Cigarette Counterfeiting in ParaguayIn the past few years, more than 40 cigarettemanufacturing companies have been establishedin the Paraguayan region of Alto Parana, whichborders Brazil. Since the total population ofParaguay is only approximately six million, it isobvious that the massive quantity of cigarettesbeing produced is mainly for export. This leads totwo questions: Under what conditions are the cig-arettes being manufactured, and how do theycross the Paraguayan border?

ManufacturingWith the exception of a few locally organized cig-arette producers, the business of most of theParaguayan cigarette manufacturers is conductedon behalf of foreign companies. These companiesindicate to the local manufacturers the trade-marks that must be used on the cigarette pack-ages, and, in many instances, they also providethe corresponding labels.

However, many of the local manufacturers donot inquire about the true owners of the trade-marks they are using. When the foreign companydoes not own the trademark being used, theentire relationship becomes a counterfeiting oper-ation, involving the foreign company, local manu-facturer, distributor, exporter, printer and supplierof labels.

ExportCounterfeit cigarette producers have their ownroutes, through land or air, to send the cigarettesto border countries such as Argentina, Brazil andBolivia. Some producers have substantial politicalpower that enables them to maintain smugglingoperations in the face of the helpless authorities.Moreover, Paraguayan customs officers often failto ascertain whether the cigarette exporters arethe legitimate owners of the trademark being

September 15, 2004 Vol. 59, No. 17

INTA President Jacqueline Leimer spoke withgovernment ministers and trademark registrars atthe Council of Ministers Meeting of the AfricanRegional Industrial Property Organization(ARIPO) in Dar EsSalaam, Tanzania, onAugust 12 and 13, 2004.

During the meeting,Ms. Leimer presented adonation of INTA publi-cations to ARIPO’s direc-tor general designate, GiftSibanda, for use in theARIPO Library and StudyCentre in Harare,Zimbabwe.

At the opening session,Ms. Leimer acknowledgedthe strong and enduring relationship betweenINTA and ARIPO and their mutual commit-ment to the advancement of trademarks and IPprotection within the ARIPO Member States.This relationship dates back to 1998, whenARIPO became a member of INTA and joinedits OAPI/ARIPO Subcommittee.

During the meeting’s roundtable on intellectu-al property and public policy issues, whichincluded the ARIPO country delegations, Ms.

Leimer focused on the promise of the BanjulProtocol as a vehicle to facilitate the handling oftrademark applications and renewals and furtherharmonization of trademark law and practice in

the ARIPO Member States.She stated that INTA sup-ports the Banjul Protocolbecause it is a system thatwill provide trademarkowners with rights that canbe obtained with minimumcomplication and delay in anumber of African coun-tries at an affordable price.The centralized administra-tion of formalities such as

filing, publication and regis-tration offers opportunity

for cost-efficiency, which can benefit both trade-mark owners and national registries, particularlyif resources are limited.

While she commended Botswana, Lesotho,Malawi, Namibia, Swaziland, Tanzania, Ugandaand Zimbabwe for having joined the BanjulProtocol, Ms. Leimer urged the remaining eightMember States to join as well. She also stressedthe need for all states to amend their national

INTABulletinIN THIS ISSUE

The Voice of the International Trademark Association

INTA President Addresses ARIPO Council of Ministers

SEE PRESIDENT ON PAGE 7

Association NewsWelcome New MembersINTA Bulletin Board

In the News

Cuba Wins Injunction in U.S. Court for COHIBAThe UGG TrademarkUSPTO Rules Change

Law and Practice

European Court of JusticeECJ Decides on Color MarksIndiaChennai High Court UpholdsTransborder ReputationKoreaRecent Legislative Developments onthe Prevention of Domain NameCybersquatting PeruLimitation Period on ActionsPolandCourt Control of Polish Patent OfficeDecisionsUnited StatesPatents.com Not Registrable

2

SEE CIGARETTES ON PAGE 7

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INTA President Jacqueline Leimer with ARIPODirector General Designate Gift Sibanda

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Seventeen new organizations became INTA members in August 2004.Following is a list of these members. For full contact information, visit theINTA Membership Directory on the Members Only Site of the INTA web-site at www.inta.org/members.

Abercrombie & Fitch Management Co., New Albany, Ohio, USA; AdventTechnology, Inc., San Francisco, California, USA; Barrett & McNagny,Fort Wayne, Indiana, USA; Dickinson Dees, Newcastle upon Tyne, UK;Edwards & Angell, LLP, Boston, Massachusetts, USA; Emerson Electric deMexico, S.A. de C.V., Tlanepantla, Mexico; Jagtiani & Guttag, Fairfax,Virginia, USA; Johns Manville, Littleton, Colorado, USA; KohlmanHamlin LLP, Miami, Florida, USA; Martinez & Nunez S.C., Mexico,Distrito Federal, D.F., Mexico; MedicAlert Foundation, Turlock, California,USA; Nahar Al Dalbahi Law Office, Riyadh, Saudi Arabia; Office Depot,Inc., Delray Beach, Florida, USA; Piper Rudnick LLP, Paris, France;Plougmann & Vingtoft Norway, Oslo, Norway; Russell Corporation,Atlanta, Georgia, USA; Schiff Hardin, LLP, New York, New York, USA

Representing the Trademark Community since 18782 Vol. 59, No. 17

Association NewsWelcome New Members

Glenn Bacal joined Jennings, Strouss & Salmon,P.L.C. in Phoenix, Arizona, USA.

Marc Lieberstein joined Pitney Hardin LLP in NewYork, New York, USA.

Pamela J. Carter, formerly of United States FilterCorporation, joined Lowrie, Lando & Anastasi inCambridge, Massachusetts, USA.

Philip Davison, formerly of Gateway, Inc., joinedNike, Inc. as trademark counsel.

Kimberly N. Reddick, formerly of Sterne, Kessler,Goldstein & Fox, joined the Washington, DC officeof Bell, Boyd & Lloyd as an Associate.

Gunnel Nilsson, formerly of Pharmacia, joinedGroth & Co. in Stockholm, Sweden.

Dirk Visser, formerly of Stibbe, joined Klos MorelVos & Schaap in Amsterdam, Netherlands.

Albert Robin, John J. Torrente, Alexandra B.Urban, Anastasia Zhadina, Arlana S. Cohen,Eugene L. Flanagan III and Mark J. Specinerjoined Cowan, Liebowitz & Latman, P.C. in NewYork, New York, USA.

Edward A. White, a partner with Hartman &Craven LLP in New York, New York, USA, wasappointed to serve as chair of the committee on com-plex civil litigation and the committee on construc-tion litigation of the New York State Bar Association.

Anthony T. Yeh, Daniel N. Lebensohn, Sean A.Altschul and Anthony J. Palumbo joined Hartman& Craven LLP in New York, New York, USA as asso-ciates. Michael S. Paradise became counsel to thefirm in the corporate, commercial and securitiesgroup.

Helen Newman joined Kilpatrick Stockton LLP inLondon, United Kingdom, and Christopher Woodsjoined the firm in New York, New York, USA.

Fabio Angelini, formerly a partner with SocietàItaliana Brevetti in Rome, Italy, joined IntelCorporation in Santa Clara, California, USA, as sen-ior attorney.

Alejandro J. Cacho, formerly with Reichard &Calaf, P.S.C. formed the firm of Alejandro J. CachoLaw Offices, in San Juan, Puerto Rico.

Gene Bolmarcich, formerly of Caterpillar Inc.,joined Liz Claiborne, Inc. as intellectual propertycounsel.

INTA Bulletin Board

CALLING ALL ADMINISTRATORS!

For a comprehensive, practical education in trademarklaw for both novice and experienced trademark professionals, look no further.

INTA’s Trademark Administrators Conferenceprovides intellectual property professionals with practical education in the trademark issues that arecritical to success.

October 3 – 6, 2004Crystal Gateway MarriottArlington, Virginia, USA

For more information, or to register, visitwww.inta.org/events.

Also, don’t miss the revised and expanded third editionof Trademark Administration, coming in November2004! This classic title offers a comprehensive introduc-tion to trademark practice and procedures. Visitwww.inta.org/pubs in the coming months for updatedinformation.

Special thanks to the Gold Sponsor of the Trademark Administrators Conference:

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INTA Bulletin Volume 59, Number 13 included an article, “TheUGG Boot Controversy,” that summarized previous articles from theAustralian press. The article describes the conflict between several smallAustralian businesses, which claim that “ugg” is generic in Australiafor sheepskin boots, and American shoe company Deckers OutdoorCorporation, parent of UGG Holdings, Inc. (“UHI”), which sellssheepskin boots under the registered UGG trademark. UHI contactedINTA in response to the Bulletin article, in particular the Australianarticles used as sources. The company provided the following comment:

UHI is the owner of the internationally well-known UGGtrademark for sheepskin boots and accessories. It owns registrationsfor the UGG trademark in International Class 25 in thirty-ninecountries, including U.S. Reg. No. 1,973,743, which has achievedincontestable status. UHI’s oldest registration for UGH (a phonet-ic equivalent to UGG) dates back to 1971 in Australia.

The popularity of the UGG brand has exploded in recent years,driven in part by widespread popularity of UGG brand boots withHollywood celebrities. This popularity has led to numerous coun-terfeits. Unscrupulous dealers have sought to mislead consumers tocapitalize on the fame of the UGG brand. In particular, individualsand small businesses based in Australia have used the Internet tosell look-alike sheepskin boots to U.S. and European consumers

using UHI’s UGG trademark. This has led to numerous instancesof consumer confusion and deception. While UHI welcomes faircompetition, it cannot condone others using its UGG trademarkto deceive consumers.

UHI has been successful in fighting these infringers. UHI hasbeen awarded dozens of domain names that include the UGGtrademark through domain name actions (see, e.g., UGG Holdings,Inc. v. Barclay et al., NAF Claim No. FA0312000217320, availableat www.register.com/udrp/ugg-v-barclay.pdf ), has shut down hun-dreds of infringing eBay auctions, and has been successful in courtactions in the United States and Australia (including a successfulsearch and seizure operation in Australia against a major counter-feiter). UHI has successfully defended against charges of generi-cism.

Factually inaccurate articles and accounts regarding the UGGtrademark have appeared on the Internet, and in many cases havebeen generated by infringers. UHI regrets that INTA re-publishedinformation from these reports in the July INTA Bulletin, but isgrateful to INTA for this opportunity to set the record straight.

3Vol. 59, No. 17www.inta.org

Judge Robert Sweet, Jr., of the U.S. District Court in New York, recently ruledthat U.S. cigar maker General Cigar could not use the trademark COHIBA, aftera Cuban cigar maker sued General Cigar for trademark infringement. The judgereached this decision notwithstanding the fact that under the U.S. embargo ofCuba, the Cuban COHIBA cigars cannot legally be sold in the United States.

Among cigar lovers, the COHIBA cigar is considered one of the world’s finest.Cuban President Fidel Castro’s personal cigar maker developed the COHIBAcigar in the late 1960s. In 1997, General Cigar began marketing a COHIBAbrand cigar in the United States from tobacco grown in the Dominican Republicfrom Cuban seeds. General Cigar apparently alleged that because the seeds for thetobacco came from Cuba, its cigars were genuine COHIBA cigars.

The judge ruled that if General Cigar were to continue to use the trademarkCOHIBA, consumers would be confused into believing that the cigars were thesame as the COHIBA cigars from Cuba.

Source: “America may not like Cuba, but the law still applies,” Detroit Free Press, August 16,2004. Editor: Fred Carl III, Cantor Colburn LLP, Troy, Michigan, USA

Cuba Wins Injunction in U.S. Court for COHIBA

In the News

Pursuant to a notice in the August 19, 2004 Federal Register, theU.S. Patent and Trademark Office (USPTO) is amending its rulesto eliminate two requirements.

Requests for amendment or correction of a registration are nolonger required to be accompanied by the original certificate of reg-istration or a certified copy thereof. In addition, applications to sur-render a registration for cancellation are no longer required to beaccompanied by the original certificate or a certified copy.

The rules change takes effect on September 20, 2004.

By Michael Heltzer, INTA, New York, New York, USA

USPTO Rules Change

The UGG Trademark

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4 Vol. 59, No. 17 Representing the Trademark Community since 1878

Law and Practice

New Internet Address Resource ActThe New Internet Address Resource Act (the “Act”), which tookeffect on July 30, 2004, is designed to promote the fair and effec-tive use and allocation of Internet addresses (e.g., IP addresses andother Internet protocols). It covers only those domain names fea-turing a country-code top-level domain of “kr.”

The Act prohibits the registration of a domain name for thepurpose of preventing a legitimate right owner from registeringthe same domain name, or for the purpose of unjust enrichment.Furthermore, the Act allows the injured right owner to seek thede-registration of a domain name through litigation.

New Anti-Cybersquatting Provision in the UnfairCompetition Prevention and Trade Secret Protection Law(UCPA)This new UCPA provision, which took effect on July 21, 2004,prohibits the following acts as constituting unfair competition.

“The act of registering, maintaining, transferring or using adomain name which is similar to another person’s name, tradename, trademark or any other indicator which is widely known inKorea for the purpose of (1) selling or renting the domain nameto the rightful owner of the trademark or other indicator; (2)interfering with the rightful owner’s registration and use of adomain name; or (3) obtaining commercial gain.”

Prior to the above amendment, the elements of conventionaltrademark infringement or unfair competition were required for aplaintiff to prevail against a cybersquatter who had registered adomain name incorporating the plaintiff ’s trademark or tradename. Furthermore, separate domain recovery procedures, such asthose under the Uniform Domain Name Dispute Resolution

Policy, were required. With the above amendment, it is now pos-sible for a plaintiff to seek injunctive and/or monetary reliefagainst a cybersquatter, including the de-registration of thedomain name. However, criminal remedies are not available.

The major difference between the amended UCPA and the Actis that the former requires the protected mark to be famous,whereas the latter does not. In addition, while a plaintiff in aUCPA action may seek injunctive and/or monetary relief (includ-ing the de-registration of a domain name), the Act provides forthe de-registration of a domain name as the exclusive form ofrelief.

Contributor: Jay J. Kim, Kim & Chang, Seoul, Korea; Verifier: Joong-hyo Kim,Choice Kim International Property Law, Seoul, Korea

PERULimitation Period on ActionsAndean Decision 486 contains several provisions establishingtime limits on actions. For example, Article 244 provides that aninfringement action expires: (i) two years after the trademarkowner last had knowledge of the infringement or (ii) five yearscounted from when the infringement was last committed.

In Resolution 0500-2004-TPI-INDECOPI, the PTO consid-ered that these time limits start only from the date on which theAndean Decision became enforceable – that is, December 1,2000. The provisions on time limitations cannot be appliedretroactively.

The PTO applied similar criteria for partial cancellations(Article 165), which became possible only three years afterDecision 486 became enforceable, and it is expected that thePTO will apply similar criteria for cancellation due to genericness(Article 169) and for relative voidness actions (Article 172).

Source: Resolution 0500-2004-TPI-INDECOPI of June 3, 2004, file 161092-2002; Contributor: Claudia Fernandini, Clarke Modet & C°, Lima, Peru;Verifier: Alfredo Valencia, Valencia Law Office, Lima, Peru

KOREARecent Legislative Developments on the Prevention of Domain Name Cybersquatting

The Ladas Memorial Award was established and is support-ed by the law firm of Ladas & Parry LLP in memory of theoutstanding contributions to international intellectual prop-erty law made by the distinguished practitioner and authorStephen P. Ladas. The Award is presented once a year in twoauthor categories – Student and Professional. In each category, the Award is given to the paper judged best on thesubject of trademark law or a matter that directly relates toor affects trademarks. The purpose of the Award is to provide an incentive to further develop interest in the fieldof trademarks and to enhance the general understanding ofthis discipline.

The student winner of the Ladas Memorial Award is rec-ognized by a $2,000 cash award and financial support up to$1,000 for the student’s attendance at an educational pro-gram sponsored by the Brand Names Education Foundation(BNEF) or the International Trademark Association (INTA).The professional category is recognized by a US $2,000 cashaward. Award winners are invited to attend the 2005 BNEFGala in San Diego, California, USA.

The paper submission deadline is January 10, 2005.

To submit a paper, please contact:

Brand Names Education Foundation1133 Avenue of the Americas

New York, New York 10036-6710 USA+1-212-768-9885 • f: +1-212-768-7796

info@bnef.org • www.bnef.org

BNEF Ladas Memorial Aw a rd

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5Vol. 59, No. 17www.inta.org

EUROPEAN COURT OF JUSTICEECJ Decides on Color MarksOn June 24, 2004, the European Court of Justice (ECJ) handeddown Case C-49/02, a judgment relating to abstract colors orcolor combinations without contours.

The ECJ answered two questions referred to it by the GermanFederal Patent Court for a preliminary ruling on the interpreta-tion of Article 2 of the “First Directive 89/104 EEC of theCouncil, of 21 December 1988, to Approximate the Laws of theMember States Relating to Trade Marks,” in the context of Article15 (1) of the TRIPS Agreement.

A German company, Heidelberger Bauchemie GmbH, hadapplied to register blue and yellow as a trademark by submitting adepiction of the colors on a rectangular piece of paper, the upperpart of which was blue and the lower part of which was yellow.The application identified them with an internationally recog-nized color classification system. Protection was sought in relationto various products used in the building trade, including adhe-sives, solvents, varnishes, paints, lubricants and insulating materi-als. The German Patent and Trademark Office rejected the regis-tration of the abstract color mark on the grounds that it was notcapable of being represented graphically and, moreover, wasdevoid of any distinctive character.

On appeal, the German Federal Patent Court requested theECJ to clarify whether colors or combinations of colors satisfy theconditions for trademark capability if they are named in words byreference to a color sample and also identified according to a rec-ognized color classification system. In particular, the ECJ wasrequested to determine whether such an “abstract color mark” is:

(a) a sign; (b) sufficiently distinctive to be capable of indicatingorigin; and (c) capable of being represented graphically.

The ECJ answered these questions in the affirmative. However,the Court emphasized that the colors or color combination donot necessarily represent signs in the contexts in which they areused. Referring specifically to the color combination, the ECJheld that even if it satisfies the requirements for constituting atrademark in Article 2 of the Directive, it is still necessary for acompetent authority to decide whether the combination fulfillsother established requirements. In particular, these include therequirements in Article 3 of the Directive for registration as atrademark in relation to the goods or services to which the trade-mark is applied. Such an examination must take account of allrelevant circumstances of the case, including any use that hasbeen made of the sign in respect of which registration is sought.That examination must also take account of the public interestand not unduly restrict the availability of colors for other traderswho market goods or services of the same type as those in respectof which registration is sought.

With this decision, the ECJ has in effect expanded its positionin relation to single color abstract marks as previously expressed inthe Libertel decision (Case C-104/01) regarding color combina-tions.

Contributor: Claus M. Eckhartt, Bardehle Pagenberg Dost Attenburg Geissler,Munich, Germany; Verifier: Dr. Carl – Richard Haarmann, Boehment &Moehment, Munich, Germany

After considering an appeal filed by the appellant in Jolen Inc v.Shobha Lal Jain & ors, OSA no 259 to 261 of 2000 (decided onApril 30, 2004), the Division bench of the Chennai High Courtset aside the single judge order and granted an injunction in favorof Jolen Inc. The Court restrained Shobha Lal Jain and three otherrespondents from using the mark JOLEN and a similar colorscheme for cartoons.

The Court noted that the single judge’s observation, “unless thegoods are sold through official sources, the Appellant does notenjoy transborder reputation,” was against the settled principle oflaw. The Court reiterated that reputation of a mark can spill overeither on the basis of availability of goods or information regard-ing availability of goods. It held that to base reputation only onthe availability of goods through official sources would be a nar-row and restrictive view of the settled principle of law.

The Court found that the appellant made certain inaccuratestatements, including statements regarding its actual knowledge ofthe use of the JOLEN mark by the respondents. However, thesestatements were not fatal to their request for a grant of interim

injunction, as the respondents had made a slavish imitation of thetrademark, container and carton.

The respondents argued that the appellant, by its inaction andconsiderable delay in bringing the action, had acquiesced to therespondents’ use of the JOLEN mark. However, the Court heldthat the facts of the case do not support a finding that the appel-lant in any way allowed or encouraged the respondents to use themark, and the appellant had, in fact, taken the necessary steps toobject to the respondents’ use of the mark.

The Court further held that the respondents had not offeredany explanation for their adoption of the mark JOLEN, which isnot a common word. It stated that the adoption “by theRespondents of the mark is complete in all respects and the inten-tion of the respondents in adopting the same lay out, colourscheme and get up is only to gain economic advantage.”

The respondent filed an appeal with the Supreme Court, whichrefused the appeal.

Contributor: Ranjan Narula, Rouse & Co International, Dubai, United ArabEmirates; Verifier: A.A. Mohan, Mohan Associates, Chennai, India

INDIAChennai High Court Upholds Transborder Reputation

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Law and Practice

6 Vol. 59, No. 17 Representing the Trademark Community since 1878

POLANDCourt Control of Polish Patent Office DecisionsOn January 1, 2004, two important laws entered into force in Poland:the law on administrative courts of July 25, 2002 and the law on pro-ceedings before administrative courts of September 20, 2002.

The introduction of the two laws has had a serious impact on intel-lectual property rights holders in Poland, because decisions made bythe Polish Patent Office (the “Office”) are now fully controlled byadministrative courts.

As a result of the reform of the administrative courts, a two-instancecourt system has been created, consisting of District AdministrativeCourts and the Supreme Administrative Court.

Until January 2004, trademark owners in Poland could file appealsonly against the decision of the Office to the Office Chamber ofAppeals. The Supreme Administrative Court examined extraordinaryappeals, but only the president of the Office could file them, and thathappened very rarely. The courts, therefore, had no control over Officedecisions. Rights holders, including trademark owners, were not ableto appeal to an independent court to verify a decision made by theOffice.

Under the new law, if a trademark holder is dissatisfied with a deci-sion issued by the Office, he/she may first file a request for re-examina-tion by the Office, which may either uphold the appealed decision orreverse it, totally or partially, and decide on the merits. If the trade-mark holder still disagrees with the decision, he/she may file a com-plaint to the District Administrative Court, the court of first instance.If unsuccessful, the trademark holder may file a claim to the SupremeAdministrative Court as a last resort.

As a result, independent courts may hear the case twice, reducingthe risk that the final decision is substantively or procedurally flawed.It is also interesting to note that the reform of the Polish courts andthe introduction of court control over Office decisions have resulted inthe improvement of the Office’s decision-making process.

Contributor: Monika Anna Anusiewicz, Patpol Limited, Warsaw, Poland; Verifier:Andrzej Pyrza, The Polish Patent Office, Warsaw, Poland

UNITED STATESPatents.com Not RegistrableIn In re Oppedahl & Larson LLP, 373 F.3d 1171 (2004)the U.S. Court of Appeals for the Federal Circuit heldthat the mark PATENTS.COM, as a whole, is merelydescriptive and therefore not entitled to trademark regis-tration protection.

The applicant, an intellectual property law firm, filed aU.S. trademark application seeking federal registration forthe mark PATENTS.COM for “computer software formanaging a database of records and for tracking the statusof the records by means of the Internet.” The U.S. Patentand Trademark Office refused registration of the mark onthe basis that the mark, in its entirety, merely describes afeature of the goods, and that “.com” is a top-leveldomain name indicator (TLD) that is void of source-identifying significance. On appeal, the Trademark Trialand Appeal Board affirmed. The Board’s decision wasappealed to the Court of Appeals for the Federal Circuit.

In this appeal, the applicant argued that the markshould be considered as a whole (including the TLD“.com”) and thus be deemed sufficiently distinctive fortrademark registration protection. The applicant alsoargued that a domain name is inherently distinctivebecause it can be associated with only one entity (orsource) at any given time. The Court, however, disagreedwith these contentions. Instead, it held that while theremay be examples in which a descriptive term is combinedwith a top-level domain name in such a way that themark as a whole could be considered distinctive, such wasnot the case for PATENTS.COM. Thus, the Courtupheld the refusal to register the mark.

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

New RoundtableTopic:Neueste Rechtsprechung des EuropäischenGerichtshofs in Markensachen und aktuelleEntwicklungen im Markenrecht

October 22, 2004 • Stuttgart, Germany

For more information, or to register, visitwww.inta.org/round/int/2004_10.html

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7Vol. 59, No. 17www.inta.org

President CONTINUED FROM PAGE 1

used. There have also been instances in which counterfeit cigarettes have beenexported without fulfilling customs procedures at all.

It is important to note that, according to Paraguayan criminal and trademarklaw, the crime of forgery can occur only when a trademark registered inParaguay is used by an unauthorized company. In view of this, it is advisablethat trademark owners officially register all marks, especially those used on ciga-rettes, in Paraguay. There have been cases in which a cigarette trademark wasregistered in the name of a true owner outside Paraguay, but counterfeit ciga-rettes bearing identical trademarks were exported from Paraguay, since therewas no local registration by the true owner.

MeasuresFor the last few years, the Paraguayan government has been trying to improvethe counterfeiting situation. In 1998, it enacted a new trademark law thatintroduced various civil and penal remedies against counterfeiting, allowingpublic prosecutors the right to start the penal process on their own withouthaving to rely on private parties’ complaints. The new law includes varioustypes of preliminary measures, and the right to have the counterfeit goodsdestroyed without having to wait for a final judgment against the accused party.The Paraguayan government has also appointed public prosecutors who special-ize in intellectual property rights.

In addition, the 1998 legislation provides for border measures to enforceintellectual property rights. Customs authorities have the right to order differ-ent types of border measures, subject to the possibility of a judicial revision.Furthermore, the law provides for the creation of a customs trademark registry,which has not yet been implemented.

Currently, the Paraguayan Congress is considering a draft of a new law thataffects trademark counterfeiting. The proposed law includes more severe jailterms and fines.

By Gladys Modica, Bareiro Modica & Asociados, Asuncion, Paraguay

Cigarettes CONTINUED FROM PAGE 1

At INTA’s two-day forum in Prague, colleagues from Europe(including representatives of Europe-based business) and theUnited States will discuss such timely topics as:

• The Interaction of Community Trade Marks and the Madrid Protocol in an Enlarged Europe

• Trademarks in Business Transactions in the New Europe • Enforcement in Eastern Europe (focusing on the EU

Enforcement Directive and its interplay with local laws)

For more information, or to register, visit www.inta.org/events.Also, don’t forget to pick up a copy of International TrademarkTreaties and Agreements. This well-organized compilation of 17key treaties, agreements and policy statements provides a com-prehensive resource for worldwide trademark law. For more information, visit www.inta.org/pubs.

December 2 – 3, 2004InterContinental Hotel Prague, Czech Republic

Europe 2004 and Beyond – New Frontiers and Opportunities Forum

laws to incorporate the Protocol, which is nec-essary to remove any doubt regarding itsenforceability. In this regard, she pointed outthe opportunity for the Member States torevise, update and harmonize their laws withinthe regional system while fulfilling their inter-national obligations under TRIPS.

The meeting was attended by 14 of the 16Member States, namely: The Gambia, Ghana,Botswana, Kenya, Kingdom of Lesotho,Malawi, Mozambique, Namibia, Sudan,Kingdom of Swaziland, United Republic ofTanzania, Uganda, Zambia and Zimbabwe.Although the country delegates welcomed Ms.Leimer’s remarks, several delegates expressedconcern over the possible financial repercus-sions of joining the ARIPO TrademarkRegistration System to their national offices.They agreed that there is a need to examinethe system to ensure its cost effectiveness andconsider cost implications to national officesof the Member States.

By Brenda M. Wood Kahari of B.W. Kahari LawOffices, Harare, Zimbabwe; Verifier: Gift Sibanda,Director General Designate of ARIPO, Harare,Zimbabwe

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INTA BULLETIN EDITORIAL BOARDTo contact a member of the INTA Bulletin, send anemail to bulletin@inta.org.

Editor-in-ChiefTrevor Stevens, Davies Collison Cave

Senior EditorMary DeLongis, Diageo North America Inc.

Executive Editor: Law & Practice, Middle East, Africa, Pacific RimKay Rickelman, Spoor & Fisher

Executive Editor: Law & Practice, Europe and Central AsiaRichard Penfold, DLA

Executive Editor: Law & Practice, AmericasJennifer Van Kirk, Lewis and Roca LLP

Executive Editors, FeaturesAmanda Laura Nye, King & SpaldingAdriana Casati, Berkemeyer

Executive Editor: Online ArticlesPatricia A. Wilczynski, Law Office of Patricia A. Wilczynski

Executive Editor: Special ReportsBrian Winterfeldt, Mintz, Levin, Cohn, Ferris, Glovsky andPopeo, P.C.

INTA BULLETIN STAFFManaging EditorNaeran Rubio

Associate EditorElaine Czach

Designer Katie Frichtel

INTA SENIOR STAFFExecutive DirectorAlan C. Drewsen

Director, Human Resources & Association GovernanceMaria Bachman

Director, EducationAnn Eng

Director, Marketing & CommunicationsDaryl G. Grecich, CAE

Executive AssistantMaribel Lajara

Director, External RelationsBruce MacPherson

Manager, Finance & AdministrationMelissa Starr

INTA Department Email AddressesExecutive Director: executivedirector@inta.orgMembership: membership@inta.orgCustomer Service: customerservice@inta.orgTM Affairs & Policies: tmaffairs@inta.orgMeetings: meetings@inta.orgPublications: publications@inta.orgThe Trademark Reporter®: tmr@inta.orgPublic Relations: publicrelations@inta.orgAdministration & Finance: adminfinance@inta.orgJob Bank: jobbank@inta.orgSponsorship & Exhibitions: sponsorship@inta.orgRoundtables: roundtables@inta.orgBrand Names Education Foundation: info@bnef.org

© 2004 International Trademark Association

Mark Your CalendarsSeptember 13 – October 20, 2004Trademark Basics – An E-Learning Program

September 20 – 21, 2004Famous and Well-Known Marks Forum, Brussels, Belgium

October 3 – 6, 2004Trademark Administrators Conference, Arlington, Virginia, USA

October 4 – 15, 2004Roundtable on Trademark Enforcement & Pre-Litigation Strategies,Various cities in the United States

October 7 – 8, 2004 Trade Dress Forum, New York, New York, USA

October 14 – 15, 2004Community Trade Marks and Community Designs Forum, San Francisco, California, USA

October 18 – 29, 2004Trademark Counterfeiting and Enforcement Roundtable (for non-attorney trademark professionals),Various cities in the United States

October 22, 2004Roundtable: Neueste Rechtsprechung des Europäischen Gerichtshofsin Markensachen und aktuelle Entwicklungen im MarkenrechtStuttgart, Germany

November 10 – 13, 2004Leadership Meeting, Phoenix, Arizona, USA

December 2 – 3, 2004Europe 2004 and Beyond – New Frontiers and Opportunities ForumPrague, Czech Republic

New Payment OptionPay directly from your bank account whenever you register for an INTA event or renew your membership online with INTA’s new automated clearing house system. For more information, visit the INTA website atwww.inta.org/events/howto.html or call Customer Service at +1-212-768-9887,ext. 157.

Business Development and OpportunitiesTo inquire about sponsorship or exhibition opportunities for INTA’s events, visitwww.inta.org/sponsor.

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 specific concern or interest. The INTA

Bulletin primarily relies on members of the INTA Bulletin Committee and INTA staff for contentbut also accepts submissions from others. The INTA Bulletin Editorial Board reserves the rightto make, in its sole discretion, editorial changes to any item offered to it for publication.

International Trademark Association1133 Avenue of the AmericasNew York, NY 10036 USA+1-212-768-9887 • f: +1-212-768-7796www.inta.org • info@inta.org

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