Daily NewsAttendee Tracey Mosley of Borden Ladner Gervais said Driver’s talk motivated her to be more aware of certain habits, particularly when training others. Karla Charles of

D o you want to seem more powerful? Try grabbingyour chin thoughtfully. More intelligent? Tilt yourhead to the left. More attractive? Tilt your head to

the right. Whatever you do, don’t grab the skin on yourneck when addressing someone.

These are just some of the tips body language expertand self-proclaimed Lyin’ Tamer Janine Driver gave atten-dees during yesterday’s Trademark AdministratorsBrunch. Driver’s high-energy, interactive talk includedadvice for how—and how not—to approach your boss(don’t rush into a room with good news—stay in the doorframe and speak casually); what your body is saying in ajob interview (keep your head straight and belly buttonfacing out); and how a hand shake can literally revealwhich party has the upper hand (do whatever it takes tobe the hand on top).

As a former federal law enforcement officer with theU.S. Bureau of Alcohol, Tobacco, Firearms, and Explosives(ATF), Driver specialized in assessing body language todetect deception. Today, she is president of the BodyLanguage Institute and a bestselling author.

Upon entering the room yesterday, Driver made somequick judgments about the attendees. “This woman iseither important, or she thinks she’s important,” she saidof one who was leaning on the seat next to hers. This is thekind of observation our coworkers and loved ones makeabout us everyday, and they contribute greatly to others’perception of who we are.

Attendee Tracey Mosley of Borden Ladner Gervais saidDriver’s talk motivated her to be more aware of certainhabits, particularly when training others. Karla Charles ofGardner, Linn, Burkhart & Flory agreed, and added: “Ithink this is the best brunch we’ve ever had.”

News

The new MadridProtocol toolsPage 2

A t l 1

Sights

Off the beatentrack inWashingtonPage 24

Interview

Debra Hughes,American RedCrossPage 20

News 2 -3 | P rev i ews 4 - 1 9 | Qu i z 25 | Re cep t i o n s 27 | S c h edu l e 28 | Wea t h e r 73° F

T here is a big misconceptionabout Twitter, said the compa-ny’s Global Brand Protection

Manager, Jillian West, during yester-day’s In-house PractitionersWorkshop. “People hear Twitter andthey think about their own trade-marks and get angry,” said West. “Butsocial media can be the victim too.”

While many trademark ownersview sites such as Twitter andFacebook as threats, West said it isimportant that people rememberthere are policies in place to help, andoutlined her company’s own strate-gies for tackling impersonators andinfringers. For example, West man-aged to get Twitter Latina, TwitterFrançais, Teen Twitter and TwitterKorea all taken down without havingto pursue legal action. “We alwaysreach out directly first, and in almostall instances that works,” said West.

In the case of Teen Twitter, the site

was set up by a well-meaning teenagerwho wanted to target his own demo-graphic. It took a lot of back and forthand explanation of trademark and IPrights to get it taken down, but Westsaid that it was well worth the effort.“We avoided the PR disaster of beingviewed as a bully,” she said.

While Scott Augenbaum of theFederal Bureau of Investigationpointed out that social media can bea gateway to crimes such as identitytheft, Adam Palmer of SymantecCorporation stressed that living infear of social media sites is the wrongapproach. “These are good systemsthat are being abused,” he said. Butthe scale of the abuse has manylawyers’ and in-house counsel trem-bling all the same. According toPalmer, there was US$308 billion lostto cybercrime last year, and more vic-tims of cybercrime in 2011 than new-born babies.

Despite the numbers, Palmer saidthat banning social media is not theanswer. For many brands it is noteven an option, since platforms likeFacebook, Twitter and Pinterest arequickly becoming an integral market-ing tool.

Karen Webb of Fenwick & Westsaid there is a balance that can beachieved between social media plat-forms and brand owners. The keypoints are to have the proper policiesin place, to be an “early adapter,” toutilize platform policies and to care-fully consider when to potentiallyembrace or simply ignore infringe-ment or impersonators. Staying ontop of such issues can help brandowners to use social media to gaincompetitive advantage.

“The reality is that cybercriminalsmove at the speed of light, but wemove at the speed of law,” saidPalmer.

Let your body do the talking

To tweet or not to tweet

DailyNewsPublished by

www.inta.org www.managingip.com

Monday, May 7, 2012 134th Annual Meeting, Washington D.C.

10th Anniversary

Don’t be atall skinnycandle whenstanding; bea short fatone with legswide apartand solidly

planted; when people are truly sad, their eyebrowspull together and up—when there’s no eyebrow activ-ity, it’s fake; nodding yes while denying somethingcan indicate dishonesty; making a steeple with yourhands designates authority; rocking back and forthon one’s feet denotes confidence; hiding yourthumbs in your fists or pockets can mean you needreassurance.

Other tips from Driver

Attendees at last night’s Welcome Reception Washington Reinvented, featuring the band Steel Violins

Y esterday’s Madrid System Users Meeting saw morethan the usual announcements and update on theinternational trademark system. It marked the

launch of three new online services by WIPO. The services will allow users of the Madrid System to track

their documentation, watch any mark and manage their port-folio. “This was a big leap for us, particularly MadridPortfolio Manager,” said Neil Wilson, Director of theFunctional Support Division at WIPO. “We will be carryingout user satisfaction surveys in the next three to six months aswell, so we want to know what you think about them.”

Former INTA President Anne Gundelfinger stood upand asked the first question of Wilson, giving someimmediate feedback. “These are great programs and Iwelcome them, but frankly they don’t go far enough,”she said. “I would like to be able to designate an emailaddress for communications when I make an application,rather than waiting for the registration. And when willthere be online forms rather than just a form you down-load and email?”

Wilson clarified that you can designate an email addressupon application, and indeed this was something WIPOwas now encouraging users to do. As to the online forms,he said: “This is a first best effort. We are happy to extendthe services in any way you want and we plan to put someof the most popular forms online.”

Madrid Portfolio Manager (MPM), probably the mostcomplex of the new services, is a web tool that allowsowners of international registrations and their representa-tives to access their international trademark portfolios.This should be especially helpful when submitting newrequests for recordal in the WIPO InternationalTrademark Registry. To access MPM, all a user needs is aWIPO user account linked to an email address. Then theycan establish a portfolio by collecting all the internationalregistrations linked to the same email address.

Madrid Real-time Status (MRS) is a standalone toolthat provides the immediate status of trademark docu-ments being processed by WIPO. Launch a query throughMRS concerning a specific international trademark regis-tration and receive a list of all related events recorded or in

the process of being recorded in the InternationalTrademark Registry. This allows you to see what is hap-pening to your request at any point in time.

Lastly, Madrid Electronic Alert (MEA) is a free watchservice designed to inform anyone interested in the statusof selected registrations. MEA subscribers receive dailyemail alerts when changes are recorded in the Register.WIPO user account holders can create a list of internation-al registration numbers of particular interest, and receivean email each time an inscription concerning one of themis recorded in the Register. These messages provide a

hyperlink to Romarin, the Register database, where theuser can find further details of the changes.

Earlier in the Madrid System Users Meeting, RicardoBlancaflor, director general of the Philippines IP Office, hadgiven a speech explaining how he dealt with oppositionfrom trademark attorneys to the country joining Madrid:“Once we talked to them, every business group in the coun-try supported our position. And in the end, lawyers have tofollow their clients.” Officers from the Egyptian, EU andSwiss trademark offices also gave presentations on theirprocesses, and took questions from users.

News

INTA Da i ly News Monday, May 7 2012 www.manag ing ip .com2

Agreement only 1Protocol 29 (Including EC)Agreement and Protocol 55

Agreement only 1Protocol 29 (Including EC)Agreement and Protocol 55

Three new ways to manage Madrid

WIPO is seeking the views of own-ers and users of designs as part ofa process that could result in morestreamlined, harmonized rules forfiling applications for design rightsaround the world.

Marcus Höpperger, director ofthe Trademark and Design LawDivision at the IP organization, saidhe hopes member states will con-clude a design law treaty that doesfor designs what the SingaporeTreaty did for trademarks and thePatent Law Treaty did for patents:simplify application procedures and

harmonize registration formalities.It proposes to standardize the rulesnational offices impose on the waythat applicants must representtheir design; filing date require-ments; the length of the universalgrace period that they offer; multi-ple design applications and the divi-sion of applications—among others.

Now WIPO wants to hear whatdesign owners think about the tech-nical details of its proposals. Its sec-retariat will incorporate their viewsinto a report to be presented to the27th session of the Standing

Committee on Trademarks inSeptember. The Committee willthen make a recommendation tothe General Assembly, which meetsthe following month, about whetherto back a plan to convene a diplo-matic conference next year.

WIPO has set up an online sur-vey that design owners and userscan complete in English, French,Russian or Spanish. It should takearound 15 minutes and anyonewanting to take part can do so untilMay 11. Follow the links fromwww.wipo.int.

Have your say on designs

C heryl Black pretended to collapse ona table. “Maybe 18?” she said.“Wow, 18 people in one hour.

That’s why I’m tired.” Black, of GoodmanAllen & Filetti in Richmond, Virginia, U.S.had just completed a Speed Networking ses-sion, where she met with a consistentstream of participants all in search of onething: making a connection.

In its second year at the AnnualMeeting, the Speed Networking event is

so popular there were people who wereunable to snag one of the 40 first-come,first-served slots at yesterday’s session.K.M. Aasim Shehzad of BFS Legal inChennai, India, was among those whomissed a seat. “It’s about recommendingwork or giving work to somebody,” hesaid, as he hung around in case a slotopened up.

Metin Calis of Calis Law Firm inIstanbul, Turkey, returned to the event after

attending a session last year. He got severalcontacts from the Annual Meeting in SanFrancisco, he said, though he couldn’t quitepinpoint which ones he met through speednetworking. This year, he knew what hehad to do: keep notes, identify the brandwith the lawyer, and send an e-mail uponhis return home. “To get another brand—that’s my goal,” he said.

Missed yesterday’s session? Try to makeone today, Tuesday or Wednesday.

Speed networking event still impresses

*The Philippineshas deposited itsinstrument ofaccession and willbecome the 86thmember of theSystem.

L aw students can spend entire semesters in classwithout ever hearing the word “client.” But this issomething professors such as Susan Montgomery

of the Law School at Northeastern University and AmandaCompton of the Charleston School of Law are trying tochange. “Gone are the days when employers want to traintheir entry-level associates,” Compton said yesterday.“Employers are pushing for these graduates to come outwith some transferable skills.”

At How to Integrate Real Life into Your TrademarkClass, the speakers—Compton, Montgomery, Irene Calboliof Marquette University Law School and Gerald Tschura ofThomas M. Cooley Law School—all stressed the impor-tance of taking a practical approach to teaching trademarklaw. The professors said too many schools are set in usingtraditional teaching methods, which typically focus on doc-

trine. Bolstered partly by professors who advocate alterna-tive means as well as reports by other entities, schools arestarting to take notice. The American Bar Association is inthe process of adopting standards for schools that requirecompetency as an entry-level practitioner.

Montgomery, who spent 25 years at Foley Hoag beforeentering academia, said professors should talk about theirclients, use unasked questions and provide “messy facts.”She suggested that they should provide material beyondappellate cases, which are an “edited versions of the facts.”

“Students are not prepared to advise clients if those arethe only facts they see,” she said. “Tell stories about whatwalks into your office and the messy facts you’re present-ed with.”

Additionally, business students should learn how towork with lawyers, said Montgomery, who also teaches atNortheastern’s business school. “I want to change the waythey think about legal,” she added. George Schell of TheCoca-Cola Company illustrated this point. As a generalistwho handles marketing issues, Schell said there’s an inter-esting dynamic between the business and legal sides of allcompanies. “Business people typically don’t want anythingto do with legal,” he said. “Our job is to say, ‘This is goodlegal. This will actually help you.’” The key, Schell added,is for business people to have a baseline understanding ofhow to protect their marks. “It’s up to the legal folks tomake sure there’s consistency in how trademarks are usedso that they can be protected in the long-term.”

News

www.manag ing ip .com INTA Da i ly News Monday, May 7 2012 3

A practical approach to teaching law

The INTA Art Gallery was opened yesterday with cake,champagne and a book signing. The Gallery, featuringpaintings, photographs and other work by INTA volun-teers and staff, runs until Wednesday outside theExhibition Hall. To purchase artworks, contact theartists directly. The Gallery can also be viewed on theINTA website.

A s ICANN revealed on Friday night, the Internet isset for an unprecedented expansion with poten-tially 2,000 new generic top-level domains to be

added to the existing 21 within the next few years. It islikely to be at least a month before we know which stringshave been applied for, but in the meantime trademarkowners need to put their strategies in place.

“The Internet is something that’s omnipresent in every-one’s life. For that reason it’s sexy. There are a lot of IPowners that don’t know it as well as they wish they did andprivate practitioners want to know it better to inform theirclients,” says J. Scott Evans of Yahoo, who is moderatingtoday’s industry breakout on cyberspace issues. “If you’retrademark counsel at a big retailer for instance, you’ve gota whole lot going on. It’s difficult to feel as if you’ve got100% coverage on all the Internet issues.”

Eyes openThat’s particularly the case given the pace of developmentswith new gTLDs, one of three items on today’s agenda. AfterICANN’s Board approved the new gTLD program in Junelast year, the application period opened in January andshould have closed in April. However, it was suspended fol-lowing a software glitch that enabled some users to see oth-ers’ file names. ICANN is expected to provide an update

tomorrow on when the program will reopen, but has alreadyrevealed that the 839 registered applicants have applied toown and operate more than 2,000 domain strings.

It’s too late now to apply for a gTLD if you’re not alreadyregistered in the program, but that doesn’t mean trademarkowners can afford to ignore it. On the contrary. In today’ssession Brian J. Winterfeldt of Steptoe & Johnson willexplain what measures are in place to help trademark own-ers deal with the expected cases of potential cybersquattingor other conflicts. The number of applications, which is

higher than many predicted, has prompted concerns amongIP lawyers. “A whole lot of people have only been payingattention with one eye until now,” says Evans. “Brian willremind them what they can do in these staged periods.”

There remains a great deal of uncertainty about boththe timing and the impact of the new gTLD program. It islikely that there will be litigation at some point, perhapsresulting from a dispute over a particular domain string orthe outcome of an auction. If that happens, it could havean impact on the expected second round of gTLD applica-tions. “It could be very far away,” says Evans.

Do you have a gTLD strategy?The first part of your strategy should be to have a clear ideaabout why you did or did not apply. “Somebody in your fieldis going to do it. When your CEO picks up the paper, andsees that, they’re going to be asking questions. You don’tneed to do it [apply], but you need to make sure the decisionis made at the right level,” says Evans. Second, there is thequestion of how you respond to potentially thousands ofnew gTLD strings, and the threat they bring—something thattoday’s second speaker, Stacey King of Richemont, willaddress. “People are feeling overwhelmed and under-budget-ed,” says Evans. That means brand owners are likely to haveto develop more targeted and focused strategies than they

Preview Cyberspace


It’s the Internet, stupid!New gTLDs, social media, keyword advertising… it is impossible to avoid the trademark issues raised by theInternet. James Nurton explores the latest developments.

“Rather thangoing in witha scattergun,and trying tohit everything,you’re goingto have bemore laser-focused.”

have before: marketing people are going to have to get theirhead around the fact that they’re not going to be able to ownevery iteration of their mark in every domain. “Rather thangoing in with a scattergun, and trying to hit everything,you’re going to have be more laser-focused,” says Evans.Look for an INTA webinar in early summer on how to dealwith potentially infringing new gTLD strings.

The third topic to be discussed today is somewhat dif-ferent and something that is close to Evans’s heart: social-ly responsible social networking. The growth of online

interaction, particularly among young people, has led togreater concerns about bullying online. While raisingawareness about such issues may not seem to be a corepart of the trademark attorney’s role, Evans says everyonein this area has a responsibility: “This is a plea to peopleto say: you’re more than just a trademark attorney. You’resomeone who understands this stuff: are you explaining itto people? What are you doing to be a better citizen?”Ellen B. Shankman of Ellen Shankman & Associates willdiscuss these questions during the session.

Be smart and creativeWith the constant emergence of new Internet-relatedissues, including online counterfeiting and keywordadvertising (see box), there are often calls for new laws.But Evans disputes that: “Just because it’s the Internetdoesn’t mean it’s a different ecosystem, with differentlaws. I think the laws that exist today are adequate tohandle 90% of the issues arising on the Internet.” BrianIsaac of Smart & Biggar/Fetherstonhaugh agrees: “Youalways get these questions about how the laws are chang-ing to meet the Internet. It’s kind of the other wayaround. There’s not necessarily that much need foramendment. The law is intended to be technology-neu-tral.” So grab your textbooks, get online, and start learn-ing. As Evans says: “It’s a red herring to say we don’thave an adequate law. You’re just not a smart attorney.You need to be creative and you need to sit and thinkabout something.”

IM01 Industry Breakout: From the FryingPan into the Fire: Navigating EmergingIssues in Cyberspace takes place today at10:30 am in room 146 ABC

CT02 Competitor’s Use of KeywordAdvertising and Search Engine Optimization(SEO): Hey! They’re Using My Trademarks!is tomorrow at 10:15 am in room 146 ABC

Preview Cyberspace


One Internet topic that continues toprovide employment for litigatorsand professors is keyword advertis-ing online. Recent cases in jurisdic-tions including Australia, Europeand the United States have helpedto clarify issues including both theliability of search engine providerssuch as Google and what consti-tutes infringement online.

A practical session tomorrow willexamine the strategies that adver-tisers use in search engine adver-tising, and what trademark ownerscan do where they feel their marks

are being infringed. Brian Isaac ofSmart & Biggar/Fetherstonhaugh,who is moderating the panel, saysthe recent cases have been helpfulin moving the debate on frombrand owner-versus-search engineto looking at how you actuallyaddress a competitor’s use of atrademark: “It’s turning moretowards the manner of use onlineas opposed to the old question ofwhether you could nail someonejust for the fact that they boughtthe keyword. It’s not settled, but it’scoming back towards the more typi-

cal analysis you do in any trade-mark case.”

Tomorrow’s speakers HowardHogan of Gibson Dunn & Crutcherand John Ramsey of Rosetta Stonewill address issues such as how toprove confusion and damages, andhow you can enforce your trade-mark rights, not just against searchengine advertisements but alsoother uses online. They will alsoexplore the “tricks of the trade”that marketers use to get to the topof the search lists, including byusing others’ brands.

Search engines: friends or foes?

W ith a single market of 500 million people across27 countries that some of the world’s richestconsumers call home, it is unsurprising that

brand owners want to boost their presence in theEuropean Union marketplace. But protecting their trade-mark rights there can be a tricky business. While politi-cians made it easier for them to register their marks on apan-EU basis by launching the Community trade mark(CTM) 16 years ago, a patchwork of national laws runsparallel to the CTM system, making it essential for IPowners to understand the rules if they want to maximizetheir rights.

Panelists in two sessions at the Annual Meeting willintroduce them to a series of important issues inEuropean trademark law. The first focuses on filingstrategies by considering the advantages (and disadvan-tages) of using the Madrid Protocol, CTM and of drop-ping national marks in Europe altogether. It also exam-ines the rules governing the use of a modified mark, andthe vulnerability of your mark to attacks on the groundsof non-use. The second session will look at the legalimpact of using an unregistered mark—and of not usinga registered mark.

Eric Bakker of Bakker & Verkuijl, who will moderatetomorrow’s session, will summarize some recent disputesin Europe relating to use of a modified mark and explainhow that puts the owner at risk of a challenge for non-use. Three cases are now before Europe’s highest court,

the Court of Justice of the EU, which is set to outlinehow national courts should interpret EU trademark lawon this issue. In the first, the Court will consider whetherthe owner of the marks PROTI, PROTI POWER andPROTIPLUS should be allowed to maintain the registra-tion for PROTI, even though a rival claimed that it hadnot genuinely used the mark.

The Court is also set to decide a dispute between

Feature EU trademark reform


1996The Community trade mark (CTM) system is launched.The Office for Harmonization in the Internal Market(OHIM) receives more than 40,000 CTM applications infirst year and some EU member states begin to fearthat national filings will slump.

May 2007Representatives of member states on the EUCompetitiveness Council agree to ask the Commissionto propose reducing OHIM’s fees after it builds up alarge surplus. They also call on the Commission to startwork on a comprehensive study on the overall function-ing of the European trademark system.

May 2009The cost of applying for a CTM in Europe falls. Attentionnow turns to other parts of the deal: a €50 millioncooperation fund for projects related to the harmonisa-tion, protection, promotion and enforcement of trade-marks and designs in the EU; and bigger questionsabout the functioning of the CTM system.

July 2009The Commission puts out a tender for a study ofEurope’s trademark system.

October 2009European Commission awards contract for study to theMax Planck Institute, which starts to consult with trade-mark owners and users.

January 2010OHIM publishes its submission to the Max PlanckInstitute, calling for rebates to owners of CTMs. INTAmakes a preliminary submission, setting out its settledpolicy on many of the issues, such as harmonization,consistency, the use requirement, well-known marks,opposition, classification and renewal fees.

June 2010INTA makes a presentation to the Max Planck Institutedistilling the views of 46 Working Groups—comprisingmore than 200 people across numerous INTA subcom-mittees—who had studied some 60 different aspects ofthe trademark system in Europe.

December 2010Max Planck Institute submits its Study on the OverallFunctioning of the European Trade Mark System to theCommission. After making more revisions following dis-cussions with Commission officials, it produces a finalreport in February 2011.

March 2011The Commission publishes the Max Planck Institute’s study.

May 2011The Commission holds a meeting with users’ groups togauge their reaction to the Institute’s study.

2012The Commission was due to publish its proposals forupdating the Trade Marks Directive and the Regulation.To date it has not published its proposals.

OHIM is no longer simply an IPoffice that grants CTMs and regis-tered Community designs. In March,EU member states agreed that itshould take on a new role: oversee-ing the protection of IP rightsacross Europe.

Three years ago the EuropeanCommission set up a EuropeanObservatory on Counterfeiting andPiracy as a platform for coordinat-ing actions to protect IP rightsthroughout the EU. Now politiciansin Europe have backed a regulationto rename the body the EuropeanObservatory on Infringements ofIntellectual Property Rights andhand its management to OHIM.

As part of its new responsibili-ties, OHIM now has the job ofenhancing understanding of thevalue of IP; improving understand-ing on the impact of infringementsof IP (by establishing a transparentmethodology collecting reliabledata); helping to raise awareness ofthe impact of IP infringements;developing training programs forpeople involved in the enforcementof IP, including in non-EU countries;and disseminating informationabout best practices.

Meetings of the Observatory willbe attended by representatives ofmember states and people from theprivate sector (which theCommission said will include con-

sumer organizations, SMEs and par-ticular industry sectors).Representatives of the EuropeanParliament and the Commission willalso take part in meetings.

The question of whether OHIMshould be given a leading role inhelping IP owners to enforce theirrights as well as granting them hasbeen a controversial one.

In 2010, representatives of INTA,

AIM, BusinessEurope, ECTA andMARQUES wrote a joint paper inwhich they said: “Such a role wouldbe a significant departure from thecurrent activities of trademarkoffices bearing in mind effortsalready being undertaken by otherinstitutions and law enforcementagencies. It would require a funda-mental change of their mission.”

But António Campinos, who tookover the presidency of OHIM inOctober 2010, has been committedto expanding the Office’s enforce-ment responsibilities from the start.In his first speech, he asked hisaudience of German IP owners:“What point is there having a reac-tive and efficient Community trade-mark and design registration sys-tem, if at the enforcement stage,each country does its own thing?”

OHIM takes on a new role

Trademarks in Europe: reforming the system

Annette Kur, one of the three authors of the MaxPlanck Institute’s trademark study

Protect your rights in Europe

Whether OHIMshould be given aleading role inhelping IP ownersto enforce theirrights has beencontroversial.

apparel company Levi Strauss & Co. and a retailer. LeviStrauss owns a trademark for a blank red tab made ofcloth, which appears on the pocket of its jeans. When itaccused a business rival of infringement, the defendantclaimed the plaintiff had used the red tab only as a red tabwith the word LEVI’S and said that only the use of thismark (which was also registered) was genuine.

The third case is between UK optician chain Specsaversand supermarket Asda. The Court of Appeal in Londonhas asked judges in Luxembourg a series of questions,including whether a company’s enhanced reputation in acolor can be taken into consideration in an issue of con-sumer confusion, even though the trademark had not beenregistered in color.

“The issue of use is especially important for logos anddevice marks which tend to be updated and evolve overtime,” says Bakker. “Trademark owners and their counselshould be even more careful when it comes to these marksin deciding what they should file for and how they usetheir marks.”

RM20 Regional Update: EuropeanCommunity (OHIM, ECJ) takes place todayat 12:00 pm in room 146 ABC

RT01 Regional Update: Europe is tomorrowat 10:15 am in room 207 AB

Feature EU trademark reform


The Max Planck Institute’s Study onthe Overall Functioning of theEuropean Trade Mark System was290 pages long. Here are some ofits key recommendations.

Classes and feesApplicants should no longerreceive three classes for the priceof one. Instead, fees should bepayable for each class to avoidovercrowding the Community trademark register.

Genuine use This is a controversial—and politi-cal—issue for the European Unionand a key case, Onel, is pending atthe Court of Justice of the EU. Theissue is whether the test of gen-uine trademark use can be satis-fied by use in just one memberstate, even if that state is as smallas, say, Cyprus or Malta. The

Institute reached no conclusionbut said it strongly supports aninterpretation of the genuine userequirement for Community trade-marks which disregards politicalfrontiers.

Fees and redistributionThe Institute agrees in principlethat 50% of fee income should bedistributed to member states.

Trademark law in memberstatesThe Study lists 10 optional provi-sions in the Trade Mark Directive,which is designed to harmonizelaws in member states, that it saysshould become mandatory, includ-ing the absolute ground for refusalbased on bad faith, relative refusalbased on conflict with a reputedmark and extended protection fortrademarks with a reputation.

Well known and unregisteredmarksThe Study noted that IP ownerswanted more clarity on the rela-tionship between well known andreputed marks. To provide this itsaid that earlier well known marksshould be entitled to claim protec-tion as earlier marks in oppositionand invalidation proceedings alsowhere protection in the absence oflikelihood of confusion is claimed;the Trade Mark Directive beamended to give unregisteredmarks (as well as registeredmarks) that are well known in amember state protection againstinfringing use; and trademarksthat are well known in the EUshould be given the same protec-tion as registered CTMs, entitlingtheir owners to claim protectionagainst infringing use in actions inCTM courts.

Recommendations for reform

“The issue of use is especially important for logos and devicemarks which tend to be updated and evolve over time.”

Your client’s brands are being infringed, with facto-ries in Asia shipping thousands of counterfeit goodsto customers in the U.S. and Europe. You’ve sent

cease-and-desist letters, worked with customs to detaininfringing goods and even conducted some daring raids inChina. There’s not much more you can do, right?

Wrong, says Jennifer Hamilton of MLB Properties, whohas put together today’s panel on alternative approaches tocombating counterfeiters. She argues that brand ownersare being more creative in tackling the menace of counter-feits sold on rogue websites and distributed by mail world-wide. “Brand owners have found the standard approacheswere not enough,” she says, pointing to the scale of theproblem, the ease of distribution and the low penalties.“It’s become difficult to deal with that and it’s like Wack-a-Mole: more and more keep popping up.”

Tomorrow’s session will therefore look at three newtechniques used by brand owners in the battle againstcounterfeits. It will feature a brand owner, a governmentrepresentative and outside counsel, each of whom will dis-cuss a recent successful anticounterfeiting effort.

ITC actionThe first strategy discussed will be the use of the InternationalTrade Commission (ITC) to block infringing goods being

imported into the U.S. While the ITC is well known as aforum for patent disputes, particularly in the high-tech area,it also hears cases involving other IP rights.

There have been about five recorded trademark finaldeterminations at the ITC, all of them general exclusionorders. Most recently, Red Bull won a general exclusionorder barring grey market RED BULL energy drinks fromentering the U.S.

On March 5 this year, the ITC issued an initial determina-tion recommending a general exclusion order against coun-terfeit Louis Vuitton products. The company had filed amotion for summary determination of a Section 337 (intel-lectual property) violation naming several respondents based

in China, and requested a gen-eral exclusion order barring allgoods in violation of eight ofthe company’s trademarks forits Toile Monogram marks(used on the company’s hand-bags, luggage and accessories).

Chief Administrative LawJudge Charles Bullock grant-ed the request, saying thatbecause a pattern of Section337 violations has been iden-tified and it is difficult todetermine the source of theinfringing products, a generalexclusion order—as opposedto the more common limitedexclusion order, which offersremedy against infringinggoods made by the namedrespondents only—is appro-priate. The ITC order is aninitial determination andmust be upheld by the fullCommission. This is howeverlikely as all of the respon-dents in the case have so farfailed to turn up.

Valérie Sonnier of LouisVuitton/LVMH FashionGroup in France will discussthe case today, and Hamiltonsaid she is looking forward tohearing about it: “LouisVuitton is very much at theforefront of trying new ideasand are leading the way.Valérie will explain how theybrought the case, how it wasconducted and what otherbrand owners can learn.”

The 150-paddle gameThe second strategy to be discussed today will be workingwith payment providers to shut down websites selling coun-terfeit goods and then seize the infringer’s revenues. In somecases, brand owners have been able to shut down more than100 domains with one action, and seize the proceeds storedin PayPal accounts. While individually these may not amountto much, collectively they can raise more than enough to payfor the cost of enforcement. Scott Gelin of GreenbergTraurig, will discuss this trend in tomorrow’s session.

Hamilton says this approach is a cost-effective way forbrand owners to tackle the problem of online counterfeitsales, and cumulatively such cases can have an impact:“Every time you disrupt the counterfeiter’s chain andincrease its cost of doing business it just makes it that muchmore difficult.” The problem of counterfeiters simply set-ting up new sites remains, but mass actions shift the balanceof power to the brand owner. “It’s still playing Wack-a-Mole but with 150 paddles instead of one,” she adds.

The panel will also discuss how best to work with pay-ment providers and whether a system similar to eBay’sVeRO can be implemented.

Government actionThe third and equally important part of the counterfeitingcounter-attack is the role of government and that will beaddressed by Rana Saoud, of the National IntellectualProperty Rights Coordination Center.

The IPR Center has been active in tackling so-calledrogue websites over the past two years, and has been ableto seize more than 700 of them. However, as with privateactions, the problem has often been that the counterfeiterssimply use a new domain.

But in a landmark case last month, U.S. authoritiesseized nearly $900,000 from bank and PayPal accountsused to store the proceeds from selling counterfeit sportsjerseys. The seizures, obtained following a court order,came against domain name operators in China whose siteshad been shut down in 2010 but who had simply set upnew domains. The investigation was conducted by theIntellectual Property Rights Coordination Center andICE’s Office of Homeland Security Investigations.

Follow the money“These have all been really positive developments andshould have some impact,” says Hamilton. She adds thatthey show that the anticounterfeiting battle is most effec-tive when it goes beyond simply taking down websites andhits the infringers in the pocket: “When you get to themoney, that’s when you have the most impact.”

WT01 Alternative Approaches toCombating Counterfeiting takes place at10:15 am tomorrow in room 145 AB

Preview Anticounterfeiting


Three ways to beat counterfeitersFrustrated with traditional approaches, some brand owners are succeeding with new anticounterfeiting strategies.James Nurton spoke to Jennifer Hamilton of Major League Baseball about three recent developments.

“It’s still playing Wack-a-Molebut with 150 paddles insteadof one.”

Louis Vuitton has been successful in an ITC case inthe U.S.

H ermès, Apple, Land Rover and Pfizer: the list of IPowners who have suffered trademark registrationwoes in China includes some A-list brands. The les-

sons they have for foreign companies seeking a slice of theChina market is clear: register a local language version ofyour mark before a trademark squatter gets the chance to.

But while registering a trademark in the local script is acrucial step for IP owners who want to do business inChina, it’s only the first. Once a mark is on the trademarkoffice’s books, the owner needs to understand how it mustuse it to maximize the protection that registration offers.This is an issue being explored by a session today:RM50—Regional Update: China, Japan, South Korea. Init, panelists from China and Japan and South Korea willexplain how brand owners should use their trademarks tominimize the risk of third-party challenges.

Practical lessons“We want this to be a very practical session where we usereal examples to show the requirements of the local trade-mark laws,” says Beijing-based Chris Shaowei of NTDPatent & Trademark Agency Ltd., who is moderating thesession. Shaowei will consider the rules in China, withJinsang Jeong of Jeong & Park explaining how trademarklaw is applied in South Korea and Nami Togawa from

Japan’s Seiwa Patent & Law outlining the position inJapan. Despite the common linguistic heritage, each juris-diction has distinct rules when it comes to mandating howtrademarks must be used in practice.

In Japan, for example, Togawa says that applicantsshould register exactly the same mark that they plan to usein the country. They do not need to file a correspondingJapanese mark if they plan only to use the English-languagemark, as long as the Japanese transliteration is similar to thenative English pronunciation of the mark. “This is becausethe scope of the trademark protection will extend to its sim-ilar marks (in terms of sound),” he says. Where the translit-eration is too dissimilar to the original mark, Togawa recom-mends the IP owner file two applications, one for an Englishmark and one for a Japanese mark: “If you file a trademarkapplication indicating an English mark and Japanese mark intwo lines, there is a risk of non-use cancellation if you useonly the English mark or the Japanese mark in Japan.”

File widely in ChinaIn China, however, the country’s first-to-file trademark rulesmean that IP owners should consider filing as widely andoften as the IP budget allows. Shaowei recommends IP own-ers apply to protect their original foreign language mark, apinyin version (a transliteration) and a character trademark.They should also consider filing their word mark and anylogo separately, including an additional application for thecalligraphic version of a plain text character mark. Once themarks are registered, IP owners should take care how theyuse them on their goods. Making a change, even if only asmall one, can lead to big problems.

That’s because Chinese officials are particularly strictabout ensuring that marks are used as registered. In prac-tice, trademark owners can find it very difficult to enforcean English-language trademark registered in capital letterson a black and white background if they use it in a differ-ent way on their products.

“If you change the way you use the mark then it may notbe considered ‘continual use’,” warns Shaowei. “That meansthat another party can file a cancellation request.” In China,unlike many jurisdictions, anyone can ask for the mark to berevoked, not just a party with an interest in the brand. “It’scheap to lodge a cancellation request for non-use and the

Preview China, Japan, South Korea


Making—and keeping—your mark in AsiaEmma Barraclough explains why linguistic and legal differences make it so important to understand therequirements for trademark use in Asia.

Continued on page 16

T rademark trolling is a relatively new and undefinedarea. Today’s session will therefore take a broadunderstanding of it, explaining every aspect from

mere aggressive enforcement to deceptive actions by individ-uals with no business of their own. Each speaker has respon-sibility for different parts of this range, with case studies andanecdotes set up to explain their real-world implications.

If one thing defines all trademark trolling, it is theattempted enforcement of rights by an individual who—allegedly—has no business owning them. “It is the attemptto own the unownable,” in the words of speaker LanceJohnson, from Roylance, Abrams, Berdo & Goodman.

The spectrum, for Johnson, then goes from “outrightfraud, where the party asserting ownership has no legiti-mate rights whatever to the trade mark” to, at the otherend, “a quasi-legitimate claim, deliberately set up to tryand win financial compensation.”

For example, if a company was coming out with a newproduct and word of it leaked out—including the name—then a trademark troll would immediately try to registerthan domain name, buy AdWords on Google, and set up afake company using that name so that they could try toassert prior rights.

“It’s more like claim jumping,” says Johnson. “The idea

is that you establish these quasi-rights and then make itmuch easier for the legitimate company to buy them fromyou than to go through the legal processes necessary tohave them transferred or canceled.”

Troll or not?What Johnson leaves out of his definition of trademarktrolling is aggressive enforcement of more legitimaterights, and it’s controverial whether this subject should beclassified as “trolling.”

“The law, particularly on the civil side, does not have agood enforcement mechanism to stop aggressive enforce-ment,” says Johnson. “Because it’s subject to what a judgemight think, what are proven to be legitimate rights,whether this is the expansion of an existing right, plus theconcept of dilution and whether something is a legitimateexercise in protecting a famous brand.”

Adam Cohen of Kane Kessler will talk about aggressiveenforcement on the panel. “The type of people involved inthis varies considerably. There are individuals, who oppor-tunistically register trademarks like OCCUPY WALL STor LINSANITY. Then there are small companies that try toexclude the bigger rivals by owning descriptive phrases orelements crucial to design in their industry. And then there

are the big companies who could be seen as doing the lat-ter on a larger scale. There are big brands on either side ofthat debate.”

In Cohen’s view, these types of cases are often dealt withby lawyers individually, when they come up, but few peo-ple are looking at them as a trend. “Do we want legislationto address this? Or will that just lead to greater uncertain-ty, both now and when we actually have the law? Andeither way, what do we responsibly advise our clients inthe meantime?” Cohen asks.

Pure trolling Lance Johnson’s most significant experience was with anindividual who certainly qualified as an aggressiveenforcer. Johnson will tell the story of how he filed coun-terclaims against Leo Stoller’s claims for trademark owner-ship, and eventually won an injunction that prohibited himfrom participating in the federal courts.

“I hope that working through some of the strategiesused in that case will provide some useful tips for lawyersand their clients that come up against similar situationsthemselves,” says Johnson. In particular, he will provideadvice on ways to counteract a troll’s actions and makethem reconsider whether the action is worth pursuing.

Preview Trolling


Who are you calling a troll?As with patents, where the concept of trolling in intellectual property began, there is much disagreement over whoqualifies as a trademark troll. But one thing is certain, says Simon Crompton: it is now a trend, and one that thespeakers in today’s session believe lawyers need to take seriously.

“That’s the hardest thing about tackling a troll: convincingthem that this is more hassle than it’s worth, so you can settlequickly or get out of the case altogether,” says Johnson,adding that the best route can be to craft a civil claim forunfair trade practices. Unlike a criminal case that wouldrequire proof beyond reasonable doubt, this civil route mere-ly requires proof based on a preponderance of the evidence.

“The key is to put something in front of the judge thatthey can understand—the idea being that if something iscriminal in nature it must by definition be civilly unfair toengage in that conduct,” says Johnson. He hasn’t used thestrategy since, but only because the opportunity hasn’t

arisen reinforcing Adam Cohen’s point about seeing thesecases as a trend, even if they only come up rarely.

The chair of the panel is Mitch Milstein of Quiksilver, whowill relate his experiences of trolling. He came up againstStoller when he joined Quiksilver six years ago, as Stoller wasattempting to enforce rights to the trademark STEALTH—which Quiksilver used as one of its ‘style’ or product names.The company creates thousands of these each season andmost only appear in small print on garment labels.

“That was my first experience, but we’ve come upagainst it a few times since,” says Milstein. “It’s somethingthat can be draining on a company, in terms of time and

money. The STEALTH case was actually quite easy, butothers have gone deep into litigation. We’ve always settledthose, but at some point if there is one that is ridiculousand we feel we shouldn’t pay, then we will take it to trial.You need to stand up and make a point.”

Johnson has similar feelings on the issue—one reasonhe eventually resorted to working for his client in theStoller cases on a pro-bono basis. And all speakers will bekeen to make that point to the audience today.

CM20 Trolling the Trademark Waters takesplace in room 207 AB today at 12:00 pm

Preview Trolling

www.manag ing ip .com INTA Da i ly News Monday, May 7 2012 1 1

One of the aims of the AmericaInvents Act (AIA) was to reduce theamount of patent trolling by lower-ing the cost of pursuing IP rights.But while lawyers are optimisticthat it will help in the fight overnuisance patents, will it have anypositive effects on trademarktrolling?

Lance Johnson is skeptical:“The procedural changes wroughtby the AIA for civil litigation pre-clude the type of mass defendant

cases that have characterizedpatent infringement allegations bynon-practicing entities seeking apayoff. Trademark infringement is,by its nature, handled on a case-by-case analysis that makes theproceeding personal between theplaintiff and the defendant. Massallegations of trademark infringe-ment are very rare, if they occurat all.”

Trademark trolling also ofteninvolves cases of outright fraud,

which will obviously still remainsubject to laws of perjury and theprocedural safeguards around onlysigning and filing genuine docu-ments.

As to the cases of aggressivetrademark enforcement, which onlysome think should be consideredpart of the trolling debate, theseremain a matter of perspective: oneman’s aggressive enforcement isanother’s defence of legitimaterights.

The impact of the America Invents Act

F ollowing a markup attended by top industry lobby-ists late last year, a small but dedicated group ofHouse Judiciary Committee members forced the

sponsor of controversial legislation to put off a final com-mittee vote on HR-3261, the Stop Online Piracy (SOPA)Act. Dozens of lobbyists were present for the markup ofthe bill, which lasted 12 hours. To ensure that they securedseats in the hearing room, many hired line sitters—gener-ally unemployed local men contracted with professionalfirms. More than 40 line sitters stood outside the hearingroom an hour before the 10:00 a.m. start of the SOPAmarkup, and many had arrived the night before.

Several movie studio lobbyists were among thebiggest spenders on line sitters, who can cost as much as$50 per hour. This allowed three prominent industrylobbyists to sit in the front row—The Motion PictureAssociation of America’s Michael O’Leary, Viacom’sDeDe Lea, and News Corp’s Rick Lane—while AlecFrench, outside lobbyist for NBC Universal and severalHollywood unions, sat directly behind O’Leary in thesecond row.

Those seats proved especially useful during the firsthour of the markup. The Committee clerk was forced toread aloud the entire 78-page bill as the result of a delay-ing tactic by the opponents, and while she did so the

Hollywood lobbyists were clearly visible behind her anddirectly to her right.

Fred von Lohmann, Google’s copyright counsel, onlymanaged to secure a third-row seat, but he made the mostof it. As other lobbyists in the audience slumped in theirseats—due to fatigue, boredom, or incessant typing ontheir tablets or smartphones—von Lohmann sat on theedge of his seat, ramrod-straight. He maintained this pos-ture for hours, and his head rose up clearly above those infront of him, making the lobbyist for the company thatwas leading the charge against the bill visible to everyCommittee member.

A fact of lifeThis is what lobbying looks like in the United States.While SOPA and its companion, the Protect IP Act(PIPA), may ultimately have been postponed due to thewidespread Internet campaign led by sites such asWikipedia, lobbying has always played a crucial role inshaping U.S. legislative decisions. Google, for example,increased its 2011 lobbying budget to $9.68 millioncompared to $5.2 million in 2010, in part to challengebills like SOPA and PIPA, which it views as detrimentalto its business model.

Results like this mean that lobbying is a fact of life, and

a specialized skill that is in high demand. But it can alsocause problems and invite criticism for companies, since allspending and involvement in such activity is publicly avail-able. It can raise serious issues for private practitioners aswell, who may have conflicts between clients on key issues.Often, a private practitioner may merely be a member of atrade organization involved in lobbying, and be entirelyunaware that the affiliation could cause ethical problems.These are some of the topics that will be debated duringtoday’s session, titled Doing the D.C. Shuffle: How Do TheTrademark Attorney, Lobbying and Ethics Mix?

Get prepared“Many lawyers don’t realize there are special rules onlawyers acting as lobbyists,” says Brett Kappel of Arent Fox,who will be speaking on today’s panel. Kappel says, despitea slowdown on lobbying activity overall recently, “there’sbeen a lot of lobbying on IP issues and Internet privacyrecently.” With IP ever more in the spotlight, INTA memberswould be well-advised to stop by to brush up on the rules.

CM51 Doing the D.C. Shuffle: How Do the Trademark Attorney, Lobbying andEthics Mix? takes place in room 202 ABat 3:45 pm today

Preview Lobbying


Getting your message to CongressWith IP issues front and center in Congress, attorneys need to know when their stance on a particular topic maybe crossing the line into the highly regulated world of lobbying. Eileen McDermott and Patrick Ross explain.

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Intellectual property attorneys specializing in trademarks, patents,copyrights, foreign investment, technology licensing, franchising,

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ProsecutionInfringementLitigationIP

Preview Indigenous rights


W hen Italian car maker Fiat launched a 2006 adcampaign featuring a parody of a Maori danceritual known as the Ka Mate haka, the New

Zealand government advised the ad was culturally insen-sitive, but could do nothing to stop it. Even after thegovernment awarded the Maori rights to the haka in2009, there was still little they could do to keep thedance from being exploited commercially around theworld.

“The threats to identity are not internal but global,”said New Zealand’s Waitangi Tribunal, which hears com-plaints about misuse or misappropriation of Maori cul-ture, in a recent report. “They are the genericizing effectsof a lowest-common-denominator consumer culture andthe ease with which IP-based ventures can pluck Maoriculture for its uniqueness and saleability, and bend it tocommercial ends,” the report continued.

That statement perhaps forms the crux of the challengeover protecting indigenous rights and traditional knowl-edge around the world. From South America to Africa andCanada, indigenous peoples are becoming increasinglyconcerned about their cultural secrets being discoveredand used for profit by the Western world. As the Internetmakes traditional knowledge (TK) more accessible, thedanger grows.

But how to draw the line between keeping valuable cul-tural knowledge in the public domain so that it is easilyavailable to those who need it and protecting it from mis-appropriation continues to largely elude indigenous com-munities, governments and IP rights advocates alike.Today’s session Protection of Indigenous Rights: AnIncreased Need will educate attendees about the growingneed to develop an international framework to facilitatethe protection of TK and Traditional Cultural Expressions(TCE) within indigenous communities, and the sometimesuneasy relationship which has historically existed betweenTK and trademark rights.

WIPO developmentsIn February 2011, a WIPO Working Group comprisingsome 200 traditional knowledge specialists from memberstates, indigenous communities and industry agreed to asimplified text consisting of 11 substantive articles. WendWendland, director of WIPO’s traditional knowledgedivision, said the latest text is “shorter and more stream-lined” than previous drafts. “The experts have got rid ofa lot of clutter,” he added. The text comprises the policyobjectives and guiding principles, followed by 11 articles(see box).

Each article includes a commentary, with commentsand questions raised by different delegations. “It is lookinglike a negotiable text for the first time,” explainedWendland at the time.

In a recent interview, WIPO Director General FrancisGurry said that the Office’s Intellectual Property andGenetic Resources, Traditional Knowledge and FolkloreCommittee (IGC) is making “good progress” on indige-nous rights, and in September of last year at the WIPOGeneral Assemblies, the IGC claimed “great progress”because it agreed on the renewal of its own mandate towork on these issues.

The IGC mandate represents more progress than hasbeen made on the issue so far, but the challenges are

Culture clashHow best to protect indigenous rights has become a top issue for WIPO, INTA and, increasingly, governmentsaround the globe. Eileen McDermott examines some of the key priorities.

The All Blacks perform the Ka Mate haka

Preview Indigenous rights


great. In part, this is because IP protection is far fromthe most pressing issue on many indigenous groups’ lists.“In many cases they are still fighting for some basicrights,” says Keri Johnston of Johnston Wassenaar inCanada, who is moderating today’s panel. “In Canadaespecially, I know that’s true. There is a hierarchy ofneeds,” she adds.

But as governments begin to take more action on essen-tial rights such as housing and education, indigenousgroups are becoming more aware that both defensive andpositive IP protection (see box) can be crucial to the preser-vation of their unique knowledge and customs.

Government actionIn July last year, New Zealand’s Waitangi Tribunalreleased a report recommending the formation of a Maoripatents advisory committee to advise the Commissioner ofPatents and encouraging legislative reform to require thatcommercial use of taonga (treasure) works be approved bykaitiaki (guardians). The report is non-binding on theCrown, however, and took 20 years to be released.

The South African parliament passed a law inNovember of last year to protect traditional knowledgethat was widely criticized. The Intellectual Property LawsAmendment Bill introduces separate provisions on tradi-

tional knowledge into the Copyright, Designs, PerformersProtection and Trade Marks acts. It also includes an over-arching provision that the IP rights created by those actsapply to traditional knowledge as well. But this creates aseries of conflicts that are likely to make the law unwork-able. It doesn’t explain how to prove the originalityrequired for copyright, for example, in traditional arts orpieces of music that are hundreds of years old. The sameapplies to design protection, which would require someproof of novelty. South African lawyers said they plan toadvise their clients to not register traditional knowledge

• Subject matter of protection • Beneficiaries of protection • Protection against misappropriation • Principle of prior informed consent • Administration and enforcement of protection • Exceptions and limitations • Duration of protection • Formalities • Transitional measures • Consistency with the general legal framework • International and regional protection

WIPO Working Group policy objectivesand principles

Defensive protection aims to stop people outside the community from acquiring IP rights over traditional knowl-edge. India, for example, has compiled a searchable database of traditional medicine that can be used as evidenceof prior art by patent examiners when assessing patent applications. This followed a well-known case in which theUS Patent and Trademark Office granted a patent (later revoked) for the use of turmeric to treat wounds, a prop-erty well known to traditional communities in India and documented in ancient Sanskrit texts. Defensive strate-gies might also be used to protect sacred cultural manifestations.

Positive protection is the granting of rights that empower communities to promote their traditional knowledge,control its uses and benefit from its commercial exploitation. Some uses of traditional knowledge can be protect-ed through the existing IP system, and a number of countries have also developed specific legislation. However,any specific protection afforded under national law may not hold for other countries.

Source: WIPO Background Brief N°1

Two types of IP protection are being sought:

Continued on page 16

Preview India, Pakistan and the Middle East


I t’s a problem that keeps IP attorneys up at night: some-one has registered your trademark in an unfamiliarmarket. What’s worse, your mark, even if is well-

known all over the world, is unregistered there.That is the topic of tomorrow’s panel on the protection

of unregistered trademarks in the Middle East, Pakistan,and India, moderated by Shwetasree Majumder. SaraHolder, managing partner at Rouse in Dubai, Sana ShaikhFikree, an associate at Vellani & Vellani in Karachi, andJustice G S Sistani, sitting judge at the Delhi High Court,will discuss recent developments in their respectiveregions. Justice Sistani will also report on the state ofIndian courts in handling IP matters, using data showingtrends in case disposal and system efficiency.

The panelists will discuss the challenges of enforcingunregistered trademarks, providing practical tips for brandowners on protecting their rights, and compare the differ-ent jurisdictions’ approaches to this developing area.

It’s nice to be well known, but even better tobe registeredWhile Pakistan, India, and the Middle East jurisdictionsrecognize unregistered trademarks, protection is (asHolder puts it) “an uphill battle”. All three regions giveadditional protections to well-known trademarks, even ifthey are unregistered, but Holder believes it can be expen-sive and difficult to prevail without registration. She pointsout that getting well-known recognition in court can becostly, not only in gathering the evidence, but because thedocuments will often need certification, translation, andother legalization requirements.

Fikree also believes that having registration is preferablein Pakistan. In order to succeed in an infringement claim,the brand owner must register the trademark and showthat the defendant is unfairly using the mark. If the trade-mark is unregistered, the brand owner must make a pass-ing-off claim and establish that the mark is well known.“Brand owners with well-documented evidence of localand worldwide use have a good chance of succeeding in a

passing-off claim,” says Fikree. She points out that ideally,a brand owner will have both registration and good evi-dence to bring the infringement and passing-off claimstogether, but there are still options even if the trademark isunregistered.

Because of these challenges, there are “significantadvantages” to having a registered trademark, saysHolder. “In many countries in the Middle East, the level ofunderstanding of intellectual property rights is still devel-oping, so there is a lot of emphasis in simply having thispiece of paper,” she says. Holder also points out that busi-ness regulations in the region often require documentationsuch as proof of trademark registration anyway, so itmakes sense to take the time to register.

Preparing yourselfThe panelists have a number of practical tips for brandowners and attorneys. If possible, Holder recommends thatbrand owners keep robust portfolios with the logos/labelsregistered separately, which allows for more flexibility indefending their marks. Good record keeping is also impor-tant for establishing a trademark as well known. For thispurpose, Fikree says that a wide variety of documents canbe used, such as advertisements, product registries, andeven invoices that clearly refer to the trademark.

RT20 Regional Update: India, Pakistan,Middle East takes place tomorrow at 11:45 am in room 147 AB

Advice on protecting unregistered marksThe speakers on tomorrow’s panel on India, Pakistan, and the Middle East will talk about protecting unregisteredtrademarks, and the groundwork that brand owners need to lay down to defend their marks. Peter Leung reports.

In a 2009 case, Rolex SA v. AlexJewellery, the Swiss watchmakersued for an injunction againstAlex Jewellery to stop the defen-dant’s use of the ROLEX name injewellery. ROLEX is registered inClass 14, which covers clocks andwatches. Alex Jewellery did notsell watches, and only used themark on dissimilar goods andservices.

Rolex sought an injunction onthe ground that its mark was well-known under Section 2(4)(c) of theTrademarks Act. Its evidenceincluded advertisements, press arti-cles, registrations, and court ordersin other countries. Rolex also point-ed to its appearance in BusinessWeek’s list of global brands, whichis limited to brands worth at least

US$1 billion and with at least onethird of their earnings coming fromoutside their home market.

The Delhi High Court granted theinjunction. It found that the ROLEXbrand was well known to the rele-vant segment of the watch-buyingpublic and was known in Indiathrough magazines, even backwhen the country had importrestrictions.

The court did not accept

Alexander Jewellery’s defenses. Itrejected the argument that Rolexhad failed to defend the brand,pointing out that Rolex opposedAlexander Jewellery’s two attemptsto register the mark. The court wasalso unconvinced by the defen-dant’s claim that there would be noconfusion between ROLEX-brandedjewelry and watches, finding that abuyer would likely assume they arethe same brand. Finally it rejectedthe defendant’s most creativedefense, that its ROLEX brand wasbased on the name of the owner’sson Alex.

The case was seen as a positivesign that brand owners can prevailif their mark is well known in a par-ticular segment of society even if itis not known by the general public.

Well known in India case study

burden of evidence to show continual use lies with the trade-mark owner,” he says. Shaowei will look at the problemscompanies have experienced, including a company that usedthe mark HAGGAI on its product but had the trademarkcanceled because the original registration was for the wordHAGGAI plus a stylized outline of a letter H. Similarly, atool-manufacturing company with a registered trademarkthat included a logo, the transliteration of DANGONG andthe two characters Dangong lost its rights because the markappeared on the tools without the two Chinese characters.

Shaowei says it is vital to understand how marks shouldbe used in China. “Many foreigners still consider China to belike the Wild West and think that people don’t understandIP,” says Shaowei. “But local people are getting sophisticatedand some of them understand exactly how they can use thesystem to get a free ride.”

RM50 Regional Update: China, Japan,South Korea takes place in room 207 ABat 3:45 pm today

Trademarks in Asia

under the law, given its uncertainties, but to use existing IPrights instead.

INTA initiativesINTA has been following developments like these sincebefore the WIPO IGC was formed. The Indigenous RightsSubcommittee monitors WIPO and government progressand makes recommendations for best practices to INTAmembers. In a recent issue of the INTA Bulletin, MarionHeathcote of Davies Collison Cave and Barbara Sullivan ofHenry Hughes, who have been integral to INTA’s work onindigenous rights, outlined INTA’s recommendation tomembers in the face of continued uncertainty over mecha-nisms for protecting indigenous rights. “Trademark ownersneed not await the outcome of this debate to start develop-ing best practice guidelines to facilitate the recognition ofTCEs and to make appropriate decisions about their use intrademarks and brand strategies,” Heathcote says. “At thevery least, a program of awareness of indigenous issuesenables informed choices.” Johnston adds: “This is some-

thing brand owners should take up on their own becauseit’s the right thing to do.”

Suggestions for best practices will be one of the high-lights of today’s session, which Johnston says she conceivedof thanks to the passion Heathcote has had for this issue,as well as her friendship with Phil Fontaine, the FormerNational Chief of the Assembly of First Nations in Canada.Heathcote received INTA’s Volunteer Service Award for theAdvancement of Trademark Law in 2009 for her work onindigenous rights. She and Fontaine will join today’s panelas well, which is the first of its kind at an Annual Meeting.“From the moment I suggested the idea, INTA was 100%on board,” said Johnston.

The other panelists in today’s session, which will be heldat 10:30 am, will be Marcus Höpperger of WIPO and GiftSibanda of the African Regional Industrial PropertyOrganization (ARIPO).

CM01 Protection of Indigenous Rights: AnIncreased Need takes place in the Ballroomat 10:30 am today

Indigenous rightsContinued from page 9Continued from page 14

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W hen it comes to registering marks in LatinAmerica, there are three things today’s panelistswant attendees to know: how to maintain a

trademark registration, how to enforce their rights, andwhat kind of trademark usage can put their rights at risk.“The message we want to convey is: Don’t think that if youuse the mark, that has you covered for these countries,” saysMarcela Bolland, a partner at Uhthoff, Gomez Vega &Uhthoff in Mexico and the moderator of today’s LatinAmerica Regional Update. Although trademark owners maybe able to use their marks, local laws often make registrationkey to enforcement in Latin America, she says.

In many Latin American countries, a local companythat uses the same mark as a multinational company hasbetter rights, Bolland says. This is especially pertinent forcompanies that didn’t pick Latin America among theirearly markets. “It’s important for them to know that bynot entering these countries, at some point they could befacing risks—not only not being able to register marks, butalso being prevented from entering the market,” she adds.

The risks vary in each country. Some recent cases inMexico involve individuals registering marks ahead of a for-eign brand owner—who then finds himself prevented fromentering the market using his own marks. In cases such asthese, the brand owner often has little option but to sue.“Then, you’re talking about time and money for the brandowner,” Bolland says. In Chile and Costa Rica there are casesin which brand owners have registered marks but not used

them within the allotted time period. As a result, third par-ties have stepped in and the brand owner has been forced tonegotiate to try and buy back something they believe isalready theirs. “In truth, in all these cases, you will have toenter into a litigation scheme,” she says. “It’s much moreexpensive than having the mark from the very beginning.”

Among brand owners’ main concerns is having to reg-ister marks that are vulnerable to cancellation if they aren’tused within a three- to five-year period. “The strategy

there is to re-register,” Bolland says. “File a new applica-tion; cancel the old one. In other countries, I know in someAsian countries, that’s considered a bad-faith mark. But asfar as we’re concerned, that’s not the case within LatinAmerican offices.”

Preventing counterfeit goods from crossing markets canalso prove difficult, Bolland says. Mexican Customs offi-cials, for instance, do not seize goods in transit. “That’s aproblem,” she adds. “It may happen that the merchandisecould end up in other Central American countries. If youdon’t have IP rights, you will not be able to do anything inthose countries.” These cases mostly involve clothes,shoes, purses and other items of apparel.

Above all, Bolland says she wants to emphasize thatinside and outside counsel are there to help businessesachieve their goals. It’s a tricky relationship, she adds,because lawyers are often seen as a hindrance by the busi-nesses they serve: the “bad guys” who tell them they can’tcomplete a project. It becomes problematic when business-es decide to consult counsel only after a problem has beenidentified. “We’re trying to give them a clear perspective ofwhat the situation is in these Latin American countries,and hopefully help them convey these ideas to the peoplein charge of the project,” Bolland adds.

RM21 Regional Update: Latin Americatakes place in room 147 AB today at 12:00 pm

Preview Latin America


In Latin America, registration is key

One recent development panelists will be sure tomention is the Mexican Senate approving the MadridProtocol in late April. Bolland says this is encourag-ing, although no one knows exactly when theProtocol will take effect. Colombia’s politiciansapproved similar legislation last year and that coun-try is due to deposit its instrument of accession inJune for the WIPO-administered trademark system.

Mexico moves closer to Madrid

“Don’t think that if you use themark, that has you covered forthese countries”

S ocial media have become the dominant theme of theage. But it is only in the past few years that trade-mark lawyers have realized how much Facebook,

Twitter and the rest will change their profession. Social media bring brands much closer to their customers.

This has many benefits, but it also means legal action—including attempts at trademark enforcement—has market-ing and PR ramifications that it rarely had in the past.

Tomorrow’s panel, led by Scott E. Thompson ofGreenberg Traurig, will be structured around a hypotheticalexample, with speakers laying out the issues that a consumerproducts company faces when launching a new brand andattempting to harness the full force of social media.

The company plans to not only promote the product,but also run a competition online and talk pro-actively toits consumers. The scope of the campaign—and so the ses-sion—will be broad, taking in mobile devices, apps, blogsand push-direct marketing techniques.

“At every stage we will compare the strategy of thishypothetical company to successful strategies othershave employed in the real world,” says Thompson. Oneexample is Thompson’s client Evian, which launched anadvert for its bottled water online back in 2009 featur-ing babies on roller skates dancing to rap music, all cre-ated through CGI technology. The international version

has now had 55 million views, the USversion 17 million.

“That was just launched online, tokind of stick a toe in the water and testreaction. Now more and more brandslook to social media first,” saysThompson. There was also a ‘makingof’ video for the advert, which had 5million views, and last year Evian madea follow-up, the Director’s Cut, show-ing adults in T-shirts with baby prints.

Such strategies are cheaper, more flexible and reach abroader audience than traditional advertising. The legalrisks, however, are equally broad, with the potential forcriminal sanctions in almost any country where the inter-net is accessible.

Elliot Basner at Diageo, who is also speaking on the panel,says this is a particular issue for his company. “As a drinkscompany you need to be very sensitive to how the law variesbetween jurisdictions,” he says. “The question is, what doyou do when something involving the company on socialmedia is fine in 20 countries but at risk in another 30?”

But while the law is developing, countless examples andhorror stories point the way for dealing with social mediaday to day. First, think global. An isolationist attitude is

impossible to maintain given the scope ofthe Internet; you need to think outside yournormal jurisdiction. Second, think outsidethe box. “Because the law doesn’t addressthe issues, you need to have a creative legalmind and look at what is a reasonableextension of the law,” says Thompson.Third, do a risk analysis exercise inadvance. Consider all the cultural risk, PRrisk and legal risk in various countries andanticipate as much as you can.

In the end, though, when a law is in transition the mostuseful resource is other lawyers. Their experiences and rec-ommendations for what has worked for them are invalu-able. Thompson refers to this, and in particular the audi-ence at INTA, as the “brains trust” of trademark experts.“We will find out through discussion, through argumentand most importantly through the questions we get fromthe audience, how social media is living and workingaround the world,” he says.

CT50: Social Media—An Ever-Changing,Challenging and Competitive World takes place tomorrow at 3:30 pm in room 146 ABC

How to harness social mediaFacebook and Twitter are becoming more important for trademark counsel every day, yet the law is still uncertain.Simon Crompton explains how a hypothetical consumer product could produce some useful recommendations.

Preview Social media


What is your role?I am senior counsel at the office of the general counsel forAmerican Red Cross. I am the IP department! I manage allsorts of matters including patents, copyrights, trademarks,right of publicity, entertainment, domain names and socialmedia—working a lot with our IT teams.

I’ve been here since 2008 and prior to that I was assis-tant general counsel for Wal-Mart Stores for about fouryears, doing copyright and clearance work. Before that Iworked for the law firm K&L Gates in Pittsburgh, PA.

I grew up in Baltimore, MD and wanted to move clos-er to home and I saw this opportunity. I was really excitedabout the opportunity to work with American Red Cross.

What is American Red Cross?A lot of people are familiar with the Red Cross in times ofdisaster, but that’s just the tip of the iceberg. The AmericanRed Cross is one national society within an internationalmovement.

There are five lines of service: one, we shelter, feed andtake care of survivors of disaster from a house fire to a big-ger disaster. Two, biomedical services: we provide nearlyhalf the US blood supply, as well as research related toblood disorders. Third, we teach life-saving skills such asCPR, lifeguarding and even pet CPR. Fourth, we help mil-

itary families connect with active service members andprovide support for coping with stress, at hospital and psy-chological help. Five, humanitarian aid: we provide inter-nationally whenever there is an emergency as well as fight-ing malaria, measles and all sorts of things.

It is a challenge. We’re not a government agency but theAmerican Red Cross is expected to be there when there’s adisaster. We’re a charity given responsibility by the govern-ment to lead when there’s a national emergency. We rely ondonations and volunteer time.

What are the IP issues that arise?We’re lucky that the Red Cross is one of the most iconicsymbols in the world. We spend quite a lot of time protect-ing the use of the emblem and the words, which aregrounded in the Geneva Conventions. Harry Dunantmobilized a group of people to help the wounded and itwas through that he called for the creation of nationalrelief societies. Their symbol became a symbol of neutrali-ty and is protected by the Geneva Conventions. Eachnational society has its own statute to protect the wordsand each society has an obligation to further the missionand also protect against misuse.

We’re lucky that a lot of organizations want to partnerwith us for fundraising. A lot of the work I do is licensing

the brand to people who want to help us fundraise or giv-ing instructions on enforcement. It’s really interesting work.

Do you see a lot of infringement?We do have to prevent misuse. We have trademark regis-trations in addition to the statutory protection. We take areally pragmatic approach. You’ve got to inform peopleand treat it based on the nature of the abuse. Don’t justsend out form letters. But if there is fraudulent use, we takepretty aggressive steps.

There are nefarious people everywhere. The good newsis that people who honestly didn’t know, once we tell themit’s not just about us being a bully but about cutting outconfusing uses, they are responsive. We say it’s more than atrademark, it happens to be a trademark but it’s more, it’sa symbol of hope. Some people just want to make a buckand they know around the time of major disasters that RedCross will be out there and they can create fraudulent web-sites. We’re talking about protecting the goodwill like anycorporation would but it really has a deeper meaning.

We’re lucky. Most times we send a letter or reach out, peo-ple will stop. Often it’s just lack of knowledge. Sometimes wedo have to seek local or federal law enforcement or take moreaggressive action. We’re aware we’re using donated dollars sowe have to be pragmatic. We write pretty persuasive letters.

Profile Debra Hughes


Embracing an international emblemDebra Hughes of the American Red Cross tells James Nurton about the unique challenges of protecting theAmerican Red Cross brand in the United States.

What trademarks do you have?We have the cross in red and the words protected and alsoother trademarks used around certain campaigns. We relyon the strength of our iconic brand and don’t need to reg-ister a lot.

Our primary community we’re chartered to serve is theU.S. But with the global way things occur on the Internetwe collaborate with the other societies.

The Internet must be important for fundraisingand awareness?It’s absolutely essential. The Internet is efficient and cost-effective. We have our website and a blog and a Facebookpresence. We rely on online media to communicate withthe world at this point.

American Red Cross has really embraced social mediaand I’m proud of the free flow of information and discus-sion rather than taking the approach that dialogue is a badthing. Our social media policy is pretty cutting-edge andone of the best in class among non-profits. We don’t mindhaving that honest dialogue.

We would be concerned if there were fraudulent pagesof websites. As an IP attorney, it was eye-opening for meto embrace a new approach to content.

Do you see much online abuse?We do. The great news is we have a wonderful system tokeep track and monitor that. The public are great support-ers too and they tell us. They’re as incensed about fraud aswe are, and will go up to people even at a local level. Itmakes enforcement really nice. Everybody wants REDCROSS to be protected. Just like with any strong brand,people do try to align themselves with it so we try to dealwith it quickly and cost-effectively.

What do you enjoy most about your role?In my free time I spend a lot of time volunteering with mysorority Sigma Gamma Rho, which I’ve been involvedwith for 22 years. Coming to the American Red Crossmeshed with my desire to provide service. I believe in whatEmerson said, that by helping other people I’m helpingmyself. Seeing my IP work actually help someone else,shutting down fraud in Haiti and enabling people to helpthe Red Cross through texting is really humbling. Your IPwork can make a difference in the world. I’m not justpushing a good, I’m doing good. It makes you reallythankful.

A lot of people who work for the Red Cross do sobecause it touched their lives somehow. Everybody’s gottheir own connection. Everyone here has a story.

What work do you outsource?Most of our work is done in-house. We do engage lawfirms for important litigation, or an external opinion onthe use of a new mark or a legal issue related to a largeevent.

Something I’ve always valued is outside counsel wholisten to what we’re asking them to do. They should viewa relationship with the American Red Cross as a relation-ship and understand our movement and what we do. It’sdifferent to being hired by a corporation. They need tounderstand our mission and that we’re part of a biggermovement. The Red Cross brand is not just a logo. Alsowe’re using donated dollars every time we engage outsidecounsel so we need a pragmatic approach most times, notthe luxury car every time.

Most times I also need someone who can give me theanswer cost-effectively but who can also sit in this chair.My approach to outside firms is they’re part of my team—

it’s a we—so our business clients see it as seamless. So Ivalue counsel who have worked in-house who can commu-nicate to the business.

The difference is we’re a much leaner legal team so thelaw firm may be expected to do a little bit more, draft a bitdifferently. In a perfect world I can forward your responseto the business team without editing. In my other experi-ences I had a little bit more time but here I don’t have thesame resources.

What do you recommend to see and do inWashington DC?The great thing is the Convention Center and hotels are ina wonderful location. If you’re into museums and monu-ments you’ve got to take the time out and enjoy them. It’seasy to walk to the National Mall. One of the most recentmonuments is the Martin Luther King MemorialMonument and I highly recommend that. The shuttleDiscovery should be on display at the Air & SpaceMuseum. If you’re a foodie, there’s tons to do from an eat-ing perspective.

You can hop on a shuttle or a bus that you can get onand off all day and see everything and get a very goodsense of the city.

Profile Debra Hughes

www.manag ing ip .com INTA Da i ly News Monday, May 7 2012 2 1

Henry Dunant proposed the creation of the International Committee for Relief to theWounded in 1863, and at that time it was suggested that medical services could bear a badgeor uniform to ensure they were recognized. In earlier conflicts, different armies used differ-ent colors or symbols to identify their medical services.

During discussions, delegates agreed that the symbol should be white armlet with a redcross and in 1864, Article 7 of the Geneva Convention provided for a distinctive uniform andflag for hospitals, ambulances and evacuation parties as well an armlet featuring this

emblem. It is not known why this shape and color combination were chosen.Later some countries adopted a red crescent, red lion and sun, and these were incorporated in the Geneva

Convention in 1929. The red cross and red crescent are both respected worldwide, and have equal status in theStatutes of the International Red Cross and Red Crescent Movement (1986). Israel uses the Red Star of David asan emblem for its medical services.

The Red Cross and Red Crescent

As part of its commitment to giving back to eachAnnual Meeting host city, INTA is this year hosting itsfirst-ever blood drive in partnership with theAmerican Red Cross. This event will be hosted from10:30 am to 4:30 pm today in a private area in theback of the exhibition hall. INTA will provide bever-ages and snacks to those who participate.

Any attendee who meets the donor eligibilityguidelines can donate blood. “We’re so thankful forINTA for doing this blood drive,” said Debra Hughes.“Please pop by and say hi to the Red Cross folks ifyou can.”

The newly formed INTA Non-Profit committee is dedi-cated to developing and enhancing existing INTA ben-efits and services for non-profit organizations. Formore information or to get involved please contactPeg Reardon at [email protected].

INTA blood drive

INTA expands offerings for non-profitmembers

“Some people just want to make a buck and they knowaround the time of major disasters that Red Cross will beout there and they can create fraudulent websites.”Debra Hughes

I n these straitened economic times, it can be temptingfor brand owners to try to extend the revenue-raisingpotential of a successful trademark to a whole new

range of products and services. But when and how shouldIP owners venture into brand extensions? In sessionCT21—The Living Brand: Borderless Extensions LimitedOnly by the Imagination, panelists will explain how in-house counsel can help successfully leverage a trademark’svalue and the trust that consumers have in the brand togive the business a head start against the competition.

Mona Lee of Hanol Law Offices, John Joseph Cheek ofCaterpillar Inc., Michelle Landy of FremantleMediaEnterprises (Americas) and Alison Tan, The Procter &Gamble Company will discuss what works (and whatdoesn’t) and the factors brand owners should take intoaccount when deciding whether to extend their brands.

Brand extension examplesThe panelists have plenty of examples to share: CaterpillarInc. branched out from its core heavy machinery businessinto apparel by licensing its brand to footwear makerWolverine Worldwide in the mid-1990s. Now revenuesfrom its footwear business alone reach close to US$1 bil-lion. That’s around one-sixtieth of the money Caterpillarpulls in from selling diggers and loaders but it still amounts

to a revenue stream that many companies would envy.Entertainment company FremantleMedia Enterprises hasbet on its AMERICAN IDOL trademark, extending it intoa summer camp business and an attraction at the WaltDisney World Resort in Florida that gives would-besinging stars the chance to audition for a version of theshow at the resort. FMCG company Procter & Gamblehas extended two of its household cleaning and laundrydetergent brands under a franchise model: launching TideDry Cleaners and Mr. Clean Car Wash.

The advantages of extending a brand are unmistakable.“It’s clear that there is money to be made,” says Cheek. Butthe list of positives goes beyond a simple profit and lossaccount. Caterpillar’s lawyer says it also spreads awarenessof a brand. “From a legal perspective, the more avenuesthat you have to consumers, the greater the chances that

your mark is well known—and that can lead to greater pro-tection in those countries that recognize famous marks.”Another key reason for extending the brand is that if youdon’t, someone else might. “If we sell clothes under theCAT trademark then no one else can,” says Cheek.

But there are also obvious—and not so obvious—down-sides. Taking a well-respected brand and applying it to anew business is a risky strategy. If the new venture fails tolive up to the brand promise—or flops altogether—it tar-nishes the trademark. “You have to control the way youmanage your mark very closely because it is valuable. Youcan’t afford for a brand extension to mess it up,” says Lee.

Practical problemsIP owners might also face practical problems if they wantto sell a business marketed under the same trademark as

Preview The living brand


How to extend your brand’s reachMore brand owners than ever want to cash in on the value of their trademarks by extending them to products andservices in new sectors. Emma Barraclough weighs up the risks and benefits.

their core operations. Unlike a company with dozens ofbrands that can be spun out and sold with little impact onthe retained businesses, companies that have extended onemark into many areas could find it difficult to divest justone part of the business. Do they license their mark, forexample, or do they simply sell the physical assets of theextended business without the right to use the trademark?

Finally, brand extensions can cause registration prob-lems for the business’s trademark attorneys. Cheek saysthat Caterpillar operates a vigilant watching programfor its marks and has successfully limited what trade-marks third parties can register within classes relevant toits long-standing heavy machinery business. As a result,he says, the company has developed what he calls a

“keep quiet” space around its marks in those classeswhere its traditional business operations are registered.“When you extend your brand you typically haven’testablished that space. When you make that leap youmight land in a spot that already had people in beforeyou, or where bad faith registrants might have anticipat-ed you would get to.”

So what advice will the panelists be giving to other in-house counsel? Be open to brand extension ideas but beaware of the reputational and legal risks. “Brilliant mar-keting minds are often like that because they don’t thinklike lawyers,” says Cheek. Ensure that the extended busi-ness lives up to the brand promise of the core trademarkthrough a system of strict licensing and closely controlledpre-approval for the way a mark is used. Invest heavily inregistering the trademark in new classes in as many juris-dictions as you can afford when you launch a new prod-uct. That way will you will reduce the risk of trademarksquatters anticipating your expansion plans. Finally, enjoyit: “Brand extension work is really neat for trademarklawyers,” says Cheek. “It drives variety in the issues thatwe deal with. Otherwise I would just see the same issuesover and over for tractors.”

CT21 The Living Brand: BorderlessExtensions Limited Only by theImagination takes place tomorrow at 11:45 am in room 202 AB

Preview The living brand


Anyone who has been to HongKong will have witnessed the popu-larity of McDonald’s restaurants.For many young people, they aren’tsimply a fast-food joint: they are aplace where they can escapecramped high rise flats, hang outwith friends and indulge in a wildlypopular local pastime—accumulat-ing the novelty collectables that therestaurant routinely hands out withits meals.

So it is little wonder that thecompany sought to capitalize onthe brand loyalty of its consumersby expanding its mark into newsectors. But how it did that maysurprise many. Last year

McDonald’s launched a weddingparty service in three of its HongKong outlets. The basic packagecosts HKD$9,999 (US$1,290),which covers invitation cards,venue rental, food, gifts for thecouple and their guests, basicvenue decoration, special games,

audio system usage and Master ofCeremonies service.

To publicize its new service, therestaurant threw its first engage-ment party on Valentine’s Day lastyear which saw McDonald’s devo-tee Kelvin propose to his girlfriendAshley in front of 50 of their rela-tives and friends at a secret partyhe threw at one of its restaurants.Says the fast food chain’s publicist:“The couple made a toast to theirguests with their favorite sundae ...[then] as they put on theMcDonald’s engagement ringsmade of colorful balloons, theyalso cut the lovely Apple PieWedding Cake”.

Brand extensions McDonald’s style

“Brand extension work is really neat for trademark lawyers.”

Heritage Trails

Everyone knows about theMall, the monuments andthe museums. See more ofthe real D.C. and its localhistory by walking one ofthe Neighborhood HeritageTrails. The Adams Morgantrail starts at 16th Streetand Florida Avenue, NW, andthe U Street trail is reach-able using the Circulatorbus from the Woodley ParkMetro (stop is U Street). For more information visit:www.culturaltourismdc.org

Millennium Stage

The Kennedy Center’sMillennium Stage presentsfree performances everynight at 6:00 pm. Tonight,Swami Yomahmi, Matt Pauli,Karen Beriss and EvanYoung perform feats includ-ing physical comedy, platespinning, cigar box juggling,balancing and magic as partof Look Both Ways: StreetArts Across America. The John F. Kennedy Center for thePerforming Arts, 2700 F Street, NW Tickets and Information: 800-444-1324 or 202-467-4600.

The HowardTheatre

The Howard Theatre, whichhas launched the careers oflegends such as DukeEllington, Marvin Gaye andThe Supremes, was re-opened on April 9 this year.The US$29 million renovationproject has breathed new lifeinto the city’s thriving theatrescene. Tomorrow, The MusicalBox restages one of the veryfirst Rock Operas in history,“The Lamb Lies Down OnBroadway,” by Genesis. 620 T Street, NW, (202) 803-2899

The PhillipsCollection

View Brooklyn artist AlysonShotz’s unique installation,Ecliptic, showing at thePhillips Collection throughMay 27. Inspired by science,Shotz’s drawings are made ofyarn looped over nails andconjure the solar system. 1600 21st St, NW. The exhibition isopen Tuesday to Saturday from10:00 am to 5:00 pm and until 8:30pm on Thursdays.

Getting around

Looking for a new, quickway to see the tourist sites?Take a Segway Tour andwhizz round the city atspeeds of up to 12.5 mph. Capital Segway, at 1350 I St NW,provides authorized tours of all themain sites, in less than threehours.

Alternatively, CapitalBikeshare enables you tohire one of over 1,200 bicy-cles from 140 stations. More details: www.capitalbikeshare.com

Things to do Sights


What to do in D.C.: a local’s guideWashington D.C. resident Dina Lewis suggests some lesser-known local attractions.

Ladas Memorial Award Winners,sponsored by Ladas & Parry LLPProfessional category: Mary LaFrance, William S. BoydSchool of Law, University ofNevada, Las VegasStudent category: Sarah Hopkins, Seattle UniversitySchool of Law

Pattishall Medal for TeachingExcellence of Trademark andTrade Identity, sponsored byPattishall, McAuliffe, Newbury,Hilliard & Geraldson LLPDavid Vaver, Osgoode Hall LawSchool, York University

Saul Lefkowitz Moot CourtCompetition WinnersWinning team: University of NewHampshire School of LawSecond place: Emory UniversitySchool of LawBest oralist team: University of NewHampshire School of LawSecond place oralist team: EmoryUniversity School of Law

Dolores K. Hanna best brief:University of New HampshireSchool of LawSecond place brief: North CarolinaCentral School of Law

Lefkowitz Competition SponsorsFinnegan, Henderson, Farabow,Garrett & Dunner; Cowan Leibowitz &Latman; Goodwin Procter; DLA Piper

US; Husch Blackwell; IntellectualProperty Law Association of Chicago;Kilpatrick Townsend & Stockton

Gala grand prize winner of 2013Annual Meeting Package: AMRegistration, Gala Ticket, 5-nighthotel stayKristen Poggensee of MotorolaMobility in Libertyville, IL, U.S.A.

News


Gala Dinner Award Winners Win an INTA portfolio!We have one of these special prizes to give away

each day of the INTA Annual Meeting. To win

today’s prize just answer the question:

Abraham Lincoln was shot whileattending a play at Ford’s Theatre, at511 10th Street, NW. Whose portraitis displayed on the front of the box

where Lincoln was seated?

Send your answer by email to [email protected] by

6.00 pm today. The winner will be announced in

tomorrow’s INTA Daily News.

Yesterday’s contest winnerHelen Huang of Peter Huang & Richard in Penang,

Malaysia.

Come to the INTA Daily News office in Room 102A

to claim your prize.

The answer was: The first two capitals of the

United States were New York (1789-1790) and

Philadelphia (1790-1800)

QUIZINTA DailyNews 2012

INTA President Gregg Marrazzo was at the Gala Dinner on Saturday nightto present the awards

Ming-Yen Lin, Deep & Far, Taipei, TaiwanTrademark squatters are a big issue—peoplewho register a big brand locally with no inten-tion of using the mark. We have many clientsfrustrated by this. Ryan Dean, Fish & Associates, Irvine, U.S.A.Trademarks online, particularly paid ads insearch engines, such as the Google AdWordssystem. There have been some decisions, suchas Rosetta Stone, but the courts have to pro-vide greater clarity.Ameen Kalani, Henry Goh Ltd, Singapore InSingapore there are few problems. It’s a smallcountry and the borders are tight. But interna-tionally I think the biggest issue is the cost ofIP. It should be cheap, for the man in thestreet, not a weapon for big companies.Jesus (Jay) Sanchelima, Sanchelima &Associates, Florida, U.S.A. There needs to be agreater understanding of different legal sys-tems, particularly common law versus civil law.Most trademark treaties are hollow becausethey don’t take this into account. It’s applesand oranges.Ilda Harry, BVI Financial ServicesCommission, Road Town, British Virgin IslandsIn the British Virgin Islands, a big problem isthe number of trademarks sitting on the regis-ter that aren’t being used. We hear nothingfrom the agents and they clog up the system.Erienne Romero, Courtenay Coye, Belize City,Belize Passing off. Because Belize is such asmall country, brands don’t bother to enforcetheir trademarks here, so counterfeiting is rife.There have only ever been two cases broughtin the courts for passing off.Jamal Abu Ghaida, AraMarks IP, Doha, Qatar I wish all trademark registration and mainte-nance took place online. In the Middle East ourIP offices are very traditional and have very littleavailable online. It makes prosecution, searchingand everything else needlessly difficult.Rie Miyake, Mattel, El Segundo, U.S.A. Fakewebsites are possibly the biggest problem intrademarks today. Anyone can copy a genuinesite and set up a fake one tomorrow. We haveproblems with many of our brands, such asBarbie, HotWheels and others.Raja Selvam, Selvam + Selvam, Chennai, IndiaIndia needs to sort out its trademark prosecu-tion before it joins the Madrid Protocol. Thequality of examination here is pathetic. AsFranklin said, a failure to plan is planning to fail.

Fred Muwema and Friday Kagoro, Muwema & Mugerwa, Kampala, Uganda The lack of awareness of IP in Uganda.

People understand the rights to land, to the soilthey stand on, but not an intellectual right.Companies don’t know they can register IP andconsumers don’t think they should be protected.

Pedro Barroso, Barbosa Mussnich & Aragao,Rio de Janeiro, Brazil A big problem is theoverlapping of rights, particularly in Brazilbetween industrial designs and trademarks.There was a case, for example, that said once adesign has expired you can’t register it as amark—because it should be public.Tiffany Schwartz, Armstrong Teasdale, StLouis, U.S.A. The biggest problem today is theglobal use of trademarks that comes throughuse on the Internet. Trademarks reach a muchbroader spectrum of people and there are nojurisdictional boundaries.Sriram Panyam, Subramaniam Nataraj &Associates, New Delhi, India The inconsistencyin how trademark offices around the worldfunction. The law might be harmonized, butoffices still work in very different ways, and thedifferences can be hard to understand.Liz Szabo, Religious Technology Center, LosAngeles, U.S.A. The inconsistency of what con-stitutes use of a trademark online. In Japan themark has to be in Japanese before they willconsider that the site is directed at Japaneseconsumers, even if you have a local mark regis-tered in English.

Vox pop


What is the biggest problem youface in trademarks today? Chris McLeod�@CeeJayMcLeod

Today’s cooler weather is a relief to thebusiness casual clad. And the INTA bag ishandy. #INTADC

Gregory Pang�@cyclawTop tips at the first timers orientation: don’tdrink too much, don’t drink too much anddon’t drink too much! #nowyoutellme #INTADC

Doug Wolf�@douglaswolfFunctionality consideration of a trademark isbased on the owner’s use of the mark, not thedefendant’s #INTADC

Ashlee Froese�@BrandFashionLaw Issue with trade dress protection stems fromfunctionality. Where does patent protectionend and trademark protection begin? #INTADC

Tracy Corneau�@Tracytms@_INTA #INTADC- heading to receptions +leading roundtable later today. Then morenetworking with grt clients. Eveningreceptions.

Traverse Legal, PLC�@traverselegal#INTADC thinking I can’t resist the Air andSpace Museum and IMAX show this afternoon.Lots to do in DC

Darren Cahr�@legallysocial Checking in at #INTADC. Always amazed atthe number of IP lawyers around the world.Looking forward to seeing friends and clients.

john ottaviani�@jottaviani I’ve been in DC less than 24 hours and peopleare asking ME for directions! LOL! Only at#INTADC

Ceylin Beyli�@CeylinB Had the busiest Saturday at INTA, now havinga similar Sunday. Great Conference! #INTADC

Tara Aaron�@tara_aaron Facebook “likes” might be enough foracquired distinctiveness of #trademark in theEU. In U.S.? I doubt it. #INTADC

Griffin M. Barnett�@griffinbarnett @bjw72 I enjoyed your talk at #INTADC on#trademark enforcement online/social media -Good info on UDRP & gTLDs

John MacKenzie�@jsmackenzieGreat to meet up with other IP professionalsfrom Chile, the States, Canada, Germany,Hong Kong ... at #INTADC

#INTADC

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The INTA Daily News is produced by ManagingIntellectual Property in association with theInternational Trademark Association. Printed byEssence Printing Inc. The INTA Daily News is alsoavailable online at www.inta.org andwww.managingip.com. © Euromoney InstitutionalInvestor PLC 2012. No part of this publication maybe reproduced without prior written permission.Opinions expressed in the INTA Daily News do notnecessarily represent those of the INTA or any ofits members.

Attention non-profit organizations and attorneys whorepresent non-profits: Stop by breakfast Tuesdaymorning in Hospitality and join the conversation

Trademarks and nonprofits are not mutually exclusive.The newly formed Non-Profit Committee invites you tocome and discuss topics of interest that your nonprofitclients may have or that your for-profit clients mayhave in working with nonprofits. Not profit and for-prof-it business relationships are common in today’s market-place. What are the branding considerations that bothhave to think about when promoting a cause?

Come to the Hospitality Area in Hall D from 8-10 Tuesdaymorning and look for the specially designated tables.

Case summaries and images fromtrade dress infringement decisionsin more than 60 countries?

Answer: Global Trademark Research,Trade Dress Image Library

Visit www.inta.org/TradeDress

Affiliate parties


Baker & McKenzie Ferraiuoli Edwards Wildman

Osler LDS K&L Gates

Barnes & Thornburg Fulbright & Jaworski Spoor & Fisher

Integra Venable Dennemeyer 50th Anniversary Party

Today’s Schedule | Monday, May 7, 2012All events take place at the Washington Convention Center (WCC) unless otherwise indicated. Consult the Final Program for times and locations of invitation-only events.

7:30 am – 5:00 pm REGISTRATION East Registration7:30 am – 5:00 pm HOSPITALITY Hall D8:30 am – 5:00 pm Tour Booth East Registration9:00 am – 10:15 am OPENING CEREMONIES Ballroom ABC9:00 am – 10:15 am Academic Day Getting Your Foot in the Door: Resume Writing and Interviewing for a Trademark Position 144 A10:00 am – 4:30 pm EXHIBITION HALL Hall D10:15 am – 12:15 pm COMMITTEE MEETINGS

Anticounterfeiting–Latin America & Caribbean Subcommittee 103 BEnforcement—Trade Names Subcommittee 103 AHarmonization of Trademark Law & Practice Committee (until 10:45 am; see subcommittee breakouts beginning at 10:45 am listed below) 140 AInternational Amicus Committee (until 10:45 am; see breakouts subcommittee beginning at 10:45 am listed below) 140 B

10:30 am – 11:30 am SPEED NETWORKING Hall D10:30 am – 11:45 am CONCURRENT SESSIONS

CM01 Protection of Indigenous Rights: An Increased Need BallroomCM02 Exploring the Outer Limits of Trademark Law 207 ABWM01 How to Deal with Restrictions on Advertising and Trademark Use in Regulated Industries 145 ABIM01 Industry Breakout: From the Frying Pan into the Fire: Navigating Emerging Issues in Cyberspace 146 ABC

10:30 am – 11:45 am Academic Day What to Say to Land the Job: How to Answer the Tough Interview Questions 144 A10:30 am – 4:30 pm Red Cross Blood Drive Hall D10:45 am – 12:15 pm COMMITTEE MEETINGS

Education & Services Group (11:00 am – 12:00 pm) 143 BHarmonization—Free Trade Areas Subcommittee 159 BHarmonization—International Classification Subcommittee 204 CInternational Amicus—Asia-Pacific Subcommittee 159 AInternational Amicus—Canada Subcommittee 141International Amicus—Europe Subcommittee 158 ABInternational Amicus—Latin America Subcommittee 160International Amicus—United States Subcommittee 204 AInternet—Internet Governance and Contractual Relationships Subcommittee 209 BC

11:30 am – 12:30 pm Asia-Pacific Council 20112:00 – 1:00 pm SPEED NETWORKING Hall D12:00 pm – 1:15 pm CONCURRENT SESSIONS

CM20 Trolling the Trademark Waters 207 ABCM21 The Great Dilution Debate: 15 Years After Enactment, has the Federal Trademark Dilution Act Lived Up to Expectations 202 ABRM20 Regional Update: European Community (OHIM, ECJ) 146 ABCRM21 Regional Update: Latin America 147 ABWM20 Practical Tips to Strengthen the Relationship between In-House and External Counsel 145 AB

12:00 pm – 1:30 pm Academic Day Getting Involved with INTA: Working Lunch for Law Students 144 B12:00 pm – 1:30 pm Academic Day Professor Luncheon 144 C1:15 pm – 3:15 pm COMMITTEE MEETINGS

Anticounterfeiting—North America Subcommittee 140 BEmerging Issues Committee (until 1:45 pm; see subcommittee breakouts beginning at 1:45 pm listed below) 201Enforcement—Courts & Tribunals Subcommittee 204 BEnforcement—Discovery Practices & Procedures Subcommittee 204 AIn-House Practitioners Committee 140 A

1:30 pm – 2:30 pm SPEED NETWORKING Hall D1:30 pm – 3:30 pm COMMITTEE MEETINGS

Leadership 2012 Project Team 103 ATrade Dress and Design Protection Conference Project Team 208 BTrademark Office Practices—USPTO Subcommittee 151 ABThe Trademark Reporter (TMR) Committee 209 BCYoung Practitioners Committee 208 A

1:30 pm – 3:30 pm LUNCHEON TABLE TOPICS 150 AB1:45 pm – 3:00 pm Academic Day Networking 101 144 B1:45 pm – 3:45 pm COMMITTEE MEETINGS

Emerging Issues—Development of Rights Subcommittee 103 BEmerging Issues—Issues Identification Subcommittee 159 AEmerging Issues—Limits on Trademark Rights Subcommittee 159 BEmerging Issues—Parody Subcommittee 203 AB

2:00 pm – 3:15 pm Academic Day Trademark Scholarship Symposium Session I 144 A, 148 & 149 A3:00 pm – 4:00 pm SPEED NETWORKING Hall D3:15 pm – 4:15 pm Academic Day Trademark Scholarship Symposium Session II 144 A, 148 & 149 A3:15 pm – 4:30 pm Academic Day Careers in Trademark Law: A Panel Discussion for Law Students 143 A3:30 pm – 5:30 pm COMMITTEE MEETINGS

Anticounterfeiting—Middle East, Africa & South Asia Subcommittee 103 AEnforcement—Opposition & Cancellation Standards & Procedures Subcommittee 204 CIndia Project Team 160Internet—Domain Disputes, Ownership and Whois 151 AInternet—Online Use Subcommittee 201Trademark Office Practices—Asia-Pacific TMO Relations Subcommittee 141Trademark Office Practices—European National TMO Relations Subcommittee 158 ABTrademark Office Practices—Latin America Subcommittee 209 BCTrademark Office Practices—OAPI/ARIPO Subcommittee 159 A

3:45 pm – 5:00 pm CONCURRENT SESSIONSCM50 Trademarks and Industrial Designs: A Balancing Act? 146 ABCCM51 Doing the D.C. Shuffle: How Do the Trademark Attorney, Lobbying and Ethics Mix? 202 ABIM50 Industry Breakout: Trademark Challenges and Opportunities in the Pharmaceutical World 147 ABRM50 Regional Update: China, Japan, South Korea 207 ABWM50 Traps for the Unwary in Transatlantic Trademark Practice 145 AB

3:45 pm – 5:45 pm COMMITTEE MEETINGSGovernment Officials Educations & Training Committee 140 BLaw Firm Committee 140 ATrademark Administrators Conference Project Team 204 B

5:00 pm – 7:00 pm Academic Day Academic and Young Practitioners Happy Hour Renaissance Hotel Renaissance East6:00 pm – 7:00 pm Non-Profit Reception Renaissance Hotel Congressional Hall B

Documents

Daily NewsAttendee Tracey Mosley of Borden Ladner Gervais said Driver’s talk motivated her to be more aware of certain habits, particularly when training others. Karla Charles of