BulletinThe Voice of the International Trademark Association February 15, 2009 Vol. 64 No. 4

IN ThIs Issue INTA surveys show Importance of harmonized eu Criminal MeasuresIn 2005, the European Commission proposed a Draft Directive on Criminal Measures Aimed at Ensuring the Enforcement of IP Rights, which—if adopted—would significantly strengthen criminal enforcement for IP in-fringements in the European Union. INTA has been generally supportive of this legislative ini-tiative, while maintaining that such harmoniza-tion should focus solely on counterfeiting and piracy so as not to risk affecting IP disputes that are civil in nature. In April 2007, the European Parliament adopted its first reading of the Draft Directive, but further actions and discussions on its adoption by EU Member States in the Council of Ministers have been put on hold.

Through its EU Subcommittee, INTA’s Anti-Counterfeiting & Enforcement Com-mittee (ACEC) has been monitoring the issue and engaging with the relevant EU institutions throughout the decision-making process. On December 2, 2008, the Subcommittee co-or-ganized a roundtable on criminal measures in the European Union. Attendees included rep-resentatives from EU member states and from the European Commission.

Roundtable participants discussed the status of the Draft Directive and the importance of harmonizing criminal measures across the EU in order to more effectively combat counterfeit-ing. Special attention was given to two surveys conducted by INTA’s Criminal Sanctions Task Force in the autumn of 2008: criminal proce-dures in each of the EU Member States from a law practitioner perspective and brand owners’ experiences in criminal enforcement of their IP rights in the European Union. Major brand owners representing a cross-section of indus-tries and law firms responded to the surveys.Key findings include:

• A number of challenges in bringing and suc-cessfully prosecuting criminal cases against counterfeiters were cited by all respondents. Obstacles include: low penalties, prosecu-tors’ lack of interest or knowledge; poor or imprecise interpretation of laws; lack of a harmonized definition of counterfeiting.

• Most brand owners believed that adoption of the Draft Directive would improve their ability to bring criminal actions against counterfeiters in the EU. But, while strong and consistent laws are needed, enforcement was identified as a key element for successful criminal prosecution of counterfeiters.

• All EU members except Cyprus and Luxem-bourg criminalize trademark counterfeiting.

• All 27 member states require a certain “state of mind” for an act to constitute criminally sanctioned trademark infringement.

• Although member states’ criminal laws ap-pear to provide consistent types of penal-ties, there is disparity between the level of sanctions applied to infringers, both in the statutes and in their application by criminal judges. Greece and the United Kingdom provide the highest maximum sentences; Denmark and Ireland provide the lowest.

The surveys generated much interest with the officials in attendance, who requested further information and expressed interest in further discussing these and related issues. The officials indicated that although additional internal dis-cussions would continue, little progress should be expected until after the Lisbon Treaty is rati-fied as a first step to clarifying the EU institu-tions’ shared competence in criminal matters. As part of internal discussions, the EU may be looking also at other opportunities to address criminal enforcement within member states. In addition, it remains to be seen what impact the negotiations on the Anti-Counterfeiting Trade Agreement (ACTA) will have on the debate on harmonizing criminal sanctions.

In 2009, the INTA Criminal Sanctions Task Force plans to finalize the results of its survey and conduct additional roundtables with Euro-pean officials to discuss the Draft Directive and other issues related to criminal measures.

For more information about INTA’s work on criminal sanctions in the EU, contact INTA External Relations Manager for Anticounter-feiting Candice Li at cli@inta.org or INTA Europe Representative Christina Sleszynska at csleszynska@inta.org.

2 AssociAtion newsLast Chance to Renew Your INTA Membership!

Membership FAQsI am a member of INTA. Why is my name not listed in the print and online membership directory?

Welcome New Members

Member spotlightOlof FickertRick McMurtry

4 FeAtures

UDRP Hijacking: Avoiding an Involuntary Passage to India

Practical Tips for Filing Trademark Applications in Mexico

8 LAw & PrActiceChINARecognition and Protection of Well-Known Trademarks

New ZeAlANdIdentical or Similar Marks for Different Goods May Coexist

uNITed sTATesUSPTO Issues Final Rule Regarding Miscellaneous Changes to Trademark Rules of Practice

Representing Trademark Owners Since 1878February 15, 20092

INTA BulleTIN CoMMITTeeTo contact a member of the INTA Bulletin Committee, send an email to the managing editor at bulletin@inta.org.

ChairKay Rickelman, Spoor & Fisher

Vice ChairJanice Housey, Latimer, Mayberry & Matthews

Feature Articles: Members, Benefits & ServicesMary Donovan, Donovan & Yee LLPJoan Pinaire, Realogy Corp.

Feature Articles: Policy & PracticeGuy Heath, NabarroMona Lee, DW Partners

Law & Practice: AmericasDaphne Maravei, Blake, Cassels & Graydon LLPWalter Palmer, Pinheiro Palmer Advogados

Law & Practice: Asia–PacificConnie Carnabuci, Freshfields Bruckhaus Deringer

Law & Practice: Europe & Central AsiaSusie Arnesen, Sandel, Løje & WallbergVanessa Bouchara, Bouchara & Associés

Law & Practice: Middle East & AfricaStephen Goldberg, Spoor & Fisher

INTA BulleTIN sTAFFexecutive director Alan C. Drewsen

director, Publishing Randi Mustello

Managing editor, INTA BulletinJames F. Bush

Associate editor, INTA BulletinJoel L. Bromberg

designer Jesse Riggle

oFFiCErS & CounSELPresidentRichard Heath, Unilever P.L.C.

President electHeather Steinmeyer, WellPoint, Inc.

Vice PresidentGerhard Bauer, Daimler AG

Vice PresidentGregg Marrazzo, Kimberly-Clark Corporation

TreasurerToe Su Aung, BATMark Ltd.

secretaryBret Parker, Wyeth

CounselD. Peter Harvey, Harvey Siskind LLP

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication.

For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org.

INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.

© 2009 International Trademark Association

last Chance to Renew Your INTA Membership!

The only names listed in the print and online directory are a member company’s designee, paid additional directory listings (ADLs) and committee members.

If you have already renewed your membership, we thank you!For those of you who have not already renewed your organization’s INTA membership,

the membership has lapsed.To ensure that your INTA benefits such as your Directory listing and obtaining the

member rate to the Annual Meeting in Seattle, Washington, USA, are not interrupted, renew now!

If you are the designee for your organization, you can renew your membership now at www.inta.org/apps/renewal, where you can also print an invoice, add or delete employees from your organization and modify your contact information.

Questions? Email membershiprenewal@inta.org, call +1-212-768-9887, x 1725 or fax +1-212-768-1234

Membership FAQs I am a member of INTA. why is my name not listed in the print and online membership directory?

welcome New MembersABPI - Associacao Brasileira da Propriedade Intelectual, Rio de Janeiro, Brazil; ACUMASS, Paris, France; Albert Santillan & Meneses Law Offices, Makati City, Philippines; Alvaro Duarte & Associados, Lisbon, Portugal; Arzinger & Partners, Kiev, Ukraine; Baker & Daniels LLP, Chicago, IL, U.S.; Barrett & McNagny, Fort Wayne, IN, U.S.; Brema-Loyer, Paris, France; Bird & Bird, Shanghai, China; Brabners Chaffe Street LLP, Liverpool, Merseyside, U.K.; BRIGHTtalk, New York, NY, U.S.; BSFD Intellectual Property Agency Limited, Beijing, China; Burkhalter Kessler Goodman & George LLP, Irvine, CA, U.S.; BVI Financial Services Commission, Tortola, VG, British Virgin Islands; Cabinet Djamel Sator, Algiers, Algeria; Cam Trade Marks & IP Services, Cambridge, U.K.; Cambra La Duke & Co., Panama, Panama; Central International Law Firm, Seoul, South Korea; Courtois Lebel, Paris, France; Danfoss A/S, Nordborg, Denmark; Doland & Fraade, Los Angeles, CA, U.S.; Estudio Muñiz, Ramírez, Pérez-Taiman & Luna-Victoria, Lima, Peru; Furgang & Adwar, L.L.P., New York, NY, U.S.; Gomez & Bikker, Kralendijk, Bonaire, Netherlands Antilles; GÖRG, Cologne, Germany; INDOM, Paris, France; IPQ IP Specialists, Stockholm, Sweden; Isla del Campo, S.C., Mexico City, Mexico; Janet Gilbert Ricciuti, PC, Doylestown, PA, U.S.; Jiaquan Patent & Trademark Agency, Jiangmen, Guangdong, China; Kaplan Gilman & Pergament LLP, Woodbridge, NJ, U.S.; Khalid Daudpota & Co., Karachi, Pakistan; Knobbe, Martens, Olson & Bear, LLP, Seattle, WA, U.S.; Korea Intellectual Property Office, Seoul, South Korea; Langlet, Carpio Y Asociados, S.C., Mexico City, Mexico; Law Offices of Gary Machetta, Houston, TX, U.S.; Lic. Daniel Casco L. (Bufete Casco), Tegucigalpa, Honduras; Makhija & Associates, Thane East, India; Mongolian Trademark Association, Ulaanbaatar, Mongolia; Morgan, Lewis & Bockius LLP, New York, NY, U.S.; Mourant du Feu & Jeune, Georgetown, Cayman Islands; Navigant Consulting, Inc., Chicago, IL, U.S.; NeuStar, Inc., Sterling, VA, U.S.; NJQ & Associates, Tripoli, Libya; Novartis Pharmaceuticals Corporation, East Hanover, NJ, U.S.

AssociAtion news

www.inta.org �Vol. 64, No. 4

Rick McMurtry is currently Assistant General Counsel at Turner Broadcasting System, Inc., the company that brings you CNN, The Cartoon Network and TBS. Rick is tasked with over-seeing all trademark, domain name and advertising matters for the Turner networks and properties worldwide.

Actively involved in INTA since 2000, Rick has been a speaker at numerous INTA conferences, including the Trademark Administrators Conference (he was also on the Program Committee). He has also been a member of the Regular Members Committee and now is on the Discovery Practices and Procedures Subcommittee of the Enforcement Committee.

Life started for Rick in Old Hickory, Tennessee. Shortly after that, he was crowned Manly Master of Middle Tennessee at the age of 5. This spurred him on to a brief musical theatre career, which included playing Barnaby Tucker in Hello, Dolly! and Seymour in Little Shop of Horrors. Continuing to take the Volunteer State by storm, Rick became the Tennessee State Speech & Debate Champion in 1986. After graduation in 1991 from Belmont University, where he was student government president, he chose a law career: “I did well on the LSAT, and assumed I must be cut out for it.”

Ever loyal to Tennessee, Rick attended Vanderbilt University School of Law, where he served as Se-nior Student Writing Editor of the Law Review and was a member of the Moot Court Board. He graduated in 1994 and then served as Judicial Law Clerk for Judge Robert L. Echols for the U.S. District Court for the Middle District of Tennessee.

Rick started practice at Howrey & Simon in Washington, D.C., as an IP litigator, but after two patent cases, “one on heat-shrinkable plastic film and the other on digital system satellite receivers, I begged to be put in another practice group.” And thus, Rick became a trademark attorney.

Rick left the nation’s capital to move to Atlanta, Georgia, for a job with the law firm Powell, Goldstein. Two years later, he joined Turner. He currently lives in Atlanta with his partner, Randall; their one-year-old son, Ryan; and two dogs, Riley and Daisy.

Locally, Rick serves on the board of the Pro Bono Partnership of Atlanta. He has also been involved with other charities, such as Human Rights Campaign, Fashion Cares and Atlanta Pet Rescue.

When not immersed in trademarks and charitable work, Rick enjoys “eating lots of good food, and then running, swimming and ski-ing.” He has run in three marathons and is training for his fourth. He also claims to be a fierce SCRABBLE player, “but rarely can con anyone into playing with me.”

Rick told us that he spends most of my free time “trying to teach my son to say his name, point to his nose, recognize the color green and other important things to know in life.”

olof Fickert has practiced trademark law for well over 20 years. He is currently a partner with Herrero & Asociados in Spain and works in the firm’s Madrid office. He has served as the firm’s Director of Patents since 2004 and is also in charge of the firm’s international promotion activities, particularly in Germany.

Olof was born and raised in Germany. At the urging of his father, a well-known German lawyer and law professor who wanted each of his five children to learn three different languages (Olof was already conversant in English and French), Olof went to Madrid where he fell in love with the Spanish culture, language and people. He decided to study medicine in Spain; a fellow medical student, who later became his wife, provided him with the opportunity to work part-time as a legal translator in an intellectual property law firm while continuing his medical education. Olof found that he was drawn to the law, so, casting aside his medical career, he decided to enter the legal field. While combining his studies with the daily IP practice, he saw the importance that brands play in the marketplace and was even more drawn to that area of practice.

Olof joined the Herrero firm in 1989 and attended his first meeting of the INTA (then known as the USTA), in New Orleans in 1993. He enjoyed meeting colleagues from around the world, learn-

ing about practical issues regarding the IP profession and, generally, viewing the field from a more global perspective. Indeed, this global perspective is one that is reflected in Olof ’s own firm and in his practice.

During 2006–2007, Olof chaired the Madrid System Subcommittee of the Trademark Office Practices Committee. His efforts involved sharing his views and expertise regarding the Madrid System with local Latin American business people. He traveled to Latin America to meet with government officials, gave lectures to business and legal groups on the benefits of the Protocol and represented INTA as an NGO in the Ad Hoc Working Group in Geneva. In 2007, he was invited by WIPO to give lectures on the Madrid Protocol in Geneva—provid-ing the perspective of an experienced practitioner in the field. That he came from Madrid was an added bonus!

Olof found this work demanding but rewarding in many ways, because it allowed him to focus on what he sees as one of the most im-portant issues in trademarks today: the harmonization of trademark laws by means of international and regional treaties.

His work allowed Olof to pursue another of his passions apart from sports—travel. Now, with the end of his term as subcommittee chair, he hopes to devote more time to leisure travel than to business travel alone.

By: Marie Lussier, chitiz Pathak LLP, toronto, ontario, canada, intA Bulletin Features–Members, Benefits & Services Subcommittee

By: Ken Taylor, Marksmen Inc., Chapel Hill, North Carolina, USA, intA Bulletin Features–Members, Benefits & Services Subcommittee

MeMBer SpoTlIgHT

Representing Trademark Owners Since 1878February 15, 20094

udRP hijacking: Avoiding an Involuntary Passage to India

Your client alerts you to a new infringing domain name registered by a company with an address in India. As it turns out, the regis-trar is also located in India. Your client asks you to file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP). Ordinarily, you might think this is an economical and expeditious approach to resolving your client’s infringement claim and recovering the domain name. However, in light of the jurisdic-tion rules under the UDRP, you might want to think twice before filing—particularly if the registrar involved is the one behind the UDRP appeals in India.

Under the UDRP, if your client receives a decision ordering the domain to be transferred, any challenge to that decision must be filed within 10 days. (See UDRP, Paragraph 4(k).) The procedural rules under the UDRP also require that when filing a complaint, the trademark owner must consent to the jurisdiction of the courts where the principal office of the registrar is located or where the do-main registrant is located (as specified in the Whois database) with respect to any challenges to a decision issued under the policy. (Rules for Uniform Domain Name Dispute Resolution Policy, Paragraph 3(b)(xiii); emphasis added.) What if it turns out that the two loca-tions (registrar and registrant locations) are the same and are both in a foreign country where your client does not want to litigate? Based on some recent developments, it appears this is exactly what this Indian registrar must have contemplated.

According to the transcript of the ICANN Meeting in Lisbon in March 2007, at a program entitled “Tutorial – How the Marketplace

for Expiring Names Has Changed: Why names aren’t released and what is the impact on consumers and other interests? Are registrars becoming domain name portfolio owners?,” the speaker (Rob Hall, the CEO of Momentous.ca) offered the following comment:

[W]e have a very inventive registrar out of India that’s offer-ing a service to domainers at the last traffic conference that says, look, I’m a registrar in India, I will incorporate you a registrant in India, and I will put all your domains in that registrant with our registrar, so that if anyone ever [files a] UDRP, even if they’re successful, the only court you can turn to or go to is the Indian court. And, by the way, I’ll even start that action for you, they claim, and I guarantee you it’ll take at least ten years to get through any Indian court. So you can continue to own and operate that domain for ten years, even if you lose a UDRP. (www.icann.org/en/meetings/lis-bon/transcript-tutorial-expiring-25mar07.htm)

While Mr. Hall did not identify the particular registrar making this offer, it appears that the same registrar in India mentioned in the opening hypothetical is actually behind this scheme. In fact, according to the online records of the High Court of Bombay in Mumbai, as of the date of this publication, certain domain regis-trants have filed approximately 60 lawsuits against various brand owners who successfully prevailed in UDRP decisions. In each of these cases, the domain registrar is the same, and the plaintiffs are represented by the same attorney.

The court records also show that most of these suits have been filed by the same three domain registrants: one with approximately 23 lawsuits against brand owners, a second with 15 lawsuits, and,

By: Susan o’Neill, Hanson Bridgett llp, San Francisco, California, USA, Internet Committee, online Trademark Use Subcommittee

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This program is designed specifically for in-house professionals, and offers a

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FeAtures

www.inta.org 5Vol. 64, No. 4

more recently, yet another with 9 such lawsuits. It is unclear whether these plaintiffs are customers of the registrar or whether they are ac-tually associated with the registrar itself. All three of these registrants have addresses in the “Lokhandwala Complex,” which appears to be a large residential and commercial establishment in Mumbai; the Whois records show that the registrar also has an address in the Complex. The same attorney has further filed roughly 14 lawsuits on behalf of various individuals in India who have lost UDRP cases involving domains registered through the same registrar and who may even be connected to the registrar. As if the lawsuits weren’t enough, a few trademark attorneys have reported instances where, after the suits were filed, the registrar or the Indian plaintiff de-manded money from the brand owner, either as compensation for sending a copy of the complaint to the brand owner or for the do-main name itself.

With any UDRP proceeding, it has always been technically pos-sible that your client could be sued in another country, (i.e., if both the registrant and registrar are located there), and it is wise to con-sider this possible consequence before filing a UDRP complaint at any time. However, it is particularly problematic here where the registrar appears to be orchestrating this result, presumably as a way to make money for itself and its customers. And, it appears that the registrar has eliminated the usual disincentive for a registrant to file suit to challenge a decision, as it probably costs the registrant little or nothing, since the same attorney (presumably hired by this regis-trar) files a similar complaint in each case.

Making matters even worse, the current rules seem to allow the registrant to continue to own—and use—the domain name while the court case is pending. In India, it can take several years for cases to be decided, thereby allowing the infringer and registrar to con-

tinue to profit by monetizing the domain. Thus, although you and your client may think you have won a UDRP decision (and there-fore recovery of the domain name), your client may not have access to it for several years, while the registrant continues to make money from it.

If your client is a U.S. trademark owner that wishes to avoid this fate, one option it should consider is to bring a claim under the U.S. Anticybersquatting Consumer Protection Act (ACPA) instead. Under the ACPA, a U.S. trademark owner can bring a claim in rem against the domain name itself, in the jurisdiction (federal dis-trict court) where either the registrar or registry is located. With a non-U.S. registrar, there is no available federal district court, so the option is the court where the registry is located. For example, for .com domains, a claim could be brought in the Eastern District of Virginia, where Verisign, the .com registry, is physically located. If the action is successful, the court can issue an order directing Veri-sign to change the registrar from the registrar where the infringing domain was registered to the registrar of the plaintiff’s choice, who will then put the domain in the plaintiff’s name. While a lawsuit may seem more expensive initially than a UDRP complaint, it may be the best bet for a client to avoid being sued in India, and far less expensive in the long run.

Concerned trademark owners and their counsel should also con-sider submitting a written complaint regarding the particular regis-trar described in this article to the U.S. Federal Trade Commission (Katrina Blodgett at kblodgett@ftc.gov and/or Shaundra Watson at swatson@ftc.gov), the ICANN Governmental Advisory Commit-tee, the ICANN Board and the World Intellectual Property Orga-nization (Erik Wilbers at erik.wilbers@wipo.int and/or Eunjoo Min at eunjoo.min@wipo.int).

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FeAtures

Representing Trademark Owners Since 1878February 15, 20096

Practical Tips for Filing Trademark Applications in Mexico

The process of registering a trademark in Mexico is fairly straight-forward. As in other countries, however, there are legal requirements and practical issues that surprise foreign applicants. By planning ahead, you can avoid delay, expense and disappointment.

Basic Application Requirements

At a minimum, your Mexican counsel will need the following to file a trademark application with the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial, or IMPI):

• The applicant’s name, nationality and address.• The place where the goods are produced or the services are

rendered, if different from the applicant’s business address. If there are multiple locations, any one will do.

• If the mark contains a design element, a clear image, preferably in digital form.

• If the mark is a three-dimensional design, a series of digital photographs or drawings showing the mark from all sides.

• A list of goods or services.• If the mark has been used in Mexico, the date of first use.• If there is a priority claim, the country and date of first filing,

and the foreign application number, if available.

Several of these requirements are discussed in more detail below.

Identification of Goods or Services

An application may cover goods or services only in one class. Thus, an applicant seeking to protect a mark in more than one class must file multiple applications.

Mexico has adopted the Ninth Edition of the Nice Classification of Goods and Services. To avoid delay, entries from Nice Classi-fication should be used whenever possible in the list of goods or services.

Unfortunately, the Nice Classification Manual is not exhaustive. Moreover, many applicants claim priority on the basis of U.S. appli-cations that describe the goods or services in far greater detail than the Manual provides. If the application uses language not contained in the Manual, the examiner will often ask for clarification, and the applicant must pay additional fees if the application is amended.

The applicant may not claim “all goods” in a particular class. However, the application may recite the class heading (e.g., “appa-ratus for lighting, heating, steam generating…in Class 11”).

Does a registration that recites a class heading cover all goods in the class, or only those items expressly identified in the head-ing? The law is silent. To ensure maximum coverage, an applicant may recite the class heading, followed by any goods of particular interest, preferably described using terms from the Manual. While applicants in the United States must use limiting terms (“namely” or “consisting of”), IMPI allows the use of inclusive terms (“includ-ing” or “such as”). For example, “apparatus for lighting, heating, steam generating…including barbecue grills” would be acceptable in Mexico, but not in the United States. Conversely, the applicant may expressly exclude goods in order to avoid a direct conflict with a prior-registered mark.

Dates of First Use

Use is not required for trademark registration. However, the ap-plication must state whether the mark has been used in Mexico, and if so, the date of first use. Once the application is filed, the date cannot be amended.

If the application does not claim use, the earliest date on which the applicant can rely in a later priority dispute is the application filing date—or the foreign priority date, if there is one.

The applicant must identify a specific date (e.g., “April 10, 2006”). IMPI does not allow the sort of vague language often used in the United States (e.g., “at least as early as April 10, 2006”).

Further, the date of first use must be correct and supported by ev-idence. Article 151.III of the Industrial Property Law provides that a registration may be cancelled if it “was granted on the basis of false information contained in the application.” The courts have specifi-cally held that an incorrect date of first use is a ground for cancella-tion. ([P], R.T.F.J.F.A., Quinta Época, Año V, No. 55, Julio 2005, Pág. 70. Tesis: V-P-SS-664.) The legal standard is not “fraud,” as in the United States, but literal falsity. In other words, the registration may be cancelled even if the applicant made an honest mistake.

In a trademark invalidation proceeding, the registrant has the burden of proving the truth of the facts stated in the application. ([P], R.T.F.J.F.A., Quinta Época, Año VII, No. 77, Mayo 2007, Pág. 240. Tesis: V-P-2aS-673.) Thus, the applicant should main-tain invoices documenting its date of first use. Original invoices are preferable, since copies must be legalized or authenticated by a Mexican notary. Advertising, by itself, is not sufficient evidence of the applicant’s use or of its date of first use.

The courts are sometimes lenient if an error is trivial (a few days) and the registrant received no benefit from the error (e.g., if the applicant began using its mark before the date claimed in the ap-plication). However, you should not count on leniency. Read liter-ally—and Mexican statutes should always be read literally—Article 151.III requires cancellation regardless of whether an error is sub-stantial or trivial.

On the other hand, an applicant not claiming use need not dem-onstrate a bona fide or genuine intent to use the mark. The appli-cant’s intent or lack of intent to use the mark is irrelevant. Defensive registrations are perfectly legal, and often a good idea.

Priority Claims

An applicant claiming priority must file a certified copy of its country of origin application, and a Spanish translation where ap-propriate. These documents may be filed up to three months after the application is filed; however, they should be filed with the ap-plication if possible, to avoid prosecution delays and the payment of an additional government fee for late filing.

Powers of Attorney

The most common powers of attorney are:

• Special powers of attorney, allowing counsel to file and pros-ecute one or more applications before IMPI.

• General powers of attorney, allowing counsel to take any neces-sary action on the client’s behalf.

If the power of attorney is granted by a corporation, the person signing the document must identify the Board of Directors reso-

By: John M. Murphy and rodrigo Fernández guerra, Arochi, Marroquín & lindner, Mexico City, Mexico. Mr. Murphy is

a member of the intA Bulletin Features–policy & practice Subcommittee

FeAtures

www.inta.org �Vol. 64, No. 4

lution authorizing him or her to grant powers of attorney. In the United States and some other countries, there is no specific resolu-tion, since corporate officers may grant powers of attorney by virtue of their office. In this case, the document should identify the resolu-tion that appointed the signer as president, vice president, corporate secretary, etc.

Special powers of attorney do not require legalization. If the power authorizes your Mexican counsel to take actions regarding both present and future applications and registrations, he or she will record it in the General Register of Powers at IMPI. When filing a new application, he or she will simply refer IMPI to the power of attorney previously recorded.

General powers of attorney always require legalization. They are required for the following:

• Appeals;• Trademark invalidation, lapse or cancellation actions before

IMPI;• Administrative infringement actions before IMPI;• Civil actions for damages in state or federal court; and• Criminal counterfeiting actions.

A general power of attorney is very useful if the mark is likely to be counterfeited, since Mexican counsel may need to file a criminal complaint on very short notice. He or she cannot do this without a power of attorney.

Filing Procedure and Fee Payment

Trademark applications are filed on a standard paper form pro-vided by IMPI. Most applications are filed by hand. Alternatively, the applicant may fax the application to IMPI and follow up with a hard copy on the next business day, along with proof of facsimile transmission.

Ordinarily, your Mexican counsel will pay trademark fees at one of the banks where IMPI maintains an account. The bank issues a payment receipt, which is then filed with the trademark application. This takes time, and most Mexican banks close around 5:00 pm. (One major bank currently stays open until 7:00 p.m.)

What happens if you ask your Mexican counsel to file an applica-tion after 7:00 p.m. on the last day of a priority period? IMPI has an online system for payment of fees, which in theory can be used at any hour. However, the system is unreliable and should be used only as a last resort.

In the past, applicants sometimes filed the application by fax and paid the fee at a bank on the next business day. However, a recent appellate decision states that the fax transmission date counts as the application filing date only if the applicant pays the filing fee before transmitting the application. ([TA]; 9a Época; T.C.C.; S.J.F.; XX-VII, Julio de 2008; Pág. 1907.) This holding will become binding precedent only if it is ratified in later cases.

Examination and Registration

IMPI conducts a two-part examination of trademark applica-tions. First, applications are reviewed for compliance with formal requirements. Once these requirements are satisfied, IMPI decides whether there are substantive grounds for refusal—for example, whether there are prior, confusingly similar marks.

There is no opposition procedure, so the mark proceeds directly to registration once the examination process is finished. Under the

Industrial Property Law, however, a third party may file an invalida-tion or nullity action within certain time periods under the follow-ing circumstances:

• At any time, if the registration was granted in violation of the law in force at the time of registration (IP Law, Article 151.I);

• Within three years, if the mark is confusingly similar to anoth-er mark that has been continuously used in Mexico or another country since before the registrant’s application filing date or the date of first use declared in the application (Article 151.II);

• Within five years, if the registration was granted on the basis of an application that contained false information (Article 151.III);

• Within five years, if the examiner should have refused registra-tion on the basis of a prior, confusingly similar registered mark (Article 151.IV);

• At any time, if applicant was an agent, representative, autho-rized user or distributor of a foreign trademark owner and ob-tained the registration in bad faith (Article 151.V).

In addition, a third party may request an administrative declara-tion of lapse at any time if the mark has not been used during the three years preceding the request (Article 152.II), or request cancel-lation of the registration at any time, if the mark has become generic (Article 153).

On average, it takes six or seven months to register a trademark in Mexico. However, some registrations are issued in a matter of weeks. By planning ahead, applicants greatly increase the chances of a speedy and successful result.

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FeAtures

Representing Trademark Owners Since 1878February 15, 2009�

In November 2008, the Supreme People’s Court issued for public consultation a new draft of the “Interpretation of Several Issues Re-garding Application of Laws in Recognition and Protection of Well-Known Trademarks in Trademark-Related Civil Disputes.” It aims to set the criteria for the recognition of well-known trademarks and to standardize the remedies available for trademark owners.

Scope of RecognitionThe draft interpretation reflects the principle that the recognition

of well-known trademarks is an approach to rendering broader pro-tection to trademarks, though not as the subject claim in litigation proceedings. A court will determine whether a disputed trademark is well known only when its protection is conditional on its well-known status. The draft interpretation states that the courts will not recognize well-known trademarks where (1) the establishment of infringement by a defendant is not conditional upon the recogni-tion of the well-known status of the trademark or (2) the defendant will not be found to have infringed even if the disputed trademark is recognized as well known.

Burden of ProofIn compliance with the general rule in the Civil Procedure Law,

the draft interpretation confirms that a plaintiff claiming to own a well-known trademark bears the burden of proof. The burden for proving well-known trademark status is heavier than the usual bur-den of proof in that:

• The plaintiff bears the burden of proving the well-known status of its trademark even if the defendant acknowledges its status.

• If the plaintiff produces evidence that the trademark has been recognized as well known in earlier proceedings, such as admin-istrative proceedings or previous litigation, the burden of proof will not be transferred to the defendant to rebut the earlier rec-ognition. If the defendant objects to the earlier recognition, the plaintiff must produce evidence that the disputed trademark re-mains well known.

• Even if a trademark is generally known to the public, the court will not assume that it is well known. The plaintiff must provide evidence to prove that the trademark is well known, although the standard of proof may be lowered at the court’s discretion.

Scope of Relevant PublicThe draft interpretation defines “well-known trademark” as

“a trademark generally known to the relevant public in China.” As China is a large and diverse country with distinct population groups, in order to be recognized as well known, the disputed trade-mark need not be generally known in all regions—it is sufficient that the trademark is well known to people from a significant num-ber of regions. Nor is it necessary for the trademark to be generally known to all people; rather, it is sufficient for it to be well known to specific groups of people.

Also, the draft interpretation confirms that if a trademark is well known in foreign jurisdictions, that fact may be considered when determining whether such a trademark is well known in China.

Granting Injunctive ReliefThe grounds upon which injunctive relief with respect to well-

known trademarks can be granted are broader than those for trade-marks that are not well known. Injunctive relief is available if there

ChINARecognition and Protection of well-known Trademarks

is an adverse impact on the goodwill of the owner of the well-known trademark or confusion as to:• The origin of the goods or services bearing the third-party trade-

mark;• The existence of a licensing arrangement between the owner of

the well-known trademark and the third party;• The existence of an affiliate relationship between the owner and

the third party; or• The existence of a relationship between the owner and the prod-

ucts or services bearing the third-party trademark.

Determining Injunctive ReliefThe draft interpretation specifies the factors to be considered

when determining whether a third-party trademark causes confu-sion with a well-known trademark used in connection with differ-ent goods or services. These factors include:

• The distinctiveness of the well-known trademark; • The fame of the third-party trademark; and • The relevance and connection between the goods or services bear-

ing the well-known trademark and the third-party trademark (e.g., whether the goods or services are substitutable or comple-mentary or are related to the same industry).

In particular, the third-party trademark may not be considered to cause confusion with the well-known trademark where the latter is well known only to a specific group of people and the product or service bearing a third-party trademark that is similar to the well-known trademark does not target the group in question.Abuse

Injunctive relief will not be granted to the owner of a well-known trademark if the relevant third-party trademark has been registered for more than five years and was registered in good faith or if the well-known trademark was not well known when the relevant third-party trademark was registered.

Other ConsiderationsTrademark owners should note the following points:

• It is important to keep records of marketing surveys, finance books, media reports and other information that could be useful in proving that a trademark is well known.

• For some specialized brands that target professionals in specific industries, if the owner proves that a trademark is well known among these professionals, the trademark can be recognized as well known. However, the use of a similar trademark on goods or services targeted at unrelated groups will not be prohibited.

• If a third-party trademark is registered before another trade-mark becomes well known, the owner of the latter trademark may not prohibit the use of the third-party trademark but, ac-cording to the “Judicial Interpretation of the Supreme People’s Court on Certain Issues Related to the Laws Applicable to Civil Unfair Competition Cases,” may still require that the third-party trademark be used together with certain statements or marks to distinguish its source from that of the well-known trademark.

Contributors: Connie Carnabuci, Yonnie Fung and Victoria White,Freshfields Bruckhaus Deringer, Hong Kong; Verifier: David Tian, An, Tian,

Zhang and partners, Beijing, China. Ms. Carnabuci is chair of the intA Bulletin law & practice–Asia-pacific Subcommittee.

LAw & PrActice

www.inta.org 9Vol. 64, No. 4

New Zealand’s High Court has upheld an appeal from an opposi-tion decision relating to registration of the trademark TICK TOCK for tea goods. Wistbray Ltd. v. Ferrero S.p.A., No. HC WN CIV-2007-485-460 (H.C. Dec. 11, 2008), concerning NZ application No. 733359 for TICK TOCK in Class 30.

Ferrero’s opposition was based upon its prior registrations and use of its well-known trademark TIC TAC, which had been registered in New Zealand since 1973 and used since 1993, in relation to mint candy. The Assistant Commissioner upheld the opposition on the basis that Wistbray’s use of the TICK TOCK mark was considered likely to deceive or cause confusion, and also that registration of the TICK TOCK mark would be contrary to Section 25(1)(c) of the Trade Marks Act 2002, as the TIC TAC mark was well known in New Zealand.

Wistbray’s appeal was successful, and the judge ordered that the TICK TOCK application proceed to registration. In reaching this conclusion, the judge made two interesting points in assessing what is required to demonstrate a “likelihood of confusion” and “connec-tion in the course of trade.”

Likelihood of Confusion

To assess whether use of the TICK TOCK mark for tea goods would be likely to deceive or cause confusion (based on the existing reputation of Ferrero’s TIC TAC trademark), the judge considered differences between tea and mint candy. The court applied the well-established tests set out by New Zealand’s Court of Appeal in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty Ltd ([1978] 2 NZLR 50) and placed “considerable weight on the dissimilarity of the goods involved,” noting that candy mints and tea are “of a starkly different type,” to support the view that there was not sufficient likelihood of confusion, and he allowed that ground of the appeal.

The need to consider the relevant goods or services when as-sessing the likelihood of confusion for a Section 17 ground of op-position in New Zealand recognizes that identical marks may be used by different parties for different goods and coexist in the New Zealand marketplace without confusion, as reflected in the Trade Marks Register. For example, the New Zealand register includes the trademark TIP TOP for both ice cream and bread; DOVE for both soap and chocolate; BELL/BELLS for both tea and whiskey; and CROWN for beer, corned beef and removal services.

The court did, however, draw a distinction between trademarks that consist of invented words and those of ordinary English words, noting that “any made-up word is likely to convey that it is distinc-tive to one trade mark owner” (emphasis added).

Connection in the Course of Trade

Ferrero had successfully argued that registration of the TICK TOCK mark would contravene Section 25(1)(c) of the Trade Marks Act, which essentially relates to well-known marks. However, the Assistant Commissioner’s finding did not explain whether use of the TICK TOCK mark for tea would “be taken as indicating a con-nection in the course of trade” between Wistbray’s tea and Ferrero’s TIC TAC mints, as required under Section 25(1)(c).

To determine what is required for there to be “a connection in the course of trade,” the court followed the reasoning of the English Court of Appeal in Intel Corp. Inc. v. CPM United Kingdom Ltd

New ZeAlANdIdentical or similar Marks for different goods May Coexist

([2007] RPC 35), subsequently appealed to the European Court of Justice (Case 252/07), which the judge considered providing “a useful contemporary analysis on the requirements under subsection 25(1)(c).” In the Intel case, the judge noted inter alia:

I would hold that a “link” requires more than such a tenu-ous association between the two marks. If a trade mark for particular goods or services is truly inherently and factually distinctive it will be robust enough to withstand a mere passing bringing to mind when it or a similar mark is used for dissimilar goods or services.

In its assessment of which factors should be taken into account, the court considered:

(a) Whether, having regard to the nature of the goods or services for which the later mark is used, the average con-sumer would consider that there is an economic connection between the owners of the two marks;(b) Whether the distinctiveness or repute of the earlier mark for the goods or services for which it is registered is really likely to be affected if the later mark is used for the specific goods or services covered by its registration (emphasis in original)…[I]t is very important that the harm or prospect of harm must be real and tangible. A mere possibility or assertion of damage is just too remote and would leave trade mark owners in too monopolistic a position. Trade mark law is there to protect a proper system of competition, not to pro-vide trade mark owners with overreaching rights which may obstruct trade.

In applying that approach, the court held that the dissimilarity between tea and mints was a strong indication there was not a trade connection between TICK TOCK tea and TIC TAC mints. While New Zealand consumers “might well have TIC TAC ‘brought to mind’ when confronted with TICK TOCK tea,” the court did not consider that such consumers would “go on and assume from the similarity of name that there was a connection between the produc-ers of the dissimilar products.”

Perhaps demonstrating a concern that trademark owners may be hypersensitive to the existence of similar marks in the wider mar-ketplace, the court went on to note that “a loyal buyer of TIC TAC mints is hardly likely to think less of that product (or its manufac-turer) because of an adverse experience with TICK TOCK tea.”

While the High Court’s decision is not groundbreaking, it does reflect the realities of the New Zealand marketplace.

Contributor: Nick Holmes, Davies Collison Cave, Melbourne, Australia; Verifier: philip McCabe, McCabe & Co, Wellington, New Zealand

LAw & PrActice

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www.inta.org 11Vol. 64, No. 4

The U.S. Patent and Trademark Office has issued a Final Rule amending the Trademark Rules of Practice to clarify certain require-ments for applications, intent to use documents, amendments to classification, requests to divide, and post-registration practice. The amendments also modernize the language of the rules and make other miscellaneous changes.

The majority of the rule changes are intended to codify existing practice as set forth in the Trademark Manual of Examining Proce-dure. The Final Rule appeared in the Federal Register, 73 Fed. Reg. 67,759 (Nov. 17, 2008), and the effective date for these changes is January 16, 2009. INTA’s USPTO Subcommittee submitted com-ments on the proposed rules, supporting these technical changes overall but asking for some clarity to assist users with the changes to trademark prosecution practice.

The Final Rule includes the following amendments to the Trade-mark Rules of Practice:

• An application under Section 1 or Section 44 of the Trademark Act must be in English to receive a filing date, and a TEAS Plus Applicant must maintain a valid email correspondence address during the pendency of the application.

• The requirement for inclusion of the names and citizenship of the general partners in an application by a partnership applies only to domestic partnerships. Similarly, if the applicant is a domestic joint venture, the application must include the names and citi-zenship of all active members of the joint venture.

• If a mark includes non-English wording, the applicant must submit an English translation of that wording. Also, if the mark includes non-Latin characters, the applicant must submit a trans-literation of those characters and either a translation of the corre-sponding non-English word(s) or a statement that the transliter-ated term has no meaning in English.

• Specimens filed through TEAS may be in .pdf format.• Only an application that includes Section 1(a) of the Trademark

Act as a filing basis, or for which an acceptable allegation of use has been filed, may be amended to seek concurrent use registra-tion. The rule currently provides that applications under Section 44 or Section 66(a) of the Act may be amended to recite con-current use. However, because Section 2(d) of the Act requires concurrent lawful use in commerce by the parties to a concurrent use proceeding, the USPTO has found it inappropriate to allow amendment to seek concurrent use absent allegations and evi-dence of use in commerce.

• The USPTO has removed the provision that if any goods or ser-vices specified in the Notice of Allowance are omitted from the identification of goods or services in the Statement of Use (SOU), the examining attorney will question the discrepancy and permit the applicant to reinsert the omitted goods or services. Instead, the USPTO will delete the omitted goods or services from the ap-plication and will not permit the applicant to reinsert them. The new rule makes paper SOU practice consistent with the current practice for electronically filed SOUs.

• In an application under Section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classification that the IB has assigned, classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application.

uNITed sTATesusPTo Issues Final Rule Regarding Miscellaneous Changes to Trademark Rules of Practice

Contributor: Donna A. Tobin, Baker & Hostetler llp, New York, New York,intA Bulletin law & practice–Americas Subcommittee;

Verifier: lisa A. Iverson, Neal & McDevitt, Northfield, Illinois.the intA Bulletin is grateful for the extensive contributions of

William D. Jackson, Norvell Ip llC, Northfield, Illinois, Trademark office practices–USpTo Subcommittee

• The requirement that a request for a new certificate of registra-tion upon change of ownership include the original certificate of registration has been removed.

• In a registered extension of protection, the assignment must be recorded with the IB before recordation with the USPTO.

• A number of sections have been amended to encompass electron-ic communications in addition to paper documents by changing “paper” to “documents” and “mailing” to “issuance.”

• The rule changes also address various minor changes to Madrid Protocol practice and assignment cover sheets.

MARk YouR CAleNdARsTwo special events in london for In-house

Trademark Counsel

eUroPe iN-hoUse tradeMark coUNseL’s workshoP

Thursday, June 11, 2009 (12:00 to 1�:00 hrs)

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creatiNG the PerFect PartNershiP:

iN-hoUse aNd oUtside coUNseL reLatioNs

Friday, June 12, 2009 (09:00 to 1�:00 hrs)

A new program that will provide best practices for improving the lines of communication between in-house and outside counsel to ensure expectations are met; so that law firms have a better idea of what in-house counsel is looking for when selecting foreign associates and its expectations once they are on board; tips on what in-house counsel wants to see in a request for proposal, and more.

Plan to attend one or both events (special rates will be available if you register for both.)

For more information, visit www.inta.org this March.

LAw & PrActice

INTA eMAIl AddRessesINTA Bulletin: bulletin@inta.org

Customer Service: customerservice@inta.org

Programs: meetings@inta.org

Job Bank: jobbank@inta.org

Membership: membership@inta.org

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Publications: publications@inta.org

Roundtables: roundtables@inta.org

www.INTA.oRgVisit the INTA Bulletin on www.inta.org to download the current issue or to search issues from January 1, 2000 to the present.

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

U.S. In-House Trademark Counsel’s WorkshopMarch 2, 2009New York, New York, USA

The Next level: INTA’s NewTotal Immersion program for Up-and-Coming Trademark lawyersMarch 3 – 4, 2009New York, New York, USA

roUNDTABle: Managing Trademark Costs in a Down economy—opportunities and obstacles for Brand ownersApril 20 – May 1, 2009Various U.S. cities

global Congress on Combating Counterfeiting and piracyJune 2 – 4, 2009Cancun, Mexico

roUNDTABle: How the USpTo Treats Fraud in Trademark ApplicationsJune 8 – 19, 2009Various U.S. citiesFor trademark administrators and paralegals

In-House Trademark counsel’s workshop (europe)June 11, 2009London, UK

Creating the perfect partnership: In-House and outside Counsel relationsJune 12, 2009London, UK

Trademark Administrators ConferenceSeptember 20 – 22, 2009Chicago, Illinois, USA

exhibitions and sponsorshipTo inquire about sponsorship or exhibition opportunities for INTA’s events, visit www.inta.org or email sponsorship@inta.org

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