3 daily news published by 129th annual

Renowned local band MarshallVente and the Chicago BluesReview welcomed attendees tothe 129th INTA Annual Meetingyesterday evening with top-notchrenditions of an assortment ofblues-infused pop classics. The11-member band enthusiasticallycovered favorites such as“Mannish Boy” by MuddyWaters, “Lady Marmalade” byLabelle, “Stormy Monday” by T-Bone Walker, and “Ain’t TooProud to Beg” by TheTemptations.

The spacious hall featured 10food stations celebrating thediverse cuisines offered by aselection of representativeChicago neighborhoods.Attendees helped themselves torice rolls in Chinatown, an arrayof different hummus and pita

chips in Greektown, tasty gua-camole and tortilla chips at theMexican station and delectablepastas and mouth-wateringtiramisu in Little Italy.

At the Chicago Stockyardstable, chefs served up roast beefand brisket, commemoratingNew City, Chicago’s famousUnion Stock Yard & TransitCo., which was once the centerof the American meatpackingdistrict.

Whether they were gatheredin front of the band or samplingthe “red hot” fare, the few thou-sand Annual Meeting attendeesat the Welcome Reception tookadvantage of the lively atmos-phere to find old friends andmake new contacts.

Opening ceremony reports: page 2

Trademark registrability criteria tops prac-titioners’ harmonization wish list, accord-ing to an exclusive INTA Daily News poll.

The poll, conducted online over the pastmonth, asked practitioners to nominatethe issue they would most like to see har-monized. Fifty-nine percent said trade-mark registrability, which was well aheadof the other options – electronic filing,

rules on famous/well-known marks andgeographical indications. Respondentscould also nominate another issue theywould like to see harmonized.

The World Intellectual PropertyOrganization (WIPO) is now looking ataspects of trademark law that could beharmonized, after playing a key role in dis-cussions which last year led to the signing

of the Singapore Trademark Treaty. ThatTreaty updated the 10 year-old TrademarkLaw Treaty and sets out how IP officesshould handle applications for (for exam-ple) non-traditional marks, if they acceptthem.

Speaking to the INTA Daily News,Ernesto Rubio, the deputy director ofWIPO in charge of trademarks, said thatthe Organization is considering whetherthere is any scope for harmonizing opposi-tion procedures, in addition to the ways in

which applicants are requested to repre-sent new types of trademarks.

“At the moment, different offices havedifferent requirements for the way inwhich applicants represent nontraditionalmarks such as smells, single colors, sounds,and holograms. WIPO’s StandingCommittee will look into the possibility ofharmonizing the requirements that officesask applicants to fulfill,” said Rubio.

Poll results: page 27

US beer maker Anheuser-Buschhas won a victory over nine“shadow companies” in HongKong using an approach othercompanies may now considerreplicating.

A shadow company is a com-pany incorporated in bad faithwhose registered name includesa trademark belonging toanother party. Counterfeitersoften incorporate these compa-nies in Hong Kong to add an airof legitimacy to their activities.They usually do this by licens-ing their corporate names tomanufacturers – often in China– who then produce trademark-infringing products.

Many companies have suf-fered from this phenomenon,

including Panasonic, Toshiba,Sanyo, and Adidas. In OctoberMatsushita Electric Industrial,the parent company ofPanasonic, made complaintsabout 26 companies incorporat-ed in Hong Kong, includingJapan Panasonic GroupTechnology and Panesonic [sic]Industrial Group.

Taking action against thesecompanies has proved difficult.The Hong Kong CompaniesOrdinance allows the Registrarof Companies to strike off namesif they are “too like” the name ofanother registered company. Butsome IP owners say that theRegistrar interprets “too like”very narrowly.

The Registrar can also use

the law to remove dormantcompanies from the register, buthe or she needs to be sure that acompany is not in operation.This can be difficult to prove:filing an annual return or pro-viding evidence of doing busi-ness in mainland China is suffi-cient to stop the removalprocess.

Now Anheuser-Busch is cele-brating a victory against shadowcompanies. In January, the brew-er sued the directors and, crucial-ly, the shareholders of nine com-panies that were trading undersimilar names. Earlier thismonth, the Court ordered thedefendants to change their com-panies’ names and said that if theshareholders did not comply then

lawyers from Lovells, thefirm representing Anheuser-Busch, would be given thepower to sign special reso-lutions on behalf of theshareholders to get thename changed.

Frank Hellwig, seniorassociate general counselfor Anheuser-Busch,told the INTA DailyNews the outcomewas “an importantstep in protecting ourrights and reducingthe number ofinfringements we seein China.”

“This recent deci-sion of the HongKong CompanyName Registry makesthe process of elimi-nating infringingcompany names much

more straightforward,”added Hellwig.“Nevertheless, litigationagainst these sham compa-nies in Hong Kong is timeconsuming and costly. Theprocess could be simplifiedby amending the HongKong Companies

Ordinance to provide aprocedure for object-ing to company namesthat incorporate thetrademarks of others.We are pleased, how-ever, with the recentactions of the HongKong Company NameRegister to eliminatethese infringing com-pany names as aninterim measure.” TheCompanies Ordinanceis due to be amendedin 2010 or 2011.

Chasing shadows in Hong Kong

Monday, April 30, 2007 www.managingip.com

CONTENTS 2 • ANNOUNCEMENTS 4, 25 • PHOTO COMPETITION 28 • AFFILIATE PARTY PHOTOS 30-31 • SCHEDULE 32

www.inta.org 129TH ANNUAL MEETING, CHICAGO

Daily NewsPUBLISHED BY

PREVIEW: FILING AT THE CHINA TRADEMARK OFFICE 3

Red Hot Chicago

What next for harmonization?

FEATURE: GLOBALPROTECTION – WIPO’SERNESTO RUBIOINTERVIEWED 22-25

PROFILE: INTA PRESIDENT DEE ANNWELDON-WILSON 8

Members of the TrademarkAdministrators Subcommitteeflaunted their business casualfashion sense during the annualTrademark AdministratorsBrunch on Sunday.

“We wanted to do somethingout of the box this year,” saidRosemary Turpin, who headed theSubcommittee’s brunch team. She

said the team had considered hiringa motivational speaker, but ulti-mately decided on a fun fashionshow to highlight both the “do’s”and “don’ts” of office attire.

The event, which included asprawling buffet, almost 60 raffleprizes and departing gift grabbags, certainly proved a success,drawing the highest number of

trademark administrators in recenthistory, with over 250 guests.

The chair of the TrademarkAdministrators Subcommittee,Kathy Merlino of CozenO’Connor, raised a champagnetoast to INTA, to trademarkadministrators and to everyonewho made the festivities possible.She also said she wanted to begin

a new tradition by making a Stateof the Trademark AdministratorsSubcommittee Address, in whichshe summarized the work of theSubcommittee’s four teams overthe past year.

The fashion show – the high-light of the afternoon – featuredmodels made up of members ofthe Trademark AdministratorsSubcommittee. Paul McGrady ofGreenberg Traurig and BarbaraBarron Kelly of CT Corsearchplayed fashion show hosts andthe crowd roared with laughteras the two demonstrated theirvoguing abilities while beingintroduced to Madonna’s song“Vogue.”

Each of the 15 models parad-ed their office apparel down therunway to tunes including “Let’sGet it Started” and “Can’t TouchThis.” Representing “what not towear” were models wearing aleather jacket-and-skirt ensembleand a mini-skirt and T-shirt com-bination complete with fishnetstockings.

Raffle prizes were donated byretail members of theSubcommittee and included aMOTOROLA RAZR phone, abasket of AVON products and afree registration for next year’sAnnual Meeting in Berlin.

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EDITORIAL TEAMEditor James Nurton Deputy editor Emma BarracloughReporters Peter Ollier and Eileen McDermottAdditional reporting Shahnaz Mahmud, JamieMcKay, Nick Pettifer

PRODUCTIONProduction manager Luca ErcolaniWeb designer João Fernandes

ADVERTISINGPublisher Daniel ColeTel: +852 2842 6941Email: [email protected] manager Tom St DenisTel: +1 212 224 3308Email: [email protected]/Africa manager Alex EagerTel: +44 20 7779 8682Email: [email protected] America sales executive Alissa RozenTel: +1 212 224 3673Email: [email protected]

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The INTA Daily News is produced by Managing Intellectual Propertyin association with the International Trademark Association. Printedby Rider Dickerson in Chicago. The INTA Daily News is also availableonline at www.inta.org and www.managingip.com. © EuromoneyInstitutional Investor PLC 2007. No part of this publication may bereproduced without prior written permission. Opinions expressed inthe INTA Daily News do not necessarily represent those of the INTAor any of its members.

Chicago city guide information and photos:www.choosechicago.com

CONTENTSNews 2

Preview: South Asia 3

Report: Academic course 4

Report: New members’ reception 4

Announcements 4, 25

Feature: Filing in China 5-7

Preview: Trademark ethics 7

Profile: Dee Ann Weldon-Wilson 8-9

City guide: Eating in Chicago 10

City guide: The Blues 11

Feature: Anticounterfeiting strategies 12

Preview: Survey evidence 14-15

Preview: Internet developments 16-17

Interview: Steven Steger, Brunswick 18-19

Classified advertising 19, 21

Interview: Carrie Knecht, Motorola 20

Feature: International trademarks 22-23

Profile: Ernesto Rubio, WIPO 24-25

Feature: A year at the ECJ 26

Poll: Trademark protection 27

Photo competition 28

Vox pop 28-29

Affiliate party photos 30-31

Schedule 32

INTA is paying increasing attention to emerg-ing issues that affect trademarks on a globalscale, President Dee Ann Weldon-Wilson toldattendees last night. “These issues includeindigenous rights, intellectual property financ-ing, development concerns, and the interplaybetween trademarks and other forms of intel-lectual property,” she said in a speech at theAnnual Meeting Opening Ceremonies.

Weldon-Wilson added that, in an intercon-nected world, “it is important to adopt a glob-al view of how these various developmentshave affected not only trademarks in generalbut also the setting of international norms

relating to trademark protection.” Recognizingthe relevance of regionalism, INTA has beenworking closely with the European Union, andintergovernmental and regional groups such asAPEC, ASEAN, OAPI, ARIPO and ASIPI.

She said that it will be necessary for INTAand trademark practitioners to adapt to newchallenges and find new solutions to oldissues. This may mean rethinking conven-tional notions that have defined trademarkpractice and protection for many years, suchas the principle of territoriality. It alsomeans recognizing the value of publicawareness and education in an era of blogs,

digital communication and media sophisti-cation. “How do we reinforce this messageto a general public that is increasingly prag-matic, cost-conscious, and not necessarilyfond of lawyers? INTA needs to tap into thispsychology to make its voice heard moreeffectively,” said Weldon-Wilson.

She added that “new tools and approachesare constantly needed” in the battle againsttrademark counterfeiting, and that INTA is play-ing a part in the global effort to seek progress onthis issue. Comparing INTA to a river, Weldon-wilson said it is “always moving, always adapt-ing to the surrounding terrain, but at the sametime shaping it, to get to where it needs to be.”

Profile of Dee Ann Weldon-Wilson: pages 8 to 9

NEWS

The challenge of change

The CEO of a company that ownsone of the most recognizable trade-marks in the world, and which isheadquartered less than 30 milesfrom Chicago’s McCormick Place,last night explained howMcDonald’s has built one of themost successful global brands.

Jim Skinner, whose companyowns more than 11,000 trade-marks in 199 countries, told theopening ceremony that there arefour key elements to brand build-ing. Companies need to have adistinct identity, be familiar,make a special promise, andbuild brand authority, he said inthe Keynote Address.

And he reminded the audiencethat businesses must first create astrong brand before they cantruly tap into the value of theirtrademarks – the ownable andlegally protectable instrumentsthat support the brand.

“A valuable brand is morethan creating a famous mark ...it’s creating a mark that standsfor something special,” Skinnersaid. “At McDonald’s, we definespecialness as ‘the promise of arelevant and differentiated brandexperience.’ That promise iswhat turns a trademark into abrand.”

In McDonald’s case, the com-pany considers its specialness tobe the fast food restaurant’s eat-ing experience and its associationwith fun and youthfulness – aspirit that the company encapsu-lates in the phrase “foreveryoung.” Skinner said that it isthis that describes the essence ofthe McDonald’s brand.

But he went on to warn trade-mark owners that brands are ulti-mately very fragile. It takes yearsto build trust from customers andto build the strength of the

brand, but it can take just oneincident, or one unhappy visit, tobreak that trust. As a result, com-panies must ensure that they pro-tect their brands.

Skinner also paid tribute totrademark practitioners, admit-ting that he had confused trade-marks and copyright until cor-rected by the head of McDonald’sTrademark and IntellectualProperty Group.

“What do I know? I’m not atrademark attorney ... I’m just aCEO,” he joked. “[But] there isno question that trademarks havebecome the foundation of ourmodern system of business... andI congratulate all of you for help-ing us convey our unique identi-ties to the consumers we serve.”

You are the “guardians” ofthe brand “in the first line ofdefense,” he said.

How to build a brand

Trademark administrators strut their stuff

Trademark owners can catch up on the latest legaldevelopments in some of the world’s fastest-grow-ing economies today at session CM53 – a regionalupdate on India, Pakistan, and the Middle East.

India, home to more than a billion people, is growing at9 percent each year, a rate of growth that is transforming thelives of the country’s middle classes. It is unsurprising thatthe country is increasingly attractive to multinational brandowners. But IP owners face a number of challenges – fromhigh levels of counterfeiting to a judicial system that, while

well respected, can be frustratingly slow. Luckily for brand owners, India’s judges

have been handing down some ground-break-ing judgments over the past two years. In Julylast year, for example, cigarette lighter makerZippo won a landmark injunction against asimilar-shaped product when the Delhi HighCourt granted an ex parte injunction prevent-ing the defendants from importing, marketingor selling infringing lighters in India. It wasthe country’s first case involving a registeredshape trademark since the Trade Marks Act1999, which allowed shape marks to be regis-tered, came into effect in September 2003.

In 2005, in Time Incorporated v LokeshShrivastava, the same court recognized thatTime magazine’s red border design was dis-tinctive and directly associated with the plain-tiff’s magazine. In a move that signalled a newtougher line against infringers, the Delhi HighCourt ruled that the defendant’s Time AsiaSanskaran magazine, which had a red border,infringed Time magazine’s copyright andtrademarks. The Court imposed the first puni-tive damages to be awarded in an IP case.

Less than three months later the HighCourt of Delhi granted an injunction toIndia’s national software association NASS-COM, after a recruitment agency had posedas the organization in phishing emails. Itwas the first phishing case that the country’scourts have dealt with.

Madrid beckonsBut these significant judicial developmentsare unlikely to be as important to brandowners as one forthcoming change: inFebruary this year the Indian cabinetapproved a plan for the country to accede tothe Madrid Protocol.

If the proposal is backed by Parliament,international trademark owners will be ableto use the Madrid System to extend theirrights to the world’s second most populouscountry , and Indian applicants will be ableto extend their trademarks overseas. ErnestoRubio, assistant director general in chargeof trademarks at WIPO, which administersthe Protocol, has described the developmentas “great news.”

Another country considering joining theMadrid System is Pakistan, and WIPO’s Rubiosaid he hoped to see it a member within thenext two to five years. The participation ofcountries in South Asia and the Middle East inthe international trademark system is still rela-tively low: the only regional representatives inthe Madrid System so far are Iran and Syria.But economic growth in the region could spurmore states to join, and more trademark own-ers to lobby for countries to accede.

The session is moderated by FarrukhIrfan Khan of Pakistani firm UnitedTrademark & Patent Services. Panelistsinclude Samer A. Pharaon from Abu-Ghazaleh Intellectual Property in Jordan andJyoti Sagar of Indian firm K&S Partners.

First-time attendees heard from the experts yesterdayabout how to make the most of the INTA Annual Meetingat the Orientation and Cocktail Reception.

Five video clips highlighted the important challengesfacing rookies, including timekeeping, getting familiarwith the program, networking effectively, finding answersfrom the right people and getting involved to help planfuture events.

INTA Executive Director Alan Drewsen oversaw apanel of five Annual Meeting veterans. Miles Zvi of IGTwarned newcomers not to overstretch themselves by tryingto do too much. He also advised first-timers to arrive atmeetings on time and to be sure to set aside some time tosee Chicago.

All the speakers agreed that the key to good networkingis not to aggressively pursue specific targets such as “five

new business leads by the end of the Meeting,” but insteadto focus on making friends. Even if this doesn’t lead to newbusiness the first or second Meeting, over time these con-tacts will develop into fruitful business relationships.

Purvi Patel of Haynes & Boone LLP described the ben-efits of shaping the agenda by getting involved in INTA’scommittees but advised that, with more volunteers thanseats on committees, perseverance is needed to get a place.

Feeling slightly less nervous, the new attendees thenwent next door to a cocktail reception where they couldstart putting this advice into practice.

www.managingip.comINTA Daily News – Monday, April 30 2007 3

NEWS

India andbeyond

Networking tips

www.managingip.comINTA Daily News – Monday, April 30 20074

NEWS

Last year Susan Brady Blasco, anIP administrator with Birch,Stewart, Kolasch & Birch and co-chair of INTA’s AcademicSubcommittee, received an emailfrom a trademark student fromthe UK who had attended theAssociation’s academic trade-mark course at the AnnualMeeting in Toronto.

“He said that his law schoolprofessor had recommended abook by Fred Mostert and thathe had told him ‘I’ve been taughtby Fred Mostert’,” she said. “Hesaid that having the opportunityto be taught by people from each

different region in the world hadbeen a great experience.”

This year Blasco and her col-leagues once again lined up apacked two-day program for stu-dents taking the Survey ofInternational Trademark Law andPractice Seminar on Saturday andSunday. Eighteen lecturersexplained trademark law issues inplaces as far afield as the ASEANregion, Russia, Central America,the United States and Sub-SaharanAfrica. Among the tutors were aformer director of IP law at WIPOand a professor at Chicago’s JohnMarshall Law School (which

accredited the INTA course), aswell as trademark practitionersfrom 15 jurisdictions.

There was similar diversityamong the students: the 31 partic-ipants taking the course this yearincluded lawyers, trademarkadministrators, and law studentsfrom Argentina, Colombia,France, Japan and the UnitedStates.

“It’s just like being at lawschool,” said Blasco. She said thatmany of the lecturers teach parttime at their local universities inaddition to being trademark practi-tioners. “They are used to teachingand they’re good at it,” she said.“Every year when I invite themback I think ‘please just say yes.’”

At the INTA Anticounterfeiting Booth, Exhibition Hall visitorsexamine the endless variety of goods subject to counterfeiting.The Anticounterfeiting Booth also features a slate of speakers toanswer your questions about how to fight against fakes. For aschedule of today’s speakers, see page 25.

A global university

The departure location for tomorrow’s golf tournament will be the Main Entrance of the HyattMcCormick Place. Departure time is 10:00 am.

Exhibition Hall Booth Changes

Getting the Deal Through is now at Booth 631 (was formerly Booth 323).

ENVI is now at Booth 103 (was formerly Booth 1007).

INTA Daily News Announcements

Over the past few years there has been a pattern inChina of legal changes creating minor improve-ments while the overall picture remains frustrat-ingly complicated for brand owners. At the China

Trademark Office (CTMO), brand owners face severedelays as the examiners deal with the growing numbers ofapplications, making it harder to enforce rights againsttrademark squatters. A session today aims to highlight themain challenges and provide some tips on how to deal withthe China challenge.

Zhengfa Wang, a partner of China Patent &Trademark Agent (HK), believes that so-called ghosttrademarks are the main problem in China at the moment.The most common take the form of bad-faith registrationsthat are not used but made purely to extort money frombrand owners. Some ghost trademark owners also seekillicit income from manufacturing goods bearing the ghosttrademark.

“It is astonishing that the ghost trademarks exist insuch a huge number, increase at such a dreadful rateand exist in so many varieties of forms,” says Wang. Asan example he cites the attempt by one trademarksquatter to register BEIJING OLYMPIC GAMES as atrademark.

Often the names of famous people will be associatedwith unlikely goods by enterprising trademark squatters.For example the famous basketball player Yao Ming hadhis name designated for the manufacture of beer andsteel pipes, while the name of film star Zhang Ziyi wasregistered for an electric device for trapping and killingbugs and expelling mice. One ambitious squatter eventried to register the device of Zinedine Zidane’s head-butt against Marco Materazzi in the FIFA soccer WorldCup final.

The exorcistsWang believes that there are a number of ways to exorcisethe ghosts, though he admits that registering all trade-marks in all classes is unfeasible. China has opposition, re-examination and cancellation procedures that can andshould be used, he argues. Brand owners can claim that themark conflicts with a prior right, is confusingly similar, isdevoid of distinctive character, has unhealthy influence,was registered in bad faith and by unfair means or is dilut-ing their trademark.

But all these ways of attack become meaningless if youhave to wait years and years for decisions to be made.Delays at CTMO and the Trademark Review andAdjudication Board (TRAB) have now reached seriouslevels.

“The problem is massive, the situation is terrible and it’sgetting worse,” says Doug Clark, a partner in Lovells’Shanghai office.

One reason for the rise in waiting times is simple: therehas been a rapid increase in the number of people apply-ing to protect their trademarks in the country and theCTMO is now the world’s largest receiving office. Figure1 shows a substantial increase in applications over thepast 20 years. Although the number of trademarks beingprocessed has also risen, it has failed to keep pace withdemand.

Estimates for the size of the delays vary, but approx-imate figures are between 18 and 30 months to registera trademark, five years to get a ruling in an oppositionhearing, and up to seven years for a decision from theTRAB in a cancellation action. The time needed to reg-ister varies depending on the class. Class 25 for cloth-ing, footwear and headgear suffers from the worstdelays.

Tactical applicationsUnfortunately, the unprecedented growth in applicationsand the subsequent delay in processing oppositions haveled to a dramatic rise in tactical applications designed tostrengthen an applicant’s hand.

For example, Clark says that he advises clients to regis-ter as many variations on their trademarks as they can

rather than rely on opposing infringing marks. This in turnfurther increases the workload of the already overbur-dened CTMO. Delays create more delays, and a viciouscircle is born.

This problem seems particularly acute at TRAB, whereLinda Chang, an executive in Rouse & Co.’s Shanghaioffice, says she chased up a case that she filed in 2003 onlyto discover that the organization is still hearing cases from1999.

Delays in deciding trademark oppositions can alsoaffect infringement actions. In late 2005 the SupremeCourt stated that when there is a dispute over registeredtrademarks, courts should not handle such cases butshould wait for the dispute to be dealt with by theTrademark Office first.

Given the time it takes to get a decision, this can be dis-astrous for rights owners. For example, Danish shoemak-er Ecco became a victim of this policy when a judgerefused to deal with an infringement case while the CTMO


FEATURE: CTMO

Meeting the China ChallengeWhile for many companies China is the land of opportunity, with abundant labor and a rapidly expanding middle class, forbrand owners it has long been regarded as the ultimate challenge. Peter Ollier reports.

“It is astonishing that theghost trademarks exist insuch a huge number”

was still deciding the outcome of an opposition action. Thealleged infringer is free to continue his actions until thecase is heard.

Clark argues that this is not compliant with Articles41.1 and 42 of the TRIPs Agreement, which require WTOmembers to make available to right holders civil judicialprocedures concerning the enforcement of any intellectualproperty right covered by the Agreement. At the moment,it could be argued that the courts are abdicating responsi-bility to the administrative level.

So is there a magic solution to all these problems? Oneobvious answer is that the Office should recruit moreexaminers and ensure they stay longer. Yang Yexuan,deputy director general of TRAB, wrote in ManagingIntellectual Property in 2005 that pendency had become“an urgent issue,” and said that a plan had been approvedto hire more examiners. This has led to some improvementin the number of cases being processed but the issue is farfrom being resolved.

Linda Chang proposes abolishing relative examination

as a solution to the pendency problem in a country whereapplications keep rising year after year. Although thismight lead to a spate of bad-faith registrations, it wouldspeed up the system and shift responsibility on to compa-nies to think more about what they should try and register.

Other practitioners disagree, arguing that this wouldlead to a backlog of re-examination cases and, accordingto Sandra Gibbons, a partner of Lloyd Wise in HongKong, favor larger companies that can afford to police thesystem themselves. “The only way is to appoint and trainmore people,” she argues.

The CTMO has been looking at ways to improve thependency situation in the context of current revisionsto the China Trademark Law. This includes addressingthe question of whether abolishing relative examina-tion is the solution. In a letter to the CTMO inFebruary 2007, INTA said that while abolishing rela-tive examination might help reduce the considerablebacklog of pending cases under examination, it wouldlikely be offset by the lengthy opposition procedure if

no measures are taken to expedite the opposition pro-cedure. The current presumptions of a registration’svalidity would also need to be changed in order tofacilitate trademark litigation.

Meanwhile, a number of minor improvements wouldhelp make the system more user-friendly. At present,despite the fact that it can take the CTMO years to refusean application or reject an opposition, applicants are givenonly 15 days to appeal. For an applicant based overseasfor whom time differences make contact with the localagent problematic, it can be difficult to make a decisionand prepare necessary documents in time.

Clark says that people should be given the right toapply to a court to cancel a trademark, to help companiessuch as Ecco. He would also like to see expedited proce-dures in TRAB. At the moment three people handle eachcase. Although this probably helps to ensure consistentdecision making, it almost certainly does not help theBoard shift its backlog more quickly.

He suggests allowing clients to request an expediteddecision made by one examiner, on the grounds that “anydecision is better than no decision.” Time limits could alsobe introduced, so that if a decision on an opposition orcancellation has not been made after one year or 18months it is deemed to have been rejected and you canthen appeal to the courts.

Other time-saving options include shifting to multi-class examination rather than considering one mark foreach class, as is required at the moment. This would tem-porarily slow down the system but in the long term couldmake the process more efficient, says Horace Lam, thehead of IP at Lovells in Beijing. Some practitioners alsoargue for a switch from first-to-file to first-to-use, “a moreequitable system,” according to Lam.

Many of the trademark owners and attorneys that theINTA Daily News spoke to also requested greater trans-parency on the part of the trademark authorities. CTMOpublished its examination guidelines in January 2006 andintroduced an online search service for trademarks – stepsthat were welcomed by practitioners. But practitionerswould like to be able to have more contact with examinersso that they can contact them directly during the examina-tion or appeal process if they believe it is necessary.


FEATURE: CTMO

100,000

200,000

300,000

400,000

500,000

600,000

700,000

Applications for registrationsRegistrations approved

1982 1983 1984 1985 1986 1987 1988 1989 1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005

Figure 1: Trademark statistics in China 1982-2005


FEATURE: CTMO

Short-term solutionsWhile the long-term solutions proposed are varied, in theshort term Lily Lei, a partner of Liu Shen & Associates,believes that the only answer is to act as early as possible:“When you begin to think about doing business in China,get your trademarks registered.”

If the mark has well-known status then protecting yourbrand becomes simpler. This first became possible in Chinaafter it joined the Paris Convention for the Protection ofIndustrial Property 20 years ago. While China has a repu-tation for being reluctant to grant these marks, especiallyfor foreign marks, in the last few years the process hasbecome easier. A ruling by the Supreme People’s Court in2001 means that the CTMO is no longer the only author-ity capable of recognizing well-known trademarks. Thenew trademark law later the same year contained provi-sions dealing with the protection of well-known marks. In2003, new Rules on the Recognition and Protection ofWell-Known Marks provided for recognition of well-

known marks through the well-known mark owner’s sub-mission of evidence of fame or on a case-by-case basis inopposition on enforcement actions at the CTMO, cancel-lation actions at the TRAB or infringement proceedings atthe Administration for Industry and Commerce.

Recognition of well-known marks is increasing, and in2006 14 brands were recognized as well-known, accord-ing to figures from Wan Hui Da Intellectual PropertyAgency. These included STARBUCKS and STARBUCKS

in Chinese (recognized in a lawsuit); KODAK; L’ORÉALand L’ORÉAL in Chinese; HONDA and the Chineseequivalents of TOYOTA and PORSCHE.

Despite the progress in establishing marks as well-known, brand owners are having difficulty registering 3-D,certification and collective marks. For example, Lily Lei saysshe has experienced trouble registering LEGO as a shapetrademark. So far it has been difficult to register a shapewithout a word as examiners have argued that it is not dis-tinctive. Few 3D trademarks have been successful so far.

The story is similar for certification marks, where Leihas been trying to register a mark for STILTON cheese forthe British Cheese Association. After almost four years oftrying and “four or five” meetings with examiners themark is still not registered.

The trademark law is being further revised, and drafts havebeen circulated for consultation. With so many issues to dealwith it is hard to see how everyone can be placated. Without adoubt the problem of delays needs to be addressed urgently.

Get your ethicspoints hereTwo sessions being held today and

tomorrow will give attendees theopportunity to learn about the latest

ethical issues affecting U.S. trademark prac-titioners and obtain CLE ethics credits.

The sessions will cover ethics issues thatarise when working with the USPTO, han-dling litigation in court and carrying outinvestigations.

Ethics issues can arise in many ways fortrademark practitioners. For example, thereare rules to be followed when investigatingsuspected infringing activity. These covercontact with the opposing party, not makingfalse statements, and using third parties tomake test purchases or carry out otherinvestigative research. “The question thereis: does undercover activity violate ethicalrules?” said Craig W. Weinlein, ofCarrington, Coleman, Sloman &Blumenthal, LLP, who is moderating bothsessions.

Today’s session will look at how differentU.S. courts have analyzed that question inrecent cases, and to what extent there is uni-formity in approach in different states,including in some – such as South Dakota –that trademark practitioners may not betotally familiar with.

The role of investigators will also beexamined in tomorrow’s session, which willfocus on issues arising once litigation hasstarted, including conflicts of interest, privi-leged documents and dealing with theopposing party during discovery.

SELECTED STATE BAR REQUIREMENTS FOR MINIMUM CLE

California: 25 hours of CLE requiredevery three years, of which four hoursmust be legal ethics and one hour mustbe elimination of bias in the legal pro-fession.

Illinois: 20 hours during first two-yearperiod, 24 hours during second two-year period and 30 hours during all sub-sequent two-year periods. At least fourhours in each two-year period must bein the area of “professionalism, issuesinvolving diversity, mental illness andaddiction issues, civility or legal ethics.”

New York: First two years of practice:16 credit hours per year, of which threemust be in the areas of ethics and pro-fessionalism. Subsequent years: 24 cred-it hours each two years, of which fourmust be in ethics and professionalism.

Texas: 15 hours required each year, ofwhich at least three must be in legalethics and/or professional responsibility.

“When you begin to thinkabout doing business inChina, get your trademarksregistered”

Dee Ann Weldon-Wilson, trademark counsel forExxon Mobil Corporation in Texas, has seen manysides of the world of brands. After receiving a B.A.degree from the University of Alabama in

Huntsville and a J.D. from Vanderbilt University School ofLaw in Nashville, Tennessee, she was clerk to theHonorable Julia Smith Gibbons of the U.S. District Courtfor the Western District of Tennessee, an associate with thelaw firm Fitch, Even, Tabin & Flannery and trademarkcounsel for The Southland Corporation (now 7-Eleven,Inc.) before joining Exxon in December 1989. “I’ve gonewhere the trademark work took me,” says Weldon-Wilson, who is INTA President for this calendar year.

Lately, the work has taken Weldon-Wilson to increasing-ly far-flung destinations. In January this year, she spoke atthe Third Global Congress on Combating Counterfeitingand Piracy in Geneva, and in March she visited São Paulofor a joint INTA-ASIPI meeting. This week she returns toChicago, where she worked in private practice, to welcomeattendees to the 129th INTA Annual Meeting.

Counterfeiting and educationWeldon-Wilson’s work in the first three months of thisyear demonstrates some of the priorities of her presidency.Anticounterfeiting is one. As well as supporting the eventin Geneva, which worked to promote public-private part-nerships to combat counterfeiting and piracy, INTA alsopartnered with Harper’s Bazaar for its Third AnnualAnticounterfeiting Summit in New York in February. Theevent featured a keynote speech from New York CityPolice Commissioner Raymond W. Kelly, and came asMayor Michael Bloomberg issued a Proclamation desig-nating February as Anticounterfeiting Month.

Weldon-Wilson says: “As INTA continues to expand itsreach and influence, we want to continue to emphasize theimportance of fighting counterfeiting.” The Association –on behalf of all its member companies – is working withother organizations, and with national and internationalagencies, to tackle counterfeiting directly and also to high-light the dangers of cheap, fake goods, the damage theycan cause consumers and the criminal nature of those whobenefit from counterfeit sales. The INTA president hasseen first hand the counterfeiting of oil, lubricants andeven gas stations as well as the use of ExxonMobil’s markson closely related products (one recent case in Chinainvolved spark plugs).

She identifies three priorities in the fight againstcounterfeiting: increased penalties (both penal andfinancial) for those found guilty; more regulation oftransshipment of goods, especially in free trade zones;and, most importantly, greater education of consumers.She says that education efforts need to recognize thatmany counterfeit purchases are “not absolutely inten-tional,” so it is vital to explain the role of trademarks,and the damage that buying fakes causes to society andto the world economy. “It’s important for people tounderstand trademarks are a communication tool – notjust for trademark owners but for consumers to know abrand is the same quality as they purchased the timebefore. A brand is a short-cut for them to identify thequalities involved and to know who is standing behindthe product or service. They could be sorely disappoint-ed in the quality and lack of warranty. We need to takeevery opportunity we have to emphasize these issues.”Above all, she says, education needs to explain thatcounterfeiting “is a different form of stealing.”

Global commitmentSuch efforts require the commitment of trademark owners,as well as public sector agencies and those working ininternational associations, on a global level. “With inter-national communications and trade expanding, it isincreasingly important for companies to protect theirbrands throughout the world and to do so as effectively aspossible. Every trademark owner is constantly evaluatingits trademark and domain name portfolio to meet theevolving interests of consumers,” says Weldon-Wilson.

In October last year, INTA opened a Europe office,headed by Europe Representative Christina Sleszynska, toadd to its offices in New York and Shanghai. The Brusselsoffice will better serve the one-quarter of INTA membersbased in Europe by working with European institutionsand also hosting events. For example, in June this year


PROFILE: DEE ANN WELDON-WILSON

Anticounterfeiting and BRIC countries Three months into her term as INTA President, Dee Ann Weldon-Wilson tells JamesNurton why her priorities include anticounterfeiting, globalization – and mappingout the long-term future of INTA.

INTA is holding a conference on Community IP rights inassociation with OHIM followed by a workshop forEuropean in-house counsel.

But, says Weldon-Wilson, INTA continues to lookbeyond Europe and the United States. In particular, sheemphasizes the importance of the four most rapidly emerg-ing countries in the world – Brazil, Russia, India and China(known as the BRIC countries), which she says are“reshaping global commerce.” These four countriestogether make up half of the world’s population.

Developing markets present opportunities for piratesand counterfeiters, as Weldon-Wilson acknowledges:“There are many regions where we need to address thecounterfeiting issue – the Middle East, Far East, LatinAmerica.” But it is not just counterfeiting that needs to beaddressed. Another area is the protection of trade dress,

something that she has seen the importance of first hand –for example in gas stations. “It is particularly importantwhere products are sold in countries where the languagesare different,” she says.

Demand for trade dress protection is “of continuingimportance all over the world and an area in which weneed to stay involved,” says Weldon-Wilson. Weldon-Wilson accepts that “the type and nature of protection dif-fers from country to country,” but she believes that someharmonization is required: “The minimum standardshould be available in every country.”

A tradition of changeThe growth of INTA and particularly its internationalmembership mean that the Association must “keep its tra-dition of change,” says Weldon-Wilson. One of her roles as

President is to chair the Long Range Planning Task Force,which is designed to ensure that INTA remains valuable toall its members. The Task Force is now looking at how theAssociation should develop over the next 15 to 20 years.“By the end of 2007 we are expecting to have some prelim-inary conclusions that will address how INTA can bestserve its members, whether through education, policydevelopment, advocacy or other areas,” she explains.

From fugues to fuelWeldon-Wilson first came to IP through her interest inmusic, which she majored in at college. While taking IPlaw courses she realized trademarks was the area in whichshe wanted to specialize. “I was very fortunate to find myniche early,” she says. She still plays the piano as a hobby,and Bach is her favorite composer: “His type of logic isconsistent with that of lawyers,” she explains.

At ExxonMobil, she concentrates on trademark anddomain name work as part of what she describes as a “veryintelligent, capable and nice group.” Based in the Irving,Texas office, near Dallas/Fort Worth International Airport,Weldon-Wilson is part of a group of four trademark attor-neys that handle all of the company’s trademark and relatedwork from selection and clearance through to enforcement,managing a total of some 30,000 trademarks.Responsibilities are divided along business lines, and she cov-ers the fuels marketing business, including gasoline stations.

Asked what is the biggest challenge that trademarkowners face, she picks out the Internet: “Trademark own-ers are very interested in issues relating to the Internet andhow it will affect territoriality of trademarks. I think it willbe interesting to see it evolve.” In particular, she says thatthe nature and evolution of the Internet, and particularlythe interactivity and user empowerment brought by Web2.0, pose questions about the “balance of free use andtrampling on people’s rights.” She adds: “The issues wehave to face will evolve, but we will continue to work withclients to develop new strategies to face new challenges.”


PROFILE: DEE ANN WELDON-WILSON

head INTA 2007 prioritiesMAIN BRANDS OF EXXONMOBIL Source: www.exxonmobil.com

EXXONMOBIL: Exxon Mobil Corporation was formed in 1999 by the merger of Exxon and Mobil. Since then, specialist business-es such as aviation fuel and lubricants, chemicals, asphalt/bitumen and marine fuels and lubricants have been marketed usingthe EXXONMOBIL brand.EXXON: The EXXON brand has been used for fuels, services and lubricants in the United States since the 1970s. It is also usedon service stations, convenience stores and credit card services.

ESSO: The ESSO brand is used internationally for fuels, service stations, convenience stores and lubricants and dates backmore than a century. The brand dates back to the Standard Oil Company (New Jersey), and was used as the primary fuels markin the United States until being replaced with EXXON in the 1970s.

MOBIL: The MOBIL family of brands covers advanced technology in fuels, lubricants and services and is used worldwide. MOBILoil is the official motor oil of NASCAR.

MOBIL 1: The MOBIL 1 family of brands covers products for engine and vehicle protection including oils, synthetic grease, trans-mission fluids and gear lubricants. It dates back a quarter of a century. Mobil 1 Racing sponsors NASCAR drivers Ryan Newmanand Kurt Busch and is a technology partner for the Vodafone McLaren Mercedes Formula 1 team.

MOBIL DELVAC: Heavy-duty lubricants for trucks have been branded as MOBIL DELVAC for nearly 80 years. Products includeengine oils, synthetic drivetrain fluids and high-performance greases.

ON THE RUN: ON THE RUN convenience stores are operated as franchises and are designed to offer fast, friendly service andfresh products. They were started in 1984.

SPEEDPASS: An electronic means of payment, SPEEDPASS uses a small transponder attached to a key ring to pay for goods atcertain retailers and charge a check or credit card directly. The SPEEDPASS transponder is used by more than 5 million customers.


Steak your claim

Chicago’s steakhousesoffer all the usual cuts, aswell as fresh seafood andother dishes. Gene &Georgetti is one of the old-est, founded in 1941, whileGibson’s is normally packedand bustling. Just acrossthe road, Tavern on theRush offers outdoor diningin good weather.Reservations are recom-mended for all of them.Gene & Georgetti: 500 N. Franklin

St., (312) 527-3718

Gibson’s Bar & Steakhouse: 1028 N.

Rush St., (312) 266-8999

Tavern on the Rush: 1031 N. Rush

St., (312) 664-9600

Get a Pizza theaction

Chicago is known as thePizza capital of the world –so don’t miss the chance tograb one while you’re here,whether you preferChicago-style deep dish orthin and crispy. Of the hun-dreds of Italian restaurantsin the city, three of the bestare D’Agostino’s (which hasthree locations in Chicago);Gino’s East (just offMichigan Avenue), whichwas started by two taxidrivers and a friend in 1996;and Pizzeria Ora. All offertakeouts, and some takeorders online.D’Agostino’s Pizza and Pub: 752 N.

Ogden St., (312) 850-3247

Gino’s East: 633 N. Wells St., (312)

943-1124

Pizzeria Ora: 545 N. LaSalle St.

(312) 464-1872

Brunches andbrew pubs

If you have an early-morn-ing meeting, consider grab-bing a Chicago brunch tokeep you going. The Houseof Blues (see opposite)offers an award-winningGospel Brunch with livemusic accompanying theall-you-can-eat Southern-style buffet. Or try LouMitchell’s all-day breakfast,an 83-year-old Chicagoinstitution featuring home-made pastries and famousomelettes. If beer is moreyour thing, Goose IslandBrew Pub in Lincoln Parkoffers a chance to samplelocally brewed beers andvisit the brewery – or youcan catch up on youremails with free wirelessinternet access.House of Blues: 329 N. Dearborn

St., (312) 923-2000

Lou Mitchell’s: 565 W. Jackson Blvd.,

(312) 939-3111

Goose Island Brew Pub: 1800 N.

Clybourn St., (312) 915 0071

Haute cuisine

Truly haute in all senses of theword is the Signature Room,on the 95th floor of the JohnHancock Center, which offerscontemporary American cui-sine and has a cellar with 250wines from around the world.You will find many otherrestaurants offering top-notchsteak, ribs and American food,especially along theMagnificent Mile – or if youfancy something lighter trythe Devon Seafood Grill, withmarket-fresh fish from thePacific and Atlantic Oceans.Named restaurant of the yearby the Chicago Sun-Times,onesixtyblue is co-owned byMichael Jordan. It offers mod-ern, sophisticated food and islocated near the UnitedCenter. Also for sports fans,Harry Caray’s – named afterthe late Hall of Fame baseballannouncer – is officially desig-nated the “Home Plate” of theChicago Cubs. Signature Room: 875 N. Michigan

Av., (312) 787-9596

Devon Seafood Grill: 39 E. Chicago

Av., (312) 440-8660

onesixtyblue: 1440 W. Randolph St.,

(312) 850-0303

Harry Caray’s: 33 W. Kinzie St.,

(312) 828-0966

Gods and gauchos

Chicago’s immigrant com-munities have contributedmuch to the city’s wide-ranging cuisine, so why notcelebrate the internationalflavor of the INTA AnnualMeeting by tyring somethingnew? Two styles that arewell represented in Chicagoare Greek and Brazilian.Greektown is west of down-town, between Washingtonand Van Buren on HalstedSt., and is studded with spe-ciality restaurants withnames such as Athena,Parthenon and GreekIslands. Roditys has offeredan extensive, good-valuemenu since 1973. Forauthentic gaucho-style eat-ing, try a Brazilian restau-rant such as the well-ratedFogo de Chão or Brazzaz.Roditys: 222 S. Halsted, (312)

454-0800

Fogo de Chão: 661 N. LaSalle St,

(312) 932-9330

Brazzaz: 539 N. Dearborn St., (312)

595-9000

CITY GUIDE: FOOD

Where to eat in ChicagoChicago – one of the world’s great cities for dining – has something for everyone to eat, whatever your taste, budget or tim-ing. Here are a few highlights.

In a hurry? However busy you are during the INTA Annual Meeting, you will have time to grab a VIENNA BEEF hot dog from a stand or at a sports

event. Created by Austria-Hungarian immigrants Emil Reichel and Sam Ladany in 1893, VIENNA BEEF hot dogs are still made to the same recipe over 100

years on. An authentic Chicago-style VIENNA BEEF hot dog is topped with yellow mustard, bright green relish, onions, tomato wedges, pickle spear, sport

peppers and a dash of celery salt served in a steamed poppyseed bun. The company made 250 million hot dogs last year and owns the World Record for the

longest hot dog ever (37 feet, 2 inches).

At 329 North Dearbon, Marina Citysits Chicago’s House of Blues.Whether you want to eat a meal,watch a band or just drink a few

beers in atmospheric surroundings, theHouse of Blues is a popular place to be.You are just as likely to bump into a blueslegend at the bar as you are to catch a setby bands or popstars who wish to add anelement of authenticity and credibility totheir tours. Artists lined up for the comingmonths include Norah Jones, ElvisCostello, Joss Stone and Joan Armatrading.

Jazz, gospel, Dixieland, blues and hip-hop all have strong links to the WindyCity. From the piano riffs of Big MaceoMerriweather to the chart topping beatsof Kanye West, “Chi-town” has been inte-gral to the development of Americanmusic and it is no surprise to find a Houseof Blues here.

However, there is no larger brother tothe city (bar Jake and Elwood) thanMuddy Waters. He may have been born inMississippi, but Waters moved to Illinoisin 1943 and is now perceived by many asthe father of Chicago blues.

Aside from his music, it is well knownthat Waters was an excellent southern stylecook. According to his website, “he oftenentertained friends and family at his subur-ban Chicago home and it was certain thathe would be in his kitchen preparing afeast to keep his guests satisfied.”

Southern food goes hand in hand withthe spirit of the blues and it is therefore an

essential addition to the music at theHouse of Blues. The restaurant and themain stage are separated, but they are byno means mutually exclusive. Indeed,music spills into the restaurant where liveblues is performed on the Back Porch Stage

every night at 9:00 p.m. Jessica Yell of theHouse of Blues explains that “there is acover charge of $7 at the bar and mostpeople on hectic business trips love torelax and watch an authentic Chicagoblues band.”

It is hardly a surprise that many peopleflock to the restaurant and attached bar.On top of the first rate music on offer, therestaurant’s excellent menu caters for thosewith a taste for the south. Naturallyseafood, chicken and ribs are high on theagenda, but all your other favorites arecooked to give the feeling they have beenmade from scratch. This is especially thecase on the starter menu where optionsfrom the Stock Pot come highly recom-mended.

The venue’s humbly titled Music Hall ismodelled on the Estavovski Opera Housein Prague. But the décor is not entirelyeastern European. Indeed, the themes ofdifferent areas are as diverse as the bandsthat play the venue today. Gothic design ismixed with East Indian themes andMoroccan undertones fuse with Asianaspects and, of course, styles from thesouthern U.S. states.

This hodgepodge of cultural influencesblends well to create a surprisingly home-ly atmosphere, where what hangs on thewall is just as interesting as the musicplayed, the food served or the drinkspoured.

If you want to make a reservation at therestaurant, call 312.923.2000 and thenselect option two. The House of Blues canbe found at 329 North Dearborn, MarinaCity, Chicago and there is valet parkingavailable. Visit www.hob.com for direc-tions and further details.


CITY GUIDE: BLUES

Discover the House of BluesNicholas Pettifer invites you to try out one of Chicago’s famous music venues.

Counterfeiting is a trademark owner’s bad dream.Counterfeiters pay little or no taxes, rarely have toworry about corporate responsibility, and, worse still,they offer cut-price products by free-riding off legiti-

mate IP owners’ brand-building efforts and R&D dollars.But while the problem is becoming more pernicious,

trademark owners are becoming ever more sophisticatedin fighting back. In January, hundreds of IP counsel, CEOsand officials from national and intergovernmental enforce-ment agencies met in Geneva for the Third GlobalCongress on Combating Counterfeiting and Piracy toshare ideas about how to tackle the problem.

John Dryden, deputy director of science, technologyand industry at the OECD, told the Congress that prelim-inary research by the organization estimates that the valueof counterfeit and pirated goods traded internationally in2004 was US$176 billion. This number exceeds the grossnational product of entire economies such as Argentina(US$173 billion), Ireland (US$167 billion), Israel (US$129billion) and Venezuela (US$128 billion). Dryden said thatthe latest OECD estimates, which are expected to bereleased in a report later this year, exclude fakes made andconsumed within national borders, do not include theprices charged to final purchasers and do not include thecosts of digital piracy.

But for those companies that make fighting fakes a pri-ority, the situation is not all bad. Many pharmaceuticalcompanies are investing time and money in developingsophisticated bar-coding technology that will allow phar-macists and consumers to validate the authenticity ofproducts; Louis Vuitton has waged a concerted campaignin a number of countries to make commercial landlordsliable for products sold by their tenants that infringe theluxury goods company’s trademarks; and Burberry, theluxury goods maker, has put resources into tackling onlinesales of counterfeits through websites, a policy that hashelped it track down the criminal syndicates behind theindividual sellers.

There are also simpler ways that IP owners can help toprotect themselves from the trade in counterfeits, particu-larly by working closely with Customs officials aroundthe world. That means that they have to ensure that theyunderstand the rules, says Jenni Rutter, partner withBaker & McKenzie and a panelist in the IndustryBreakout Session IW01 (Pharmaceuticals and Healthcare– Recent Developments in Anticounterfeiting). “It isimportant that companies have a joined-up strategy,” shesays. In the session she will explain how Customs author-ities in EU Member States apply the EU CustomsRegulation differently, particularly when it comes to thecommunication deadlines they require trademark ownersto meet. The Regulation was designed to allow brandowners to be able to write to an importer whose goodshave been stopped by Customs, inviting him to agree thatthe goods be destroyed. That way they could avoid anexpensive lawsuit. But not all member states have imple-

mented the rules and so itcan be tricky for brand own-ers to know when they maybe required to follow addi-tional procedures. “It is veryimportant that brand ownersunderstand how memberstates deal with the situa-tion,” says Rutter.

In another session, CW01– A Cryin’ Shame –Counterfeit and Gray MarketGoods, practitioners, in-house counsel and lawenforcement officials fromEurope and the United Stateswill discuss ways that brandowners can make the mosteffective use of Customs rulesto stop fake goods as well asparallel imports from reach-ing their key markets.

RECENT EFFORTS TO CRACK DOWN ON THE COUNTERFEITERS

Around the world, trademark owners are urging governments to do more to fight fakes. In many countries the authorities areresponding. Here are some examples:

Argentina

The Customs Authority set up a Registryof Intellectual Property Rights in Aprilthat will allow trademark owners to reg-ister their trademarks at Customs andreceive notice of any imports or exportsof goods marked with those trademarks.

China

The Supreme People’s Court and theSupreme People’s Procuratorate haveagreed on new rules that should make iteasier to prosecute infringers under thecriminal law. The revised JudicialInterpretation will lower the criminalprosecution threshold in copyrightinfringement cases and increase thelevel of penalties that judges can imposein IP cases. The rules took effect onApril 5. One day earlier, China Customsissued a notice dealing with confiscatedinfringing goods. It says that if the if theinfringing marks cannot be removedfrom the product entirely, then thegoods must be destroyed rather thanbeing auctioned off. In addition, rightsholders must be notified.

Europe

The European Commission has proposed

a directive aimed at harmonizing ruleson the criminalization of IP infringementacross Europe. It is now being consid-ered by the European Parliament andmember states. In March, the LegalAffairs Committee of the EuropeanParliament gave its initial backing to theplans, voting to introduce fines of atleast €300,000 and four years’ impris-onment in serious cases of breaches ofIP rights and €100,000 in minor cases.The Committee also supported propos-als to set up so-called JointInvestigation Teams that would allow IPowners to take part in the investiga-tions, alongside the police.

The United States and the EU agreed anIPR Action Strategy on Enforcement inJune 2006, which established closerCustoms cooperation, including moredata sharing, joint border enforcementactions, joint enforcement in third coun-tries and the creation of joint networksof EU and U.S. diplomats in third coun-tries to deal with IP protection.

United Kingdom

On April 6, 2007, Trading Standards offi-cials were given the power to enforce UKcopyright law and the right to make test

purchases, enter premises and inspect andseize goods and documents. “There’ll bean additional 4,500 pairs of TradingStandards eyes watching counterfeitersand pirates,” said Trade and IndustryMinister Malcolm Wicks. “This will meanmore surprise raids at markets and bootsales, more intelligence, more prosecutionsand more criminals locked up. IP criminalsshould know that the UK is not a safeplace. Their risk of 10 years’ imprisonmentand unlimited fines is very real and fromthis date forward a markedly higher risk.”

United States

The Stop Counterfeiting in ManufacturedGoods Act, H.R. 32 was enacted in March2006. The law bans the trafficking ofcounterfeit labels, emblems, containers orsimilar labeling components that may beused to facilitate counterfeiting; providesfor forfeiture of articles bearing or consist-ing of a counterfeit mark and proceeds ofany property derived from proceeds of, orused in the commission of, a violation;expands the definition of “trafficking” forcertain counterfeiting crimes and clarifiesthat trafficking in counterfeit goods orlabels includes possession with intent totraffic in such items.


FEATURE: COUNTERFEITING

Founded in 1993, Liu, Shen & Associates is a lawfirm and also a patent and trademark agencyspecializing in intellectual property and relatedlaws. The firm’s practice focuses on filing andprosecuting patent applications, registeringtrademarks, legal counseling on all phases ofintellectual property, and enforcement ofintellectual property including litigation.

Liu, Shen & Associates now has a staff numberingaround 270, which includes 28 attorneys at lawand 170 patent attorneys and patent engineerswith expertise that covers almost all technicalfields.

Serving thousands of clients including numerousmultinational corporations and world famousbrand owners, Liu, Shen & Associates has grown to be one of the largestlaw firms and a leading intellectual property firm in China. The firm’swell-received reputation around the world has been built on years ofgreat efforts to provide high quality services by the firm’s hundreds ofexperienced professionals and well trained staff, and the firm willcontinue its commitment to excellence in the years to come.

Hanhai Plaza (1+1 Plaza), 10th Floor, 10 Caihefang Road,

Haidian District, Beijing 100080, China

Tel: +86 10 6268 1616 Fax: +86 10 6268 1818

Email: [email protected] Website: www.liu-shen.com

LIULIU,, SHEN & SHEN & ASSOASSOCIACIATESTES

LIULIU,, SHEN & SHEN & ASSOASSOCIACIATESTES

Fighting the trade in fakesIn corporate board rooms and government agencies around the world, the problem of counterfeiting is being taken moreseriously than ever. Emma Barraclough looks at how industry and governments are responding to the challenge.

PRELIMINARY HIGHLIGHTS OF THE OECD REPORT

The OECD is conducting a study into the economic impacts of counterfeiting and piracy. The fullreport is expected to be published later this year, but preliminary findings were released inJanuary. Some of the highlights are:

• The scope of products being counterfeited and pirated is broad and expanding, with a notableexpansion form luxury to everyday products.

• Textile products are the most commonly infringed goods, according to Customs data, followedby machinery and equipment.

• 27 out of the 30 OECD countries were identified as sources of counterfeit and pirated products(only Iceland, Ireland and Sweden were not).

• Close to 60 percent of seizures originate from China, Thailand, Hong Kong, Korea andMalaysia.

• Consumption patterns vary: for example, the Middle East is an important market for automo-tive parts, while Africa is a major destination for counterfeit drugs.

• Over a third of respondents indicated a link with criminal networks and organized crime.

• Counterfeit and pirated items traded internationally account for about US$176 billion, or about2.4 percent of world trade in manufactures. This figures does not include fakes produced andconsumed within economies or the higher prices charged to final purchasers, nor does itinclude digital piracy. This figure is higher than the GDP of Ireland.


INTA DAILY NEWS

One of the changes introduced in the U.S.Trademark Dilution Revision Act last year made itpossible to file claims based on the “likelihood ofdilution” rather than “actual dilution.” Among

other things, this change could lead to greater prominencefor surveys in trademark litigation, as owners of famousbrands use surveys to prove that consumers associateallegedly diluting marks with famous marks. If so, it willprovide a further boost for the use of survey evidence intrademark cases, which has soared over thepast 30 years.

Surveys only began to be widely used inU.S. litigation in the late 1970s, but sincethen they have become crucial to manytrademark and other cases. According toGerald Ford, a partner in the marketingresearch and consulting firm of Ford Bubala& Associates who has reviewed a widerange of federal opinions, in the period1946-1980 there were just 18 surveysoffered in reported cases. From 1961 to1980 there were 193 surveys offered, andfrom 1981 to January 2007 there were1,110.

The survey manFord is taking part in today’s session “TheSurvey Blues: Litigation Survey ErrorsCausing Exclusion or Reduced Weight.” Hefirst became involved in surveys in 1972,shortly after beginning his teaching career atCalifornia State University, Long Beach, inthe School of Business Administration,where he focused on marketing. A studentapproached him after class one day and saidhe had a friend who was a lawyer who waslooking for a marketing expert to add someinsight in a case he was working on. Thatfriend was Robert Lyon, of counsel at lawfirm Jeffer, Mangels, Butler & Marmaro. “Ifit were not for that meeting with Bob Lyonback in 1972, I would not be here today,”says Ford.

“This was before survey evidence wasreally being submitted as evidence to thecourts. During that meeting, Bob told me hebelieved survey evidence was going to be thenext great change and he wanted to be in onthe ground floor,” he adds. This made animpression on Ford and three years later helaunched a consulting business with twopartners, Dr. Annabelle Sartore and StephenBubala. Part of the business focused, as itdoes today, on surveys being used in litiga-tion while another part specializes in com-mercial work (typically assisting a clientwith brand positioning and competitiveanalysis).

At this time, Ford also developed aninterest in trademarks. “Trademarks are thelove of my life,” he says, adding that it’sbecause of trademarks that he’s had a “won-derful life” working in this field. So, when itcomes to surveys, those relating to trade-marks are his favorite: he says it’s always asurprise to learn what people do and don’tbelieve. “A lot of the focus of our researchin the litigation area is on whether or not aconsumer may be confused by an infringingbrand,” he says.

Battle of the CalvinsA recent example of a case in which a surveywas a vital tool involved Calvin Klein, thefamous fashion house, and The CalvinClothing Company. Calvin Clothing had a

federal trademark registration for CALVIN for boys cloth-ing dating back to the 1930s. Calvin Klein developed hisbrand of clothing in the 1960s, and it has since turned intoa major label. But Calvin Clothing sought to extend itstrademark into men’s and women’s fashions. In a case inthe Southern District of New York last year, Calvin Kleinpresented consumer research evidence which helped thecourt decide that allowing the extension of the CALVINbrand would dilute Calvin Klein’s rights. Judge Rakoff of

the Southern District said that Calvin Clothing was toolate in its attempt to expand, and should have exercised itsright for expansion much earlier.

Ford says there are many such examples where surveyshave served an important role in a case, particularly wherefalse advertising is concerned. “Providing consumer datathat clearly shows confusion is a powerful tool,” he says.Survey evidence is particularly important in determiningwhether there is a likelihood of confusion, which may be


FEATURE: SURVEY EVIDENCE

The science of surveysThe use of survey evidence in litigation is becoming more common – but also more complicated. ShahnazMahmud and James Nurton preview today’s session on the use of surveys and profile consultant GeraldFord, whose business carries out consumer studies.


FEATURE: SURVEY EVIDENCE

difficult to assess by other means. But surveys have notalways been widely used.

Turning pointThe late 1970s was when surveys really got going. One ofthe first trademark cases in which survey evidence wasoffered was between Union Carbide and Ever Ready LightCompany and concerned the EVER READY mark, ownedby Union Carbide. The company sued Ever Ready LightCompany alleging that it was manufacturing light bulbsand placing the EVER READY trademark on them. A sur-vey of consumers showed that they were clearly confusedas to the mark’s ownership. Says Ford: “The case reliedheavily on the survey to determine infringement.” The sur-vey was accepted as admissible by the U.S. Court ofAppeals for the Seventh Circuit, which laid the groundrules as to how surveys should be conducted – such as thatquestions and the results of a preliminary survey should besubmitted to the court for a ruling on admissibility.

In 1984, the Seventh Circuit again addressed the role ofsurvey evidence, in a dispute between Piper AircraftCorporation and Wag-Aero, Inc. over the use of Piper’strademark rights. Piper had used surveys of owners of pri-vate planes to help establish likelihood of confusion butWag-Aero had objected to the evidence, saying that theinterviews constituted an improper survey universe andthat the results were hearsay. But the district court accept-ed the evidence, with some caveats regarding the credibili-ty of the interviewers. The Seventh Circuit agreed, saying:“We believe that the universe employed by Piper is suffi-ciently precise to warrant the district court’s finding ofadmissibility … Although plaintiff could have restrictedthe universe of the survey further, nothing compels it tohave done so.”

The year 1993 was the major turning point for surveyevidence and all evidence developed or presented byexperts. The Supreme Court addressed the admissibility ofexpert evidence in a case between Jason Daubert andMerrell Dow Pharmaceuticals. Daubert was one of manychildren born with serious birth defects after his motherhad taken Bendectin, an anti-nausea drug made by MerrellDow, during pregnancy. Merrell Dow sought summaryjudgment claiming its expert documents did not demon-

strate a link between Bendectin and the birth defects, whilethe Daubert family submitted its own expert evidence,based on in vitro and in vivo animal studies, pharmacolog-ical studies, and re-analysis of other published studies. Thedistrict court granted summary judgment for Merrell Dow,and the Ninth Circuit upheld the ruling, saying that theplaintiffs’ submitted evidence had not yet been accepted asreliable by scientists who had had an opportunity to close-ly examine and verify the methods.

In its ruling in Daubert, the Supreme Court said thatjudges should act as gatekeepers, and only allow as evi-dence what is scientifically valid and pertinent to the case.The case led to so-called Daubert motions, in which judgesdecide whether the testimony of expert witnesses is rele-vant and reliable – before that testimony is presented to ajury. The case also set out five questions that should beasked before any new technique is accepted as admissibleevidence in court.

Ford says that the Daubert ruling had a significantimpact not just on the use of expert witnesses, but also onsurveys: “I think what has been made clear is that theSupreme Court decision cemented the fact that the qualityof survey evidence will affect its admissibility.”

More scientificSince Daubert, trademark surveys have become more sci-entific, in order to meet the relevance and reliabilityrequirements, says Ford: “Today, as opposed to 30 yearsago, they are designed much like a pharmaceutical drugtest. Half of the consumers are assigned to a test cell(which contains the alleged infringing trademark) and theother half is assigned to the control cell (which contains anon-infringing trademark) and represents the placebo partof the test. This one contains the name that has causedconfusion for some.”

For example, he explains: “Our methodologies wouldinclude Random Digit Dial (RDD), which involves conduct-ing surveys over the telephone. We would also employ theuse of shopping center intercept surveys. This involves hir-ing a professional interviewing services group and askingthem to go to shopping centers across the country. Theywould screen the public and once a person who hit a partic-ular demographic is found, that person would be invited togo to a private room to participate in a qualified interview.”

Such surveys are almost always done face-to-face or onthe telephone, although the Internet presents new opportu-nities for survey evidence. But Ford believes it will taketime before Internet surveys are widely accepted in court.He points out that even today only 70% of the U.S. popu-lation uses the Internet. That means Internet surveys haveautomatically lost 30% of the population, making it hard-er for them to claim to be accurate. Moreover, those whouse the Internet tend to have higher incomes and a bettereducation. He doesn’t rule out Internet surveys completely,though. “I do think that Internet surveys will be an impor-tant factor in the future. The coverage allows for easyaccess and can be done at a lower cost. But there are clear-ly issues that need to be worked on,” says Ford.

Today’s panel will address these topics and others relat-ing to the use of surveys. It will be moderated by PaulReidl, associate general counsel at E & J Gallo Winery.The other panelists are Jerre Swann, an IP partner atKilpatrick Stockton, and Shari Seidman Diamond, a pro-fessor at Northwestern University School of Law. Swannwill examine state-of-the-art survey evidence of today andtomorrow and Diamond will discuss what the future holdsfor survey evidence.

ASKING THE RIGHT QUESTIONS

The following are five “general observations” for judges toask, according to the Supreme Court in Daubert:

■ “a key question to be answered in determining whethera theory or technique is scientific knowledge that willassist the trier of fact will be whether it can be (and hasbeen) tested”

■ “[a]nother pertinent consideration is whether the theoryor technique has been subjected to peer review andpublication”

■ “in the case of a particular scientific technique, thecourt ordinarily should consider the known or potentialrate of error”

■ “the existence and maintenance of standards controllingthe technique’s operation”

■ “‘general acceptance’ can yet have a bearing on theinquiry”

The Internet has revolutionized the way that compa-nies do business, from allowing them to sell goodsonline and bring their brands into consumer livingrooms and offices in a way unimaginable even 10

years ago, to enabling them to find out more than everabout the people who buy their products. But while salesand marketing staff are learning how to exploit the oppor-tunities of e-commerce and pay-per-click advertising,lawyers are facing the challenges of the darker side of theInternet: taking on the cybersquatters, navigating theirway around the expanding, and potentially confusing,domain name maze and dealing with rivals who use yourcompany’s trademarks to direct Internet surfers to theircompany’s website. And the bad news for trademark own-ers is that some of the problems may get worse before theyget better.

Taking on the cybersquattersCybersquatting, for example, is on the rise, according tofigures from the World Intellectual Property Organization.WIPO received more complaints about cybersquatters in2006 than in any of the previous five years, promptingcalls for policy makers to consider how to respond to theproblem.

Last year 1,823 complaints alleging cybersquattingrelating to generic top-level domains (gTLDs) and countrycode top-level domains (ccTLDs) were filed with WIPO’sArbitration and Mediation Center. This is the highest num-ber of cybersquatting cases handled by the IP organizationsince 2000 and a 25 percent rise on the number of casesfiled in 2005.

So what is causing the rise? WIPO blames a number offactors. These include the effects of the use of computersoftware to register expired domain names automatically

and redirect them to pay-per-click portal sites, the five-dayadd-grace period (which allows refunds of registration feeswhen domain names are returned within five days of reg-istration – and gives rise to the practice of domain nametasting), the proliferation of new registrars and the estab-lishment of new domains. All of these have created greateropportunities for the mass, often anonymous, registrationof domain names without specific consideration of third-party IP rights, says WIPO.

Many registrations are now made anonymously on a

serial basis. Traditionally, cybersquatting involved the reg-istration of domain names by individuals seeking to sell theso-called squatted domain name to the genuine rightsowner. But recently, domainers have been able to makemoney from the large-scale automated registration ofdomain names. They acquire domain name portfolios, buyand sell domain names, and park domain names, claiminga big share of the 100 million-plus domain names that arenow registered.

“Recent developments in the domain name registra-tion system have fostered practices which threaten theinterests of trademark owners and cause consumer con-fusion,” says Francis Gurry, WIPO deputy director gen-eral. “Practices such as domain name tasting risk turn-ing the domain name system into a mostly speculativemarket.”

And he says that the speed at which domain nameschange hands and the difficulty of tracking such massautomated registrations have created new challenges fortrade mark owners wanting to pursue cybersquatters.“With domain names becoming moving targets for rightsholders, due consideration should be given to concretepolicy responses,” he says.

In the meantime, Jonathan Cohen, a partner withShapiro Cohen in Canada who is speaking in the sessionInternet Domain Names (CW03), says that trademarkowners must assess what action to take against cyber-squatters depending on the circumstances of the attack.“In principle, people being infringed by cyber pirates needto consider taking some sort of action, whether that beoffensive or defensive. But it’s similar to when you set up adomain name strategy in the first place: what action youtake depends on how much it will cost and what you wantto achieve.”


FEATURE: INTERNET

The Internet challengeThe rise of the Internet has created extraordinary marketing opportunities for companies, and many challenges for trademarklawyers. Emma Barraclough explains more.

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2002 2003 2004 2005 2006

Number of WIPO UDRP cases filed for TLDs

Source: WIPO

Since the Center launched the Uniform Domain NameDispute Resolution Policy (UDRP) in December 1999, ithas received more than 10,000 cases, covering 18,760 sep-arate domain names (see chart). The cases filed with WIPOsuggest that cybersquatters follow news events and mergeractivity closely. Last year, for example, 34 cases covering64 domain names were filed with WIPO which were relat-ed in some form to the trademark TAMIFLU, used to treatavian flu.

In addition, since registration of domain names in non-Roman scripts such as Arabic, Chinese, Cyrillic or Koreanbecame available a few years ago, the Center has received60 cases involving such names, of which eight werereceived last year. With the spreading of Internet connec-tions and online commerce, the proportion of domainname disputes of this type is expected to increase in thefuture, says WIPO.

But while the number of cybersquatting cases anddomain name disputes may be on the rise, the good news

for trademark owners is that of the 7,328 gTLD casesresolved, the Center has ordered the domain name to betransferred to the complainant in 84 percent of cases.

Who to sue in cyberspaceThe rise of the Internet has challenged traditional trade-mark rules, not least in the area of jurisdiction. The ses-sion CW03 Internet Domain Names starting at 11:45 a.m.on Wednesday will consider this question in-depth. Oneof the panelists, Dawn Osborne of Rouse & Co.International’s London office, will look at the issue ofjurisdiction from a UK perspective. “Trademarks are ter-ritorial,” she says. “If there is no contract to consider, apreliminary question in trademark cases is alwayswhether the trademark is registered or in the case ofunregistered trademarks protected in an EU member state,which, in the absence of a contract, will usually governthe choice of law.”

And Jonathan Cohen will consider some hidden jurisdic-tion issues. He says that if a company appliesfor a ccTLD in one country, an entirely dif-ferent country may have jurisdiction in theevent of any dispute because of a series ofcontractual relationships between theInternet governing body ICANN, the regis-trars and the ISPs.

Cohen says that the potentially negativeconsequences of these types of often-over-looked jurisdictional issues make it essentialfor trademark owners to formulate a cleardomain name policy for their business. If,for example, you are a UK company thatexports to the rest of the European Unionand to the United States, and are looking tosell your products in China, Cohen says youneed to consider which domain name youneed, and why, and which defensive onesyou might want to apply for as well.

“You should do an inventory and ask alot of questions. Part of the exercise is tounderstand what the country code top-leveldomains are all about, and how ICANNrules operate. If your advisers don’t know,you are less likely to be able to get goodadvice.”

Also in the session, Dawn Osborne willconsider whether two parties, each of whichowns the same mark in a different EU mem-ber state, can coexist on the Internet. Shesays that it appears to be becoming the gen-eral rule in Europe that in order to showtrademark infringement by a website, theplaintiff must demonstrate a commercialeffect in the Member State concerned. “Thisis a very good thing avoiding the blockingeffect that would be caused in otherMember States if an injunction could beobtained in one member state based on mereaccessibility that would in effect lead to aworldwide ban because it is very difficult tocontrol the geographical accessibility of websites on the Internet.”

She says it also avoids the possible stale-mate situation if the two trademark ownersowning the same trademark in differentmember states could succeed in gettinginjunctions against the other in their homecountries. If this were the case, then it wouldeffectively mean that neither could use theInternet as a form of distribution.

“It appears that if such a situation of twodifferent trademark owners owning thesame trademark in different member statesoccurs then coexistence is achievable alongtraditional lines that they will not actuallytrade in each other’s territory.”

For more programs on the Internet, seeMonday’s session CM01 Muddy Waters:Evolving Law and Policy in InternetAdvertising, examining keywords andadware, and Monday’s workshop WM50“Blues Clues”-Internet Investigations, aninteractive session where you will use yourlaptop to learn new Internet researchstrategies.


FEATURE: INTERNET

WHO’S EYEING YOUR NAME?

When it comes to domain name disputes, the United Statesis leading the way. Not only do parties from the UnitedStates top WIPO’s list of complainants in UDRP cases, theyare also more likely to be the respondent in any case relat-ing to a disputed domain.

Most frequently named party countries in WIPO UDRP casesComplainant Respondent

1 United States United States2 France United Kingdom3 United Kingdom China4 Germany Korea5 Spain Canada6 Switzerland Spain7 Italy France8 Canada Australia9 Australia Italy10 The Netherlands Russia

Source: WIPO

How long have you been with Brunswick?I am deputy general counsel and chief IPcounsel for Brunswick. I joined Brunswickin December 2003. Prior to joining the com-pany, Brunswick had been one of my clientswhen I was with Mayer Brown Rowe &Maw in Chicago. Immediately prior to join-ing Brunswick, I was senior patent counseland global trademark counsel at Accenture.I started my career with Brinks HoferGilson & Lione, and moved to MayerBrown after two years with Brinks Hofer.

Brunswick is a Fortune 500 manufactur-er of a variety of recreational products,including boats, marine engines, fitnessequipment, and bowling and billiardsequipment. It is based in Lake Forest,Illinois. In joining Brunswick, I was attract-ed by the opportunity to join a companywith such a fun and exciting product line.

I am a patent attorney by trade, with anundergraduate degree in electrical engi-neering. When I was with Brinks Hofer, Iworked solely in the patent arena, primari-ly in litigation. At Mayer Brown, I wasmore involved with broader intellectualproperty counseling, particularly withsome of our smaller clients. It was in thisbroader counseling that I began to dealmore with trademark matters. Whileworking for Accenture, I was responsiblefor worldwide trademark matters, so thetransition to chief IP counsel at Brunswick

was relatively smooth, including managingthe trademark portfolio. I enjoy workingon trademark issues – particularly in pro-tecting our brands, which, in many ways,are our most important assets.

Since I joined Brunswick, we have movedto a more narrowly focused trademark reg-istration program, wherein we focus ourregistrations on our primary brands. Whileour marketing strategies have not necessari-ly changed, this streamlined approach hasallowed us to more strongly protect ourmost valuable brands. We are the leader inmost of the industries in which we partici-pate, and have strong, recognizable brands,such as SEA RAY, BOSTON WHALER,BAYLINER and HATTERAS boats andyachts, MERCURY MARINE engines,LIFE FITNESS fitness equipment, andBRUNSWICK bowling equipment, bowlingcenters, and billiards equipment.

What is the business model? Brunswick is a manufacturing companythat hosts a range of durable goods. It issplit by division. The company has bil-liards, bowling, fitness and marine divi-sions. Its marine engine company isBrunswick’s primary division. I spend afair amount of time traveling throughoutthe US, and Europe once in awhile, to ourlocal offices. At the moment, I’m beingkept pretty busy as we are selling off our

electronic marine GP navigators businessas it’s not core for us. I’m ensuring all ofthe legalities are in proper order.

We also have a trademark paralegal atcorporate headquarters who is responsiblefor filing applications for trademark regis-trations, coordinating clearance activity,and docketing and maintaining our trade-mark portfolio throughout the world.While we have historically relied heavilyon outside counsel to pay renewal fees andannuities, we are in the process of bringingmuch of this activity in-house. As we’removing more of the work in-house forcost-efficiency purposes, we may look toadd another in-house lawyer this year. Thiswill also help as we expand and issues ofprotection grow.

What is the history of the Brunswick brand?Brunswick got its start in the billiards busi-ness in 1845 when a wealthy Americanrequested a table made for his home in thestate of Ohio. After that, word of mouthspread and many requests translated intothe birth of the business. One of its earlymanifestations was J.M. BrunswickBilliard Manufacturing Company. But itexpanded pretty quickly.

Brunswick’s bowling division is fore-most, as we got into the sport in 1890. Wenow have roughly 100 bowling centers inthe U.S. The company manufactures the

full range of bowling gear, including bowl-ing balls, shoes, lanes and pins. Brunswickis one of the main drivers behind the auto-matic pin-setter, which it jointly createdwith the Murray Corporation in 1954. Welaunched the automatic pin-setter in 1956.This actually catapulted bowling intobecoming a highly popular sport, alsocausing company stock to skyrocket. Itsbowling business soon spread to Europe.

We got into the marine business in 1960,with the acquisition of Owen Yachts andLarson Boats. We only sell boats to dealers,not directly to consumers. In the mid-80s,Brunswick acquired the Sea Ray and theBay Liner, two of the best-known recre-ational boating models in existence. In the


INTERVIEW: STEVEN STEGER, BRUNSWICK

A streamlined approachBrunswick, which owns some of the oldest and most famous sports brands in the United States, is adopting a more streamlined approach to protecting its trademarks. Steven Steger, deputy general counsel and chief IP counsel, tells ShahnazMahmud how he is managing the process and why he is bringing more work in-house.

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mid-90s, we acquired the saltwater fishingboat, the Boston Whaler which, as the leg-end goes, is “unsinkable.” In 1961, LifeMagazine featured photos of the boat beingsawed in half. The aftermath shots showed

the captain of the boat driving away withonly half of the boat. That acquisition wasa big coup. We now have 19 different boatbrands. Brunswick, in fact, is the biggestrecognized boat seller in the world.

Brunswick got into the fitness equip-ment industry in the late 1990s, purchas-ing Life Fitness, Hammer Strength andParaBody. In fact, these acquisitions turnedthe company into the world’s largest man-ufacturer of high-end commercial and con-sumer fitness equipment.

There are a lot of other interestingthings tied to the Brunswick business histo-ry. For instance, Al Jolson (who became ahousehold name in 1927 after appearing inthe first talking picture, The Jazz Singer)was once on the company board of direc-tors and Duke Ellington used to be a partof our now-defunct record label – as wasCab Calloway. Brunswick also holds thefirst patented rubber toilet seat from theearly 1900s.

What are the strengths and weaknesses ofthe brand?I really think the biggest strength of thecompany is its history. This has led tostrong brands, and a strong following ofthose brands everywhere. Brunswick hasvery loyal customers. The Boston Whalerboats have a huge following, for example.

I think one of its weaknesses is thename association with certain geographicplaces. Locations like New Brunswick,Canada, and New Brunswick, New Jersey,

sometimes cause confusion as to whoowns the brands that we house.

How do you maintain control of the brands? Because we have leading brands in each ofour industries, we do license the brands tothird parties for items such as apparel andtoys. We require approval over the qualityof any products being sold under ourbrand names. We also require our licenseesto submit samples of the branded prod-ucts, and closely police our marks. Weemploy the use of watch services.

Do you protect any look-and-feel aspectsof the brand?An interesting trademark registration wehave is on the shape of the Brunswick GoldCrown billiards table, which we have beenselling in its current form since the 1960s.We also have trademark registrationsaround the world on the crown designaround the neck of our bowling pins, andwe own the trademark AIR HOCKEY foruse on air-powered table hockey games.

Since this interview was conducted,Steven Steger has left Brunswick andtaken up the post of Vice President andChief Intellectual Property Officer forYgomi LLC


INTERVIEW: STEVEN STEGER, BRUNSWICK

JACKSON, ETTI & EDUBarristers & Solicitors, Patent & Trademark Agents

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Patents Transfer of TechnologyTrademarks Trade Names Bogota – ColombiaCopyrights Health Registrations Phone: (57-1) 7442200License of Use Domain Names Fax: (57-1) 3214045Agreements Litigation www.bc.com.co

Intellectual Property

HISTORY OF THE BRAND

Brunswick Corporation is the oldest and largest manufacturer of recreational products in theU.S. It was created by John Brunswick, who migrated to the United States from Switzerlandwhen he was 14. Brunswick landed in New York and took up several odd jobs, includingbecoming an errand boy for a butcher. Later he moved to Pennsylvania where he took up afour-year apprenticeship in a carriage shop. That apprenticeship was the foundation of thefamily business he began in Cincinnati, Ohio after relocating there with his bride, LouisaGreiner, in 1840.

Brunswick launched his woodworking shop in 1845, focusing on functional, high-qualitycarriages. But he soon expanded the business into cabinetwork, tables and chairs. Hismotto early on was: “If it is wood, we can make it, and we can make it better than anyoneelse.”

By the mid-1840s, Brunswick’s business began to thrive.

The company crafted elaborate back bars to correspond to the billiards tables being sold totaverns. Back bars covered the wall behind a bar serving functionally and decoratively at thesame time. These were considered status symbols and Brunswick soon began selling themacross the US and Canada.

The start of the 20th century saw Brunswick diversify further into tires for cars. Thisreplaced the bar fixtures once Prohibition began in 1920. The company also began to makewood piano cases and phonograph cabinets. Because phonographs were in great demand,Brunswick also began to manufacture its own line. This spawned its record label, whichhoused such musicians as Duke Ellington, Cab Calloway and Benny Goodman. During WorldWar II, the company made wartime products, such as mortar shells, flares, assault boats, fuelcells and floating mines.

O.KAYODE & COBarristers, Solicitors, Patent & Trademark Agents

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How long have you been with Motorola?I’ve been with Motorola for six years. Beforejoining, I was an associate with Foley &Lardner. I wanted to join Motorola becauseyou can truly see the future coming as thetechnology is changing so quickly and weare enmeshed deeply in it. Motorola’s lawdepartment had a fantastic reputation; greatlawyers and good people, and that’s how ithas turned out to be. I was also attracted bythe fact that the company deals with a lot ofcomplex issues because, as I mentionedbefore, of the technology. We have toexplain some of the new technology to theexaminers who may not have seen it before,describing what it is and why it’s important.

I first became interested in trademarkswhen I worked as a summer associate atDinsmore and Shohl in Cincinnati in 1988.Linda Roesch, who is a partner at the firm,gave me my first trademark project. I thinkit was for Procter & Gamble. I reallyenjoyed that project. When I started work-ing for Foley & Lardner, I did both trade-mark and litigation work. I prefer trade-marks because it’s more collaborative andless confrontational. And I also enjoy thecreative aspects of trademark law, such asplaying with words and what they mightmean to consumers. Another thing I reallylike about my job is that I get a global per-spective. In addition to the United States, Ialso deal with Europe and Asia.

What is the business model?Motorola has three main business divisions.The first is Mobile Devices. They makemobile phones and accessories, such as wire-less headsets. Then second is Networks andEnterprise. This division includes secure,mission-critical communications networksfor enterprise customers: for example, policeofficers and firefighters who have a micro-phone attached to their shirts, or a comput-er on board their squad car. Enterprise com-munications includes the hand-held devicesthat FEDEX delivery people carry and askyou to sign. Connected Home is our thirddivision. They make cable television set-topboxes, broadband networking equipmentand VOIP phones, as a few examples.

In terms of the trademark department, wehave two lawyers and two paralegals thathandle all of the divisions worldwide. Werely heavily on outside counsel for searches,

prosecution and opposition. Having saidthat, we do have corporate lawyers dedicat-ed to each business unit in our global offices.

What is the history of the brand?Motorola was first created in 1930 by PaulGalvin, who was founder and president ofGalvin Manufacturing Corporation.Galvin was searching for a distinctivetrademark to represent the company’s newproduct, an automobile radio. Galvindecided to use the word MOTOR to indi-cate motion and the suffix -OLA, to repre-sent sound. Because it was marketed sowidely (as it was one of the first commer-cially successful automobile radios), peo-ple began referring to the company asMotorola. The name of GalvinManufacturing Corporation was officiallychanged to Motorola in 1947. To me,Motorola is synonymous with high-endcommunications and the future of commu-nications.

What are the strengths and weaknesses ofthe brand? We have a great logo; it’s very visual andpeople remember it. MOTOROLA defi-nitely signifies high tech and “what’s com-ing next.” I think that’s the impression thebrand leaves with a person. But, as a result,

we get people trying to knock it off all thetime all over the world. We see people try-ing to register the brand for constructionservices and restaurants – all kinds of sillythings, hoping we won’t notice.

How do you maintain control of the brandin licensing? We have very complex trademark licensingstandards built into our contracts with ourlicensees. We work very closely with themto approve every aspect of how their prod-ucts (with our brand) get marketed. Wereview each product. We even have some-one from our design team provide input tothem. We have engineers dedicated toworking with the licensing team. They testeverything rigorously to ensure the qualityof the products is up to our standard.Motorola invented the Six Sigma [SixSigma Quality Process in 1986], whichprovides this rigorous measure.

What other brands do you own?We have a lot of other brands, like thenames of phones, such as PEBL and STAR-TAK. We also acquired SymbolTechnologies, a manufacturer and world-wide supplier of mobile data capture anddelivery equipment, at the end of last year,so we will own all of their brands as well.

Do you protect any look-and-feel aspectsof the brand?We do, particularly through design patentson the shapes of some of our products. Forinstance, we would look to protect how akeypad looks and operates. We are in themidst of wrangling with NexTel on a soundmark (the chirp sound). Marketers realizethat it’s not just sight that elicits an emotion-al response from the consumer. Taste andsmell have also been long traditions in leav-ing an impression, though sight and soundare the most popular, in terms of marks.

How many countries do you protect thetrademarks in?We’ve filed in pretty much every countryin the world. But what we do continuous-ly is we update our registrations in eachcountry to include more products andnew technologies.

How has Motorola changed since you’vebeen there?From the trademark perspective, we’ve gonein and out of naming the phones; we’re backinto that now. I think the largest change forthe company as a whole was that we spunoff our semiconductor business to focusmore on our communications business.

Industry-wide, we’re seeing a lot of inte-gration. In the past everything was sepa-rate; your cable TV, cell phones, land lines,computers. But now, you can watch TV onyour cell phone. You can talk over theInternet. You can take a video on yourphone and send it to someone’s desktop.Voice, data and media are all converging.

And just look at ring tones. Ten yearsago ring tones didn’t even exist. Now, it’s ahuge business for the recording industry.This convergence has boosted business forthe communications industry, particularlythose of us who deal with cell phones.

What has been most challenging in maintaining your brand in today’s globalenvironment? I would say counterfeiting is the singlebiggest challenge. We invest a good deal ofresources to help diminish this problem.For instance, we conduct raids and wework with Customs to stop the import ofcounterfeit goods. We take legal actionwhen possible.


INTERVIEW: CARRIE KNECHT, MOTOROLA

A driving forceMotorola has long represented innovation. Carrie Knecht, senior counsel for trademarks, tells ShahnazMahmud how the company works closely with its global licensees to protect its brands in the rapidly evolving telecoms industry.

DEVELOPMENT OF THE MOTOROLA BRAND

Motorola was founded in 1930 and is headquartered in Schaumberg, Illinois. The company’s namewas due to founder and president Paul Galvin, of Galvin Manufacturing Corporation, who waspreparing to introduce a new automobile radio and needed a brand that would leave an impres-sion. Having combined “motor” and the popular word at the time of “ola,” Galvin felt he capturedthe essence of sound in motion. Galvin and Elmer Wavering, who assisted in the design of theradio, set out across the United States to show new dealers how to install their product.

Galvin recognized the need for a distribution network to make MOTOROLA radios accessible toconsumers. So, in 1934, his company made an agreement with BF Goodrich Company (whichsold rubber tires for cars) and car garages around the country to sell the MOTOROLA autoradios (which could be done on credit). This created a strong reputation for the brand beforecompetitors hit the market.

But Galvin understood that a strong advertising campaign would further secure the MOTOROLAbrand. He placed adverts in magazines and on highway signs. Radio and film stars alsoendorsed the product. He also made sure that in-store displays were placed prominently, givingcustomers a chance to view and listen to the auto radio. Within a few years, the MOTOROLAname was used on other products that extended into home entertainment and public safety.These included a home entertainment radio, a two-way radio and a police cruiser radio receiver.

Because of Galvin’s canny sense for advertising, the MOTOROLA brand name was used somuch that he changed the name of the company in 1947. At the time, Galvin made this state-ment: “Our principal reason for making this change is looking to the future – and the greatersolidification of identification of who we are and what we have, the better we shall be known.”

Times change – brand remains

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Although widely used and increasing in popularity,the Madrid System is complex. Of the 72 coun-tries that are now members of the Protocol, 23and the European Community belong only to that

treaty. The rest are also members of the MadridAgreement, signed in 1891, which adds another layer ofdifficulty. And eight countries are members of theAgreement but not the Protocol.

And that’s before you consider ambiguities in some of therules and the proposed amendments to fix these problems.Today a concurrent session on the Madrid Protocol will givean update on recent developments and look at the issues froma U.S. and European perspective. But the panelists are alsokeen to make the session interactive and encourage the audi-ence to share their experiences. To that end participants willbe given a card when they arrive to can write down questionsanonymously for the moderator, R. Scott MacKendrick, apartner of Ogilvy Renault, to ask the speakers.

“People are sometimes nervous about asking ques-tions,” says Mark Holah, partner of Field FisherWaterhouse in London and a speaker at the session. Theidea is that attendees will feel emboldened to ask the ques-tions that they might have been afraid to pose in personwhen surrounded by their peers.

New membersTrademark lawyers from a number of new countries maysoon have to familiarize themselves with the intricacies ofthe Madrid system. Israel will join later this year and someother large countries are in the process of joining theProtocol. At the end of January 2007, India announced itsintention to join, and Brazil’s government has signaled thatsubject to Parliamentary approval it will join.

The U.S.-Colombia free trade agreement has a clauserequiring Colombia to accede by January 1, 2009,though the U.S. Congress has yet to ratify this treaty. Atpresent Cuba and Antigua-Barbuda are the only LatinAmerican or Caribbean countries that are members ofthe Protocol. Further expansion is planned in Asia, where19 countries are already members (see interview withErnesto Rubio page 24).

Matthijs Geuze, senior counselor at the office of the

assistant director general for trademarks at WIPO,explained that WIPO is also aiming to expand membershipin Africa and ensure that the four African countries thatare signed up to the Agreement only (Sudan, Egypt,Algeria and Liberia) will join the Protocol.

RegulationsOnce lawyers in these countries become familiar with thesystem’s complications, they may then have to deal with a


FEATURE: INTERNATIONAL TRADEMARKS

Agreement only 8Protocol only 23 (Including EC)Agreement and Protocol 49Total 80

Everything you always wanted to know The expansion of the Madrid System to include 80 countries and the potential inclusion of India and Brazil means that it is nolonger an area that trademark owners and lawyers can afford to ignore. Peter Ollier looks at some of the issues that havearisen over the last 12 months.

series of amendments, as WIPO looks to perform the nearimpossible balancing act of improving and simplifying thesystem while keeping all the signatories happy. A series ofproposals have been put forward that are “addressingsome important issues that need to be addressed,” accord-ing to Nadine Jacobson, partner of Fross Zelnick Lehrmanand Zissu.

The ultimate aim is to harmonize to the point where theAgreement and the Protocol become one system, whichwould make life much easier for trademark owners,though the difficulties encountered at every stage of reformmean that this is some way off. Trademark owners are notyet sure that WIPO has found the right way forward.

Most controversy surrounds Article 9sexies of theProtocol, known as the safeguard clause. It was designedso that countries that had happily used the MadridAgreement for years (the Agreement was signed in 1891)did not have to change their system when the Protocol wassigned in 1989. Paragraph one states: “Where, with regardto a given international application or a given internation-al registration, the Office of origin is the Office of a Statethat is party to both this Protocol and the Madrid(Stockholm) Agreement, the provisions of this Protocolshall have no effect in the territory of any other State thatis also party to both this Protocol and the Madrid(Stockholm) Agreement.”

Put simply, for those countries that belong to both theProtocol and the Agreement, the rules of the Agreementtake precedence. The second paragraph states that a three-quarters majority of the Assembly could repeal or restrictthe article 10 years after the Protocol entered into force.This 10-year mark was reached in December 2005.

WIPO has set up a working group to review the safe-

guard clause. The group met in July 2005 and again inJune 2006, and in September of that year the MadridAssembly agreed to extend its mandate. It met again inJanuary of this year.

According to documents on WIPO’s website, the work-ing group is considering a number of different options,including repealing the safeguard clause together withmeasures:a) ensuring that the level of services provided by the

Offices of Contracting Parties to the Protocol is com-mensurate with the individual fees charged and thelength of the applicable refusal period, and

b) establishing more precise criteria and maximum levelsto be applied by Contracting Parties to the Protocolwhen fixing the amounts of the individual fees they mayrequire.

The replacement conundrumThe working group is also considering the issue of replace-ment, dealt with in Article 4bis of the Agreement andProtocol. This means that a mark that is the subject of anational or regional registration in the Office of aContracting Party is deemed to be replaced by an interna-tional registration of the same mark. The office in whoseregister the mark is recorded is required to note the inter-national registration in its register. The office is alsorequired to notify the International Bureau of WIPO.

This seems fairly simple. But this procedure “hasn’tbeen advertised or published anywhere,” according toMark Holah. This has led to a situation in which, in thewords of the working group’s latest document, “funda-mental divergences appear to exist with regard to howthose provisions are interpreted.”

Some model procedures on how to implement replace-ment have been proposed, but the issue of different inter-pretations remains to be addressed. WIPO’s latest propos-al (see interview with Ernesto Rubio, page 24) seems to beto offer an open Internet forum on the issue in the hope ofbuilding a consensus.

Successor statesAnother new issue that has emerged this year is how todeal with countries that break up. This was put to the testwhen Montenegro declared independence on June 3, 2006.Rule 39 of the regulations, which deals with this issue, wasamended to ensure that it applies to the Protocol as well asto the Agreement. It states that a successor state whose ter-ritory was, before independence, a part of the MadridSystem has to deposit with the Director General a declara-tion of continuation that it will apply either the Agreementor the Protocol.

On December 4, 2006, Montenegro declared that theAgreement and the Protocol continue to be applicable inMontenegro, and that it is possible to file a request for ter-ritorial extension to Montenegro. This test case could set aprecedent for when other new states, such as Kosovo,establish themselves.

Specification of goodsDiscussion will also touch on the issue of what happens tospecifications of goods on trademark application in differ-ent jurisdictions. WIPO follows the Nice Classificationsystem but in some countries, notably the United States,national offices require that the description of goods bevery narrow and specific, resulting in a correspondinglynarrow international registration. These differences canlead to refusals and notices of irregularity when trying toextend your mark into different jurisdictions. The solu-tion, according to Nadine Jacobson, is “to think abouthow to specify in the beginning.”

With the increasing use and expansion of the MadridSystem, many more such queries are going to arise. Today’ssession today will aim to deal with the most fundamentalissues and, with the help of the question cards that will behanded out at the start, to answer the queries that trade-mark owners have.


FEATURE: INTERNATIONAL TRADEMARKS

about Madrid**but were afraid to ask

It is just over one year since WIPO mem-ber states finalized the Singapore Treatyon Trademarks (see box). What progresshas there been since? The one-year period for countries to signthe Treaty ended on March 27. More than50 have already signed up, and that’s thefirst indication – but a good one – that theywill accede. A number of countries aregoing ahead with accession procedures andSingapore itself has actually acceded. Nowwe need another nine accessions for it tocome into force. We believe it is likely thatthat will happen in a year or two fromnow. That is actually quite quick by inter-national standards, given that the acces-sion process usually requires approvalfrom national legislatures.

Now that the Singapore Treaty has beenfinalized, what areas of international harmonization is WIPO looking at in thearea of trademarks?There are a number of areas. First of all,we are examining questions relating toopposition procedures. There are a greatvariety of systems used in different juris-dictions. Some countries provide for oppo-sition procedures before registration, oth-ers allow for opposition after registration(giving rise to a cancellation) and othersdon’t provide for an opposition process atall. We are also looking at the differentgrounds for opposition that exist. WIPO’sStanding Committee on the Law ofTrademarks, Industrial Designs andGeographical Indications asked theInternational Bureau to prepare a paperlooking at the different approaches. Wewill present this to the StandingCommittee in May and then member stateswill decide whether there are grounds toattempt harmonization.

Secondly, we are looking at the repre-sentation of new types of trademarks. Thisis somewhat related to the SingaporeTreaty. At the moment, different officeshave different requirements for the way inwhich applicants represent nontraditionalmarks such as smells, single colors, sounds,and holograms. The Standing Committeewill look into the possibility of harmoniz-ing the requirements that offices ask appli-cants to fulfill. The outcome of those dis-cussions may be included in the regulationsof the Singapore Treaty.

The third issue we are looking atrelates to designs. This is an area wherethe rules are very different around theworld. Some places have a registrationregime, some have a system of examina-tion, sometimes designs are protectedunder copyright law. There is a rathergray area between three-dimensionalmarks and designs. Some countries in theStanding Committee have suggested thatthe International Bureau look at formalharmonization of designs, in the sameway that the Patent Law Treaty has har-monized formalities and procedures inthe area of patents and the TrademarkTreaty has done for trademarks. So thequestion is whether we should have asimilar treaty dealing with procedures fordesigns. The International Bureau ispreparing a paper identifying the ques-tions to consider and a draft question-naire to help us gather information onwhat kind of systems exist.

The fourth area, which we will discussin the Standing Committee meeting inMay, relates to Article 6ter of the ParisConvention, which prevents countriesfrom registering flags and other stateemblems as trademarks. The InternationalBureau is preparing some guidelines onthis issue.

WIPO is also involved in discussions onwhether IP offices should be obliged toprovide applicants under the Madrid System with a statement of grant of protection that makes it clear whethertheir mark will ultimately be protected.What developments have there been onthis issue? The Working Group on the LegalDevelopment of the Madrid System forthe International Registration of Marksmet in January in Geneva and will meetagain in May. There have been some pro-posals, especially from Australia, formember states to provide additional serv-ices to applicants. Offices have been ableto issue a statement of grant of protectionsince 2000, but it has only been on a vol-untary basis. There are 15 offices thatissue them [Armenia, Australia, Benelux,OHIM, Georgia, Hungary, Ireland,Japan, Norway, Republic of Korea,Singapore, Sweden, Syrian ArabRepublic, Turkey and the UK]. It is some-

thing that is very useful for applicants foran international registration. It is veryimportant for them to know as early aspossible whether their mark will be pro-tected. We’re encouraging members toissue the statements but Australia hasraised the possibility of gradually movingtowards making it compulsory. We’regoing to discuss it in May, but any deci-sion will need to be approved by theGeneral Assembly because it would prob-ably require an amendment to the regula-tions. This year may be too soon for thatto happen.

What recent developments have therebeen relating to the Madrid System?Statistics show a big growth in the numberof users (see box)I think that there is a clear relationshipbetween international trademark protec-tion and international trade. Companiesthat file for international protection fortheir marks are those that are ready tomove into export markets. It is quite signif-icant that use by Italy and Spain has grownso much. Asian countries are also taking abigger share. Five years ago they account-ed for around 3 percent of filings but nowthat figure is about 10 percent. It hasgrown considerably but there is still roomfor growth. I expect that trend to continue,but it will happen faster when other Asiancountries join.

There are encouraging signs that Indiawill join, and we also hope that Indonesia,Thailand and Pakistan will consider join-ing within the next two to five years. Thatwould make the system much more attrac-tive to users. WIPO received a visit fromIndian officials in April with news aboutplans to amend legislation to allow Indiato join. At the administrative level weknow that they are taking steps to prepareto join.

In relation to Brazil, we know that adecision was taken at ministerial leveltowards the end of 2006. We expect apackage of proposals to go to Congresslater this year. The IP Office has expressedits support, as has the Federation ofIndustries of the State of Sao Paulo. We’vealso heard that Colombia will join, andthat should take effect on January 1, 2009.The more countries that join, the moreattractive the system will be to users.


PROFILE: ERNESTO RUBIO, WIPO

Signing Singapore, managing MadridErnesto Rubio, assistant director general of WIPO responsible for trademarks, spoke to Emma Barraclough about harmonization,the growth of the Madrid system and which countries are the most likely to sign up next

THE SINGAPORE TRADEMARK TREATY

In March 2006, WIPO member states met in Singapore to update the 10-year-oldTrademark Law Treaty. The new agreement says that IP offices can specify how they wantapplicants to communicate with them, in anticipation that some countries might moveentirely to e-filing. WIPO member states also agreed to make the Treaty apply to all kindsof marks. Although the Treaty does not envisage obliging states to accept nontraditionalmarks, it sets out how an IP office should handle them, if it does accept them. The newTreaty aims to simplify procedures for recording licenses, and trademark applicants injurisdictions that ratify the new Treaty will also benefit from new rules requiring IP officesto relax any tough rules that they apply to IP owners who miss deadlines. WIPO membersalso agreed to introduce compulsory relief measures for applicants who fail to get theirdocuments in on time. Rather than dismissing the application or canceling the trademarkregistration, IP offices will have to offer either to extend the time limits, continue toprocess the request or reinstate rights.

What challenges does the growing use ofthe Madrid system create for WIPO? I think we have adapted well. Today thereis no backlog in processing applications. Bythe end of 2006 it was taking, on average,five weeks from receiving the application tonotifying the contracting parties. We intendto make it even quicker, but I think that’salready a very reasonable period.

We have taken two measures recently tohelp provide better services. On January 1,2007, we put in place the Romarin databaseso that applicants can now check on the sta-tus of their application free of charge. Wehave also started to offer an electronicrenewal service and now we are looking atnew services we can provide. For example,we are going to launch an open forum laterthis year on the subject of replacement that

will last for around six months. This relatesto a situation where a trademark owner hasa number of national registrations and thenhis home country joins the Madrid System.The Treaty provides that the national regis-trations are replaced by an internationalregistration. It is a very useful provision forthose countries that joined recently, but weare looking at ways of making the systemwork better. In 2006 we issued model pro-visions on replacement that deal withrecording and notification issues. But onsome of the other issues relating to relevantdates for the replacement, member statesinterpret the rules differently. We have iden-tified that this is an issue for some users. Sowe are going to have a forum on theInternet where users can give us their viewson how the system should work.


PROFILE: ERNESTO RUBIO, WIPO

Figures released by WIPO in March show thatmore trademark owners than ever are usingthe system to protect their marks. A record36,471 international trademark applicationswere received in 2006, an 8.6 percentincrease on the year before. Applicants fromGermany led the list of top filers, for the 14thconsecutive year, followed by users in Franceand the United States. Other countries saw asignificant growth in the number of applica-tions originating from their countries. Italy,for example, saw a 25.5 percent increase,applications originating in Spain rose by 17.2percent and Australia accounted for a 29.1percent increase with 1,100 applications.China was the most designated country ininternational trademark applications.

Biggest users of the Madrid trademark registration system

Country Number of Percentage of

applications total applications

under Madrid

Germany 6,552 18%

France 3,896 10.7%

United States 3,148 8.6%

Italy 3,086 8.5%

Benelux 2,784 7.6%

Switzerland 2,468 6.8%

United Kingdom 1,489 4.1%

China 1,328 3.6%

Spain 1,215 3.3%

Austria 1,197 3.3%

Source: WIPO

TRADEMARK OWNERS MOVE TO MADRID

The Whois Subcommittee of INTA’s InternetCommittee invites you to attend a special session:

Whois BriefingUpdate on ICANN’s Whois initiatives, their nega-tive impact on brand owners and how to makeyour voice heard.

This briefing will be conducted twice for your con-venience:

Tuesday, May 1: 10:00 a.m. – 11:00 a.m. – Room E3522:00 p.m. – 3:00 p.m. – Room E351

The Whois domain name database presently con-tains each registrant’s identification and contactinformation as well as contact information foreach domain name’s administrative and technicalcontacts. This information is readily available toany Internet user and is routinely relied upon forenforcing intellectual property rights, verifyingimportant business information, and identifyingthe origin of illegitimate activities, such as phish-ing schemes and spam.

Whois information is on the verge of beingstripped down to little more than a bare technicalcontact who will have no legally enforceable obli-gation to pass on correspondence to the regis-trant, and who is unlikely to be of assistance ineffectively protecting and enforcing rights involv-ing online matters. Last year, the Whois TaskForce of ICANN (the body charged with settingInternet policy) unfortunately began taking stepstoward significantly limiting the information avail-able through the Whois domain name database.

At these upcoming briefing sessions during theINTA Annual Meeting, INTA’s Whois Subcommitteewill provide an update on this process and willexplain how brand owners can make a difference.

INTA Anticounterfeiting ExhibitToday’s Speakers10:00 a.m. Alina Halloran – Director of Client

Services – OpSec Security (UnitedStates)

10:30 a.m. Donna Frazier Schmitt – SeniorTrademark Counsel – Eveready BatteryCompany (United States)Dr. Roberto J. Porcel – Partner –Porcel & Cabo Law Firm (Argentina)Jason M. Drangel – Partner – EpsteinDrangel Bazerman & James (UnitedStates)

11:00a.m. Hoda Barakat – Partner – Al-Tamimi &Company (United Arab Emirates)

11:30 a.m. Dr. Virginia Cervieri – Lawyer – CikatoLawyers (Uruguay)Mark N. Mutterperl – Partner –Fulbright & Jaworski LLP (UnitedStates)

12:00 p.m. Michael D. Manson – Partner – Smart &Biggar (Canada) Stephanie M. Foster – VP and SeniorCounsel – Pearson Education Inc.(United States)

12:30 p.m. Andres Moreno – Director – GabrielPatent & Trademark Office (Bolivia)

1:30 p.m. Bart A. Lazar – Partner – SeyfarthShaw LLP (United States) Jennifer Ennis – Senior TrademarkParalegal – Microsoft Corporation(United States)

2:00 p.m. Dennis Haist – General Counsel – TheSteele Foundation (United States)Samer A. Pharaon – Executive Director– Abu-Ghazaleh Intellectual Property(Middle East)Lisa Rogan – Trademark Manager –Acushnet Golf (United States)

2:30 p.m. Heather J. McDonald – Partner – BakerHostetler (United States)

3:00 p.m. R.J. Falconi – Vice President, GeneralCounsel & Corporate Secretary – CSAGroup (Canada)

INTA Daily NewsAnnouncements

Luxembourg is a busy place these days. The Court ofFirst Instance (CFI) of the European Court of Justice(ECJ), which hears appeals arising from Communitytrade mark (CTM) applications, received a record

143 IP cases in 2006. In the same period, the ECJ itselfreceived 23 cases. As the European Union’s top court, theECJ can be called on to give preliminary rulings in casesbefore the courts in EU Member States. It is also the finalarbiter on disputes arising from the registration of CTMsand Community designs at OHIM.

The result of all this activity is good news for trademarkowners, as it brings more consistency and quality in rulings,says Alexander Klett, a partner of Gleiss Lutz in Germanywho is chairing a luncheon table topic (TM62) today on ECJcase law. Judges at the ECJ are not necessarily IP specialists,and have to deal with cases in many different areas.Moreover, Community trade mark law is still relatively recentso it has taken time for the Court to build up expertise in thisarea. “The ECJ judges are more confident now in trademarkcases. They start to think about what the issues really are – adevelopment that we should really be grateful for,” says Klett.

Carl de Meyer, who is chairing tomorrow’s update onthe Community trade mark (CT01) adds that, with nearly11 years of experience of the CTM system, many questions(such as registrability of novel marks) have been settled:“Most recent cases are applying principles established inan earlier period.” Nevertheless, the past year has seensome interesting decisions, in both appeals from OHIMand national referrals, in which certain trends can beobserved. Two areas which have been addressed in a num-ber of cases are (1) the similarity of marks and the risk ofconfusion and (2) the scope of exclusive rights.

Are you confused?Of a number of cases that have addressed similar trade-marks in the past year, that between Sergio Rossi and SissiRossi was one of the most eagerly awaited. The case datedback to 1998, when Sissi Rossi filed a CTM application forSISSI ROSSI in Classes 14, 18 and 26.

Sergio Rossi opposed the application in Class 18 (leatherand leather imitations) based on its own registrations forMISS ROSSI for footwear in Class 25. The opposition wasupheld by the Opposition Division, on the grounds that thegoods were similar. However, that decision was overturnedby the First Board of Appeal, which said that the differencesbetween the goods outweighed their similarities and therewas therefore no likelihood of confusion.

That decision was upheld by the CFI and, in July lastyear, by the ECJ, which said that the lower court had cor-rectly “made an overall assessment of the similarity of themarks in question and the likelihood of confusion on thepart of the public.”

“The court had the opportunity to make some clarifica-tion as to how the risk of confusion is to be construed,”says Klett, adding that “each case is different and you can’talways understand why the court goes one way rather thananother.” More decisions from the ECJ in this area areexpected in the coming year, as many cases that have beendecided by the CFI are pending before the higher court.

Scope of protectionThe other area that has seen some interesting developmentsin the past year affects the scope of the exclusive rights con-ferred by a trademark. In January this year, the ECJ finally(after a long wait) gave its judgment in Adam Opel v.Autec, a case where questions were referred from Germanyin a dispute over the use of a car company’s trademark onscale models. In its decision, unusually, the court disagreedwith the Advocate General’s opinion in this case.

The Advocate General had excluded the fixing of theOPEL Z logo on scale models from the monopoly conferredby a trademark. But the ECJ said that a trademark owner canprevent such use, if he has a trademark that is registered forcars – in respect of which it is well known – and for toys, ifthe use affects or is liable to affect the function of the trade-mark for toys. Whether it does affect the function is for thenational court to decide. “The Court made it clear that the

scope of rights of a trademark owner can also extend to useon miniature automobiles – along the lines of the old Arsenalcase,” explains Klett, who is advising Adam Opel in the case.

Another case that addressed the scope of protection wasMontex Holdings v. Diesel, in which the ECJ ruled on threequestions referred from Germany regarding the transit ofgoods. Montex Holdings (an Irish company which sewstogether jeans in Poland before shipping them) shippedjeans bearing a DIESEL label to Ireland. Diesel is a jeansmaker that owns the DIESEL trademark in numerous coun-tries – but not Ireland. In December 2000, GermanCustoms seized a truckload of Montex’s jeans on the suspi-cion that they infringed Diesel’s German trademark.

In its ruling on November 9 last year, the Court saidthat a brand owner can only prohibit the transit of goodsthrough an EU Member State “if those goods are subjectto the act of a third party” that involves them being put onthe market. The Court added that it is irrelevant whetherthe goods come from within or outside the EU, and alsowhether or not they infringe trademark rights.

The case was viewed as a further narrowing of thetrademark owner’s right, following a case in 2005 involv-ing AQUAFRESH toothpaste, which found that goodsimported from outside the EU and stored in a warehousecannot be seized unless the brand owner can prove they areintended for distribution outside the EU.

Future cases“Courts have lost their fear of referring to the ECJ,” says Klett.In the Adam Opel dispute, he says he was “amazed” that theNuremberg court agreed to refer questions to the ECJ, as ithad no history of doing so. The next test for Luxembourg’scourts is likely to arise from the new EU Member States, par-ticularly the 10 that joined in 2004. There may be questionsabout the procedures for extending CTMs to these countries,or from cases in national courts in countries such as Poland,Hungary, the Czech Republic and Slovakia.

De Meyer, whose session tomorrow will include discus-sion of the extension of the CTM to the new MemberStates, says this question highlights the tensions that are atthe heart of the CTM system: “We continue to have thishuge challenge that although this is a single instrument, wewill still have our national or regional reflexes that contin-ue to linger on.” These national-EU tensions affect issuessuch as what is perceived to be descriptive in different lan-guages, and whether novel marks should be protected, aswell as questions about use of particular marks across sev-eral markets with different languages. “We’re all comingfrom different backgrounds and cultures,” says de Meyer.


FEATURE: EUROPEAN LITIGATION

From LEVI’S to LEGO – a year in courtIt has been a busy year for Europe’s top courts in Luxembourg. James Nurton looks back at some of the most important casesaffecting trademark owners.

FIVE RECENT ECJ CASES – AND ONE TO LOOKFORWARD TO

OHIM v. Kaul GmbH (March 13, 2007): The ECJ said thatOHIM’s Boards of Appeal have “a wide discretion” to consid-er new evidence in appeals arising from Community trademark oppositions. This will make it less likely that opposingparties can keep raising new evidence before OHIM.

Dyson Ltd. v. Registrar of Trade Marks (January 25, 2007):The ECJ rejected vacuum cleaner company Dyson’s attemptto register the transparent bin of its cleaner on the groundsthat the bin is a “mere property of the product concerned”and so is not capable of constituting a trademark.

Nokia Corp. v. Joacim Wärdell (December 14, 2006): TheECJ agreed with Nokia that, where there is a risk of futureinfringement, even if the threat is not obvious, a Communitytrade mark court may still issue an order prohibiting thedefendant from proceeding with infringing acts.

August Storck KG v. OHIM (June 22, 2006): The ECJ reject-ed two attempts by the maker of WERTHER’S ORIGINALsweets to obtain a Community trade mark for the shape ofthe sweets and their wrapper.

Levi Strauss & Co. v. Casucci Sp.A. (April 27, 2006): The ECJclarified that judges must assess the public’s perception of atrademark at the time of the alleged infringement, and notat the time of giving the ruling.

LEGO v. OHIM: In its first decision in July last year, OHIM’sGrand Board cancelled a Community trade mark for LEGObricks on the grounds that the shape of the trademark was“necessary to obtain a technical result.” LEGO has appealedthe ruling to the CFI.

New IP cases at the Court of First Instance, 2000-2006

0

30

60

90

120

150

2001 2003 2004 2005 20062000 2002

More than half of trademark practitioners whoresponded to an exclusive online poll for theINTA Daily News believe that registrability cri-teria is the issue most in need of international

harmonization. The poll was available for any trademark practitioner

to complete online. Fourteen questions covered issues suchas where are the key markets, which areas pose the biggestchallenges, new challenges on the Internet and how tocombat counterfeiting. Responses were anonymous, and

the poll prevented anyone from answering twice from thesame IP address.

The finding that 59 percent of those who responded tothe survey would like to see registrability criteria harmo-nized as their top priority comes as WIPO is looking athow it can promote further international cooperation (seeinterview with Ernesto Rubio, pages 24 to 25).

After registrability criteria, the other areas identified asripe for harmonization were electronic filing and the reg-ulation of famous and well-known trademarks, both of

which were rated as a top priority by 13 percent ofrespondents (see chart 1).

The importance of harmonization to trademark practi-tioners was also apparent in the answers to the question:“What has been the most important recent development intrademark protection?” (see chart 2). Sixty-one percent ofrespondents said the Community trade mark system(which enables applicants to obtain one trademark cover-ing the whole of the EU) was the most important. In addi-tion, 21 percent identified the expansion of the Madrid

System of international protection (which now covers 80countries) as the most important.

The poll also asked respondents whether they use theMadrid Protocol and whether they would be more likely touse it if more countries joined. At present, there are somegaps in the coverage of the Protocol, notably in LatinAmerica and parts of Asia. But a number of countries areconsidering joining.

Seventy-one percent of respondents said they use theProtocol either “sometimes” or “whenever possible”with just 16 percent saying they never use it (chart 3). Astriking 58 percent said they would be more likely touse the Protocol if more countries joined, with just 16percent saying they would not be more likely to do so(chart 4).

In tomorrow’s issue: more findings from the exclusiveINTA Daily News poll, covering the Internet, domainnames and future challenges.


POLL: TRADEMARK PROTECTION

TM specialists want registrability harmonized

0 10 20 30 40 50 60

1. Which area of trademark law would you most like to see harmonized?

Education

Electronic filing

Enforcement

Genuine use

Geographical indications

Registrability criteria

Rules on famous/well-known trademarks

3. Do you use the Madrid Protocol to obtain trademark protection?

No, never 23%

No response6%

Sometimes38%

Yes,wheneverpossible 33%

4. Would you be more likely to use the Madrid Protocol if more countries joined the System?

Don’t know21%

No response5%

No16%

Yes 58%

0 10 20 30 40 50 60

2. What has been the most important recent development in trademark protection?

Community design

Community trade mark

Internationalization

Increased protection of

well-known marks

Madrid System expansion

Uniform Dispute

Resolution Policy

58 percent of respondentssaid they would be more likelyto use the Madrid Protocol ifmore countries joined


VOX POP: YOUR VIEWS

QUESTION: How has theInternet changed trademarkpractice?

VVOOXXPOP

The Internet has made it easierfor marks to become known inmany countries and it also makesit easier to show evidence of use.

Yoko Okumura, FUJIMarks Japan, Japan

It has had positive changes. Emailis a more reliable form of commu-nication than the mail. It makessearching easier too – you caneither do it yourself or there arepackages available that will helpyou do it.

Jack H.E.G. van Dongen, HBN Law, NetherlandsAntilles

It has allowed for a lot moreinfringement because people nowhave more access to trademarksand logos and can download themeasily. But it has made it easier todo enforcement work because Ican learn about the peopleinfringing my clients’ marks.

Jill Jacobs, Seyfarth Shaw, United States

It has extended the scope of pos-sible infringing activities and hasmagnified the problem manymany times. It has also intro-duced problems that trademarklaw was not intended to deal with,such as the use of metatags.

Kwong Chi Keung, Sit Fung Kwong & Shum, HongKong

It’s made it easier to be in con-tact with other intellectual prop-erty lawyers and to network. Also,now we can view the weeklytrademark bulletin online.

Georgina Pianta, Abeledo Gotheil Abogados SC,Argentina

It has made everything muchsmaller. Brands that were previ-ously jurisdiction-based are nowglobal. It means that bordersdon’t really exist for brands andthat creates new challenges.

Lanning G. Bryer, Ladas & Parry, United States

The Internet basically enables meto do my job because it allows meto work in Mexico and do trade-mark filings at the USPTO. My jobwould be impossible without theInternet.

John M. Murphy, Arochi, Marroquín & Lindner, Mexico

It can be harder to investigatepeople who are using marks ille-gally on the Internet because itcan be harder to locate theinfringer. But it also offers trade-mark proprietors more opportu-nity to reach a much greatermarket.

John E. I. Carrington, M. C. W. Todman & Co., BritishVirgin Islands

We have to make searches on priordomain name registrations and wehave to survey trademark infringe-ments on the Internet. But it hasalso made it easier to create data-bases of information about trade-marks, their use, licensees, licen-sors, counterfeiters, and so on.

Gilbert Piat, @Mark , France

It has meant things have becomemore flexible and faster. InParaguay, it has opened us to theworld and given us access toinformation and legal decisionsthat we can use to help us resolvedisputes back home.

Caroline Casseli, Sacco, Casseli & Gaona, Paraguay

Win an INTA publication of yourchoice!Each day the INTA Daily News is giving you thechance to win an INTA publication of your choosing.Today, we are inviting Annual Meeting attendees tosend in a photo they have taken since arriving inChicago. The photo should capture a unique perspective on the city of Chicago, the INTA AnnualMeeting, or the world of trademarks.

The INTA Daily News editorial team will select a winner based on the following criteria: quality, originality, visual interest.

Send your photo (maximum one entry per person), with yourname and organization, by email to [email protected] by 5:00p.m. Tuesday. Photos should be in .jpg format, can be color orblack and white, and should be no more than 3MB in size.

The winning photo, and the name of the photographer, will bepublished in the INTA Daily News on Wednesday.

Tomorrow: look out for the INTA Daily News caption competition.

MIP, proud publisher of theINTA Daily NewsVisit us at booth #202

INTA Daily News

PHOTOCOMPETITION


VOX POP: YOUR VIEWS

I deal with international coordina-tion and the Internet has facilitat-ed communications. We can doelectronic filing in the US directlyfrom Ecuador.

Monica Cortez, Paz Horowitz, Ecuador

The Internet has led to a greaterawareness of trademarks and alsoopened up opportunities fortrademark infringement. It pro-vides another opportunity forcorporations to promote theirbusiness and their brands to theworld.

Martin Pollock, Spruson & Ferguson, Australia

You can do so much research andyou can get a good grasp of whatis going on before you retain anoutside agency to get into details.But you have to police what yourclients are doing.

Karen Maher Davis, Gordon Feinblatt RothmanHoffberger & Hollander, PC, United States

The Internet has become more ofan issue in India since the passingof the 1999 Trade Mark Law in2003. The main problem is thejudges are not aware of theissues and are not properlyequipped.

Debasish Sen, D. Sen & Co., India

There is more communicationnow. We send emails to all thecompanies we represent – we onlymeet at conventions like this.Communicating electronically def-initely makes things easier andfaster.

Nedda Cadenillas Reymer, Galvez Tafur Law OfficeSCRL, Peru

You can work from home in yourunderwear – remote access allowsyou to respond to clients morequickly. It’s also made infringe-ment a lot less expensive – nowyou just need $6.95 and you canget a pay-per-click ad site.

Paul McGrady, Greenberg Traurig, United States

Everyone wants to have a trade-mark now. There’s an increasedemphasis on registering a markand owning it, when the realpower is the brand behind it.

Toby Butterfield, Cowan, de Baets, Abrahams &Sheppard, United States

It’s certainly made products andservices more available andknown. However, it solves oneproblem and creates another withthe potential for commercial mis-use of another person’s trade-mark.

Brian Banner, Rothwell, Figg, Ernst & Manbeck,United States

It’s made the world much smaller,it’s made the practice of trade-mark law more dynamic and it’skeeping us all employed.

Charles Saunders, AstraZeneca Pharmaceuticals LP,United States

Gilson on Trademarks

LexisNexis® Matthew Bender® is proud to announce that AnneGilson LaLonde has taken full authorship of the seminal treatise“Trademark Law and Practice,” which is hereinafter being retitled“Gilson on Trademarks.”

Some ten years ago Jerry Gilson created a plan for his daughterAnne to succeed him as Author, and for the past six years she hasbeen Co-Author. This year she became Author, and Mr. Gilsonwill continue as a very active collaborator. Anne Gilson LaLondeis co-author of Trademark Protection and Practice and has workedon the treatise since 1999. She graduated from the University ofMichigan Law School after serving as Book Review Editor of theMichigan Law Review. She practiced at Sidley & Austin inWashington, D.C. in the firm’s Litigation Practice Group beforeher two-year judicial clerkship with Judge Norma HollowayJohnson of the United States District Court for the District ofColumbia. She is a member of the Illinois and District ofColumbia bars and the bar of the United States Supreme Court.

LexisNexis Matthew Bender wishes to sincerely thank Jerry Gilsonfor his unparalleled stewardship over the past three decades. Hehas created one of the more authoritative works in Americanjurisprudence and we are deeply proud of our long association withsuch a noted legal scholar. We look forward to his continued guid-ance and wisdom.


INTA DAILY NEWS

Blakes rounded offSaturday evening with

jazz, drinks, and desserts atthe InterContinental Hotel.

Welsh & Katz beganSunday morning with a

vibrant brunch reception atthe Latin American-themedCarnivale restaurant.

Guests were treated tothe thrilling sounds of the

Shannon Rovers marching

band at Lehman Lee & Xu’sbrunch reception at theMarriott Hotel.

Gowlings’ lunch receptionwas held in the refined

setting of the Drakes Hotelballroom.

The sun shone on guestsat the Drinker Biddle

reception, held on theLakeview Terrace rooftop, cel-ebrating the firm’s recentmerger with Gardner Carton &Douglas.

Guests could absorb thesights and sounds of

Lincoln Park Zoo from theLadas & Parry 95th anniver-

sary reception held at the his-torical Cafe Brauer great hall.

Harness Dickey hostedup to 200 guests in a hos-

pitality suite at US CellularField, watching the ChicagoWhite Sox play the LA Angels.

The Peninsula Hotelwas the venue for

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INTA DAILY NEWS

both the Lovells and com-bined Herbert Smith/GleissLutz receptions where guestsmade the most of the perfectevening out on the terrace.

Howrey took over theMcCormick Tribune

Freedom Museum for a recep-tion where guests enjoyed

thought-provoking exhibitsdedicated to the FirstAmendment.

Guests enjoyed a series ofpaintings by nationally

recognized Chicago artists atBardehle Pagenberg’s drinksreception at The UniversityClub.

Field Fisher Waterhousehosted a reception at the

Civic Opera House whereguests enjoyed The SympathySounds string quartet withcanapés and fine wines.

De Brauw BlackstoneWestbroek, Bristows,

Hengeler Mueller, Rospatt

Osten Pross, IntellectualProperty Rechtsanwalte,Trevisan Cuonzo Avvocatiand Uría Menéndez co-hosteda reception at The SignatureRoom on the 95th floor of theJohn Hancock Center whereguests enjoyed stunning viewsof Chicago.

Guests at Baker &McKenzie’s party at the

John G. Shedd Aquarium lastnight donned custom-madefedora hats before dining onAsian, European, and LatinAmerican food just a fish tankaway from giant turtles andmanta rays.

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Today’s Schedule: Monday, April 30, 2007All Events take place at the McCormick Place Lakeside Center (MPLC) unless otherwise indicated.Consult the Final Program for times and locations of invitation-only events.

7:30 am – 5:00 pm REGISTRATION Level 2 - Lobby

7:30 am – 5:00 pm HOSPITALITY Level 3 – Hall D1

8:00 am – 10:00 am BREAKFAST TABLE TOPICS Level 2 – E253

8:00 am – 10:00 am COMMITTEE MEETINGS Level 2

ACEC: China Subcommittee E256

ADR Committee E271

Brand Protection Forum 2007 Project Team E264

EIC: Design Rights Subcommittee E263

EIC: Fair Use & Other Boundaries Subcommittee E265

EIC: Indigenous Rights Subcommittee E262

Enforcement: Courts & Tribunals Subcommittee E266

Enforcement: Preliminary Relief Subcommittee E261

TOPC: Technical Assistance Subcommittee E259

TOPC: USPTO Subcommittee E260

8:30 am – 4:00 pm TOURS Depart from MPLC

10:00 am – 4:00 pm EXHIBITION HALL Level 3 – Hall D1

10:00 am – 11:00 am COMMITTEE MEETINGS Level 2

EIC Issues Council E262

LRC: East Asia & Pacific Subcommittee (ends at 12:00 pm) E266

PDA Europe Council E260

Trademark Administrators (TMA) Subcommittee (MSC) E271

10:15 am – 11:30 am CONCURRENT SESSIONS & WORKSHOP

CM01 Muddy Waters: Evolving Law and Policy in Internet Advertising (Keywords and Adware) Level 4 – E450a

CM02 Regional Update: The People’s Republic of China Level 4 – E450b

WM01 I’m Not Walkin’…I’m Talking’–Strategies for Drafting and Negotiating License Agreements Level 3 – E353b

11:45 am – 1:00 pm CONCURRENT SESSIONS

CM03 Ethics: Trademark Office Practice, Investigations and Unauthorized Practice Level 4 – E451a

CM04 Trademark Protection vs. Civil Liberties Level 4 – E451b

CM05 Breaking with Tradition: A Comparative View of Nontraditional Trademarks Level 4 – E450a

CM06 Right of Publicity Around the World Level 4 – E450b

IM01 Industry Breakout: Apparel, Cosmetics, Consumer Goods, Jewelry–Licensing Without Forms Level 3 – E352

IM02 Industry Breakout: Entertainment and Sports Level 3 – E350

IM03 Industry Breakout: “Shake Your Moneymaker”–Financial Institutions and Financial Services Level 3 – E351

1:15 pm – 3:15 pm LUNCHEON TABLE TOPICS Level 2 – E253

1:15 pm – 3:15 pm COMMITTEE MEETINGS Level 2

ACEC: Eastern Europe & Central Asia Subcommittee E264

Leadership Meeting 2007 Project Team E263

LRC: Latin America & Caribbean Subcommitee E262

LRC: U.S Subcommittee E261

Parallel Imports Committee E265

Planning Committee E272a

The Trademark Reporter ® Committee E270

TOPC: China Trademark Office Subcommittee E272b

TOPC: OHIM Subcommittee E256

Trademark Administrators Conference 2007 Project Team E255

3:30 pm – 4:45 pm CONCURRENT SESSIONS & WORKSHOPS

CM50 Enforcement of Trademark Rights in Latin America Level 4 – E451a

CM51 IP Tax Problems and Protection Level 4 – E451b

CM52 The Survey Blues: Litigation Survey Errors Causing Exclusion or Reduced Weight Level 4 – E450a

CM53 Regional Update: India, Pakistan and the Middle East Level 4 – E450b

WM50 “Blues Clues” – Internet Investigations Level 3 – E353b

WM51 Introduction to Mediation in IP Disputes Level 3 – E353c

3:30 pm – 5:30 pm COMMITTEE MEETINGS Level 2

Enforcement: Monetary Remedies Subcommittee E255

Enforcement: Trade Names Subcommittee E272b

Geographical Indications Committee E270

International Amicus Committee E258

Portugal Forum 2007 Project Team E265

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