INTABulletinThe Voice of the International Trademark Association April 1, 2015 Vol. 70 No. 7

In This Issue

Law&PracticeCuba 17European Union 18Iran 18Italy 19United States 20

FeatureCounterfeits in Transit and 13 Shipments to Non-Commercial Buyers in Europe: Current Proposals for Legislative Reform

AssociationNewsWelcome New Members 2Meet INTA’s New Washington, 4 D.C., Team“It’s Coming”: INTA Members Learn 7 How to Meet the 3D Printing Challenge

An Update from the USPTO: 9 Recent Trademark Assignment Enhancements

Plain Packaging Developments 2.0: 10 The Latest from Europe

Volunteer Spotlight 11 Kaisu KorpuaCommittee Spotlight: 12 Anticounterfeiting Committee

See “Task Force” on page 3

See “Resolution” on page 3

AssociationNews AssociationNewsPresidential Task Force Reports Help Association to Imagine the Future

INTA Board Passes Resolution on Nuisance Repeat FilingsDuring the March meeting of INTA’s Board of

Directors, the three Presidential Task Forces implemented by 2014 President Mei-lan Stark (Fox Entertainment Group, USA) present-ed their final reports and recommendations. Each Task Force: (1) Brands and Innovation; (2) Committee Structure and Participation; and (3) Building Bridges, provided concrete sugges-tions on how to incorporate their findings into the Association’s structure in order to further the goals of INTA’s current and future Strategic Plans.

According to INTA’s 2015 President, J. Scott Evans (Adobe Systems, Inc., USA), “the whole idea for these was to imagine our future. All three Task Forces worked tremendously hard over the past year to shape our Association for the years ahead. Overall, the quality of the reports was excellent and exceeded our highest expectations in terms of depth of analysis and tangible recommendations and strategies. These insights will be very beneficial in guiding the next Strategic Plan and will help us to meet

the challenges we face as brand owners.”

The Committee Structure and Participation Task Force received a great deal of input from Association members. “It was clear that this Task Force was very welcomed by member-ship,” said Mr. Evans. “There will be some changes to committee structure based on that Task Force’s recommendations, but also chang-

During the March meeting of INTA’s Board of Directors in New York City, the Board heard from the Association’s Opposition and Cancel-lation Standards & Procedures Subcommittee of the Enforcement Committee regarding a proposed Resolution titled “Repeat Filings of Trademark Applications After Successful Op-position/Cancellation Against the Same Mark Based on Prior Rights.”

The Resolution will help to curb so-called “Nuisance Repeat Filings,” which occur when applicants file an application for the same mark for the same or virtually the same goods or services that was previously the subject of a successful opposition/cancellation proceed-ing when circumstances remain essentially unchanged.

The Resolution calls for jurisdictions to adopt one or both of the following measures in order to help deter this practice:

1. An official procedure allowing a prior-rights owner to file a Letter of Objection (or Protest) related to the alleged Nuisance Repeat Filing and requiring examiners to consider such letter during examination; and/or

2. Some form of summary procedure in opposition proceedings involving Nuisance Repeat Filings to allow the matter to be brought to an expedited hearing (if needed or applicable) and decision.

These recommendations were based on extensive research conducted by the Subcom-mittee over two terms, which found that “while Nuisance Repeat Filings have been encoun-tered in many jurisdictions, the prevailing laws and procedures do not adequately address the issue. The result is that Nuisance Repeat Filings may escape scrutiny at examination and are dealt with as any other filing at opposition.”

The solutions proposed in the Resolution strike a balance between protecting trademark own-ers against repeat filings possibly made in bad

Immediate Past President Mei-lan Stark and 2015 President J. Scott Evans

April 1, 2015 Vol. 70 No. 72

AssociationNews

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2015 International Trademark Association

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

ChairBarbara Sullivan, Henry Hughes

Vice Chair Liisa Thomas, Winston & Strawn LLP

Co-Chairs, Features SubcommitteeElizabeth Buckingham, Dorsey & Whitney

Peter McAleese, AKRAN Intellectual Property Srl

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

Katherine Dimock, Gowling, Lafleur, Henderson

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

Joseph Yang, Lee and Li, Attorneys at Law

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

Thomas Mudd, Zeiner & Zeiner

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

Carlos Corrales-Azuola, Corrales Core IP

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

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

Catherine Hoffman, Mayback & Hoffman

INTA Bulletin Staff Chief Executive Officer Etienne Sanz de Acedo

Chief Knowledge Officer James F. Bush

Strategist, Communications Content Eileen McDermott

Manager, CommunicationsJean-Claude Darné

EditorJoel L. Bromberg

Graphic DesignerEric Mehlenbeck

INTA Officers & CounselPresident J. Scott Evans, Adobe Systems Incorporated

President Elect Ronald Van Tuijl, JT International S.A.

Vice President Joseph Ferretti, PepsiCo, Inc./ Frito-Lay, Inc.

Vice President Tish Berard, Hearts On Fire Company LLC

Treasurer David Lossignol, Novartis Pharma AG

SecretaryAyala Deutsch, NBA Properties

Counsel David Fleming, Brinks Gilson & Lione

Welcome New MembersGambro Lundia AB, Meyzieu Cedex, FranceGiorgio Armani S.p.A., Milan, Swiss Branch Mendrisio, Mendrisio, SwitzerlandGlaser Weil Fink Jacobs Howard Avchen & Shapiro LLP, Los Angeles, California, USAGlen Raven Mills, Glen Raven, North Carolina, USAGodoy & Asociados, Tegucigalpa, HondurasGolab Intellectual Property, Coral Gables, Florida, USAGordon, Gordon & Co., Castries, Saint LuciaGresham Savage Nolan & Tilden, PC, San Bernardino, California, USAHiren Thakkar & Associates, Ahmedabad, IndiaHodgson Legal, Santa Monica, California, USAHuyi Global Internet Trademark Domain Registry, Hong Kong SAR, ChinaIBM Corporation, San Jose, California, USAIDEX Corporation, Lake Forest, Illinois, USAIndusLaw, Bangalore, IndiaIntellegal, Karachi, PakistanIP Lab Limited, Saint Peter Port, Guernsey, UKIPTRADER, Latham, New York, USAIQAir North America, Inc., La Mirada, California, USA

Jackson Consulting, Philadelphia, Pennsylvania, USAJaguar Land Rover North America, LLC, Mahwah, New Jersey, USAJK LEGAL SERVICES, Encinitas, California, USAJupiter Law Partners, Gurgaon, IndiaKapur Law Chambers, New Delhi, IndiaKatun Corporation, Minneapolis, Minnesota, USAKeller Jolley Preece, North Salt Lake, Utah, USAKelly Pioneer Group, LLC, Washington, DC, USAKIPA, Helsingborg, SwedenKnull P.C., New York, New York, USAKnyazyan & Partners IP Law Firm, Yerevan, ArmeniaKoffsky Schwalb LLC, New York, New York, USAKuit Steinart Levy, Manchester, United KingdomKurz Pfitzer Wolf & Partner Rechtsanwälte mbB, Stuttgart, GermanyKWR Karasek Wietrzyk Rechtsanwalte GmbH, Vienna, AustriaLaw Firm Sonia Tondowski-Elkrief, Geneva, SwitzerlandLaw Office of Afsoon Hamid, Santa Monica, CA, USALaw Office of Heena Kampani, Norcross, Georgia, USALaw Office of Stacy J. Grossman, New York, New York, USA

LeClairRyan, New York, New York, USALee & Hayes, PLLC, Spokane, Washington, USALEGAL MAXIMS CONSULTANTS, Dubai, United Arab EmiratesLegalmax, Almaty, KazakhstanLex Machina, Menlo Park, California, USALEXEA Rechtsanwälte, Cologne, GermanyLext Propriedade Intelectual Ltda., Rio de Janeiro, BrazilLIAD WHATSTEIN & CO., Bnei Brak, IsraelLinklaters Oppenhoff & Radler, Munich, GermanyLippert, Stachow & Partner, Bergisch Gladbach, GermanyLynch Kneblewski Advogados Associados, São Paulo, BrazilMacPherson Leslie & Tyerman LLP, Regina, Saskatchewan, CanadaMalpica, Iturbe, Buj y Paredes, S.C., Mexico City, MexicoMargo Attorneys, Inc., Johannesburg, South AfricaMcCarter & English, LLP, New York, New York, USAMEDINA Y MERINO SC, Mexico City, MexicoMelaleuca, Inc., Idaho Falls, Idaho, USA

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AssociationNewsPresidential Task Force Reports continued from page 1

es to the level of transparency regarding how committees are chosen.” The report includes a plan for finding designated roles for past leaders “so that we don’t lose that institutional knowl-edge once they move from leadership positions.”

Among other changes to be instituted as a result of the reports, the Brands and Innovation Task Force will transition to a full committee by 2016; the Nominating Committee’s timeline will change so that committee selection becomes “more robust and seamless from term to term”; and the Building Bridges Task Force will facilitate outreach to other organizations, both within and outside of the IP community.

With respect to the Building Bridges report, Ms. Stark said that one key takeaway was that outreach must take place well before cooperation is needed. “Trade associations tend to reach out to other groups when there is a pressing issue, but in reality we need those relationships to be nurtured and developed before that, when we’re not in crisis,” she said.

On 3D printing, Ms. Stark said that the Associa-tion’s recent conference on the topic reiterated the importance of reaching out beyond the trade-mark community to tackle complex problems that raise a host of legal issues. “We have to become broader in defining who our allies are. We need to move beyond the IP world,” said Ms. Stark.

Asked what a Brands and Innovation Commit-tee would be tasked with specifically, Ms. Stark said that the committee’s main role will be “to reach out to different constituents, and also to conduct scientific studies with think tanks and academics to provide foundational research.” All three Task Forces will continue their work

through the end of 2015 in order to provide additional input on next steps.

Mr. Evans applauded the Task Forces on their thorough work. “The expertise and diligence of the teams that produced these reports is a great example of what the IP community can achieve when we work together,” said Mr. Evans. INTA thanks all of the Task Forces for their effort, particularly Brands and Innovation Co-Chairs, Heather Steinmeyer (Wellpoint, Inc, USA) and

Curtis Krechevsky (Cantor Colburn, LLP, USA); Committee Structure and Participation Co-Chairs, Janice Bereskin (Bereskin & Parr, LLP, Canada) and Alicia Lloreda (Lloreda Camacho & Co., Co-lombia); and Building Bridges Co-Chairs, Marion Heathcote (Davies Collison Cave, Australia) and Nick Wood (Com Laude, UK).

Upcoming issues of the INTA Bulletin will have more detailed information about each of the Task Forces. ■

Brands and Innovation Task Force1. Prioritize Brands and Innovation in future Strategic Plans.

2. Form a Brands and Innovation Committee under the new Committee Structure.

3. Sponsor, commission, and conduct additional research on the topic of Brands and Innovation to inform the Association’s advocacy efforts, educational programming and communications strategy and initiatives.

Committee Structure and Participation Task Force1. Implement New Committee Structure, Groups.

2. Create new opportunities for volunteers to participate within INTA.

3. Adopt enhanced Nominating Committee Guidelines and revise the Nominating Committee Timeline.

Building Bridges Task Force1. Prioritize Building Bridges in future Strategic Plans.

2. Form a Building-Bridges Committee under the new Committee Structure.

3. Develop a Bridge-Building Plan to identify target organizations, key messages, communications channels and measures of success.

INTA Board ResolutionsBoard Resolutions summarize INTA’s official positions on a variety of issues. INTA’s posi-tions are adopted by the Board of Directors and are based on in-depth analysis by

specialized committees. All INTA Board Res-olutions can be found here on inta.org.

faith and placing undue burden on good faith applicants who undertake a repeat filing of an amended mark or on the basis of an actual, legitimate change in circumstance.

Read the full text of the Resolution here.

INTA would like to thank 2012-2013 Chair of the Opposition and Cancellation Standards & Procedures Subcommittee, Pavel Gorokhov (Baker & Mckenzie–CIS Limited, Russia); 2014-2015 Subcommittee Chair, Vikram Gro-

ver (Groverlaw, India); Enforcement Committee 2012-2013 Chair, Susan Natland (Knobbe, Olson, Martens & Bear, USA); 2012-2013 Com-mittee Vice Chair and 2014-2015 Chair, Leslie

Skinner (Intel Corporation, USA); and 2014-2015 Committee Vice Chair, Martha Savoy for all of their efforts. ■

INTA Board Passes Resolution on Nuisance Repeat Filings continued from page 1

April 1, 2015 Vol. 70 No. 74

AssociationNews

I’ve been completely impressed by INTA members’ enthusiasm in helping the USPTO to increase quality and to help foster a better examination system in the United States.

Meet INTA’s New Washington, D.C., TeamFollowing the appointment of two new senior staff members—Debbie Cohn and Lori Schul-man—to INTA’s Washington, D.C., office, the INTA Bulletin spoke with them to learn more about how they plan to employ their vast expe-rience in furthering the Association’s goals.

Deborah Cohn—INTA Senior Director of Government RelationsHow did you come to work in trademarks? My father was in advertising, so there was always a lot of discussion around the dinner table about slogans and marks. Because I was in the D.C. area, I was lucky enough to find out about a job opening at the USPTO as an examining attorney—so my first job out of law school was as a trademark examining attorney. After about five years, I applied for a management position, and that was really it—

I found the USPTO to be a great place to work and I liked working with trademarks, so I made it a career.

Why did you decide to make the transition to INTA? I retired from the USPTO at the end of Decem-ber and I’d been thinking about my next step. Personally speaking, INTA has always been an exciting organization to work with. The issues

INTA is concerned with are issues I’m really interested in. I think that an association—and particularly a trademark association—is really what interested me most. I wanted to work with brand owners and trademark attorneys to strengthen the knowledge of trademark issues both here and internationally. I did do international work in my previous role, so I’m comfortable with that aspect of the job. To me, it’s very exciting to be advocating for trade-mark and brand owners.

I have also worked closely with INTA through-out the last 10 years, so I know a number of INTA members. I’m really looking forward to working closely with everybody. I’ve been com-pletely impressed by INTA members’ enthusi-asm in helping governments, particularly the USPTO, with a number of projects to increase quality and to help foster a better examination system in the United States. That’s something I’ve experienced firsthand, especially working with the USPTO Subcommittee of the Trade-mark Office Practices Committee. They’ve been nothing short of amazing, and I look forward now to working with other committees as well.

• Predict judge behavior• Anticipate opposing party and counsel strategy• Analyze trademark litigation history

Learn more:lexmachina.com/TRADEMARK

®

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AssociationNewsWhat will your role with INTA focus on? I think one of the big issues coming up is the new Congressional Trademark Caucus established at the end of last year. It’s just beginning now and this is really an opportu-nity for INTA to help advance the education of the U.S. Congress on important trademark issues, and on the importance of trademarks to consumers, as well as to trademark owners. It’s a great opportunity, and I’m very excited to be working on that. One of the challenges is to make the general public aware of the impor-tance of trademark protection and I think a great way to do that is through the Trademark Caucus. The Caucus will serve as the vehicle to educate other members of Congress, which is what we need to get important legislation passed. If they’re not educated, then they don’t know how to help the public and trade-mark owners.

What are the biggest challenges you’ll face? The Trademark Caucus is an exciting chal-lenge. INTA was instrumental in getting that going, and to have a caucus dedicated solely to trademark issues is invaluable. I’m certainly looking forward to expanding its reach.

What else are you looking forward to? Generally, I’m most looking forward to being able to work with the members of INTA. The Association has amazing strength; it’s the strongest trademark association in the world and that comes directly from its members, so it’s a huge privilege for me to work with them on the issues facing us today.

Lori Schulman—INTA Senior Director of Internet PolicyHow did you come to work in trademarks? I started my career as a grant writer for nonprofit organi-zations. I wanted to go to law school because I’d been working on so many federal grants that I felt a legal back-ground would be helpful to me. The first job I got while in law school happened to be with a computer software company, and I started to get involved with the trademark and copyright issues around software. This was way back in the late 1980s, so it was pretty groundbreak-ing stuff at that time.

Interestingly, the first job I was able to get out of law school was at the USPTO as a trade-mark examiner, and Debbie Cohn was on my recruiting and hiring panel. It’s a very small world. I wanted to go into nonprofit law but I had spent the year as a clerk at the software company and realized I really loved doing the IP work, and then when I was looking for jobs out of law school, I landed the job at the USPTO. After the USPTO, I worked for a year managing the portfolio of Texaco on a contract basis until I was hired by March of Dimes as their Associate General Coun-sel—they hired me to do general work and I eventually concentrated my practice on trade-mark, international and Internet matters. So I was able to blend my interests perfectly in that I was doing IP work for a nonprofit. I spent nearly a decade there and then the Internet came calling more strongly and I left for a short while to work for AOL. I realized at AOL that I really wanted to get back into nonprofit and association issues, so I left AOL and got a part-time job as Counsel for the Water Environment Research Foundation and also ran my own practice that was devoted to IP work for nonprofits. The opportunity at the Association for Supervision and Curriculum Development (ASCD) opened up and I was hired as General Counsel there and stayed for three and a half years.

I thought ASCD was going to be my final stop, because what I had always wanted to do was

There have been some successes with the implementation of RPMs for owners, but there’s more to be done.

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

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

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

May 2–May 6 137th Annual Meeting San Diego, California, USA

June 8–June 19 TMA Roundtables: Strategizing…Left and Right of the Dot Various U.S. cities

July 13–July 24 US Roundtables Various U.S. cities

September 28–October 9 TMA Roundtables Various U.S. cities

October 13–October 15 Trademark Administrators and Practitioners Meeting Alicante, Spain

See “Washington” on page 6

April 1, 2015 Vol. 70 No. 76

AssociationNewsto be general counsel for a nonprofit, but the reality was that I was still very much en-trenched in IP issues and very much a part of what was going on in ICANN. I had always been an observer at ICANN, and in recent years I had become a more active participant as Vice Chair of the Not-for-Profit Operational Concerns Constituency. My work with the Internet really started in 2003 when I was recruited as one of the first members of the international advisory board for the .org domain, which is run by the Public Interest Registry. So I’ve been involved on and off for more than a dozen years in Internet governance issues.

Why did you make the transition to INTA? I’ve been involved with INTA for 18 years. I was proud to be a Board member and I was very proud to have been part of the first group of nonprofit members that really helped to form the enhanced presence of nonprofits in INTA’s space. When I became active in INTA in the late 1990s, there was little to no programming geared to nonprofits. When I was on the Board, I helped to add the nonprofit category to INTA’s membership along with Heather Steinmeyer (Wellpoint, Inc., USA) and others. One of the crowning moments of my INTA career, though, was when I was able to host the Leadership Meeting in Miami in 2013 and led a confer-ence room full of IP lawyers in a brief yoga practice.

The trademark bar is just a fabulous group of colleagues to work with. It’s a really commit-ted, knowledgeable group of people. INTA, for its size and membership, has an incredible

impact on IP policy in general and certainly on Internet policy. There’s so much work that still has to be done in the area.

So this job that I have today is really the summation of everything I’ve been doing in my career—it’s nonprofit, IP, Internet and Asso-ciation work all in one. It’s the perfect mix of experience needed to do the work. Dreams change, and the more I became entrenched in Internet policy and as INTA’s role in the In-ternet changed, it seemed like a great time for me to make a part-time passion into a full-time vocation. It’s an incredible opportunity.

What will your role with INTA focus on? One of my first orders of business is to gather a group of concerned members to think about what a strategy will look like in the short and long term for INTA with respect to Internet issues. It’s very important that we have a thoughtful and deliberate strategy. I’ll be reaching out to and listening to members from a variety of industries and sectors.

I’m also going to be INTA’s permanent repre-sentative to ICANN. That will give INTA a more consistent presence and voice. Because of my in-volvement with ICANN matters in the past, I have good relationships with ICANN senior staff and I’m a known quantity to the ICANN community.

What are the biggest challenges you think you’ll face? I think it’s the concern over Rights Protection Mechanisms (RPMs) in the ever-expanding name space. There have been some suc-

cesses with the implementation of RPMs for owners, but there’s more to be done. Anoth-er challenge is security and stability issues with Registrars and Registries honoring their agreements with ICANN. The implications of the IANA transfer from U.S. government control to ICANN and its possible effects on brand owners, if any, is another challenge.

And beyond ICANN, there are other move-ments around Internet governance; we have to decide what role INTA should play in these. The Internet Governance Forum is one example. There are also data privacy issues in Europe that affect brand owners. And hot topics such as 3D printing and digital management of IP also have Internet implications. Part of my job will be to create an understanding that Inter-net issues go far beyond ICANN and generic names. It will be up to me, with the advice and counsel of INTA members and leadership, how to steer the course when the issues are so voluminous. It’s a huge topic—it’s big enough that INTA felt it was time to invest in a se-nior-level staff member to sort it out and help the membership navigate through it.

What are you most looking forward to? I really look forward to working with members more closely. I’m excited that these are the people I get to work with every day. I’m really excited to dive into the policy piece in a much more substantive way and to take that to a new level personally. And I’m looking forward to putting my knowledge of the name space, in-house nonprofit work and INTA all together into something that’s new and exciting. ■

Meet INTA’s New Washington, D.C., Team continued from page 5

Settlement and coexistence agreements are intended to solve problems, not cause them.Find out how to minimize the likelihood of recurring disagreements in the latest installment in the INTA Practitioners’ Checklist series, “Settlement & Coexistence Agreements,” by Arnold Ceballos, Pain & Ceballos LLP, Toronto, Canada, and Virginia Taylor, Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia, USA.

Visit www.inta.org /settlement

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AssociationNews

3D-printed counterfeits will nowhere in the near future reach the scale of traditional, mass-produced counterfeiting.

“It’s Coming”: INTA Members Learn How to Meet the 3D Printing Challenge Attendees of INTA’s conference, “3D Printing/ Additive Manufacturing: Cutting Edge IP and Business Implications,” got an in-depth lesson March 10 and 11 in the evolution of the 3D printing industry, the incredible extent to which the technology has already developed, what the next 25 years has in store and—most important-ly—what it all means for the IP community.

Keynote speakers Sam Cervantes and John C. Knapp of 3D printer company Solidoodle noted that the 3D printing market experienced a 34.9 percent compound annual growth rate in 2014—the highest in 17 years. Solidoodle specializes in making printers sold for under $1,000. “We’ve made great strides to make the technology more accessible,” said Mr. Knapp.

Of course, this means that average consumers already have the ability to replicate trade-marked products in their own homes. As an example, speaker Michael Guslick of Have Blue [dot org] demonstrated how firearms can be 3D-printed, and passed around samples of his own designs (pictured). Mr. Guslick, a hobbyist and hacker, became interested in 3D-printed guns for his own technical curios-ity. He explained that open source file shar-ing communities such as FOSSCAD have traditionally allowed hobbyists like himself to access 3D-printed files with ease, but said that “copyright is becoming a concern” for the com-munity. In recent years, design sharing sites like MakerBot’s Thingiverse have removed some gun-related objects and companies are increasingly turning to software solutions to limit access to design files. But Mr. Guslick said this is not necessarily a good thing and dismissed criticism of 3D-printed guns largely as “media hype.”

“The chances that criminals are going to arm themselves with 3D-printed guns are highly unlikely,” said Mr. Guslick. “You can assemble a better gun with $15 worth of parts from the plumbing aisle of your local hardware store.” Mr. Guslick added that, while “there are cer-tainly people who will use this for evil intents, I’d rather publish my findings and let people learn from them than keep them a secret. I cling to the notion that most people are inher-ently good.”

While the technology necessary for printing replicas of high-quality firearms may be far off, certain industries could be at more immediate

risk. “The plastic toy industry and the replace-ment parts industry will be tested,” said day two closing speaker Melba Kurman of consult-ing firm Triple Helix Innovation, LLC. Because the necessary materials and computer-aided design (CAD) files to make effective replicas in these areas are readily available, industries like these already face new challenges as a result of 3D printing. However, Ms. Kurman assured the audience that “what happened in the world of music and copyright won’t happen in the world of physical atoms” because it simply isn’t as easy to copy physical objects on a mass scale. “3D-printed counterfeits will nowhere in the near future reach the scale of traditional, mass-produced counterfeiting,” said Ms. Kurman.

So far, it seems like the IP world recognizes this and has chosen to respond with caution. Mr. Knapp, a former private practice trade-mark attorney, told the audience, “I was a little worried early on that lawyers would see this as nothing but a threat and meet it with litigation. But we’re not seeing that. Brands are seeing this as an opportunity.” He pointed to the partnership between Hasbro and Shapeways to allow consumers to customize their own My Little Pony characters as one example. “That shows incredible insight,” said Mr. Knapp. “Yes, there is infringing content lurking, but customers are excited and we have brands embracing the technology.”

John Cheek, Senior Corporate Counsel for Cat-erpillar, Inc., said that this is largely the attitude his company is taking—but he emphasized that being proactive and developing practical solutions today will be key to ensuring con-tinued effective protection for IP. “3D printing just accelerates and amplifies the threats, and demands more proactive innovation and IP management,” said Mr. Cheek. “It’s not just a risk—it’s a great opportunity for our company.”

Mr. Cheek said that assembling cross-function-al teams of lawyers to identify and summarize key issues for leaders, beefing up patent

claims strategies and using copyright protec-tion more often will become important. “We are at a crossroads where we can shape the landscape and make it what it should be,” said Mr. Cheek. “I’m not sure it’s different from any other threat we’ve faced; it’s just easier

to make copies generally now.” One thing is certain with respect to 3D printing, however, said Mr. Cheek, “Is this 10 years off? It’s hard to say—but it’s coming.”

One attendee suggested that a legislative solution similar to the U.S. Digital Millennium Copyright Act (DMCA) for trademarks might be employed to help crack down on infringing 3D-printed products online. But INTA’s 2015 President, J. Scott Evans, said that such an approach is unlikely to work for trademarks, as it can be difficult to prove whether something is counterfeit online. Mr. Evans urged INTA members instead to be proactive in educating customers and embracing the possibilities.

Mr. Cheek was also hesitant to endorse leg-islative changes. “If they’re going to employ a legislative solution, we need to make sure it happens right,” he said. “Bad IP policies make bad economies. We can’t just promote what’s good for us.”

It became clear over the course of the two-day conference that patents, design patents and copyrights will play an important role in helping trademark owners find ways to keep their proprietary designs from being copied via 3D printing. “What this is telling us is that you need to have a broader understanding of all types of IP,” said Mr. Evans. “When I was in private practice, we never talked about design patents. Now, trade dress, product configura-tion and design patents are becoming increas-ingly important.”

INTA President J. Scott Evans (center) joined Co-Chairs John Hornick (left) and Marc Trachtenberg (right) in welcoming registrants to the conference.

See “3D Printing” on page 8

A 3D-printed gun.

April 1, 2015 Vol. 70 No. 78

AssociationNews

Yes, there is infringing content lurking, but customers are excited and we have brands embracing the technology.

More than 100 international IP professionals traveled to New York to attend the program. Rodrigo Velasco (Alessandri & Compañia, Chile) said he came because it is essential to stay up to date on cutting-edge issues, and because he is involved with a project related to 3D printing. “It was a great program. It raised key issues that everyone is wondering about. The distinction between ‘soft IP’ and patent law is getting blurry—you need to be knowl-edgeable about all areas of IP.”

Andres Bienzobas (Honeycomb Graphics, Chile), an inventor who has attended several conferences on 3D printing, traveled with Mr. Velasco. “I didn’t expect the discussion to be at such a high technical level,” said Mr. Bienzo-bas. “It was at the same level as some of the 3D printing conferences I’ve attended, with the addition of the IP aspects of the issues.” Mr. Bienzobas said that the conference opened his eyes to some of the dangers lurking down the

line for IP owners. “I learned a lot; it filled in some gaps and made me aware of questions around updating the IP laws to accommodate 3D printing.” Asked whether he thought legis-lative solutions are necessary to meet the IP challenges, he said, “It’s a must.”

But even if legislation is eventually introduced, 3D printing is here now and will require a response for many companies long before any

legislative solution is in place. “It’s going to happen anyway,” said Mr. Cervantes. “Why not harness it in a way that benefits your brand and control the message?”

The conference was chaired by John Hornick (Finnegan, Henderson, Farabow, Garret & Dunner, LLP, USA) and Marc Trachtenberg (Greenberg Traurig, LLP, USA) and sponsored by Berkemeyer Attorneys and Counselors and Finnegan. Other sessions covered topics such as product safety and liability issues asso-ciated with 3D printing technology and the potential tax effects on businesses. Day one also included a keynote address on the global impact of additive manufacturing by John Murray (Concept Laser, Inc., USA).

Registered attendees can view course materi-als from the conference here. ■

Hod Lipson (Cornell University, USA) delivered closing remarks on day two of the conference with Melba Kurman (Triple Helix Innovation, LLC). He explained why 3D printing technology is here to stay. “Every technology that turned out to be more than just hype has followed a pattern—a huge cost factor is suddenly reduced to zero,” he said. Examples include power, computation and communications. This pattern has already emerged in 3D printing, where printers that were once only affordable to large compa-nies for very specific purposes are today accessible to average consumers for a range of uses.

Below are the 10 “disruptions” to traditional manufacturing that Mr. Lipson identified as being introduced by 3D printing:

1. Complexity is free (it does not cost more

to print complex objects).

2. Variety is free (changes can be easily made).

3. No assembly required.

4. Zero lead time required.

5. Zero constraints (geometry doesn’t mat-ter).

6. Zero skill required (means most peo-ple can make things they shouldn’t be making).

7. The technology is portable.

8. Less waste byproduct (with respect to energy used).

9. Infinite shades of materials possible (eventually).

10. Precise repeatability.

Ten Disruptions Introduced by 3D Printing

INTA Members Learn How to Meet the 3D Printing Challenge continued from page 7

Looking for a gateway to country-specific links for trademark offices, laws, domain name resources and more?Find it in the Country Portal in INTA’s Global Trademark Resources.

Visit www.inta.org/CountryPortals

The Three EpisodesMr. Lipson said that 3D printing technol-ogy will undergo three phases before it is fully integrated into everyday life over the next 25 to 30 years.

Episode 1: Printing any shape and form. We’re at the end of this phase, but most people can’t describe shapes to a com-puter. Design tools need to be improved.

Episode II: New materials. We could start printing bone eventually. However, we don’t have the design tools yet.

Episode III: Printing integrated, active systems (batteries, wires, muscle). We can’t yet print a cell phone, but a working telegraph machine has been successfully printed.

9

AssociationNewsMary Boney DenisonCommissioner for Trademarks, USPTO, USA

Dawn SanokAttorney Advisor, Office of the Commissioner for Trademarks, USPTO, USA

An Update from the USPTO: Recent Trademark Assignment Enhancements

Over the past year, the USPTO has made improvements to its trademark assignment system known as the Electronic Trademark Assignment System or ETAS. Many of the improvements implemented were the result of suggestions and comments received from its customers. Improvements focused on more efficient assignment recordation, more easily read chains of title, and more automatic ownership updates. These enhancements will assist those filing and recording assignments at the USPTO. The USPTO welcomes sug-gestions regarding assignments via email at TMFeedback@uspto.gov.

ETAS Enhancements• Conveyance Types: These have been rear-

ranged to list the most common conveyance types used by our customers at the top. In addition, three new conveyance types were added to improve the specificity in the assignment database:

» Merger and Change of Name: This conveyance allows parties to file one submission, with one fee and supporting document, when the transfer of owner-ship is the result of a merger of two or more companies and the new merged company changes its name as part of the transaction.

» Entity Conversion: This conveyance can be used if the company changes its entity type but no transfer of assets occurs.

» Court Order: This conveyance can be used if the transfer results from a court order.

• Order for Multiple Recordations: Previously, if recorded assignments contained the same execution date, the order in which those assignments were displayed through Assign-

ments on the Web, known as AOTW, did not always accurately reflect the order in which the transfers occurred; there was no way for the customer to change the order once the assignments were recorded. Now, a party with multiple assignments having the same execution date for any property can indicate on the ETAS first page how the assignment should appear in AOTW (see figure 1).

By choosing “YES,” one can identify the order in which the filed assignment should appear in the chain of assignments for that property.

• Special Characters: Customers now have the ability to enter special characters in the name fields in ETAS. For example, a custom-er can enter a corporation called XYZ*, Inc.

• Verification: Before submitting paperwork to the Assignment Branch, the user will be required to verify that he/she is aware that the unauthorized use of ETAS is a misrep-resentation to the federal government, is prohibited and is subject to criminal and civil penalties. This change was made in an attempt to prevent filing false transfers against another’s property.

• Country Codes: The country codes in ETAS were reordered and updated to (1) be consistent with other USPTO systems such as TEAS and (2) enable USPTO to add and delete countries as necessary.

New ETAS Resubmission FormThe Assignment Branch now has an electronic way to respond to Notices of Non-Recordation. If the Assignment Branch cannot record a filing, it will send a Notice explaining the reason(s) for non-recordation and provide a unique Document ID and Access Code as highligted below which allows the customer to resubmit paperwork electronically (see figure 2).

Specifically, once the resubmission form is se-lected from the ETAS home page, the user can enter the Document ID and Access Code and the form will prepopulate with much of the infor-mation from the original submission. The user

can make any necessary corrections, upload the underlying document and resubmit the filing to the Assignment Branch for consideration.

Transmission MethodsThe Assignment Branch now delivers Notices of Recordation and Non-Recordation through three methods in succession. It will first attempt to send the notice by email. If email to the primary email address is unsuccessful, the notice will be sent by facsimile if one is provided. If neither method is successful, the notice is sent by U.S. mail.

While a facsimile number is not required on the ETAS form, providing one may be beneficial if email transmission is unsuccessful. Addi-tionally, email confirmations are no longer sent to all email addresses of record for a given property. An email confirmation for a filing is sent only to the email address(es) identified in the ETAS form being filed.

Phone CommunicationsThe Assignment Branch is contacting custom-ers by phone when (a) any field on the form appears to have a typographical error or (b) information on the cover sheet appears in-consistent with the underlying document. This new procedure helps avoid recording papers containing errors which could require the cus-tomer later to file a corrective assignment and pay a new filing fee. The Assignment Branch has already assisted numerous customers in avoiding recordations with errors.

Updating Ownership Information Ownership in the Trademark database does not always update when an assignment is recorded with the Assignment Branch. Certain criteria must be met for ownership informa-tion to automatically update. See Trademark Manual of Examining Procedure (TMEP) §504 for more information.

However, the USPTO is aware that our cus-tomers would like ownership in the Trademark database to update in more circumstances. To this end, we added two new conveyance types to the ones that permit automatic updates. The Trademark database will automatically update ownership information when any of the following documents is recorded with the As-signment Branch and the other requirements in TMEP §504.01 are met:

figure 1 See “USPTO” on page 10

April 1, 2015 Vol. 70 No. 710

AssociationNews

Plain Packaging Developments 2.0: The Latest from EuropeAustralia’s decision in 2011 to introduce plain packaging for tobacco has set in motion a wave of similar legislation being introduced around the world, particularly in Europe.

Ireland has become the first country in Europe to pass legislation requiring cigarettes to be sold in plain packets, i.e., featuring only word marks in a standard font, color and size, and banning any logos, imagery, colors or other types of trademarks. On March 10, 2015, Irish President, Michael Higgins, signed the Public Health (Standardised Packaging of Tobacco) Act 2015. The enactment of the law is expect-ed to prompt cigarette companies to initiate court challenges against the government to block commencement of the legislation. A commencement order, required before the law enters into force, has not yet been issued.

On March 16, 2015, the House of Lords of the United Kingdom approved a bill introducing plain packaging on tobacco products, which was voted on earlier by the House of Commons by a vast majority. The new regulation will enter

into force in May 2016, at the same time as the European Tobacco Products Directive. Al-though the vote only applies to England, other regions of the UK have already confirmed their intention to introduce similar legislation. This could trigger legal challenges over claims that the measure infringes trademark rights and the free movement of goods across the EU.

A third EU Member State, France, has also no-tified the EU Commission of a draft law to intro-duce plain packaging for tobacco products. On March 18, 2015, members of the Social Affairs Committee of the French Parliament voted an amendment introducing plain packaging in the context of a general Health Bill presented by Health Minister, Marisol Touraine. The bill will be considered by all Members of Parliament starting on March 31, 2015. The bill foresees a transition to plain packaging by May 20, 2016.

Countries in Europe do not seem to be de-terred to pass new laws before a ruling on the matter by the World Trade Organization, which is expected in the second half of 2016. A grow-

ing number of countries across the continent, such as Norway and Sweden, are considering similar legislation.

The rapid pace of these developments war-rants close attention from trademark owners.

INTA has consistently weighed in on the issue for several years, stating detailed concerns about the impairment of trademarks to the respective authorities. Recent submissions by INTA to the UK, Ireland and other EU Member States explain that plain packaging represents a considerable threat to trademark owners by creating a dangerous precedent for other sec-tors, violates several treaty obligations as well as EU laws and significantly increases the risk of counterfeit products being made available on the market.

INTA will continue monitoring developments and weighing in on this increasingly worrying issue for trademark owners across a range of industries.

• Assignment of entire interest and goodwill

• Nunc pro tunc assignment

• Merger

• Change of name

• Entity conversion

• Merger and change of name

Additionally, the blackout period when the Trademark database is locked for automatic updates has been shortened and the Office of the Commissioner for Trademarks is manu-ally updating ownership records for assign-ments that do not automatically update when possible. Sometimes, manual updates aren’t possible because a registration certificate or notice of allowance is scheduled to issue or an application is scheduled to publish in the Official Gazette. If the Trademark database is not updated with new owner information, cus-tomers should follow the procedures outlined in TMEP §505 to update the records.

Upcoming ChangesThis year the USPTO is developing a new Trade-mark assignment search system to replace AOTW. Among many new features the system will have is the ability to search (1) using a “wildcard” character (2) using Boolean logic and (3) in multiple fields at the same time. ■

figure 2

An Update from the USPTO continued from page 9

11

VolunteerSpotlight

Kaisu KorpuaDuring Kaisu Korpua’s law school educa-tion in Finland, she had the chance to work in several law firms and explore a range of practice areas, such as pensions, insurance and environmental law. None of the work she did excited her much until her last year of law school, when she had the opportunity to work as a part-time trademark paralegal for Unilever Finland. It was love at first sight. She transitioned to other jobs, but trademark law was always her favorite. Even today, with all her experience, she says she would choose to work as a trademark lawyer all over again if given the choice.

Today, Kaisu works at Roschier Brands, Attor-neys Ltd. Her experience as both in-house and

outside counsel benefits her clients and helps her to find proven solutions that are cost effec-tive and adjust to budget restrictions.

As previous Senior Legal Counsel for Nokia Corporation, Kaisu has always been very close to the NOKIA mark. Very few people know that NOKIA is not only a trademark and a company name, but also a town in Finland. From a trademark perspective, this could be problematic in some countries; however, few people know that the company name and the brand came first. Nokia Corporation is an almost 150-year-old enterprise, and in the 1930s, it was the largest employer in the town of Ylä-Pirkkala. As a consequence, the town decided to change its name to Nokia in 1938.

One of Kaisu’s dreams is to write a book. If she were not practicing trademark law, she would surely be the author of a crime novel with a hint of romance, which she thinks is the most entertaining type of literature.

Kaisu’s first Annual Meeting was in Atlanta, Georgia, USA, in 2004. Since then, she has missed only two Annual Meetings due to ma-ternity leaves. Her experience with the Annual Meetings is that they have been fun and “very, very useful too. Where else you can meet so many local experts in one place?”

She recognizes that all of the INTA Annual Meetings have been great, and all locations have had their own flavor. However, she en-

joyed the 2014 Annual Meeting in Hong Kong, as she had never been to Hong Kong and the city was a very pleasant surprise—clean and ef-ficient, and the people were extremely friendly and helpful. She is looking forward to the 2015 Annual Meeting in San Diego, as she has a (bad) habit of planning the next year’s meeting immediately after the previous one.

In lovely Finland, when weather permits, Kaisu “commutes” into her office on foot or by bike. She is also fond of ashtanga yoga, but admits she has not practiced it very much lately.

Spending time with the boys (her husband and two sons, ages six and nine), is by far her fa-vorite weekend plan. While Kaisu likes to read all kinds of books, her all-time favorite author is the Norwegian crime writer Jo Nesbo, who she says “is just genius!”

When vacation time comes, Kaisu’s family tries to avoid long flights, prefering trips to Europe with friends and/or extended family. One of Kaisu’s favorite vacations was a trip to Legoland (Denmark) last summer. The kids really enjoyed themselves, and from a professional perspective (always a trademark lawyer), she was very impressed to see how well the brand was represented.

Bernard MaloneBaker & McKenzie, Buenos Aires, ArgentinaINTA Bulletin—Association News Subcommittee

Avoid discovery delays by drafting properly worded discovery requests directed at information relevant to the issues in dispute. See “Discovery Requests in Trademark Cases Under U.S. Law” in INTA’s Practitioners’ Checklists series for an outline of topics to help you create an individualized discovery checklist.

Visit www.inta.org/discoveryrequests

Discovery: Understand the rules and overcome the challenges.

April 1, 2015 Vol. 70 No. 712

AssociationNews

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

Visit www.inta.org/Cancellations

Bartosz KrakowiakPOLSERVICE Patent and Trademark Attorneys OfficeWarsaw, Poland

Ayala DeutschNBA Properties, Inc.New York, New York, USA

Mr. Krakowiak is Chair and Ms. Deutsch is Vice-Chair of the Anticounterfeiting Committee.

Committee Spotlight: Anticounterfeiting Committee

The Anticounterfeiting Committee (ACC) em-phasizes the importance of strong anticounter-feiting measures and increased awareness of the harms of counterfeiting. The ACC is a mem-ber-driven network comprised of 240 members from 65 countries who provide INTA with local expertise and act as on-the-ground advocates for the organization’s positions on issues related to anticounterfeiting. In addition, ACC directly engages with national governments to relay member concerns, provide input on policy decisions and demonstrate practical implications of legislative and policy consid-erations. The ACC works with other INTA com-mittees, associations and stakeholders to pool resources and join together to demonstrate the importance of anticounterfeiting. The Unreal Campaign, INTA’s integrated awareness initiative that aims to educate teens about the value of trademarks and the negative effects of counterfeiting, has been developed and im-plemented with the support of ACC members.

In accordance with its core objectives, the ACC is responsible for:

• developing and advocating INTA’s positions and Board resolutions on anticounterfeiting legislation, policy and enforcement at the national, regional and international levels, including assessing proposed regulations and statutes addressing online counterfeit-ing and preparing appropriate comments;

• facilitating industry cooperation with ad-ministrative and law enforcement bodies

to build effective mechanisms against counterfeiting networks (i.e., by leveraging INTA’s Memorandums of Understanding (MOUs) and building partnerships, like INTA’s participation on the Global Congress Steering Group);

• having a presence in international anticoun-terfeiting conferences;

• raising the awareness of consumers and government officials about the serious threats posed by counterfeiting to the health and safety of individuals, economies and national security, including by supporting INTA’s Unreal Campaign; and

• communicating on anticounterfeiting issues and achievements via INTA communication channels, such as the INTA Bulletin and INTA Blog.

ACC Chair Bartosz Krakowiak (POLSERVICE Patent and Trademark Attorneys Office, Po-land) and ACC Vice Chair Ayala Deutsch (NBA Properties, Inc., USA) lead eight regional sub-committees. The Canada Subcommittee, head-ed by David Lipkus (Kestenberg Siegal Lipkus LLP, Canada), has been instrumental in INTA’s advocacy efforts to implement Canadian trade-mark law amendments under the Combating Counterfeit Products Act (Bill C-8). Chaired by George Chan (Simmons & Simmons, China), the China Subcommittee, in addition to its other tasks, has been developing a relation-ship with the Chinese government’s Office of the National Leading Group for Combating IPR Infringement and Counterfeits, to tackle online anticounterfeiting issues. The East Asia & Pacific Subcommittee has been active in many enforcement initiatives in Indonesia, the Philippines, Vietnam and Singapore under the leadership of Kowit Somwaiya (LawPlus Ltd., Thailand). In Eastern Europe & Central Asia, the subcommittee, led by Milan Milojevic (MSA IP, Serbia), held online counterfeiting roundta-bles in Macedonia and Serbia and has been focused on anticounterfeiting issues in the Customs Union of Belarus, Kazakhstan and

Russia. Wiebke Gorny (Anwaltsbuero GORNY, Germany) heads the EU Subcommittee, which has been heavily involved in advocacy efforts for the counterfeit goods in transit issues in the EU Trade Marks Package, implementation of the new EU customs regulation and the EU Observatory activities. The Latin America & Caribbean Subcommittee has engaged officials in anticounterfeiting events in Brazil, Colombia, Ecuador, Mexico and Panama with the support of Subcommittee Chair Gerardo Muñoz de Cote Amescua (Televisa, S.A. de C.V., Mexico). Vanessa Ferguson (D.M. Kisch Inc., South Africa) and members of the Middle East, Africa & South Asia Subcommittee held events in Dubai, India, Nigeria and South Africa. Heather McDonald (Baker & Hostetler LLP, United States) and the U.S. Subcommittee have engaged enforcement officials, advocat-ed INTA’s model state anticounterfeiting law and led many public awareness initiatives.

In addition to these eight subcommittees, two ACC cross-subcommittee task forces look at anticounterfeiting policy (under the direction of Chair Bartosz Krakowiak) and online counter-feiting (under Vice Chair Ayala Deutsch) on a global scale. INTA’s Advisor, External Relations, Anticounterfeiting, Maysa Razavi, assists the ACC in its work.

With the counterfeiting landscape ever-chang-ing, the ACC is always trying to stay ahead of new challenges. With the proliferation of the sale of goods on the Internet, more anticoun-terfeiting issues quickly arise, including the use of mobile commerce, the development of social media and the growth of the dark web. In addition, new technology, like 3D printers, has the potential to make counterfeiting more accessible to more people. As a backdrop to these challenges, anti-IP sentiment makes it difficult to promote strong anticounterfeiting policies. However, the ACC’s talented team re-mains dedicated to leading INTA’s fight against counterfeiting.

13

Features

Mark your calendar for INTA’s first ever Trademark Administrators and Practitioners Meeting (TMAP) in Alicante, Spain, home to the Office for Harmonization in the Internal Market (OHIM). OHIM is the European Union agency responsible for managing Community trademarks and designs.

TMAP is designed for trademark professionals responsible for or involved in European trademark portfolio management and lawyers interested in European trademark practice. This meeting will feature:

• various educational sessions including the latest developments on European trademark law, global clearance, filing, litigation and enforcement strategies in Europe.

• opportunities to meet with OHIM officials and examiners.

• networking lunches and receptions to enhance relationship building with colleagues from Europe and beyond.

Visit www.inta.org/calendar

A L I C A N T E . S P A I N o c t o b e r 1 3 t h — 1 5 t h

Trademark Administrators & Practitioners Meeting

Counterfeits in Transit and Shipments to Non-Commercial Buyers in Europe: Current Proposals for Legislative Reform

Customs authorities in the European Union (EU) detained almost 36 million items suspected of vio-lating intellectual property rights in 2013, according to the European Commission’s annual report on EU customs enforcement of intellectual property rights, published in July 2014. The value of the intercepted goods represents more than EUR 760 million. These figures indicate the important role that customs authorities play in combating piracy and counterfeiting.

Two questions regarding detainment of goods by European customs authorities that have been con-

sidered by courts recently also have been the sub-ject of proposals of EU legislators for new provisions in European trademark laws. The first question is: Can counterfeit goods that are in transit, intended for sale in countries outside the EU, be considered as infringing goods under EU laws and thus be detained by EU customs authorities? The second question is: Can counterfeits imported from outside the EU by consumers for personal use be detained and seized by customs, even if prior to the sale the goods have not been offered for sale or advertised by the seller located outside the EU to consumers within that EU Member State?

1. Detainment and Seizure of Counterfeits in Transit Currently, trademark owners face difficulties in convincing EU customs authorities to detain and seize counterfeit goods in transit. This is due to EU

case law, and it is unclear if European legislators will improve the position of trademark owners.

a. Court of Justice of the European Union: Philips and NokiaAccording to the judgment of December 1, 2011, in the joined Cases C-446/09 Phillips and C-495/09 Nokia, of the Court of Jus-tice of the European Union (CJEU), the entry, presence and movement of counterfeit goods destined for a non-EU country through the EU customs territory does not, under the existing European law, infringe intellectual property rights as conferred by substantive law of the EU and its Member States. Such goods can only be classified as counterfeit once there is

Christian LemkeHeissner & Struck, Hamburg, GermanyINTA Bulletin—Features Subcommittee

See “Counterfeits” on page 14

April 1, 2015 Vol. 70 No. 714

Features

proof that they are the subject of a commercial act directed at EU consumers, such as sale, offer for sale or advertising. In this regard, the CJEU held that the EU customs regulation applicable at that time (Council Regulation (EC) No 1383/2003 of 22 July 2003) must be interpreted as meaning that goods coming from a non-Member State which are imitations of goods protected in the EU by a trademark right (or other intellectual property right) cannot be classified as pirated or counterfeit goods merely because they are transiting through the customs territory of the EU.

The CJEU further held that those goods could only be classified as counterfeits where it is proven that they are intended to be made available for sale in the EU. As the CJEU stated, such proof is provided, inter alia, where it turns out that the goods have been sold to a customer in the EU or offered for sale or advertised to consumers in the EU, or where it is apparent from documents or correspondence concerning the goods that their diversion to EU consumers is envisaged.

Thus, EU customs can inspect counterfeit goods in transit but can’t detain them, because they are not infringing goods when they are merely in transit. Because the situation represents a severe burden of proof for trademark owners, the Philips/Nokia judgment has been subject to substantial criticism. INTA’s comments on the issue are available here.

b. EU Trademarks Package: Solutions Proposed by the European CommissionOn March 27, 2013, the European Commission issued proposals both for a regulation amending the Community Trade Mark Regulation (CTMR) and a directive amending the Trade Marks Directive (TMD). The CTMR and the TMD are together known as the EU Trademarks Package.

In its proposal for a regulation amending the CTMR, the European Commission emphasized that the implications of the Philips/Nokia judgment have met with strong criticism from stakeholders because they place an inappropriately high burden of proof on rights holders and they hinder the fight against counterfeiting. According to the European Commission, it is evident that there is an urgent need to have in place a European legal framework enabling a more effective fight against the coun-terfeiting of goods, which is a fast-growing activity. The European Commission therefore proposed to fill the existing gap by entitling rights holders to prevent third parties from bringing goods, from countries outside the EU, bearing without autho-

rization a trademark which is essentially identical to a trademark registered for those goods, into the customs territory of the EU, regardless of whether the goods are released for free circulation. In this respect, the European Commission proposed to amend CTMR Article 9 by inserting a new paragraph 5. This amendment would entitle the proprietor of a Community Trade Mark (CTM) to prevent third par-ties from bringing goods into the customs territory of the EU, in the context of commercial activity and without releasing the goods for free circulation in the EU, where the goods, including packaging, come from countries outside the EU and bear without authorization a trademark which is identical to the EU trademark registered in respect of such goods, or a trademark which cannot be distinguished in its essential aspects from that trademark.

In addition, the European Commission proposed a corresponding amendment to the TMD by inserting a new Article 10 paragraph 5.

Different Approach by the European ParliamentOn February 25, 2014, the European Parliament (EP) adopted its position on the EU Trademarks Package. With respect to the issue of goods in transit, the EP followed a slightly different approach. Even according to the position adopted by the EP, owners of CTMs and national trademarks should be entitled to prevent third parties from bringing goods into the customs territory of the EU without being released for free circulation there, where such goods come from non-EU countries and bear without authorization an essentially identical trade-mark registered in respect of such goods. However, according to the EP, this should be not only without prejudice to World Trade Organization (WTO) rules (in particular Article V of the General Agreement on Tariffs and Trade on freedom of transit) but, moreover, “without prejudice to the smooth transit of generic medicines, in compliance with the international obligations of the European Union, in particular as reflected in the ‘Declaration on the TRIPS agreement and public health’ adopted by the Doha WTO Ministerial Conference on November 14, 2001.” According to the EP’s amendments to the EU Trademarks Package, Member States should take appropriate measures with a view to ensuring the smooth transit of generic medicines. There-fore, a proprietor of a trademark should not have the right to prevent any third party from bringing goods into the customs territory of the Member State based upon similarities, perceived or actual, between the international non-proprietary name (INN) for the active ingredient in the medicines and a registered trademark.

The EP’s position also stressed that proprietors of national and CTMs have the explicit right to take relevant legal actions, including the right to request national customs authorities to take action in respect of goods, which allegedly infringe the pro-prietor’s rights, such as detention and destruction in accordance with the current customs regula-tion (Regulation (EU) No 608/2013). Customs authorities shall carry out the relevant procedures laid down in the customs regulation at the request of a rights holder and on the basis of risk analysis criteria. As noted in the EP’s amendments to the EU Trademarks Package, this also provides that, pursuant to Customs Regulation Article 28, the rights holder is to be liable in damages towards the holder of the goods, where the goods in question are subsequently found not to infringe an intellectu-al property right.

The CouncilAs co-legislator for the EU Trademarks Package, the Council (representing the interests of the Member States of the EU) still needs to adopt its own posi-tion. On May 7, 2014, the Council’s Presidency is-sued a report on the progress made in the ongoing reform of the CTM system. According to this report, the discussions of the Council’s Working Party on Intellectual Property (Trade Marks) had led to a wide convergence of views among delegations on the majority of issues in the EU Trademarks Package, such as, the issue of “preventing the importation of infringing goods even where it is only the consignor of the goods that acts for commercial purposes.”

However, according to the report, a few issues remained outstanding and would most likely have to be addressed at a higher political level. These is-sues are the funding by the Office for Harmonization for the Internal Market (OHIM) of future cooperation between OHIM and national trademarks offices, the use of OHIM’s budgetary surpluses and, moreover, the extension of rights with regard to goods brought into the EU customs territory (the “transit” issue described above).

The Council’s Presidency aimed to intensify the efforts to reach an agreement within the Council on the whole package by the end of the first semester of 2014 and the Council instructed its preparatory bodies to take the work forward.

According to a Council press release dated July 23, 2014, on that day the Committee of Permanent Representatives of the governments of the 28 EU Member States (which is responsible for prepar-ing the work of the Council) agreed on a Council common position for the modernization of the EU

Counterfeits in Transit and Shipments to Non-Commercial Buyers in Europe: Current Proposals for Legislative Reform continued from page 13

15

Featurestrademark system and mandated the Italian Presi-dency of the Council to enter into negotiations with the EP with a view to concluding a swift agreement. This has not happened so far. Instead, the EU Trade-marks Package is still under negotiation.

2. Detainment and Seizure of Counterfeits Ordered by Consumers from Commercial Suppliers Outside the EUAs regards the import of counterfeits ordered by consumers from suppliers outside the EU, recent case law has improved the legal position of trademark owners. It can be expected that the EU Trademarks Package will pass legislation enacting this case law.

a. Court of Justice of the European Union: Blomqvist v. Rolex SAIn the case of Blomqvist v. Rolex SA, decided by the CJEU on February 6, 2014 (Case 98/13), a consumer residing in Denmark ordered a watch de-scribed as a “Rolex” from an Asian online shop. The order was placed and paid for through the English website of the seller. The seller sent the watch from Asia by post. The parcel was inspected by Danish customs authorities, which suspended the customs clearance of the watch, suspecting that it was a counterfeit version of the original Rolex watch. Rolex SA then requested the continued suspension of customs clearance, having established that the watch was in fact counterfeit, and asked the buyer to consent to the destruction of the watch by the customs authorities. The buyer refused to consent to the destruction of the watch, contending that he had purchased it legally. Rolex SA then brought an action before the responsible Danish Maritime and Commercial Court, seeking orders that the release of the watch be suspended and the watch be

destroyed without compensation. The court granted Rolex SA’s claim. The buyer brought an appeal before the responsible Supreme Court. Since the buyer bought the watch for personal use and did therefore not breach Danish law on copyright and trademarks, the question arises, for the referring court, whether the seller infringed copyright or trademark law in Denmark. Consequently, the Supreme Court raised the question whether, in the present case, there is any distribution to the public, within the meaning of the EU copyright directive, and any use in the course of trade, within the meaning of the EU trademark directive and the EU trademark regulation.

The CJEU then ruled that “Council Regulation (EC) No 1383/2003 of 22 July 2003 concern-ing customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights” (the “Customs Regulation”) must be interpreted:

… as meaning that the holder of an intel-lectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a non-member country enjoys the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State, merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State.

In giving the reasons for its judgment, the CJEU emphasized that EU law requires that the sale be

considered, in the territory of a Member State, to be a form of use in the course of trade within the meaning of the applicable EU TMD and the CTMR. Such distribution to the public must be considered proven where a contract of sale and dispatch has been concluded.

The CJEU further said that the mere fact that a website is accessible from the territory covered by the trademark registration is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory (as it previously held in its decision L’Oréal and Others of July 12, 2011, Case C 324/09, paragraph 64). However, the CJEU apparently tried to shed a differ-ent light on its previous Philips/Nokia decision by stating that it has, however, already held that trade-mark rights thus protected may be infringed where, “even before their arrival in the EU territory covered by that protection, goods coming from non-Member States are the subject of a commercial act directed at consumers in that territory,” such as a sale, offer for sale or advertising. Accordingly, such goods, which are imitations of goods protected in the EU by a trademark right, can be classified as counterfeit goods where it is proven that they are intended to be put on sale in the EU. Such proof is provided, inter alia, where it turns out that the goods have been sold to a customer in the EU or offered for sale or advertised to consumers in the EU.

Despite the fact that the judgment concerned the interpretation of the then-current customs regula-tion, it made clear that the sale of counterfeit goods by sellers outside the EU to customers located within the EU constitutes an infringement by the sellers of

See “Counterfeits” on page 16

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

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

Before You Send That Cease and Desist Letter

Visit www.inta.org/ceaseanddesist

April 1, 2015 Vol. 70 No. 716

FeaturesCounterfeits in Transit and Shipments to Non-Commercial Buyers in Europe: Current Proposals for Legislative Reform continued from page 15

the applicable intellectual property rights within the EU. Thus, consumers cannot successfully oppose the detainment and seizure of such goods by argu-ing that they bought the goods for personal use only and thus do not infringe any trademark rights.

b. EU Trademarks Package: Solutions Proposed by the European CommissionIn its “Trademarks Package” proposal for a regula-tion amending the CTMR and a directive amending the TMD, the European Commission emphasized that “it should be made clear that the importing of goods into the EU is also prohibited where it is only the consignor who acts for commercial purposes,” which is in line with the CJEU’s Blomqvist decision. According to the European Commission, this is to ensure that a trademark owner has the right to pre-vent businesses (whether located in the EU or not) from importing from outside the EU goods that have been sold, offered, advertised or shipped to private consumers, and to discourage the ordering and sale of counterfeit goods over the Internet. Accordingly, the European Commission proposed to amend both the CTMR and the TMD by new paragraphs according to which the owner of a CTM and/or a registered national trademark shall also be entitled to prevent the importing of infringing goods “where only the consignor of the goods acts for commercial purposes.”

The European Parliament The EP’s position as adopted in its first reading of the EU Trademarks Package is almost in line with the European Commission’s proposals. In order to more effectively prevent the entry of counterfeit

goods, particularly in the context of sales over the Internet, where the goods are delivered in small consignments as defined by Regulation (EU) No 608/2013, the proprietor of a validly registered trademark should be entitled, according to the EP’s amendments, to prohibit the importing of such goods into the EU, where it is only the consignor of the counterfeit goods who “acts in the course of trade.” Moreover, according to the EP, in cases where such measures are taken, EU Member States shall ensure that the individuals or entities that had ordered the goods are informed of the rea-son for the measures as well as of their legal rights vis-à-vis the consignor.

The CouncilAs described above, the Council’s position is still unclear. However, there can be no doubt that even the Council will be in line with the CJEU’s Blomqvist decision, which currently has to be considered as settled case law.

In summary, EU customs authorities presently are able to inspect counterfeit goods in transit. Howev-er, the authorities cannot detain goods if they are merely in transit because goods merely in transit do not infringe trademark rights in the EU. Despite the fact that this situation is not acceptable for trade-mark owners, it is unclear if the EU Trademarks Package will contain provisions which state that the mere transit of goods can constitute an infringe-ment of trademark rights.

Goods ordered by and shipped to consumers residing in an EU Member State through an online

sales website from outside the EU can be seized by EU customs authorities, even if prior to the sale, the goods have not been offered for sale or the subject of advertisements targeting consumers within the Euro-pean Member State. This is settled case law and the intended EU Trademarks Package will most probably pass this principle from case law into legislation.

Next StepsOn December 16, 2014, the Italian Presidency of the Council and the EP negotiating team issued a joint statement according to which the European co-leg-islators decided jointly to postpone the final trilogue scheduled originally for that date because the parties have considered that some additional time is needed in order to arrive at a final conclusion on all essential elements of the EU Trademarks Package. However, it was stated that an agreement has already been reached on many issues, including notably the treatment of goods in transit and detainment and seizure of infringing goods ordered by consumers from commercial suppliers outside the EU.

The final trilogue is currently scheduled for April 21, 2015, and the current Latvian EU Presidency has promised to be an “honest broker” for this file. It is being suggested that compromise proposals on the unresolved political and substantive issues could be expected before the summer with a final vote by the EP shortly after that. ■

Visit www.inta.org /practitionerschecklists

When You Need to KnowWhether undertaken as an assessment of trademark rights or an evaluation of the adequacy of internal management systems, a trademark audit has to be thorough to offer an accurate picture of a company’s brand-name activity. For tips on navigating the myriad details associated with the exercise, see “Trademark Audits” in INTA’s exclusive Practitioners’ Checklists series.

17

Law&PracticeCUBA

With Increased Trade on the Horizon, Trademark Holders Should Consider Proactive Protection On December 17, 2014, U.S. President Barack Obama announced plans to ease the country’s 54-year-long Cuban embargo. The U.S. gov-ernment must revise a complex web of laws to fully end the embargo. These laws also affect global brands because they include restric-tions against non-American businesses and foreign-based subsidiaries of U.S. businesses. Nonetheless, American, Cuban and other international trademark owners can take steps to protect their marks today.

Potential U.S.-Cuban trade and tourism pro-vides a great business opportunity for U.S. and global mark holders seeking to take advantage of a new Caribbean market. Cuba possesses the largest economy in the Caribbean region and imports $13.6 billion in goods, second in the Caribbean only to the Dominican Republic. The United States currently provides only 4.3 percent of Cuba’s imports. Spain serves as the largest European exporter to Cuba, providing 8.9 percent of goods.

Completely ending the embargo requires leg-islative action. The Obama administration has begun and will continue to review and revise

various governmental regulations to increase travel and trade with Cuba in the near future. In the meantime, the many restrictions on travel and trade remain.

Treasury regulations issued during the Clinton administration already allow for the protection of Cuban marks in the United States and U.S. marks in Cuba. Moreover, the regulations allow global brands both to do business with the United States and protect their marks in Cuba without fearing penalties. Specifically, the regulations provide a general license to register and renew Cuban marks, receive those marks and prosecute and defend opposition and infringement proceedings. The regulations also authorize the payment of government and professional fees for these acts to Cuba and Cuban nationals.

As the United States and Cuba move toward normalized relations and trade, non-Cuban mark owners may consider renewing or proactively protecting their marks in Cuba. Importantly, U.S. mark owners retain the marks they registered in Cuba before 1959, subject to payment of renewal fees. U.S. and global

mark owners seeking protection of their marks in Cuba should work with an attorney who can assist them in complying with the U.S. Treasury regulations so as not to run afoul of the laws.

The Cuban trademark registration process resembles that of other Caribbean jurisdic-tions and information regarding the process can be found in the INTA Country Guides. The Cuban Office of Intellectual Property exam-ines applications and publishes marks for opposition purposes; marks are then regis-tered absent opposition or objection. Cuban law provides a 10-year registration term and 10-year renewal terms.

Contributor: Katherine Van Deusen HelyCaribbean IP–Katherine Van Deusen Hely, P.L.L.C., West Palm Beach, Florida, USAINTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee

Verifier: Paul KilmerHolland & Knight LLP, Washington, D.C., USAEmerging Issues—Limits on Trademark Rights Subcommittee

Visit www.inta.org/tma

INTA’s New and Updated

Trademark Administration is an expanded and enhanced online version of INTA’s classic print training tool on trademark practice and procedures. In its new online format, checklists, practice tips, sample forms and many more valuable resources are available to each employee at your INTA membership location at no additional cost!

Topics already available for use include:

• Trademark Administration–The Who, How, What and Why by Mary Donovan• Trademarks in Business Transactions by Lanning Bryer• Searching and Clearance by Glenn Gundersen• U.S. Trademark Registration by David Anderson

Visit www.inta.org/tma to learn more about Trademark Administration and how it can help you in your daily work today!

Trademark Administration

April 1, 2015 Vol. 70 No. 718

Law&PracticeEUROPEAN UNION General Court Rules on Evidence of Use Filed Late

IRAN New Regulation Regarding the Submission of Supporting Documents

On December 11, 2014, the European General Court found that evidence of genuine use filed after a respective deadline may only be disre-garded under specific circumstances (General Court, December 11, 2014, case T-235/12).

The applicant, Underberg AG, filed an applica-tion for registration of a Community Trademark for a three-dimensional sign with the descrip-tion “a greeny-brown blade of grass in a bottle, the length of the blade of grass is approximate-ly three-quarters the height of the bottle” for “Spirits and liquors” in Class 33. An opposition was filed against the mark, based on an earlier three-dimensional mark registered in France with the description “a bottle as represented above inside which a blade of grass is placed almost diagonally in the body of the bottle.”

Before the Opposition Division, the applicant filed evidence of use within the applica-ble deadline. However, the opposition was rejected as the Opposition Division found that the material submitted was not sufficient to demonstrate genuine use. In particular, a label on the bottle containing the term “żubrówka” and the representation of a bison had changed the distinctive character of that mark so that the mark could not be considered as used in its registered form. The applicant appealed this decision and, in its statement of grounds, presented some further material as evidence of use that had not been presented to the Op-

position Division. In this new material the bottle could be seen from different perspectives, including a view which did not include the label.

Nevertheless, the Board of Appeal rejected the appeal and again stressed the fact that the dis-tinctive character of the opposition mark had been changed by the use of a label containing the term “żubrówka” and the representation of a bison. Therefore, as genuine use had not been demonstrated, the opposition was dismissed.

Before the General Court, the applicant claimed that the Board of Appeal had failed to examine the material presented to it and had not provided reasons for not doing so. There-fore, the Board of Trade had not complied with relevant provisions of the Community Trade-mark Regulation.

The General Court confirmed that the Board of Appeal took into account only the evidence produced by the applicant before the Oppo-sition Division. Thus, the Appeal Division did not exercise its discretion to take into account evidence of use produced before it for the first time. While that material was clearly filed late according to the respective provisions of the Community Trademark Regulation, those provi-sions did in no way prohibit the Appeal Division from taking account of evidence submitted out of time. Instead, the Board of Appeal must

make use of the discretion conferred on it by the Community Trademark Regulation. It must consider first, whether the material which has been produced late is likely to be relevant to the outcome of the opposition and, second, whether the stage of the proceedings at which that late submission takes place and the cir-cumstances surrounding it weigh against such matters being taken into account. Where the Board of Appeal exercises its discretion to allow or not allow the evidence, it must give reasons for its decision on the matter. As the Board of Appeal had failed to do so, its decision was overturned.

It is important to note that this decision refers only to evidence filed before the Board of Appeal in addition to material filed before the Opposition Division within the applicable dead-line. Thus, the outcome of the case would have been different if no material as evidence of use had been filed before the Opposition Division.

Contributor: Susanna HeurungKotitschke & Heurung Partnerschaft mbB, Munich, Germany

Verifier: Susie P. ArnesenSandel, Løje & Partnere, Copenhagen, Denmark

Contributor: Firas Qumsieh NJQ & Associates, Dubai, United Arab EmiratesINTA Bulletin Law & Practice—Middle East & Africa Subcommittee

Verifier: Naseer MassounNiazi & Massoun Consultancy and IP Services, Kabul, Afghanistan

This searchable database offers practical information on member countries’ practices and procedure in obtaining, maintaining and enforcing registrations through the Madrid System.

Visit www.inta.org/MadridProtocol

INTA’s Practitioner’s Guide to the Madrid Agreement and Madrid Protocol

On January 1, 2015, the Irani Trademark Office (ITMO) issued new regulations regarding pow-ers of attorney and the commercial register as follows:

• A bilingual legalized power of attorney com-ing from abroad should be submitted along with a certified translation into Persian; and

• a company registration certificate is now needed; an excerpt from the commercial register or certificate of incorporation is no longer accepted.

A simple Persian translation of a commercial register will be accepted.

19

Law&PracticeITALY

Court of Turin Orders Injunction Barring Use of Comparison Tables Reproducing Chanel’s TrademarksBy an order dated January 16, 2015, the Court of Turin has granted an injunction against the defendants’ use of the well-known Chanel trademarks in the course of trade in Italy. The contested use was made by two Italian compa-nies and an individual who inserted Chanel’s most popular perfumes’ trademarks (CHANEL, N° 5, 5, COCO, COCO MADEMOISELLE, ALLURE SENSUELLE, ALLURE SPORT CHANELLE and EGOISTE) into comparison tables with the intended purpose of informing consumers about the similarity of their fragrances with the corresponding perfumes/scents sold by the well-known Parisian company.

As every consumer should be made aware, the comparison tables are used by producers of lesser-known perfumes in order to create a link between their perfumes and other, well-known perfumes created and sold by leading fashion companies.

According to the Court, the use of another’s trademarks in one’s own commercial adver-tisements constitutes trademark infringement. In particular, the Court maintained that the jus

prohibendi of the trademark owner concerns all possible uses in the course of trade, and Article 20 para. 2 of the Italian Industrial Property Code allows the trademark owner to prevent third parties from affixing a sign on their products or packages; offering the goods, putting them on the market or stocking them for those purposes, or offering and supplying services under that sign; importing or exporting the goods thereunder; and using the sign on business letterhead and in advertisements.

In the present case, according to the judge, the comparison tables involve the use of another’s trademark in advertising and does not fall with-in any exception provided by the law. Indeed, such use could not be considered as either merely descriptive or necessary to indicate the intended use of the goods or services, in particular as accessories or replacement parts in accordance with Article 21, para 1, of the Italian Industrial Property Code. In the present case, the prerequisite of “necessity” is lacking because it is possible to provide the consumers with the desired information without making any reference to another’s trademark. The

information can be provided by describing only the fragrance and the elements used to make the perfume.

Finally, according to the judge, no legitimate comparative advertisement can be claimed in the present case. The advertising tech-nique of the comparison tables is an indirect, surreptitious and allusive method to propose a defendant’s own product as an imitation of the famous one identified by the trademark.

This decision is in line with the previous judgment by the Court of Justice of the European Union (CJEU) No. 487/2009 L’Oréal v. Bellure NV.

Contributor: Carmela Rotundo Zocco Metroconsult, TurinINTA Bulletin Law & Practice—Europe & Central Asia Subcommittee

Verifier: Luigi GogliaLGV Avvocati, MilanINTA Bulletin Law & Practice—Europe & Central Asia Subcommittee

Visit www.inta.org /tminvestigations

Investigations: Understand the Ethical and Legal RestrictionsA new addition to INTA’s Practitioners’ Checklists series, “Trademark Investigations” walks you through the process of your own trademark investigation, covering topics such as focusing the investigation, the subject of the investigation, identifying possible sources of information, selecting the investigator, and ethical and legal restrictions.

April 1, 2015 Vol. 70 No. 720

Law&PracticeUNITED STATES

Overcoming Refusal of Registration Earns Redneck Racegirl and Design Mark Applicant the Checkered Flag

UNITED STATES ROYAL KATE and PRINCESS KATE Applications

Not Given Royal Treatment

In In re Covalinski, the Trademark Trial and Appeal Board (TTAB) reversed the examiner’s refusal to register Applicant’s mark RED-NECK RACEGIRL and design, depicted below.

The TTAB held that the differences between Ap-plicant’s mark and the cited mark, RACEGIRL, in standard characters, are so great such that confusion would not be likely, even though both marks covered clothing in International Class 25. In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) (precedential).

Applicant applied to register REDNECK RACE-GIRL and design for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.” The examiner refused

registration under Section 2(d) of the Lanham Act on the ground that Applicant’s mark is likely to cause confusion with the standard character mark RACEGIRL, which also covered apparel and accessories in International Class 25.

The parties and the TTAB considered the follow-ing factors to be probative to the likelihood of confusion inquiry: the similarity of the goods, the similarity of the trade channels and the similarity of the marks. Applicant also argued that “racegirl” is a generic term, but that argu-ment was disregarded because challenging the presumption of validity of a cited registration is improper in an ex parte proceeding.

Although the TTAB determined that the factors of the similarity of the goods and the channels of trade favor a finding of likelihood of confu-sion, “the crucial differences” between Appli-cant’s mark and the cited registration weighed heavily against a conclusion that confusion is likely. In particular, the design features of Ap-plicant’s mark, i.e., the large double-letter RR configuration, and not the wording REDNECK

RACEGIRL, dominated Applicant’s mark and made it difficult for consumers to notice the letters “a-c-e” of the “RACEGIRL.” The visual impression of Applicant’s mark is also likely to be more important because consumers would be likely to encounter it in a retail setting on hang tags or neck labels.

This decision serves as a reminder to practi-tioners that there is no mechanical rule that determines whether confusion is likely. Also, it is not always the case that the words in a composite word and design mark should be considered the dominant portion of the mark.

In two separate precedential decisions, the Trademark Trial and Appeal Board (TTAB) rejected Applicant’s applications to register ROYAL KATE and PRINCESS KATE for a vari-ety of fashion-related items. The TTAB found that the registration of the marks was barred by Sections 2(a) and 2(c) of the Lanham Act, on the grounds that the marks consist of a name identifying a particular living individual whose written consent to register the marks was not of record. In re Nieves & Nieves LLC, 113 USPQ2d 1629 and 113 USPQ2d 1639 (TTAB 2015) (precedential).

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), prohibits registration of marks that consist of or comprise matter which may “falsely suggest a connection with persons, living or dead.” The TTAB analyzed wheth-er the evidence established the following four-part test: (1) whether ROYAL KATE or PRINCESS KATE is the same as or a close approximation of Kate Middleton’s previ-ously used name or identity; (2) whether ROYAL KATE or PRINCESS KATE would be recognized as such by purchasers, in that the marks point uniquely and unmistakably to Kate Middleton; (3) whether Kate Middle-ton is not connected with the goods that will be sold by Applicant under its mark; and (4)

whether Kate Middleton’s name or identity is of sufficient fame or reputation that when Applicant’s mark is used on Applicant’s goods, a connection with Kate Middleton would be presumed.

As to the first factor, Applicant argued that the applied-for marks were not a close approximation of Kate Middleton’s name or identity because there was no evidence that Kate Middleton herself had ever used ROYAL KATE or PRINCESS KATE as her name.

The TTAB rejected Applicant’s arguments as inappropriately narrowing the scope of Lanham Act Section 2(a). The record includ-ed numerous examples of media coverage re-ferring to Kate Middleton as a “princess,” as “Her Royal Highness,” and as “Princess Kate” and “Royal Kate,” which was found sufficient to establish that the marks are close approxi-mations of Kate Middleton’s identity.

As to the second factor, the TTAB found that the marks would be recognized as a close approximation of Kate Middleton’s identity by purchasers in connection with the con-sumer products because the evidence estab-lished that Kate Middleton is recognized as a fashion trendsetter. The remaining factors

also weighed in favor of a finding of a false association where Applicant acknowledged that Kate Middleton was not connected with the goods and she had not provided consent to the use of her persona. Further, the record amply demonstrated that there was sufficient fame of Kate Middleton.

After weighing all of the factors, the TTAB concluded that registration of Applicant’s marks is barred by Sections 2(a) and 2(c) of the Lanham Act, affirming the trademark examiner’s refusal to register the marks. This case shows the TTAB’s willingness to consider and rely on evidence originating from outside the United States.

Contributor: Lori J. Shyavitz McCarter & English, LLP, Boston, Massachussetts

Verifier: Jean-Francois NadonJoli-Coeur Lacasse Avocats

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

Contributor: Danielle GormanLocke Lord LLP, New York, New York

Verifier: Catherine HoffmanMayback & Hoffman, P.A., Fort Lauderdale, Florida

Ms. Hoffman is Co-Chair and Ms. Gorman is a member of the INTA Bulletin Law & Practice—United States & Canada Subcommittee.

Register Today for INTA’s 137th Annual MeetingMay 2–6, 2015 | San Diego, California, USA

Look forward to these highlights:

• Almost 300 customized educational offerings, including 33 general educational sessions, more than 250 table topics, users’ group meetings with leaders from several national and regional trademark offices, a 2-day Course on International Trademark Law and Practice with 18 course segments, a 2-day Basic Mediation Training, Academic Day, Career Development Day, the Trademark Administrators Brunch and more.

• Special offerings for IP professionals at corporations of all sizes, including the In-House Practitioners Workshop and Luncheon, the In-House Practitioners Reception and a new series of Industry Exchanges.

• New hassle-free ways to conduct business in the San Diego Convention Center by booking one of 4 different types of meeting spaces.

• More than 30 official networking events, including the INTA Gala, the Sunday evening Opening Ceremony and Welcome Reception, a new array of smaller networking excursions and the Grand Finale to expand your client and referral network.

• Over 100 committee, project team and Global Advisory Council meetings.

• Exhibition Hall with more than 100 exhibitors and numerous sponsorship opportunities to help you spread the word about your company and make new connections.

We expect more than 9,500 trademark professionals from all over the world to register!

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