INTABulletinThe Voice of the International Trademark Association

AssociationNewsAssociationNews

January 1, 2014 Vol. 69 No. 1

In This Issue

Law&PracticeBrazil 9European Union 9New Zealand 10Thailand 11

FeaturesShapes of Things: The Protection of Three-Dimensional Trademarks in the EU 7

AssociationNewsKIPO Hosts TM5 Meeting in Seoul 1

Association Welcomes New USPTO Deputy Director Michelle Lee 1

Welcome New Members 2

Dubai Conference Focuses on Collabora-tion, Education 4

Trademarks are Good for Consumers, Companies and the Economy, Says WIPO Report 5

Volunteer Spotlight: Julián Vadillo 6

INTA Welcomes New USPTO Deputy Director Michelle Lee

See “KIPO” on page 3

See “Michelle Lee” on page 3

The USPTO announced in December that U.S. Secretary of Commerce Penny Pritzker has named Michelle K. Lee as the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (USPTO), effective January 13, 2014. INTA CEO Etienne Sanz de Acedo congrat-ulated Ms. Lee on her appointment and said that the Association looks forward to working with her in her new role.

On December 5 and 6, the Korean Intellec-tual Property Office (KIPO) for the first time hosted the annual meeting of the world’s five largest trademark offices (the TM5): KIPO, the Chinese State Administration for Industry and Commerce (SAIC), the U.S. Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Office for Harmonization in the Internal Market (OHIM). As part of the meeting, INTA Board Member Bruce Long-bottom (Eli Lilly, USA) and volunteer Holger Kunz (Abercrombie & Fitch Co., Switzerland) represented the Association by participating in a user session aimed at answering key questions about the nine collaboration proj-ects on the TM5’s agenda.

The goal of the TM5 is for government offi-cials to work together on projects, as well as to share information and best practices. The user session allows the business community to provide feedback on these projects and other key trademark issues and suggest changes and other projects for the govern-ment officials to consider. This year’s session focused primarily on the issues of bad faith filings, accelerated examination and the USPTO’s ID List project.

With respect to the ID List project, which aims to compile a pre-written list of goods/

services identifications for use by trademark holders seeking protection in multiple juris-dictions, Mr. Longbottom asked whether the agreed-upon terms would further restrict an applicant’s ability to provide an alternative description of the goods or services. This is a concern given the possibility that the ID list may lag behind new technologies and prod-ucts. TM5 representatives confirmed that

KIPO Hosts Trademark 5 Meeting in Seoul

Michelle K. Lee, next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (USPTO).

China Microsite LaunchedINTA is pleased to announce the launch of a Chinese-language mi-crosite as part of the Association’s 2014–2017 Strategic Plan goal of International Expansion. This is the first step in a new INTA initiative to of-fer materials in languages other than English. In the next few months, the Association will also launch a Spanish microsite, and will begin to offer trans-lations of select documents—such as the Strategic Plan and the Annual Report—into certain languages.

USPTO Named Number One Federal Agency Subcomponent to Work ForIn December, the USPTO was named num-ber one out of 300 U.S. federal agency subcomponents in the 2013 Best Places to Work in the Federal Government rankings compiled by the non-profit Partnership for Public Service (PPS). The annual report is based on a survey of more than 700,000 civil servants from 371 federal agencies and subcomponents conducted by the Office of Personnel Management (OPM). This ranking is a re-flection of the USPTO’s commitment over the past several years to improving the morale and effectiveness of the agency’s workforce. INTA congratulates the USPTO leadership and staff on this achievement and thanks them for their efforts, which ultimately result in a better and more effi-cient trademark system.

January 1, 2014 Vol. 69 No. 12

AssociationNews

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2014 International Trademark Association

INTA Bulletin CommitteeTo contact the INTA Bulletin Committee, email bulletin@inta.org.

ChairBarbara Sullivan, Henry Hughes

Vice Chair Liisa Thomas, Winston & Strawn LLP

Co-Chairs, Features SubcommitteeElizabeth 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: Asia-Pacific SubcommitteeChetan Chadha, Chadha & Chadha, An Intellectual Property Law Firm

Joseph Yang, Lee and Li, Attorneys at Law

Co-Chairs, Law & Practice: Europe & Central Asia Subcommittee Mary Bleahene, FRKelly

Thomas Mudd, Zeiner & Zeiner

Co-Chairs, Law & Practice: Latin America & the Caribbean SubcommitteeMartín Chajchir, Marval O’Farrell & Mairal

Carlos Corrales-Azuola, Corrales Core IP

Chair, Law & Practice: Middle East & Africa SubcommitteeGhaida Ala’Eddein, Saba & Co. IP

Co-Chairs, Law & Practice: United States & Canada SubcommitteeRobert Felber, Waller, Lansden, Dortch & Davis

Catherine Hoffman, Mayback & Hoffman

INTA Bulletin StaffChief Executive Officer Etienne Sanz de Acedo

Director, Legal Resources & Communications James F. Bush

Managing Editor, News & Policy Eileen McDermott

Associate Editor, INTA Bulletin Joel L. Bromberg

Designer

Eric Mehlenbeck

INTA Officers & CounselPresident 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.

Vice President Russell Pangborn, Microsoft Corporation

Treasurer Joseph Ferretti, PepsiCo, Inc./ Frito-Lay, Inc.

Secretary Ronald Van Tuijl, JT International S.A.

Counsel David Fleming, Brinks Gilson & Lione

Advokatfirman Vinge KB, Stockholm, SwedenAlibaba Group, Hong Kong SAR, ChinaAmanresorts International Pte LTD, Singapore, SingaporeAnsell, Iselin, NJ, USABatdelger. D Trademark Attorney, Ulaanbaatar, MongoliaBN Lawyers, Macau, MacaoCooley LLP, Seattle, WA, USA & Santa Monica, CA, USACoulson Harney, Nairobi, KenyaGabay-Rafiy & Bowler, New York, NY, USAGjika & Associates Attorneys at Law, Tirana, AlbaniaGulf Consultants, Muscat, OmanH. Lundbeck A/S, Valby, DenmarkHanray IP Law Firm, Beijing, ChinaIntellectual Capital, Moscow, Russian Federation

Intelligent Brand Extension, LLC, New York, NY, USAJAH & CO. IP, Baghdad, Iraq; Amman, Jordan; Kuwait City, Kuwait; Tripoli, Libya; West Bank, Palestinian Territory; Riyadh, Saudi Arabia; Sana’a, YemenJou And Jou Patent Offices, Hsinchu City, TaiwanKatz Group LLC, Chicago, IL, USAKeegan & Donato Consulting LLC, Rye, NY, USALaBatt, LLC, Valatie, NY, USALazo De Romana & Gagliuffi Abogados, Lima, PeruLDALEGAL INC., Montreal, QC, CanadaMaiwald Patentanwalts GmbH, Düsseldorf, GermanyMak & Associates, Mumbai, IndiaMakhija & Associates, Thane East, IndiaMidKings Law Firm, Shanghai, China

Miller Nash LLP, Seattle, WA, USANozo International Intellectual Property Co., Ltd, Shenzhen City, ChinaPADIMA, Alicante, SpainPDK Law Firm Consultants & Advocates, New Delhi, IndiaPottick Law, Huntington Beach, CA, USAScihead Huihua Trademark Agent Corporation Limited, Shenzhen, ChinaSociete BIC, Clichy, FranceThai International Law Firm Company Limited, Bangkok, ThailandVeramark S.A., Las Condes, ChileYUHONG IP Law Firm, Beijing, China

Welcome New Members

INTA Welcomes New USPTO Deputy Director Michelle Lee Continued from page 1Ms. Lee previously served as Director for the USPTO’s satellite office in Silicon Valley, where she was responsible for liaising with the innovation community there, as well as establishing a tem-porary office in Menlo Park and securing a per-manent office location in San Jose. Prior to joining the USPTO, Ms. Lee served as Deputy General Counsel for Google and as a partner at the Silicon Valley-based law firm of Fenwick & West.

Until an Under Secretary of Commerce for Intellectual Property and Director of the USPTO is appointed, Ms. Lee will assume the title of Acting Director and perform the duties of Director. INTA will continue to work with the USPTO and Ms. Lee on its core goals and key projects, including (1) securing a sustainable funding model without fee diversion, which en-sures that trademark funds will not be diverted

to patent projects; (2) continued superior trademark examination quality and reasonable pendency; and (3) working toward completion of the Trademarks Next Generation program, which will greatly improve the speed and quality of electronic processing and management of trade-mark applications at the USPTO. ■

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AssociationNewsthere will be no restriction; users would not be required to use terms from the list, and would be able to ask their national offices to submit an ID not listed for consideration.

Bad faith filings were another hot topic, and INTA asked whether actual user experience with such filings might be taken into consid-eration. The JPO, which is leading the project, was very receptive to the suggestion. It also said it would consider the possibility of holding a TM5 user session during INTA’s Annual Meet-ing in Hong Kong in May.

Mr. Kunz said that many users seemed inter-ested in the possibility of having a “fast-track” trademark application option, particularly in China and Japan. While China has no plans for such a system, the JPO will be introducing one in the next few months.

“These five trademark offices handle 70 percent of the world’s trademark applications, so to have them all in the same room talking about collaboration was really encouraging,” said Mr. Longbottom. “Getting to listen to all of this, I felt like an athlete who’s been training all his life and finally gets to the Olympics.”

Mr. Kunz agreed that “it was very helpful to get insight on collaboration among the offices. They all seem motivated in pushing projects—the fact that they meet to discuss at all is a great thing.”

On December 3, Mr. Kunz and Mr. Longbottom also participated in the Seoul International Trademark-Design Conference, on the theme of “Value of Brand and Design in the Creative Economy.” The Conference was co-sponsored by the Korea Trademark and Design Associa-tion (KOTA) and INTA. ■

KIPO Hosts Trademark 5 Meeting in Seoul Continued from page 1

Learn more about INTA events, including international roundtables, networking receptions, e-Learning, academic competitions and more, at www.inta.org/programsDates and topics subject to change. Contact meetings@inta.org for the latest information.

INTA Calendar of EventsPlan your calendar with these INTA events and stay up to date on issues that affect your trademarks—domestically, regionally and globally.

January 15 Annual Meeting registration launches! Register onlineJanuary 21–January 31 U.S. Roundtables Various U.S. CitiesFebruary 3–February 14 TMA Roundtables Various U.S. Cities February 22 Annual Meeting early registration ends! Register onlineMarch 4–5 Maintaining the Perfect Partnership New York, NY USAMarch 17–20 U.S. Roundtables Various U.S. Cities May 10–14 136th Annual Meeting Hong Kong, SAR ChinaJune 2–13 U.S. Roundtables Various U.S. CitiesJune 16–27 TMA Roundtables Various U.S. CitiesSeptember 2–12 TMA Roundtables Various U.S. CitiesSeptember 18–19 Internet Conference San Francisco, CA USAOctober 12–15 Trademark Administrators and Professionals Conference Arlington, VA USAOctober 20–31 US Roundtables Various U.S. CitiesNovember 11–15 Leadership Meeting Phoenix, AZ USADecember 4–5 Overlapping TM Rights Conference Munich, Germany

January 1, 2014 Vol. 69 No. 14

AssociationNewsDubai Conference Focuses on Collaboration and Education

“Collaboration” and “education” were the key themes of INTA’s first-ever conference in the United Arab Emirates (UAE). The two-day conference, “Hot Trademark Topics in the Middle East, Africa and South Asia Region (MEASA),” was hosted in Dubai on December 9 and 10 and attended by over 250 brand owners, IP professionals, service providers, media and representatives from government bodies around the world. Charles Shaban (Abu-Ghazaleh Intellectual Property, Jordan) and Hoda Barakat (Hoda Barakat Legal Consultancy, UAE) co-chaired the event. The keynote speech was delivered by His Excellency Engineer Mohammed Ahmed Bin Abdul Aziz Al Shehhi, Undersecretary of the Ministry of Economy (pictured).

INTA’s 2013 President, Toe Su Aung (BATMark Limited, UK), told attendees that the aim of the conference was to “foster crucial collaboration with government,” because “in today’s world, cooperation between like-minded supporters of IP rights is essential.” The Association’s CEO, Etienne Sanz de Acedo, added that INTA was committed to establishing Public-Private Partnerships (PPPs) across all regions of the world, and highlighted the Memoranda of Understanding INTA has recently signed with the national IP office in such jurisdictions as Brazil, Mexico and Singapore. These agreements foster sharing of information between offices and col-laboration on training and other projects.

Mr. Sanz de Acedo also highlighted INTA’s 621 members in the MEASA region, and the Association’s history of policy work there. He noted that “we have a strong foundation in the

Middle East, Africa and South Asia,” but added that “this week’s conference begins a new phase of INTA’s involvement in the region. As we plan for the future, it is essential for us to cooperate and collaborate.”

Officials from around the region offered pre-sentations on their efforts to educate the con-sumers of today, as well as consumers of the future, on the dangers of counterfeiting. Dubai customs officials explained how they have worked with more than 75 schools and educa-tional establishments in the UAE to help create and build awareness about IP. Officials have also held awareness sessions in shopping malls, supported by the Gulf Brand Protection Group (BPG), in order to educate consumers about counterfeit goods.

Throughout the two days, there were many examples provided as to how PPPs have been used effectively. However, it was also apparent from both the public-sector and the private-sector attendees that there is a lot more that can and should be done. It was agreed that collaboration is needed for the good of all, and that through combined efforts and ongoing education, positive results will follow.

At the end of each day, attendees were also provided with short updates from practitioners around the region on a variety of topics. These were delivered by nine different speakers, each given five minutes to provide a concise update on topics such as nontraditional marks in the region, the overlap between trade names and trademarks, an update on Iranian law and practice and brand protection for sporting events in the region and beyond.

Other sessions focused on trademark valua-tion, dispute resolution, fighting counterfeiting through border measures, well-known marks, licensing and new gTLDs.

Ms. Aung told attendees that, with growth in the MEASA region having reached “a new phase” in recent years, “consumers have come to appreciate the importance of trade-marks as source identifiers and indicators of quality, while brand owners are looking more and more outside their country and region for opportunities to expand.”

For that reason, both the conference in Dubai and INTA’s upcoming Annual Meeting in Hong Kong next May play a crucial role in facilitating conversation among trademark attorneys from all regions of the world.

Jon ParkerClyde & Co., Dubai, United Arab EmiratesINTA Bulletin Law & Practice—Middle East & Africa Subcommittee

His Excellency Engineer Mohammed Ahmed Bin Abdul Aziz Al Shehhi, Undersecretary of the Ministry of Economy (United Arab Emirates)

Contact Laura Castle at lcastle@inta.org for more information.

Host a Pre–Annual Meeting Reception in your city!Volunteer to host and you’ll help attendees learn more about the INTA Annual Meeting while offering an opportunity to network and meet new professionals. You can host Pre–Annual Meeting Receptions from January 1 to March 1 at a venue of your choice.All hosts and attendees will be entered into a raffle to win a free Annual Meeting registration. Additionally, hosts will receive exposure in the INTA Daily News and on the INTA website.

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AssociationNewsIn a major new report, the World Intellectual Property Organization (WIPO) explains how trademarks and brands are good for consum-ers, companies and the economy as a whole. “Brands—Reputation and Image in the Global Marketplace” explores in detail the role that trademarks and brands play in the global economy, and includes an analysis of the im-pact of trademark registration systems.

“Trademarks—the legal incarnation of brands—are by far the most widely used form of reg-istered intellectual property,” acknowledges WIPO Director General Francis Gurry in his foreword to the organization’s second World Intellectual Property Report. “[A] recognized brand is among the most valuable intangible assets a company can own.”

Divided into three main chapters, the Report first explores branding in the global economy, including the history of brands and a consid-eration of how brands and trademarks are used in different economies. There has been a substantial increase in demand for trademarks over the last 40 years, which the Report attrib-utes to five main factors:

• Increased growth and investment in brand-ing in high- and middle-income economies.

• Increased product innovation, which encour-ages companies to file new trademarks to differentiate new goods and services in the marketplace.

• The shift to an innovating service economy, reflected by the fact that registrations for services trademarks have been growing faster than registrations for goods trade-marks.

• Greater global demand for trademarks.

• The rise of the Internet.

The second section looks into the economics of trademarks. It examines trademark regis-tration systems and poses questions about how different registration systems affect companies’ branding activities. One question involves the extent to which “cluttering” of the register (or the presence of “deadwood” reg-istrations) affects companies’ branding and marketing behavior.

Finally, the Report looks at how branding and trademarks influence innovation and competition. It suggests that companies with strong brands are encouraged to develop new products and services. This is because such companies can use valuable existing trade-marks on new products to motivate consumers to make purchases based on positive past experiences.

INTA welcomes the Report, as it sets out in clear and compelling terms why trademarks and the brands they represent are essential for consumers and for commerce. The Report’s carefully presented data and thought-provok-ing suggestions for future research provide an essential resource for the Association in its work and communications with policy makers.

In 2011, WIPO produced its first World Intellectual Property Report, “The Changing Face of Innovation.” Similar in scope to the 2013 brands report, the 2011 paper looked at the role research and development— and patents—play in the global economic system.

Trademarks Are Good for Consumers, Companies and the Economy, Says WIPO Report

Visit inta.org/perfectpartnership

Learn from colleagues and share best practices on how to maintain the perfect partnership with your existing clients.

Maintaining thePerfect Partnership

March 4–5 | New York, NY | New York Marriott Marquis

Tips to Strengthen Your Partnership with Your 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” which 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.

January 1, 2014 Vol. 69 No. 16

VolunteerSpotlight

Julián Vadillo is Founding Partner and Director of Trademarks at Vadillo & King, Mexico City, Mexico. The firm, founded in 1999, was initially known as Vadillo & Co., but recently changed its name to Vadillo & King after Julián’s partner, Patricio King, joined the practice as head of the patent department. Julián has been

involved with trademark law since 1990, when he started attending law school, and went to work with his father, Björn Vadillo, an IP attorney of more than 50 years standing.

Julián has been involved with INTA for quite some time, and particularly enjoyed working with the International Amicus Committee’s Latin America Subcommittee. He proposed a case for INTA intervention, namely, the SEÑOR FROG’S case, Grupo Anderson’s, S.A. de C.V. v. Mexican Institute of Industrial Property, relating to bad faith in trademark cancellation actions in Mexico. In 2009 and 2010, Julián actively worked on this case, and many mem-bers of the International Amicus Committee supported him in approving it for study and intervention by INTA.

In Julián’s opinion, although there are cur-rently several important issues in trademark law, a significant and challenging one is the fraudulent use of marks in social networks and media. While he feels that INTA effectively addresses all areas of trademark law, Julián believes that a particular area of focus should be to always try to anticipate trademark issues arising out of new technologies, whatever they may be and however they arise.

Julián is involved in a few businesses outside of the IP profession, and he feels a fondness

for the trademarks involved in these busi-nesses. Of his favorites, TUXCA INSECTO was created by his wife and developed by a Mexican contemporary artist; the mark relates to a project on which he is currently working. MARCA NEGRA, VADILLO & KING, ALEKZANDER and SUPIRIS are also expanding trademarks for which he feels a deep fond-ness. When it comes to famous marks, Julián’s favorite is DIESEL; besides the fact that he likes and uses this brand of goods, he admires and follows the proprietor’s marketing cam-paigns and strategies.

While not working, Julián spends time with his wife, their three children and their dog. On the weekends he and his family like to go to a lake near Mexico City to relax and play sports, mainly golf and water skiing. As a hobby, Julián studies, collects and invests in design, mainly Scandinavian and American Mid-Century Modern, which keeps him very busy. He is a big fan and collector of LEGO building blocks, and his Scandinavian design collection in-cludes LEGO blocks of all kinds.

Prem Sewak and Shefali SewakSewak & Associates, New Delhi, IndiaINTA Bulletin Association News Subcommittee

Enter your original trademark paper now to win the Ladas Memorial Award Competition. Funded by Ladas & Parry, this yearly award is presented in two categories—student and professional—for a paper on trademark law or a matter that directly relates to or affects trademarks. The winners each receive:

• US $2,000.• A set of Stephen P. Ladas’s three-volume treatise, Patents, Trademark, and Related Rights. • A complimentary registration to the 2014 Annual Meeting plus US $1,000 for student winners to cover travel to the meeting.

Winning papers are published in The Trademark Reporter. This competition is open to members and non-members and accepts international submissions. The deadline to submit is February 7.

Become an Award-Winning Trademark Author!

Enter the competition: www.inta.org/ladasapply

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Features

This article looks at the obstacles faced by trademark owners who want to register three-dimensional trademarks in the European Union and summarizes the current position in this area following a number of decisions by the Court of Justice of the European Union (CJEU).

Overview of Applicable Statutes and RegulationsTrademark laws across the EU are harmonized to a large extent, following the European Trademarks Directive (Directive) (European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trademarks (codifying Council Directive 89/104/EEC of 21 December 1988)). The Directive, which is directly applicable to registrations filed with the Office for Harmonization in the Internal Market (OHIM), is regulated by the Community Trade Mark Regulation (Regulation) (Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark (codifying Council Regulation (EC) No. 40/94 of 20 December 1993)).

In almost all parts relevant to this article, the Directive and the Regulation are equiva-lent in content and wording and have to be interpreted in the exact same way, while the difference between them is their scope only—the harmonization of the national trademark laws on the one hand and the regulation of EU trademark law on the other.

Depending on the matter in dispute (national trademark or Community trade mark), this article will refer, respectively, to Articles in the Directive or the Regulation rather than to the law of any particular jurisdiction. Nevertheless, the same objections will also apply to applications for the registration of three-dimensional trademarks within any indi-vidual EU member state.

Main Objections to Registration of Three-Dimensional TrademarksThe main parts of the Directive/Regulation relevant to the refusal of three-dimen-sional trademarks are to be found in Article 3(1)/7(1):

The following shall not be registered or if regis-tered shall be liable to be declared invalid:

(a) signs which cannot constitute a trade mark;

(b) trade marks which are devoid of any dis-tinctive character;

(c) signs which consist exclusively of:

(i) the shape which results from the nature of the goods themselves;(ii) the shape of goods which is necessary to obtain a technical result; [or](iii) the shape which gives substantial value to the goods.

Each of these potential reasons for refusal is reviewed below.

Signs That Cannot Constitute a Trademark—Article 3(1)(a)/7(1)(a)This objection will be raised where the trade-mark applied for does not meet the require-ments for what can constitute a trademark, as set out in Article 2 of the Directive:

A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, nu-merals, the shape of goods or of their packaging, provided that such signs are capable of distin-guishing the goods or services of one undertaking from those of other undertakings.

Provided the three-dimensional trademark is properly and clearly described in the applica-tion, it is rare that an objection under Article 3(1)(a)/7(1)(a) will be raised. However, there are examples of trademarks being refused reg-istration on this basis.

A good example is the CJEU’s decision in Dyson (Dyson Ltd. v. Registrar of Trade Marks, Case C-321/03 (CJEU Jan. 25, 2007)). Dyson applied to register two trademarks, each of which was described as follows: “The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the repre-sentation.” The representation filed with this description was in each case a picture of a bagless vacuum cleaner produced by Dyson. The CJEU held that this description was not a “sign” within the meaning of Article 2 of the Directive and so was not capable of constitut-ing a trademark.

Amusingly, in its online Manual, OHIM refers to trademarks where it is not clear from the rep-resentation what the shape applied for is as UFOs (unidentified filing date-seeking objects), and OHIM will not award a filing date until the exact scope of the trademark applied for is properly understood.

A trademark will be seen as “represented graphically” in an acceptable way if, fol-lowing the CJEU’s decision in Sieckmann (Ralf Sieckmann v. Deutsches Patent- und Markenamt, Case C-273/00 (CJEU Dec. 12, 2002)), the representation is “clear, precise, self-contained, easily accessible, intelligible, du-rable and objective.” The Sieckmann decision specifically notes that the use of “images, lines or characters” is an acceptable form of graphic representation, which further explains why this objection is not raised that often.

Trademarks That Are Devoid of Distinctive Character—Article 3(1)(b)/7(1)(b)Proving that a three-dimensional trademark representing the shape of a product is distinc-tive can be a major problem. Although the test for three-dimensional trademarks is notionally the same as for all other trademarks, there is an acceptance that the public’s perception of trademarks consisting of the appearance of a product is not necessarily the same as for other trademarks unrelated to the shape of that product.

The basic test is that, to be distinctive, the three-dimensional trademark must be for a shape that “departs significantly from the norm or customs of the industry.” This word-ing comes from the CJEU’s decision in Lindt (Chocoladefabriken Lindt & Sprüngli AG v. OHIM, Case C-98/11 P (CJEU May 24, 2012)), with the equivalent wording being used in nu-merous decisions in recent years.

If a three-dimensional trademark does not dif-fer sufficiently from the “norm,” the idea is that it will be seen by consumers not as an indica-tion of origin but rather as the product itself.

In Lindt, the trademark in question consisted of the shape of a rabbit and its (in terms of shape) identical packaging, applied for in re-spect of chocolate, as shown in the represen-tations below:

The CJEU defended the analysis undertaken by the tribunals below, which had held that each of the three elements of the trademark (the shape of a sitting rabbit, the gold foil in which

Shapes of Things: The Protection of Three-Dimensional Trademarks in the EUMark HolahField Fisher Waterhouse LLP, London, UK INTA Bulletin Association News Subcommittee.

See “Shapes of Things” on page 8

January 1, 2014 Vol. 69 No. 18

Featuresthe chocolate rabbit was wrapped and the pleated red ribbon to which a small bell was attached) were commonplace in the relevant sector and, as a result, each of them was de-void of any distinctive character. This led to the application’s being refused.

For a three-dimensional trademark to be capa-ble of registration, it must be different enough from shapes commonly seen by relevant consumers (either through a combination of el-ements or because the shape itself is very un-usual) or it will not be viewed as a trademark, which is going to be difficult to prove in most cases unless the mark applied for includes some additional distinctive element over and above the shape itself.

The above analysis considers whether a shape is inherently capable of registration. Even if a shape fails this test, it is possible to obtain a registration if it can be proven that the public has been educated to view the shape as a trademark (i.e., that the shape has acquired distinctiveness as a result of the use made of it).

Signs Consisting Exclusively of the Shape Resulting from the Nature of the Goods Themselves—Article 3(1)(e)(i)/7(1)(e)(i)The purpose of this Article is to ensure that basic shapes are kept available for all traders to use. As this objection will be raised only where the mark applied for is “exclusively” the shape of the goods, the application of the Article is narrow.

A shape that is applied for in respect of goods that are not identical to the shape will not be refused under this Article. For example, Salvatore Ferragamo S.P.A. registered the shape of a buckle as a trademark for a vari-ety of goods, including “clothing.” The OHIM Cancellation Division refused an application to invalidate this registration under Article 7(1)(e)(i), finding that, although a buckle may form a part of the goods, “a buckle cannot be con-sidered to constitute the ‘appearance’ of the goods in which it is incorporated.”

If the shape applied for is identical to the goods applied for, it is not possible to

overcome the objection, even if consumers do recognize the shape as a trademark. This is because proving acquired distinctiveness can-not be used to overcome any of the three parts of Article 7(1)(e).

Signs That Consist Exclusively of the Shape of Goods That is Necessary to Obtain a Technical Result—Article 3(1)(e)(ii)/7(1)(e)(ii)A large number of cases in the EU have ex-amined this issue, perhaps most notably the CJEU decisions relating to the PHILIPS three-headed razor (Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd, Case C-299/99 (CJEU June 18, 2002)) and the LEGO brick (Lego Juris A/S v. OHIM, Case C-48/09 (CJEU Sept. 14, 2010)).

The intention of this Article is to prevent trade-mark owners from obtaining perpetual mo-nopolies for technical solutions or functional characteristics of a product, which are capable of protection (as patents or registered designs) only for a limited period.

In the Lego decision, it was said that by the inclusion of the terms “exclusively” and “nec-essary,” Article 7(1)(e)(ii) ensures that “shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertak-ings, are not to be registered.”

This means that Article 7(1)(e)(ii) will be raised as an objection to registration where all the essential characteristics of the shape are dictated by technical function, such that a reg-istration of the shape as a trademark could be used to prevent others from using that techni-cal solution. This also means that if the shape includes nonfunctional elements it will not be refused registration under this Article.

As would be expected, the arguments around whether a shape should be refused regis-tration under this Article generally relate to whether the shape is “exclusively necessary” to achieve a technical result, or whether the shape also includes nonfunctional elements that are more than merely trivial embellish-ments or variants.

As noted above, no amount of acquired distinc-tiveness will allow an applicant to overcome an objection validly raised under this Article.

Signs Consisting Exclusively of the Shape That Gives Substantial Value to the Goods—Article 3(1)(e)(iii)/7(1)(e)(iii)This objection is also applied narrowly, to cases where the shape has an aesthetic func-tion. The objection is not related to the com-mercial value of the goods.

Perhaps the best way to look at this Article is that it prevents the registration of shapes that add value to the goods, disregarding any value attributable to the shape functioning as a trademark. For example, in a General Court (GC) decision relating to an application for the shape of a Bang & Olufsen loudspeaker (Bang & Olufsen v. OHIM, Case T-508/08 (GC Oct. 6, 2011)), it was found that the aesthetic charac-teristics of the shape were emphasized when the product was offered for sale, making the shape “an important selling point.” Also, the registrant admitted that the shape was “an es-sential element of its branding and increases the appeal of the product at issue.” In these circumstances, the application was refused under Article 7(1)(e)(iii).

Again, as noted above, no amount of ac-quired distinctiveness will allow an applicant to overcome an objection validly raised un-der this Article.

ConclusionThere are a number of obstacles that need to be overcome before a three-dimensional trade-mark can be registered in the EU. While some of them can be surmounted by ensuring that the trademark is accurately and clearly repre-sented in the application, if the trademark rep-resents the shape of the products in respect of which registration is sought it is rare that all the obstacles can be overcome.

For more on this topic, see INTA’s Global Trademark Research products, “Trade Dress: International Practice and Procedures” and the “Trade Dress Image Library.”

Shapes of Things Continued from page 7

Searchable database on the cancellation practice and procedure in more than 85 jurisdictions worldwideTrademark Cancellations on INTA’s Global Trademark Research Page

Visit www.inta.org/Cancellations

9

Law&Practice

EUROPEAN UNION CJEU Will Weigh Trademark Rights Against Bank Secrecy PrivilegesIn its decision of October 17, 2013 (Case No. I ZR 51/12), the German Federal Supreme Court referred to the Court of Justice of the European Union (CJEU) the question whether a bank can invoke the doctrine of bank secrecy—which allows banks to keep client information confidential except in certain circumstances—when asked to disclose the name and address of a trademark infringer.

In the case concerned, the plaintiff trademark owner purchased a fake perfume on the Internet platform eBay. The purchase price had to be paid into a bank account indicated in the offer. The plaintiff could not identify the seller of the fake product, and therefore it asked the bank to disclose the name and address of the bank account holder. The bank refused to do so, referring to bank secrecy privileges. After contrary decisions at the first and second instances, the German Federal Supreme Court held that the interest of the trademark owner should outweigh the policy of bank secrecy.

According to Section 19(2) of the German Trademark Act, which implements Article 8 of the EU Directive on the Enforcement of Intellectual Property Rights (Directive 2004/48/EC of 29 April 2004) (EU Enforcement Directive), a trademark owner can, in the case of manifest trademark

infringement, request information on the origin and sales channels of unlawfully des-ignated goods or services from a person who provided on a commercial scale services used for the infringing activities. The bank, having commercially provided a service (the bank account) that was used for sales of the fake products, generally would be obligated to dis-close the requested information. However, this obligation is subject to the condition that the bank would not have been entitled to refuse to testify in a trial against the infringer. The right to refuse to testify is granted by Section 383 of the German Code of Civil Procedure, which provides for the right in favor of persons “to whom facts are entrusted …, the nature of which mandates their confidentiality, or the confidentiality of which is mandated by law.” Banks belong to this category.

As the claim for information is based on na-tional law harmonized by superior EU law, namely the EU Enforcement Directive, the exception for banks(i.e., Section 383 of the German Code of Civil Procedure) would also have to be covered by the Directive.

Article 8(3)(e) of the Enforcement Directive may justify the exception. According to this pro-vision, the obligation of the EU member states to provide for information claims in their na-tional law applies “without prejudice to other

statutory provisions which govern the protec-tion of confidentiality of information sources or the processing of personal data.”

The German Federal Supreme Court has now asked the CJEU whether the bank account data of the infringer falls under Article 8(3) (e) and—if that question is answered in the affir-mative—whether the interest in an effective prosecution of trademark infringements may nevertheless oblige the bank to provide the requested information.

No matter what the CJEU’s judgment is, this case will lead to a landmark decision with relevance to other intellectual property rights. If decided in favor of the trademark owner, it could help IP owners better enforce their rights in intangible media such as the Internet.

Contributor: Martin ViefhuesJONAS Rechtsanwaltsgesellschaft mbH, Cologne, Germany

Verifier: Ursula Stelzenmüller Lichtenstein, Körner & Partners, Stuttgart, Germany

Both are members of the INTA Bulletin Law & Practice—Europe & Central Asia Subcommittee.

The National Institute of Industrial Property (INPI) and the National Council to Combat Piracy, a consultative body of the Ministry of Justice, recently launched a new project that will help to curb trademark counterfeiting in Brazil: the creation of the National Directory to Combat Trademark Counterfeiting (Directory). The Directory is a database containing trade-mark owners’ technical and legal information, which can be used by government agents en-gaged in fighting trademark counterfeiting and the associated tax evasion. The main purpose of this new tool is to facilitate cooperation be-tween trademark owners and the government agencies that combat infringement of intellec-tual property rights.

The Directory, which is one of the projects comprising the National Plan to Combat Piracy, will be available to government

employees of the Federal Police, Federal Highway Police, Civil Police, Federal Revenue Service, State Departments of Public Safety and forensic institutes, among others. Among the benefits provided by this greater ability to share information is that it will help police officers investigate possible trademark coun-terfeiting cases.The Directory will contain (1) contact details of the trademark owner’s representative who should be contacted in possible cases of coun-terfeiting and (2) strategic information on the marks that may be subject to trademark coun-terfeiting. For instance, trademark owners will be able to provide for inclusion in the Directory pictures, texts and presentations regarding original and counterfeit products.It is important to note that the Directory will contain information only on trademarks that

have been registered with the INPI. Information about applied-for marks provided by owners of pending trademark applications may not be included in the Directory.

The INPI will be responsible for the manage-ment of the Directory and for collecting and processing the information provided by trade-mark owners. The National Council to Combat Piracy will supervise the project. The inclusion of information in the database will be done electronically.

BRAZIL Creation of a “National Directory to Combat Trademark Counterfeiting”

Contributor: Pedro TavaresBarbosa Müssnich & Aragão Advogados, Rio de Janeiro

Verifier: Eduardo MachadoMontaury Pimenta Machado & Vieira de Mello, Rio de Janeiro

January 1, 2014 Vol. 69 No. 110

Law&Practice

The High Court of New Zealand recently re-fused to register the trademark FIPROLINE in New Zealand, upholding an appeal from a trademark opposition decision of the Assistant Commissioner of Trade Marks. The High Court found that the trademarks FRONTLINE and FIPROLINE were likely to be confused with each other when used in relation to veterinary products, an assessment that was in stark contrast to that reached by the Assistant Commissioner of Trade Marks. Merial v. Virbac SA [2013] NZHC 2773 (Oct. 22, 2013).

Virbac SA applied to register the trademark FIPROLINE in Class 5 for “veterinary prepara-tions, particularly an anti-parasitic preparation for external use.” Merial opposed registration of the trademark primarily on the basis of its prior use and registration of the trademark FRONTLINE. Merial had used and promoted the FRONTLINE mark extensively in New Zealand in relation to veterinary products, and had also registered other variations of the FRONTLINE mark.

Although the Assistant Commissioner found that Merial had established that it had a reputa-tion in its FRONTLINE trademarks in relation to flea treatment products for cats and dogs, and that there was an awareness among consum-ers that those products contained the active ingredient fipronil, the Assistant Commissioner dismissed the opposition, holding that the marks FRONTLINE and FIPROLINE were visually and aurally dissimilar and were also not similar conceptually. She noted that FRONTLINE was a known English word, while FIPROLINE was an invented word.

Merial appealed the decision to the High Court (Auckland Registry). Ms. Justice Mallon

upheld the appeal, concluding that there were “quite strong similarities” between the marks, as both commenced with the letter F and ended with the word LINE. Although the judge agreed that there were conceptual differences between the marks, she observed that the risk of consumer confusion was heightened by the fact that Merial’s FRONTLINE product contained fipronil and that this was referred to on its product packaging. Justice Mallon concluded that although the respective marks were conceptually different, “the actual use of FRONTLINE includes reference to fipronil and there is an awareness of that. Allowing for imperfect recollection and the compet-ing products not necessarily being sold side by side, the purchasing public may think that FIPROLINE (which contains the active ingredient fipronil) is, or is associated with, FRONTLINE (which contains the active ingredi-ent fipronil).”

This assessment may alarm manufacturers of veterinary or pharmaceutical products, as it is reasonably common for competitors in those markets to create and use distinguishable trade-marks that nonetheless allude to the same key active ingredient present in the products.

Justice Mallon held that the relevant market for veterinary preparations did not comprise veterinarians only, but also the general public. She felt that people were not necessarily likely to pay the same kind of attention to the name of a flea treatment product as they might to, for example, product names when purchasing televisions.

The Assistant Commissioner, on the other hand, had been satisfied that use of the opposed mark was not likely to deceive or

confuse because the relevant market was likely to be discerning, and because the marks at issue “(when assessed correctly as a whole) are visually, aurally, and conceptually dissim-ilar.” Virbac SA v. Merial, [2012] NZIPOTM 16 (June 11, 2012).

As a separate issue, the Court also found that the Assistant Commissioner erred in permitting registration of FIPROLINE, as the specification was not confined to products containing fipronil. The judge concluded that any person who knew that fipronil was an active ingredient in a flea treatment was likely to think that FIPROLINE products contained fipronil. Consequently, she found that con-fusion was likely to occur if the FIPROLINE mark were used to sell products that did not contain fipronil. If the Court had not found that the FIPROLINE and FRONTLINE marks were sufficiently similar to uphold the appeal under Section 17 of the Trade Marks Act 2002 (absolute grounds for not registering a trademark), the registration would have been narrowed to include the words “that include fipronil as an ingredient.”

The decision demonstrates the great weight that evidence can play in New Zealand opposi-tion proceedings in relation to marks that may otherwise be considered dissimilar. However, the conclusion reached by the Court—that the reference to the word “fipronil” in both prod-ucts may result in consumer confusion—is one that many may find surprising.

NEW ZEALAND High Court Makes Surprising Assessment of Similarity Between Trademarks

Contributor: Nick HolmesDavies Collison Cave, Melbourne, Australia

Verifier: Jane MontgomeryIntellectual Property Barrister, Christchurch, New Zealand

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For more information, or to volunteer as an oral argument or brief reading judge, visit www.inta.org/lefkowitz or contact Carin Diep-Dixon at cdiep@inta.org

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Law&PracticeThe Thai Deputy Commerce Minister recently declared that Thailand will take serious steps to decrease the number of counterfeits in the country and to improve intellectual property protection, with the goal of increasing the con-fidence of business owners.

In the past few years, counterfeiting in Thailand has continued to persist at a consis-tently high level, and has become more sophis-ticated, particularly in the distribution compo-nent of the supply chain. Online distribution, transshipment and small bundle packaging are now employed to defeat efforts by Thai Customs and customs offices around the world to intercept counterfeit goods from Thailand.

The many items counterfeited in Thailand include apparel, luxury goods, movies and music. Regarding apparel, the number of counterfeits of football (soccer) jerseys in particular has increased. The magnitude of counterfeiting activity in Thailand has resulted in Thailand’s being placed on the United States Trade Representative (USTR) Watch List. However, the USTR is aware of the

Thai government’s serious efforts to reduce counterfeits, as well as its steps to improve IP protection through amendments to the Thai Trademark Act and IP-related regulations.

To further its anticounterfeiting strategy, the Thai government established the National Intellectual Property Rights Center of Enforcement (NICE). NICE, which is under the responsibility of the Thai Ministry of Commerce, is responsible for monitoring and reducing violations of intellectual property rights. With a goal of reducing counterfeits in Thailand, NICE coordinates and assists the efforts of 25 Thai governmental agen-cies involved in anticounterfeiting activities. Among the agencies are the Department of Special Investigations and the Economic Crime Suppression Division of the Royal Thai Police. The cooperation among the various agencies in investigating and coordinating seizures has assisted overall communications and strategy setting for Thailand’s anticounterfeiting activi-ties, resulting in a reduced number of counter-feits in Thailand.

NICE works to increase awareness of intellec-tual property among the public and to improve the public’s understanding of the negative repercussions of counterfeiting. To assist with this effort, NICE is working with the Thai Ministry of Education to create and implement school courses to increase IP awareness and knowledge among students. NICE is also in-creasing cooperation among Thai governmen-tal agencies, intellectual property right owners and the public.

These efforts demonstrate that the Thai gov-ernment is taking serious actions to stop coun-terfeits in Thailand. These new and enhanced steps by the Thai authorities will create greater confidence among investors and brand owners in Thailand.

THAILAND Recent Government Crackdowns on Counterfeits

Contributor: Dan GreifSiam Premier International, Bangkok

Verifier: Edward Kelly Levi Strauss, Bangkok

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 Down-loadable 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.

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Save the date for INTA’s 136th Annual MeetingMay 10–14, 2014 | Hong Kong

Expand your professional knowledge and grow your portfolio of international clients at the world’s largest and most widely attended trademark conference. Whether you are a newcomer or a seasoned IP professional in Asian markets, the International Trademark Association’s Annual Meeting in Hong Kong presents the perfect chance to explore new opportunities in this dynamic and fast-growing region.

Plan now! Registration opens January 15.Visit www.inta.org/2014INTAAM

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