INTA
Bulletin
The Voice of the International Trademark Association
October 15, 2003 Vol. 58, No. 19
India Enacts New Trade Marks Act
On September 15, 2003,
India’s new Trade Marks Act
took effect. The new Act is
called the Trade Marks Act,
1999 and is governed by the
Trade Marks Rules, 2002.
The new Trade Marks Act
includes the following provisions:
• The definition of “trademark” has been expanded
to include services, making
service marks registrable in
India. Classes 35 to 42 (as
set forth in the Seventh
Edition of the Nice
Classification System, and
not the more recent Eighth
Edition) have been included in the Fourth Schedule
to the Rules.
• The shape of goods, pack
aging and combinations of
colors are included in the
definition of a trademark.
• Multiple class applications
are permissible.
• The period of registration
has been extended from
seven years to ten years.
• The Registrar is no longer
divided into Part A and
Part B. One Registrar of
Trade Marks will be maintained and all Part B registrations under the previous
legislation are included in
this single Registrar.
• The statute recognizes
“well-known trademarks” in
relation to goods and services. To qualify, the mark
should be well known to a
substantial segment of the
public that uses such goods
or receives such services.
IN THIS ISSUE
Use in India is not a prerequisite to establish that a
trademark is well known in
India.
The statute provides the following enhanced protection to
well-known trademarks:
• Third-party applications
may be refused registration
if they are similar (as
opposed to deceptively or
confusingly similar) to a
well-known mark.
• Third-party applications
may be refused registration
even if they relate to goods
or services that are not
similar to a prior registered
well-known mark.
• Any mark that without due
cause takes unfair advantage
of or is detrimental to the
distinctive character or reputation of a well-known trade
mark, without due cause,
may be refused registration.
SEE INDIA PAGE
11
2
Association News
From the Boardroom
4
Law and Practice
ECJ
Three Stripes and You’re Out?
Ireland
Registration of Slogan Allowed on
Appeal
Germany
LICHTENSTEIN Not Registrable
Macedonia
New Industrial Property Law
Romania
BEEFEATER Confirmed as Well
Known
United States
Second Circuit Deals Blow to “NoChallenge” Clauses
7
Trademark Training
Oh, To Be Rich and Famous . . . and
a Trademark
8
In the News
Rubber BIRKIN Bags Rub Hermès
the Wrong Way
Enough Room in The World for Two
Toucans
9
Mark of the Month
BETTY CROCKER
EU Takes Steps Toward Protocol Accession
On September 19, 2003, the COREPER
(European Union Committee of Permanent
Representatives) agreed to the text on the accession of the Community Trade Mark (CTM) to
the Madrid Protocol. Shortly thereafter, on
September 25, 2003, the World Intellectual
Property Organization (WIPO) accepted the
proposal to add Spanish to the working languages of WIPO, and agreed on a number of
technical changes, such as the opting-back provision to allow brand owners designating the
EU in their international registration to optback to national designations in case their EU
designation fails. These changes facilitate the
link between the CTM system and the
Protocol.
Now the EU Council must formally adopt
the COREPER recommendation before any
further step towards accession is taken by the
EU. No further information is available on
when the Council of Ministers will place the
issue on its agenda for formal vote.
Speaking on behalf of the European
Commission, Erik Nooteboom, head of the
Industrial Property Unit of European Union
Directorate for the Internal Market, said at the
WIPO meeting that it was likely that the EU
would submit its instrument of accession to the
Madrid Protocol within one year. He further
expressed that this was a truly historic moment
and that this will enable the EU to adhere to
the Madrid Protocol. The accession of the EU
to the Madrid Protocol will be the first time
that the EU, as a regional body, adheres to a
WIPO treaty.
Source: WIPO press release, September 25, 2003; “EU moves closer to Madrid,” MIP Week, September 28, 2003; Verifier: Roberto
Kunz-Hallstein, Law Office of Dr.Kunz-Hallstein, Munich, Germany
and Chehrazade Chemcham, INTA, New York, New York, USA
Welcome New Members
10
World Update
Battling Counterfeiting in Thailand
Smoking Out Infringers in Indonesia
11
INTA Bulletin Board
From the Boardroom
On September 24, 2003, the INTA Board of Directors elected
the committee chairs and vice chairs for the 2004 – 2005
committee term. The new committees have been divided into
two categories, the Education & Information Services (EIS)
Group and the Policy Development & Advocacy (PDA)
Group.
The EIS Group is a combination of the former
Communications and Resources (CAR) and Programs,
Education & Publications (PEP) Groups. The group will provide products and services to INTA’s members and the trade-
mark community at large.
The PDA Group is an extended version of what was formerly known as the Trademark Affairs and Policy (TAP) Group.
The group’s function will be to develop, evaluate and spearhead policy that forms the backbone of INTA’s mission – to
protect the rights of trademark owners.
Full descriptions of each committee’s mission will be available at www.inta.org in January 2004. Please join INTA in
congratulating the 2004 – 2005 Association leaders listed in
this issue of the INTA Bulletin.
2004 – 2005 INTA Committees
2
Education & Information Services (EIS) Group
Policy Development & Advocacy (PDA) Group
Group Leader: Rhonda Steele, Mars, Incorporated
Group Liaison: Daryl G. Grecich, Director, Marketing &
Communications, INTA
• Alternative Dispute Resolution
Chair: David C. Gryce, Arent Fox Kintner Plotkin & Kahn
Vice Chair: F. Peter Mueller, Mueller, Schupfner & Gauger
• INTA Bulletin Editorial Board
Chair: Trevor K. Stevens, Davies Collison Cave
Vice Chair: Mary DeLongis, Diageo North America, Inc.
• Industry Advisory Council
Chair: Larisa Murphy Colton, YUM! Restaurants Int’l
Vice Chair: Stacey M. Berg, Citigroup Inc.
• Information Resources
Chair: Elisabeth Simpson-Krarzia, Cabinet Hirsch
Vice Chair: Francis J. Duffin, Wiggin & Dana
• Membership Services
Chair: Steven M. Levy, The Home Depot
Co-Vice Chair: Joel T. Beres, Stites & Harbison, PLLC
Co-Vice Chair: Patrick Van de Vorst, Novagraaf Nederland B.V.
• Programs
Chair: Helen Hill Minsker, Banner & Witcoff, Ltd.
Vice Chair: Bret I. Parker, Colgate-Palmolive Company
• Publishing Board
Chair: Glenn Mitchell, Stroock & Stroock & Lavan LLP
Vice Chair: Allan Poulter, Field Fisher Waterhouse
• Trademark Administrators
Chair: Grace Jennings, Thompson & Knight LLP
Vice Chair: Cindy L. McKeehan, Anheuser-Busch Companies, Inc.
• The Trademark Reporter®
Chair: Sandra Edelman, Dorsey & Whitney LLP
Group Leader: Paul W. Reidl, E. & J. Gallo Winery
Group Liaison: Bruce MacPherson, Director, External Relations, INTA
• Anti-Counterfeiting and Enforcement
Chair: Richard Heath, Unilever P.L.C.
Vice Chair: Toe Su Aung, BATMark Limited
• Dilution and Well-Known Marks
Chair: Dale M. Cendali, O'Melveny & Myers LLP
Co-Vice Chair: Daan Teeuwissen, Knijff & Partners
Co-Vice Chair: Scot A. Duvall, Middleton Reutlinger
• Emerging Issues
Chair: John W. Crittenden, Cooley Godward LLP
Vice Chair: Barbara Sullivan, Henry Hughes
• External Affairs
Chair: Daniel J. Noonan, Dell Computer Corporation
Vice Chair: Mariette Viljoen, Adams & Adams
• Geographical Indications
Chair: Burkhart Goebel, Lovells
Vice Chair: Edwin J. Lubin, King & Spalding LLP
• International Amicus
Chair: Isabel M. Davies, Howrey Simon Arnold & White
Vice Chair: Bruce R. Ewing, Dorsey & Whitney LLP
• Internet
Chair: J. Scott Evans, Adams Evans P.A.
Vice Chair: Ellen B. Shankman, Ellen Shankman & Associates
• Legislation/Regulatory Analysis
Chair: Kevin M. Dugan, Merck & Co., Inc.
Vice Chair: Sally A. Field, Bristows
• Parallel Imports
Chair: Andrew Simpson, Knobbe, Martens, Olson & Bear
Vice Chair: Annette Freeman, Spruson & Ferguson
• Trade Dress
Chair: Michael S. Metteauer, Fulbright & Jaworski L.L.P.
Vice Chair: Janet L. Hoffman, Fross Zelnick Lehrman & Zissu, P.C.
• Trademark Office Practices
Chair: Ruth E. Annand, Taylor Wessing
Vice Chair: Barbara A. Friedman, Morgan, Lewis & Bockius LLP
Treaty Analysis
Chair: Marion Heathcote, Davies Collison Cave
Vice Chair: Kee-Leng Tan, K. L. Tan & Associates
Vol. 58, No. 19
Representing the Trademark Community since 1878
Nominations for INTA’s Board of Directors
On November 12, 2003, at INTA’s Leadership Meeting in Boca Raton, Florida, USA, the Voting Members will consider the following
persons for the INTA Board of Directors.
Nominees for Term Ending December 31, 2004
David S. Gooder, Jack Daniel’s Properties, Inc.
Anne Gundelfinger, Intel Corporation
Jacqueline A. Leimer, Kraft Foods
Paul W. Reidl, E. & J. Gallo Winery
Rhonda Steele, Mars, Incorporated
Scott E. Thompson, Colgate-Palmolive Company
Dee Ann Weldon-Wilson, Exxon Mobil Corporation
Nominees for Term Ending December 31, 2006
Gerhard R. Bauer, Daimler-Chrysler AG
Gert-Juergen Frisch, Hugo Boss AG
Susan J. Hinchey, Allergan, Inc.
Charles Gielen, NautaDutilh
Dana M. Gilland, Diageo North America, Inc.
Dolores A. Moro, The Coca-Cola Company
Daniel J. Noonan, Dell Computer Corporation
C. Lloyd Sarginson, Bereskin & Parr
2004 MEMBER RENEWAL
HAS BEGUN
2004 member renewal notices have been mailed, and you now
have the opportunity to renew online, via fax or mail.
Renewing your membership online:
Renewing your membership has never been easier. Visit
www.inta.org/renew to renew your membership online. You
may also verify your Designee and employees contact information, add up to two additional listings to the INTA Membership
Directory and make a tax-deductible contribution to the Brand
Names Education Foundation (BNEF).
Using your company’s INTA Member ID, you can pay for your
online renewal by credit card or by direct transfer from your
checking or savings account through a secure server.
Your Member ID will be included in your renewal notice. Please
contact Customer Service at +1-212-768-9887, ext. 157, customerservice@inta.org if you do not receive your renewal
notice by October 22, 2003.
Renewing your membership via fax or mail:
If you choose not to renew your membership online, you may
fax or mail your renewal invoice with payment to INTA.
Membership renewal payments are due by
December 31, 2003.
Please contact membershiprenewal@inta.org with your
membership renewal questions.
www.inta.org
Directors Continuing to Serve
Term Ending December 31, 2004
Susan Anthony, MCI WorldCom Brands
Michael F. Clayton, Morgan, Lewis & Bockius LLP
Sarah B. Deutsch, Verizon Communications
Susan Flook, The Body Shop International PLC
David J. Gould, E. I. du Pont de Nemours and Company
Werner Haring, Avvant Ltd.
Anne Moses, Citigroup Inc
Nicola Pratt-Barlow, Nintendo of America Inc.
Heather C. Steinmeyer, Blue Cross and Blue Shield Association
Jo-Ann See, Allen & Gledhill
Robin L. Smith, Lego Systems, Inc.
Kelly Mahon Tullier, PepsiCo, Inc. / Frito-Lay Inc.
Term Ending December 31, 2005
Toe Su Aung, BATMark Limited
Xuemin Chen, Zhongzi Law Office
Theodore H. Davis, Jr., Kilpatrick Stockton LLP
Mary Boney Denison, Manelli Denison & Selter PLLC
Ayala Deutsch, NBA Properties, Inc.
Keith Howick, Carpmaels & Ransford
Leslie J. Lott, Lott & Friedland, P.A.
Michael S. Metteauer, Fulbright & Jaworski L.L.P.
Colleen M. Sarenpa, International Multifoods Corporation
Verena von Bomhard, Lovells
Officers & Counsel
President: Jacqueline A. Leimer, Kraft Foods
President Elect: Anne Gundelfinger, Intel Corporation
Vice President: Paul W. Reidl, E. & J. Gallo Winery
Vice President: Rhonda Steele, Mars, Incorporated
Vice President: Dee Ann Weldon-Wilson, Exxon Mobil Corp.
Treasurer: Scott E. Thompson, Colgate-Palmolive Company
Secretary: David S. Gooder, Jack Daniel's Properties, Inc.
Counsel: Lynda E. Roesch, Dinsmore & Shohl L.L.P.
Ex Officio: Kathryn Barrett Park, General Electric Company
Visit
www.inta.org/atlanta
on November 3, 2003 at 12:00 p.m. U.S.
Eastern Time for the online brochure of
the 126 th Annual Meeting.
Vol. 58, No. 19
3
Law and Practice
ROMANIA
BEEFEATER Confirmed as Well Known
After its judgment in April 2003, the Supreme Court of Justice –
Commercial Section (SCJ), Romania’s highest court, delivered in
August 2003 its decision in the BEEFEATER case, putting an end
to a five-year legal struggle initiated by Allied Domecq Spirits &
Wine Ltd. (Allied Domecq), based on its well-known trademark
BEEFEATER against the trademark registration of BEEFEATER
by a Romanian company, SC Prodal 94 SRL (PRODAL). The
judgment by the SCJ confirms Decision 236 /A by the Bucharest
Appellate Court, Civil Section III (Appellate Court) on the protection of well-known foreign trademarks in Romania.
In October 1996, Prodal applied to register the word mark
BEEFEATER in classes 33, 35 and 39 with the State Office for
Inventions and Trademarks (SOIT). In September 1998, Allied
Domecq filed with SOIT an opposition against the registration of
BEEFEATER based on claims of the notoriety of its earlier mark
BEEFEATER. The Examination Committee of SOIT rejected
Allied Domecq’s opposition and accepted Prodal’s registration of
BEEFEATER, holding that Allied Domecq had not filed any documents proving that this trademark was notorious in Romania
before Prodal’s application (i.e., October 1996).
In October 1999, Allied Domecq filed an annulment action
against the registration of BEEFEATER in classes 33, 35 and 39,
requesting the Bucharest Court (Tribunal) to hold that
BEEFEATER was registered in bad faith and against the provisions of Article 6 of Law no. 84/1998 concerning trademarks and
geographical indications (Trademark Law). The Trademark Law
provides that a trademark can be denied registration if it: “is identical with or similar to a trademark that is notorious in Romania
for identical or similar goods or services, at the date of filing of the
documents concerning the duration, extent and geographical area
of use of the BEEFEATER trademark and the trademark registrations and applications for registration of the BEEFEATER mark
in approximately 119 countries and underlined that the bad faith
of Prodal is proved by other trademark registration and registration attempts targeting its trademarks KAHLUA, SAUZA,
MAKER’S MARK and LAMB’S.”
On December 20, 2000, the Tribunal annulled Prodal’s trademark BEEFEATER and ordered SOIT to strike out the respective
registration from the trademark registry.
Later, Prodal appealed against the judgment, stating that at the
date of application, BEEFEATER products were not sufficiently
advertised and sold in Romania as to establish goodwill in the territory, and that the evidence brought by Allied Domecq in support
of Prodal’s bad faith was insufficient. In May 2002 the Appellate
Court issued decision no. 236/A rejecting Prodal’s appeal and held
that BEEFEATER is a well-known trademark in Romania and
that it fulfilled the criteria established by the Trademark Law.
Prodal further appealed (recourse) the Appellate Court’s decision with the SCJ. In its decision, the SCJ upheld the Appeal
Court’s decision, annulling Prodal’s trademark BEEFEATER.
Source: Alexandru A. Harsany, Nestor Nestor Diculescu Kingston Petersen SCA, Bucharest,
Romania; Verifier: Doina Tuluca, Inventa Trademark & Patent Office, Bucharest, Romania
GERMANY
LICHTENSTEIN Not Registrable
On July 17, 2003, the German Supreme
Court (GSC) ruled that factual requirements for confirming the need to keep a
geographical indication available for third
parties due to a future possible use for
goods and services are not stricter than the
respective standards in connection with
assessing the descriptiveness of a mark.
The case involved the German word
mark LICHTENSTEIN, used for pharmaceutical products and compounds for
healthcare. The German Patent and
Trademark Office refused the registration
since LICHTENSTEIN indicates the
4
Vol. 58, No. 19
name of a small town in Saxony and must
be kept freely available as a geographic
indication. The Office held that even
though the wording is not used at present,
it might be used in the future.
The GSC confirmed the ruling, relying
on the leading case for geographical indications of the European Court of Justice
(Chiemsee, Case C-108 and 109/97 of
May 4, 1999). Even if there is no current
association between a geographical name
and the category of goods in question, it
must be assessed whether it is reasonable to
assume that such a name is capable of designating the geographical origin and liable
to be used in the future. The relevant prognosis has to meet no stricter standards than
when assessing whether there is a need to
keep available a wording that the relevant
public might regard as being merely
descriptive. In assessing the particular circumstances of the case, the GSC stated
that due to the existence of several pharmaceutical companies in Saxony, it is not
unlikely that such companies might wish
to use LICHTENSTEIN.
Source: Michaela Huth-Dierig, Boehmert & Boehmert,
Munich, Germany; Verifier: Dr. Martin Tongbhoyai,
Patentanwälte Freischem, Cologne, Germany
Representing the Trademark Community since 1878
UNITED STATES
MACEDONIA
Second Circuit Deals Blow to “NoChallenge” Clauses
New Industrial Property Law
In Idaho Potato Comm’n v. M&M Produce Farm &
Sales, 335 F.3d 130 (2d Cir. 2003), the United States
Court of Appeals for the Second Circuit held that a
former licensee of the plaintiff’s certification marks
was not prevented from challenging the validity of
the plaintiff’s marks, despite contractual terms that
expressly barred such a challenge.
The plaintiff, Idaho Potato Commission (IPC),
owns registrations for the certification marks IDAHO
(stylized) and GROWN IN IDAHO and Design,
and defendant M&M Produce Farm & Sales
(“M&M”) was licensed to use the marks. However,
upon failure to comply with IPC’s audit to ensure
that M&M was meeting the terms of the certification
mark license, M&M voluntarily surrendered its
license.
After M&M had surrendered its license, it
repacked Idaho potatoes for a third party in packaging that displayed IPC’s licensed marks.
Consequently, IPC filed suit alleging trademark
infringement and other related claims and M&M
counterclaimed to cancel the IPC marks.
The lower court held that M&M was precluded
from challenging IPC’s marks because M&M had
expressly acknowledged the validity of IPC’s marks
and waived its right to attack IPC’s rights or title in
the marks in the license agreement. The lower court
rejected M&M’s argument that there was a public
interest against licensee estoppel in the case of certification marks (rather than ordinary trademarks).
On appeal, the Second Circuit reversed, recognizing that certification mark programs, by their very
nature, are a form of “limited compulsory licensing”
and as such, the public interest may be invoked.
Therefore, it held the lower court erred as a matter of
law in finding that M&M estopped from asserting
invalidity of IPC’s marks as a matter of law. The
court remanded to the lower court for further consideration of the issue.
This case is a departure from the generally recognized rule that trademark licensees can be contractually barred from later challenging the validity or ownership of a mark that it licenses or licensed. However,
the court was clear that this holding only applies to
certification mark licensing and not general trademark licensing.
Source: Janice Housey, Roberts, Mlotkowski & Hobbes, P.C., McLean,
Virginia, USA; Verifier: Jennifer A. Van Kirk, Lewis and Roca, LLP,
Phoenix, Arizona, USA
www.inta.org
The Macedonian Parliament passed a new Industrial Property Law that
affects trademark protection in Macedonia. The new law will enter into force
on January 1, 2004, while the Macedonian IP office prepares itself for the
changes anticipated in the new law. The new provisions and the effects thereof will be shown in the course of the application of these regulations.
This new law has substantially changed the current approach of the
Macedonian IP office by inaugurating an opposition procedure. The law prescribes that the office will evaluate only the absolute grounds for the protection of trademarks, while the relative grounds (potential disputes with the IP
rights of others) will be left to interested parties, who can in a period of 90
days initiate an opposition procedure against the published trademark application.
Source: Pepeljugoski Law Office & Intellectual Property Bureau, Skopje, Macedonia; Verifier: Davor
Boskovic, PRODUCTA Ltd., Zagreb, Croatia
ECJ
Three Stripes and You’re
Out?
A recent interim opinion from the
European Court of Justice (ECJ) has
negatively affected adidas’s efforts to
protect its use of stripes on sports
clothing and raises serious concerns
for brand owners.
The company brought a claim
against Fitnessworld arguing that
the sale by Fitnessworld of clothing
with a two-stripe motif would cause
confusion with adidas clothing bearing its three-stripe logo. They also
claimed that Fitnessworld was riding
on adidas’s existing goodwill and
was causing dilution of the adidas
three-stripe logo.
Advocate General Jacobs reached
three conclusions:
• If a Member State chooses to
introduce the voluntary protection
under Article 5(2) of the Trade
Marks Directive (“the Directive”)
(for marks with a reputation, protecting them against activities such
as dilution, and degrading or tarnishing treatment) into its local
trademark legislation, it can only do
so on the basis that the protection is
not only available in the case of
nonsimilar goods, but is also available in the case of identical or similar goods.
• When deciding whether the sign
about which the complaint is made
is “similar” to the registered mark,
there must be an overall assessment
of the degree of sensory or conceptual similarity between them (this
follows previous ECJ jurisprudence). Under Article 5(2) of the
Directive, a likelihood of confusion
between the mark and the sign is
not required.
• For the purposes of Art 5(2) of the
Directive, the allegedly infringing
sign must be used as a trademark
(i.e., for the purpose of distinguishing goods or services), and that will
not be the case when the sign is
viewed purely as a decoration or
embellishment by the relevant section of the public.
The Advocate General concluded
that as Fitnessworld’s two-stripe
sleeve or shoulder design was decorative, its use should not amount to
trademark infringement. The full
decision of the ECJ is due next year.
Case: C-408/01 (1) adidas A.G (2) adidas Benelux
B.V. v. Fitnessworld Trading Limited; Source: Andy
Millmore and Richard Penfold, Harbottle & Lewis,
London, United Kingdom; Verifier: Simon Page,
Schneider Page, Guildford, United Kingdom
Vol. 58, No. 19
5
Law and Practice
IRELAND
Registration of Slogan Allowed on
Appeal
6
Vol. 58, No. 19
GERMANY
Source: Bernadette Walsh, Maclachlan & Donaldson, Dublin, Republic of
Ireland; Verifier: Brenda O’Regan, F.R. Kelly & Co., Dublin, Republic of
Ireland
Roundtable Circuit
October 23, 2003 • 3:00 p.m.
URUGUAY
In May 2003, in an unpublished decision, Justice
Kelly of the Irish High Court allowed registration of
the slogan TOP BREEDERS RECOMMEND IT for
dog food.
The appeal arose from a decision of the controller
of patents, designs and trademarks to refuse registration on the grounds that the trademark was devoid of
distinctive character and had not acquired distinctiveness through use. In reaching his decision, the controller relied heavily on the fact that an earlier application to register the same trademark had been refused
on appeal to the High Court on the basis that the
phrase TOP BREEDERS RECOMMEND IT is a
factual statement that any trader in dog food might
legitimately require to use and that no trader should
be permitted to monopolize through registration.
While accepting that the earlier decision of the
Court was correct, the plaintiff argued that the precedent established by that decision no longer applied
since the law under which the earlier application was
decided had since been replaced by the Trade Marks
Act, 1996. The plaintiff contended that a trademark
registration no longer creates monopoly rights since,
under Section 15 of the 1996 Act, third parties are
entitled to use any descriptive terms embodied in a
trademark, provided such use is in accordance with
honest commercial practices.
Justice Kelly allowed the appeal and held that, in
determining registrability under the 1996 legislation,
the Court must look to the jurisprudence established
by cases decided since the introduction of that legislation. He cited, with approval, the decision of the ECJ
in Procter & Gamble v. OHIM [2001] ECR 1-625 (the
BABY-DRY case) and held that concerns about the
impact on competitors are no longer appropriate matters for consideration in determining registrability, the
pertinent test being whether the trademark applied for
consists exclusively of words or phrases that constitute
the normal way of designating the relevant goods or
their characteristics. Since TOP BREEDERS RECOMMEND IT is not the normal description for pet
food, the mark applied for meets the registrability criteria under the 1996 Act.
Registration of the slogan DEVELOPED WITH
VETS. TOP BREEDERS RECOMMEND IT was
also allowed on the basis of an appeal heard simultaneously.
October 22, 2003 • 6:30 p.m.
Topic: Current Luxembourg Case Law on Trademark Law –
2003 Decisions from the ECJ
Host: Gleiss Lutz Rechtsanwalte, Maybachstrasse 6, 70469
Stuttgart, www.gleisslutz.de
Registration Contacts:
Dr. Stefan Volker / Tanja Berstecher, Gleiss Lutz
Rechtsanwalte, Maybachstrasse 6, 70469 Stuttgart
+49 711 8997-343, f: +49 711 85 50 96,
tanja.berstecher@gleisslutz.com
Topic: Mediation in the Area of Intellectual Property
Host: Uruguayan Catholic University, Avda. 8 de Octubre
2738, 11600 Montevideo, Uruguay
Registration Contact:
Ana Nocetti
+5982 903 1545
anocetti@pittaluga.com
Representing the Trademark Community since 1878
Trademark Training
Oh, To Be Rich and Famous . . . and a Trademark
Celebrity endorsements are nothing new –
from football star “Mean” Joe Green advertising COCA-COLA soft drinks to singer
Madonna dancing in GAP clothing commercials – sports and entertainment stars are
always advertising products. But occasionally,
celebrities become so famous that their very
personalities become the brands upon which
huge enterprises are built. Michael Jordan,
Martha Stewart and the estate of Elvis
Presley have turned to trademark law to protect their names and capitalize on their fame.
In the United States, personal names may
be registered as trademarks in the U.S.
Patent & Trademark Office after the marks
have been used in commerce to such an
extent that the public associates the mark
with the goods or services offered under the
mark.
In a way, celebrity brands are the opposite
of typical trademarks that are composed of
personal names. A typical trademark incorporating a personal name is used primarily
on one particular product or service.
Through extensive use and advertising on
the relevant products or services, the brand
name then becomes well known when used
in connection with those products or services. A celebrity brand, on the other hand, can
happen in reverse: the individual first
becomes famous and then markets his or her
name as a trademark in connection with varwww.inta.org
ious goods or services. Although evidence of
secondary meaning is still required, this may
prove to be a small hurdle when celebrities
market their names in fields related to their
chosen professions.
For instance, consumers are already likely
to associate Tiger Woods’ name with a variety of golf equipment. This immediate name
recognition is not only useful in seeking registration of the name as a mark, but is also a
tremendous commercial advantage.
Another issue common to trademarks
composed of personal names is that courts
are often reluctant to prevent individuals
from using their own names as trademarks.
Left unchecked, this could lead to confusion
when individuals with similar names attempt
to use the names in connection with related
goods or services. When such confusion is
evident, courts typically require the junior
user to disclaim any affiliation with the senior user, or modify the mark to distinguish it
from the senior user. Some personal names
have become so famous that they prevent the
use of similar names on
related goods and
services. For
example, an
automobile
manufacturer
would face a
difficult time
adopting his
or her Ford
surname for use
in connection
with automobiles.
Celebrities may also
enjoy this level of deference, the wide-spread
recognition of their names granting their
brands near instant fame for goods or services related to their chosen fields.
One issue unique to celebrity branding is
the degree to which the products or services
offered in connection with the celebrity’s
brand name become linked to the individual.
For example, winning an NBA championship would certainly boost sales of
MICHAEL JORDAN cologne. But the
reverse is also painfully true: celebrities
embroiled in personal scandals may find that
not only is their career in trouble, but their
brand name may also suffer. One obvious
example of the pitfalls of celebrity branding
can be seen in the impressive rise and dramatic fall of Martha Stewart’s domestic
empire.
Although celebrities have turned to trademark law in an effort to protect their names
from misappropriation, celebrity names in
the abstract are not trademarks. As with any
other mark, the celebrity must use the
mark in connection with
various goods or services to obtain
trademark rights to the name.
Absent such use, celebrities may be
unable to rely on protections offered
via trademark
law. In those
instances,
celebrities
may still protect the misappropriation of
their likeness
through other means, such as the right of
publicity and false endorsement laws.
By Brad E. Harrigan, Brinks Hofer Gilson & Lione, Chicago,
Illinois, USA: Source: ETW Corp. v. Jireh Pub., Inc., 332 F.3d
915 (6th Cir. 2003); Jerome Gilson, Trademark Protection and
Practice, § 2.08 (2003)
Vol. 58, No. 19
7
In the News
“In the News” is a compilation of articles about trademark law and business abstracted from news publications around the world.
In this issue, items in the news include the following:
Rubber BIRKIN Bags Rub Hermes the Wrong Way
In late July 2003, leather
goods company Hermès
filed a federal trademark,
trade dress, and unfair
competition lawsuit
against Steven Stolman,
owner of several clothing
boutiques in Manhattan
and Long Island, New
York.
Stolman had imported
from Italy handbags modeled on the coveted
HERMÈS BIRKIN bag
and sold them in his
stores. He argues that the
bags are meant as an
“amusement,” as they are
made of rubber, are not marked with the HERMÈS brand, and therefore are not intended to be counterfeit versions of the actual
HERMÈS BIRKIN bag.
Hermès has begun to take the sale of such “knockoffs” quite seriously in the United States, pursuing individuals and retailers selling
such imitation handbags as seriously as counterfeit bags actually
emblazoned with the company’s trademarks. The president of Hermès
in the United States, Robert B. Chaves, explained that after a 2001
episode of the HBO series “Sex and the City” that featured the
BIRKIN handbag, demand for the bag — already the subject of long
waiting lists — increased dramatically. Fashioned in leather and exotic
skins that cost more than $5,000, each bag requires 18 hours to handcraft in one of three small ateliers in France.
Hermès’ U.S. trademark counsel, Kirkland & Ellis, assists the company with regular policing efforts to identify and pursue individuals
and retailers selling fake HERMÈS handbags in stores or over the
Internet. In addition, Hermès has alerted U.S. Customs agents to look
for counterfeit or knockoff handbags — in particular, the rubber replicas that became so popular this summer.
Source: “A ‘Satire’ of a Classic Fails to Amuse the August House of Hermès,” The New York
Times, August 12, 2003; Editor: Brian J. Winterfeldt, Mintz Levin PC, Washington, DC, USA
Enough Room in the World for Two Toucans
A Cincinnati, Ohio, USA federal appeals court has found
that the “Golf Bird” from Toucan Golf Inc. and Kellogg
Company’s TOUCAN SAM character do not look anything
alike.
The Kellogg Company accused the mom and pop golf
business of infringing its federal trademark for TOUCAN
SAM, which has appeared on boxes of FROOT LOOPS
cereal ever since the product went on the market 40 years
ago.
The tiny Ohio company, Toucan Golf Inc., was started by
Peter Boyko, who stated, “They don’t own the toucan; it’s
just a cute, little, colorful bird.”
In his opinion dismissing Kellogg’s lawsuit, U.S. Circuit
Judge Richard F. Suhrheinrich noted that selling golf clubs is
far removed from selling cereal.
Apples are inexorably linked to computers, and camels to cigarettes, he said, but here the parties’ goods are completely unrelated.
Kellogg Company earns approximately US $9 billion in annual sales. It utilizes a stable of characters to sell its food products, which range
from cookies to POP TARTS pastries to pie crusts.
Source: www.cleveland.com; Kellogg’s “Toucan Sam meets its match at Toucan Golf,” August 24, 2003; Editor: Edgardo Bourgoing, Bourgoing, Leon & Lozano, Mexico City, Mexico
8
Vol. 58, No. 19
Representing the Trademark Community since 1878
Mark of the Month
BETTY CROCKER
The BETTY CROCKER
name and persona date
back to 1921, when they
were created by a predecessor to General Mills, Inc. as
part of a GOLD MEDAL
flour advertising campaign.
The Washburn Crosby
Company held a promotion in which it offered consumers a pincushion resembling a flour
bag if they correctly completed a jigsaw puzzle. The company
received thousands of responses and a flood of questions about baking.
The name BETTY CROCKER was created as a signature to personalize the responses to those inquiries. The surname “Crocker” was
chosen to honor William G. Crocker, a popular, recently retired
director of the company. The name “Betty” was chosen simply as a
friendly-sounding name. Female employees were invited to submit
sample BETTY CROCKER signatures, and the one judged most
distinctive is the basis for the signature still in use today.
Also in 1921, a small space was set aside for the first BETTY
CROCKER kitchen, where a single home economist tested each
batch of GOLD MEDAL flour. Within a few years, consumer
demand for GOLD MEDAL flour and BETTY CROCKER recipes
had become so great that the company’s Home Service Department
staff totaled 21. Soon after, the company began sponsoring cooking
schools across the country and broadcasting the “BETTY CROCKER Cooking School of the Air” radio program.
In 1950, General Mills introduced its first BETTY CROCKER
cookbook to meet America’s growing need for new recipes, which
was driven by the convergence of new appliances with the desire for
convenience foods. Since then, more than 200 BETTY CROCKER
cookbook titles have been published. In 1980, General Mills began
using the BETTY CROCKER name in connection with recipe magazines featuring recipes, preparation tips and presentation ideas for
everyday cooking.
Today, the BETTY CROCKER brand is used for a variety of food
products, such as cakes, muffins, cookies, quick bread, biscuits,
mashed potatoes, pasta and potato salad mixes, rice and pasta dishes,
and pre-packaged complete dinners, in addition to various publications and nutrition research.
By Patrick J. Gallagher, Fulbright & Jaworski L.L.P., Minneapolis, Minnesota, USA
Sources: “The History of Betty Crocker” and “The History of General Mills,”
www.generalmills.com, September 3, 2003
Welcome New Members
Now Accepting Applications for
Ladas and Pattishall
The Brand Names Education Foundation
(BNEF) is now accepting papers for the
Ladas Memorial Award and nominations
for the Pattishal Medal for Teaching Excellence.
Visit www.bnef.org for nomination and
application forms, or contact
info@bnef.org.
Contribute to BNEF Online
www.bnef.org/support/contribute.html.
www.inta.org
Fifteen INTA members joined the Association in
September 2003. Following is a list of these members.
For full contact information, visit the online INTA
Membership Directory in the Members Only section of
the INTA website at www.inta.org.
1-800-4-Trademark, Inc., Miami Beach, Florida,
USA; Abraham & Co., Lagos, Nigeria; Ageless IP
Attorneys & Consultants, Hanoi, Vietnam;
Corporation Service Company, Wilmington,
Delaware, USA; Dr. Fruhbeck Abogados y
Economistas y CIA, S.C., Madrid, Spain; ESPN,
Bristol, Connecticut, USA; Hoge, Fenton, Jones,
Appel, Inc., San Jose, California, USA; LLC Frishberg
and Partners, Kiev, Ukraine; Mijares, Angoitia,
Cortes Y Fuentes, S.C., Mexico Distrito Federal,
Mexico; Nelson Mullins Riley Scarborough, LLP,
Raleigh, North Carolina, USA; Potter Anderson &
Corroon LLP, Wilmington, Delaware, USA; Sichuan
Chofn Trademark Office Co., Ltd, Qingyang
District, Chengdu City, China, People’s Republic;
Stephen H. Sturgeon & Associates, PC, Washington,
DC, USA; Transperfect Translations, New York, New
York, USA; Law Office of Patricia A. Wilczynski,
Huntington, New York, USA
Vol. 58, No. 19
9
World Update
Battling Counterfeiting in Thailand
Toward Closer Cooperation Between Public and Private Sectors
The Asia-Pacific Economic Cooperation (APEC) summit recently
took place in Thailand. At this event, the government of Thailand,
which is confronted with serious counterfeiting activity, sought to
demonstrate to all guest nations that it is responding appropriately to
protect industrial property rights.
To this end, it has initiated close cooperation between relevant government agencies and the private sector. On September 12, 2003, the
public and private sectors signed two major Memoranda of
Understanding (MOU) on the prevention and suppression of the
smuggling of infringing products, and the prevention and suppression
of pirated products.
The objective of the two MOU is to facilitate cooperation between
the public and private sector in relation to these matters and in the
development of new tools to improve current enforcement mechanisms, particularly copyright and trademark rights.
The government agencies that signed these MOU are the
Department of Intellectual Property (first and second MOU), the
Customs Department (first MOU) and the Royal Thai Police (second
MOU). The signatory parties from the private sector include copyright owners and brand owners, law firms, and enforcement and investigation agencies.
Geographical zones covered by the MOU are not only major counterfeiting marketplaces in Bangkok, but also provinces like Phuket,
Chiangmai, Chonburi and Songkla.
Both MOU took
effect on September
12, 2003, and will
remain in force for a
continuous period of
three months. The
goal is to reduce the
number of pirated
goods offered for sale
at the retail level by
80 percent by the end
of this period. To
maintain quality standards, periodic evalua- Thai officials use a steamroller to destroy counterfeit
products.
tions of the enforcement methods will be performed.
Although the expected reduction in the sale of pirated goods might
be somewhat optimistic, the MOU should be regarded as a real
opportunity to improve not just enforcement results, but also methods
of preventing and suppressing infringement and smuggling of infringing goods in Thailand.
Source: Fabrice Mattei, Rouse & Co. International, Bangkok, Thailand; Verifier: Stéphane Passeri,
Commercial Attaché, Intellectual Property Regional Coordinator, INPI Representative in Asia,
French Embassy in Thailand, Economic Department
Smoking Out Infringers in Indonesia
A recent Indonesian Supreme Court ruling
in June may signal an increased commitment of the Indonesian government to
enforcing intellectual property rights. The
justices overturned the Commercial Court’s
holding of the right of N.V. Sumatra
Tobacco Trading Company (N.V. STTC)
to use the well-known DAVIDOFF mark
in Indonesia.
Reemtsma Cigarettenfabriken GmbH
(“Reemtsma”), the German unit of
Imperial Tobacco Group PLC (“Imperial
Tobacco”), worldwide licensee for the mark
DAVIDOFF, sued N.V. STTC in 2002.
The lower court ruling refused Reemtsma’s
request for a nonuse deletion of N.V.
STTC’s Indonesian registration for
DAVIDOFF.
In addition to the DAVIDOFF mark,
N.V. STTC, which is owned by former
Reetsma employee Sendi Bingei and his
brothers, has registered many famous
marks, including CHANEL and ROLEX.
The company has also produced counter-
10
Vol. 58, No. 19
feit goods such as ROLEX cigarettes. Brand
owners have discovered other Indonesian
companies using the owners’ marks not
only on the types of goods they make, but
also on unrelated goods such as SONY
underwear or INTEL jeans.
The N.V. STTC case illustrates the
importance of strong trademark protection
that honors international standards for
business development. The uncertainty
about trademark rights in Indonesia had
caused Imperial Tobacco to hold back on
its planned venture with PT Gudang
Garam, one of the largest Indonesian
tobacco companies, to expand sales of
DAVIDOFF cigarettes in Indonesia.
More uncertainty may emerge – N.V.
STTC has appealed the Indonesian
Supreme Court’s ruling, and a parallel can cellation action has been brought against
N.V. STTC by Davidoff & Cie S.A.,
Switzerland, to cancel all three variations of
the DAVIDOFF marks. INTA filed an
amicus brief in support of the case against
N.V. STTC (available on INTA’s website at
www.inta.org/downloads/brief_Davidoff.pdf),
in which the Association argues for the
consistent application of the international
legal principles regarding famous trademarks. (For more details, see INTA
Bulletin, Vol. 58, No. 18.)
In past decisions, Indonesia’s Supreme
Court and lower courts have ruled both for
and against non-Indonesian owners of
famous brands. The courts are not required
to follow precedents. However, Gunawan
Suryomurcito, the lawyer representing
Imperial Tobacco, told The Wall Street
Journal that the decision “could influence
later decisions on similar cases.” Next year
may offer more indications of Indonesian
policy with respect to famous marks, as
several other owners of major brand names,
including GLAXO, INTEL, JAGUAR,
MONTBLANC and PRADA, also await
decisions from the Indonesian Supreme
Court.
By Noelani Nitz, Hiroe and Associates, Gifu City, Japan
Representing the Trademark Community since 1878
INTA Bulletin Board
NameProtect Inc.’s TradeMark Insider Report has named Lawrence E.
Abelman, of Abelman, Frayne & Schwab in New York, New York, USA,
the top trademark filer of 2002.
David Miclean, of Fish & Richardson P.C., has been named managing
principal of the firm’s Silicon Valley, California, USA office.
David C. Gryce, of Arent Fox Kintner Plotkin & Kahn, PLLC in
Washington, DC, USA, has been selected to participate in the United
Nations summit in Geneva, from December 8-12, 2003, working
toward the development of a UN informational technology policy.
Marylee Jenkins and Edwin Komen have joined Arent Fox Kintner
Plotkin & Kahn, PLLC as partners in the Intellectual Property Group.
Janine A. Carlan, John Ken Hsu and Melodie Young have joined the
firm as associates, also in the Intellectual Property Group.
From INTA Publications
The “INTA Bulletin Board” announces news of a professional nature about individuals
who belong to INTA companies, including practice changes, accomplishments, promotions, relocations and awards received. To submit an item for the “INTA Bulletin
Board” send a message to bulletin@inta.org.
www.inta.org
Worldwide Trademark
Transfers Law and Practice
Editors:
Susan Barbieri Montgomery and Richard J.
Taylor
This comprehensive work surveys trademark
assignment law, practice and procedure, and
covers all information required to handle multinational trademark transactions.
• Member Price: US $275.00,
Non-Member: US $325.00
• Publication Year: 1992/2002
• Number of Pages: 1600
• Looseleaf / Supplements
• ISBN 0-87632-830-3
• 20WTT (Price includes all
supplements through 2002.
Future supplements priced
separately.)
India Enacts New
Trade Marks Act
CONTINUED FROM PAGE 1
• Use of an identical registered well-known trademark, even
in relation to dissimilar goods or services, may amount to
infringement of a registered well-known trademark under
Section 29, if the third-party mark without due cause
takes unfair advantage of or is detrimental to the
distinctive character or reputation of the registered
well-known trademark.
The statute expands protection of trademarks in general
with the following provisions:
• Bad faith constitutes a ground of rejection of a third-party
application.
• Likelihood of association with an earlier trademark (as
opposed to the previous test of likelihood of confusion or
deception) itself may be sufficient to deny registration to
a third party or constitute infringement of a trademark.
• Use of a registered trademark on business paper or in
advertising may constitute infringement.
• Infringement of a registered trademark may occur by
spoken use of the word mark.
• Disparaging advertising constitutes infringement of a
registered trademark.
Regarding enforcement of rights, courts are empowered to
enter ex parte injunctions or other interlocutory orders to:
grant discovery of documents; preserve the infringed goods,
documents or other evidence from destruction or removal;
and restrain the offender from disposing of or dealing with
his assets in a manner that may adversely affect the plaintiff’s
ability to recover damages, costs or other pecuniary remedies.
A minimum penalty of six months imprisonment and a
fine of Rs50,000 (US $1,115) has been prescribed for trademark violations. The maximum penalty has been increased
to three years imprisonment and a fine of Rs200,000 (US
$4,450).
Trademark violation is now a recognizable and nonbailable offense. Police officers (at or above the rank of deputy
superintendent) are empowered to search and seize without
warrant the goods, dye, blocks, machines, plates or other
instruments involved in committing the offense. The police
officer must, however, obtain an opinion from the Registrar
of Trade Marks prior to initiating the search and seizure.
Source: Chander M. Lall, Lall & Sethi Advocates, New Delhi, India; Verifier: Vikrant
Rana, S. S. Rana & Co., New Delhi, India
To order online, visit
www.inta.org/pubs
Vol. 58, No. 19
11
Mark Your Calendars
October 20 – 31, 2003
U.S. Roundtable Programs, Various cities in the United States
October 27, 2003
INTA BULLETIN EDITORIAL BOARD
To contact a member of the INTA Bulletin send an
email to bulletin@inta.org
Domain Names and Geographical Indications – Country Names
Roundtable, Athens, Greece
November 12 – 15, 2003
Olga M. Nedeltscheff
Editor-in-Chief
Philip Morris International Management S.A.
Lausanne, Switzerland
INTA Leadership Meeting, Boca Raton, Florida, USA
Trevor Stevens
Senior Editor
Davies Collison Cave, Sydney, Australia
Worldwide Forum on Trademark Protection, Geneva, Switzerland
Theodore Lienesch
Executive Editor, Law & Practice: The Americas
Thompson Hine LLP, Dayton, Ohio, USA
Simon Page
Executive Editor, Law & Practice: Europe, Middle East
Schneider Page, London, United Kingdom
Kay Rickelman
Executive Editor, Law & Practice: Asia, Africa
Spoor & Fisher, Pretoria, South Africa
Mary DeLongis
Executive Editor, Features
Diageo North America Inc., Stamford, Connecticut,
USA
Tim Lockhart
Executive Editor, Features
Willcox & Savage, P.C., Norfolk, Virginia, USA
INTA BULLETIN STAFF
Naeran Rubio
Managing Editor
December 1 – 2, 2003
December 11, 2003
TTAB for Advanced Practitioners, Crystal City, Virginia, USA
January 19 – 30, 2003
Madrid Protocol and the Community Trade Mark Roundtable,
Various cities in the United States
February 23 – 24, 2003
Advanced Trademark Symposium, Charleston, South Carolina, USA
March 7 – 9, 2004
INTA/ASIPI Conference 2004, Buenos Aires, Argentina
For more information, visit the INTA website at www.inta.org/events or call
Customer Service at +1-212-768-9887, ext. 157
Elaine Czach
Associate Editor
David Sokolosky
Designer
INTA SENIOR STAFF
Alan Drewsen
Executive Director
Maria Bachman
Director, Human Resources & Association Governance
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 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.
Ann Eng
Director, Education
Daryl G. Grecich
Director, Marketing & Communications
Bruce MacPherson
Director, External Relations
International Trademark Association
Feikje van Rein
Director, Operations & Meetings
1133 Avenue of the Americas
New York, NY 10036 USA
+1 (212) 768-9887 • f: +1 (212) 768-7796
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© 2003 International Trademark Association