India’s Cabinet Committee on Economic Affairs (CCEA) has voted to continue with a plan to modernize the country’s IP offices. The move will help India’s Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) to adapt to tighter timelines under the Madrid Protocol and to cope with an increasing number of trade-mark applications.

According to the New Indian Express, the government has committed to spending an amount of 258 crore (INR 2.58 billion/USD 47.78 million/EU 35.75 million) through March 2017. The remainder of the 309.6 crore commitment will be used as part of the government’s 13th five-year plan.

A government release on the CCEA’s de-cision said that between now and March 2017 “the focus would be on enhancement of human resources, upgradation of IT and database, construction of buildings, im-provement in library facilities and sensitisa-tion and awareness creation on Intellectual Property Right matters.”

During a delegation visit to India in February, INTA acknowledged the many improvements already made by the CGPDTM in recent years. These include increased electronic

filing capabilities, with more than 30 forms now available online; increased transparency in the status of cases, such as the intro-duction of Quick Response codes to facilitate applica-tions; and the ability to search the Registry by owner.

The government’s announcement will ensure that India’s trademark offices are able to continue these trends and to keep up with the demands of an increasingly global trade-mark community.

In a separate announcement, India’s Minis-try of Commerce & Industry, Department of Industrial Policy and Promotion, announced on August 1 that it has increased trademark filing and examination fees.

The fee for filing an application to register a trademark for a specification of goods or services included in one class has been increased from Rs. 3,500 to Rs. 4,000 and the fee to expedite examination is increased to Rs. 20,000.

INTABulletinThe Voice of the International Trademark Association

AssociationNewsAssociationNews

August 15, 2014 Vol. 69 No. 15

In This Issue

Law&PracticeAustralia 9Belgium 10European Union 11France 12United States 13, 14, 15Yemen 15

FeatureIncontestability of Marks in the 7 United States and Canada: A Comparison of Perspectives and Purposes

AssociationNewsRecent Roundtables 2

Rebranding: How to Solve a 5 Reputational Crisis

Volunteer Spotlight Ginabeth Hutchinson 6

See “Uniform” on page 3

Indian Government Commits to IP Improvements Six Months of the New gTLD Uniform Rapid Suspension System: What Brand Owners Need to Know

The Uniform Rapid Suspension System (URS) is an abbreviated dispute-resolution procedure for clear cases of cybersquatting, created in conjunction with the new generic Top-Level Domain (gTLD) program. The URS has a “clear and convincing” standard of proof—higher than in UDRP (Uniform Dispute Resolution Procedure) cases—and it permits only sus-pension, not transfer, of an infringing domain name. But the procedure is significantly less expensive and time-consuming than the UDRP. This article summarizes the current state of the URS, which has been in operation for just over six months.

A total of 92 URS cases have been filed to date, 88 with the National Arbitration Forum in the United States (NAF) and four with the Asian Domain Name Dispute Resolution Centre (ADNDRC) in Hong Kong. Suspensions have been issued in 71 cases (including one affirmed on appeal, as noted below), versus nine instances where relief was denied. As of this writing, 12 cases remain pending. Some of the more illustrative holdings, as well as key lessons learned from these early decisions, are discussed below.

Wins for Trademark HoldersThe first URS case was a win for Facebook at the NAF. Facebook Inc. v. Radoslav, Claim No. FA1308001515825 (NAF Sep. 27, 2013) (<facebok.pw>). In an analysis that mirrored the familiar UDRP elements, panelist Darryl Wilson ignored the .pw top-level extension in determining confusing similarity, while also holding that the missing “o” was insufficient to mitigate confusion. The respondent was seen as having no rights or legitimate inter-ests in the domain name, as Facebook had

INTA Internet Committee— Domain Disputes Subcommittee

Controller General of Patents, Designs and Trade Marks, Chaitanya Prasad

August 15, 2014 Vol. 69 No. 152

AssociationNews

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.© 2014 International Trademark Association

INTA Bulletin CommitteeTo contact the INTA Bulletin Committee, email bulletin@inta.org.

ChairBarbara Sullivan, Henry Hughes

Vice Chair Liisa Thomas, Winston & Strawn LLP

Co-Chairs, Features SubcommitteeElizabeth Buckingham, Dorsey & Whitney

Peter McAleese, AKRAN Intellectual Property Srl

Co-Chairs, Association News Subcommittee Barbara Barron Kelly, Corsearch

Katherine Dimock, Gowling, Lafleur, Henderson

Co-Chairs, Law & Practice: Asia-Pacific SubcommitteeChetan Chadha, Chadha & Chadha, An Intellectual Property Law Firm

Joseph Yang, Lee and Li, Attorneys at Law

Co-Chairs, Law & Practice: Europe & Central Asia Subcommittee Mary Bleahene, FRKelly

Thomas Mudd, Zeiner & Zeiner

Co-Chairs, Law & Practice: Latin America & the Caribbean SubcommitteeMartín Chajchir, Marval, O’Farrell & Mairal

Carlos Corrales-Azuola, Corrales Core IP

Chair, Law & Practice: Middle East & Africa SubcommitteeGhaida Ala’Eddein, Saba & Co. IP

Co-Chairs, Law & Practice: United States & Canada SubcommitteeRobert Felber, Waller, Lansden, Dortch & Davis

Catherine Hoffman, Mayback & Hoffman

INTA Bulletin Staff Chief Executive Officer Etienne Sanz de Acedo

Director, Marketing and Communications James F. Bush

Managing Editor, News & Policy Eileen McDermott

Senior Periodicals EditorJoel L. Bromberg

DesignerEric Mehlenbeck

INTA Officers & CounselPresident Mei-lan Stark, Fox Entertainment Group

President Elect J. Scott Evans, Adobe Systems Incorporated

Vice President Gabrielle Olsson Skalin, Inter IKEA Holding Services S.A.

Vice President Lucy Nichols, The Center for Responsible Enterprise and Trade (CREATe)

Treasurer Joseph Ferretti, PepsiCo, Inc./ Frito-Lay, Inc.

Secretary Ronald Van Tuijl, JT International S.A.

Counsel David Fleming, Brinks Gilson & Lione

Recent RoundtablesSeoul, KoreaOn July 18, Y.P. Lee, Mock & Partners host-ed 48 attendees at their offices in Seoul to discuss the standards for establishing acquired distinctiveness (secondary meaning) of a mark. The speakers first discussed the standards applied under the prior Trademark Act in view of relevant court and appeal board decisions, and then suggested ways those standards could be appropriately applied under the revised Trademark Act. Hyung Won Lee, Deputy Director, Trademark Examina-tion Policy Division of the Korean Intellectual Property Office (KIPO), explained the KIPO’s plan for applying the revised standards. Based on the case reviews and the KIPO’s plan, the attendees then debated how the standards could be appropriately applied to different types of marks.

3

AssociationNewsSix Months of the New gTLD Uniform Rapid Suspension System Continued from page 1

not authorized the use of its mark. The pan-elist found clear and convincing evidence of bad faith, based on the fact that the landing page contained “sponsored links.” Respon-dent also had a “pattern of illegitimate domain name registrations” (chiefly typos) involving others’ trademarks.

IBM’s win in International Business Ma-chines Corp. v. Denis Antipov (Claim No. FA1402001542313 (NAF Feb. 12, 2014) (<ibm.guru>, <ibm.ventures>)) appeared to signal an early trend favoring complainants, despite the heightened “clear and convinc-ing” standard required in URS cases. In finding for IBM, panelist Wilson rejected re-spondent’s unsubstantiated fair use defense that the domain name was intended to direct users to a “news and/or community sup-port” website. A similar analysis was used in Banco Bilbao Vizcaya Argentaria, S.A. v. aitor montenegro (Claim No. FA1402001544385 (NAF Feb. 25, 2014) (<bbva.guru>)), where the panelist did not accept the respondent’s

defense that he was developing an unrelated video game with the name BBVA. These early decisions suggested that mere naked claims of good faith without concrete evidence on the part of respondents might not be suffi-cient to avoid suspension.

Dana Limited v. farris nawas et al. (Claim No. FA1402001545160 (NAF Mar. 13, 2014) (<dana.holdings>)) was noteworthy in that panelist Wilson suspended the domain name despite the fact that “Dana” is a common first name. Unlike in Facebook, the panelist assigned a certain degree of importance to the “holdings” TLD, which, taken together with the word “dana,” made confusion likely. The notion that the term “after the dot” has significance in a likelihood-of-confusion and bad-faith analysis is likely to continue to arise in the new gTLD context (both for URS and for UDRP proceedings; see, e.g., Canyon Bicycles GmbH v. Domains By Proxy, LLC /Rob van Eck, Case No. D2014-0206 (WIPO Mar. 14, 2014) (<canyon.bike>)).

At the ADNDRC, Alibaba Group Holding Limited filed three out of the four actions, with wins in two and one case still pending. In one of the Alibaba cases, the panel suspended the domain names at issue based on the respon-dent’s constructive notice of trademark rights in China for the words “alibaba” and “taobao” and the fact that the respondent’s offer to sell each of the names for U.S. $500 was well in excess of his out-of-pocket expenses. See Alibaba Group Holding Limited v. Tian Shuping, Case No. HKS-1400002 (ADNDRC May 21, 2014) (<alipay.technology>, <taobao.technolo-gy>, <alibaba.technology>).

Wins for Domain Name RegistrantsSince the early wins discussed above, brand owners have seen the tide turn somewhat in a series of recent URS losses. In Virgin Enterprises Limited v. lawrence fain (Claim

Emerging Internet Issues That Impact Your TrademarksJoin leading experts from technology companies, brand consultants, domain name registrars and online enforce-ment companies at INTA’s Internet, Innovation and ICANN: The Evolving Landscape of the Net conference to learn how emerging Internet issues impact your trademarks!

For more information and to register please visit:www.inta.org/2014Internet

See “Uniform” on page 4

August 15, 2014 Vol. 69 No. 154

AssociationNewsSix Months of the New gTLD Uniform Rapid Suspension System Continued from page 3

No. FA1402001545807 (NAF Mar. 20, 2014) (<branson.guru>)), panelist Douglas Isenberg held that—while trademark rights in the word BRANSON were demonstrated—complainant Virgin failed to meet the higher burden of proof for the remaining factors, given the potential fair uses for the term BRANSON. The domain name pointed to a landing page displaying ad-vertisements, but that did not, in and of itself, constitute “clear and convincing evidence” of bad faith according to the panelist, as the ads themselves were not directly related to Virgin or Richard Branson.

Similarly, in Heartland Payment Systems Inc. v. Whois Privacy Protection Service, Inc. & Kyle Ramsey (Claim No. FA1403001547394 (NAF Mar. 27, 2014) (<heartland.holdings>)) and Heartland Payment Systems Inc. v. Redwood Capital (Claim No. FA1403001547419 (NAF Mar. 27, 2014) (<heartland.ventures>)) (the “Heartland Cases”), panelist Isenberg cited potential fair use concerns with the word “heartland,” notwithstanding each respondent’s default. The panelist noted that “heartland” was a “dictionary word” that could also refer to a “central area of land.” That fact, coupled with the URS’s higher burden of proof, warranted denial. Similar logic was applied in Banco Bilbao Vizcaya Argentaria, S.A. v. Gandi-york SL et al. (Claim No. FA1403001548656 (NAF Mar. 28, 2014) (<bbva.land>)), where the respondent’s claim that the domain name was intended to facilitate the provision of agronom-ical engineering services to the towns of Bell-reguart, Beniarjo, Villalonga and Almoines was deemed sufficient to avoid suspension, despite the seeming inconsistency with the bbva.guru decision (discussed above).

Proof of trademark rights was at issue in Aeropostale Procurement Co., Inc. v. Michael Kinsey (Claim No. FA1403001550933 (NAF Apr. 10, 2014) (<aeropostale.uno>)) and Wolfram Research, Inc. v. Andrew Davis et al. (Claim No. FA1404001553139 (NAF Apr. 12, 2014) (<mathematica.guru>, <wolfram.ceo>)). Panelist Alan Limbury refused to find that the complainant had demonstrated its trademark rights in either case by clear and convincing evidence, as the trademark registrations did not match the complaining party: Aeropostale was brought by Aeropostale Procurement Com-pany, Inc., but the trademarks were registered to Aeropostale West, Inc.; Wolfram involved Wolfram Research, Inc., but the trademarks

were registered to Wolfram Group, LLC. Rights/legitimate interests and bad faith were not discussed in either case, as the failure to demonstrate trademark rights rendered these items moot.

AppealsStuart Weitzman IP, LLC v. yoyo.email et al. (Claim No. FA1404001554808 (NAF May 10, 2014) (<stuartweitzman.email>)) was the first—and, as of this writing, is the only—URS decision to be appealed. The three-member URS appellate panel upheld the initial findings that New York–based complainant Stuart Weitzman IP, LLC had established enforceable trademark rights in the name STUART WEITZ-MAN (covering shoes, handbags and other fashion items), and that the stuartweitzman.email domain name was confusingly similar to the trademark.

But the appellate panel agreed with the initial finding that the respondent intended to use the domain name in connection with a bona fide offering of a legitimate service, and that the registration thus was made in good faith and was a fair use of the domain name.

Because the appellate panel found that the respondent had a legitimate interest in the domain name, the complainant had not met its burden of showing clear and convincing evidence of no rights or legitimate interest in the name or registration and use in bad faith. Consequently, the panel found that the

complainant had failed to carry its burden of presenting clear and convincing evidence of trademark abuse. The panel therefore affirmed the initial denial of the complaint, and the respondent was allowed to keep the domain name (pending possible further appeal via a lawsuit or a UDRP proceeding).

TakeawaysBrand owners should pay particular attention to the holdings in Virgin, Aeropostale, Wolfram, bbva.land and the Heartland Cases, as a com-mon theme can be found in each: the nature of the URS—intended as an efficient, low-cost dispute mechanism for obvious cases of cybersquatting—may mean that it is not always the best option for brand owners. Where the trademark at issue is weak or arbitrary (i.e., it also serves as a generic term), brand owners should pursue a URS action only where the actual content on the subject website makes it apparent that the registrant intends to confuse users. Otherwise, certain URS panels appear to be reluctant to suspend domain names in the face of plausible good faith, even if uncor-roborated by concrete evidence. This is exacer-bated by the constraints of the URS complaint forms, which make it difficult for complainants to provide more than a brief, cursory explana-tion as to why they believe the domain name is infringing.

Thus, the URS is shaping up to be a useful complement to the UDRP, as opposed to a complete alternative, most appropriate when a brand owner wishes to promptly suspend an egregious website (with blatant infringement, phishing or other abuse) yet does not wish to assume the added cost necessary to acquire the domain name. Brand owners with partic-ularly famous or fanciful marks may be able to take advantage of the URS more easily, yet they should still be mindful that the term after the dot will likely be considered in a potential fair use assessment.

These are still early days for the URS, with some of the initial panels appearing to apply varying degrees of the “clear and convincing” standard of proof. It will be interesting to see whether a clearer pattern begins to form as more brand owners use the mechanism and a greater body of case law emerges. Readers are encouraged to continue to check with the NAF and the ADNDRC for updates. ■

Need to know more about the protecting your brand in the new gTLD landscape?INTA’s upcoming conference on “Inter-net, Innovation and ICANN: The Evolving Landscape of the Net,” in San Francisco on September 18–19, features a session on “New gTLDs, New Issues and New Remedies.” Learn from moderator Russell Pangborn (Marksmen, USA) and speakers Andrew Abrams (Google, USA), Brian Beck-ham (World Intellectual Property Organiza-tion, Switzerland) and David H. Bernstein (Debevoise & Plimpton LLP, USA).

5

AssociationNewsRebranding: How to Solve a Reputational Crisis

Steer your career through the evolving world of global trademark protection!Attend the 2014 Trademark Administrators and Practitioners Meeting and arm yourself with the latest practice and industry tips in managing global trademark portfolios. The program has been revamped and includes everything you’ll need to protect the brand owners who rely on you.

OCTOBER 12–15 | ARLINGTON, VA

TRADEMARK ADMINISTRATORS & PRACTIT IONERS MEETING

For more information and to register please visit:www.inta.org/2014TMAP

During the 2014 Annual Meeting in Hong Kong, one educational session highlighted an issue that many companies will have to con-sider—whether to rebrand. “To Rebrand or Not to Rebrand: Handling a Reputational Crisis,” a summary of which is now available on video, focused on topics such as when damage made to a brand is so severe it requires rebranding, when a famous brand can be salvaged and how best to handle these situations.

Many well-known companies either have chosen or were reluctantly forced to rebrand. The end result can be a boon for business and an opportunity to gain market share. Indeed, the business world is awash in examples of successful rebranding campaigns in which companies chose to rebrand as a way of rees-tablishing themselves in the market and in the eyes of consumers, or, as in the third example below, to gain access to a whole new market. For example:

• In 1997, Apple was veering close to bank-ruptcy. Then Steve Jobs combined elegance

and reliability in a product range that includ-ed the iMac, the iPod and the iPad. Apple’s stock price rose from US $6 to US $350 in the 15 years that followed.

• Interest in Old Spice, a 70-year-old brand, was waning. That is, until former NFL player Isaiah Mustafa said, “I’m on a horse,” in a viral ad campaign that generated tens of millions of views. Sales rose 11 percent in the 12 months that followed the launch of the campaign.

• In the United States, Pabst Blue Ribbon (PBR) is the cheap beer of choice among

college students and hipsters. These are key markets in the United States but not in Chi-na—the world’s biggest beer market—where a rebranded “Blue Ribbon 1844” sells for a whopping US $44.

In the above examples, the decision to rebrand was internal. An infamous example of an external force that compelled companies to rebrand instead was the U.S. financial crisis of September 2008, when a number of financial services and insurance companies had their reputations shattered almost overnight.

The Annual Meeting session on rebranding was moderated by Elizabeth Pearce (American International Group, USA). She was joined by Glenn A. Gundersen (Dechert LLP, USA) and Heather Steinmeyer (WellPoint, Inc., USA). Click here for a condensed version of their session, filmed in Hong Kong by INTA TV.

August 15, 2014 Vol. 69 No. 156

VolunteerSpotlight

Ginabeth Hutchison has an expansive trademark practice as the most senior trademark attorney in Alston & Bird’s office in Atlanta, Georgia, USA. “My practice concentrates on trademark portfolio man-agement, counseling clients as to the risk associated with adoption of proposed names and marks, evaluating when applications for registration—domestic and international—should be filed and advising how and when to maintain those registrations,” Hutchison says.

Hutchison views the trademark field from a global perspective, and she is well aware of the disparities one can encounter while managing a global portfolio. She believes INTA’s future areas of focus should include “an effort to increase harmony in trademark practices throughout the world.” However, while assisting her clients through the morass of international trademark requirements, Hutchison has appreciated the opportunity to practice with other trademark attorneys around the world. “I work with a variety of large portfolio clients,” she says, “and I am happy to have made the acquaintance through INTA of so many talented trademark attorneys in other countries, who can help me ensure that our clients’ trademark assets are adequately protected through registration in their jurisdictions.”

Given the nature of the trademark field, not surprisingly it has attracted a practitioner who values creativity. “Interior décor is my hobby,” says Hutchison, “and I pour over shelter magazines and books, gathering ideas for future projects.” Hutchison has been fortunate to combine her interest in creative

pursuits with her trademark practice and INTA participation. She recalls, “The INTA project I most enjoyed working on, as a member of the Annual Meeting Orientation Subcommittee of the Young Practitioners Committee, was the making of a short film to help individuals preparing to attend the INTA Annual Meeting for the first time. It was a high-energy project, and it provided so many opportunities for our subcommittee to work together that we got to know each other well and developed good working relationships.”

Hutchison’s appreciation for creativity has served her well both in her practice and in her personal life. “When I’m not working with trademarks,” Hutchison says, “I’m either enjoying my family or dabbling in the deco-rative arts. If I’m lucky I get to mix the two, traveling with my family to other countries and observing the architecture, furniture, textiles and ceramics used in the historic buildings we tour.”

Amanda K. O’Keefee2Interactive, Inc., Atlanta, Georgia, USAINTA Bulletin—Association News Subcommittee

Without proper forethought and thorough planning, a cease and desist letter can create more problems than it was ever intended to solve. See Cease and Desist Letters in INTA’s Practitioners’ Checklists series for help in plotting the best course of action. This addition to the members-only series of helpful training tools in Global Trademark Resources — by Kevin Collette, Ryan Swanson & Cleveland, PLLC, Seattle, Washington, USA — joins other checklists on key tasks and functions.

Ensure that critical considerations are not overlooked.Take advantage of this valuable resource today.

Before You Send That Cease and Desist Letter

Visit www.inta.org/ceaseanddesist

7

FeaturesIncontestability of Marks in the United States and Canada: A Comparison of Perspectives and Purposes

Trademark practitioners located in the United States and Canada, or those who work with counsel in these countries to obtain and enforce trademark rights, are likely to come across the concept of “incontestability” or the term “incontestable mark” at some point in their practice.

The intricacies of incontestable status, in-cluding how it is achieved and when it can be used to benefit a trademark owner, can prove elusive to some degree to trademark practi-tioners. Adding to the confusion is the fact that the word “incontestable” is actually somewhat of a misnomer, because an incontestable mark is not, in fact, immune from all challenges. Fur-ther, while legislation in both countries uses “incontestable” to describe certain registra-tions, the benefits afforded an incontestable mark in Canada are much more limited than those in the United States. Incontestability arises more frequently in connection with U.S. marks, as it is part of the post-registration process. By contrast, in Canada fewer practi-tioners or trademark owners are likely to have had experience claiming incontestability, as it arises only when a third party is challenging a registered mark based on the third party’s prior use of a confusing mark. As is discussed below, there is no “one size fits all” approach to incontestability. Instead, incontestability should be considered as part of an overall trademark strategy, rather than as a complete safeguard for shielding marks from successful challenges.

What are the requirements for achieving incontestability?In the United States, a trademark registration becomes incontestable after the filing of a Declaration under Section 15 of the Lanham Act, 15 U.S.C. § 1065. In order to meet the re-quirements of Section 15, the mark must have been in continuous use for at least five consec-utive years from the date of registration, and must still be currently in use in commerce. The Section 15 Declaration also requires verifi-cation that “there has been no final decision

adverse to the owner’s claim of ownership of such mark for those goods or services, or to the owner’s right to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the Patent and Trade-mark Office [USPTO] or in the courts.” Marks registered on the Supplemental Register are not eligible to achieve incontestable status; therefore, the USPTO will not accept Section 15 Declarations for these marks.

Because this time frame coincides with the deadline for filing the Declaration of Contin-ued Use under Section 8 (15 U.S.C. § 1058), which is due between the fifth and sixth years of registration, a combined Section 8&15 Declaration can be filed as long as there has been no interruption in use. Keep in mind that there is no actual “deadline” for filing a Section 15 Declaration. Instead, it can be filed within one year after the expiration of any five-year period of continuous use that has occurred following registration.

If all of the above requirements are met, the USPTO will issue a Notice of Acknowl-edgment of the Section 15 Declaration and note it on the record. A Section 15 Declara-tion can be filed only once during the life of a U.S. registration.

In Canada, a trademark registration is consid-ered incontestable five years after the date of registration pursuant to Section 18 of the Trademarks Act. By contrast with the United States, in Canada there are no statutory filing requirements.

What are the benefits of incontestable status, especially when enforcing a mark?If a Section 15 Declaration has been filed in conjunction with a U.S. registration, it can no longer be cancelled by the USPTO Trademark Trial and Appeal Board on the ground that the mark is descriptive. An incontestable registra-tion can also be used as the basis for injunc-tive relief in an infringement action before the U.S. courts. In addition, incontestability status is considered to be conclusive evidence of the following rights (subject to certain limitations):

1. The validity of the registered mark;

2. The registration of the mark;

3. The owner’s ownership of the mark; and

4. The owner’s exclusive right to use the mark with the registered goods and services.

These are valuable enforcement tools in a trademark owner’s arsenal and provide persuasive language to include in a cease and desist letter. Furthermore, the owner of a mark that may be vulnerable to cancellation based on descriptiveness may be wise to file the Sec-tion 15 Declaration sooner rather than later to secure the benefits of incontestability status.

In Canada, after the expiration of five years from the date of registration, no trademark registration can be expunged, amended or held invalid on the ground of the previous use or making known of a third party’s confusing trademark, subject to the exception discussed below. This is the sole benefit of an incontest-able registration in Canada.

Is registration necessary to claim incontestability?In the United States, registration is necessary to obtain incontestable status, and only the filing of a Section 15 Declaration provides conclusive evidence of the rights enumerated above. However, regardless of whether a Sec-tion 15 Declaration is filed, Section 14 of the Lanham Act, 15 U.S.C. § 1064, provides that a cancellation action against a registered mark may be filed only within five years from the date of registration, except for those grounds that can be brought “at any time.” These in-clude that the registered mark has become ge-neric, is functional, has been abandoned, was obtained fraudulently, and others—but not that the mark is descriptive—effectively resulting in the registrations becoming incontestable.

In Canada the concept of an incontestable mark applies only to a registered mark.

Are there defenses to incontestability, and if so, when can they be used?Section 33 of the Lanham Act, 15 U.S.C. § 1115, enumerates several defenses to incon-testability in the United States. These include fraudulent registration, abandonment, misuse of the mark to misrepresent the source of goods and services, and that the mark is func-tional. In addition, U.S. courts are split as to the weight that should be accorded an incontest-able registration when examining the strength of a mark for purposes of determining likeli-hood of confusion. Some courts have treated incontestability as an indication of strength, while others have held that it is relevant only to the validity of the registration and not as a measure on the distinctiveness continuum.

Diane M. LambillotteArent Fox LLP USA, Los Angeles, California, USA

Timothy LoSmart & Biggar/Fetherstonhaugh, Vancouver, British Columbia, Canada Both are members of the INTA Bulletin Committee Committee —Features Subcommittee

See “Marks” on page 8

August 15, 2014 Vol. 69 No. 158

FeaturesIn Canada, an incontestable registration can be challenged for prior use or making known of a third party’s confusing trademark only if the third party can prove that the registrant adopt-ed the registered mark with knowledge of the third party’s mark. As will be appreciated, prov-ing that the registrant had actual knowledge of a third party’s mark can be quite difficult, so a party challenging a registration based on prior use of a confusing trademark should try to commence an action before a registration becomes incontestable. Conversely, an owner who is seeking to enforce a registration may want to delay sending a cease and desist letter or filing a court action if the registration is close to but has not yet reached the fifth-year anniversary date of the registration.

Are there traps for the unwary in claiming incontestability?In the United States, the trademark practi-tioner not only should verify with the client that all of the statements in the Section 15 Declaration are true, but also should take care to confirm that the mark has been used continuously for five consecutive years on all

of the goods and services in the registration. If not, the Declaration cannot properly be filed for those particular goods or services.

As there are no statutory filing requirements in Canada and a registration automatically becomes incontestable five years after the reg-istration date, there are no issues surrounding achieving incontestability in Canada.

What is the biggest misconception about incontestability?As it affects U.S. practice, the biggest miscon-ception is that incontestability prevents all challenges to a mark. As explained above, the protections afforded an incontestable mark are nevertheless a valuable enforcement tool for U.S. trademark owners. It is also important to remember that an incontestable mark may still be attacked on grounds such as abandonment or genericness. Therefore, a trademark owner should always be mindful to use its mark prop-erly and of its obligation to police others’ uses of the mark to prevent loss of rights.

In Canada, the use of the term “incontestable”

is quite misleading, as the benefit of an incon-testable registration relates only to challenges based on prior use or making known of a third party’s trademark. All other types of challeng-es against registrations that have not yet be-come incontestable can also be made against incontestable registrations.

ConclusionIn sum, the term “incontestable trademark” may sound more formidable than it actually is, and, indeed, such status does not provide a complete bar to challenge of the mark by others. The requirements for achieving incontestable status, as well as the way in which the doctrine is applied, differ greatly in the United States and Canada. Therefore, while trademark owners may be aware of the potential benefits for having an incontestable registration in one country, they should also be aware that those same benefits do not apply to registrations in both countries. These differ-ences highlight the need to work with local practitioners to understand the nuts and bolts of incontestability in the particular jurisdiction in which the mark is registered. ■

Strong IP Protection Requires the Right ToolsJoin leading authorities at advanced-level sessions to discuss the emerging issues in this area and achieve a solid understanding of the many opportunities and pitfalls of intersecting rights.

Topics include:

• How can product designs be protected as two- or three-dimensional marks and through other IP laws?• How can trademark law protect artistic works and unregistered geographical indications?• How can trademarks be subject to unfair competition law, comparative advertising statutes or consumer protection, privacy and right of publicity laws?

with OTHER IP RIGHTS

When

TrademarksMunich, Germany December 8–9

For more information and to register please visit:www.inta.org/2014tmoverlap

Incontestability of Marks in the United States and Canada Continued from page 7

9

Law&PracticeAUSTRALIA

IP Australia Provides Guidance on Extension of Time Under New RegulationsA recent decision of IP Australia provides guidance on the approach it will now take on requests for extensions of time under new Regulation 9.18 of the Trade Marks Regula-tions 1995, which came into effect on April 15, 2013.

MG Icon LLC v. Caprice Australia Pty Ltd ([2014] ATMO 34 (Apr. 30, 2014)) is the first contested request for an extension of time under the new regulations. It appears IP Aus-tralia will now take a stricter approach when considering requests for extensions of time to file evidence in opposition proceedings.

MG Icon LLC (MG) applied to remove the trade-mark registration for MATERIAL GIRL, in the name of Caprice Australia Pty Ltd (Caprice), from the Trade Mark Register, and Caprice opposed the removal. Caprice requested an extension of time of one month to file evidence in reply to MG’s evidence. MG objected to the extension and applied for a hearing.

The Hearing Officer bore in mind that an inten-tion of the new legislation is to reduce delays in opposition proceedings by narrowing the circumstances in which an extension of time will be available.

The Hearing Officer found that three questions only had to be considered when deciding whether to grant an extension of time:

1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements (Regulation 9.18(2)(a)(i))?

2. Did the party (or their attorney or agent) fail to file the evidence in time despite acting promptly and diligently at all times (Regula-tion 9.18(2)(a)(ii))?

3. Were there exceptional circumstances that warrant the extension (Regulation 9.18(2)(b))?

The answer to the first two together, or the answer to the third, had to be Yes in order for the extension to be granted.

The Hearing Officer found that Caprice had, up to the period for filing evidence in reply, made all reasonable efforts to comply with filing requirements. It filed the notice of opposition on the due date and evidence in support only 11 days after its original due date (well within the granted extension period).

However, it was determined that Caprice had not acted promptly and diligently at all times. Specifically, the Hearing Officer noted the following:

• Caprice’s evidence failed to show prompt and diligent action “at all times” during the evidentiary period. Over two months had passed before an employee of Caprice (Ms. Hayward) retrieved evidence for the opposi-tion. Although Ms. Hayward was busy with a sale of business involving Caprice, she was still heavily involved in the opposition. The requirement for “prompt and diligent” action meant that Ms. Hayward should have fol-lowed up the matter well before two months had passed.

• Difficulties with email accounts are not an excuse for a delay. While Ms. Hayward had been experiencing email difficulties for some weeks, she ought to have been aware that some of her emails might have gone astray.

• Annual leave taken by an officer of Caprice did not excuse lateness, because annual leave generally is not an unforeseen event.

• Finalizing of the declaration had been left until very late in the evidentiary period, resulting in little time for any contingencies, such as late return of the declaration by a witness.

Last, the Hearing Officer found that there were no exceptional circumstances that warranted the extension, despite the evidence that Ms. Hayward provided.

Caprice also made submissions relating to “other matters,” but the Hearing Officer stated that only matters raised in Regulation 9.18(2) could be considered. Other matters raised

by Caprice, such as public interest consid-erations, the probity of the evidence being filed and whether the evidence was already filed, were more relevant to a consideration of whether further evidence should be allowed, and Caprice had the option to make such an application.

The decision highlights some important con-siderations that should be taken into account when parties in opposition proceedings want to seek an extension of time to file evidence:

• The party is responsible for ensuring that its evidence is filed on time and must act with the goal of filing it on time without the need for an extension.

• A high onus is placed on the party request-ing the extension to prove that an extension is warranted in the circumstances.

• Only those matters raised in Regulation 9.18(2) will be considered when an exten-sion of time to file evidence in opposition proceedings is granted.

• If relying on Regulation 9.18(2)(a), the party must show that it acted promptly and diligently “at all times” over the evidentiary period. Difficulties with email accounts, being busy at work and taking annual leave are not likely to excuse delay.

• If evidence in reply is late and an extension is not warranted, the party might instead consider making an application to file further evidence. In such instances, the Hearing Officer is not limited to considering only matters in Regulation 9.18(2). He or she can also consider other matters, such as public interest considerations, the probity of the evidence and whether the evidence was already filed.

Contributors: Giulia Fimmano and Blair BevenA J Park, Sydney

Verifier: Jennifer IrwinJIP Legal, Melbourne

August 15, 2014 Vol. 69 No. 1510

Law&PracticeBELGIUM

IP Question on Use of Arabic Words in Latin and Arabic Script in CTMs Referred to CJEUOn March 28, 2014, the Brussels Court of Ap-peal lodged a request for a preliminary ruling by the Court of Justice of the European Union (CJEU) (Case C-147/14).

Loutfi Management Propriété Intellectuelle, S.A.R.L., the owner of Community trade mark (CTM) registrations for the device marks EL BENNA (CTM No. 8572638) and EL BNINA (CTM No. 10217198), was granted permis-sion for a saisie-contrefaçon (“counterfeit seizure”) at the premises of its competitors AMJ Meatproducts N.V. and Halalsupply N.V. (jointly, Meatproducts), the owners of a Ben-elux trademark registration for EL BAINA (No. 909776). Both Loutfi and Meatproducts offer meat that is processed in accordance with halal prescriptions. Meatproducts successfully lodged third-party proceedings, by which the counterfeit seizure measures (which included a description of the pretended counterfeit and the sealing of the goods) were immedi-ately cancelled. In response, Loutfi lodged an appeal before the Court of Appeal of Brussels, claiming the validity of the seizure measures.

CTM No. 8572638

CTM No. 10217198

Benelux No. 909776

In order to do so, Loutfi based its claim on Arti-cle 9.1.(b) of the Community Trade Mark Regu-lation (Council Regulation (EC) No. 207/2009) (CTMR), which provides:

A Community trade mark shall confer on the proprietor exclusive rights therein. The pro-prietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: ...(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services cov-ered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of associ-ation between the sign and the trade mark.

The Court of Appeal held that both Loutfi’s and Meatproducts’ trademarks were registered for goods that were identical, or at least similar—that is, halal products.

After assessing the identity or similarity of the marks and the likelihood of confusion, the court held that (1) the relevant public was the normal Muslim consumer of halal food in the European Union, who had at least a basic knowledge of (written) Arabic, and (2) there was a certain visual similarity between the marks.

Comparing the marks aurally and conceptually, the court determined that the word elements

that were part of the trademarks did not have a meaning in one of the official languages of the European Union. Taking into account the fact that the words EL BENNA, EL BNINA and EL BAINA all had different meanings and pro-nunciations in the Arabic language, the court held that the conclusion reached based on the aural and conceptual comparison could be different depending on whether the court did or did not take into account the meaning and pronunciation of the Arabic word elements, both in Roman writing and in Arabic writing.

Therefore, the court referred the following question to the CJEU:

In view of, inter alia, Articles 21 and 22 of the Charter of Fundamental Rights of the European Union, must Article 9(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark be interpreted as meaning that, in the assessment of the likelihood of confusion between a Community trade mark in which an Arabic word is dominant and a sign in which a different, but visually similar, Arabic word is dominant, the difference in pronun-ciation and meaning between those words may, or even must, be examined and taken into account by the competent courts of the Member States, even though Arabic is not an official language of the European Union or of the Member States?

Contributor: Matthias VierstraeteOlswang Belgium LLP, Brussels

Verifier: Gordana PavlovicCabinet Pavlovic, Brussels

Looking for a gateway to country-specific links for trademark offices, laws, domain name resources and more?

Find it in the Country Portal in INTA’s Global Trademark Resources.

Visit www.inta.org/CountryPortals

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Law&Practice

Test Out the New Pro Bono ToolkitThe INTA Pro Bono Committee has developed a pro bono toolkit contain-ing checklists, model documents and resources to help law firms and corporations implement trademark pro bono programs. The Committee is looking for a law firm or corporation to use the toolkit in the creation of a new pro bono program. If your firm or corporation is interested in participating in a case study with the Pro Bono Committee, please contact Peg Reardon (preardon@inta.org).

EUROPEAN UNION Court of Justice Finds Store Design

Capable of Trademark RegistrationRecently, the Court of Justice of the European Union (CJEU) rendered its judgment regarding whether a representation of the layout of a re-tail store—in this case, a flagship APPLE store—is capable of registration as a trademark. Ap-ple Inc. v. Deutsches Patent- und Markenamt, Case C-421/13 (CJEU July 10, 2014).

The mark applied for is shown below.

The CJEU ruled on a series of questions from the German Federal Patent Court (GFPC), after the German Patent and Trademark Office (Deutsches Patent- und Markenamt) refused registration of the mark (applied for in relation to retail and product demonstration services in Class 35) on the ground that the mark would not indicate origin to the consumer and thus was incapable of registration as a trademark. The GPFC asked the CJEU to determine wheth-

er a design representation of a store layout, without indications of layout dimensions, was a clear and precise graphical representation of the mark, and whether such a mark was capa-ble of registration for related services. It also asked whether product demonstration ser-vices (designed to entice the purchaser to buy goods) could be said to fall within the meaning of “services” set out in Article 2 of the EU Trademarks Directive (Directive 2008/95/EC) (the “Directive”).

The CJEU found that a mark that consisted of a representation of a retail store, depicted by a design but without indications of layout di-mensions, was a sufficiently clear and precise graphical representation to be acceptable for registration as a trademark, and that such a mark could be capable of distinguishing one trader’s products from those of others. However, said the Court, that mark must have distinctive character to be acceptable for registration. The CJEU also found that product demonstration services fell within the definition of services within the meaning of the Directive.

The CJEU’s decision will be encouraging to retailers seeking to protect their unique store layout as a trademark, though it is also clear that obtaining registration will not be easy. The retailer will need to prove that its store design has distinctive character, which (as the CJEU suggested) is likely to mean demonstrating at least that the design is a significant departure from the norm. In practice, it is also likely that one will need to demonstrate that the mark has acquired a distinctive character as a result of its use. This evidential burden is likely to mean that only a few retailers will succeed in registering their store layouts as trademarks within the European Union.

Contributor: Tom AlbertiniJ A Kemp, London, United Kingdom

Verifier: Mark HolahSipara, Oxford, United Kingdom Both are members of the INTA Bulletin Committee—Europe & Central Asia Subcommittee

August 15, 2014 Vol. 69 No. 1512

Law&PracticeFRANCE

Supreme Court Continues Strict Appreciation of Distinctiveness Regarding Descriptive and Generic TermsThe French Supreme Court confirmed that the term “argane” lacked distinctiveness and that it constituted a necessary and generic descrip-tion for the cosmetic product for hygiene and skincare designated by the appellant’s trade-mark. SAS Pierre Fabre Dermo-Cosmétique v. Sté Clairjoie, No. 13-16470 (Supreme Court, Commercial Chamber, May 6, 2014).

In 2010, Pierre Fabre, the owner of a trade-mark registration for ARGANE since 1983, sued Clairjoie for infringing the trademark KARITÉ-ARGANE by using the name KARITÉ-AR-GANE to sell its products. In its defense, Clair-joie counterclaimed for the invalidation of the trademark ARGANE for lack of distinctiveness.

The Court of First Instance of Paris sustained Clairjoie’s claim and held that Pierre Fabre’s trademark be invalidated.

The Court of Appeal of Paris upheld the first in-stance decision. It confirmed the lower court’s deduction that “Argane” was not a coined word feminizing the commonly used term “argan” but a word of Arabic origin that was spelled either “argan” or “argane.”

On appeal to the Supreme Court, Pierre Fabre argued that the judges mistook the

evocative aspect of its mark for a lack of distinctiveness and did not refer to consum-ers’ perception of the mark as of the date of filing. It argued, further, that, in effect, it had not been demonstrated that the term “argan” was generic and necessary.

The Supreme Court dismissed these argu-ments. It held that the Court of Appeal’s ruling was correct, as it had referred to the relevant public as being the consumers of the goods on which the trademark was used. The judges also noted that the term used, also spelled “argan,” was the name of a tree and its fruit used for soap confection, and consequently it “constituted a designation necessary and ge-neric of a vegetal substance used for hygiene and skincare, and should remain at the free disposal of the [competitors], who are eager to introduce it in the composition of their prod-ucts.” The Supreme Court thus confirmed that the term was “exclusively descriptive of the composition of the products designated by the brand,” and therefore justified the invalidation of the trademark ARGANE.

This ruling underlines the severity of French courts toward descriptive trademarks, which are viewed as lacking in distinctiveness. It also highlights the problem of distinguishing

between the evocative nature of a trademark and its lack of distinctiveness. The decision is puzzling, however, in view of the longevity of the trademark’s exploitation: some 30 years. It calls into question the necessary conditions to acquire distinctiveness through constant and intensive use.

The Court of Appeal in its 2013 ruling found that the commercial success of the product was not sufficient to demonstrate that the mark was now perceived by the public as an indication of origin and no longer as a compo-nent of the product, especially since ARGANE was not used alone but with the trademark GALENIC. The issue of the acquisition of distinctiveness through constant and inten-sive use has not been discussed before the Supreme Court.

Contributor: Nathalie DreyfusDreyfus, Paris

Verifier: Eléonore GasparDuclos, Thorne, Mollet-Viéville & associés, Paris

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

Visit www.inta.org/practitionerschecklists

Avoid Regrets Further Down the LineSettlement and coexistence agreements are intended to solve problems, not cause them. All too often, though, oversights can result in an arrangement’s unraveling.

Find out how to minimize the likelihood of recurring disagreements in “Settlement & Coexistence Agreements” in INTA’s Practitioners’ Checklists series, available exclusively to INTA members.

13

Law&PracticeUNITED STATES

Famous CHANEL Mark Diluted by CHANEL for Real Estate ServicesIn a precedential decision, the Trademark Trial and Appeal Board (TTAB or Board) sustained the opposition filed by Chanel, Inc. that challenged the use-based application of Jerzy Makarczyk to register the mark CHANEL for “real estate development and construction of commercial, residential and hotel proper-ty” on the ground that the mark diluted by blurring the opposer’s famous CHANEL mark. Chanel, Inc. v. Jerzy Makarczyk, Opposition No. 91208352 (T.T.A.B. May 27, 2014).

As part of a marketing strategy, Makarczyk promoted a building with units named after luxury brands, including CHANEL, GIVENCHY, CARTIER, VERSACE and DIOR. Chanel opposed Makarczyk’s application on several grounds, including a likelihood of dilution by blurring under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).

Dilution by blurring is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. The TTAB identified four elements a plaintiff must prove in order to prevail in a claim of dilution by blurring:

1. The plaintiff owns a famous mark that is distinctive;

2. The defendant is using in commerce a mark that allegedly dilutes the plaintiff’s famous mark;

3. The defendant’s use of its mark began after the plaintiff’s mark became famous; and

4. The defendant’s use of its mark is likely to cause dilution by blurring.

The TTAB had little difficulty in finding that Chanel had successfully proved the first three elements. It then turned its attention to whether Makarczyk’s mark was likely to cause dilution by blurring. In doing so, the Board considered six non-exhaustive factors:

1. The degree of similarity between the mark or trade name and the famous mark;

2. The degree of inherent or acquired distinc-tiveness of the famous mark;

3. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark;

4. The degree of recognition of the famous mark;

5. Whether use of the mark or trade name was intended to create an association with the famous mark; and

6. Any actual association between the mark or trade name and the famous mark.

The TTAB found that (1) the marks in question were identical; (2) the opposer’s CHANEL mark had acquired a high degree of distinctiveness; (3) the opposer had engaged in substantially exclusive use of its CHANEL mark; (4) the opposer’s CHANEL mark enjoyed a high degree of recognition among consumers; (5) the applicant intended to trade on the goodwill and fame generated by the CHANEL mark; and (6) there was no evidence of any actual association between the applied-for mark and the famous mark.

The TTAB concluded that Chanel had success-fully demonstrated that Makarczyk’s CHANEL mark was likely to cause dilution by blurring of its famous mark CHANEL. Accordingly, the Board sustained the opposition.

Contributor: Robert P. Felber, Jr.Waller Lansden Dortch & Davis, LLP, Nashville, TennesseeCo-chair of the INTA Bulletin Law & Practice—United States & Canada Subcommittee

Verifier: Lisa IversonNeal & McDevitt, LLC, Northfield, Illinois

Visit inta.org/IndustryPerspectives

Imitation May or May Not Be FlatteryFood and beverage industry manufacturers and large national supermarket chains share a mutually dependent relationship, and either would likely be reluctant to damage it in a full-blown dispute over a “look alike” product. To better understand the views of both sides — and to know where and when to draw the line — see “Trade Dress in the Food and Beverage Industries: Manufacturer’s and Retailer’s Views” by Mark Hiddleston, Elkington and Fife LLP, London, United Kingdom, and Richard Young, Quarles & Brady LLP, Chicago, Illinois, United States, in INTA’s exclusive member service Industry Perspectives series.

August 15, 2014 Vol. 69 No. 1514

Law&Practice

Visit www.inta.org/practitionerschecklists

When You Need to KnowWhether undertaken as an assessment of trademark rights or an evaluation of the adequacy of internal management systems, a trademark audit has to be thorough to offer an accurate picture of a company’s brand name activity. For tips on navigating the myriad details associated with the exercise, see “Trademark Audits” in INTA’s exclusive Practitioners’ Checklists series.

UNITED STATES TTAB Easily Finds Acquired Distinctiveness for EZThe Trademark Trial and Appeal Board (TTAB or Board) found that the presence of the term EZ in two prior registrations entitled the marks’ owner to a claim, under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), that EZ had acquired distinctiveness in a differ-ent mark. In re DEQ Systèmes Corp., Serial No. 85315739 (T.T.A.B. June 4, 2014) (not precedential).

DEQ Systèmes Corp. (DEQ) applied to register the mark NO COMMISSION EZ PAI GOW & Design, for “Card games; Card games for use in casinos; Card game accessories, namely, tables specially adapted for casino games; Gaming tables; Gaming table felt layouts for betting and instructions for playing card games, sold as a unit” in Class 28. DEQ dis-claimed the exclusive right to use NO COM-MISSION and PAI GOW apart from the mark as a whole; however, after it declined to comply with the examining attorney’s requirement to disclaim EZ, the examining attorney refused registration. DEQ appealed.

The TTAB first considered whether DEQ’s claim of acquired distinctiveness with respect to EZ

was appropriate. The Board cited the Trade-mark Manual of Examining Procedure (TMEP) for the proposition that “the element that is the subject of the §2(f) claim must present a separate and distinct commercial impression apart from the other elements of the mark.” TMEP § 1212.02(f)(ii) (April 2014). It found that “the rendition of the term ‘EZ’ in Angli-cized Chinese style characters, prominently displayed in the center of [the] [a]pplicant’s composite mark, presents a ‘separate and distinct commercial impression’ apart from the remaining literal and design elements.”

Next, the TTAB considered whether DEQ could rely on its registrations for EZ BACCARAT EZ & Design and EZ BACCARAT in standard char-acter format, which cover goods similar to those in the application, to claim that EZ had acquired distinctiveness. The Board again cit-ed the TMEP: “When an applicant is claiming §2(f) in part as to only a portion of its mark, the mark in the claimed prior registration must be the same as or the legal equivalent of the portion of the mark for which the applicant is claiming acquired distinctiveness.” TMEP § 1212.02(f)(ii)(B). One mark is the legal equiv-

alent of another if “it creates the same…com-mercial impression such that…consumer[s] would consider them the same mark” (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 U.S.P.Q.2d 1807, 1812 (Fed. Cir. 2001)).

The TTAB noted that in obtaining its two cited registrations DEQ had neither claimed acquired distinctiveness nor disclaimed EZ (i.e., EZ was inherently distinctive in both reg-istrations). The Board found that the standard character EZ in the prior registrations of DEQ was the legal equivalent of the stylized EZ in the application and conveyed the same com-mercial impression.

Thus, the TTAB concluded that “the distinc-tiveness of the term ‘EZ’ in [the] [a]pplicant’s previously registered marks for [the] same or similar goods transfers to the ‘EZ’ portion of the mark at issue in the instant application.” Accordingly, the Board reversed the refusal to register the mark.

Contributor:Timothy J. LockhartWillcox & Savage, P.C., Norfolk, Virginia INTA Bulletin Committee—Association News

Verifier: Robert P. Felber, Jr.Waller Lansden Dortch & Davis, LLP, Nashville, TennesseeCo-chair of the INTA Bulletin Law & Practice—United States & Canada Subcommittee

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Law&Practice

Searchable database on the cancellation practice and procedure in more than 85 jurisdictions worldwideTrademark Cancellations on INTA’s Global Trademark Resources Page

Visit www.inta.org/Cancellations

UNITED STATES Complementary Ingredients Found in Same Recipe Lead to

Likelihood-of-Confusion–Seasoned Blend

YEMEN Increase in Publication Fees

In a precedential decision, the Trademark Trial and Appeal Board (TTAB or Board) affirmed the refusal of registration of the mark CHANTICO & Design for “condiment, namely, pepper sauce” in Class 30 (with PEPPER SAUCE disclaimed), based on a likelihood of confusion with the registered mark CHANTICO for “agave sweeten-er” In the same class. In re Gina Davia, Serial No. 85497617, 110 U.S.P.Q.2d 1810 (T.T.A.B. May 27, 2014).

The TTAB found that the registrant’s CHANTICO mark was arbitrary and inherently strong in relation to “agave sweetener”; that the marks at issue were confusingly similar; and that the goods at issue were complementary and sold to the same customers, who would exercise an ordinary level of care in their purchasing decisions.

In comparing the marks, the TTAB acknowl-edged the dissimilarities in appearance be-tween the marks based upon the applicant’s inclusion of a snake design in an Aztec art style. However, the Board nonetheless found that the word CHANTICO was the dominant portion of the applied-for mark because it

appeared in letters large enough to cover the snake design at two points, causing the snake design to visually recede and form part of the background of the mark. The Board found, moreover, that consumers would recall the word CHANTICO more readily than the highly stylized snake design.

As to sound, the Board noted that the term CHANTICO was identical in both marks and therefore would likely be pronounced the same. With respect to meaning, it found that to the extent that the relevant public knew that Chantico was the name of an Aztec goddess and that the respective goods were associated with the country of Mexico, the marks would convey a similar connotation.

In considering the relatedness of the goods, the TTAB found that both agave sweeteners and pepper sauce were condiments and thus were “functionally related.” Pepper sauce and agave sweeteners were also commonly used together, as was evidenced by recipes submit-ted by the examining attorney that called for both ingredients. The Board noted that “[i]f two ingredients … are found to be complementary in that they are sold in the same stores to the same consumers for the same, related or complementary end use, consumers are likely to be confused upon encountering the goods under the same or similar marks even though the goods may be found in different areas within a store.”

There were no restrictions in the channels of trade for the goods as stated in the application or the cited registration. The applicant argued that its pepper sauce was a “specialty food product [sold] in a niche market,” whereas agave sweetener was more “generic,” but it failed to prove this point. The Board found that members of the general public could purchase both products through, at least, online grocery stores, and could use both products in a single recipe. Thus, it found that the classes of con-sumers and channels of trade were the same.

Accordingly, the TTAB affirmed the finding of a likelihood of confusion as to the source of the respective marks.

This decision reminds practitioners to consider the complementary nature of goods, especially food products, even if they are not necessarily found in the same aisle at the grocery store.

Contributor: Jean-Francois NadonJoli-Coeur Lacasse Avocats, Montréal, Québec, Canada

Verifier: Danielle GormanEdwards Wildman Palmer LLP, New York, New York, USA

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

Contributor: Iman Salamehag-IP-news Agency, Amman, Jordan

Verifier: Salah SamhouriSaba & Co. IP, Sana’a, Yemen

The Yemeni Ministry of Industry and Trade has issued Ministerial Decision No. 105 of 2014, regarding the increase in fees charged for publication in the Official Trademark Gazette (AL-TIJARAH), effective August 7, 2014.

The increases, which apply to all forms of intel-lectual property (trademarks, patents, industri-al designs and drawings, etc.), are as follows:

• Charges for publication of trademarks increase by 48.51%.

• Charges for publication of industrial designs and drawings increase by 30%.

• Charges for publication of patents increase by 30%.

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INTA Calendar of EventsPlan your calendar with these INTA events and stay up to date on issues that affect your trademarks—domestically, regionally and globally.

August 29 Roundtable: Latest Issues Concerning the Beijing, China Trademark Administrative Litigation Under the Newly Amended Trademark Law in China

September 2–12 TMA Roundtables Various U.S. Cities

September 18–19 Internet, Innovation and ICANN: San Francisco, CA, USA The Evolving Landscape of the Net

October 12–15 Trademark Administrators and Practitioners Meeting Arlington, VA, USA

October 20–31 U.S. Roundtables: Social Media, Chapter Two Various U.S. Cities

November 11–15 Leadership Meeting Phoenix, AZ, USA

December 8–9 When Trademarks Overlap with Other Munich, Germany IP Rights Conference