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INTABulletin
The Voice of the International Trademark Association
October 15 2014 Vol. 69 No. 19
AssociationNews
AssociationNews
INTA’s 2014 Volunteer
Service Awards Winners
Cynthia Rowden and Virginia Taylor Win
2014 INTA President’s Awards
The 2014 INTA President’s Awards go to Cynthia
Rowden (Bereskin & Parr LLP, Canada) and
Virginia Taylor (Kilpatrick Townsend & Stockton LLP, USA).
The President’s Award is designed to
acknowledge the profound appreciation of
the global trademark community to individuals who, over the course of a career in
trademark and related IP law, have made a
lasting impact on INTA and the Association’s
mission. Criteria for nomination are:
• Consistently outstanding service to the
Association through work on committees,
task forces and/or the Board of Directors;
• Innovative approaches to the fulfillment of
INTA’s mission that have had an enduring
impact on the Association; and
• Role model and leader in the practice of
trademark law.
Cynthia Rowden has been consistently active
on INTA committees for more than two
decades. She was a member of the Board
of Directors from 2000 to 2001, chaired the
Publishing Board from 2002 to 2003 and
served as Co-Chair of the 2006 Annual Meet-
In This Issue
AssociationNews
ing Project Team. She currently is a member
of the Trademark Office Practices Committee. Those who nominated her for the President’s Award described her as a “dedicated,
knowledgeable and expert practitioner” who
is “devoted to educational activities and
the advancement of trademark law” and
“the model of a gracious and hard-working
volunteer,” among many other compliments.
Ms. Rowden heads the Trademarks Practice
Group at Bereskin & Parr in Toronto, Canada.
When nominating Virginia Taylor for the President’s Award, her peers described her as “a
ubiquitous leader in the field of trademarks,”
an “invaluable role model for young lawyers,”
and “a selfless mentor.” Ms. Taylor is Senior
See “Awards” on page 2
Law&Practice
Welcome New Members 2
A Guide to Filing Amicus Curiae Briefs in Latin America
3
Why Renew Your Company’s INTA Membership?
6
Volunteer Spotlight Elliott Bankendorf
7
Feature
“Coexistence or No Existence”: Chances and Challenges of
Coexistence Agreements
Virginia Taylor
Cynthia Rowden
8
China11
Colombia11
European Union
12, 13
Italy14
New Zealand
15
Panama16
Spain17
United Kingdom
18
United States
18, 19
The five categories of Volunteer Service Awards
recognize those who provide exemplary volunteer service to the Association and to the
broader public during a specific year. Subcommittee chairs, committee members and
non-committee volunteers, such as speakers
at INTA education programs and authors of
INTA publications, are eligible for Volunteer
Service Awards. Nominees must have shown
exemplary volunteer service above and beyond
their regular activities in the Association since
the 2013 Leadership Meeting.
The award for the Advancement of Trademark Law
recognizes individuals whose efforts during the
year have led to the advancement of substantive trademark law and practice. This year’s
winners are Theodore Davis (Kilpatrick Townsend
& Stockton LLP, USA) and Verena von Bomhard
(Hogan Lovells (Alicante) SL y Cia, Spain).
This year’s award for the Advancement of
Committee or Subcommittee Objectives goes to
Mark Feldman (DLA Piper LLP, USA) and Michael
Hawkins (Noerr Alicante IP, S.L., Spain).
The award for the Advancement of the Association
is presented to individuals whose participation,
efforts and progressive thinking have most
notably advanced the objectives of the Association as outlined in INTA’s Strategic Plan. The
2014 winners are Mona Lee (Hanol Law Offices,
South Korea) and Paul McGrady (Winston &
Strawn LLP, USA).
The award for Pro Bono Services Provided by
Individuals goes to Loreto Bresky (Alessandri
& Compania, Chile). The award for Pro Bono
Services Provided by Organizations goes to Katten
Muchin Rosenman LLP (USA).
Award winners will join INTA President Mei-lan
Stark at this year’s Leadership Meeting, in
Phoenix, Arizona, USA, for a panel discussion
on their experiences with Association service
and advice for members on becoming active.
Complete coverage of the awards presentation
and details on the award winners will appear in
the December 1 INTA Bulletin.
AssociationNews
2014 INTA President’s Awards Continued from page 1
Counsel at Kilpatrick Townsend & Stockton in
Atlanta, Georgia, and has been actively serving
INTA since the Association was known as the
USTA. She has chaired the Publications and International Forums Committees, as well as the
Publications Board. She also was an original
editor of INTA’s U.S. State Trademark and Un-
fair Competition Law, was the original author
of the U.S. chapter in Worldwide Trademark
Transfers and assisted greatly in preparing the
first edition of Trademark Administration. She
currently serves on the Legal Practice Resources Committee.
The President’s Awards will be presented on
Thursday, November 13, at this year’s INTA
Leadership Meeting in Phoenix, Arizona, USA.
Complete coverage of the awards presentation
and interviews with the award winners will
appear in the December 1 INTA Bulletin.
DT Ward PC, Groton, Massachusetts, USA
Energizer Personal Care, Shelton, Connecticut, USA
Evoqua Water Technologies LLC,
Lowell, Massachusetts, USA
Fox, O’Neill & Shannon, S.C., Milwaukee, Wisconsin, USA
Frei Patentanwaltsburo, Zurich, Switzerland
Freund & Brackey, LLP, Beverly Hills, California, USA
Fuerst Group, Inc., Menlo Park, California, USA
Harness, Dickey & Pierce, PLC, Reston, Virginia, USA
Inhouse Legal Advantage, Balwyn, North Australia
Jorge Carreno Abogados, Bogotá, Colombia
Julius and Creasy, Colombo, Sri Lanka
KidKraft, LP, Dallas, Texas, USA
Kinstellar Business Services SARL, Istanbul, Turkey
Koushos Korfiotis Papacharalambous, LLC,
Nicosia, Cyprus
LawPlus Myanmar Ltd.,
Dagon Township, Yangon, Myanmar
Lawyers at Large LLC, Tiburon, California, USA
Lion Pty Ltd, Sydney, Australia
Marc Jacobs International, LLC, New York, New York, USA
Milcev Burbea, Intellectual Property Office,
Bucharest, Romania
Montague Law PLLC, Lexington, Kentucky, USA
NCC Group plc, Manchester, United Kingdom
Novian & Novian LLP, Los Angeles, California, USA
Ofelia Tsonkova –­Law Office, Sofia, Bulgaria
■
Welcome New Members
ASG Rechtsanwaelte, Berlin, Germany
Al-­Rahim Trademark & Patent Attorneys, Lahore, Pakistan
Ann Carlsen & Company, Burnaby,
British Columbia, Canada
Asesoria Empresarial Yeara Vidal & Asoc.,
Santo Domingo, Dominican Republic
Bell Nunnally & Martin LLP, Dallas, Texas, USA
Cajun Operating Company d/b/a Church’s Chicken,
Atlanta, Georgia, USA
Cervera & Romo De Vivar, S.C.,
Distrito Federal, Mexico
Chambers of Law, Ludhiana, India
Clark Gross Law Offices, Los Angeles, California, USA
Coffey Burlington, P.L., Miami, Florida, USA
INTA Bulletin Committee
To contact the INTA Bulletin Committee,
email bulletin@inta.org.
Chair
Barbara Sullivan, Henry Hughes
Vice Chair
Liisa Thomas, Winston & Strawn LLP
Co-Chairs, Features Subcommittee
Elizabeth Buckingham, Dorsey &
Whitney
Peter McAleese, AKRAN Intellectual
Property Srl
Co-Chairs, Association News
Subcommittee
Barbara Barron Kelly, Corsearch
Katherine Dimock, Gowling, Lafleur,
Henderson
Co-Chairs, Law & Practice: AsiaPacific Subcommittee
Chetan Chadha, Chadha & Chadha,
An Intellectual Property Law Firm
Co-Chairs, Law & Practice: Europe &
Central Asia Subcommittee
Mary Bleahene, FRKelly
INTA Bulletin Staff
INTA Officers & Counsel
Chief Executive Officer
Etienne Sanz de Acedo
President
Mei-lan Stark, Fox Entertainment Group
Thomas Mudd, Zeiner & Zeiner
Director, Marketing and
Communications
James F. Bush
President Elect
J. Scott Evans, Adobe Systems
Incorporated
Managing Editor, News & Policy
Eileen McDermott
Vice President
Gabrielle Olsson Skalin, Inter
IKEA Holding Services S.A.
Co-Chairs, Law & Practice:
Latin America & the Caribbean
Subcommittee
Martín Chajchir, Marval, O’Farrell
& Mairal
Carlos Corrales-Azuola, Corrales Core
IP
Chair, Law & Practice: Middle East &
Africa Subcommittee
Ghaida Ala’Eddein, Saba & Co. IP
Co-Chairs, Law & Practice: United
States & Canada Subcommittee
Robert Felber, Waller, Lansden,
Dortch & Davis
Catherine Hoffman, Mayback &
Hoffman
Senior Periodicals Editor
Joel L. Bromberg
Designer
Eric Mehlenbeck
Vice President
Lucy Nichols, The Center for
Responsible Enterprise
and Trade (CREATe)
Treasurer
Joseph Ferretti, PepsiCo, Inc./
Frito-Lay, Inc.
Secretary
Ronald Van Tuijl, JT International S.A.
Counsel
David Fleming, Brinks Gilson & Lione
Joseph Yang, Lee and Li,
Attorneys at Law
Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of
the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to
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
2 October 15, 2014 Vol. 69 No. 19
AssociationNews
A Guide to Filing Amicus Curiae Briefs in Latin America
Alvaro Jose Correa Ordonez
Baker& McKenzie, Bogotá, Colombia
Sasha Mandakovic Falconi
Falconi Puig Abogados, Quito, Ecuador
Both are members of the International Amicus—
Latin America Subcommittee.
The legal term amicus curiae is Latin for “friend
of the court”—that is, someone who, while not
being party to a legal proceeding, can nonetheless present to the court his views on the law
applicable to the case. The purpose is clearly
to influence the court’s decision, which not only
is relevant to the case that is being tried but
also may have broader effects by way of the
precedent that the decision generates.
Attorneys in common law jurisdictions usually
are familiar with the concept, whereas civil law–
trained attorneys generally are not. This may
be explained by the fact that, broadly speaking,
precedent plays a fundamental role in common
law; while there are statutes, it is the judicial
decisions in prior similar cases that shape the
resolution of new ones. On the other hand, civil
law relies more on the codification of the law,
and the judge’s task is supposedly limited to
applying its provisions to the facts of the case.
So, if the law is not shaped by precedent in
civil law countries, as many people think, why
bother preparing and filing an amicus brief for
a third party’s case?
Despite what may be said about the method
civil judges use to reach a decision in a case,
written law organized in codes, as specific as it
may get, cannot determine the outcome of all
possible disputes in advance, and its application will always require interpretation. This is
where case law can become fundamental. It
would be naive to think otherwise. (See George
P. Fletcher & Steve Sheppard, American Law
in a Global Context: The Basics 30, 34 (Oxford
University Press, 2005).) Any experienced
advocate can attest to the utility of citing prior
case law in civil law tradition courts, even
when it is not binding.
This brings us to the two fundamental questions this article seeks to answer:
1. Is it possible to file amicus briefs in Latin
American countries, all of which are civil
law jurisdictions?
2. If filing is possible, what rules must be
followed?
There is no single answer to either question.
Some Latin American countries allow the filing
of amicus briefs; others accept them informally by way of an affidavit, an expert opinion
or a written submission; and still others do
not accept them at all. Most countries that
do accept them have very broad rules and no
specific procedure for the filing, which is in
stark contrast to the detailed rules that govern
filings in the United States.
Latin America Survey
The INTA International Amicus Committee’s
Latin America Subcommittee has put together
the following chart, which covers 15 of the
most important Latin American jurisdictions:
See “Amicus” on page 4
Country
Is Filing
Possible?
Conditions Required for Acceptance of Amicus Briefs
Court Level
Argentina
Yes.
1. The filing party must justify its interest to take part in the case and identify whom it
is supporting.
2. Disclosure of whether financial aid or guidance from any party has been received
and whether the case may result in an economic benefit for the filing party.
3. The matter must be of public interest or collective importance. The Supreme Court
will decide which cases are suitable for the filing of an amicus brief. Local practitioners understand that this requirement may exclude cases of a commercial nature,
such as trademark cases.
4. The court may, ex officio, call upon an expert to request a specific opinion.
1. At the originating court.
Bolivia
No.
Brazil
Yes, pending
approval of
the Draft
Code.
Chile
No.
Colombia
Not formally. 1. Third parties may intervene with Administrative Courts in annulment proceedings
grounded in a general interest in support of any of the parties involved in the action.
(Art. 223 CPACA (Code of Administrative Procedure and Administrative Disputes)).
Special conditions must be met if the action involves a particular (not general) interest (Art. 224 CPACA).
2. Civil courts allow a third party to intervene as long as the party shows a legitimate
interest in the case (Art. 71 CGP (General Code of Procedure)).
3. In cases that involve a collective interest, third parties may intervene without the
need to address a particular or legitimate interest (Art. 171 CPACA).
2. At the appeal instance.
At the Supreme Court. [The
As provided by the new draft Civil Procedure Code, currently in discussion in the
provision is currently under
Brazilian Congress:
1. The reporter judge may admit the intervention from agencies or entities, taking into examination by the Court].
consideration the importance of the question.
2. The requirements for intervention are:
(a) The litigated question must be absolutely relevant;
(b) The amicus brief must have a high degree of importance; and
(c) The amicus brief must be filed before the beginning of the trial.
1. Higher Administrative
Court (Council of State).
2. Supreme Higher Court.
3. Constitutional Court.
3
AssociationNews
A Guide to Filing Amicus Curiae Briefs in Latin America Continued from page 3
Country
Is Filing
Possible?
Conditions Required for Acceptance of Amicus Briefs
Court Level
Costa Rica
Yes. Participation is
feasible and
available in
judicial proceedings.
1. In the case of judicial proceedings before the Court for Administrative Matters, Article 13 of the Administrative Procedure Law provides that any third party may request
its participation and intervention before the administrative judges without the need to
demonstrate a special or direct interest in the outcome of the process.
The intervening amicus
will be party to the proceeding in the stage currently
ongoing when the amicus
brief is filed.
Likewise, the third party does not need to demonstrate capacity in order to intervene
in such a judicial proceeding because it is not considered a party as such. Hence, it
cannot claim the payment of fees nor be condemned to pay them.
The intervention of the amicus may be subject to opposition by the parties, and a
decision on this intervention is adopted by the judges within the preliminary hearing
of the proceeding.
Article 13 is also applicable at the administrative non-judicial stage, such as at the
Costa Rican Patent and Trademark Office.
2. Third parties may intervene at both the judicial and the non-judicial stages in cases
of annulment proceedings grounded in a general interest in support of the interest of
any of the parties involved in the action (e.g., public health or consumer issues). Special conditions must be met if the action involves a particular (not general) interest.
Institutions, corporations and governmental institutions, representatives of general
rights, and groups that defend collective interests are authorized by law to be third
parties.
The participation of the third party may be asserted at any time before the decision
at first instance, and the third party will enter into the process at whichever stage is
ongoing at the time of filing, provided this does not serve to avoid the expiration of
any procedural deadlines.
In civil proceedings, Article 112 of the Civil Procedure Code provides that any third
party can intervene in an action only for the purpose of contributing to the victory of
one side, as a result of its having a juridical interest in such outcome. The intervening
party will be party to the proceeding in the procedural stage currently ongoing.
1. Constitutional Court.
1. At the Constitutional Court level, the only requirement to file a brief is the interest
to do so, and it can be done anytime before a ruling is issued. The interested party
2. Lower-level courts and
can even request an oral hearing; however, it is up to the judge to grant it.
the PTO.
2. At the ordinary civil courts, contentious administrative courts or even the Patent
and Trademark Office, amicus briefs may be filed by way of an expert opinion or a written submission. However, they are not expressly recognized as such.
Ecuador
Yes.
El Salvador
No.
Honduras
No.
México
Yes.
1. The amicus brief must contribute to the resolution of a constitutional dispute at the 1. Supreme Court only.
local Supreme Court or within one of its chambers/panels.
Panama
Yes.
1. The amicus brief must contribute to the resolution of a constitutional dispute at the 1. Supreme Court only.
local Supreme Court or within one of its chambers/panels.
Paraguay
Yes.
1. The subject matter must be of public interest. The intervention must be filed before 1. Before the final ruling.
the final ruling takes place.
2. Supreme Court only.
4 October 15, 2014 Vol. 69 No. 19
AssociationNews
Country
Is Filing
Possible?
Conditions Required for Acceptance of Amicus Briefs
Court Level
Peru
Yes.
1. Amicus briefs can be accepted under certain circumstances in trademark proceedings; however, the acceptance of this kind of brief is subject to the discretion of
INDECOPI (Peruvian Patent and Trademark Office).
2. An amicus brief can be filed only in proceedings that involve a specialized discussion of matters of public interest, and by a person or entity specialized in the matters
discussed in the proceeding.
1. Before the Administrative Court of Appeals of
INDECOPI (Tribunal).
Uruguay
Not formally. 1. Amicus briefs have been filed in a few cases, mainly related to human rights in the
course of criminal procedures.
1. To date, amicus briefs
have been accepted
only in human rights
proceedings.
2. Supreme Court.
Venezuela
Not formally. 1. Third parties may participate as an interested third party or as an expert.
INTA and Amicus Briefs
INTA traditionally has been at the forefront
of filing amicus briefs on trademark-related
matters, particularly in the U.S. courts, where
the Association has made more than 25 filings
since 2000. These filings have occurred in
landmark cases even at the Supreme Court
level, and the court has agreed with INTA´s
position on several occasions. Examples are
TrafFix Devices, Inc. v. Marketing Displays, Inc.,
which dealt with trade dress protection issues
for product features of an expired utility patent,
and Nike v. Already, where the discussion focused on Lanham Act false advertising claims.
However, INTA has also been active in filing
amicus briefs in other parts of the world,
including Australia, Canada, China, the European Union, Indonesia, Japan, Korea, Mexico,
New Zealand, Paraguay, Russia and the United
Kingdom. The list of filed amicus briefs, with
texts, is available at http://www.inta.org/Advocacy/Pages/Amicus.aspx.
Any individual—even a non-member—can request that INTA consider filing an amicus brief
if it could be of value to a court. The International Amicus Committee is charged with the
task of drafting briefs, and they are approved
for filing by the Executive Committee of the
Board of Directors.
INTA’s policy on amicus briefs states that matters must be adjudicatory in nature and must
meet at least one of the following criteria:
1. The views of the Association have been
specifically requested by the tribunal; or
2. The question to be addressed directly
affects the activities of the Association; or
3. The matter must involve, relate to, or potentially affect the law of trademarks, trade
names, or trade dress, the law of unfair
competition, or other related laws (e.g.,
right of publicity, false advertising, surveys,
domain names), or procedural issues related to such matters (e.g., standing, jurisdiction, remedies), and a filing by INTA must be
reasonably likely to advance the strategic
goals and objectives of the Association.
A complete description of INTA’s amicus brief
policies and procedures may be found at
http://www.inta.org/Advocacy/Pages/AmicusBrief.aspx.
1. First-level appeal.
Conclusion
Amicus briefs can play an important role in
helping courts, even those in civil law jurisdictions, in the application of trademark law.
When analyzing trademark cases, civil and
criminal law courts are not highly skilled in
IP legislation, doctrine and case law. Amicus
briefs allow the courts to have an expert,
skillfully written opinion that may constitute a
guideline for the interpretation of IP law. Civil
law countries should encourage amicus briefs
so that experts such as INTA can intervene
when the complexity of the case so requires.
INTA has filed an amicus brief in two Latin
American countries (Mexico and Paraguay).
While several other important jurisdictions in
this region allow their filing, the Association
has received very few requests to do so.
The International Amicus Committee’s Latin
America Subcommittee encourages individuals to consider requesting INTA submissions
when appropriate and in accordance with
the Association’s amicus brief policies and
procedures.
■
Looking for a gateway to country-specific links
for trademark offices, laws, domain name
resources and more?
Find it in the Country Portal in INTA’s
Global Trademark Resources.
Visit www.inta.org/CountryPortals
5
AssociationNews
Why Renew Your Company’s INTA Membership?
Christopher Turk, The H.D. Lee Company, Inc., Wilmington, Delaware
of the In-House Practitioners Committee, so
meeting with other in-house counsel to discuss
best practices, and also outside counsel to
renew and strengthen relationships and to
pick up tips and tricks about how to solve
common problems, is where I find the most
value overall.
Chris Turk is General Counsel at The H.D. Lee
Company, the IP-owning subsidiary of VF Corporation. He spoke with the INTA Bulletin about
the reasons the company has been renewing
its membership for the last 15 years.
How long have you been a member?
I’ve been participating at the Annual Meeting
since 2000, and H.D. Lee has been a member
for 15 years, since 1999.
What’s your first Annual Meeting memory?
My first Annual Meeting was in 2000, but the
first Annual Meeting I really remember in detail
was in San Diego, in 2005. It was the first time
I’d participated at the Meeting as an in-house
counsel, which made it a very different experience. Networking with other in-house people
and finding out how they did things was an
incredible help to me.
Where do you find the most value in
membership now?
It’s still the networking. I’m now Vice Chair
What’s the greatest value for the company?
For the company, the ability to get lots of work
done in face-to-face meetings and training,
which we hold during the Annual Meeting, is invaluable. We meet with associates from around
the world, and that benefits the company as a
whole. Also, getting to meet my VF colleagues
in other offices face-to-face is beneficial.
I’m also trying to make the policy work that
INTA does more of a priority for our company.
We need our policy voice heard, and I’d like to
make more use of INTA’s policy team, particularly in Asia.
Are there other ways you make use of your
membership throughout the year?
We turn to the Country Guides on a regular
basis—we use them all the time. It’s amazing
how useful they can be for doing international business. You can learn a lot on the INTA
website generally, and also by speaking at and
attending various INTA events. That has been
very educational.
Why should trademark professionals
join INTA?
If you’re in a small in-house role, the amount
of information you can glean from one Annual
Meeting is invaluable. The opportunities you
Avoid Regrets Further Down the Line
Settlement and coexistence agreements are intended to
solve problems, not cause them. All too often, though,
oversights can result in an arrangement’s unraveling.
Find out how to minimize the likelihood of recurring
disagreements in “Settlement & Coexistence Agreements”
in INTA’s Practitioners’ Checklists series, available
exclusively to INTA members.
Visit www.inta.org/practitionerschecklists
6 October 15, 2014 Vol. 69 No. 19
get from attending events like the in-house
practitioners and first-time attendees receptions at the Annual Meeting are well worth the
cost. And if you’re in a big company, “you never
know what you don’t know”—there’s still a lot
The opportunities
you get from attending events
like the in-house
practitioners and
first-time attendees receptions at
the Annual Meeting are well worth
the cost.
of information you can get.
Also, there are too many good trademark attorneys to pick one, so at the Annual Meeting
I like to ask potential counsel, “What have you
done that’s unique?” Anyone can say they’re
cheaper, but getting an attorney to think outside the box for you face-to-face is a great help
in hiring outside counsel.
VolunteerSpotlight
Elliott’s first job after graduation was as a tax
lawyer at the Blue Cross and Blue Shield Association (BCBSA); then the retirement of the
trademark manager—up to then it had been a
non-attorney position—gave him the opportunity to unleash his creative side. He returned
to the classroom to take trademark-related
classes at John Marshall Law School, and soon
he became the Association’s first trademark
lawyer. Elliott took the lead on many initiatives
during his career at the BCBSA and acted on
behalf of his employer in disputes not only in
the United States but also in South America,
Asia and the Pacific Rim.
Elliott Bankendorf To quote leg-
endary basketball coach John Wooden, “Happiness is a moment-to-moment choice, one
that many have a hard time making.” After you
meet Elliott Bankendorf, it doesn’t take you
long to realize that he has found happiness by
seizing many moments.
Armed with a degree in accounting from DePaul
University and a scholarship to the University of
Illinois Law School, Elliott was on his way to making his longtime interest in law a career. While in
law school he passed the CPA examination.
Today, Elliott is with the firm of Partridge IP
Law, where he represents trademark owners
both large and small, including businesses
listed on the New York Stock Exchange and the
largest entity in an international jurisdiction.
He concentrates his practice in the areas of
trademark development, transfer and protection, both in the United States and internationally; licensing and portfolio management;
and representing clients in court litigation and
before the U.S. Patent and Trademark Office’s
Trademark Trial and Appeal Board.
Long active at INTA, Elliott has been a
director of the Association and has served
on many of its committees. True to form, he
regards as his favorite committee whichever
one he is on at a given moment. His first
involvement was as a member of the Audit
Subcommittee of the Finance Committee
(whose responsibilities have since been
transferred to the Board of Directors); afterward, he joined the Not For Profit Committee
(now the Nonprofit Organizations Committee)
at the request of its first chair. Elliott has spoken on various aspects of trademark law for
the Association and is the author of several
articles on trademark law, including several
concerning the relationship between trademark law and HIPAA (the Health Insurance
Portability and Accountability Act of 1996).
In his spare time, Elliott enjoys listening to oldtime radio shows, from the era when they were
filled with comedy and drama. He finds that
many of the commercials for products that are
no longer advertised not only are amusing but
also recall how much the trademark world has
changed over the decades since the shows
first aired.
Colleen M. Sarenpa
Polaroid, Minnetonka, Minnesota, USA
INTA Bulletin--Association News Subcommittee
When
Trademarks
with OTHER IP RIGHTS
Munich, Germany
December 8–9
Strong IP Protection Requires the Right Tools
Join leading authorities at advanced-level sessions to discuss the emerging issues in this area and achieve a
solid understanding of the many opportunities and pitfalls of intersecting rights.
Topics include:
• How can product designs be protected as two- or three-dimensional marks and through other IP laws?
• How can trademark law protect artistic works and unregistered geographical indications?
• How can trademarks be subject to unfair competition law, comparative advertising statutes or consumer
protection, privacy and right of publicity laws?
For more information and to register please visit: www.inta.org/2014tmoverlap
7
Features
“Coexistence or No Existence”: Chances and Challenges of Coexistence Agreements
Under General and German Trademark Law
Morten Petersenn
Hogan Lovells International, LLP,
Hamburg, Germany
INTA Bulletin—Features Subcommittee
In the world of business and commerce it is
not uncommon for two parties to use similar
or identical trademarks to market their goods
and services. The more crowded the national and supranational trademark registers
become, the more potential conflicts arise.
However, such conflicts do not necessarily lead
to contentious proceedings. Instead, many
parties frequently are willing to solve disputes
amicably—most have realized that often it’s
either “coexistence or no existence,” as British
philosopher Bertrand Russell put it.
The common tools for two parties to coexist
peacefully are prior-rights agreements, or
other kinds of coexistence agreements. The
aim of this article is to provide an overview of
typical terms, problems and potential pitfalls of
coexistence agreements. While mostly of general relevance, the article also highlights some
aspects that are to be taken into account
under German law. Particularly in cases where
the party with the older trademark rights is a
German company, it will be necessary to keep
German legislation and jurisdiction in mind,
as most likely the German company will insist
on including a provision that the coexistence
agreement shall be subject to German law.
Possibilities of Demarcation
Coexistence agreements can settle a number
of issues regarding trademarks and their use.
Often they are preceded by an opposition, a
warning letter or a request for consent, and
most frequently they are drawn up to set out
rules about the use of the conflicting trademarks and the delimitation of registered goods
and services, and about the waiving of legal
claims arising out of the parties’ respective
trademark rights.
There are numerous ways of demarcation that
ensure that two conflicting signs can peacefully coexist in the market. The parties can agree,
for example:
• on a regional segmentation (e.g., the appli-
cant for a Community trade mark can agree
not to use the mark in a specific national
market of the European Union);
• that the owner of a word mark will use its
mark in a specific graphical form only;
8 October 15, 2014 Vol. 69 No. 19
• that one party will use the mark for a spe-
cific subcategory of registered goods only;
and/or
• to direct their products to specific customers
only (e.g., intermediaries or resellers, as
compared to end consumers).
Such provisions are aimed at ensuring that
the parties do not interfere in each other’s
relevant markets. Once the terms of the
agreement are in place, the owner of the
younger mark can register and use its mark
without any legal hindrances from the other
party. Likewise, the owner of the earlier mark
does not have to pursue its opposition or
objection to the younger mark to safeguard
its rights and can eliminate the risk that the
owner of the younger mark will attack its rights
at some point in the future or in a jurisdiction
different from the one in which the dispute
arose. Therefore, coexistence agreements are
beneficial for both parties.
Coexistence agreements always require careful examination of their
scope and effectiveness.
Typical Structure of
Coexistence Agreements
Most coexistence agreements are drawn up
in a similar layout. After a preamble, which
usually gives some general information about
the contracting parties, their field of activity
and their respective trademarks, the obligations of both parties, as discussed above, are
enumerated.
The agreement typically concludes with some
final provisions. These can, and normally do,
include references to the competent court,
the applicable law (mostly where the parties
are from different countries), the applicable
language of interpretation (in cases where
agreements are drafted in two languages to
facilitate understanding between parties of different nationalities) and the countries in which
the agreement shall apply. Most frequently
the final provisions also include some general
contractual clauses, such as a written form requirement and a clause stating that a possibly
invalid individual provision shall not affect the
validity of the remaining provisions, but shall
be replaced by such legal provision as comes
closest to the intention of the parties.
Scope of the Agreement
Coexistence agreements always require careful
examination of their scope and effectiveness.
Generally speaking, when interpreting the
content of an agreement, the wording, the purpose and the overall context of the agreement
must be taken into consideration. While these
rules apply to all kinds of contracts, German
case law includes some more specific rules for
the interpretation of coexistence agreements
(German Federal Court of Justice (Bundesgerichtshof (BGH)), Dec. 7, 2010, Case No.
KZR 71/08—Jette Joop):
• If the agreement provides that the trade-
mark can be used for certain goods, this
may imply, when considering the purpose
and context of the agreement, that use for
other goods shall be prohibited.
• Written correspondence between the parties
regarding the agreement can be of importance for the parties’ mutual understanding
of the agreement and therefore may be
consulted for its interpretation.
• For the validity of the agreement the prevail-
ing legal status at the time of the conclusion
of the agreement is binding; if legislation or
jurisdiction changes, generally this does not
affect the validity of the agreement.
In another ruling, the German Federal Court
of Justice clarified that the written form of
the agreement usually shall be presumed
to be correct and complete (BGH, Jan. 18,
2001, Case No. I ZR 175/98—buendgens).
If an agreement sets out its provisions in an
extensive and detailed form, it is unlikely that
an issue that was not explicitly dealt with may
nonetheless be interpreted as being regulated
by the parties.
Problems regarding the scope of an agreement may also arise if the parties agree that
they may use their respective trademarks for
goods or services that fall under a specific
class of the Nice Agreement. Which goods or
services fall within one particular Nice class
may change over the years as new editions
of the Nice Classification are adopted. It can,
therefore, be preferable to name the specific
goods and services in connection with which
Features
the trademark may be used, instead of just
referring to the Nice class.
Duration and Cancellation
Coexistence agreements usually are in effect
for an indefinite period of time. They constitute
a continuing obligation, which can be terminated only by means of an ordinary or extraordinary termination.
The possibility of an ordinary termination
can be included in the agreement itself, in
provisions regulating the time period within
which the termination can be declared and the
accepted reasons that will justify a termination. Such provisions, however, are rather
uncommon. Therefore, in practice, the right to
terminate the agreement for extraordinary reasons plays a greater role, and it is given even if
it is not specifically defined in the agreement.
Such an extraordinary termination can be
declared only for a compelling reason. Whether
a reason is compelling enough must be decided on a case-by-case basis by weighing the
respective interests of the parties. In any case,
the circumstances that justify a party’s request
for an extraordinary termination of the agreement must be so severe that upholding the
agreement would be unbearable for that party.
By way of example, the constant and substantial violation of the agreement by the other
party or the registration of a very similar trademark in order to circumvent the regulations of
the agreement would qualify as a compelling
reason (German Regional Court Hamm, Nov.
22, 1984, Case No. U 105/90—Grohe). Such
actions against the “spirit of the contract”
damage the parties’ mutual trust so substantially that upholding the agreement would be
unacceptable for one of the parties.
By contrast, economic considerations
generally are not a compelling reason for an
extraordinary termination of the agreement.
If upholding the agreement would, however, put the continuation of the business or
the existence of the company in danger, an
extraordinary termination might be admissible
(BGH, June 15, 1951, NJW 1951, 836). This is
rarely the case, especially when one takes into
account the fact that actions that were taken
at the cancelling party’s own risk or that were
caused by the cancelling party itself cannot
justify a termination (id.; BGH, Feb. 11, 1981,
NJW 1981, 1265).
Another reason for a coexistence agreement
to be terminated may be one party’s loss of
its trademark rights. Trademark rights can be
considered the foundation of a coexistence
agreement: The agreement’s main purpose is
to regulate the parties’ respective trademark
rights and to avoid future disagreements
involving conflicting trademarks. If those
trademark rights cease to exist, the basis for
the agreement no longer exists, nor does the
balanced quid pro quo system that is inherent
in the agreement. Naturally, there cannot be
a coexistence between trademarks if there
is only one trademark left to exist. Therefore,
a coexistence agreement has effect only as
long as both parties’ trademark rights exist
(Bökel, GRUR 1972, 28, 30 et seq.). To avoid
uncertainties about the continuance of the
agreement in the case of one party’s losing its
trademark rights, it is advisable to include a
clause providing that the coexistence agreement shall remain in effect only as long as
both parties’ trademark rights exist.
Brand owners
should establish
an internal
system by which
they monitor the
contracting parties
to agreements
relating to key
brands.
explicitly agreeing to the coexistence agreement in a formal declaration of commitment in
order to be bound by it. The challenge is how
to make sure that the parties to the agreement
many years later comply with their obligation
to make the agreement binding on potential
legal successors. Obviously, at the time the
agreement is concluded, the parties well know
their obligations. However, experience shows
that companies often do not store coexistence
agreements professionally and simply forget
about such agreements later on. In such a
case, the company management might simply
forget to impose the obligations set forth in the
coexistence agreement on the purchaser. As
a result, the contracting party to the agreement might not be able to enforce obligations
spelled out in the agreement on the purchaser
and have damage claims only against the
other original contracting party. Such damage
claims may not really be useful if the contracting party can no longer rely on the coexistence
agreement. Moreover, a damage claim might
not be enforceable if the original contracting
party has ceased to exist (e.g., because it
became insolvent).
Therefore, in order to reduce these practical risks, brand owners should establish an
internal system by which they monitor the
contracting parties to agreements relating to
key brands. That way, the contracting parties
can react, for example, if and when they learn
through the press that the brand owner is
considering selling its business or part of it.
In such a case, the contracting party could
remind the brand owner of the outstanding
obligations, in particular with regard to the
succession clause in the agreement.
Legal Succession
Antitrust Law Issues
It goes without saying that a coexistence
agreement regulates only the relationship
between the contracting parties. If the
trademark rights of one party are assigned
to a third party, the obligations that derive
from the agreement are not automatically
passed on to the legal successor (BGH, Feb.
27, 1981, Case No. I ZR 78/79—Gigi-Modelle).
The contracting parties to the agreement are
legally not able to impose the agreement’s
obligations on a third party, as this would be
considered an inadmissible contract at the
expense of third parties (German Regional
Court Stuttgart, July 30, 1991, Case No. 2 W
76/89—settled out of court).
Demarcation naturally goes hand in hand
with market segmentation. It therefore has
the potential to restrain competition. Against
this background, coexistence agreements,
while being beneficial to the parties, can be
inherently problematic from a competition law
perspective. The European Court of Justice
(ECJ) has ruled that a coexistence agreement
is likely to violate antitrust laws if it imposes obligations only on one of the parties.
This virtually controls that party’s sales and
distribution instead of protecting both parties’
trademark rights. (BAT Cigaretten-Fabriken
GmbH v. Commission of the European Communities, Case 35/83 (ECJ Jan. 30, 1985)
(TOLTECS vs. DORCET II).) The ECJ has, however, acknowledged those agreements to be a
necessary and legally admissible instrument
to minimize court proceedings over trademark
issues. (See, to that effect, Guidelines on the
Application of Article 101 of the Treaty on the
In practice, coexistence agreements usually
include a reciprocal provision, in which the parties agree to impose the obligations laid down
in the agreement on potential legal successors. This provision is meant to sensitize the
parties to the necessity of a legal successor’s
See “Coexistence” on page 10
9
Features
“Coexistence or No Existence” Continued from page 9
Functioning of the European Union to Technology Transfer Agreements para. 242 (non-challenge clauses in settlement agreements).)
How do you avoid the presumption that an
agreement does not aim to solve possible
trademark disputes between the parties but
intends to divide up the market between
them? In these situations an agreement
should not be concluded if there is little
to no likelihood of confusion between the
trademarks in question. There also should
be no agreement if the registered goods and
services are vastly different.
The German Federal Court of Justice supports this view (BGH, May 22, 1975, Case No.
KZR 9/74; BGH, Dec. 7, 2010, Case No. KZR
71/08): The coexistence agreement may cover
only issues that need to be settled between
the parties because otherwise they could lead
to legal disputes. Thus, an agreement is most
likely to comply with antitrust laws if it prevents
a party from raising an objection against the
other party’s trademark or even from filing
for injunctive relief. Furthermore, the German
Federal Court of Justice has ruled that it is
possible to rid a coexistence agreement of
content that violates antitrust laws by just
striking it out and reducing the agreement to
its legally valid core.
Moreover, according to German law, the
relevant time to assess whether a coexistence
agreement complies with antitrust laws is
when the agreement is concluded. To take
account of the parties’ need for legal certainty
they must be able to rely on the agreement
as it was written down, as they were not able
to foresee possible legal developments at the
time of conclusion of the agreement. Circumstances that have changed after the conclusion of the agreement can be accounted for
only through the German legal concepts of
supplementary interpretation of the agreement, termination for good cause or frustration
of contract/purpose (BGH, Dec. 7, 2010, Case
No. KZR 71/08—Jette Joop).
This relevant point in time, that is, the time of
the conclusion of the agreement, leads to the
necessity of assessing the validity of old agreements by considering the case law that was in
place at the relevant earlier times. In Europe
this means, for example, that the court may
not apply the concept of a reasonably well-informed customer, which is a fundamental
concept in the law of the EU today. Instead, the
court may have to apply the concept of a customer who is less prudent and informed. The
court will have to carefully analyze all relevant
decisions known at the time the agreement
was concluded, and it will have to consider the
Imitation May or May Not Be Flattery
Food and beverage industry manufacturers and large national
supermarket chains share a mutually dependent relationship, and either
would likely be reluctant to damage it in a full-blown dispute over a “look
alike” product. To better understand the views of both sides — and to
know where and when to draw the line — see “Trade Dress in the Food
and Beverage Industries: Manufacturer’s and Retailer’s Views” by Mark
Hiddleston, Elkington and Fife LLP, London, United Kingdom, and Richard
Young, Quarles & Brady LLP, Chicago, Illinois, United States, in INTA’s
exclusive member service Industry Perspectives series.
Visit inta.org /IndustryPerspectives
10 October 15, 2014 Vol. 69 No. 19
agreement valid and not in breach of antitrust
rules if the possibility remains that the parties
might have been able to successfully enforce
their trademark rights before the agreement
was signed.
Conclusion
Coexistence agreements are an important
instrument for settling trademark rights issues
before they become a liability. Even though
they cannot always resolve arising trademark
disputes, they are key self-help measures
against crowded trademark registers and
avoidable court proceedings. Especially while
dealing with parties from different geographical origins, it is necessary to take the national
legal practice and jurisdiction into account.
As was discussed in this article, coexistence
agreements can be a valuable and effective
tool to settle trademark conflicts. However,
the particularities of national law may include
some pitfalls and loopholes to be avoided—otherwise, the coexistence agreement could turn
out to be a possible problem on its own. And,
as the examples in this article show, the problems arising from a coexistence agreement
might only come up many years later.
■
Law&Practice
CHINA Tesla Settles with Chinese Citizen
On August 5, 2014, the Beijing Third Intermediate People’s Court (the Court) successfully
mediated a series of civil disputes between
the U.S. company Tesla Motors, Inc. and the
Chinese citizen Zhan Baosheng. The parties reached settlements in all cases, which
included actions for trademark and copyright
infringement, unfair competition and domain
name ownership.
After the Court accepted the lawsuits filed
by both Tesla and Mr. Zhan, it actively mediated the disputes with the parties both via
telephone and in person, explaining the laws
and reasons for settlement. In the settlement,
Zhan agreed to cease his use of the trademark
TESLA and other relevant marks, while Tesla
agreed not to seek damages from him.
When Tesla entered the Chinese market, it
set up Tuosule Motors Sales (Beijing) Co. Ltd.
(Tuosule) and established Tesla electrical
motors showrooms, service centers and super
recharge stations in Beijing, Shanghai and
many other locations in China. Later the company encountered problems with the use of its
trademark TESLA, which hindered its business
development and market expansion in China.
On September 6, 2006, Zhan filed a trademark application for TESLA, for motors, etc.,
in Class 12. The mark was registered on
June 28, 2009. Mr. Zhan also used TESLA
and other marks in his manufacture and
sales of the goods; that use caused the
conflict with Tesla.
In March 2013, Tesla filed a request for cancellation of Zhan’s trademark with the China
Trademark Office based on non-use for three
consecutive years. The following month, it filed
a request for invalidation of the mark with the
Trademark Review and Adjudication Board.
On September 3, 2013, Tesla brought two
lawsuits against Mr. Zhan before the Court,
for infringement of its copyrights and unfair
competition, respectively. Tesla asserted that
it owned copyright in the logo TESLA with T &
Shield Device and trade name rights to Tesla
and its Chinese equivalent 特斯拉 (Te, Si, La).
Tesla charged that Zhan and his entrusted
manufacturers used Tesla’s copyrighted works
and trade names on his goods, websites, the
Chinese social media site weibo, and newspapers without Tesla’s authorization; therefore,
Tesla claimed, such use infringed its copyrights
and constituted an act of unfair competition.
Accordingly, Tesla requested that the Court
order Mr. Zhan to stop any infringing activity, publish a notice to minimize damage to
Tesla’s reputation, and pay damages of RMB
1.1 million (about US $180,000) for copyright
infringement and RMB 3.1 million (about US
$500,000) for unfair competition.
On June 30, 2014,. Zhan filed a lawsuit before
the Court against Tesla and Tuosele for trade-
mark infringement, claiming that their use
of the TESLA mark infringed his trademark.
Mr. Zhan asked the Court to order Tesla and
Tuosule to stop selling TESLA electrical motors;
close the showrooms, service centers and
super recharge stations; cease any advertising activity; make a public apology; and pay
damages of RMB 23.94 million (about US $3.9
million).
After the settlement, the Court said that
the mediation turned out to be a resolution
not only of the parties’ litigation before the
Court but also of the domain name, non-use
cancellation and invalidation actions that were
pending in other courts.
Considering that the TESLA cases would
have a profound influence on the new energy
motors industry in China, the Court actively
communicated with the parties concerned in
its mediating efforts.
Contributor: Guizeng (Wayne) Liu
Yuanhe United Intellectual
Property Partners, Beijing
INTA Bulletin Law & Practice—
Asia-Pacific Subcommittee
Verifier: Yuning Zhang
China Trademark Association, Beijing
Trademark Registration Now Takes
COLOMBIA
as Little as Four Months
As a result of Administrative Resolution No.
48348 of 2014, issued by the Superintendence of Industry and Commerce, any person
in Colombia interested in filing an application
for registration of any distinctive sign will now
be able to obtain registration in about four
months.
However, according to the CTO’s experience,
only 4.9 percent of the total filings in the last
decade have included a priority claim. In other
words, during the ten-year period these regulations have been in force, statistics show that
more than 95 percent of the applications filed
in Colombia do not claim priority.
Previously, trademarks were not granted
registration in less than six months from the
application date. That was not necessarily due
to the inefficiency of the Colombian Trademark
Office (CTO); instead, it was mainly a reflection
of a very strict interpretation of the intellectual
property laws in force in Colombia. According to the CTO’s interpretation of the Paris
Convention and Decision 486 of the Andean
Community, a trademark registration could not
be granted in less than six months because,
within that period, a third party could file an
application in Colombia claiming its right of
priority based on an application previously filed
in another contracting state.
Given that reality, and in order to benefit the
vast majority of applicants—those that usually
file trademark applications without claiming
priority—the CTO implemented Administrative Resolution 48348, which would allow a
reduction in the average time for trademark
prosecution in Colombia to four months
without affecting the right of priority of other
applicants, who could still claim their right of
priority within the six-month period.
The strategy adopted by means of this Resolution consists of enabling applicants to request,
upon filing, that their trademarks be registered
in less than six months. This particular request
is subject to the condition that if within the
cited period a third party files for an identical
or similar trademark and claims priority, all the
trademark rights granted under the “accelerated prosecution process” will be lost, and the
trademark registration may even be denied.
Considering that the chances of affecting the
right of priority are significantly low, this strategy represents important progress in terms of
speed and efficiency of the CTO.
Contributor: Jorge Chávarro
Cavelier Abogados, Bogotá
Verifier: Danilo Romero
Romero Raad Abogados, Bogotá
Both are members of the INTA Bulletin Law
& Practice—Latin America & the Caribbean
Subcommittee.
11
Law&Practice
EUROPEAN UNION “Proof of Use” Rules Extended
Earlier this year, the OHIM Board of Appeal
confirmed that opponents can be forced to file
“proof of use” of earlier marks relied on in a
Community trade mark (CTM) action, no matter how old they are, if they are deemed to be
refilings of earlier registrations that are more
than five years old.
Kabelplus AG applied to register the word
mark KABELPLUS as a CTM. The application
was published for opposition purposes in
June 2012. It was opposed by Groupe Canal+
and Canal+ France (jointly, Canal+), based on
French registrations for the word marks CANAL
PLUS, CANAL + and PLUS in November 2009
and a CTM registration for the figurative mark
CANAL+ (see below) in June 2010 (collectively,
the “Earlier Marks”).
been registered for at least five years when the
mark being opposed is published. Here, all the
Earlier Marks were less than three years old at
the relevant date.
SA & CANAL+ FRANCE, Société Anonyme à
Directoire et Conseil de Surveillance, Case R
1260/2013-2 (OHIM Second Board of Appeal
Feb. 13, 2014).
Despite that fact, Kabelplus requested that
Canal+ be required to prove use of the Earlier
Marks on the basis that they were “identical
re-filings of earlier trade marks in the relevant
territories.” In fact, Canal+ owned additional
registrations for marks that were identical to
three of the Earlier Marks and covered the
same or similar services, and those registrations were more than five years old at the
relevant date. However, Canal+ had not sought
to rely on the additional registrations in the
opposition. As a result, the OHIM Opposition
Division held that Canal+ did not need to file
proof of use.
This decision confirms the Board of Appeal’s
decision in the PATHFINDER case (Case R
1785/2008-4 (OHIM Fourth Board of Appeal
Nov. 15, 2011)), where an “earlier mark” was
a refiling of a registration covering the same
territory and the same goods and services. As
a consequence, an opponent can be required
to prove use of that earlier mark, no matter
how long it has been registered.
Kabelplus appealed against this decision.
Opponents’ CTM
Under Article 42 of the CTM Regulation (Council Regulation (EC) No. 207/2009), it is possible to force an opponent to prove use of the
marks relied on in an opposition if they have
The OHIM Second Board of Appeal allowed the
appeal. It held that trademark owners should
not be allowed to “to improperly and fraudulently extend the five-year grace period [for
proving use] indefinitely” by refiling earlier registrations. Kabelplus AG v. GROUPE CANAL+,
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12 October 15, 2014 Vol. 69 No. 19
This article was intended for publication in an
earlier issue of the INTA Bulletin.
Contributor: Mark Holah
Sipara, Oxford, United Kingdom
Verifier: Susie P. Arnesen
Sandel, Løje & Partnere, Copenhagen, Denmark
Both are members of the INTA Bulletin Law &
Practice—Europe & Central Asia Subcommittee
Law&Practice
General Court Rules on Influence of Coexistence of
EUROPEAN
UNION Trademarks in Opposition Proceedings
Recently, the General Court of the European
Union decided an opposition case involving
the prior coexistence of the opposing mark
and a mark that was similar to the opposed
mark. Argo Group International Holdings Ltd
v. OHIM–Arisa Assurances SA, Case T-247/12
(GC May 20, 2014).
In November 2008, Art Risk Insurance and
Information Services Corp. (Art Risk) filed an
application for registration as a Community
trade mark (CTM) of the figurative mark ARIS,
for services, including “insurance services,” in
Class 36. The applicant owned the Community
word mark ARIS, registered in 2005. In June
2009, Arisa Assurances SA filed opposition,
based on its Community figurative mark ARISA,
registered in 2000 for “insurance and reinsurance” in Class 36.
Applicant’s Mark
Opponent’s Mark
The OHIM Opposition Division upheld the
opposition, and the Second Board of Appeal
affirmed. (Case R 193/2011-2 (OHIM Second
Board of Appeal Mar. 9, 2012).) In March
2011, while its appeal was pending, Art Risk
had transferred its CTM application to Argo
Group International Holdings Ltd (Argo Group).
Argo Group appealed to the General Court
against the Board of Appeal’s decision.
The General Court confirmed the decisions.
It found that the dominant element of the
opponent’s mark was the word ARISA, while
the dominant element of the mark applied for
was the word ARIS. Both words were similar
from a visual and aural point of view. The
different graphic elements and colors could
not undermine the dominant character of the
word elements. Therefore, in an overall assessment, the Court determined that the marks
were similar. As the services concerned were
also similar, the Court found that there was a
likelihood of confusion.
The fact that the applicant also owned a CTM
registration for the word mark ARIS did not
change this finding. There is an equitable
doctrine in the United States known as the
Morehouse defense, according to which a
person opposing the registration of a trademark cannot be considered to be harmed by
that registration where a trademark identical
or substantially similar to the mark applied
for has already been registered for identical
or similar goods. However, the Court noted,
“the Community trade mark regime is an
autonomous system with its own set of rules
and objectives peculiar to it, which applies
independently of any national system.” Moreover, while the coexistence of earlier marks
could reduce the likelihood of confusion in
certain circumstances, as provided for under
European case law, those circumstances could
be considered only where, first, the proprietor
of the opposed application duly demonstrated
that such coexistence was based on the absence of any likelihood of confusion between
the earlier marks and, second, provided the
marks concerned and the marks at issue
were identical. In the present case, however,
the word mark ARIS was not identical to the
later-filed figurative mark ARISA, so the applicant could not rely on prior coexistence of the
marks.
This decision confirms the low chances of
success in defending a CTM filing by referring
to a prior coexistence of trademarks. Applicants are therefore well advised not to trust in
a smooth registration process simply because
of a supposedly peaceful coexistence of the
applied-for mark with other trademarks.
Contributor: Susanna Heurung
Kotitschke & Heurung Partnerschaft mbB,
Munich, Germany
Verifier: Florian Traub
Squire Patton Boggs (UK) LLP, London,
United Kingdom
Both are members of the INTA Bulletin Law &
Practice—Europe & Central Asia Subcommittee
Are you eligible to be in
INTA’s Trademark Mediators Network?
INTA facilitates an international panel of expert trademark and unfair competition law
mediators. When parties seek mediators from the INTA Trademark Mediators Network, they
know that they will find someone with the legal knowledge and mediation experience to
effectively and efficiently resolve their disputes.
Find out if you qualify and apply online at
www.inta.org/tmnapp
Applications are open until October 17.
Visit www.inta.org/tmnapp
13
Law&Practice
ITALY Genuine Leather Symbol Cannot Be Monopolized
The Court of Appeal of Milan confirmed the
position of its first instance court and held
that the well-known symbol for genuine leather
goods (see below) could not be the object of
exclusive rights per se. Unic Servizi Srl et al. v.
Chaussures Eram Sarl et al. (Court of Appeal
of Milan July 8, 2014).
The lower court had ruled that a collective
mark consisting of a stylized cowhide, which
Unic applied for in 1977, was invalid because
it was devoid of novelty at the time of filing
and, moreover, that it contravened the provisions of Directive 94/11/EC on the labeling of
footwear, which allowed for the use of a stylized cowhide to symbolize real leather shoes.
Unic appealed the lower court’s decision. It
argued, inter alia, that the lack of novelty was
determined not by the widespread use of the
sign but rather by its lack of distinctive character. Since the mark was filed as a collective
mark, which, by its inherent nature, describes
the quality of goods and does not distinguish
those originating from a single undertaking,
the registration was still valid. For this reason,
Unic argued, Italian law provides that distinctive character, as opposed to novelty, is not a
necessary element for the validity of a collective mark. Unic also argued that its particular
stylized version of a cowhide, as registered,
was not in common use and that a 2010
Legislative Decree (D.L.131/2010), which
amended the Industrial Property Code (IPC),
meant that nullity of trademarks, by reason of
their common use, was provided for by Article
13 of the IPC (relating to lack of distinctive
character) rather than Article 12 (concerning
lack of novelty).
The Court of Appeal held that Unic could not
rely on the Legislative Decree as it was enacted over 30 years after the collective mark was
applied for (1977). Moreover, since substantially similar cowhide symbols were adopted by
leather tanners in different countries at least
as early as the beginning of the last century,
the appellant’s trademark lacked novelty when
the application was filed.
Furthermore, the Court of Appeal confirmed
the retroactive effect of the EU directive on the
labeling of footwear, holding that retroactive
effect was necessary to reach the goal sought
Test Out the New Pro Bono Toolkit
The INTA Pro Bono Committee has developed a pro bono toolkit containing checklists, model documents and resources to help law firms and
corporations implement trademark pro bono programs. The Committee is
looking for a law firm or corporation to use the toolkit in the creation of
a new pro bono program. If your firm or corporation is interested in
participating in a case study with the Pro Bono Committee,
please contact Peg Reardon (preardon@inta.org).
14 October 15, 2014 Vol. 69 No. 19
by the “new” law (with reference also to the
European Court of Justice’s decision in Bavaria
N.V. & Bavaria Italia Srl v. Bayerischer Brauerbund (Case C-343/07 (ECJ July 2, 2009)). In
the present case, the purpose of the directive
was to harmonize national labeling laws in
the interests of consumers, and the cowhide
device was the easiest, clearest and most
direct way to indicate, across the EU countries,
that shoes were made of leather. Under the
provisions of the directive, the symbol that
should be used for identifying leather goods
was the same as the sign represented in the
contested mark.
The Court of Appeal’s judgment is both legally
and practically relevant, as it potentially opens
up the cowhide design on its own for free use
by other shoe manufacturers in Italy.
In more general and legal terms, the Court
clarified the circumstances in which a national
or EU law can have retroactive effect, and
when it is necessary to limit an exclusive right
to preserve a general interest.
Contributor: Andrea C. Klein
Akran Intellectual Property Srl, Rome
Verifier: Andrea De Gaspari
De Gaspari Osgnach, Padova
Law&Practice
Court of Appeal Rules on Similarity of Marks
NEW
ZEALAND and “Relevant Market” for MR ZOGS SEX WAX Goods
In a decision on a trademark opposition, the
New Zealand Court of Appeal considered the
degree of similarity between the opposed
mark ZOGGS and the MR ZOGS SEX WAX logo
(see below). It found the marks were similar
conceptually, though not visually or aurally.
The Court also held that the opponent’s trademark had acquired a sufficient reputation for
surfboard wax and surfing gear. It concluded
that therefore any use of the ZOGGS mark for
apparel and swimwear would lead to deception
or confusion. Sexwax Inc. v. Zoggs International Ltd, [2014] NZCA 311 (Sept. 9, 2014).
The opponent, Sexwax Incorporated (Sexwax),
coined the trademark MR ZOGS SEX WAX
in California about 1972. The mark was not
ZOGGS
registered in New Zealand, but there was
ZOGGS
evidence of use from at least
as early as
1981. The MR ZOGS SEX WAX mark is used in
relation to surfboard wax and products such
as t-shirts, sweatshirts, rash guards, swimwear
and towels.
The applicant, Zoggs International Limited,
coined its ZOGGS trademark in Australia
around 1992, and there was evidence of its
use in New Zealand from 1994 for swimming
goggles. Later, Zoggs introduced swimwear
under the ZOGGS mark.
In December 2009, Zoggs applied to register
ZOGGS for various goods in Class 25, including
clothing and swimwear.
Sexwax opposed the ZOGGS trademark application. The opposition was based on Section
17(1)(a) of the New Zealand Trade Marks Act
2002, which is a “public interest” provision:
The Commissioner must not register as
a trade mark or part of a trade mark any
matter—
(a) the use of which would be likely to
deceive or cause confusion.
The Assistant Commissioner of Trade Marks
ruled in favor of Sexwax. On appeal, however,
the High Court rejected the opposition.
“spark a connection in the minds of consumers,” causing them to wonder whether there
was some connection between the two marks.
Sexwax appealed against the High Court’s
decision.
The Court held that Assistant Commissioner of
Trade Marks and the High Court had erred in
determining that the relevant market in which
Sexwax had to establish a reputation was “the
general purchasing public” (being the potential market for goods sold under the opposed
mark). It was important not to conflate the test
for establishing a reputation with the test for
whether a substantial number of people were
likely to be deceived or confused.
The Court of Appeal affirmed that the correct
approach to Section 17(1)(a) is:
1. To begin by determining whether the
opponent’s mark had a reputation in New
Zealand at the relevant date (this inquiry
was inextricably linked to the nature of the
goods in question); and then
2. To make the fact-specific assessment of the
likelihood of deception or confusion against
that reputation, considering the fair, notional use of the goods bearing the applicant’s
mark. The likelihood of deception or confusion had to be assessed in relation to some
or all of the applicant’s goods.
The Court said that in an opposition based on
use of an earlier mark there was a misconception that an opponent had to establish a reputation in its trademark among consumers of
the goods covered by the opposed application.
The correct assessment should be of the level
of awareness of the opponent’s mark among
purchasers of goods to which the opponent’s
mark was applied.
Sexwax’s trademark was a “complex” logo
comprising the phrase MR ZOGS SEX WAX
(with the SEX WAX element in larger script)
and the slogan THE BEST FOR YOUR STICK.
The Court found that rights existed in the logo
as a whole and that there was no need for
Sexwax to establish that the MR ZOGS element
enjoyed an independent reputation. The Court
held that the MR ZOGS element was a central
and essential part of the MR ZOGS SEX WAX
logo, and a significant part of the reputation
generated by the logo, because the logo would
be recommended or remembered by reference
to the MR ZOGS element. The relevant comparison was between the ZOGGS mark and the
MR ZOGS SEX WAX logo in its totality.
The Court held that the presence of the MR
ZOGS element in the MR ZOGS SEX WAX logo
was enough, if the ZOGGS mark were used, to
Sexwax was found to have a reputation in relation to surfboard wax and associated surfing
merchandise. This is not the same market as
swimwear. However, as both marks relate to
watersports, there was a “connection.” Given
the reputation that existed in the MR ZOGS
SEX WAX mark and given the potential use of
the ZOGGS mark (based on the scope of its
specification of goods), the Court held that a
sufficient number of individuals were aware of
the MR ZOGS SEX WAX mark and potentially
exposed to the ZOGGS mark.
The next question was whether those individuals would be likely to be deceived or confused.
The Court held that Zoggs had not discharged
its onus of establishing that the use of its
ZOGGS mark would not be likely to cause
deception or confusion. Accordingly, the
application was refused, although the Court
suggested that Zoggs could file a new application for its mark for specific goods and support
that application with evidence of its use of the
mark in New Zealand.
Contributor: David Moore
Henry Hughes IP, Wellington
Verifier: Sheana Wheeldon
Kensington Swan, Auckland
15
Law&Practice
PANAMA Challenges of Trademark Use on Websites
Article 43 of Law 61 of October 5, 2010, which
modifies Article 101 of Law 35 of May 10,
1996, defines “use” as follows: “Use of a mark
is the placement of the products identified with
that mark in the national market, regardless of
whether the products were produced, manufactured, prepared or made in the Republic of
Panama or abroad. Use of a service mark is
the rendering of services identified with that
mark in the national commerce.”.
Panamanian law no longer recognizes the use
of the mark “anywhere in the world”; therefore,
the use of the mark in the Panamanian territory is mandatory in order to avoid a cancellation
action for lack of use and to demonstrate a
better right based on prior use.
Thanks to the Special Prosecutor for Crimes
against Intellectual Property and Computer
Security (the “IP Prosecutor”), Panama has set
a precedent regarding its position on websites
selling counterfeit and infringing products.
Over the past months, the IP Prosecutor has
ordered that three websites be shut down for
illegal activities (counterfeiting). In all three
cases, evidence in connection with the use
of the trademark in commerce was filed. It is
important to note that in one case, the server
was in Spain.
Under the Criminal Code, counterfeiting is a
crime punishable by four to six years’ imprisonment. In addition, the Panamanian trademark
law indicates that trademark infringement
occurs where a party uses a trademark without the authorization of the owner, including in
domain names or email addresses.
mark has been reproduced (in websites/blogs)
and in those websites and blogs people have
made comments about services or products
and those sites evidence the reproduction of
the trademark—for example, websites specially
created to explain about general services or
products where the trademark or logo is reproduced without authorization of the owner. How
should the authorities deal with that situation,
based on the principle of free speech? The
good news is that today the IP Prosecutor is
willing to take criminal action against those
who are using websites to promote, distribute
and commercialize counterfeit goods and to
shut down those websites.
The big challenge right now in Panama is the
situation in connection with websites and social networks where the trademark is not used
(according to the meaning of “use” as defined
above) but where it is evident that the trade-
Contributor: Marissa Lasso de la Vega F.
Alfaro Ferrer & Ramírez, Panama City
Verifier: Hugo Morán
Icaza González Ruiz & Alemán, Panama City
INTA Calendar of Events
Plan your calendar with these INTA events and stay up to date on
issues that affect your trademarks—domestically, regionally and globally.
October 17
October 18
October 20–31
October 23
October 29
November 4
November 11–15 November 18
December 8–9
The Madrid Protocol—A new opportunity for Indian Brand Owners to file trademarks abroad
The Madrid Protocol—A new opportunity for Indian Brand Owners to file trademarks abroad
U.S. Roundtables: Social Media, Chapter Two
Infringement of Domain Names and Trademark Rights on the Internet
INTA-USPTO Roundtable
INTA-USPTO Roundtable
Leadership Meeting
The Implementation of the Italian Opposition System
When Trademarks Overlap with Other IP Rights Conference
Chennai, India
Mumbai, India
Various U.S. Cities
Moscow, Russian Federation
Dallas, Texas, USA
Rochester, New York, USA
Phoenix, Arizona, USA
Vicenza, Italy
Munich, Germany
Learn more about INTA events, including international roundtables, networking receptions,
e-Learning, academic competitions and more, at www.inta.org/programs
Dates and topics subject to change. Contact meetings@inta.org for the latest information.
16 October 15, 2014 Vol. 69 No. 19
Law&Practice
Supreme Court Reaffirms Importance of Behavior of
SPAIN
Trademark Right Holder in a Revocation Action
In its recently published decision dated
June 11, 2014, the Spanish Supreme Court
confirmed the ruling of the Valencia Court of
Appeal that had dismissed the declaration of
revocation of the trademark OROPESINAS.
Oropesa is the name of a Spanish village and
“oropesinas” are pastries sold in that village
by the trademark owner. The pastries, which
were created by Mr. Francisco (the right holder
of the priority trademark) in the 1980s, have
been protected since 1999 by his mixed Spanish trademark OROPESINAS, for confectionery
and pastry goods.
Pastries called “oropesinas” began to be sold
commercially by the defendants, Mr. Eulogio
and Agut Pan, S.L., in 2006. At the same time,
they registered the mixed Spanish trademark
LES OROPESINAS ARTESANALS DE ... J. AGUT
for the same goods as those covered by Mr
Francisco’s prior trademark.
Mr. Francisco filed suit based on the Spanish Trademark Act and the Spanish Unfair
Competition Act. He argued, inter alia, that the
defendants’ trademark registration should be
declared invalid because it had been applied
for in bad faith; that the defendants’ behavior
constituted trademark infringement; and that
the defendants took advantage of the reputation of his mark and therefore were guilty of
unfair competition.
The defendants denied the cancellation, infringement and unfair competition claims. Further, they counterclaimed for the invalidity of
the priority trademark on the ground that the
term “oropesinas” referred to the geographical
origin of the product. Alternatively, they argued
that the priority trademark must be revoked,
because the word “oropesinas,” over the
years, had become the common name for the
product protected by the trademark registration and, therefore, that trademark was no
longer able to indicate the commercial origin
of the product.
In its decision of October 21, 2011, the Commercial Court of Valencia held that the defendants’ trademark registration be cancelled and
the prior trademark registration be revoked. It
dismissed the other requests.
Both parties appealed against the first instance judgment on the same grounds. In its
judgment of May 29, 2012, the Valencia Court
of Appeal confirmed the cancellation declaration regarding the defendants’ trademark
registration but recognized Mr. Francisco’s
exclusive rights in the priority trademark and
declared its registration to be in force. The
defendants appealed to the Supreme Court.
The Supreme Court held that, in accordance
with Article 12.2(a) of the EU Trademarks
Directive (Directive 2008/95/EC) and Article
55.1.d) of the Spanish Trademark Act, for a
revocation action against a trademark registration to succeed, it is necessary not only for
the sign to have become the common name
in the trade for a product or service in respect
of which it is registered, but also for the right
holder of that trademark to behave passively.
In this case, as soon as the right holder
learned of the first attempts by the defendants
to convert his priority trademark into a common term, he took the necessary measures
to avoid a revocation action—specifically, by
sending a letter to the defendants asking them
to cease their behavior and filing the cancellation action against the defendants’ trademark
registration.
The Supreme Court referenced the decision
of the European Court of Justice (ECJ) in Levi
Strauss & Co. v. Casucci SpA (Case C-145/05
(ECJ Apr. 27, 2006)) regarding the main aim
of Article 12.2(a) of the Trademarks Directive: balancing the interests of the owner of a
trademark against those of his competitors in
the availability of signs. The Council, said the
Court, “considered, in adopting this provision,
that the loss of that mark’s distinctive character can be relied on against the proprietor
thereof only where that loss is due to his
action or inaction. Therefore, as long as this is
not the case, and particularly when the loss of
the distinctive character is linked to the activity
of a third party using a sign which infringes the
mark, the proprietor must continue to enjoy
protection.”
The path followed by the Spanish Supreme
Court highlights the importance of the behavior of the trademark right holder when faced
with circumstances that could put the trademark’s validity at risk.
Contributor: Alejandro Angulo
Grau & Angulo SLP, Barcelona
INTA Bulletin Law & Practice—Europe & Central
Asia Subcommittee
Verifier: Luis Alfonso Durán
Durán-Corretjer SLP, Barcelona
Searchable database on the cancellation practice and
procedure in more than 85 jurisdictions worldwide
Trademark Cancellations on INTA’s Global Trademark Resources Page
Visit www.inta.org/Cancellations
17
Law&Practice
UKIPO Successful in Action Against Companies
UNITED KINGDOM Sending Misleading Ads
At some point, many, if not most, trademark
owners will receive unsolicited mail that, at first
glance, appears to be from an official source.
This mail usually requests payment for a service
such as renewal of a trademark, registration
on an official-sounding register or extension of
trademark rights into other territories.
In reality, however, the sender of the mail is not
connected with any official body and the correspondence is a deliberately misleading attempt
to obtain money from the trademark owner,
commonly for fees that are significantly higher
than the genuine renewal or registration fees.
Despite widespread condemnation of this
practice, in the United Kingdom little effective action has been taken to try to prevent
it—until now.
Recently, the UK Intellectual Property Office
(UKIPO) successfully brought a passing-off
action against two companies (trading as “Patent and Trade Mark Office” and “Patent and
Trade Mark Organisation,” respectively) and the
people behind them. The defendants had been
sending out misleading correspondence relating to the renewal of trademarks and patents.
The action was brought before the Intellectual
Property Enterprise Court (IPEC). Before a
decision was handed down, the defendants
admitted and settled the claims against them.
On August 18, 2014, the UKIPO reported that
the defendants had agreed to be bound by
an order of the IPEC “prohibiting them from
further acts of passing off” and, in addition,
had made a substantial payment toward the
UKIPO’s legal costs.
It is hoped that this will serve as a warning
that such misleading advertisements will not
be tolerated in the future.
Contributor: Mark Holah
Sipara, Oxford
Verifier: Florian Traub
Squire Patton Boggs (UK) LLP, London,
Both are members of the INTA Bulletin Law &
Practice—Europe & Central Asia Subcommittee.
UNITED STATES The TTAB Did Not See Phantoms
In August, the Trademark Trial and Appeal
Board (TTAB or Board) issued a non-precedential decision in an ex parte appeal involving
refusal of registration on two grounds: (1) the
applied-for mark was a phantom mark and (2)
the submitted specimens did not evidence use
of the mark applied for. In re Enterprise Holdings, Inc., Serial No. 85675437 (T.T.A.B. Aug.
25, 2014). The Board reversed both refusals.
Enterprise Holdings, Inc. filed an application
for the mark shown below, to cover various
services in Classes 35, 36 and 39, including
vehicle dealership, fleet management, and
rental and leasing services. The appeal was
limited to the Class 36 and 39 services (the
Class 35 refusal had been withdrawn).
to constitute a phantom mark. Here, the mark
was described as follows:
The mark consists of a green square to
the left of a black rectangle. The letter “e”
is white and positioned within the green
square. The letters “nterprise” are white
and positioned within the black rectangle.
The foregoing elements are positioned over
a barrel-shaped shield design that is white
outlined in black.
There were no blanks or dashes in the description. Accordingly, the Board reversed the
refusal.
With respect to the specimen refusal, the
examining attorney based his refusal on the
following specimens (brochures) for the services in Class 36 and Class 39:
When examining the application, the examining attorney took the position that the “mark
contains a blank space below the wording
ENTERPRISE into which [] applicant inserts
changeable merely descriptive wording” and,
as such, the mark constituted a phantom mark.
To determine if the mark was a phantom
mark, the Board looked at the description
of the mark. The description must include a
phantom element, namely “blanks or dashes
representing changeable parts of the mark,”
The examining attorney argued that the terms
FLEET MANAGEMENT and COMMERCIAL
TRUCKS were a part of the mark. The mark in
the specimen, therefore, did not agree with
the mark in the drawing in the application. The
18 October 15, 2014 Vol. 69 No. 19
Class 36
Class 39
examining attorney asserted that by omitting
FLEET MANAGEMENT and COMMERCIAL
TRUCKS from the drawing, the applicant had
mutilated the mark.
In reversing the specimen refusal, the Board
noted that “an applicant may seek to register any portion of a composite mark if that
portion presents a separate and distinct
commercial impression” indicating the source
of the applicant’s goods/services and distinguishing them from the goods/services of
others. Further, the Board found that FLEET
MANAGEMENT was generic for fleet management services and COMMERCIAL TRUCKS was
highly descriptive of (and perhaps generic for)
the leasing and rental of commercial trucks.
Neither of these terms could function alone
as a mark for the recited services. In concluding that the specimens were acceptable, the
Board stated that “deletion of [FLEET MANAGEMENT and COMMERCIAL TRUCKS] does
not change the commercial impression of
[the] [a]pplicant’s mark.”
Contributor: Leigh Ann Lindquist
Sughrue Mion, PLLC, Washington, DC
Verifier: Rose Auslander
Carter Ledyard & Milburn LLP, New York, New York
Both are members of the INTA Bulletin Law and
Practice—United States & Canada Subcommittee.
Law&Practice
UNITED STATES Supplemental Expert Report Not Admissible
The Trademark Trial and Appeal Board (TTAB
or Board) found that a supplemental testimony declaration submitted by the applicant to
rebut an opposer’s expert witness testimony
could not be submitted through a notice of
reliance and that it was not encompassed
within a stipulation between the parties
allowing for the admissibility of certain expert
reports. Gemological Institute of America, Inc.
v. Gemology Headquarters International, LLC,
111 U.S.P.Q.2d 1559 (T.T.A.B. July 22, 2014)
(precedential).
Applicant Gemology Headquarters International sought to submit the supplemental expert
report of Carole Chaski, Ph.D. (the “Supplemental Report”) with a notice of reliance
to rebut the testimonial deposition of the
opposer’s expert witness. Opposer Gemological Institute of America claimed that while Dr.
Chaski’s testimony deposition could have been
taken during the earlier deposition period, the
testimony was not proper for introduction by
notice of reliance.
Gemology Headquarters first sought to submit
the Supplemental Report under Trademark
Rule 2.123(b), which permits testimony in
the form of affidavit or declaration upon the
parties’ agreement. The parties had earli-
er stipulated to the admissibility of certain
specific dated expert reports. The TTAB found,
however, that the stipulation did not address
supplemental reports and therefore did not
permit admissibility of supplemental declaration testimony.
The applicant also argued that the Supplemental Report should be admissible under Federal
Rule of Civil Procedure 26, which allows a
party to supplement or correct expert disclosures “if the party learns that … the disclosure
or response is incomplete or incorrect, and if
the additional or corrective information has not
otherwise been made known to the other parties during the discovery process or in writing.”
The Board concluded that the Supplemental
Report was intended to rebut the opposer’s
expert witness testimony, not supplement or
correct expert disclosures in an earlier report.
It therefore did not qualify as a supplemental
expert report under Rule 26(e)(1)(A).
Consequently, the TTAB concluded that the
Supplemental Report should be excluded
unless the failure to timely file the expert’s
opinion was “substantially justified or … harmless.” In determining whether the improper
report was substantially justified or harmless,
the Board applied a five-factor test that took
into consideration the following:
1. Surprise to the party against whom the
evidence would be offered;
2. Ability of that party to cure the surprise;
3. Extent to which allowing the testimony
would disrupt the trial;
4. Importance of the evidence; and
5. Non-disclosing party’s (or late disclosing
party’s) explanation for its failure to disclose the evidence.
Applying this test, the TTAB concluded that
the untimely disclosure of the Supplemental
Report was neither substantially justified nor
harmless. Accordingly, the Board granted the
opposer’s motion to strike submission of the
Supplemental Report.
Contributor: William F. Wilson
Hunton & Williams LLP, Washington, DC
Verifier: Robert P. Felber, Jr.
Waller Lansden Dortch & Davis, LLP,
Nashville, Tennessee
Co-Chair, INTA Bulletin Law & Practice—United
States & Canada Subcommittee
Before You Send That Cease
and Desist Letter
Without proper forethought and thorough planning, a cease and desist letter can
create more problems than it was ever intended to solve. See Cease and Desist
Letters in INTA’s Practitioners’ Checklists series for help in plotting the best course
of action. This addition to the members-only series of helpful training tools in
Global Trademark Resources — by Kevin Collette, Ryan Swanson & Cleveland, PLLC,
Seattle, Washington, USA — joins other checklists on key tasks and functions.
Ensure that critical considerations are not overlooked.
Take advantage of this valuable resource today.
Visit www.inta.org/ceaseanddesist
19
Save the date for
INTA’s 137th Annual Meeting
May 2–6, 2015 | San Diego, California, USA
Look forward to these highlights:
• Almost 300 customized educational offerings, including 33 general educational sessions, more than
250 table topics, users’ group meetings with leaders from several national and regional trademark offices,
a 2-day course on International Trademark Law and Practice with 18 course segments, a 2-day Basic Mediation
Training, the Trademark Administrators’ Brunch and more.
• Special offerings for IP professionals at corporations of all sizes, including the In-House Practitioners Luncheon
and Seminar, the In-House Practitioners Reception and a new series of Industry Exchanges.
• New hassle-free ways to conduct business in the Convention Center by booking one of 4 different types of
meeting spaces.
• More than 30 official networking events, including the INTA Gala, the Sunday evening Opening Ceremony and
Welcome Reception, the Grand Finale and a new array of smaller networking excursions.
• Over 100 committee, project team and Global Advisory Council meetings.
• Exhibition hall with more than 100 exhibitors and numerous sponsorship opportunities to help you spread
the word about your company and make new connections.
We expect more than 9,500 trademark professionals from all over the world to attend!
www.inta.org/2015AM
#INTA15
Exhibitions and Sponsorship
To inquire about sponsorship or exhibition opportunities for
INTA’s events, visit www.inta.org or email sponsorship@inta.org
www.inta.org
Visit the INTA Bulletin on www.inta.org to download the current
issue or to search issues from January 1, 2000, to the present.
Email Addresses
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