BulletinAssociation Members Offer USPTO Examiners Insight on Trademark Clearance Association News

Emerging Issues in Trademark Law Forum

24th International ICANN Meeting Dominated by Proposed .com Settlement Discussions

Second Annual Industry Training Seminar for OHIM Trademark Examiners

Russia Roundtable Tackles Counterfeiting

Feature Focus

Breaking the Link Between Counterfeiting and Children

Legitimate Expectations of Trademark Property Rights

AOL, CROSSFIRE Marks in Film

Law and Practice

BENELUXIntroduction of Trademark Opposition Procedure to Be Complete in 2006

CANADAComments Sought on Proposed Opposition Procedures

EUROPEAN COURT OF JUSTICESpecifi cations for Retail Trade Services

UNITED STATESThird Circuit Addresses Nominative Fair Use

Sixth Circuit Rejects Initial Interest Confusion for Product Shapes

ZIMBABWEClassifi cation of Retail and Wholesale Services

INTA Bulletin Board

The Voice of the International Trademark Association January 1, 2006 Vol. 61, No. 1

On December 6, 2005, INTA sponsored the fi rst of what is expected to be an ongoing series of seminars by Association members for trademark examiners of the U.S. Patent and Trademark Offi ce (USPTO). Speakers for the seminar on “Trademark Development and Clearance” were Maury Tepper, of Womble Carlyle Sandridge & Rice PLLC in Raleigh, North Carolina, USA, and chair of the USPTO, Subcommittee of INTA’s Trademark Offi ce Prac-tices Committee, and Elisabeth Roth Escobar, trademark counsel for Marriott International.

In remarks delivered before the seminar, U.S. Commissioner for Trade-marks Lynne Beresford noted the large turnout of trademark examiners and added that she looked forward to continued cooperation on educational programs between INTA and the USPTO. Ms. Beresford also commented on the

positive working relationship between INTA and her offi ce.

The hour-long seminar presented by Mr. Tep-per and Ms. Escobar covered the myriad of issues that corporate trademark counsel and law fi rm attorneys face when trying to clear a mark. These issues include: coordination between trademark

counsel and marketing departments and brand creation agencies, culture and language consider-ations associated with a particular mark, regula-tory matters and industry codes, and the value of market testing and focus groups. As Ms. Escobar observed, clearing a mark is “not necessarily a ratio-nal or steady process.”

Both Ms. Escobar and Mr. Tepper relayed fi rst-

hand accounts of clearing a mark, with references to marks in the hotel and pharmaceutical indus-tries. Ms. Escobar also focused on the importance

2

Brand Development in the Food and Drink Industries

IN THIS ISSUE

5

Creating a new product in the food and drink industries requires choosing a brand name that not only is strong and marketable but also satisfi es all regulations and can be protected against abuse by competitors. Brand develop-ment requires dealing with different cultures, facing regulatory regimes, addressing confl icts with geographical indications, avoiding de-scriptiveness and combating the counterfeiting that is prevalent in the industry.

Diverse CulturesIn the beverage industry, different drinking ages and drinking cultures mean that a brand’s target consumers may vary from country to country. Consumers in different countries ap-preciate different aspects of a brand, and brand owners must consider whether logos, slogans, and distinctive packaging, shapes and designs require different degrees of protection in vari-

ous jurisdictions. For example, in one country it may be wholly inappropriate to register a slogan that forms the core of a marketing campaign, but somewhere else it may be essential to register the same slogan.

As Tatiana Whytehouse, trademark counsel at Allied Domecq, explains, “With alcoholic drinks in particular, the target consumer can vary enor-mously from country to country. Drinks such as tequila and whiskey have very different markets.” Trademark protection, she says, involves “many unique challenges when considering the require-ments in different countries,” in addition to registering the core brand name.

Regulatory FrameworkFood industry legal teams must deal with a com-plex web of labeling regulations. Often, there will be dozens of potential names in the pipeline for

SEE FOOD AND DRINK ON PAGE 6

11

9U.S. Patent and Trademark Offi ce Headquarters in Alexandria, Virginia, USA

SEE USPTO ON PAGE 2

Representing Trademark Owners Since 1878January 1, 20062

USPTO CONTINUED FROM PAGE 1

Association NewsAssociation Newsof trademark registration in the context of franchising, which is a common practice in the hotel industry. In addition, there was discussion of in-house counsel’s role in mark clearance, search strategies and trademark practice in an international market.

After the presentation, examiners posed questions and said that they were pleased to have had the opportunity to speak with INTA members.

The next INTA seminar for USPTO trademark examiners is expected to be held during the fi rst quarter of 2006.

By Michael Heltzer, INTA Manager, External Relations

Emerging Issues in Trademark Law ForumWhat impact can a bankruptcy have on trademark rights? What constitutes international malpractice? How do you manage cross border litigation? To fi nd out, join your colleagues at INTA’s Emerging Issues in Trademark Law Forum, to be held February 2 – 3, 2006, in Savannah, Georgia, USA. This forum will iden-tify and analyze trends and developing issues in international trademark law. Topics include cross border litigation, publicity and privacy rights, secured transactions and bankruptcy, geo-graphical indications, public policy and challenging products, corporate governance, fair use and international malpractice.

“This forum is directed towards intermediate- to advanced-level trademark professionals, and we expect that there will be a lot of audience participation,” says Carole Klein, Morgan, Lewis & Bockius LLP, Washington, D.C., forum co-chair. She notes that the forum team has worked hard to organize speakers from around the world to discuss a wide range of topics.

Full program particulars and registration information are available at www.inta.org. Registration is due by Friday, January 20, 2006.

By Terry Edwards, Bereskin & Parr, Toronto

Join INTA to identify, anticipate and manage emerging issues in trademark law.

Participate in an exciting intermediate/advanced-level forum addressing trends and trademark issues identifi ed by INTA’s Emerging Issues Committee, including celebrity and the right to privacy, geographical indications and cross border litigation.

Top reasons to attend:

• Gain insight into the cutting-edge issues and trends that affect trademark law• Share best practices, cautionary tales and solutions to recent complex trademark issues• Examine important emerging trends and exchange ideas with experts and colleagues

Be prepared to express your views and interact with experts and colleagues as you discuss various issues that are affecting trademark professionals now and in the future.

Visit www.inta.org/events to register, for pricing and for more information.Sponsorship opportunities are available for this program.

For sponsor information, visit www.inta.org/sponsor or email sponsorship@inta.org.

Emerging Issues in Trademark Law ForumFebruary 2 – 3, 2006

Marriott Savannah Riverfront | Savannah, Georgia, USA

For more information on registering a trademark with the USPTO or another country’s trademark offi ce, visit Country Guides on the INTA Mem-bers Only website. Country Guides is a searchable database of basic, practical information on trade-mark fi ling, prosecution, registration, maintenance and enforcement. Country Guides also defi nes 30 basic trademark terms in a glossary available in nine languages, including Chinese, Russian and Spanish. Visit www.inta.org today!www.inta.org today!www.inta.org

www.inta.org Vol. 61, No. 1 3

24th International ICANN Meeting Dominated by Proposed .com Settlement DiscussionsVancouver, British Columbia, Canada was the setting for the November 30 – December 4, 2005, meeting of the Internet Cor-poration for Assigned Names and Numbers (ICANN), the entity that administers the domain name system (DNS). But the city’s moderate coastal climate and idyllic views of snowcapped peaks did little to calm delegates as talk at the meeting quickly turned to the proposed settlement between ICANN and VeriSign, the operator of the .com registry. VeriSign has fi led lawsuits against ICANN in U.S. state and federal courts, alleging antitrust violations and breach of contract.

Many ICANN constituencies—including the Intellectual Property Constituency (IPC), of which INTA is a founding mem-ber—expressed concern about specifi c provisions in the proposed agreement. Several delegates were outraged by what they saw as ICANN’s granting of perpetual ownership of .com to VeriSign. There were also several comments on how VeriSign might be permitted to raise the cost of a .com domain name. For its part, the IPC asked that the ICANN Board of Directors reexamine provisions that would allow VeriSign to make commercial use of Internet traffi cking data in VeriSign’s possession and provide special dispensation for VeriSign for the approval of new registry services. Because a large portion of ICANN’s funding would come from VeriSign if the proposed settlement were approved, the IPC also asked the Board to provide for increased transparency and establish safeguards against undue infl uence.

The ICANN Board did not act on the proposed settlement, but instead instructed the ICANN staff to continue accepting written

comments. After that, ICANN will summarize and analyze the comments in a public report. ICANN’s staff is also expected to reengage VeriSign on the outcome of the Vancouver meeting.

In addition to the future of .com, the ICANN meeting touched on other issues, including the implementation of agreed-upon protocols for internationalized domain names (IDNs). IDNs are domain names in scripts other than English—for example, Arabic, Chinese or Cyrillic. According to ICANN’s website, “signifi cant progress was made towards the launch of a global IDN test bed.”

Representatives of national governments were in attendance in Vancouver as topics such as IDNs were discussed. Also on the agenda of the ICANN Governmental Advisory Committee (GAC) was the recent decision of the World Summit on the Information Society to retain oversight of the DNS with ICANN, but to move other topics, such as taxation, to a soon-to-be-established inter-national forum. At the conclusion of the Vancouver meeting, the governments and ICANN agreed to form a joint working group “to effectively improve communication links and collaboration processes between the GAC and the Board, and relevant ICANN constituencies.”

The next ICANN meeting is scheduled for March 2006 in Wel-lington, New Zealand.

By Michael Heltzer, INTA Manager, External Relations

Second Annual Industry Training Seminar for OHIM Trademark ExaminersOn October 27 – 28, 2005, INTA and the Offi ce for Harmoniza-tion in the Internal Market (OHIM) held their second annual Industry Training Seminar for Trademark Examiners in Alicante, Spain. More than 50 examining attorneys participated in two days of presentations, question and answer sessions and a panel discus-sion.

This year’s seminar featured the computer and telecommunica-tions industries, at the expressed interest of examining attorneys. Ingrid Desrois, INTA member and formerly of Procter & Gamble in Paris, was the project leader, and Daryl G. Grecich, INTA Di-rector of Marketing and Communications, served as the modera-tor.

Speakers presented overviews of their companies and branding strategies before delving into a number of trademark issues, includ-ing piracy, non-traditional marks, famous and well-known marks, clearance, specifi city versus distinctiveness, trademarks in open source software and sponsorship.

The fi rst day of the seminar focused on the computer industry. Peter Becker, senior attorney at Microsoft Corporation, began the seminar with an industry overview, followed by a presentation on consumer software, hardware and online services. Next Ruby Zefo, director of trademarks and brands at Intel Corporation, presented

“Intel Inside: Computer and Communication Systems Ingredi-ents.” Sun Microsystems Director of Trademarks Tiki Dare spoke on “Big Computer Systems,” and Sylvie Martin Acosta, senior attorney at IBM, discussed computer and telecommunications industries services.

The seminar’s second day dealt with the telecommunications industry. Carrie Knecht, senior trademark counsel of Motorola, Inc., talked about phones and communications equipment. Inter-national service marks in the telecommunications and information technology sector were the subject of Ilka-Maria Suehling’s presen-tation. Ms. Suehling is senior legal counsel for Deutsche Telekom.

“The speakers for this seminar were wonderful, and their presen-tations and delivery of them was insightful and engaging,” said Ms. Desrois.

A panel discussion with a question and answer session conclud-ed the second day. Domain names and specifi cation and identifi ca-tion of goods and services were discussed, but the topic of sponsor-ship really stirred the examiners. The overwhelming response from the examiners was positive.

“This seminar has become one of the signature events between INTA and OHIM,” said João Paulo Miranda de Sousa, Director

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Representing Trademark Owners Since 1878January 1, 20064

Association NewsAssociation News

of General Affairs and External Relations for OHIM. “INTA has the ability to put on strong, educational programs with top-notch speakers, so we look forward to doing this again next year.”

The Association’s industry training seminars began in 2002 at the United States Patent and Trademark Offi ce. The fi rst seminar covered the banking, food and beverages, and telecom-munications industries. In 2003, the computer industry was highlighted, followed by the 2004 seminar on pharmaceuti-cals. INTA also took the program to Europe in 2004, partner-ing with OHIM to present a seminar on the pharmaceutical industry.

The program stemmed from the Industry Advisory Coun-cil—now called the Regular Member Committee—which consists entirely of corporate members. This committee saw an opportunity to help educate trademark examiners and to open up communications between trademark owners and trademark examiners.

By Daryl Grecich, INTA Director, Marketing & Communications

OHIM CONTINUED FROM PAGE 3

Russia Roundtable Tackles Counterfeiting“Finding Solutions to Practical Anticounterfeiting Problems in Russia” was the subject of INTA’s November 29, 2005, Moscow roundtable. Gorodissky & Partners hosted the event, which was chaired by Eugene Arievich of Baker & McKenzie and co-mod-erated by Denis Khabarov of Baker & McKenzie and Vladimir Biruilin of Gorodissky & Partners.

Representatives from the Ministry of Interior’s Department of Combating Economic Crime, the Federal Customs Service, Rospatent and the Russian Judicial Academy, as well as from corporations and law fi rms, discussed key topics for brand own-ers enforcing their rights in Russia. Among the subjects covered were the interpretation of the concept of “guilt” in administra-tive proceedings; expert evaluation of counterfeit goods in civil, administrative and criminal proceedings; statutory damages and calculation of damages in criminal trademark infringement cases; and pre-suit preliminary injunctions in intellectual property rights infringement cases.

Participants received background information on agenda items as well as comparative data on other jurisdictions’ prac-tices, which ensured a lively, interactive debate. The roundtable concluded by recommending practical steps to help Russian governmental agencies enforce trademark rights.

Thanks to sponsors Gorodissky & Partners, Baker & McK-enzie, Euromarkpat Russia, ARS-PATENT Intellectual Property Law Firm and The Coalition for Intellectual Property Rights (CIPR).

By Chehrazade Chemcham, INTA Manager, External Relations, Europe

Participants discuss trademark enforcement at INTA’s November 2005 Moscow Roundtable

INTA’s popular e-learning programs available year-round!

Beginning January 1, 2006, it will be even more convenient to learn about trademark topics on your own schedule.

INTA’s Trademark Basics and Trademark Trial and Appeal Board e-learning programs are now available on demand throughout the year. These online programs make it easy to acquire important trademark information while avoiding costly travel and lodging expenses.

To learn more, visit www.inta.org/events.

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Topic: Practical Approaches to Trademark Clearance IssuesDates: January 16 – 27, 2006

Held in multiple U.S. cities, these roundtables are designed to fi t into your busy schedule.

Visit www.inta.org/events to register and for more information.

www.inta.org Vol. 61, No. 1 5

Breaking the Link Between Counterfeiting and ChildrenWe live in a culture where counterfeiting sometimes is not only tolerated but also even celebrated. People brag about the knockoff KATE SPADE or GUCCI bags they buy on the street or the Inter-net that look “just like” an original but cost one-tenth the price.

Adults are not the only consumers of counterfeit goods. In a recent troubling period for intellectual property owners, Napster and similar services created a culture among teenagers and col-lege students in which consumers believed they need not pay for creative works.

The permissiveness among adults sets the tone for the next gen-eration: children adopt the notion that buying counterfeit products is socially acceptable. As the child in an anti-drug commercial states, “I learned it by watching you!”

So how do trademark owners and attorneys take on the massive task of changing perception and demand for counterfeit products? Barbara Kolsun, general counsel for fashion house 7 For All Man-kind, believes that educating children is the primary step. “There is now drug education in school. We need to educate children about counterfeiting at the elementary school level.”

Of course, education at home will complement a concerted ef-fort in schools. Sonja Keith, intellectual property counsel for Clas-sic Media (owner of Lassie, Lone Ranger, Underdog, Casper the Friendly Ghost and Richie Rich, among other children’s entertain-ment icons), is the mother of two elementary-school-age children. “I just tell my children that if Person A steals something and then sells it to Person B, who knows it was stolen, then Person B is just as guilty of the crime as the person who stole it. They also know that counterfeit goods are almost inevitably bad quality compared to genuine goods.”

Ms. Keith also offers a humorous and enlightening point of view regarding New York City’s Chinatown, where counterfeiters sell bogus goods ranging from accessories such as watches and hand-bags to DVDs. “The real reasons to go to Chinatown are to eat real reasons to go to Chinatown are to eat realChinese food, see the views from the Manhattan Bridge and visit The Original Chinatown Ice Cream Factory!”

Ms. Kolsun applauds parents who share this philosophy. “Parents need to be an example by not buying counterfeit items like fake handbags. They also need to know what their kids are doing. Pur-chasing counterfeits is purchasing stolen intellectual property.”

The media also can be an effective resource in publicizing the implications of buying counterfeit items. Ms. Kolsun says, “We need to bombard consumers across all media, like the anti-drug campaigns. In fact, the anti-drug media model is similar to anticounterfeiting because of the high profi t margin, the attitude that the activity doesn’t hurt anybody else and the reality that the revenue generated goes to criminals and, in some cases, terrorist organizations.”

Brian Brokate, partner and head of the intellectual property practice at Gibney, Anthony & Flaherty, LLP, advises clients such as Rolex on counterfeiting issues. Like Ms. Kolsun, he believes that an information campaign is needed. “One element missing from the trademark enforcement program is a forthright and responsible public awareness program. The crime of counterfeiting requires the participation of the public. No buying of counterfeit products means no counterfeit products will be made. A public relations campaign targeted to children would require a celebrity spokesman

that children admire and respect who can get across the message to children that buying counterfeit goods is stealing.”

Mr. Brokate suggests an anticounterfeiting campaign with a two-step process including parents. “First, I would form two focus groups, comprised of children and parents, respectively, and gauge their feelings and attitudes about counterfeiting. Then, I would build a program based on the information from the focus groups. If their attitudes are ambivalent, then the program would target a change in those attitudes.”

Anticounterfeiting education at schools, at home and via the media offers a three-front attack against permissive attitudes about buying fake products. Children must be informed that counterfeiting does not merely affect luxury product makers like Kate Spade, Gucci or Rolex—it also can affect consumers’ safety when products such as automobile parts and medicine are counterfeit.

Ms. Kolsun offers a simple starting point and challenge on the issue of educating children about the realities and dangers of counterfeit-ing, calling on her fellow trademark attorneys and their trademark owner clients: “Everybody who is a member of INTA has to take ownership of this issue.”

By David Krell, Blue Stripe Media Group, LLC, Jersey City, New Jersey, USA

Feature FocusFeature Focus

Membership Renewal Deadline Extended!

For those of you who have not already renewed your organization’s INTA membership, the deadline has been extended to January 31, 2006.

Renew your membership now to ensure your listing in the 2006 – 2007 INTA Membership Directory.

If you are the INTA designee for your organization, you can renew your membership now at www.inta.org/renew, where you can also print an invoice, add or delete employees from your organization and modify your contact information.

If you have any questions, please email membershiprenewal@inta.org, call +1-212-768-9887, x 1725,

or fax +1-212-768-1234.

Thank you for your continued membership and participation in the INTA community.

To learn about INTA’s anticounterfeiting efforts, visit www.inta.org/anticounterfeiting.

Representing Trademark Owners Since 1878January 1, 20066

Food and Drink CONTINUED FROM PAGE 1

Feature FocusFeature Focus

.EU Webcast available only to members until February 7, 2006

For the fi rst time ever, INTA offered a live webcast on the .EU domain name and related issues, and it’s now available to view at your convenience. The webcast covers the background and strategic guidance on .EU, covering issues such as:

• Eligibility requirements for owners and licensees of European trademarks and other “prior rights”

• Guidelines for participating in the pre-launch “Sunrise”

• .EU domain name registrations and the rules for the .EU alternative dispute resolution program to be administered by the Czech Arbitration Court

• Best practices for trademark owners seeking to take advantage of the commercial opportunity presented by .EU

Visit www.inta.org/events/webcast.html for more information and to access the seminar.

a new product, and trademark and regulatory checks must be run concurrently for the potential brands. Kathy Atkinson of Kettle Foods says, “It’s not really possible to have a set framework for clearance procedures in the development of brands. It is possible that we will not have regulatory approvals or trademark clearance until artwork has been developed or, worse, a product is unveiled to the trade. The sooner we receive clearance for a mark, the bet-ter.”

And according to Ms. Whytehouse, “Those brands which are easy to clear straightaway generally are not the ones chosen by the product developers, because they are not attractive enough.”

Geographical IndicationsWhen companies choose brands, they also must take care to avoid the growing number of geographical indications. For instance, the EU system of Protected Designations of Origin (PDOs) and Pro-tected Geographical Indications (PGIs) has more than 400 Italian registrations alone. The EUROPA website lists registered PDOs/PGIs and outlines the registration process (http://europa.eu.int/comm/agriculture/foodqual/quali1_en.htm). PDOs cover terms used to describe foods that are produced, processed and prepared in a given geographic area using recognized know-how. For PGIs, the geographic link must occur in at least one of the stages of production, processing or preparation.

Lawyers must be wary of not only current geographical indica-tions but also the possibility that a geography-related brand name may become a geographical indication. For example, the European Court of Justice (ECJ) on October 25, 2005 upheld the European Union’s decision to register Feta as a PDO. The ECJ’s decision has had consequences for cheese makers who had assumed that Feta was generic. Judy Bell in North Yorkshire, UK, produced up to a ton of the cheese a week and marketed it under the brand “Yorkshire Feta.” Now she faces an expensive re-branding process, and warns that the ruling could force up the price of Feta cheese, as Greece will be unable to satisfy world demand.

Furthermore, after the WTO recently criticized the current EU geographical indication regulations as treating third world countries less favorably than EU members, there may be an infl ux of applications from the third world. In June 2005, the European Union received a geographical indication application for “Colom-bian Coffee”—the fi rst PDO request from outside the European Union. Depending on the European Union’s treatment of that case, there could be applications for geographical indications from any country that can demonstrate reciprocal protection of EU geographical indications.

DescriptivenessDescriptiveness also must be considered when choosing a food product brand. “One of our objects when registering a trademark is to cover as many different categories in our specifi cation as possible, to allow scope for development of a particular brand into new areas,” says Ms. Atkinson. Broad descriptions of food industry goods can be problematic, however, because a brand may be descriptive of one product but not others in the same class. For example, the mark NORTH POLE may not be descriptive of bananas but could be descriptive of ice or frozen food.

Protecting the Brand After Product LaunchAfter the product’s launch, the brand must be policed against abuse. One of the most serious concerns for many manufacturers is counterfeiting. Sadly, the food and drink industries are not im-mune from this global disease. According to Ms. Whytehouse, “It is our biggest IP problem. Counterfeiters use increasingly advanced methods, such as using syringes to refi ll glass bottles, which are diffi cult to detect. This can cause serious damage to the brand, as consumers think that what they are drinking is our product.” Moreover, counterfeiters are increasingly inclined to target lower-value goods, such as food products, because profi t margins in the industry do not permit introduction of technology to authenticate goods.

ConclusionBrand protection in the food and drink industries is a challenge for trademark attorneys the world over. Whether they themselves deal with regulations or work with other lawyers who do so, attorneys must engage in much planning and organization to obtain relevant clearances before product launch. And given the prevalence of modern counterfeiting techniques, product launch may be just the beginning of an even bigger set of problems.

Nick Rose, Field Fisher Waterhouse, London

www.inta.org Vol. 61, No. 1 7

Legitimate Expectations of Trademark Property RightsIn Anheuser-Busch Inc. v. Portugal, the European Court of Human Anheuser-Busch Inc. v. Portugal, the European Court of Human Anheuser-Busch Inc. v. PortugalRights (ECHR) decided that a trademark registration constituted a “possession” under Article 1 of Protocol 1 to the European Convention on Human Rights (Convention). Application No. 73049/01. The ECHR decision marks the fi rst time the Conven-tion’s fundamental private property rights guarantee has been tested in the context of the confl ict between trademarks and geographical indications.

The case concerned Anheuser-Busch’s attempt to register the BUDWEISER mark in Portugal. Anheuser-Busch fi led its Por-tuguese application for BUDWEISER in 1981. Appellations of ori-gin protected in Portugal under the Lisbon Agreement at that time included the Czech brewery Budejovický Budvar’s term “Budweiser Bier.” Those appellations of origin eventually were cancelled as be-ing null and void, and in 1995 the Portuguese Intellectual Property Institute granted a registration for the trademark BUDWEISER. Meanwhile, in 1986, Portugal and what was then Czechoslovakia concluded a bilateral agreement on the protection of geographical indications. That agreement protected the designations “Cesko-budejovicke Pivo” and “Ceskobudejovicky Budvar” for beer from Ceské Budejovice.

Based on that agreement, Budejovický Budvar challenged the BUDWEISER registration. The Court of First Instance of Lisbon

dismissed Budejovický Budvar’s action. The Court of Appeals overturned that decision, fi nding that registration of the trade-mark BUDWEISER violated the 1986 agreement, despite the fact that—as the court itself stated—the trademark BUDWEISER was neither misleading in Portugal nor understood by Portuguese con-sumers as possibly referring to a city in the Czech Republic. The Portuguese Supreme Court upheld the appellate decision.

Anheuser-Busch then fi led a complaint with the ECHR, arguing that the Portuguese Supreme Court’s interpretation of the 1986 agreement was an unlawful expropriation of the BUDWEISER trademark.

The ECHR unanimously held that a trademark constitutes a possession within the meaning of Protocol 1, Article 1 of the Convention. The Court did not, however, look at the situation after the trademark was registered in 1995. Instead, the Court focused on the trademark’s status when the 1986 agreement was concluded. At that time, the trademark application was still pend-ing. Therefore, the crucial question for the Court was whether the trademark application was a protected legitimate expecta-tion—that is, whether the application constituted such a strong legal position that it amounted to a possession within the meaning of Protocol 1, Article 1 of the Convention. The fi ve-judge majority

Gain a global perspective on your trademark registrations.

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• Get an up-to-date status report on the Madrid Protocol from the USPTO and Madrid fi lers “in the trenches”

• Learn the latest strategies for using multinational registration systems as well as which ones work best for your trademarks

• Meet with your colleagues from around the world to discuss the impact of new registration options

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Sponsorship opportunities are available for this program. For sponsor information, visit www.inta.org/sponsor or email sponsorship@inta.org.

International Trademark Registration Strategies Forum

March 6 – 7, 2006 | New York, New York, USA

SEE TRADEMARK PROPERTY RIGHTS ON PAGE 8

Representing Trademark Owners Since 1878January 1, 20068

Feature FocusFeature FocusTrademark Property Rights CONTINUED FROM PAGE 7

acknowledged several property right elements of a trademark appli-cation (assignability, partial enforceability), but nevertheless found that the application did not yet have the strength of a legitimate expectation. Accordingly, the majority dismissed the complaint.

In contrast, Section President Jean-Paul Costa of France and ECHR Vice President Ireneu Cabral Barreto of Portugal dissented, disagreeing with the majority as to the legitimate expectation issue:

The totality of the elements leads us to consider that the Plaintiff was indeed the holder of a property interest recog-nized by Portuguese law. In fact, it could expect to see its application examined and approved to the extent that the obstacles raised by the Czech company had been dismissed by the appropriate bodies and no other reason for refusal of its application existed at that time. In short, the Plaintiff had a legitimate expectation that was suffi ciently strong to deserve protection under Protocol 1, Article 1.

The dissent concluded that the expropriation of this possession was disproportionate and therefore unlawful under Protocol 1, Article 1.

That the ECHR has endorsed fundamental rights protection for trademark owners is to be welcomed. There are several bilateral or multilateral treaties that permit geographical indications to trump prior trademarks, particularly in the fi eld of wines. Governments are likely to act more cautiously in the future when negotiating such treaties; the Doha Round WTO negotiations on the proposed claw-back of certain designations for the benefi t of EC geographi-cal indication owners will test this for the fi rst time.

However, the decision does not put trademark rights fully on a par with other “legitimate expectations” protected as private property. The majority opinion appears not to appreciate the fundamental importance of the principle of priority in trademark law. When a party fi les a trademark application, the party secures a legally protected position that later relative rights, such as geo-graphical indication rights based on a bilateral agreement, cannot undo. This principle is fi rmly established in the national laws of

Convention member states as well as TRIPS Article 24(5):

Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been ac-quired through use in good faith either:

(a) before the date of application of these provisions in that Member as defi ned in Part VI; or

(b) before the geographical indication is protected in its country of origin;

measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographi-cal indication.

The dissent pointed out that the ECHR previously had recognized legitimate expectations in other contexts similar to trademark applications. The dissent referred to the Court’s 1991 decision in Pine Valley Developments Ltd. and others v. Ireland, in Pine Valley Developments Ltd. and others v. Ireland, in Pine Valley Developments Ltd. and others v. Irelandwhich the ECHR held that under the Convention, delivery of an urban development certifi cate established a protectable legal position. By treating trademarks differently, the ECHR arguably distinguished without justifi cation rules applicable to intellectual property rights from rules applicable to other types of property rights. Such rules are fairly widespread in the Convention member states, for instance, in the context of urban planning law and real estate transfer, where effective transfers require recordal in land reg-isters (e.g., Anwartschaftsrechte in Germany).Anwartschaftsrechte in Germany).Anwartschaftsrechte

It remains to be seen whether the decision will be appealed and whether the Court’s Grand Chamber will close the gap between intellectual property rights and other types of property rights. Such a step would accord with the development of both national con-stitutional law and public international law, which fi rmly establish that trademark rights are private property.

By Burkhart Goebel, Lovells, Alicante, Spain

AOL, CROSSFIRE Marks in FilmPreviously seen in the 1998 fi lm “You’ve Got Mail,” AOL returns for another lead product placement role in “Cry_Wolf.” The psychological thriller is a modern-day retelling of Aesop’s fable “The Boy Who Cried Wolf,” in which a group of high school students use AOL Instant Messenger to spread seemingly innocent lies about a serial killer. Also spotted in the fi lm is DaimlerChrysler Corporation’s CROSSFIRE car, driven by legendary rock-and-roll star Jon Bon Jovi. Bon Jovi plays a journalism teacher who warns students of the dangers of starting an online hoax. The fi lm is the fi rst feature-length movie directed by Jeff Wadlow, who won the 2002 Chrysler Million Dollar Film Festival in which directors who featured a Chrysler vehicle in a short fi lm were eligible for a $1 million prize.

Source: Detroit Free Press, “Modern Marketing: Chrysler Weaves Ad into Film,” September 16, 2005; Contributor: Tarah S. Grant, Hogan & Hartson LLP, McLean, Virginia, USA

ANNUAL MEETING SPONSORSHIP

Exhibition and sponsorship opportunities are now available for INTA’s 128th Annual Meeting in Toronto, Ontario, Canada, from May 6 – 10, 2006.

More than 7,000 trademark professionals from around the world are expected to attend the Annual Meeting. Don’t miss this unparalleled opportunity to gain exposure for your products and services at the largest and most highly-regarded gathering of trademark professionals in the world.

For information on how to become an Annual Meeting exhibitor or sponsor, visit www.inta.org/toronto.

www.inta.org Vol. 61, No. 1 9

Law and PracticeLaw and Practice

The phased introduction of the Benelux trademark opposition procedure will be complete in 2006. The Benelux Trademark Offi ce (BTO) has announced that beginning January 1, 2006, all new Benelux trademark applications will be subject to third-party opposition.

The fi rst phase was launched in 2004. At that time, opposition could be fi led only against applications in Class 2, 20 or 27, which covered just 767 of about 23,000 applications fi led that year. In 2005, Classes 6, 8, 13, 15, 17, 19 and 21 were added, and in 2006 opposition will be possible in all classes.

This phased introduction has been copied from France and has been intended to give the BTO time to gain experience and adapt its internal organization accordingly.

Who May Oppose?Opposition may be fi led by the holder of a Benelux, Community or international trademark application or registration. Licensees are also entitled to oppose, provided they have the holder’s express consent.

Filing DeadlineOpposition must be fi led within two months of the fi rst day of the month following the month in which the application was published.

Opposition ProcedureIn principle, opposition proceedings commence two months after the BTO has sent written notice to the parties that an admissible opposition has been fi led. After notifi cation, there is a two-month cooling-off period, during which the parties may try to resolve the matter without involving the BTO. The cooling-off period may be extended at the parties’ request.

BENELUX

Introduction of Trademark Opposition Procedure to Be Complete in 2006Upon expiration of the cooling-off period, actual opposition

proceedings start. The petitioner (i.e., the party opposing the trade-mark) must fi le its arguments within two months. The respondent then has two months to reply.

The respondent may request proof of use of the trademark underpinning the opposition. In such a case, the petitioner has two months to produce such evidence. The respondent must then answer within two months.

Once the parties have fi led all relevant evidence and arguments, the BTO may request additional information from either party and/or organize a hearing before rendering its decision.

Decisions of the BTO’s opposition division can be appealed within two months to the court of appeal in The Hague, Brussels or Luxembourg. The territorial jurisdiction of these courts depends on, in descending order of importance, the respondent’s address, the address of the respondent’s representative or the correspon-dence address indicated in the fi ling. If none of these addresses is in the Benelux, the petitioner’s address or that of its representative will be taken into account. If no address is in the Benelux, the appel-lant can choose the venue it prefers from among the three appellate courts.

Fees and CostsThe opposition fee is €1,000, with an additional €100 for each right invoked over three. The losing party bears the costs.

Contributors: Florence Verhoestraete and Boudewijn van Vondelen, Nau-taDutilh, Amsterdam, Netherlands; Verifi er: Freyke Bus, CMS Derks Star Busmann, Utrecht, Netherlands

On October 5, 2005, the Canadian Intellectual Property Offi ce (CIPO) issued a notice seeking comments on proposed amend-ments to Trade-marks Opposition Board procedures. Practices were last amended in 1996, and since then the Federal Court of Canada has issued two decisions commenting upon Opposition Board procedures. Novopharm Ltd. v. Ciba-Geigy Canada Ltd. and Novopharm Ltd. v. Astra Aktiebolag, 15 C.P.R. (4th) 327; and Novopharm Ltd. v. Astra Aktiebolag, 15 C.P.R. (4th) 327; and Novopharm Ltd. v. Astra AktiebolagNovopharm Ltd. v. AstraZeneca AB, 21 C.P.R. (4th) 289. Based on those decisions, the proposed amendments provide a procedure for interlocutory assessment of the suffi ciency of pleadings.

Currently, when a Statement of Opposition is fi led, the Opposi-tion Board need determine only whether the opposition raises at least one substantial issue. The Board does not take responsibility for ensuring that all grounds are properly pleaded. If the proposed amendments are adopted, however, the applicant may request an interlocutory ruling to strike all or any portion of the Statement of Opposition before the applicant submits its Counterstatement. If the applicant makes such a request and the Board considers

CANADA

Comments Sought on Proposed Opposition Proceduresthe pleading insuffi cient, the opponent generally will be given the opportunity to reply and/or request leave to fi le an amended Statement of Opposition. Once the proceedings have reached the evidence stage, however, the suffi ciency of pleadings will not be considered until the decision stage. This proposal relates only to the Statement of Opposition; the Board will not make interlocu-tory rulings regarding Counterstatements.

CIPO also has taken this opportunity to propose other amend-ments to opposition practice, which include permitting service of documents by courier, reducing from four months to two months the time frame for fi ling evidence after completing cross-examina-tions of the other party, and possibly conducting cross-examina-tions without the requirement for personal attendance.

CIPO currently is considering comments from the professions and interested parties. For now, the proposed amendments remain in the consultation process.

Contributor: Keltie Sim, Smart & Biggar/Featherstonhaugh, Toronto; Verifi er: Michelle Wassenaar, Johnston Wassenaar LLP, Toronto

Representing Trademark Owners Since 1878January 1, 200610

Law and PracticeLaw and PracticeEUROPEAN COURT OF JUSTICE

Specifications for Retail Trade ServicesThe European Court of Justice (ECJ) has clarifi ed what specifi ca-tions are required in trademark applications for retail trade ser-vices. Praktiker Bau- und Heimverkermärkte AG (Case C-418/02).Praktiker Bau- und Heimverkermärkte AG (Case C-418/02).Praktiker Bau- und Heimverkermärkte AG

A German company had fi led an application for the trademark PRAKTIKER for services described as “retail trade in building, home improvement, gardening and other consumer goods for the do-it-yourself sector.” The German Patent and Trademark Offi ce rejected the application, holding that the description of services failed to denote independent services having autonomous eco-nomic signifi cance. Instead, the applicant should have applied for a trademark for the distributed goods.

On July 7, 2005, the ECJ ruled that “trade” includes all activi-ties carried out by the trader for the purpose of encouraging the

conclusion of a transaction with the trader rather than with a competitor. To register a trademark for retail trade services, it is not necessary to specify the services. Rather, the application should provide details about the goods or types of goods to which the services relate.

This decision should encourage retail traders to register their trademarks for services in connection with retail trade.

European Court of Justice decisions are available online at http://curia.eu.int.

Contributor: Dr. Utz Kador, Kador & Partner, Munich, Germany; Veri-fi er: Dr. Elisabeth Vorbuchner LL.M., Zanker & Vorbuchner, Augsburg, Germany

UNITED STATES

Third Circuit Addresses Nominative Fair UseIn Century 21 Real Estate v. LendingTree, 425 F.3d 211 (3d Cir. 2005), the U.S. Court of Appeals for the Third Circuit held that a plaintiff must show that defendant’s use of plaintiff ’s trademark creates a likelihood of confusion before the burden shifts to defen-dant to show that its use is a fair use. The case dealt with so-called nominative fair use, where defendant has used plaintiff ’s trademark to refer to plaintiff, as opposed to classic fair use, where defendant makes a non-trademark, descriptive use of a term that is plaintiff ’s trademark. Thus, the U.S. Supreme Court’s decision in KP Per-manent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), which addressed classic fair use, was not determinative.

Plaintiff sued defendant for trademark infringement arising from various uses of plaintiff ’s marks on defendant’s real estate broker referral services website. Defendant’s website included pic-tures showing one of plaintiff ’s logos, as well as listings indicating that plaintiff ’s real estate services were among the real estate broker referrals defendant offered. The district court granted plaintiff ’s motion for a preliminary injunction enjoining defendant from certain uses of plaintiff ’s marks. This appeal followed.

The Third Circuit held that the plaintiff must succeed in prov-ing likelihood of confusion under the traditional likelihood of confusion test, disregarding those factors that are not relevant to a fair use case. If the plaintiff does so, then the defendant must show that its use is fair. To determine fair use, the court adopted a three-pronged test evaluating whether: 1) the use of plaintiff ’s mark is necessary to describe both plaintiff ’s and defendant’s products or services; 2) defendant uses only as much of plaintiff ’s mark as is necessary to describe plaintiff ’s product; and 3) defendant’s con-duct or language refl ects the true and accurate relationship between plaintiff ’s and defendant’s products or services.

In light of this holding, the court reversed and remanded for the district court to evaluate the facts in accordance with the new test.

The Third Circuit’s opinion is available online at: http//www.ca3.uscourts.gov/opinarch/034700p.pdf

Contributor: Janice Housey, Roberts, Mlotkowski & Hobbes, P.C., McLean, Virginia, USA; Verifi er: Jessica S. Sachs, Harness, Dickey & Pierce, P.L.C., Troy, Michigan, USA

ZIMBABWE

Classification of Retail and Wholesale ServicesThe Controller confi rmed in October 2005 that retail and whole-sale services are classifi ed in Class 35 of the International Clas-sifi cation of Goods and Services effective August 19, 2005. The classifi cation in the regulations will be amended accordingly, and a circular also will be sent out.

Pending applications fi led before the new regulations were in-troduced on August 19, 2005, must comply with the old classifi ca-tions, which place retail and wholesale services in Class 42. Once

pending applications have proceeded to registration, they must be amended from Class 42 to Class 35 by the date of fi rst renewal or split into two classes if the proprietor requires registration for services in both classes.

Source: Stephen Goldberg, Spoor & Fisher, Pretoria, South Africa; Verifi er: Nicky Garnett, Gill, Godlonton & Gerrans, Harare, Zimbabwe

www.inta.org Vol. 61, No. 1 11

Your chance to help lead INTA’s 2007 Annual Meeting has arrived!

Moderators are needed to facilitate Table Topic sessions at Annual Meeting 2007 in Chicago, Illinois. Table Topics are being developed now, and we need volunteers to lead these interactive, casual events. Facilitate conversation over breakfast or lunch with ten attendees who are interested in your topic. Keep the conversation on track and share your thoughts and ideas over a meal.

To sign up as a moderator, email Table Topic team leader Bernard Malone at Bernard.Malone@bakernet.com.ar byFebruary 1, 2006.

Include the following in your email:

• A short biography, including areas of signifi cant legalexperience

• The topic that interests you most

• Whether you would be able to facilitate a Table Topic ina language other than English

Don’t let this great opportunity pass you by!We have a limited number of topics, so volunteers will be

assigned to topics depending on their interest and experience.

INTA BULLETIN BOARDAlisa D. (Lewis) Hurlburt has joined Philip Morris USA in Richmond, Virginia, USA, as Senior Counsel for Trademarks and Copyrights. Ms. Hurlburt started her trademark career with INTA, and was with White & Case LLP for eight years before joining Philip Morris.

Natalie Kernisant and Natalie Kernisant and Natalie Kernisant Jared Solovay have joined Pattishall, Jared Solovay have joined Pattishall, Jared SolovayMcAuliffe, Newbury, Hillard & Geraldson LLP in Chicago as associates. Ms. Kernisant is a recent graduate of the University of Virginia School of Law. Mr. Solovay was formerly with Gardner Carton & Douglas LLP.

Elizabeth Pearce has been named Director of the Intellectual Property Group at American International Group, Inc. (AIG), handling both their trademark and patent portfolios.

Dr. Jochen Schäfer has joined the Munich offi ce of Hogan & Dr. Jochen Schäfer has joined the Munich offi ce of Hogan & Dr. Jochen SchäferHartson L.L.P. Dr. Schäfer was formerly a managing partner at Rödl & Partner.

The “INTA Bulletin Board” announces job changes or other signifi cant career news about individuals who belong to INTA organizations. To submit an item for consideration, send a brief message to bulletin@inta.org.

UNITED STATES

Sixth Circuit Rejects Initial Interest Confusion for Product ShapesThe U.S. Court of Appeals for the Sixth Circuit, in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539 (6th Cir. 2005), reversed a district court’s grant of summary judgment to Gib-son, fi nding that Gibson could not show that Paul Reed Smith’s “Singlecut” guitar infringed the two-dimensional shape of Gibson’s “Les Paul” guitar. The court rejected Gibson’s theories of initial interest confusion and post-sale confusion, as well as a combina-tion of those theories.

In a case of fi rst impression, the court refused to apply the initial interest confusion doctrine to product shape trademarks, determining that since a limited number of product shapes exist, a legitimately competing product could create some initial interest confusion when viewed from afar because of its resemblance to the better-known product. To apply initial interest confusion would allow the trademark owner of the product shape to impermissibly extend its rights to a large number of shapes that are similar only from a distance.

With respect to the doctrine of post-sale confusion, the court stated that this theory protects trademark owners from damage to

their reputation resulting from the sale of competitors’ lower-qual-ity products. In the instant case, because Gibson conceded that Paul Reed Smith’s guitars are not inferior to Gibson’s, the court concluded that the post-sale confusion theory was not applicable.

Finally, Gibson argued that its reputation would be damaged by the confusion that occurs when a potential purchaser sees a musician playing a Paul Reed Smith guitar and believes it to be a Gibson guitar. This hybrid theory of confusion, described by the court as the “smoky-bar confusion” theory, was also rejected because Gibson conceded that Paul Reed Smith’s guitars were of high quality.

Because none of Gibson’s theories supported its claim of con-sumer confusion, the court entered summary judgment in favor of Paul Reed Smith.

The Sixth Circuit’s opinion is available online at: http://www.ca6.uscourts.gov/opinions.pdf/05a0387p-06.pdf

Contributor: Jessica S. Sachs, Harness, Dickey & Pierce, P.L.C., Troy, Michigan, USA; Verifi er: Leigh Ann Lindquist, Sughrue Mion PLLC, Wash-ington, D.C.

International Trademark Association655 Third Avenue, 10th FloorNew York, NY 10017 USA+1-212-768-9887 • f: +1-212-768-7796www.inta.org • info@inta.org

January 6, 2006Second Learned Professors Trademark SymposiumWashington, DC, USA (By invitation only)

January 16 – 27, 2006Roundtable: Practical Approaches to Trademark Clearance IssuesVarious U.S. cities

February 2 – 3, 2006Emerging Issues in Trademark Law ForumSavannah, Georgia, USA

February 20 – March 3, 2006Roundtable: CTM v. Madrid Protocol: One Year LaterVarious U.S. cities

February 25, 2006Saul Lefkowitz Moot Court Regional CompetitionsAtlanta, Chicago, New York and San Francisco, USA

March 6 – 7, 2006International Trademark Registration Strategies ForumNew York, New York, USA

March 13 – 17, 2006Workshops: Protecting Your Brand on the Internet (For non-attorney trademark professionals and new attorneys) New York, New York, USA

INTA BULLETIN COMMITTEETo contact a member of the INTA Bulletin Committee, send an email to the managing editor at bulletin@inta.org.

ChairMary DeLongis, Nautica Enterprises, Inc.

Vice ChairKay Rickelman, Spoor & Fisher

Feature Articles: Member Benefi ts & ServicesPatrick Gallagher, Fulbright & Jaworski L.L.P.

Feature Articles: Policy & PracticeBrian Winterfeldt, Ballard Spahr Andrews & Ingersoll LLP

Law & Practice: AmericasJanice Housey, Roberts, Mlotkowski & Hobbes, P.C.

Law & Practice: Asia-Pacifi cLindsay Esler, Deacons

Law & Practice: Europe and Central AsiaClaus Eckhartt, Bardehle Pagenberg Dost Altenburg Geissler

Law & Practice: Middle East and AfricaStephen Goldberg, Spoor & Fisher

STAFFExecutive DirectorAlan C. Drewsen, International Trademark Association

Director, Publishing Randi Mustello, International Trademark Association

Managing Editor, INTA BulletinJames F. Bush, International Trademark Association

Associate Editor, INTA BulletinJoel L. Bromberg, International Trademark Association

Designer Katie Frichtel, International Trademark Association

OFFICERS & COUNSELPresidentPaul W. Reidl, E. & J. Gallo Winery

President ElectDee Ann Weldon-Wilson, Exxon Mobil Corporation

Vice PresidentRhonda Steele, Mars, Incorporated

Vice PresidentRichard Heath, Unilever P.L.C.

TreasurerHeather C. Steinmeyer, Blue Cross and Blue Shield Association

SecretaryGerhard R. Bauer, Daimler-Chrysler AG

Counsel:David H. Bernstein, Debevoise & Plimpton LLP

INTA Department Email AddressesExecutive Director: executivedirector@inta.orgAdministration & Finance: adminfi nance@inta.org Customer Service: customerservice@inta.orgPrograms: meetings@inta.orgINTA Bulletin: bulletin@inta.orgJob Bank: jobbank@inta.orgMembership: membership@inta.orgPublications: publications@inta.orgPublic Policy: tmaffairs@inta.orgPublic Relations: publicrelations@inta.orgRoundtables: roundtables@inta.orgSponsorship & Exhibitions: sponsorship@inta.orgThe Trademark Reporter®: tmr@inta.org

© 2006 International Trademark Association

Mark Your Calendars

Although every effort has been made to verify the accuracy of items carried in this

newsletter, readers are urged to check independently on matters of specifi c concern or

interest. The INTA Bulletin primarily relies on members of the INTA Bulletin Committee

and INTA staff for content but also accepts submissions from others. The INTA Bulletin

Editorial Board reserves the right to make, in its sole discretion, editorial changes to

any item offered to it for publication.

Additional Details About INTA’s EventsFor a full description and to register, visit www.inta.org/events.

Exhibitions and SponsorshipTo inquire about sponsorship or exhibition opportunities for INTA’s events, visit www.inta.org/sponsor.www.inta.org/sponsor.www.inta.org/sponsor

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