In a landmark decision onThursday, the European Court ofJustice (ECJ) said that rulesallowing trademark owners toobject to parallel imported phar-maceuticals within the EuropeanEconomic Area (EEA) apply torelabelled, as well as reboxed,products.

These rules, as set out in previ-ous cases, say that a parallelimporter who repackages a trade-marked product infringes thetrademark unless he meets fiveconditions, essentially: that it isnecessary to repackage for thetarget market; that there is noeffect on the original condition;that the manufacturer andimporter are clearly identified;that the presentation does notdamage the trademark’s reputa-tion; and that adequate notice isgiven to the trademark owner.

The Court also clarified thatthe burden of proving that theconditions have been met falls onthe parallel importer, rather thanthe brand owner.

The ruling came in a disputebetween pharmaceutical compa-nies Boehringer Ingelheim, EliLilly and GlaxoSmithKline andparallel importers Dowelhurstand Swingward in the UK courts.The dispute concerned the importof drugs into the UK from otherEuropean countries.

Under EU law, the principleof free movement of goodsallows anyone to buy goods inone Member State and ship themto another for resale. Differencesin the prices of pharmaceuticalproducts mean that shippingfrom low-price to high-pricecountries can be lucrative –though national legislation oftenrequires importers to repackagethe products, for example toprovide information in the locallanguage.

However, branded pharma-ceutical companies have arguedthat such repackaging caninfringe their trademark rights,and the European court has beencalled on to address this questionin a series of cases stretchingback almost 30 years.

In the latest case, the UK

Court of Appeal asked the ECJa total 14 questions regardingreboxing, relabelling, and thenotice requirement. This wasthe second time questions hadbeen referred in this particulardispute.

In its ruling, the Court con-firmed that the condition thatthe presentation of a productmust not cause damage to atrademark “is not limited tocases where the repackaging isdefective, of poor quality, oruntidy.” But it said that it is fornational courts to decidewhether a trademark’s reputa-tion is damaged where there isde-branding, co-branding,obscuring of the trademark, fail-ure to state the name of thetrademark owner or where theparallel importer’s name is print-ed in capital letters.

Nick Beckett, head of IP atCMS Cameron McKenna inLondon, which advised Eli Lilly,told the INTA Daily News:“Although this a positive deci-sion, many trademark ownerswill have hoped for more detailedguidance – there is a danger ofinconsistency between nationalcourts.”

He added that the judgment onover-labelling is particularly wel-come, as it did not follow theOpinion of the Advocate General,which was published in advanceof the judgment. “This was by farthe most controversial part of theAdvocate General’s Opinion. Ifthis aspect had been decided asthe Advocate General wanted,importers would, arguably, haveno obligation to give notice to thebrand owner of over-stickeredproducts,” said Beckett.

Heinz Kobelt, Secretary-General of the EuropeanAssociation of Euro-Pharmaceutical Companies(EAEPC), told the INTA DailyNews that parallel importers wel-comed the ruling as it emphasizedthat repackaging is allowed pro-vided the criteria are met: “Thisdecision would not pose anyextra burdens on parallelimporters.” More ECJ news page 2.

Activities marking World IP Dayon Thursday included exhibi-tions, lectures, debates – and thedestruction of counterfeit goods.

World Intellectual PropertyOrganization (WIPO) DirectorGeneral Kamil Idris sent an offi-cial message in which he empha-sized the link between artists,music makers, poets, and prob-lem solvers – and the lawyerswho help protect their creativity.The theme of the sixth annualWorld IP Day was “encouragingcreativity.”

In Singapore, more than 1,200people attended a cinemamarathon held by the IntellectualProperty Office on April 21 inwhich the public could watchthree U.S. films before theyreached movie theaters. The IPoffice in the Philippines used itsart space, inaugurated in Februarythis year, to show an exhibition byFilipino artist Mideo M. Cruz,which was followed by a seminaron copyright for visual artists.

In China authorities organizedevents including the destructionof a large number of pirated

goods, an IP protection essaycontest, an online survey on IPprotection and a quiz betweenstaff at centers that deal withcomplaints about infringements.

Vietnamese television broad-cast a live awards ceremonyorganized by the Vietnam IPAssociation and the NationalOffice of Intellectual Property.The Office also arranged eventsin Hanoi, Danang, and Ho ChiMinh City.

The Ethiopian IntellectualProperty Office opened its offices

to visitors and organized an exhi-bition displaying examples of pro-tected works, posters and statisticson the status of IP in the country.

In Europe, an innovation par-liament was convened where del-egates from Finland and Russiadiscussed the theme “InnovationCrossing Borders.” AtBournemouth University in theUK the Director of the BritishBrands Group gave a talk on therelationship between brands, theeconomy and IP.

In the United States, theCreative and Innovative EconomyCenter at George WashingtonUniversity Law School, togetherwith WIPO, held an event thattaught students and Congress theimportance of encouraging cre-ativity and protecting creators.U.S. Secretary of CommerceCarlos Gutierrez said at the meet-ing: “Protecting the ideas andinnovations of American artists,inventors and entrepreneurs iscritical to the continued growthof our economy and protectingU.S. jobs and remains a top prior-ity of the Bush administration.”

More than 300 people attendedlast night’s INTA Gala at the FieldMuseum in the shadow of Sue, theworld’s largest T-Rex skeleton.

The Gala recognized awardwinners and Association volun-teers. Brendan Witherell, a lawstudent at Western New EnglandCollege School of Law, scoopedthe 2007 Ladas Memorial Awardfor students while MarkMcKenna, an assistant professorof law at Saint Louis UniversitySchool of Law and a former trade-mark litigator with Pattishall,McAuliffe, Newbury, Hilliard &Geraldson, was awarded theLadas prize for professionals.

The University of Alabamawon the Saul Lefkowitz MootCourt Competition, ahead of threeregional finalists. INTA PresidentDee Ann Weldon-Wilson said thediversity and intellect among par-ticipants had been “nothing shortof extraordinary.”

ECJ clarifies ruleson drugs imports

World IP Day celebrates creativity

Sunday, April 29, 2007 www.managingip.com

CONTENTS 2 • QUIZ 14 • ANNOUNCEMENTS 14 • AFFILIATE PARTY PHOTOS 15 • SCHEDULE 16

www.inta.org 129TH ANNUAL MEETING, CHICAGO

Daily NewsPUBLISHED BY

INTERVIEWS: ANA CASHMAN OF PLAYBOY AND AIMEE NOLAN OFGRAINGER 6, 8

CITY GUIDE: THE SIGHTS TO SEE WHILE YOU ARE IN CHICAGO 10

PROFILE: CEO JIM SKINNER ON MANAGING MCDONALD’S 3

Dinner and a dinosaur

The ECJ has rejected an attemptby Alcon Inc. to register TRA-VATAN as a Community trademark in Class 5 on the groundsthat it is confusingly similar toTRIVASTAN, a mark registered inthe same class in Italy by Biofarmamore than 10 years earlier.

Alcon had applied to registerits mark in 1998 in respect of“ophthalmic pharmaceuticalproducts.” But Biofarma, whichmakes a peripheral vasodilator fortreating peripheral and cerebralvascular disturbances and vascu-lar disorders of the eye and earcalled TRIVASTAN, filed a noticeof opposition one year later.

In 2001, OHIM acceptedBiofarma’s opposition andrefused to register a Communitytrade mark for TRAVATAN onthe grounds that there was a like-lihood of confusion, including thelikelihood of association with theearlier mark, in Italy.

Alcon appealed to the Courtof First Instance (CFI), whichbacked OHIM’s decision. It then

appealed to the ECJ, arguing thatthe CFI should have restricted thedefinition of the public solely tohealthcare professionals (that is,doctors and pharmacists) andthat end-users should not havebeen taken into account for thepurpose of assessing the likeli-hood of confusion.

But in its decision, the ECJ saidwhere the goods or services withwhich the application for registra-tion is concerned are intended forall consumers, “the relevant publicmust be deemed to be composedof the average consumer, reason-ably well informed and reasonablyobservant and circumspect.”

McCormick Place is the largestconvention center in theUnited States, and this week itwill be hosting the speakersand attendees at the INTAAnnual Meeting for the firsttime.

Wherever in Chicago you arestaying, try to get toMcCormick Place early eachday. “We have really big drawsfor the morning sessions,” saysMichelle Brownlee of ColibriCorporation, who is co-chairingthis year’s Annual Meetingwith David Fleming of BrinksHofer Gilson & Lione.

Fleming adds that internation-al programming has expandedthis year, with a number ofregional updates (for exampleon China, Europe, Africa, andLatin America) replacing theprevious one-session interna-tional update. In addition, saysFleming: “We wanted toinclude a comparative elementin as many sessions as possi-ble.” The sessions on right ofpublicity, dilution, trademarkprotection and civil liberties,and nontraditional trademarkspresent a multi-jurisdictionalperspective.

Fleming told the INTA DailyNews that he is particularlylooking forward to the firstsession on Monday, “MuddyWaters: Evolving Law andPolicy in Internet Advertising”

in which the moderators willask questions of representa-tives of Microsoft, Yahoo!, AOLand Google about issues suchas keywords and adware.

Meanwhile, Brownlee picks outthe session “Blues Clues” –Internet Investigations, whereattendees can bring their ownlaptops to do real-time search-ing. As Brownlee says: “Theycan really learn by doing.”

Outside of the educationalsessions, Fleming – a Chicagoresident – points out that theINTA Gala and Wednesday’sGrand Finale will be held at“two really spectacular muse-ums”: the Field Museum andMuseum of Science andIndustry.

Aside from that, he recom-mends attendees try outChicago’s famous internationalcuisine, tour the architectureand river, Navy Pier, theMillennium Park and the ArtInstitute of Chicago and – ifthey have time – visit a bluesclub such as the famous BuddyGuy’s. “Everybody should tryto get there,” he says.

Remarkably, this is the firsttime the INTA Annual Meetinghas been held in the city since1957 – so it gives many atten-dees the first opportunity tofind out, as Brownlee says, that“Chicago is more than O’HareAirport.”

Even before the first day of activ-ity, this year’s Annual Meetingwas set to be the best-attendedmeeting in INTA history. As ofApril 24, 8,524 individuals hadregistered for the Meeting, withINTA expecting more registra-tions on-site. Attendance at theAnnual Meeting has increasedeach year for the past five years,with this year’s meeting toppingthem all.

While the United States has the

largest representation – 3,584 –U.S. attendees are in the minorityoverall, with 4,940 attendees com-ing from other countries (see chart).

In all, attendees from morethan 140 countries will be at thisyear’s Annual Meeting, includingArmenia, Fiji, Guyana,Liechtenstein, and Tanzania.Among this year’s attendees,there are more than 25 membersof the press and nearly 40 profes-sor/student members.

The European Parliament hasbacked a draft directive that willrequire Member States to treatintentional infringement of trade-marks carried out on a commercialscale as a criminal offense.

The directive aims to requirenational governments to imposecriminal sanctions for infringe-ment of IP rights. This is the firstEU directive to attempt to har-monize national criminal law(although EU treaties lay downthe right to impose criminal sanc-tions in cases of cross-borderdamage to the environment).

On April 25, MEPs voted in

favor of the directive by 374votes to 278. But they alsobacked a proposal to excludepatent rights from the scope ofthe directive, and said that crimi-nal penalties should apply only toinfringements deliberately carriedout to obtain a commercialadvantage. This means that, asdrafted, the directive will excludepiracy committed by individualusers for personal, non-profitpurposes.

INTA has welcomed the vote,describing it as a “significant stepin the right direction.”

“This vote sends a strong

message throughout the EU thatcounterfeiting and piracy arecrimes that will be severely pun-ished,” said INTA ExecutiveDirector Alan C. Drewsen.“Although this is an initial stepin the process, INTA is hopefulthat the EU institutions willbring this specific measure to afully enacted state.”

But the Association remainsconcerned that the directive’s def-initions of “commercial scale”and “intentional infringement”may lead to a wide range of inter-pretations across Member States,thus undermining the measure’s

benefits. INTA has said it“strongly believes that MemberStates and national courts requireclear standards to achieve trueharmonization.”

The draft directive says that incases of serious IP crimes,infringers must face a fine of atleast €300,000 and/or up to fouryears in jail. Aiding or abettingand inciting anyone to infringe IPrights will also be treated as acrime.

The text will now be discussedby national governments. ButAndrew Laidlaw, a policy adviserfor the UK Law Society based inBrussels, warned that it may takelonger for Member States tofinalize their negotiations.

NEWS

Euromoney Institutional Investor PLC

Nestor House, Playhouse YardLondon EC4V 5EX United KingdomTel: +44 20 7779 8682 Fax: +44 20 7779 8500Email: mip@managingip.com

EDITORIAL TEAMEditor James Nurton Deputy editor Emma BarracloughReporters Peter Ollier and Eileen McDermottAdditional reporting Shahnaz Mahmud, JamieMcKay, Nick Pettifer

PRODUCTIONProduction manager Luca ErcolaniWeb designer João Fernandes

ADVERTISINGPublisher Daniel ColeTel: +852 2842 6941Email: daniel.cole@euromoneyasia.comAmericas manager Tom St DenisTel: +1 212 224 3308Email: tstdenis@euromoneyny.comEurope/Africa manager Alex EagerTel: +44 20 7779 8682Email: aeager@managingip.comLatin America sales executive Alissa RozenTel: +1 212 224 3673Email: arozen@euromoneyny.com

Group publisher Danny WilliamsDirector Christopher Fordham

SUBSCRIPTION HOTLINE UK Tel: +44 20 7779 8999US Tel: +1 212 224 3570

EDITORIAL TEAMEditor James BushPhotography Robert LoScalzoDirector Randi Mustello

BUSINESS DEVELOPMENT TEAMManagers Justin Hajny (Marketing), Matthew C.Schmidt (Communications) and Peg Reardon(Membership)Designer Jesse RiggleDirector Daryl G. Grecich

The INTA Daily News is produced by Managing Intellectual Propertyin association with the International Trademark Association. Printedby Rider Dickerson in Chicago. The INTA Daily News is also availableonline at www.inta.org and www.managingip.com. © EuromoneyInstitutional Investor PLC 2007. No part of this publication may bereproduced without prior written permission. Opinions expressed inthe INTA Daily News do not necessarily represent those of the INTAor any of its members.

Chicago city guide information and photos:www.choosechicago.com

CONTENTSNews 2

PROFILE

Jim Skinner, CEO,McDonald’s 3-5

AT A GLANCE

McDonald’s facts 5

INTERVIEW

Ana Cashman, Playboy 6-7

INTERVIEW

Aimee Nolan, Grainger 8-9

CITY GUIDE

Sights of Chicago 10

Classified advertising 12, 14

Vox pop 13

Quiz 14

Announcements 14

Private reception photos 15

Schedule 16

Record attendance at 129th Annual Meeting

ECJ looks to end-users

EU steps closer to jail terms

CO-CHAIRS WELCOME ANNUAL MEETING ATTENDEES

U.S. 3,584 UK 488 Canada 370 Germany 294 China 271 France 196 Mexico 189 Japan 158 Australia 145 India 136 Spain 133 Italy 130 Switzerland 122 Brazil 114 Argentina 101 Netherlands 99 Sweden 97 Taiwan 62 Philippines 61 Singapore 58

The 20 countries with the most attendees as of April 24, 20070 100 200 300 400 500 3,000 3,500

ECJ, Luxembourg

Jim Skinner, today’s INTA AnnualMeeting keynote speaker, knows abit about brands. He has worked forMcDonald’s – rated as the ninth

most valuable brand in the world byBusinessWeek/Interbrand – for 36 years.And, since November 2004, he has beenvice chairman and chief executive, oversee-ing fundamental changes in both the brand

and the business as McDonald’s moves intoa new era, emphasizing “balanced activelifestyles” and offering new product ranges.Skinner is at the heart of this transforma-tion and he sees his job as “protecting thecustomer experience, 52 million times aday.” He explains that one of the mostimportant aspects of his role is to ensureconsistency: “The specification and delivery

of the brand – our trademarks and iconicproducts – have to be delivered every day.”

Brand under threatSkinner was thrust into the role of chiefexecutive at a difficult time forMcDonald’s. His two predecessors, JimCantalupo and Charlie Bell, had both diedsuddenly – Cantalupo was only 16 months

into his second term as CEO, and Bell wasin the role just seven months before hestepped down to fight a battle with coloncancer that he lost in January 2005.

At the same time, the McDonald’s brandwas under unprecedented attack. The com-pany had been the focus of anti-globaliza-tion and anti-American protests in somecountries. Eric Schlosser had published the

critical book Fast Food Nation in 2001 andin May of 2004 Morgan Spurlock releasedSuper Size Me, an Academy Award-nomi-nated documentary movie in which thefilmmaker lived exclusively on McDonald’smeals and took no exercise for a month.Spurlock aimed to highlight the nutritionaldangers of fast food, although McDonald’schallenged many of his claims – and thecompany responded to the film by settingup a website that highlights healthy eatingoptions at its restaurants.

Whatever the validity of Spurlock’s alle-gations, the last five years have seen manyconsumers become more concerned aboutdiet, the environment and accountability –and McDonald’s has responded with newproducts, healthy eating campaigns, recy-cled packaging, charitable efforts, accessi-ble nutritional information and exercisepromotions – the latest of which encour-ages children to “go active with RonaldMcDonald.” New menus including saladand fruit, as well as whole new meals suchas breakfast, now feature inMcDONALD’S restaurants everywhere.

Today, many local businesses offer tai-lored healthier options, such as Salads Plusmenus in Europe, Toasted Deli Sandwichesin Canada, the Fresh Choices Menu inHong Kong, QuickStart breakfast inAustralia and the Toasted Rice Burger inTaiwan. McDonald’s is also selling fairtrade coffee in countries such as the UK. Itsiconic family-oriented HAPPY MEALchoices have expanded to include, forexample, a cheese and egg sandwich on asteamed bun, yogurt and milk (in China),Chambinho (a cream cheese dessert) inBrazil and 100% low-fat regular andchocolate milk jugs, 100% pure apple juiceand Apple Dippers in the US. “It’s impor-tant to provide choices to make customersfeel good,” says Skinner. In February 2006,at the Winter Olympics (one of many

www.managingip.comINTA Daily News – Sunday, April 29 2007 3

PROFILE: JIM SKINNER, MCDONALD’S

Brand consistency, 52m times a dayToday’s INTA Annual Meeting keynote speaker is CEO of one of the world’s best-known brands – which brings with it both privileges and big, big challenges. James Nurton asked Jim Skinner of McDonald’s how the company maintains a consistentbrand despite its changing products and global reach.

continued on page 4

sports events the company sponsors),McDonald’s launched its on-packagingnutritional information, which the compa-ny says will become standard over the nextfew years.

The brand is centralThe question for Skinner is: how doesMcDonald’s maintain a consistent brandgiven the evolving nature of its productoffering, not to mention the fact that itsells its food through more than 30,000restaurants in 119 countries (see boxopposite)? He insists the brand remainscentral – and consistent: “We have addednew food recommendations and more rel-evant products yet we have most if not allof our core products.” He adds that eventhough the product offering changes, thecustomer experience does not: “Most ofall, it has to be fun to them – a fast, highquality experience at a great price. One ofthe things we stay true to: understand whowe are, what we are and what we do.”

But what does the brand signify? SaysSkinner: “McDonald’s means a lot ofthings to a lot of people. Mostly it’s aboutthe forever young spirit.” That means therestaurants have to remain a fun place toeat, especially for families. They have tofeel exciting – and contemporary. Hencethe company’s FOREVER YOUNG brand,launched in 2005, which sees the new –more healthy – menus complemented byrestaurants gradually becoming less plas-tic, with the red and yellow colors andlighting more muted. Part of the redesignincludes three zones in each restaurant,which many see as inspired by the designof Starbucks (although McDONALD’scoffee beat that of Starbucks in a recentblind tasting). The linger zone has com-fortable chairs and WiFi; the grab-and-gozone has bar stools with news on plasmaTVs; and the flexible zone is family-orient-ed with colorful cushions.

As Skinner (age 62) says, McDonald’s isa 53-year old that strives to remain young.But how young? “Twenty-two,” he saysstraightaway. “A market researcher oncetold me that’s the age everyone aspires to.”

A business is bornMcDonald’s was started by Illinois sales-man Ray Kroc, who had invested his lifesavings in a milkshake maker called theMultimixer. After selling eightMultimixers to a hamburger stall run bybrothers Dick and Mac McDonald, Krocdecided to travel to their stall in Californiato see what all the fuss was about.Claiming he had never seen so many peo-ple served so quickly, he offered to expandthe restaurant business and opened thefirst McDonald’s franchise in 1955 in DesPlaines, Iowa. (The first restaurant is nowa museum. McDonald’s opened a restau-rant in Kroc’s ancestral town of Plzen inthe Czech Republic in 1994.)

Over the 50 years since, the company hasexpanded to be one of the world’s most rec-ognized consumer brands – its name,Golden Arches logo, products such asCHICKEN McNUGGETS and EGGMcMUFFIN and the character RonaldMcDonald familiar to diners fromAnchorage to Zhuhai. The Economist mag-azine has used the price of a BIG MACburger to measure purchasing power paritysince 1986. McDonald’s joined the NewYork Stock Exchange in 1965 and launchedthe BIG MAC in 1968 and the HAPPYMEAL in 1979. At the end of 2006, it had31,667 restaurants worldwide (see box) andits 2006 revenues were $21.5 billion.

Throughout this growth, the company

has been true to Kroc’s original vision of afranchised business. About 70% ofMcDONALD’S restaurants are franchises,run by what the company calls owner-oper-ators. In the US, for example, if you have

about $200,000 in cash and extensive busi-ness/retail experience you can apply to jointhe 2,400 other owner-operators. You haveto pay 25% of the cost of the restaurant incash, or 40% in the more unusual case of a

new restaurant, with the remainderfinanced over up to seven years.

In other countries, a similar modelapplies (except the UK, where franchising isthe exception) but decisions about costs,structures and training are made by thelocal management. Says Skinner: “Withinlocal markets management has opportuni-ties to make decisions but products have tobe delivered to our high-quality standards.”

Skinner says the franchise systemensures that McDONALD’S restaurantsare locally relevant but globally consistent:“We are a local company almost every-where we operate. Local franchisees makethe decisions about what’s most relevant.But we all want the same thing – safe, highquality, fun food.” This means that, whileyou might be offered unique products such

www.managingip.comINTA Daily News – Sunday, April 29 20074

PROFILE: JIM SKINNER, MCDONALD’S

as CROQUE McDO (in France), theCHICKEN MAHARAJA MAC (in India),the TERIYAKI BURGER (in Japan) or theMcHUEVO (in Uruguay) you shouldalways experience what Skinner calls the“consistency of delivery of customer rele-vance.” “We’re a very detailed restaurantcompany,” he adds.

Not plain sailingBut McDonald’s experience has not beenone of 50 years of unchallenged growth.On a corporate level, it has owned all orpart of numerous other restaurant busi-nesses, but has recently been withdrawingfrom these to focus on the core brand. Ithas sold its interests in Aroma, Donatosand Chipotle Mexican Grill and though itretains ownership of Boston Market, thecompany has said it is “exploring strategicoptions.” Skinner says McDonald’s is“unraveling” previous expansionistefforts: “We are much better when focusedon brand McDONALD’S. Other business-es have to be enormous to rival that andwe think you should stay focused on thingsyou’ve done well.”

The company has also been directlyattacked in various parts of the world.Earlier this year, HRH Prince Charles, heirto the throne in the UK, suggestedMcDonald’s should be banned to encour-age better nutrition. In France, anti-global-ization campaigner José Bové attacked theMcDONALD’s restaurant in the town ofMillau in 1999, and was imprisoned for 44days.

In other cases, the reputation of theMcDONALD’S brand has been threatenedby a lawsuit over hot coffee and allegationsof environmental and nutritional damage,which led to the so-called McLibel trial, thelongest ever in the UK. In that case,

McDonald’s was finally awarded £40,000($75,000) in damages from campaignersHelen Steel and David Morris, after thecourt found that most, but not all, of theirclaims could not be supported.

Skinner says that a company such asMcDonald’s has to expect some criticism,and should listen to it and respond: “Youhave to be a learning organization. Wehave as many people telling the positiveside of the story over the past few years.We walk the talk.” He adds that the com-pany’s system means that “local managersare local,” so in France, for example, thebusiness is run by French citizens andaccusations of globalization are wide ofthe mark.

One topical battle concerns the word“McJob,” which has been included in somedictionaries to refer to a low-paying, low-status job, particularly in the service indus-try. The company is fighting back, challeng-ing the generic use of the word and empha-sizing the advantages of working forMcDonald’s. “The McJob story is going to

be a positive for us in the long run – it givesus an opportunity to talk about the benefitsof a job at McDonald’s. It’s not a job withno future and no benefit.” (For the record,McDonald’s owns a US trademark forMcJOBS, filed in 1984 in Class 41.)

Living the brandSkinner himself epitomizes the corporateview of the McJob. He first worked at aMcDONALD’s restaurant in Davenport,Iowa while at high school (others who hadtheir first job in a McDONALD’s restaurantinclude athlete Carl Lewis, Amazon.comfounder Jeff Bezos and 20 of the McDonald’scompany’s top 50 worldwide managers).

Skinner then spent 11 years in the U.S.Navy, where he studied electronics in nightschool, and saw service in the North andSouth China Seas on the aircraft carriersOriskany and Midway. The USS Midwaymay be familiar to INTA attendees whowere at the Annual Meeting in 2005 as it ismoored in San Diego and hosted numerousreceptions that year.

He rejoined McDonald’s in 1971 as arestaurant manager trainee inCarpentersville, Illinois and held variouspositions in the United States and overseasbefore becoming vice chairman and thenCEO. Notably, he was president and chiefoperating officer of McDonald’s Europe,Asia, Pacific and Middle East, responsiblefor nearly 12,500 restaurants and oversee-ing openings across the Middle East,Africa and India. “The first thing is to findgreat local partners who are committed tothe idea that brand McDONALD’s can beimportant to them,” he says of his experi-ence at this time.

As CEO, Skinner says he “asks a lot ofquestions” and studies the results on adaily basis, but he doesn’t travel as muchas he used to. He also visits McDONALD’srestaurants daily, and enjoys the premiumcoffee (not just on free coffee Mondays).Until recently, his favorite dish had alwaysbeen a plain QUARTER-POUNDER sand-wich, with no condiments, “100% purebeef with seasoning.” He explains: “I’mfrom Iowa. I like beef.”

But lately he has been eating more ofthe new SNACK WRAP, a 260-caloriegrilled lettuce and cheese sandwich that isbeing rolled out in McDONALD’s restau-rants around the world. He says the switchis for reasons of taste rather than health: “Itry to have a balanced diet – I exercise offwhatever I eat.”

In 2004, when he became CEO, Skinneraffirmed his aim to “be a brand that iseven more meaningful in the lives of thepeople we serve.” In 2007, he says that, forall the changes and challenges the compa-ny faces, that goal remains, wherever inthe world customers encounter the brand:“The important thing is the front counterand the drive-thru.”

www.managingip.comINTA Daily News – Sunday, April 29 2007 5

PROFILE: JIM SKINNER, MCDONALD’S

FACTS

Total restaurantsin 2006: 31,667

U.S. 13,774

Canada 1,391

Europe 6,403

Japan 3,830

Asia/Pacific,Middle East and Africa (excl. Japan) 3,992

Latin America 1,656

Average annual turnover of a McDonald’srestaurant: $1.9 million.

Graduates of Hamburger University: 75,000

Safety protocols conducted daily in eachrestaurant: 72

SELECTED SLOGANS

All AmericanMenu – aHamburger, Friesand a Shake(1960)

Look for theGolden Arches(1961)

We Do It All For You (1975)

You Deserve a Break Today (1981)

Did Somebody Say McDonald’s? (1995)

i’m lovin’ it (2003)

it’s what i eat and what i do … i’m lovin’ it”(2005)

How long have you been with Playboy?It will be five years in July. Before that Iwas a partner with law firm Seyfarth Shaw.When I graduated from law school in1993, I wasn’t sure what type of law Iwanted to practice. I knew I was interestedin international law so I enrolled in theLL.M. program at Kings College at theUniversity of London. After I left myIntroduction to IP class, something justclicked and I knew this was the field Iwanted to practice in, especially knowingthe challenges the law would face duringthose early days of the Internet.

What I really like about this area of lawis that is has to develop as the technologydoes. I often feel as though I am taking onthe role of a creative counselor to myclients. Issues with the Internet anddomain names inevitably lead to trade-mark law. In that way, I always have to becreative – because it’s always changing.Trademark law never gets boring or stale.

What is your business model? Playboy is an international multimediaentertainment company. Our MediaGroup includes our television, digital andpublishing divisions and our GlobalLicensing Group oversees our productlicensing business as well as our land-basedentertainment facilities. Our productlicensing business generates in excess of

$700 million in retail sales in more than130 countries. The PLAYBOY and rabbithead design trademarks are very successfulglobally and we’ve experienced tremen-dous success in Europe and Asia.

The company has 12 in-house attorneyswho handle everything from corporatecompliance to litigation to overseeing pro-duction and distribution deals. Ourlawyers are spread out in our Chicago,New York and Los Angeles offices.

As assistant counsel, I oversee five peo-ple on our in-house trademark team, whichmanages both prosecution and enforce-ment of our trademarks. Playboy has about7,000 trademarks in over 200 countries(both applications and registrations).

In the last five years, we have revampedand significantly strengthened our global

anticounterfeiting program. As one of theworld’s most recognized brands, we needto ensure we actively enforce our rights inour valuable marks.

What is the history of the brand?In 1953, Hugh Hefner released the first edi-tion of Playboy magazine. The original titlewas Stag Party. But, another magazine hadtrademark rights to STAG and subsequent-ly served Hefner with a cease and desist let-ter. So, at the last minute, Hefner changedthe magazine title to Playboy. This is nowone of the most recognizable brands in theworld. The rabbit head design is now syn-onymous with the term “playboy.”

What are the greatest strengths andweaknesses of the brand?I think the fact that the brand is so recog-nizable is both its greatest strength andweakness. Its identity is helpful in terms ofenforcement. But the famous mark isprone to being copied or stolen heavily.The increase in counterfeit goods with thetrademark is astounding. And it’s difficultto keep on top of everything because of thenumber of countries we are registered in.

How do you maintain control of the brandas used by licensees?We have very strict control provisions inour license agreements through which wereview products at every step of develop-ment. We use an online system to trackapprovals. We also have strict guidelineson the use of our trademarks. We workclosely with our licensees to ensure we areall on the same page regarding the way thePLAYBOY brand is presented.

What other brands do you own?Playboy’s other trademarks include PLAY-MATE and PLAYMATE OF THE YEAR.The SPICE trademarks are used for theadult entertainment business.

Do you protect any look-and-feel aspectsof the brand?We protect our Playboy bunny costume,which has been worn by Playmates forover 40 years. We rely on trademark andtrade dress protections, depending on theparticular laws of the pertinent country.We consider it to be one of our most valu-able trademarks because consumers clearlyassociate it with Playboy.

How many countries do you protect thetrademarks in?Over 200, in such countries as Japan,China, Hong Kong, Vietnam, Korea,

Australia, Thailand, Australia, NewZealand, all of South America.

How has the brand changed since you joined?The product licensing business has grownexponentially, resulting in much morecounterfeiting activity. Five years ago, wewere doing about $250 million in retailsales globally. Now, we have almost tripledthat number.

What’s most challenging?Fighting counterfeits. We use a variety ofdifferent experts in our global anticounterfeiting program includinginvestigators, Customs agents, localenforcement groups and attorneys. Thishas proven to be very effective. Customsall over the world has been very helpful tous, particularly in the EU and China.

I do feel that we have undertaken a lotof good measures. That is evidenced by thefact that counterfeiting of ourbrands/products has diminished. Thecounterfeiters are going to other brands.

Playboy’s no bunnyPlayboy is not just a leading men’s magazine; it also has an extensive global licensing program anda strong online presence. Ana Cashman, assistant counsel at Playboy Enterprises, tells ShahnazMahmud why this poses increasing enforcement challenges.

www.managingip.comINTA Daily News – Sunday, April 29 20076

INTERVIEW: ANA CASHMAN, PLAYBOY

Which firm has won the AustralianIntellectual Property Firm of the Year for thesecond year running?Answer in tomorrow’s Daily News.

HISTORY OF THE PLAYBOY BRAND

Playboy Enterprises, whose corporateheadquarters are in Chicago, Illinois, start-ed with Playboy magazine, which waslaunched in December 1953. It was foundedby Hugh Hefner, who is still editor-in-chief.

No date appeared on the first issue.According to the Playboy website, Hefnerjust had a few dollars in the bank and didnot expect a second issue to be printed. Hisname does not appear in the first issue,either. But it sold 54,175 issues – an extraor-dinary achievement for a new magazinethat did not have much advance publicity.One of the big draws in the first issue was anude photo of a young Marilyn Monroe thatHefner bought from a local calendar printer.Other features in the issue were a SherlockHolmes story by Sir Arthur Conan Doyle, anarticle on the pop singing duo the DorseyBrothers and an article on desk design forthe modern office. Hefner wrote most of thecopy himself and drew all of the cartoons.

Today Playboy sells more than 3 millioncopies monthly just in the United Statesand 4.5 million worldwide.

But the group consists of much more thanjust Playboy magazine. Playboy Enterprisesoperates television networks, distributingglobally programs including Playboy TV,Playboy Home Entertainment and PlayboyRadio. It also operates Playboy Online andWireless. Playboy’s licensing group capital-izes on its powerful bunny logo. The compa-ny touts an extensive lineup of fashion andconsumer goods, which includes underwear,legwear, footwear and home furnishings, aswell as lifestyle and entertainment products.

The increase incounterfeit goodswith the trademarkis astounding

www.managingip.comINTA Daily News – Sunday, April 29 2007 7

INTA DAILY NEWS

How long have you been with Grainger?It will be nine years in June. My title is sen-ior corporate counsel and I oversee ourtrademark portfolio, though this is just aportion of my practice. Before joiningGrainger, I was an associate with a firm thatis now called DLA Piper, where I focused ontrademark, copyright and advertising.

I got interested in trademarks throughmy first job at Helene Curtis, which I land-ed when I moved to Chicago fromMichigan after I finished law school at the

University of Detroit Mercy. Helene Curtissold personal care products, like SUAVEand SALON SELECTIVES hair care prod-ucts, and DEGREE deodorant. It wasbought by Unilever and is now a divisionwithin that company. This was my firstexposure to trademarks, which I havecome to really enjoy. I love being involvedin new ideas; it’s a cutting-edge practice.Trademarks are all about new ideas beingrolled out. I find it to be quite a creativeand collaborative process because it’sabout developing a new brand and makingsure that it is legally compliant.

What is your business model?Grainger is a wholesale distributor ofindustrial products. It is a business-to-busi-ness company, so our trademark portfoliois much different than that of a consumerproduct company. We have an industry-recognized catalog and award-winningwebsite featuring over 100,000 nationalbrands and private label facilities mainte-nance products including everything frommotors to bandages to light bulbs. We sellanything that keeps a business’s facility upand running. Our products are oftenreferred to as maintenance, repair andoperating products (MRO). We have 12attorneys covering all aspects of law,including human resources, commercialtransactions, real estate, IT and corpora-tions and securities. We have subsidiaries

in Canada, Mexico and most recentlyChina.

What is the history of your brand?WW Grainger, Inc. was founded in 1927.It began as a small motor company withsales being generated primarily throughmail order via postcards and an eight-pagecatalog known as The MotorBook. In1933 Grainger opened its first branch andhas since grown into a Fortune 500 corpo-ration selling a multitude of productsmainly through our 3,000-plus page cata-log, 426 branches and industry-leadingwebsite. As an industrial products distrib-utor, we don’t have too many licensees.

Our service mark is our biggest brand.We also house a decent-sized portfolio ofprivate label brands that we protect, repre-senting approximately 22 percent of ourannual sales.

What are the strengths and weaknesses ofyour brand?Our strengths are superior productbreadth, quality and reliability, dependableservice and exceptional customer support.

One of our challenges is that since weare a business-to-business company, we arewell known to most businesses but we arenot a household name, so if we need toprove our fame, it’s within our industry.

Never looked betterWW Grainger celebrated its 80th birthday in March. Aimee Nolan, senior corporate counsel, spoke to Shahnaz Mahmud aboutthe business and its new logo, and explained the company’s brand strategy for the 21st century.

www.managingip.comINTA Daily News – Sunday, April 29 20078

INTERVIEW: AIMEE NOLAN, GRAINGER

Because it is a surname, we have to allow for certainuses

I should also say our company name isthe namesake of our founder, W.W. “Bill”Grainger. Because it is a surname, we haveto allow for certain uses. This doesn’tapply so much to trademarks, but ratherfor use on the Internet, particularly fordomain names. Grainger is a common sur-name in the U.K., so there are some non-infringing uses we must permit.

How do you maintain control of your brand?If one of our customers wants to re-sell orcarry our brands or use any content orimages from our website or catalog, we doenter into limited license arrangements. Werequire our licensees to go through a for-mal process for permission to use our con-tent or brand. We do a lot of policing withregard to brand use. We employ the use ofwatch services on a regular basis. If wefind what is deemed to be an infringement,we often pursue a license or we have theinfringing material taken down, dependingon the use.

For us, dealing with counterfeits is cur-rently not a big issue given the nature ofthe products we sell. I do think this isunique, given the conditions of the currentenvironment. Our main issues are dealingwith copyright infringement on theInternet. For example, if we find someonesetting up a website who is using our pho-tos or content, then we send out cease anddesist letters. We deal with a lot of thesetypes of infringement here in the UnitedStates and abroad. Most recently we havehad many instances in China.

What other brands do you own?We have a number of different brands. Forinstance, we own the DAYTON brand,which is used on electro-mechanical prod-ucts, such as motors and HVAC (which

stands for heating, ventilation and cooling).We also own the brand WESTWARD,which is a strong tools brand. We also ownAIR HANDLER, which is an air filter prod-uct, SPEEDAIRE, which is designed for aircompression and a lineup of cleaning sup-plies under the BALL trademark. We haveother assorted brands, but these, in additionto GRAINGER, are our biggest brands.

Do you protect any look-and-feel aspectsof your brands?Yes, we do. We protect our catalog and ourwebsite and our shipping boxes. We havetrademarked the red-and-black color com-bination of our shipping boxes. We have

also registered the design of the catalogwith the same color theme.

How many countries do you protect yourbrands in?We are registered in approximately 80countries at present. These include Canada,

Mexico, China, Japan, Vietnam, Venezuelaand the CTM countries in Europe.

Are you entering any new markets?We just entered into the Chinese marketlast fall. Although we have sourced fromAsia for many years, we recently opened amaster branch there, stocking approxi-mately 20,000 products, published aChinese-language catalog, and activated aChinese-language website. We haverecently increased our focus with respectto protecting our IP there. Having an on-the-ground presence, I feel, is very benefi-cial. But I want to emphasize that we willcontinue procuring globally sourced prod-ucts for our product offering. We oftenexpand our sourcing into other countriesand then also register our private labelbrands in those countries. By this, I meanwe look to register in countries where wecan find companies to manufacture ourproducts.

What has changed since you joined thecompany?We revamped our logo about 18 monthsago. It’s the most significant change for thebrand since I joined Grainger nine yearsago. This required a lot of effort in search-ing and filing in numerous countries. Thecompany decided it was time to update ourlook to speak more about our servicepromise to our customers. The new taglineis: “For the ones who get it done.”

Since I joined, I have witnessed aninternal evolution on the value of thebrand. I think there is much greaterunderstanding on the importance of hav-ing a strong brand. I think the companyhas undertaken a new strategic directiondue, in part, to remaining strong in acompetitive environment.

www.managingip.comINTA Daily News – Sunday, April 29 2007 9

INTERVIEW: AIMEE NOLAN, GRAINGER

HISTORY OF THE BRAND

In March this year, Grainger celebrated its 80th birthday. The com-pany was born in 1927, when William (Bill) Grainger launched awholesale electric motor sales and distribution business in Chicago.He wanted to give customers the opportunity to have access to aconsistent supply of electric motors. Back then, sales were generat-ed mostly through mail order via postcards and through a catalogof goods. Grainger created “The MotorBook,” which serves as thefoundation for the company’s catalog found today. The MotorBookwas a mere eight pages at the time.

To boost customer service, Grainger started opening branches in other parts of the country –the first in Philadelphia, Pennsylvania, in 1933. A year later, three more were added. Threeyears later, Grainger had 15 branches. By 1952, Grainger was celebrating its 25th anniversarywith 46 branches and 54 territory sales reps, and The MotorBook had 104 pages. In 1967,Grainger went public and, by 1972, it had expanded to 123 branches in 40 states with 218 terri-tory sales reps.

The company jumped on to the technology bandwagon early. In 1976, it became the first in theindustry to implement optical character recognition equipment. In the 1980s it installed anational satellite-based digital communication network and, in 1991, introduced the first inclu-sive electronic maintenance, repair and operations catalog on CD-ROM. In 1995 it launched itsfirst corporate website and began taking orders online in 1996.

Grainger’s product line has now expanded to more than 800,000 products and repair parts.Today, Grainger has 425 branches in the United States and nearly 600 in North America andChina serving 1.8 million businesses and institutions. The company has over 17,000 employeesand it claims to serve customers more than 115,000 times every day. Grainger, based in LakeForest, Illinois, is a Fortune 500 company with 2006 sales of $5.9 billion.

We have trademarkedthe red-and-blackcolor combination ofour shipping boxes

Adler Planetarium &Astronomy MuseumThe Adler was the first planetariumin the western hemisphere when itopened in 1930. You can see histori-cal astronomy artifacts, learn aboutthe universe and sky, and visit theworld’s first StarRider Theater,which is now showing Black Holes:The Other Side of Infinity. Hours: 9:30 a.m. – 4:30 p.m. Mon. – Fri.; 9:00a.m. – 4:30 p.m. Sat. & Sun. Admission plusone show: $16 adults; $14 children (4-17).Extra shows $5 each.1300 S. Lake Shore Dr., Chicago, IL 60605Tel.: (312) 922-STARwww.adlerplanetarium.org

Art Institute ofChicagoOne of the world’s greatest collec-tions of art, the Art Institute ofChicago includes works from acrossthe globe spanning 5,000 years. It isparticularly noted for itsImpressionist and Post-Impressionistcollections, with works by Monet,Renoir, Seurat and Toulouse-Lautrecand many more. Until May 12, thetemporary exhibition is Cézanne toPicasso: Ambroise Vollard, Patron ofthe Avant-Garde.Hours: Mon., Tues., Wed., Fri. 10:30 a.m. – 5:00p.m.; Thurs. 10:30 a.m. – 8:00 p.m.; Sat.- Sun.10 a.m. – 5:00 p.m. Admission: Adults $12;children 12 and up, students and seniors $7;members and children under 12 free.111 S. Michigan Ave., Chicago, IL 60603Tel.: (312) 443-3600www.artic.edu

Field MuseumMuch more than just a natural histo-ry museum, the Field boastsEgyptian artifacts, an undergroundadventure, Halls of Gems and Jades,an African experience – and a stun-ning Dinosaur Hall. If you have kidswith you at this year’s INTA AnnualMeeting, don’t miss it!Hours: Daily 9:00 a.m. – 5:00 p.m. Admission:Adults $12, students & seniors $7, children (4-11) $7.1400 S. Lake Shore Dr., Chicago, IL 60605-2496Tel: (312) 665-7600 or (312) 665-7210www.fieldmuseum.org

Hancock ObservatoryEnjoy views across four states andup to 80 miles from the top of the100-story, 1000-feet John HancockCenter. And, if you can stand it, stepoutside to the SkyWalk to find outwhy Chicago is called the WindyCity. The Observatory also featuresattractions such as the Soundscopetalking telescopes.Hours: 9:00 a.m. – 11:00 p.m. Admission:$10.25 (adults), $8 seniors and $6.50 children(5-12)John Hancock Center, 875 N. Michigan Av.,Chicago, IL 60661Tel.: (312) 751-3681www.hancock-observatory.com

Lincoln Park ZooVisit the Lincoln Park Zoo to see polarbears, reptiles, apes, sea lions, ante-lope, zebra, flamingo and much more.One of the latest arrivals is a Sichuantakin born in March – the zoo’s fourth

takin (a herd animal native to themountain forests of China). Hours: 9:00 a.m. – 6:00 p.m. (grounds) and10:00 a.m. – 5:00 p.m. (buildings). Admission:Free.2200 N. Cannon Dr., Chicago, IL 60614Tel.: (312) 742 2000www.lpzoo.org

Magnificent MileRecently listed (by SWISS magazine)as one of the 10 great avenues ofthe world, the Magnificent Mile –part of North Michigan Avenue – ishome to stunning architecture, morethan 450 stores, 52 hotels, muse-ums, parks and jazz/blues clubs. Seethe tulips this spring, and takeadvantage of special offers at manyhotels, restaurants and shops onTulip Days. N. Michigan Avenuewww.themagnificentmile.com

Museum of Scienceand IndustryPopular exhibits at the Museum ofScience and Industry include babychicks, the Pioneer Zephyr train, afairy castle and a U-505 submarine.The 72-foot diameter dome of theOMNIMAX theater has a screenmade of perforated aluminum andsix audio channels delivering 20,000watts of power. Current films are TheHuman Body and Hurricane on theBayou. The BODY WORLDS 2 exhibi-tion features 20 new whole-bodyplastinates and 200 human speci-mens. But hurry: it finishes today.

Hours: 9:30 a.m. – 4:00 p.m. Mon. to Sat. and11:00 a.m. – 4:00 p.m. Sun. Admission: $11adults, $7 children (3-11), $9.50 (senior).Special exhibitions and OMNIMAX extra.57th Street and Lake Shore Drive, Chicago, IL60637-2093Tel.: (773) 684-1414; www.msichicago.org

Navy PierChicago’s most popular attraction,Navy Pier features rides and attrac-tions, a Ferris wheel, boat cruises onLake Michigan, an IMAX theater,miniature golf course and museumsincluding the Chicago Children’sMuseum. There are also restaurants,bars and shops. Hours: 10:00 a.m. – 8:00 p.m. Mon. – Thur.and 10:00 a.m. – 10:00 p.m. Sat. – Sun.Admission: Free, but some attractions charge600 East Grand Avenue, Chicago, IL 60611Tel.: (312) 595-PIER or (800) 595-PIERwww.navypier.com

Shedd AquariumThere is much more than just fish atthe world-famous Shedd Aquarium: anew special lizards exhibit featuresthe Komodo King (the world’s largestlizard), crocodile monitors and Tokaygeckos. The animals are organized inexhibits including Amazon Rising,Caribbean Reef, Waters of the Worldand Wild Reef (where you can con-front sharks face-to-face). Hours: 9:00 a.m. – 5:00 p.m. weekdays and9:00 a.m. – 6:00 p.m. weekends. Admission:$23 (adults) and $16 (seniors and childrenaged 3-11) or $27.50/$20.50 including the new4-D Special FX Theater.1200 S. Lake Shore Drive, Chicago, IL 60605Tel.: (312) 939-2438www.sheddaquarium.org

www.managingip.comINTA Daily News – Sunday, April 29 200710

CITY GUIDE: SIGHTS

Unmissable sights in Chicago

Chicago CityPass The most cost-effective way to visit five of Chicago’s top attractions, the Chicago CityPass costs $49.50 ($39

for children aged 4-11). It gives admission to the Shedd Aquarium, Hancock Observatory, Field Museum, Adler Planetarium and Astronomy

Museum and Museum of Science and Industry. The CityPass lasts for nine days and can be bought online at www.citypass.com.

www.managingip.comINTA Daily News – Sunday, April 29 2007 11

INTA DAILY NEWS

Times change – brand remains

since 1922Sojuzpatent offers the full range of services in all aspects of Intellectual Property

legal protection in Russia and abroad.13, Bldg. 5 Myasnitskaya Str., 101000 Moscow, Russia.Tel. +7 (495) 221-88-80/81 Fax. +7 (495) 221-88-85/86

www.sojuzpatent.com info@sojuzpatent.com

www.managingip.comINTA Daily News – Sunday, April 29 200712

INTA DAILY NEWS

Providing pragmatic and global solutions since 1978

Our Intellectual Property service includes:

• Trademarks, designs and patents• Opposition and cancellation proceedings• Intellectual property rights protection• Arranging customs seizures and enforcement

Contacts

Angus ForsythTel: (852) 2533 2543 Email: angusforsyth.office@sw-hk.com

Lai LamTel: (852) 2533 2545 Email: lailam.office@sw-hk.com

Head Office: 4/F & 5/F, Central Tower, No.28 Queen’s RoadCentral, Hong Kong

China Office: Suite 1704, Citic Plaza, 233 Tian He N. Road,Guangzhou 510613, China

www.sw-hk.com

DE SOLA PATE & BROWNAttorneys & Counselors

Caracas, Venezuela

Intellectual property attorneys specializing in trademarks, patents,copyrights, foreign investment, technology licensing, franchising,

trademark litigation and unfair competition.

Contact:Irene De Sola (irene@desolapate.com) and/orRichard N. Brown (rbrown@desolapate.com)

www.desolapate.comdplaw@desolapate.comTel. 58-212-7939898Fax. 58-212-7939403

De Sola Pate & Brown Attorneys & CounselorsTorre Domus, 16th FloorAv. Abraham LincolnSabana GrandeCaracas, Venezuela

Est. 1944 “Global Experience

brought to Venezuela”

PATENTS TRADEMARKS ECUADOR & LATIN AMERICAReliable services for a fair fee

BERMEO & BERMEO LAW FIRMTraditional Agents established in 1948

Email: bblaw@uio.satnet.net bblaw@andinanet.netweb: www.bermeolaw.com

World Trade Center Bldg. Tower B, 12th floor, P.O. BOX 17-12-881, Quito, EcuadorTel. 593 2 2545871 Fax: 593 2 2564620 and 2239333

QUESTION: Why did you decide to work in trademarks?

www.managingip.comINTA Daily News – Sunday, April 29 2007 13

VOX POP: YOUR VIEWS

VVOOXXPOP

Trademark law is not a very popu-lar practice in Manila and I want-ed to be involved in a new area oflaw. It has become increasinglypopular over the years, however,and today there are moreFilipinos who attend the INTAAnnual Meeting than ever before.

Benjamin de Leon, Romulo Mabanta BuenaventuraSayoc & De Los Angeles, Philippines

When I passed the solicitor’s exam,I had the option of either goinginto income tax or trademarks,and I decided to choose the roadless traveled. I had been tellingpeople for years that intellectualproperty would be the next bigfield and it has happened.

Tehemtan Daruwalla, Jehangir Gulabbhai & Bilimoria& Daruwalla, India

My partner used to work in trade-mark law. He’s the one who lovedmarks, but now that I know aboutit, I love the subject as well. Myfirst thought when my partnersuggested that we go into trade-mark law was “ok, let’s do it!” andI haven’t regretted it.

Giovanni Rosales, Bendek & Asociados, El Salvador

All elements of intellectual prop-erty law in general are attractiveto me because it’s essential tohave special protection for non-tangible rights. Trademarks areparticularly fascinating becausethere’s a wonderful linguistic ele-ment involved with the practice.

Helen Papaconstantinou, Dr. Helen Papaconstantinou& Associates, Greece

As a former engineer I amextremely curious about thingsand as I became more involved inthe technical aspects of products,I realized that all these productshad names. So I moved from thetechnical side to asking “whatmakes this product good?”

Jace Holman, Jacobson Holman, United States

This seemed like the most inter-esting field of law to me. In trade-mark law, you need to constantlyfind new solutions for clients –you need to use your brain.

Amanda Lai, Viering, Jentschura & Partner, Taiwan

I chose to work in trademarksbecause it’s the frontier betweenlaw, marketing and creativity. Iwas always interested in the fieldand I like that it is so internation-al in scope.

Martine Bloch-Weill, Cabinet Regimbeau, France

I saw there was a lot of counter-feiting in the country and I thoughtI might be able to contribute to thefight against this problem. I’vebeen working in trademarks for 10years now and, although it hasbeen challenging, the governmenthas been encouraging.

Olayinka Delano, Delano & Delano, Nigeria

Intangible property is very impor-tant – if you cannot manage yourIP you cannot manage your busi-ness. It’s also a very lucrativepractice for lawyers. In today’sworld IP creates a lot of funds. It’sa materialistic world.

Manoj Kumar Singh, Singh & Associates, India

In the beginning it was chance. Iworked for an international com-pany and I felt that this wasimportant work. I liked it becauseof the new ideas, the new peopleyou meet and the opportunity fortravel.

Ibrahim Al Gawish, Dubai Global IntellectualProperty, United Arab Emirates

I was a maritime lawyer. Then Istarted getting trademark appli-cation work from American com-panies and I decided to switch.I’m really happy with the decisionI made.

Myint Lwin, U Myint Lwin Law Office, Burma

I had the traditional science andlaw background of a patent attor-ney. I went to work for a firm thatneeded someone to work in trade-marks and decided to specialize inthat. I liked the subjectivity – thattwo people can have differentopinions and neither is wrong.

Sean McManis, Shelston IP, Australia

www.managingip.comINTA Daily News – Sunday, April 29 200714

INTA DAILY NEWS

JACKSON, ETTI & EDUBarristers & Solicitors, Patent & Trademark Agents

Lagos office: RCO Court, 3-5 Sinari Daranijo Street, Victoria Island Annex, Lagos, NigeriaTel: +2341 4626841; +234 1 774 8012 Fax: +2341 2716889

Email: jacksonettiedu@jacksonettiandedu.com

Ghana office: No. 3 Emmause,2nd close, Akosombo House, Labone, Accra, GhanaEmail: sadelaniyan@jacksonettiandedu; jee.mpac@minkahpremo.com

www.jacksonettiandedu.com

Patents Transfer of TechnologyTrademarks Trade Names Bogota – ColombiaCopyrights Health Registrations Phone: (57-1) 7442200License of Use Domain Names Fax: (57-1) 3214045Agreements Litigation www.bc.com.co

Intellectual Property

We Provide Solutions on Demands.LIU LEE & ASSOCIATES

Patent & Trademark Attorneys

The New Leader in China IP ServiceSuite 25A01, 25/F., Hanwei Plaza Telephone: (86) 10 6561 00487 Guanghua Road, Beijing 100004, China Fax: (86) 10 6561 0646http://www.iplaw.cn Email: info@liuleecn.com

O.KAYODE & COBarristers, Solicitors, Patent & Trademark Agents

1st Floor, 77 Awolowo Road S W Ikoyi, Lagos, Nigeria Tel: 234 1 461 3120; 234 1 461 3121; 234 1 2707345 Fax: 234 1 4614003

E-mail: info1@okayode.com; trademarks@okayode.com Contacts: Lara Kayode, Funke Beecroft

www.okayode.com

Win an INTA publication of your choice!Each day the INTA Daily News is giving you the chance to win anINTA publication of your choosing. Today, just answer the followingthree questions about Chicago to be entered into the prize draw.

1) What is the tallest building in Chicago?

2) What are Chicago’s two baseball teams?

3) What amusement park ride was invented in Chicago?

Send your answers, with your name and organization, by email tocontest07@inta.org by 10 p.m. tonight. One winner will be drawn from allcorrect entries received by that time.

Answers, and the winners’ names, will be published in the INTA Daily Newson Wednesday.

INTA Daily News

QUIZThe Whois Subcommittee of INTA’s InternetCommittee invites you to attend a special session:

Whois Briefing

Update on ICANN’s Whois initiatives, their negativeimpact on brand owners and how to make your voiceheard.

This briefing will be conducted twice for your conven-ience:

Tuesday, May 1:

10:00 a.m. – 11:00 a.m. – Room E3522:00 p.m. – 3:00 p.m. – Room E351

The Whois domain name database presently containseach registrant’s identification and contact informationas well as contact information for each domainname’s administrative and technical contacts. Thisinformation is readily available to any Internet user andis routinely relied upon for enforcing intellectual prop-erty rights, verifying important business information,and identifying the origin of illegitimate activities, suchas phishing schemes and spam.

Whois information is on the verge of being strippeddown to little more than a bare technical contactwho will have no legally enforceable obligation topass on correspondence to the registrant, and whois unlikely to be of assistance in effectively protectingand enforcing rights involving online matters. Lastyear, the Whois Task Force of ICANN (the bodycharged with setting Internet policy) unfortunatelybegan taking steps toward significantly limiting theinformation available through the Whois domainname database.

At these upcoming briefing sessions during the INTAAnnual Meeting, INTA’s Whois Subcommittee will pro-vide an update on this process and will explain howbrand owners can make a difference. We hope thatyou can attend!

INTA Anticounterfeiting Exhibit

Get Answers To Your Anticounterfeiting Questions atthe INTA Anticounterfeiting Booth – Exhibition HallBooth 920

Today’s Speakers

12:00 p.m. Richard Heath – VP Legal Global Anti-Counterfeiting Counsel – Unilever PLC(United Kingdom)

12:30 p.m. Shravan K. Bansal – Advocate – UnitedOverseas Trademark Company (India)

1:00 p.m. Leslie Skinner – Managing Counsel,Trademarks and Brands –IntelCorporation (United States)

1:30 p.m. Katie Wilson – Communications Manager,Anticounterfeiting & Piracy – U.S.Chamber of Commerce (United States)

2:00 p.m. Samer A. Pharaon – Executive Director –Abu-Ghazaleh Intellectual Property(Middle East)

Dr. Natalia Gulyaeva – Consultant, Headof IP Practice – Lovells (Russia)

2:30 p.m. Mr. Shuhua Zhang – Partner – Wan HuiDa IP Agency (China)

Andris Zarins – Royal Canadian MountedPolice (Canada)

3:00 p.m. Chehrazade Chemcham – Attorney –Fulbright & Jaworski LLP (United States)

Marius Schneider – Attorney – Eeman &Partners Association d’Avocats (Belgium)

3:30 p.m. Shravan K. Bansal – Advocate – UnitedOverseas Trademark Company (India)

INTA Daily News Announcements

Trademark mediators received acrash course in dealing withanger and emotion, power imbal-ances, negotiation impasses, andethics concerns at Saturday’smediation training session.

“However experienced theyare, these four topics are oftenthe most difficult for mediatorsto deal with,” said DeniseMadigan, one of the TechnologyMediation Services specialistsleading the session.

“Most courses deal with themechanics of the process, but

these are skills that need to bedeveloped. Many lawyers learnta ‘just the facts’ approach todealing with disputes at lawschool, but addressing some ofthe emotions involved is oftenkey to reaching a settlement.”

Fifty trademark lawyers – allmembers of INTA’s 150-strongPanel of Neutrals – assumed theroles of mediators and partici-pants in a mock mediation dur-ing the session to help them prac-tice the skills that will allow themto encourage the parties to

resolve some of the tricky issuesthat can stymie attempts toresolve trademark disputes.

“When it comes to mediation,the challenge for practitionerswho are trademark specialists is totry not to be so evaluative thatyou take over the process. There isa danger of seeing the dispute inlegal terms, not in businessterms,” said Sandra Sellers, anoth-er of the session’s TechnologyMediation Services trainers. “Butmediation is the future, especiallywhen the courts are so jammedand costly and businesses are justlooking for a resolution that willallow them to proceed.”

www.managingip.comINTA Daily News – Sunday, April 29 2007 15

When “just the facts” is not enoughINTA DAILY NEWS

Founded in 1993, Liu, Shen & Associates is a lawfirm and also a patent and trademark agencyspecializing in intellectual property and relatedlaws. The firm’s practice focuses on filing andprosecuting patent applications, registeringtrademarks, legal counseling on all phases ofintellectual property, and enforcement ofintellectual property including litigation.

Liu, Shen & Associates now has a staff numberingaround 270, which includes 28 attorneys at lawand 170 patent attorneys and patent engineerswith expertise that covers almost all technicalfields.

Serving thousands of clients including numerousmultinational corporations and world famousbrand owners, Liu, Shen & Associates has grown to be one of the largestlaw firms and a leading intellectual property firm in China. The firm’swell-received reputation around the world has been built on years ofgreat efforts to provide high quality services by the firm’s hundreds ofexperienced professionals and well trained staff, and the firm willcontinue its commitment to excellence in the years to come.

Hanhai Plaza (1+1 Plaza), 10th Floor, 10 Caihefang Road,

Haidian District, Beijing 100080, China

Tel: +86 10 6268 1616 Fax: +86 10 6268 1818

Email: mail@liu-shen.com Website: www.liu-shen.com

LIULIU,, SHEN & SHEN & ASSOASSOCIACIATESTES

LIULIU,, SHEN & SHEN & ASSOASSOCIACIATESTES

Venable hosted a receptionat the Park Grill, where

guests enjoyed views ofMillennium Park, and AnishKapoor’s Cloud Gate sculptureshimmered in the early eveningsunlight.

Rouse & Co Internationalcelebrated 10 years in

Indonesia, the UAE and Vietnamwith mimosas and internationalcuisine at the Hammer Room inthe Hard Rock Hotel.

Latin American IP lawyersassociation ASIPI wel-

comed guests from around theworld to the Hyatt Regency’sCrystal Ballroom for a cocktailreception yesterday evening.

Guests were launched intoKnobbe Martens Olson &

Bear’s annual party at the AdlerPlanetarium, which began witha tour documenting the Gemini12 mission.

Guests at Marks & Clerk’sreception at The Rookery

enjoyed views of one of themost famous staircases in theUnited States, redesigned byFrank Lloyd Wright, as well asdrinks, canapés and a four-pieceband.

Banner & Witcoff offeredguests guided tours of the

Cézanne to Picasso exhibition,at a reception at The ArtInstitute of Chicago.

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Last night’s receptions

Today’s Schedule: Sunday, April 29, 2007All Events take place at the McCormick Place Lakeside Center (MPLC) unless otherwise indicated.

8:00 am – 5:00 pm Student Course on International Trademark Law Hyatt Regency Chicago, Regency A (Gold Level West Tower)

8:00 am – 12:00 pm Long Range Planning Committee E272a8:30 am – 4:30 pm TOURS Transportation from MPLC9:30 am – 7:30 pm REGISTRATION Level 2 – Lobby9:30 am – 7:30 pm HOSPITALITY Level 3 – Hall D110:00 am – 12:00 pm COMMITTEE MEETINGS Level 2

Annual Meeting 2007 Project Team (Programs Committee) E259Membership Services Committee (MSC) E271 (Breakout: E270, E265)PDA Executive Council (Chairs & Vice Chairs only) E255Programs Committee E256

11:30 am – 1:30 pm TRADEMARK ADMINISTRATORS BRUNCH Level 4 – E451b12:00 pm – 4:00 pm EXHIBITION HALL Level 3 – Hall D112:15 pm – 2:15 pm LUNCHEON TABLE TOPICS Level 2 – E25312:15 pm – 2:15 pm COMMITTEE MEETINGS Level 2

ACEC: North America Subcommittee E265Adjunct Faculty Special Interest Group E259DWKM: East Asia & Pacific Subcommittee E260DWKM: Eastern Europe Subcommittee E255DWKM: Middle East, Africa & South Asia Subcommittee E272bEIC: Fraudulent Trademark Filing Subcommittee E263Enforcement: Discovery Practices & Procedures Subcommittee E261Information Resources Committee (IRC) E271INTA Bulletin Committee E270INTA International Online ADR Competition 2006-2007 Project Team E272cNominating Committee E272dPrograms Standards & Training Subcommittee (Programs Committee) E262Roundtables Subcommittee (Programs Committee) E267TOPC: Classification Subcommittee E266TOPC: TMO Relations & Benchmarking Subcommittee E264

2:30 pm – 4:30 pm COMMITTEE MEETINGS Level 2ACEC: Latin America & Caribbean Subcommittee E271Annual Meeting 2008 Project Team E272cChina Bulletin Editorial Board E260DWKM: European Union Subcommittee E266DWKM: Latin America & Caribbean Subcommittee E261DWKM: North America Subcommittee E256EIC: Security Interests Subcommittee E262EIC: Trademark Clearance Subcommittee E265Enforcement: Legal Certainty of Disclaimers Subcommittee E263Enforcement: Opposition & Cancellation Standards Subcommittee E267Enforcement: Proof of Confusion Subcommittee E264INTA/OHIM Conference 2007 Project Team E270Trademark Administrators Forum – Germany 2007 Project Team E255

3:00 pm – 4:45 pm INTA ANNUAL MEETING ORIENTATION AND COCKTAIL RECEPTION Level 4 – E450b5:00 pm – 6:30 pm OPENING CEREMONIES AND KEYNOTE ADDRESS Level 2 – Arie Crown Theater6:45 pm – 8:15 pm WELCOME RECEPTION “RED HOT CHICAGO” Level 3 – Hall D2