In This Issue - International Trademark Association

INTABulletin
The Voice of the International Trademark Association
February 15, 2014 Vol. 69 No. 4
AssociationNews
Trademark Office Profile: Tan Yih San, Chief Executive,
Intellectual Property Office of Singapore
Meeting the Demands of a
Booming IP Market
AssociationNews
INTA Weighs In on Implementing Regulations to
China Trademark Law
Chief Executive Tan Yih San tells the INTA
Bulletin what the Intellectual Property Office
of Singapore (IPOS) is doing to meet the
challenges associated with a 30 percent
increase in trademark filings over the last
four years, and how the Office is working with
governments and industry to further establish Singapore as an Asian “IP hub.”
INTA submitted comments on February 7
to China’s State Council Legislative Affairs
Office (SCLAO) congratulating the government
on its third Trademark Law Revision, which
will take effect on May 1, 2014, and offering
recommendations to further clarify its draft
Implementing Regulations for the law. The Association was joined by several other organizations in suggesting improvements that would
provide more certainty for trademark owners.
What do you like most about working in IP?
INTA’s main recommendations include:
IP is the “blue ocean” industry in an increasingly globalized world. With IP, we hope to
empower creators and innovators in businesses as they seek to gain a competitive
edge and venture out into the market. I am
personally thrilled and humbled by the vast
opportunities that we have here at IPOS to
contribute to and be a part of this field.
What are the biggest challenges you face?
Coping with the fast-growing number of applications year on year for the last four years
has proven to be a considerable but happy
challenge. IPOS is committed to delivering
quality and service excellence despite this increase in demand for IP services. The move
• Extending the proposed deadlines for sub-
IPOS Chief Executive Tan Yih San
to expand our team of trademark examiners
and simplify the registration process is a
major undertaking aimed at ensuring greater
efficiency and reducing pendency.
Are there particular changes to the
trademark laws that you would like to see
enacted, and is there any pending IP legislation that might help?
We would do well to render IP legislation
more accessible to business owners as they
move across borders, through harmonization
and simplification of trademark laws.
See “IPOS” on page 3
In This Issue
AssociationNews
Trademark Office Profile: Tan Yih San, Intellectual Property Office of
Singapore
Features
1
INTA and Other IP Associations 1
Comment on Implementing Regulations
to PRC Trademark Law
Welcome New Members
2
Saul Lefkowitz Competitors
Get Grilled
5
Volunteer Spotlight
James Luo
6
Theo Yates
6
Are Registered Trademarks and Designs Immune Against an
Infringement Action? 7
Law&Practice
Brazil9
European Union
9
India
10, 11
Serbia11
Singapore12
United States
13, 14
missions in order to take into consideration
the time burden of the parties.
• Creating greater transparency in the op-
position procedure given recent changes
that have eliminated appeals of a negative
opposition.
• Providing clear definitions for “serious”
infringement for the purposes of administrative fines.
• Providing clear guidelines on determining
“heavier fines” for large-scale or sustained
infringements.
In addition, INTA’s comments encouraged clarifying the Implementing Regulations to more
fully explain how Article 7 of the new Trademark Law Revision, which requires applicants
for trademark registration to abide by the principle of “good faith,” will specifically address
the issue of “bad faith” registrations.
The new law includes a general provision
stating that trademark applications should be
submitted in good faith, and expands upon several provisions relating to bad-faith registration.
These include provisions targeting trademark
agents who act in bad faith and applicants
for marks that are identical or similar to an
existing trademark when the applicant has had
a “prior relationship” to the trademark owner.
However, the Implementing Regulations fail to
See “INTA Comments” on page 5
AssociationNews
Welcome New Members
AAMHAS IP Consultant, Jakarta, Indonesia
Abida IP Consulting, Cheshunt, Herts, UK
Abida IP Consulting Ltd, Royston, UK
ABP Patent Network AG, Zürich, Switzerland
Adrian M Trioli Patent and Trade Mark Attorney,
East Melbourne, VIC, Australia
Advokatfirman ReklamJuridik AB, Stockholm, Sweden
AIP Patent & Law Firm, Seoul, South Korea
Akiyama & Associates, Tokyo, Japan
AKRAN Intellectual Property, Rome, Italy
Alacayir Law Firm, Istanbul, Turkey
Altacit Global, Chennai, India
Ananda Intellectual Property, Bangkok, Thailand
Apisith & Alliance Ltd., Bangkok, Thailand
Ashida & Kimura Patent Attorneys, Tokyo, Japan
Ashurst LLP, Munich, Germany
Asian Pacific International Patent & Trademark Office,
Taipei, Taiwan
Asian Paints Limited, Mumbai, India
Asian Trademark Company, Ahmedabad City,
Gujarat, India
Axis Legal (Australia) Pty. Ltd., Surry Hills, NSW, Australia
INTA Bulletin Committee
To contact the INTA Bulletin Committee,
email [email protected].
Chair
Barbara Sullivan, Henry Hughes
Vice Chair
Liisa Thomas, Winston & Strawn LLP
Co-Chairs, Features Subcommittee
Elizabeth Buckingham, Dorsey &
Whitney
Peter McAleese, Barzano & Zanardo
Co-Chairs, Association News
Subcommittee
Barbara Barron Kelly, Corsearch
Katherine Dimock, Gowling, Lafleur,
Henderson
Co-Chairs, Law & Practice: AsiaPacific Subcommittee
Chetan Chadha, Chadha & Chadha,
An Intellectual Property Law Firm
Bayramoglu Law Offices LLC, Las Vegas, NV, USA
Beijing Golden Bridge IP Agency Co,. Ltd, Beijing, China
Beijing Knowkey Intellectual Property Agency,
Beijing, China
Beijing Yingke (Guangzhou) Law Firm, Guangzhou, China
Beiten Burkhardt Rechtsanwaltsgesellschaft mbH,
Berlin, Germany
Blumenthal Richter & Sumet, Bangkok, Thailand
BPE Solicitors LLP, Cheltenham, UK
BrandIT GmbH, Zürich, Switzerland
Bross & Partners, Hanoi, Vietnam
BSkyB Group plc, Middlesex, UK
Burns IP & Commercial, Melbourne, VIC, Australia
Cabinet Christian Doucet Avocats, Paris, France
Cabinet Fojou, Yaoundé, Cameroon
Cahit Suluk IP Law Firm, Istanbul, Turkey
CAPRI, Paris, France
Cath Kidston Limited, London, UK
China IPwell International Law Firm, Shanghai, China
Clairvolex Knowledge Processes Pvt. Ltd.,
Gurgaon, Haryana, India
Cloudigy Law PLLC, Mclean, VA, USA
Co-Chairs, Law & Practice: Europe &
Central Asia Subcommittee
Mary Bleahene, FRKelly
INTA Bulletin Staff
Thomas Mudd, Zeiner & Zeiner
Director, Legal Resources &
Communications
James F. Bush
Co-Chairs, Law & Practice:
Latin America & the Caribbean
Subcommittee
Martín Chajchir, Marval, O’Farrell
& Mairal
Carlos Corrales-Azuola,
Corrales Core IP
Chair, Law & Practice: Middle East &
Africa Subcommittee
Ghaida Ala’Eddein, Saba & Co. IP
Co-Chairs, Law & Practice: United
States & Canada Subcommittee
Robert Felber, Waller, Lansden,
Dortch & Davis
Clyde & Co., Riyadh, Saudi Arabia
Clyde & Co., Dar es Salaam, Tanzania
CMS Hasche Sigle, Berlin, Germany
Colin Ng & Partners LLP, Singapore
Conkle & Olesten, Los Angeles, CA, USA
Dai Tin & Associates Co. Ltd., Hanoi, Vietnam
De Gaspari Osgnach S.r.l., Padova, Italy
De Justo Legal, Madrid, Spain
Delicato Vineyards, Napa, CA, USA
Diaz Reus & Targ, LLP, Miami, FL, USA
Dipcon AB, Jonsered, Sweden
Dittmar & Indrenius, Attorneys Ltd, Helsinki, Finland
ECCO Sko A/S, Bredebro, Denmark
Eliezri Intellectual Property, Tel Aviv, Israel
Escano Sarmiento & Partners Law Offices,
Pasig City, Philippines
Evergreen Valley Law Group, San Jose, CA, USA
Ezratty-Farhi Law Firm, Bnei Brak, Israel
f & e patent, Bergisch Gladbach, Germany
Ferguson Enterprises, Inc., Newport News, VA, USA
Fir Hill Consulting, Hampshire, UK
Fiskars Corporation, Helsinki, Finland
Chief Executive Officer
Etienne Sanz de Acedo
Managing Editor, News & Policy
Eileen McDermott
Associate Editor, INTA Bulletin
Joel L. Bromberg
Designer
Eric Mehlenbeck
INTA Officers & Counsel
President
Mei-lan Stark, Fox Entertainment Group
President Elect
J. Scott Evans, Adobe Systems
Incorporated
Vice President
Gabrielle Olsson Skalin, Inter
IKEA Holding Services S.A.
Treasurer
Joseph Ferretti, PepsiCo, Inc./
Frito-Lay, Inc.
Secretary
Ronald Van Tuijl, JT International S.A.
Counsel
David Fleming, Brinks Gilson & Lione
Catherine Hoffman, Mayback &
Hoffman
Joseph Yang, Lee and Li,
Attorneys at Law
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
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of copies or viewers to [email protected]. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.
© 2014 International Trademark Association
2 February 15, 2014 Vol. 69 No. 4
AssociationNews
Trademark Office Profile: Intellectual Property Office of Singapore Continued from page 1
One problem my colleagues are trying to
solve is in the area of smell marks, which
face challenges in meeting the requirement
of graphic representation. For a smell mark to
be deemed acceptable for examination, the
applicant must be able to represent the scent
visually. It is difficult to accept applications
where consistent, non-arbitrary and meaningful graphic representations of the marks
cannot be produced. IPOS believes that the
use of digital scent technology to create a digital representation of a smell may be a useful
consideration in the steps toward resolving this
issue. The idea is still in the formative stages,
and legislation may have to be amended when
a viable solution is found.
What steps has the government taken in recent
years to improve IP protection?
Improving IP protection is an ongoing effort.
International surveys have ranked Singapore’s
IP regime as one of the best in the world.
Singapore is ranked second in the world and
top in Asia for having the best IP protection in
the World Economic Forum’s Global Competitiveness Report 2013/14. The Political &
Economic Risk Consultancy Report 2011 had
similarly ranked Singapore top in Asia for our
IP protection efforts. This business-friendly IP
regime has bolstered the confidence of local
and international companies, including RollsRoyce, Procter & Gamble, Bayer, Nestlé, 3M
and DHL, to choose Singapore as a location for
investment in business and R&D.
IPOS at-a-Glance
To further boost IP protection efforts, Singapore convened an IP Steering Committee,
chaired by Mr. Teo Ming Kian, Chairman of MediaCorp Pte. Ltd., to formulate plans to guide
our IP developments. The committee has since
consulted more than 200 IP professionals
from more than 100 local and foreign companies and organizations in our quest to build a
better IP regime for Singapore.
Singapore is also developing IP dispute resolution capabilities, so that IP disputes can be
brought here for expeditious and effective resolution through litigation or alternative dispute
resolution. To encourage the use of mediation,
IPOS is working with WIPO’s Arbitration and
Mediation Center to facilitate resolution of
disputes arising from IPOS proceedings. The
program has been a great success since its
introduction in 2012.
What kinds of trends have you noticed
in filings recently?
There has been a healthy increase in the number of trademark filings over the years, with
applications (by class) rising to a new record
of 39,671 in 2013 from a total of 30,481 in
2010. This translates to a 30 percent increase
over the last four years.
What are the reasons for that trend, in
your opinion?
The surge in trademark filings signals a healthy
confidence within the business sector in
Madrid Member? Yes.
Year of Accession: Madrid Protocol entered
into force on October 31, 2000.
Number of Madrid Filings, 2013
Official Name: Intellectual Property Office of
Singapore (IPOS)
Name of Head: Tan Yih San
Official Title: Chief Executive
Appointed: June 1, 2011
Location: Manulife Centre, Singapore
Position Within the Government: IPOS is a
Statutory Board under the Ministry of Law.
In 2013, 221 international applications
were filed through Singapore as the office of
origin. The number of International Registrations designating Singapore in 2013 was
8,864 applications (18,799 total classes),
an increase of ca. 19% from 2012 (total
classes increased ca. 20%).
Can nontraditional marks be registered? Yes.
There were 180 applications for registration
of nontraditional marks filed in 2013, which
is almost a sixfold increase from 2012.
Which categories of nontraditional marks have
been applied for? There were 75 color marks,
100 three-dimensional shape marks or
Singapore’s growing importance as a business
market. Companies recognize the value that
trademark protection can provide, which includes market share, licensing and franchising
value, and even sales value.
Can you discuss any partnerships or events
you’re involved with to help increase awareness
about IP rights?
IPOS is actively involved in the ASEAN Working
Group on IP Cooperation (AWGIPC), which aims
to drive the development of a business-friendly
IP regime in the ASEAN region. Singapore
believes that adopting a cooperative stance
among the ASEAN nations by leveraging each
one’s strengths and experiences will help to
bolster the international IP regime as a whole
while still respecting their diversity. Singapore
is currently the chair of this collaborative
committee, which involves all 10 heads of IP
offices in the ASEAN region.
IPOS also works closely with WIPO on various
IP initiatives, such as the enhancement of IP
dispute-resolution capabilities and the running
of regular workshops on IP systems and procedures to increase awareness about IP. Recent
workshops include those on the Madrid and
Hague systems, as well as one for regional
journalists for the purpose of raising awareness on IP and its attendant issues in the
media. IPOS will continue to work closely with
WIPO to plan more workshops and initiatives to
See “IPOS” on page 4
aspect-of-packaging marks, 4 sound marks
and 1 movement mark.
Number of Trademark Examiners: As of
Novemer 26, 2013, IPOS had 34 trademark
examiners. The team is currently expanding.
Total Annual Trademark Filings, 2013: 21,245
applications (39,671 total classes).
Does the Office operate under a first-to-use or
a first-to-file system? IPOS operates under
a first-to-file system. Priority is officially
established when the applicant first files for
a trademark application in a country that
is a member of the Paris Convention or the
World Trade Organization. However, Singapore employs a first-to-use rule for obtaining
trademark rights, meaning that the first
person to use a mark in Singapore generally
will have rights over a person who files a
trademark application at a later date.
3
AssociationNews
Trademark Office Profile: Intellectual Property Office of Singapore Continued from page 3
involve more individuals in the IP ecosystem,
such as the creative industries.
To promote IP awareness in Asia, IPOS has
also organized two runs of IP Week @ SG—a
premier annual, IP-centric event and nexus
for IP thought leaders and industry experts to
share and discuss IP trends, information and
updates. The number of local and international
attendees at the recent event in August 2013
tripled from 2012, signifying increased interest
and awareness in IP. During the IP Week 2013
Gala Dinner, IPOS and WIPO inaugurated a
WIPO-IPOS Innovation Award, which recognized top local corporate users of the Madrid
System. A Memorandum of Understanding
(MOU) was forged between IPOS and INTA at
the week-long event to collaboratively further
the development of projects and programs in
the field of trademarks.
Are there any major trademark-related projects
underway within the Office that you would like
to highlight? Specifically, are there any major
technology changes/projects in the works?
IPOS is looking at rolling out an integrated IT
system to streamline and harmonize common
procedures across all registries. The new
system seeks to improve operational efficiency,
maximize turnaround time and provide customer-friendly and value-added services.
What advice or message do you have for trademark owners looking to expand into Singapore?
Singapore provides a robust, efficient, stable
and predictable environment for protection
and exploitation of trademarks. With respect
to enforcement, trademark owners have a
range of remedies to choose from, such as the
common-law doctrine of passing off, obtaining
compensation via civil infringement actions,
or criminal prosecution with the assistance of
the Singapore Police Force. Trademark owners
may also seek border enforcement measures
to prevent the importation of infringing goods.
Who from the Office will be attending the INTA
Annual Meeting in Hong Kong? Why do you think
it is an important event, and what do you hope to
achieve there?
We have been sending a team to participate
in the INTA Annual Meeting since its inception.
This great event provides an excellent platform
for us to meet with our stakeholders across the
world in one single location. We welcome the
meeting in Hong Kong, as it is a recognition of
the increased importance of the Asian market.
We are certain that it will be yet another success, and hope that all our Asian counterparts
will join us there.
■
Maintaining the
Perfect Partnership
Tips to Strengthen Your Partnership with Your Clients
March 4–5 | New York, NY | New York Marriott Marquis
Learn from colleagues and share best practices on how to
maintain the perfect partnership with your existing clients.
Join us in New York City for an intermediate-to-advanced–level program designed as a continuation of the
very popular “Creating the Perfect Partnership Conference” that was previously offered in London and New
York. Numerous in-house and outside practitioners are slated to give attendees guidance and share best
practices to maintain the perfect partnership and keep clients returning for more.
Visit inta.org /perfectpartnership
4 February 15, 2014 Vol. 69 No. 4
AssociationNews
INTA Comments on Implementing Regulations Continued from page 1
address how this good-faith clause will affect
bad-faith registration on a practical level.
The period for public comment on the Implementing Regulations closed on February 10.
INTA looks forward to seeing the final version
of the regulations, and to commenting on the
judicial interpretations of the law, which are
still being drafted. The Association is also
working on comments to China’s Trademark
Review and Adjudication Board rules, which
are due on March 11.
China’s new trademark law is a major step
forward and will help to ensure that trademark owners can effectively enforce and
defend their rights, which will in turn protect
consumers and promote fair and effective
commerce.
■
Saul Lefkowitz Competitors Get Grilled
On Saturday, February 8, law students gathered in courtrooms in Atlanta, Dallas, Chicago,
New York and San Francisco for the regional
round of INTA’s 23rd annual Saul Lefkowitz
Moot Court Competition. The competition provides students with the opportunity to develop
their brief writing and oral advocacy skills
around a mock case.
This particular case was heard before an appellate court, which involves an entirely unique
set of challenges for the students—most notably
a “hot bench” of judges composed of INTA volunteers, who were more than willing to play the
part. The judges helped to impart the “real-life”
experience that law students gain through participation in moot court competitions.
Like real appellate benches, the judges were
quick to interrupt the litigants—even during
their opening remarks—and continuously peppered them with questions to keep them on
their toes. Their questions dug deep, challenging the students to think outside the box and
to consider not only how this case could turn
out in terms of precedent case law, but also
how it could play out in real life.
For example, in the New York courtroom, the
judges raised the issue of social media and
how it is changing the landscape of trademark
law. This caught some students off guard,
teaching them a valuable lesson: while the
litigant’s chief goal is to win the case, the final
decision may have a lasting impact on future
cases, and this is always an important consideration for the court.
After each session, the judges deliberated
and then provided the students with a
personal, individualized critique that covered presentation skills, interaction with the
judges, court procedures and knowledge of
the law. They also shared a wealth of advice—
from performance and delivery tactics to
the importance of “knowing the bench” and
saying only what needs to be said to specific
presentation tips for the appellate court. One
judge even offered tips for how to arrange
case notes on the podium.
The day ended with an awards ceremony at
each of the five regional competitions,where
awards were presented for best brief, best oral
argument, and first, second and third place
overall. INTA congratulates the Regional Award
Winners and thanks all of the students and
INTA members who participated.
The first and second place winners from each
region will meet in Washington, D.C., on March
15 for the National Finals.
Photo: Eric Aguayo (ericaguayophotography.com)
Looking for case summaries and
images from trade dress infringement
decisions in more than 60 countries?
Find it in the Trade Dress Image Library in
INTA’s Global Trademark Research.
Library: http://www.inta.org/TradeDress
5
VolunteerSpotlight
James Luo is the Managing Director of
Lawjay Partners in Beijing, China, where he was
recently named a “Top Ten IP Lawyer in Beijing”
by the Beijing Bar Association. James majored
in English in college, and he holds numerous
advanced degrees in IP law, including an LL.B.
from Renmin University of China and an LL.M.
from King’s College London, the University of
London, where he also served as a visiting
scholar. More recently, in 2004, he did postgraduate research in IP law at Franklin Pierce
Law Center in Concord, New Hampshire, USA.
to RMB 3 million from the previous limit of
RMB 500,000, effective May 2014.
James’s practice involves litigation in several
fields, including trademark, copyright, software
and unfair competition law. His favorite area
of practice, however, is criminal enforcement
against counterfeiters.
James’s favorite trademark is COCA-COLA, /
可口可乐, not just because he likes the way
the beverage tastes but also because “the
Chinese character trademark for Coca-Cola
perfectly matches COCA-COLA phonetically and
implies that the product is good-tasting.”
Active in INTA since 2007, James chaired the
China Subcommittee of INTA’s Anticounterfeiting Committee in 2010–2011. During his tenure James developed many enduring personal
relationships with fellow subcommittee members. In addition to these, he feels that the
most important and most gratifying aspect of
his committee work with INTA was the securing
of an amendment of China’s Trademark Law
that will increase maximum statutory damages
names in Canada and abroad. A hands-on
practitioner, he works closely with clients
to achieve a keen understanding of the
business behind their brands.
“Speaking with my clients about their specific
strategies, their future goals and how trademarks can play a supporting role is critical,
especially with a clientele that ranges from international manufacturers to national retailers
to a local chocolate shop,” Yates says. “That’s
where it all starts.” The complex legal machinations simply follow.
Yates pursued a career in Geographic Information Systems before a part-time trademark and
patent office job sparked his passion. “I discovered that I truly enjoyed the nature of the work
and learning about the role trademarks play in
protecting brands and brand identity,” he recalls.
“And I quickly decided that a career working with
brand owners was the right one for me.”
Theo Yates, the owner of Yates IP in
Ottawa, Ontario, Canada, has spent the
past decade dealing with all aspects of
protecting trademarks, designs and domain
6 February 15, 2014 Vol. 69 No. 4
While he enjoys the challenge of guiding
clients through myriad jurisdictional trademark
laws and practices—including some unique to
Canada—Yates welcomes efforts to increase
harmonization of international trademark laws.
He feels that “harmonization of international
trademark laws may provide a more reasonable expectation of the scope of trademark
rights and how the rights may be enforced
across jurisdictions.”
The most important issue facing most INTA
members is, James feels, enforcement of their
marks in China. He hopes that the Association
will soon take up a comparative study of OEM
liability in the United States, China and other
countries.
Outside of work, James’s interests include
tennis and ice skating. He plans to take up
golf soon. When he is not participating in one
of these sports, he likes to catch up with his
friends at a local pub.
Andrea Anderson
Holland & Hart LLP, Boulder, Colorado, USA
INTA Bulletin Association News Subcommittee
An active INTA member, Yates credits the Association with “bringing me out of my comfort
zone” through Annual Meetings and professional networking. He also touts the benefits of
exposure to new issues and ideas—a function
he furthers via INTA’s Emerging Issues—Limits
on Trademark Rights Subcommittee. “This has
been very educational for me professionally,”
Yates says, “because we frequently are dealing
with aspects of trademark law that do not
come up in my day-to-day work.”
Yates cites LAND ROVER and Visa’s GO WORLD
as favorite trademarks because they “create
a go-anywhere, do-anything feeling”—one that
mirrors his personal lifestyle.
Warm weather finds the Ottawa resident canoeing, camping and fishing with his wife, Lisa,
and two daughters, Kaatje and Ophelia. Cold
Canadian winters find the family hurtling down
toboggan hills, ice skating and snow shoeing
together. Yates, an avid home brewer, also
squeezes in time to craft his own signature lagers and ales to share with family and friends.
Barbara Barron Kelly
Corsearch|Wolters Kluwer, Chicago, Illinois, USA
Co-chair, INTA Bulletin Association News
Subcommittee
Features
Are Registered Trademarks and Designs Immune Against an Infringement Action? A
Comparative Analysis of the CJEU’s FCI and Celaya Decisions
Martin Viefhues
JONAS Rechtsanwaltsgesellschaft mbH,
Cologne, Germany
INTA Bulletin Law & Practice—Europe & Central
Asia Subcommittee
an infringement action against the use of
a junior CTM could be brought only if the
junior CTM was previously or simultaneously
declared invalid. That court had already referred to the CJEU a corresponding question
in relation to Registered Community Designs (see Salvador Ferrandis, “Door Closed
to ‘Defensive’ Registration of Community
Designs in Infringement Proceedings,” INTA
Bulletin, vol. 68 no. 18, Oct. 1, 2013).
In Fédération Cynologique Internationale v.
Federación Canina Internacional de Perros
de Pura Raza (Case C-561/11 (CJEU Feb.
21, 2013) (FCI), the Court of Justice of the
European Union (CJEU) clarified, in a request
for a preliminary ruling, that a senior Community Trade Mark (CTM) can be enforced against
the use of an infringing junior CTM without the
junior CTM’s having to be invalidated first. By
this decision the CJEU applied to CTMs a rule
that it had already established for Registered Community Designs in the Celaya case
(Celaya Emparanza y Galdos Internacional SA
v. Proyectos Integrales de Balizamientos SL.
Case C-488/10 (CJEU Feb. 16, 2012)).
The question arose in light of a 1994
decision by the Supreme Court of Spain
confirming the doctrine of immunidad
registral, according to which the registration
of a trademark protects said mark—in other
words, makes it immune—against infringement proceedings.
In a 2010 decision, the Commercial Court
of Alicante raised the question of whether
1. Article 9(1) of the Community Trade
Mark Regulation (CTMR) (Council
In FCI, the CJEU, following its decision in Celaya, took a formal and pragmatic approach.
It held as follows:
Regulation (EC) No. 207/2009) allows
the trademark owner to prevent a third
party from using the contested trademark without distinction, regardless
of whether the third party has its own
trademark registration.
2. The proceedings to invalidate a CTM
and to prevent its use are two different
proceedings with different objects,
which exist side by side.
3. It would significantly weaken the senior
CTM if the junior CTM had to be invalidated (in a lengthy OHIM proceeding)
before a court action for trademark
infringement could be started.
The decision is convincing not only because
of its result but also for another reason: For
the imunidad registral doctrine to apply, the
rights arising from the respective registrations would need to be capable not only of
excluding junior rights holders from using
See “Registered Trademarks” on page 8
Colorful Choice or Headache?
A picture might indeed be worth a thousand words, but there could be times
when opting to use a logo rather than referring to a brand by name just isn’t
worth the possible fallout. James Trigg and Harris Henderson (respectively of
Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia, USA and Winston-Salem,
North Carolina, USA) assess such risks in “Using Third-Party Logos in Downloadable Applications, Games, and Other Online Materials,” the newest entry
in INTA’s exclusive member service Industry Perspectives series. While there are
not always clear rules, a developer can ﬁnd guidance on where the proposed
use of another party’s logo falls on the spectrum of risk.
Ensure that critical considerations are not overlooked.
Take advantage of this valuable resource today.
Visit www.inta.org /fairuse
7
Features
Are Registered Trademarks and Designs Immune? Continued from page 7
specific trademarks or designs but also of
preventing senior rights holders from excluding the (junior) trademark or design owners
from using their registered rights.
This raises the question: Is there, or is there
not, a positive right to use?
Article 19(1) of the Community Design Regulation (Council Regulation (EC) No. 6/2002)
provides: “A registered Community design
shall confer on its holder the exclusive right
to use it and to prevent any third party not
having his consent from using it.”
In contrast, Article 9(1) of the CTMR provides: “A Community trade mark shall confer
on the proprietor exclusive rights therein.
The proprietor shall be entitled to prevent
all third parties not having his consent from
using in the course of trade [(a) an identical
mark for identical goods or services; (b)
an identical or similar mark for identical or
similar goods or services, where there is a
likelihood of confusion of the public; or (c)
an identical or similar mark for dissimilar
goods or services, where the CTM has a
reputation in the Community and where use
of the other mark would take unfair advantage of, or be detrimental to, the distinctive
character of the CTM].”
This difference in wording could well be interpreted to mean that only the Community Design
Regulation confers a positive right to use.
There is no real need to debate this issue
here, however. Even if a trademark registration did in fact confer a positive right to use,
that would justify the owner’s own use and be
Settlement and coexistence agreements are intended to solve problems,
not cause them.
All too often, though, oversights can
result in an arrangement’s unraveling.
Find out how to minimize the likelihood of recurring disagreements in the
latest installment in the INTA Practitioners’ Checklist series, “Settlement
& Coexistence Agreements,” by Arnold
Ceballos, Pain & Ceballos LLP, Toronto,
Canada, and Virginia Taylor, Kilpatrick
Townsend & Stockton LLP, Atlanta,
Georgia, USA).
8 February 15, 2014 Vol. 69 No. 4
relevant in the context of the CJEU’s decision
in FCI only if it was an incontestable right.
Registered Community Design
To qualify for protection as a Registered
Community Design, a design requires novelty
and individual character. According to the
concept of design law, there cannot be a
second right in an identical design or a design that confers the same overall impression. If the junior design does not confer a
sufficiently different overall impression (and
is therefore infringing), it lacks individual
character and therefore cannot be protected
under design law.
The fact that the registration procedure for
Registered Community Designs amounts
to an essentially formal, expeditious check,
which does not require any substantive
examination for compliance with the requirements for protection prior to registration and
which does not provide for a phase during
which the owner of an earlier-registered design can oppose registration, does not affect
the conceptual uniqueness of design rights.
In Celaya, the CJEU concluded that it was
unnecessary to invalidate a junior Registered
Community Design before prohibiting its use
because of the lack of examination regarding novelty and originality and the lack of a
possibility to oppose registration. The Court
supported this conclusion by the distinction that the Community Design Regulation
makes between an infringement action relating to a Registered Community Design and
an application for a declaration of invalidity.
However, the different proceedings are not
the cause of the system’s duality, but a consequence thereof.
Instead, it is the conceptual uniqueness of a
design right that could confer a right to use
said design. If the junior design lacks novelty
or individual character, the junior design
right does not actually exist. In this case,
there is nothing that could justify its use
and, thus, nothing that would have to be invalidated in a first step. The owner of the junior design registration does not have a right
to use the design, as the right did not come
into existence, and the owner of the senior
design registration does not need a right to
use the design, as there is nobody who could
prohibit the use (unless the prohibition was
founded on a legal basis other than a senior
design right—for example, a senior trademark right). It is this concept that allows the
senior user to contest the use of the junior
design without first invalidating its registration; the registration does not “immunize”
the use of the design.
Community Trade Mark
In contrast to designs, trademarks do not require novelty or individual character in comparison to other trademarks. Trademarks are
not conceptually unique. According to the
concept of trademark law—at least, Community trademark law—there can be a second,
identical trademark even for identical goods
or services. Under European law, different
owners can register identical trademarks
and have them coexist. Because a prior
right is not considered an absolute but only
a relative ground of refusal, there is no ex
officio examination of whether the same
trademark already exists. OHIM will not step
in by itself. It is up to the owner of the senior
trademark to oppose the registration of a
junior trademark, regardless of whether it is
(just) confusingly similar or identical to the
respective prior registration.
Without a conceptual uniqueness, a junior
CTM does come into existence with registration and—at the same time—into coexistence with the senior CTM. This requires a
balance of interests: A right to prevent the
use of the junior trademark would affect
the junior trademark owner’s right to use its
trademark, while the right to use the junior
trademark would affect the senior trademark
owner’s right to prevent third parties from
using a conflicting mark.
As a fundamental rule of law, every owner
of a right has to respect the rights of others.
Such coexistence requires resolving a conflict
between coexisting but contradictory positions. Deciding in favor of the senior trademark, trademark law makes this valuation by
applying the principle of priority. Senior rights
are privileged. Although these principles were
not expressly set out in FCI, they support the
CJEU’s decision in that case.
It is the application of the fundamental rule
that any right finds its limits in the rights of
others, together with the principle of priority,
that “encumbers” every trademark registration and allows a senior user to contest
the use of the junior trademark without first
having to invalidate its registration. Prohibiting the use of the junior trademark merely
activates this “encumbrance” on the junior
registration. Registration does not make a
trademark immune.
■
Law&Practice
BRAZIL INPI Extends Pilot Project on Mediation in Trademark Disputes
As announced on January 8, 2014, on the
homepage of the Instituto Nacional de
Propriedade Industrial (INPI), the mediation
pilot project instituted by the INPI last year
(Resolution 84/2013) has been extended indefinitely. The project originally was scheduled
for completion by the end of December 2013.
Parties in mediation proceedings administered by the INPI under the project are exempt
from the payment of administrative charges
for processing the mediation requests.
The pilot project will benefit the ten first mediation requests administered by the INPI in 2014.
The INPI will administer the mediation proceedings in cases that involve solely trademark owners based or resident in Brazil. In
cases involving at least one owner that is
based abroad, the proceedings will be administered by the World Intellectual Property
Organization (WIPO).
In addition, for the time being, the parties to
the mediation, whether it is administered by
the BPTO or WIPO, are exempt from INPI fees
for analysis of the settlement and issuance of
a technical opinion. When the INPI issues its
2014 schedule of charges, however, fees for
this service will be charged when the mediation is administered by WIPO.
It is important to note that the INPI is not
a party to the mediation proceedings and
any settlement that may be executed by the
parties is not binding upon it. However, before
the conclusion of the mediation proceedings,
the mediator can, with the authorization of
the parties, submit the settlement to the INPI
in order to verify its feasibility. The INPI will
issue a technical opinion on the feasibility of
the settlement and, if necessary, note whether
any changes are required (Normative Instructions 23/2013, 28/2013).
The mediation service for disputes involving intellectual property rights was created
by the INPI, in collaboration with WIPO, on
July 15, 2013. It aims at resolving disputes
expeditiously by helping the parties to identify
flexible, out-of-court solutions and to reach
mutually satisfactory settlements.
Trademark owners in the course of opposition,
appeal or nullity administrative proceedings
may seek mediation. The examination of the
trademark application will remain stayed for
90 days, to allow the parties the opportunity
to conclude the mediation proceedings. One
extension, for 90 days, is allowed.
Contributor: César D. Carvalho
Gouvêa Vieira Advogados, Rio de Janeiro
Verifier: Rodrigo A. de Ouro Preto Santos
Ouro Preto Advogados, Rio de Janeiro
Both are members of the INTA Bulletin Law
& Practice—Latin America & the Caribbean
Subcommittee.
General Court Considers “Double Function”
EUROPEAN
UNION of an Element in a Complex Trademark
The General Court of the European Union
recently ruled on the likelihood of confusion
between a figurative mark and a word mark
where the letter “S” could be perceived as belonging either to the letter group “IBS” or to the
word “Solutions.” IBSolution GmbH v. OHIM–
IBS AB, Case T-533/12 (GC Nov. 7, 2013).
In July 2009, IBSolution GmbH (Applicant)
applied for the registration as a Community
trade mark (CTM) of the word mark IBSolution, to cover various services in Classes 35,
41 and 42. The application was opposed
based on the figurative mark IBS (see below),
registered for services in the same classes.
The OHIM Opposition Division upheld the opposition, and the Applicant’s appeal was dismissed. In particular, the OHIM Second Board
of Appeal relied on the fact that the services
concerned were similar or identical and the
most distinctive element of both marks, IBS,
was identical as well.
In response, the Applicant filed an action
before the General Court, seeking to reverse
the Board of Appeal’s decision. It claimed
that the marks concerned were not similar
owing to a lack of phonetic and conceptual
similarity and a low degree of visual similarity.
The Applicant argued that the Board of Appeal
had incorrectly duplicated the letter “S” of the
mark IBSolution by dividing the mark into two
elements—“IBS” and “Solution.”
The General Court confirmed the finding of
the Board of Appeal. It could not be ruled
out, said the court, that consumers would
pronounce the mark applied for by duplicating
the consonant “S” insofar as this letter could
be perceived as belonging to the letter group
“IBS” and as being the first letter of the word
“Solution.” Therefore, the marks were similar
from a visual and phonetic point of view.
The court conceded that the Board of
Appeal had incorrectly assumed conceptual
similarity between the marks, as the letter
groups “IB” and “IBS” have no meaning
and the word “Solution” appears only in the
contested mark. However, it held that this
mistake did not invalidate the Board’s finding regarding similarity, as the marks were
similar both visually and phonetically.
Consequently, the General Court found that
there was a likelihood of confusion between
the marks, and it upheld the Board of Appeal’s decision.
At first sight, the court’s decision may seem
surprising. However, it is well established in EU
case law that the relevant public will perceive
a mark as a whole and will not proceed to
analyze its various details. Therefore, in the
present case, the contested mark IBSolution
could not artificially be separated into the elements “IB” and Solution.” Moreover, the letters
“IBS” were quite prominent in the contested
mark, so that there was a danger of confusion
between that mark and the earlier mark IBS.
Contributor: Susanna Heurung
Kotitschke & Heurung Partnerschaft, Munich,
Germany
Verifier: Ingrida Karina-Berzina
Raidla Lejins & Norcous, Riga, Latvia
Both are members of the INTA Bulletin Law &
Practice—Europe & Central Asia Subcommittee.
9
Law&Practice
INDIA Onus on Owner to Rebut Ground of Non-use in Rectification Proceedings
Recently, the Intellectual Property Appellate
Board (IPAB) rendered a decision that clarified
the issue of onus of proof of use in rectification proceedings. M/s ITC Ltd v. M/s. Cadbury
Schweppes Overseas Ltd, ORA/25, 26, 28,
and 29/2005/TM/KOL (IPAB Oct. 31, 2013).
M/s ITC Limited (Applicant) had filed four
applications for removal of the trademark
CADBURY’S CHOCOLATE ECLAIRS, registered
by M/s. Cadbury Schweppes Overseas Ltd
(Respondent) in Class 30. All four matters
were heard together based on similarity of
issues. The Applicant filed third-party affidavits
to prove the ground of non-use, but the Respondent filed only the registration certificates
obtained in various countries.
It is a well-settled principle in Indian law that
the onus in rectification proceedings lies on
the applicant to establish the grounds on
which rectification is sought. The onus may be
shifted, however, in the course of the hearing.
(See Indo-Pharma Pharmaceutical Works Pvt.
Ltd. v. Farbenfabriken Buyer Ag, (1975) R.P.C.
545 (remarks of Chief Justice Kantawala).)
Here, the IPAB held that the onus was on the
Respondent to prove use of its mark, and
proof of registration in other countries alone
was insufficient. The IPAB further held that
if, as in this case, the respondent does not
appear to rebut the ground of non-use, the
tribunal may conclude that the respondent
has not used the mark even after several
years of registration and may order the mark
cancelled for non-use.
It should be noted that the Respondent did
not argue the matter on the merits, as it was in
the process of withdrawing its registered mark.
This case clarifies the general rule that the
initial onus is on the applicant but once
discharged by the applicant it shifts to the
respondent, and the respondent must produce
documentary evidence to support its use of
its mark. Registration certificates from other
countries are not sufficient.
Contributor: Jatin Trivedi
Y.J Trivedi & Co., Ahmedabad
Verifier: Disha Dewan
RK Dewan & Co., Mumbai
Both are members of the INTA Bulletin Law &
Practice—Asia-Pacific Subcommittee
INTA Calendar of Events
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issues that affect your trademarks—domestically, regionally and globally.
March 4–5
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November 11–15 Maintaining the Perfect Partnership
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Saul Lefkowitz Moot Court Competition—National Finals
U.S. Roundtables
INTA/USPTO Roundtables INTA/USPTO Roundtables 136th Annual Meeting
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Trademark Administrators and Practitioners Conference
U.S. Roundtables
Leadership Meeting
New York, NY USA
Register online
Washington, DC, USA
Various U.S. Cities
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Arlington, VA USA
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Phoenix, AZ USA
Learn more about INTA events, including international roundtables, networking receptions,
e-Learning, academic competitions and more, at www.inta.org/programs
Dates and topics subject to change. Contact [email protected] for the latest information.
10 February 15, 2014 Vol. 69 No. 4
Law&Practice
IPAB Removes Well-Known Mark, Holds Law Should Not Be
INDIA Stretched to Indulge in Trade Restraint
In M/s Nirmal Industrial Control Pvt. Ltd.
v. M/s Nirma Chemical Works Pvt. Ltd.
(ORA/133/2010/TM/AMD (IPAB Sept. 13,
2013)), the Intellectual Property Appellate
Board (IPAB) removed the registered trademark NIRMA, owned by M/s Nirma Chemical
Works Pvt. Ltd. (Respondent), based on a cancellation petition filed by M/s Nirmal Industrial
Controls Pvt. Ltd. (Applicant). In its decision
the IPAB condemned both the excessively monopolistic attitude of the Respondent and the
absolutist position taken by the Registry.
The Applicant filed the petition after its application for registration of its mark NIRMAL
was turned down by the Registry, mainly on
the ground of the mark’s deceptive similarity
to the Respondent’s registered trademark
NIRMA in Class 6. The Applicant asserted
that its mark had been in continuous use
since 1973, whereas the Respondent had
applied for registration of its mark as a proposed mark, for a proposed product category,
metal products, in 1984. It further argued
that despite the fact that more than five
years had elapsed since the impugned mark
was entered in the register, the Respondent
had not used its mark for the goods covered
under Class 6 until the date of filing the cancellation petition and in fact had used its registration only to prevent rightful proprietors
from acquiring valuable statutory protection
for their marks. The Respondent contended
that the mark NIRMA was well known in the
market and registered in all classes under
the Trade Marks Act. It further argued that
its mark was registered in 100 countries and
its goods sold through 2 million retailers to
more than 400 million consumers.
The IPAB, after carefully scrutinizing the documents and arguments put forth by both parties, observed that despite the Respondent’s
efforts there was no credible evidence to
prove use of the impugned mark in respect of
the goods for which it was registered in Class
6. It further opined that even though NIRMA
might be a well-known mark, the trademark
law should not be stretched to indulge in trade
restraint. Therefore, the IPAB held that the
Registry had erred in holding that “NIRMAL”
was deceptively similar to “NIRMA.”
Consequently, the Board allowed the petition
and ordered that the registered trademark
NIRMA in Class 6 be removed from the register.
In addition to condemning the monopolistic
attitude of the Respondent, the IPAB raised
questions about the conduct and knowledge
of the concerned official at the Registry. It
pointedly advised the Registry not to act as a
hand-holding emissary for proprietors of wellknown marks, but instead to stay focused on
the merits of each case.
Contributors: Sharabh Shrivastava
and Swati Bhanot
Chadha & Chadha, New Delhi
Verifier: Gaurav Miglani
World Intellec, New Delhi
SERBIA U.S. Companies Not Required to Deposit Security for Litigation Costs
In a decision handed down in March 2013,
the Commercial Appellate Court of Serbia recognized the right of a U.S. company to sue in
Serbia without depositing security for litigation
costs, even when the company does not have
a presence in Serbia.
On November 9, 2010, Skechers, a famous
U.S. producer of sneakers, sued Safran, a
Serbian company that imported and sold
sneakers with a design similar to Skechers’
SHAPE-UPS sneakers, for trademark and copyright infringement and unfair competition.
Safran requested that Skechers deposit
security for litigation costs. It argued that
Skechers did not have a presence in Serbia
and there was a risk that the company would
not reimburse Safran for its litigation costs if
Safran prevailed in the suit. The United States
is not a signatory to the 1954 Hague Convention on Civil Procedure, which provides for
free access to courts.
Skechers refused to deposit the requested
security. It argued that under the 1881 Treaty
on Commerce between Serbia and the United
States, which provides that Serbian and U.S.
citizens are to have full reciprocity and access
to the courts, it was not required to deposit
money as security for litigation costs. Safran
countered that the Treaty was no longer applicable because there was no factual reciprocity.
via a special procedure provided by the
Treaty. Skechers argued, further, that the
United States does respect the Treaty; in
support of its position it cited Kolovrat v. Oregon, 366 U.S. 187 (1961), a U.S. Supreme
Court decision explicitly holding that the
Treaty must be respected.
The Serbian Commercial Court (the first
instance court) refused Safran’s request.
On appeal, the Commercial Appellate Court
remanded the matter to the Commercial Court
and instructed it to seek an opinion from the
Ministry of Justice. The Ministry of Justice confirmed that the Treaty was in force but it held
that there was no factual reciprocity between
the United States and Serbia because Serbian
citizens living in the United States are required
to deposit security for litigation costs when
suing in a state in which they do not reside.
The Commercial Appellate Court refused Safran’s request for security for litigation costs.
The Court’s decision is final.
The Commercial Court ordered Skechers to
deposit security for litigation costs. Skechers
then appealed. The company argued that
Serbia and the United States are bound to
respect the 1881 Treaty until it is revoked
Although judgments and decisions in Serbia do not set precedents, they do serve as
guidance for judges for future cases. The
above decision affirmed that the 1881 Treaty
on Commerce between the United States
and Serbia is in force and must be honored
until it is terminated or suspended through a
specially prescribed procedure.
Contributor: Gordana Pavlovic
Cabinet Pavlovic, Brussels, Belgium
Verifier: Ian Starr
D. Young & Co., Southampton, UK
11
Law&Practice
Court of Appeal Differentiates Opposition and
SINGAPORE Infringement Proceedings
On March 3, 2008, Staywell Hospitality
Group Pty Ltd filed an application to register a series of two marks that included the
name PARK REGIS in Singapore, in respect
of, inter alia, marketing and hospitality
services. Sheraton International, Inc. and
Starwood Hotels & Resorts Worldwide, Inc.
(collectively, the Starwood group), which currently own and operate 32 ST REGIS hotels
worldwide, opposed the application.
On appeal, the Singapore High Court took a
different approach and reversed the Registry’s
decision. Despite finding that the competing marks sounded alike and perhaps were
conceptually similar, the High Court ultimately
held that these marks would not be confused.
In coming to its conclusion, the Court found
that Staywell had taken steps to “differentiate
its services” from those of Starwood, and in
particular noted that the parties operated in
different service categories--Starwood used its
ST REGIS mark in 6-star luxury hotels, while
Staywell operated 4-star business hotels. The
High Court observed that the evidence did not
reveal any indication that Starwood had any
intention of moving into the 4-star business
hotels segment, in which the PARK REGIS
mark operated.
On the issue of similarity and confusion, the
Principal Assistant Registrar of Trade Marks
found that the competing marks and services
were similar and, accordingly, that there was a
likelihood of confusion among the public as to
the source of Staywell’s services. Overall, the
opposition therefore succeeded.
On final appeal, the Court of Appeal considered at length the concept of notional fair
uses of the mark applied for. It queried what
would be the situation if the 4-star PARK
REGIS hotels decided to move into the 6-star
segment, where the ST REGIS hotels were operating. The Court, for the first time, explicitly
In November 2013, the Singapore Court of
Appeal, in a detailed reasoned decision in
Staywell Hospitality Group Pty Ltd v. Starwood
Hotels & Resorts Worldwide, Inc. ([2013]
SGCA 65 (Nov. 29, 2013)), differentiated
opposition proceedings from infringement
proceedings.
Before You Send That
Cease and Desist Letter
Without proper forethought and thorough planning, a cease and desist letter
can create more problems than it was ever intended to solve. See the new
INTA Practitioner’s Checklist on Cease and Desist Letters for help in plotting
the best course of action. This addition to the members-only series of helpful
training tools in Global Trademark Resources — by Kevin Collette, Ryan
Swanson & Cleveland, PLLC, Seattle, Washington, USA — joins six other
checklists on key tasks and functions.
Ensure that critical considerations are not overlooked.
Take advantage of this valuable resource today.
Visit www.inta.org /ceaseanddesist
12 February 15, 2014 Vol. 69 No. 4
recognized that opposition proceedings were
different from infringement proceedings, in
that in the former the court must have regard
to the full range of actual and notional uses of
the competing marks.
The Court of Appeal concluded that in this
case there was a sufficient likelihood of confusion by reason of the similarity of the competing marks and the covered services. Therefore, it allowed the appeal, and the Starwood
group’s opposition to Staywell’s registration of
the mark PARK REGIS succeeded.
This decision makes clear the test to be applied in determining likelihood of confusion in
opposition proceedings in Singapore.
Contributor: Kho Shu Yan (Qiu Shuyan)
Gateway Law Corporation, Singapore
INTA Bulletin Law & Practice—Asia-Pacific
Subcommittee
Verifier: Sheena Jacob
ATMD Bird & Bird LLP, Singapore
Law&Practice
UNITED STATES TTAB Finds HOLISTIC Merely Descriptive of Cat Food
The Trademark Trial and Appeal Board (TTAB
or Board) found that the mark HOLISTIC was
merely descriptive under Section 2(e)(1) of
the Trademark Act, affirming the examining
attorney’s refusal to register HOLISTIC for “cat
food” in Class 31. In re Midwestern Pet Foods,
Inc., Serial No. 85128946 (T.T.A.B. Nov. 13,
2013) (not precedential). The TTAB based its
decision on evidence demonstrating that the
word HOLISTIC described an important feature
of the applicant’s cat food, namely, it “nourshi[es] the whole cat.”
Applicant Midwestern Pet Foods, Inc. (Midwestern) asserted that HOLISTIC was not
descriptive but rather suggestive because the
term had varied definitions such that it did
not immediately describe a certain characteristic of cat food. Instead, it “convey[ed] [Midwestern’s] ability to provide healthy, healthful
foods that aim to keep your whole cat in
good shape” and “connot[ed] a sophisticated
level of pet food formulation.” Highlighting
Midwestern’s website, the examining attorney
contended that HOLISTIC described a significant characteristic of the applicant’s cat food.
Specifically, the website described Midwestern’s “holistic approach to nutrition” by
providing ingredients that “nourish the whole
cat.” Third-party registrations also illustrated
that HOLISTIC was a commonly used term in
the cat food industry.
According to the TTAB, HOLISTIC “immediately
inform[ed] the customer” that Midwestern’s
cat food “nourish[ed] the whole cat.” The examples of third-party registrations presented
by the examining attorney demonstrated
sufficient use in the cat food industry for the
Board to find that the mark was descriptive
for cat food.
After refusing to disclaim HOLISTIC, Midwestern also argued that EARTHBORN HOLISTIC,
which it had registered over five years previously as a trademark for dog food, constituted
a unitary expression, while reasoning that
the terms had opposite meanings and were
“suggestive of a new age lifestyle.” The TTAB,
however, held that “if the elements are so
merged together that they cannot be regarded
as separable elements, the mark is a single
unitary mark and not a composite mark and
no disclaimer is necessary.” In re EBS Data
Processing, Inc., 212 U.S.P.Q. 964, 966
(T.T.A.B. 1981). Both words, HOLISTIC and
EARTHBORN, retained their separate meanings and were not “so merged together” that
they “cancel[ed] one another out.” Therefore,
the descriptive meaning of HOLISTIC was not
replaced by a new and combined meaning.
Midwestern further contended that the
unitary aspects of EARTHBORN HOLISTIC had
been recognized and that consistent treat-
ment should be applied for cat food without
disclaiming HOLISTIC. The TTAB found that
“ownership of an incontestable registration
does not give [an] applicant a right to register
the same or similar mark for different goods
or services, even if they are closely related to
the goods or services set forth in the incontestable registration.” In re Best Software Inc.,
63 U.S.P.Q.2d 1109, 1113 (T.T.A.B. 2002).
While dog food and cat food are in the same
category as pet foods, the TTAB found them to
be different products.
This case highlights a common misconception among brand owners in expanding a
company’s product line. There is no statutory
right to register an incontestable trademark
for additional and/or different goods and
services. A registered mark is incontestable
only in the form registered and for the goods
and services claimed. Here, the Board recognized that although dog food and cat food are
similar, they are distinct products; therefore,
it could treat the contested mark as separate
from and unrelated to the registered mark.
Contributor: William F. Wilson
Waller Lansden Dortch & Davis,
Nashville, Tennessee
Verifier: Louise Arnott
Neal & McDevitt, Chicago, Illinois
Searchable database on the cancellation practice and procedure
in more than 85 jurisdictions worldwide
Trademark Cancellations on INTA’s Global Trademark Research Page
Visit www.inta.org/Cancellations
13
Law&Practice
TTAB Accepts Applicant’s Conditional Amendment to
UNITED STATES Narrow Its Identification of Goods
In a precedential decision, the Trademark
Trial and Appeal Board (TTAB or Board)
granted a motion by applicant Stryker Corporation (Stryker) seeking a conditional amendment to narrow its identification of goods
notwithstanding the objection of opposer
Johnson & Johnson (J&J). Johnson & Johnson
v. Stryker Corp., Opposition No. 91209134
(T.T.A.B. Dec. 5, 2013).
J&J opposed Stryker’s application based on
an alleged likelihood of confusion between
Stryker’s applied-for mark MICROFX, for
use with “surgical instruments,” and J&J’s
registered trademark MICROFIX, for use with
“suture anchors.” Stryker sought to narrow its
identification of goods, which J&J contested, by
conditionally stating its willingness to accept
judgment as to its broader identification of
goods. Stryker did not obtain J&J’s consent
for such amendment, but instead obtained
the consent of Microflex Corporation, which
opposed Stryker’s application in a separate
proceeding. In determining whether to accept
a contested amendment to an identification of
goods, the TTAB requires certain conditions,
including the applicant’s consent to the entry
of judgment on the grounds for opposition
with respect to the broader identification of
goods or services as published. The principal
question before the TTAB was whether Stryker
met such condition.
In this regard, Stryker made seemingly
inconsistent statements. In its initial motion
papers, Stryker conditioned its acceptance of
judgment as to the broader identification of
goods on the TTAB’s grant of registration. As it
does not grant or issue registrations, the TTAB
assumed that Stryker meant to say that the
condition was the Board’s grant of judgment
in Stryker’s favor. However, in its reply brief,
Stryker conditioned its acceptance of judgment as to the broader identification of goods
on the Board’s acceptance of the amended
identification and, if not granted, requested to
be heard at trial on both its broader identification and its proposed narrowed identification.
Given certain expressions in Stryker’s reply
brief to the effect that it intended to obviate
any doubt and facilitate the resolution of the
other opposition to the application in question,
the TTAB reconciled the foregoing inconsistencies and understood Stryker’s position
to be that if the proposed amendment was
accepted, Stryker would accept judgment
against it on the broader range of goods. Consequently, Stryker’s motion was granted and
the TTAB accepted the amendment to narrow
its identification of goods. Judgment in favor of
J&J was entered with respect to the mark as
applied to the goods covered by the broader
description, except as amended, and the
Board confirmed that the instant case would
proceed to trial based on Stryker’s amended
identification of goods.
Contributor: Ivan G. Marrero
Pietrantoni Mendez & Alvarez LLC, San Juan,
Puerto Rico
Verifier: Jessica Godell Bahr
Re: Sources USA, Chicago, Illinois
Both are members of the INTA Bulletin Law &
Practice—United States & Canada Subcommittee
Attend a Pre–Annual Meeting Reception in your city!
Pre–Annual Meeting Receptions are planned exclusively for you and your colleagues to learn more about
INTA’s 2014 Annual Meeting in Hong Kong SAR, China. Feel free to bring a friend, co–worker or prospective
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14 February 15, 2014 Vol. 69 No. 4
Hong
Kong
136th Annual Meeting
May 10–14
2014
Register Now for
INTA’s 136th Annual Meeting
May 10–14, 2014 | Hong Kong
Expand your professional knowledge and grow your portfolio of international clients at the world’s
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in Hong Kong presents the perfect chance to explore new opportunities in this dynamic
and fast-growing region.
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