BulletinUSPTO Updates Online Forms, Considers New Fee for Paper Filing

The Voice of the International Trademark Association August 15, 2008 Vol. 63 No. 15

The U.S. Patent and Trademark Office has en-hanced its Trademark Electronic Application System (TEAS), aiming to promote consis-tency across forms and to provide users with increased flexibility and functionality.

The USPTO updated forms for Responses to Office Actions, Petitions to Revive an Ap-plication (for failing to file a timely response to an Office Action), and Preliminary Amend-ments, to provide functionality consistent with initial applications. The USPTO also updated all TEAS forms to allow for multiple owners to sign. Thus, if the original application was filed by multiple owners, all forms generated under that serial number will include as many signa-ture blocks as used on the original application.

There is a new look and feel for certain forms, such as Requests for Express Abandonment and Withdrawals of Attorney. The PTO also incor-porated e-signature and handwritten signature functionality into these forms. For e-signature, the textform may be emailed to the signatory as a link. Once the form is signed, the origi-nal preparer receives a link to finish filing the form. For handwritten signatures, the textform is printed and mailed or faxed to the signatory, who signs and returns the form to the original preparer. The preparer then scans the signed form and attaches it to the TEAS form as a JPG or PDF file. These improvements should lead to increase in electronic filings on these forms.

Another significant concern with the elec-tronic forms has been unexpected user data crossover between filings intended to be sepa-rate. In an effort to curb these mistakes, a user’s session will now automatically terminate once a user submits an electronic Response to Office Action form. Thus the user is prevented from unknowingly working within the original ses-sion in connection with a new filing.

Lastly, the USPTO has redesigned the Re-sponse to Office Action and Request for Recon-sideration forms to prevent users from amend-ing or modifying certain items in Section 66(a) applications. These forms now prevent Section 66(a) applicants from trying to amend appli-cations to the Supplemental Register, modify dates of use or change the International Class—actions prohibited under the Madrid Protocol and the Common Regulations.

The PTO encourages comments on these changes and ideas for further improvements.

Reconsidering A Paper Filing Fee

INTA’s USPTO Subcommittee submitted of-ficial comments on the Notice of Proposed Rulemaking published in the April 28, 2008, Federal Register. The proposed rule would add a US $50 fee for paper filing of a Request for Reconsideration after Final Refusal. The fee is meant to encourage use of TEAS and to offset paper processing fees.

INTA agrees that a $50 fee seems reasonable. However, the proposed rule eliminates any op-portunity to correct any fee deficiency. In such a case, the request for reconsideration would not be examined, the application would be lost and there would be no chance to correct the er-ror—even if funds became available that day.

This is harsher than the approach to Section 8 Affidavits of Use. If a Section 8 Affidavit is filed without correct fees, there is an opportunity to cure the deficiency—even after the Section 8 deadline—with the fee deficiency surcharge required by the Lanham Act. INTA advocates a similar approach, including surcharge, for re-quest for reconsideration fee deficiencies.

For more information, contact INTA U.S. External Relations Manager Michelle Sara King at mking@inta.org.

2 AssociAtion newsWelcome New Members

Member SpotlightKristen PoggenseeJoel Beres

4 FeAtures

Gone But Not Goodbye: Residual Goodwill in Abandoned U.S. Trademarks

Appellations of Origin in Mexico

7 LAw & PrActiceAUSTRALIAUse It Before You Enforce It, or Risk Losing It

BANGLADESHService Marks Introduced; Fees Increased

FRANCEEBay France Ordered to Pay LVMH a Record 40 Million Euros

GERMANYGerman Supreme Court Confirms Internet Auction Provider’s Liability for Trademark Infringement

KOREAPatent Court Recognizes Wider Scope of Trademark’s Registered Form

MONTENEGROOpening of National Patent & Trademark Office

POLANDBOSS Trademark for Cheap Cigarettes Deemed Detrimental to Reputation of BOSS Brand

TAIWANEnd of Trademark Battle Among Famous Bakery Family

IN THIS ISSUE

intA’s 2008 LeAdershiP Meetingbrochure is AvAiLAbLe on www.intA.org!

November 12 – 15, 2008 | boca ratoN, Florida, USaFor: Board of Directors, Committee Chairs and Vice Chairs, Subcommittee

Chairs, Committee Members, Past Presidents and Past Counsel

Remember: you must register for the meeting before you can reserve accommodations at the Boca Raton Resort & Club.

Representing Trademark Owners Since 1878August 15, 20082

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

ChairKay Rickelman, Spoor & Fisher

Vice ChairJanice Housey, Latimer, Mayberry & Matthews

Feature Articles: Members, Benefits & ServicesMary Donovan, Donovan & Yee LLPJoan Pinaire, Realogy Corp.

Feature Articles: Policy & PracticeGuy Heath, NabarroMona Lee, DW Partners

Law & Practice: AmericasDaphne Maravei, Blake, Cassels & Graydon LLPWalter Palmer, Pinheiro Palmer Advogados

Law & Practice: Asia–PacificConnie Carnabuci, Freshfields Bruckhaus Deringer

Law & Practice: Europe & Central AsiaSusie Arnesen, Sandel, Loje & WallbergVanessa Bouchara, Bouchara & Associes

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

INTA BulleTIN STAFFExecutive Director Alan C. Drewsen

Director, Publishing Randi Mustello

Managing Editor, INTA BulletinJames F. Bush

Associate Editor, INTA BulletinJoel L. Bromberg

Designer Jesse Riggle

oFFiCErS & CounSELPresidentRhonda Steele, Mars, Incorporated

President ElectRichard Heath, Unilever P.L.C.

Vice PresidentHeather Steinmeyer, WellPoint, Inc.

Vice PresidentGerhard Bauer, Daimler AG

TreasurerGregg Marrazzo, Kimberly-Clark Corporation

SecretaryToe Su Aung, BATMark Ltd.

CounselD. Peter Harvey, Harvey Siskind LLP

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication.

For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org.

INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.

© 2008 International Trademark Association

Welcome New MembersAbdo, Abdo & Diniz Attorneys, Novo Hamburgo, Brazil; ABRO Industries, Inc., South Bend, IN, U.S.; Ackmann, Menges & Demski Patent- und Rechtsanwälte, Munich, Germany; ACH Food Companies, Inc., Memphis, TN, U.S.; Advokatfirman Nilsson & Co KB, Stockholm, Sweden; Aguilar & Revenga, Barcelona, Spain; Allegra Consulting, Bucharest, Romania; Allens Arthur Robinson Intellectual Property (Beijing) Limited, Beijing, China; Aramis Société D’Avocats, Paris, France; Arista Commercial Services e.K., Solingen, Germany; Arnecke Siebold Rechtsanwälte Partnerschaftsgesellschaft, Frankfurt, Germany; AUDI AG, Ingolstadt, Germany; Baril, Brandão & Brofman Advogados As-sociados, Curitiba, Brazil; Bates Wells & Braithwaite London LLP, London, U.K.; Beetz & Partner, Munich, Germany; Beijing Knowledge Advertising Agency, Beijing, China; Beijing Tongdaxinheng Intellectual Property Agency Ltd., Beijing, China; Bettinger Schneider Schramm, Munich, Germany; Beukenberg Law Firm, Hannover, Germany; Briffa, London, U.K.; Bulinvent Ltd., Sofia, Bulgaria; Buse Heberer Fromm Rechtsan-wälte, Frankfurt am Main, Germany; Cabinet Boettcher, Paris, France; Cabinet Marilena Oprea, Bucharest, Romania; Carpinvestigazioni Srl, Carpi, Italy; Chitale & Chitale Partners, New Delhi, India; Chivas Brothers Limited, Hammersmith, U.K.; Clarke Will-mott, Southampton, U.K.; Divjak, Topic & Bahtijarevic, Zagreb, Croatia; DMH Stallard, Brighton, U.K.; Duan & Duan Law Firm, Shanghai, China; Fox Mandal, Kolkata, India; EIP, London, U.K.; El Welily Intellectual Property Firm (WIPF), Alexandria, Egypt; Ep-ping Hermann Fischer Patentanwaltsgesellschaft mbH, Munich, Germany; Freshfields Bruckhaus Deringer, Paris, France; Friedman & Feiger, LLP, Dallas, TX, U.S.; Garcia & Bodan Honduras, Tegucigalpa, M.D.C., Honduras; Gopakumar Nair Associates, Mumbai, India; Grupo Elektra, S.A. de C.V., Mexico City, Mexico; Guyot & Micallef, Paris, France; Haeorom International Patent & Law Office, Seoul, South Korea; Haggeney & Heisrath Rechtsanwälte, Stuttgart, Germany; Heussen Rechtsanwaltsgesellschaft mbH, Munich, Germany; Hinkelmann & Huebner, Munich, Germany; Howrey Martinez Lage S.L., Madrid, Spain; Imperial Tobacco Limited, Bristol, U.K.; IMTC & Associados, Lisbon, Portugal; IPAN Intellectual Property Associates Network, Munich, Germany; J. Vega & Asociados, Panama City, Panama; Jones Day, Milan, Italy; Katende, Ssempebwa & Co. Advocates, Kampala, Uganda; Kochhar & Co., Gurgaon, India; Konecna & Safar, v.o.s., Prague, Czech Republic; K-POINTS, Shanghai, China; Latimer, Mayberry & Matthews IP Law, LLP, Herndon, VA, U.S.; Law Office Evanghelou, Athens, Greece; Law Practice of Manoj Menda, Mumbai, India; LDBM, Paris, France; Leaman Browne, Leeds, U.K.; Leason Ellis LLP, White Plains, NY, U.S.; Lellos P. Demetriades Law Office, Nicosia, Cyprus; Liedtke & Partner, Erfurt, Germany; Lindenpartners Partnerschaft von Recht-sanwälten, Berlin, Germany; Luppi Crugnola & Partners, Modena, Italy; Magisters, Kiev, Ukraine; MailClub, Marseille, France; Mayback & Hoffman, P.A., Ft. Lauderdale, FL, U.S.; Mikhashina & Partners, LLC, Kiev, Ukraine; Mingyong Trademark & Patent Law Office, Beijing, China; Nisce Mamuric Guinto Rivera & Alcantara Law Offices, Makati City, Philippines; Nishimura & Asahi, Tokyo, Japan; Novack and Macey LLP, Chicago, IL, U.S.; OK Patent Law Bureau, Minsk, Belarus; Patent Attorney Bureau B&Co, Kiev, Ukraine; Perrigo Israel Pharmaceuticals Ltd, Bnei Brak, Israel; Premier League, Lon-don, U.K.; PT&G, Saint-Petersburg, Russia; Rangel y Rangel, S.C., Mexico City, D.F., Mexico; Reed Smith, Munich, Germany; Regal Chambers, Kingstown, Saint Vincent and the Grenadines; Rehoboth Attorneys, Ikeja, Lagos, Nigeria; Reistotter, Kinzebach & Partner, Munich, Germany; Reuteler & Cie SA, Nyon, Switzerland; Rights & Marks - S. Balajanaki, Chennai, Tamil Nadu, India; Royal Patent Law Office, Seoul, South Korea; Saikrishna & Associates, Noida, India; Sanchez Saldaña Anciano & Latorre, México City, Mexico; Santa Maria Law Firm, Milan, Italy; SC IP GO INVENTURES SRL, Bucharest, Romania; SCP Lamango, Awono & Associates, Yaounde, Cameroon; Singapore Inventors Devel-opment Association (SIDA), Singapore, Singapore; Ström & Gulliksson AB, Malmö, Sweden; Swedish Patent and Registration Office, Stockholm, Sweden; Swiss Reinsurance Company, Zurich, Switzerland; Tapia, Linares y Alfaro, Panama City, Panama; The Zone Corporation Limited, Wellington, New Zealand; ThinkFire Services USA, Ltd, Warren, NJ, U.S.; ThomannFischer, Basel, Switzerland; Tiajoloff & Kelly, New York, NY, U.S.; Tol-pin & Partners, PC, Highland Park, IL, U.S.; Universal Music Group, Santa Monica, CA, U.S.; Unverzagt von Have, Hamburg, Germany; Vidhani Associates, New Delhi, India; Wagner Rechtsanwälte, Saarlouis, Germany; Wang & Associates, Beijing, China; Will-mann - Rechtsanwaltskanzlei, Vienna, Austria; WWIPPS Sàrl, Luxembourg, Luxembourg; Xilinx, Inc., San Jose, CA, U.S.; YukselKarkinKucuk Law Firm, Istanbul, Turkey

AssociAtion news

www.inta.org 3Vol. 63, No. 15

Kristen Poggensee is a Senior Paralegal Specialist at Motorola in Libertyville, Illinois, where she is responsible for trademark clearance, prosecution, renewals, oppositions, liti-gation, domain name matters and anticounterfeiting. Her career in trademarks was launched 24 years ago at Katten Muchin & Zavis in Chicago when a case concerning trade dress issues caught her interest. From that point on, Kristen favored working with trademarks because, in her words, “Trademark law has personal, real life and practical applications. As a consumer I could easily relate to the issues.” In her current role, she reflects that “the most rewarding part of my job is handling a global trademark portfolio consisting of our famous MOTOROLA marks, as well as working with people from a myriad of diverse cultural backgrounds. The different cultures also create challenges with respect to different communication styles and different time zones around the world.”

Kristen serves on INTA’s Trademark Administrators Subcommittee, focusing on education and certification. Her advice for professionals new to the trademark field is to become involved with INTA in order to take advantage of the networking opportunities and the chance to share best practices with colleagues. A favorite memory of her past INTA service was assisting in organizing the Trademark Administrators fashion show held during a brunch at the Chicago Annual Meeting. The organizers filled in as the models for the show, and they danced down the runway modeling

HARLEY-DAVIDSON gear in a fun-filled event. Kristen believes that one of the greatest benefits in attending INTA meetings is the op-portunity to meet international associates “in an environment that fosters understanding about the way Motorola practices.”

Kristen is mom to three children, Elliot, Emily and Lizzy. As a family they enjoy racing and attending sporting events. From child-hood on she trained extensively as a ballet dancer and became proficient in modern jazz as well. Motorola holds dance classes on site, and Kristen especially enjoys the Zumba. Dance training has come to good use: she recently performed in a show at her daughter’s school that raised $80,000 for upgrading computers for the students. During the summer, Kristen adds golfing into her busy schedule, and if she were not practicing trademark law she would enjoy spending lots of time improving her golf game in a warm climate.

by: rosemary brkopac, bd-brandProtect, Mississauga, ontario, canada, intA bulletin Features–Members, Benefits & Services Subcommittee

Joel Beres is a trademark litigation and trial partner at Stites & Harbison in Louisville, Kentucky. Joel was born and raised in Glendive, Montana, which he describes as “a fly-over state.” He departed Glendive (the smallest of the 210 Nielsen-designated television markets in the United States) to attend Stanford University in 1979. He characterizes his sojourn to Stanford as going from the ranch to the farm, “farm” being a nickname for Stanford.

Joel stayed on in California to attend law school at UCLA. After graduation, he joined a firm lo-cated on an old back lot of 20th Century Fox, where he litigated business-related disputes including breach of contract, breach of warranty and commercial lease cases. However, what really caught Joel’s attention were cases involving unfair competition, the Lanham Act and the protection of intellectual property.

Happenstance landed Joel in the practice of trademark law. His wife Beth, whom he met while practicing law in Los Angeles, and he ultimately relocated when her job moved to Louisville, Ken-tucky. It appears that Joel has adjusted well to his role as the “trailing spouse,” and he can now an-nounce with a straight face and with tongue firmly in cheek that “he has fulfilled his lifelong dream of becoming a Kentucky lawyer.”

In point of fact, Joel and Beth’s move to Louisville was their lucky day. Joel met Jack Wheat, and together they formed Wheat & Beres. Their first case defended a client in an action for trademark infringement by Valvoline for infringe-ment of its then-registered mark INSTANT OIL CHANGE. The district court cancelled the registration and the decision was affirmed by the Court of Appeals for the Sixth Circuit. As Joel says, “It was a good start to a wonderful practice. We merged with Stites & Harbison in 2000.”

Joel first became actively involved with INTA in 1998 when he volunteered to serve on the Membership Services Committee. He con-tinues to serve on the Membership Services Committee as its chair. While being chair is quite a lot of work, Joel says “Fortunately, we have some excellent leadership in the subcommittee chairs and project team and task force leaders—and fantastic staff support.” Joel has also is proud to have created “the Leadership Development subcommittee which focuses on identifying new leaders within the organization encouraging and supporting them to develop the skills needed to help INTA to succeed in its mission.”

During his years at Stanford, Joel returned to Montana for the summer for “character building” jobs, which included stringing barbed wire fence, operating a grain elevator, and welding natural gas lines, where he learned, among other things, how to respond to “Hey you—College Boy.” When asked the standard INTA interview wrap-up question, “If you weren’t practicing trademark law, what would you be doing?” Joel answers, “Probably back stringing those barbed wire fences.” Joel believes that INTA has benefited his work “by meet-ing fantastic people from around the world with common interests yet diverse perspectives and by keeping abreast of trademark issues as they are developing.” Equally evident is how the memory of those “character building” college summer jobs contributed in no small way to his present day lightness of spirit.

by: Philip shannon, edwards Angell Palmer & dodge, LLP, new York, new York, usA, intA bulletin Features–Members, Benefits & Services Subcommittee

MeMber sPotLight

Representing Trademark Owners Since 1878August 15, 2008�

After the commercials end and the product is pulled from store shelves, some trademarks retain IP value derived from their capac-ity to elicit consumer recognition. Residual goodwill is the legacy ability of a trademark to identify the source of a product after it is no longer produced. Trademark owners can abandon their property either explicitly or through non-use. In the United States, under 15 U.S.C. § 1127 a mark is presumed abandoned “[w]hen its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years [constitutes] abandonment. ‘Use’ of a mark means … bona fide use … in the ordinary course of trade, and not made merely to reserve a right in a mark.” Abandonment is used to defend against an infringement claim based on use of a mark occurring after the previous owner had purportedly abandoned the mark. The previous owner can, however, rebut an abandonment defense if the mark maintains residual goodwill.

Why Does Residual Goodwill Rebut Abandonment?

Residual goodwill gives the new trademark user instant recogni-tion, even in new markets unaffiliated with the former product or company. If the new user applies the abandoned mark to inferior goods, the previous owner’s reputation—if that owner is still in business—may be tarnished without redress. Additionally, if the mark creates a false impression concerning the product’s producer, consumers can be confused or misled, which is a concern in and of itself, but which also allows the new user to capitalize on the previ-ous owner’s reputation. To reduce unwarranted negative intrusions on the previous owner’s reputation and to help minimize consumer confusion, U.S. courts have found, to varying degrees, that residual goodwill can rebut a presumption of abandonment.

Arguments can be made, however, that a previous trademark owner should not retain residual goodwill. First, measuring good-will is complicated, because courts may examine a myriad of factors and assign variable evidentiary weight to each. Second, trademark law sometimes tolerates minimal consumer confusion. Finally, eliminating residual goodwill would strengthen the abandonment defense, which increases the probability of new market entrants by decreasing infringement defense litigation costs, encourages com-panies to continue using their marks and minimizes the incentive to “warehouse” marks.

How Do You Prove Residual Goodwill?

Because U.S. courts lack consistency in standardizing the burden a trademark owner must meet to rebut a presumption of abandon-ment, the residual goodwill inquiry is anything but uniform or reliable. Where residual goodwill is present, courts prefer finding infringement, in lieu of the default policy favoring competition and the prevention of warehousing. Still, U.S. courts rarely find residual goodwill alone enough to rebut a presumption of abandonment.

Where courts have found residual goodwill sufficient to rebut a presumption of abandonment, there was often de minimis use, continued recognition or little elapsed time since the use ended. Often de minimis use involved products that had a presence in re-

Gone But Not Goodbye: Residual Goodwill in Abandoned U.S. Trademarks

by: valerie brennan and t.J. crane, hogan & hartson LLP, McLean, virginia, usA. Ms. brennan is a member of the intA bulletin Features–Policy & Practice subcommittee

sale markets, or a situation where the previous owner manufactured replacement parts or provided technical assistance. See Ferrari S.P.A. Esercizio Fabriche Automobili e Corse v. Roberts, 944 F.2d 1235, 1238 (6th Cir. 1991). Courts have also examined the strength of continued public recognition and the resulting likelihood of con-sumer confusion. See id. at 1240; Peter Luger Inc. v. Silver Star Meats Inc. 63 U.S.P.Q.2d 1555, 1563 (W.D.Pa. 2002) (finding residual goodwill where continued public recognition was evidenced when the infringing new user launched products with little marketing yet increased sales by 80 percent, while the previous owner experienced a corresponding sales decrease).

Residual goodwill generally decreases as time passes; therefore, the more time elapsed since use has ceased, the less likely a court will find residual goodwill sufficient to rebut a presumption of abandonment. In two cases the court found residual goodwill to ex-ist five years after use had ceased. See Seidelmann Yachts Inc. v. Pace Yacht Corp., Civil No. JH-87-3490 (D. Md. 1989) (owner made no sales for five years, but continued efforts to sell the business, together with the trademark rights), aff’d, 898 F.2d 147 (4th Cir. 1990); Luger, 63 U.S.P.Q.2d at 1559, 1561 (previous owner had used mark for 50 years prior to cessation; new user adopted simi-lar trade dress). In another, because 15 years had passed since use ceased, the court found that there was no residual goodwill. Horn-blower & Weeks Inc. v. Hornblower & Weeks Inc., 60 U.S.P.Q.2d 1733, 1736 (T.T.A.B. 2001) (no evidence of bad faith or intent on part of new adopter).

The passage of time does not always destroy goodwill, however, such as in a case involving SKIPPY peanut butter, where the court

INTA is pleased to announce a partnership with the magazine

edITor & PuBlIsher on its annual Trademarks and Copyrights issue.

It is a constant challenge to protect trademarks from becoming generic. One of the main ways INTA works to assist trademark owners in this effort is to inform media representatives on the proper use of trademarks in their publications.

This partnership will allow INTA to reach out directly to media representatives and educate them on proper trademark usage and the tools INTA has available to help them, such as the Trademark Checklist and Trademark Hotline.

Editor & Publisher is one of the best ways to reach this influential audience, as 85 percent of all newspaper publishers in the U.S. read the magazine, as well as 56 percent of editors—more than any other free publication, association magazine or newsletter, monthly, weekly, or daily.*

INTA encourages you to consider advertising in this special edition to highlight the proper use of your own company’s trademarks. For more information and to reserve your company’s space in the magazine, contact:

Charles McKeownPublisherEditor & Publisher Tel: +1-6�6-65�-5120cmckeown@editorandpublisher.com

*Source: Belden Associates, 2006

FeAtures

www.inta.org 5Vol. 63, No. 15

found no abandonment even though 23 years had passed since the mark had been applied to the product. Skippy Inc. v. CPC Inter-national Inc., 674 F.2d 209, 216 (4th Cir. 1982) (court swayed by strong evidence of lack of intent to abandon).

Not surprisingly, courts are unlikely to find in favor of a new user whose intent was to confuse consumers by capitalizing on the pre-vious owner’s reputation. See Peter Luger, 63 U.S.P.Q.2d at 1561. If, however, the new user disclaims association with the previous owner, courts are unlikely to find residual goodwill sufficient to rebut abandonment because the new user effectively rejects any re-sidual goodwill and minimizes confusion through the disclaimer. See In re Wielinski, 49 U.S.P.Q.2d 1754, 1756 (T.T.A.B 1998); Rust Environment & Infrastructure v. Teunissen, 131 F.3d 1210, 1217 (7th Cir. 1997). The previous owner’s actions also can influence whether confusion is likely. If the previous owner changed names before the new user adopted the mark, thus reducing overlap and the likelihood of confusion, courts are less likely to find infringe-ment. See id. at 1215.

Practice Tips for New Adopters

Disclaimers If you adopt a mark that could lead to consumer confusion, particularly if your product is related to the previous owner’s product, take reasonable precautions to prevent confusion by informing customers that you are not affiliated with the previous mark holder.

Assignment If you are purchasing a mark, ensure that the pur-chase agreement contains an explicit assignment of the goodwill associated with the mark and, if applicable, a covenant not to com-

pete under a similar mark.Evaluate Past Owner If the prior user of the mark is still in

business, tread more carefully because the former owner could be harmed and could object.

Practice Tips for Trademark Owners

Continued Use If you are temporarily suspending or ceasing the use of a mark, ensure that you have a clear intention and an explicit plan to resurrect the mark. Attempts to license or assign a mark are evidence of an intent to resume use. Courts will also look at your reasons for ceasing use of the mark.

Brand Transition If you carefully transition the goodwill from your previous mark to a new mark, courts may find that the re-sidual goodwill has transferred to the new mark.

Defend the Mark If you are not using a mark, but intend to re-sume use, continue to object to any unauthorized use, as the failure to do so is strong evidence of abandonment.

Conclusion

Without a consistent definition of residual goodwill, U.S. courts maintain flexibility in crafting decisions that reconcile the statutory standard for abandonment with the Lanham Act’s goal of reducing consumer confusion as embodied in notions of residual goodwill. As is often the case, the honest producer’s efforts to avoid consumer confusion will be recognized by the courts.

Trademark Administrators Conference

october 12 – 15, 2008Arlington, Virginia, USA

INTA’s Trademark Administrators Conference will bring togethernon-attorney trademark professionals from around the world

Last year, attendees from more than 30 countries came together to discuss the issues most important to trademark administrators and paralegals. Join your colleagues at this year’s Trademark Administrators Conference to take part in the comprehensive, practical and timely educational sessions that reach out to all experience levels.

Topics for Discussion Include:• Internet Hot Topics and Website Resources • Marketing, Brand Identity and Re-Branding • Worldwide Clearance • New TTAB Rules and the Impact on Your Job • Non-Traditional Trademark Filings • Strategies for Protecting Designs • Current Developments in the Global Counterfeit Landscape • Review of Emerging Issues Around the World

Visit www.inta.org/go/tmaconference2008 for more information. Register by September 12, 2008 to take advantage of the Early Bird Savings!

Thank you to the Platinum Sponsor:

FeAtures

Representing Trademark Owners Since 1878August 15, 20086

According to Article 156 of the Mexican Industrial Property Law (MIPL), appellations of origin (AOs) “shall be understood to be the name of a geographical region of the country that is used to designate a product originating therein whose quality or character-istics are due exclusively to the geographical environment, includ-ing both natural and human factors.”

This legislation regulates the use of AOs on products and estab-lishes a registration system under which a declaration is issued by the Mexican Institute of Industrial Property (IMPI) when a prod-uct complies with the necessary requirements established by law. A product can be designated with an AO upon the request of any per-son or private or public entity that proves a legal interest and that is directly involved in the extraction, production or manufacture of the product to be protected by the AO, provided all requirements are met.

All Mexican AOs are owned by the Mexican Federal Govern-ment (“Mexican State” as indicated in the MIPL), which can li-cense them by granting authorizations for use that are issued once all legal and technical requirements are met. Once an authorization is granted, it will have a duration of ten years from the date of filing before the IMPI. Such authorization may be renewed for successive ten-year periods if the authorized user continues to comply with the requirements.

The right to use an AO may be transferred or licensed by the au-thorized user as long as the licensee complies with the same require-ments as the authorized user. Any such transfer is effective from the time of its registration before the IMPI, after proof has been given that the new user has met the conditions and requirements of law. The authorized user of an AO may, by agreement, allow the use of the appellation, but only by those persons who distribute or sell products bearing his marks. The agreement shall be approved by the IMPI and shall become effective upon its registration before the IMPI.

Applications for a declaration of an AO, as well as any authoriza-tions to use an AO or cancellations of the use of an AO, are made public through publication in the Official Gazette. Oppositions against an application for declaration of an AO are expressly regu-lated and can be filed by any interested party. However, oppositions to registrations are not regulated. The authorization granted to the user of an AO ceases by reason of invalidity, cancellation when the AO has a different use from the one specified in the declaration, or the expiration of its term.

Conflicts between trademarks and AOs are resolved according to the general provisions specified by the MIPL. They can coexist as long as the trademark covers different products or services related to the scope of protection of the goods protected by an AO.

In September 1966, Mexico signed the Lisbon Agreement, under which all parties undertake to protect, in their territories and in accordance with the terms of the agreement, the AOs of the prod-ucts of other countries that are recognized and protected as such in the country of origin, and registered before the World Intellectual Property Organization.

Currently, Mexico has 14 AOs registered and in force:TEQUILA

Appellations of Origin in Mexicoby: ignacio domínguez-torrado, uhthoff, gomez vega & uhthoff, Mexico city; Jose-Juan Méndez, Alegría, Mendez & Fernández wong, Mexico city; Juan M. Alvarez del Castillo V., Cervantes, Aguilar-Alvarez y Sainz, Mexico City

MEZCALSOTOLTALAVERAMANGO ATAULFO DEL SOCONUSCO DE CHIAPASCAFÉ PLUMACAFÉ CHIAPASCAFÉ VERACRUZOLINALAAMBAR DE CHIAPASCHARANDAVAINILLA DE PAPANTLATEHUACANBACANORA

Geographical Indications

It is important to note that the MIPL also recognizes geographi-cal indications (GIs) as a way to identify characteristics of goods that are essentially attributable to the goods’ origin, allowing pro-ducers to obtain market recognition.

A GI is a sign used to identify a product based on the special quality or reputation given to the product by the place of its ori-gin.

According to Articles 88 and 89 of the MIPL, visible names and figures capable of identifying the products or service that they are intended to protect may mature into registered trademarks. These include names of persons, geographical names, etc. Exceptions to these rules are in Sections X and XI of Article 90 of the MIPL, which specifically prohibit the registration of trademarks that refer to proper or common geographical names and maps and also nouns and adjectives that indicate the origin of the products or services and may cause confusion or error regarding such origin, as well as trademarks that refer to the names of towns or places known for the manufacture of certain products, to identify those products. In this regard, the prohibitions established by the MIPL focus on those geographical names that may inform consumers that a product originates from a certain place and has special qualities that are due to that place of origin. For example, a registration for FLORIDA cannot be obtained to identify oranges, since that U.S. state is rec-ognized as a producer of citrus fruits. However, one could obtain the registration of FLORIDA to identify “glasses,” since glasses are not related to Florida producers.

The Trademark Reporter is seeking contributions from practitioners and other trademark professionals, professors, and students, and is particularly looking to expand its coverage of international issues authored by international writers. Both INTA members and non-members may submit articles for publication.

Contact the Managing Editor at tmr@inta.org or visit The Trademark Reporter portion of INTA’s website at www.inta.org for more information on proposed article topics, submission guidelines, and deadlines.

The Law Journal of the International Trademark Association

UNITED STATES ANNUAL REVIEW

The Sixtieth Year of Administration of the

U.S. Trademark (Lanham) Act of 1946

Theodore H. Davis, Jr. Jordan S. Weinstein

Vol. 98 January-February, 2008 No. 1

®

FeAtures

www.inta.org �Vol. 63, No. 15

E & J Gallo Winery, the world’s second-largest wine producer, re-cently failed in an attempt to bring proceedings for infringement of its Australian trademark for BAREFOOT and ended up losing its trademark for non-use.

In 2005, Gallo acquired the rights to the BAREFOOT wine brand, including an Australian trademark for BAREFOOT regis-tered in March 1999 in respect of wines. In early 2006, Gallo began discussions with an Australian company, McWilliams Wines Pty Ltd, for the sale of BAREFOOT wine in Australia. However, in July 2007, before any agreement was finalized with McWilliams Wines, Gallo learned that Lion Nathan Australia Pty Ltd had ap-plied to remove Gallo’s BAREFOOT trademark from the Register for non-use. Lion’s application was spurred by a new beer product, called BAREFOOT RADLER, which it intended to launch in the Australian market. RADLER is descriptive of a type of beer flavored with lemon and lime.

In September 2007, Gallo licensed McWilliams Wines the right to use its BAREFOOT trademark in Australia, and in mid-Sep-tember McWilliams Wines began selling BAREFOOT wine on the Australian market.

In January 2008, Lion launched its BAREFOOT RADLER beer on the Australian market. Gallo commenced proceedings in the Federal Court of Australia against Lion for infringement of its BAREFOOT trademark. Lion cross-claimed for removal of the BAREFOOT trademark from the Register for non-use.

Gallo successfully convinced the court that Lion’s BAREFOOT RADLER trademark was deceptively similar to its BAREFOOT trademark. However, it failed to convince the court that Lion’s BAREFOOT RADLER beer was goods of the same description as wine. Accordingly, its infringement claim failed. In a double blow for Gallo, Lion also succeeded in its cross-claim for removal of the BAREFOOT trademark for non-use in Australia.

In the proceeding, Gallo argued that its trademark had been used during the alleged non-use period of May 2004 to May 2007 as follows:

AUSTRALIAUse It Before You Enforce It, or Risk Losing It

contributors: John hackett (intA bulletin Law & Practice–Asia-Pacific Sub-committee) and Matthew Hayes, A J Park, Auckland, New Zealand; Verifier:

Andrew Knowles, James & wells, tauranga, new Zealand

• By the sale of its BAREFOOT wine in Australia by a whole-saler that had acquired the wine from an unrelated company in Germany, which in turn had acquired it from the previous owner of the BAREFOOT trademark; and/or

• Through its negotiations with McWilliams Wines for the dis-tribution of BAREFOOT wine in Australia.

The court rejected the first argument, saying that there was no “use” of the trademark in Australia by Gallo merely because the goods had arrived on the Australian market by some unexplained circuitous route and were thereafter available in Australia. The court held that a foreign owner of an Australian trademark uses the mark when it sells goods for delivery abroad to Australian retailers and those retailers import them into Australia for sale and then sell them. Here, however, the predecessor in title of the BAREFOOT trademark had not projected its goods to the Australian market. The only projection of the goods had been onto the German mar-ket, and they had arrived on the Australian market without Gallo’s knowledge.

The court then rejected the second argument, finding that Gallo had engaged only in preliminary or preparatory acts and that its evidence of negotiations did not constitute actual use of the trade-mark.

Although Gallo was not able to stop Lion, as a consolation it should be able to re-register its mark, given the finding of nonin-fringement.

This case sends an important message to foreign owners of Aus-tralian trademarks. They must use their trademarks by projecting the goods directly to the market, either themselves or via an autho-rized user, to ensure their registration does not become vulnerable to a removal application, especially where they take enforcement action.

On April 30, 2008, the German Supreme Court ruled that an In-ternet auction provider is liable for trademark infringement on its website (German Supreme Court, IZR 73/05 – “Internet-Verstei-gerung III”). See INTA Bulletin Vol. 63 No. 13, July 15, 2008, for initial announcement of decision.

The plaintiff produces and sells watches with the trademark RO-LEX. They are the owners of respective trademarks. On the Internet platform “ricardo,” third parties offered fake watches carrying the trademark ROLEX. Those watches were clearly marked as copies.

The Upper District Court of Cologne confirmed the request for an injunction after the Supreme Court overruled a different deci-sion of the Upper District Court of Cologne in 2004 (BGH, deci-sion of March 11, 2004 – IZR 304/01, BGHZ 158,236 – “Inter-net-Versteigerung I”). The Supreme Court confirmed that decision and that the Internet auction provider was liable since the Internet

GERMANYGerman Supreme Court Confirms internet Auction Provider’s Liability for Trademark infringement

contributor: F. Peter Müller, Müller schupfner & Partner, Munich, intA bulletin Law & Practice–europe and central Asia subcommittee;

Verifier: Elisabeth Vorbuchner, Zanker & Vorbuchner, Augsburg

platform enabled third parties to sell fake watches. Such a possibil-ity created by itself a right to obtain an injunction. It was a prerequi-site that these third parties sell the false watches commercially. The Internet platform provider was obliged to immediately remove the offers from its website and to take precautionary measures to ensure that similar offers would not reappear on the site. However, the Supreme Court confirmed that the auction provider should not be subject to excessive control requirements, which might jeopardize the Internet auction business model. However, the auction provider must implement technically feasible and reasonable precautions to avoid the offering of fake ROLEX watches again on its website.

LAw & PrActice

Representing Trademark Owners Since 1878August 15, 20088

The Commercial Court of Paris issued three judgments on June 30, 2008, holding eBay liable for the online auction sale of coun-terfeit goods and the breach of exclusive channels of distribution. The total indemnity amounts to € 40 million, payable immediately to Parfums Dior, Kenzo Parfums, Parfums Givenchy, Guerlain SA, Christian Dior Couture and Louis Vuitton Malletier.

EBay claimed the benefit of the protective status of hosting (as provided for in Directive 2000–31/EC of June 8, 2000, on e-com-merce) under which it could have avoided direct liability subject to the withdrawal of listings on counterfeit goods after the receipt of a formal notification.

This position did not convince the French judges. They consid-ered that eBay qualified as a provider of intermediation services between sellers and buyers in consideration of a commission. The judges expressly denied the protection of the status of hosting, since eBay takes an active role in the information published on its web-site. As a result, eBay was liable under civil (noncontractual) law.

The judges blamed eBay for not having ensured that its activity was not generating illegal acts, such as the sale of counterfeit goods or violation of exclusive channels of distribution. They also consid-ered that eBay breached its duty to check that sellers making a great number of transactions were duly registered with the Trade Register. This latter ground may cause eBay more trouble in the future, for buyers might claim the benefit of consumer laws for sales by profes-sionals—and blame eBay for not providing this information.

In the Christian Dior Couture and Louis Vuitton Malletier cases, the judges observed that eBay should have set up effective measures

FRANCEEBay France Ordered to Pay LVMH a Record �0 Million Euros

contributor: benjamin May, Law Firm Aramis, Paris; Verifier: Vanessa Bouchara, Cabinet Bouchara – Avocats, Paris, Co-Chair of

intA bulletin Law & Practice europe & central Asia subcommittee

against infringement, such as (1) the duty for the sellers to provide on demand a receipt or a certificate of authenticity for the goods on sale, (2) the immediate and definitive closing of the account of sellers engaging in illegal activity, or (3) the immediate withdrawal of listings reported to be illegal by the claimants. The judges also underscored that the listings related to sales of counterfeit goods could be easily identified, either by the “fake” or “imitation” quotes that often appeared, or by the low price of the goods.

The judges concluded that eBay was liable for both the wrongful use of the claimants’ rights and the damage caused to their image. Interestingly, the indemnity awarded is an indemnifying royalty based on a percentage of eBay’s commissions. This type of indemnity is unusual, for under French civil law the amount of the indemnity may not exceed the damage actually suffered—which in most cases is limited to lost profits and the compensation of lost investments. The concept of indemnifying royalty was introduced in France by law No. 2007-1544 of October 29, 2007, implementing Directive 2004-48/EC of April 29, 2004, on IP rights enforcement.

Last, the judges issued an injunction for eBay to stop auctions on the perfumes, under a penalty of € 50,000 per day of delay.

Although eBay immediately filed an appeal, these judgments may be perceived as an incentive to sue eBay to seek indemnification.

On May 28, 2008, the Patent & Trademark Office (PTO) of Mon-tenegro officially began operations. Since then the PTO has been able to process new applications (patents, trademarks and designs) and revalidations of Serbian IP rights in Montenegro.

All Serbian IP rights registered by May 28, 2008, will be valid in Montenegro until their Serbian expiration date, and no revalidation of these Serbian IP rights in Montenegro is necessary. However, in case of oppositions (or similar actions), the PTO of Montene-gro will not have any information on the owner’s representative in Montenegro. It is advisable to file a request to record a representa-tive in the Montenegrin database and to request a Certificate of Validity of IP Rights.

All IP rights pending in Serbia on May 28, 2008, must be reap-plied for in order to be valid in Montenegro. To reapply for Serbian IP rights, an applicant must file with the PTO a request for recordal of a representative and a copy of the filing documents for the Ser-bian pending application. The deadline for executing revalidations in Montenegro is November 28, 2008.

MONTENEGRO

Contributor: Jelena Lovric, Producta Ltd., Zagreb, Croatia, intA bulletin Law & Practice–europe & central Asia subcommittee;

Verifier: Jelena Miljkovic, Ristic & Malesevic, Belgrade, Serbia

opening of national Patent & Trademark office

2008 INTA / WIPO INTERNATIONAL FORUM ON TRADEMARKS AND DESIGNS

SEptEmBER 24, 2008 | BRuSSElS, BElgium

LOOKING BEYOND THEBORDER OF TRADEMARKS

Join experts from INTA and the World Intellectual Property Orga-nization (WIPO) at this one-day, advanced-level conference, as they discuss topics that go beyond the normal scope of trade-mark professionals but still have a large impact on their practice. WIPO officials and prominent industry and law firm practitioners will examine these evolving intellectual property rights, includ-ing concerns unique to each and issues that arise when the two areas overlap.

Reasons to attend this forum:• Develop an integrated strategy for the timely acquisition,

maintenance and management of trademark and design regis-trations.

• Acquire valuable skills and receive practical tips on finding the best route to registration.

• Learn about the latest developments at WIPO and future perspectives of the Madrid System.

• Network with WIPO experts as well as colleagues and trade-mark and design experts from around the world.

FOR MORE INFORMATION, VISIT WWW.INTA.ORG/GO/INTA-WIPOCONFERENCE2008.

LAw & PrActice

www.inta.org �Vol. 63, No. 15

The Patent Court recently issued a decision recognizing a wider scope of using a registered trademark (Case No. 2007Heo10996 –May 14, 2008). The trademark at issue was owned by Kenzo Société Anonyme, a subsidiary of the French conglomerate Louis Vuitton Group, and covered perfume.

As shown above, Kenzo had separately showed each of the four elements of its registered trademark (representing the blooming stages of a flower from the bud until full bloom) on the four sides of the perfume’s rectangular box packaging.

An issue arose as to whether such use of the trademark could be recognized as being the use of Kenzo’s registered trademark. In this regard, the Intellectual Property Tribunal (IPT) of the Korean Intel-lectual Property Office held that such use could not be recognized as being a valid use within the scope of the registered trademark.

In overturning the IPT’s decision, the Patent Court held that Kenzo’s use of the trademark on its perfume packaging could be recognized as being valid use of its registered trademark. The court emphasized the following factors.

1. The main motif of the registered trademark was the depiction of the four blooming stages of a poppy. The trademark, as actu-ally used, was a slight modification of the registered trademark, which adopted essentially the same flowering stages as the reg-istered trademark, the only difference being that the directional progression of the stages was reversed. Such use was only a slight modification, which was within the scope of use of the regis-tered trademark.

2. In addition, the same words that were stated in the registered

KOREAPatent Court Recognizes Wider Scope of Trademark’s Registered Form

contributor: Alex h. cho, Kim & chang, seoul, intA bulletin Law & Practice–Asia-Pacific Subcommittee;

Verifier: Joong-hyo Kim, Choice Kim Intellectual Property Law, Seoul

trademark were reflected in the actually used trademark, the only difference being the direction in which they were written (horizontal instead of vertical). This difference was also a slight modification and within the scope of use of the registered trade-mark.

This decision is significant in that the Patent Court has recognized a substantially wider scope of use for a trademark as compared to its registered form. Past judgments found use valid only if each element of a registered trademark could be recog-nized at a glance in cases where the elements of the registered trademark were used separately.

Another significant issue in this case was wheth-er Kenzo’s trademark was used solely as a design. In this regard, the Patent Court found that although such use should be partially acknowledged as a use of a design, the function of indicating the source of the perfume could not be disregarded, because:

1. Kenzo appeared to have used the trademark appearing on its packaging with the intent of using the registered trademark on its designated goods, namely perfume;

2. It would have been possible for dealers to recognize Kenzo’s reg-istered trademark from the perfume packaging during its print-ing and delivery process;

3. It was also possible for general consumers to recognize Kenzo’s registered trademark from any one of the four sides when the packaging was used on perfume;

4. It was rather natural for Kenzo’s registered trademark to be used on the four sides of the packaging, as it depicted a flower blooming in four stages; and

5. Kenzo’s registered trademark as whole could be easily recognized when the packaging was disassembled.

The opposing party has filed an appeal against the decision of the Patent Court. The case is currently pending before the Supreme Court.

On February 14, 2008, Bangladesh enacted the Trade Marks Or-dinance, 2008, which inter alia provides for registration of service marks in Classes 35 to 45 under to the Ninth Edition of the Nice International Classification of Goods and Services. The Trade Mark Office started accepting applications for service marks in February 2008, although the Ordinance came into force only on July 1, 2008 (see S.R.O. No. 211-LAW/2008, June 30, 2008). Applications filed earlier will now be examined and, once registered, the marks will be

BANGLADESH

contributor: vikrant rana, s.s. rana & co., new delhi, india,intA bulletin Law & Practice–Asia-Pacific Subcommittee;

Verifier: Md. Solaiman Munshi, Munshi & Associates, Dhaka, Bangladesh

Service Marks introduced; Fees increasedprotected from the date of filing.

Government fees for trademarks have also been increased, with effect from July 2, 2008 (S.R.O. No. 210/2008). There is no provi-sion for filing multiclass applications in Bangladesh.

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www.inta.org 11Vol. 63, No. 15

the rights of the company Hugo Boss in its company name were infringed by Reentsma’s registration of the trademark BOSS LIGHTS.

Reemtsma filed a complaint with the Warsaw Re-gional Administrative Court. It argued that the Pat-ent Office’s decision regarding the company name was based on the identity of only one element—Boss—in-stead of the full company name of Hugo Boss, and that Reemtsma’s trademark contained other elements apart from BOSS. In addition, Reemtsma contended that the company Hugo Boss was known to a very small group of customers of luxury goods, which were differ-ent from cheap cigarettes.

The Warsaw Regional Administrative Court dis-missed the complaint, holding that the decision of the Patent Office was correct under the relevant law. The court ruled that the trade-mark BOSS was associated in Poland with luxury goods destined for rich customers, especially young ones, for whom the brand of goods and the reputation associated with the brand were essential. Therefore, evoking incorrect associations between that brand and cheap cigarettes could be detrimental to the brand’s reputation. Trademarks of a certain kind, such as BOSS, were regarded by some groups of customers as a sign of top-quality lifestyle and high social ranking. Those trademarks did not need to be commonly known—it was sufficient for them to be well known within a specific group of customers. Trademarks of this kind were also distinctive because the availability of the products with the mark was limited due to, among other factors, a higher price and a smaller number of stores where the products could be obtained.

A decision of the Regional Administrative Court in Warsaw of September 4, 2007 (Case No. VI SA/ Wa 2195/06), published in June 2008, held that BOSS for cheap cigarettes was detrimental to the reputation of the BOSS brand of Hugo Boss.

By virtue of a decision of April 3, 2002, the Polish Patent Office registered the trademark BOSS LIGHTS & Design (pictured) in the name of Reemtsma Ciga-rettenfabriken GmbH, Germany, for cigarettes in Class 34.

On October 10, 2002, the German firm Hugo Boss Trade Mark Management GmbH & Co. KG, filed an opposition against Reemtsma’s registered trademark, arguing that it was similar to a number of the oppo-nent’s trademark registrations consisting of or incorporating the word BOSS in various classes, including Class 34 (covering light-ers). Further, Hugo Boss argued that the trademark BOSS LIGHTS also infringed the rights in its company name. In addition, Hugo Boss noted that BOSS is a trademark with a significant reputation and that Reemtsma’s use of BOSS would be against the law.

In response to the opposition, Reemtsma contended that the trademarks in question were sufficiently different and the goods un-der the marks—cigarette lighters and cigarettes—were of a differ-ent kind. Reemtsma also questioned the reputation of Hugo Boss’s trademark BOSS in Poland, especially among cigarette smokers.

The Polish Patent Office, by virtue of a decision of September 20, 2006, cancelled the registration for the trademark BOSS LIGHTS & Design. According to the Patent Office, the argument that the subject trademark infringed the rights deriving from earlier trade-mark registrations was groundless, as cigarettes and cigarette light-ers were not goods of the same kind. Normally, because of their totally different nature, those products are made separately by dif-ferent companies. On the other hand, the Patent Office stated that

POLAND

contributor: Anna Zakrocka, Patpol, warsaw, intA bulletin Law & Practice–europe and central Asia subcommittee; Verifier: Anna Kurek-Kosmala, Komor Kosmala Legal Offices, Warsaw

BOSS Trademark for Cheap Cigarettes Deemed Detrimental to Reputation of BOSS Brand

The Supreme Court in Taiwan found that the trademark rights in the famous, century-old bakery YU CHEN CHAI belonged to the six children and widow of the original owner, Sen-Rong Huang (Case 97TA/No. 1221, June 12, 2008). The bakery was established in 1877, and the trademark YU CHEN CHAI was registered by Sen-Rong Huang.

In 1990, Sen-Rong Huang agreed to let his eldest son, Yi-Zhou Huang, use YU CHEN CHAI as the name of a convenience store. After Sen-Rong Huang passed away in 1999, his widow support-ed the third son’s efforts to take over the bakery. When the eldest son objected, the two parties entered a series of litigations over the rights in the mark.

In 1999, the Taiwan Intellectual Property Office accepted an ex-ecuted trademark assignment submitted by the widow, Qing-Xiu Huang Lu, and validated her as the legal owner of the trademark YU CHEN CHAI. Qing-Xiu Huang Lu then filed a lawsuit against her eldest son to prohibit him from employing YU CHEN CHAI for the name of a store or as a company or domain name. However, the Taiwan Taichung District Court found that at the time the trade-mark assignment was executed, Sen-Rong Huang was seriously ill

TAIWAN

Contributor: Jenny Yu, A & Finet International Patent & Law Office, Taipei; Verifier: Tzu-Nan Huang, Secure International

Patent & Trademark Office, Taipei

End of Trademark Battle Among Famous Bakery Family

and unable to consciously execute the document. Thus, the District Court ruled that the trademark rights in YU CHEN CHAI should belong to all of the original owner’s legal heirs and that Qing-Xiu Huang Lu was not eligible to claim that her eldest son infringed her trademark rights (Case 93I/No. 64, April 25, 2006).

On appeal, the Taiwan High Court Taichung Branch Court up-held the findings of the District Court. It further pointed out that the print of Sen-Rong Huang’s stamp shown on the assignment document was different from the print shown on the original ap-plication. (Case 95IA/No. 11, January 30, 2008). Subsequently, the plaintiff appealed to the Supreme Court, which concluded that the High Court’s ruling was valid.

A criminal suit charging forgery of executed trademark assign-ment was also filed by the eldest son against the third son. That case is pending investigation.

LAw & PrActice

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intA/wiPo international Forum ontrademarks and industrial designs September 2�, 2008Brussels, Belgium

in-house trademarkcounsel’s workshop September 25, 2008Brussels, BelgiumFor INTA corporate trademark owners andnon-Member in-house counsel only

e-LeArning: ttAb basics october 6 – november 1, 2008Anywhere via the Internet

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trademark Administrators conferenceoctober 12 – 15, 2008 Arlington, Virginia, USA

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MArK Your cALendArsIN-HOUSE TRADEMARKCOUNSEL’S WORKSHOPSEptEmBER 25, 2008 | BRuSSElS, BElgium

INTA IS PROUD TO PRESENT ITS SECOND ANNUAL BENCHMARKING

EVENT FOR CORPORATE TRADEMARK OWNERS IN EUROPE!

The Workshop provides corporate trade-mark owners the opportunity to discover how other trademark owners in Europe protect their brands and trademarks through proper strategic planning and use of best practices. The topics in this year’s benchmarking workshop will deal with in-house matters and interactions, as well as matters and interactions with the “outside world.”

To allow for meaningful and interactive discussion about issues that are most im-portant to you, this program is offered at a reduced program price to 100 in-house practitioners only, so register early!

VISIT WWW.INTA.ORG/GO/EUROPEINHOUSE2008 FOR MORE INFORMATION AND TO REGISTER.