is required to make that happen.” He explained how the decision to launch “Brand Hong Kong” in 2001 has helped to identify areas for im-provement, through criticism from visitors and international media. The chosen tagline, “Asia’s World City,” became more of an aspirational statement locally, Mr. Tsang said. “We started to read in newspapers and Internet chat rooms and hear commentators on radio and TV speaking about areas where Hong Kong did not measure up as ‘Asia’s world city.’ We still do today, regularly, and I am glad for it.”

Committing to CooperateDuring the Annual Meeting, INTA signed two separate agreements aimed at strengthening relationships with key organizations in Asia. On May 11, Ms. Stark signed a Cooperation Agreement with the Quality Brands Protection Committee (QBPC) that will serve to deepen

INTABulletinThe Voice of the International Trademark Association

AssociationNews

June 15, 2014 Vol. 69 No. 11

In This Issue

Law&PracticeArgentina 18Indonesia 18New Zealand 19Philippines 19Poland 20Singapore 20United States 21

FeaturesWhat You Should Know About 15 American Discovery for Use in Foreign Proceedings

AssociationNewsWelcome New Members 2 Recent Roundtables 10 Volunteer Spotlight Santiago O’Conor 12 INTA Supports Women in Leadership 13 Unreal Around the World 14

See “Hong Kong” on page 3

Hong Kong Meeting Marks Milestone in Association’s HistoryThe Association’s first Annual Meeting in Asia far surpassed all expectations, with 8,605 total attendees—the largest attendance ever outside North America—joining INTA in Hong Kong last month. More than 800 of these attendees were from China alone, and Chinese government officials played a key role in the educational programming and at high-level meetings with INTA leadership, further strengthening the Asso-ciation’s ties in this important country. Overall, the meeting saw the most attendees from Asia ever, with a final count of 2,462 from the East Asia and Pacific region. Several sessions were conducted in Chinese, and the INTA Daily News for the first time featured content written in both English and Chinese.

Recapturing the Power of TrademarksThe meeting officially kicked off with a traditional Chinese Lion Dance (pictured) on Monday, May 12, followed by Association President Mei-lan Stark’s welcome address. Ms. Stark recounted her personal experience with trademarks growing up, from the NIKE shoes that inspired her to join the basketball team when she was 12, to her first car—a HONDA CIVIC CVCC. “Trademarks have been integral in consumers’ lives for hundreds of

years,” said Ms. Stark. “I firmly believe that trademarks are one of the most powerful, most efficient, and most effective forms of communication ever devised.”

Ms. Stark told attendees that INTA’s Strategic Plan goal of communications was crafted with a view to helping revive these sentiments in the public’s collective heart. “It’s time to recapture the public’s imagination about trademarks, and get them to invest in the value that trademarks bring to them personally and economically.”

Back in Asia by 2020In his opening ceremony address, INTA CEO Etienne Sanz de Acedo announced that the Annual Meeting will be back in Asia in 2020, a testament to the Association’s commitment to

expanding its presence in the region. “We want to do more,” Mr. Sanz de Acedo said, adding that, in 2015, INTA will open a representative office in Southeast Asia and hold a conference in Asia on nontraditional marks.

Brand Hong Kong

This year’s keynote address was delivered by Hong Kong’s Secretary of Finance, John C. Tsang, who pointed out that July 21, 2014, will mark the 140th anniversary of the registration of the first trademark in Hong Kong, in 1874. The mark, for Nestlé’s EAGLE brand of con-densed milk, is still in force today. “The lesson here is that good brands can and do stand the test of time,” said Mr. Tsang, “but, of course, a huge amount of hard work and quality control

June 15, 2014 Vol. 69 No. 112

AssociationNews

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2014 International Trademark Association

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

ChairBarbara Sullivan, Henry Hughes

Vice Chair Liisa Thomas, Winston & Strawn LLP

Co-Chairs, Features SubcommitteeElizabeth Buckingham, Dorsey & Whitney

Peter McAleese, AKRAN Intellectual Property Srl

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

Katherine Dimock, Gowling, Lafleur, Henderson

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

Joseph Yang, Lee and Li, Attorneys at Law

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

Thomas Mudd, Zeiner & Zeiner

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

Carlos Corrales-Azuola, Corrales Core IP

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

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

Catherine Hoffman, Mayback & Hoffman

INTA Bulletin Staff Chief Executive Officer Etienne Sanz de Acedo

Director, Marketing and Communications James F. Bush

Managing Editor, News & Policy Eileen McDermott

Senior Periodicals EditorJoel L. Bromberg

DesignerEric Mehlenbeck

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

President Elect J. Scott Evans, Adobe Systems Incorporated

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

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

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

Secretary Ronald Van Tuijl, JT International S.A.

Counsel David Fleming, Brinks Gilson & Lione

Welcome New MembersACCAPI, Bologna, ItalyAgazzani Cristiana, Bologna, ItalyAll Gujarat Innovation Society, Ahmedabad, IndiaAllbright Law Offices, Shanghai, ChinaAlpadis Group, Hamilton, BermudaAlvaradoSmith, Los Angeles, CA, USAAMOREPACIFIC, Seoul, South KoreaARC Document Solutions, Inc., Walnut Creek, CA, USAArchodoula Papapanagiotou & Partners Law Firm, Athens, GreeceAsensio, Barrios, Andrade & Asociados, Limitada., Guatemala City, GuatemalaAssa Abloy AB, Stockholm, SwedenAugustLegal, New Delhi, IndiaAzman Davidson & Co., Kuala Lumpur, MalaysiaBeuing HC-IP Agency CO., LTD., Beijing, ChinaBeijing Horae Intellectual Property Co., Ltd., Beijing, ChinaBose Corporation, Shanghai, ChinaBoss Associates, St. Ives, United KingdomBTG International Ltd, London, United KingdomClery Avocats, Paris, France

Cosmovici Intellectual Property, Geneva, SwitzerlandDahai International Patent & Law Firm, Seoul, South KoreaDay Pitney LLP, New York, NY, USAde Marcellus & Disser, Paris, FranceDeutsch, Levy & Engel, Chtd., Chicago, IL, USAEakin McCaffery Cox Solicitors, Sydney, NSW, AustraliaEast Associates Law Firm, Beijing, ChinaElipe Limited, London, United KingdomEllis & Co., Lusaka, ZambiaEmirates Patent & Trademark, Dubai, United Arab EmiratesETR Lawfirm, Guangzhou, ChinaFernandez-Palacios Abogados, S.L.P., Sevilla, SpainFleck & Chumak LLP, Toronto, ON, CanadaGibson Dunn, New York, NY, United StatesGlobal Insight Limited, Hong Kong SAR, ChinaGodrej Consumer Products Ltd, Mumbai, IndiaGrupa Allegro Sp. z o.o., Poznan, PolandHadromi Adnan Intellectual Property Group, Jakarta, IndonesiaHavells India Limited, Noida, Uttar Pradesh, India

HEC Pharm Co., Ltd., Donguan, ChinaHeussen Rechtsanwaltsgesellschaft mbH, Stuttgart, GermanyHiswara Bunjamin & Tandjung, DKI Jakarta, IndonesiaHoefer & Partner, Munich, GermanyHowardKennedyFsi LLP, London, United KingdomInaga Asesores & Consultores, Caracas, VenezuelaInnovation Liberation Front, Auckland, New ZealandIPMS Consultants Limited/IPMS Patent & Trademark Attorneys Office, Kowloon, Hong Kong SAR, ChinaIPP international Patent Firm, Shinagawa-Ku, JapanIpulse (International), Pak Shek Kok, Hong Kong SAR, ChinaKaji Suhara & Associates, Osaka-shi, JapanKalikova & Associates, Bishkek, KyrgyzstanKamrath IP Lawfirm, P.A., Golden Valley, MN, USAKing & Wood Mallesons LLP, Munich, GermanyKingTen Shanghai Intellectual Property Agency Co., Ltd., Shanghai, ChinaKorea Institute of Patent Information, Seoul, South KoreaLaw Firm Magnusson, Riga, LatviaLPC Solicitors, Ikoyi, Nigeria

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collaboration between the two organizations. The following day, Ms. Stark met with the Hong Kong Intellectual Property Department’s (HKIPD’s) Director, Peter Kam-fai Cheung, to sign a Memorandum of Understanding (MOU) with the office, which will also serve as a start-ing point for increased interaction and coop-eration. Mr. Sanz de Acedo especially thanked Mr. Cheung for all of his time and assistance throughout the meeting, and said that INTA looked forward to working more regularly with the HKIPD in the future.

Government Engagement

A record number of government offices and representatives also attended the Hong Kong Annual Meeting. The Association was partic-ularly excited to welcome high-level officials from China, such as the Deputy Director of the Office of the National Leading Group on the Fight Against IPR Infringement and Counterfeit-ing (NLGO), Li Zhenzhong. Mr. Li participated in a panel featuring Chinese government officials from several departments, which allowed panelists and attendees to exchange ideas and pose questions. The session, which was conducted in Mandarin and simultaneously translated into English, also featured Judge Yin Shaoping, of the Intellectual Property Tribunal of China’s Supreme People’s Court; Ms. Zhang Feifei, from the Division of Intellectual Property Rights at the Economic Crime Investigation

Department of the Ministry of Public Security; and Mr. Tao Xinliang, Dean of the Intellectual Property Institute of Shanghai University.

Judge Shaoping commented that one of the challenges for Chinese courts, as for many courts around the world, is a lack of under-standing about IP. “We need to have more understanding in order to reach a consensus,” said Judge Shaoping. “One of the purposes of this session is to gain an in-depth under-standing about IP and trademarks through exchanges such as this; such collaboration is something we must and need to continue.”

Mr. Li of the NLGO also participated in the meeting of the Anticounterfeiting Committee’s China Subcommittee. He reported that in 2013 China dealt with 280,000 criminal cases relating to IP crime, captured 53,000 criminal suspects, concluded 12,000 criminal cases and effectively sentenced 14,000 suspects.

A delegation of 10 representatives from the China Trademark Association (CTA), which is under the leadership of China’s State Adminis-tration for Industry and Commerce (SAIC), also attended the Annual Meeting. They introduced CTA’s mission to INTA leadership and explained their key goal of publicizing and implementing China’s new Trademark Law. CTA also plans to launch a Product Brand Research Institute by September of this year, aimed at gathering public opinion on key project topics; in addi-tion, the Association, which will celebrate its 20th anniversary in September with the Brand Economy Summit, will host the China Interna-tional Trademark Festival in November.

INTA also hosted a number of officials from Guangdong Province IP-related ministries. Notably, officials from Guangdong Customs attended the full committee meeting of the Anticounterfeiting Committee.

Don’t Forget the Fun

To balance out all the hard work, more than 300 attendees turned up to the China Re-ception on Monday, May 12, to network and enjoy delicious Chinese cuisine and cocktails. The event, the best-attended China Recep-tion ever, offered INTA leadership a chance to interact with Chinese members in a more casual setting.

Later in the week, attendees were treated to a private tour of Hong Kong Disneyland at the Grand Finale party. With free access to the rides in three Disney lands, plus food, dancing and drinks, INTA members left the Annual Meeting with memories for a lifetime.For day-by-day coverage of the Hong Kong An-nual Meeting, read the INTA Daily News 2014, published on site by Managing IP magazine.

INTA would like to thank the many sponsors whose support made the Annual Meeting so successful.

Registered attendees may log onto the Annual Meeting portal for the attendee list, course materials and more. ■

Hong Kong Marks Milestone in Association’s History Continued from page 1

June 15, 2014 Vol. 69 No. 114

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Platinum Sponsors

Gold Sponsors

INTA Thanks 2014 Annual Meeting Sponsors

Abu-GhazalehIntellectualProperty (AGIP)

The Global Firm for IPR Protection

www.patrix.com

June 15, 2014 Vol. 69 No. 118

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Bronze Sponsors

Sponsors

Platinum Sponsor Silver Sponsors

INTA Thanks 2014 Annual Meeting Sponsors

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AssociationNewsINTA Thanks 2014 Annual Meeting Media Partners

TheTrademarkGLOBAL REACH, LOCAL KNOWLEDGE Lawyer

June 15, 2014 Vol. 69 No. 1110

AssociationNewsRecent Roundtables

Issues surrounding the authorization and determination of trade-mark rights under China’s new Trademark Law were the subject of a roundtable discussion hosted by Unitalen Attorneys at Law in Beijing on April 18. Among other topics, speakers shared their opinions about what the Supreme People’s Court’s legal interpretation on jurisdiction of trademark cases will be after the amended trademark law takes effect. Participants included a judge of the Supreme People’s Court, Unitalen attorneys and representatives of more than six IP agencies and law firms.

At an April 10 roundtable in Hanoi, Vietnam, speakers gathered to discuss “Overlapping Protection of 3D Marks: Industrial Design and Copy-rights.” Bross & Partners hosted the event, with Le Quang Vinh as moderator. Mr. Vinh kicked off the discussion with a presentation on the landscape for resolving disputes involving overlapping IP rights in Vietnam. The courts seem to be at a standstill with respect to resolving such cases, mainly because of a lack of adequate substantive law governing the topic. The speakers, who included representatives of academia, the Industrial Designs Department (NOIP) and the Copyright Office of Vietnam, all agreed that researching and amending the substantive law on protections for different types of IP were crucial in resolving these issues.

Berkemeyer Attorneys & Counselors held a roundtable on the topic of ambush marketing on April 30 in Asunción, Paraguay. Twenty-seven attendees discussed examples of ambush marketing cases and agreed that balanced legislation is an important tool in helping to curb abuse of trademarks during major sporting events. Speakers included representatives of four member firms and Juan García, General Direc-tor of Paraguay’s National Trademark Office.

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On May 28, host firm Alessandri Attorneys at Law invited 25 participants from INTA member firms, food industry representatives, authorities from the Chilean Instituto Nacional de Propriedad Industrial (INAPI) and the Ministry of Health to Santiago to discuss Chile’s new health regulations restricting the advertising of foods and their impact on trademark rights. Guest speakers included Dra. Lorena Rodriguez, Head of the Nutrition and Food Department of the Ministry of Health, and Dra. Roxana Buscaglione, Counselor of the Nutrition and Food Department of the Ministry of Health. The heads of three divisions of INPI also actively participated—Carolina Belmar, Sergio Escudero and Carmen Paz Alvarez. Rodrigo Velasco S., partner and IP Director at Alessandri, chaired the event.

Moderated by Alessandri partner Loreto Bresky, the speakers discussed the new provisions on nutritional composition of foods and their advertising, which modify the Food Sanitary Code and include new advertising restrictions on foods with high calorie, fat, sugar, salt and other content. Going forward, advertising and packaging for these foods will have to include mandatory language warning consumers that they are high in such content. These provisions will therefore seriously affect trademark rights. However, the representatives of the health authorities who were present announced that these new regulations are still being reviewed, and that the government has decided to postpone their effective date until next year.

Representatives of INTA member firms and nonprofit organizations teamed up in Singapore with the IP Academy of Singapore for a roundtable titled “Marking for a Cause” on April 4. As host, the IP Academy welcomed 34 attendees in order to raise awareness about the importance of trademarks for nonprofit organizations and how an INTA membership can support nonprofits’ IP needs. The event included an introduction to copyrights, trademarks and patents. Speakers also covered ways to commercialize trademarks and gave examples of acts that constitute trademark infringement, including potential consequences of such acts, pitfalls in enforcement and a recommended approach to enforcing IP rights for nonprofit organizations. Corinne Fong, Executive Director of the Society for the Prevention of Cruelty to Animals (SPCA), provided SPCA’s experiences with trademark infringement, highlighting the need for nonprofit organizations to take appropriate steps to protect their intellectual property.

June 15, 2014 Vol. 69 No. 1112

VolunteerSpotlight

Santiago Ricardo O’Conor is Founder and Managing Partner at the law firm of O’Conor Power, in Buenos Aires, Argentina. His expertise within intellectual property lies principally with trademarks. Santiago advises domestic and foreign companies on local and international IP laws, trademark prosecution and trademark litigation. He feels privileged to be doing the work he loves, sharing knowledge and practices and getting to know good friends and colleagues around the world.

Over the years, Santiago has enjoyed working on INTA’s Programs Committee, as well as on different project teams. The exchange of in-formation and powerful brainstorming among INTA members have proved to be extraordinary and rich experiences for him.

Two of the most important trademark develop-ments in Argentina today, in Santiago’s opin-ion, are the advances made in connection with the online trademark filing systems and the ability to register trademarks with Customs. He identifies these changes as significant because both systems are important tools for swift trademark protection.

Santiago would like to see INTA host an Annual Meeting in South America in the very near fu-ture. He feels that South America’s economic growth and business opportunities make it a very attractive region for visitors; specifically, the international characteristics of Buenos Aires make the city an excellent potential venue for such an event.

Two of Santiago’s favorite trademarks are POLO RALPH LAUREN, because of its elegance

and quality, and APPLE, for being one of the icons of the communication revolution in the modern world.

In addition to practicing law, Santiago enjoys spending time teaching. He teaches intel-lectual property law, with a special focus on international trademark protection in busi-ness, at the universities of FLACSO (Facultad Latinoamericana de Ciencias Sociales (Latin American School of Social Sciences)) and at the Universidad Catòlica Argentina in Buenos Aires. He has also been Professor of Interna-tional Private Law at the Faculty of Law of the University of Buenos Aires.

When not working, Santiago spends as much time as possible with his wife, Andrea, and their three children, Maureen, Eunice and Patrick. He is passionate about history and an-tiques, and likes spending time on the family ranch, riding horses, learning about crops and bull-breeding, and enjoying nature.

Shefali SewakSewak & Associates, New Delhi, India INTA Bulletin—Association News Subcommittee

Visit inta.org/2014Internet

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

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

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Visit www.inta.org/2014TMAP

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

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

OCTOBER 12–15 | ARLINGTON, VA

TRADEMARK ADMINISTRATORS & PRACTIT IONERS MEETING

INTA Supports Women in LeadershipManaging IP magazine’s International Wom-en’s Leadership Forum, which took place June 6 in New York, focused on ways to encourage gender diversity in companies and law firms, in addition to providing educational sessions on hot patent and trademark topics. The event included top women in-house IP counsel and attorneys and a keynote speech delivered by the USPTO’s Innovation and Outreach Coordi-nator (New York Region), Mindy Bickel.

Ms. Bickel noted that when she first joined the USPTO, “there were whole departments with no women.” By contrast, today the USPTO’s top three leaders—Deputy Director Michelle Lee, Commissioner for Patents Peggy Focarino and Commissioner for Trademarks Deborah Cohn—are women. The trademarks department is run entirely by women.

But this does not mirror the situation at U.S. law firms. “Women are under 33 percent of all lawyers at firms, and 45 percent of those are associates, while only 25 percent are part-ners,” said Ms. Bickel. Women also account for less than 30 percent of all degrees in com-puter science and engineering at all levels.

The forum’s first panel, which focused on litiga-tion and technology trends, provided advice for attendees looking to change those statistics. “As in-house counsel, we have to push for women on our outside counsel teams,” said Melissa Scanlan, Director of Legal at T-Mobile. “Without us making that explicit as a demand, things don’t change; there’s too much inertia.”

The value of diverse legal teams “cannot be overstated,” said Louise Penford, former Chief Legal Officer for Nokia. Ms. Scanlan concurred. “You get more robust intellectual thinking when you have a diverse team.”

INTA Board of Directors member Susan Crane (Wyndham Worldwide, USA) spoke on a panel covering key trademark and copyright issues, including joint ownership of co-branded trademarks. Board member Geri Mankoff-Elias (Kate Spade & Company, USA) offered valu-able advice on email etiquette and discretion in the age of electronic communication, while Kathleen Johnston (Facebook, USA) advised attendees not to have a “knee-jerk reaction” to infringement and criticism on social media.INTA participated in the forum as a supporter

of the event and an advocate for diversity at all levels. The Association has a demonstrated commitment to promoting women, including the following achievements:

• INTA has elected 12 women to the position of President since 1984.

• Twenty-two out of 37 total Board of Directors members are women.

• Fifty percent of INTA’s 2014 elected officers are women.

• Five of nine Directors on INTA’s staff are women.

June 15, 2014 Vol. 69 No. 1114

AssociationNewsUnreal Around the World INTA’s Unreal Campaign kept busy in May, with three student engagement events in three cities, including its first event held outside the United States. Here are some highlights.

Atlanta – May 7

INTA’s Unreal Campaign took to Atlanta last month to educate local students about fakes, with the help of host Kilpatrick Townsend & Stockton, LLP. Held at the firm’s Atlanta office, the student engagement session included 25 students from KIPP Atlanta Collegiate High School, who got a lesson in anticounterfeiting efforts and trends from experienced IP profes-sionals. Charlie Henn (Kilpatrick Townsend & Stockton, USA) moderated the event; speakers included Lauren Fernandez (FOCUS Brands, USA) and Bruce Siegal (The Collegiate Licens-ing Company, USA). The panel discussed their experiences working in the IP field, the value of trademarks and the enforcement methods they use to protect their brands.

Mr. Henn also shared a photo presentation of counterfeit sporting apparel that had been seized. Students then broke into groups for an interactive activity, where they debated and made recommendations on fictional anticoun-terfeiting legislation.

Hong Kong – May 13

At the 136th Annual Meeting, in Hong Kong, the Unreal Campaign held its first student engagement session that took place outside the United States and that was conducted in another language (Cantonese). Fifty local students joined INTA President Mei-lan Stark

(Fox Entertainment Group, USA), Hong Kong Intellectual Property Department (HKIPD) Director Peter Kam-fai Cheung, Vincent Lai of the Hong Kong Customs and Excise Depart-ment and Fornia Lo of Gucci at the Hong Kong Convention & Exhibition Centre to learn about the harms of counterfeit products. Ms. Stark explained to students that research has revealed that jobs in IP-rich industries pay up to 40 percent more than jobs in other sec-tors. Mr. Cheung engaged the students in an anti-fakes tune and updated them on HKIPD’s anti-fakes initiatives.

New York – May 26

Nineteen students from Bronx Haven High School and Flushing High School heard from IP industry professionals about anticounterfeiting issues during an Unreal student engagement session.

Gregg Marrazzo, 2012 INTA President (Estée Lauder Group of Companies, USA), told the students that his company had just seized “over 12,000 cases of counterfeit MAC cos-metics that contained heavy lead, aluminum, toxins—the kinds of things you don’t want on your face.” And there’s no recourse; counter-feits are sold by criminal organizations that won’t do anything to help you if their prod-ucts hurt you. “The only thing that matters to counterfeiters is making the sale; they don’t care about your safety. Just remember,” Mr. Marrazzo said, “if the deal is too good to be true, it probably is.”

Jessica Haugen (Gucci America, Inc, USA) discussed the global consequences of counter-feiting. “It may not physically hurt you, but the effects are worldwide,” Ms. Haugen said. “Counterfeit production either puts people out of jobs or employs people in extremely unsafe conditions, like slave and child labor.” Brands like Gucci are going to great lengths to combat this because the counterfeit industry is grow-ing bigger every year. “And it’s getting smarter, too,” she said. ”It feels like every time I see these fakes they’re looking better and better.”

Moreover, Ms. Haugen explained, “because it’s easier than ever to build a quality website, these counterfeiters are disguising themselves as reputable resources.”

Anthony Orosz, Assistant Director of the Phar-maceuticals, Health and Chemicals Center of Excellence and Expertise for the U.S. Cus-toms & Border Protection (CBP) Agency, said that counterfeits make up a large part of the incoming threatening materials CBP is charged with protecting. “We’re there at the border, in ports, airports, railway stations and anywhere else criminals might try to smuggle counter-feits into this country.” But the hardest to spot, according to Mr. Orosz, is the new plague of counterfeit pharmaceuticals. “There are so many counterfeit pills coming in through the mail, and they’re very, very difficult to detect.” Despite the fact that these drugs contain no medicine at all and often may contain harmful, even poisonous, materials, they frequently slip through undetected because they look so similar to the genuine medicines. CPB “works side-by-side with brands to spot these,” Mr. Orosz said. “It’s an example of the government and the private sector coming together to help protect the general public.” But even then there’s only so much they can do. There’s so much counterfeit medicine coming into the country that they can’t possibly catch it all. “And,” he said, “almost all of it is being bought online; most of the medicine sold online is counterfeit. That’s why it’s the last place you should ever buy it.” You can read an interview with Mr. Orosz here.

After the speakers’ presentations, the students assumed the role of members of a fictional “Blue Ribbon Commission,” which had before it a fictional bill that proposed new legal consequences for buying and selling counter-feit merchandise. The students engaged in a passionate debate over the consequences of the bill. Should retailers be punished for selling counterfeits? Should consumers be pun-ished for buying them? How strict should that punishment be? Should the consequences vary depending on the item or where it was purchased? Their answers varied, but they all agreed that counterfeits were a much bigger and complicated problem than they had been previously aware.

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See “American Discovery” on page 16

Jed WakefieldFenwick & West LLP, San Francisco, California, USA

What You Should Know About American Discovery for Use in Foreign Proceedings

Parties involved in trademark disputes outside the United States reasonably expect that their disclosure and discovery obligations, if any, will be governed by the rules and customs of the governing tribunal. But an unusual U.S. law, 28 U.S.C. § 1782, allows parties and other “interested persons” to seek discovery under the Federal Rules of Civil Procedure, including depositions and potentially onerous e-discov-ery obligations that far exceed many foreign tribunals’ more limited discovery practices.

Background and Purposes of Section 1782Under Section 1782, any “interested person” may request discovery from a person or entity in the United States for use in a foreign proceeding. “Section 1782 is the product of congressional efforts, over the span of nearly 150 years, to provide federal-court assis-tance in gathering evidence for use in foreign tribunals.” Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 247 (2004). Con-gress intended the statute to provide “[w]ide judicial assistance … on a wholly unilateral basis.” In re Letter Rogatory from Justice Court, Dist. of Montreal, Canada, 523 F.2d 562, 565 (6th Cir. 1975).

Why would Congress do this? Its goal—perhaps naïve, in hindsight—was to encourage other countries to adopt similarly liberal procedures in support of U.S. litigation. While one can debate whether the law has succeeded in accomplishing this goal, it has had a major impact in the United States, potentially putting American companies at a significant disadvan-tage relative to their foreign competitors.

ProcedureApplying for Section 1782 discovery is rela-tively straightforward. Any interested party can apply directly to a federal district court where the target of the discovery is located. An application typically will explain why the statutory requirements are met and why the court should exercise its discretion to allow the discovery. If discovery is granted, the party seeking discovery can then serve a subpoena or discovery requests. Courts often will consider applications ex parte and without a hearing, but will allow the recipient of the discovery requests to object or move to quash the subpoena at a later point.

Statutory RequirementsSection 1782 provides that a district court may grant an application to take discovery where three requirements are met:

1. The person from whom the discovery is sought resides or is found in the federal district where the application is made;

2. The discovery is for use in a proceeding before a foreign tribunal; and

3. The application is made by a foreign or international tribunal or by any interested person.

Courts considering a Section 1782 request first consider whether these minimum statu-tory requirements are met, and then exercise their discretion in determining whether to deny, grant or limit the requested discovery.

• Who is an “interested person”?

The category of “interested persons” who can seek Section 1782 discovery is not limited to parties in the foreign proceeding. For exam-ple, the victim of an alleged crime that is the subject of a foreign prosecution may be an “interested person.” See Lazaridis v. Interna-tional Center for Missing & Exploited Children, Inc., 760 F. Supp. 2d 109 (D.D.C. 2011) (complainant in criminal investigation was an “interested person”). Thus, for example, a trademark counterfeiting victim could seek discovery in support of a foreign government enforcement action, even if the victim was not pursuing a civil counterfeiting case.

• What is a foreign proceeding?

The foreign litigation need not be “pending” or “imminent.” Section 1782 may be used to aid foreign tribunals where a dispositive ruling is merely in “reasonable contemplation.” Intel, 542 U.S. at 247. In addition, some courts have permitted 1782 discovery in support of inter-national arbitrations. See In re Application of Mesa Power Group, LLC, No. 11–24335–CIV, 2012 WL 2886827 (S.D. Fla. July 13, 2012) (permitting discovery for a NAFTA arbitration). Foreign trademark opposition and cancella-tion actions generally would qualify as foreign “proceedings” under Section 1782. See In re Application of FG Wilson (Engineering) Ltd., No. 10-20839 CIV, 2011 WL 1114311 (S.D. Fla. Jan. 4, 2011) (proceedings regarding Colombian trademark registrations met 1782 statutory requirement).

• When can a party be “found” in the district?

A court can compel a person or business to comply with Section 1782 discovery only where that person or business “resides or is found” in the district. A company may be “found” in a district if the business would be subject to personal jurisdiction in the district. This is true even if the company is headquartered or incorporated elsewhere. For example, a foreign company with an interactive online presence, or with online sales in the United States, could be subject to personal jurisdiction.

Discretionary Factors to Consider in Permitting or Rejecting a Section 1782 ApplicationIn Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241 (2004), the U.S. Supreme Court made clear that federal district courts have broad discretion to permit, deny or limit a Sec-tion 1782 request. The Intel Court identified four non-exhaustive factors that district courts should consider in deciding whether to grant Section 1782 requests:

1. Whether the person from whom discovery is sought is a participant in the foreign proceeding;

2. The nature of the foreign tribunal, the character of the proceedings, and the receptivity of the foreign government or the court or agency abroad to U.S. federal-court jurisdictional assistance;

3. Whether the Section 1782 request con-ceals an attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign country or the United States; and

4. Whether the subpoena contains unduly intrusive or burdensome requests.

Generally, the party requesting the Section 1782 order bears the burden of establishing that it should issue. See, e.g., In re Microsoft Corp., No. C 06-80038, 2006 WL 825250, at *2 n.3 (N.D. Cal. Mar. 29, 2006).

• Whether the person from whom discovery is sought is a participant

In Intel, the Court noted that the need for Section 1782 assistance “generally is not as apparent as it ordinarily is when evidence is sought from a nonparticipant in the matter

June 15, 2014 Vol. 69 No. 1116

Featuresarising abroad.” 542 U.S. at 264. This is only one factor, however, and courts have allowed 1782 discovery from parties to foreign pro-ceedings.

• The nature of the foreign tribunal, charac-ter of the proceedings, and receptivity

Without a clear objection from the non-U.S. tribunal, district courts generally have dis-cretion to permit the discovery to proceed. See Fleischmann v. McDonald’s Corp., 466 F. Supp. 2d 1020, 1032 (N.D. Ill. 2006) (fact that request did not come from foreign tribunal did not mean the tribunal would be unreceptive). A district court may, however, consider, in combination with other factors, the fact that a foreign tribunal or prosecu-tor did not itself seek the information. See Lazaridis v. International Center for Missing & Exploited Children, Inc., 760 F. Supp. 2d 109, 115 (D.D.C. 2011). Courts may also consider the timeliness of the request. See In re Digitechnic, No. C07-414-JCC, 2007 WL 1367697, at *5 (W.D. Wash. May 8, 2007) (“[T]his Court should hesitate to order discovery at a late stage of French litigation when such discovery was not sought or is not available in that forum.”).

• Circumvention of foreign proof-gathering restrictions and policies

There is no requirement that evidence sought under Section 1782 be discoverable in the law governing the foreign proceeding. The Supreme Court in Intel cautioned against

attempts to litigate the question of foreign discoverability in U.S. courts, noting that a comparison of legal systems was “slippery business.” Intel, 542 U.S. at 263 n.15. Rather, the Court suggested that the foreign tribunal could decide what use, if any, to make of the materials. The Court also rejected the sugges-tion that a Section 1782 applicant must show that U.S. law would allow discovery in domestic litigation analogous to the foreign proceed-ing. Thus, Section 1782 applications may, in certain circumstances, permit discovery that would not be allowed in either the foreign tribunal or a U.S. court.

Nevertheless, district courts may reject Section 1782 applications where there is evidence that the request is an attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign country or the United States. Id. at 265; see Aventis Pharma v. Wyeth, No. M-19-70, 2009 WL 3754191, at *1 (S.D.N.Y. Nov. 9, 2009) (granting motion to quash subpoena). A perception that an appli-cant has “side-stepped” less-than-favorable discovery rules by resorting immediately to Section 1782 can be a factor in a court’s anal-ysis. In re Cathode Ray Tube (CRT) Antitrust Litigation, No. MDL 1917, 2013 WL 183944, at *3 (N.D. Cal. Jan. 17, 2013) (citing In re Ap-plication of Caratube International Oil Co., LLP, 730 F. Supp. 2d 101, 107-08 (D.D.C. 2010)).

• Unduly burdensome and intrusive requests

Finally, courts can consider whether the discovery sought would be unduly burdensome

or intrusive. Intel, 542 U.S. at 265. District courts may consider whether the Section 1782 request is a “fishing expedition” (id. at 266) or a vehicle for harassment. While some courts will narrow burdensome requests, others have flatly rejected Section 1782 applications that are overbroad on their face. See In re Apotex Inc., No. M12-160, 2009 WL 618243, at *3 (S.D.N.Y. Mar. 9, 2009).

Reciprocity Under 28 U.S.C § 1782Section 1782 creates a risk of one-sided discovery, as a party located in the United States can face broad discovery requests with no opportunity to obtain similar evi-dence from its adversary, located beyond the reach of any federal court. This not only creates a potential lack of parity between parties but also may deprive the foreign tribunal of a full view of the evidence.

Addressing the concern over parity between the parties, the Court in Intel noted that a district court could condition relief upon the requesting party’s reciprocal exchange of information. Intel, 542 U.S. at 262. Thus, as a condition of obtaining discovery under Section 1782, a foreign party may be forced to submit to similar discovery itself. See Appli-cation of Consorcio Minero, S.A. v. Renco Grp., Inc., No. 11 MC 354, 2012 WL 1059916, at *4 (S.D.N.Y. Mar. 29, 2012) (ordering recipro-cal discovery).

What You Should Know About American Discovery Continued from page 15

Visit www.inta.org/practitionerschecklists

When You Need to KnowWhether undertaken as an assessment of trademark rights or an evaluation of the adequacy of internal management systems, a trademark audit has to be thorough to offer an accurate picture of a company’s brand name activity. For tips on navigating the myriad detail associated with the exercise, see “Trademark Audits” by Jenifer deWolf Paine, Proskauer Rose LLP, New York, New York, USA, and Kevin Wong, Ella Cheong LLC, Singapore, in INTA’s exclusive member service Practitioner’s Checklist series.

17

FeaturesSection 1782 in Trademark CasesThe broad scope of Section 1782 permits parties to use it to seek discovery in support of foreign trademark proceedings, including disputes in trademark offices around the world. Given the territorial nature of trade-mark laws, however, the circumstances in which a U.S. entity possesses evidence that is relevant to a foreign proceeding might seem limited. Nevertheless, parties have success-fully pursued Section 1782 discovery for use in trademark disputes.

For example, in Eco Swiss China Time Ltd. v. Timex Corp., 944 F. Supp. 134 (D. Conn. 1996), a producer of timepieces under license with a trademark holder brought a motion to obtain discovery from another prospective licensee of the trademark holder. The court held that the discovery was sufficiently related to the underlying Dutch arbitration, where the issue was whether the trademark holder had negotiated an extension of a license agree-ment in good faith.

Parties have also pursued Section 1782 dis-covery to obtain information about the identi-

ties and activities of suspected infringers from U.S. Internet service providers. In In re Ex parte Application of American Petroleum Institute for Order to Obtain Discovery for Use in Foreign Proceedings, No. C 11-80008 JF (PSG), 2011 WL 10621207 (N.D. Cal. Apr. 7, 2011), the court granted a Section 1782 application requiring an American search engine to pro-duce documents for use in connection with six cases in China involving copyright, trademark and unfair competition claims. The subpoena sought broad categories of information, includ-ing all of the alleged infringer’s sponsored-link advertisements distributed by the search engine; the amount and dates of the alleged infringer’s payments to the search engine; the search terms that generated the display of the alleged infringer’s sponsored-link advertise-ments; and the names and contact informa-tion of certain publishers.

Given the potentially broad scope of Section 1782 discovery and considerable discretion afforded to courts, parties to trademark disputes—regardless of the venue—should con-sider whether any entity that may be “found” in the United States has potentially relevant evidence. Likewise, parties with a presence in

the United States that are considering where to initiate litigation should bear in mind that, even if they initiate litigation in a forum that does not permit discovery, they may nonethe-less find themselves subject to U.S. discovery.

Parties facing Section 1782 requests should be aware that courts regularly grant such applications, at least in part. While in some cases it will be appropriate to seek to block the requests entirely, in many others a party may be better off negotiating a more manageable scope of discovery with the propounding party, perhaps with some reciprocal discovery.

A party seeking discovery for use in a for-eign trademark proceeding should focus on information that will be genuinely relevant in the foreign proceeding, bearing in mind the ter-ritorial limits of trademark law. Although courts grant many 1782 applications, and the scope of discovery is generally broad, a harassing “fishing expedition” can lead a court to reject an application outright. Accordingly, parties contemplating such requests should recall the old adage that “pigs get fat, but hogs get slaughtered.” ■

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

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

Before You Send That Cease and Desist Letter

Visit www.inta.org/ceaseanddesist

June 15, 2014 Vol. 69 No. 1118

Law&PracticeARGENTINA

Certificates of Trademark Registration and Renewal Now Issued Electronically

INDONESIA Claiming Well-Known Reputation

The Argentine Trademark Office has adopted the use of electronic certificates of registration and renewal. The implementation of electronic certificates was approved by Resolution No. 341/2013 (Sept. 3, 2013); the new system became fully operative in November 2013.

In accordance with Resolution 341/2013, all certificates of trademark registration and renewal issued after September 3, 2013, will be issued electronically and sent by email to the contact whose information is given in the application form and/or in any subsequent

document in the file showing the correspond-ing contact information.

In cases involving design trademarks that have not been uploaded to the Trademark Office’s database, the Office will continue to issue hard copies of the certificates in question.

The implementation of electronic certificates of registration reflects the Trademark Office’s intention to shift to a paperless environment and reduce the current significant backlog in the issuance of certificates of registration.

The Supreme Court of the Republic of Indo-nesia held that registrations of a trademark in four countries in South East Asia did not amount to a well-known reputation for the mark in Indonesia, when there was a lack of evidence of active promotion and public recognition of the mark in Indonesia. DKSH Malaysia Sdn. Bhd. v. Muktar, Cancellation No. 501 L/PDT.Sus-Hki/2013 (Sup. Ct. Dec. 30, 2013) (not precedential).

DKSH (Plaintiff) is the owner of the trademark ALLADDIN (stylized), registered in Malaysia, Singapore and Thailand since the 1980s and in Cambodia since 2010, and covering dispos-able gas lighters in Class 34, but had not filed an application for registration in Indonesia until 2010. Muktar (Defendant) owns the regis-tered mark ALADIN & Lamp Device, registered since 2005 in Indonesia for matches, gas lighters and firestones in Class 34.

In 2012 the Plaintiff filed a cancellation action in the Commercial Court of Central Jakarta against the Defendant’s trademark registration for ALADIN & Lamp Device (No. IDM000035246) on the grounds that the Plaintiff’s trademark ALLADDIN (stylized) was a well-known mark and the Defendant had filed his trademark application in bad faith. The Commercial Court accepted the Plain-tiff’s claims and cancelled the Defendant’s trademark registration. (Decision No. 87/Merek/2012/PN.Niaga.Jkt. Pst. (Commercial Ct. Apr. 18, 2013).) The Defendant filed an ap-peal against the Commercial Court’s decision with the Supreme Court.

The panel of Supreme Court Judges found that the marks were confusingly similar. However, bad faith by the Defendant was not established because the Plaintiff could not prove that its mark had been actively promoted and there-fore was sufficiently well-known to be recog-nized by the people in Indonesia. Furthermore, the lawsuit was filed beyond the five-year time limit specified in Article 69(2) of the Trademark

Law (Law No. 15/2001). Consequently, the Supreme Court accepted the appeal and can-celled the Commercial Court’s decision.

The definition of and criteria for well-known mark commonly used by the courts are set out in the explanatory section of Article 6(1b) of the Trademark Law, case law of the Supreme Court (Decision No. 1486 K/pdt/1991) and WIPO Guidelines. However, as there is still room for interpretations of these references, court decisions have varied. Trademark owners should be reminded of the dynamics in claim-ing well-known reputation, especially if the level of distinctiveness of the mark is low and registrations are available only in few countries with limited evidence of use in Indonesia.

Contributor: Juan M. López MañánMarval, O’Farrell & Mairal, Buenos Aires

Verifier: Diego LauriniEstudio Gold, Buenos AiresINTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee

Contributor: Yenny HalimACEMARK Intellectual Property, Jakarta

Verifier: Achmad FatchyAFFA-Intellectual Property Rights, Jakarta

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

Visit www.inta.org/Cancellations

19

Law&PracticeNEW ZEALAND

First Decision on Unauthorized Use of Trademarks as Keywords in Google AdWords Scheme

PHILIPPINES Building Façade Denied Registration

Recently, the High Court issued New Zealand’s first substantive decision on the unauthorized use of trademarks as keywords in Google AdWords. The court determined that the use of trademarks in this way was not, of itself, registered trademark infringement, passing off or conduct in trade likely to mislead or deceive in breach of the Fair Trading Act 1986. Intercity Group (NZ) Ltd v. Nakedbus NZ Ltd, [2014] NZHC 124 (Feb. 12, 2014).

InterCity, New Zealand’s largest long-distance bus company, owns the registered trademark INTERCITY in Class 39. Nakedbus is InterCity’s leading market competitor. Nakedbus habit-ually used the words “inter city” in its adver-tising and took the view that such use was descriptive for city-to-city bus services.

InterCity claimed that in purchasing the key-words “inter city” and 87 variants on the words for a Google AdWords campaign, and by using “inter city” in the resultant advertisements, Na-kedbus was guilty of trademark infringement, passing off, and misleading and deceptive

conduct contrary to the Fair Trading Act.

The High Court held that Nakedbus’s purchase of the keywords was “use in the course of trade” in terms of Section 89(1) of the Trade Marks Act 2002. However, as the purchase of the keywords was not seen or known or under-stood by consumers, it could not be “taken” as anything by consumers, let alone “taken as being use as a trade mark”; thus, there was no use of a sign “likely to be taken as being use as a trade mark” in terms of Section 89(2) of the Act, and hence no trademark infringement.

Google’s acts when, through its search engine, it provided for the Nakedbus advertisements to appear when consumers keyed “inter city” and the variants into a computer were similarly invisible to consumers and so also were not use of a sign “likely to be taken as being use as a trade mark” in terms of Section 89(2).

However, the Court held that the use of “inter city” in lines such as “inter city buses from $1 – We’ll beat any inter city fare” in the resultant

advertisements was both “use in the course of trade” and “likely to be taken as being use as a trade mark” and therefore constituted trade-mark infringement. The use was also held to be likely to mislead, deceive and confuse so as to make out the alternative trademark infringe-ment claim and the claims for passing off and breach of the Fair Trading Act.

Accordingly, while the use of a competitor’s registered trademark as a Google keyword is not, of itself, registered trademark infringe-ment in New Zealand, competitors still need to ensure that any keyword used in a resulting advertisement does not fall into a conventional trademark infringement trap.

The decision has been appealed.

On November 11, 2013, the Director General of the Intellectual Property Office of the Philip-pines (IPOPHIL) dismissed the appeals filed by Fun Ranch Mega Development, Inc. from the decision of the Director of Trademarks denying the registration of a façade of a building for lack of a distinguishing feature and function as an identifier of the source of goods and services.

In 2009, Fun Ranch filed four trademark applications for registration of “Façade of a Building,” covering “Children’s entertainment and amusement centers, namely, interactive play areas” and “Restaurant services; services for providing food and drink; temporary accom-modation,” in Classes 41 and 43, respectively. The trademark examiner issued an Office Action stating that the mark could not be regis-tered because it did not function as a trade-mark and was not capable of distinguishing the goods and services applied for. In its re-sponse Fun Ranch claimed that its mark was a unique design of the façade of a building that functioned as a service mark. The company

argued that the look and feel of the building design were not only unique but distinctive and were capable of identifying Fun Ranch’s establishment, business or services. It further argued that the mark was commercially used in the Philippines and relevant consumers had come to know it as being associated with Fun Ranch’s services. Fun Ranch cited the regis-tration of marks covering designs of bottles or alcoholic drinks and perfume to support the registration of its mark. The trademark exam-iner, however, rejected the application.

On appeal, the Director of Trademarks upheld the examiner’s rejection. Noting that the bur-den was on Fun Ranch to prove that its marks were registrable, the Director held that Fun Ranch failed to demonstrate that the façade of the building covered by the applications had a source-identifying function.

On further appeal by Fun Ranch, the Director General of IPOPHIL upheld the decision of the Director of Trademarks. It was pointed out that the configuration or appearance of the façade

of a building could not be elevated to the same level of distinctiveness as, for example, the ar-chitectural design of the Art Deco spire of the Chrysler Building or the Neoclassical façade of the New York Stock Exchange. The latter possessed distinctive design features readily identifiable with the owners. The same could not be said of the building façade because it did not make a lasting impression in the minds of the public.

This decision is significant in that it illustrates that not all unique building façades are dis-tinctive and therefore capable of trademark registration.

Contributors: John Glengarry and Ella FranklinBuddle Findlay, Auckland

Verifier: Edward ButlerHenry Hughes, Wellington

Contributor: Jennifer D. Fajelagutanpatrick mirandah co. philippines, inc., TaguigINTA Bulletin Law & Practice—Asia-Pacific Subcommittee

Verifier: Ireneo M. GaliciaDiageo Philippines, Inc., Taguig

June 15, 2014 Vol. 69 No. 1120

Law&PracticePOLAND Who Will Be HAPPY in the End?

SINGAPORE Common Element in Family of Trademarks Does Not

Grant Exclusive Rights

Clinique Laboratories moved for cancellation of the registration for the word mark HÁPPY (Reg. No. 165122) based on, inter alia, its confusing similarity to Clinique’s prior-registered trade-marks CLINIQUE HAPPY (Reg. No. 117109) and CLINIQUE HAPPY HEART (Reg. No. 166165).

The Polish Patent Office (PPO) cancelled the registration with respect to goods in Class 3. The PPO found that the prior marks were word marks composed exclusively of letter-ing, whereas the mark at issue was a word and device mark whose dominant element, HAPPY, was written with white letters against a dark-blue background and covered most of the trademark surface. Assessing the structure of the earlier trademarks, the PPO pointed out that the word HAPPY appeared after the word CLINIQUE, and for that reason they should be considered a series of trademarks intending to designate cosmetic products, with both word elements playing a dominant role in the

trademarks. The PPO underscored that the first element was a part of a company name; consequently, it found that the conflicting trademark was “taken out” of the trademarks held by the opposing party, this way becoming an autonomous designation but being, at the same time, similar to the prior trademarks.

The District Administrative Court (DAC) re-versed the PPO’s decision. (Case No. VI SA/Wa 2016/11 (DAC Apr. 15, 2012).) In the Court’s opinion, the word HAPPY in the later trademark was highlighted by means of its graphic size and its central placement therein, thanks to which it played a dominant role, whereas the function of HAPPY in the earlier trademarks was different in nature. The placement of the word CLINIQUE at the front of those marks demonstrated its function and gave the cited trademarks a characteristic tone. The DAC also found that the PPO had laconically examined the graphic elements of the mark at issue and left out of consideration the assessment of its graphic elements, the manner of presenting the word “happy” and the colors used.

On further appeal, the Supreme Administrative Court (SAC) supported the DAC’s judgment

and dismissed the cassation appeal lodged by Clinique Laboratories. (Case No. II GSK 15/13 (SAC Mar. 12, 2014).) Accordingly, it remanded the case for reexamination by the PPO.

The judgments rendered in this case seem to be in conflict with other rulings, including ones made by the Supreme Court and the Su-preme Administrative Court, in line with which protection of word marks is broad in scope, covering, inter alia, a ban on the incorporation of distinctive elements and on the granting of protection to other, similar trademarks, also where they are presented in specific graphic compositions.

The decision by the Intellectual Property Office of Singapore (IPOS) in Carolina Herrera, Ltd v. Lacoste ([2014] SGIPOS 3 (Feb. 20, 2014)) shows that the Registry may not be exceed-ingly enthusiastic about allowing a trademark proprietor to claim exclusive rights over a common element in a family or series of marks by virtue of the trademark registration of these family marks, where the registration of the common element has not been applied for independently.

Lacoste applied for the registration of the mark L.12.12 (see below) for goods in Classes 3, 8 and 25. (Application No. T1100417A, filed Dec. 2, 2010.) Carolina Herrera, Ltd opposed the mark based on its prior-registered series of trademarks, all of which contained the ele-ment 212 together with a word element.

The opponent argued that, although it had not applied for the registration of the mark 212 simpliciter, it had the exclusive claim over the common element of the subject mark, that is, 212, by virtue of its earlier trademarks

(namely, 212 ON ICE, 212 VIP, 212 SEXY and 212 BY CAROLINA HERRERA). It argued further that the element 212 formed the distinctive and dominant element of its earlier marks, which therefore constituted a series or a family of marks, all containing the element 212; consequently, the public recognized the entire family of marks as belonging to the opponent, and registration of the applicant’s mark would lead to confusion as to the trade origin in the marketplace.

The applicant contended that since the oppo-nent did not register the mark 212 simpliciter, it should not be granted a monopoly over the use of the mark. It argued, further, that the opponent’s marks were never referred to as 212 independently but were always denoted by an additional element (i.e., one of the word ele-ments SEXY, VIP, ON ICE and BY CAROLINE HER-RERA). This demonstrated that although 212 formed an element of the opponent’s mark, the public did not recognize 212 simpliciter as belonging to a family or series of marks.

The Registrar of Trade Marks, on a careful assessment of the evidence adduced by both parties and the relevant jurisprudence, held

that the opponent did not have the exclusive right over the element 212. She opined that the registration of the marks containing a common element did not ipso facto give rise to a presumption that the public perceived the marks as belonging to a family. In order to claim monopoly over a common feature, the opponent had to advance sufficient evi-dence that consumers perceived and remem-bered the marks as belonging to a family of marks, containing common characteristics and associated with each other in terms of source of trade.

In conclusion, the Registrar also held that there was no visual, aural or conceptual sim-ilarity between the mark applied for and the opponent’s marks and that the element 212 simpliciter would not be considered an “earlier trademark” under the Trade Marks Act.

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

Verifier: Monika WitkowskaMonika Witkowska Kancelaria Adwokacko-Rzecznikowska, Warsaw

Contributor: Gladys Mirandahpatrick mirandah co. pte. ltd., Singapore

Verifier: Ravinran KumaranRelianze Law Corporation, Singapore

21

Law&PracticeUNITED STATES Junior User Entitled to Concurrent Use Registration

Contributor: Jessica BahrRe:Sources USA, Chicago, IllinoisINTA Bulletin Law & Practice—United States & Canada Subcommittee

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

The Trademark Trial and Appeal Board (TTAB or Board) granted a junior user a concurrent use registration for the entire United States, exclud-ing New Jersey and New York. Boi Na Braza, LLC v. Terra Sul Corp. a/k/a Churrascaria Boi Na Brasa, Concurrent Use No. 94002525 (T.T.A.B. Mar. 26, 2014) (precedential).

The concurrent use proceeding arose out of the most recent proceeding regarding the trademark BOI NA BRAZA, owned by Boi Na Braza, LLC (BNB), and the trademark CHUR-RASCARIA BOI NA BRASA, owned by Terra Sul Corporation (Terra Sul); both marks cover restaurant services. While Terra Sul had prior-ity of use, BNB was the first to obtain federal registrations for its trademark (one word mark and one design mark). While BNB’s design mark registration was incontestable, in 2009 Terra Sul successfully petitioned to cancel BNB’s word mark on the ground of likelihood of confusion. Following the cancellation, BNB filed a new application to register its word mark, claiming the entire United States except New Jersey because of Terra Sul’s prior use in Newark. Despite the exclusion, Terra Sul opposed BNB’s application. The

TTAB dismissed the opposition in favor of the concurrent use proceeding.

The Board found that both conditions prece-dent required for a concurrent use registra-tion were satisfied. First, it held that the par-ties were “presently entitled to concurrently use the mark in commerce,” based on BNB’s good-faith claim and evidence that it had used the BOI NA BRAZA mark since 1999, well before it had knowledge of Terra Sul’s mark CHURRASCARIA BOI NA BRASA. Second, the Board found that there was no likelihood of confusion, based in part on the fact that the parties’ marks had been used concur-rently in geographically restricted areas for over 15 years without any “credible evidence” of actual confusion.

The TTAB then analyzed the “territory to which each party [was] entitled,” citing the general presumption that a “a prior user…is entitled to registration covering the entire U.S. limited only to the extent that the [junior] user can establish that no likelihood of confusion exists and that it has concurrent rights.” Because BNB was the first to file and Terra

Sul remained “static,” the Board held that BNB had overcome the presumption and was entitled to registration.

Although Terra Sul had never offered its services in New York, BNB filed a motion to amend the geographic restriction to include New York as well as New Jersey, to further prevent a likelihood of confusion. The TTAB determined that Terra Sul’s restaurant was close enough to New York to draw New York City patrons, and thus it granted BNB’s motion. Ultimately, the Board held that BNB—the junior user—was entitled to registration of its mark BOI NA BRAZA throughout the entire United States, excluding New Jersey and New York.

UNITED STATES Name and Design of Watch Part Are Unregistrable for

Watches and Jewelry

Contributor: Lori J. ShyavitzMcCarter & English, LLP, Boston, Massachusetts

Verifier: Rose AuslanderCarter Ledyard & Milburn LLP, New York, New York

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

In a precedential decision, the Trademark Trial and Appeal Board (TTAB or Board) affirmed the refusal of registration of the mark TOURBILLON & Design because it was merely descriptive of “Jewellery, horological and chronometric instruments.” In re Swatch Group Management Services AG (Swatch Group Management Services SA) (Swatch Group Management Service Ltd.), Serial No. 85485359 (T.T.A.B. Apr. 18, 2014).

First the TTAB concluded that the wording TOURBILLON merely described a feature or component of horological or chronometric instruments because a tourbillon is a me-chanical component that is found in certain

watches. Also, the record contained a signifi-cant amount of evidence that the word tour-billon described a type of watch, and Swatch disclaimed the right to use TOURBILLON for horological and chronometric instruments, but not for jewelry.

The TTAB also found TOURBILLON merely descriptive of jewelry because watches are included in the category of jewelry. The Board was not concerned by any redundancy its finding created in Swatch’s identification of goods, as such a redundancy “[did] not limit or otherwise adversely affect the evidentiary value of a registration certificate.”

The design element of Swatch’s mark was also merely descriptive because it “immediately convey[ed] the singular idea of a tourbillon” and had no other elements that might be con-sidered fanciful, arbitrary or suggestive.

Thus, in considering the mark as a whole, the TTAB held that the combination of TOURBIL-LON and the tourbillon design “reinforce[d] the singular impression conveyed by the mark as a whole, which [was] nothing more than the significance of ‘tourbillon.’”

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Dates and topics subject to change. Contact meetings@inta.org for the latest information.

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

June 16–27 TMA Roundtables: Crossing Borders: Various U.S. Cities International Treaties and Agreements Governing Trademarks

June 17 Roundtable: Nontraditional Trademark Protection Tokyo, Japan Under the New Trademark Law

July 9 INTA/USPTO Roundtables Cincinnati, OH, USA

July 28 INTA/USPTO Roundtables Alexandria, VA, USA

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

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

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

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

November 11–15 Leadership Meeting Phoenix, AZ, USA

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