INTABulletinThe Voice of the International Trademark Association

AssociationNews Features

March 1, 2012 Vol. 67 No. 5

Law&PracticeBRAZIL 2014 FIFA WORLD CUP General BillPage 8

In This Issue

AssociationNewsVolunteer Spotlight Jeanne Hamburg 3 Sean M. Sullivan 3

FeaturesThe Madrid Protocol in the Middle East 6

Continued on page 2

Continued on page 4

Law&PracticeEuropean Union 12Italy 9Malaysia 8Mexico 10Poland 10PROSUR 12United States 11Vanuatu 10

Law&PracticeSERBIA Cyrillic Domain Registration Now Open Page 11

India Welcomes Trademark Professionals Learning to Build Global Brands

Genuine Use of Trademarks in the EU: New Referrals to the Court of Justice by the German Federal Supreme CourtA number of questions surrounding the requirement of genuine use of trademarks under harmonized EU trademark law remain unanswered. These include, for example, the question of whether and to what extent the owner of a registered trademark can successfully claim that use of the mark in an amended form or only in combination with another mark suffices to keep the mark enforceable. If the answer to this question were negative, it would mean that the trademark owner would have to fear, once the five-year grace period for non-use has passed, that third parties could file for cancellation of the mark at OHIM or the respective domestic trademark office of a member state. Up until the European Court of Justice’s (CJEU’s) decision in the BAINBRIDGE case (Il Ponte Finanziaria SpA v. OHIM, Case C-234/06 P (CJEU Sept. 13, 2007)) it was the common understanding, at least in German trademark circles, that use of a registered trademark in a slightly altered form was genuine use, even if this amended form was also registered as a separate mark. The German Trademark Act, for example, specifically says so (Sec. 26(3)). The statements by the CJEU in BAINBRIDGE cast some doubts on this, however. Since then, it has never been fully clarified whether Section 26(3) of the Act complies with EU trademark law.

This has now led the German Federal Supreme Court (Bundesgerichtshof (BGH)) to refer several questions regarding the interpretation of EU trademark law to the Court of Justice (CJEU). In two matters the Supreme Court seeks guidance from the CJEU regarding genuine use.

What Is Genuine Use Under EU Trademark Law?

The EU Trademarks Directive (Directive 89/104/EEC, codified at Directive 2008/95/EC) provides only limited guidance. Article 10(2)(a) of the

Building Mega Trademarks, a February one-day INTA conference in New Delhi, saw global trademark experts attempt to discover novel approaches to building brands in an evolving marketplace. The first session on creating strong founda-tions, moderated by Anthony Tong (Robin Bridge & John Liu—Hong Kong), empha-sized that while trade-marks can be powerful tools for creating value for a business, they will not live up to those expectations if they sit passively on some register, and should instead be used as tools in developing a brand image for the owner and the goods and services it provides.

Allan Poulter (Field Fisher Waterhouse—United Kingdom) spoke about the constant

battle between the creative and the legal sides of the business and suggested that both creative and legal teams should work in tandem to create out-of-the-box strate-gies for companies looking to launch in new jurisdictions. Working creatively, proactively, and with imagination, they can transform

mere legal concepts and enforceable rights into commercially valuable assets that can work as tools for creating and develop-ing a brand value for the business. Daan Teeuwissen (Knijff Trademark Attorneys—

Netherlands) pointed out the virtues of clear-ance searches on a worldwide basis, saying that since “cost-wise” it is often impossible to search and file for a trademark on a worldwide basis, his mantra has become “Be Prepared, Be Clever and Be Realistic.”

March 1, 2012 Vol. 67 No. 52

AssociationNews

INTA Bulletin CommitteeTo contact a member of the INTA Bul-letin Committee, send an email to the managing editor at bulletin@inta.org.

ChairWalter Palmer, Pinheiro Palmer AdvogadosVice ChairBarbara Sullivan, Henry Hughes

Association NewsRosemary Brkopac, BrandProtectFrank Hiscox, Lewis and Roca LLPFeaturesJan-Gerd Mietzel, Pellon & Associados Europe LLPLiisa Thomas, Winston & Strawn LLP

Law & Practice: Asia–PacificJohn Hackett, A J ParkLaw & Practice: EuropeJaap Bremer, BarentsKrans N.V.Peter McAleese, Barzano & ZanardoLaw & Practice: Latin America & CaribbeanJamal Smith, Thornton SmithLaw & Practice: Middle East & AfricaCharles Shaban, Abu-Ghazaleh Intel-lectual PropertyLaw & Practice: United States & CanadaLisa Iverson, Neal & McDevitt, LLC

INTA Bulletin StaffExecutive DirectorAlan C. DrewsenDirector, PublishingRandi MustelloManaging Editor, INTA BulletinJames F. BushAssociate Editor, INTA BulletinJoel L. BrombergManager, Marketing and Brand StrategyDevin Matthew ToporekDesignerEric Mehlenbeck

INTA Officers & CounselPresidentGregg Marrazzo, Estée Lauder Inc.President ElectToe Su Aung, BATMark Ltd.Vice PresidentBret Parker, Elizabeth Arden, Inc.Vice PresidentMei-lan Stark, Fox Entertainment GroupTreasurerLucy Nichols, Nokia CorporationSecretaryJ. Scott Evans, Yahoo! Inc.CounselMichael Metteauer, Fulbright & Jaworski LLP

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2012 International Trademark Association

In the second session on trademarks on the In-ternet, Delhi High Court Justice Ravindra Bhat spoke about his experiences adjudicating IP cases and the development of recent case law in India involving trade marks on the Internet. Sabine Lipovetsky (Kahn & Associés—France) and Ranjan Negi (Amarchand Mangaldas—In-dia) spoke about how, during recent years, the Internet has gained increasing importance for the global movement of goods and services of all kinds, so that the Internet is now a major global data pipeline, which is more and more used in the mainstream of commerce to sell and deliver goods and services across transna-tional borders. Issues of intellectual property protection regarding the material available on the Internet are just as important as issues regarding the use of trademarks as vectors of consumer preference in a global marketplace. The third session on brand fortification, made clear that in the current competitive market, there cannot be a substitute for effective branding tactics to ensure the success of a corporate organization. Panelist Rajiv Bakshi confirmed that for a product or service to do well in the market it must connect with con-sumers and communicate its unique qualities to create a positive impression in the minds of consumers; and he too extolled the virtues

of thinking out of the box to come up with enforcement strategies unique in the Indian context. Other speakers agreed that the brand

must carry a consistent image over time to reinforce its place in the consumer’s mind and develop a special relationship with the con-sumer, and advised that brand extensions can further fortify the brand, but only with related products having a perceived fit in the mind of the consumer. The penultimate session was interesting for its digression from usual topics into the realm of well-known marks and geographical indications. Panelist Bernard O’Connor (NCTM Studio Legale Associato—Italy) had interesting insights into the EU’s stand on GIs and how

India differed by its inclusion of handicrafts and other non-agricultural products within the purview of GIs. Shailyamanyu Singh (Procter & Gamble—Singapore) provided in-house counsel’s perspective on how well-known inter-national trademarks surpass the boundary of marks known only in single countries and can often be given protection against later registra-tion by third parties – although laws to offer this protection are still being developed. The final session focused on the commer-cialization of IP assets. Panelist Jyoti Sagar (J Sagar Associates—India) spoke on franchising and licensing as systems of business that have grown steadily in the last 50 years and are estimated to account for more than one-third of the world’s retail sales. There are few of us how who are not touched by the results of franchising and licensing, and the panelists concluded that franchising and licensing are two more ways that strong brands can become mega-trademarks that drive strategic and economic value for their owners. ■

India Welcomes Trademark Professionals Learning to Build Global Brands Continued from page 1

Justice Ravindra Bhat of the Delhi High Court participated in a panel discussion about trademarks on the Internet.

Gunjan PahariaZeus IP, New Delhi, India

INTA Bulletin Law & Practice— Asia-Pacific Subcommittee

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VolunteerSpotlight

Jeanne Hamburg is an experi-enced developer of professional education programs for trademark practitioners and speaker on trademark topics. She sees both of these activities as important tools to keep industry pros up to speed and to facilitate communication among trademark profes-sionals, which ultimately results in better client service.

Recently appointed vice chair of INTA’s Law Firm Committee, Jeanne was recruited by INTA a decade ago to help develop its first e-learning course, Trademark Basics. Since then, she has worked on web-based courses

on the U.S. Trademark Trial and Appeal Board and Ethics. Most recently, she assisted in developing and presenting a webinar on Trademark Ethics that focused on limitations on attorney conduct.

Jeanne works in the New York City office of Norris McLaughlin & Marcus, P.A., where she chairs the firm’s Internet Law Group. For the past several years she has co-presented an annual live Trademark Crash Course. “Attendees raise interesting questions that challenge all of us presenters to think in new and different ways about the ‘basics’ of trademark law,” she says. I think I learn as much as I teach at all of these courses, and they definitely enrich my practice.”

Jeanne says she loves her work because of the variety of tasks and client industries involved. “In the course of one day, I might be working on a federal court case involving trademark infringement, or a TTAB proceeding, or general counseling and clearance work, or a transac-tion that involves trademark issues such as a merger or acquisition, or a bankruptcy proceeding involving intangible assets in the form of trademarks,” she says.

Recently recognized for the third time as one of the New York Super Lawyers® for IP and IP Litigation, Jeanne cites rights enforcement on the Internet as one of the most important issues currently facing trademark owners. She adds that one issue worthy of INTA’s attention is why trademark law does not provide an automatic takedown right for infringing web content —a feature that exists in copyright law (under the Digital Millennium Copyright Act).

When she is not working, family comes first for Jeanne. She and her husband Jay have two children (Grant, 9, and Kara, 14), as well as an adopted “rescue” dog, Ella. An avid reader—and a member of INTA’s book lovers group—Hamburg also counts travel, interior design and entertaining as favorite activities. Appropriately, she says the trademark that best describes her is Kodak’s slogan SHARE MOMENTS. SHARE LIFE.

Barbara Barron KellyCorsearch – Wolters Kluwer Corporate Legal Services, New York, New York, USA

INTA Bulletin Association News Subcommittee

Barbara Barron KellyCorsearch – Wolters Kluwer Corporate Legal Services, New York, New York, USA

INTA Bulletin Association News Subcommittee

Sean M. Sullivan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP in Chicago, Illinois, USA. He has more than 15 years of experience in litigation, prosecu-tion and counseling on behalf of clients in trademark, patent, copyright, trade secret and unfair competition disputes worldwide—including work in U.S. federal district and appellate courts.

Representing clients primarily in the mechan-ical, electrical and chemical arts—including the diagnostic and medical devices, pharmaceuti-cals, injection molding, packaging, electronics, telecommunications and computer software industries—Sean says he gets “a daily dose of adversarial disputes with opposing counsel.”

That dose of disputes could increase dramati-cally as a result of what Sean identifies as the most important legal issue facing trademark owners and practitioners globally: the expan-sion of generic top-level domains (gTLDs) by ICANN. The process has trademark owners, practitioners and advocacy groups concerned about inadequate rights-protection mecha-nisms, in addition to the other serious reserva-tions that they have.

These are the types of issues that prompted Sean to become active in INTA, in order to keep himself and other practitioners current on key trademark and other IP issues. A true “people person,” Sean especially enjoyed working on INTA’s “man on the street” video, used for new orientation at one Annual Meeting.

“I had the pleasure of randomly interviewing several INTA members on camera,” Sean recalls. “Not only was it a great way to meet fellow members, but the people we inter-viewed had some great INTA stories to share.”

A member of INTA’s Young Practitioners Committee, Sean mentors several of his firm’s associates and younger partners in IP

litigation and prosecution matters. He renders opinions regarding the validity, enforceability and infringement of patent rights, as well as trademark clearance and infringement opin-ions, and he has done advocacy work in such forums as the International Trade Commission.

Topping Sean’s list of favorite trademarks are XEROX and KLEENEX. “They are completely fanciful marks that almost became generic.” He adds that the trademark that best describes him is GUINNESS. “I think of Guin-ness as Irish, classic and fun, not to mention that it is my adult favorite beverage.”

Outside his professional life, the Chicago-area resident enjoys spending most of his time with his wife, Erin, and their three children: Maeve (12), Ronan (9) and Seamus (6). “With the kids, it’s usually doing homework, playing a game or attending (or coaching) one of their many sporting events.”

March 1, 2012 Vol. 67 No. 54

FeaturesGenuine Use of Trademarks in the EU Continued from page 1

Directive states that the use of a trademark in a form differing in elements that do not alter the distinctive character of the mark from the form in which it was registered still constitutes genuine use. Whether combined use of two marks, or the use of a variation of a registered mark where the variation is registered as well, is sufficient is not clear.

The ECJ held in BAINBRIDGE that “it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former” (para. 86). This statement does not clarify matters for the scenarios mentioned above, however.

The PROTI Case

In the first case referred by the German Federal Supreme Court (I ZR 84/09 (BGH Aug. 17, 2011)—PROTI), the plaintiff was the proprietor of the trademark PROTI. He claimed infringement of the trademark based on the defendant’s use of the designation PROTIFIT and sought injunctive relief and cancellation of the defendant’s mark. The defendant claimed that the plaintiff had not genuinely used the trademark PROTI, while the plaintiff argued that his use of the marks PROTI POWER and PROTIPLUS (both of which he had also registered) also constituted genuine use of the mark PROTI.

The Court of Appeals decided in favor of the defendant. Referring to the BAINBRIDGE decision, it held that EU case law did not accept the argument that genuine use of a mark can be proven based on the use of a different mark that is also registered. The Court of Appeals thus took the view that Section 26(3) of the German Trademark Act was not in line with Article 10(2)(a) of the EU Trademarks Directive.

On further appeal, the Federal Supreme Court was of the opinion that BAINBRIDGE did not answer all questions related to the applicability of the German law, and consequently some further interpretation was needed. Therefore, it referred the case to the CJEU for a preliminary ruling. At the same time, the Supreme Court made it clear that it was of the opinion that Section 26(3) of the Act was consistent with

Article 10(2)(a) of the Directive. This view was supported by both the wording and the aim of the provisions in the Directive.

First of all, the Supreme Court referred to the 12th recital of the Directive 89/104/EEC, according to which the provisions of the Trademarks Directive must comply with the Paris Convention. Pursuant to Article 5.C(2) of the Convention, “[u]se of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.” The Supreme Court concluded that the same must then apply for the European equivalent, in Article 10(1)(a) of the Directive.

The objective of the requirement of genuine use is to reduce the number of registered and protected marks and to avoid possible conflicts that could arise between them. This goal is defined in the eighth recital of Directive 89/104. The only restriction on genuine use that is in line with this objective is the elimination of purely defensive registrations. The Supreme Court took the view that restrictions on what constitutes genuine use cannot apply to marks that the owner legitimately wants to adapt (e.g., by modernizing a mark and amending it to respond to a perceived change in consumers’ taste). If the use of such a modernized (and registered) form of the mark could not constitute genuine use of the former version at the same time, the trademark owner would lose the priority of the older mark.

Also, the older mark could have a significant economic value, and this value would be destroyed once the older mark loses protection because of alleged non-use. This result could be avoided only by not filing the modernized version of the mark for separate registration. Such a strategy would be risky as well, as a court might later find that the modernized version of the mark is outside the boundaries of Article 10(2)(a) of the Directive and that the (older) registered version is subject to cancellation for non-use. A narrow interpretation of this provision thus would potentially damage the economic value in a well-established mark and deter the trademark owner from modernizing valuable marks. In the

Supreme Court’s view, this cannot have been the intent of the authors of the Directive.

The German court also observed that a more narrow interpretation of genuine use would also lead to a higher threshold when establishing a family of marks with a common element. Especially in the launch period, it is important for the trademark owner to have the common element protected—even if that element is not used on its own (but only in other variants, with additional elements). This is because in the launch period the separate marks may have limited presence in the market, and therefore may not yet fulfill the requirements for supporting a “family of marks with a common element” argument.

Moreover, the Federal Supreme Court noted, a narrow interpretation of the requirement of genuine use would seem to be inconsistent with the Court of Justice’s case law concerning distinctiveness. Pursuant to Article 3(3) of the Directive, registration cannot be denied if the mark has acquired distinctiveness through use. In its decision in AIRE LIMPIO/ARBRE MAGIQUE, the ECJ ruled that a trademark can acquire distinctiveness through use of another registered trademark of which it constitutes an element. L & D SA v. OHIM – Julius Sämann Ltd, Case C-488/06, para. 49 (ECJ July 17, 2008). It would be contradictory if the Court of Justice allowed registration of such a mark and later withdrew protection for lack of genuine use, based on the argument that there was no use of the mark in question, but only use of another registered mark that contained the mark in question.

The Levi Strauss Case

The second case referred by the German Federal Supreme Court (I ZR 206/10 (BGH Nov. 24, 2011)—Clothing Tabs II) concerns a conflict between Levi Strauss & Co. and a retailer. Levi Strauss is the owner of a position mark consisting of a blank red tab made of cloth, which is attached to the upper left-hand side of the back pocket of LEVI’S jeans. Levi Strauss claimed infringement based on the fact that the defendant attached a red label to the right side of the back pocket of its jeans. The defendant claimed that the plaintiff had used the red tab only in a differing form, namely as a red tab with the word LEVI’S. This version of the tab is also registered as a

5

Features

Alexander R. Klett and Kathrin SchlueterReed SmithMunich, Germany

trademark. The defendant took the view that only the latter mark was used genuinely.

In referring this case to the CJEU for a preliminary ruling, the Supreme Court asked questions concerning the interpretation of genuine use. The Court made it clear in its referral decision that the trademark owner has a legitimate interest in separately registering parts of a mark that are perceived by the relevant consumers as independent marks. As a consequence, it took the view that the combined use of marks must also comply with Article 10(1)(a) of the Directive.

The Supreme Court pointed out that the trademark owner’s interest in effective enforcement of its marks needs to be taken into account. If the trademark owner obtains registration of the combination mark only, he may not be able to show infringement by a third party using only a part of the combination mark if such part is not dominant in the combination mark. If the trademark owner enjoys separate protection for elements of the combined mark, there will be a greater likelihood that a risk of confusion can be found if one of these elements is contained in the designation used by the infringer.

Point of Time for Nonapplicability of the German Provision?

Should the CJEU decide, contrary to the view taken by the German Federal Supreme Court, that a registered trademark is not put to genuine use if it is used in a form differing from that which is registered, where the mark in the form used is registered as well, Section 26(3) of the German Trademark Act would conflict with European law.

The question would then be from what point in time the German provision could no longer be applied. The Supreme Court asked the CJEU in the referral whether Section 26(3) could be applied to cases predating the first indication of a possible incompatibility of the German provision with European law (i.e., the BAINBRIDGE decision).

The German Federal Supreme Court pointed out that, because of legal certainty and the right to rely on existing laws, its case law supports the application of a modified legal provision only for future cases. In German case law, Section 26(3) of the Trademark Act was never expressly found to be incompatible with the EU Trademarks Directive, and trademark owners therefore

relied on the applicability of the provision. The Supreme Court regards legal certainty and the right of trademark owners to rely on existing laws as more important than the compatibility with Article 10(2)(a) of the Directive, and therefore it would want to apply the relevant German provision at least for cases that concern genuine use prior to the ECJ’s BAINBRIDGE decision.

Summary

It will likely take about two years for the CJEU to hand down its judgment on these referrals from Germany’s highest civil court. From the standpoint of trademark owners, but also from the perspective of trademark law, the CJEU’s decision in these matters will be very important indeed. Should the Court of Justice not follow the position of the German Federal Supreme Court in the referral decisions to interpret the requirement of genuine use more broadly for the trademark owner’s benefit, its decision will have a potentially significant impact on the validity of a large number of marks in the EU. ■

These two online products available only to INTA members provide extensive information about trade dress.

Trade Dress: International Practice and ProceduresComprehensive database of country profiles on trade dress protection and enforcement. Includes over 900 exhibits.

Trade Dress Image LibraryGallery of case summaries and images from trade dress infringement decisions in more than 60 countries.

Learn more about Trade Dress in INTA’s Topic Portal.www.inta.org/topicportal

Save the date for INTA’s Design Protection Conference!September 10-11 – Copenhagen, Denmarkwww.inta.org/designprotection2012

INTA’s Resources for Protecting Trade Dress

March 1, 2012 Vol. 67 No. 56

FeaturesImplementation of the Madrid Protocol in the Middle East

Liad Whatstein Dr. Shlomo Cohen & Co., Tel Aviv, Israel

Dr. Amir H. KhourySenior Lecturer, Faculty of Law, Tel Aviv University, Tel Aviv, Israel

The Madrid Protocol provides means for a simplified and streamlined procedure for filing trademark applications internationally. Howev-er, it is not a trademark harmonization treaty. After filing, the application is examined based on each country’s own laws and regulations, and it may be subject to domestic opposition proceedings. Israel recently began imple-menting the Protocol. Five Arab countries are signatories to the Protocol. In addition, three Arab countries are signatories to the Madrid Agreement. This article describes the imple-mentation of the Protocol in these countries.

Israel

Recent Statistics on Implementation of the Madrid ProtocolIsrael started implementing the Madrid Protocol as of September 1, 2010. Accord-ing to Trademark Office statistics, in the first six months since the implementation of the Madrid Protocol, approximately 1,000 applica-tions were filed by extending international trademark applications to Israel or designating Israel. In recent years, the number of trade-mark applications filed in Israel every year was approximately 8,000 to 10,000. Most applica-tions (around 70 percent) are filed by foreign applicants. Accordingly, the Protocol already accounts for a substantial percentage of trade-mark filings by foreign applicants in Israel.

On the other hand, fewer than 100 “outgoing” international trademark applications have so far been filed by Israeli applicants. In view of the potential cost savings, the number of

Israeli applicants using the Protocol to obtain international protection is likely to increase. However, as most trademarks owned and registered by Israeli businesses are of a local nature, it is the “incoming” aspect of the Proto-col that is likely to be of the utmost importance from the Israeli perspective.

Revisions in Israeli Trademark LegislationThe implementation of the Protocol brought about some important legislative changes:

• The legislation implementing the Madrid Protocol introduced a multiclass registra-tion system enabling a single application to be filed in multiple classes, as well as the merger of previously filed single-class regis-trations into a single multiclass filing.

• The option to revise existing trademark registrations was discontinued; amendment of a trademark registration now requires the filing of a new application.

• The examination period of a trademark ap-plication was limited to a maximum of two years. Applications not accepted within this time period will be deemed to have been cancelled unless the applicant requests to present its arguments against the cancella-tion before the Registrar.

• The renewal period for a registration was set at 10 years (instead of an initial period of 10 years and subsequent 14-year periods).

Substantive Examination in Israel Under the ProtocolIsrael is a strict examining country. Interna-tional trademark applications will be examined on absolute and relative grounds based on the principles developed by the Israeli courts and the Trademark Office with regard to inher-ent and acquired distinctiveness, confusing

similarity to earlier-registered marks and other pertinent matters. Therefore, conducting clearance searches remains important also when filing under the Madrid Protocol. In some respects, in particular with regard to nontra-ditional trademarks, applicants may also find that the Israeli Trademark Office applies a strict, arguably overly strict, approach.

Interestingly, in the recent Trademark Office Guidelines (Circular MN/84), which came into force one month after Israel joined the Madrid Protocol, the Trademark Office discontinued its practice of requiring disclaimers of nondistinc-tive elements of a mark. As a result, more rejections are issued, and applicants are more often required to submit evidence substantiat-ing that a mark has acquired distinctiveness through use and advertising.

After examination and acceptance, an Israeli trademark application is published in the Trademark Gazette for possible oppositions, which can be filed up to three months from the date of publication.

Because it has a strict examination regime and an opposition procedure, Israel’s accession to the Madrid Protocol was accompanied by a declaration under Article 5(2)(b) and (c) of the Protocol whereby the time limit of one year to notify a provisional refusal of protection has been increased to 18 months and a provision-al refusal resulting from an opposition may be notified after the 18-month time limit.

Arab Countries

Countries Participating in the Madrid SystemFive Arab countries (out of 16) are signatories to the Madrid Protocol: Syria (as of August 5, 2004), Bahrain (as of December 15, 2005), Oman (as of October 16, 2007), Egypt (as of September 3, 2009) and Sudan (as of Febru-

This searchable database offers practical information on member countries’ practices and procedure in obtaining, maintaining and enforcing registrations through the Madrid system.

Visit www.inta.org/MadridProtocol

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

7

Featuresary 16, 2010). Two additional Arab countries, Algeria and Morocco, are signatories to the Madrid Agreement. Sudan and Egypt shifted to the Madrid Protocol after having been under the Madrid Agreement. Syria is a signatory to both.

Many of the influential Arab countries in terms of economy or branding, such as Saudi Arabia, Lebanon, United Arab Emirates and Jordan, have not yet joined the Madrid System.

Some Highlights of Implementation of the Madrid Protocol in Arab CountriesAll the Arab countries that are signatories to the Madrid Protocol examine international trademark applications on absolute and rela-tive grounds. The applications are published for possible oppositions in all these countries. In Bahrain, the opposition must be filed within 60 days from the date of publication in the National Gazette; in Egypt, within 60 days from the date of notification from the International Bureau (non-extendable); in Oman, within three months from the publication in the State Oman Gazette; and in Syria, within 90 days from the date of publication in the Property Protection Gazette.

Bahrain, Oman and Syria made the declara-tions under Article 5(2)(b) of the Protocol (extension to 18 months of the refusal period). Syria also made the declaration under Article 5(2)(c) of the Protocol (possible notification of refusals based on opposition after the 18-month time limit).

As early as 2004, the Jordanian government had reportedly resolved to embark upon the process toward full accession to and imple-mentation of the Madrid Protocol. The decision is in line with the country’s obligations in its bilateral trade relations with the United States, the European Union and the European Free Trade Association. In 2007, Jordan amended its trademark laws to enable accession to the Madrid Protocol, but the Protocol has not yet been implemented.

Similar to the situation in Israel, the number of outgoing trademark applications by Arab applicants is likely to be negligible in compari-son to the number of incoming international applications. For instance, in 2009, none of the top 50 Madrid applicants originated in Arab countries. On the other hand, Morocco and Egypt represented 1.7 percent and 1.6 percent, respectively, of all designations of

international trademark registrations and were among the top 20 member states.

This low number of outgoing international trademark applications can be attributed to the fact that the current economies of Arab countries generally produce raw materials (e.g., oil, cotton, plastics) that do not provide a wealth of trademarking activity. (See Amir H. Khoury, Measuring the Immeasurable—The Effects of Trademark Régimes: A Case Study of Arab Countries, 26 J.L. & Com. 11-70 (2006-07)). This may reflect on the willingness of additional Arab countries to join the Madrid Protocol in the foreseeable future.

Summary

The Madrid Protocol already accounts for a substantial percentage of the trademark filings in Israel. However, the strict examination of trademarks in Israel requires applicants opting for the Madrid filing route to consider specifi-cally whether the trademark is eligible for reg-istration in Israel. Only five Arab countries have joined the Protocol so far. In these countries, as in Israel, the number of incoming interna-tional applications is substantially greater than the number of outgoing applications.

Learn more at www.inta.org/MentorProgram

INTA announces the launch of its new Mentor Program—a unique way for members to develop meaningful professional relationships that can boost a career and change a life!The Mentor Program is ideal for connecting with other trademark professionals, trademark professors or law students. A one-year commitment is required.

MENTORPROGRAM

March 1, 2012 Vol. 67 No. 58

Law&PracticeBRAZIL Trademark Aspects of the 2014 FIFA WORLD CUP General Bill

MALAYSIA “Basket of Brands”: Expedited Enforcement of IP Rights

Contributor: Pedro Tavares Barbosa, Müssnich & Aragão

Verifier: Eduardo Magalhaes MachadoMontaury Pimenta, Machado e Viera de Mello, Rio de Janeiro

Contributor: Patrick Mirandahpatrick mirandah co. (Malaysia), Kuala Lumpur

Verifier: Kevin Sathiaseelan RamakrishnanKevin & Co., Kuala Lumpur

When Brazil presented itself as a “candidate country” for hosting the FIFA Confederations Cup 2013 and the 2014 FIFA WORLD CUP, several guarantees were provided by the Brazilian government to FIFA in connection with the organization of and preparations for these major events. The tax guarantees were encompassed by a bill that was approved at the end of 2010 (Law 12,350/2010), and all of the other commitments made by the Brazilian government, including those related to IP issues, were included in a general bill (commonly known as the World Cup General Bill).

The World Cup General Bill is currently being discussed in the Brazilian Congress, and it must be approved by the Câmara dos Deputados and the Senate prior to the president’s signature. The Brazilian government estimates that the approval of the final text should occur in the first half of 2012.

Articles 3–10 of the Bill provide certain benefits for FIFA’s protection of its trademarks and official signs in Brazil, as detailed below.

The Bill states that the Brazilian National Institute for Industrial Property (INPI) should consider FIFA’s official signs as “highly renowned marks” (famous/reputed marks), which means that the protection afforded to them is extended to all products and services (and not limited to those covered by FIFA’s trademark registrations). Similarly, the INPI would recognize certain FIFA marks as well-known marks (as defined by Article 6bis of the Paris Convention). It is important to note that the INPI would record these “qualifications” in connection with signs previously chosen by FIFA, at FIFA’s sole discretion, and FIFA would not be required to provide evidence demonstrating the highly renowned/well-known characteristics of those marks.

The Bill would establish expedited examination proceedings for FIFA’s pending and future trademark applications before the Brazilian INPI. Under these special proceedings, the INPI would render decisions regarding unopposed FIFA applications in 180 days, and decisions regarding applications opposed by third parties within 210 days. Currently, the INPI takes approximately two years to examine unopposed applications and

about three to four years to issue decisions on opposed applications.

The Bill further states that FIFA would be exempted from paying any official fees related to trademark proceedings before the Brazilian INPI.

It should also be mentioned that all crimes defined in the bill (Articles 16–19) are related to IP/trademark matters. The Bill classifies as a criminal offense the misuse of official symbols (penalties of 1–3 months and 3 months–1 year imprisonment or fine) and the ambush marketing “by association” and “by intrusion” (penalty of 3 months–1 year imprisonment or fine).

The referenced provisions, including the “existence” of such criminal offenses, would be valid until December 31, 2014.

As part of the Malaysian government’s efforts to empower domestic IP enforcement, the Ministry of Domestic Trade, Cooperative and Consumerism (MDTCC) recently set up a separate database for trademark owners to register themselves with the MTDCC in order to gain priority in the initiation of enforcement actions and prosecution of trademark infringement cases.

The aptly termed “Basket of Brands” scheme provides registered trademark owners in Malaysia the option of registering their proprietorship in a separate, distinct database with the MDTCC by executing the “Undertaking to Cooperate in Completing Investigation for the Infringing Registered Trade Mark Cases.”

The program is intended to aid in ridding the market of counterfeit goods, by “placing genuine brands in one basket” so as to

facilitate easy identification of the brands that are at risk of being infringed and to allow prompt action upon receipt of a complaint by the trademark owner.

Previously, the MDTCC had problems obtaining convictions against trademark infringers because of lack of cooperation from brand owners, as well as difficulties in obtaining proof of ownership of an allegedly infringed mark.

As this initiative is part of the Ministry’s efforts to expedite enforcement actions, registered trademark owners are also expected to play a proactive role in the investigation process. The Undertaking provides, inter alia, that the brand owner is obliged to assist in verifying seized goods within a specific time frame and to participate in the identification of infringing articles. A further requirement is

that the brand owner produce the trademark registration certificate to support the claim that it is the legitimate owner of the mark before it is eligible to become part of the “Basket of Brands” scheme.

At this early stage the effectiveness of the “Basket of Brands” program has yet to be measured, but it can be expected to expedite the enforcement of Malaysian IP rights and help considerably in respect of proof issues in prosecution.

9

Law&PracticeITALY Former Agent in Bad Faith on Wrong Track in Injunction Proceedings

Contributor: Peter McAleeseBarzanò & Zanardo, Rome

Verifier: Gabriele LazzerettiStudio Legale SIB, Florence

Mr. McAleese is co-chair of and Mr. Lazzeretti is a member of the INTA Bulletin Law & Practice— Europe Subcommittee.

In injunction proceedings before the Specialized IP Section of the Court of Bologna (General Docket Nos. 10954/2001 and 13229/2001), E.P.D. Italia S.r.l. (EPD) sought to restrain Global Track Warehouse Europe GmbH (GTW) from selling rubber tracks for excavating machines bearing the trademark R TRACK on the basis of Italian national registrations for an identical mark, filed on January 14, 2010.

GTW, in its defense, claimed that the registrations had been obtained by EPD in bad faith because the legal representative of the latter had been a former agent and exclusive distributor of GTW in Italy until December 11, 2009, and, as such, was aware of GTW’s plans for the R TRACK product. GTW asked the judge to sanction EPD’s procedural conduct for having omitted an essential factual circumstance in bad faith.

During the proceedings, it emerged that GTW had presented its R TRACK project to agents and distributors at least as early as November

2009 and had filed applications for the mark R TRACK in Australia and Germany.

The court held that EPD’s Italian legal representative had indeed exploited the knowledge acquired during his contractual relationship with GTW to obtain the Italian trademark registrations, in detriment to GTW’s legitimate interests in the mark. The judge observed that the rationale behind the bad faith provisions of the Italian Industrial Property Code is to provide “anticipatory protection” to those persons with a legitimate interest in marks that are registered first by another person who is aware of the former’s intentions and thus acts with the mere scope of obstructing their plans, particularly when such awareness derives from a relationship of trust between the parties. EPD’s position was further aggravated by the fact that it had begun competing with GTW, benefiting also from the similarity between the R TRACK mark and GTW’s well-established mark J TRACK.

The judge therefore rejected EPD’s request for

an injunction based on trademark registrations obtained in bad faith and imposed a fine for bad faith in its procedural conduct.

A panel of judges at the same court rejected EPD’s appeal, finding that the circumstances described in GTW’s briefs not only clearly demonstrated the appellant’s bad faith when it registered the mark R TRACK but also showed that EPD had put in place a plan aimed at depriving GTW of its mark. In consideration of EPD’s procedural conduct, also in the appeal, the court imposed a further fine on the appellant and condemned it to pay the legal fees of the action.

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March 1, 2012 Vol. 67 No. 510

Law&PracticeMEXICO Recent Amendments to IP Law Regarding Trademark Inspection Visits

POLAND BIKINI CHRISTIAN DIOR PARIS Confusing with BIKINI

Contributor: Julián VadilloVadillo & Co., Mexico City

Verifier: Aberto Huerta BleckAvahlegal, Mexico City

Both are members of the INTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee.

Contributor: Beata WojtkowskaKulikowska & Kulikowski, WarsawINTA Bulletin Law & Practice—Europe Subcommittee

Verifier: Magdalena CybulskaClifford Chance, Warsaw

To verify compliance with the laws that regulate trademarks, the Mexican Institute of Industrial Property (IMPI) has the ability to request reports and information and conduct inspection visits. These visits and their results usually are offered as evidence by the plaintiff in trademark infringement actions.

Owners, managers and service providers may allow IMPO officers to access their commercial establishments in order to conduct inspections.

The Mexican Law on Industrial Property was recently amended to allow IMPI officials during an inspection to take videos and photographs and to obtain any other item or information that could be considered admissible as evidence in a trademark infringement case.

Another relevant amendment is that denying access to an establishment for the purpose of conducting an inspection visit constitutes infringement of the law. In such circumstances, the facts alleged and charges

made by the plaintiff in the infringement complaint or petition are presumed true.

By decision of January 19, 2012, Sp. 500/11, the Polish Patent Office cancelled the trademark BIKINI CHRISTIAN DIOR PARIS No R-175224 in the name of Parfums Christian Dior, Paris, France ,due to a likelihood of confusion with the earlier trademark BIKINI No. R-124158 for similar personal care goods in the name of Barbara Hildman.

This decision followed a judgment of the District Administrative Court (the DAC) in Warsaw (VI SA/Wa 41/11) that revoked the Office’s previous decision dismissing the request for cancellation of the trademark and presenting specific recommendations for re-examination of the case by the Office.

Initially, the Office had refused to cancel the trademark BIKINI CHRISTIAN DIOR PARIS deciding that it is different visually, phonetically and semantically from the earlier trademark BIKINI.

The DAC revoked this decision, finding that the Office had failed to evaluate the likelihood of confusion of the overall impression produced by the marks, with particular attention to their distinctive and dominant elements. In the DAC’s opinion, the Office had disregarded the fact that apart from the word BIKINI the later mark comprised three words constituting the business name and the seat of the enterprise—elements that informed consumers about the source of origin of the goods.

In addition, the DAC noted, the failure to correctly examine the prerequisite of likelihood of confusion would mean that the company that applied for the mark, as well as any other company with a reputation or well-known status, would, because of the recognizability of its brand, be able to add with impunity a recognizable company designation or surname to any earlier mark

and then present the resulting mark as its own. To allow the owner of a trademark with a reputation to expand its family of marks by adding a well-known name or surname to any existing mark would make protection of earlier trademarks illusory.

This is one of the first decisions expressly favoring the line of case law of the European Court of Justice presented in the Court’s judgment in THOMSON LIFE. Case C-120/04 (ECJ Oct. 6, 2005).

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VANUATU Accession to WIPO Convention Contributor: John HackettAJ Park, Auckland, New ZealandChair of the INTA Bulletin Law & Practice—Asia-Pacific Subcommittee

Verifier: John GlengarryBuddle Findlay, Auckland, New Zealand

On December 2, 2011, the government of Vanuatu deposited its instrument of accession to the Convention establishing the World Intellectual Property Organization (WIPO

Convention), signed at Stockholm on July 14, 1967, and as amended on September 28, 1979. The WIPO Convention becomes effective in Vanuatu on March 2, 2012.

11

Law&PracticeSERBIA Serbian Cyrillic Domain Registration Now Open

UNITED STATES Same Title, Different Format, No Trademark!

Contributor: Svetlana GavrilovićPetošević – Balkan Regional Office, Belgrade

Verifier: Vladimir AleksićCRI Domains d.o.o., Belgrade

Contributor: Tessa BrownAmerican Red Cross, Washington, DC

Verifier: Jody H. DrakeSughrue Mion, PLLC, Washington, DC

Both are members of the INTA Bulletin Law & Practice—United States & Canada Subcommittee.

The Serbian National Register of Internet Domain Names (RNIDS) started accepting the Cyrillic .срб (srb) domain registrations on January 27, 2012.

During the initial six-month registration phase, only the owners of existing .rs domains will be able to register the corresponding .срб domains, that is, one-to-one character transliteration into Serbian Cyrillic characters (e.g., google.rs to гоогле.срб). Characters that cannot be directly transliterated into the corresponding Serbian Cyrillic characters (such as w, x, y) will translate into three-character dummy sequences in Cyrillic (e.g., wellness.rs to љћшeллнесс.срб).

The direct transliteration of foreign words is not always an adequate solution, as there are often differences in the

pronunciation of a word and the way it is transliterated. Therefore, in order to ensure a meaningful Cyrillic domain name, it may be necessary to register a proper local domain under .rs before registering the corresponding .срб domain. For example, Michael is pronounced and written in Serbian as Majkl (Latin) or Мајкл (Cyrillic), so it is advisable to register majkl.rs first and then apply for мајкл.срб, which is in local terms a more adequate domain name than мицхаел.срб.

After the initial registration phase, anyone will be able to register any number of available .срб domains, starting July 27, 2012.

Registration is possible under .срб as well as under the following extensions:

• .пр.срб for commercial entities• .орг.срб for organizations• .обр.срб for educational institutions• .од.срб for individuals• .упр.срб for administrative bodies• .ак.срб for academic network

Non-Serbian nationals, both companies and individuals, may register a .срб domain, but they must provide a local administrative contact.

The Trademark Trial and Appeal Board (TTAB) found that a program sold under the same title in different formats did not constitute a series of works so as to be protectable as a trademark. Granting Mattel, Inc.’s motion for summary judgment and petition to cancel The Brainy Baby Company, LLC’s trademark registration for LAUGH & LEARN, the TTAB held that the mark was merely the title of a single, creative work and therefore unregistrable as a trademark. Mattel, Inc. v. Brainy Baby Co., LLC, 101 USPQ2d 1140 (T.T.A.B. 2011) (precedential).

Brainy Baby’s mark LAUGH & LEARN was registered for a “series of prerecorded videotapes, audio cassettes, digital video discs and compact discs featuring live and animated educational materials intended to develop and improve the creative and intellectual faculties of infants and children.” Mattel petitioned to cancel the LAUGH & LEARN registration on the basis that the mark was the title of a single work and Brainy Baby had not shown use of the mark on a second work that would support use of the mark on a series.

Brainy Baby used its LAUGH & LEARN trademark on VHS tapes and DVDs featuring

live and animated educational materials for infants and children. The company argued that the use of the mark on both videotapes and DVDs constituted use on two separate works, thus satisfying the requirement for a series and establishing LAUGH & LEARN as a trademark.

The TTAB stated that“[t]he title of a single creative work is, of necessity, descriptive of the work and does not function as a trademark” but that “if a term has been used to identify the source of a series of creative works, it functions as a trade mark, and the fact that it may also be included in the title of each work does not destroy its source-originating function.”

After determining that the featured program on both the VHS tapes and the DVDs was essentially the same work, the TTAB reasoned that minor enhancements to the DVD format did not transform the single work into a series “any more than the variations in a live performance that occur from night to night transform the title of a single production into a series.” Its view was that consumers would understand that the DVD version, even with the minor enhancements, was the same work that

appeared on the VHS tape. The TTAB also pointed out that Brainy Baby’s LAUGH & LEARN program was promoted in its catalog as a single work that was available in both VHS and DVD formats.

The TTAB stressed that in order to maintain a registration, the owner must provide clear evidence that the mark identifies a series of different works. Brainy Baby failed to show that its use of the same title for essentially the same work delivered in two formats transformed that title into a mark for a series. Accordingly, the TTAB granted Mattel’s motion for summary judgment and petition to cancel, and the trademark registration for LAUGH & LEARN would be cancelled in due course.

March 1, 2012 Vol. 67 No. 512

Law&PracticeEUROPEAN UNION “Shape & Device Marks” and “Would-Be 3D Marks”

Contributor: Martin ViefhuesJONAS Rechtsanwaltsgesellschaft mbH, Cologne, Germany

Verifier: Ursula StelzenmüllerLichtenstein, Körner & Partner, Stuttgart, Germany

Both are members of the INTA Bulletin Law & Practice—Europe Subcommittee.

In its decision of December 7, 2011 (Case R 892/2011-2), the Second Board of Appeal of OHIM held that the shape of a container can qualify for protection as a three-dimensional trademark if the distinctive character originates not from the shape of the container itself but from a logo appearing on its side.

In this case, the subject of the registration sought by Deutsche See gmbh was a container for food, as shown below. The registration designated, inter alia, “crates and bins of metal / not of metal, namely fish boxes; fresh, chilled, frozen, fried, smoked and canned fish and fish products.”

The examiner at OHIM objected to the protection of the trademark in the EU on the ground of lack of distinctiveness.

After initially arguing that the shape of the container itself was distinctive, the applicant realized and pointed out that when the container was seen in high resolution, a fishlike logo could be seen on the right-hand side. The logo appeared as shown below.

The examiner was unconvinced. The Board of Appeal, however, took another view, as, apart from the purported fancifulness of the three-dimensional design of the crate itself, the applied-for mark bore the distinctive fishlike logo on its side. It noted that because of technical factors that inevitably limited the size and resolution of the trademark when the application was electronically filed at the Office, the logo was not particularly evident and could easily pass unnoticed by the casual observer. Nevertheless, the logo was visible in the top right-hand representation of the mark as filed and would be highly noticeable in a life-size reproduction. The Board of Appeal found the logo to be neither a realistic depiction nor a typical representation of a fish but a highly fanciful design, being both “fish” and “wave,” a design that combined two concepts in a simple but striking form. For the Board, it followed that, on the basis of this device alone, the mark could be granted protection in the EU, even though it was embedded in a three-dimensional form that, viewed as a whole, might be devoid of any distinctive character for such containers. The fish device enabled the mark as a whole to function as a badge of origin.

In the Board’s decision, the 3D mark was protected on the basis of a component that was not three-dimensional because the pictorial element enabled the mark as a whole—not just the pictorial element—to function as a trademark. This created what could be described as a “shape and device” mark, comparable to a “word and device” mark. Similar to word-device combinations with nondistinctive word elements, this type of mark cannot be the subject of rights that derive from the shape of the container itself, as the scope of protection is restricted to

the distinctive device element. Nevertheless, in the trademark register it will be indicated as a three-dimensional mark, not as a figurative mark.

For trademark practitioners this decision shows once more that it is important to review three-dimensional trademarks carefully and in detail to find out whether protection may derive from a two-dimensional component shown on the three-dimensional form. While “would-be three-dimensional marks” protected only because of a two-dimensional component are known from the practice of national trademark offices, it must be kept in mind that this basis for protection also applies in cases where the distinctive two-dimensional component is hardly visible, so that misinterpretations are likely to happen.

For trademark applicants this decision may be helpful, but it touches a borderline: the Court of Justice of the European Union may still find that such marks fall afoul of the requirement of a clear and easily accessible graphic representation according to the requirements set forth in the Court’s judgment in Sieckmann (Case C-273/00 (ECJ Dec. 12, 2002)) if only the life-size reproduction of the goods whose shape is represented in the mark allows one to discern the only distinctive component.

PROSUR Regional Integration in the Trademark FieldContributor: Patricia LusoliGuerra Law, Rio de Janeiro, Brazil

Verifier: Antonella CarminattiBarbosa, Müssnich & Aragão, Rio de Janeiro, Brazil

In Quito, Ecuador, on December 14–16, 2011, the nine countries that comprise PROSUR (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay) met to discuss regional integration in the field of trademarks. One of the purposes of PROSUR (a regional cooperation system on intellectual property) is to discuss actions to be taken

to enhance IP services in South America. An informative portal will be created to assist South American citizens. Videoconferences were scheduled in February and March 2012. There will also be a meeting in Lima, Peru, in March, at which further discussions on this matter will take place.

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