R egistrants were treated to a highly-entertaining mock trial yesterday,featuring a feud over surf board

designs, an unreliable witness and even aninterruption for take-out food.

The trial before the Honorable IrmaGonzalez, the Retired Chief Judge of theUnited States District Court for theSouthern District of California, was the fic-tional Dolphin Surf Co v Porpoise SurfBoards. A respectful INTA audience all rosefor the judge.

The mock trial, featured in the sessionHere Comes the Judge: See What HappensDuring a Mock Preliminary InjunctionHearing, concerned two similar surfboards. Both shared a fish tail shaped end,blue and white coloring, and an oval designwith a stripe, two rectangles and the com-pany name in the middle.

Arguing for the plaintiff Dolphin wasNancy Rubner Frandsen of Baker &Hostetler, who demanded Porpoise dis-continue sale of its board. “The defen-dant purposely—or should I say porpoise-ly—chose a trade dress and mark thatcopied my client’s,” began Frandsen.“There can be no doubt that the defen-dant is intentionally infringing my client’sintellectual property by its choice of tradedress.”

She revealed that one customer had triedto return a Porpoise board to Dolphin anda potential customer had rung Dolphin andtried to buy a Porpoise board.

Arguing for the defendant Porpoise wasBarry Cohen of Royer Cooper CohenBraunfeld, who said the dispute camedown to two words that were not similar.“Plaintiff inaccurately believes that there

must be confusion among these twomarine mammals—but they are two differ-ent species, like cats and dogs,” saidCohen. “Dolphins and porpoises should beallowed to peacefully co-exist as surfboards.”

So help you J. Scott EvansEnter the witnesses, who were sworn inwith the oath: “Do you solemnly swear totell the truth, the whole truth, and nothingbut the truth so help you J. Scott Evans?”

Dolphin owner Ms. Johnnie Utah (DebraDuguid of Terex), a respected former FBIagent, revealed her reaction “was uttershock” when she saw the Porpoise board.She said Dolphin had sold 200 of its boardsin the past two years for $1,000 each.

Under cross-examination, she revealed

I NTA President J. Scott Evans and AllanB. Gepty, Deputy Director General ofthe Intellectual Property Office of the

Philippines (IPOPHL), yesterday signed adeal to increase levels of cooperationbetween the two organizations.

The Memorandum of Understanding(MOU) covers invitations to programs andmeetings; cooperation in the organizationof programs and meetings; the developmentof training programs; and the developmentof trademark-related programs for the pub-lic. This year, for example, INTA andIPOPHL plan to run a project focused oncustoms training in ASEAN countries.

“This MOU will help us to providegreater support to Philippine brands ownersand IP practitioners so that they can effec-tively protect and grow their trademarkportfolios,” said Evans. “We also look for-ward to developing educational programsfor the Philippine public to help us demon-strate the importance of trademark protec-tion and the key role that trademarks playsin their national economy.”

He added: “The MOU signed todaydemonstrates INTA’s continued efforts to

internationalize and to offer its tremendousmembership as a resource to other jurisdic-tions to cooperate with them to helpimprove their IP systems.”

Gepty said that the Philippines is enter-

ing “a demographic and middle incomesweet spot” that makes it an attractive des-tination for global brands. “Trademarkswill play a vital role in our country and ben-efit consumers,” he said. “In our country

the mantra at the moment is ‘public-privatepartnership.’ This agreement is anotherremarkable milestone on the path towardsthe recognition of the importance of IPrights in the Philippines.”

News

UnrealCampaignlatestPage 3

Feature

IP rights in AfricaPage 12

Interview

Fox’s JeremyKaufmanPage 20

News 1-3 | Quiz 13 | Vox pop 22 | Schedule 24 | Weather 66°F

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Tuesday, May 5, 2015 137th Annual Meeting, San Diego

Surf’s up in mock trial session

Continued on page 4.

INTA and the Philippines IP Office sign MOU

A re you ready for a trademark bat-tle pitched across multiple conti-nents? Yesterday’s session Have

Dispute Will Travel: Managing Multi-Jurisdictional Trademark Disputesshowed what such an endeavor may looklike and why coordination between juris-dictions is key.

The panelists presented a case studyinvolving a fictitious guitar company,Hendrix Guitars, with each speaker play-ing a different role: Hendrix’s CEO, its in-house counsel, and its outside counsel inEurope and Asia.

Hendrix owns the ALLADIN mark inthe United States, a Community TradeMark in Europe and a mark in HongKong, where it has a sourcing office towork with its original equipment manufac-turer (OEM) in China. Its UnitedKingdom-based rival Bowie guitars ownsthe mark ALLADIN SANE in the UK,Germany and China. Bowie’s marks inGermany and the UK predate Hendrix’sEuropean Community mark.

Hendrix has traditionally sold in theU.S. while Bowie has been selling in theUK and Germany, but now both compa-nies are keen to expand into each other’smarkets. Bowie recently entered into a dealwith the Iggy Pop Company in Detroit todistribute its products in the U.S.

Anessa Owen Kramer of HonigmanMiller Schwartz and Cohn acted asHendrix’s CEO and asked her in-housecounsel Jeremy Kaufman of FoxEntertainment Group to devise a strategyfor dealing with Bowie. She has no interestin entering into a co-existence agreement.

Multiple optionsOwen Kramer’s legal advisors laid out thevarious options in their jurisdictions. Forexample, Kaufman observed that in theU.S., there is usually a correlation betweenthe aggressiveness of the response and itscost. An infringement suit would be thestrongest response, but would rack up thebill. Challenging Bowie’s registrations atthe USPTO’s Trademark Trial and AppealBoard would be less expensive, but thepotential remedies would be much morelimited. Another option, filing a prelimi-nary injunction, may be an attractive solu-tion, allowing Hendrix to get injunctiverelief relatively quickly and at lower cost,although damages are not available.

Jeremy Dickerson of Burges Salmonin the UK considered Hendrix’sEuropean options. He highlighted sever-al danger spots, such as the fact thatBowie can use its national UK andGerman marks to attack Hendrix’sCTM. Options to consider include con-verting the CTM into national trademarks and also seeking a declaration ofnon-infringement in the UK.

Nick Redfearn of Rouse acted as out-side Asia counsel and addressed issues inhis region. For example, the lack of a reg-istered trade mark in China may allowBowie to file an infringement suit based onHendrix’s OEM activities there. As

Redfearn explained, the issue of whethermanufacturing for export markets consti-tutes use of the mark in China is still unset-tled, though he noted that several caseshave found that it does not.

The panelists emphasized that coordi-nation is key in disputes that span multiplecountries. An argument made in one coun-try may have consequences in others. Forexample, Dickerson warned that getting adeclaration of non-infringement in the UK

based on no likelihood of confusion mayhave a negative effect on Hendrix’sattempts to bring an infringement suit inthe U.S., where it would try to make theopposite argument. On the other hand,Redfearn pointed out that a declaration ofnon-infringement in China may not havethe same problem since that would bebased on non-use.

Similarly, a well-planned action in onecountry can benefit your position in anoth-er. Dickerson and Kaufman pointed outthat given that Hendrix’s position isstrongest in the U.S., achieving a positiveresult there, such as securing a preliminaryinjunction, can give it leverage againstBowie in other jurisdictions.

Seeing these legal actions in a global

business context is essential to a commer-cially successful resolution. As OwenKramer pointed out, even thoughHendrix’s CEO may not wish to settle, thereality is that often these disputes andactions in various countries are really a wayfor a company to improve its negotiationposition and gain leverage for an eventualglobal agreement between the companies.

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Playing for leverage in multi-jurisdictional disputes

The panelistsemphasized thatcoordination is key indisputes that spanmultiple countries.

I n 2012, INTA launched the Unreal Campaign to raiseawareness with teenagers (14-18 years old) about the dan-gers of counterfeiting and the importance of trademarks. This year, the Unreal Campaign has been accelerating

its pace: it has reached 800 students from January to Mayin classrooms and at events in Mexico, New York andFlorida.

On April 26 and 27, the Unreal Campaign participated inthe 2015 DECA International Conference in Orlando(Florida, USA). This conference was attended by 18,000 stu-dents and teachers who participated in competitions andemerging leader courses. INTA thanks member Rosa Jimenez(Sea World, USA) for sharing her intellectual property experi-ence with a presentation to 600 students. The Unreal teamraised awareness with students and teachers at its exhibitorbooth showing examples of counterfeit and genuine products.

Members are welcome to get involved or sponsor the nextevents planned for 2015:• Alexandria, VA, USA— Exhibitor booth and session at

USPTO Trademark Expo (October)• Panama City, Panama—In conjunction with the

Leadership Meeting (November 17–20)• Austin, Texas, USA—Exhibitor booth and session at

DECA Power Conference (Nov 20-22)• Rome, Italy—In conjunction with INTA’s Interplay

between Trademarks and Geographical IndicationsConference (December 9)

New in 2016: the Unreal Campaign CommitteeAnother way to participate is to apply for the UnrealCampaign Committee, new in 2016. Committee mem-

bers will be responsible for planning and participating instudent engagement sessions in schools and at publicevents. You will also help expand the program interna-tionally, with a particular focus on Latin America.Volunteers for this committee should be prepared for anactive experience engaging with young people and may

expect to spend several hours each year onsite at schoolsor other events.

To get involved or for more information, contact AmélieBernet, Unreal Campaign coordinator, at abernet@inta.org orvisit the Unreal Desk at the San Diego Convention Center inthe Hall A Lobby.

News

www.manag ing ip .com INTA Da i ly News Tuesday, May 5 2015 3

Unreal accelerates awareness campaign

March 3: Miguel Margáin (Instituto Mejicano de la PropiedadIndustrial, Mexico) Gerardo Muñoz de Cote (Televisa, Mexico)and Miguel Angel Carpio (Langlet, Carpio y Asociados, Mexico)speak to 100 students during the award ceremony of the IMPIposter contest in México

March 12: Heather McDonald (Baker Hostetler, USA) raisesawareness with 10th and 11th graders in New York

March 25: the Unreal Campaign makes a presentation duringthe career day of the Manhattan Business Academy

April 26: Rosa Jimenez (Sea World, USA) presents to 600 students at DECA International Conference in Orlando

I n today’s globalized marketplace where companieswant to sell their products all over the world, it is littlesurprise that many are seeking to use the international

language of color to differentiate their products.But how can IP owners protect color marks, and what

are the national limits of protection in a world wheretrademark law harmonization still has a long way to go?

Back to the case lawThese are some of the issues that will be examined in a ses-sion today on protecting and enforcing color marks.Slobodan Petosevic of Petosevic will moderate the interna-tional panel and provide a European take on the issue. RaeYan of Hogan Lovells in Beijing will provide an Asian per-spective, while Christopher Turk of the H.D. LeeCompany will consider the state of the law in the UnitedStates.

“There is no definite solution to the question in any leg-islation, especially for color per se,” says Petosevic.“Therefore it makes sense to come back to the case law.”The panelists will consider recent court decisions to drawout the trends affecting owners and would-be owners ofcolor marks. One of the recent cases likely to be discussedis a dispute between T-Mobile and Aio. At the beginningof 2014 T-Mobile obtained an injunction preventingAT&T subsidiary Aio Wireless from using a plum color inits marketing and advertising after the Court found that itwas “confusingly similar” to the magenta shade used by T-Mobile.

The panelists will also discuss the legal repercussions ofChristian Louboutin’s attempts to claim exclusivity to theuse of the color red on the sole of shoes.

But they will also consider legislative developments thatdetermine how IP offices and courts will assess colormarks.

New opportunities in JapanOne topical example likely to come up during the sessionis Japan. In line with the international trend for offering IPowners greater protection for non-traditional marks,Japan has amended its law to allow the registration ofcolor marks (along with sound marks, moving marks andhologram marks). The new rules came into force on April1. But the liberalization of the law on what constitutes atrademark might not open the door to the protection of asingle color, say commentators. Vital to determining regis-

trability will be whether color marks have distinctiveness,a test that is likely to be applied strictly and might excludecolors that are only used to improve the function or lookof a product.

Around the world, IP owners seeking protection forcolor marks have had greater success when they use colorin combination with other aspects of a mark, because it isoften easier to argue that the mark is distinctive. An exam-ple of this in practice are applications made by agricultur-al machinery company John Deere in the United States.The company was denied the color green in a 1982 disputewith Farmhand Inc, after it failed to establish that a sec-ondary meaning exists for the color often referred to in theindustry as “John Deere green.” The USPTO did, howev-er, allow the company green and yellow in In re Deere &Co after it provided evidence that established that the col-ors had become distinctive of the goods.

that Dolphin does not a have a trademarkregistration for the look and design of theboard, but does have a trademark on itsname. She also conceded that the fish taildesign serves a function, allowing surfersto cut through waves more easily, as wellas revealing she thought dolphins and por-poises were both fish.

Proceedings took a turn towards theridiculous with the arrival on the witnessstand of Porpoise owner Jeffrey Spicoli(Chris Turk of The H.D. Lee Company),who received an immediate rebuke fromthe judge for his relaxed clothing of aClash t-shirt. “Surfers are a unique breed,”offered Cohen. “I assume Your Honorsurfs?”

Highlights of Spicoli’s testimonyincluded referring to the judge as “YourHonorable Dudette”, claiming he hadsurfed the English Channel, and jumpingup on the stand to show the judge how tosurf. The trial was then interrupted by acry of “who ordered the peperoni pizza?”It seems this had been ordered by Spicoli.

Cohen interjected: “Can I just give a blan-ket apology now that will cover every-thing else.”

Spicoli argued that he did not copy theDolphin board. The placement of thePorpoise name had been suggested by hismarketing people, he said, claiming thatthe rectangular lines on his design “showwhere to put your feet when you’re reallyhungover.”

Under cross-examination, he revealed

he had “partied” with the plaintiff. Healso gave his take on the two animals:“One is a fish, one is not”.

In closing, plaintiff attorney Frandsensaid that Porpoise’s “infant business” was“trying to ride on the fish tails of myclient”. “The risk that this might close hisbusiness is the risk he took when he tookmy client’s design,” she added.

Cohen countered by arguing blue andwhite are very common colors, the plaintiff

had shown no survey testimony or customertestimony, and Dolphin needed to demon-strate secondary meaning and that its designfeatures are non-functional. “Strip away allof that and it is down to two words, likeapples and oranges” he said.

A quick poll of registrants revealed themajority would deny the preliminaryinjunction.

Judge Gonzalez gave her verdict: “Iwould grant it where the trademark isconcerned and deny it as far as tradedress. There is no getting around thefunction of this fish tail.” She added shewas not sure it had acquired secondarymeaning.

She said Spicoli’s “credibility is reallynot very good, and there might be an argu-ment he copied trade dress.”

On the trademark, she said: “I justthink there is likelihood of confusion forthe average consumer who doesn’t knowmuch about mammals —they really dolook similar. The mark is registered andthat really helps. It is a really strong trade-mark, and I think the likelihood they willprevail in a trial is very high.”

Preview Color marks

INTA Da i ly News Tuesday, May 5 2015 www.manag ing ip .com4

How color marks transcend borders

Making waves at the mock trial

Color marks are increasingly important because of globalization. Emma Barraclough previews a session that willaddress how they can be protected in key markets.

Obtaining trademark protection fora color is not easy. To maximizeyour chances, says SlobodanPetosovic, you need to plan yourstrategy carefully. First, considerengaging the services of an experi-enced trademark attorney who isable to advise on the chances ofregistration in all of your targetmarkets.

Second, ensure that your market-

ing colleagues work closely with yourlegal team. “Don’t just follow market-ing principles, otherwise it will lead toproblems down the road,” he says. “Asuccessful registration of a color or acolor combination relies on the jointwork of lawyers and marketing pro-fessionals.”

Lastly, although many IP ownerswould like to own the trademarkrights to color per se, the legal bar-

riers to ownership are high. “Focuson acquired distinctiveness,” saysPetosovic. “You won’t be able to doit overnight but look at the case lawand develop a long term strategy inthe light of it”.

CW21 Protecting and EnforcingColor Marks: An InternationalPerspective takes place in Room 6Bfrom 11:45 am to 1:00 pm tomorrow.

How to get a color mark

Continued from page 1.

I NTA’s Internet Committee will open itsdoors to all INTA Annual Meeting reg-istrants during an unprecedented open

full committee meeting today from 4:00pm to 5:30 pm in Room 25AB. The meet-ing is designed to engage all members whoare interested in Internet issues, but maynot know where to start.

“We got the feeling bubbling up from our

subcommittee chairs that there is a lack ofengagement from the membership as a wholewith ICANN,” says John McElwaine ofNelson Mullins Riley & Scarborough, ViceChair of the Internet Committee. This is part-ly because members sometimes don’t knowhow to take the first step. “They get our callto action emails and say now what? What ifmy employer won’t pay?” adds Committee

Chair, Fabricio Vayra of Perkins Coie. Vayra and McElwaine have identified

key people from Internet user organiza-tions to address such questions and pro-vide practical tips for making Internetadvocacy fit in with one’s career. Makingthe time to engage with this issue is moreimportant than ever as ICANN reviews itspolicies around new gTLDs and the U.S.

government transitions its stewardship ofthe Internet Assigned Names and NumbersAuthority (IANA) functions to ICANN.

Food and beverages will be served toencourage a laid back atmosphere. “We’rehoping everyone will feel comfortableenough to grab a glass and talk frankly,”says Vayra. INTA’s Senior Director,Internet Policy, Lori Schulman, adds: “Theintention is to demystify Internet advocacyand the ICANN process. We will answerquestions and encourage involvement fromall INTA members.”

T rademark practitioners have raisedalarms about the threat that plainpackaging laws pose to IP rights. In

yesterday’s Trademarks and ConsumerProtection session, Myrtha Hurtado Rivas ofNovartis argued that pharmaceuticals arealready subject to similar restrictions.

“Even though medicines and tobaccohave nothing in common … what we’re see-ing from the regulators’ side is that they seemto be taking a similar approach,” she said.

Australia, which was one of the first coun-tries to introduce plain packaging for tobac-co, is once again involved. In November, itsTherapeutic Goods Administration, the gov-

ernment body that regulates medicines,closed its public consultation on a draft ofOrder No. 79, which would impose newpackaging and labeling limitations on phar-maceuticals. Like plain packaging for tobac-co, Order No. 79 is intended to enhance pub-lic welfare. According to Hurtado Rivas, thedraft Order would leave essentially no roomfor brand elements, rather as Australia’splain packaging law has standardized ciga-rette packaging and eliminated logos andother elements such as color.

“Logos for pharmaceuticals will prettymuch disappear if Order 79 goes through,”Hurtado Rivas warned.

Regulations in other countries also limitthe use of trademarks on medicines. Forexample, many countries require that a mol-ecule’s generic name, the InternationalNonproprietary Names for a molecule select-ed by the World Health Organization, be dis-played on drug packaging in a certain-sizedfont. In some countries, the generic name ofthe molecule is actually bigger and moreprominent than the trademarked brand.

Hurtado Rivas also warned the audienceabout Ecuador’s Decree 522, which wasenacted in January. This requires off-patentdrugs to be registered and sold as generic.Furthermore the label must clearly state thatit is a generic medicine.

INTA’s Board of Directors on Saturdayapproved a resolution on plain packaging,saying it is detrimental to consumers, trade-mark owners and competition.

News

www.manag ing ip .com INTA Da i ly News Tuesday, May 5 2015 5

The Internet committee welcomes you

What’s next for plainpackaging?

T he mobile revolution is the topic of one of today’smorning sessions. As panel moderator LarryMcFarland of Kilpatrick Townsend & Stockton

explains, the popularity of online and mobile technologieshas added many challenges for trademark practitioners.

One of the biggest issues is that while trademark practicehas long been limited by territorial boundaries, the mobileonline world transcends these borders, forcing practitionersto adapt. McFarland cites enforcement as one of these chal-lenges, where a company based in the U.S. may be trying toenforce its trademarks against infringers based in some far-flung country. In these situations, rights holders have toresort to other tools to help them achieve their goals.

“Let’s say you’re trying to enforce an injunction againsta user of your mobile app or site, but the user is not in theU.S.,” he explains. “If you have site T&Cs [terms and con-ditions agreements] that specify the terms of use and thatthe law of your state applies, then you may be able toenforce an injunction you got from California, eventhough the user is based in Eastern Europe.”

He adds: “From my experience, courts in other coun-tries are generally willing to enforce these contractualrights, unless it’s something completely crazy.”

The global nature of the mobile space affects not justenforcement. Many of the bread-and-butter aspects oftrademark lawyers, such as clearances, registrations andgeneral strategy, have been made much more difficult. Evenseemingly fundamental issues, such as whether to use trade-mark markings, are more difficult in the mobile space.

For example, many rights holders do not hold registrationsin all the markets that they operate in. Because mobile prod-ucts and the attached trademarks will almost undoubtedlycross national boundaries, one question that arises is whetherthe brand owner should use trademark markings. Accordingto McFarland this can be a thorny problem, because in somejurisdictions, there are negative consequences for claiming tohave a trademark when you don’t.

The open nature of mobile space also poses new prob-lems for trademark practitioners. Infringing user-generated

content is an especially difficult issue, in part because thereare no bright line rules or best practices for how to dealwith this type of infringement.

“Even if it is clear from an IP perspective that a certainpiece of user generated content is infringing, it is important to

keep the practical issues in mind,” McFarland says. “In gen-eral, you have to be cognizant of the purpose of the user gen-erated content—is it a fan of your product, or is it commer-cial with the user trying to make money off your brand?”

Because of the range of motivations behind user gener-ated content, there is no one-size-fits-all approach to theissue. Instead, each case requires careful analysis of theserealities. For example, the Internet is filled with stories ofrights holders facing a backlash when enforcing theirrights against infringing user-generated content. Such con-siderations, McFarland says, have to be part of the processwhen deciding the next move.

However, even if these considerations may stop brandowners from adopting draconian or overly aggressiveenforcement practices, he says that brand owners shouldn’tbe scared to protect their marks. As he notes, it is almostinevitable that big companies will become the subject of neg-ative Internet publicity. The role of trademark lawyers is tohave the tools to analyze these cases and to act accordingly.

CT03 Trademark Rights in a Mobile World starts today at10:15 am in Room 1AB.

T he complexities of deciding whento hire an investigator for IP litiga-tion and subsequently vetting, hir-

ing and instructing them were discussedyesterday in the Using Private InvestigatorsWithout Losing Your License to PracticeLaw session.

Ross Bulla of The Treadstone Groupadvised registrants to start with anexchange of view about the attorney’sexpectations, the client profile, case type,boundaries, and format and form such aswhether results are desired by phone, by awritten report or both.

The session then discussed the type oftechniques that can be deployed. “Arguablythe most controversial investigations tech-nique is pretexting,” said Bulla.

Pretexting is when a fictitious reason isused to elicit prejudicial information. Thisis a useful way of getting information aboutcounterfeit goods, for example, which

would not be given if the private investiga-tor revealed his or her true identity.

“This technique is not always illegal,” heexplained, but it is always a misrepresenta-tion or deception, and frequently conflictswith the rules. Despite this, Bulla said it is avaluable investigative technique. INTA evenhas its own resolution on it, endorsing “eth-ical and legal pretexting as an essential toolin investigating and combating trademarkinfringement and counterfeiting.”

Unsurprisingly, the technique is an ethi-cal minefield. “What can be valuable andlegal may not be ethical,” warned FrankLong of Dickinson Wright. “I would sug-gest approaching this with extreme cau-tion. Courts can take an extremely doc-trine-esque attitude to pre-texting.”

Two laws allow pretexting—one is civilrights, the other is intellectual propertyrights, and both are becoming more sup-portive of pretexting. Those involved have

to be sure a violation is taking place or isimminent, and that the information is notavailable through other means. The inves-tigator must also act as a regular con-sumer, as opposed to a government officialor an insurance company agent.

Personally identifiable information pro-tected under federal law is off-limits inthese types of investigations, includingfinancial and banking details under theGramm-Leach-Bliley Act, telephone andtoll records under the Telephone Records& Privacy Retention Act, insurance infor-mation, and credit reports.

It is important to choose the right personto do these investigations. “Attorneys oftenask, ‘Why can’t I do it on my own, and getone of my paralegals to do this?’” said Bulla.“But objectivity is the most critical compo-nent of any investigation. And do you wantyour paralegal to be witness number one?”

He also gave some advice for what to

look for if you are “going to hire MagnumIP”, saying you want an investigator whospecializes in intellectual property.

He added that when interviewingprospective candidates you should askabout their experience and hypothesize asituation with them. “You want hear thewords ‘no’ or ‘can’t’,” and Bulla. “And askyourself whether you can imagine them onthe stand. I am from North Carolina so Ican say this: you don’t want someone whosounds like a redneck on the stand.”

Preview Mobile world

INTA Da i ly News Tuesday, May 5 2015 www.manag ing ip .com6

Living in the new mobile world

The do’s and don’ts of pretexting

The mobile revolution has played a big role in internationalizing trademark practice. Peter Leung asks: what can youdo to help your clients adapt to this new world?

The European Commission is hold-ing a consultation on the DigitalSingle Market, which has numerousimplications for trademark owners.These include a prohibition on geo-blocking (redirecting consumers tonational sites) and consumer accessto pricing and promotions across allEU member states.

Toe Su Aung, co-founder of Elipeand INTA Past President, says: “Wesee a major issue for brands in the

shaping of measures to addressbarriers to the free movement ofgoods on or off line. The debate todate has focused primarily on copy-right and without any discussion ofthe impact on, and future role ofnational trademark rights.” 

The Commission’s evidencereport is due to be published on the6th, and is likely to reflect concernsamong trademark owners aboutimproving enforcement and the role

of intermediaries. This is expectedto be followed by legislative propos-als in September, so there is stilltime for trademark owners to influ-ence these measures that willdefine the future European market.

Aung adds: “Brand ownersshould continue to assess theirviews, using a long-term businesslens, on different issues covered inthe strategy and consider engagingon commercial priorities.”

EU Digital Single Market

T rademark cases are not won on theday of the trial. Nor are they won onthe day a killer lawsuit is served. As

many experienced litigators will havelearned, the groundwork for winning atrademark case begins years, sometimesdecades, earlier.

Panelists in a session today on gatheringevidence will underline the importance ofpulling together and maintaining evidencefor use in trademark litigation, well beforelitigation is contemplated. “You really canlose cases before IP offices and in the courtswithout sufficient evidence”, says Carsten

Albrecht of FPS Fritze Wicke Seelig inGermany, who is moderating today’s session.“It is a good idea to collect evidence at aspart of portfolio management”.

Longines v StaccataThe panelists will consider some high-profile

cases where legal battles have been lost forwant of proof of use of a trademark, orbecause of insufficient evidence of the use ofa mark in a particular form.

One recent example is a dispute betweenSwiss watch maker Longines and Italy’sStaccata. The Swiss company objected toStaccato’s application to register a figurativemark that included a wings device along withthe word QUARTODIMIGLIO. The objec-tion was based on its own trademarks, someof which consisted solely of a wings device,and some of a wings device with the wordLONGINES.

In February, the General Court inLuxembourg backed OHIM’s Board ofAppeal, which had found that Longines hadnot succeeded in proving the existence of areputation for its “winged hourglass” deviceon its own, independently of the markLONGINES.

Types of evidenceSo what kind of evidence should IP ownersstockpile to prove their trademark claims?Albrecht suggests they build up evidence ofuse of at least the most important trademarksin their portfolio, bringing together packag-ing designs and labels as well as figures show-ing the amount spent on advertising.

“OHIM and the General Court also liketo see copies of invoices showing the trade-mark,” he says.

Easy access to the evidence is important sothat litigation teams can find, analyze andsubmit it within tight litigation timetables.

In a digital era, the job of evidence collec-tion and archiving should be easier, allowingIP owners to keep records online and scancopies of documents and examples of pack-aging. But Albrecht says that while theGerman courts are relatively relaxed aboutthe submission of scanned documents, theUK courts might be more suspicious. “Britishlawyers have told me that the courts inLondon might expect the parties to be able toproduce witnesses to the scanning process. Itis important to consider evidence gatheringon a global basis”.

Another headache for trademark lawyersis the trend for IP owners to use their marksin dynamic ways. This trend is often drivenby the marketing department, but their col-leagues in the legal team should be aware ofthe potential problems that regular changesto the way the trademark is presented mighthave for litigation success down the line. “InEurope the IP owner needs to be able toshow that the mark has been used in the reg-istered form, or with only slight changes toit,” warns Albrecht.

The other members of the panel areRichard Groos of Norton Rose Fulbright inthe United States, Paul Harris of PillsburyWinthrop Shaw Pittman in the UK andAnna-Lena Wolfe of Tetra Pak in Sweden.

CT01 Gathering Evidence with In-houseCounsel: Achieving Harmony and AvoidingDiscord takes place from 10:15 am to 11:30pm today.

Preview Evidence

www.manag ing ip .com INTA Da i ly News Tuesday, May 5 2015 7

The evidential groundwork for litigation successIt’s never too early to collect the evidence that will win your trademark case, as Emma Barraclough finds out.

T he concept of fair use is not a newone, but some companies withbusiness models built on the mobile

Internet are adopting more relaxedapproaches to the use of their marks.

Panelists from yesterday’s session Is FairUse Always Fair? International Approachesto Fair Use Issues in a Mobile World dis-cussed the evolution of the concept.

Gavin Charlston of Google pointed outthat though brand owners sometimes seetheir trademarks as property rights to beenforced against third parties, the reality isthat marks do not operate in a vacuum.Referring to a quote from former U.S. fed-eral appellate court Judge Alex Kozinski,he said that trademarks become part of acommon language and that everyone,including third parties, have a right to usethem to communicate in truthful and non-misleading ways.

Sung-Nam Kim of Kim & Chang inSeoul explained the basic frameworkbehind nominative fair use, where a thirdparty uses a trademark to refer to the prod-uct or service of the trademark holder. Inthe U.S. and several other countries, courtslook at whether the third party’s product isreadily identifiable without use of thetrademark, whether the degree of useexceeds what is necessary, and whether useof the mark falsely suggests sponsorship orendorsement by the trademark holder.

Kim pointed out that under this test, theuse of another company’s logos may beproblematic in many cases because it canbe argued that the use may exceed what isnecessary to convey information.

The situation may be different in themobile world. Andrea Sander of Microsoftexplained that as consumers migratetoward mobile devices with smaller screens,

logos may in many cases be the best way toconvey the necessary information.

Some Internet companies also encouragethird parties to use their logos and marks.Stephen Jadie Coates of Twitter explainedthat his company encourages third partiesto use its unmodified blue bird logo or theword “tweet” to refer to its service. Henoted that the company is sometimes evenaccepting of uses that are not technically

compliant with all requirements, especiallywhen there is no suggestion of endorsementor affiliation with Twitter.

Google’s approach to its ANDROIDrobot logo is even more lenient; the com-pany has adopted a Creative Commonslicense which allows for modification ofthe logo. “We firmly believe that it’s theopen nature of the logo that has helped tomake it so iconic,” Charlston said.

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Fair use in a digital age

San DiegoSecretsSpending time in San Diego?Want to get to know thecity? Get a San Diego GoCard, which provides entryto 48 museums, theme parksand tours. The Go Cardenables you to skip lines andsave around 55% onadmission prices.

You can choose a pass orone, two, three, five or sevendays and it grants entry toattractions between 9:30 amand 5:30 pm. Adult pricesstart at $84.

T he new trademark law in the Gulf CooperationCouncil (GCC) states; the fight against counterfeitsand the impact of economic growth on trademark

registration—these are the three topics that will beaddressed by speakers in today’s regional focus on theMiddle East.

The GCC Trademark Law looks finally to be nearingreality, after it was approved last year by Saudi Arabia’sCabinet. It has also been enacted in Bahrain and Qatar, butthe other three member states (see box) also need to enactit before it can come into force.

“People have been talking about the law for more thana year, but now we have more information about what toexpect,” says Charles Shaban of AGIP in Jordan, who ismoderating today’s session. The new law will mean that allsix states will have the same standards and requirementsfor examination and opposition. They will not, however,be adopting a unified registration system such as that inthe EU.

“It’s expected to make protection in the region easier asrequirements will be standardized. But the bad news is thatit will be more expensive in some countries, as the chargeswill be made the same,” says Shaban. For example, at themoment there is a big difference between Kuwait, which

has relatively low official fees, and the UAE, which is moreexpensive.

Aisha Salem, the USPTO IP Attaché for the Middle East& North Africa, who has been in the region for two years,will provide an update on the latest developments regard-ing the law.

Shaban says that, while the unification brought by thelaw is welcome, the laws themselves in the region are notgenerally deficient at the moment; the biggest problems areto do with enforcement, particularly in those areas wherethere are free-trade zones and large volumes of goods intransit.

Omar Obeidat of Al-Tamimi & Company in the UAEwill present different approaches to fighting counterfeits,

with examples, during today’s session. These include noti-fication, cease-and-desist letters, online filing of formsand Customs actions. “Although it may seem difficult,there are ways that you can get information as the trade-mark owner,” says Shaban. His view is backed up byrights owners who have visited the region recently andreport that police and Customs authorities are willing tohelp locate counterfeiting sites, shut them down and seizefake goods.

The other side of the enforcement battle is to increaseawareness among consumers; in Lebanon recently therewas an advertising campaign telling people what numberto call if they suspect counterfeit goods are on sale. RanySader of Sader & Associates will demonstrate how thecampaign worked, as well as addressing other issues.

And if that’s not enough to tempt you along, Shabanalso promises that—in line with this year’s AnnualMeeting theme—there will be some music from the region.He declined to confirm, though, whether there would alsobe belly dancing.

RT21 Regional Update: The Latest News from the MiddleEast. Why is it so Important to Protect IP in the Region?takes place from 11:45 am to 1:00 pm today.

Preview Middle East

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Three hot topics in the Middle EastThere are some important changes happening in the Middle East. James Nurton finds out what today’s session will cover.

Bahrain Kuwait

Oman Qatar

Saudi Arabia United Arab Emirates

The six GCC states

What are some of the most important cases inthe past year or so?Sudeep Chatterjee: Anchor vs P&G is one of the impor-tant trademark cases from the past year. Anchor manufac-tures and sells its toothpaste under the trademark ALL-ROUND along with the tagline ALLROUND PROTEC-TION since 2007. P&G launched ORAL-B toothpasteusing the tagline ALL AROUND PROTECTION and hadalso sought registrations for the same in India and variousjurisdictions of the world. Anchor filed a suit for perma-nent injunction against P&G for infringement, passing off,dilution and damages. The Single Judge of the Delhi HighCourt granted an interim injunction against P&G andrestrained it from using the slogan/tagline.

P&G filed an appeal before the Division Bench against theorder of the Single Judge. The Division Bench, in a landmarkjudgment, recognized that taglines and slogans used withinadvertising campaigns are valid and enforceable trade-marks.Moreover, since P&G had sought registration for ALLAROUND PROTECTION in India and other jurisdictionsof the world, P&G ought not to be permitted to arguedescriptiveness. Thus it could not aprobate and reprobate.

This is the first judgment that categorically holds thattaglines and slogans can serve as a trademark and thatadvertising campaigns have an impact on the perception ofthe trademark by consumers.

P&G appealed to the Supreme Court of India, whichalso dismissed the case.Jaya Mandelia: Havells vs Eveready was another note-

worthy case. Eveready released the impugnedadvertising/promotional campaign for their LED Bulbs.The ads stated: ‘Switch to the Brightest LED’ below whichit read ‘Check lumens and price before you buy’ followedby a chart comparing the price and lumen quantity of sev-eral brands of LED bulbs, including Havells with that ofEveready’s.

Havells filed a suit against Eveready on the ground thatthe advertisement wrongly laid stress on the assertion thatEveready’s LED Bulbs are the brightest at the least pricewhereas those of other brands, including Havells, are ofinferior quality and unreasonably priced. Havells furtheralleged that such advertising is misleading and results indisparagement of the brand as well as Havells’ products. Itselectively compares only two criteria which were favor-able toward Eveready’s product whereas Havells’ productwas superior to that of Eveready’s in all other respects suchas power factor and life of bulb. Havells also argued thatsuch a misrepresentation would create a false impressionin the consumers’ mind that brightness and price are theonly relevant factors to be considered while buying anLED bulb, whereas other factors such as power factor andlifespan are actually equally important when determiningthe quality of an LED bulb.

Eveready contended that its advertisement only con-tained true representations and that it was completely jus-tified in only comparing the two aspects, lumens and price,

it considered to be the most important. It further contend-ed that there is no requirement to disclose all factors in acomparative advertisement.

The Single Judge of the Delhi High Court held thatEveready’s advertisement was merely trade puffery andcompletely permissible under law. The Single Judge heldthat for an advertisement to be misleading, it must satisfytwo essential elements- first, it must deceive the consumersand second, as a consequence of such deception the eco-nomic interests of the competitor should be negativelyimpacted. It was further held that there is no requirementin law to compare every factor in a comparative advertise-ment and that it is open to an advertiser to highlight thespecial features of its products and compare the same witha competitor as long as such comparison was true.Chatterjee: I think Jasper Infotech vs Deepak Anand is

also worth noting.In this case, KAFF, the defendant, a brand of kitchen

appliances, published a caution notice on its website stat-ing that Snapdeal, the plaintiff, a leading online market-place website, was selling unauthorized KAFF goodswhich are counterfeit and deceiving to consumers. KAFFalso proceeded to stop offering warranties to the productspurchased from Snapdeal’s website. Snapdeal thereforepreferred a suit inter alia alleging defamation, disparage-ment and misrepresentation against KAFF. Snapdeal alsocontended that it is the intermediary and is only a platformon which sellers sell their products to the end consumers.It further argued that its policies are framed in a manner toavoid any violation of intellectual property of the manu-facturers as well as all third parties and therefore under-takes only to sell genuine products.

The Single Judge of the Delhi High Court issued anorder to restrain KAFF from publishing any further cau-tion notices until further orders.

What do these cases mean for rights holders?Chatterjee: As far as Anchor vs P&G is concerned, it is avery significant development for right holders. Slogans andtaglines are integral elements of most advertising cam-paigns. They create the recall value.

Despite satisfying the definition of a trademark as pro-vided under the Trade Marks Act, 1999, up until this deci-sion, slogans and taglines had not been recognized as validand enforceable trademarks in India. Although the Courtshad granted slogans and taglines protection under the law ofCopyright such as in the case of Pepsi vs Hindustan CocaCola wherein the dispute related to use of Pepsi’s slogan“Yeh Dil Maange More” by Coca Cola in its advertisement,the Courts had consistently refrained from granting slogansand taglines protection under the law of Trademarks.

Internationally, there is a growing trend for recognizingslogans and taglines as trademarks. Not only does thisdecision make the Indian position more consistent with thegeneral trend being followed internationally, it also meansthat right holders can now reasonably expect that their slo-

gans and taglines will be upheld and protected by theCourts as trademarks. Mandelia: The decision of Havells vs Eveready on the

one hand preserves competition and on the other is likelyto bring the fight to the streets. This judgment lays downsome very definitive guidelines qua comparative advertis-ing and also the tests to be applied when adjudicatingwhether a comparative advertisement is misleading innature.

However, the law laid down in this case may be inter-preted to permit right holders the use of another’s regis-tered trademark in a manner which may be misleadingsuch that it creates a negative impression in the minds ofconsumers toward the particular brand. The reason I saythat is because in this case, Eveready selected only twocriteria out of several to compare the products giving themisleading impression that Havells’ product (amongstothers) was inferior in quality and more expensive thanEveready’s. Although Eveready is correct in claimingthat it was squarely telling the ‘truth’ so to speak, how-ever, it cannot be denied that it was only telling a ‘half-truth’. Also, in this particular case, I believe that Havellsshould have been offered protection by the Courts con-sidering that the Havells mark has been held to be awell-known mark by the very same Court vide an orderin a different lis.

I apprehend that a situation might occur wherein IPright holders may start releasing counter advertisementsusing each others’ registered trademarks and the same willcreate chaos in the marketplace. Further, the Court’s deci-sion to not offer protection to a well-known mark may bediscomforting to brand owners today because it is general-ly perceived that well-known marks deserve a higherdegree of protection. Although healthy competition isessential to any marketplace and comparative advertisingis permissible under Indian laws, the damage or loss of rep-utation suffered as a consequence of misleading advertis-ing needs further addressing. Chatterjee: The interlocutory decision in Jasper

Infotech vs Deepak Anand is a very balanced approachtaken by the Hon’ble Delhi High Court. It promotes e-commerce and competition but also does not in any man-ner authorize the sale of non-genuine and counterfeitgoods. Promotion of e-commerce will undoubtedly benefitconsumers and IP right holders alike in the long run asbrick and mortar retail is declining and the future of retailrests in e-commerce.

Are there any important decisions or develop-ments that we should keep in an eye on in thenext year?Mandelia: The Indian IP Policy is slated to be publishedshortly. It aims to provide a roadmap for the growth anddevelopment of IP in India over the next few years. TheDepartment of Industrial Policy and Promotion set up asix-member panel called the ‘Think Tank’ which has beengiven the responsibility of identifying the areas in IP lawswhich require further research and policy making and alsoto advise the government about the ongoing IP cases andproblems faced in the realm of IP in India. On the basis ofits consultations and research, this panel is also entrustedwith responsibility for drafting the National IP Policy. We

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The evolving Indian trademark environmentSudeep Chatterjee and Jaya Mandelia of Singh & Singh Lall & Sethi talk about some of the most important courtcases and legal developments in India, as well as some best practices for enforcement

Seeking a John Doe order which includes an Anton Pillerinjunction is the most effective way of getting hold ofcounterfeiters in the physical marketplace.

The sponsored discussion content in the INTA Daily News is the sole responsibility of the sponsor and does not necessarily reflect the views of INTA or Managing IP.

expect this new IP Policy to greatly impact the IP landscapein the country at an administrative and legal level andacross all areas including trademark, copyright, patent,design, geographic indications, etc. Chatterjee: Another interesting development involves

the status of the IP Appellate Board (IPAB). In a writ peti-tion filed before the Hon’ble Madras High Court, ShamnadBasheer vs UOI & Ors, a bench headed by the Hon’bleChief Justice of the Madras High Court has observed thatthe selection process of the members of the IPAB is entirelyexecutive whereas the functioning of the IPAB is judicial innature. The Hon’ble Madras High Court while holding var-ious provisions of the Trade Marks Acts, 1999 that pro-vides for the establishment and constitution of the IPAB asultra vires to the Constitution of India and has also specif-ically directed the minimum required qualifications for var-ious posts in the IPAB such as Technical Member, Vice-Chairman and Chairman. Unless the Government of Indiaappeals from this decision before the Hon’ble SupremeCourt and is able to secure a favorable order, it will have tonecessarily re-constitute the IPAB and ensure that the mem-bers are qualified and competent for their roles per the deci-sion of the Madras High Court. Mandelia: The Asian Patent Attorneys Association

(APAA) also filed a writ before the Delhi High Court con-cerning the IPAB. This petition was with regard to the con-stitution and working of the IPAB inasmuch as it was sub-mitted that there was no Chairman or Technical Member

at the IPAB, which resulted in patent cases not being takenup for hearing for a long period time and a large numberof cases were therefore pending. Also the long time takenin disposing of trademark cases was defeating the very pur-pose and object behind the constitution of the IPAB, whichwas to ensure the speedy disposal of cases. It was furthercontended that more permanent benches of the IPAB needto be established. As a result of the said writ petition, theDelhi High Court issued various directions such as locat-ing a premises in Delhi for the IPAB and appointment ofstaff for it. The Hon’ble Delhi High Court also issued adirection to the Government of India to take a reasoneddecision on the need for having a permanent bench of IPABat Delhi within three months.

In light of the above two writ petitions, we can nowhope that going forward, the IPAB will be a betterequipped tribunal with smoother and more efficient func-tioning. The same would result in a higher disposal rate ofcases as well as sounder decisions.

How can brand owners take enforcement actionsagainst infringers in physical marketplaces?Chatterjee: Anton Piller injunctions and search andseizure operations are important enforcement tools.

Anton Piller injunction orders grant the right to con-duct search and seizure of an infringer’s premises. They arethe most effective tools for assessing the extent and natureof infringement occurring in the marketplace. Following

the issuance of an Anton Piller injunction, a civil searchand seizure operation is conducted within short noticewherein the infringing stock is seized. Such operationshave a significant impact on infringers and act as veryeffective tools in deterring future infringing activities. Mandelia: John Doe orders can also help with

enforcement efforts. In the physical marketplace, mostinfringers and counterfeiters are fly-by-night operations,the roots of which are typically very hard to track.Therefore, especially when tackling counterfeiting cases,seeking a John Doe order which includes an Anton Pillerinjunction is the most effective way of getting hold ofcounterfeiters. In such cases, if search and seizure oper-ations are conducted in a strategic and widespread man-ner, it will enable brand owners to deter the retail ofcounterfeit goods and may also lead them to the sourceof the counterfeit goods.

Border control measures such as registration of yourintellectual property with Customs authorities to intersectgoods suspected to be counterfeit or pirated at the borderare also very effective means for curbing infringement andcounterfeiting in the physical marketplace. Once IP is reg-istered with Customs, seizure of suspected counterfeitgoods are carried out suo moto (on its own initiative) bythe authorities. The proprietors or authorized representa-tives of the IP are informed and required to inspect thesame However, such measures only cover goods which areimported into India, not exports.

Sponsored discussion India

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Jaya completed her Bachelor of Science in Liberal Artsand Sciences in Psychology and Political Science fromthe University of Illinois, Urbana-Champaign in 2009.She thereafter completed her LLB from Campus LawCentre, Faculty of Law, University of Delhi in 2013 andjoined Singh & Singh Law Firm. Jaya presently handleslitigation as well as trademark prosecution.

Jaya Mandelia, Associate

Sudeep completed his law degree at Lucknow Universityin 2000. He also has a Masters in software developmentand software engineering. Sudeep joined Singh & Singhin September 2005 and in 2012 became a partner at thefirm. In 2015, Singh & Singh and Lall & Sethi merged toform a new entity, Singh & Singh Lall & Sethi, of whichhe is a partner. He handles infringement matters relatingto copyright and trademarks, domain related issuesincluding filing of UDRP complaints, trademarks and

copyright filings, all work related to trademarks & copyright issues including regis-trations, assignments, oppositions, rectifications, etc.

Sudeep Chatterjee, Partner

F oreign direct investment into Africa rose by 4% to$57 billion in 2013, according to data published byUNCTAD last year. With that figure expected to

rise in the coming years, IP owners will become increasing-ly focused on protection in the region.

“Foreign investment is very much connected with intel-lectual property because investors will not come into aregion where their rights are not adequately protected,”says Uche Nwokocha of Aluko & Oyebode in Lagos,Nigeria, who is moderating today’s regional update onAfrica.

The session will cover different parts of the continent,with speakers from South Africa, Nigeria and Kenya.Nwokocha told the INTA Daily News: “These representthe different regions of Africa—sub-Saharan, west Africa(including Nigeria and Ghana) and east Africa.”

The session will focus in particular on the issues thatarise when there are different agencies involved in IP pro-tection; for example, dealing with trademarks, companynames and food and drug approval.

In Nigeria, the National Agency for Food and DrugAdministration and Control (NAFDAC) works “hand-in-hand” with the trademark registry, as applicants for

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Avoid pitfalls when investing in AfricaWith investment in Africa growing, IP protection in the region is key. Two sessions this week will provide someguidance for rights owners, explains James Nurton.

A session tomorrow will look at the imple-mentation of international IP treaties inAfrica, asking is Africa ready to join the glob-al train? Or is a hybrid model more suited tothe African terrain?

OAPI and Zimbabwe have both recentlyjoined the Madrid Protocol, increasing thenumber of African countries covered by theinternational trademark system (see map).But concerns remain about the implementa-tion of the treaty in the region, as speakersat tomorrow’s session will explain.

The session will include a presentationfrom Dr Paulin Edou Edou of OAPI.

IP treaties in Africa

� Madrid Agreement only� Madrid Agreement and Protocol or Protocol only

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ProsecutionInfringementLitigationIP

product approvals must show that they are a Nigerian-registered company and either the owner or assignee ofthe trademark they are intending to use, saysNwokocha.

Even though they are housed in different premises,she says, cross-reference between the two agencies takesplace and trademark owners need to know what toexpect: “NAFDAC will refer to the Trademark Registryto confirm that the acceptance was issued to the rightperson.”

Similar rules apply at the Companies Registry toensure that applicants do not register a company namethat infringes a registered trademark. “It’s not compli-cated,” says Nwokocha, “but you need to ensure you arenot doing something that will go against the law of theland.”

She adds that getting your strategy in place ahead ofinvestment is vital to ensure you know what to expectfrom the various agencies: “We will show you how theywork hand-in-hand to ensure rights are adequately protected.”

RT20 Trademark Offices in Africa: The Importance ofWorking with Related Government Agencies takes placefrom 11:45 am to 1:00 pm today. It is followed by theAfrica Reception from 1:15 pm to 2:15 pm. INTA willhost a conference in Africa addressing many of these issuesin 2016.

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Join us for drinks and hors d’oeuvres from3-5pm on May 5th at the San Diego Wine& Culinary Event Centre, for a receptionhosted by the Women in IP Network.

This networking event is one of the many benefits of joining theWomen in IP Network – find out more atwww.managingip.com/Women-in-IP

All welcome!

WOMEN IN IP NETWORK

Win INTA merchandise!Answer the INTA Daily News quiz question eachday to have a chance to win INTA merchandise.

Today’s question: Who are Bai Yun, Gao Gao andXiao Liwu?

Send your answer to contest@inta.org by midnight tonight.Winners will be announced on Wednesday.

Quiz

San Diego SecretsSan Diego is known for its craft breweries: there are more than 90 of themin the region, including well-known names such as Karl Strauss and StoneBrewing Co.

The city was recently named “Top Beer Town” in America by Men’s Journaland called a “sunny heaven for suds lovers” by the New York Times.

The best way to experience the range of beers is to go on a brewery tour,where you can meet the brewers and see how the beer is made.

How do you get well-known status in China?

Principles of recognition (new changes of 2014Trademark Law)Well-known trademarks are recognized on a case-by-casebasis, and are subject to the principle of passive protection.This is explained in Article 4 of the Provisions on theRecognition and Protection of Well-Known Trademarks).

Passive recognition occurs “if the holder is of the opin-ion that its rights have been infringed upon;” (Article 13)“upon request by the party concerned” (Article 14).

Case by Case basis is when “a well-known trademarkshall be recognized as a fact that needs to be ascertained inthe handling of trademark-related cases” Article 14).

Approaches and authorities of recognition (newchanges as a result of the 2014 Trademark Law)Generally there are two approaches to obtain recognitionof well-known status in China. This chart below explains:

According to Article 14, there are specific situations inwhich the recognition of well-known trademarks byChinese authorities can occur:1) The Trademark Office may recognize such well-

known status as may be necessary for examination orcase handling during trademark registration examina-tion or during the process whereby an administrationfor industry and commerce (AIC) investigates andtakes action on a case involving trademark-relatedillegalities;

2) The Trademark Review and Adjudication Board mayrecognize well-known status as may be necessary duringthe handling of a trademark dispute;

3) The People’s Court designated by the Supreme People’sCourt may recognize well-known status as may be

necessary during the hearing of a trademark-relatedcivil or administrative case.

Evidence Requirements for Recognition of Well-Known Trademark Article 14 states that the following factors shall be takeninto consideration in the recognition of a well-knowntrademark:1) The degree of recognition of the trademark by the rele-

vant public;2) The duration of the use of the trademark;3) The duration, extent and geographical scope of all pro-

motional activity carried out for the trademark by thetrademark owner;

4) The enforcement history of the trademark when recog-nized as a well-known trademark; and

5) Other factors relating to the trademark’s well-knownstatus.

What tips do you have for foreign rights holderswho are trying to get well-known status for theirmarks in China?Brand owners should pay attention to the preservation ofevidence supporting well-known status, which include: a) Materials proving the extent of the relevant public’s

awareness of the trademark;b) Materials proving the duration of the continuous use of

the trademark, such as materials on the history andscope of the use and registration of the trademark. If thetrademark is unregistered, materials proving that thetrademark has been in continuous use for not less thanfive years shall be submitted. If the trademark is regis-tered, materials proving that the trademark is registeredat least three years ago or that the trademark has beenin continuous use for not less than five years shall besubmitted;

c) Materials proving the duration, degree and geographi-cal scope of all publicity campaigns carried out for thetrademark, such as the models and geographical scopeof advertising and promotional activities, the type ofpromotional media, advertising volume, etc. in the pastthree years;

d) Materials proving the past protection of the trademarkas a well-known trademark in China or other countriesand regions; and

e) Other materials proving that the trademark is well-known, such as sales revenue, market share, net profit,tax payment, geographical scope of sales, etc. in thepast three years of the main products bearing the trade-mark.For instance, in the recent successful recognition of the

well-known status of “TIFFANY” and “TIFFANY &CO.” for jewelry and precious stones products handled byChang Tsi & Partners before the Trademark Review and

Adjudication Board (TRAB), we assisted Tiffany & Co.,owner of the subject trademarks. In that matter, we sub-mitted abundant evidence to prove the registration and useof the subject trademarks in a number of countries includ-ing China, the publicity campaigns carried out for the sub-ject trademarks, and the protection of the subject trade-marks in China. Meanwhile, based on the well-known sta-tus of “TIFFANY,” the TRAB disapproved the registrationof the “蒂芙尼”(TIFFANY in Chinese) by a third party inClass 12 for vehicles and tires that was opposed by Tiffany& Co.

It is also important to understand that the well-knownstatus of a trademark is viewed as an existing fact to berecognized rather than a specific goal to be achieved.Before applying for the recognition of a well-known trade-mark, foreign right holders should evaluate whether theirtrademarks are in fact well-known in the market. Theattorneys of Chang Tsi can provide an analysis prior to thesubmission of such a claim.

Did the revised Trademark Law bring about anychanges to the area of well-known marks?Yes, the revised Trademark Law provided much clarity andprocess to this area of the law. The revised Trademark Lawmade changes in respect of the Principles of Recognition,Approaches and Authorities of Recognition as well as Useand Protection of Well-Known Trademark.

Apart from above mentioned Principle of Recognitionand Approaches and Authorities of Recognition, thechanges to the Use and Protection of Well-KnownTrademark are as follows�a) Article 13 clarifies the definition of “well known trade-

mark” as “a trademark that is well-known by the rele-vant public”. The relevant public shall include the consumers relevantto the goods or services bearing the trademarks con-cerned, manufacturers of the said goods or other busi-ness operators that provide said services, salespersonsand other relevant persons in the distribution channels,etc. This is laid out in Article 2 of the Provisions on theRecognition and Protection of Well-KnownTrademarks.

b) Article 14 prohibits the commercial use of the words“well known trademarks” in advertising or promotion,such as on goods and the packaging or containers ofgoods. This article specifically prohibits the use of thewords “well-known trademark” as a title of honor tosell products. In other words, a trademark is recognizedas well-known for the specific purposes of enhancingthe scope of trademark rights held by the trademarkowner, as a means of legal relief. This right was notdesigned to further the commercial use of the trade-mark.

c) Article 45 grants a longer protection period for well-known trademarks in matters involving a declaration ofinvalidation. Where a third party registration isobtained in bad faith, the owner of a well-known trade-mark, when requesting the TRAB to declare the regis-tered trademark invalid, is not bound by the five-yearrestriction, but can challenge the third party’s registra-tion at any time.

d) Article 58 protects unregistered well-known trademarks

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Navigating the well-known maze in ChinaWell known trademark status is a valuable asset to have in China. Frank Liu and Kenneth Ng of Chang Tsi & Partnersexamine how to get well-known status, and review recent legal developments.

The well-known status of a trademark is viewed asan existing fact to be recognized rather than aspecific goal to be achieved.

Trademark

Review and

Adjudication

Board

Trademark

Office

People’s Court

designated by

the Supreme

People’s Court

Judicial

recognition

Administrative

recognition

Recognition of

well known

status in China

The sponsored discussion content in the INTA Daily News is the sole responsibility of the sponsor and does not necessarily reflect the views of INTA or Managing IP.

through the Anti-Unfair Competition Law where suchtrademark is being used by another party as a tradename to mislead the public.

In the past there have been concerns about toomany companies getting well-known marks andusing them for improper purposes. Is this stillthe case?Indeed, in the past there were companies who made up evi-dence and created non-existent situations in order toobtain well-known status and used such status for com-mercial gain.

However, even before the promulgation of the newTrademark Law in 2014, the judicial interpretation issuedby the Supreme Court in 2009 had already limited therecognition of well-known trademarks to certain specificsituations. Therefore, in the past several years, the thresh-old has been raised such that even eligible trademarkswould be denied recognition, which we believe was anovercorrection. The new Trademark Law has thus provid-ed much needed clarity in this field.

After the passage of the new Trademark Law, the popular-ity associated with well-known status recognition has weak-ened a little. The commercial use of the term “well-known”for trademarks used in the market has been prohibited. It isnow understood that well-known mark status can only be

used in individual cases. The Courts in China are also awarethat well-known trademark recognition should not be over-corrected. Thus, in the cases where well-known status is nec-essary for trial, the Courts have started to recognize the same.

What would you recommend for a trademarkowner seeking to have their trademark recog-nized as well-known in China?We typically recommend that our clients are focused onthe use and enforcement of their respective trademarks inChina. Such focus allows us to monitor the scope ofenforcement, to enhance the portfolio of rights, and tofamiliarize ourselves with the use and promotion of thetrademark in the marketplace. Such focus then justifies theadditional effort and cost needed to support an applicationfor well-known trademark status.

Once a trademark owner has amassed a sufficient

volume of evidence to support the claim of well-knowntrademark status, we counsel our clients to wait for agood case to bring a claim. Claims at the administrativelevel, namely, before the Chinese Trademark Office(CTMO) are comparatively easier to win; however, suchdecisions are less influential to use as evidence in futurecases. In contrast, claims brought before the People’sCourt are more difficult to win; however, a Court decisionrecognizing a trademark as well-known is a significantvictory for a trademark owner. Since multiple claims canbe brought, for a client with a strong focus on building astrong brand in China, we counsel clients to bring succes-sive and incremental claims for well-known trademarkrecognition. For example, recognition of a trademark aswell-known by the CTMO can later be used to support anapplication for well-known trademark status by theTRAB or the People’s Court.

Sponsored discussion China

www.manag ing ip .com INTA Da i ly News Tuesday, May 5 2015 15

Kenneth Ng is the US-based partner for Chang Tsi &Partners, overseeing client relations and case manage-ment in North America. Kenneth’s specialties include thedevelopment of strategy and tactics for IP enforcement,case management and budgeting. His nine years ofexperience as the chief trademark counsel at Kohler andIllinois Tool Works have given him the experience todevelop and implement processes that maximize thebenefits of a strong IP portfolio.

Kenneth Ng

After the passage of the new Trademark Law, thepopularity associated with well-known statusrecognition has weakened a little.

Frank Liu specializes in intellectual property, dispute res-olutions. Frank has practiced law for 20 years whilestarted his career as a judge in China. From 2002, hehas represented a long list of Fortune 500 companiesand Chinese clients in more than 100 litigation and arbi-tration cases. Liu has been nominated as a leadinglawyer by Asia Law Leading Lawyers in the area ofDispute Resolution in China in 2013 and 2014, was nomi-nated as a Rising Star for IP in 2014 and a Leading

Lawyer in IP practice by China Law & Practice in 2014. His professional compe-tence has also been recognized by Asia Pacific Legal 500, Chambers Asia Pacific,Managing Intellectual Property, World Trademark Review and Global Law Experts.In 2013, Frank’s achievement in representing Tang products of the Mondelēz’sgroup for trademark litigation was recognized by China Business Law Journal asone of the 2013 Deals of the Year.

Frank Liu

W ho is the average consumer under Europeantrademark law? What kind of conduct consti-tutes “taking unfair advantage” of the reputa-

tion of an established trademark? How can you prove thatyou have used your trademark to the standard required byEU law?

If you need to know what Europe’s courts decided lastyear on these questions (and many others), today’s annualreview of leading case law in the European Union will pro-vide a whistle-stop tour of some of the most importantdecisions and an analysis of emerging trends.

30 cases in 75 minutesSpeakers Guy Heath of Nabarro in the UK and Georg Jahnof Noerr in Germany will take in more than 30 decisionsfrom 12 EU member states, the Court of Justice of the EU(CJEU) and the General Court, and explain how they areshaping trademark law.

Some of the leading CJEU and General Court cases thatwill be under discussion include the CJEU ruling on theregistrability of Apple’s retail layout as a trademark, theTRIPP TRAPP decision on the registrability of shapemarks, the Leidesplein/Red Bull case dealing with the

Feature Europe

INTA Da i ly News Tuesday, May 5 2015 www.manag ing ip .com16

Understand Europe’s trademark trendsIt has been a busy year in Europe’s courts. Emma Barraclough previews a session that will discuss some of the mostsignificant cases.

APPLE STORE

In a victory for Apple, Europe’shighest court has told retailers thatthey may be able to secure trademarks for their store layouts if thedesign is capable of distinguishingtheir goods and services from thoseof other businesses.

KORNSPITZ

The decision was a useful reminderto IP owners to guard against theirtrademarks becoming generic. Thecase asked whether the views ofthe end consumer of oblong-shaped bread rolls known asKORNSPITZ are relevant whenassessing whether a trademark hasbecome a common name for aproduct, or of those who trade inthe product commercially. TheCJEU held that the views ofconsumers are decisive.

TRIPP TRAPP

The Norwegian maker of TRIPPTRAPP highchairs suffered a set-back in its battle to protect theshape of its products after theCourt of Justice of the EU ruledthat EU law can preclude the regis-tration of shapes required by thefunction of a product.

A selection of the leading European cases in 2014

defence of “due cause” in an unfair advantage claim, acase involving the German Savings Banks and the registra-bility of the color red, and the KORNSPITZ bread rollcase, which dealt with the question of what a trademarkowner must do to prevent its mark becoming generic.

“Amongst other things, the session will focus on theviews of the EU General Court on the registrability of awide variety of non-traditional trademarks, and how thatcourt approaches the comparison of trademarks that aredescriptive, or which have a meaning for some but not allof the EU public,” says Heath.

Heath and Jahn will also analyze some of the importantdecisions that were handed down by national courts acrossEurope last year. The featured cases will include aLOUBOUTIN red soles case from Benelux, a comprehensivereview from the Irish High Court on the principles of badfaith, a ruling from the Spanish Supreme Court that doesaway with its traditional view on the defensive power of aregistered trademark, and a French case involving a claimagainst a trademark owner by a defendant which removedits goods from the market when first threatened.

The speakers will also consider some of the reasons whynational courts continue to hand down very different rulings.

“European trademark law is harmonized and memberstates are not permitted to reach different conclusions—but in practice they do,” says Jahn. “Sometimes they applythe standards that they are very familiar with because theyare part of their national legal traditions, without realizingthat some things have changed”.

“The overall theme is that there isn’t always a levelplaying field in Europe”, says Heath. “It is mostly due tonational courts applying the Trademark Directive in differ-ent ways, and in ways that the legislators didn’t anticipate.Many of the issues that we will be drawing out have les-sons for IP owners interested in the possibilities for forumshopping”.

The session will draw on the recently-published AnnualReview of EU Trademark Law—the special issue of INTA’sThe Trademark Reporter—and is designed both forEuropean practitioners who want to understand how thedecisions will affect their practice and for non-Europeanlawyers who want a curated overview of developments inEurope.

CT04 Annual Review of Leading Case Law in the EUtakes place from 10:15 am to 11:30 am today.

Feature Europe

www.manag ing ip .com INTA Da i ly News Tuesday, May 5 2015 17

“European trademark law is harmonized and member states are notpermitted to reach different conclusions—but in practice they do.”

San Diego SecretsFor many visitors, a trip to San Diego isnot complete without visiting the SanDiego Zoo, founded in 1916. Home to morethan 3,700 animals representing some650 species, the Zoo is known for itsauthentic natural habitats. Among themost popular animals are the giantpandas, polar bears, elephants and apes.

The Zoo is in Balboa Park and is open from9:00 am to 6:00 pm. A one-day pass foradults is $48, including a guided bus tour,Kangaroo Express bus, Skyfari aerial tramand all regularly scheduled shows.

P anama was chosen as the destination for INTA’sLeadership Meeting partly due to the enlargementof the Panama Canal, which will greatly increase

shipping. Susan L. Crane, group vice president, legal atWyndham Worldwide and one of the Leadership Meetingco-chairs, told the INTA Daily News: “The expansion ofthe Canal will more than double the traffic and will alsoenable two ships to go through simultaneously.” Thenumber of containers passing through the canal is goingto grow from 300 million [PCUMS (Panama CanalUniversal Measurement System) tons] to 600 million[PCUMS tons], and many of those goods may be counter-feit. The potential for growth in goods being shipped—both genuine and counterfeit—means it is of vital concernto trademark owners.

All major Latin American IP offices are expected toattend, as well as represenatives from Panamanian govern-ment and Latin American Supreme Courts. Crane addedthat for the first time at a Leadership Meeting, there willbe concurrent sessions with one track focusing on educa-tional programming and the other on policy matters.

Other speakers invited include representatives of ship-ping firms, who will be able to address questions about the

growth of the Canal, while discussions are also underwayto invite a high-profile sports star to talk.

Gerardo Munoz de Cote Amescua, IP legal director ofTelevisa in Mexico, is the other co-chair of the LeadershipMeeting. He told the INTA Daily News the decision to goto Panama shows “the interest and importance of theregion” for INTA, adding: “The Latin America communi-ty has been very engaged in INTA for many years, and thisdecision is a recognition of that.”

In another change this year, the Meeting will start onTuesday and finish on Friday, meaning registrants can headhome for the weekend—or spend some time getting toknow the region. The co-chairs visited the City earlier thisyear, and say it has a lot to recommend it. Munoz de CoteAmescua highlights the mix of races and cultures, biodiver-sity and striking architecture, while Crane notes the acces-sibility and familiarity for visitors from overseas, adding:“If you have time, I would encourage people to go out tothe Canal Zone, which is really interesting to see.”

INTA’s 2015 President, J. Scott Evans, added: “I thinkPanama is an exciting place, and I think the expansion ofthe Panama Canal makes it politically, geographically and legally relevant to the issues we face with counterfeiting

and free trade zones, so it’s an important time for us to bethere.”

The INTA Leadership Meeting takes place fromNovember 17 to 20 and is open to all INTA volunteers.Registration will open later this year.

Feature Future meetings

INTA Da i ly News Tuesday, May 5 2015 www.manag ing ip .com18

Leadership Meeting heads to PanamaPanama City will host this year’s INTA Leadership Meeting in November, asthe Association holds a major event in Latin America for the first time.

INTA will return to Orlando, Florida next year for the138th Annual Meeting. While it does not take placefor more than a year (it runs from May 21 to May 252016), planning is already well underway.

The Meeting co-chairs, Peter Dernbach of Winkler &Partners in Taiwan and Rick McMurtry of Time Warner,started work last summer and are holding a meetingwith their Project Team this week at which more detailsof the educational and social program will be discussed.

While it’s too soon to reveal full details of what’splanned, Dernbach said one focus will be to have morediverse sessions, including speakers from government,academia and non-legal roles, to bring new perspec-tives. “We are looking at having content that will beinteresting, informative and useful and to incorporateinput from some of the Presidential Task Forces.”

He added: “Orlando is very convenient, especially forthose travelling internationally, as there are many directflights. There are also many reasonably priced rooms.”

McMurtry, who co-chaired the INTA LeadershipMeeting in Orlando in 2012, said that this mightenable some companies and firms to send more staffthan usual: “It will be a very affordable meeting, so Ifor one may be able to send more junior people thanI would normally. We anticipate it will be one of thelargest Annual Meetings ever.”

Registration for next year’s Annual Meeting willopen at the beginning of 2016.

See you in Orlando in 2016!

S tereotypes about academics living in ivory tow-ers were shattered yesterday as law professorsconsidered the practical challenges of branding

cannabis products and trademarking sex toys. At the Sex, Drugs, Motorcycle Clubs: Trademark

Issues on the Edge Professor Luncheon, academicstalked about the problems of helping clients in the adultcontent industry and the legal marijuana trade to pro-tect their IP rights.

Shabnam Malek of Cobalt explained the regulatorybarriers that affect her clients’ abilities to trademark thenames of their marijuana products in those states in theUnited States that now allow the sale of cannabis-relat-ed goods. “You can imagine how terrible this is from abranding perspective,” she said.

Todd Alberstone of Alberstone Consulting outlinedthe problems suffered by what he described as legiti-mate/established adult content brands in an online mar-ketplace crowded with get-rich-quick businesses. “Inthe past brands such as PLAYBOY, PENTHOUSE andHUSTLER had very clear identities and associations.Now the adult content market is very different.”

He went on to discuss the problems that adult con-tent companies have when they extend their brands intothe retail market, such as selling sex toys. “There is aninherent conflict between the brand names used to drivesearch engine traffic and those that are acceptable to the

USPTO. Terms that are descriptive or suggestive willcause problems,” he said.

The panel was hosted by David Bell of Haynes &Boone. The vice-chair of the Academic Committee,Megan Carpenter of Texas A&M School of Law, saidthat the session was designed to examine the issues thatpush the boundaries of trademark law.

The Academic Committee has 65 members. Amongother things its members organize the Academic Courseon International Trademark Law and a CareerDevelopment Day for law students at the AnnualMeeting, as well as hosting the Professor Luncheon forIP deans and law professors. This year they alsolaunched the (Dis)Order in the Court debate featuringpractitioners and professors debating topical law issues.

News

www.manag ing ip .com INTA Da i ly News Tuesday, May 5 2015 19

Living on the edge

John MacKenzie Why do US attorneys havean aversion to the word “the”? Sentencesflow better if you say “the Plaintiff”... #INTA15

Ed Timberlake Good advice for #trademarkslawyers (in context of marijuana market, butwidely applicable) from @CobaltLLP: Knowyour industry. #INTA15

John Berard “In the social media age theworst thing for a company is to be seen to bewithout a sense of humor;” Parody session at#INTA15

Erica Girl Scouts case different results thanthe enjoy cocaine coca cola case—courtsreticent to find parody in drug association#INTA15 #cm20

Tara Aaron Correction - Just Sex and Drugsat #INTA15 Professor’s Lunch. (Motorcyclemust’ve gotten a flat tire).

Jerome McDonnell First off: it might help ifthe parody is actually funny. #INTA15

alexandra j. roberts hansen: “courts aregonna do what they wanna do” w/ trademarkcases. #playersgonnaplayplayplayplayplay#INTA15 @taylorswift13

Nicholson Price Godwin’s law of #INTA15:“Don’t send a cease and desist letter likesome Nazi stormtrooper—it should be morelike a party invitation!”

Heather Balmat How to defeat the bully:send David client in to court pro se. ProfHansen has seen it work in Mass. #INTA15

Barbara Cookson The branding you allneeded to know at #INTA15 has beendecided. It’s Charlotte Elizabeth DIANA#RoyalBaby

#INTA15

How long have you been at Fox and what is yourbackground?I have been at Fox for five-and-a-half years. I am a vicepresident in the intellectual property group. Before that, Iwas at Disney doing both entertainment law for a short bitof time with their prime time television production compa-ny and then with their IP group. I was at Disney for threeyears, and then before that in private practice for five.

What does the role entail?We have six attorneys in the IP group, which is led byINTA Past President Mei-lan Stark. Of those six attorneys,one is a patent attorney and the rest of us are copyrightand trademark attorneys.

In my role I work mainly with our television businessesand our consumer products group. I also manage Fox’s anti-counterfeiting efforts for our consumer products group. Iview the role of in-house counsel as being a partner withinthe business units to help them fulfill their creative and busi-ness goals while hopefully not getting into too much trou-ble. That means not only helping them recognize and gaugerisk, but working together with the business people to findways to mitigate the risks so that they won’t hamper the

business. As you can imagine, in the entertainment industryI have to work with some creative types such as a film direc-tor and a television show runner who can become weddedto a particular aspect of their project that might be risky.Telling them no is rarely an option. So that process of find-ing creative solutions that don’t impinge on their artisticvisions is probably the most rewarding part of my job.

How many brands then does that mean you aredealing with?Probably too many to count. We are in the midst of pilotseason. That means over the past three months we are cre-ating 20 new shows, which means 20 new brands andthat’s just the past three months. It is always in fluxbecause what was once the hot show 10 years ago there isno market for any more. So we have this constantturnover. But that means we are always busy and haveinteresting work to do.

Ultimately, Fox is in the business of great story telling.That’s what we create and sell and that’s a purely an IPbusiness. So securing and licensing and enforcing ourtrademark rights is paramount to our business, whetherwe are going to license to broadcast a new television series

or create a “Simpsons” theme park attraction or sell a“Sound of Music” DVD the value of those transactions arelargely derived from the underlying intellectual property.Our IP department is asked to consult on an incrediblybroad array of business issues and that is the fun part.

What does Fox use outside counsel for?Our in-house department is all U.S. attorneys. That meansfor our international practice, which is always growing, itseems, we have to rely on our international counsel for real-ly all aspects of the trademark practice—clearance, prose-cution and enforcement. We also rely on outside counsel forspillover clearance work during busy times and of course tohandle litigations that come up from time to time.

When assessing potential law firms to use, whatare the qualities you look for? The qualities I look for in outside counsel are, first andforemost, are they going to provide practical advice? Thatrequires knowing our business and specialized bits oftrademark law that apply to film and entertainment. Thatleads to outside counsel being able to provide more cre-ative advice because it enables them to go beyond just

Interview Jeremy Kaufman

INTA Da i ly News Tuesday, May 5 2015 www.manag ing ip .com20

Protecting the business of story tellingFox must strike a delicate balance between protecting its IP and not prompting backlashes from fans. JeremyKaufman explains the entertainment giant’s trademark strategy.

identifying risk. It allows them to help us solve legal prob-lems by advising on the practical business risks, or by pro-posing maybe business solutions to those problems

A finer point is the ability to give prompt and very con-cise advice. In-house counsel are just as busy as their out-side counterparts and so counsel that can respond quicklyand very concisely are very valued. We don’t need adetailed explanation of every single strategy, especiallyones outside counsel believe are doomed anyhow.

The other thing I really appreciate about certain outsidecounsel is the ability to give very specific advice about risklevels and stick with that advice. I know that’s very hard todo. But it is very helpful so that we can communicate therisks to our business counterparts.

So one pet peeve of mine is receiving advice that is justtoo vague to be helpful. There is nothing worse than get-ting a memo that says there is a less than 50% chance of

prevailing. That’s almost meaningless because there is ahuge difference between a 1% chance of prevailing and a49% chance of prevailing—both of those are under 50%.I know it is hard for outside counsel to give estimates, butjust do it and stand by it and we’ll all be in the same boattogether.

How do you balance protecting IP and not discouraging fans who may not know they areinfringing?That is one of our biggest challenges actually. We have acomplicated relationship with some of our super fansbecause our properties can create such enormous passionsin them, and that can motivate our fans to do unhelpfulthings. For example, with comic book or science fictionfranchises like Aliens or X-Men there is an insatiabledemand for the latest news on every tidbit on those fran-chises. That demand can result in leaks of set photos orscripts or other things that are going to be spoilers, whichare called spoilers for a reason—they can spoil the viewingexperience for everyone else. That is very tricky.Sometimes that is more of a security issue than anythingelse but it’s a challenge.

A more extreme version of how that passion can createIP challenges is with shows such as “Firefly”. The fans ofthat show are so moved by the series that they have onmore than one occasion created unauthorized prequels orsequels to the TV series. They have written scripts and gotactors and cameras and created their own filmed entertain-ment based on our intellectual property. Dealing withthose situations is challenging because on the one hand wejust can’t allow those infringements to happen because ourright to do prequels and sequels are among the most valu-able we own, but also we don’t want to alienate our mostardent fans. So it is always a most delicate enforcementissue that we have to walk the line on.

What effect do you see from recent SupremeCourt trademark decisions?One of the big topics of conversation is the most recentSupreme Court case [B&B Hardware v Hargis Industries].It basically says that oppositions before the USPTO canhave a precedential effect on infringement actions in trialcourts. That’s going to make us think twice about where tostart challenges to trademark rights. I don’t think we haveworked it through, in part because that Supreme Courtcase has the caveat that it is limited to just those facts inthat instance. That’s something we are going to be talkingto a lot of people about at INTA. Sometimes even if yousay it is only to be applied narrowly over time the narrowbecomes wide.

How are the new gTLDs affecting you?We have applied for the .fox gTLD and we are excitedabout that. We think it presents some advantages to ourbusiness. One of those advantages is practical, which isthat it provides enhanced security for our websites thatwill be hosted on our gTLD. We are especially conscious ofthat in the wake of the Sony hack and other cyber attackson major corporations.

While there are a lot of initial upfront costs, we alsothink there will eventually be cost savings because we won’tneed to do country code-specific registrations, we won’tneed to buy domain names from squatters, and so therecould be over the very long term some cost savings.

Thirdly, it could become a really valuable marketing tool.For example, we own a U.S. television network called Foxand that network is comprised of local affiliates and the waythose local affiliates domain names have been created is notuniform. This provides a way to make that uniform for eachsingle affiliate. We are also excited that we can use it as theplace for a hosted store so that consumers know they aregetting authentic goods in a secure and safe manner.

Interview Jeremy Kaufman

www.manag ing ip .com INTA Da i ly News Tuesday, May 5 2015 21

I f you would like to join ICANN’snearly 400-member IntellectualProperty Constituency but are con-

cerned that it might be too technical orthat you will be overwhelmed by materialthen Gregory Shatan of Abelman, Frayne& Schwab, President of the IPC is keen toreassure you.

“Some people are scared to join theIPC because they think there’s a highlearning curve or it’s very technical,”“But it’s a very low learning curve andwe’re very open to new members—youdon’t even need to know how the Internetworks.”

The IPC is also a good way to becomedirectly involved in policy making, saysShatan. “It’s very important. You’re mak-ing real governance decisions. It’s only a

slight exaggeration to say we’re runningthe Internet.”

As the voice of IP stakeholder concernsin ICANN’s multi-stakeholder frame-work, it is particularly important that theIPC is representative and active. “I wouldlike to see more involvement from outsidethe EU and North America,” says Shatan.Asian and African members are particu-larly underrepresented.

“The bottom line is that the domainname system and the Internet are a criti-cally important part of the world thattrademark owners live in, and the IPC isthe voice for brand owners. It can’t beignored.” You can learn more at the IPC’smeeting, which is open to all INTA regis-trants, on Wednesday from 11:30 to 1:30in Room 10.

Vox pop

INTA Da i ly News Tuesday, May 5 2015 www.manag ing ip .com22

Espen Clausen, Acapo, Bergen,Norway – It was going to myfirst Annual Meeting in Seattle.It was so unexpected. I wastaken aback by the scale of theevent, its friendliness and theway that it engulfed the city.The INTA Annual Meeting isvery different from any otherconference.

James H. Walters,patenttm.us, Portland,Oregon – It was my first clientmeeting in Europe. I went toBelgium and it was great to getthe international exposure andsee the city. I would definitelylike to have more trips likethose.

Katharina Schmid, Schmid-IP,Vienna, Austria – There havebeen so many, but I think it hasto be starting my own firm inAustria and going to my firstINTA meeting in Berlin soonafterwards.

Frank Schilling, Uniregistry,Grand Cayman, CaymanIslands – The launch of theUniregistry and navigating theprocess of bringing newdomain name endings to mar-ket. It has been a very big proj-ect and I am sure I won’t seeanything like that again in mylifetime.

Luca Stefano Ghedini,Notarbartolo & Gervasi, Milan,Italy – My biggest accomplish-ments in the last decade havebeen implementing a newstructure of cost control at thefirm and developing an inte-grated approach to trademarkapplications, to help clientsmanage the process fromapplication to possible courtaction.

Aminiasi Vulaono, PacificIslands IP Services, Suva, Fiji –I think my career highlight hasbeen joining INTA. It has broad-ened my knowledge of IPissues and I have gotten toknow so many people byattending the Annual Meetings.I have been attending sinceSan Francisco.

Jan Klink, Rüger Barthelt &Abel, Esslingen, Germany – Iappeared in a trademark oppo-sition case before the Court ofJustice of the EU. I reallyappreciated how the Courtdealt with the matter. Thejudges were informed and theyasked tricky questions. It wasan intense three-hour hearing.

William Wang, Boss & Young,Beijing, China – There havebeen so many highlights, andthat is mainly due to China’s

rapid economic development. Ihave been very lucky to workin IP over the past 10 yearsbecause the IP market in Chinahas evolved very quickly. Ourfirm has grown from 20 peopleto hundreds and now we are inmerger talks with another firm.

Hamood-ur-Rub Jaffry,Intellegal, Karachi, Pakistan –My highlight has been startingmy own firm. I worked foranother firm for 17 years butthree years ago I started myown practice. I have enjoyedthe independence. I am theboss of myself. I have moreresponsibility but, as they say,more risk, more gain.

Vlad Podolyak, Vasil Kisil &Partners, Kiev, Ukraine – It isnot always easy to navigate thecourt system in Ukraine so win-ning a case in court is alwayspersonally very satisfying.However, we try not to focuspurely on court victories. Froma cost-benefit perspective it canoften be in the client’s bestinterests to achieve a negotiat-ed settlement.

Rose Hickman, Strategy IP,Irvine, U.S. – I started my ownfirm in 2012 after working inmedium and large firms. It hasbeen wonderful being able to

help clients in small- and medi-um-sized companies. We have avibrant SME community inOrange County, California.

Peter Emerson, PageHargrave, Bristol, UK – Takingpart in a 12-hour mediation ses-sion. We were acting for thesmall guy against a largeorganization. I know that thereare not supposed to be winnersand losers in mediation but ourclient definitely won it. It was abonding experience with theclient.

Kohji Suzuki, Smart &Biggar/Fetherstonhaugh,Ottawa, Canada – Getting moreinvolved in the management ofthe firm. The IP marketplacehas changed so much in thepast decade. Now we have tofocus much more on the busi-ness side and look at new waysof working for our clients.

Rachna Bakhru, Ranjan NarulaAssociates, New Delhi, India –In the past 10 years we haveseen great changes in the IPworld. The recession has had abig impact on corporate budg-ets so filing work has beenaffected. Since the last AnnualMeeting I have also been madea partner and become an arbitrator.

What has been your career highlight since thelast Annual Meeting in San Diego?

Don’t be afraid of the IPC

“We’re very open to new members—youdon’t even need to know how theInternet works.”

INTA Government Officials Reception

INTA China Reception

Receptions

www.manag ing ip .com INTA Da i ly News Tuesday, May 5 2015 23

Advance China IP Law Office Arnold + Siedsma Arochi & Lindner Awapatent

Bardehle Pagenberg Bereskin & ParrBircham Dyson Bell and Nelligan O’Brien Payne Davies Collison Cave

Dumont Bergman Bider Ferraiuoli Fross Zelnick Gorodissky & Partners

HFG HK India Jackson Etti & Edu Vivien Chan & Co

Today’s Schedule | Tuesday, May 5, 2015All events take place at the San Diego Convention Center unless otherwise indicated. Consult the Final Program for times and locations of invitation-only events and Committee Meetings.

8:00 AM – 10:00 AM CONTINENTAL BREAKFAST HALL B

8:00 am – 10:00 am BREAKFAST TABLE TOPICS Room 6A

8:00 AM – 5:00 PM INFORMATION/MEMBERSHIP DESK HALL A LOBBY

8:00 AM – 5:00 PM HOUSING DESK HALL A LOBBY

8:00 AM – 5:00 PM EXHIBITOR REGISTRATION DESK HALL A LOBBY

8:00 AM – 5:00 PM REGISTRATION HALL A

8:00 AM – 5:00 PM HOSPITALITY HALL B

LAW FIRM/COMPANY SESSION

8:00 am – 10:00 am Gorodissky & Partners Room 1AB

8:30 AM – 5:00 PM NETWORKING EXCURSION DESK HALL A LOBBY

10:00 AM – 4:00 PM EXHIBITION HALL HALL B

CONCURRENT SESSIONS

10:15 am – 11:30 am CT01 Gathering Evidence with In-house Counsel: Achieving Harmony and Avoiding Discord Beginner Level Room 6D

10:15 am – 11:30 am CT02 Leveraging Your Brands Through Alternative Revenue Streams Advanced Level Room 6C

10:15 am – 11:30 am CT03 Trademark Rights in a Mobile World Intermediate Level Room 1AB

10:15 am – 11:30 am CT04 Annual Review of Leading Case Law in the European Union Advanced Level Room 6B

10:15 am – 11:30 am IT01 Industry Breakout: Sports and Entertainment—The Intersection of the First Amendment, the Lanham Act and

State Rights of Publicity Intermediate Level Room 6F

10:30 am – 11:30 am SPEED NETWORKING Hall B

CONCURRENT SESSIONS

11:45 am – 1:00 pm CT20 Global Portfolio Management on a Budget: In-Housing, Outsourcing or Somewhere in Between? Intermediate Level Room 6B

11:45 am – 1:00 pm CT21 Protecting and Preserving Your Brand After a Cyber Security Incident Intermediate Level Room 6F

11:45 am – 1:00 pm CT22 Show Me the Money: Creating Alternative Fee Arrangements That Provide Value Intermediate Level Room 6C

11:45 am – 1:00 pm RT20 Trademark Offices in Africa: The Importance of Working with Related Government Agencies Beginner Level Room 1AB

11:45 am – 1:00 pm RT21 Regional Update: The Latest News from the Middle East. Why is it so Important to Protect IP in the Region? Intermediate Level Room 6D

12:00 pm – 1:00 pm SPEED NETWORKING Hall B

1:00 pm – 2:00 pm Africa Reception Room 1AB

1:15 pm – 3:15 pm LUNCHEON TABLE TOPICS Room 6A

LAW FIRM/COMPANY SESSION

1:15 pm – 3:15 pm Trademark Clearing House Room 6C

1:30 pm – 2:30 pm SPEED NETWORKING Hall B

3:00 pm – 4:00 pm SPEED NETWORKING Hall B

CONCURRENT SESSIONS

3:30 pm – 4:45 pm CT50 Implications of the New European Trademark Directive Room 6F

3:30 pm – 4:45 pm CT51 Legal Project Management: Improving Client Service While Reducing Ethical Risk Intermediate Level Room 6C

3:30 pm – 4:45 pm CT52 Trademark Enforcement by U.S. Customs and Border Protection Intermediate Level Room 6B

3:30 pm – 4:45 pm IT50 Industry Breakout Session: Hot Trademark Challenges That Keep Telecom Lawyers Up at Night Advanced Level Room 6D

5:00 pm – 7:00 pm In-House Practitioners Reception (Exclusive to in-house practitioners only) Room 7AB

6:00 pm – 7:00 pm Law & Practice Resources (LPR) Reception Room 5B

Speed Networking Exhibition Hall Catching up in Hospitality Area