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MEMBER TRIVIA
Where is My Committee
Preference Form?
ANNOUNCEMENTS AND
CORRECTIONS
ON THE MOVE
INTA IN THE NEWS
FROM INTA PUBLICATIONS
2002 Trademark Law
Handbook
BRAND BUYS
Vivendi Universal
SA/Telenor ASA
Zomba/Bertelsmann
H.J. Heinz Company/Del
Monte Foods
MARK OF THE MONTH
OREO Celebrates its 90th
Birthday
LAW AND PRACTICE
EUROPEAN UNION
What Constitutes
Trademark Use for
Infringement?
Protection of Famous
Marks
HUNGARY
Second Instance Court
Procedure Reintroduced
IRAN
Three-Dimensional Marks
UNITED KINGDOM
Passing Off Protects False
Endorsement
IN THIS ISSUE
Three Dimensional MarksThe case between Koninklijke Philips Electronics and Remington Consumer Products Ltd.
Bulletin JULY 15, 2002
THE VOICE OF THE INTERNATIONAL TRADEMARK ASSOCIATION VOL. 57, NO. 13
BY VOLKERT TEDING VAN BERKHOUTSHIELD MARK BV, Amsterdam, Netherlands
ON JUNE 18, 2002, the European Court of Justicegave its decision on the interpretation of Article 3(1)and (3) of EEC Directive No. 89/104 to approximatethe laws of the Member States relating to trademarks.
The case was filed by the United Kingdom Courtof Appeal for a preliminary ruling in the proceedingspending before that Court between Koninklijke PhilipsElectronics NV and Remington Consumer Products Ltd.
The ECJ held that:• Only marks having a distinctive character by their
nature or by the use made of them are capable ofdistinguishing their goods from the goods of other
undertakings and thereby capable of registration.• In order to be capable of distinguishing an article for
the purposes of Article 2 of the Directive, the shapeof the article in respect of which the sign is regis-tered does not require any capricious addition, suchas an embellishment, which has no functional purpose.
• Where a trader has been the only supplier of partic-ular goods to the market, extensive use of a sign thatconsists of the shape of those goods may be suffi-cient to give the sign a distinctive character for thepurposes of Article 3 (3) of the Directive in circum-stances where, as a result of that use, a substantialproportion of the relevant class of persons associates
2
This Mark’s a Joke
BY BARBARA E. COOKSON,NABARRO NATHANSON, London,U.K. AND CANDI J. HINTON,KAY & BOOSE LLP, New York,USA
TO BURDEN A SINGLE WORD
or image with all of the valuesand messages of a brand is anenormous task. The popularity ofhumor in the mix usually makesmost marketing and brand con-sultants either laugh or cry, but itcan certainly brighten the trade-mark professional’s life.
A mark that is funny to oneperson will not necessarily ticklethe funny bone of another. Inaddition, some brand names thatare popular in one country canperform poorly in other regions.
For example, PUFFS facial tis-sues sell well in the United States.However, handing a pack of the
tissues to an English male couldbe a risky experience, since “puff”is a well-known Englisheuphemism for “homosexual.”Nonetheless, Procter & Gamblemaintains U.K. and EuropeanCommunity trade marks for thebrand.
The idea of the Japanese drinkcalled POCARI SWEAT seemslike a joke to most WesternEnglish speakers, but in Japan,“sweat” conveys refreshment.
Many car drivers around theworld are proud to own a
Chevrolet NOVA. The brand didnot travel well to Spanish-speak-ing countries, however, where“no va” means “doesn’t go.”
The fruity PAVIAN drink wascreated to suggest French chic,but means “baboon” in German.
The MIST STICK hair curlingiron had negative connotations inthe German language, where“mist” is slang for “manure.”
JOLLY GREEN GIANTtranslated into Arabic means“Intimidating Green Ogre.”
When Coca-Cola first came toChina, it was given a similarsounding name ... but the
CONTINUED ON PAGE 5
Whether intentional or not, sometimes a trademark may take on alternate meanings.
4
6
“Intimidating Green Ogre?” Only when “Jolly Green Giant” istranslated into Arabic
CONTINUED ON PAGE 3
5
INTA Bulletin • July 15, 2002 Vol. 57, No. 132
onTHEMoveGregory H. Guillot, formerlyof Gregory H. Guillot, hasjoined the Dallas, Texas, USAoffice of Haynes and Boone,LLP as “Of Counsel.”
Joan Kupersmith Larking,Chris Larkin, Ken Wilton andJill Jacobs have joined theLos Angeles office ofSeyfarth Shaw.
Amjad Al-Amad, formerly withthe Tunisia office of AbuGhazaleh Intellectual Property(AGIP) has joinedInternational Business LegalAssociates (IBLA) in Jordan.
Dr. Mihaly Ficsor has joinedthe Washington, DC office ofSmith & Metalitz, L.L.P. as aninternational legal consultant.
Ethan Horwitz and Ira Levyhave joined the New York Cityoffice of Goodwin Procter LLPas partners. Kandis Kahnand Patricia Wick havejoined as associates.
To submit an item for “On the Move,” send an emailto [email protected].
SINCE INTA CHANGED the committee term startdate from May to January, and the duration ofservice from one to two years, there has beensome confusion as to when aspiring committeevolunteers should receive a committee preferenceform to apply for a committee assignment.Hereare the answers to your questions:
Q. If I currently belong to a committee, whatdo I need to do to remain on the committee?A. Nothing, regardless of your committee assign-ment, you may remain on your committee untilthe end of the committee term.
Q. When does this committee term end?A. The current committee term ends onDecember 31, 2003.
Q. When does the selection process for thenext committee term begin?A. The next committee selection process for theJanuary 2004 - December 2005 committee term,
will begin June 2003. At that time, everyone(current and non committee members) mustapply for a committee assignment for the newterm.
Q. If I am currently not on a committee, do Ihave to wait until the next term?A. There is no definite answer. Presently, all com-mittee positions are filled. However, throughoutthe committee term, positions may become avail-able as new projects develop. INTA has a com-mittee waiting list for when positions becomeavailable. If you would like to add your name tothe list, please send an email [email protected] with your contact information and committee(s) of interest.
Member Trivia is dedicated to answering yourquestions about any subject related to member-ship, member benefits, meetings and publica-tions. If you have a question, please send it [email protected].
MEMBERTrivia
Where is My Committee Preference Form?
Announcements & CorrectionsThe 2002/2003 INTA Membership Directories are Ready to ShipCompany/Firm Designees and Committee Members:
Your directories are now being sent. If you do not receive the directory by the end
of the month, please contact Customer Service at +1 (212) 768-9887 ext. 157 or
Can I order extra copies of the directory?
Yes, you can order additional copies of the directory. Please contact Omar Ictech [email protected] for an order form.
INTA Bulletin CorrectionIn the article entitled “The Scent of a Registration” in Volume 57, Issue 12 of theINTA Bulletin, the article was attributed to Simon Page, of Schneider Page. The arti-cle was, in fact, edited by Mr. Page and authored by Martin Tongbhoyai ofPatentanwalte Freischem in Cologne, Germany.
July 15, 2002 Vol. 57, No. 13 • INTA Bulletin 3
Brussels, Belgium
September 19 – 20, 2002
New York, New York, USA
September 25 – 26, 2002
Now Online!
Trademarks in Cyberspace 2002The Internet’s fast-paced changes and their implications for thetrademark professional are examined at INTA’s Trademarks in
Cyberspace 2002 Forums. This year, separate programs in theUnited States and Europe cover similar topics, but emphasizeregional nuances and developments to provide attendees with amore focused and helpful learning experience.
Benefits to Attend:
* Obtain the latest information on one of today’s hottest trade-mark law issues * Get a concise review of cases and statutorydevelopments * Learn about multinational jurisdiction in Internetissues * Gain insight into domain name registration, disputes andresolution of complex Internet issues * Network with some of theworld’s leading authorities on Internet law * Obtain continuinglegal education (CLE) credits * Increase your value to your compa-ny and clients
Topics Include:
* Cybersquatting * Domain Name and Trademark Conflicts * Global Nature of the Internet * Internet as a Tool for TrademarkPractitioners * Jurisdiction * Searching and Policing TrademarkUse on the Internet * Trademark Licensing and Agreements * Trademark Rights vs. Free Speech
For complete program and registration information, visit
the INTA website at:
www.inta.org/forums/2002/cyber/index.html.
characters used for the namemeant “Bite the wax tad-pole.”
Trademark owners mayalso want to excercise carewhen using specific slogansor photographs to markettheir product in other coun-tries.
For example, when Gerberfirst started selling baby foodin Africa, they used the samepackaging as in the UnitedStates – a cute baby on thelabel. Later, when investigat-ing lower than expected salesfigures, the company foundout that it is common prac-tice in Africa to put picturesof the contents of the pack-age on food labels.
Meanwhile, Parker Pens
translated the slogan for itsink, “Avoid Embarassment –Use Quink,” into Spanish as“Evite Embarazos – UseQuink” in Spanish, meaning“Avoid Pregnancy – UseQuink.”
People often poke fun at anew multi-million dollarrebrand. The latest candidatefor chuckles is the renamingof PriceWaterhouseCoopers’consultancy division toMONDAY. The famousWolff Olins agency, whichcreated the brand, promisesthat MONDAY will soonconvey positive, bright andenthusiastic new thoughts,despite Monday’s currentstatus as everyone’s leastfavorite day of the week.
Greg Brenneman,President and ChiefExecutive Officer of PwCConsulting, said, “Our newname – MONDAY – isexactly what we want it tobe as we create our newbusiness: a real word, con-cise, recognizable, global,and the right fit for a com-pany that works hard todeliver results.”
Sometimes humor can befound in the image of atrademark. One good example of this is theRolling Stone’s famoustrademark of Mick Jagger’smouth that has graced manya fan’s shirt. The group evenparodied itself by registeringthe trademark in a more
barbed version. If done correctly, a
humorous mark may con-tribute to its marketing suc-cess. However, as any goodtrademark professionalshould know, caution shouldbe excercised when inventingbrands for international consumption, since whatmay be funny in one culture could be consideredinsulting in another.
This Mark’s a Joke CONTINUED FROM PAGE 1
When Coca-Cola first came to China, itwas given a similar sounding name ... butthe characters used for the name meant“Bite the wax tadpole.”
INTA Bulletin • July 15, 2002 Vol. 57, No. 134
U.S. (Vol. I)
$89.95
International (Vol. II)
$89.95
Combined Set
(Vol I & II) $149.95
Copyright 2002
360 pages (Vol I)
532 pages (Vol II)
Paperback/Annual
Series
ISBN: 0-939190-47-8
To Order:
www.inta.org/pubs
2002 TrademarkLaw HandbookU.S. and International Annual Reviewof Developments in Trademark Law andPractice
Editors:
Vol. I, U. S. – David J. Kera and Theodore H. Davis, Jr.
VOL. II, INTERNATIONAL – Clifford W. Browning,
Rosemarie Christofolo
This reference is part of an ongoing, annuallyissued series that covers important developmentsin both U.S. and international trademark andunfair competition jurisprudence. Yearly reviewsprovide specifics and commentary on crucialdevelopments in trademark law and practice, aswell as trends in disposition of matters by thecourts worldwide. Conveniently published in twovolumes—available separately, or in a combinedset at a reduced price—the Handbook is aninvaluable source of information for trademarkprofessionals.
Volume I: United States
Covers the United States and provides analysis ofTTAB decisions, relevant changes in practice andprocedure, and Federal Court defenses and reme-dies.
Volume II: International
Covers international developments in selectedcases, and includes commentaries on trademarkmatters prepared by local practitioners in morethan 60 jurisdictions.
To order online, log on to:
www.inta.org/pubs
To order by phone, call:
+1 (212) 768-9887, ext. 157
Letter from the editor . . .Managing IntellectualProperty Online April 2002“Most multinational trademarkowners now want networking andeducational opportunities through-out the world. To its credit, INTArecognizes this trend, and is holdingits 2003 Annual Meeting inAmsterdam, Netherlands....”
Trademark Office to Lay OffThird of Staff by SeptemberThe Washington PostMay 20, 2002INTA Executive Director AlanDrewsen comments on theUSPTO’s recent layoff, whichresulted from a steep drop in trademark applications.
E-GovernmentNational Journal’sTechnology DailyMay 20, 2002At INTA’s 124th Annual Meeting,the director of the Patent andTrademark Office (PTO) stressedhis department’s commitment to e-government and moving thepatent process away from paper andputting more transactions online.
Agencies Washington InternetDailyVol. 3, No. 98, May 21, 2002“The U.S. Patent & TrademarkOffice (USPTO) plans to boostelectronic trademark filings by 20percent by the end of this year,USPTO Director James Rogan saidMonday at the InternationalTrademark Association AnnualMeeting ....”
PTO Chief Hopes Congress WillWrap Up Madrid ProtocolRatification, ImplementationBNA Patent, Trademark& Copyright JournalVol. 64, No. 1574, May 24, 2002James Rogan, director of the Patentand Trademark Office, said May 20at INTA’s Annual Meeting that heis hopeful that Congress will soonratify and implement the MadridProtocol trademark treaty, an inter-national accord that would giveU.S. trademark owners “one-stop-shopping” for trademark filingabroad.
More Than 6,800 Attend INTA’s124th Annual Meeting in DCThe MetropolitanCorporate Counsel June 2002“The International TrademarkAssociation (INTA), the world’slargest trademark membership asso-ciation, hosted its 124th AnnualMeeting in Washington, DC fromMay 18 to 22, bringing togethermore than 6,800 intellectual prop-erty practitioners from more than150 countries ....”
US-EU Rift Opens Up Over GIsManaging IntellectualProperty Online June 2002“The International TrademarkAssociation (INTA) hosted a sessionat the WTO Doha Symposium inGeneva from April 29 to May 1 onthe impact of the Doha Agreementon geographical indications (GIs) ....”
INTA in THE NewsAs the largest trademark membership association in the world, INTA isoften quoted in the news as an authority on trademark matters. Thefollowing recent articles about INTA appeared in various news publica-tions around the world. To view the full text of the articles, send anemail to [email protected] or call +1 (212) 642-1712.
July 15, 2002 Vol. 57, No. 13 • INTA Bulletin 5
Vivendi Universal SA agreed to sellits half of a Norwegian pay-TV unit toTelenor ASA, Norway’s biggest phonecompany, for 2.15 billion kroner (US$274 million) in cash, in an effort tocut debt. Vivendi Universal is engagedin music, publishing, television andfilm, telecommunication, Internet andenvironmental services.
Zomba, the U.S. music powerhouseand world’s largest independentmusic business, which has churnedout stars such as Britney Spears and‘N Sync, is selling its business toGerman media group Bertelsmann forapproximately US $3 billion.Bertelsmann’s music arm, BMG, cur-rently owns 25 percent of Zomba’smusic publishing division and 20 per-cent of its record division.
The H. J. Heinz Company may spin offStarKist tuna, 9-Lives cat food, andseveral other brands to Del MonteFoods in a deal worth approximatelyUS $2.8 billion. Del Monte will nearlydouble in size with the Heinz prod-ucts, hoping to guard againstencroachments by competitors.
Sources: quote.bloomberg.com, June 14,2002; money.cnn.com, June 11, 2002; TheNew York Times, June 14, 2002; Editor: BrianJ. Winterfeldt, Mintz, Levin, Cohn, Ferris, Glovskyand Popeo, P.C., Reston, Virginia, USA
Brand BUYS
OREO cookies recently celebrated their 90th
birthday. The cookies were first created in 1912
in New York City’s West Side by National Biscuit
Company, which later shortened its name to
Nabisco and is now part of Kraft Foods Inc. Last
year, sales of OREO cookies totaled about US
$860 million, with more than 11 billion cookies
consumed.
The origins of the OREO brand name are
unclear. However, Kraft archivist Becky Tousey
says that her favorite theory is that the name
comes from the two “O’s” in the word choco-
late surrounding the “R” and “E” in cream.
In 1913 National Biscuit Company obtained a
U.S. trademark registration for OREO covering
a “biscuit.” In 1995, Nabisco obtained a U.S.
trademark registration for the design of the
OREO wafer (shown above) for “cookies.”
National Biscuit Company (and later Nabisco)
also obtained trademark registrations for OREO
(as well as for related marks) in numerous
other countries around the world, including
Canada (1928), the United Kingdom (1960),
Japan (1970), Brazil (1972), and the Philippines
(1976).
Source: “OREO Cookies Celebrate 90th Birthday in NewYork City,” Jessica Wohl, Reuters, June 12, 2002. Editor:Patrick J. Gallagher, Fulbright & Jaworski L.L.P., Minneapolis,Minnesota, USA
Mark ofTHE MONTH
that shape with that trader and no other undertaking, or believes that goods of thatshape come from that trader. However, the national court must verify the “circumstances” in which the require-
ment under Art. 3(3) is satisfied. In this respect the national court must checkwhether: • the “circumstances” are based on specific and reliable data, • the presumed expectations of an average consumer of the category of goods or ser-
vices in question, who is reasonably well-informed, observant and circumspect, aretaken into account, and
• the identification, by the relevant class of persons, of the product as originatingfrom a given undertaking is as a result of the use of the mark as a trademark.
• Article 3(1)(e), of the Directive must be interpreted to mean that a sign consistingexclusively of the shape of a product is unregistrable by virtue thereof if it is estab-lished that the essential functional features of that shape are attributable only to thetechnical result. Moreover, the ground for refusal or invalidity of registrationimposed by that provision cannot be overcome by establishing that there are othershapes that allow the same technical result to be obtained.
Verifier: Milca Graver-de Looper, Amsterdams Merkenbureau, Amsterdam, Netherlands; Case C-299/99
Three Dimensional MarksCONTINUED FROM PAGE 1
Editor’s Note: With this first appearance of“Mark of the Month,” the INTA Bulletin intro-duces a new column that will spotlight well-known and/or interesting trademarks. INTAMembers are encouraged to submit sugges-tions and contributions for “Mark of theMonth” to [email protected]. The “Markof the Month” will be chosen at the discretionof the INTA Bulletin Editorial Board.
INTA Bulletin • July 15, 2002 Vol. 57, No. 136
Law+Practice
EUROPEAN UNION
What ConstitutesTrademark Use forInfringement?On June 13, 2002, the AdvocateGeneral of the European Courtof Justice (ECJ) gave his opinionin Arsenal Football Club plc v.Matthew Reed (Case C-206/01)(a reference from the EnglishHigh Court), which providessome important guidance onwhat amounts to the use of atrademark for infringement pur-poses.
Arsenal is a well-knownEnglish football (soccer) club. Ithas trademark registrations forARSENAL and other markscovering clothing and sportsfootwear. Mr. Reed is a traderwho sells unofficial items ofclothing near Arsenal’s groundthat bear the trademarks regis-tered by Arsenal. He uses anotice that makes clear that theclothing is not official Arsenalmerchandise.
The questions referred to theECJ were whether or not it is adefense to infringement that theuse being protested does notindicate trade origin (i.e. a con-nection in the course of tradebetween the goods and thetrademark proprietor); and, if so,whether or not the fact that theuse in question would be per-ceived as a badge of support,loyalty or affiliation to the trade-mark proprietor is a sufficientconnection.
In answer to the first ques-tion, the Advocate General statesin the opinion that the functionof a trademark should not belimited to an indication of tradeorigin, but that, under Article5(1)(a) of the European TradeMark Directive, the proprietor
of a registered mark is also enti-tled to prevent third parties fromusing, in relation to the samegoods or services, identical signsthat are capable of giving a mis-leading indication as to theirprovenance, quality or reputa-tion. The opinion goes on tostate that, where there is suchidentity of marks and goods/ser-vices, there is a presumption thatthe use by a third party of thetrademark is use of the mark assuch (and therefore an infringe-ment).
In answer to the English HighCourt’s second question, theopinion holds that any use intrade of a registered trademarkconstitutes trademark use forinfringement purposes. The use,which the trademark proprietoris entitled to prevent third par-ties from making, is use for thepurposes of commercial exploita-tion, which includes use of dis-tinctive signs that football clubshave registered as trademarks forthe purposes of marketing arti-cles of clothing and other itemsconnected with the team. Thereasons on which consumersbase their choice of the goodsare irrelevant, the decisive factorbeing that they acquire or usethem because they incorporatethe distinctive sign.Source: Jason Rawkins, Taylor JoynsonGarrett, London, United Kingdom;Verifier: Vanessa Parker, Procter &Gamble, Neuilly-Sur-Seine, France
Protection of FamousMarksAn opinion delivered on March21, 2002, for the EuropeanCourt of Justice (ECJ) case,Davidoff & Cie SA v. Gofkid Ltd(Case C-292/00), declined toextend the protection granted tomarks “with a reputation.” The
opinion was such that any gapin the protection of such markswas not a real one in practice.
Under the European TradeMark Directive, the owner of aregistered trademark must beentitled to prevent a third partyfrom using or registering a markif either: (a) the mark is identicalto the earlier registered mark andthe goods or services in questionare identical to those of the reg-istered mark, or (b) the mark isidentical or similar to the regis-tered mark, the goods or servicesare also identical or similar, andthere arises a likelihood of con-fusion.
The Directive also permitsMember States (optionally) toprovide additional protectionwhere the earlier mark has a rep-utation, such that a later identi-cal or similar mark can be pre-vented where the goods or ser-vices are not similar, but wherethe use of the later mark wouldwithout due cause take unfairadvantage of, or be detrimentalto, the distinctive character orrepute of the earlier mark (with-out any requirement for a likeli-hood of confusion).
In its reference to the ECJ,the German Federal Court ofJustice asked whether MemberStates may also apply the addi-tional protection for marks witha reputation where the relevantgoods or services are identical orsimilar. Davidoff and theEuropean Commission submit-ted that, since the Directiveallowed the specified additionalprotection for marks with a rep-utation against the same or asimilar mark for dissimilargoods/services, it must a fortioriallow the same protection wherethe goods/services are similar.
In its opinion, the Advocate
General stated that the Directiveshould be given a literal interpre-tation, such that the optionaladditional protection was limitedto cases of dissimilar goods/ser-vices and should not be extend-ed to similar goods or services.
The Advocate General wenton to say that, in reality, therewas no gap in the continuity ofprotection of marks having areputation; but rather that,where the protection extendedbeyond the point of similaritybetween products (at whichpoint protection for other marksceased completely), the criteriato be met changed (from likeli-hood of confusion to unfairadvantage/detriment).
The Opinion referred to theSabel case (Case C-251/95),which decided that, where amark has a distinctive character,the likelihood of confusion isincreased and therefore easier toestablish. Because of this, it wasimprobable that a situationwould arise where a mark similarto one with a reputation, such as“Coca-Cola,” was being used forsimilar goods without it beingpossible to establish a likelihoodof confusion (including associa-tion). It was only when thegoods became dissimilar that alikelihood of confusion might bedifficult to demonstrate and thatwas where the additional protec-tion, based on the unfair advan-tage/detriment criterion, bridgedthe gap.
In answering a second ques-tion raised by the GermanCourt, the Opinion of theAdvocate General was that theoptional additional protectionset out in the Directive formarks with a reputation wasexhaustive and could not besupplemented by national rules
July 15, 2002 Vol. 57, No. 13 • INTA Bulletin 7
Government that took office onMonday, May 27, 2002 referredto the introduction of threeCircuit Courts as final appealcourt tribunals, which they planto establish soon, to reduce theworkload on the Supreme Courtand to shorten the duration ofcourt proceedings. The establish-ment of a separate TrademarkSenate at the MetropolitanCourt last year has noticeablyreduced the duration of firstinstance court proceedings com-pared to the previous periodduring which the same Senatetried patent cases as well. Source: Michael Lantos, DanubiaPatent & Trademark Attorneys,Budapest, Hungary; Verifier: Dr. CsabaSár, Sár and Partners, Budapest,Hungary
IRAN
Three-DimensionalMarksThe Iranian Industrial PropertyOffice recently adopted a rulefor acceptance of applications toregister three-dimensional marks.
Three-dimensional marks areexamined and registered in thesame manner as other trademarkor service mark applications.
In addition to general filingparticulars of trademark or ser-vice mark applications, appli-cants must present sufficientviews for the shape to be clearlyrepresented.Source: Mohammad Badamchi, HAMILegal Services, Tehran, Iran; Verifier:Samad Asgharieh, Raysan Patent &Trademark Agents, Tehran, Iran
UNITED KINGDOM
Passing Off ProtectsFalse EndorsementThe English High Court hasgiven judgment on a case involv-
ing false celebrity endorsement,which will determine howfamous personalities can controlthe exploitation of their nameand images in the future. Theaction was brought by EddieIrvine (currently Jaguar’s driverin Formula 1 racing) against thedefendant Talksport Limited(formerly known as Talk Radio)a U.K. sports radio broadcaster.
Talksport took a picture ofIrvine that had been legallyobtained and manipulated it toremove a mobile phone Irvinewas holding, replacing it with aradio and the words “TalkRadio.” This promotional pic-ture was then sent out toapproximately 1,000 potentialadvertisers.
Irvine brought an action fordamages for passing off andargued that he had a substantialreputation and goodwill andthat the defendant had created afalse message, which a significantsection of the public would taketo mean that Irvine hadendorsed the radio station. Aninjunction was not sought asTalksport had made it clear thatthe campaign was a “one-off”promotion designed to coincidewith the British Grand Prix.Talksport, on the other hand,contended that there was no freestanding right to characterexploitation enjoyable exclusivelyby a celebrity and a passing offclaim could not be based on anallegation of false endorsement.
The court agreed with Irvineand stated that an action forpassing off could be based onfalse product endorsement. TheJudge recognized the fact that itwas common for famous peopleto exploit their names andimages by way of endorsementin today’s brand conscious age,not only in their own field of
expertise but also wider afield.Therefore, it was right for valu-able reputations to be protectedfrom unauthorized use by otherparties.
In the future, to succeed in aclaim for false endorsement, aclaimant will need to show that:(i) at the time of the acts com-plained of he or she had a signif-icant reputation or goodwill; and(ii) the actions of the defendantgave rise to a false message thatwould be understood by a signif-icant section of his market thathis goods had been endorsed,recommended or were approvedof by the claimant.
The case highlights theimportant difference betweenendorsement and merchandis-ing. Character merchandisinginvolves the exploitation ofimages by creating “spin-off”products, whereas this case dealswith the evolution of the law onpassing off to embrace modernbranding and trade practicewhereby an individual can finan-cially benefit from the endorse-ment or recommendation ofanother party’s goods or servicesin order to boost sales. A passingoff action will now protect anindividual’s exclusive right tobenefit from the attractive forceof his or her goodwill or reputa-tion and to protect that rightagainst damage or dilution aris-ing from a false claim or sugges-tion of endorsement of a thirdparty’s goods or business. Case: Edmund Irvine and TidswellLimited v Talksport Limited HC0005773 High Court, ChanceryDivision, March 13, 2002; Source:Richard Penfold,Harbottle & Lewis,London, United Kingdom; Verifier:Simon Page, Schneider Page, London,United Kingdom
in Member States.Source: Jason Rawkins, Taylor JoynsonGarrett, London, United Kingdom;Verifier: Vanessa Parker, Procter &Gamble, Neuilly-Sur-Seine, France
HUNGARY
Second Instance Court ProcedureReintroducedOn January 1, 2002, a secondinstance court procedure wasreintroduced in all IP-relatedcourt cases in Hungary.
The recent change of the Lawof Civil Procedure has intro-duced minor procedural amend-ments. The procedures that werein force until January 1, 1999were reintroduced, i.e. in allpatent, design, utility model andtrademark cases, where the firstinstance authority is the PatentOffice, the reconsideration pro-cedure before the MetropolitanCourt (being the first instanceappeal court) is not the final tri-bunal, but appeals can be madeagain to the Supreme Court,which acts as a second instanceCourt. This amendment relatedto all cases in which the firstinstance Court has not issued adecision before January 1, 2002.
This new procedure has con-tributed to greater stability in thelaw but, at the same time,caused delays in obtaining a finaldecision. The new regulationrelates to cancellation cases, pro-cedures for invalidity due tonon-use and all cases in whichthe Patent Office decides toreject a trademark application.The procedure for trademarkinfringement cases has notchanged – such actions com-mence before the Metropolitancourt with a possible appeal tothe Supreme Court.
The new Hungarian
INTA Bulletin • July 15, 2002 Vol. 57, No. 138
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International Trademark Association
INTA BULLETIN EDITORIAL BOARD
Olga M. NedeltscheffEditor-in-Chief
Philip Morris International Management S.A.Lausanne, Switzerland
Trevor Stevens Associate Editor
Davies Collison Cave, Sydney, Australia
Theodore Lienesch Executive Editor, Law & Practice: The Americas
Thompson Hine LLP Dayton, Ohio, USA
Simon Page Executive Editor, Law & Practice: Europe, Middle
EastSchneider Page, London, U.K.
Kay RickelmanExecutive Editor, Law & Practice: Asia, Africa
Spoor & Fisher, Pretoria, South Africa
Mary DeLongisExecutive Editor, FeaturesDiageo North America Inc. Stamford, Connecticut USA
Tim LockhartExecutive Editor, Features
Hogan & Hartson LLP, McLean, Virginia USA
Naeran RubioManaging Editor, INTA, New York City, USA
Elaine CzachAssistant Editor, INTA, New York City, USA
To reach an INTA department by email, please contact:
Executive Director: [email protected]
The Trademark Reporter®: [email protected]
The INTA Bulletin: [email protected]
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Administration & Finance: [email protected]
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Membership: [email protected]
Customer Service: [email protected]
Job Bank: [email protected]
TM Affairs & Policies: [email protected]
Brand Names Education Foundation:[email protected]
U.S. RoundtablesJuly 15–30, 2002Topic: DilutionMultiple U.S. Locations
Corporate RoundtablesSept. 16–27, 2002Multiple Locations
Trademarks inCyberspace2002–EuropeSept. 19–20, 2002Brussels, Belgium
Trademarks inCyberspace2002–North AmericaSept. 25–26, 2002New York, New York,USA
TTAB Practice forNovices ForumOct. 3, 2002Arlington, Virginia, USA
TrademarkAdministrators 2002ConferenceOct. 6 -- 9, 2002Arlington, Virginia, USA
For more informationlog on to the INTA website atwww.inta.org or callCustomer Service at +1 (212) 768-9887,Ext 157.
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© 2002 International Trademark Association
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The INTA Bulletin primarily relies on members of theINTA Bulletin Committee and staff for content butaccepts submissions from others. The INTA Bulletinreserves the right to make, in its sole discretion, edi-torial changes to any item offered to it for publication.
This comprehensive work,updated annually, surveystrademark assignment law,practice and procedure, andcovers all informationrequired to handle multina-tional trademark transactions.Included are a comparativeanalysis of key issues in trade-mark transfers includinggoodwill considerations,brand valuation, businessasset transfer requirements,taxation on transfers, andsecurity interests followed bydetailed profiles of applicablelaw, practice and procedure in50 jurisdictions. Contents foreach jurisdiction treat purposeand effect of assignment; document requirements andrecordal procedure; issues relevant to mergers, changeof name, and bankruptcy;transfer of goodwill; special
rules for foreign or particularbusinesses; and more.Applicable forms and relevanttext of statutes also areincluded, with French,German and Spanish transla-tions of standard forms(assignment, power of attor-ney and notarial) suppliedboth in print and on disk.
• $275.00 Members
• $325.00 Non-Members
• 1992/2001
• 1,600 pages
• Looseleaf/Supplements
• ISBN 0-87632-830-3
Price includes all supple-ments through 2001. Future supplements pricedseparately. Update servicemay be cancelled at any time.
WorldwideTrademark TransfersLaw and PracticeEditors: Susan Barbieri
Montgomery and Richard J. Taylor
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Or order online by visiting www.inta.org/pubs.
Please add 5 percent for shipping & handling in the continental United Statesand 15 percent in all other locations. Get a copy of the order form at:www.inta.org/pubs/puborder.shtml.
