalTrademark Association (INTA) over the past 15years.7 In the interest of increasingharmonisation of trademark law, INTA has beena staunch supporter of implementation of theMadrid Protocol in many countries, the mostrecent announcement of which was the plannedaccession of the United States. Implementationof the Madrid Protocol in the United States maytake place as soon as the end of 2003.

Regional harmonisation trendsIn addition to the Madrid Agreement andProtocol, which are multi-jurisdictional, thereare regional harmonisation trends throughorganisations such as MERCOSUR in LatinAmerica, ASEAN in Asia, and regional treatiesand directives such as the Andean Pact, , thePan-American Treaty in the Americas, and theCommunity Trademark (CTM) in Europe.INTA has been very active in monitoring andproviding input to these organizations, andencouraging compliance with the Agreement onTrade-Related Aspects of Intellectual PropertyRights (TRIPs), whenever applicable.

The new Common Regime on IndustrialProperty for the Andean Community (AndeanPact), established in December of 2000, whichlists as its member states Bolivia, Columbia,Ecuador, Peru and Venezuela, and providescertain reciprocal rights to trademark owners inthe adherent nations, including the ability tosupport a registration in any one of the countries

by use in at least one of the Andean Pactmembers. There is no central filing agency atthis time, but the applicability of the lawsfunction along the model of the ParisConvention.

The Pan-American Convention, signed inWashington, DC on February 11, 1929,includes a number of North and SouthAmerican countries as members. TheConvention addresses the protection oftrademarks and trade names, unfaircompetition and geographical indications oforigin. Originally, there had also been aProtocol in tandem with the Convention,providing for a centralised filing bureau alongthe model of WIPO, but the Protocol wasdenounced and the Bureau closed due to forlack of funds in 1944-1945. Colombia, Cuba,Guatemala, Haiti, Honduras, Nicaragua,Panama, Peru and the United States remainmembers, having ratified the Convention.

The Community Trademark (CTM) (CTM)took 25 years to reach the consensus required topromulgate an implementing Directive. Sincecoming into effect in 1996, thousands oftrademark owners have taken advantage of thisefficient system, whereby one filing at OHIM inAlicante, Spain, allows a trademark owner to enjoytrademark protection in all EU member states.Such CTM registration can be supported by use inany member country. Now, as the European Unionis poised for enlargement, the CTM may not be aspractical as it has been in the past.

In addition to such regional treaties, there areother agreements such as the TrademarkRegistration Treaty (TRT) and the TrademarkLaw Treaty (TLT) and the TrademarkRegistration Treaty (TRT). The TrademarkRegistration Treaty was an agreement that

attempted to mitigate the disadvantages of theMadrid Agreement, but did not reach the resultsattained by the Madrid Protocol. TheTrademark Registration Treaty was concludedin 1973, and has had onlyby which time only fivecountries had ratifiedy the TreatyAgreement.Effective as of 1980, the TRT created a separatesystem of international registration, designed toattract countries that which did not join to theMadrid Agreement, such as the United States.8

Instead, the Madrid Protocol has gainedmembers and continues to attract a growingnumber of new adherents.

On the other hand, the Trademark LawTreaty, whose goal iswhich aims to harmoniseand simplify requirements and administrativeprocedures of national offices, may be picking upmomentum at a time when technology and thespeed of business has overtaken certainrequirements in local jurisdictions.9 As part of anambitious agenda to encompass all aspects oftrademark protection in one agreement, WIPObegan negotiations in 1989. It soon becameapparent that a more focused scope would lenditself to a successful conclusion, and theresultant treaty outlines applicationrequirements, harmonising and simplifyingnational procedures. Adopted in Geneva onOctober 27, 1994, the TLT entered into force onAugust 1, 1996. Adherents of the TLT may notrequire legalisation of documents. The TLT alsoprovides model forms for the trademarkregistration process.

Harmonisation projectsTheINTA has also been involved in a variety ofother harmonisation projects, including a WIPOinitiative in 1988 concerning counterfeiting andpiracy, customs enforcement, and Internetdomain names. INTA also evaluated andsuggested procedures by which the WorldCustoms Organization’s (WCO) Model CustomsLaw on intellectual property could be made moreeffective. The WCO Model, which was modifiedin 1995, provides customs administrations with atool for transposing the customs-relatedprovisions of the TRIPs Agreement.

Whenever countries have turned to INTA at atime when their legislators are contemplatingupdating or revising their industrial propertylegislation, the Association has offered its ModelLaw Guidelines as a threshold to such ventures.These guidelines were developed over a four-year period,and are based on the most advancedaspects of common law and civil code statutorytrends impacting trademarks. Manyjurisdictions, such as Pakistan and the HongKong Special Administrative Region, haveconsidered these guidelines and areincorporating many of the suggested provisionsinto their laws.Whenever countries have turned

In the interest of increasing harmonisationof trademark law, INTA has been a staunchsupporter of implementation of the Madrid

Protocol in many countries, the mostrecent announcement of which was theplanned accession of the United States

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A RATIONALE


to the INTA at a time that their legislators arecontemplating updating or revising theirindustrial property legislation, the INTA hasoffered the Model Law Guidelines as a thresholdto such ventures.

It can be said that the General Agreement onTariffs and Trade (GATT)WTO and theTRIPS Agreement have served as the impetus,and perhaps even the driving force, behind theharmonisation trends in many countries.10

There appears to be a trend toward regionalprotection, with a desire to have worldwidecoverage via cost effective and efficient systems,which could also make some allowance for localcustom and practice, just as marketing optimallyaligns itself with the preferences of the localconsumer.

Terms of non-use have been aligned as aresult of TRIPs, prompting the United States tocomply by changing the prima facieabandonment term of a US registration fromtwo years to three years.

TRIPs has also been the instrumental indefining what is protectable as a trademark, andhas made some efforts to harmonise remedies,but enforcement is yet to be standardised. Ingeneral, INTA has urged that countries andregions comply with the TRIPs Agreement.The Association has also clarified provisions ofthe Agreement on an as needed basis. Forexample, INTA has taken the position that incases of conflicts between geographicalindications and trademarks, the principle of “firstin time, first in right,” as laid out in TRIPs,should be applied. [now if only enforcementcould be standardized…].

Harmonisation of other aspects of thetrademark practice is also taking place. Forexample, the International Classification ofGoods and Services has been adopted officiallyby many nations, but used by even morejurisdictions. Contrast this development to thesituation 20 years ago when there were nationalclassifications in many countries as diverse asJapan, Mexico, Great Britain and Korea. Today,the 8th Edition of the InternationalClassification predominates formally orinformally, and the global tendency is to refer tothe internationally accepted criteria.

Tying up loose endsProtocolisation and legalisation of documentshas been addressed by The Hague Convention,which allows for the affixation of the Apostille,and has done much to standardise theinconsistent practices of certain countries.While there is no acknowledgement that suchauthentication does anything further to confirmthe veracity of the information contained in thedocument or as to the signer, there is at least atrend toward standardisation, therebysimplifying the onerous requirement. In fact, theTLT’s restriction on certification/legalisationrequirements will address this issue as morecountries join the treaty.

While one can retain a certain nostalgicpreference for the inconsistent application ofmany precepts of the Paris Convention, such asarticle 6bis regarding whatthat defines is a well-known mark, the overwhelming directionthroughout the world seems to supportwhatever is most effective in the real globalbusiness environment. It is now possible tobring examples (although not dispositive) ofhow similar cases are addressed in a variety ofcountries in offering information and argumentsbefore judges in such diverse jurisdictions as

Peru and Kazakhstan. An argument template inan opposition can be successful in Germany, aswell as in Jordan, substituting respectiveregistrations or prior rights.

We all have repeatedly heard about the “globalvillage”: the world is a smaller place than it wasperceived to be in the past. Given technologicalcapabilities of most industrialised countries andthe contracting time restraints imposed by thebusiness world, there seem to be trends towardstandardisation and harmonisation of trademarkprotection, including the acquisition andmaintenance of such rights. These trends onlyserve to lower the barriers to the free flow ofcommercial goods and services. At a time whenG8 Ssummits are expanding to many morenations, held under tight security, and politicaldivisiveness is the norm, comfort can be found inthe consistent harmonisation of practices andlaws relating to trademarks. K

Notes1 Preserving History: Trademark Timeline, 82

TMR 1021(September 1992-October, 1992)2 Marshall A. Laeffer, The New World of

International Trademark Law, 2 Marq.Intell. Prop. L. Rev. 1 (1998)

3 Stephen P. Ladas, Patents, Trademarks andRelated Rights: National and InternationalProtection, Harvard University Press,Cambridge, Massachusetts, (1975)

4 See World Intellectual PropertyOrganization web site(http://www.wipo.int/eng/main.htm)[hereinafter referred to as WIPO web site]

5 Madrid Agreement Concerning theInternational Registration of Marks,[hereinafter referred to as Agreement] SeeWIPO web site

6 See Protocol Relating to the MadridAgreement Concerning the InternationalRegistration of Marks at WIPO web site;Gerd F. Kunze, The Protocol relating to theMadrid Agreement Concerning theInternational Registration of Marks of June27, 1989 82 TMR 58 (January, 1992-February, 1992)

7 Terril Lewis, Towards Implementation ofthe Madrid Protocol in the United States, 89TMR 918 (November, 1999- December,1999)

8 See Kunze at 64-65, and Stephen P. Ladas,What Does the Vienna TrademarkRegistration Treaty Mean to the UnitedStates? 63 TMR 551 (November 1973-December 1973)

9 Joanna Schmidt-Szalewski, TheInternational Protection of TrademarksAfter the TRIPS Agreement, 9 Duke J.Comp & Int’l L. 189 (Fall 1998)

10 Id. At 205-206.

An argumenttemplate in an

opposition can besuccessful in

Germany, as wellas in Jordan,substitutingrespective

registrations orprior rights

The authorOlga Nedeltscheff heads the trademark group for Philip MorrisInternational Management SA as its Assistant General Counsel –Trademarks. Based in Lausanne, Switzerland, Ms Nedeltscheffcurrently serves as Editor-in-Chief of the INTA Bulletin—theInternational Trademark Association’s member newsletter. Sheserved as the Executive Editor for Europe and the Middle East forthe INTA Bulletin from 1998 to 2001. Other roles within INTA haveincluded serving as co-chair for the subcommittee on Russia andthe CIS, performing a leadership role for the InternationalCommittee, and serving on the INTA Board of Directors.

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INTA IN EUROPE


Toe Su Aung of BATmark Limited outlines the issues identifiedas the key concerns for INTA in Europe – and the action beingundertaken to guard the interests of trademark owners

T he 125th Annual Meeting of theInternational Trademark Association(INTA) is, for the first time in its

history, taking place in Europe in May 2003.Last September, INTA held one of its BoardMeetings in Brussels, and the Associationintends to return to Brussels every otheryear. The choice of European capitals as thelocations for major meetings is clear evidenceof the importance of Europe to INTA interms of furthering its strategic objectivesand increasing the voice of trademarkowners, from Europe and elsewhere, on theworld stage.

With 23% of INTA members concentrated inEurope, the Association is constantlychallenged to monitor every developmentaffecting the trademark rights of its members inthis region. In light of the many currentEuropean legislative and regulatory proposalseither before the European Parliament, theEuropean Council or under consideration by theEuropean Commission, INTA established apresence in Brussels in 1998 through theappointment of Thierry Lebeaux as the EUrepresentative of INTA. This article seeks to setout a few of the priority policy issues for INTAin Europe in 2003.

The Community Trade MarkThe success of the Community Trade Mark(CTM) registration system and the importance

In summary

J 23% of INTA’s membership is concentrated in Europe

J This article identifies INTA’s policy priorities with regards to European issues in 2003

and beyond

J INTA is closely involved with all Community Trade Mark issues, and plans to monitor

both legislative proposals and ensure that trademark owners’ concerns regarding both

the International Registration and the CTMR are considered

J Work is proceeding on the challenges of EU Enlargement and developing measures to

oppose bad faith registrations

J INTA is lobbying for trademark owners to gain access to the WHOIS database for

enforcement purposes, currently opposed by the EU under data protection laws

J Continued action is being mounted to combat counterfeiting, a problem that is

escalating significantly

J INTA is opposing EU attempts to extend the scope of geographical indications beyond

wines and spirits without proper considerations of prior trademark rights

J Action is being taken to oppose the EU’s single pharmaceutical trademark rule, along

with attempts to raise awareness of dangerous precedents it sets

K Priorities, policies and problems in Europe

A glance at 2003K Priorities, policies and problems in Europe

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INTA IN EUROPE


thereof to INTA members necessitates INTA’sclose involvement in all issues relating to theCTM. This applies to the EuropeanCommission’s proposed amendments to theCTM Regulations under which nationalsearches for CTM applications are to beabolished and the Boards of Appeal to berestructured.

The recommendations are made in a proposal

for a Council Regulation to amend the CTMRegulation (CTMR) of December 1994. Article39(7) of that Regulation envisaged that certainaspects of the functioning of the CTM systemwould be reviewed five years after the officeopened in April 1996.

At the same time, the Office forHarmonisation in the Internal Market (OHIM)proposed an amendment to its implementingregulations. INTA, as a member of the OAMI(OHIM in Spanish) Trademark Groupsubmitted comments to OHIM on theImplementing Regulation on February 28 2003,and prepared comments on the amendments tothe CTMR. INTA will work this year tomonitor both legislative proposals and ensurethat trademark owners’ concerns regardingboth the International Registration and theCTMR are considered.

EU enlargementBy May 1, 2004, there will be at least 10 newEuropean Union member states - Cyprus, theCzech Republic, Estonia, Hungary, Latvia,Lithuania, Malta, Poland, Slovakia andSlovenia. Enlargement raises a number ofcomplex legal and administrative issues, nonemore so than the implications on the existingCTM system. A CTM is a unitary rightcovering all member states of the EuropeanUnion. Therefore, it must automaticallyextend to all new member states. This,however, raises problems with regard toearlier rights held by other parties in the newmember states and the possible effect of theserights on the CTM, and vice versa, not only inthe new states but also as a whole.

INTA is very positive about EUenlargement and welcomes the EuropeanCommission’s formula on the CTM, namely,the automatic extension of CTMs applied for

or registered before accession of new memberstates, the preservation of the unitarycharacter of the extended CTMs, and theability of owners of earlier trademarksregistered in good faith to file oppositionwithin six months prior to accession.

The main challenge is the question of badfaith registrations, and ways to prevent them. In2002, INTA conducted research on how bad

faith is dealt with under the laws of each nationalEuropean member state, and continues tomonitor the issue closely. The risk of bad faithregistrations seems remote at the moment,mainly because of the awareness of candidatecountries to the problem and the closecooperation between OHIM, the TrademarkOffices of accession countries, and rights holdersin various nations.

There have been many discussions on badfaith during the OAMI (OHIM) EnlargementGroup meetings, the most recent having takenplace on March 26 in Brussels. INTA hasparticipated in this group since its inception, and

considers it to be one of the best EU forums inwhich to discuss issues relating to CTM andenlargement. The Association looks forward tocontinued participation.

Counterfeiting While counterfeiting is one of the mostsignificant issues directly affecting INTAmembers, it also has a wider effect. Whilebenefiting the criminal elements of society,counterfeiting hurts consumers, affects the taxrevenues of governments, and negativelyimpacts the level of investment and employmentin countries,. Within the European Union, theEuropean Commission’s latest statistics show

that in 2001, European Union customsauthorities seized more than 95 millioncounterfeit articles – almost 10 times the figurefor 1998. EU officials report that the number islikely to have doubled again in 2002.

As a result, the European Commissionpresented a proposal for a Directive on theenforcement of intellectual property rights onJanuary 30, 2003. The proposed Directive seeksto unify legislation in Member States bystrengthening measures in countries whereenforcement of rights is currently the weakest,and to establish a general framework for theexchange of information between the relevantnational authorities. In addition, on January 20,2003, the Commission also proposed aRegulation to amend Regulation (EC) No3295/94 that deals with customs actions andmeasure against infringing goods.

INTA continues to be actively engaged on thiskey issue. In January this year, INTA Board ofDirectors member Richard Heath and GeorgJahn, member of the Anti-Counterfeiting andEnforcement Committee, attended a workshopon counterfeiting organised by the EU’sDirectorate-General for Justice and HomeAffairs. INTA also plans to send its commentson both the Enforcement Directive and theCustoms Directive to the members of theEuropean Parliament, building on points itsubmitted in 1998 on the previous EU GreenPaper on Counterfeiting, and followupcommunications to that topic in 2001, and on theEU Customs Regulation in 2002.

WHOIS databaseWith the increase in e-commerce and theconcurrent emergence of misuse by peopleacting in bad faith who wish to take advantage ofthe anonymity provided by cyberspace, theWHOIS database must remain accessible toright holders as a means of enforcing their rightson the internet.

INTA has been advocating an open WHOISdatabase for many years, and welcomes therecent EU position that right holders shouldhave access to the WHOIS database to fightcybersquatting. The WHOIS database is animportant source of information and inparticular, it is probably the most important

The WHOIS database is an importantsource of information and in particular, it is probably the most important anti-

cybersquatting tool for trademark owners

In 2002, INTA conducted research on howbad faith is dealt with under the laws ofeach national European member state,

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anti-cybersquatting tool for trademarkowners.

However, under Europe’s data protectionlaws, EU institutions are reluctant to grantaccess to WHOIS database information for thepurposes of monitoring website content. Thishas the potential of hindering trademarkowners’ fight against counterfeiting andcybersquatting online, and INTA continues towork with European associations such as theMotion Picture Association and othernongovernmental organizations (NGOs) tomaintain dialogue with European Unioninstitutions on the importance of an open andaccessible WHOIS database for enforcement ofintellectual property rights in cyberspace. Geographical indications

INTA has long opposed the increasing attemptof the European Union to extend the scope ofgeographical indications protection beyondwines and spirits without proper considerationsof prior trademark rights. INTA also conteststhe current EU proposal for the establishment ofa multilateral system of notification andmandatory registration of geographicalindications for wines and spirits withoutestablishing proper opposition mechanisms fortrademark owners to challenge applications forgeographical indications at a multilateral level.

The WTO negotiations on the issue are welladvanced, and in direct opposition to theinterests of trademark holders, instead favouringthe rights of holders of geographical indications.INTA has maintained at both the EU and at the

WTO levels the importance of considering thewell-established intellectual property principlesof territoriality, exclusivity and priority.

Under the TRIPs agreement, geographicalindications are an intellectual property right,and INTA firmly believes that they should betreated on an equal basis with any otherintellectual property right. Enhanced protectionof geographical indications without theavailability of proper opposition presents a directthreat to both vested trademark rights, and the

availability ofnumerous genericterms.

This is clearlyillustrated by theFeta cheese battle inEurope. Dairyowners in Greecehave been pressingthe EC to make“Feta a geographicalindicator. However,this poses a risk tothe Danish, Frenchand Germanindustries, whichhave long used theword as adescriptive term.

INTA iscommitted to

continuing dialogue with EU officials to ensurethat a balanced approach be taken to resolveconflicts between the rights of trademarkowners and geographical indications at theWTO level. INTA also plans to continueeducating members and governments in the EU,and outside the EU, at INTA roundtables ongeographical indications in Germany, Beijingand Shanghai. A plenary session on the topic isexpected to be one of the highlights of the 125thAnnual Meeting.

Single pharmaceutical trademark EU institutions are discussing a proposal tocodify the single trademark requirement in therevision of the pharmaceutical legislation nowongoing in the European Union. TheCommission is, in essence, confirming the singletrademark policy that it de facto has imposedsince 1995 with regard to market authorisationof medicinal products under the centralisedprocedure, requiring the marketing of apharmaceutical preparation under only onetrademark.

Additionally, on December 10, 2002, theEuropean Court of First Instance overturned aEuropean Medicines Evaluation Agency(EMEA) decision rejecting the request of aGerman pharmaceutical company to use more

INTA believes thatthe singletrademark

requirementcreates an

unnecessaryrestriction on theuse of trademarksand is opposed tothis requirement


INTA IN EUROPE

than one trademark for the same product inseveral countries in the EU, despite the fact thatthe applicant (Karl Thomas GmbH) was unableto find one trademark that was available in all 15markets. This delayed the launch of its productfor three months.

INTA believes that the single trademarkrequirement creates an unnecessaryrestriction on the use of trademarks and isopposed to this requirement. This is mainly

because trademark owners should be allowedthe opportunity to market their productsunder different trademarks across the EU, asalready provided for under the mutualrecognition procedure. Companies may beforced to use different trademarks due to thenature of the EU internal market, ie tomanage linguistic differences between the EUmember states and to efficiently remedy theproblems related to the legal unavailability of

a trademark throughout the EU. Thedifficulties for manufacturers will onlyincrease once the European Union expandswith the addition of nine new countries andlanguages in 2004.

This requirement, more importantly,creates a dangerous precedent and may openthe door to future discrimination againsttrademark rights. INTA will continue toensure that EU institutions are made aware ofthese issues from a trademark owner’sperspective.

This article has set out some of the keypolicy issues which INTA will be monitoringand actively developing during 2003. Oneissue is conspicuously missing from the list.Once the United States accedes to the MadridProtocol, widely expected in 2003, it isenvisaged that the importance of the linkbetween the Madrid Protocol and the CTMsystem will escalate significantly. UnitedStates members who file Madrid Protocolapplications will find it imperative to be ableto designate the CTM under the MadridProtocol. INTA remains ready to leap intoaction on this matter and to rise to the fullrange of other challenges facing its membersin Europe. K

The author

Toe Su Aung is General Counsel at BATmark Limited, a sub-sidiary of British American Tobacco, based in London. Shedeals with intellectual property issues for the group globally,but with particular emphasis in Asia Pacific, Africa and NorthAmerica. She has been at BATMark since June 1999, whenBritish American Tobacco merged with Rothmans International.Recently, she has been particularly active in trying to get theissue of counterfeiting to the top of the global political agenda. She has a Bachelorof Law degree from the National University of Singapore and a Master of Law degreefrom the University of London. She is a qualified solicitor in both the UK andSingapore and a trained mediator who is passionate about alternative methods ofresolving disputes in the intellectual property area. She practised IntellectualProperty Law at the Singapore law firm of Drew and Napier prior to joining RothmansInternational in October 1992. Within INTA, she is Chair of the Regulatory AnalysisCommittee and has recently been appointed to the INTA Board of Directors.

INTA IN NORTH AMERICA


The big threeK A plan for action in the United States

Kim Muller, a past president of INTA, is currently a special advisor tothe US Department of Commerce Public Advisory Committee. He outlinesthe Association’s key objectives for US policy in 2003.

Although 45% of the InternationalTrademark Association’s (INTA)members reside in North America,

many of these members also conduct businessthroughout the world. INTA has always beenextremely active in the public policy arena ontrademark related issues in North America.These activities are focused on pre-establishedpriorities, which, if accomplished, helpmember companies protect and promote theirtrademark properties. The year 2003 will beno different as the Association focuses ondilution, the Madrid Protocol and thediversion of fees.

Trademark dilutionOn March 4, the US Supreme Court decidedthe case of Moseley et al dba Victor’s Little Secret vV Secret Catalogue, Inc, et al, No. 01-1015. It washoped by trademark practitioners that theSupreme Court decision would provide claritybetween seemingly inconsistent interpretationsof the Federal Trademark Dilution Act of 1995(FTDA).

The FTDA, which was signed into law inJanuary 1996, provides owners of famoustrademarks with a cause of action for cases inwhich another mark is alleged to havelessened “the capacity” of the famous mark “to

identify and distinguish goods or services.”The Fourth Circuit held that dilution

needed to be shown by actual loss of profits(Ringling Bros Barnum & Bailey CombinedShows, Inc v Utah Div. of Travel Development,170 F.3d 449 [4th Cir. 1999] at 460-465). TheSecond Circuit rejected that premise asinappropriate and not practicable (Nabisco, Incv PF Brands, 191 F.3d 208 [2d Cir. 1999]). Asin most dilution cases, the resolution of issues

is extremely fact intensive. The FourthCircuit case was rather startling in that theCourt could have resolved the case on manygrounds other than dilution and did not needto examine the FTDA. However, the issue inquestion (according to the Court) wasinterpretation of the FTDA and what wasrequired to establish a viable cause of action.

The Second Circuit did not follow thereasoning of the Fourth Circuit. However,the Second Circuit decision did not explainwhy a “likelihood” of dilution was sufficient tosatisfy a statute that failed to use the word“likelihood” when many of the state statutesused the word or concept. Thus, it was hopedthat the Victoria’s Secret case would pronouncea national test as to just what would satisfythe FTDA.

The Supreme Court found the FourthCircuit approach too restrictive, but held thatmore than a mere mental association byconsumers of the mark is needed. The Courtsaid that some proof, possibly by survey, mustbe presented to show a reduction in thecapacity of the mark to identify one’s goods.The justices found this an essential element ofthe statute.

On March 25, 2003, INTA announced theformation of a Select Committee on the FTDA.INTA president, Kathryn Barrett Park, hascharged the Select Committee – made up of in-house corporate counsel, and highlyexperienced practitioners and attorneys whohave experience litigating dilution cases – withthe task of considering whether or not changesto the FTDA are in fact needed, and, if so, torecommend those changes.

“The Victoria’s Secret decision has providedus with the opportunity to take a fresh look atUS dilution law,” said Ms Barrett Park. “Thedecision itself raised a number of issuesregarding how actual harm is proved, butthere are also other areas in dilution law thatare definitely worth exploring.”

The INTA Select Committee on the FTDAwill take this opportunity to review thecurrent status of dilution law, aggressively

In summaryK 45% of INTA’s members are concentrated in North America

K In the United States, INTA will focus its efforts for 2003 into three major areas –

clarifying dilution issues, assisting the US entry into the Madrid Protocol, and lobbying

for more appropriate funding of the USPTO

K A Select Committee has been formed to recommend any necessary changes to the Federal

Trademark Dilution Act, and is scheduled to complete its work by the end of 2003

K INTA will conduct seminars around the US throughout the year to educate trademark

professionals and their clients about the Madrid Protocol, and the changes it will bring

K Lobbying will continue to end the appropriations system of funding for the USPTO,

which diverts fees achieved over set limits to support other government programmes

“The Victoria’s

Secret decision has

provided us with

the opportunity to

take a fresh look at

US dilution law,”

— Kathryn Barrett Park

investigate the issues and chart a course forthe future. It is scheduled to complete its workby the end of 2003.

It has taken approximately eight years forthe Court to elevate issues concerning theFTDA and provide some clarity. Dilution isnot a concept derivative of the common law,nor does it exist to protect consumers at theimmediate point of purchase. However, it is aconcept worth keeping for the reasons thathave been articulated by numerous authors inthe field of trademark law.

The Madrid ProtocolAnother major priority in the United Statesfor INTA in 2003 is the implementation of theMadrid Protocol. If all goes according toplan, the United States will “come on line” onNovember 2, 2003.

INTA is approaching implementation of theProtocol on two fronts. First, theAssociation is striving to educate itsmembers on the fundamentals of filingunder the treaty. INTA will conductseminars around the country in 2003 toeducate those seeking information andknowledge of the Protocol. These seminarswill focus on the “how to” of the Protocol inthe United States.

Second, the Association’s USPTOSubcommittee will be reviewing the draftregulations for the Madrid Protocol, whichwere published on March 28, 2003. TheUSPTO Subcommittee will then forward itsassessment of the draft rules to the INTAleadership for approval.

The USPTO will require that Madridapplications be submitted electronically priorto transmission to the World IntellectualProperty Office (WIPO). If the basics of theapplication have been satisfied, WIPO willforward the request to other membercountries, which now number close to 60. Theexamination issues must be resolved in 18months, and INTA will work with the

USPTO to ensure quality of examinationunder the Madrid Protocol.

For the benefit of mark holders everywhere,INTA will continue its initiatives to extendthe Protocol to non-member countries.However, until the Protocol can be extendedto all European Union and Latin Americancountries, there is still much work left to do.It is hoped that within a few years, allEuropean countries can be reached by filing inthe United States using the Protocol.

Working with the USPTO The United States Patent & Trademark Officehas recently issued its second version of itsStrategic Plan. It includes completion of theTrademark Information Systems (TIS) and a

migration to nearly 100%electronic commerce in arelatively short period oftime. However, what thePlan cannot do isanticipate the extent ofdiversion of its user fees toother United States

government functions. The USPTO is entirely

funded by users ofthe system and not

a single penny oftaxpayer dollars go

towards running theagency.

Congressionalappropriators,however, mustgive permission forthe USPTO to spend

whatever user fees are collected. When theamount of user fees exceeds the amountappropriated, the difference is “diverted” toother government programs.

These diversions result in budgetinaccuracies, an inability to plan for the short orlong term future of the Office, and a generalmalaise of the user-funded Office. To some inWashington DC, this is a cost of doinggovernment business. To the user community,however, diversion is a concept that needs to end,and it is with this in mind that INTA continuesto work with the USPTO on this issue.

In 2002, INTA testified before Congress inopposition to proposed legislation that wouldpotentially lead to an overall increase intrademark fees, and commented to the USPatent and Trademark Office regarding theincrease in the basic filing fee.

INTA is a widely recognised and respectedorganisation that can effectively modifypublic policy for the benefit of trademarkholders and consumers around the world.The year 2003 will be no exception. Theissues of dilution, diversion and the MadridProtocol will likely dominate INTA’s 2003

initiatives in the United States.It is also a year where memberscan continue their volunteer

services forthe betterment

of all trademarkholders. K


INTA IN NORTH AMERICA

The author

Kim Muller is Senior Counsel for Shell OilCompany in Houston, Texas. He is activein patent, trademark and copyrightissues. He is past Chair of the State Barof Texas Intellectual Property LawSection, has served on the TrademarkOffice Public Advisory for the HoustonIntellectual Property Law Association, is past president ofthe International Trademark Association and is pastpresident of the Houston Intellectual Property LawAssociation. Mr Muller currently serves as a specialGovernment employee (SGE) due to his appointment by theSecretary of Commerce to the United States TrademarkPublic Advisory Committee.

INTA IN LATIN AMERICA


Building better lawK INTA in Central and South America

Maria del Carmen Arana, of Peru’s Estudio Colmenares, outlines the programmeset forth for development of trademark issues in Latin America

S ince 1908, when INTA’s draft proposal tothe President and Congress of Ecuadorbecame the model for legislative reforms in

several South American countries, INTA’smembership in Central and South America hasgrown to 10% of the total membership of theAssociation.

These members of INTA have made it theirpriority to create better trademark law systemsthrough working with officials on trademarkregulations in the Free Trade Area of theAmericas (FTAA) and Central America FreeTrade Agreement (CAFTA). In 2002 alone,INTA members also successfully gainedfunding for intellectual property enhancementand judicial enforcement.

INTA considers intellectual property,particularly trademarks, as beneficial to theeconomic development of all nations encouragingbusiness. In this vein, INTA’s FTAASubcommittee has supervised and commented onseveral FTAA intellectual property aspects since1996.

What is the FTAA?The proposal of creating the FTAA wasintroduced during the 1994 Presidential Summitin Miami. During the Summit, 34 presidents ofnations from throughout the Americas agreed tocreate a single hemispheric market by 2005,

through gradually eliminating obstacles to trade,and encouraging cross-border investments. Theguiding principle of the FTAA is to achievewelfare and progress for all of the citizens of theAmericas.

Paving the way for what will become thelargest hemispheric treaty in the world, the

United States Congress provided the presentBush Administration with Trade PromotionAuthority in August 2002. This means that theBush Administration now has the authority tonegotiate trade pacts with other countries, whichCongress can vote up or down, but not amend.

This Authority is included in the AndeanTrade Promotion and Drugs Eradication Act(ATPDEA) and is considered, among othercriteria, as critical when determining whichcountries should become beneficiary countries ofthe pact, and thus active participants in FTAAnegotiations.

The FTAA negotiation system works within theframework of presidential summits, ministerialmeetings and a Trade Negotiation Committee(TNC), which is formed by the vice ministers andnine negotiating groups that include theNegotiating Group on Intellectual Property.

Other temporary entities that form thenegotiation framework are: GovernmentRepresentatives on participation of Civil Society,which is in charge of receiving civil society’scontribution and directing them to the OfficialGroups; and the Technical Committee onInstitutional Issues (TCI), which is in charge ofthe FTAA’s future institutional development. TheInter-American development Bank (IDB),Economic Commission for Latin America and theCaribbean (ECLAC) and Organization ofAmerican States (OAS) provide technical,logistical and economic support for the FTAA.

ParticipationIn 1997, INTA representatives participated in thefirst private sector meetings focused on FTAA inBelo Horizonte, Brazil and recently participatedat the seventh official private sector meeting inQuito, Ecuador in October of 2002.

Aside from its physical presence, INTA hasbecome very involved in the submission ofcomments voicing the Association’s policies andperspectives relating to the proper treatment ofIP and enforcement matters in the proposedtreaty drafts. Following a request from the Officeof the US Trade Representative (USTR) inDecember 1999, INTA submitted its first set ofcomments containing six proposals forconsideration by the Official Negotiating Group

In summaryK 10% of INTA’s memebers are located in Latin America and the Caribbean

K INTA’s Latin American members are working to create better trademark law systems

through working with officials on trademark regulations in the Free Trade Area of the

Americas (FTAA) and Central America Free Trade Agreement (CAFTA)

K The Association has made funds available to help trademark offices and enforcement

agencies in Panama and Ecuador to more effectively protect the rights of trademark

owners in the region

K The International Amicus Subcommittee on Canada and Latin America will soon file its

first amicus brief in Latin America, commenting on Tabaclera Boquerón, SA v Nobleza

Piccardo Saci and/or British American Tobacco Company (BAT) and/or British American

Tobacco Company (Brands) Limited

Proving dilutionthus is unlikeproving readilyunderstandable

occurrences suchas confusion, mistake or

deception, onwhich traditional

trademark remedies rest

on Intellectual Property of FTAA.In July of 2001, the Ministers released the first

FTAA draft text for public consideration.Contained within the intellectual propertychapter were alternative provisions on thegeneral principle of exhaustion of rights, well-known trademarks, geographical indications,licensing, trademark enforcement and otherpoints of interest for INTA examination.

INTA’s FTAA Subcommittee and other relatedINTA committees worked in tandem to evaluateeach intellectual property and enforcement relatedprovision contained within the treaty, andsubmitted comments in both English and Spanish.These can be found on the INTA website atwww.inta.org/policy/submissions.shtml#ftaa.

In January 2003, INTA’s FTAASubcommittee, following another USTRrequest for comment, submitted its position on

the second draft treaty in both English andSpanish. These comments will be submitted tothe FTAA Civil Society Committee, after beingrevised in the Subcommittee’s meeting inAmsterdam in May 2003. Likewise, they willbe made available on INTA’s website.

INTA, through the FTAA Subcommittee,follows in full detail the meetings of theFTAA Negotiating Groups on IntellectualProperty in order to note the progress andmodifications in intellectual property thatapply to the guiding principle which form thebackbone of FTAA negotiations: “nothing isagreed until everything is agreed”.

The Central America Free Trade AgreementIn January 2003, ministers from Costa Rica,El Salvador, Guatemala, Honduras, Nicaraguaand the US met in San José, Costa Rica to

initiate negotiations for a future CentralAmerica Free Trade Agreement (CAFTA).The Ministers aim to complete the treaty byDecember 2003.

Negotiations, for the most part, have beenclosed to the private sector. However, in thelikely event that the new agreement willinclude a chapter on intellectual property,INTA’s Treaty Analysis committee will closelymonitor published reports on the progress ofCAFTA negotiations, and submit comments tothe interested parties when deemed necessary.

This is an exciting new challenge for INTAand the Association is looking forward tocontributing as it has in FTAA negotiations,by providing assistance and necessary help inorder to promote the harmonisation ofinternational trademark laws.

Funding better protectionWhile treaty analysis may seem topredominate INTA’s agenda in Latin America,the Association is also concerned about theability of each trademark office andenforcement agency to effectively protect therights of trademark owners in the region.

For this reason, under the supervision ofPaul Kilmer, chair of INTA’s TechnicalAssistance and Funding Subcommittee, and apartner at the INTA member firm of Holland& Knight, in Washington, DC, INTA hassuccessfully assisted in obtaining funds for theenhancement of related agencies throughoutthe Western Hemisphere.

Most recently, the subcommittee hasachieved success in Ecuador and Panama.

In 2002, the Government of Ecuadorapproved the use of US $245,000 financed bythe Inter-American Development Bank (IDB)for judicial training in the field of IntellectualProperty Rights.

This appears to be the largest amount everapportioned by a national government fromthe IDB for an intellectual property rightstraining program.

The Ecuadorian Intellectual PropertyInstitute is in the process of developing



Lucio Guiterrez, the President of Ecuador: INTA members are activley lobbying lawmakersfor improved IP protection in Latin America

In 2002, the Government ofEcuador approved the use of US$245,000 financed by the Inter-

American Development Bank (IDB)for judicial training in the field of

Intellectual Property Rights.



educational programs. The effort to obtainfunding from the IDB was coordinated byINTA Technical Assistance and FundingSubcommittee member, Maria CeciliaRomoleroux of Corral & Rosales, Quito,Ecuador.

In Panama, fellow Subcommittee memberOrlando Lopez of Durling & Durling,Panama City, has experienced similarsuccess. An amount of US $120,000 wasapproved for the automation of theIntellectual Property Office, improvingInternet access to records and creating linksbetween customers and Intellectual PropertyOffices. The dollar figure is expected toincrease to $200,000 with contingencyexpenses.

Judicial enforcementRecognising the important role the judiciaryplays in each country’s ability to ensure theimplementation of trademark rights, theAssociation’s International AmicusSubcommittee on Canada and Latin America,which is chaired by Marijo Coates of DeethWilliams Wall LLP in Toronto, Canada, haspainstakingly reviewed a number of cases inthe region for the possible filing of a briefamicus or formal letter.

2003 is a monumental year for INTA’s worktowards this goal. The Association’sExecutive Committee has recently consentedto the first filing of amicus briefs by thesubcommittees in the region.

INTA will file a formal letter with the Supreme

Court of Justice of Paraguay for the courts use inconsidering the dispute of Tabaclera Boquerón, SAv Nobleza Piccardo Saci and/or British AmericanTobacco Company (BAT) and/or British AmericanTobacco Company (Brands) Limited. The letterquestions the lower courts decision to suspendBAT’s right to exclusivity of its DERBY brandcigarettes. Credit for this accomplishment is duein large part to the persistence and careful reviewby subcommittee member, Jorge Otamendi fromG Breuer in Buenos Aires, Argentina.

INTA intends to strengthen its ties withgovernment officials in the western hemisphere forthe benefit of trademark protection, and willcontinue to seek new avenues for providing that theintellectual property and enforcement provisionscontained within the advancing free tradeagreements are fair, and promote internationallyrecognised standards for harmonisation.

Recognising the varying economies inCentral and South America, INTA will alsocontinue to work with the IDB and the WorldBank to encourage funding for training and theimplementation of new initiatives. Beyond thelaw making and technical aspects of trademarkprotection, INTA welcomes the opportunity toprovide assistance to the courts in the form ofamicus briefs and/or formal letters statingneutral, but tangible positions. K

The authorAttorney and linguist Dr Maria del Carmen Arana is a partnerand member of the Board of Estudio Colmenares in Peru. MsArana specialises in industrial property, and has been a mem-ber of INTA for more than 20 years. She serves as chair toINTA’s FTAA-MERCOSUR Subcommittee and is also a universityprofessor at the Pontifica Universidad Catolica in Peru. Asidefrom her work with INTA, Ms Arana serves as the coordinatorfor the FTAA-PERU Commission and as an arbitrator of theBoard of Arbitration of the Lima Bar Association.

INTA has been working very hard for the lasteight or nine years to establish a presence inthe East Asia-Pacific Region. The members of

the various committees of INTA located withinthis region have worked particularly hard behindthe scenes in their local countries: lobbyinggovernments about changes in the law, liaisingwith local bar associations and other bodies toeducate the governments, the public, andtrademark owners alike about the increasinglyinternational dimensions of trademark law.

INTA’s biggest initiative in this region is togrow both its membership and trademarkawareness in China, particularly over the last yearor two. China has a rapidly growing economy; itjoined the World Trade Organization (WTO) inDecember 2001, and in 2002 opened up itsborders for foreign investment. As a result, itbecomes increasingly important to have sufficientinternational standards of intellectual propertyprotection and enforcement to encourage multi-national corporations to want to invest. Equally,Chinese companies are also becoming much moreaware of the importance of intellectual propertyrights generally, and are looking beyond theborders of China to sell their products andservices more than ever before.

However, INTA’s presence is not just inChina. The Association has been active inmany countries, being invited to comment onnew laws and regulations, providing amicusbriefs in certain cases in some countries, andcementing relationships with local trademarkassociations, law societies and other similarprofessional bodies.

Regional harmonisation of trademark law andregions continues to be a big challenge. INTAhas been working with various local intellectualproperty groups since at least 1995, when anINTA subcommittee was formed to focus on thisregion. In 2002, INTA’s ASEAN Subcommittee(under the Treaty Analysis Committee)presented a report to the Working Group onIntellectual Property Cooperation of theAssociation of Southeast Asian Nations(ASEAN) that provides for harmonisation of lawin this region. This was very well received.

INTA’s Asia-Pacific Subcommittee of theLegislation Analysis Committee has also been


INTA IN ASIA

Riding the tigerK INTA in the East Asia-Pacific region

Jeannie Smith, the chair for INTA’s Asia-Pacific Subcommittee of the Legislation AnalysisCommittee, outlines the goals being pursued in Asian jurisdictions.

In summaryJ 13% of INTA members are concentrated in the Asia Pacific region

J The accession of China to the World Trade Organisation in 2001 has necessitated a

strong focus on China throughout 2003 and into 2004

J The Association has also been active within the ASEAN grouping, submitting a well-received

report on proposals for the harmonisation of trademark law across south-east Asia

J INTA has also helped frame trademark laws in New Zealand, Hong Kong and Australia

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busy over the last few years. It has producedreports comparing INTA’s Model LawGuidelines with the local country law in manyAsian countries, recommending changes andaction in appropriate countries. This has led tosome excellent results.

In New Zealand, INTA was instrumental inrevising the section on well-known marks in theNew Zealand Trade Marks Act. Because ofINTA’s intervention, the Act now complies withthe Trade-Related Aspects of IntellectualProperty Rights (TRIPs) agreement, andinfringement of well-known marks has beenextended to dissimilar goods and services.

In Hong Kong, INTA was able to persuadethe government to amend the Trade MarkOrdinance to include the World IntellectualProperty Organization (WIPO) criteria for whatconstitutes “well-known,” and worked with thelocal Institute of Trade Mark Practitioners, LawSociety and Asian Patent Attorneys Association(APAA) to ensure that sufficient extensions oftime were included in the Trade Marks Rules inorder to make the new law workable in practice.INTA members have also worked with theHong Kong government on drafting theExaminers’ Work Manual.

Focus on ChinaIn China, INTA has been particularly active. Itsspecific objectives in China are to strengthenpublic policy, to increase membership and toassist in education. Since 1998, INTA hasworked to form a close working relationshipwith Chinese brand owners, trademarkprofessionals, and trade associations withinChina. The goal is to be able to comment, andwhere appropriate, lobby the Chinesegovernment on new laws and practices. INTA has worked with the government andother intellectual property organisations inChina in a bid to improve trademark applicationprocedures, licensing, appeals and strengthenanti-counterfeiting legislation. Nearly 20Chinese companies have now joined theAssociation (the first one back in 2000), andhundreds of trademark professionals in Chinahave participated in INTA’s programs in Chinaand throughout the world.

As an example of INTA’s commitment to

China, in November 2002, INTA elected ChenXuemin, a trademark professional in Beijing, toits Board of Directors. In January of this year,that board-level appointment was complementedby the creation of a full-time role of Chinarepresentative, based in Shanghai. Ms Chen Minwas appointed, and is currently working withINTA staff and members on public affairs,membership and programming issues.

Representation in the wider Asian region hasalso been strengthened. Currently, two otherdirectors of the current Board of the Associationare based in Asia-Pacific: the Sydney-basedRhonda Steele (Mars, Incorporated) andSingapore-based Jo-Ann See (Allen & Gledhill).In August 2002, INTA hired Piin-Fen Kok as itsExternal Relations Coordinator, Asia-Pacific.She is responsible for INTA public policy issuesin Asia, with an emphasis on China.

Education and lobbyingINTA has also been very involved in sponsoringand assisting with seminars in Asia, particularlyin China. Board members and presidents of theAssociation have made a number of visits toChina, and many individual visits andpresentations have taken place. For example, inOctober 2000, INTA and the China TrademarkAssociation hosted a very successful roundtablein Shanghai on “Protection of Domain Namesand Trademarks”; a seminar on “Management ofInternational Trademark Portfolios” followed in

Guangzhou in June 2001, and INTA held aconference in April 2002 in Shanghai entitled“Trademark Practice in China and Beyond.” Allwere very well attended and welcomed by bothtrademark owners and professionals.

INTA submitted recommendations to theChina National People’s Congress on a draft ofthe revised Chinese Trademark law in October2001, as well as commenting on theImplementing Rules and Customs Regulations.Some of its recommendations were included inthe new Trademark Law that came into force inDecember 2001.

In July 2002, INTA requested that the ChineseState Council amend the mandatory licenserecordal requirement; and in September 2002 theChinese government eliminated the financialpenalty for non-recordal of licenses. Thelobbying continued in September 2002 when theChinese Trademark Office was urged to eliminatethe requirements for all overseas evidence onadministrative appeals to be notarised andlegalised. That campaign is still continuing.

In addition to the internal reports made inrespect of the various countries’ legislation inAsia-Pacific, INTA has also published TrademarkAnticounterfeiting in Asia and the Pacific Rim(edited by past INTA President) Nils Montan,and Baker & McKenzie partner, Clifford Borg-Marks) in March 2001, which defines theproblem of counterfeiting, and proposesstrategies to administer a concerted, effectiveprogram to deal with counterfeiting in 14 keycountries in Asia and the Pacific Rim.

INTA has also been active in promotingmembership of the Madrid Protocol in the region.The Association submitted various positionpapers to the Australian government in 2000,before Australia adopted the Protocol in July of2001. INTA also commented on the accession ofSouth Korea to the Protocol, and a TrademarkPolicy Advisory Committee was set up in 2001 toassist the Korean Intellectual Property Office toform policies related to the implementation of theProtocol, with an INTA member (ST Kwon ofKim Shin & Yu) on the committee.

ConclusionINTA remains committed and active in the Asia-Pacific region. With 13% of its membersconcentrated in this region, and more to come, theAssociation’s sphere of influence in the variouscountries can only continue to improve. INTA isespecially useful to developing countries such asCambodia and Laos, since the Association,through the dedicated and volunteer service of itsmembers, can give an international perspective tolocal intellectual property laws that is extremelyvaluable in the policy and law making process.

INTA really has, can, and will make adifference to IP rights in this region. K


INTA IN ASIA

The authorJeannie Smith is an international partner in Baker &McKenzie’s Hong Kong office, and is the current chair of thefirm’s IP Global Steering Committee. Admitted in the UnitedKingdom (England and Wales) since 1988, and Hong Kongsince 1992, she specialises in trademark litigation and non-contentious IP. A member of a wide range of legal and IPassociations, she currently serves as the chair for INTA’s Asia-Pacific Subcommittee of the Legislation Analysis Committee.

In January of this year, thatboard-level

appointment wascomplemented bythe creation of a full-time role of

China representative,based in Shanghai

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THE MIDDLE EAST


Bridging the gulfK The harmonisation of trademark laws in the

Gulf Cooperation Council countries

Rawan Makram Sunna outlines an initiative to harmonise the laws ofsix nations in the Middle East, and the barriers that have appeared.

T his article analyses trademark practice inthe Gulf Cooperation Council (GCC)countries, highlighting similarities and

differences in law and practice, and commentingon the forces driving harmonisation.

The Gulf Cooperation Council wasestablished in 1988 and consists of six countries:Bahrain, Kuwait, Oman, Qatar, Saudi Arabia andthe United Arab Emirates (UAE).

As a forum for economic and politicalcoordination, its objective is to promote thecoordination between member states in all fieldsin order to achieve unity. Recent examples ofthis include moves towards a single customsunion, starting with a single import duty andfree movement of goods within the GCC, andpublic discussion of a single currency for theGCC countries.

As part of its attempts to boost technical andscientific development and harmonisation in thefields of industry, agriculture and finance, aunified Patent Law for all GCC countries cameinto effect in October 1998, and a GCC PatentOffice was established in Riyadh, Saudi Arabia.The GCC Patent Office grants patents thatsecure legal protection of the inventor’s rights inall member states. The patent will be promptlyrecognised in the six countries as of the date ofgrant by the GCC Patent Office.

Copyright laws and particularly, enforcementprovisions, have been the subject of extensivelobbying by the copyright industries as part oftheir ongoing worldwide efforts to combat piracy.

Much of the progress towards theharmonisation of trademark law – and practice –has been driven by the individual nations’membership of the World Trade Organizationand its Agreement on Trade Related Aspects ofIntellectual Property (TRIPs).

Countries in the Middle East generally havelong recognised the importance and benefits ofmembership of the World Trade Organization(WTO) as the world becomes more of anintegrated global community. Of the six GCCcountries, four are members of the WTO:Kuwait and Bahrain as of 1 January 1995, Qataras of 13 January 1996, and the UAE as of 10

April 1996. All were classed as developing countries, and

therefore had until 2000 to comply TRIPs.Oman joined the WTO in 2000 after four yearsof negotiation, and as part of that joining processintroduced WTO- approved TRIPs complaintlaws. The only country of the GCC which is notyet a member of the WTO is Saudi Arabia.Negotiations on its application to join have beenin progress since 1996.

Trademark laws Clearly, the obligations of WTO members tobecome TRIPs compliant has been a drivingforce in the GCC for the practical harmonisationof laws and procedures.

Oman amended its Trademark Law in 2000 aspart of its accession to the WTO. The old 1992Trademark Law in the UAE was amended in2002. The new law clarifies a number of issuesincluding what constitutes a well-known markand also expands protection for famous andregistered marks.

In September 2002, a new Trademark Lawwas published in the Official Gazette of SaudiArabia (becoming effective 4 December 2002).Significant changes include the implementationof the 8th edition of the InternationalClassification of Goods and Services, and a graceperiod of six months was given for lateapplications of renewals.

A review of the trademark laws in each of theGCC countries would show remarkably similarprovisions. However, it is not in the wording ofthe laws that the real harmonisation (or lack ofit) is to be found, but in the implementation ofthose laws.

Trademarks in practiceThe criteria for assessing distinctiveness andeligibility for registration are the same in allthe GCC countries, and use is not requiredprior to application. This, however, is one ofthe only criteria that applies – or is enforced -across all GCC countries.

Service marks can be registered in all GCC

In summaryK Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates created

the Gulf Cooperation Council as a forum for economic and political coordination in

the region

K Early progress was seen in the creation of a regional Patent Office and a successful

effort to harmonise trademark law

K Practice, however, still differs significantly from nation to nation. While the criteria for

assessing distinctiveness and eligibility for registration are the same in all the GCC

countries, the type of marks that may be registered, classifications to be used, the

documentation required, and the timeframes involved vary significantly

A review of thetrademark laws ineach of the GCCcountries wouldshow remarkablysimilar provisions

countries, collective marks can be registered inSaudi Arabia and Qatar, and in Bahrain they canonly be registered with the permission of theMinister of Commerce and Agriculture. In theUAE and Oman, it is permissible to registercertification marks.

The issue of who may file also showssignificant national differences. Natural orcorporate persons may file in all GCC countries,and non-local appicants must use a local agent,appointed by Power of Attorney.

That Power of Attorney must benotarised and legalised for all GCCcountries, except Bahrain and Qatar whichonly require a signed Power of Attorney. Inat least one country, a single legalisation inthe country of execution is not enough – thePower of Attorney must be re-legalised onarrival by the Ministry of Foreign Affairsbefore it can be used.

In all GCC countries, the law stipulates thatall documents must be submitted at the time offiling. This includes the Power of Attorney,prints of the mark, and a translation into Arabicof the mark.

GCC members except Saudi Arabia and theUAE require an extract of the CommercialRegister or a copy of the Certificate of

Incorporation of the applicant is required. Insome cases additional documents are needed.For example, Kuwait requires a certified andlegalised copy of the corresponding homeregistration. Bahrain requires the same, yet inthe absence of such registration a legalised copyof the applicant company’s Certificate ofIncorporation will suffice.

Although the law stipulates that alldocuments must be submitted with theapplication, the Trademark Offices in Oman,Qatar and Saudi Arabia currently acceptapplications without all of the supportingdocuments. Where this happens, there is no settime limit for submitting the missingdocuments.

Claiming priority Claiming priority under the Paris Convention isnot available in Bahrain, despite Bahrainacceding to the Paris Convention in 1996. Nor isit available in Kuwait, as Kuwait has not accededto the Paris Convention.

Saudi Arabia has not acceded also to the ParisConvention, but it is possible to claim priority,based on reciprocity. In this case, the applicantmust submit a legalised declaration issued by theTrademark Office of his or her home country,stating that it has reciprocal treatment with theKingdom of Saudi Arabia in trademark matters.This legalised documentation must be submittedwithin six months from the date of filing.

Priority can also be claimed in Oman, Qatarand the UAE, and if priority is claimed, acertified copy of the priority document should besubmitted to the Trademark Office within threemonths of filing the application.

Classification and examinationAll of the GCC Trademark Offices follow theinternational classification of goods and servicesspecified in the Nice Classification system (NiceClassification), although only Saudi Arabia andthe UAE use the latest edition.

All GCC countries require separateapplications to be filed for each class.

Alcoholic drinks in classes 32 and 33 are notregisterable in any GCC country. Neither arepork meat products in class 29. Both arecontrary to the teachings of Islam.

Qatar does not allow registration of the textof the class heading unless somehow justifiedand in some classes. Classes such as 1, 4 to 7, 10to 14, 16 to 22, 29 and 31 can not be grantedprotection for the class heading. It is advisable toseek protection for the goods that are of actualintent to the applicant.

In the UAE it is not possible to use the classheading, nor is it possible to use words such as“and all goods in class”. Goods or services mustbe specified.


THE MIDDLE EAST

Alcoholic drinks inclasses 32 and 33are not registerablein any GCC country.

Neither are porkmeat products inclass 29. Both are

contrary to theteachings of Islam

Trademark owners in the Middle East face additional challenges related to cultural, as well as linguistic factors

THE MIDDLE EAST


In all GCC countries, applications areexamined initially to see if they meet the formalityrequirements for documents, translations etc.Applications are then subjected to a substantiveexamination as to registrability covering issuessuch as distinctiveness, deceptiveness, goods orservices covered. Furthermore, these areexamined to ascertain prior rights.

In Saudi Arabia, the applicant has the rightto appeal any rejection or conditionalacceptance within 30 days of receivingnotification. A lesser objection requestingmodification to the scope of goods or servicesor asking for modification of the mark is issuedin writing after which the applicant has threemonths to modify to comply with theRegistrar’s request. In Bahrain, Kuwait, Oman,and the UAE, the Registrar will either issue arejection or conditional acceptance which theapplicant may appeal within 30 days ofreceiving notification. In Kuwait, the applicantmay only appeal to the competent Court.

All GCC countries require publication in theOfficial Gazette or Trademark Journal,depending on the country. In Kuwait,publication in the Official Gazette takes placethree times, and the opposition period is 30 daysstarting from the date of the third publication ofthe mark in the Official Gazette.

In the UAE, publication in two localnewspapers is required; in Oman publication inone daily newspaper will suffice.

In all GCC countries, any interested partymay file an opposition, but the period allowed fordoing so varies considerably.

In the UAE, the opposition period is 30 days.In Bahrain and Oman, the opposition period is 60days, and in Saudi Arabia, 90 days. In Qatar, theopposition period is 120 days. No country allowsextensions of time for filing the opposition.

All six countries provide an administrativeopposition procedure, rather than requiring theparties to go to Court. Decisions of theRegistrar or the duly appointed Committee maybe appealed to the Court.

Time frames and costsThe time frame for applications to mature toregistration differs in each country. In SaudiArabia and the United Arab Emirates, if theapplication does not encounter any materialobjection, the registration process takesapproximately from 10 to 12 months. In Kuwait,it takes from 12 to18 months, and in Bahrain, upto 2 years. In Qatar and Oman it can take up tofive years to obtain a registration.

In all GCC countries the period of registrationis 10 years from the date of application withrenewals for 10 year periods. In Saudi Arabia, theHijri calendar is used. The duration ofregistration will be 10 Hijri years, which isequivalent to about 9 years and 8 months.

In Oman and Qatar a six month graceperiod is allowed for late renewals, but a fine ispayable. In Kuwait, Bahrain and the UAE, thegrace period for late renewals is three monthsalso with a fine. Saudi Arabia has recentlyamended its law to allow a grace period of sixmonths for renewals, having previouslyallowed none.

All six of the GCC countries provide forcancellation on the basis on non-use, (as well ascancellation on the basis that there was no bona-fide intention to use). In each case, the non-useperiod is five years.

Official fees up to registration in the GCCcountries vary widely. Official fees in the UAEare nearly US$2000, in Saudi Arabia aboutUS$1200 and in Kuwait US$79.

The typical local agent fees up to registrationalso vary. Starting approximately from as littleas US$200 in Bahrain and Qatar, up toapproximately US$ 700 in the UAE and SaudiArabia. Local agents work on a fixed fee basisalmost exclusively, with little or no use of hourlyrates. Even though in certain countriesprosecution costs are expensive, they are, atleast, at a fixed rate.

The futureHaving reviewed the processes encountered inthe GCC countries. it can be seen that in manyrespects law and practice are alreadysignificantly harmonided. This is driven byWTO membership and also by the drive of theGCC generally to harmonise wherever possible.

The GCC has already moved towardsharmonisation with the formation of the GCCPatent Office. Given the drive towards aEuropean Union style Customs Union, andpossibly also a single currency, it would makesense to have a GCC Trademark Office in whichsingle applications could be filed covering allmember states – a system similar in operation tothe European Union’s Community Trade Mark.

The benefits of such a system would largelysimilar to those found in Europe, with reducedofficial fees and agents’ costs, single point ofentry, reduced administration costs on changesof name, assignments, renewals and so on. Therewould also be the opportunity to smooth outthose anomalies in the region, such as the longperiod needed to obtain a registration in onecountry over another. K

The author

Rawan Makram Sunna is a solicitor in the Dubai office of Rouse & Co International.Since joining Rouse & Co in 2001, she has handled a full range of trademarkprosecution matters throughout the Middle East. Before joining Rouse & Co, Ms Sunna developed her knowledge of trademark matters at the Jordanianintellectual property consultancy, Middle East Intellectual Property.

THE COMMUNITY TRADEMARK


A ccession negotiations on 12 and 13December 2002 mean that Cyprus, theCzech Republic, Estonia, Hungary,

Latvia, Lithuania, Malta, Poland, the SlovakRepublic and Slovenia will become memberstates of the European Union as of 1 May 2004;they will be joined by Bulgaria and Romania in2007. If Turkey fulfils the Copenhagen politicalcriteria, they too may be included.

The extension of the EU represents a leapforward for the Community Trademark (CTM).There are many implications, not only for theOffice for the Harmonization of the InternalMarket (OHIM) but also for trademark owners,professional representatives and national offices.

Automatic extensionAll existing CTM registrations and pendingapplications (with a filing date prior to theaccession of the new member states) areautomatically extended as of right, withoutintervention from the applicant or OHIM, toencompass these new member states withoutany formalities or payment of a fee.

The same applies for any new CTM filed after1 May 2004, in that the CTM filed will includethe new member states. There may be anincrease in filing fees in view of extra expensesfor added translation fees, new staff andincreased administration.

Existing CTMs automatically cover newmember states without any translation into thenew languages, regardless of whether or notsuch applications or registrations have alreadybeen published at the time that the extensionbecomes effective.

New CTMs may be filed in any of the officiallanguages of the EU, with a second language tobe selected from the five official OHIMlanguages, namely, Spanish, English, French,Italian and German. Although the additionallanguages have not yet been determined, it isanticipated that there will be at least an additionof 10 official languages.

All applications filed after the date of accessionwill be translated into all of the officiallanguages, including the new languages, and willbe published or advertised in this way. This doesnot apply to trademarks filed before the

extension, and the conduct of opposition andcancellation actions, which will still be translatedinto the five official OHIM languages.

Absolute groundsSome considerations of the absolute grounds ofrefusal include whether or not the mark isdistinctive, descriptive in that language, or offendspublic policy. There is the possibility that a markwhich was originally registrable in the presentEU, may be descriptive in the language of a newmember state. There is an increased chance ofrefusal of a CTM application on absolute grounds.

The following provisions have beenimplemented to counter this potential problem.The presence of such new absolute grounds does

not constitute a ground for refusal of a pendingand automatically extended CTM application orregistration, even if the application has yet to beexamined. This means that even if theautomatically extended trademark is descriptiveor generic in a language in one of the newmember states, this will not be a ground of refusalif the CTM was filed before the date of accessionof the new member state. Additionally, it will notconstitute a ground for revocation or invalidation.

The exceptions to the protection of suchtrademarks concern whether the mark is genericor descriptive in that particular country. In thesecases, anyone can make fair use of the trademarkin accordance with Article 12 of the CTMRegulation. This basically provides that a CTM

In summaryK The Community Trade Mark (CTM) system will be extended to cover 10 new member

states on May 1, 2004, as part of the wider EU enlargement process. This article

explores prior rights, bad faith registrations, and recommended processes for current

and future owners of CTMs

K If the CTM is applied for after the date of accession of the new member states on 1

May 2004, and there is an earlier identical or confusingly similar mark filed in that

member state, the owner of this national right will have an opportunity to oppose the

CTM. If the opposition is successful, the CTM will not be registered and the CTM owner

will have the option to convert its application to national applications excluding the

territory where the earlier right exists

K If the CTM was applied for and registered after 1 May 2004, the owner of the earlier

national right, perhaps having missed the chance to oppose the CTM at the

application stage, can now seek to cancel the same. If successfully cancelled, the CTM

owner will have the same option to convert his registration

K If the CTM application was filed before 1 November 2003, more than six months before

the accession of the new member states, the owner of an earlier national trademark

right in the new member state, will only be allowed to stop the use of the CTM in that

member state. There will be no right to oppose or cancel the CTM

K If the CTM application was filed less than six months before the accession of the new

member states, the owner of an earlier national application/ registration in that new

member state can file an opposition. If it does not oppose the CTM, it cannot then

seek to cancel the same when it matures to registration

Europe expands EastK The enlargement of the European Union and its effect on CTMs

The European Union welcomes 10 new member states as from 1 May 2004. SolicitorTasneem Haq of London law firm, Field Fisher Waterhouse, explores the consequencesof the enlargement of the European Union upon the Community Trade Mark system.

owner shall not be entitled to prohibit a thirdparty from using in the course of tradeindications concerning the kind, quality,geographical origin or other characteristics ofthe goods and services etc, provided that thethird party uses them in accordance with honestpractices in industrial and commercial matters.Users of these types of marks in the memberstates at the date of accession are protected bythe fair use exception of the CTM Regulation.

The other exception is if the trademarkoffends public policy or there are morality issuesin particular new member state. In this instance,the use of the CTM can be prohibited. Theapplicant or registrant would have the option ofconverting its CTM into national application inthe various member states where the mark doesnot offend public policy.

The absolute grounds of refusal will apply toCTMs filed on or after the date of accession andobjections can be raised on this basis.

Earlier rights and relative grounds “Earlier rights” in this context are trademarkregistrations or applications which have anearlier filing or priority date than a CTM in anew member state at the date of accession.

Earlier rights in new member states includeall the usual nationally recognised rights thatflow from the use or application or registrationof the trademark, or both, such as, well-knownmarks, unregistered marks and nationaltrademark registrations, applications, Madridregistrations and so on.

A CTM application or registration which wasfiled before the date of accession, will include thenew member state by automatic extension. In

this instance, the earlier right existing in the newmember state does not give its owner the right tooppose or seek to cancel or request theinvalidation of the automatically extended CTM.There are two exceptions to this provision.

Article 107 of the CTM Regulation doesconfer the right to prohibit the use of the CTMin the new territory and enables owners ofearlier rights of local importance to challengethe use of a CTM in the area in which this earlierright has been protected, pursuant to the law ofthe new member state.

The wording of Art. 107 is as follows; “the proprietor of an earlier right which onlyapplies to a particular locality may oppose the use ofthe Community trademark in the territory wherehis right is protected in so far as the law of theMember state concerned so permits”.

The second exception is that proprietors of theseearlier rights can bring an opposition againstCTM applications which have been filed sixmonths prior to the date of accession. This iswhere the date of the application for registrationof the CTM or the priority date is within sixmonths immediately preceding the date ofaccession. This right is limited to oppositionsonly and does not apply to cancellation actions.If the national trademark owner fails to opposethe CTM which it considers to be conflictingwith its earlier right, it will not then have a rightto cancel the CTM once it is registered.

The opposition can be filed after the date ofaccession although it must be within the threemonth period of opposition. CTM owners areadvised to keep their marks on watch to determinewhether there are any potential risks of conflict, orwhether there is a risk of being opposed. Other

conditions are that the earlier right in the newmember state must pre-date the CTM, and that itmust not have been acquired in bad faith.

Interestingly, there are no provisions to allowthe CTM owner to file an opposition against anynational application in a new member state filedup to six months before the date of accession.

Earlier national applicationsThe owner of an earlier CTM cannot preventthe use of trademarks already existing in thenew member state at the time of accession and,as mentioned before, CTM owners have no rightto object to national trademarks registered inthe new member states at the time of extension.

This gives rise to the possibility that thirdparties in the new member state could abuse thenew system and register identical nationaltrademarks before the extension of the CTM tothat member state, preventing use by the CTMowner in that state once accession takes place.

These applications would fall into thecategory of “bad faith” applications, which initself is an ambiguous term. A good descriptionof such applications would be filings made toobtain trademark rights in one or morejurisdictions which are identical or confusinglysimilar to a trademark in another jurisdiction,with a view to preventing market access, to claimpecuniary compensation, or to profit from thereputation of another’s trademark.

These types of bad faith registrations havebeen highlighted in the accession negotiations.It was decided earlier rights will be invalid orsubject to attack, particularly if there has beenno use of the earlier registered trademark inthe new member state.





However, in order to determine whether anapplication was made in a member state in badfaith, OHIM and the various National Officesare also looking into the possibility ofallowing CTM owners to have moreinformation and investigate into theseapplications as swiftly as possible.

The most vigilant tactic for the trademarkowner to adopt is to file applications in countrieswhich are soon to be included as member statescovered by the CTM system, with a view topreserving its position there and preventingpirates from obtaining “earlier rights”. Anotherpossibility is to file an application via the MadridUnion or the Madrid Protocol if the trademarkowner belongs to a country which has accededto the Madrid system.

What happens where the CTM is filed afterthe accession of a new member state? In thisinstance, the CTM may be subject to oppositionor cancellation in the new member state, by theowner of an earlier right. If the CTM issuccessfully opposed or cancelled by an owner ofan earlier right in any one of the member states,the proprietor of the CTM will have theopportunity to convert its CTM to nationaltrademark applications, or registrations in theremaining member states, retaining theapplication date of the CTM.

Seniority, conversion and enforcement From the date of extension, the owners ofextended CTMs can, in each new member state,claim the seniority of an earlier, identicaltrademark registration in that new member statefor the identical goods and services. There is noofficial fee involved and if all the conditions forclaiming seniority are met (ie the nationaltrademark is identical to the CTM, in the name ofthe same registered proprietor and for the samegoods and services or there exists an overlap ofthe goods and services), there is no requirementto renew the national registration. It will remainin force through the CTM as a seniority claim.

When a CTM is refused or withdrawn, it canbe converted into national applications in the

member countries where these objections do notexist. If a CTM is converted, the proprietor willhave a greater choice of countries where it couldconvert its mark to national applications oncondition that the application will not be refusedor cancelled in these territories either. Eachconverted application in the member state will besubject to payment of its own set of filing andregistration fees in each member state and thefiling date of the converted CTM will be retained.

Where a CTM is infringed, such claims forextended CTMs can be brought before thenational trademark court of the new memberstates. This means that the owner of theextended CTM, whose mark has been infringed,will only have to go to one national CommunityTrademark Court in one member state to obtaina decision which will be binding in all memberstates where the infringement took place.Enforcement actions will, therefore, cover alarger scope of territory as the CTM is extended.

Conclusions The current position relating to the accession ofthe new member states to the European Unionreflects that there are several benefits to be gainedfor the CTM owner with automatic extension of itsrights. Current owners of CTMs filed before thedate of accession have the benefit of its rights being

Enforcementactions will,

therefore, cover alarger scope ofterritory as the

CTM is extended

Documents

Dedicated issue: Towards Global Trademark Law TOWARDS GLOBAL TRADEMARK …static.informaprofessional.com/ipwo/images/supplements/... · 2008-11-19 · Our primary activity is the