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Sara Blotner of Citigroup Inc., Co-Chairof INTA’s 130th Annual Meeting alongwith Peter Munzinger of BardehlePagenberg Dost Altenburg Geissler,attended last night’s Gala Dinner to wel-come this year’s attendees. Blotner (pic-tured below) has been an active memberof INTA for eight years. Her first rolewith the Association came when she

moderated a panel for the LeadershipMeeting in Miami. When she was invit-ed by INTA to help plan the AnnualMeeting this year, Blotner readilyaccepted, despite being over two monthspregnant.

This year, Blotner said that INTA’steam leaders focused on trying toincrease the amount of internationalprogramming, since the event is beingheld in Europe. “We’re trying to breakdown barriers,” said Blotner. “We’reimplementing cross-border programmingand focusing on issues such as cross-border advertising and rights of publicity.”

She added: “It was a happy coinci-dence that the meeting was held outsidethe US this year, since we also have anon-US president, Rhonda Steele.”

Steele, who presented last night’sawards, said: “I’m very excited aboutthe next few days; nervous too, butmostly excited, and I wish everyone avery good Annual Meeting.”

The co-chairs are responsible forchoosing an overall program team, whoin turn choose capable team leaders togenerate fresh ideas for the meeting.

Sunday, May 18, 2008 www.managingip.com

CONTENTS 2 • QUIZ 13 • CITY GUIDE 10 • AFFILIATE PARTY PHOTOS 15 • SCHEDULE 16

www.inta.org 130TH ANNUAL MEETING, BERLIN

Daily NewsPUBLISHED BY

PROFILE: KEYNOTE SPEAKER HANS VAN BYLEN 4

INTERVIEW: THOMAS SCHATZ OF STAEDTLER 6

FEATURE: MADRID SYSTEM LATEST 12

IP owners risk losing influencewithin ICANN, the not-for-profit body that regulatesInternet domain names, undercontentious proposals nowbeing considered to restructurethe organization.

The ICANN Board isexpected to vote on theGNSO Improvement Report,which proposes to restructurethe Generic Names SupportingOrganization (GNSO), withinthe next few months. TheGNSO is one of the three sup-porting organizations withinICANN and elects two mem-bers to ICANN’s 15-strongBoard. It is the main body inwhich IP owners’ interests arerepresented.

The GNSO now has sixconstituencies: Commercial &Business, gTLD Registries,Internet Service Providers,

Non-Commercial, Registrarsand Intellectual Property.

Under proposals that wereput out for public comment inFebruary this year, theCommercial, ISPs and IP con-stituencies will be merged intoone Commercial InterestGroup. This will reduce thevoting power and voice of pri-vate-sector interests comparedto non-commercial interests,registries and registrars.

This could ultimately reducethe influence that IP ownershave when ICANN is decidingpolicies on issues such asdomain tasting and Whoissearches, which directly affectrights owners.

Claudio DiGangi, INTAExternal Relations Manager,Internet & The Judiciary, toldthe INTA Daily News: “It isunclear where the IP

Constituency would fit in tothis revised structure. It is evenpossible it might get dissolved.”

The public comment periodended on April 25, andICANN’s Board may vote onthe proposals as soon as theend of this month.

In response to the consulta-tion, four of the GNSO con-stituencies (without the reg-istries and registrars) togetherwith ICANN’s At-LargeAdvisory Committee, submit-ted an alternative Joint UsersProposal, which proposed a

tri-partiteapproach con-sisting of threeequal groupsrepresentingcontracted par-ties, commercialinterests andpublic interests.

INTA’s Internet Committeesupports this proposal.

ICANN’s Board meets onMay 29, when it is likely toconsider the rival proposalsfor the GNSO structure,although a decision may notbe made then. ICANN’s nextpublic Meeting is to be held inParis from June 22 to 26.Members of the IP communitywho are concerned about theproposals can attend thatMeeting, and also contactICANN directly by [email protected]

About 500 guests at last night’s GalaDinner, which was held at the Ritz-Carlton Berlin, enjoyed a dinner ofcoconut guacamole with poached prawns,mango and shellfish aioli, followed byfoam of curry soup with sautéed scallop,seared breast of guinea fowl with Parmaham, risotto with bell peppers and greenasparagus and chocolate variations, withfresh peppermint ice cream.

Awards were presented to the winnersof the Ladas Memorial Award, the SaulLefkowitz Moot Court Competition andthe Alternative Dispute Resolution OnlineCompetition. The names of all the win-ners are printed on page 2.

The evening was complemented bythe sounds of Ars Vivendi, a Germanbaroque classical band dressed in tradi-tional garb.

ICANN reforms threaten voice of IP owners

Gala celebrates competition winners

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The INTA Daily News is produced by Managing Intellectual Propertyin association with the International Trademark Association. Printedby Moller Druck in Berlin. The INTA Daily News is also available onlineat www.inta.org and www.managingip.com. © EuromoneyInstitutional Investor PLC 2008. No part of this publication may bereproduced without prior written permission. Opinions expressed inthe INTA Daily News do not necessarily represent those of the INTAor any of its members.

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

NEWS

Anticounterfeiting treaty agreed 2

NEWS

WIPO DG elected 3

PROFILE

Hans Van Bylen, Henkel 4-5

INTERVIEW

Thomas Schatz, Staedtler 6-8

Classified advertising 9, 11

CITY GUIDE

Berlin: sights and museums 10

PREVIEW

Madrid Protocol update 12-13

COMPETITION

Berlin quiz 13

Vox pop 14

Private reception photos 15

Schedule 16

CONTENTS

NEWS

Visit INTA’s Anticounterfeiting Exhibitin Hall 16 to learn more about anti-counterfeiting initatives.

Today’s Speakers:

12:00 pm Natalia Gulyaeva,Consultant, Head of IPPractice–Lovells (Russia)

12:30 pm Ricardo Cajola,Partner–Cajola & Associati(Italy)

1:00 pm Dr. Nils Weber, Attorney-at-Law, ManagingDirector–JonasRechtsanwaltsgesellschaftmbH (Germany)

1:30 pm Terrence Brown,Attorney–Shlesinger,Arkwright & Garvey LLP(United States)

2:00 pm Karen Fong,Executive–Rouse Legal(United Kingdom)

2:30 pm Lian Yunze, Attorney-at-Law–Hylands (Haotian) LawFirm (China)

3:00 pm Rebecca Gibbs, ChiefCounsel, IntellectualProperty–American EagleOutfitters (United States)

3:30pm Amanda Wilson,International TradeSpecialist–U.S. Departmentof Commerce (UnitedStates)

INTA Daily NewsANNOUNCEMENTS

Ladas Memorial AwardWinnersStudent Recipient: ElizabethFlanagan, University of Minnesota LawSchool

Professional Recipients: Graham B.Dinwoodie, Professor of Law andAssociate Dean, Chicago-Kent Collegeof law and Mark Janis, Professor ofLaw, University of Iowa

Saul Lefkowitz Moot CourtCompetition WinnersWinning Team: University ofCalifornia, Hastings College of the Law

Second Place Team: Duke UniversitySchool of Law

Best Oralist Team: University ofCalifornia, Hastings College of the Law

Second Place Oralist Team: DukeUniversity School of Law

Dolores K. Hanna Best Brief:Washington University School of Law

Second Place Brief: GonzagaUniversity School of Law

ADR Online CompetitionWinnersBest Advocate: Petroula Vantisiouri,Aristotle University of Thessaloniki

Best Mediator, Second Place BestAdvocate: Charles-Henry Massa,European University Institute (EUI) inFlorence, Law Department

Get ready for the launch of thenew INTA Committee Portal atthis year’s Annual Meeting! Thiscollaborative resource will centercommittee, subcommittee andproject team activity in one placeon the Web. Committee mem-bers will be able to gather andshare information specific totheir individual committee, sub-committee or project team needs,as well as manage projects anddocuments from their desktopanywhere in the world.Navigation is intuitive andrefreshingly familiar. Users willbe able to drill down to a specif-ic committee, subcommittee orproject team to which they havebeen assigned. Upon doing so,users can communicate with

their team, share information,post discussions, review projectscopes / deadlines / responsibili-ties and collaborate as neverbefore!

Some of the CommitteePortal’s resource tools include:• Direct access to a committee,

subcommittee or projectteam’s documents, includingconference call materials;

• A calendar of upcoming com-mittee, subcommittee or proj-ect team events;

• An interactive communicationtool;

• Committee, subcommittee orproject team email distribu-tion lists;

• A project management space;and

• Important links relevant to thegroup’s work product. To learn more about the

Committee Portal while in Berlin,go to the INTA Booth in Hall 16for a demonstration or simplyvisit committee.inta.org. Pleasenote that this is for currentCommittee Members only.Contact your staff liaison formore information.

Writers/Contributors: DavidGryce (Arent Fox), JeremyJohnson (Marksmen) & GraceJennings (Wong Cabello)

All are members of the MSC:Leadership DevelopmentSubcommittee—LeadershipTransition Project Team

INTA’s online Committee Portal premiers in Hall 16

Emotional intelligence is one of themost important skills that a media-tor needs to have, according to JaneJuliano, president of Juliano &Associates, a dispute resolutionfirm and one of the trainers at thecontinuing education course for theINTA Panel of Neutrals that fin-ished yesterday. “The ability tounderstand and categorize whatyou are hearing, what motivation isbehind it and what it is that you arenot being told is crucial,” she said.

Mediation is a form of alterna-tive dispute resolution that differsfrom arbitration in that it is a non-binding procedure where the par-ties must voluntarily agree to settle. The role of themediator can change depending on the nature of thedispute, but the primary goal is to try and encouragethe parties to be creative and think of a mutuallybeneficial way of solving a dispute.

INTA’s Panel Of Neutrals now has more than 150members worldwide helping to solve trademark dis-putes out of court. Mediation is becoming increas-ingly popular for the simple reason that “if you cansettle a case based on business interest you can getback to work more quickly and save a lot ofmoney,” according to Sandra Sellers, president ofTechnology Mediation Services, which organized thetraining course.

Juliano said that one of the most common mis-takes that trademark mediators make is to decidetoo quickly how they think the dispute should besolved and start recommending solutions too earlyin the process. “You miss out on a lot of possiblebenefits by keeping the mediation narrow,” she said.Juliano added that most cases settle in just “one longday” of around 16 hours, though some disputesneed a series of one-day mediations.

Although mediation is most widely used in the USit is gaining popularity in Europe, and the Panel ofNeutrals also has members throughout the MiddleEast, Asia and Africa. In the US the Court ofAppeals for the Federal Circuit (CAFC) introduced amandatory mediation program in 2007 to helpreduce its backlog of cases.

CAFC Chief Judge Paul Michel in his State of theCourt address on May 15 this year said that, of thecases selected for mediation by the court, over 40%settle. The court has two staff officers and 23 pro-bono mediation officers helping to process the dis-putes quickly and fairly.

The mediation training at this year’s AnnualMeeting was an advanced course that looked at issuessuch as overcoming impasses and techniques to closeout sessions. Forty members of the panel of neutralsfrom 24 different countries including Barbados, Haitiand Monaco attended the session. The training consist-ed of a series of lectures along with role plays, includ-ing one on the controversial issue of Internet keywordadvertising – a problem that might tax the emotionalintelligence of even the most skillful mediators.

Develop your emotional intelligence Last night’saward winners

Attendees arrived at theICC in Berlin yesterday toregister for the 130th INTAAnnual Meeting from 1pmonwards. This is the secondINTA Annual Meeting to beheld in Europe.

F rancis Gurry of Australia was electedas the next director-general of theWorld Intellectual Property

Organization (WIPO) at a meeting inGeneva earlier this week.

Gurry, who is now deputy director-gen-eral of WIPO and was formerly theOrganization’s general counsel, beat JoséGraça Aranha of Brazil 42-41 in the final

round of voting among 83 of theOrganization’s member states.

His appointment will be approved atthe WIPO General Assemblies inSeptember, after which he will take over asdirector-general from Kamil Idris, who isstepping down a year early. Gurry will bethe fourth director-general of WIPO fol-lowing Georg Bodenhausen of the

Netherlands (1970-1973), Arpad Bogschof the United States (1973-1997) andKamil Idris of Sudan (1997-2008).

The election, which took place onTuesday, started with 14 candidates whowere gradually eliminated during fourrounds of voting. Gurry led the voting ineach round.

Gurry, who is 57, holds law degrees

from the University of Melbourne and adoctorate of philosophy from theUniversity of Cambridge. He joined WIPOin 1985 as a consultant and senior pro-gram officer for the DevelopmentCooperation and External RelationsBureau for Asia-Pacific.

He was not available for interview fol-lowing the election, but speaking toManaging IP earlier this year he said that,if elected, he would bring “sound and bal-anced management of multilateral IP policyprocesses and administration” to the role.

He also identified four priorities for theOrganization: first, to enhance the qualityand responsiveness of its services; second,enhance its skill base as a secretariat; third,focus on the technical mission; and, fourth,engage in policy issues in other areas thatinvolve intellectual property.

Gurry said he would address concernsthat there are divides between developedand developing countries at WIPO: “I seeit not as two groups of countries but as aspectrum with shades of differences, basedon factors such as the size of population,economy, economic geography, knowl-edge capacity, resource base and infra-structure. The needs and demands ofcountries are different; there is a continu-um of differences. One needs to find waysin which to proceed that are useful forsome countries and do not harm othercountries.”

Alan Drewsen, Executive Director ofINTA, said: “The Association warmly wel-comes Dr. Gurry’s nomination. INTA iswell aware of Dr. Gurry’s contributions atWIPO, and we have worked effectivelywith him for many years.”

Gurry said his hobbies include reading,swimming, gardening and spending timewith his family. Asked what record hewould take to a desert island, he saidBeethoven’s violin concerto. And he rec-ommended that IP practitioners shouldread Measure for Measure by WilliamShakespeare: “It’s a good metaphor forjustice.”

www.managingip.comINTA Daily News – Sunday, May 18 2008 3

NEWS

Gurry chosen as WIPO director-general

“The needs anddemands of countriesare different”

Last month Henkel, a German company foundedmore than 130 years ago in the western city ofAachen, appointed a 46-year-old Dane as thechairman of its management board. The decision

to hand the top job to Kasper Rorsted, thecompany’s first chairman from outside theGerman-speaking area—as well as toappoint two other non-Germans to the fivemember board—is symbolic of the compa-ny’s transformation into a true global com-pany over the past decade, says Hans VanBylen, the company’s Belgian executive vice-president and keynote speaker at this year’sINTA Annual Meeting.

Van Bylen says that the adhesives, homecare and personal care company has under-gone major changes over the past decade.“Some people might regard Henkel as arather old-fashioned German company—although I hope not! ... Its single biggest mar-ket in terms of turnover is now the US. Overthe past 10 years the company has become areal global company. That has taken the issueof branding to a new dimension and protect-ing our intellectual property has becomeincreasingly important as the company hasbecome increasingly global,” he says.

The evidence of that globalization is clear:around 80% of Henkel’s employees arebased outside of its home market and of allthe companies listed on the German stockmarket index DAX 30, Henkel is numberone in terms of the number of people that itemploys outside of Germany. Emerging mar-kets account for around 35% of the compa-ny’s turnover and it has made major acquisi-tions in the 1990s and beyond: it bought the

cosmetics company Hans Schwarzkopf in 1995, acquiredall the shares of Loctite Corporation in 1997, bought theUS Dial Corporation in 2004 and deodorant brands RightGuard, Soft Dri and Dry Idea two years later.

This expansion has created new branding challenges forHenkel’s marketing team and new trademark challengesfor its IP specialists. Around 80% of the company’s brandsare global and 20% are local, says Van Bylen. “What

www.managingip.comINTA Daily News – Sunday, May 18 20084

PROFILE: HANS VAN BYLEN, HENKEL

Henkel’s global transformationThis year’s INTA Annual Meeting keynote speaker Hans Van Bylen tells Emma Barraclough how careful brand managementand the exploitation of “glocal” products have helped Henkel become a true global player.

Hans Van Bylen is executive vice-president ofHenkel and a member of its management board.The company operates in three business areas-home care, personal care and adhesives technolo-gies-and ranks among the Fortune Global 500 com-panies, as well as being in the German DAX 30. VanBylen joined Henkel in 1984 and was named corpo-rate vice-president in 2001, managing the strategicbusiness units for skin, oral and hair care and hold-ing regional responsibility for Western Europe,North and Latin America and Asia-Pacific. In July2005 he was appointed to his current role, wherehe is responsible for Henkel’s global €3 billion per-sonal care business.

Hans Van Bylen

makes us different [from some of our competitors] is thatwe also believe strongly in our local brands.”

Going “glocal”In fact, the company has combined elements of both by devel-oping a concept that it calls “glocal” brands. Van Bylenexplains more: “These are often brands that we have acquiredin the past, and which may have huge brand equity. Whenthey do, then we keep the original brand name to take advan-tage of that equity, but use the same packaging that we use forproducts sold in other markets.” One example of a glocalbrand is its FA range of deodorants and shower gels. InSweden the products are sold under the Barnängen label—aSwedish brand that Henkel acquired in the mid 1990s—andin Italy as Neutromed—another local brand it bought aroundthe same time. “We have three different labels for a productthat is made in the same factory,” says Van Bylen. “That waywe benefit from the local brand equity as well as takingadvantage of the economies of scale that Henkel can pro-

vide.” Similarly, the glocal strategy is employed in its range ofhair coloring products, which are sold in France as Soyance,and in Greece as Silken Color (see pictures).

The company has also used the same process in reverse,taking local, newly acquired brands global. One example isGot2b, a brand of hair styling products originally sold inNorth America by ARL, which Henkel added to its portfolioin 2004. The Got2b range of hair gels and mousses are nowsold across much of the EU, Russia, Switzerland, Australiaand China. Significantly, however, the Got2b brand was alsointegrated tightly into Henkel’s existing hair care brandSchwarzkopf as part of its strategy to create a single, stronghair care division. The acquisition of the Schwarzkopf brandfrom Hoechst in 1995, and the company’s subsequent mar-keting and branding strategy has proved to be a big success.Thirteen years ago, the Schwarzkopf range had a turnover ofaround €500 million. Now it exceeds €1.6 billion—makingit the single biggest brand within Henkel (followed by Loctiteat €900 million and Persil at €700 million) and the fastest—

growing hair care company inEurope.

“We decided that we wouldtreat Schwarzkopf as a masterbrand—given that it has hugebrand equity—and emphasize thisas much as the sub-brands that it

encompasses,” says Van Bylen. Those sub-brands includeTaft (the biggest hair styling brand in Europe), Gliss, Got2band Palette. “That meant that all of our commercials startwith the Schwarzkopf brand, include information aboutour innovations, and end with the Schwarzkopf brand.”

Van Bylen also attributes the growth of theSchwarzkopf brand since it was acquired by Henkel to thecompany’s decision to manage sales through two differentchannels: retail and salons. “We have the same masterbrand—Schwarzkopf—but different products and sub-brands for each channel. That way the sub-brandsstrengthen each other and the retail brands benefit frombeing associated with brands used by hairdressing profes-sionals. I think that Henkel does this more explicitly thanany other hair care company.”

When it comes to protecting its intellectual property,Van Bylen says that Henkel’s expansion into new marketshas meant that employees have needed to become moreproactive: “The IP people are increasingly involved in thecommercial aspects of the business because they need tounderstand the company’s business strategy and its globalexpansion plans.” As a result, Henkel has taken steps tointegrate its trademark specialists within the company’sbusiness divisions, as well as offering more training on IPissues to its business people.

Henkel’s geographic expansion and the globalization ofits brands have also created practical problems for thecompany—the kind of issues that will be familiar to manytrademark counsel within multinational FMCG compa-nies. As the number of registered trademarks around theworld increases, IP owners with a global IP portfolio findit harder to clear one mark that they can register in dozensof countries. “Although the processes for searching andrisk assessment are becoming more sophisticated, it isbecoming harder to achieve global protection for onemark,” says Van Bylen. Another challenge faced byHenkel’s legal team is the lack of international harmoniza-tion of trademark laws and practice. “The IP team here tellme that the diversity means that it can be difficult to pre-dict the scope of protection that is available to us for anyparticular mark, particularly when it comes to protectingcolors and shapes for example,” says Van Bylen. ■

Some of the product lines in the Schwarzkopf brand

International France Greece


PROFILE: HANS VAN BYLEN, HENKEL

Europe, Middle Eastand AfricaSales in 2007: €8,480 millionEmployees: 34,166

North AmericaSales in 2007: €2,557 millionEmployees: 6,438

Latin AmericaSales in 2007: €691 millionEmployees: 4,268

Asia-PacificSales in 2007: €1,103 millionEmployees: 8,235

Henkel’s worldwidereach

“It is becoming harder to achieve global protection for one mark”

How long have you been with the company?I am in charge of the legal department of the STAEDTLERGroup, being responsible inter alia for all matters relatingto trademarks and also to technical IP rights.

I started at this company in 1991, and in 1995 I wasappointed as the head of the legal department. Since 2007I have also been in charge of technical IP rights. We havevery interesting products; you can actually feel them andtake them in your hands. Unfortunately we are confrontedwith a lot of fakes and therefore have to find effectiveanswers to defend our original products, especially bymeans of IP protection. It is a very dynamic and interna-tional business, since our products are sold in over 150countries. The job is very interesting and requires a verybroad knowledge.

What are the main brands you have? The two main companies of the STAEDTLER Group areSTAEDTLER and Eberhard Faber and they have variousproducts under them.

STAEDTLER has a wide range of products correspon-ding to eight product lines. All products of Staedtler bearthe brand STAEDTLER and the company’s logo—the so-called MARSHEAD, recalling the Roman god of war. Inthe 1970s the MARSHEAD was given an abstracted form,but in 2001 it was redesigned and given a much more nat-uralistic form.

One of the oldest brands of the prod-uct lines is MARS: its first trademarkapplication was filed in 1900. Then wehave the NORIS products and its firsttrademark application was filed in 1901.Characteristic of the NORIS products isthe yellow and black design for pencils,pens and other stationery products.NORIS CLUB is the brand for a range ofproducts intended to be used by pupils.Then we have LUMOCOLOR for a widerange of markers. LUMOCOLOR wasfirst used in the 1950s as brand for anoverhead pen. TRIPLUS is the brand fora product range of triangular pens in aunified design, started in 2001. The


INTERVIEW: THOMAS SCHATZ

A story of rights and writingSTAEDTLER’s Group humble origins were in Nuremberg in the 1830s but now it is one of the most iconic pencil brands in the world. Eklavya Gupte spoke to its legal counsel Thomas Schatz about the challenges of protecting such a well-knowntrademark, as well as its constant innovation in developing new brands.

“We are confrontedwith a lot of fakes andtherefore have to findeffective answers todefend our originalproducts”

design features allow all products to be recog-nized as one unique range. ERGOSOFT is thebrand for a range of wood-cased pencils with aspecific smooth surface, which enables a betterhandling of these pencils. Then we haveKARAT for high-quality water pencils.

Eberhard Faber has its own product assort-ment, containing inter alia modeling clays. Allproducts bear the brand EBERHARD FABER,which is the name of the company. One of themost famous brands of EBERHARD FABER isFIMO, which is the market leader in the sale ofoven hardening modelling clays. EberhardFaber has also developed a product assortmentof clays for disabled and elderly people toimprove their mobility, which started this yearin Germany.

What is the business model?The STAEDTLER Group is owned by theSTAEDTLER foundation. The profit mainlygoes to scientific research in German polytechnics and uni-versities. The STAEDTLER Group is a very international-oriented organization. Staedtler has subsidiaries in 23countries and 85% of our turnover is in exports. We dealwith our own subsidiaries, distributors and some salescompanies all around the world and the distribution ismade B2B.

The target for the STAEDTLER products is to be mar-ket leader in quality in the range of products they belongto. All STAEDTLER products should offer the user aunique feature in application.

Tell me some facts about the brand.The first person to be found as pencil maker with the fam-ily name Staedtler was Friedrich Staedtler in 1662, who isrelated to the founders of our company. The company wasfounded in 1835 by Johann Sebastian Staedtler, and thefirst trademark approved was J. S. STAEDTLER in 1896,which is still valid. Then in 1896 two other trademarkswere registered which are still alive: one is the ATLASmark and secondly, the MINERVA trademark. At the end

of the 1990s we filed trademarks for our new product lineslike TRIPLUS and ERGOSOFT.

We recently filed an event trademark for the World KidsColoring Day which is on May 6 and will start for the firsttime this year. It is intended to ask children to use their cre-ative ability and to sell and display their artwork. Anadvertisement campaign is made in newspapers, media andthe internet. We cooperate with Save the Children. Theproceeds will go to children in developing countries tofund their education.

What are the strengths and weaknesses of the brands?The strength comes through a billion of our products soldevery year. Some of our brands have a history of morethan a hundred years. Some prod-ucts and some specific productdesigns have been known in busi-ness for decades. This intensiveuse gives our brands a very highreputation and awareness world-wide. The awareness could still be

improved concerning the end consumer.Secondly, I think it is very complicated to makeconsumers aware of the wide range of brands,since consumers do not check this kind of writ-ing instruments and their brands very carefullyat the point of sale.

How do you maintain control of the brands?By registering them wherever they are beingsold and distributed. We also rely on a world-wide survey of our brands for information. Wehave a good structure by which our sales organ-izations notify us of any infringement. Theykeep us well informed about the developmentsand we have a system in place where we get theinformation quickly. The worldwide communi-cation within the STAEDTLER Group and thecooperation with a network of external investi-gation and law agencies allows us to react effec-tively to infringements.

Do you use design rights to protect brands, packagingetc?Yes. We have design rights for pencils with specific colordesigns and we also have a trademark for an innovativesort of packaging which is the STAEDTLER Box.

How many countries do you protect the trademarks in andhow many trademark registrations do you have?We have approximately 1,500 registered trademarks inover 110 countries.

How has the brand changed since you’ve been there?As I mentioned earlier the logo has been made morenaturalistic. It was during my tenure that the



“Nowadays manufacturers of fakes are actingglobally and they are even using IP rights toprotect their fakes”

On October 3, 1835, JohanSebastian Staedtler foundedhis own pencil manufactur-ing plant in Nuremberg.JohanSebastiantransferredthe experi-ence andexpertise he had gathered inthe traditional craft of pen-cil making in the workshopof his father PaulusStaedtler to the new, indus-trial factory—officially rec-ognized and certified byNuremberg’s city council.

He went on to create thecolored pencil, which wassimilar to a black lead penciland could be sharpened to a

fine point, and offered superbwriting performance. Theywould not change their colorand they maintained a consis-tent degree of hardness.

By 1840, he was manufac-turing 63 different kinds ofpencils and, from 1856, he

was producing both roundand hexagonal cedar woodpencils, each in 48 differentcolors. By 1866, he was

employing a work-force of 54 andboasted an annualproduction volumeof 2 million pencils.

Now Staedtler employsover 3,000 people and it isEurope’s largest manufactur-er of black-lead and coloredpencils. It is still inNuremberg, whereSTAEDTLER produces 80% ofits writing instruments.

How was the STAEDTLER pencil created?

ERGOSOFT and TRIPLUS ranges were launched. Theterritorial scope of protection of these trademarks wasclearly defined. Any territorial expansion of our salesactivities requires an examination of the territorialscope of protection.

We have developed the Umbrella concept. The firstpoint is protection, and we go through an analysis in linewith the sales department to identify key areas. Secondis enforcement, we need qualified lawyers all around theworld especially where fakes could be found. For keyproducts we try to prepare all necessary information anddocuments in advance. For example, for our innovativeSTAEDTLER Box we made a CD which contains thedescription of the products and of the different forms,how the design works, the awards granted, the IP rightsregistered and sales figures as well as a summary ofenforcement actions. Third, we try to integrate withinthe product or the respective package security features toallow the distinguishing of our original products from

fakes. Fourth, we inform our organization, our staff, ofnew developments, the latest enforcement cases etc.

What has been the most challenging aspect in maintainingyour brand in today’s global environment? It is a challenge to protect not only trademarks but alsoother IP rights like patents and utility models in time andto develop a concept before the product is launched. Theterritorial scope of protection has to be defined as earlyas possible and to the extent necessary. Since IP protec-tion costs a lot, we have to bear the economic side inmind. Therefore we have to live with certain gaps in pro-tection. Concerning trademark protection it is necessaryto predict some developments of the range of products aswell. Article indexes could be limited but not extended.

Another challenge is that nowadays manufacturers offakes are acting globally and they are even using IP rights

to protect their fakes. In China we were confronted withutility model registration of a fake manufacturer, whichonly copied our patent registration in Germany filed fiveyears in advance. The cancellation of these kinds of IPrights is not only expensive but the long duration of theseprocedures allows the infringers to keep their businessalive for a longer period of time.

The third challenge is registering new forms of trade-marks in time because we have no unified legislation oftrademarks all over the world so the demands vary fromcountry to country on whether you can get trademarks forthe form of products, colors etc.

What measures do you take to police your brands?In China we do conduct trade fair monitoring and carryout investigations if needed. There are a lot of confisca-tions carried out by the public authorities on our behalf.

We also ask for Customs control if needed in somecountries.

We feel it is important to find economical solutions andavoid court proceedings if possible. We always try to cometo innovative solutions in order to work effectively with alimited budget.

What do you like most about working in trademarks?I like that it is an international business with really dynamicdevelopments. We develop assets even for the next generationsince trademarks could have an unlimited period of protec-tion. Some of our trademarks have been protected and usednow for more than 100 years and they are still alive and arestate of the art. We are also able to give interviews like thisand go to the INTA Annual Meetings. Public relations is alsovery important to make people aware of the developments inprotection and of successful enforcement matters. ■



Staedtler’s Eberhard Faber group has an important place in INTAhistory. The Faber family began manufacturing pencils inGermany in the eighteenth century. In the mid-1800s, JohnEberhard Faber moved to New York, where he founded the firstpencil factory in the United States. Faber was one of a smallgroup of businessmen who met in New York in 1878 to organizethe United States Trademark Association (as INTA was formerlyknown).

When Faber died the following year, his son Eberhard tookover the Eberhard Faber Pencil Company, which quickly devel-oped into an international organization with operations in morethan 60 countries. The Eberhard Faber Rubber Company wasfounded in 1896, and it became the world’s largest producer oferasers.

The younger Eberhard Faber served on USTA’s Board ofDirectors from 1890 to his death in 1946, and was AssociationPresident from 1904 to 1945. His obituary in the May 1946 issue ofThe Trademark Reporter stated in part:

[Eberhard Faber] had to his credit 56 years of continuous serv-ice to the Association, a record probably unmatched in tradeassociation annuals…. The leading part taken by Mr. Faber inguiding the Association, and his careful and unremitting atten-tion to the larger aspects of its work, has greatly enhanced itsgrowth and effectiveness.

Eberhard Faber and INTA

“We feel it is important to find economical solutions and avoid courtproceedings if possible”


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Alte NationalgalerieBodestrasse 1-3, Mitte (030 20 9058 01, www.alte-nationalgalerie.de). With its ceiling and wall paintings, fabric wall-papers and marble staircase, the Old NationalGallery is a sparkling home to one of thelargest collections of 19th-century art andsculpture in Germany. Among the 440 paint-ings and 80 sculptures, German artists suchas Adolph Menzel and Carl Spitzweg are wellrepresented. There are also some first-rankearly Impressionist works from Manet, Monetand Rodin.

Altes MuseumLustgarten, Mitte (030 20 90 52 45,www.smb.spk-berlin.de). Opened as the Royal Museum in 1830, the OldMuseum is home to the Ägyptisches Museum(Egyptian Museum), where the most celebrat-ed exhibit is a bust of Nefertiti that datesfrom around 1350 BC. Another unique treas-ure is a piece of papyrus with the only knownexample of Cleopatra’s handwriting.

Berliner DomLustgarten, Mitte (030 20 26 91 36,tours 030 20 26 91 19, www.berliner-dom.de). The dramatic Berlin Cathedral is now finallyhealed of its war wounds. Built in ItalianRenaissance style, it was destroyed duringWorld War II and remained a ruin until 1973,when extensive restoration work began.Crammed with Victorian detail, with statuesof eminent German Protestants, it now holdsweekly services.

DeutschesHistorisches MuseumZeughaus, Unter den Linden 2, Mitte(030 20 30 40, www.dhm.de). The revamped Museum of German Historyextends over three floors, with ‘topic rooms’dealing with such subjects as the relationshipbetween the sexes and changes in work andprofessions. Temporary exhibitions are held inthe splendid new wing by IM Pei on the westside of the complex. The shop has an excellentselection of historical postcards and posters.

Gedenkstätte Haus derWannsee-KonferenzAm Grossen Wannsee 56-58,Zehlendorf (030 80 50 010,www.ghwk.de). On January 20 1942, a group of prominentNazis drew up plans for the Final Solution, mak-ing jokes and sipping brandy as they sorted outthe practicalities of genocide. Today, this infa-mous villa has been converted into a place ofremembrance, with a photo exhibit on the con-ference and its consequences. Call in advance ifyou want to join an English-language tour; oth-erwise, all information is in German.

Haus am CheckpointCharlieFriedrichstrasse 43-45, Kreuzberg(030 25 37 250, www.mauermuseum.de). It’s a little tacky, but this is essential for any-one interested in the Wall and the Cold War.This private museum opened not long afterthe GDR erected the Berlin Wall in 1961 withthe purpose of documenting the events thatwere taking place. The exhibition charts thehistory of the Wall, and gives details of theingenious and hair-raising ways peopleescaped from the GDR.

Luftwaffenmuseum Gross Glienicker Weg, Gatow (030811 07 69,www.luftwaffenmuseum.de). On the very western fringes of the city atwhat was formerly the RAF base in dividedBerlin, this collection of more than 150 air-craft is housed in an old hangar. There’s infor-mation on the history of the Luftwaffe, plusfighter and surveillance planes from the early20th century and even 1970s NATO equip-ment. English guided tours are available byprior arrangement.

PergamonmuseumAm Kupfergraben, Mitte (030 20 9055 66, www.smb.spk-berlin.de). One of the world’s major archaeologicalmuseums, the Pergamon shouldn’t be missed.Its treasures are made up of theAntikensammlung (Collection of ClassicalAntiquities) and the VorderasiastischesMuseum (Museum of Near EasternAntiquities). The Antikensammlung featuresthe Hellenistic Pergamon Altar from 170-159BC, when Pergamon was one of the majorcities of Asia Minor (now western Turkey);huge as it is, the museum’s partial re-creationrepresents only one third of its original size.The altar’s outstanding feature is the stun-ning original frieze that once wound 113maround its base. A remarkable proportion of itsurvives. The Vorderasiastisches Museum, meanwhile,has as its prize exhibit the blue- and ochre-tiled Gate of Ishtar and BabylonianProcessional Street, dating from KingNebuchadnezzar’s reign (605-562 BC). Thereare other gems, including some stunningAssyrian reliefs.

ReichstagPlatz der Republik, Tiergarten (03022 70, www.bundestag.de). The imposing Reichstag was controversialfrom the beginning. Architect Paul Wallotstruggled to find a style that would symbol-ize German national identity at a time-

1884-94, shortly after unifi-cation-when no such style (oridentity) existed. It wasburned on February 17, 1933-an event the Nazis blamed ona Dutchman and used as anexcuse to suspend basic free-doms. Today, after its renova-tion by Sir Norman Foster,the Reichstag is again hometo the Bundestag (theGerman parliament) and isopen to the public. No domeappeared on his original com-petition-winning plans, butthe German governmentinsisted upon one. In turn,Foster insisted that unlike thestructure’s original dome(damaged in the war and

demolished in the 1950s), the new oneshould be a public space.

TiergartenA hunting ground for the Prussian Electorssince the 16th century, this park, stretchingwest from the Brandenburg Gate, was openedto the public in the 18th century. Today jog-gers, gay cruisers and picnickers pour intothe park in fine weather, yet its 1.7 squarekilometres rarely seem crowded.

CITY GUIDE: SIGHTS & MUSEUMS

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

© Time Out Group Ltd 2008

BERLIN: SIGHTS & MUSEUMS

Reichstag Photo: © www.visitBerlin.de

Altes Museum Photo: © www.visitBerlin.de

Berliner Dom Photo: © www.visitBerlin.de


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

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

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

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

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

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DE SOLA PATE & BROWNAttorneys & Counselors

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

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PREVIEW: MADRID PROTOCOL

Novartis and Unilever use it, and so do Nestlé andSiemens. Henkel has used it the most, butHungarian pharmaceutical company RichterGedeon made more use of it last year than any

other company. It is the Madrid system for the internation-al registration of trademarks, which allows IP owners toseek protection in any of the 82 contracting parties to thesystem by simply filing one application directly with theirown national or regional trademark office.

Last year WIPO, the international organization thatadministers the system, received a record 39,945 interna-tional trademark applications—a 9.5% upswing over2006—which makes it increasingly likely that your com-pany or client is either using the system or consideringdoing so. At the Madrid System Users Meeting, at 11amtoday, three senior officials from WIPO—assistant direc-tor-general Ernesto Rubio, José Graça-Aranha (director ofthe International Registrations Department) and seniorcounsellor Alan Datri—will discuss recent developments inthe Madrid system, as well as introducing Wen Xue, a sen-ior examiner at the Chinese Trademark Office, andKyung-Ohk Kim, a trademark examiner at the KoreanIntellectual Property office, who will give presentationsabout how the Madrid system is administered in theirhome countries.

“China and Korea are two of the most frequently desig-nated countries, so if users of the system have any questionsor concerns, this is an excellent opportunity for them to

raise them with officials fromthe offices,” says Rubio.

WIPO officials willexplain how new develop-ments have helped make thesystem more user-friendly.These include the introduc-tion of new technology tomake the system more effi-cient. Since August last year,for example, IP owners havebeen able to receive notifica-tions of refusals and irregu-larities by email. NowWIPO intends to introducea scheme to allow applicantsto pay filing fees by creditcard, instead of through a bank transfer or via an accountset up with the IP organization. Similarly, WIPO recentlybegan to publish an online version of the official Gazettein the form of a pdf document. Now it plans to introducean electronic version of the Gazette, which will make iteasier for applicants to search and extract information.This is due to be launched in January 2009.

Another key proposal—endorsed by a meeting of theWorking Group on the Legal Development of the MadridSystem earlier this month—is a plan to require national IPoffices in the contracting states to tell WIPO whether they

plan to protect a trademarkor not.

“At the moment, nonews is good news—but theapplicant has to wait for theend of 12 months or, insome cases, 18 months, theperiod stipulated in theTreaty to know whetherthey have protection ornot,” says Rubio. “The planis to make national officescommunicate as soon asthey have completed theirinternal procedures.”

This will be good newsfor users of the system.

Although many offices notify the applicant directly, only 11offices in the 82 contracting parties issue a formal state-ment of grant of protection. Making it mandatory fornational examiners to inform WIPO of their intentions willultimately enable applicants to access a single, central pointof information on WIPO’s website that tells them the statusof their application in each of the countries where they havesought protection. If the proposal is accepted by theGeneral Assembly in September, it is set to be introduced bySeptember 2009 (although those member states thatrequest additional time may be given until January 1 2011).

A taste of Madrid comes to BerlinA record number of IP owners applied for international trademarks under the Madrid system last year. Emma Barracloughconsiders how the scheme is becoming more user-friendly.

Germany’s Henkel owns more international trademark registrationsunder the Madrid system than any other company (2,567, accordingto WIPO). Its nearest rivals, as at the end of 2007, are: JanssenPharmaceutica (Belgium), Novartis (Switzerland), L’Oréal (France),Unilever (Netherlands), Nestlé (Switzerland), Sanofi-Aventis (France),Siemens (Germany), BASF (Germany) and ITM Entreprises (France).

But these stalwarts of the Madrid system are being joined bynewer enthusiasts. In 2007, the biggest filer was Richter Gedeonfrom Hungary (with 278 international trademark applications). Thetop 10 list was rounded off by Novartis (Switzerland), Henkel(Germany), Lidl (Germany), Toyo Boseki (Japan), GlaxoSmithKline(UK), Biofarma (France), Janssen Pharmaceutica (Belgium), Nestlé(Switzerland) and Brillux (Germany).

The biggest users

Rubio and his colleagues will also update users withnews of potential signatories to the Madrid system.Lists of the top users and the most frequently designat-ed countries (see charts) reveal some large geographicalgaps: while applicants from Germany top the list ofheaviest users, and China is the most frequently desig-nated country, key markets such as India, Brazil,Argentina, Canada and New Zealand are missing fromthe lists.

Rubio said that the IP organization is still awaitingnews from India, which has yet to pass a trademark lawenabling accession to the Protocol despite an announce-ment from the government last year that it intends to doso. But WIPO officials were heartened by a public hear-ing on the Madrid Protocol held by the BrazilianCongress last month—taken by many as a sign that thecountry is moving closer to joining the trademark filingagreement. ■


PREVIEW: MADRID PROTOCOL

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Answer all five questions in this year’s INTADaily News quiz correctly to be entered into adraw to win an INTA publication of yourchoice. Send your answers, with your nameand contact details, by email [email protected] by 5pm Tuesday May 20.Winners will be announced in the Wednesdayissue.

Check tomorrow’s INTA Daily News for moreopportunities to win.

1) Which British architect remodeled theReichstag building in the 1990s?

2) What is the name of the official residence of Germany’s president?

3) Which film won the Golden Bear at thisyear’s Berlin Film Festival?

4) In which year did the Berlin wall comedown?

5) Who wrote the book Goodbye to Berlin?

Win an INTA publication of your choice!


VOX POP: YOUR VIEWS

Well, I think of BOSCH and BASF. Firstly,BOSCH is a very German sounding name,and they make all sorts of householditems like dishwashers. And BASF,because as a kid I bought a lot of theiraudio tapes and they were known forthat; now of course they are more well-known for their chemical products.

Jason Rudkin-Binks, Hudson Gavin Martin, New Zealand

I think of MERCEDES, which is a well-known German trademark. It is alsostrongly associated with the FORMULAONE-MCLAREN team. Their logo is verystrong especially because of the starand so are their figurative marks.

Dario Natali, Innova & Partners, Italy

I think of MERCEDES first because I’veknown it for a long time and it’s knowneverywhere in the world. It stands forquality. The other well-known mark Iassociate with Germany is DEUTSCHETELEKOM, but I think that’s only well-known within Germany. I also think ofthe ALDI supermarket chain.

Eric De Gryse, Simont Braun, Belgium

The mark that immediately comes tomind is MERCEDES, but also BAYERASPIRIN, BMW and ESCADA perfumes andcolognes.

Jorge Tristan, Faycamark, Costa Rica

The mark that first comes to mind whenI think of Germany is LUFTHANSA, justbecause it’s advertised so much.

Neerav Merchant, Majmudar & Co., India

VVOOXXPOPQUESTION: Whichtrademark do you mostassociate with Germany?

I think of VOLKSWAGEN first, because it’sjust really popular and you see morepeople driving Volkswagen cars thanMercedes.

Coby A.B. Schneider, Miller Thomson, Canada

I think of MERCEDES because it’s thestrongest mark associated with cars.MERCEDES is an age-old car; it doesn’ttake you to the mechanic, you take itthere. I drive it, my wife drives it—it’s amachine for all times.

Aderemi Adekile, Royal Heritage, Nigeria

I think of SIEMENS because it’s very pop-ular and high-quality and they have a lotof different products in Russia.

Olesya Zakharova, Yus Patent & Law Firm, Russia


INTA DAILY NEWS

I would say the mark I most associatewith Germany is BAYER ASPIRIN, becauseI often use it when I have a headache.

Jose-Juan Mendez, Alegria, Mendez & Fernandez Wong, Mexico

I automatically think of MERCEDES BENZand other automobile brands, such asVOLKSWAGEN and AUDI, but I also thinkof BAYER pharmaceuticals.

Shinichiro Tanaka, Nakamura & Partners, Japan

MERCEDES BENZ is the first mark thatcomes to mind because I’ve known thebrand all my life now; all my family driveMERCEDES – it’s a very old brand. I alsothink of DAF trucks.

Chander S. Mahabir, Sjiem Fat & Mahabir, Suriname

The INTA Board of Directors Luncheon was held in the Funkturm Lounge at the ICC yesterday.

21

3

Yesterday’s receptionsMayer Brown welcomedguests to the Meilenwerk

to see vintage cars from aroundthe world and enjoy local food(such as Berlin-style potatosoup with fried sliced sausagesand German cheeses) and winefrom Baden.

Marks & Clerk held areception in the grand

surroundings of the GrosseOrangerie at the SchlossCharlottenburg.

German firm GrüneckerKinkeldey Stockmair &

Schwanhäusser hosted a recep-tion at E-Werk featuring the SoulKitchen Band and Berlin special-ties such as curry-wurst andbuletten.

3

2

1

Today’s Schedule: Sunday, May 18, 2008All Events take place at the Internationales Congress Centrum (ICC) unless otherwise indicated.

9:30 am – 7:30 pm REGISTRATION Entrance Lobby

9:30 am – 7:30 pm HOSPITALITY Hall 14.2/15.2 & Hall 15

10:00 am – 12:00 pm COMMITTEE MEETINGS

Alternative Dispute Resolution (ADR) Committee Leadership Room 28

INTA Bulletin Committee Hall 7

PDA Executive Council (Chairs & Vice Chairs only) Room 42

Programs Committee Salon 19

11:00 am – 1:00 pm WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO) USERS MEETING Hall 6

11:30 am – 1:30 pm TRADEMARK ADMINISTRATORS BRUNCH Funkturm Lounge

12:00 pm – 4:00 pm EXHIBITION HALL Halls 15 – 17

12:15 pm – 2:15 pm LUNCHEON TABLE TOPICS Roof Garden Lobby

12:15 pm – 2:15 pm COMMITTEE MEETINGS

ACEC: North America Subcommittee Salons 11/12

Annual Meeting 2008 Project Team Hall 10

DWKM: East Asia & Pacific Subcommittee Salons 13/14

DWKM: Eastern Europe & Central Asia Subcommittee Salon 20

DWKM: Middle East, Africa & South Asia Subcommittee Room 29

DWKM: North America Subcommittee Salons 17/18

EIC: Indigenous Rights Subcommittee Salon 21

Enforcement: Discovery Practices & Procedures Subcommittee Salon 22

Programs Standards & Training Subcommittee (Programs Committee) Room 28

2:30 pm – 4:30 pm COMMITTEE MEETINGS

ACEC: Latin America & Caribbean Subcommittee Salons 11/12

Annual Meeting 2009 Project Team Halls 4/5

DWKM: European Union Subcommittee Salons 13/14

DWKM: Latin America & Caribbean Subcommittee Salon 20

EIC: Fair Use and Other Boundaries Subcommittee Hall 9

Enforcement: Legal Certainty of Disclaimers Subcommittee Room 29

Enforcement: Trade Names Subcommittee Room 28

Information Resources Committee Hall 7

In-House Trademark Counsel’s Workshop–Europe Project Team Room 42

LRC: East Asia & Pacific Subcommittee Room 23

LRC: U.S. Model State Trademark Bill Subcommittee Room 24

Public Relations Speakers Bureau Salon 19

Trademark Administrators Conference 2008 Project Team Room 43

3:00 pm – 4:45 pm INTA ANNUAL MEETING ORIENTATION AND COCKTAIL RECEPTION Hall 3 and Central Lobby

5:00 pm – 6:30 pm OPENING CEREMONIES AND KEYNOTE ADDRESS Hall 1

6:45 pm – 8:15 pm WELCOME RECEPTION Hall 2

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