judith eckl, 2 hugo boss daily news …euromoney institutional investor plc nestor house, playhouse...

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ICANN yesterday explained plans that will reshape the domain name sys- tem by allowing any business to regis- ter global top-level domains (gTLDs) and introduce new domains that con- tain only non-Roman characters. “We are trying to anticipate and avoid as many of the pitfalls as possi- ble,” said Tim Cole, chief registrar liaison for ICANN—the not-for-prof- it body that regulates Internet domain names. ICANN is creating a dispute resolution process that will enable trademark owners to oppose applications for new gTLDs. Cole (pictured above) acknowl- edged the concerns of trademark holders, saying: “The IP community has insisted that we do a better job of compliance and we are doing so.” He pointed out that last week ICANN issued its first breach notice to a reg- istrar (Red Registrar) for failing to implement a UDRP decision. Cole said that he hoped the new gTLD sys- tem will go live in February 2009. As well as allowing new gTLDs, ICANN plans to introduce new inter- nationalized top-level domains, which will make it easier for people whose languages use different alpha- bets to use the Internet. The new sys- tem will increase the number of char- acters available to form domain names from 37 to over 100,000. Josh Bourne of FairWinds Partners explained that cybersquat- ters make money by maximizing clicks, as each click is worth around US$1.46. He said domains that exploit well-known trademarks, such as goole.com and mypsace.com, can generate around 10,000 visits a month, which means “the profitabil- ity is pretty eye-popping.” One gTLD already approved by ICANN is .tel. Representatives of tel- nic, which runs .tel, told the INTA Daily News that details of how the sunrise period will work as well as pricing will be announced at the ICANN meeting in Paris in June. The sunrise is slated to open in the fourth quarter of 2008. It will be on a first- come, first-served basis with a valida- tion process and dispute resolution procedure. Dot-tel will provide a simple direc- tory service, which comprises pure data rather than html code, making it easily accessible using mobile devices. Philip Colebrook, senior vice presi- dent business development and policy for telnic, said this should reassure brand owners concerned about cyber- squatting: “We think there will be less exploitation by domainers because of the lack of scope for pay- per-click advertising.” Wednesday, May 21, 2008 www.managingip.com CONTENTS 2 • CITY GUIDE 8 PARTY PHOTOS 11 ANNOUNCEMENTS 12 • SCHEDULE 12 www.inta.org 130TH ANNUAL MEETING, BERLIN Dail y News PUBLISHED BY NEWS: CELEBRATE TRADEMARKS 2 FEATURE: US CASE LAW REVIEWED 4 INTERVIEW: JUDITH ECKL, HUGO BOSS 7 gTLD expansion ahead A representative of the European Commission announced changes to its 2005 proposal on Geographical Indications covering wines and spirits dur- ing yesterday’s Geographical Indications Committee meeting. In 2005, the EU submitted a proposal under the Doha Round at the World Trade Organization (WTO) on a multilateral register for GIs, introducing a legally binding system requiring member states to report their GIs to the WTO. WTO members would then be required to block any trademark application that con- tained a registered GI. But during yesterday’s committee meeting, Luc Pierre Devigne of the European Commission told mem- bers that the EU now proposes a register in which GI holders can publish their GIs multilaterally for notifi- cation, but would have to go through the national reg- ister of each country to obtain legal protection. However, registering through the WTO would provide the GI holder protection against “negative evidence,” such as having to prove that a mark is not generic. “This way, if someone challenges my GI, they have to bring the evidence against me,” said Devigne. The WTO has been considering a multilateral register covering wines and spirits for some time, but the EC’s 2005 proposal was bundled with plans to extend GI pro- tection beyond wines and spirits. Devigne did not clarify during Tuesday’s meeting whether that would still apply under the new register. Lynne Beresford, Commissioner for Trademarks at the USPTO, also attended the meeting and outlined the US position on a WTO register for GIs. Beresford said that the US scheme would simply provide notice of GIs with no legal effect. Devigne described this as “a system that’s essentially GOOGLE.” In an effort to break the deadlock on the issue, which has been pending since 2001, INTA has devised a pro- posal on a WTO registry for wines and spirits, suggesting a voluntary system for registering GIs (which would be neutrally termed “Domestic Article 23 registers”, after the section of TRIPs which relates to the protection of GIs for wines and spirits) through the WTO or WIPO. INTA representatives said that the organization should have its proposal in writing soon, at which time it will become subject to comment from the trademark community. EU reconsiders position on GIs INTA President Rhonda Steele greeted guests at last night’s Government Officials Reception. Berlin could benefit from proposals to intro- duce more gTLDs, as a German company is planning to apply to launch .berlin once ICANN approves the new gTLD process. The company, formed in 2005 by entrepreneur Dirk Krischenowski, is seeking corporate backing to be one of the first new gTLDs. Markus Bahmann of avocado rechtsanwälte, who is on the Board of .berlin and advises the company on legal issues, said it is now writing a sunrise policy: “We don’t want to be pirates.” He added that TLDs such as .berlin are likely to become more popular: “Regionalization of the Internet is going to be the future.” Other city-based TLDs that have been proposed include .hamburg, .paris and .nyc.

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Page 1: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

ICANN yesterday explained plansthat will reshape the domain name sys-tem by allowing any business to regis-ter global top-level domains (gTLDs)and introduce new domains that con-tain only non-Roman characters.

“We are trying to anticipate andavoid as many of the pitfalls as possi-ble,” said Tim Cole, chief registrarliaison for ICANN—the not-for-prof-it body that regulates Internetdomain names. ICANN is creating adispute resolution process that willenable trademark owners to opposeapplications for new gTLDs.

Cole (pictured above) acknowl-edged the concerns of trademarkholders, saying: “The IP communityhas insisted that we do a better job ofcompliance and we are doing so.” Hepointed out that last week ICANNissued its first breach notice to a reg-istrar (Red Registrar) for failing toimplement a UDRP decision. Colesaid that he hoped the new gTLD sys-tem will go live in February 2009.

As well as allowing new gTLDs,ICANN plans to introduce new inter-nationalized top-level domains,

which will make it easier for peoplewhose languages use different alpha-bets to use the Internet. The new sys-tem will increase the number of char-acters available to form domainnames from 37 to over 100,000.

Josh Bourne of FairWindsPartners explained that cybersquat-ters make money by maximizingclicks, as each click is worth aroundUS$1.46. He said domains that

exploit well-known trademarks, suchas goole.com and mypsace.com, cangenerate around 10,000 visits amonth, which means “the profitabil-ity is pretty eye-popping.”

One gTLD already approved byICANN is .tel. Representatives of tel-nic, which runs .tel, told the INTADaily News that details of how thesunrise period will work as well aspricing will be announced at theICANN meeting in Paris in June. Thesunrise is slated to open in the fourthquarter of 2008. It will be on a first-come, first-served basis with a valida-tion process and dispute resolutionprocedure.

Dot-tel will provide a simple direc-tory service, which comprises puredata rather than html code, making iteasily accessible using mobile devices.Philip Colebrook, senior vice presi-dent business development and policyfor telnic, said this should reassurebrand owners concerned about cyber-squatting: “We think there will beless exploitation by domainersbecause of the lack of scope for pay-per-click advertising.”

Wednesday, May 21, 2008 www.managingip.com

CONTENTS 2 • CITY GUIDE 8 • PARTY PHOTOS 11 • ANNOUNCEMENTS 12 • SCHEDULE 12

www.inta.org 130TH ANNUAL MEETING, BERLIN

Daily NewsPUBLISHED BY

NEWS:CELEBRATE TRADEMARKS 2

FEATURE:US CASE LAW REVIEWED 4

INTERVIEW:JUDITH ECKL, HUGO BOSS 7

gTLD expansion ahead

A representative of the European Commissionannounced changes to its 2005 proposal onGeographical Indications covering wines and spirits dur-ing yesterday’s Geographical Indications Committeemeeting.

In 2005, the EU submitted a proposal under theDoha Round at the World Trade Organization (WTO)on a multilateral register for GIs, introducing a legallybinding system requiring member states to report theirGIs to the WTO. WTO members would then berequired to block any trademark application that con-tained a registered GI.

But during yesterday’s committee meeting, LucPierre Devigne of the European Commission told mem-bers that the EU now proposes a register in which GIholders can publish their GIs multilaterally for notifi-cation, but would have to go through the national reg-ister of each country to obtain legal protection.However, registering through the WTO would providethe GI holder protection against “negative evidence,”such as having to prove that a mark is not generic.“This way, if someone challenges my GI, they have tobring the evidence against me,” said Devigne.

The WTO has been considering a multilateral registercovering wines and spirits for some time, but the EC’s2005 proposal was bundled with plans to extend GI pro-tection beyond wines and spirits. Devigne did not clarifyduring Tuesday’s meeting whether that would still applyunder the new register.

Lynne Beresford, Commissioner for Trademarks at theUSPTO, also attended the meeting and outlined the USposition on a WTO register for GIs. Beresford said thatthe US scheme would simply provide notice of GIs withno legal effect. Devigne described this as “a system that’sessentially GOOGLE.”

In an effort to break the deadlock on the issue, whichhas been pending since 2001, INTA has devised a pro-posal on a WTO registry for wines and spirits, suggestinga voluntary system for registering GIs (which would beneutrally termed “Domestic Article 23 registers”, afterthe section of TRIPs which relates to the protection ofGIs for wines and spirits) through the WTO or WIPO.

INTA representatives said that the organizationshould have its proposal in writing soon, at which time itwill become subject to comment from the trademarkcommunity.

EU reconsidersposition on GIs

INTA President Rhonda Steele greeted guests at last night’sGovernment Officials Reception.

Berlin could benefit from proposals to intro-duce more gTLDs, as a German company isplanning to apply to launch .berlin onceICANN approves the new gTLD process. Thecompany, formed in 2005 by entrepreneurDirk Krischenowski, is seeking corporatebacking to be one of the first new gTLDs.Markus Bahmann of avocado rechtsanwälte,who is on the Board of .berlin and advisesthe company on legal issues, said it is nowwriting a sunrise policy: “We don’t want tobe pirates.” He added that TLDs such as.berlin are likely to become more popular:“Regionalization of the Internet is going tobe the future.” Other city-based TLDs thathave been proposed include .hamburg,.paris and .nyc.

Page 2: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

Euromoney Institutional Investor PLC

Nestor House, Playhouse YardLondon EC4V 5EX United KingdomTel: +44 20 7779 8682 Fax: +44 20 7779 8500Email: [email protected]

EDITORIAL TEAMEditor James Nurton Reporters Emma Barraclough, Eklavya Gupte,Eileen McDermott and Peter Ollier

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] manager Nicloa PriestTel: +44 20 7779 8682Email: [email protected] America manager Alissa RozenTel: +1 212 224 3673Email: [email protected]

Group publisher Danny WilliamsDirector Christopher Fordham

SUBSCRIPTION HOTLINE UK Tel: +44 20 7779 8999US Tel: +1 212 224 3570

EDITORIAL TEAMEditor James BushPhotography Robert LoScalzoDirector Randi Mustello

BUSINESS DEVELOPMENT TEAMJustin Hajny (Marketing), Paula Lee (Exhibitions & Sponsorship), Peg Reardon (Membership), Jesse Riggle (Design), Matthew C. Schmidt(Communications)Director Daryl G. Grecich

The INTA Daily News is produced by Managing Intellectual Propertyin association with the International Trademark Association. Printedby Möller Druck in Berlin. The INTA Daily News is also available onlineat www.inta.org and www.managingip.com. © EuromoneyInstitutional Investor PLC 2008. 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.

Berlin city guide information © 2008 Time Out Group Ltd,www.timeout.com.

Berlin photos © 2008 Berlin Tourist Information, BerlinTourismus Marketing GmbH, reservation and information +49-30 / 25 00 25; www.visitBerlin.de

Underestimating the importanceof a naming a pharmaceuticalproduct can be dangerous and alot of research should to put intodealing with the regulatoryissues, warned panelists at yester-day’s session on pharmaceuticaltrademarks.

Jerry Phillips from the BrandInstitute, who was responsiblefor developing the methodologythat the Food and DrugAdministration uses in testing allUS proprietary names for safeuse, shared tips on how to antici-pate and avoid refusals of a namein a new drug application.

He outlined some of the mostcommon reasons why names arerefused and explained the valueof providing valid research andinformation in support of a drugname during the ProprietaryTrade Name Reviews.

“One has to be careful of theconfusion caused between otherbrand names and between brand

names and generic names(drugs). Ambiguity in productnames is another commonground on which a refusal isgranted,” he said.

Dorothy Linvill-Neal ofJohnson & Johnson also spokeabout how to navigate the hur-dles of regulatory issues. She saidthat a name should be preparedabout two to three years prior toits proposed launch givingenough time for regulatory bod-ies and the company to reviewthe name. “Maintain open dia-logue with health authorities,”she added.

She stated that according tothe European Medicines Agency,in 2007 81% of rejections werebased on safety concerngrounds, 12% on promotionalmessage criteria and 7% onother public health concernssuch as ambiguity and linguisticreasons.

One of the parameters that

the regulatory authorities haveto keep in mind is that the namecannot be too promotional,fanciful or misleading. “Forexample a name like WUN-DOR or MAGNACEF wouldbe rejected on these grounds,”said Phillips.

He also stressed that foreigntrademarks can be a problem.He gave an example of a USpatient who took the wrongmedication while on holiday inSerbia due to the similaritiesbetween the two drug names.“Soundalikes and lookalikesalso increase the risk of a med-ication error,” he said.

Even simple tips like goingthrough electronic medical data-bases like Micromedex andChemindex are overlooked bybig pharmaceutical companies.Both Phillips and Linvill-Nealeven recommended browsingthrough the proposed name onthe Google search menu.

Academics yesterday addressed thetricky question of how to deal withtrademark parodies at a well-attended session on freedom ofexpression and unfair competition.

The panelists entertained atten-dees with slides showing some con-troversial parodies of well-knownUS brands, including computerstore owner Charles Smith’s char-acterization of US retailer Wal-Mart as Wal-Qaeda andWalocaust. Wal-Mart sued Smithfor trademark infringement and inMarch this year the judge dis-missed the suit. European- styleparodies include the Tanya Grotterbooks—a popular Russian parodyof the Harry Potter series that ledto a lawsuit in the Netherlands.

NEWS

NEWS

Drugs names 2

Happy attorneys 2

Patents meet trademarks 3

Mediation boom 3

FEATURE

US case law review 4-6

INTERVIEW

Judith Eckl, Hugo Boss 7

CITY GUIDE

Berlin: shopping 8

Classified advertising 9-10

Private reception photos 11

Schedule 12

See you in Seattle 2009!

CONTENTS

“I am not the stepchild of patents, I’m a trade-mark attorney!” exclaimed J. Scott Evans ofYahoo! during Tuesday’s spirited session,“Why We Do What We Do?” which high-lighted both the value and charm of trade-mark work.

Moderator Paul McGrady of GreenbergTraurig opened the session by choosing twovolunteers from the audience to participate ina trademark version of the popular 1970sAmerican game show, $10,000 Pyramid, in

which one contestant attempts to guess aseries of words or phrases based on the other’sdescriptions. When contestant number onewas unable to guess the brand DELTA, pan-elists said that the game illustrates howdependent we are on trademarks as sourceindicators.

Gerhard Bauer, INTA Vice President andin-house counsel at Daimler AG, explained tothe audience why INTA “does what it does”each year at the Annual Meeting, whileGraeme Dinwoodie of Chicago-Kent Collegeof Law delivered a multimedia presentationdemonstrating some of the political, socialand socioeconomic relevance of trademarks.

At one point during the session—whichalso included a raffle drawing for the prize ofa remote-control Mercedes car—willing audi-ence members were encouraged to stand upand dance to “Praise You,” by Fatboy Slim.That kind of energy underscores another

popular reason most trademark attorneysseem to love doing what they do. “It’s thepeople,” said McGrady. “We have a reallygood attitude as a Bar. I get to deal withtrademark people all day long, and thatmakes all the difference.”

J. Scott Evans

Hooray for trademarks!

The hurdles of naming a drug

The parodypublicityproblem

The shift to a digital society is “one of the biggest challenges the world of branding has ever faced,” said INTERBRAND CEO RuneGustafson at yesterday’s In-House Counsel Luncheon. Speaking to some 200 attendees, he described how “brands are becoming all-permeating within organizations” and urged brand owners to embrace a collaboration economy, with customers who are mobile andhave partial attention. “How do we engage with these people?” he asked. He illustrated his talk with examples of successful brandssuch as NOKIA, GOOGLE, STARBUCKS, BMW and AMAZON.

Page 3: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

Trademark rights may be just one pieceof a larger IP puzzle when securingbrand protection, said panelists atTuesday’s session on the interplaybetween patent, trademark and copy-right law.

A bottle of TROPICANA orange juiceserved as the test subject for assessing thevarious types of protection brand owners

may want to seek for their products.Panelists concluded that the possible pro-tections to be considered for the productincluded copyright (for the graphics onthe bottle’s label), design patent (for theoverall ornamental design of the bottle),utility patent (for the neck, bottle materi-al and waist) and trademark (for thetrade dress).

However, the extent to which ownersshould be able to combine these rights iscontroversial. For example, if a productformerly covered by a utility or designpatent is eligible for trade dress protec-tion after the patent has expired, “whatis the inventor really giving to the pub-lic?” asked panelist David Young ofGoodwin Procter.

Mediation is set to be a growing trend,according to panelists at a workshop onresolving disputes with ADR, which washeld on Monday.

The panelists said that mediation that ismore cost-effective and easier to arrangethan other forms of ADR, and also pro-vides a practical approach and is moreflexible. It has the added bonus of confi-dentiality.

Gregory Gulia, a mediator from USfirm Duane Morris who was one of thespeakers, said that mediation is “less com-bative than litigation” and it can “do somethings that courts can’t do”.

“It is becoming much more popularespecially in the US. All the mediationsthat I have worked on have been settled,”he added.

Katrina Burchell from Unilever in theUK gave an in-house and European per-spective. She highlighted that the EuropeanCommission is working on a EuropeanUnion Mediation Directive, which willhave a set of uniform tools that will adviseparties on how to make the most of medi-ation. However, she noted that mediationhas yet to take off in other parts of theworld, such as eastern Europe and theMiddle East.

Burchell added that the UK IntellectualProperty Office has started providingmediation services in some areas and isexpecting more interest.

José Barreda from Peruvian firmBarreda Moller said that mediation is notyet that popular in the Latin Americancountries as it is not encouraged by thejudicial authorities and has no constitu-tional support, but that does not mean thatit does not take place. “While a decision inarbitration is enforceable such as a courtdecision, mediation is treated as any othertransactional agreement,” he said.

www.managingip.comINTA Daily News – Wednesday, May 21 2008 3

NEWS

Mediation gains popularity

When IP rights collide

The European Commission will launch a China IPRSME Helpdesk this week. The Helpdesk aims tosupport small and medium-sized enterprises inthe EU in protecting and enforcing IP rights inChina and will provide information, training andadvice. It will be launched in Brussels with atraining workshop on Friday May 23, which willprovide an overview of IP rights, as well asknowledge about the IP risks of doing business inChina and how to enforce rights in China.

EU China Helpdeskto open

Page 4: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

In today’s session CW02 on US case law, Ted Davis ofKilpatrick Stockton and Jordan Weinstein of OblonSpivak McClelland, Maier & Neustadt, editors of theINTA publication The Trademark Reporter, will

review some of the most noteworthy cases of 2006 and2007 and explain their implications.

Fame and foreign marksIn one recent case that could have far-reaching effects onthe doctrine of famous marks, the US Court of Appeals forthe Second Circuit upheld summary judgment for thedefendant on the basis of an Indian restaurant owner’snon-use of its mark for restaurant services in the US.

The case, ITC Limited v. Punchgini, stems from a disputebetween Indian conglomerate ITC and owner of New York’sBukhara Grill restaurants, Punchgini. ITC accusedPunchgini of unfairly adopting the name of its own well-known restaurant, Bukhara, in New Delhi, and in 2003,sued Punchgini for trademark infringement and unfair com-petition under New York state law, alleging that the NewYork Bukhara Grill owners—some of whom were former

employees of the New Delhi Bukhara—had deliberately copied the name andtrade dress of its Indian restaurants.

A district court granted and theSecond Circuit affirmed the defen-dant’s request for summary judgmenton the basis of ITC’s non-use of theBUKHARA mark for restaurant serv-ices in the US. The Court also rejectedITC’s claim of unfair competitionbecause it relied on the “famousmarks” doctrine, which has not yetbeen adopted into US federal law.

Although the Court said that ITC’sfederal claim of unfair competition wasunsupported, it asked the New York Court of Appeals toanswer two questions in order to determine whether NewYork common law might support an unfair competitionclaim. First, the court asked whether New York common lawpermits the owner of a federal mark or trade dress to assertproperty rights by virtue of the owner’s prior use of the mark

or dress in a foreign country.Second, it asked how famous a for-eign mark must be to permit theowner of a foreign mark to bring aclaim for unfair competition.

Although the New York courtanswered the first question affir-

matively, it went on to say that “it did not recognize thefamous marks doctrine as an independent theory of liabil-ity under state law” and concluded that “if a foreign plain-tiff has no goodwill in this state to appropriate, there canbe no viable claim for unfair competition under a theory ofmisappropriation.”

Both the district court and the Second Circuit foundthat ITC had presented sufficient evidence of deliberatecopying, but neither court found any evidence that ITC’smark had acquired secondary meaning in New York.

In its decision, the Second Circuit said: “More thancopying is necessary for a famous foreign mark holder topursue a state law claim for unfair competition. That for-

From fame to fraud in the USA session today will review the most important US cases of the past year. Eileen McDermott previews some of the topics thatwill be discussed.

Today’s session on recent US trademark cases will focus on the most sig-nificant issues to make it to the TTAB and the courts since last year’sAnnual Meeting. The past year has seen the courts address a range of top-ics such as what constitutes use in commerce; the parody defense to dilu-tion claims; the registration of marks incorporating generic terms; andfraud at the TTAB. Today’s speakers tell the INTA Daily News why the

selected cases are important, what lessons can be learned and why—in some cases—theybelieve the courts have it wrong.

One-minute read

www.managingip.comINTA Daily News – Wednesday, May 21 20084

FEATURE: US CASES

“There’s a legitimate split between theSecond and Ninth circuits on the issue offamous marks”

Page 5: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500
Page 6: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

eign holder must further offer evidence that the defendant’spotential customers ‘primarily associate’ the mark with theforeign holder.”

In 2007, the US Supreme Court denied ITC’s requestthat it hear an appeal from the Second Circuit’s decision,and Ted Davis says that the case isn’t likely to make it tothe highest court anytime soon: “The only thing the NewYork Court of Appeals did was to articulate state law, andthe Supreme Court won’t opine on a question of statelaw,” says Davis. “I do believe there’s a legitimate splitbetween the Second and Ninth circuits on the issue offamous marks though, so a future litigant might be able toappeal to the Supreme Court.”

Dog toys and dilutionThe issue of dilution made headlines last year as well, whenthe Court of Appeals for the Fourth Circuit ruled that a lineof dog toys called Chewy Vuiton did not dilute LVMH’sfamous LOUIS VUITTON mark. In that case,

the court upheld a district court decision by rejecting claimsfrom LVMH that the toys infringed its rights and diluted itstrademark under the Trademark Dilution Revision Act of2006 (TDRA). Instead, the Court agreed with the lowercourt that Haute Diggity Dog’s dog toys were successfulparodies of LVMH’s handbags and trademarks.

“In short, the dog toy is a small, plush imitation of anLVM handbag carried by women, which invokes the

marks and design of the handbag, albeit irreverently andincompletely. No one can doubt that LVM handbags arethe target of the imitation by Haute Diggity Dog’s ‘ChewyVuiton’ dog toys,” wrote Judge Niemeyer in the ruling.

The US federal dilution statute suggests that if you are aclaimed parodist, you may be immune from liability, unlessyou’re using what is being challenged as a trademark. ButDavis says that the parody rule should not have been appliedin this case. “Chewy Vuiton was using the line as a trade-mark,” says Davis. “They even tried to register it—[Chewy]shouldn’t have been let off the hook.” He adds that the courtagreed with this sentiment in a sense, but chose to consider theparody defense nonetheless in determining whether or notdilution had occurred. “The upshot is that the Fourth Circuitreally gutted the section of the Lanham Act dealing with thisissue to excuse parody in a way that Congress did notintend,” says Davis, who nominates Louis Vuitton Malletierv. Haute Diggity Dog as “worst decision of the year.” ■

www.managingip.comINTA Daily News – Wednesday, May 21 20086

FEATURE: US CASES

At the TTAB, issues such as generic marks andfraud cases topped the list of hot topics this pastyear. In one case, In re Pennington Seed, Inc., asupplier of grass seed sought to register the nameREBEL—which is also the name for a variety ofplant—as a trademark, but was denied by both theBoard and the Federal Circuit on the ground ofgenericness, since those in the trade “need to call[a plant] by the name that it is known or otherwiseconsumers will not know what they are buying.”Such decisions suggest a trend at both the TTABand in the courts to find claimed marks generic.Other terms rejected on this ground over the lastyear include “brick oven” for pizza, the url“lawyers.com” and “nutritional bulletin” for a web-site that provides health and diet information.

Finally, TTAB cases involving fraud claims con-tinue to signal the need for both foreign and USapplicants to increase the scrutiny of informationprovided in submissions to the USPTO. In HurleyInt’l LLC v. Volta, for instance, the Board grantedsummary judgment on the ground of fraud,despite the foreign applicants’ claims that theymisunderstood the requirements of Section 1(a),did not understand the legal meaning of “use incommerce,” and “honestly believed that their own-ership of the same mark in Australia and their usein commerce of such mark in Australia justifiedtheir Section 1(a) filing in the U.S.” Such decisionshave caused Ted Davis to characterize the Board’srecent approach to fraud claims as “increasinglydraconian.”

Trends at the TTAB

“The Fourth Circuitreally gutted the section of theLanham Act dealingwith this issue toexcuse parody in away that Congressdid not intend”

Page 7: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

How long have you been with the company?I have been at Hugo Boss since 2000. This was right afterthe relevant law exams in Germany. In 2005, I was pro-moted to general counsel. This is not an ordinary lawyer’sjob as you are facing every day new matters to look intoand the diversity is enormous.

Tell me a little about the history of the brand.The company was established in the 1920s in Metzingen,Germany by the founder Ferdinand Hugo Boss. In the late1960s and early 1970s the grandchildren of the founderjoined the company and gave it a new impulse. In 1970they started to export the collections to Austria,Switzerland and Great Britain. The company at that timeproduced only menswear collections under the brandBOSS HUGO BOSS. In 1985 the company was trans-formed into a public company and the distribution net-work was broadened to a worldwide system. In 1993 thefirst collection under the brand HUGO HUGO BOSS wasintroduced. Womenswear collections were presented underHUGO HUGO BOSS for the first time in 1998and under BOSS HUGO BOSS in 2000. In 2006BOSS HUGO BOSS introduced the premium lineBOSS SELECTION for men.

How has the brand changed since you’ve beenthere?There have been some changes since I started.The appearance of the brand BOSS HUGO BOSShas changed as it has been focused on the linesBOSS SELECTION, BOSS BLACK, BOSSORANGE and BOSS GREEN. The brand HUGOHUGO BOSS is a completely separate brand.Counterfeits and trademark oppositionsincreased in the last few years mainly for thetrademark BOSS. Furthermore the trademarkportfolio itself had to be protected and carefullyreviewed under all the new possibilities, forexample EU registered designs. One of the chal-lenges is the protection of the trademarks BOSSor HUGO as the word HUGO is a first name inSpanish and BOSS means chief or director, so thesingle words make it difficult to register. But nev-ertheless BOSS is recognized as a famous trade-mark in class 25 in China.

What are the strengths and weaknesses of thebrand?The strength lies in our collection and its diversi-ty and quality. I really think the products are ourstrength. Everybody can find something to wear

under the HUGO BOSS brands. From a legal point of viewthe weakness might be as described before that BOSS as atrademark is not the easiest one to protect.

How many trademark registrations do you have?It depends how you count the International and Europeanregistrations. All in all we have approximately 16,900trademarks registered.

How many countries do you protect the trademarks in?We protect our trademarks all over the world; whereverit is possible we file registrations. Most of our budgethas been spent in the last two years to renew all ourtrademark registrations as we registered our marks real-ly long ago. The last exotic registration I had on my deskwas for Myanmar.

Do you use design rights to protect brands, packaging etc?Yes, we do use design rights, mainly for our leatherproducts such as bags or wallets and shoes. This is hav-

ing an impact and we can see the success, espe-cially for the creative department, as they seethat the value of their work is not being under-estimated.

What has been the most challenging aspect inmaintaining your band in today’s global environ-ment?The most challenging aspect for sure is ourwork against counterfeiters especially in Chinaand Asia. We are focusing on this region as wewant to stop the production of the counterfeitsby carrying out private investigations in facto-ries to track down the sources. Especially jeans,shirts, ties and wallets are copied. Besides thiswe have applications for seizures with nearly allCustoms worldwide. The number of seizures atthe Customs has been increasing as Customs isreally alert when it comes to counterfeits.Another challenge is to renew and protect thetrademark portfolio.

What do you like most about working in trade-marks?That is a good question. I like the fact that youcan play a proactive role as an in-house lawyer,as you have a chance to work closely with thecreative department and you see from a veryearly point how the trademark is developing.Without the trademark you cannot sell theproducts so well. ■

www.managingip.comINTA Daily News – Wednesday, May 21 2008 7

INTERVIEW: JUDITH ECKL

Showing counterfeiters who’s BOSSHugo Boss is one of the world’s biggest and most innovative fashion houses. Eklavya Gupte talks to the company’s generalcounsel Judith Eckl about what it takes to protect such a powerful brand.

All the clothing brands use the trademarks in certain variations. Behind every line lies a cer-tain philosophy.

BOSS SELECTION: a premium part of BOSSmenswear and also includes accessories. It is posi-tioned in the upper market segment; the luxuriousBOSS SELECTION menswear line represents the pre-mium world in the BOSS brand universe. BOSS BLACK: The womenswear and menswearcollections offer versatile fashion ranges with arich array of elegant modern classics in business,leisure and formalwear.

BOSS ORANGE: This collection offers leisurewearfor men and women who enjoy dressing in styleand sporting surprising looks.

BOSS GREEN: BOSS GREEN presents golf andsportswear for men and bridges the gap betweenfashionable sports apparel and sportswear fash-ion.

HUGO: HUGO delivers unconventional looks formen and women: clothes that are progressive yetnot overstated. It launched a special womenswearcollection in 1998.

HUGO BOSS’s five collections

Page 8: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

www.managingip.comINTA Daily News – Wednesday, May 21 20088

Absinth Depot BerlinWeinmeisterstrasse 4, Mitte (030281 6789, www.erstesabsinthdepotberlin.de). Potent absinthes, mainly from westernEurope (no Czech stuff), line the walls of thisfascinating shop. The smiling owner, MrHermann Plöckl, may invite you for a tastingsession and history lesson. Apart from thethe normal-sized containers, there are alsoboutique bottles that can be consumed at thecounter or at a tall table in the middle of theshop.

Another CountryRiemannstrasse 7, Kreuzberg (030694 011 60, www.anothercountry.de). These capacious, welcoming premises housean ambitious bookshop and private librarystocked with over 10,000 English-languagetitles, including many science-fiction titles,from the collection of British owner AlanRaphaeline. A small membership fee allowsyou to use the reading room downstairs andhelp yourself to tea and coffee, or borrowbooks for varying fees. You can return themto recoup a deposit, but you can also hang onto the book. Every Tuesday at 8pm, there’s afilm club; Thursday is TV night, and dinner isserved on Fridays at 9pm.

Berlin Story Unter den Linden 26, Mitte (030 2045 38 42, www.berlinstory.de). You won’t find a better stock of Berlin-relatedbooks in German and English than this collec-tion, which contains everything from novelswith Berlin settings to non-fiction volumes on

history and culture. The store also scoreshighly on the unusual souvenir front: thereare historical maps, posters, videos, CDs andpostcards and souvenirs, plus a big selectionof toy Trabbies and mounted Wall chunks totake home.

Dussmann dasKulturKaufhausFriedrichstrasse 90, Mitte (030 20250, www.kulturkaufhaus.de). As the name suggests, the idea behindDussmann das KulturKaufhaus is that itshould be more than just a place to buythings. It aims to serve as a ‘cultural depart-ment store’, a concept that translates into aspacious four-floor building that mixes booksand magazines with CDs and DVDs, alongsideInternet terminals and an interactive video-

viewing room.

GaleriesLafayetteFranzösische Strasse23, Mitte (030 20 9480, www.galeries-lafayette.de). This Jean Nouvel-designedglass block houses arefreshing shopping expe-rience: great clothes, fre-quent sales on the upperfloors, and a good selec-tion of accessories andcosmetics at street level.Best of all, though, is thebasement food hall-you’llfeel transported to Paris

among the arrays of fresh cheeses, chocolates,wines, breads and condiments.

KaDeWeTauentzienstrasse 21-4, Schöneberg(030 212 10, www.kadewe.de). The largest department store in continentalEurope celebrated its 100th birthday in 2007.Although the range of merchandise is a bit hit-or-miss, the store does carry name brands inall departments. KaDeWe is most famous forits lavish food hall, which takes up the entiresixth floor: the delicatessen is known for itsspecialities, the gourmet bars offer everythingfrom oysters and champagne to beer andsmoked sausage, and phone orders are evenaccepted for more outré items (030 212 11700). Outside of that enclave of gastronomy,the first floor is devoted to men’s fashion, thesecond storey to womenswear, the third floorto children, the fourth level to homewares andthe fifth storey to entertainment, mainly of theelectronic variety. If you can’t find it here, youprobably can’t find it anywhere.

Skoda LevelLinienstrasse 156, Mitte (030 2807211, www.claudiaskoda.com). Claudia Skoda opened her first store in NewYork in 1981, but she returned to her hometown when the Wall came down. Now Berlin’smost established womenswear designer, she’s

extended her range to include men – designsfor both sexes are showcased in this loftspace. Using high-tech yarns and innovativeknitting techniques, the collections bear hersignature combination of stretch fabrics andgraceful drape effects.

StilwerkKantstrasse 17, Charlottenburg (03031 51 50, www.stilwerk.de). This huge, glassy haven of good taste wasopened in 1999 as a theme mall for high-endproducts, and continues to anchor theKantstrasse area. The list of more than 50retailers stretches from allmilmö-zeyko tozene; apart from displaying a distressingaversion to capital letters, they also selleverything you might need to furnish yourown grand design. There are modern furnish-ings, state-of-the-art kitchens, high-tech light-ing and luxurious bathroom fittings among avast assortment of interior items by everymajor player from Alessi to Zanussi. And toreally set your home apart from the crowd,there’s also a fourth-floor showcase for thework of local craftspeople and designers.

Whisky & CigarsSophienstrasse 23, Mitte (030 2820376, www.whisky-cigars.de). Two friends with a love of single malts arebehind this shop, which stocks some 450whiskies alongside cigars from Cuba, Jamaicaand Honduras. The shop holds regular tastingand smoking evenings, and will deliver.Should whisky not be your tipple of choice,fine rums and cognacs are also available.

Yoshiharu ItoWielandstrasse 31, Charlottenburg(030 440 444 90,www.itofashion.com). Tokyo-born Ito’s showroom offers his puristcollections for men, which are in the traditionof Asian designers such as Yamamoto butwhich also carry strong European influences.His styles are practical: his great attention todetail includes perfectly worked pockets andseams in unusual places. With a nod to theavant-garde, Ito mixes a futuristic style withclassic wool or lacquered cotton to create funand wearable clothes.

CITY GUIDE: SHOPS

Adapted with permission from the Time OutBerlin Shortlist £6.99 available for online purchase at www.timeout.com/shop

© Time Out Group Ltd 2008

Galeries Lafayette Photo: © www.visitBerlin.de

KaDeWe Photo: © www.visitBerlin.de

BERLIN: SHOPS

Page 9: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

www.managingip.comINTA Daily News – Wednesday, May 21 2008 9

CLASSIFIED

We Provide Solutions on Demands.LIU LEE & ASSOCIATES

Patent & Trademark Attorneys

The New Leader in China IP ServiceSuite 25A01, 25/F., Hanwei Plaza Telephone: (86) 10 6561 00487 Guanghua Road, Beijing 100004, China Fax: (86) 10 6561 0646http://www.iplaw.cn Email: [email protected]

Providing pragmatic and global solutions since 1978

Our Intellectual Property service includes:

• Trademarks, designs and patents• Opposition and cancellation proceedings• Intellectual property rights protection• Arranging customs seizures and enforcement

Contacts

Angus ForsythTel: (852) 2533 2543 Email: [email protected]

Lai LamTel: (852) 2533 2545 Email: [email protected]

Head Office: 4/F & 5/F, Central Tower, No.28 Queen’s RoadCentral, Hong Kong

China Office: Suite 1704, Citic Plaza, 233 Tian He N. Road,Guangzhou 510613, China

www.sw-hk.com

1425 K Street N.W.; Suite 800, Washington, D.C. 20005Phone: 202-783-6040 Fax: 202-783-6031 Email: [email protected]

Patent, Trademark, Trade Dress, Copyright, Licensing, Unfair Competition,Intellectual Property Litigation, Searches & Counseling

Offices in COLOMBIA, VENEZUELA and PANAMA

Practice Areas: Intellectual Property, Franchise and

License Agreements, Unfair Competitionand Anti-Trust Law, Litigation

Other Legal ServicesHealth Registers, Litigation

Headquarters: Calle 64 3-41, Bogotá, Colombia Tel: (571) 2481211; Fax: (571) 4818304 www.iurismark.com Main contact: Diego MunozEmail: [email protected]

Your Associate from MYANMAR (Burma)

U MYINT LWIN LAW OFFICEAdvocate, Trademark Agent & Shipping

No.162, 1st Floor, 35th Street Tel 95 1 371 990 95 1 372 712Kyauktada, Yangon, Myanmar Fax 95 1 296 848 95 1 371 990P.O. Box 1126 Mobile 95 9 500 1976www.mipadvocate.com Email [email protected]

Times change – brand remains

since 1922Sojuzpatent offers the full range of services in all aspects of Intellectual Property

legal protection in Russia and abroad.13, Bldg. 5 Myasnitskaya Str., 101990 Moscow, Russia.Tel. +7 (495) 221-88-80/81 Fax. +7 (495) 221-88-85/86

www.sojuzpatent.com [email protected]

Page 10: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

www.managingip.comINTA Daily News – Wednesday, May 21 200810

CLASSIFIED

STUDIO TORTAJORIO, PRATO, BOGGIO & PartnersEuropean and Italian Patent AttorneysCommunity and Italian Trademark and Design Attorneys

Head Office: Via Viotti 9 – 10121 TORINO – ITALYE-mail: [email protected] Internet: http://www.studiotorta.comEstablished in 1879

Is your trademark

available in the EU?

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Check our websitewww.multisearch.info

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Knijff Trademark Attorneys,The Netherlands+31 294 490900

www.knijff.com

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

1st Floor, 77 Awolowo Road S W Ikoyi, Lagos, Nigeria Tel: 234 1 461 3120; 234 1 461 3121; 234 1 2707345 Fax: 234 1 4614003

E-mail: [email protected]; [email protected] Contacts: Lara Kayode, Funke Beecroft

www.okayode.com

DE SOLA PATE & BROWNAttorneys & Counselors

Caracas, Venezuela

Intellectual property attorneys specializing in trademarks, patents,copyrights, foreign investment, technology licensing, franchising,

trademark litigation and unfair competition.

Contact:Irene De Sola ([email protected]) and/orRichard N. Brown ([email protected])

[email protected]. 58-212-7939898Fax. 58-212-7939403

De Sola Pate & Brown Attorneys & CounselorsTorre Domus, 16th FloorAv. Abraham LincolnSabana GrandeCaracas, Venezuela

Est. 1944 “Global Experience

brought to Venezuela”

FREE WEB SEMINARGlobal Anti-Counterfeiting Strategies: Tackling Trans-shipment

Issues Using Customs and Other Enforcement TechniquesDate: June 19th, 2008 Time: 12 noon (EDT) / 9 am (PDT) / 5 pm (BST)

SPONSORS:

Page 11: JUDITH ECKL, 2 HUGO BOSS Daily News …Euromoney Institutional Investor PLC Nestor House, Playhouse Yard London EC4V 5EX United Kingdom Tel: +44 20 7779 8682 Fax: +44 20 7779 8500

Alvarez Delucio & Associatesreceived guests with typical Mexican

food and a live mariachi band at their hos-pitality suite.

Brooks Kushman hosted a receptionat Josty café where guests raved

about the drinks (margaritas and caipirin-has) and gourmet chocolate-covered fruits.

Maple syrup and blue-colored cock-tails were some of the attractions at

Miller Thomson LLP’s reception. Arochi Marroquin & Lindner hostedan orange wave party on Monday at

the Grand Hyatt Berlin, featuring Mexicantequila, Latin music and dancing.

German firm Heuking Kühn LüerWojtek held a reception in the

famous Kaisersaal Berlin on Monday night.DadaPro held a reception, whichincluded a buffet featuring special-

ties from around the world, in the atriumof the Berlin Radisson SAS hotel.

Trademark bloggers migrated fromthe Internet to the real world at the

annual Meet the Bloggers session, held atOne Potsdamer Platz on Monday night.

Bircham Dyson Bell LLP and NelliganO’Brien Payne, in association with

Christodoulos G. Vassiliades & Co. and PPR& Partner, hosted a reception at the 40Seconds terrace bar on Monday evening.

Greenberg Traurig and Olswang’scarnival-themed reception was held

in the DomLounge at the Radisson SAS

hotel overlooking the spectacularBerliner Dom.

CT Corsearch’s reception at Matrixon Monday was filled with guests

who enjoyed a live rock band and partiedlate into the night.

Guests enjoyed live soulful musicand danced the night away at DLA

Piper’s party at Felix restaurant onMonday night.

The Novagraaf reception took placeat the East German icon Kino

International where guests were serenad-ed by a Frank Sinatra impersonator.

Thomson CompuMark’s receptionwas held in the art deco surround-

ings of the Palais Am Funkturm. A jazzband and a fine array of international foodgreeted guests as they arrived.

World Trademark Review celebratedthe achievements of in-house coun-

sel at their Industry Awards 2008.The Reed Smith party embraced alegal theme and was held in the

atrium of the Antsgericht Mitte, Berlin’sbeautiful central courthouse.

Guests lined up to attend the SoeiJapan-themed cocktail featuring

sushi, and were greeted by members ofthe firm dressed in traditional happi garb.

Duane Morris hosted a cocktail inthe German Museum of Technology

where partner Greg Gulia performed somejazz tunes.

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Today’s Schedule: Wednesday, May 21, 2008All Events take place at the Internationales Congress Centrum (ICC) unless otherwise indicated.

7:30 am – 2:00 pm REGISTRATION Entrance Lobby

7:30 am – 2:00 pm HOSPITALITY Hall 14.2/15.2 & Hall 15

8:00 am – 10:00 am BREAKFAST TABLE TOPICS Roof Garden Lobby

8:00 am – 10:00 am PDA Executive Council (Chairs and Vice Chairs Only) Room 42

8:30 am – 10:00 am EIS Executive Council (Chairs and Vice Chairs Only) Hall 7

10:00 am – 2:00 pm EXHIBITION HALL Halls 15 – 17

10:15 am – 11:30 am CONCURRENT SESSIONS

CW01 Southeast Asia: Harmonization and Emerging Issues in Trademark Law Hall 3

CW02 Annual Review of U.S. Federal Case Law and TTAB Developments Hall 2

11:45 am – 1:00 pm CONCURRENT SESSIONS

CW03 CTM: The Charm—and the Crux—of Pan-European Protection Hall 3

CW04 Ethics for the Trademark Professional Hall 2

WW01 Taxes and Trademarks: Structuring Global IP Ownership Hall 4/5

1:15 pm – 3:15 pm LUNCHEON TABLE TOPICS Roof Garden Lobby

7:00 pm – 11:00 pm GRAND FINALE: Kulturbrauerei Shuttles will run from and to selected hotels beginning at 6:15 pm. Please pick up a shuttle

schedule from the Registration Desk in the ICC. Be sure to bring a sweater to the Grand Finale, as the event will be partially

outdoors. The Kulturbrauerei is at Schönhauser Allee 36 (U2 to Eberswalder Strasse).

As an INTAAnnual Meetingattendee, SAVE15% on a newManaging IP subscription

Visit us at booth #100

At the INTA Gala on Saturday night, Association PresidentRhonda Steele recognized 2008 Pattishall Medal winnerGraeme B. Dinwoodie. Dinwoodie is Professor of Law,Associate Dean and Director of the Program in IntellectualProperty Law at Chicago-Kent College of Law in the UnitedStates. He also holds a Chair in Intellectual Property Law atthe University of London, Queen Mary College.

The Pattishall Medal for Teaching Excellence wasestablished in tribute to Beverly W. Pattishall, a long-timepartner in the firm of Pattishall,McAuliffe, Newbury, Hilliard &Geraldson LLP, to recognize educa-tors in the business and legalfields for outstanding instructionin the trademark and trade identityfield. Funding for the PattishallMedal is provided by Pattishall,McAuliffe, Newbury, Hilliard &Geraldson LLP.

Visit INTA’s Anticounterfeiting Exhibit in Hall 16 to learn more about anticounter-feiting initiatives.Today’s Speakers:11:00 am Mike Margain, Senior Attorney–Arochi, Marroquin & Lindner S.C. (Mexico)

12:00 pm Faisal Daudpota, Associate–Al Tamimi & Co. (United Arab Emirates)

1:30 pm Bruce Longbottom, Associate General Counsel–Eli Lilly and Co. (US)

2008 Pattishall Medal winner honored

INTA Daily News ANNOUNCEMENTS

Professor Dinwoodie spoke at yesterday’s fair use session

Competition resultsQUIZ ANSWERS1) Sir Norman Foster2) Schloss Bellevue/Bellevue Palace3) Tropa de Elite (Elite Squad)

directed by José Padilha4) 19895) Christopher Isherwood

QUIZ WINNER:Amélie Remise, DRSAvocat Berlin, Berlin,Germany

CAPTION WINNER:“Springtime inBerlin”Susan Rector,Schottenstein Zox &Dunn, Columbus,Ohio, US

TORONTO WINNER:Bret Parker, Wyeth,Madison, NewJersey, US