intabulletin - international trademark association · oapi, celebrated its fiftieth anniversary...

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INTABulletin The Voice of the International Trademark Association AssociationNews AssociationNews October 1, 2012 Vol. 67 No. 17 Features Pro Bono Opportunities for In-House Counsel: Facing and Overcoming New Challenges Page 8 In This Issue Features More Than an Ocean Apart: Differences in EU and U.S. Treatment of Broad and General Terms in Identifications of Goods and Services Page 5 AssociationNews Committee Spotlight: International Amicus Committee 3 Volunteer Spotlight Mary Padbury 4 Bob Weston 4 See “INTA President Welcomes” on page 2 See “OAPI” on page 3 Law&Practice Brazil 10 Canada 11 Israel 12 Libya 12 United States 13 OAPI Celebrates 50 Years; Strengthens Ties With INTA INTA President Welcomes Colombia to the Madrid Protocol The African Intellectual Property Organiza- tion, better known by its French acronym OAPI, celebrated its Fiftieth Anniversary dur- ing festivities on Sep- tember 13, in Yaoundé, Cameroon. OAPI offers trademark owners a centralized registration system that is enforce- able in its 16 member states (Benin, Burkina Faso, Cameroon, Cen- tral African Republic, Republic of the Congo, Cote d’Ivoire, Gabon, Guinea, Guinea Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, Chad, Togo). Ministers and other dignitaries from its member states, as well as officials from around the world, joined in the celebrations to highlight the contribution of intellectual property to economic develop- ment in Africa. Brenda Kahari (B.W. Kahari—Zimbabwe), who chairs the OAPI/ARIPO Subcommittee of INTA’s Trademark Office Practices Com- mittee, represented the Association and in an address to the cel- ebrants congratulated OAPI on its leadership and impact on the development of and respect for intellectual property rights in Africa. Ms. Kahari noted OAPI’s long-time membership in INTA, and applauded its valuable participa- tion on the OAPI/ARIPO Subcommittee, and its willingness to work with INTA in perfecting OAPI’s founding treaty, the Bangui Accord, as a model for regional trademark registra- tion and protection. On August 29, 2012, INTA President Gregg Mar- razzo (Estée Lauder Inc.) and Laura Cruz, INTA External Relations Manager for Latin America, traveled to Bogota, Colombia, to attend a special program to commemorate Colombia’s acces- sion to the Madrid Protocol. The program was organized by the Colombian Superintendence of Industry and Commerce (SIC) with the participa- tion of national and international representatives from WIPO, the U.S. Patent & Trademark Office (USPTO), the Spanish Office of Patents and Trade- marks (OEPM) and the Colombian IP Association (ACPI). In his opening remarks, Mr. Marrazzo said “Colombia’s entrance to the Protocol not only marks an important milestone in the evolution of trademark protection in Colombia, it also reflects the country’s readiness to take steps necessary to adapt to the changes and meet the demands of today’s global economy.” Referring to the ef- fects of globalization and the increasing intercon- nectedness of national economies with respect to intellectual property, he said that these trends had contributed to the evolution of international norms while simultaneously changing the face of trademark law. INTA, Mr. Marrazzo empha- sized, is committed to helping trademark owners cope with new challenges by promoting greater harmonization in trademark law and practices. “Colombia’s accession to the Madrid Protocol will contribute to its rapidly growing economy, third largest in the region, and on behalf of its worldwide membership, INTA welcomes this development.” In partnership with the WIPO and USPTO, INTA has been a strong supporter of the Protocol and has worked with the Colombian government to help gain support from local IP holders. In the process, implementing legislation was approved through Bill 1455 of 2011. Early this year, the Colombian Constitutional Court gave clearance and declared both Bill 1455 and the Protocol to INTA OAPI/ARIPO Subcommittee Chair Brenda Kahari (right) congratulates OAPI Director General Paulin Edou Edou

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INTABulletinThe Voice of the International Trademark Association

AssociationNews AssociationNews

October 1, 2012 Vol. 67 No. 17

FeaturesPro Bono Opportunities for In-House Counsel: Facing and Overcoming New ChallengesPage 8

In This Issue

Features More Than an Ocean Apart: Differences in EU and U.S. Treatment of Broad and General Terms in Identifications of Goods and ServicesPage 5

AssociationNewsCommittee Spotlight: International Amicus Committee 3Volunteer Spotlight Mary Padbury 4 Bob Weston 4

See “INTA President Welcomes” on page 2

See “OAPI” on page 3

Law&PracticeBrazil 10Canada 11Israel 12Libya 12United States 13

OAPI Celebrates 50 Years; Strengthens Ties With INTA INTA President Welcomes Colombia to the Madrid Protocol

The African Intellectual Property Organiza-tion, better known by its French acronym OAPI, celebrated its Fiftieth Anniversary dur-ing festivities on Sep-tember 13, in Yaoundé, Cameroon. OAPI offers trademark owners a centralized registration system that is enforce-able in its 16 member states (Benin, Burkina Faso, Cameroon, Cen-tral African Republic, Republic of the Congo, Cote d’Ivoire, Gabon, Guinea, Guinea Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, Chad, Togo). Ministers and other dignitaries from its member states, as well as officials from around the world, joined in the celebrations to highlight the contribution of intellectual property to economic develop-ment in Africa.

Brenda Kahari (B.W. Kahari—Zimbabwe), who chairs the OAPI/ARIPO Subcommittee of INTA’s Trademark Office Practices Com-

mittee, represented the Association and in an address to the cel-ebrants congratulated OAPI on its leadership and impact on the development of and respect for intellectual property rights in Africa. Ms. Kahari noted OAPI’s long-time membership in INTA, and applauded its valuable participa-tion on the OAPI/ARIPO Subcommittee, and its willingness to work with INTA in perfecting

OAPI’s founding treaty, the Bangui Accord, as a model for regional trademark registra-tion and protection.

On August 29, 2012, INTA President Gregg Mar-razzo (Estée Lauder Inc.) and Laura Cruz, INTA External Relations Manager for Latin America, traveled to Bogota, Colombia, to attend a special program to commemorate Colombia’s acces-sion to the Madrid Protocol. The program was organized by the Colombian Superintendence of Industry and Commerce (SIC) with the participa-tion of national and international representatives from WIPO, the U.S. Patent & Trademark Office (USPTO), the Spanish Office of Patents and Trade-marks (OEPM) and the Colombian IP Association (ACPI).

In his opening remarks, Mr. Marrazzo said “Colombia’s entrance to the Protocol not only marks an important milestone in the evolution of trademark protection in Colombia, it also reflects the country’s readiness to take steps necessary to adapt to the changes and meet the demands of today’s global economy.” Referring to the ef-fects of globalization and the increasing intercon-nectedness of national economies with respect to intellectual property, he said that these trends had contributed to the evolution of international norms while simultaneously changing the face of trademark law. INTA, Mr. Marrazzo empha-sized, is committed to helping trademark owners cope with new challenges by promoting greater harmonization in trademark law and practices. “Colombia’s accession to the Madrid Protocol will contribute to its rapidly growing economy, third largest in the region, and on behalf of its worldwide membership, INTA welcomes this development.”

In partnership with the WIPO and USPTO, INTA has been a strong supporter of the Protocol and has worked with the Colombian government to help gain support from local IP holders. In the process, implementing legislation was approved through Bill 1455 of 2011. Early this year, the Colombian Constitutional Court gave clearance and declared both Bill 1455 and the Protocol to

INTA OAPI/ARIPO Subcommittee Chair Brenda Kahari (right) congratulates OAPI Director General Paulin Edou Edou

October 1, 2012 Vol. 67 No. 172

Law&Practice

INTA Bulletin CommitteeTo contact a member of the INTA Bul-letin Committee, send an email to the managing editor at [email protected].

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, PublishingRandi MustelloManaging Editor, INTA BulletinJames F. BushAssociate Editor, INTA BulletinJoel L. BrombergManager, Marketing and Brand StrategyDevin Matthew ToporekDesignerEric Mehlenbeck

INTA Officers & CounselPresidentGregg Marrazzo, Estée Lauder Inc.President ElectToe Su Aung, BATMark Ltd.Vice PresidentBret Parker, Elizabeth Arden, Inc.Vice PresidentMei-lan Stark, Fox Entertainment GroupTreasurerLucy Nichols, Nokia CorporationSecretaryJ. Scott Evans, Yahoo! Inc.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 [email protected]. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2012 International Trademark Association

INTA President Welcomes Colombia to the Madrid Protocol continued from page 1

Contact the Managing Editor at [email protected] or visit www.inta.org/tmr

The Trademark Reporter seeks contributions from trademark professionals and is particularly looking to expand its coverage of international issues by international writers. Article length is flexible and subjects can focus on tips and guidance for practitioners as well as in-depth treatment of a legal issue.

be enforceable. On May 29, 2012, Colombia concluded its ratification process with the deposit of its instrument of ratification before WIPO.

It is expected the overall effect of Colombia joining the Madrid Protocol will be cost sav-ings for Colombian companies seeking to market their products and services abroad. With the implementation of the Protocol, trademark registration procedures in Colom-bia will be streamlined and harmonized and international registration will be facilitated. While Colombia’s Madrid membership will benefit all trademark owners, it should prove to be an especially useful tool for small and medium-sized business with limited budgets. Likewise, companies located abroad with

strategies to bring their products and ser-vices to the Colombian market also will enjoy these benefits.

The well-attended event drew more than 100 legal counsel and representatives from academia and the government. The event also served to educate attendees about WIPO’s pro-ceedings and office requirements for Madrid applications at OEPM, the USPTO and from the Colombian office, SIC. (See SIC website for presentations).

Colombia’s Superintendent, Jose Miguel De La Calle Restrepo, used the opportunity to highlight some of the changes under SIC’s restructuring process to help the office prepare for treaty implementation. Mr. De La Calle

spoke about key aspects of the program to promote the Madrid Protocol, including the launching of an awareness-raising campaign and educational programs on the Protocol’s benefits. Other initiatives SIC is implement-ing include the creation of an IP Academy for specialized IP training and a new plan for investment in technology projects. Mr. De La Calle stated that Colombia’s adoption of the Madrid Protocol is an important part of policies being implemented to assist Colombian entre-preneurs and businesses. He highlighted the core objective of increasing Colombia’s overall export performance. It was also announced that under the new proceedings and restruc-turing of SIC, it is expected that Colombia can increase its trademark registration numbers to 70,000. ■

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AssociationNewsTo further strengthen the special relation-ship between the two organizations, Ms. Kahari announced that OAPI and INTA recently entered into a cooperation agreement which was signed by OAPI Director General Dr. Paulin Edou Edou, and INTA President Gregg Marrazzo. The agreement sets out a frame-work for guiding and furthering cooperation

in existing and future activities in the field of trademarks that includes trademark treaties, legislation, trademark practice, examination guidelines and procedures, and enforcement. More specifically, OAPI and INTA will exchange information, publications, technical advice and assistance relating to trademarks in order to benefit INTA members and trademark

practitioners in OAPI’s member states. Activi-ties also will focus on raising the awareness of the importance of the trademarks to Africa’s development through the development of joint roundtables, seminars and training programs, especially through e-learning. ■

OAPI Celebrates 50 Years continued from page 1

“How would you like the opportunity to contrib-ute to the shaping of key aspects of trademark law?” That is the question posed, intellectu-ally and professionally, to those joining the International Amicus Committee. One of the most rewarding aspects of working on the Committee is the opportunity to participate in many of the highest-profile trademark cases by way of preparation and filing of amicus curiae briefs on behalf of INTA. For many profession-als, preparing an amicus brief in such a case is a once-in-a-lifetime experience; for members of the International Amicus Committee, on the other hand, it is a regular event.

Chaired by Sally Field (Bristows—UK), with David Bernstein (Debevoise & Plimpton—USA) as vice chair, the Committee comprises five subcommittees: Asia-Pacific, Canada, Eu-rope, Latin America and United States. In the United States, the filing of amicus briefs is a well-established procedure, but in many other countries the role of an intervener that files observations in litigation on the points of law is less well understood. This means that an important part of the Committee’s role is to publicize the use and benefits of amicus briefs. As a result of the Committee’s efforts, many more courts and tribunals throughout the world have been prepared to consider and accept INTA amicus filings.

The procedure for requesting an amicus submission from INTA is straightforward and is set out on the INTA website. Generally, INTA will make amicus filings at the appellate stage of a case, after the factual record has been established and an initial ruling made. In all cases, the matter must involve trademark laws or other, related laws. By filing an amicus brief,

INTA must be reasonably likely to advance the strategic goals and objectives of the Associa-tion. At the outset, all that is required is a short statement of no more than three pages identifying the case, summarizing the proce-dural and decision history and explaining why INTA’s participation is likely to make a material contribution to the decision.

As a result of such requests, the United States Subcommittee has been involved in a wide range of high-profile and interesting cases, in which the courts often have adopted INTA’s arguments. Those cases include Fleischer Studios v. A.V.E.L.A. (the “Betty Boop” case), Levi Strauss & Co. v. Abercrombie & Fitch (on dilution of Levis’ “arcuate stitch” mark) and Penguin Group (USA) v. American Buddha (on jurisdiction). Subcommittee Chair John Critten-den (Cooley LLP—USA) and his team recently worked on the amicus brief filed by INTA in Christian Louboutin v. Yves Saint Laurent, relating to the plaintiff’s federal registration for the red sole trademark.

The Latin America Subcommittee, chaired by Francisco Espinosa-Reboa (Estudio Francisco Espinosa-Bellido Abogados—Peru), filed an amicus brief in the Honorable Exchequer Court in Paraguay in a case involving Unilever and the registration of the slogan “Dirt Is Good.” An amicus brief setting out the Association’s position was filed by the Asia-Pacific Subcom-mittee before the Supreme Court of Indonesia in PT Bintang Pesona Jagat v. PT Karya Tajinan Prima. Peter Chalk (Ashurst Australia—Aus-tralia) chairs that group. In Canada, INTA participated in a Supreme Court proceeding as an intervener in Masterpiece Inc. v. Alavida Lifestyles Inc., which concerned geographical

separation as a factor in assessing likelihood of confusion. The Court accepted the Associa-tion’s position in ruling that geographical sepa-ration did not play a role in the circumstances of this invalidity case. The Canada Subcommit-tee is currently led by Mark Robbins (Bereskin & Parr—Canada).

Tom Scourfield (CMS Cameron McKenna—UK) and his team on the Europe Subcommittee currently are working on a filing to the Court of Justice of the European Union (CJEU) in the Specsavers case. The Europe Subcommittee also filed written submissions and participated in an oral hearing at the CJEU in the Nokia Corporation case, where the question was whether the EU Counterfeit Goods Regulation permitted local customs authorities to seize counterfeit goods that were in transit but not intended for sale in an EU member state.

This is just a small selection of the many amicus briefs filed by INTA in recent years in jurisdictions worldwide.

All of the regional subcommittees comprise a mix of top trademark litigation lawyers and experienced in-house counsel at major brand-owning companies. Although the deadlines for filing submissions can sometimes be short, discussing, drafting and presenting the briefs provides an intellectually rewarding and enjoy-able experience for all concerned.

Committee Spotlight: International Amicus Committee

Sally FieldBristows, London, UK

Chair of the International Amicus Committee

October 1, 2012 Vol. 67 No. 174

VolunteerSpotlight

Bob Weston is the third generation of his family to work at the firm of Phillips & Leigh, based in London. In fact, the now senior partner began his tenure there as an office clerk, but he did not pursue a legal career until completing studies in electronic engineering and serving in the Royal Naval Scientific Service. Bob describes himself and his practice as “old school,” dealing with all

aspects of intellectual property. “A jack of all trades, master of none?” he quips.

While trademarks once accounted for half of his practice, Bob now spends the vast majority of his professional time prosecuting high-tech European Patent applications. He also is heavily involved in OHIM’s (Office for Harmoni-zation in the Internal Market’s) Co-Operation Fund. He notes, “I am the sole user represen-tative among 14 national office representa-tives bringing e-business, trademark and design filing programs to national offices without them. It has a $26 million budget!”

As you might expect, Bob sees harmonization of enforcement as the most important issue in trademark law today. Among possible solutions to this problem, he says, “one example would be a Unified European Trademark Court, which would mirror the already-proposed Unified European Patent Court.”

A longtime member and strong supporter of INTA, Bob originated the Association’s publication Country Guides with the late Mario Ariggucci and today continues to serve as co-editor (with Christine James) of Country

Guides, which is now an online database that in 2011 was named one of the ten best online trademark tools by World Trademark Review. Bob says he would like to see INTA become more inclusive and egalitarian, “evolving from a trademark owner’s association, wherein trademark private practice attorneys are associates, into a trademark association, with equal membership for everyone.”

Despite his strong patent focus, Bob still has a soft spot for trademarks, particularly KODAK (a classic), HOOVER (still fighting the generic battle—think REFRIGERATOR, ESCALATOR) and APPLE (Beatles music and Apple computers).

And the trademark he says best describes him? Antithetical to Bob’s professional status and his roles as proud grandfather, longtime scouting group leader and associate professor at London’s Brunel Law School, that mark is BORN TO BE WILD.

Mary Padbury is chairman of Ashurst Australia, a recent incarnation following the merger in Asia of Ashurst with Blake Dawson, where Mary had been a longstanding partner. The firms will merge fully in 2014. As well as

being involved in the management of the firm as a whole, Mary finds time to pursue a mixed IP practice that encompasses patent litigation before the Australian courts and oversight of trademark prosecution and contentious work before the Australian Intellectual Property Office.

Though an experienced INTA volunteer (she has attended INTA meetings regularly since the late 1980s), Mary rates her contribution to the Association over the years as modest. She has, however, been a regular and active member of various INTA committees. Currently Mary serves on the Anticounterfeiting Commit-tee’s Asia-Pacific Subcommittee. She is in the process of organizing a roundtable for that committee on how to improve protection for brand owners in Asian markets, which is due to be held in Australia in November 2012.

And her contribution to Australian intellectual property practice over the years has, it is probably fair to say, been anything but modest. Mary is a past chair and a current member

of the Intellectual Property Subcommittee of the Law Council of Australia, which makes submissions to the Australian government on a number of trademark-related issues. In addition, she has been a WIPO domain name panelist since 2000. Mary believes the most pressing issue facing IP practitioners today is the need for effective anticounterfeiting measures and for harmonization of laws in this respect worldwide, particularly in Asia.

Mary is lucky enough to be based in the wonderful Australian city of Melbourne, though she has worked elsewhere in the past, including in London. Unlike most of her sport-mad fellow Melburnians, she prefers far more relaxing pastimes, such as gardening and reading. Her favorite trademark is the panda device mark of the World Wildlife Fund.

Barbara Barron KellyCorsearch–Wolters Kluwer Corporate Legal Services, New York, New York, USA

INTA Bulletin Association News Subcommittee

Tom AlbertiniJ A Kemp, London, UK

INTA Bulletin Association News Subcommittee

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Features

Mark HolahField Fisher Waterhouse LLP, London, UK

Patrick J. GallagherFulbright & Jaworski L.L.P., Minneapolis, Minnesota, USA

Both are members of the INTA Bulletin Features Subcommittee.

More Than an Ocean Apart: Differences in EU and U.S. Treatment of Broad and General Terms in Identifications of Goods and Services

The trademark offices of the United States and the European Union treat broad and general terms appearing in identifications of goods and services in trademark applications very differently. The Court of Justice of the Euro-pean Union (CJEU) reinforced this difference in a recent decision concerning the use of class headings in goods and services identifications.

A comparison of the two systems shows that the EU consistently accepts broad and general terms appearing in identifications of goods and services and conversely that the United States consistently requires applicants to change broad and general terms appearing in such identifications to more specific and pre-cise terms. Moreover, a comparison of the two systems shows that the differing approaches can have a significant impact on a trademark owner’s rights in these two jurisdictions.

European Union

Background to CJEU Decision in IP TRANSLATOR CaseIn Chartered Institute of Patent Attorneys v. Registrar of Trade Marks (Case C-307/10), the CJEU determined the scope of the specifica-tion of services in U.K. Trade Mark Application Number 2528977 for the mark IP TRANSLA-TOR.

The Chartered Institute of Patent Attorneys (CIPA) applied for registration of the mark at the United Kingdom Intellectual Property Office (UK-IPO). The application was filed for “Edu-cation; providing of training; entertainment; sporting and cultural activities” in Class 41. This specification is the entire class heading for Class 41 of the Nice Classification.

The UK-IPO examiner rejected the applica-tion on the basis that the mark IP TRANSLA-TOR was descriptive of “translation services relating to IP.” Although translation services fall within Class 41 (and are included in the alphabetical list of services for that class), they do not fall within any of the general terms in the class heading.

As a result, it was necessary to determine the scope of an application that included an entire class heading. Does the application automati-cally cover all goods or services falling within the relevant class? Alternatively, does the application cover only the goods or services listed in the class heading (and, of course, any subset of those goods or services)?

In raising the objection, the UK-IPO followed the first approach, finding that the application covered all services falling in Class 41, includ-ing “translation services.”

This approach was also that taken by OHIM (Office for Harmonization in the Internal Market) when examining Community trade mark (CTM) applications. That position was set out in Communication No. 4/03 of the President of OHIM, which had been followed by OHIM since 2003. A number of other national trademark registries in the EU also followed this approach.

The alternative approach, that the applica-tion should cover only the goods or services listed in the specification, was followed by a number of other national registries in the EU. Interestingly, until the IP TRANSLATOR applica-tion, the UK-IPO had been one of the national registries that took this narrower approach. In addition, the Advocate General’s opinion in the IP TRANSLATOR case had recommended that OHIM’s practice under Communication No. 4/03 should be rejected because it did not provide the necessary clarity and precision required in trademark applications.

Following the rejection of its application, CIPA appealed the decision to the Appointed Person in the United Kingdom. Three questions were then referred to the CJEU, as set out below.

CJEU Requires Clear and Precise IdentificationsThe first question the CJEU ruled on was whether the various goods or services covered by a trademark application need to be identi-fied with clarity and precision. Unsurprisingly, the Court held that clarity and precision are re-quired. It found that there must be “sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection” sought.

The second question asked whether it is acceptable to use class headings to identify the various goods or services covered by a trademark application. This question was answered by reference to the general require-ment for clarity and precision. The CJEU held that general terms used in the class headings of the Nice Classification are acceptable for use in identifications of goods and services provided in any given case the relevant terms are sufficiently clear and precise.

The third question was whether the general words of the class headings should be inter-preted in accordance with OHIM Communica-tion No. 4/03. That is, does an application with a specification that consists of an entire class heading automatically cover all goods or services falling within the relevant class?

The CJEU did not follow either OHIM’s position or the Advocate General’s opinion. Instead, the Court came to a compromise position. The CJEU held that if an entire class heading is included in a trademark application, the applicant must indicate whether its intention is to cover all goods and services within that class. If that is the intention, then all goods or services in the alphabetical list of goods or services for that class in the Nice Classification will be covered.

Effect of IP TRANSLATOR Decision in the EUThe CJEU’s decision in the IP TRANSLATOR case means that it is possible to cover virtually all goods or services that fall in a particular class, simply by listing the class headings for each class applied for—and indicating that the inten-tion is to cover all goods or services in that class.

See “More Than” on page 6

October 1, 2012 Vol. 67 No. 176

FeaturesMore Than an Ocean Apart continued from page 5This means that under EU practice the very broad terms found in class headings will be interpreted very widely. For example, an ap-plication in Class 15 for “musical instruments” would automatically cover such items as “music stands,” “tuning forks” and “conduc-tor’s batons.”

Restricting the scope of the class heading to the alphabetical list of goods or services in the Nice Classification does mean that there is some certainty as to the goods or services cov-ered by any application. In addition, it means that goods or services that fall in a class but are not in the alphabetical list will not automat-ically be covered by the class heading. Such terms would need to be specifically included in an application in order to be covered.

United States

U.S. Position Concerning Specificity of Identifications of Goods and ServicesThe U.S. Patent and Trademark Office’s (USPTO’s) position concerning specificity of identifications of goods and services is very different from the position of the EU.

First, the USPTO’s trademark prosecution manual states that an application for registra-tion of a mark based on current use or bona fide proposed use in the United States (and therefore filed under Section 1 of the Trade-mark Act) “must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide inten-tion to use, the mark in commerce.” Trade-mark Manual of Examining Procedure (TMEP) § 1402.01. The TMEP provides that “[t]he identification of goods and/or services [in such an application] must be specific, definite, clear, accurate, and concise.” Id. Further, the identi-fication of goods and services may not consist of a class heading. See id. § 1402.01(a).

This same strict standard applies to a trade-mark application seeking registration based on a non-U.S. registration or pending application. The prosecution manual explicitly provides that a trademark application based on a non-U.S. trademark registration or pending application (and therefore filed under Section 44 of the Trademark Act) must comply with the USPTO’s standards on specificity because the identi-fication of goods and/or services in such an application “must be definite and specific even

if the [non-U.S.] registration includes an overly broad identification.” TMEP § 1402.01(b). Consequently, a proprietor seeking registration of a mark in the United States based on a non-U.S. registration or pending application will be required during the examination process to change any overly broad terms in its identifica-tion to terms that are definite and specific.

Finally, for an application filed in the United States via the Madrid Protocol (and therefore based on an International Registration and filed under Section 66(a) of the Trademark Act), the TMEP provides that a Section 66(a) application will be examined under the same standards of specificity used in examining applications under Sections 1 and 44 of the Trademark Act—that is, “[t]he identification of goods/services [in a Section 66(a) application] must be specific, definite, clear, accurate, and concise.” TMEP § 1904.02(c).

Impact of U.S. Position Concerning Identifications of Goods and ServicesThe USPTO’s standards of specificity concern-ing identifications of goods and services have a dramatic impact on the scope of rights obtained by an owner of a U.S. trademark registration, especially compared to the owner of a CTM registration, in at least three primary ways.

First, because a U.S. application’s identifica-tion “must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide inten-tion to use, the mark in commerce” (TMEP § 1402.01) and cannot include a class head-ing (see id. § 1402.01(a)), a U.S. applicant seeking registration of its mark under Section 1 of the Trademark Act is not able to broaden the scope of its trademark rights in the United States beyond the scope of its actual use of the mark in U.S. commerce by having its iden-tification of goods and/or services list goods or services that are merely related or ancillary to the applicant’s actual goods and/or services.

Second, because the identification of goods and services must be specific, definite and clear (see TMEP § 1402.01(b)), a U.S. applicant is not able to broaden the scope of its trademark rights in the United States by obtaining a U.S. trademark registration with an identification that contains broad, vague or indefinite terms that are beyond the scope of the proprietor’s actual use of the mark in U.S. commerce.

Finally, concerning the use of inclusive terminology, the USPTO’s manual provides, “The terms ‘including,’ ‘comprising,’ ‘such as,’ ‘and the like,’ ‘and similar goods,’ ‘products,’ ‘concepts,’ ‘like services’ and other indefinite terms and phrases are almost always unac-ceptable.” Id. § 1402.03(a). A U.S. applicant is therefore not able to obtain a U.S. trademark registration that contains any inclusive, all-encompassing, or other “catch-all” terminology in the identification of goods and/or services. Consequently, a U.S. applicant is not able to broaden the scope of its trademark rights in the United States beyond the scope of its actual use of the mark in U.S. commerce by obtaining a U.S. registration that contains in-clusive terminology to capture goods/services not explicitly listed in identification of goods and/or services.

How do EU and U.S. Positions Affect Paris Convention and Madrid Protocol Filings

The respective positions of the EU and the Unit-ed States concerning specificity of identification of goods and services have a dramatic impact on the scope of a trademark owner’s rights in connection with filings made under the Paris Convention or the Madrid Protocol, especially when such filings involve the United States.

For example, it is possible for a proprietor to obtain a CTM registration covering “computer software (including software downloadable from the internet)” in Class 9. If that propri-etor filed an application in the United States based on its CTM registration under the Paris Convention (and therefore under Section 44 of the Trademark Act), the USPTO would require the proprietor to provide more specific-ity with respect to the function or purpose of the computer software and indicate the field of use for the computer software. See TMEP §§ 1402.01(b), 1402.03(d). The proprietor would also be required to substitute the term “including” with “namely” or another term that is more specific (and not inclusive). See id. § 1402.03(a).

The proprietor’s attempt to use the identifica-tion “computer software (including software downloadable from the internet)” would face the same fate at the USPTO if the proprietor obtained an International Registration and then filed for an extension of protection in

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Featuresthe United States under the Madrid Protocol. Again, the USPTO would require the propri-etor to provide more specificity with respect to the function or purpose of the computer software and indicate the field of use for the computer software (see TMEP §§ 1904.02(c), 1402.03(d)), and the proprietor would be required to replace the word “including” with “namely” or another more specific term (see id. § 1402.03(a)).

Conversely, a proprietor starting with a U.S. registration would have—in light of the USPTO’s principles concerning specificity of identifica-tions of goods and services—a registration containing an identification of goods and/or services that was specific, definite and

clear. For example, in the software context, a U.S. registrant would be permitted to obtain a trademark registration covering “computer programs and computer software for business management and customer relationship man-agement (CRM) in the field of e-commerce.” If that proprietor decided to file an applica-tion for a CTM registration based on its U.S. registration (whether it was a CTM application filed directly with OHIM under the Paris Con-vention or an extension of protection filed with OHIM via an International Registration and the Madrid Protocol), OHIM would accept the iden-tification of goods, “computer programs and computer software for business management and customer relationship management (CRM) in the field of e-commerce.”

Unfortunately for the hypothetical proprietor, the scope of the goods covered by the result-ing CTM registration under that approach would be considerably more narrow than if the proprietor had filed a trademark application directly with OHIM without relying on the Paris Convention or the Madrid Protocol.

Conclusion

Ultimately, from a strategic viewpoint, each trademark proprietor (and the trademark pro-fessional working with or for the proprietor)—especially a proprietor based in the United States—needs to make strategic decisions about whether the benefits associated with using the Paris Convention or Madrid Protocol outweigh the disadvantages of using these filing mechanisms, especially considering the aspects of the U.S. system that cause a U.S. proprietor to obtain a CTM registration that has a more narrow scope of protection compared to those CTM registrations that are issued by OHIM, which are not affected by the USPTO’s principles on specificity of identifications of goods and services.

Consideration EU U.S.

Allows use of class headings Yes NoAllows use of broad and/or more general or vague terms Yes NoAllows use of “including” and “such as” and other terms of inclusion

Yes No

Allows inclusion of goods and/or services not in actual use in jurisdiction

Yes No

Summary of EU and U.S. Positions on Specificity Concerning Identifications of Goods and Services.

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October 1, 2012 Vol. 67 No. 178

FeaturesPro Bono Opportunities for In-House Counsel: Facing and Overcoming New Challenges

Many companies recognize that the goodwill associated with their brand depends not only on the quality of the company’s products and services but also on its reputation among the community as a whole. As companies look for ways to get involved with local communities and fulfill their corporate social responsibility, it is not surprising that in-house counsel are giving more thought to pro bono possibilities. Historically, there have been a number of chal-lenges for corporate legal departments and other employees seeking to become involved in pro bono matters, though these challenges are not insurmountable.

INTA defines “pro bono legal services” to mean the provision of legal services by trademark lawyers and related services by non-lawyer trademark professionals without compensa-tion or expectation of compensation or, at a substantially reduced fee, where payment of such reduced fee would not significantly deplete the resources of the client or would otherwise be inappropriate.

Traditionally, pro bono legal matters were more often relegated to private law firms rather than undertaken by in-house counsel or legal departments. Today, however, this is no longer the case. In 2000, the Association of Corpo-rate Counsel teamed with the Pro Bono Insti-tute to widen the opportunities for in-house counsel to take on pro bono work by estab-lishing the Corporate Pro Bono Partnership Project. Legal departments, in-house counsel and staff that undertake the “Corporate Pro Bono Challenge” make a pledge to provide free guidance and tailored support to strengthen existing pro bono programs or start new ones. The Pro Bono Institute provides a variety of pro bono listings and opportunities.

Why such a change? In the last few decades there has been a surge of in-house legal pro-fessionals who recognize a need for more cor-porate social responsibility. With this change, law firms and business have enhanced their knowledge base by having their professionals reach beyond their expertise to extend service offerings on a professional level or allow individuals to extend personal assistance to

pro bono activities supported by the law firm and/or business. By engaging in pro bono services, the company strengthens its bottom line by having its individual employees provide volunteer time that benefits the surrounding communities as a whole.

More and more corporate counsel are focusing on internal pro bono programs, identifying ways to integrate pro bono work into their day and recognizing the importance of pro bono work. In some cases, it may be a challenge to identify and develop such opportunities, particularly for corporate counsel looking for a specific type of matter within their own area of expertise. Still, the opportunities are there, and in many cases pro bono matters also allow participants to enhance their knowledge base. Perhaps most important, participants should want to participate and not feel forced. In other words, care should be taken to select and de-velop pro bono matters on which participants will enjoy working.

Choose Pro Bono Opportunities That Fit Your Department and Community Needs

Your pro bono involvement should align with your company’s objectives and your local community’s needs. What may be a perfect fit for one organization may not necessarily be perfect for another. Below are a few examples of pro bono matters that in-house intellectual property legal professionals might want to consider:

1. Provide trademark, copyright, domain name and/or patent advice to nonprofit commu-nity organizations or to artists, musicians, inventors, innovators and/or other intellec-tual property owners of limited means.

2. Assist small-business owners with business name and logo design selection matters and provide trademark protection advice or counseling.

3. Provide community counseling to local nonprofit groups, featuring workshops and one-on-one representation on how to grow and protect the intellectual property of a small business. This may include, for example, volunteering at local legal aid and paralegal associations to teach recognition of intellectual property and related legal issues and then being available to provide

further assistance as needed.4. Assist nonprofits with marketing and brand

recognition programs.5. Provide IP license agreement review and

advice.6. Consider pro bono opportunities outside of

the IP field. While it is not impossible to find an IP-related pro bono matter, many legal aid organizations and bar associations are in need of assistance from all types of attorneys and offer free training and guid-ance to pro bono volunteers in areas such as guardian ad litem, domestic violence, government benefits and other matters. The opportunities are endless.

Ensure Corporate Leadership Is on Board

For a pro bono program to be effective, the or-ganization’s leaders should be fully committed to the program’s goals. Management should appreciate the benefits of performing pro bono services—by helping individuals in need and the local community, the company will further promote its image.

Appropriate resources and encouragement should be provided to those taking on such opportunities on the organization’s behalf. Publicize volunteerism through company newsletters, intranet and emails. Companies may want to host kick-off events or drawings or to recognize participants through awards, in performance evaluations and/or in their annual report.

Develop an Effective Pro Bono Program

Development of a successful pro bono pro-gram will vary depending on many corporate factors and the company’s culture. Participa-tion, budgets, manpower and program focus are all key factors. As a basis, a company should consider having a policy statement, a coordinator and an avenue to address ethi-cal and liability issues. Many in-house legal departments are able to develop partnerships with local law firms or legal service providers. Those organizations often serve as a resource, providing administrative assistance and pre-screening for potential pro bono programs and

Jean MaxwellAlere Inc., Waltham, Massachusetts, USAPro Bono Committee

9

Featuresclients, as well as training and the all-impor-tant malpractice insurance.

Measure Your Success

It is important to measure the performance and outcomes of the program along with the benefits to the client, the community and the company. Not only will a successful program empower those individuals who were directly involved in the pro bono matter, but in addition others within the organization will also feel a sense of pride to be working with a company that provides such services to the community. A company may want to review and evaluate its pro bono program every two to five years. If needed, the program can be restructured by identifying new opportunities, creating new partnerships or expanding to provide volunteer opportunities on a broader level.

Remember–a successful pro bono program:

• Provides direct benefits to the community in which the corporation operates by assisting those in need.

• Enhances the corporation’s reputation and strengthens its relationship and ties within the community.

• Encourages teamwork and collaboration among employees, which in turn increase overall morale.

• Provides attorneys and staff with opportuni-ties to develop, use and improve their skills.

• Allows for greater professional development and training for attorneys and staff.

• Contributes to improved employee recruiting.

Conclusion

Giving back to the community is a professional responsibility not only for legal aid organiza-tions, bar associations, and private practitio-ners but for corporate legal departments as well. Everyone—the company, the pro bono client and the community as a whole—benefits when resources and interests are aligned to reach beyond our own expectations to help others.

Additional InformationAssociation of Corporate Counsel— http://acc.comCorporate Pro Bono Institute— http://www.cpbo.orgPro Bono Institute—http://www.probonist.orgAssociation of Pro Bono Counsel— http://www.probono.net/lawfirmprobono

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October 1, 2012 Vol. 67 No. 1710

Law&Practice

Contributor: Pedro TavaresBarbosa, Müssnich & Aragão, Rio de Janeiro

Verifier: Eduardo MachadoMontaury Pimenta, Machado & Vieira de Mello, Rio de Janeiro

On August 21, 2012, the National Institute for Industrial Property (INPI) published a norma-tive opinion concerning an issue of great importance to trademark owners and practi-tioners in Brazil: the acceptance of trademark coexistence agreements. The issue had been the subject of debate (within INPI and in other legal circles) for a long time. Now, INPI has finally adopted a formal position regarding this matter.

Until 2010, INPI’s guidelines for trademark analysis stated that the holder of a prior right could authorize registration of a conflict-ing junior mark as long as the products or services involved were not identical. Neverthe-less, various examiners and INPI’s Attorney General (Procuradoria Federal Especializada Junto ao INPI) were against the possibility of coexistence of identical marks held by distinct owners despite their agreement to allow such coexistence.

To resolve this internal controversy, INPI de-cided to exclude the reference to an authori-zation by the prior right holder from the new guidelines for trademark analysis, which were published in December 2010. INPI realized, however, that the official silence on such an important matter had resulted in increased insecurity among trademark owners and practitioners, and for that reason it decided to issue a normative opinion regarding coexis-tence agreements.

In short, the normative opinion states that a coexistence agreement will not automatically exclude application of the legal provision for-bidding registration of conflicting trademarks, but will be considered as an element support-ing the formation of the examiner’s opinion of a conflict between two or more trademarks.

INPI clarified that a coexistence agreement cannot be binding on the examiner and that its only purpose should be to help, along with other elements and allegations, the examiner form an understanding with regard to the likeli-hood of confusion or association between the marks involved. In this regard, INPI stated that “when we propose to redefine the so-called trademark coexistence agreement, assigning it the status of support to the examination, we are only stressing the already-mentioned presupposition of complexity inherent in trade-mark examination.”

The normative opinion further states that this understanding regarding coexistence agree-ments should also apply to conflicts resulting from trademark assignments, that is, when an assignment does not include all registrations/applications for identical or similar trade-marks protecting identical or related products or services. The Brazilian IP Law provides that in these situations the “non-assigned” registration/application should be declared abandoned (in order to avoid the existence of identical or similar trademarks in the names of different owners).

It is important to note that the normative opinion contains a significant innovation with regard to the possibility of amending one of the trademarks involved in a possible conflict. The new guideline states that, if, even after the presentation of the agreement, INPI still deems it unfeasible for the two marks to coex-ist, an office action may be issued for the ap-plicant or the holder of the prior right to restrict the scope of protection of its mark (with regard to the products/services covered or the mark itself) so as to eliminate the risk of confusion or association between the marks in question.

Finally, with respect to coexistence agree-ments involving trademarks in the names of companies that belong to the same economic group, the normative opinion makes reference to a previous INPI guideline that stated that, for the purpose of permitting the coexistence of such trademarks, it is necessary only to demonstrate that the companies indeed belong to the same economic group. Presenta-tion of a possible authorization from the holder of the previous right is irrelevant.

BRAZIL INPI Issues Guideline on Coexistence Agreements

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2012

11

Law&Practice

Contributor: Neil MellishipClark Wilson LLP, Vancouver, British Columbia

Verifier: Catherine Dennis BrooksCassels Brock & Blackwell LLP, Toronto, Ontario

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

In the recent decision Insurance Corp. of Brit-ish Columbia v. Stainton Ventures Ltd. (2012 BCSC 608), the British Columbia Supreme Court reviewed and applied the test for resem-blance in the context of official marks under Sections 9 and 11 of the Trade-marks Act.

Section 9 of the Act permits governmental agencies and other entities that are subject to significant ongoing governmental control to claim exceptionally broad rights over marks that they adopt and use as official marks in association with wares or services, simply by advertising notice of such adoption and use in the Trade-marks Journal. Unlike the case with ordinary trademarks, for official marks there is no examination for registrability and no limitation in terms of specific goods or services. Opposition proceedings are not pos-sible, and, once an official mark is advertised, there is no provision in the Act for its ex-pungement, for example for non-use or loss of distinctiveness. Once the mark has been so advertised, the effect of Sections 9 and 11 of the Act is that no person shall adopt or use in connection with a business, as a trademark or otherwise, any mark that is identical to or that so nearly resembles the official mark as to be mistaken for it.

The Insurance Corporation of British Columbia (InsuranceCo.), a publicly regulated automo-bile insurance provider for the Province of British Columbia, had adopted and used, in its capacity as a public authority, the mark ICBC as an official mark pursuant to Section 9 of the Act. Subsequently, Stainton Ventures Ltd. registered the domain names ICBCadvice.com and ICBCadvice.ca, which link to Stainton’s website at www.ICBCadvice.com.

Stainton’s website operates as a marketing tool for service providers such as Insurance-Co.’s lawyers, doctors, chiropractors, phys-iotherapists, massage therapists and MRI clinics, whose services are directed at victims of motor vehicle accidents in British Columbia who may potentially make a claim against InsuranceCo. On Stainton’s website, the term “ICBC” is capitalized, whereas the term “advice.com” is not. Stainton also uses the mark “ICBCadvice Claim Guide” for a booklet

of advice on dealing with insurance claims against InsuranceCo. The booklet was formerly called ICBC Claim Guide.

InsuranceCo. sought a declaration that, among other things, Stainton had adopted and used InsuranceCo.’s official mark ICBC, contrary to Sections 9 and 11 of the Act. In addition, InsuranceCo. sought a declaration that Stain-ton had passed off its business, wares and services as and for InsuranceCo.’s business, wares and services, contrary to Section 7 of the Act and common law.

The court reviewed the test for determining a breach of Sections 9 and 11, which is different from the test to be applied for trademark in-fringement or passing off. In this case, the test for Sections 9 and 11 was whether the mark used by Stainton was identical to Insurance-Co.’s official mark, and if it was not identical, whether Stainton’s mark so nearly resembled InsuranceCo.’s official mark as to be mistaken for it. In this case, because the domain name ICBCadvice.com was not identical to the of-ficial mark ICBC, the issue was whether the domain name so nearly resembled the mark as to be likely to be mistaken for it. The key question for the court was whether a person familiar with the official mark ICBC (but having an imperfect recollection of it) would be likely to mistake Stainton’s domain name ICBCad-vice.com for it. This question was not to be resolved on the basis of a straight comparison.

The judge was not convinced that a person familiar with the official mark ICBC but having an imperfect recollection of it would be likely to mistake Stainton’s ICBCadvice.com or ICBCadvice.ca domain name for it. The court noted that the onus of establishing a mistake based on resemblance was on InsuranceCo. and, in this case, InsuranceCo. had not put forth any evidence that any individuals had been mistaken. In contrast, the evidence that Stainton put forward established that no one ever communicated to Stainton any confu-sion or mistake regarding whether its website was InsuranceCo.’s. In the court’s view, no persons in British Columbia would be likely to mistake the domain name ICBCadvice.com for InsuranceCo.’s official mark ICBC; rather,

they would simply take the domain name as identifying the subject matter of the website, not whose website it was.

Interestingly, the court preliminarily deter-mined that Stainton’s use of the mark ICBC in a large font with the words “Claim Guide” in a much smaller font was impermissible, and it ordered that such use be enjoined. By the time of the trial, however, Stainton had amended the title of its guide to ICBCadvice Claim Guide, which the court did not see as problematic. As a result, only the use of the older copies of the guide, which were titled ICBC Claim Guide, was enjoined.

The court did not find that Stainton’s use of the term “ICBC” on its website or in its claims guide constituted passing off under common law or the Act. Again, the court noted that InsuranceCo. had not provided any evidence of confusion and, in the court’s view, the likelihood of confusion was not so obvious that evidence of confusion was not necessary. The court indicated that if Stainton had been using the domain name ICBCinsurance.com as opposed to ICBCadvice.com, its decision would have been different.

Finally, the court used the opportunity to state that the behavior of Internet search engines, which turned up the ICBCadvice.com website, among others, in response to a search for the term “ICBC,” were not, in the court’s view, evidence of confusion—it simply reflected the operation of an algorithm and search engine marketing.

This decision has been appealed to the British Columbia Court of Appeal.

CANADA Court Grapples with Test for Resemblance and Official Marks

October 1, 2012 Vol. 67 No. 1712

Law&Practice

Contributor: Michael FactorIP Factor Patent and Trademark Attorneys, Rosh HaAyinINTA Bulletin Law & Practice—Middle East & Africa Subcommittee

Verifier: Ellen ShankmanEllen Shankman and Associates, Rehovot

Contributor: Zeina SalamehSaba & Co. IP, Head Office, Beirut, Lebanon

Verifier: Ghaida Ala’ EddeinSaba & Co. IP, Jordan Office, Amman, JordanINTA Bulletin Law & Practice—Middle East & Africa Subcommittee

Gypsophila, or “baby’s breath,” is a popular addition to flower arrangements, particularly bridal bouquets. One Israeli grower, Danziger, which exports to the flower bourse in Holland, holds a trademark registration for MILLION STARS, for a variety of the flower that it devel-oped. Danziger has also developed a variety sold under the trademark LUCKY STARS.

A competing grower, Shmuel Mor, applied for and obtained a trademark registration for MORE STARS (only later did Mor argue that the mark was a play on his family name). Dan-ziger, the owner of the marks MILLION STARS and LUCKY STARS, appealed the registration, but the Deputy Commissioner of Patents and Trademarks ruled that the word “star” was sug-gestive, not descriptive, and therefore registra-tion of the mark was possible. In addition, the Deputy Commissioner did not view the marks MORE STARS and MILLION STARS as being confusingly similar. As a result, the applied-for mark was allowed to proceed to registration.

Danziger filed an appeal against the Deputy Commissioner’s decision. As the appeal was filed in 2010, the appellate court was the

Israel Supreme Court. (Since then, the law has been changed, and appeals of Patent Office decisions are to the district court.)

Evaluating the likelihood of confusion, the Israel Supreme Court ruled that the Deputy Commissioner was wrong in classifying the term “star” as suggestive. The Court held that the marks had to be examined in their entirety, not just with respect to the element STAR, and that, when considered as a whole, the marks, though fanciful, were confusingly similar. MORE STARS, like MILLION STARS, indicated a very large number, and the letter M made the two marks similar in concept. The fact that Danziger’s registrations for MILLION STARS and LUCKY STARS were for word marks, while Mor’s mark MORE STARS included graphic elements, did not alter the confusing similarity of the marks, as they were visually and audibly similar and they applied to essentially the same goods with the same distribution chan-nels. The Court did not address actual confu-sion, which had been shown in Holland.

Accordingly, the MORE STARS registration was canceled and costs of NIS 50,000 were

awarded to the appellants. (Micha Danziger & Danziger Flower Farm “Dan” v. Shmuel Mor, Civil Appeal 1611/07 (Israel Supreme Court 2012).

It is worth noting that the trademarks are used for similar but registerably different strains of flowers, that is, the flowers are different. The customers in question, flower vendors purchasing wholesale, would presumably know the difference between the varieties and would be an alert and knowledgeable group of customers. It is also questionable whether that the identity of the grower of goods such as flowers with short shelf lives would be of inter-est to wholesalers who are interested in the condition of the blooms. The final purchasers don’t know or care who grows the flowers.

For the first time since 1977, trademark own-ers will begin receiving Libyan certificates of registration. This development is an explicit recognition by the authorities in Libya of the growing importance of trademark protection.

In fact, the Libyan Trademark Office started issu-ing registration certificates in 2011, but because of civil unrest in the country the documents were kept on file without notification of the agents of record. In August 2012, the Trademark Office started disbursing the issued certificates to the agents of record. This means that the registra-tion certificates for all pending trademarks that

have been accepted and published are expected to be issued in the near future.

An important structural change that has taken place in the country following the recent events is also worth noting. Specifically, Swit-zerland recently established formal diplomatic relations with the Libyan transitional govern-ment after a three-year breakdown in relations between the two countries. The implication of this development is that it will be possible for Swiss applicants to file new trademark ap-plications in Libya once the Libyan Trademark Office is operational. However, the Office is still

not functioning at a normal pace. It is currently only examining pending applications and issu-ing notices of acceptance. As a result, all new applications and search requests are being kept on hold until further notice.

ISRAEL Supreme Court Overturns Decision Regarding MORE STARS

LIBYA One Big Step: Certificates of Registration Being Distributed

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13

Law&Practice

Contributor: Dana Brody-BrownLewis and Roca, LLP, Mountain View, California

Verifier: Kelly GarroneMcCarter & English, LLP, Newark, New Jersey

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

In May, the Trademark Trial and Appeal Board (TTAB) issued a ruling in In re PRGO, LLC. PRGO, LLC was the applicant (by assignment) for the registration of a number of marks, three of which were the subject of this appeal: the word mark RECYCLED PAPER GREETINGS, in standard characters, and the composite marks COMIC RELEAF RECYCLED PAPER GREETINGS & Design and RECYCLED PAPER GREETINGS & Design. In re PRGO, LLC, Serial Nos. 77252690, 77252698 and 77252707 (T.T.A.B. May 4, 2012) (nonprecedential).

PRGO claimed ownership of prior registrations for the marks RECYCLED PAPER GREETINGS and RECYCLED PAPER GREETINGS & Design, both on the Supplemental Register. In addi-tion, the company claimed acquired distinc-tiveness for the RECYCLED PAPER GREETINGS mark as applied to the pending applications. In the pending applications at issue in this case, the examining attorney required a disclaimer of the term “RECYCLED PAPER” (on the basis that it was generic) in order to register the three marks on the Principal Register. In its ap-peal, PRGO contended that no such disclaimer should be required.

The TTAB cited the two-step test for generic-ness set out by the U.S. Court of Appeals for the Federal Circuit in the Marvin Ginn case: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register under-stood by the relevant public primarily to refer to that genus of goods or services?” H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986).

The Board held that “greeting cards” was the genus of the goods. On the issue of how the relevant public understood the term, the examining attorney presented dictionary and Internet evidence showing multiple examples of the phrase “recycled paper” used in con-nection with “greeting cards.” PRGO argued that the public understood “recycled paper” to mean paper that had been recycled, as opposed to greeting cards. In support of this argument, PRGO submitted, among other evidence, results of a search on the GOOGLE search engine for “recycled paper,” which referred primarily to PRGO, and a sampling of hits from national and regional publications that included the term “recycled paper” but

did not include the term “greeting cards.” The TTAB found PRGO’s arguments and evidence unpersuasive. It held that “recycled paper” identified a subgenus of greeting cards—just as would the category “birthday,” “anniversary,” “Christmas,” “get well” and/or even “blank.”

In sum, the TTAB held that “recycled paper” was generic for greeting cards made of re-cycled paper, and therefore, the term “RECY-CLED PAPER” had to be disclaimed to permit registration of the marks on the Principal Register under Section 2(f) of the Lanham Act.

This case is newsworthy because it provides insight into the TTAB’s interpretation of gener-icness, particularly as applied to a disclaimer requirement for generic terms within compos-ite and design marks.

UNITED STATES No “Releaf” for Owner of RECYCLED PAPER GREETINGS Marks

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October 11–12 Trademarks in Transactions Conference Chicago, IL, USAOctober 13 India Seminar Mumbai, IndiaOctober 14 INTA/USPTO Roundtable Charlotte, NC, USA (open to TMA Conference attendees only)October 14–16 Trademark Administrators Conference Charlotte, NC, USAOctober 19 2012 Seoul International Trademark Forum Seoul, South KoreaOctober 22–November 2 TMA Roundtables: The Madrid Protocol and CTM Various U.S. CitiesNovember 6–10 Leadership Meeting Orlando, FL, USADecember 3–4 Advanced Anticounterfeiting Strategies Conference Istanbul, Turkey

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