FeaturesMoving with the Times: Motion Marks in Canada and the United StatesPage 5

Alternative Dispute Resolution Comes of Age in IndiaPage7

INTABulletinThe Voice of the International Trademark Association

In its decision in the WEBSHIPPING case, the Court of Justice of the European Union (CJ) ruled that a prohibition issued on the basis of a Community trade mark (CTM) extends, as a rule, to the entire territory of the European Union. DHL Express France SAS v. Chronopost SA, Case C-235/09 (CJEU Apr. 12, 2011).

A CTM court of the EU member state in which the defendant (or the plaintiff, or OHIM, as fall-back venues) is domiciled or has an establishment has jurisdiction in respect of acts of infringement committed or threat-ened within the territory of any of the mem-ber states. This allows the court to issue a prohibition not only in its own country or the country in which the infringement had taken place but also in multiple EU member states, up to a pan-EU prohibition. However, being allowed does not automatically mean being the rule, let alone being necessary. Plaintiffs often are reluctant to request pan-EU injunc-tions if they can prove an infringement only in part of the EU, and often they do not address in their motion the desired extent of the requested prohibition and submit facts of the country of infringement only, instead simply using a CTM to stop a national infringement.

In its ruling the Court of Justice gives some guidance—express and implied—on this matter:

• If the plaintiff’s motion is restricted as regards the territory of the desired prohi-bition, the prohibition will, of course, have to be limited accordingly.

• If the plaintiff’s motion expressly address-es the entire EU, the prohibition will, as a rule, extend to the entire EU.

Law&Practice

EUROPEAN UNIONCTM Infringement: EU-Wide Prohibition as a Rule

In This Issue

Law&Practice European Union 1, 8India 9 Venezuela 11

AssociationNews U.S. TM Litigation StudyWelcome New Members Panel Discussion for Law StudentsVolunteer Spotlight Ingrid Desrois David Berry

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June 1, 2011 Vol. 66 No. 10

AssociationNews

U.S. Trademark Litigation Study Recommends Broader IP EducationOn April 27, 2011, the U.S. Department of Commerce (DOC) submitted to Congress a study on trademark litigation practices in the United States. The study was called for in early 2010 by technical amendments to the trade-mark statute which directed DOC, in consulta-tion with the Intellectual Property Enforcement Coordinator, to analyze: (1) the extent to which small businesses may be harmed by abusive trademark enforcement tactics; and (2) the best use of federal government services to protect trademarks and prevent counterfeiting.

The U.S. Patent and Trademark Office (USPTO) took the lead in conducting the study and drafting the report, which was accom-plished by engaging stakeholders, including small businesses, and by requesting public comments. The key recommendations from the study are to increase opportunities for small businesses to obtain education as well

as legal advice and to enhance government resources to explain intellectual property rights to small businesses and the public.

Julia Huston (Foley Hoag LLP) stated that “the USPTO made a special effort to reach out to a broad range of constituencies” for its research. Indeed, the USPTO received 79 comments including comments from INTA, which focused on the role of brand owners in protecting and enforcing their rights.

Bolstering support of the report’s recommenda-tions, Ruby Zefo (Intel) stated that “to main-tain their trademark rights and the resulting brand value, all trademark owners are not only entitled, but have an obligation, to prevent infringing or diluting uses of their trademarks by others. This obligation holds regardless of a dis-

Continued on page 3

Continued on page 3

June 1, 2011 Vol. 66 No. 102

AssociationNews

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

ChairJanice Housey, MH2 Technology Law Group LLPVice ChairWalter Palmer, Pinheiro Palmer Advo-gadosAssociation NewsMarie Lussier, Chitiz Pathak LLPKen Taylor, MarksmenFeaturesValerie Brennan, Hogan LovellsAlexander Klett, Reed Smith LLP

Law & Practice: Africa, Central Asia,Eastern Europe & Middle EastCharles Sha’ban, Abu-Ghazaleh Intel-lectual PropertyLaw & Practice: Asia–PacificBarbara Sullivan, Henry Hughes Patent & Trademark AttorneysLaw & Practice: EuropeWiebke Baars, Taylor WessingChristoph Gasser, Staiger, Schwald & Partner Ltd.Law & Practice: Latin America & CaribbeanJohn Murphy, Arochi, Marroquin & Lindner S.C.Law & Practice: United States & CanadaTimothy Lockhart, Willcox & Savage PC

INTA Bulletin StaffExecutive DirectorAlan C. DrewsenDirector, PublishingRandi MustelloManaging Editor, INTA BulletinJames F. BushAssociate Editor, INTA BulletinJoel L. BrombergManager, Marketing and Brand StrategyDevin Matthew ToporekDesignerJesse Riggle

INTA Officers & CounselPresidentGerhard R. Bauer, Daimler AGPresident ElectGregg Marrazzo, Estée Lauder Inc.Vice PresidentToe Su Aung, BATMark Ltd.Vice PresidentBret Parker, Elizabeth Arden, Inc.TreasurerMei-lan Stark, Fox Entertainment GroupSecretaryLucy Nichols, Nokia CorporationCounselDale Cendali, Kirkland & Ellis 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.© 2011 International Trademark Association

Aguilar Galindo & Krizkova, S.C., Mexico City, Mexico

AIP Patent & Law Firm, Seoul, South Korea

Air China Ltd., Beijing, China

Alanis, Serrano & Doblado, S.C., Mexico City, Mexico

Alina S. Morris, Attorney at Law, Seattle, Washington, USA

Allende & Garcia S. Civ. de R.L., Lima, Peru

AlvaradoSmith, APC, Santa Ana, California, USA

ANA Law Group, Mumbai, India

Anatip Pte. Ltd., Singapore

Avala Patent Bureau, Minsk, Belarus

Avalos Brunetti Abogados, Asuncion, Paraguay

Avis Budget Group, Inc., Parsippany, New Jersey, USA

AZe Marka Patent Ltd. Co., Munich, Germany

Balkrishna Industries Limited, Mumbai, India

Bansal & Co. IP Consultants & Attorneys, Noida, India

Bean Law Office, Vista, California, USA

Beijing Scihead Intellectual Property, Beijing, China

Bender Law Office, Biberach, Germany

Bourget Law, S.C., Eau Claire, Wisconsin, USA

Gorrissen Federspiel, Copenhagen, Denmark

Green Mountain Coffee Roasters, Inc., Waterbury,

Vermont, USA

IdeaLegal, PC, Portland, Oregon, USA

Ingersoll-Rand Security Technologies, Carmel, Indiana,

USA

Innovate IP Ltd, Dursley, Gloucestershire, UK

Laracy & Co., Hong Kong, China

Law Offices of Gokalp Bayramoglu, Temecula, California,

USA

Leao Intellectual Property, Porto Alegre, Brazil

Lia e Barbosa Advogados – IP Lawyers, São Paulo, Brazil

Luna Advogados, Rio de Janeiro, Brazil

Mahons Attorneys, Sandton, South Africa

Meitar Liquornik Geva & Lesham Brandwein, Law Office,

Ramat Gan, Israel

Mikroulea - Chrissanthis & Partners, Athens, Greece

Moshaisky IP, St. Petersburg, Russian Federation

Netflix, Inc., Los Gatos, California, USA

Patent Law Works LLP, Salt Lake City, Utah, USA

Plasseraud IP Limited, Shanghai, China

Portolano Colella Cavallo Studio Legale, Rome, Italy

Raisbeck Osman & Castro, Bogota, Colombia

Regis Corporation, Edina, Minnesota, USA

Rios Abogados, S.C., Mexico, D.F., Mexico

Rosetta Stone, Ltd., Harrisonburg, Virginia, USA

Royal Risun Intellectual Property Agency Co. Ltd.,

Beijing, China

Ruschke Madgwick Seide & Kollegen, Munich, Germany

Salomonowitz Horak, Vienna, Austria

SEW-EURODRIVE GmbH & Co KG, Bruchsal, Germany

Shepherd and Wedderbum, Edinburgh, Scotland, UK

Shinsung International Patent & Law Firm, Seoul, South

Korea

Shupe Ventura Lindelow & Olson, PLLC, Fort Worth,

Texas, USA

Skype Limited, Dublin, Ireland

Sulami-Lavie Law Firm, Tel Aviv, Israel

T. Rowe Price Associates, Inc., Baltimore, Maryland, USA

Tessera Trademark Screening, San Rafael, California, USA

The Reilly Intellectual Property Law Firm, Denver,

Colorado, USA

UniLegal LLC, Singapore

Vlasta-Consulting, Moscow, Russian Federation

Vutts & Associates, Advocates, New Delhi, India

Winston & Strawn London, London, UK

Wolf, Rifkin, Shapiro, Schulman & Rabkin, LLP, Los

Angeles, California, USA

Wooin Patent & Law Firm, Seoul, South Korea

Yoshikawa International Patent Office, Osaka, Japan

Welcome New Members

3

AssociationNews

• If the plaintiff’s motion does not address the territory concerned, it is deemed to request an EU-wide prohibition; the prohibi-tion will then likewise, as a rule, extend to the entire EU.

However, a CTM court must limit the territorial scope of the prohibition to a single member state or to part of the territory of the EU, if the defendant proves that the use of the sign at issue does not affect the functions of the CTM in the remaining territory of the EU. Such differ-ence may be due, for example, to one or more of the following:

• Linguistic reasons (as in this case the Court pointed out in the decision);

• Any other reason that does not lead to a confusing perception of the contested sign;

• A reputation of the CTM in part of the EU only, if the claim is based on the special protec-tion of well-known trademarks (see the Court of Justice’s decision in PAGO International GmbH v. Tirolmilch registrierte Genossen-schaft mbH, Case C-301/07 (ECJ Oct. 6, 2009)), which may exclude an image transfer or detriment of the CTM in the other part.

This means that it is not the plaintiff’s burden to

prove an unlimited infringement; rather, it is the defendant’s burden to prove a merely limited infringement. ■

parity between the size of the parties involved in the dispute. Therefore, each trademark dispute should continue to be analyzed on its own facts, under well-established mechanisms already in place.” Zefo also believes that “the study makes these points clear, and reminds brand owners of all sizes of the importance of getting educated and understanding the law as a necessary step to understanding how to appropriately create and maintain trademark rights.”

Echoing this view, Peter Harvey (Harvey Siskind LLP) stated that “the report is a well-written, thoughtful analysis of the issue posed by Congress: namely, the extent to which small businesses may be harmed by abusive trade-

mark enforcement practices.” Harvey believes that the report “acknowledges that the courts already have tools—such as Rule 11 sanctions and attorneys’ fees awards in ‘exceptional’ cases—to deter overly aggressive litigation tactics in trademark cases.” Noting that the USPTO’s findings are anecdotal and do not explicitly address whether and to what extent abusive trademark enforcement practices pose a significant problem, Harvey states that “the Report’s recommendations offer practical suggestions that merit serious consideration.”

Susan Natland (Knobbe Martens) concurred with the report’s recommendations stating that “there is still significant value in outreach

and educational efforts to help the general public and smaller businesses understand the value of trademark rights, the investment made in building brands, the duty of compa-nies to protect their brands, and the enhanced protection given to famous marks.”

INTA applauds the USPTO’s work on the report and its recommendations that focus on creat-ing additional opportunities for lower cost legal services in the IP field, increasing continuing legal education programs focused on enforce-ment and strategy, and enhancing governmen-tal resources to educate businesses and the public about the importance of and accepted methods for protecting intellectual property. ■

INTA’s Academic Committee has organized a number of career panels over the past few years as a way to bring INTA to law students.

Antonio Selas, professor at Universidad Carlos III of Madrid, partner at Cremades & Calvo-Sotelo, and Academic Committee member, organized the career panel in Madrid on April 6. The event was hosted at the Universidad Villanueva.

The panellists included Rafael Anson, Professor at the Universidad Villanueva and partner of Mas y Clavet; Violeta Beltrán, attorney of the Spanish Nacional Research Council (CSIC); Patricia Galán, Attorney of the Spanish Patent Office; Dr. David Gómez, Professor at the Universidad Rey Juan Carlos and attorney at Cremades & Calvo Sotelo; and Javier Gonzalez, from the National Associa-

tion for Trademark Protection (ANDEMA). The discussion was moderated by Professor Selas.

Rodrigo Carneiro, partner at Dannemann Siemsen Bigler & Ipanema Moreira and Academic Committee member, organized and hosted the first panel in São Paulo on April 12. The event was sponsored by the law firms of Dannemann and Guarnera Advogados. Panelists included Maitê Moro, IP Consultant and Professor in São Paulo; Renata Franco, Almap BBDO; Luana Brazileiro, IP Coordina-tor of PepsiCo – Brazil; and Karina Muller, Guarnera Advogados. The discussion was moderator by Mr. Carneiro.

Both panels of legal professionals discussed their impressions and views on career oppor-

tunities in the dynamic field of trademark law. Law students had the opportunity to listen to experiences and anecdotes as well as receive practical advice. The panellists explained dif-ferent career paths available in the field but emphasized the importance of learning how to listen as key to a successful career wher-ever their law school education takes them. Learning to network and developing working relationships were reoccurring themes for both panels.

The career panel is a popular event for law students and it is a chance for them to network with trademark professionals. It is also a great way for INTA to build stronger relationships with the academic community. Stay tuned for future panels later this year.

Contributor: Martin ViefhuesJONAS Rechtsanwaltsgesellschaft mbH, Cologne, Germany

Verifier: Christoph GasserStaiger, Schwald & Partner Ltd., Zurich, Switzerland

Mr. Gasser is co-chair of the INTA Bulletin Law & Practice—Europe Subcommittee.

EUROPEAN UNION CTM Infringement: EU-Wide Prohibition as a Rule Continued from page 1

Trademark Litigation Study Continued from page 1

Careers in Trademark Law: A Panel Discussion for Law Students

June 1, 2011 Vol. 66 No. 104

VolunteerSpotlight

David Berry is a professor at the Thomas M. Cooley Law School in Auburn Hills, Michigan, USA, and is the director of Cooley’s Graduate Program in Intellectual Property Law. Being a law professor was not always his plan, though. David spent the first 15 years of his legal career with the former Boston firm of Testa, Hurwitz & Thibeault, LLP, a promi-nent firm with a national practice in venture capital and technology law. David began as a summer associate with Testa and ultimately became a litigation partner specializing in

patent and intellectual property law. He also ran the firm’s pro bono project, one of the most successful and rewarding projects in his tenure at Testa. In 2002, David moved back to his home state of Michigan and joined the faculty of Cooley to further develop the law school’s IP curriculum. He teaches courses in intellectual property law, patent law, pat-ent litigation and licensing of intellectual property.

Although he enjoyed practicing law, David does not regret his move to academia. He is happy to set his own schedule and does not miss the cease and desist letters or the con-tentious exchanges with opposing counsel. But being a professor certainly is a full-time job, and he is in the office every day, keeping up to date on the various changes in intellec-tual property law, engaging in scholarship and advising students.

Currently a member of INTA’s Academic Com-mittee, David has spearheaded the develop-ment of the INTA Trademark Scholarship Symposium. At the inaugural Symposium last year, 12 professors and scholars pre-sented their works-in-progress in the field of trademark law before a group of professors

and practitioners; the ensuing commentary and critique provided practical feedback to improve the relevance of the finished product. This is the INTA project that David has enjoyed the most, and he is pleased that the Symposium will be an annual event from now on.

The success of the Annual Meeting’s Academic Day and Trademark Scholarship Symposium has increased the participation of academic members and law students in INTA programs and earned David the 2010 INTA Volunteer Service Award.

When he is not busy with his academic responsibilities, David is busy with his three children and his duties as parent of the high school ski team captain. He is also “addicted to golf” and enjoys spending time in northern Michigan, where he and his family are now renovating a second home.

Ingrid Desrois If there is anything such as a “well-known trademark” in the field of IP personalities—one that has enhanced distinctiveness because of long-term use, has high recognition in the market and is valued by consumers—it would be Ingrid Desrois, the former “European” Director of Trade-marks for Procter and Gamble (P&G) and, since 2004, Special Advisor to the Office for Harmoni-zation in the Internal Market (OHIM).

After growing up in Munich, in the mid-1960s Ingrid moved to Paris, where she first became active in trademarks through an acquisition by a U.S. company she worked for. She started her career as a Legal Assistant on Trademarks and retired as Director, Trademarks (Europe/Africa/Mid-East) for P&G in 2003.

Long active in INTA, Ingrid began attending the Association’s meetings in the mid-1980s. The first committee she joined, the Look-Alikes Com-mittee, tried to build a bridge between fast-mov-ing consumer goods companies and distributors coming out with their own labels. With the advent of OHIM, Ingrid joined the OHIM Subcommittee, on which she served for a number of years.

Ingrid has had the honor of serving on the INTA Board and the Executive Committee, which she found to be a very rewarding experience. Currently she is a member of the Government Of-ficials Education and Training Committee (which raises the question of whether she is really “retired”). INTA continues to bring her the op-portunity to meet interesting people from every continent, form new friendships and make the IP world evolve and adapt to the rapidly changing environment.

Ingrid counts trying to be a mentor to younger colleagues and building P&G’s European trademark department as her most enjoyable in-house experiences. Seeing “her” trademarks on store shelves also is a treat.

In her capacity as Special Advisor to OHIM—a position that has been described as an “industry ambassador”—Ingrid is involved in the user satis-faction surveys run by the Office. In addition, she works with INTA and OHIM on the seminar held annually in Alicante for OHIM examiners.

In private, Ingrid is a very happy grandmother (3 boys) and enjoys sailing in the Mediterranean. When asked what her favorite trademark was, she immediately responded, “What else—BABYDRY, noblesse oblige!” As for what she would have done if not working on trademarks, Ingrid said, “Grow blue tomatoes!” These might be distinctive, but probably not as distinctive as she is in the trademarks field.

Peter MüllerMüller Schupfner & Partner Patentanwälte, Munich, GermanyINTA Bulletin—Association News Subcommittee

Jennifer K. ZieglerHarley-Davidson Michigan, LLC, Ann Arbor, Michi-gan, USAINTA Bulletin—Association News Subcommittee

5

FeaturesMoving with the Times: Motion Marks in Canada and the United States

Susan J. Keri and Jonathan BurkinshawBereskin & Parr LLP, Toronto, Ontario, Canada

Elisabeth A. LangworthySutherland Asbill & Brennan LLP, Washington, D.C., USA

Ms. Keri and Ms. Langworthy are members of the INTA Bulletin Features Subcommittee.

In Canada, motion marks have, until very recently, been considered to be inherently unregistrable. By contrast, the U.S. Patent and Trademark Office (USPTO) has granted registra-tions covering motion marks for many years. While the position in Canada may soon be brought into line with that in the United States, motion marks will continue to face significant hurdles to registration in both countries.

Canadian Approach

Moving-image design marks, often referred to as motion marks, have long been considered unregistrable as trademarks by the Canadian Intellectual Property Office (CIPO). However, with the publication of a draft Practice Notice on October 8, 2010, the CIPO signaled its in-tention to permit registration of moving images as trademarks. If this Practice Notice comes into effect, it will be the first official recognition by the CIPO that such nontraditional marks are registrable as trademarks in Canada.

While many Canadian practitioners were of the view that the CIPO could not recognize the registrability of motion marks without any underlying legislative amendments, the CIPO itself took the position that such amendments were not required. Instead, it proposed the adoption of a more flexible interpretation of existing legislation.

Of significance in the draft Practice Notice is the CIPO’s apparent acknowledgement that non-traditional marks, such as motion marks, are registrable as trademarks in Canada provided the mark can be or is used in association with wares and/or services as a source identifier. The draft Practice Notice provides in part:

The requirements for registrability of a non-traditional mark are dependent upon

whether the mark falls within the defini-tion of a trade-mark in section 2 of the Trade-marks Act and accordingly upon whether the mark is used by a person for the purpose of distinguishing or so as to distinguish wares and services manufac-tured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others. The Office considers that motion marks and holograms fall within the definition of a trade-mark under s.2 of the Trade-marks Act. [Emphasis added.]

A historical obstacle to the registration of motion marks in Canada was the logistic chal-lenge of accurately describing and depicting them in a trademark application. The draft Practice Notice responds to this logistic chal-lenge with a more flexible interpretation of existing legislation, new formal requirements and the adoption of modern technologies.

Under the draft Practice Notice, applications to register motion marks would be required to include (1) an accurate drawing or draw-ings of the mark, (2) a description that clearly defines the scope of the mark and (3) a statement that the mark is a motion mark.

Previously, the CIPO had objected to the registration of motion marks on the basis of at least two provisions in the Trade-marks Act and Regulations. One regulation requires that a separate application be filed for the regis-tration of each trademark. The CIPO had tak-en the position that applications for motion marks were applications for a multiplicity of marks and thus prohibited. The draft Practice Notice indicates that this requirement would be met by including in an application for a motion mark the statement that “the subject application covers only one trade-mark”.

The other objection previously raised by CIPO was based on the requirement in the Act that ap-plications for design marks include an accurate representation of the trademark. The CIPO had taken the position that this requirement would preclude the registration of a motion mark because the mark in its entirety (i.e., its motion from start to finish) could not be accurately repre-sented by static drawings and a description.

Underlying the requirement for an accurate representation of the mark is the policy rationale that a trademark registration should have a clearly delineated scope that can be readily understood by both competitors and the general public. The draft Practice Notice takes the position that this requirement can be satisfied by filing accurate drawings together with a detailed written description. Specifically, applications for motion marks must include drawings in the nature of “freeze frames” showing the various points of the movement in sufficient number to “best depict the com-mercial impression of the mark.” The drawings must be clear and precise and not excessive in number. As well, the application must contain an electronic representation of the motion mark, no more than 1 MB in size, on DVD, CD or portable USB flash drive.

While the draft Practice Notice represents a significant development toward the recogni-tion of modern trademark and branding strat-egies, there are several potential hurdles.

First, Canadian law with respect to what constitutes trademark “use” is stringent. For a mark to be deemed to be used with wares, it must, in the normal course of trade, and at the time of the transfer of the property in or possession of the wares, be marked on the wares themselves, or the packages in which they are distributed, or otherwise as-sociated with the wares so that notice of the association is given to the person to whom the property or possession is transferred. This requirement could prove to be a difficult hurdle for registration and enforcement of motion marks when associated with wares.

In addition, applicants who apply to register motion marks in Canada on the basis of use and registration of the mark in a foreign country should be aware of the requirement that the Canadian application must be for the identical mark registered and used abroad, and that a certified copy of the foreign registration must be filed. As different countries are likely to identify and index motion marks differently, it may be dif-ficult to support the Canadian application with a claim of use and registration in a foreign country.

Continued on page 6

June 1, 2011 Vol. 66 No. 106

FeaturesMotion Marks in Canada and the United States Continued from page 5

Finally, the CIPO is likely to strictly enforce the formal requirements for the depiction and description of the mark, and applica-tions for motion marks will need to clearly delineate the scope of the mark.

Nevertheless, the fact that the CIPO has acknowledged that the definition of a trademark could include, within its scope, a nontraditional indication of source such as a motion mark represents an acceptance of commercial realities and is a positive devel-opment for brand owners in Canada.

U.S. Approach

In contrast to the Canadian position, the USPTO has acknowledged the inherent reg-istrability of motion marks for many years. However, only a handful of such marks have actually proceeded to registration.

U.S. trademark law requires that, to be federally registrable, a motion mark—like any other mark—meet the fundamental threshold that it is distinc-tive and nonfunctional and serve as a source identifier of goods or services in commerce (15 U.S.C. § 1052). Motion marks typically are com-posed of graphic images. Given the substantial graphic component of such marks, meeting the requirements of distinctiveness and functionality typically is less problematic than satisfying the requirement that the motion mark—the order and composition of graphic, and, occasionally, literal, elements in motion—actually serves as a source identifier. Under U.S. registration practice, the key element to demonstrate this source-identifying function is the “specimen of use” filed to support registration for the recited goods or services.

Some of the more well-known “motion marks” registered in the USPTO provide good examples of this problem and how applicants have been able to meet the requirement. For marks that are used in association with services, the issue appears to be less difficult to overcome than for those used in association with the sale of goods, for the simple reason that advertising and marketing materials can support a registra-tion for services. On the other hand, except in unusual circumstances, acceptable specimens evidencing trademark use on goods must show use of the trademark affixed to the goods or packaging for the goods. Motion marks, by their nonstatic nature, are difficult to “affix” and are best suited to electronic formats.

Section 904.03(l) of the USPTO’s Trademark Manual of Examining Procedure (TMEP) governs the submission of specimens for motion marks. It provides that “an acceptable specimen should show the entire repetitive motion in order to de-pict the commercial impression conveyed by the mark (e.g., a video clip, a series of still photos, or a series of screen shots).” (Emphasis added.) With respect to services, Section 1301.04(a) of the TMEP requires that “the specimen must show use of the mark in a manner that would be perceived by potential purchasers as identify-ing the applicant’s services and indicating their source.” Further, TMEP Section 1301.4(b) provides that “[w]here the mark is used in adver-tising the services, the specimen must show an association between the mark and the services for which registration is sought. A specimen that shows only the mark, with no reference to the services, does not show service mark usage.”

In the case of Peabody Management, Inc.’s application in 2000 to register its “Duck March” motion mark for various hotel services and facilities for business meetings and banquets, the initial specimen of use submitted to support registration consisted of still photographs of segments of the well-known “Peabody Duck March” performed at one of the applicant’s ho-tels. The drawing for the “Duck March” motion mark (Reg. No. 2710415) depicts a single point in the movement of the mark.

The USPTO examining attorney rejected the proffered specimen as unacceptable because it did not show the mark as used in commerce. The applicant then submitted substitute specimens consisting of a promotional video-tape and a promotional compact disk, each promoting a particular hotel property owned by the applicant and incorporating live video foot-age of the “Duck March” motion mark in its entirety. The USPTO examining attorney found these electronic specimens to be acceptable as showing the “mark” (i.e., the motion mark in its entirety) as used in commerce (i.e., in the context of a CD/videotape promoting the hotel services to travel and meeting planners).

Recently, Peabody Management was required to submit specimens of use to support an Affidavit of Continued Use and Incontestability with respect to its “Duck March” motion mark. The specimens provided consist of a series of 35 Internet screen shots showing the hotel facilities and the various elements of the

“Peabody Duck March.” The USPTO readily ac-cepted the specimens in this format.

Motion marks registered for goods are far less common in the United States. Not surprisingly, they are typically registered for “electronic” goods in Class 9. An example is Microsoft Corporation’s registration for com-puter game consoles and software (Reg. No. 3252688), the drawing of which depicts five points in the movement of the mark.

Microsoft initially submitted a specimen in the form of a photocopy of the game console display-ing only one scene in the motion mark, and the USPTO examining attorney issued an office ac-tion requiring a substitute specimen to show the entirety of the motion mark as it was described in the drawing statement. Microsoft responded by submitting a CD that purported to show the mark in its entirety but did not appear to show the mark in the context of any goods. The examining attorney issued a subsequent office action requiring a substitute specimen. However, Microsoft represented to the USPTO that the substitute specimen was merely a close-up shot of the “mark shown on the original specimens,” and it succeeded in overcoming the objection that the specimen did not display the mark “in the context of any of the goods.”

Thus, U.S. registration practice requires a strict showing evidencing use of a motion mark in commerce on or in association with the sale of goods or services. Given the inherent nature of motion marks, such a showing with respect to goods can be problematic.

Conclusion

Moving images have, for some time, func-tioned as source identifiers. In this era of electronic commerce, that role is only likely to increase. While Canada’s approach to the registrability of motion marks has traditionally been quite different from that of the United States, the implementation of the draft Practice Notice on motion marks recognizing the inherent registrability of such marks would bring Canadian practice in line with the U.S. system. Nevertheless, both countries will continue to grapple with the fundamental requirement to show that such marks can and do function as source identifiers, particularly with respect to their use on goods. ■

7

FeaturesAnupam PandeyAZB & Partners, Noida, IndiaADR—Outreach Subcommittee

India is in the midst of all the challenges of a booming economy. Its development, fueled by a strong middle class, has produced a plethora of business activities. Given the continuously in-creasing stakes, individuals are now more aware of their legal rights. This awakening has led to a marked increase in litigation to address disputes, a paradigm shift that in turn has considerably increased the pressure on an already overbur-dened legal system. In an effort to address this problem, great emphasis is now being placed on alternate dispute resolution (ADR).

In 1989, the Indian government, on the advice of the then Chief Justice of India, formed a committee under the chairmanship of Justice Malimath to identify the reasons for the backlog of cases in the legal system. The committee’s report emphasized the need to encourage the resolution of disputes in order to reduce and control the inflow of litigation. The committee further recommended that Indian courts make ADR a mandatory part of the litigation process.

The government took a progressive step by repealing the archaic Arbitration Act, 1940 and introducing the Arbitration and Conciliation Act, 1996. A key objective of the new Act is to promote the use of mediation, conciliation and other ADR procedures to achieve settlements of disputes.

Additionally, at the committee’s recommen-dation, Section 89 was inserted in the Civil Procedure Code (CPC). This provision, which became effective July 1, 2002, includes mediation, conciliation and judicial settle-ment as recommended modes of settlement. Accordingly, where it now appears to a court that there exists an element of settlement that may be acceptable to the parties, the court is empowered to formulate proposed terms of settlement and provide them to the parties for comment. After receiving the observations of the parties, the court may reformulate the terms of the possible settlement and refer the same for (a) arbitration, (b) conciliation, (c) judicial settlement or (d) mediation. With the exception of mediation, ADR is possible only if the parties agree to have their dispute settled through the foregoing means.

It is worth mentioning that the Supreme Court of India, in the very recent case of Afcons Infrastructure Ltd. v. Cherian Varkey Construc-tion Co. (P), observed that there is an anomaly in Section 89 of the CPC and has provided guidelines for resolving disputes through ADR processes. These guidelines include that a court should consider early on whether a matter in dispute can be resolved through the use of any of the foregoing ADR processes. In cases in which the court concludes that the matter can be resolved, it is encouraged to ex-plain the ADR choices available to the parties involved. However, if the parties do not agree to be referred to either arbitration or concilia-tion, the court, keeping in view the preferences of the parties, may refer the matter to other ADR processes, including mediation and/or judicial settlement.

Mediation and Conciliation

One interesting aspect of ADR in India is the availability of mediation and conciliation (a more aggressive form of mediation) as differ-ent and distinct ADR processes.

Mediation

In India, mediation is negotiation carried out with the assistance of a third party. The media-tor, in contrast to an arbitrator or judge, has no power to impose an outcome on the disputing parties. The mediator is considered to be only a facilitator and does not take a proactive role. He does not decide what is fair or right, appor-tion blame or render any opinion on the merits or chances of success if the case is litigated. Rather, he acts as a catalyst in bringing the disputing parties together by defining issues and limiting obstacles to communication and settlement. By using his techniques and skills, he brings the parties to the negotiating table, the goal being to reach an economically viable and amicable solution. This may be done by seeing each party privately and listening to its point of view. A mediator generates options in an attempt to solve the dispute and empha-sizes that it is the parties’ own responsibility to make decisions that affect them.

Mediation Centers in India

In order to bring effect to Section 89 of the CPC, mediation centers have been opened in various Indian states. In 2005, the Madras

High Court became the first to start such a center; since then, almost all the other states have done so.

Also in 2005, the first mediation center was opened in Delhi. Currently there are four me-diation centers functioning in the capital. The Delhi High Court drafted the Mediation Rules that are applicable to all mediation in respect of any suit or proceeding in the High Court or a court subordinate to the High Court of Delhi.

The Mediation Rules of the Delhi Centers pro-vide that a mediator shall attempt to facilitate voluntary resolution of the dispute(s) by the parties; communicate the view of each party to the other; and assist them in identifying issues, reducing misunderstandings, clarifying priorities, exploring areas of compromise and generating options in an attempt to solve the dispute(s). The mediator will emphasize that it is the responsibility of the parties to make decisions that affect them; he will not impose any terms of settlement on the parties.

Once mediation is agreed to by the parties to a litigation, the court generally provides the parties a 90-day period to conduct the mediation. This period can be extended in some cases upon the request of the parties or at the discretion of the court if it believes the extension of time is necessary or may be use-ful. However, any such extension, if approved, cannot extend beyond 30 days. In the event that the parties reach an agreement with re-gard to all or some of the issues in the suit or proceeding, the same shall be reduced to writ-ing and signed by the parties or their attorney. If any counsel has represented the parties, the mediator may obtain his signature on the settlement agreement as well. The agreement of the parties so signed shall be submitted to the mediator, who shall, with a covering letter signed by him, forward the same to the court in which the suit or proceeding is pending. Where no agreement is reached between the parties before the time limit or where the mediator is of the view that no settlement is possible, he shall report the same to the court in writing.

Conciliation

Conciliation, like mediation, is carried out with the assistance of a third party, the main difference being that in conciliation the third

Alternative Dispute Resolution Comes of Age in India

Continued on next page

June 1, 2011 Vol. 66 No. 108

Law&PracticeOHIM is launching a new “eSearch Plus” ser-vice—a unified tool for OHIM users, which com-bines, in one interface, the data of at least ten previous databases. This new service, aimed at improving the online-search user experience, will allow for the easy searching and monitoring of Community trade marks and registered Com-munity designs and for researching related case law, all via a single, user-friendly interface.

This service is now available, but as yet only in a trial or “beta” version. OHIM is seeking user feedback in order to fine-tune the service before the full release. The trial version is in English only, but the final release will be made available in all the OHIM languages. OHIM has also made user tutorials available on the eSearch Plus interface page to assist in use of the service.

eSearch Plus offers advanced features, includ-ing a wide range of search criteria; more com-

plete information; related case law; easy-to-use sorting and filtering options; and the possibility of setting up your own alerts, delivered using RSS feeds. While all of the existing services, such as CTM Online, RCD Online, and the case law databases, will continue to be available for some time, it is planned to phase them out once eSearch Plus has been fully tested and is on final release. A non-exhaustive list of the databases that will cease to exist and that will be consolidated into eSearch Plus includes the following:

• CTM Online• RCD Online• Bulletin Online• Online Access to Files• Case Law• Online Inspection of Files• CTM Watch• FindRep Search Tool

• Search Reports Online • RCD/CTM Download

Some attractive features of eSearch Plus are (1) unlimited search results at one glance; (2) an option to show all OHIM decisions related to the search query; (3) an option to search the text of all decision documents; (4) a facility to search all decision types; and (5) a new RSS alert system, integrated to keep you informed about changes and developments.

The trial version of eSearch Plus can be found at http://esearch.oami.europa.eu/copla/index.

EUROPEAN UNION OHIM Launches New eSearch Plus Service

Contributor: Hazel TunneyFRKelly, Dublin, Ireland

Verifier: Seamus DohertyCruickshank Intellectual Property Attorneys, Dublin, Ireland

Alternative Dispute Resolution Comes of Age in India Continued from page 7

party takes a much more active role. Also, like mediation, conciliation is governed by the Arbi-tration and Conciliation Act. Once appointed by mutual agreement, a conciliator often requests the parties to submit a brief written statement describing the general nature of the dispute and the point(s) at issue. The conciliator then assists the parties in an independent and impartial manner in their attempt to reach an amicable solution. He is guided by the prin-ciples of objectivity, fairness and justice, giving consideration to the rights and obligation of the parties, the usages of the trade concerned and the circumstances surrounding the dispute. The

Act makes it clear that the conciliator may, at any stage of the conciliation proceedings, make proposals for a settlement of the dispute. Such proposals need not be in writing and need not be accompanied by a statement of the reasons behind the proposal.

When it appears that there exists an element of settlement that may be acceptable to the parties, the conciliator takes the lead in formu-lating the terms of a possible settlement and submits them to the parties for consideration. If an agreement is ultimately reached, it is final and binding on the parties and has the same

status and effect as an award reached through a full arbitration proceeding.

Conclusion

ADR processes in India are at a nascent stage, and at present most parties to disputes still prefer to address their conflicts through litigation. However, there is increased emphasis on utilizing various ADR processes, including mediation. With greater access being provided to mediation through court procedures and the opening of me-diation centers, India is well on its way to reduc-ing the current burden on its court system. ■

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Law&Practice

On March 11, 2011, the Court of Justice of the European Union (CJ) rejected an appeal by Agencja Wydawnicza Technopol sp. z o.o. (Tech-nopol) to set aside the decision of the Court of First Instance (CFI) (now the General Court) in Agencja Wydawnicza Technopol v. OHIM (Case T-298/06 (CFI Nov. 19, 2009).) (The CFI’s deci-sion was reported in the INTA Bulletin, Vol. 65, No. 2, Jan. 15, 2010.) The Court of Justice’s ruling brings to an end a longstanding attempt by Technopol, which started in 2005, to register 1000 as a Community trade mark (CTM) for “brochures, periodicals, including periodi-cals containing crossword puzzles and rebus puzzles, newspapers” in Class 16. (Agencja Wydawnicza Technopol sp. z o.o. v. OHIM, Case C-51/10 P (CJEU Mar. 11, 2011).)

In reaching its decision, the Court repeated that a mark composed exclusively of numbers, even with no graphic modifications, was not enough in itself to prevent that mark from being regis-tered as a trademark. The first ground of appeal centered on Article 7(1)(c) of the CTM Regula-tion (Council Regulation 40/94), which prohibits the registration of descriptive marks. Technopol alleged that the CFI had not taken into account all the relevant criteria for the application of

that article. It argued that marks could be refused registration only if they represented the “usual way” of designating the characteristics of goods or services. The Court of Justice said that each ground of refusal under Article 7(1) had to be interpreted in light of the general interest underlying it, which was to ensure that descrip-tive signs relating to one or more characteristics of goods could be freely used by all traders offering such goods.

The effect of this was that it was not necessary for a mark actually to be in use in a descriptive way at the date of application; it was sufficient that the mark could be used in that way. It was not relevant to know the number of competitors who had or might have an interest in using the sign in question; it was also irrelevant that there were other, more usual signs than that at issue for designating the same characteristics of the goods referred to in the application. From this it followed that Article 7(1)(c) did not require the sign at issue to be the usual means of designa-tion: a numerical sign can be used to designate a quantity, such as the number of pages or the number of puzzles contained within a book. Thus, the CFI had not erred in law by finding that registration of 1000 as a CTM had to be

refused under Article 7(1). Article 12(b), which ensures that traders can freely use indications relating to the characteristics of goods, does not limit in any way the scope of Article 7(1)(c).

The second ground of appeal, that the CFI and OHIM had failed to take into account OHIM’s previous practice in other cases involving numerals, was rejected: consistency in OHIM decisions was necessary, but each application, with its particular facts, had to be considered fully. The sign 1000 was refused registration because of the specification of goods applied for and the way the mark would be perceived.

Consequently, Technopol’s appeal was dis-missed.

EUROPEAN UNION …4, 5, 6 … “1000” and Still No Trademark

Registration for Numerals! That’s Final!

Contributors: Charters Macdonald-Brown and Katie CullinanRedd Solicitors LLP, London, United Kingdom

Verifier: Simon BentleyAbel & Imray, London, United Kingdom

Mr. Macdonald-Brown is a member of the INTA Bulletin Law & Practice—Europe Subcommittee.

On January 13, 2011, the Intellectual Property Office (IPO) announced changes in trademark practice in India. The changes have been imple-mented with retrospective effect from Decem-ber 29, 2010.

The major change has been an introduction of a free public database for trademark searches in India. Any person can now conduct an online search at http://124.124.193.235/tmrpublic-search/tmsearch.aspx for Indian Trade Marks. It is noteworthy that the same database was ear-lier available at a fee of US $10 per 15 minutes.

Accordingly, the IPO has discontinued the provision of official searches, which were earlier being issued by examiners. Users around the globe are still assessing the available search tools and the quality of results produced by the

new database, and there is some concern, par-ticularly about results in device mark searches.

The IPO has also increased the application fee by about US $25 per class, with effect from December 29, 2010. All applicants who filed ap-plications between December 29, 2010 (date of implementation), and January 13, 2011 (date of notification), have been given time to pay the deficit fee by March 31, 2011, failing which applications are to be postdated to the date of payment of such deficit fee.

All applicants have been asked to file responses to examination reports electronically. It has intimated that there is a huge backlog for digiti-zation and uploading of physically filed replies, and electronic filing will help ensure speedy consideration of responses.

It is noteworthy that all of above steps are aimed at reducing the workload of the IPO. The IPO has made significant strides with the issuance of thousands of pending registration certificates since implementation of these changes. Its efforts to reduce the registration time frame while making systems user-friendly are greatly welcome.

INDIA IP Office Introduces Free Searchable Database and

Requests Electronic Filing of Examination Responses

Contributor: Isha KohliChadha & Chadha, Advocates, New Delhi

Verifier: Vikrant RanaS.S. Rana & Co., New Delhi

Both are members of the INTA Bulletin Law & Practice—Asia-Pacific Subcommittee.

June 1, 2011 Vol. 66 No. 1010

Law&Practice

On February 17, 2011, the EU General Court (GC) dismissed an action brought by Formula One Licensing BV (FOL) against the application for registration as a Community trade mark (CTM) of the figurative mark F1-LIVE, for goods and services in Classes 16, 38 and 41, filed by Global Sports Media Ltd. (Formula One Licensing BV v. OHIM, Case T-10/09 (GC Feb. 17, 2011).)

FOL’s opposition was based on its earlier Inter-national Registration, as well as two national registrations, for the word mark F1 and on its CTM registration for the figurative mark F1 FOR-MULA 1. These registrations also covered goods and services in Classes 16, 38 and 41.

When comparing the F1 word mark with the fig-urative mark F1-LIVE, the General Court found that they differed visually, because of, inter alia, the presence of the word LIVE. Furthermore, the differences in layout between FOL’s figurative mark—the F1 FORMULA 1 logo—and the F1-LIVE mark meant that there was no visual similarity between these marks at all. Phonetically and conceptually, the marks were found to be simi-

lar to a certain extent, owing to the presence in all relevant marks of the element F1.

The Court concluded, however, that the relevant public perceives “Formula 1” as a generic term, designating a category of racing car and races involving such cars. As “F1” was the familiar ab-breviation of “Formula 1,” “F1” was held to be equally generic. This meant that the F1 element did not play a dominant role in the opposed F1-LIVE mark. Therefore, the relevant public would not automatically associate the figurative F1-LIVE mark applied for with FOL, merely because the mark incorporated the term “F1.”

FOL had argued that its trademarks were highly distinctive, as a result of extensive use over a period of many years. The General Court, however, found that the evidence submitted by FOL showed that it had consistently made use of its marks in a specific form, namely in the form of the F1 FORMULA 1 logo—that is, the figurative mark. Because the mark applied for also contained the element F1, but in a rather different figurative form than the public was used to seeing from FOL, there was no likeli-hood of confusion, even though the goods and services involved were very similar and in some cases even identical.

FOL had also argued that its marks enjoyed a reputation in the European Union and that the use of the F1-LIVE mark would take unfair advantage of and/or cause harm to the repute and distinctive character of FOL’s marks. How-ever, the Court pointed out that the reputation in FOL’s marks related only to the F1 FORMULA 1 logo, not to the word marks. As this logo was dissimilar to the F1-LIVE mark for the same reasons as mentioned above, FOL’s claim for protection against free riding and dilution was also denied.

While it may be appealed, the decision is a re-minder that extensive use of a word-and-device mark does not automatically mean that the word element is safeguarded against becoming descriptive. This is something for brand owners to keep in mind when designing their branding and trademark enforcement strategies.

EUROPEAN UNION F1 Considered Descriptive Sign

Contributor: Jaap BremerBarentsKrans N.V., The Hague, The Netherlands

Verifier: Bill LadasSJ Berwin, London, United Kingdom

Both are members of the INTA Bulletin Law & Practice—Europe Subcommittee.

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Law&PracticeOn March 24, 2011, the Court of Justice of the European Union (CJ) rejected an appeal by Fer-rero SpA to set aside the decision of the Court of First Instance (CFI) (now the General Court) in Ferrero v. OHIM – Tirol Milch Reg.Gen.mbH Inns-bruck (CFI Oct. 14, 2009). The Court of Justice’s ruling brings to an end the attempt by Ferrero to obtain a declaration of invalidity of a Commu-nity trade mark (CTM) registration for the figura-tive form of the mark TiMi KiNDERJOGHURT, as shown, on the basis of the earlier mark KINDER and other marks featuring that mark. (Ferrero v. OHIM – Tirol Milch Reg.Gen.mbH Innsbruck, Case 552-09 P (CJEU Mar. 24, 2011).)

The Court of Justice upheld the finding of the General Court that similarity of the marks was a precondition for invalidity under Articles 8(1)(b) and 8(5) of the CTM Regulation (Regulation No. 40/94, codified as Regulation No. 207/2009). Article 8(1)(b) prevents registration, or enables invalidation, of a mark with respect to which, because of its similarity to an earlier mark and registration for identical or similar goods, there exists a likelihood of confusion; Article 8(5) prevents registration or enables invalida-tion of a mark that is similar to an earlier mark that has a reputation and where the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive

character or the repute of the earlier mark.

Ferrero argued that the reputation and distinc-tive character of an earlier mark should be taken into account as well as similarity, when considering globally whether there is a likeli-hood of confusion for purposes of Article 8(1)(b), or whether the relevant public would form a “link” between the marks, which is a condition for a finding under Article 8(5). It also argued that the existence of a family of marks should be taken into account. According to Ferrero, the balance of these separate factors could result in a finding contrary to the particular article, even where there was low similarity of the marks, and that the General Court had erred in not taking this approach to the assessment.

The Court of Justice disagreed. A finding of simi-larity between the marks is essential in order to begin to consider other relevant factors when carrying out a global assessment of whether there is a likelihood of confusion or a sufficient link between the marks. If, following an appro-priate examination of the marks, they are held to be dissimilar, that is the end of the matter. If they are held to be similar, even to a low degree, then the other factors come into consideration. On the facts, the General Court had correctly examined the overall impression created by the

marks and had found, in a global assessment of the visual, aural and conceptual features, that a certain number of visual and phonetic features of the marks at issue precluded them from being perceived as similar. This precluded consideration of the other factors on which Fer-rero wished to rely. Although the Court of Justice implied that, where appropriate, the existence of a family or series of trademarks should be taken into account as part of the global assess-ment of whether a link is made with the later mark, this is only to be done if there is found to be some similarity between the marks at issue. The existence of a family or series of trade-marks is irrelevant for assessing the existence of similarity.

Consequently, Ferrero’s appeal was dismissed.

The National Assembly of Venezuela has enacted a new Criminal Smuggling Law. The law was published on December 30, 2010, in Official Gazette No. 39584 and Extraordinary Gazette No. 6017.

The law catalogs numerous crimes relating to smuggling. The broadest of these provisions is Article 7, which defines “simple smuggling” as the import, export or transport of merchandise “without complying or intending not to comply with customs requisites, formalities or controls.” Persons convicted of simple smuggling will be imprisoned for six to eight years.

Two provisions of the law specifically benefit intellectual property owners:

• Article 26(4) provides that the penalties will be increased by 50 percent if the smuggled goods violate IP rights. For example, a person convicted of the “simple smuggling” of goods bearing a counterfeit mark may be imprisoned for 9 to 12 years.

• Article 44 provides that seized goods that violate IP rights must be publicly destroyed or incinerated within six months after conviction of the defendant. This term may be extended for an additional six months. The judge who presided over the case and a representative of the Attorney General’s Office must be present when the goods are destroyed. Alternatively, the goods may be donated to not-for-profit associations or insti-tutions after removal of the infringing mark.

Customs officials who appropriate, dispose of, consume or distribute seized goods, or who interfere with their delivery to a competent au-thority, may be imprisoned for five to nine years.

The Attorney General’s Office is responsible for prosecution under the statute, and will act with the assistance of the armed forces (including the National Guard and the Venezuelan Navy), the National Police, state police authorities and other government agencies.

EUROPEAN UNION Surprise for Ferrero at the Court of Justice

VENEZUELA New Law Against Smuggling Protects IP Rights

Contributors: Charters Macdonald-Brown and John Colbourn, Redd Solicitors LLP, London, United Kingdom

Verifier: Felicity HideBoult Wade Tennant, London, United Kingdom

Mr. Macdonald-Brown is a member of the INTA Bulletin Law & Practice—Europe Subcommittee.

Contributor: Nhaikelly SalazarEstudio Antequera Parilli & Rodríguez, Caracas

Verifier: Dianne PhoebusBaker & McKenzie, Caracas

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