BulletinDubai Customs Calls for Unified Action Against Counterfeits World Update

Laugh It Off Gets Last Laugh in Dilution Case

Service Mark Registration Gains Popularity in Africa

INTA Bulletin Board

Practice Notes

Color Your Marks Yellow, Brown or Blue in Canada

Mark of the Month

CADBURY

Committee Comments

Young Practitioners Task Force Focuses on Involvement in INTA

Law and Practice

BRAZILPTO to Abolish Printed Official Bulletin

CHILENew Industrial Property Law Ensures TRIPS Compliance

CHINATrademark Gets Lost in Translation

COLOMBIADeclaration of Fame Not Available Independent from Opposition or Cancellation Proceedings

CROATIANew Law on Representation Before the State IP Office Enacted in Croatia

IRELANDIrish Patents Office Changes Practice on the Fax Filing of Trademark Applications

UNITED STATESNinth Circuit Remands KP Permanent Decision

News Bytes

The Voice of the International Trademark Association July 1, 2005 Vol. 60, No. 12

On Tuesday, May 3, 2005, the director general of the Dubai Customs Authority, Mr. Ahmed Butti, asked the public and private sectors to partner in order to curb the regional and international spread of counterfeit goods. The request was made at an INTA roundtable on the transshipment of counterfeit goods, which was held at the Dubai Customs Building in Dubai, United Arab Emirates (UAE).

The roundtable gave representatives of the Dubai Customs Authority and 15 private com-panies, including Johnson & Johnson, Mars, Inc., Nestlé Middle East, and Nissan, a chance to discuss the issues and come up with some solutions to the problem of transshipment of these goods.

Dubai and specifically the Jebel Ali Free Zone have been criticized for the proliferation of transshipment of counterfeit goods. The Dubai Customs Authority has tried to prevent the importa-tion, export

and transshipment of these goods through all of its ports, including Jebel Ali. However, due to the high volume of goods that enter the Dubai ports, these activities are difficult to control. According to Customs, ap-proximately 10,000 containers pass through Dubai ports per day. This translates to 220 million customers, 6.2 million containers and 700,000 tons of cargo per year, with 75 percent of goods passing through the UAE via the ports.

To alleviate the problem, Alan Hall, advisor to the Dubai Customs Authority, explained that Customs will be forming an Intellectual Property Unit (IPU) in the near future that

On May 10, 2005, the Canadian Federal Court of Appeal issued a decision which may make it more crucial than ever for trademark owners applying to register their marks in Canada to file an application for their marks as soon as possible, even if those marks had already been in use for some time in Canada.

The decision was made in the case of Procu-reur Général du Canada v. Effigi Inc. (unreport-ed, Court File No. A-432-04), and concerned the interpretation of Section 37(1)(c) of the Canadian Trade-Marks Act, which provides that the Registrar of Trade-Marks shall refuse a trademark application if the registrar is satisfied

that the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for which an earlier filed application for registration is pend-ing. Prior to the Effigi decision, an application claiming an earlier date of first use in Canada would have had priority over a previously filed “proposed use” or “intent to use” application. The court found that Section 37 of the Trade-Marks Act is a complete code that controls the procedure for examination of an application for registration and leaves the Registrar no discre-tion. The court expressed that a “first to file”

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Canadian Court Issues Landmark Decision on Priority for Registration

SEE REGISTRATION ON PAGE 7

IN THIS ISSUE

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Brand representative Omar Shteiwi of Nestlé Middle East speaks at the roundtable

Ahmed Butti, the director general of the Dubai Customs Authority (center) with Michel Danet, secretary general of the World Customs Organization (right), and Hoda Barakat, partner at Al Tamimi & Company (left).

SEE DUBAI ON PAGE 7

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Representing Trademark Owners Since 1878Vol. 60, No. 122 www.inta.org Vol. 60, No. 12 3

World UpdateLaugh It Off Gets Last Laugh in Dilution CaseIn its first trademark judgment in history, the Constitutional Court of South Africa overruled the decision of the Supreme Court of Appeal in a dilution case, holding that the plaintiff did not show material proof of dilution by tarnishment.

On May 27, 2005, the Constitutional Court handed down a seminal judgment for the case of Laugh It Off Promotions CC (Laugh It Off ) v South African Breweries International (Finance) BV t/a Sabmark International (SAB) in which it ruled that Laugh It Off had the right to sell its T-shirts bearing the words BLACK LABOUR over the BLACK LABEL design. The judgment over-ruled the decision of the Supreme Court of Appeal previously reported in INTA Bulletin, Volume 59, Issue 19, which determined that Laugh It Off could not use its goods bearing the mark in the course of trade or in relation to goods and services.

Laugh It Off produced and sold T-shirts employing the general layout and colors of SAB’s registered mark for a beer label, but with a different message. SAB’s trademark, BLACK LABEL, was replaced with “BLACK LABOUR,” while the slogan “AMERI-CA’S LUSTY, LIVELY BEER – BREWED IN SOUTH AFRICA” was replaced with “AFRICA’S LUSTY, LIVELY EXPLOITATION SINCE 1652 – NO REGARD GIVEN WORLDWIDE.”

The Constitutional Court considered the history and purpose of Section 34(1)(c) of the Trade Marks Act No. 194 of 1993, which sets out the requirements for dilution, and stressed that the case in point was one of dilution by tarnishment as opposed to dilution by blurring.

In its decision, the Constitutional Court referred to Article 5(2) of the European Directive and Section 10(3) of the 1994 United Kingdom Act, pointing out that the provisions are virtually identical but then stressed that while the corresponding European Community and UK provisions require proof of actual detriment or unfair advantage, the South African section requires a likeli-hood of unfair advantage or detriment, the relevant portion of the section reading “the use of the trademark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark, notwithstanding the absence of confusion or deception.”

In dealing with the purpose of the dilution provisions, the Con-stitutional Court stated that Section 34(1)(c) serves a vital purpose

in preserving trade and commercial interests of owners of trade-marks that have a reputation, by prohibiting use which, although it may not confuse or deceive, materially undermines the repute of well-known marks ordinarily harnessed to sell goods and services. The court stressed that the unique identity and reputation of the mark being protected underpin the economic value that resides in the mark’s advertising prowess or selling powers.

The Supreme Court, in deciding the merits of the infringement claim, had adopted a two-stage approach. In the first inquiry, the Supreme Court held that the message on the T-shirts amounted to infringement because it was unfair and materially harmful to the reputation of the trademark. The Court then considered and rejected the argument that freedom of expression does not afford justification for the infringement on the facts before it.

The Constitutional Court criticized the two-stage approach advocated by the Supreme Court, arguing that it prevents an understanding of the internal requirements of the section through the lens of the Constitution, and stressing that the injunction to construe statutes consistent with the Constitution means that, where reasonably possible, the Court is obliged to promote the rights entrenched by it.

The Constitutional Court accordingly found that it was obliged to balance out the interests of SAB against Laugh It Off ’s claim of free expression for the very purpose of determining what is unfair and materially harmful to the marks.

The Constitutional Court stated that the anti-dilution pro-hibition under Section 34(1)(c) seeks, in effect, to oust certain expressive conduct in relation to registered marks with repute. It assumed, without deciding, that the limitation is reasonable and justifiable in an open and democratic society to which the Constitution is committed, but it considered itself impelled to a construction of Section 34(1)(c) most compatible with the right to free expression.

In analyzing the section against this background, the Consti-tutional Court agreed with the Supreme Court of Appeal that infringement only occurs if “unfair advantage” or “unfair detri-ment” is shown and that the detriment must not be flimsy or neg-ligible, but must be substantial in the sense that it is likely to cause substantial harm to the uniqueness and reputation of the mark. The Constitutional Court concluded that the owner of the mark bears the burden to demonstrate likelihood of substantial harm or detriment that, seen within the context of the case, amounts to unfairness.

The Constitutional Court rejected SAB’s argument, which had been accepted by the Supreme Court, to the effect that “the likelihood of suffering economic harm as a consequence of the offending use is self-evident.” SAB had argued that no right think-ing South African would wish to be associated with the racially insensitive message conveyed by Laugh it Off on the T-shirts. The racial slur, SAB maintained, is likely to erode the exclusiveness of the mark, discourage people from purchasing BLACK LABEL beer and adversely curtail SAB’s opportunities to sponsor domes-tic sport. The Constitutional Court found that this “evidence” amounted to a bald allegation and conjecture, and stressed that the court must determine the likelihood of detriment to the selling

CONTINUED ON PAGE 3

In the dilution case, SAB’s trademark, BLACK LABEL, was replaced on a T-shirt with the words “BLACK LABOUR,” while the slogan AMERICA’S LUSTY, LIVELY BEER – BREWED IN SOUTH AFRICA was replaced with the words “AFRICA’S LUSTY, LIVELY EXPLOITATION SINCE 1652 – NO REGARD GIVEN WORLDWIDE.”

Representing Trademark Owners Since 1878Vol. 60, No. 122 www.inta.org Vol. 60, No. 12 3

appeal of a mark in the light of established facts. There had been no suggestion that, from the time the T-shirts appeared to when the proceedings were launched, there had been a real possibility of a reduction of CARLING BLACK LABEL beer’s market domi-nance or sales. The Constitutional Court therefore overruled the Supreme Court’s decision and rejected SAB’s claim for infringe-ment.

The Constitutional Court observed that the mere fact that the express message on the T-shirt may stir discomfort in some and ap-pear to be morally reprobate or unsavory to others is not ordinarily indicative of a breach of Section 34(1)(c). Even accepting that the racial slur may be unsavory, there was no evidence that it has or is likely to attach to or tarnish the selling power of the mark.

While this ruling is a serious set back for any trademark pro-prietor wishing to enforce rights in its well-known trademarks in cases of dilution by tarnishment, the matter was based on the facts before the Constitutional Court and it is open to the proprietor of a well-known mark that is being diluted by tarnishment to bring appropriate evidence before the court demonstrating the likeli-hood of substantial harm or detriment to its well-known trade-mark.

Having found no infringement, the court nevertheless com-mented on the interpretation of the message on the T-shirt and the fair use defense argument, although it expressly refrained from making any findings. The Constitutional Court observed that, un-like in the United States, in South African jurisprudence there are no enclaves of protected expressions such as parody or satire and therefore the mere characterization of an expression as such would not be decisive of what was fair use under the anti-dilution protec-tion because, ordinarily, all categories of expression, save those excluded by the Constitution itself, enjoy constitutional shield and may be restricted only in a way constitutionally authorized.

The message is clear. The trademark proprietor who successfully overcomes the first hurdle by proving likelihood of actual harm must be prepared also to overcome any freedom of expression defense.

By Charles Webster, Spoor & Fisher, Pretoria, South Africa; Verifier: Andre Myburgh, Fairbridges, Cape Town, South Africa

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Representing Trademark Owners Since 1878Vol. 60, No. 124 www.inta.org Vol. 60, No. 12 5

World UpdateService Mark Registration Gains Popularity in AfricaIn most countries, a service mark is defined as a word, name, sym-bol or device used to identify and distinguish the services of a mark owner from the services of another. Marks such as the MCDON-ALDS fast food chain, VERIZON communications company and the MARRIOTT hotel chains are service marks that are known throughout the world and have essentially become household names. Most consumers take for granted that these marks are pro-tected, not just for the products they provide, but for the services rendered. However, not all countries recognize service marks as being protectable.

This article, and its accompanying chart on page 5, cover service marks in the African continent, where, although there are still some countries that do not allow protection for service marks, much progress has been made in recent years with the acceptance of ser-vice mark registration in Zanzibar, Ghana and Mauritius.

In Zanzibar, the International Classification system was recently adopted to replace the old British Classification system (50 classes of goods). This was achieved by an amendment to a schedule to the Trade Mark Rules. An amendment to the Trade Marks Act is also planned, and it was widely believed that until this happened one could still only register trademarks for goods in Classes 1 – 34. However, following the filing of some test cases, the Registrar has now confirmed that service mark applications may also be filed immediately and without waiting for any amendment of the Trade Marks Act itself.

In Ghana almost the opposite has happened but with the same result. Ghana has used the International Classification of goods for many years, but it was only in 2004 that a new Trade Marks Act was brought into force that included provisions for the registra-

tion of service marks. However, the implementing Regulations have not yet been published and, for almost a year, the Registrar maintained that applications for the registration of service marks could not be entertained until that had happened. On December 1, 2004, a practice note was issued stating that service marks were to be immediately available, notwithstanding the absence of the Regulations. Several service mark applications have since been filed, examined and accepted for registration.

For many years, Mauritius had no classification system what-soever, and merely allowed the registration of trademarks for any list of goods (but not services) of interest. This changed with the introduction of The Patents, Industrial Designs and Trademarks Act 2002. As soon as the Act was brought into force, service mark applications could be filed. However, as with Ghana, the enabling Regulations were not published. As a consequence, virtually all work at the Registry came to a standstill; and apart from allow-ing the filing of applications, nothing was processed. When the implementing Regulations (The Patents, Industrial Designs and Trademarks Regulations) came into force in 2004, the Registry was forced to catch up with all the work that was allowed to accumu-late in the interim, including the examination of the numerous service mark applications that have now been filed.

Although some progress is being made in Africa, there are still a number of countries with no provisions for service marks. However, in Nigeria discussions have been taking place, which, it is hoped, will lead to the introduction of service marks before too long. Likewise, the government in Zambia has promised new legislation later in 2005.

INTA Bulletin BoardChristopher J. Mugel has joined the Richmond, Virginia, USA office of Kaufman & Canoles, where he co-chairs the firm’s intellectual property group. He was also recently elected chair of the IP Section of the Virginia State Bar.

David J. Shannon, has been named the chair of the Leonard & Sciolla, LLP Intellectual Property and E-Commerce Group located in Pittsburgh, Pennsylvania, USA.

Sanjiv Sarwate, a partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP was re-appointed co-chair of the Chicago Bar Association Young Lawyers’ Section Creative Arts Committee for 2005 – 2006.

Uli Widmaier, a partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, has been appointed co-chair of the Amicus Briefs Committee of the American Bar Associa-tion’s Section of Intellectual Property Law.

To submit an item for INTA Bulletin Board consideration, send a brief message to bulletin@inta.org.

JULY ROUNDTABLES

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CONTINUE TO CHART ON PAGE 5

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July 11 – 22, 2005 | Various U.S. cities

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Representing Trademark Owners Since 1878Vol. 60, No. 124 www.inta.org Vol. 60, No. 12 5

SERVICE MARKS IN AFRICA

Country/ Jurisdiction

Classification System

Separate application for each class – or Multi-class system

Provisions for Service Marks

Algeria International Multi-class Yes Angola International Separate application Yes

ARIPO International Multi-class Yes1

Botswana International Multi-class Yes

Burundi None n/a Yes2

Cape Verde None Cautionary Notice Yes3

Congo (Zaire) International Multi-class Yes Djibouti International Multi-class Yes Egypt International Separate application Yes

Eritrea None Cautionary Notice Yes3

Ethiopia4 International Multi-class Yes

Gambia Old British5 Separate application No

Ghana International Separate application Yes Kenya International Separate application Yes Lesotho International Multi-class Yes Liberia International Multi-class Yes

Libya International Separate application Yes6

Madagascar International Multi-class Yes Malawi International Separate application No Mauritius International Multi-class Yes Morocco International Multi-class Yes Mozambique International Separate application Yes Namibia International Separate application Yes Nigeria International Separate application No

OAPI International Multi-class7 Yes

Rwanda International Multi-class Yes2

St Helena International Separate application Yes Sao Tome e Principe None Cautionary Notice Yes3

Seychelles International Separate application Yes

Sierra Leone Old British5 Separate application No

Somalia8 Former Italian9 Multi-class Yes

South Africa International Separate application Yes Sudan International Separate application Yes Swaziland International Multi-class Yes Tangier International Multi-class Yes Tanganyika International Separate application Yes Tunisia International Multi-class Yes Uganda International Separate application No Zambia International Separate application No

Zanzibar International Separate application Yes10

Zimbabwe International Separate application Yes

1 Although ARIPO allows service marks, not all Member States recognize service marks in their national laws, so these should be excluded from any such designation. 2 The laws in Burundi and Rwanda make no mention of service marks, but in practice the Registrars allow marks to be registered for goods and services 3 There are no provisions to register trademarks. Cautionary notices can be published for goods and services. 4 Ethiopia has a non-statutory registration system. The current practice is to register for all goods and services of interest and to mention International Class numbers. 5 The Old British classification system has 50 classes of goods. No services. 6 Until recently, Libya had its own system for classifying services, but this has been abandoned in favor of the International system 7 Although OAPI is a multi-class system, it is not possible to mix goods and services in the same application. 8 At present, no filings are possible in Somalia. These comments apply to the situation before the current civil war that has resulted in the closure of the Registry. 9 The former Italian classification system had 49 classes. Class 49 was “miscellaneous” and the Registry’s practice was to allow services to be included in this class 10 Although the Act has not been amended to recognize service marks, the Registrar has permitted them since adopting the International Classification System in 2004.

SERVICE MARKS IN AFRICA

Country/ Jurisdiction

Classification System

Separate application for each class – or Multi-class system

Provisions for Service Marks

Algeria International Multi-class Yes Angola International Separate application Yes

ARIPO International Multi-class Yes1

Botswana International Multi-class Yes

Burundi None n/a Yes2

Cape Verde None Cautionary Notice Yes3

Congo (Zaire) International Multi-class Yes Djibouti International Multi-class Yes Egypt International Separate application Yes

Eritrea None Cautionary Notice Yes3

Ethiopia4 International Multi-class Yes

Gambia Old British5 Separate application No

Ghana International Separate application Yes Kenya International Separate application Yes Lesotho International Multi-class Yes Liberia International Multi-class Yes

Libya International Separate application Yes6

Madagascar International Multi-class Yes Malawi International Separate application No Mauritius International Multi-class Yes Morocco International Multi-class Yes Mozambique International Separate application Yes Namibia International Separate application Yes Nigeria International Separate application No

OAPI International Multi-class7 Yes

Rwanda International Multi-class Yes2

St Helena International Separate application Yes Sao Tome e Principe None Cautionary Notice Yes3

Seychelles International Separate application Yes

Sierra Leone Old British5 Separate application No

Somalia8 Former Italian9 Multi-class Yes

South Africa International Separate application Yes Sudan International Separate application Yes Swaziland International Multi-class Yes Tangier International Multi-class Yes Tanganyika International Separate application Yes Tunisia International Multi-class Yes Uganda International Separate application No Zambia International Separate application No

Zanzibar International Separate application Yes10

Zimbabwe International Separate application Yes

1 Although ARIPO allows service marks, not all Member States recognize service marks in their national laws, so these should be excluded from any such designation. 2 The laws in Burundi and Rwanda make no mention of service marks, but in practice the Registrars allow marks to be registered for goods and services 3 There are no provisions to register trademarks. Cautionary notices can be published for goods and services. 4 Ethiopia has a non-statutory registration system. The current practice is to register for all goods and services of interest and to mention International Class numbers. 5 The Old British classification system has 50 classes of goods. No services. 6 Until recently, Libya had its own system for classifying services, but this has been abandoned in favor of the International system 7 Although OAPI is a multi-class system, it is not possible to mix goods and services in the same application. 8 At present, no filings are possible in Somalia. These comments apply to the situation before the current civil war that has resulted in the closure of the Registry. 9 The former Italian classification system had 49 classes. Class 49 was “miscellaneous” and the Registry’s practice was to allow services to be included in this class 10 Although the Act has not been amended to recognize service marks, the Registrar has permitted them since adopting the International Classification System in 2004.

By Mike SevantSpoor & Fisher JerseySt Helier, Jersey

Representing Trademark Owners Since 1878Vol. 60, No. 126 www.inta.org Vol. 60, No. 12 7

Practice NotesColor Your Marks Yellow, Brown or Blue in CanadaIn Canada, color applied to a particular item can function as a trademark, even if the color is applied to the whole of the exterior surface of the product, and not simply to some part or parts of it (Smith, Kline & French Canada Ltd. v. Registrar of Trade-marks [1987] 2 F.C. 633 (F.C.T.D.)).

There are many examples of trademark registrations in Canada that consist of a single color applied to the whole of the visible surface of an article. Some examples include the colors yellow, brown and blue. The color yellow has been registered for use in as-sociation with the visible surface of snowmobiles and industrial tractors as well as adhesive sta-tionery notes and earplugs. The color brown is registered for use in association with delivery and transportation services when applied to the visible surface of delivery vehicles and uniforms. And, the color blue is registered for use in association with phar-maceutical preparations when applied to the visible surface of a pharmaceutical tablet.

There has been little judicial guidance on color marks in Canada. However, in the past few years, the law relating to the protection of color marks, particularly in the pharmaceutical field, has been somewhat refined. During this time many pharmaceuti-cal companies sought trademark protection in Canada for colored tablets and capsules. Virtually all of these trademark applications were opposed, resulting in a number of Opposition Board and Court decisions in this area dealing with the nature and extent of evidence that is required to support trademark rights in color in Canada.

These decisions confirm that color applied to a particular item can function as a trademark in Canada (i.e., Ciba-Geigy Canada Ltd. V. Apotex Inc. [1992] 3 S.C.R. 120, 44 C.P R. (3d) 289 (S.C.C.); however, a fairly high threshold has been established for the protection of such marks. The decisions have consistently

maintained that trademark rights in color can only arise if the mark is distinctive of, or is capable of distinguishing, a single source of origin, and the evidential burden on the trademark owner is very high.

In each case, the issue of whether the color is or can be suffi-ciently linked to the commercial origin of the product is a question of fact. In the pharmaceutical field, the bar is set particularly high since it is not enough for the consuming public to know that a

particular drug comes in a spe-cific color and shape; it must be shown that physicians, pharma-cists and patients can and do use the trademark in choosing whether to prescribe, dispense or request the particular pharma-ceutical product.

Given the very high threshold of proof that is required to pro-tect color marks in Canada, the manner in which such marks are used and advertised is extremely important for trademark owners. Marketing of the product should include educating consumers and the relevant market by rein-forcing the association between the color of the product and its source of origin. Wherever

possible on the product, packaging and in all advertisements and promotion, a trademark ownership legend should appear identify-ing the trademark owner and indicating that the particular color is being claimed as a trademark. If the mark is being used under license, this fact should also be indicated on printed materials, and trademark licenses should include specific reference to color trademarks that are the subject of the license. Finally, given the sig-nificant enforcement advantage of registered trademark protection over common law rights in Canada, registered trademark protec-tion for color marks should be sought.

By Susan J. Keri, Gowling Lafleur Henderson LLP, Toronto, Canada; Veri-fier: Jennifer McKay, Gowling, Lafleur Henderson LLP, Ottawa, Canada

The color brown is registered in Canada for use in association with delivery and transportation services when applied to the visible surface of delivery vehicles and uniforms (such as this UPS truck) .

INTA Introduces Trademark MattersDelve into INTA’s newest online offering – Trademark Matters!

Trademark Matters provides a single point of access to the latest trademark news and case law information pulled from more than 4,000 sources, provided by LexisNexis® Publisher.

Exclusively for INTA members on the Members Only Site, this service allows you to quickly, and easily find trademark news and legislative information that will benefit your daily practice. You can even have email updates sent to your network computer or handheld wireless!

To access INTA’s Trademark Matters, visit www.inta.org/info/tmmatters.html.Questions? Contact library@inta.org.

Representing Trademark Owners Since 1878Vol. 60, No. 126 www.inta.org Vol. 60, No. 12 7

Registration CONTINUED FROM PAGE 1

would maintain clear guidelines for accepting com-plaints against imports, exports and goods in transit.

Furthermore, Dubai Customs hopes to partner with industry groups to create anti-counterfeiting task forces that would then educate its officials. It is also interested in signing a memorandum of understanding with other customs authorities, both locally and from around the world, to tackle the source of counterfeit goods.

Speakers at the roundtable included Director General Ahmed Butti and Advisor Alan Hall from the Dubai Customs Authority, Secretary General Michel Danet from the World Customs Organiza-tion, Senior Manager Abbas Makki from Interna-tional Trade & Tariff and Partner Hoda Barakat from Al Tamimi & Company. The roundtable was organized by INTA’s Anti-Counterfeiting & Enforcement Committee.

By Naeran Rubio, INTA, New York, New York, USA

system is more practical than giving effect to an earlier claimed date of first use.

The Canadian Intellectual Property Office quick-ly followed the Effigi decision with a Practice Notice published on May 19, 2005. The Practice Notice confirms that examiners will cite earlier-filed ap-plications as confusing, without regard to the date the trademark was first used in Canada. However, the Practice Notice also specifically indicates that an applicant with a later-filed application claiming an earlier date of first use or making known use, who wishes to oppose the earlier-filed application, will be able to request extensions of time in order to op-pose. At present, there is no provision for suspend-ing an application under Canadian practice.

It would appear that this decision of the Federal Court of Appeal will affect applications during prosecution practice but applicants will, nonethe-less, be able to oppose earlier-filed applications based on an earlier date of use in Canada. In light of this new development, it is important that Cana-dian applications be placed on file as quickly as pos-sible. However, it would also appear that Canada will, nonetheless, remain a “first to use” rather than a “first to file” jurisdiction.

Contributor: Keltie Sim, Smart & Biggar, Toronto, Can-ada; Verifier: Michelle Wassenaar, Johnston Wassenaar LLP, Toronto, Canada

Mark of the Month

With the recent announcement that a New Zealand court granted Cad-bury Schweppes, plc, a trademark registration for the color purple for its confections (in J.H. Wittaker & Sons Ltd v. Cadbury Limited, see INTA Bulletin, Vol. 60, No. 6) the victory gave the confectioner more reason to celebrate the 100th anniversary of its CADBURY DAIRY MILK candy bar.

Founder John Cadbury’s lifelong involvement with the Temperance So-ciety led him to provide tea, coffee and cocoa as an alternative to alcohol. Being a Quaker, Mr. Cadbury was prevented from entering a profession (because the universities were associated with the Established Church) or the military, so he became a trader of coffee, tea and cocoa from his small store in Birmingham, England.

In 1831, Mr. Cadbury began manufacturing cocoa products in an old malthouse in Birmingham. In 1878, Mr. Cadbury’s sons (Mr. Cadbury having retired in 1861) moved the company to its present site in Bourn-

ville, which was chosen in part because it sounded French – all things French were in vogue in the late 19th Century, especially for confection-ery.

John Cadbury and his sons were known for their social pioneering. His son George developed a series of housing developments to ensure that the “‘honest, sober, thrifty workmen” would have good homes. The Cadburys also instituted new work practices to benefit their employees, such as the five-and-a-half (instead of six) day workweek and closing the factory on bank holidays.

In the early 1900s, George Cadbury and his colleagues developed a new recipe and production methods for milk chocolate using full cream milk – not condensed milk, as was the standard for milk chocolate candy. In 1905, Cadbury introduced its new milk chocolate candy under the name CADBURY DAIRY MILK. Although other alternatives – like DAIRY MAID and HIGHLAND MILK – were considered, the name CADBURY DAIRY MILK ultimately won favor within the company.

The CADBURY DAIRY MILK candy bar was not always sold in the familiar purple and gold band style wrapper. When first introduced, the candy bar was wrapped in a pale mauve parcel wrap adorned with red script. It was not until 1932 that the CADBURY DAIRY MILK candy bar first appeared in its familiar foil and band wrapping.

Today, CADBURY DAIRY MILK candy bar is enjoyed in over 30 countries, and Cadbury is synonymous with chocolate confectionery.

By Margo Lynn Hablutzel, ACS Inc., Dallas, Texas, USA

Dubai CONTINUED FROM PAGE 1

CADBURY

Representing Trademark Owners Since 1878Vol. 60, No. 128 www.inta.org Vol. 60, No. 12 9

Committee CommentsThe Young Practitioners Task Force (YPTF) is one of the newest additions to INTA’s committees. Begun in 2004, YPTF was the brainchild of James McCarthy and Joseph Norvell, who developed the idea for the task force during a discussion at the 2002 INTA Annual Meeting in Washington, D.C.

Mr. McCarthy and Mr. Norvell, who at the time were associates at Brinks Hofer Gilson & Lione in Chicago, Illinois, brainstormed ways to get their colleagues more involved with INTA. They realized that not all new practitioners have the benefi t of senior colleagues who encourage participation in INTA.

“If you are a new person to INTA and you don’t get on a com-mittee right away, you can become overwhelmed,” comments Mr. McCarthy, now a partner at McDonnell Boehnen Hulbert & Berghoff LLP.

“INTA is such a huge organization that it can be daunting, especially at the Annual Meeting, for younger and new members,” added Mr. Norvell, now a partner at Brinks Hofer. Mr. Norvell also states that they wanted to “give [INTA] a smaller feel.” Mr. McCarthy believes that getting onto a committee is the key to be-ing involved with the organization.

“[When you join a committee,] you feel like you are really a part of the organization. When you get involved, you get to know at least ten people. You meet their friends at receptions. Then you get on a new committee and you get to know ten more people,” explains Mr. McCarthy.

Mr. McCarthy’s and Mr. Norvell’s challenge was to determine how to encourage those new to INTA, particularly young practi-tioners, to become more active and join an INTA committee.

Being in Chicago and realizing that most bar associations have successful young lawyer groups, they modeled their proposal on the Chicago Bar Association’s Young Lawyers Division, which has been an award winner nationally for many years. After developing their idea, Mr. Norvell and Mr. McCarthy drafted a memo and submitted it to INTA’s staff just before the 2003 INTA Annual Meeting in Amsterdam. As a result, the INTA governance created YPTF as a subcommittee of the Membership Services Committee for the 2004 – 2005 committee term.

Young Practitioners Task Force Focuses on Involvement in INTA

The fi rst task for the YPFT was to reorganize the New Member Orientation. What used to be only a short presentation turned into a real orientation with a networking reception after. Attendees have given very positive responses, especially because at the reception people make connections and have a face and name to recognize at future meetings and receptions. It was the start of Mr. McCarthy’s “met ten, and met ten more” plan.

All of the task force’s other projects are new endeavors for INTA, with the goal of making young practitioners comfortable in the organization sooner, as well as identifying and developing INTA leaders.

“Our greatest task [will be to] integrate newer members more quickly into the Association. This means we will retain more members for the long term and increase the quality of their INTA experience,” says Mr. Norvell.

To do this, the YPTF has proposed other projects that include a mentoring program, local networking receptions, and possibly a volunteer community service project at Annual Meetings. The most diffi cult part of the task force, both Mr. McCarthy and Mr. Norvell commented, is having to decide on which projects the task force should focus fi rst.

By Margo Lynn Hablutzel, ACS Inc., Dallas, Texas, USA

Joseph Norvell (left) and Young Practitioners Task Force Chair James McCarthy (right) devised the idea for the task force during a discussion at the 2002 Annual Meeting in Washington, DC

Trademarks: The Importance of Evidence and Other Burning Issues Forum

December 5 – 6, 2005Hilton Berlin, Berlin, Germany

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

Join INTA for an expansive two-day forum on vital trademark issues for European practice, with a special emphasis on evidence.

Learn how to:

• Properly present evidence before the Offi ce of Harmonization in the Internal Market (OHIM),

• Compare the use of evidence in trademark litigation among European Union (EU) Member States,

• Find out how to use surveys, and

• Gain timely knowledge on burning trademark issues including nontraditional marks, new EU legislation and initiatives, European Court of Justice case updates and the link between Community Trade Marks and the Madrid Protocol.

Join colleagues and experts from throughout Europe and the world for this exciting event!

Representing Trademark Owners Since 1878Vol. 60, No. 128 www.inta.org Vol. 60, No. 12 9

Law and Practice

On March 11, 2005, the new Chilean Industrial Property Law was published, harmonizing Chilean legislation with the Agreement on Trade-Related Aspects of Industrial Property Rights (TRIPS). The new law will come into effect once its respective regulations are published, prior to September 11, 2005.

The new law adds, among other things, new provisions regard-ing the requirement of trademark distinctiveness, allowing registra-tion of non-intrinsically distinctive marks, provided that they have acquired distinctiveness from their use in the national market.

Likewise, the law strengthens protection for famous and well-known trademarks, granting the right to mark holders to oppose other identical or similar marks for products or services different from and unrelated to those distinguished by said trade-marks, provided that there is some connection with the products or services distinguished by the famous and well-known trademark.

The law now protects geographic indications and designations of origin, previously limited to the wine industry. The Industrial Property Department will incorporate these into a Register of

CHILE

New Industrial Property Law Ensures TRIPS ComplianceGeographic Indications and Designations or Origin upon prior application by persons who comply with the law’s requirements.

It also strengthens the legal actions that may be exercised by owners of trademark rights. New civil actions are added entitling the owner of an infringed trademark right to request: a) the ceasing of acts that violate the protected right; b) compensation for dam-ages; c) adoption of measures needed to prevent any continuance of the infraction; and d) publication of the court decision at the defendant’s expense. The owner of the infringed right may demand all these actions, without detriment to the criminal actions already contemplated in the former law.

The amendments add new chambers and members to the Indus-trial Property Court in order to expedite the hearing and resolu-tion of the lawsuits in their second instance – such hearings being currently severely backlogged.

Contributor: Rodrigo Velasco S., Allessandri & Compania, Santiago, Chile; Verifier: Francisco Silva, Silva & Cia, Santiago, Chile

On remand from the Supreme Court, the Ninth Circuit, in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 2005 U.S. App. LEXIS 9037 (5/19/2005), reversed the district court’s grant of summary judgment for KP Permanent and remanded the case to the district court to determine whether KP Permanent’s use was protected by the “fair use” defense. As reported in the INTA Bul-letin of February 15, 2005, the Supreme Court held that a party asserting a fair use defense in a trademark infringement action does not bear the burden of negating likelihood of confusion.

Lasting Impression is the owner of an incontestable registra-tion for MICRO-COLORS and Design for permanent make-up. When Lasting Impression demanded that KP Permanent stop using the term “microcolor” for its permanent make-up products, KP sought declaratory relief and Lasting Impression counter-claimed for trademark infringement. The district court found the term to be generic and held that KP Permanent’s use was protected by the fair use defense. The Ninth Circuit reversed the decision, finding that the district court erred in not analyzing whether KP Permanent’s use caused a likelihood of confusion. The appeal to the Supreme Court and its remand to the Ninth Circuit followed.

UNITED STATES

Ninth Circuit Remands KP Permanent DecisionOn remand, the Ninth Circuit first determined that the words

“Micro-Colors” were protected by Lasting Impression’s incontest-able registration for MICRO-COLORS and Design. The Ninth Circuit held that KP Permanent did not provide sufficient evidence of the genericness of “Micro-Colors” to overcome the presumption of validity of the registered mark. In addition, Lasting Impression’s incontestable registration provided conclusive evidence that the mark is not descriptive and has acquired secondary meaning. Ac-cordingly, KP Permanent’s motion for summary judgment could not succeed on those grounds.

Turning to the relationship between fair use and likelihood of confusion, the Ninth Circuit, in following the decision in Shakespeare Co. v. Silstar Corp., 110 F.3d 234 (4th Cir. 1997), held that the degree of consumer confusion is a factor in evaluating the fair use defense. Thus, since genuine issues of material fact existed concerning consumer confusion and the fair use defense, the court remanded the case for further proceedings.

Contributor: Jessica S. Sachs, Harness, Dickey & Pierce, P.L.C., Troy, Michigan, USA; Verifier: Janice Housey, Roberts, Mlotkowski & Hobbes, P.C., McLean, Virginia, USA.

Representing Trademark Owners Since 1878Vol. 60, No. 1210 www.inta.org Vol. 60, No. 12 11

Law and Practice

On March 22, 2005, the Colombian Trademark Office (Superin-tendency of Industry and Commerce) rendered its opinion on the issue of whether or not a trademark owner may request a declara-tion of fame of its trademark from this administrative authority separately from an opposition to a trademark application or cancel-lation of a trademark registration based on fame.

In the opinion, the Colombian Trademark Office stated that the extension of its legal capabilities are limited by Colombian Law and its Constitution. It is illegal for the Office to exceed its functions by issuing a declaration that a trademark is famous outside the bound-aries of the Supranational Law (Decision 486 of the Andean Com-munity). That limitation is due to the fact that the law expressly provides certain proceedings where the issue of famous marks is to be addressed. For example, in article 136 of Decision 486, a trade-

COLOMBIA

Declaration of Fame Not Available Independent from Opposition or Cancellation Proceedings

mark owner can file an opposition against a trademark application alleging that the same is confusingly similar to his famous mark.

In limited situations, such as oppositions to trademark applica-tions and cancellations of trademarks based on fame (Article 235 of the Decision 486), the administrative authority can assess the evidence provided by the owner of the famous mark in compliance with article 228 of Decision 486, and proceed to declare the sub-ject trademark as well known with all the prerogatives pertaining to that type of mark. The Office cannot issue declarations of fame outside of the mentioned proceedings, thus limiting the opportu-nity of trademark owners to obtain such declarations.

Contributor: Fernando Triana, Triana, Uribe & Michelsen, Bogotá, Colombia; Verifier: Jimena Escobar-Uribe, Escobar-Uribe Asociados, Bogotá, Colombia

CHINA

Trademark Gets Lost in TranslationOn December 20, 2004 the Beijing No 1 Intermediate People’s Court upheld the decision of the Trademark Review and Adjudi-cation Board on the trademark application for ENVACAR, filed by Pfizer in 2001, and ruled that according to the definition and translation provided by the Modern English-Chinese Pharmaceuti-cal Dictionary, the term “envacar” has become a generic term for a type of anti-hypertension drug in China and thus is not eligible for registration as a trademark in China.

The central issue was whether “envacar” is a generic term in the Chinese language. Pfizer alleged that this definition is inaccurate and has no authority, as “envacar” is a fanciful word that has been registered as a trademark in a number of jurisdictions. The court found that Pfizer did not provide sufficient evidence to support this claim.

This ruling implies that a distinctive term can lose its distinctive-ness through mistranslation, and trademark owners now face the unprecedented danger that a trademark protected in some juris-dictions can become a generic term in other jurisdictions simply through inaccurate translation.

Contributor: Connie Carnabuci, Freshfields Bruckhaus Deringer, Hong Kong; Verifier: Mr An Xiaodi, An, Tian, Zhang & Partners, Beijing, PRC

IRELANDIrish Patents Office Changes Practice on the Fax Filing of Trademark ApplicationsEffective May 17, 2005, all trademark applications received by the Irish Patents Office by fax after 4:15 p.m. on any working day have been allocated a filing date as of the next working day rather than that of the receipt date.

Prior to this change, all faxed applications were automatically accorded the date of receipt as the filing date even where such applications were received after 4:15 p.m., when the Patents Of-fice officially closes for business.

The Patents Office has concluded that the previous practice was misconceived since it failed to have regard to the provisions of Rule 77(1) of the Patent Rules 1992, which makes it clear that the Office will be open to the public for the transaction of busi-ness during weekdays between the hours of 9:45 a.m. and 4:15 p.m. but shall not be otherwise open.

Source: Bernadette Walsh, MacLachlan & Donaldson, Dublin, Ireland; Verifier: Michael Shortt, Tomkins & Co, Dublin, Ireland

Representing Trademark Owners Since 1878Vol. 60, No. 1210 www.inta.org Vol. 60, No. 12 11

News BytesJapanese manufacturer Sony has taken U.K. independent retailer ElectricBirdland to Japan’s High Court over unauthorized import and selling of Sony’s handheld PLAYSTATION portable game console in Europe before its official release. Although Sony delayed its European launch of the game console, due to supply shortages, ElectricBirdland has been importing the brand from Japan and America and selling them in Britain since the beginning of the year. – The London Times

Colombian coffee growers have become the first non-European food producers to seek protection for their product under European Union (EU) geographical indications (GIs) rules. The National Federation of Coffee Growers of Colombia applied to add, on June 8, CAFÉ DE COLOMBIA to the EU’s list of protected food names. – Associated Press Financial Wire

Chanel Inc. has brought a suit against Internet marketer Aperfect-gift-4-U.com for selling fake handbags bearing the CHANEL name. The online retailer sells products bearing the names of well-known fashion houses, but displays a prominent disclaimer that warns that the items are replicas and “can be used for entertainment and novelty purposes only.” Chanel asserts that Aperfectgift-4-U.com is selling inferior-quality goods that are exact replicas of Chanel’s goods. – St. Louis Post-Dispatch

Mattel Inc. is seeking to block Quebec-based, adult-oriented Barbie’s BBQ restaurant from registering BARBIE’S and design as a trade-mark for restaurant and catering services in Canada. Mattel contends that allowing the registration would create confusion in the minds of consumers who might get the impression that the restaurants are linked to the famous doll. The restauranteur notes that the name refers to the Canadian term for Bar-B-Q, which is “barbie.” – The Lawyers Weekly

Air France has won a cybersquatting case against Virtual Dates Inc., which registered the domain name AirFranceSucks.com. The WIPO panel concluded that adding the word “sucks” to the trade-mark would lead non-native English speakers to confuse the two. – Financial Times

U.S. food company Hormel has applied for a European Union (EU) trademark to use the SPAM brand name for a range of computer and network services, including one designed to suppress unsolicited commercial emails. If the application is granted, Hormel may be able to stop anyone in the EU from using the term “spam” to refer to junk email. – Centaur Communications Ltd.

Cartier and Cartier International BV have been granted a prelimi-nary injunction against Dallas-based Symbolix Inc. to prohibit the jeweler from altering and selling CARTIER watches. Symbolix was accused of altering the CARTIER watches by mounting diamonds on the bezels and cases to simulate the company’s more expensive white gold CARTIER TANK FRANCAISE model. –Women’s Wear Daily

For more details, visit Trademark Matters on the Members Only Site, accessible through INTA’s website at www.inta.org/tmmatters.html. Trademark Matters provides pre-built news feeds pulled from more than 4,000 news sources to enable practitioners to conveniently access the most up-to-date trademark information.

BRAZIL

PTO to Abolish Printed Official BulletinRecently, the Brazilian PTO enacted a new regulation ter-minating the distribution of the printed Official Bulletin in favor of an electronic CDROM version.

The announcement was made on June 14, 2005, in the Brazilian PTO’s Official Gazette, Diário Oficial da União. According to the announcement, Resolution 117, of June 10, 2005, formally institutes the electronic Bulletin as the only format for publishing the PTO’s acts and decisions. According to this Resolution, access to the electronic Bulletin is free of charge and users are authorized to reproduce it, provided reproduction is not for profit.

Resolution 117 has ignited controversy among lawyers, trademark owners and IP practitioners’ associations in Brazil who favor retaining the distribution of the Official Bulletin’s printed form. Among other reasons, Bulletin subscribers are concerned that the “electronic Official Bulletin” will not con-tain all the necessary information, such as design elements of composite and design marks.

Contributor: Cesar Carvalho, Veirano Advogados, Rio de Janerio, Brazil; Verifier: Rodrigo Borges Carneiro, Dannemann Siemsen Bigler & Ipanema Moreira, Rio de Janeiro, Brazil

CROATIA

New Law on Representation Before the State IP Office Enacted in CroatiaThe Law on Representation in the Field of Industrial Prop-erty was enacted on April 22, 2005, and will enter into force on August 1, 2005.

This is the first Croatian statute regarding representation in the field of industrial property. The only existing provi-sions regarding this issue were inherited from the former state and merely outlined in the present IP laws.

The legislation, for the first time, comprehensively regu-lates representation before the Croatian State Intellectual Property Office. The basic principal regarding mandatory en-gagement of Croatian representatives by foreign IP applicants has remained unchanged.

The law anticipates two types of IP attorneys – patent attorneys and trademark attorneys. In order to comply with the new requirements, an interested person (with certain qualifications) will be obliged to pass an exam, which is to be further regulated in special regulations that the Ministry of Science, Education and Sports propose to enact within six months after the law enters into force.

Source: Narodne Novine – Official Gazette of the Republic of Croatia – No. 54/05; Contributor: Davor Boškovic, Producta Ltd., Croatia; Verifier: Tibor Ivanovic, State Intellectual Property Office of Croatia, Croatia

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

July 11 – 22, 2005Roundtable: Advanced TTAB Procedure and IssuesVarious U.S. Cities

September 12 – October 8, 2005Trademark Basics – An E-Learning Program

September 8 – 9, 2005 Worldwide Forum on Marks and DesignsVancouver, British Columbia, Canada

September 12 – 13, 2005 Trademarks in Cyberspace Forum Vancouver, British Columbia, Canada

September 18 – 21, 2005 Trademark Administrators ConferenceChicago, Illinois, USA

December 5 – 6, 2005Trademarks: The Importance of Evidence and Other Burning Issues Forum Berlin, Germany

EDITORIAL BOARDTo contact a member of the Editorial Board, send an email to the managing editor at bulletin@inta.org.

Editor-in-ChiefTrevor Stevens, Davies Collison Cave

Senior EditorMary De Longis, Nautica Enterprises, Inc.

Executive Editor: Law & Practice, Middle East, Africa, Pacific RimKay Rickelman, Spoor & Fisher

Executive Editor: Law & Practice, Europe and Central AsiaRichard Penfold, DLA

Executive Editor: Law & Practice, AmericasJennifer Van Kirk, Lewis and Roca LLP

Executive Editors, FeaturesAmanda Laura Nye, King & SpaldingAdriana Casati, Berkemeyer

Executive Editor: Online ArticlesPatricia A. Wilczynski, Wilczynski Brozek Law

Executive Editor: Special ReportsBrian Winterfeldt, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

STAFFExecutive DirectorAlan C. Drewsen, International Trademark Association

Director, Publishing Randi Mustello, International Trademark Association

Managing Editor, INTA BulletinNaeran Rubio, International Trademark Association

Designer Katie Frichtel, International Trademark Association

OFFICERS & COUNSELPresidentAnne Gundelfinger, Intel Corporation

President ElectPaul W. Reidl, E. & J. Gallo Winery

Vice PresidentRhonda Steele, Mars, Incorporated

Vice PresidentDee Ann Weldon-Wilson, Exxon Mobil Corporation

TreasurerScott E. Thompson, GlaxoSmithKline

SecretaryRichard Heath, Unilever P.L.C.

CounselLynda E. Roesch, Dinsmore & Shohl L.L.P.

INTA Department Email AddressesExecutive Director: executivedirector@inta.orgAdministration & Finance: adminfinance@inta.org Customer Service: customerservice@inta.orgPrograms: meetings@inta.orgINTA Bulletin: bulletin@inta.orgJob Bank: jobbank@inta.orgMembership: membership@inta.orgPublications: publications@inta.orgPublic Policy: tmaffairs@inta.orgPublic Relations: publicrelations@inta.orgRoundtables: roundtables@inta.orgSponsorship & Exhibitions: sponsorship@inta.orgThe Trademark Reporter®: tmr@inta.org

© 2005 International Trademark Association

Mark Your Calendars

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

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

interest. The INTA Bulletin primarily relies on members of the INTA Bulletin Committee

and INTA staff for content but also accepts submissions from others. The INTA Bulletin

Editorial Board reserves the right to make, in its sole discretion, editorial changes to

any item offered to it for publication.

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