INTABulletinThe Voice of the International Trademark Association

AssociationNews AssociationNews

March 15, 2013 Vol. 68 No. 6

In This Issue

FeaturesTrademarks That Make Health and Nutrition Claims 7

New gTLDs:Launch of Trademark Clearinghouse andOther Milestones

Law&PracticeColombia 12European Union 12United States 13

AssociationNewsCommittee Spotlight: Related Rights Committee 4

Volunteer Spotlight: Thomas Mudd 6 Rodrigo Velasco S. 6

The ongoing evolution of the Internet Domain Name System (DNS) continues to affect trademark owners in 2013, with several im-portant milestones recently announced by the Internet Corporation for Assigned Names and Numbers (ICANN).

ICANN’s program for introducing new generic top-level domain names (gTLDs) will require trademark owners to manage ever-increasing complexities in a changing Internet environ-ment. The Internet DNS is currently populated with 22 gTLDs in Latin-based scripts. The most popular top-level domain continues to be .com, with over 100 million second-level registrations. In addition, there are several hundred country-code top-level domain names (ccTLDs) used by countries and territories for promoting their local identity on the Internet, with a combined base exceeding 100 million registrations.

New gTLDs—Starting with IDNs—Will Launch in 2013ICANN’s new gTLD program is set to signifi-cantly increase the number of generic top-level domains on the Internet. In June of last year, ICANN announced it had received nearly 2,000 applications for approximately 1,400 unique new gTLDs or “strings,” and began its evaluation process while committing to delegate no more than 1,000 new gTLDs per year. Several months later, ICANN held a draw to determine the chronological order for processing the applications, and announced it would prioritize applications for new gTLDs in non-Latin-based scripts, which are referred to as Internationalized Domain Names (IDNs).

Among the new gTLD applications were 116 applications for IDN gTLDs, in 12 different non-Latin-based scripts (with the Chinese script being most prevalent). As of now, the

See “New gTLDs” on page 3

See “India Practice Trends” on page 2 See “New gTLDs” on page 3

On February 8–9, 2013, INTA held a two-day conference in Mumbai on “Trademark Practice Trends in India.” Program Co-Chair Bharat Subramanian (Anand and Anand, India) welcomed INTA President Toe Su Aung (BATMark Limited, UK), Program Co-Chair Ruby Chan (Baker & McKenzie, Hong Kong SAR), speakers, table topic moderators and attendees, and introduced the program. INTA India Representative Simran Daryanani Zainulbhai also formally greeted attendees.

Day one featured Luncheon Table Topics, with attendees able to choose among three simultaneous sessions: “Protecting Trademarks in India: The Perspective from Outside India,” moderated by Bharat Dube (IP Gurus and Strategic IP Information Pte. Ltd., Singapore); “Strategies for Multinational Corporations Operating in India,” moderated by Ananth Sripadarao (3M India Ltd., India); and “Advancements in the Asia-Pacific and the European Union,” moderated by Ruby Chan (Baker & McKenzie, Hong Kong SAR)

and Morag Macdonald (Bird & Bird LLP, UK). Participants discussed trademarks, counter-feiting, infringements and possible remedies, both in India and globally, in an interactive and engaging small-group format.

Two Days of Intensive Discussion at Trademark Practice Trends Conference in India

Attendees at the 2013 INTA India Conference, the Association’s third major meeting in the subcontinent.

Features Having a Trademark Recognized as Famous in Brazil 10

March 15, 2013 Vol. 68 No. 62

AssociationNews

INTA Bulletin CommitteeTo contact a member of the INTA Bul-letin Committee, send an email to the managing editor at bulletin@inta.org.

ChairWalter Palmer, Pinheiro Palmer AdvogadosVice ChairBarbara Sullivan, Henry Hughes

Association NewsRosemary Brkopac, BrandProtectFrank Hiscox, Lewis and Roca LLPFeaturesJan Gerd Mietzel, Pellon & Associados Europe LLPLiisa Thomas, Winston & Strawn LLP

Law & Practice: Asia-PacificJohn Hackett, A J ParkLaw & Practice: EuropeJaap Bremer, BarentsKrans N.V.Peter McAleese, Barzano & ZanardoLaw & Practice: Latin America & CaribbeanJamal Smith, Thornton SmithLaw & Practice: Middle East & AfricaCharles Shaban, Abu-Ghazaleh Intel-lectual PropertyLaw & Practice: United States & CanadaLisa Iverson, Neal & McDevitt, LLC

INTA Bulletin StaffExecutive DirectorAlan C. DrewsenDirector, Publishing & Online ResourcesJames F. BushAssociate Editor, INTA BulletinJoel L. BrombergManager, Marketing and Brand StrategyDevin Matthew ToporekDesignerEric Mehlenbeck

INTA Officers & CounselPresidentToe Su Aung, BATMark Ltd.President ElectBret Parker, Elizabeth Arden, Inc.Vice PresidentMei-lan Stark, Fox Entertainment GroupVice PresidentGabrielle Olsson Skalin, InterIKEA Holding Services S.A.TreasurerJ. Scott Evans, Yahoo! Inc.SecretaryRussell Pangborn, Microsoft Corp.CounselMichael Metteauer, Fulbright & Jaworski 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.© 2013 International Trademark Association

The Table Topics were followed by a general session on “The Trademark Landscape in India: Optimizing Business Strategies.” Jatin Trivedi (Y.J. Trivedi and Co., India) gave an overview of Indian trademark history, administration and challenges faced by Indian Trademark Offices. Dr. Niti Dewan (RK Dewan & Co., India) presented details about Indian trademark prosecution procedures and showed how they compare to those in some other jurisdictions. Murli Balasubramanian (Castrol India Pvt. Ltd., India) discussed the importance of trademarks and their enforcement, pointing out the effects of counterfeiting on companies and on govern-ments as well, as no tax is paid. Last, INTA Di-rector of External Relations Bruce MacPherson discussed the steps the Association has taken in helping brand owners worldwide.

In remarks introducing day two, INTA President Toe Su Aung discussed the importance of IP, particularly trademarks. She shared data from the USPTO’s report on IP and the U.S. economy, revealing that out of 313 industries identified in the report, 75 are IP intensive; 60 of those are trademark intensive. Ms. Aung emphasized that 40 million jobs in the United States are directly or indirectly related to IP-intensive industries.

India’s Controller General of Patents, Designs and Trade Marks, Shri Chaitanya Prasad, gave a brief history of Indian trademark laws. He discussed electronic filings, efforts to increase

bandwidth and upgrade servers, training of employees and efforts to clear the backlog of pending applications/cases. Deborah Cohn, U.S. Commissioner for Trademarks, discussed procedures and statistics for online applica-tions and USPTO efforts to maintain quality and timely prosecution of applications. WIPO Senior Counselor Alan Morgan Datri provided an intro-duction to the Madrid Protocol and international registration of marks through WIPO.

“Customs Recordal of Rights and Post-Clear-ance Audits: Boon or Bane?” was moderated by Dr. Niti Dewan (RK Dewan & Co., India), who presented the Indian scenario regarding cus-toms recordation of trademarks. Florian Schwab (Boehmert and Boehmert, Germany) discussed the European outlook and procedures and William Mansfield (ABRO Industries, Inc., USA) spoke on the U.S. approach.

Attendees benefited from the insights of expe-rienced mediation professionals in “In the Fast Lane: Trademark Litigations and Settlements Through Alternative Dispute Resolution (ADR).” In this session, moderated by Morag Macdon-ald, presenters Pravin Anand (Anand & Anand, India) and Sriram Panchu (Nani Palkhiwala Arbitration Center, India) provided an expert perspective on mediation, why it is successful and what to keep in mind when entering into mediation proceedings. The speakers empha-sized that in mediation there is no winner or

loser; rather, the resolution of the case results in both sides’ getting something.

“Social Media and Counterfeiting: Threats and Opportunities” examined the impact of social media on trademarks and brands. Presenters Loknath Swain (PRJankari Digital Marketing Pvt. Ltd., India), Bahrat Dube (IP Gurus and Strategic IP Information Pte. Ltd, Singapore) and Abhishek Malhotra (TMT Law Practice, India) spoke about online threats in social media and offered suggestions as to how brand owners can overcome these threats. “Business Trans-actions: The Evolving Relationship Between In-House and Outside Counsel” described the need for both in-house and outside counsel and offered suggestions on how to bridge their differences in perspective. The session, moder-ated by Elizabeth Puthran (Puthran & Associ-ates, India), included speakers Nick Beckett (CMS Cameron McKenna LLP, Beijing Represen-tative Office, China), Khozem Mirza (Aditya Birla Management Corporation Pte. Ltd., India) and Ananth Sripadarao (3M India Ltd., India).

The conference was adjourned with an invita-tion to INTA’s 2013 Annual Meeting in Dallas, Texas, USA, followed by a farewell reception. ■

Gopal TrivediChadha and Chadha, Mumbai, IndiaFor the INTA Bulletin Association News Subcommittee

India Practice Trends Continued from page 1

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AssociationNewsNew gTLDs Continued from page 1DNS includes over 30 IDN country-code do-mains (such as “.中国,” which means “China” in simplified Chinese characters), but there are no IDN gTLDs currently in existence.

The formal objection period—when trademark owners could submit legal rights objections on infringing new gTLD applications, through the World Intellectual Property Organiza-tion (WIPO)—was scheduled to conclude on March 13, 2013. The results of the initial evaluations are expected to be released shortly following the close of the objection window. ICANN’s new Chief Executive Officer recently stated that ICANN may be ready to recommend the delegation of the first new IDN gTLD as early as May 2013, ahead of its earlier-estimated timeframe.

In light of the unexpectedly high volume of applications for new gTLDs, INTA—through its participation in ICANN’s Intellectual Property Constituency (IPC)—provided ICANN a set of recommendations to improve its trademark and consumer protections in new gTLDs. In response, ICANN published a portion of these recommendations for public review and commentary, and is in the process of considering whether to implement the enhanced protections through its Trademark Clearinghouse (TMCH) database. The TMCH database was originally proposed by the Im-plementation Recommendation Team (IRT), formed by ICANN’s IPC in 2009, to serve as a single repository for validated trademark rights information and to provide a suite of rights protection services.

Trademark Clearinghouse Set to Launch March 26ICANN has announced that the TMCH will open for registrations on March 26, 2013. Every new gTLD registry will be required to interface with the TMCH database, to provide trademark protection services to brand own-ers by enabling “Sunrise Registration” and “Trademark Claims” services in each new gTLD registry. The TMCH will accept and ver-ify nationally or regionally registered trade-marks, court-validated marks and marks protected by statute or treaty. In addition, the

TMCH may accept and verify other types of marks upon the request of gTLD registries.

The TMCH provides two primary functions: (1) authenticating contact information and verifying trademark rights information; and (2) storing the information in database format so new gTLD registries can interface with the data and register domain names at the request of trademark owners during the Sunrise Period, or notify a trademark owner if a third party makes a conflicting domain reg-istration during the limited Trademark Claims service period.

The Sunrise Period is a limited pre-registra-tion window when trademark owners can register domain names that match their trademarks submitted to the TMCH. The Trademark Claims service period is a second limited period that will follow the Sunrise Period. The Claims service notifies both potential domain name registrants and trade-mark holders of possible infringing domain registrations. A prospective domain name registrant will receive a notice when attempt-ing to register a domain name that matches a trademark in the TMCH. If, after receiving and accepting the notice, the domain name registrant proceeds to register the domain name, the trademark holder will receive notification of the registration. It is important to note that the Trademark Claims period will last only for the first 60 days after each new gTLD launches; this window may be extend-ed, depending on the outcome of ICANN’s deliberations on the enhanced trademark protections proposed by the IP community.

The scope of rights eligible for entry in the TMCH includes all nationally or regionally registered trademarks from all jurisdictions, any trademark validated through a court of law or other judicial proceeding and trade-marks protected by a statute or a treaty in effect on or before June 3, 2008. Prices range from US$95 to US$150 per trademark record per year, depending on the number of trademarks submitted and the length of their registration period in the TMCH. Trademark owners who are interested with registering

with the TMCH can contact their domain service provider or any agent offering related services, or they can do so directly by visiting the TMCH website at www.trademark-clear-inghouse.com.

Uniform Rapid Suspension (URS) Service Provider SelectedICANN also recently announced it has se-lected the National Arbitration Forum (NAF) to serve as the first provider for its Uniform Rapid Suspension (URS) System. The URS was proposed as a new enforcement mecha-nism in new gTLDs, similar to the existing Uniform Domain Name Dispute Resolution Policy (UDRP), which is currently adminis-tered by several providers, including WIPO and NAF.

However, the URS differs from the UDRP pro-cess in several important ways. The domain names in dispute are not transferred to a prevailing complainant, but are suspended and then eventually re-released into the pool of available domains. In addition, respon-dents can respond even after a determina-tion is made against them; penalties exist for abusive filings, and an internal appeal process is built into the system. The URS is intended for clear-cut cases of cybersquat-ting, requires a higher burden of proof (clear and convincing evidence) and is designed to adjudicate cases more quickly and at a lower cost compared to the UDRP service.

INTA will inform the trademark community as further new gTLD program milestones are reached in 2013. Educational programming on Internet issues will take place at INTA’s Annual Meeting in May in Dallas, Texas, USA.

ICANN’s next international public meet-ing with take place in Beijing, China, April 7–11. INTA continues to work actively within ICANN’s multi-stakeholder model to rep-resent the interests of trademark owners. Please contact INTA External Relations Man-ager Claudio DiGangi (cdigangi@inta.org) for more information on INTA’s Internet Commit-tee and its activities within ICANN. ■

March 15, 2013 Vol. 68 No. 64

AssociationNewsCommittee Spotlight: Related Rights CommitteeThe Related Rights Committee (RRC) develops and advocates positions on intellectual prop-erty rights that are closely related to trademark rights: geographical indications, design rights, indigenous rights, and the right of publicity or personality rights. Equally important, it educates the trademark community on the im-portance of these rights and how they overlap and affect trademarks, and acts as a resource for understanding the scope of these rights worldwide. Committee Chair Clark Lackert (Dickstein Shapiro LLP, USA), Vice Chair Marion Heathcote (Davies Collison Cave, Australia) and INTA Staff Liaisons Bruce MacPherson, Seth Hays and Carla Schwartz are at the helm of affairs in this 85-member committee.

The Committee comprises four Subcommittees.

The Design Rights Subcommittee, headed by Keith Howick (Carpmaels & Ransford, UK), has two goals. The first is to review the overlap between trademarks and designs and searchability issues and to resolve whether such overlap should be encouraged in other jurisdictions and, if appropriate, consider drafting an appropriate INTA Board resolution to that end. The second is to examine the risk to trademark protection after expiry of design or patent protection both within and outside Canada and the United States and resolve recommendations for policy based thereon. The Geographical Indications Subcommittee, led by Scott Gerien (Dickenson Peatman & Fogarty, USA), is delegated the task of prepar-ing an INTA proposal for a TRIPS Article 23

Multilateral Register. It is also entrusted with organizing a bilateral task force to assess bilateral agreements entered into by the Euro-pean Union and the United States with each other and other jurisdictions to assess and summarize treatment and provisions regard-ing GIs under such agreements. The issue of TRIPS compatibility of current GI systems also comes under the purview of this Subcommit-tee, as does the treatment of geographical terms under trademark registration systems.

The Indigenous Rights Subcommittee, head-ed by Sandra Epp Ryan (Hamre, Schumann, Mueller & Larson, P.C., USA), maintains a watch on national and international develop-ments on the protection of indigenous rights, especially those of the WIPO Intergovernmen-tal Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, and identifies trademark issues associated with indigenous rights protection. This Subcommittee reviews the scope of protection of indigenous rights worldwide and develops materials that afford INTA members ready access to this information. It also devel-ops and recommends best practices guide-lines for trademark owners to facilitate the recognition of indigenous peoples’ cultural expressions when seeking the protection of trademark rights. In addition, the Subcom-mittee considers options for an indigenous awareness program regarding the extent of protection already able to be afforded to indigenous cultural expressions through exist-ing trademark regimes, and, where appropri-ate, recommends an educational strategy.

The Right of Publicity Subcommittee, led by David Grace (Loeb & Loeb LLP, USA), has the goal of reviewing INTA’s 1998 Board Resolu-tion on the U.S. Federal Right of Publicity and deciding whether any revisions should be rec-ommended to INTA’s Board of Directors. It will examine which countries have right of publicity or right of personality protection, how such protection overlaps with current trademark and unfair competition laws, and whether global harmonization is desirable. Based on this analysis, the Subcommittee will determine whether a resolution setting out minimum guidelines for right of publicity or right of per-sonality protection should be submitted to the Association’s Board.

The RRC had a busy schedule during the 2012 Annual Meeting. Not only were there sched-uled meetings of the Committee and its com-ponent subcommittees, but in addition Marion Heathcote, Vice Chair of the Committee, spoke on a panel on indigenous rights. The panel was formed and moderated by Keri Johnston (Johnston Law, Canada), who is a member of the GI Subcommittee and whose familiarity with many emerging issues being examined by the RRC’s subcommittees made it possible to highlight those issues for the greater INTA membership.

The Committee is also very active in comment-ing on proposed legislation in the four desig-nated areas, attending conferences at WIPO and elsewhere on these issues, and working on draft resolutions to move INTA policy on these rights forward.

Is your trademark practice prepared to react and recover in the event a disaster strikes?

Natural disasters happen and now more than ever it’s essential your office is equipped with a plan. That’s why INTA’s Disaster Relief/Business Continuity Project Team of the Law Firm Committee developed a comprehensive Disaster and Business Recovery Plan that enables a legal department, law firm, or a solo practitioner to handle and to recover from a range of emergency situations that have the potential to disrupt an office’s normal activities and operations.

How to Prepare for an Emergency:A Disaster and Business Recovery Plan

Be prepared! Visit www.inta.org/disasterrecovery

5

AssociationNewsThe Committee has several new projects in the pipeline:

• The members of the Indigenous Rights Subcommittee are involved with Tradi-tional Knowledge (TK), Genetic Resources (GRs) and Traditional Cultural Expres-sions (TCEs, or “expressions of folklore”) initiatives at WIPO. They are creating an IR database and are working on a best practices white paper on the subject.

• In the Geographical Indications Sub-committee, members are working with the proposed redrafting of the Lisbon Agreement for appellations of origin for a possible Lisbon Protocol pursuant to the INTA model GI treaty. In addition, they are working on an updated GI database, have commented on proposed GI legislations in Japan and Malaysia, and are liaising with other interested NGOs on the issue.

• The Designs Subcommittee has been de-veloping a resolution concerning search-

ability of designs and has been working with the Locarno Pilot Group. It has also been working on a white paper on parallel rights in designs and trademarks and their mutual effect when one of these rights expires. Additionally, the Subcommittee is developing a survey of the importance of design rights in certain industries.

• In November 2012, Right of Publicity Subcommittee Chair David Grace briefed the INTA Board of Directors on the 1998 Board Resolution on right of publicity and received Board feedback. The Subcom-mittee is working on an updated data-base on the right of publicity or persona rights worldwide and has commented on proposed legislation on the subject, most recently in Guernsey and Myanmar.

The Committee envisages an active role for itself in the context of global laws concerning various related rights. Besides commenting on draft legislation, as it has done in Guern-

sey, Japan, Malaysia and Myanmar, the RRC attends meetings whereby it can provide feedback and input on critical issues on INTA’s behalf. Its role is an important one in view of INTA’s involvement in ongoing discus-sions to develop treaties in the areas of IRs, GIs and designs.

Committee Chair Clark Lackert and Vice Chair Marion Heathcote are always available to liaise with other committees when expertise is needed in these four specialized areas or when developments arise, either in other com-mittees or elsewhere, of which the RRC should be notified. ■

Prem and Shefali SewakSewak & Associates, Advocates, New Delhi, India

Mr. Prem Sewak is a member of the INTA Bulletin Association News Subcommittee.

April 8–19 U.S. Roundtables Various U.S. Cities May 4–8 135th Annual Meeting Dallas, TX USAJuly 8–19 U.S. Roundtables Various U.S. CitiesJuly 17–28 TMA Roundtables Various U.S. CitiesSeptember 23–October 4 U.S. Roundtable Various U.S. CitiesOctober 3–4 Branding and Social Media Conference Chicago, IL USAOctober 15–November 25 TMA Roundtables Various U.S. Cities November 12–16 Leadership Meeting Miami Beach, FL USADecember 9–10 Middle East Regional Conference Dubai, UAE

INTA 2013 Calendar of EventsPlan your calendar with these INTA events and stay up to date on issues that affect your trademarks—domestically, regionally and globally.

Learn more about INTA events, including international roundtables, networking receptions, E-Learning, academic competitions and more at www.inta.org/programs

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

March 15, 2013 Vol. 68 No. 66

VolunteerSpotlight

Thomas Mudd, it could be argued, is a citizen of the world. The son of an Ameri-can father and an Austrian mother, he spent his childhood in Europe and the Middle East, followed by 15 years living in the United States. His return to Vienna following college and law school in America would prove to be both fortuitous and formative. A chance meeting with noted Austrian trademark lawyer Hans Georg Zeiner soon led to an offer for Thomas to join him in establishing a practice in the Czech

Republic. “It was his mentoring and passion for trademark law that inspired my strong enthusi-asm for the field,” Thomas says, “and that is a primary reason why I have been here for more than 20 years.” Today, he is managing partner at Zeiner & Zeiner, v.o.s., in Prague.

Thomas loves his work because it constantly fos-ters new knowledge and presents new challeng-es. As the primary contact for the firm’s many clients, he has developed a keen insight into a broad variety of businesses and their unique problems in order to be a better advocate. “I look forward to seeing what new things I will learn every day,” says Thomas, who handles matters of international and U.S. law. “I also enjoy the collaborative atmosphere of our office, where colleagues discuss the issues we are working on and brainstorm for potential solutions.”

Thomas also values his involvement in INTA—in-cluding his present service on the INTA Bulletin Committee—and the educational and network-ing benefits it provides. “These activities have allowed me to work with and learn from some of the best minds in the trademark field, and that

has reinforced my belief that I am not young enough to know everything.”

Because of the rapid evolution of Internet trademark usage issues, the veteran attorney would like to see INTA expand resources and training for judges. “If one looks at the history of trademark law, it is obvious that the devel-opment of law has accelerated faster over the past 20 years than at any other time,” Thomas says. “I see that judges are having an even harder time than lawyers in keeping up with all the new developments.”

Thomas spends most of his leisure time with 10-month-old daughter Sophie and wife Dana. In addition, he enjoys long walks with their “amazingly fun” Hungarian Puli named Haver. A fancier of vintage Porsche automobiles, mostly at museums, Thomas hopes to build his own small collection some day.

Rodrigo Velasco S., an avid race-car driver, began his law career as a court litigator. After attending his first trade-mark opposition and cancellation hearings, however, he changed lanes, and he hasn’t looked back since. Now, as managing partner of the intellectual property group at Alessan-dri & Compañía of Santiago, Chile, he deals extensively with trademark prosecution and litigation matters.

Aside from traditional trademark law issues, a significant part of Rodrigo’s day-to-day practice involves domain names, both

through acting as an arbitrator for WIPO and through counseling and representing clients in related litigation and arbitration. Along with domain names, Rodrigo believes that a focus on the Internet and other new technol-ogies is the path forward for this area of the law and many of today’s practitioners.

Rodrigo is a lawyer who loves giving back to the profession. An active member of INTA, he was for many years the contributor for Chile to The Trademark Reporter’s International Annual Review issue. He also served on the Organiz-ing Committee for the 1998 Annual Meeting in Boston, as well as in several International Roundtables. In addition to his INTA volunteer efforts, Rodrigo is active in the Chilean As-sociation of Industrial Property (ACHIPI), the Inter-American Association of Industrial Prop-erty (ASIPI) and the International Federation of Counselors in Industrial Property (FICPI). He is currently Chile’s delegate to the Executive Committee of FICPI.

Not only does Rodrigo find time to manage his busy legal practice and volunteer efforts, but he also serves as a teacher, author and frequent lecturer. Some of his most memo-rable experiences have been as Professor of

Civil Procedure and Industrial Property Law at the University of Chile, his alma mater. He has written several articles on industrial and intellectual property, published in Chile and internationally. In addition, he has also spoken about trademark law at many national and in-ternational conferences, and will participate in the Latin American Legal Update at the 2013 Annual Meeting in Dallas.

Being a lawyer runs in Rodrigo’s family: his father was Dean of the University of Chile Law School, in Santiago, and his two sons are lawyers as well. If he hadn’t chosen a career in law, though, he would have loved to follow his other great passion and be a Formula One racing driver. A race-car driver when he was young, Rodrigo now collects cars, participates in classic car rallies and is writing his second book on the history of car racing in Chile. He even attended the racing school at the Ferrari factory in Italy. Fittingly, several of his favorite trademarks are car-related: FERRARI, ASTON MARTIN and JAGUAR.

Barbara Barron KellyCorsearch – Wolters Kluwer Corporate Legal Services, New York, New York, USAINTA Bulletin Association News Subcommittee

Jennifer K. ZieglerHarley-Davidson U.S.A., LLC, Ann Arbor, Michigan, USAINTA Bulletin Association News Subcommittee

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FeaturesTrademarks That Make Health and Nutrition ClaimsUnder U.S. and EU Food-Labeling Regulations

As indicators of source, all trademarks convey some meaning. But certain trademarks convey even more, suggesting something about the quality or nature of the goods or services that bear them. These marks make claims that, if not true, may mislead consumers. Thus, like all advertisements, these marks face scrutiny as to whether the claims that they make are factually substantiated. In both the United States and the European Union, governments regulate health and nutrition claims made in food labels and within trademarks themselves.

In the United States, government and con-sumer lawsuits have challenged the truthful-ness of marks since at least 1919. In the seminal decision of Brougham v. Blanton Manufacturing Co., 249 U.S. 495 (1919), the U.S. Supreme Court explained that registra-tion does not insulate a trademark from the scrutiny of other government agencies con-cerning the veracity of the claims it makes.

In Brougham, the U.S. Department of Agricul-

ture (USDA), responsible for ensuring the ac-curacy of statements made about meat and dairy products, challenged the defendant’s use of CREAMO as a mark for margarine because the product did not actually contain any cream. The defendant argued that the U.S. Patent and Trademark Office (USPTO) had already reviewed the CREAMO mark before granting the federal registration.

Nevertheless, the Court ruled that the fact that CREAMO passed muster as a valid mark had no bearing on whether it also conveyed some unsubstantiated claim about the product: “The test of the product is the meat inspection laws, not the trade-mark laws.… In other words, the power of determining wheth-er a trade-name is ‘false or deceptive’ given by the law to the Secretary of Agriculture is, when exercised, conclusive of the falsity or deception of the name.” Id. at 499.

Since then, the USPTO and U.S. courts regu-larly have assessed allegations that marks convey false or misleading statements about the goods or services for which they are used. Section 2(a) of the Lanham Act provides that a mark may be refused registration if it “[c]onsists of or comprises … deceptive … matter.” 15 U.S.C. § 1052(a). Even after registration, a mark may be canceled by the Trademark Trial and Appeal Board or a federal district court on the ground that it conveys false or misleading statements. Indeed, deceptive trademarks that are registered may be canceled at any time, even after they have become incontestable.The U.S. Court of Appeals for the Federal Circuit has articulated the following test for

assessing whether a mark consists of decep-tive matter:

1. The term is misdescriptive of the charac-ter, quality, function, composition, or use of the goods;

2. Prospective purchasers are likely to believe that the misdescription actually describes the goods; and

3. The misdescription is likely to affect the decision to purchase.

In re Budge Manufacturing Co., 857 F.2d 773, 775 (Fed. Cir. 1988). Importantly, the second and third prongs of the test clarify that simple puffery, which a consumer is not likely to believe or allow to affect his decision making, does not constitute deceptive matter. When marks incorporate terms and phrases that are already subject to statutory definitions and reg-ulations, however, the products bearing those marks must comply with those definitions.

One such heavily regulated area is consumer food products, for which the U.S. Food and Drug Administration (FDA) and the USDA have promulgated extensive regulations defining a wide variety of phrases and terms that can be construed by consumers as making claims about the ingredient content or health benefits of food products. For example, an advertiser may refer to its meat product as “lean” only if it complies with the FDA definition at 21 C.F.R. § 101.62 and either the USDA meat definition at 9 C.F.R. § 317.362(b)(6) or the USDA poultry definition at 9 C.F.R. § 381.462(b)(6). Each

Michael W. Rafter and Shiveh R. RoeKilpatrick Townsend & Stockton LLP,Atlanta, Georgia, USAJohn C. KnappKilpatrick Townsend & Stockton LLP,New York, New York, USAJan Gerd MietzelPellon & Associados Europe LLP,Düsseldorf, Germany

Mr. Rafter is a member of and Mr. Mietzel is co-chair of the INTA Bulletin Features Subcommittee.

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

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

Visit www.inta.org/CountryPortals

See “Health and Nutrition Claims” on page 8

March 15, 2013 Vol. 68 No. 68

Featuresdefinition provides for maximum levels of total fat, saturated fat and cholesterol that may be present per serving size if the product is to be called “lean.” Similar regulations define terms such as “fat free,” “high in [nutrient],” and even “fresh” and “healthy,” which suggest that the product provides a certain level of nutrients. 21 C.F.R. § 101.13.

In the European Union, Regulation (EC) No. 1924/2006 (EC Regulation), which went into effect on July 1, 2007, created a uniform, Community-wide regime for food product claims about nutrition and health in EU member countries. Under Article 5.1 of this regulation, nutrition and health claims for food products must satisfy the following requirements:

(a) the presence, absence or reduced content in a food or category of food of a nutrient or other substance in respect of which the claim is made has been shown to have a beneficial nutritional or psycho-logical effect, as established by generally accepted scientific data;

(b) the nutrient or other substance for which the claim is made … is contained in the final product … in a quantity that will pro-duce the nutritional or physiological ef-fect claimed as established by generally accepted scientific data; or … is not pres-

ent or is present in a reduced quantity that will produce the nutritional or physi-ological effect claimed as established by generally accepted scientific data;

(c) where applicable, the nutrient or other substance for which the claim is made is in a form that is available to be used by the body;

(d) the quantity of the product that can reasonably be expected to be consumed provides … a significant quantity that will produce the nutritional or physiological effect claimed as established by gener-ally accepted scientific data.

The EC Regulation additionally states that health and nutrition claims must be worded in a manner that the average consumer can understand and must refer to nutrients and substances available in an immediately con-sumable form.

Like the FDA regulations discussed above, the EC Regulation sets out the specific conditions that must be met before a claim can be made about the nutritional content or health benefits of a food product. Also, as in the U.S. system, the European Food Safety Authority (EFSA) has published lists of approved health and nutri-tion claims. For nutrition claims, under Article 8 of the EC Regulation, food producers may

make only the claims on the EFSA’s approved list of nutrition claims (enumerated in the Annex to the EC Regulation), and these claims must comply with the provided conditions. For example, a producer can claim that its food is “a source of protein” only when protein pro-vides at least 12 percent of the energy value of the product. Under Article 10, for health claims, manufacturers may make health claims only from an EFSA-approved list under the conditions provided, and they may submit any new claims to the EFSA for approval, again in a manner similar to the FDA’s procedure. Compare EC Regulation arts. 13.5 and 18 with 21 C.F.R. §§ 101.69 and 101.70.

Importantly, the EC Regulation explicitly pro-vides that these restrictions apply to any trade-marks and trade names that contain health or nutrition claims. Products may bear such trademarks and trade names without specific EFSA authorization, however, if they are ac-companied by an approved health or nutrition claim that substantiates the claim suggested by the mark. When the EC Regulation was promulgated, the European Union determined that it would be unfair to demand immediate compliance with such a regulation when poten-tially objectionable marks had been used in the market for years. Accordingly, Article 24.2 provides that “[p]roducts bearing trade marks

Health and Nutrition Claims Continued from page 7

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Featuresor brand names existing before 1 January 2005 which do not comply with this Regulation may continue to be marketed until 19 January 2022 after which time the provisions of this Regulation shall apply,” thus creating a transi-tional period for pre-2005 trademarks.

Because no trademarks appear to have been examined yet, it is difficult to discern which trademarks and trade names will be found to constitute health or nutrition claims. Guid-ance on what may be sufficient may be drawn from the EFSA’s ongoing review of thousands of health and nutrition claims made in food product labeling. The EFSA’s EC Regulation rulings often have resulted in rejections of pro-posed claims based on insufficient scientific evidence. On this basis, the EFSA rejected the claim that soy isoflavones help maintain bone mineral density and reduce the vasomotor symptoms associated with menopause. On the other hand, finding sufficient evidence, the EFSA approved several claims about magne-sium, including the claim that magnesium reduces tiredness and fatigue.

In light of the EC Regulation, England’s Depart-ment of Health (DH) has offered guidance to trademark owners seeking to comply with the new rules. England Department of Health, Nu-trition and Health Claims (Nov. 2011). The DH notes that the EC Regulation “does not define what is meant by ‘trademarks or brand names existing before January 2005,’” leaving mark owners unsure of whether the transitional period applies to them. The DH posits that the transitional period applies to marks with regis-trations or evidence of use from before Janu-ary 2005, but it cautions that, “in the case of exported products, it would be best to check with the importing country authorities.” The DH also clarifies that trademark owners can offer new products after January 2005 under the umbrella of a pre-2005 trademark.

For trademarks that make health or nutrition claims, the DH sheds light on what may be required of the related, approved claims that must accompany the trademarks after the transitional period expires. It explains that “[a]lthough the Regulation does not specify where the accompanying claim should be made and there is no case law to inform an interpretation, it is our view that the claim should be clearly visible and legible.” As for which trademarks may be at risk, the DH suggests HEALTHY CHOICE as an example of a trademark that makes a nutrition or health claim and would thus be subject to the EC Regulation. As the DH notes elsewhere, the term “healthy” fits under the EC Regulation as a claim of general, non-specific benefits for overall good health, and it must be accompa-nied by a related, explicitly approved claim.

Similarly, a regulation expert with the Propri-etary Association of Great Britain, a U.K.-based trade group, suggested that the SLIM.FAST trademark may be at risk under the EC Regulation. The expert, Helen Darracott, explained, “The actual name of the product is a health claim in effect—it slims and it does it quickly—and therefore it’s a claim which talks about the rate of weight loss so this will actu-ally fall foul of the regulation.” Shane Starling, Unilever: Slim.Fast Brand Name Is Not a Health Claim, NutraIngredients.com (July 7, 2010), available at http://www.nutraingredi-ents.com/Regulation/Unilever-Slim.Fast-brand-name-is-not-a-health-claim.

In response, SLIM.FAST mark owner Unilever stated that its mark did not make any claims subject to the EC Regulation. It explained, “We don’t make any precise claim about the rate and amount of weight loss consumers will experience when using this brand, and therefore this regulation does not apply.” Id. Unilever further noted that the EFSA

has approved the claim that weight-control meal replacements can be used to reduce body weight and maintain body weight after weight loss. Id. This statement suggests that although Unilever has stated that it does not believe the SLIM.FAST mark makes claims that are subject to the EC Regulation, it may nevertheless accompany its use of the mark with the related claim that its products are weight-control meal replacements that can reduce body weight and maintain body weight after weight loss.

In preparation for the end of the EC Regulation transitional period on January 19, 2022, food producers should consider whether their marks may be construed as making health or nutrition claims. If so, mark owners should consider using the transitional period to add related, approved claims on labels or to submit new proposed supporting claims with appropriate substantiation for approval by the EFSA. Based on ongoing rulings by the EFSA regarding terms that may be included in existing marks, it may become apparent that certain marks may not be permitted to remain in use after the 2022 deadline. When such an outcome appears like-ly, food producers may wish to begin introducing additional marks in parallel with the established brands to provide fallback alternatives for any trademarks that appear likely to be subject to the phase-out requirements.

Thus, in both the United States and the Euro-pean Union, food product marks face scrutiny if they make health or nutrition claims. In the United States, these marks face potential review by the USPTO, the FDA and the USDA and in U.S. courts. Meanwhile, in the Europe-an Union, food product marks are facing new, somewhat uncertain regulation by the EFSA. Food producers present in or entering the U.S. and EU markets should consider these varied laws and regulations. ■

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March 15, 2013 Vol. 68 No. 610

Features

Article 125 of the Brazilian Industrial Property Law (Law No. 9,279 (1996)) affords special protection to marks that are famous (de alto renome) and known by the Brazilian popula-tion in general. This kind of special protection, which protects the mark in all fields of activity and requires that the mark be registered in Brazil, is the subject of this article. The focus in particular will be on how the National Institute for Industrial Property (INPI) deals with the matter and how Brazilian federal courts are deciding cases where parties request that their marks be recognized as famous.

Protection of Famous Marks in All Fields of ActivityThe previous Brazilian IP Law, Law No. 5,772 (1971), protected a famous mark in all fields of activity through a special type of registration. INPI Resolution No. 046/80 provided that the owner of a famous trademark could request special protection for the mark in all fields of activity even when no third-party application for an identical or similar mark existed. The INPI would analyze the request and, if it was substantiated, declare the mark famous, and that designation would be included in the records of the relevant trademark registration. In principle, the special protection would last until the registration was eventually cancelled owing to lack of use of the mark, failure to renew or any other legal reason.

The current IP Law provides that registered marks that are considered to have obtained “high renown,” or fame, in the country shall be protected in all fields of activity. However, the protection system regarding famous marks is not exactly the same as under the previous law.

The administrative procedures created by the INPI for obtaining the declaration of fame for a given mark under the 1971 IP Law were no longer available with the introduction of the new IP Law in 1996. As the INPI did not create new procedures until 2004, there were—during that eight-year span—no administrative proceedings in place to provide guidance to the owner of a famous mark on how to have the mark declared famous in Brazil and obtain the corresponding protection in all fields of activity.

During this interim period, several owners of famous marks filed oppositions and administrative annulment requests with the INPI (against third parties’ recently registered marks, grounding these requests on the fame of their respective marks. Some of these trademark owners presented documents that they considered demonstrated that their marks were famous in Brazil and/or worldwide. Others simply argued that because of to the fame of their marks, no identical or similar marks should be registered by third parties in any class, based on the language of Article 125 of the IP Law. However, the INPI issued no administrative decisions recognizing a mark as famous during this period.

The absence of specific proceedings at the INPI for obtaining the declaration of fame motivated

the owners of famous marks to file lawsuits seeking to have the fame of their marks declared in court.

Resolution No. 110, issued by the INPI in 2004, introduced new rules setting forth the procedure for having a mark recognized as famous. The Resolution stated that the INPI could recognize marks as famous only when analyzing oppositions or administrative annulment requests that were based on the allegation that the opponents’ or applicants’ marks were famous.

One year later, the INPI issued Resolution No. 121, which, in addition to superseding Resolution No. 110, regulated the procedure for obtaining the declaration of fame of a Brazilian trademark in accordance with Article 125 of the IP Law.

As had Resolution No. 110, Resolution No. 121 listed documents that the trademark owner should submit to the INPI to prove that its mark was highly renowned in Brazil. Both Resolu-tions limited the special protection in all fields of activity to a period of five years. A specific fee applied to oppositions and administrative annulment requests based on the allegation that the mark was famous.

Positions of INPI and Brazilian Courts on the Ability to Declare a Mark FamousAs mentioned above, during the absence of administrative rules guiding the process for obtaining a declaration of the fame of a mark

Challenges in Having a Trademark Recognized as Famous Independent of Proceedings at Brazil’s INPI

Renata Pereira CarneiroSoerensen Garcia Advogados Associados, Rio de Janeiro, BrazilINTA Bulletin Features Subcommittee

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Featuresfrom the INPI, owners of famous marks sought declarations of fame from the Brazilian courts. This the case with respect to the marks DAKOTA (for shoes) and ABSOLUT (for vodka). The owners, Dakota Calçados Ltda. and V&S Vin & Sprit Aktiebolag, filed the lawsuits in 1998 and 2002, respectively, before the federal courts of the State of Rio de Janeiro, asking for declara-tions of fame of their marks. The INPI was the defendant in both cases.

The courts of first instance declared both marks—DAKOTA and ABSOLUT—famous.

Subsequently, the INPI filed proceedings to cancel the declarations of fame that had been granted by these courts. It argued that—in line with the doctrine of separation of powers—only its trademark examiners could declare a mark famous, and judges could not make such a determination. The INPI further argued that if courts declared a mark famous, they would encroach on the executive branch’s authority, and that unless the judges expressly defined the period for which the special protection would be granted, the judicial declaration would, in principle, last forever.

The INPI’s Resolutions defining the rules for obtaining recognition of a mark as famous corroborated the argument that the execu-tive branch was the only one responsible for declaring a mark famous and protected in all fields of activity. The limited five-year duration of the special protection provided for under these Resolutions would assure that a mark that was no longer famous could not be used to hinder third parties from registering identical or similar marks for goods and services different from those protected by the once-famous mark’s core registration.

The judges of the appeals courts agreed with the INPI, and the marks DAKOTA and ABSOLUT lost their fame status as well as the corresponding special protection in all fields of activity. INPI v. Dakota – AR 200302010157745, TRF2, Nov. 18, 2008; EAIR 200302010157745, TRF2, June 28, 2010. INPI v. Absolut – AR 200702010133734, TRF2, Aug. 4, 2008; AG 200802010086669, TRF2, Dec. 19, 2008. The owner of the mark ABSOLUT then filed a special appeal to the Superior Tribunal of Justice, Brazil’s highest court for nonconstitutional issues. On February 25, 2013, the Superior Tribunal published a decision maintaining the appellate court’s

holding. Absolut v. INPI – REsp 1162.281, STJ, Feb. 25, 2013.

While the decision in the Dakota case was very prudently phrased and explicitly stated that Brazilian courts could “incidentally” (i.e., in an inter partes proceeding, such as an infringement action) recognize that a mark was famous, the decision in the Absolut lawsuit merely declared that the courts could not abstractly verify whether a mark was famous and that said verification would have to occur in accordance with Resolution No. 121, that is, be performed by the INPI.

There is concern that the Absolut decision can be misinterpreted to mean that only the INPI can recognize the fame of a given mark, and that courts cannot do so, even incidentally. Under this scenario, if a party owned a trade-mark registered for computers that was famous in Brazil, but it had not had the opportunity to file an opposition or an administrative annul-ment request based on the allegation of high renown because no one had tried to register an identical or similar mark with the INPI, the party could not stop a third party, through a trademark infringement lawsuit, from using the famous mark to identify food services, as the courts would understand that they could not recognize the fame of the mark. In this situation, without having its mark recognized as a famous by the court, the owner would not be able to take advantage of the special protection of Article 125 of IP Law for its mark, and the court might even conclude that the marks could coexist because food services are not related to computers.

Significance and Importance of “Incidental Recognition” of Fame by Brazilian CourtsAn “incidental recognition” of fame by a Brazilian court extends the protections of a famous mark to the owner only in relation to the other party in that specific lawsuit. It does not grant the mark the general fame status affording protection against third parties that may be granted by the INPI.

The ability of courts to “incidentally recognize” the fame of a mark is necessary in order to assure adequate protection of trademark owners’ rights and prevent unauthorized parties from unduly using the marks. Without such recognition, trademark owners could face diffi-culties in enforcing their rights against infringers

that are only using the famous mark—without having applied to register it—only to cover goods or services that are not identical or akin to those protected by the core registration for the famous mark.

Furthermore, infringers that apply for famous marks at the INPI may, in addition to using the marks, withdraw their applications when sued by the famous trademark owners. In this case, even if the owner of the famous mark had opposed the application and presented all documents and information necessary prove the fame of its mark at the INPI, the proceeding would be dismissed without the issue of high renown’s being analyzed, and the INPI would merely publish a notice stating that the applica-tion was shelved owing to its withdrawal.

A judge who considers a mark to be famous and meriting protection in all fields of activity, despite its not being formally recognized as such by the INPI, but who refuses to declare the mark highly renowned, at least incidentally, is allowing the infringement to continue. The trademark owner would be left without legal means to pursue the enforcement of its rights.

SummaryIt is not reasonable to conceive that the Brazilian IP Law and Resolution No. 121 regarding the protection of famous marks would allow infringers freely to use third parties’ marks without any prospect of punishment. Conse-quently, no judge should refrain from analyzing the fame issue and eventually declaring the mark to be famous in an inter partes case based on the argument that only the INPI can decide on matters of fame according to Resolu-tion No. 121.

Clients and attorneys should bear in mind that they should always be zealous with regard to fame issues in Brazilian courts. They should be prepared to submit evidence of the fame of a mark in Brazil. Even if they face initial hesita-tion from judges who do not want to recognize the fame of a mark incidentally, believing that only the INPI can analyze fame claims, clients should not let themselves be discouraged from continuing to fight for the enforcement of their rights. There have been reliable decisions finding that an incidental declaration of fame is possible, and the more the issue is discussed by the courts, the easier it should be to claim rights based on the fame of a mark that has not been declared as such by the INPI. ■

March 15, 2013 Vol. 68 No. 612

Law&Practice

According to a decision issued on January 18, 2013, by a Colombian Administrative Court on Intellectual Property Matters, the actions and decisions of the Superintendence of Industry and Commerce (the Colombian trademark of-fice) not only are confined to peremptory norms protecting fundamental rights but also must be carried out within a specific and preestablished time frame.

When a trademark application is filed, whether or not oppositions are filed by third parties, the Superintendence must always conduct a regis-trability analysis in order to determine whether the applied-for mark is capable of functioning as a trademark or if registration must be denied because it lacks distinctiveness.

Naturally, this decision may be appealed by the interested party. However, as was stated in a the ruling, the filing of the appeal does not

entitle the Superintendence to conduct the registrability analysis again, nor to change its initial decision, based on additional and alleg-edly similar trademarks different from those used for the comparison during the examina-tion conducted in the first instance. Permitting such an analysis would constitute a violation of the fundamental right to due process, as the affected party would have no opportunity to challenge the new arguments set forth in the appeal decision.

Accordingly, it is possible to revoke the grant of registration for a trademark, but the grounds on which the revocation may be based are to be limited to the very specific arguments already invoked by the opposing parties, if applicable, or by the Superintendence.

The ruling expressly stated that no subsequent discovery of a similar trademark after the initial

decision may be considered to invalidate a pre-viously granted trademark registration, as there is a specific time frame for the Superintendence to conduct the registrability examination.

After this ruling, it can be expected that the overturning of decisions rendered by the Super-intendence in the first instance should not only be reduced but also be much more predictable.

COLOMBIA Constitutional Rights Interfere with Rejection of Registration,

Impose Time Frame for Registrability Examination

Contributor: Danilo Romero-RaadRomero Raad Abogados, Bogotá

Verifier: Jorge ChávarroCavelier Abogados, Bogotá

Both are members of the INTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee.

In November 2012, the Cancellation Division of OHIM handed down a decision on an invalidity action filed against the well-known Innocent Halo logo (see below) on the basis that the proprietor of the Community trade mark (CTM) registration did not own the copyright in the original work. Deepend Fresh Recovery Ltd v. Fresh Trading Ltd, Decision No. 3555C (Nov. 15, 2012).

In 1999, under commission from Fresh Trading Lim-ited (defendant), Deepend London Limited (applicant) was instructed to design a brand that would be used on the popular Innocent juices.

A Heads of Terms document was drafted and remuneration discussed; however, an executed agreement was never created and no payment was transferred. Subsequent to being placed into liquidation, the copyright in the work was assigned to Mr. Andrew Chappell and ultimate-ly to the applicant.

The defendant applied for the contested CTM in 2000, and the mark was registered the fol-lowing year for goods and services in Classes 29, 30 and 32. (CTM No. 1815612, filed Aug. 18, 2000, registered Oct. 18, 2001.) In 2009, the applicant filed an invalidity action on the basis of Article 53(2)(c) of the CTM Regulation (Council Regulation (EC) No. 207/2009), which provides that “[a] Community trade mark shall be declared invalid on application to the Office … where the use of such trade mark may be prohibited pursuant to another earlier right under … national law governing its protection, and in particular … a copyright.” The applicant also claimed that the defendant had infringed under Sections 16(2), 17(2) and 23 of the Copyright, Designs and Patents Act (CDPA).

The Cancellation Division held that the logo was an original work within the meaning of Section 4(1)(a) of the CDPA. The main question was, then, Who owned the copyright? Because the defendant failed to provide evidence of an executed agreement between the parties, as

required under CDPA Sections 90(3) and 91, the Division found that the copyright belonged to the applicant. As the defendant could not rely on the principles of acquiescence or estop-pel, the CTM registration was invalidated in its entirety.

This decision serves as a warning to all busi-ness entities that trademarks are not neces-sarily stand-alone rights. It is a stark reminder that individuals should ensure all agreements are properly executed and ownership of vari-ous intellectual property rights correctly identi-fied from the outset.

EUROPEAN UNION Innocent Found Guilty: CTM Invalidated Because

Registrant Did Not Own Copyright

Contributors: Brenda O’Regan and Renée NugentFRKelly, Dublin, Ireland

Verifier: Michaela Huth-DierigBoehmert & Boehmert, Munich, Germany

Ms. O’Regan and Ms. Huth-Dierig are members of the INTA Bulletin Law & Practice—Europe & Central Asia Subcommittee.

13

Law&Practice

In a “colorful” ex parte appeal, the Trademark Trial and Appeal Board (TTAB) determined that the color “teal” as used on “medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and inter-ventional devices in vascular and non-vascular procedures,” was confusingly similar to the color “blue” registered for use on “multi-lumen and single-lumen central venous catheters.” In re Cook Medical Technologies LLC, Serial No. 77882876 (T.T.A.B. Dec. 31, 2012) (preceden-tial).

Cook Medical Technologies LLC filed an ap-plication to register “a translucent iridescent teal color” as shown “along the shaft length of a rib-reinforced medical guiding sheath.” Cook sought registration on the Supplemental Regis-ter, claiming a first use date of April 21, 1993.

In the United States, color marks are not inherently distinctive, and they cannot be registered on the Principal Register without a showing of acquired distinctiveness under Section 2(f). Color usually is perceived as an ornamental feature of the goods or services. However, color may function as a trademark if it is used as a trademark or service mark and is perceived by the purchasing public as an indicator of source to identify and distinguish the goods or services in connection with which the mark is used. The U.S. Patent and Trade-mark Office does not endorse or recommend a specific commercial color identification system. Instead, the generic name of the color must be claimed in a mark description.

The examiner refused registration of the teal color based on a likelihood of confusion with three registrations owned by the same entity (U.S. Reg. Nos. 2213729, 2213772 and 2875842). Each of the registrations claimed the color “blue” as a feature of the mark as used on catheters, and the mark was regis-tered with a showing of acquired distinctive-ness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f).

On appeal, the TTAB confined its analysis to the refusal based on Registration No.

2875842, consisting of the color “blue” as “applied to the tip and indwelling length” of the catheters, as the Board determined that this registration presented the strongest case for refusal.

In its decision, the TTAB first analyzed the similarity of the goods. The Board noted that it was “well-settled that the goods of the parties need not be identical or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion.” In other words, it is sufficient that the goods of the parties are related in some manner or the marketing activities of the parties could create the mistaken belief by consumers that the goods originate from the same source. While Cook’s brief was silent with respect to the similarity of the goods, the TTAB found that the company’s website and third-party websites showed that the goods of the parties were closely related. This determination weighed in favor of a finding of a likelihood of confusion.

Moreover, as the goods are medical devices and there are no limitations as to channels of trade or classes of purchasers, the TTAB presumed that the goods of both parties were sold through medical supply distributors and were purchased by physicians and purchas-ing agents for medical facilities. As a result, it determined that the overlap in trade channels and purchasers weighed in favor of a finding of a likelihood of confusion.

The TTAB then noted that the crux of the ap-peal centered on the visual similarity of the marks. The test was not whether the marks could be distinguished when subjected to a side-by-side comparison but whether the marks were sufficiently similar in appearance and commercial impression that consum-ers could be confused as to the source of the goods offered under the marks. Even a sophisticated purchaser’s recollection of design marks was, the Board noted, often of a general nature. As a result, marks may be deemed confusingly similar despite differenc-es between them. In addition, the likelihood-of-confusion analysis takes on additional sig-nificance when the goods are pharmaceuticals

or medical instruments, owing to the serious consequences of confusion.

Next, the TTAB reviewed dictionary definitions of “teal,” which included “greenish blue,” “a bluish shade of green; shade of green tinged with blue,” and “a medium blue-green color.” The Board determined that the registrations cited by the examiner were not limited to a certain shade of “blue” and covered all shades of blue, including “greenish blue.” It therefore found that the marks were similar in color in the context of the goods. The fact that Cook’s mark may have appeared to be “translucent” or “iridescent” was not sufficient to distinguish the marks in a meaningful way as these dif-ferences might not be perceptible in certain lighting conditions.

Finally, the TTAB analyzed the number and nature of similar marks for use on similar goods. Because the record did not show any third-party use or registrations of a color mark in the medical devices field, the Board found that the registrant’s mark was unique and not coexisting with similar marks in the field. While Cook argued that its mark had coexisted with the registrations for 18 years, the TTAB found that this statement was entitled to little weight as it was uncorroborated. To the extent that Cook raised a doubt about likelihood of confusion, the Board noted that any doubt must be resolved in favor of the registrant. It also commented that Cook could seek consent from the registrant or a restriction of the regis-tration under Section 18 of the Lanham Act to modify the color “blue” in the registrations to a specific shade of blue.

In sum, considering the prismatic panoply of likelihood-of-confusion factors, the TTAB af-firmed the examiner’s refusal.

Contributor: Aimee L. KaplanCollard & Roe, P.C., Roslyn, New York

Verifier: Jody Drake Sughrue Mion, PLLC, Washington, DC

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

UNITED STATES In a Chromatic Conundrum, TTAB Finds Teal and Blue,

as Used on Medical Products, Confusingly Similar

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