GlobalReport

February 2017 

GlobalReport 

Recent Trademark Developments and INTA Activities in Eight Key Regions 

India 

Interview: O.P. Gupta, Controller General of Patents, Designs & Trade Marks, India 

Latin America 

INTA and ASIPI publish the Trademarks in Latin America Impact Study 

North America 

Interview: Shira Perlmutter, USPTO: Get to Know Your IP Attachés

2017 INTA President Joseph Ferretti, 

PepsiCo, Inc. (United States) 

As I look ahead to 2017, it’s helpful to reflect on 

what was accomplished in 2016 as a benchmark 

for success: a landmark year in AsiaPacific, with 

the opening of the Singapore branch office; the 

Association’s first Board Meeting in mainland 

China; the publication of INTA’s first impact study; a 

record-breaking Annual Meeting; and much more. 

This year, we will continue to focus on international 

expansion and engagement, but will delve 

deeper into the key issues facing brand owners. 

We will focus on counterfeiting, brand restrictions, 

and Internet governance. A new Presidential Task 

Force will examine all forms of “brand restrictions,” 

including plain and standardized packaging, 

and will present concrete and proactive 

strategies for addressing these issues. The 

Association will also work closely with ICANN on 

the many challenges ahead. 

This is also a year of transition for INTA—we will 

finalize the 2018–2021 Strategic Plan, which will 

reflect a growing recognition of brands as a whole, 

and will determine INTA’s future priorities, guide 

our activities for the next four years, and enable 

INTA to remain a prominent and influential voice in 

the global IP community and beyond. 

I hope you enjoy this issue of the Global Report, 

which provides a snapshot of what INTA has been 

doing globally, and look forward to working with you 

in the coming year. 

Africa 3 

Asia-Pacific 6 

China 11 

Europe 13 

India 19 

Latin America 22 

Middle East 28 

North America 31 

This report was compiled with the help of INTA’s Global Advisory Councils, as well as the INTA Bulletins Committee and the 

authors named herein. Please direct all comments/feedback to jdarne@inta.org. 

Global Report Staff 

Chief Executive Officer 

Etienne Sanz de Acedo 

Director, Communications 

Laura Castle 

Strategist, Communications Content 

Eileen McDermott 

Manager, Communications 

JC Darné 

Editor 

Elizabeth Venturo 

Graphic Designer 

Eric Mehlenbeck 

INTA Officers & Counsel 

President 

Joseph Ferretti, PepsiCo, Inc. 

President Elect 

Tish L. Berard, Hearts On Fire 

Vice President 

David Lossignol, Sandoz International GmbH 

Vice President 

Ayala Deutsch, NBA Properties, Inc. 

Treasurer 

Tiki Dare, Oracle Corporation 

Secretary 

Zeeger Vink, Maus Fréres 

Counsel 

Maury M. Tepper, III, Tepper & Eyster, PLLC 

Although every effort has been made to verify the accuracy of items in this report, readers are urged to check independently on matters of specific interest. The Global Report relies on members of the 

Global Advisory Councils, INTA Bulletins Committee, and INTA staff for content but also accepts submissions from others. The Global Report Editorial Board reserves the right to make, in its sole discretion, 

editorial changes to any item offered to it for publication. For permission to reproduce Global Report articles, send a brief message with the article’s name, volume and issue number, proposed use, and 

estimated number of copies or viewers to jdarne@inta.org. Global Report sponsorships in no way connote INTA’s endorsement of the products, services, or messages depicted therein. 

© 2017 International Trademark Association 

2 

INTA Global Report, February 2017

Global Report: Africa 

INTA and Anti-Counterfeiting Collaboration, Nigeria 

Celebrate Ten Years 

On October 19, INTA held the tenth annual 

policy dialogue in Nigeria in conjunction with 

the Anti-Counterfeiting Collaboration of Nigeria 

(ACC-Nigeria) which addressed the “Cost Effective 

Measures and Practical Tactics in Combatting 

Counterfeiting & Piracy Activities.” The 

program brought together brand owners, regulators, 

practitioners, and key stakeholders to 

discuss possible cost effective measures and 

practical tactics in combating counterfeiting 

and piracy. The policy dialogue also celebrated 

the tenth anniversary of ACC-Nigeria. 

Desmond Adeola (Chairmain of ACC-Nigeria) 

provided a welcome address to the attendees 

and encouraged them to come together to 

combat counterfeiting in order to make the 

country a better place for future generations. 

Uche Nwokocha (Aluko & Oyebode, Nigeria), 

Chair of INTA’s Anticounterfeiting Committee 

Middle East and Africa Subcommittee 

(pictured left) provided opening remarks. 

Ms. Nwokocha spoke about the collaboration 

between INTA and ACC-Nigeria and highlighted 

INTA’s intention to continue to collaborate with 

ACC-Nigeria and other national associations 

in the Middle East and Africa. Sola Dosunmu 

(British American Tobacco Nigeria & West 

Africa, Nigeria) provided the keynote address 

and discussed ACC-Nigeria’s goal of bringing 

together all parties involved in the tobacco 

industry in fighting counterfeits. Finally, the 

policy dialogue closed with three discussion 

sessions involving brand owners, regulators, 

and piracy and entertainment. 

Africa Global Advisory Council 

Chair 

Lara Kayode, O. Kayode & Company, 

Nigeria 

Council Members 

Barbara Berdou, Berdou Attorneys, 

South Africa 

Anne-Marie Breek, Remgro Management 

Services Limited, South Africa 

Brenda Kahari, B.W. KAHARI, Zimbabwe 

Madelein Kleyn, Oro Agri Inc, South Africa 

Stephen Le Feuvre, Lysaght, Channel 

Islands 

William Mansfield, ABRO Industries, Inc., 

United States 

Uche Nwokocha, Aluko & Oyebode, Nigeria 

Staff Liaison 

Bruce MacPherson, Chief Policy Officer 

bmacpherson@inta.org 

Association Activities 

Unreal Campaign Visits Cape Town, South Africa 

On August 31, 2016, Lara Kayode (O. Kayode 

& Co., Nigeria) visited the Cedar School of 

Art in the Mitchell Plains just outside Cape 

Town, South Africa. She was accompanied by 

Monique Gieskes (Vlisco Netherlands, B.V., 

Netherlands), who was a session speaker at 

INTA’s Building Africa with Brands Conference 

in Cape Town, September 1–2. 

Ms. Kayode and Ms. Gieskes met with the 

school’s principal, David Charles, and their 

Unreal “Champion” at the school, Courtney 

Edwards, educator, who ensured that they had 

all the support they required. 

The women made two presentations at the 

school, first to approximately 40 students and 

a second to about ten Business Management 

students from the Cape Peninsula University 

of Technology who were interning at the school 

during the visit. 

The presentation began by introducing INTA 

and the work that the Association does with 

regard to trademarks and other intellectual 

property rights (IPRs). 

They played two videos illustrating the dangers 

of purchasing counterfeits versus real products. 

Utilizing the Unreal Campaign presentation 

guidelines, they proceeded to educate the 

students on the importance of trademarks. The 

students were well aware of many international 

brands, but were shocked to learn about 

the dangers that counterfeit products pose to 

consumers. 

Ms. Gieskes informed the students of the long 

history of Vlisco in Africa and showed them the 

differences in quality of authentic and fake 

fabrics, which fascinated the students. 

The highlight of the presentation was the quiz, 

which made their presentation interactive and 

well-received. 

The teacher in charge of the class was attentive 

and interested in the topic and invited 

the INTA representatives back to speak to the 

economics class the next day. The 17-year-old 

economics students were as enthusiastic as 

the students from the previous day. 

Brenda Matanga (Matanga IP Zimbabwe), 

Akeem Aponmade (A.O. Aponmade & Co., Nigeria), 

and Ms. Kayode returned to the school 

on September 1, 2016, to make a further 

presentation to approximately 40 tenth grade 

students (between 15 and 16 years-old) and 

received the same positive reception. 

In addition to being astonished at what they 

learned about counterfeiting, they were 

surprised to find that an organization such as 

INTA would take time out to inform them of the 

importance of trademarks and the dangers of 

counterfeits. 

According to the feedback received from the 

school, the students thoroughly enjoyed the 

presentation and posted pictures of the presentation 

on Facebook. 

To learn more about the Unreal Campaign, 

please visit INTA’s landing page. 

3


In the News 

MOZAMBIQUE: New Industrial Property Code Approved 

The government of Mozambique approved the 

new Industrial Property Code (IPC) on December 

31, 2015, Decree No. 47/2015, and the 

law came into force on March 31, 2016. The 

new Code was published in Official Gazette No. 

104, Series I, Supplement 19. The new law 

repeals the Code that had been in force since 

2006, Decree No. 4/2006, Apr. 12. 

The key changes include: 

• The creation of a new type of industrial property 

right in the country, i.e., the recognition 

of protection for establishment names. 

Names used to identify the place of manufacture, 

processing, storage or marketing 

of products, and service delivery are now 

eligible to be registered as IP rights; 

• An increase from 15 to 30 days regarding the 

deadline for attaching documents that may 

have been missing when filing an application 

for any industrial property right; 

• A reduction from 60 to 30 days regarding 

the deadline to submit complaints to the 

Managing Director of the Industrial Property 

Institute (IPI) against an order granting or 

refusing rights; 

• The introduction of a defense appeal. This 

appeal is submitted to the Minister of Industry 

and Commerce against orders of the 

Managing Director of IPI granting or refusing 

rights. The appeal must be submitted within 

30 days of the date of notification. The 

defense appeal does not have suspensive 

effect. This type of appeal previously existed 

in administrative practice, but this is the first 

time it has been included in the Code; 

• An action for invalidation must be initiated 

within 90 days of the date of the order granting 

the right. The old Code provided a period 

of one year; 

Names used to identify the 

place of manufacture, processing, 

storage or marketing 

of products, and service 

delivery are now eligible to 

be registered as IP rights. 

• A reduction in the deadline for opposition of 

all types of industrial property rights, from 60 

to 30 days from the date of publication of the 

application in the Industrial Property Bulletin. 

• Classification of the trademark registration 

requirements concerning the similarity of 

goods or services. The trademark to be 

registered should not be identical to trademarks 

already registered in the country that 

belong to another rights holder for the same 

products and services or related products 

and services; 

• The introduction of regional trademark registration. 

This type of registration provides for 

the protection of trademarks in the signatory 

states of regional treaties to which Mozambique 

is a contracting party. However, Mozambique 

has yet to adhere to any regional 

treaty for the protection of trademarks, so it 

does not yet apply; 

• Classification of the limitation period for 

the filing of declarations of intent to use for 

international registrations. Statements must 

be submitted every five years from the date 

of international registration, i.e., “the date of 

application of the request for international 

registration of the trade mark by the International 

Bureau of the World Intellectual Property 

Organization on their database”; and 

• New publication periods for the Industrial 

Property Bulletin. Instead of every two 

months, the Bulletin will now be published 

monthly. 

It is expected that the new Code will simplify 

the registration process for applications to 

protect different kinds of IP and ensure greater 

procedural efficiency. 

Contributor: Sérgio Braz 

Braz & Associates, Ltd, Maputo, Mozambique 

Verifier: Vânia Xavier 

Mozmarcas, Lda, Maputo, Mozambique 

MOZAMBIQUE: IPI Now Allowing Refused 

Trademarks to Be Refiled 

On September 2, 2016, the Industrial Property 

Institute (IPI) of Mozambique issued an official 

letter allowing applicants to refile trademark 

applications previously refused by the IPI. 

Despite the absence of explicit legislative 

provisions, trademark owners have in past 

practice been prohibited from refiling trademark 

applications which had previously been 

refused by the IPI. The new Industrial Property 

Code, hich came into force on March 31, 

2016, and which replaced the 2006 Industrial 

Property Code, sets out the new filing and 

registration requirements in Mozambique. 

However, like the previous Code, nothing in 

the new Code prohibits an applicant from 

filing an application for the registration of a 

trademark that has previously—and finally— 

been refused. 

The prohibition on refiling of trademark 

applications has posed a serious obstacle to 

trademark applicants who wish to refile their 

applications for strategic reasons. In many 

countries, both legislation and practice directives 

permit the refiling of trademark applications, 

which provides the applicant with an 

opportunity to consider the options available 

to overcome refusals. For instance, an earlier 

conflicting trademark which posed a bar to 

the registration of the original application may 

have been removed, abandoned, or simply 

withdrawn, and may no longer pose a bar to 

the “refiled” application. It is therefore to be 

welcomed that applicants will now have the 

opportunity to refile refused applications. 

It is important to note that refiled applications 

will be subject to the same requirements 

and examination procedures as the original 

application. Therefore, the Registrar will refuse 

any applications where grounds for the initial 

refusal of the application still exist. 

Contributors: Manisha Bugwandeen-Doorasamy 

and Ferosa-Fae Hassan 

ENSafrica, Durban, South Africa 

Verifier: Helena Nel 

Braz & Associados, Ltd., Maputo, Mozambique 

4 



SOUTH AFRICA: CIPC Clarifies Concerns about 

Temporary Delays 

In response to an article published in the October 

1, 2016, issue of the INTA Bulletin, titled 

CIPC to Experience Temporary Delays, the 

Companies and Intellectual Property Commission 

(CIPC) of South Africa has submitted the 

following clarifications to INTA: 

• The move of our physical files from one storage 

provider to another does not specifically 

only impact on trademark files. It has an impact 

on all files used in CIPC—in other words, 

files relating to companies, co-operatives, 

patents, designs, and trademarks; 

• While the delays experienced in relation to 

file retrieval will surely result in delays with 

regard to issuing of (a) registration certificates, 

(b) notices of acceptance, and (c) 

responses to general correspondence and 

submissions received insofar as trademarks 

are concerned, it will not cause delays in the 

issuing of official actions as the files that are 

still to be examined and in relation to which 

official actions are still to be issued, are only 

sent to offsite storage after the applications 

have been examined and the official actions 

have been issued; 

• The making available of certain documents 

free of charge via the website (referred to 

as a “workaround” in the article) is not at all 

linked to the problems experienced regarding 

file retrieval. In fact, it is a value-added service 

launched by the CIPC on April 1, 2016, 

already as per Practice Notice 1 of 2016, 

which notice makes it very clear that official 

actions from a certain date will be made 

available via the website free of charge, 

as well as certain other documents, where 

available. This notice in no manner or form 

created the impression that all documents 

on files are available electronically, nor did it 

state that such information is “out of date” 

as stated in the INTA article. In addition, 

Notice 41 of 2016 (on which this article was 

based) also in no manner or form created a 

link between these two notices, or attempted 

to create a link between the two by indicating 

that the value-added service launched in 

April 2016 is to be seen as a work around to 

the delays experienced in relation to retrieval 

of files. 

A copy of the notice is available here from the 

CIPC. 

WORKSHOP 

FREE TRADE ZONES: 

COMMERCE VS COUNTERFEITS 

Free Trade Zones Workshops 

March 21 New York, New York, USA 

April 19 

Dubai, UAE 

October 4 Cartagena, Colombia 

November 29 Berlin, Germany 

For more information, visit www.inta.org /2017FTZ 

Additional Resources on INTA.org 

Country Guides 

Enforcement: An International Litigation 

Guide 

Geographical Indications, Certification Marks 

and Collective Marks: An International Guide 

Global Portal 

International Opposition Guide 

Madrid Agreement and Protocol 

Trademark Cancellations Guide 

Trademark Office Benchmarking 

Testimony and Submissions: 

INTA Comments on South Africa Protection 

of Traditional Knowledge Bill 

Regional Resources 

The Anticounterfeiting 

Collaboration, Nigeria 

ARIPO 

OAPI 

5

Global Report: Asia-Pacific 

Association Concluded a Landmark Year in Asia-Pacific 

INTA members kept busy with high-level advocacy 

and education activity across the Asia-Pacific 

Region in 2016. December concluded a 

signal year for the Association following a number 

of achievement’s, including the establishment 

of its branch office in Singapore in March. 

Weighing in on Plain Packaging 

Most recently, INTA’s Chair of the Legislation 

and Regulation Committee—Asia-Pacific 

Subcommittee, Soh Kar Liang (Ella Cheong, 

Singapore), spoke at a Financial Times 

Business Regulations Seminar on December 8 

in Singapore. The theme of the conference was 

“Business Regulation: Burden or Benefit?” Mr. 

Soh spoke on the pressing concerns presented 

by regulatory encroachment on trademark 

rights through plain packaging. A number of 

jurisdictions in the Asia-Pacific region have 

proposed or enacted plain packaging of 

tobacco products. Mr. Soh mentioned that 

trademark rights are an interesting area where 

the interests of consumers and producers 

intersect: trademarks protect the consumer 

from confusion and dangerous counterfeit 

goods, while at the same time protecting 

producers from unfair competition and creating 

valuable IP rights. 

Promoting Stakeholder Engagement 

INTA also supported a regional seminar on 

December 6 organized by the Singapore Office 

of the World Intellectual Property Organization 

(WIPO) and the IP Office of Singapore (IPOS) 

dedicated to enhancing IP office customer 

service and stakeholder engagement. INTA 

corporate member, Niki Franks (BP plc, 

Singapore), spoke on behalf of INTA, citing the 

practical needs that users of IP office services 

would like to see. Attendees came from a 

diverse number of countries around the Asia- 

Pacific region, including Bangladesh, Bhutan, 

Cambodia, Indonesia, Lao People’s Democratic 

Republic, Malaysia, Myanmar, Pakistan, Papua 

New Guinea, the Philippines, the Republic of 

Korea, and Singapore. 

Comments to IPOPHL and Indonesia Customs 

INTA has supported advocacy through written 

comments to countries across the region. INTA 

submitted comments to the IP Office of the 

Philippines (IPOPHL) on December 1 regarding 

changes to the IP Code and to the Indonesian 

Directorate General of Customs on areas to 

improve procedures to seize infringing goods 

at the border earlier in November. INTA joined 

other associations and interested foreign 

governments for a roundtable in Jakarta with 

the customs authorities on the matter on 

November 30. 

Engaging in Dialogue on Border Enforcement 

on November 8, INTA’s Chief Representative, 

Asia-Pacific, Seth Hays (Singapore), participated 

in an event organized by the ASEAN Secretariat 

and USPTO on transnational cooperation 

in the border enforcement of intellectual 

property rights, which included participants 

from the Ministries of Trade, Customs and IP 

Offices from ten ASEAN countries. INTA spoke 

on the importance of international cooperation 

and communication among customs agencies, 

particularly in light of the increases in trade 

due to the formation of the ASEAN Economic 

Community in 2015 and the movement of 

manufacturing from China to lower cost labor 

markets in developing Southeast Asia. 

Commissioner Komiya 

remarked that protection 

of brands from counterfeit 

goods was a major priority 

for his office and supported 

INTA’s efforts in this regard. 

INTA further supported enforcement efforts in 

the region by participating in the 6th Philippines 

Enforcement Summit in Manila on October 

24. Mr. Hays presented on INTA’s efforts to 

educate the public on the danger of counterfeit 

goods, namely through the Association’s Unreal 

Campaign, which conducted a program for 

children the prior week. 

Delegation Visit to Japan 

INTA President Ronald van Tuijl led a delegation 

of INTA members to meet with association 

counterparts and authorities in Japan from 

October 25–26, 2016, including the Japan 

Patent Office, the Japan IP High Court, customs, 

the Japan Trademark Association, and 

the Japan Intellectual Property Association. 

Mr. van Tuijl spoke with JPO Commissioner 

Yoshinori Komiya about INTA’s work in the 

Asia-Pacific Global Advisory Council 

Co-Chairs 

Mona Lee, Hanol Law Offices, South Korea 

Kowit Somwaiya, LawPlus Ltd., Thailand 


Louis Chan, Procter & Gamble, Singapore 

Daniel Greif, Spruson & Ferguson, 

Singapore 

Marion Heathcote, Davies Collison Cave, 

Australia 

Patsy Lau, Deacons, Hong Kong 

Andy Leck, Baker McKenzie, Wong & Leow, 

Singapore 

Shunji Sato, TMI Associates, Japan 

Thomas Treutler, Tilleke and Gibbins, 

Vietnam 

Jay Young-June Yang, Kim & Chang, 

South Korea 

Christopher Young, Minter Ellison Rudd 

Watts, New Zealand 

Staff Liaison 

Seth Hays, Chief Representative 

Officer: Asia-Pacific 

shays@inta.org 

region, and indicated INTA’s support for JPO’s 

leadership on IP in Asia and the world through 

its network of IP attachés, and through projects 

at the TM5, such as the Bad-Faith Registration 

Project. Commissioner Komiya remarked that 

protection of brands from counterfeit goods 

was a major priority for his office and supported 

INTA’s efforts in this regard. INTA would like 

to thank the kind efforts of INTA Board of Directors 

Member Shunji Sato and Mitsuko “Mimi” 

Miyagawa (TMI Associates, Japan) for their kind 

support of the delegation activities in Japan. 

2017 and Beyond 

INTA looks forward to continuing its engagement 

with governments across this important 

region through delegations, submission of 

important views and comments, and educational 

programming, including the INTA Hong 

Kong Anticounterfeiting Conference, which will 

be held February 6–7, 2017. 

6 




Dialogue Continues with Vietnam on 

Well-Known Marks 

On September 23, INTA and the Vietnam Ministry 

of Science and Technology (MOST) held the 

third policy dialogue on revisions to Vietnam’s 

well-known mark regime as part of an ongoing 

series under the 2015 Memorandum of Understanding 

(MOU) between the two organizations. 

MOST Vice Minister Tran Van Tung and INTA 

2016 President Ronald van Tuijl gave opening 

remarks for the event in Vietnam’s third largest 

city, Danang. Nearly 100 policy makers, brand 

owners,and IP practitioners attended the event. 

Local and international brand owners provided 

input during a full-day conference on brands, 

such as Vina Café, Vina Milk, and Petrolimex 

from Vietnam, and the internationally known 

brands Nike, BMW, and Ikea. Kristen Downer, 

Assistant General Counsel for Nike, emphasized 

the importance that well-known mark 

protection has for Nike, and the many countries 

in which Nike has been able to gain this 

type of protection. 

Representatives from the USPTO, Japan, 

EuroCham, and INTA spoke about the practice 

of well-known mark protection internationally. 

INTA Asia-Pacific Chief Representative Seth 

Hays noted the numerous board resolutions 

INTA has passed relating to well-known marks, 

such as INTA’s strong support of the WIPO Joint 

Recommendation, and suggestions on how 

well-known mark registries should be treated. 

Representatives from the Ho Chi Minh City 

University of Law, the National Office of IP, the 

MOST Inspectorate, the People’s Court of Da 

Nang City, the Economic Police Department, 

the General Department of Customs, and the 

Market Surveillance Agency spoke at the conference 

as well. 

The event was covered in local media here and 

local television here. 

INTA and MOST conducted two events on wellknown 

marks in Ho Chi Minh City and Hanoi in 

2015 and 2016. Articles on these events can 

be found here and here. 

INTA and MOST look forward to continuing the 

engagement on changes to law and practice 

in this area. Included in the MOU will also be 

training of officials and study tours to learn 

best practices from other jurisdictions. 

In the News 

AUSTRALIA: New Fee Structure for Trademark 

Filings at IP Australia 

On October 10, 2016, IP Australia introduced 

several changes to its fees for the intellectual 

property rights that it administers. These 

changes are reflected in amendments to the 

relevant IP regulations. 

The most significant amendments to note are 

the changes to the fees payable for registration 

of a trademark. In the previous system, 

after the application had been examined and 

was accepted for registration, and where 

there were no oppositions by third parties 

during the two-month opposition period, or 

where the applicant was successful in an 

opposition proceeding, the applicant had to 

pay a registration fee to IP Australia of AUD 

300 per class of goods and services to finalize 

the registration. 

Under the new fee system, there is no longer 

any registration fee payable, and following the 

examination and opposition stages mentioned 

above, the trademark is then be automatically 

registered. 

However, the fees payable at the time of filing 

a trademark application, and the fees payable 

to renew a trademark registration at the end 

of the ten-year registration period, have been 

increased, mainly to account for the removal 

of the registration fees. Nevertheless, the 

overall upfront cost for applicants to register 

a trademark (from filing through registration) 

has been reduced, which reflects IP Australia’s 

focus on innovation in enabling IP rights to be 

secured with lower fees payable at the outset. 

The fee changes took effect as of 12:00 am 

Australian Eastern Daylight Time on October 

10, 2016. Further changes were also implemented 

at the end of October for applications 

made through the Madrid Protocol. 

There were also several other fee changes 

to aspects of the designs, patents, and plant 

breeder’s rights registration processes. Details 

are available on IP Australia’s website. 

Trademark Office Practices Committee— 

Asia-Pacific Subcommittee 

continued on page 8 

7


In the News continued from page 7 

AUSTRALIA: Why Qantas’s Trademark Opposition 

Failed to Take Off 

In a decision of June 23, 2016, Australian 

airline Qantas failed on appeal to the Federal 

Court of Australia in its opposition to a Class 

25 device mark featuring a kangaroo. Qantas 

Airways Limited v. Edwards, [2016] FCA 729 

(23 June 2016). The respondent, Mr. Edwards, 

sought registration of the following T-shirt logo 

with respect to “clothing; footwear; headwear; 

shirts; t-shirts” in Class 25: 

The appellant, Qantas Airways Limited, unsuccessfully 

opposed the registration of the T-shirt 

logo before the Australian Trade Marks Office. 

On appeal, Qantas argued that the T-shirt logo 

was deceptively similar to its prior registration 

for the following 1984 tail fin logo: 

The 1984 tail fin logo was registered for 

(among other things) “advertising, marketing 

and merchandising services” in Class 35. 

Qantas argued these services were closely related 

to the applied-for goods. Mr. Justice Yates 

(Yates J) held that “clothing; footwear; headwear; 

shirts; t-shirts” were not closely related to 

“advertising, marketing and merchandising services.” 

While accepting that clothing and headgear 

are typically used as promotional items, 

Yates J stated that the respondent’s goods “are 

no more and no less related to ‘advertising, 

marketing and merchandising services’ than 

any other goods or services that can be advertised, 

marketed or merchandised,” which 

could be limitless. He contrasted the case with 

one involving a more specific claim for services 

related to particular goods, such as television 

repair services and televisions. 

Yates J also considered the marks were not 

deceptively similar. While accepting that the 

stylized kangaroo was a prominent element of 

each mark, he emphasized that the contrasting 

triangular element of the 1984 triangle logo 

and the T-shirt-shaped outline of the T-shirt logo 

were also important aspects of the respective 

marks, which provided memorable context to 

the kangaroo elements. These were considered 

significant points of distinction. Qantas argued 

that it had, at the priority date, a significant reputation 

in the following logos such that the use 

of the T-shirt logo would be likely to deceive or 

cause confusion: 

1984 tail fin logo 1984 kangaroo logo 

2007 tail fin logo 2007 kangaroo logo 

Qantas had first adopted a kangaroo device 

as part of its branding in 1944. Qantas’s core 

services are air transportation services, but 

the 1984 and 2007 marks had been used in 

relation to a range of other services, ancillary 

products, merchandise, and sponsorship activities. 

Yates J was satisfied that the 1984 

triangle logo and the 2007 triangle logo would 

have been recognized by a substantial number 

of ordinary members of the public as denoting 

Qantas’s airline services at the priority date. He 

was less certain about the recognition of the 

1984 kangaroo logo and the 2007 kangaroo 

logo. Absent a finding of deceptive similarity, 

Yates J was not satisfied that the use of the 

opposed mark with respect to the respondent’s 

goods would have been likely to deceive or 

cause confusion. His Honor considered that 

general consumer awareness of brand evolution 

and brand extension were not factors that 

had any significant role to play in the case, or 

that ordinary members of the public would 

have seen the T-shirt logo as a development 

of any of the 1984 or 2007 marks. Qantas’s 

evidence of use of its marks on promotional 

and sponsorship items was considered to be 

evidence of use for promotional or sponsorship 

purposes denoting the appellant as a supplier 

of airline services, and not trademark use in 

relation to the goods themselves. 

Brand owners seeking to rely on a brand extension 

argument in future cases will likely need 

to show a clear connection between the core 

services of their business and the applicant’s 

goods or services. Applicants should also carefully 

consider their filing strategy with a view 

to relying on registrations for services against 

applications covering specific goods. 

Contributor: Carly Mansell 

Davies Collison Cave, Australia 

Verifier: Stephen Rebikoff 

Barrister, Australia 

CAMBODIA: New Regulation on 

Certification Marks 

On August 30, 2016, a new Prakas (declaration) 

on the Procedures for Registration and 

Protection of Certification Marks was enacted 

by the Ministry of Commerce. The declaration 

set forth procedures and documents required 

for national and international registration, term 

of protection, invalidation, and cancellation. 

In order to register, the applicant must have 

legal personality and competency for certifying 

the goods and/or services. The application 

form can be submitted to the Department of Intellectual 

Property of the Ministry of Commerce 

in the Cambodian or English language, using 

the prescribed form, along with a statutory declaration/affidavit, 

a certificate of competency, 

and regulations governing use of the certification 

mark. 

The applicant can also claim the priority right 

of an earlier application filed by the applicant 

based on the Paris Convention. Further, a foreign 

applicant must be represented by a local 

trademark agent, accompanied by a registration 

certification or an application in the foreign 

applicant's home country, and an original notarized 

power of attorney. The official fees will be 

determined in a joint declaration between the 

Ministry of Commerce and the Ministry of Economy 

and Finance. Currently, the official fees for 

ordinary trademark registration apply. 

The applicant has six months to respond to the 

Registrar if the application requirements are not 

fulfilled. As soon as it is registered, the information 

of the certification mark and the regulations 

governing its use will be published. Any 

interested person may submit a statement of 

opposition to the Registrar within 90 days from 

the post-registration publication date. 

8 



The registration is valid for ten years from 

the date of filing the application and may be 

renewed for consecutive periods of ten years. 

The owner must report the list of products and 

producers to the Department of Intellectual 

Property annually. The report and the relevant 

documents in other languages must be 

translated into the Cambodian language and 

certified by a Cambodian trademark agent or 

professional translator registered in Cambodia. 

Failure to provide the annual report and the 

required documents to the Department of 

Intellectual Property within 90 days from the 

date of notification may result in cancellation 

of the registration. 

Contributor: Pheng Thea 

Abacus IP, Phnom Penh, Cambodia 

Verifier: Ly Pharavy 

Trademark Agent, Phnom Penh, Cambodia 

CAMBODIA: New Regulation Issued on 

Exclusive Distribution Rights 

On May 31, 2016, the Ministry of Commerce 

enacted a new Prakas (declaration) on the Procedures 

to Record and File Permission Letters 

for Imported Goods Bearing Exclusive Trademarks. 

The declaration sets forth procedures 

and documentation for recording exclusive 

distribution agreements and recognizing an exclusive 

right in the use of a mark. The declaration 

applies only to genuine and new products 

that have not been sold first in Cambodia. 

Pharmaceutical products and secondhand 

goods are excluded based on public health and 

poverty concerns. 

In order to register an exclusive distribution 

right with the Department of Intellectual 

Property of Ministry of Commerce, a distributor 

must be incorporated in Cambodia and have 

the agreement of the registered trademark 

owner. The agreement must be signed by 

both parties and certified by a notary public or 

competent authority. Requests must be made 

to the Department of Intellectual Property of 

the Ministry of Commerce and accompanied 

by payment of the official fee prescribed in the 

Joint Prakas on the Public Service Fee of the 

Ministry of Commerce and the Ministry of Economy 

and Finance dated December 16, 2014. 

Irrespective of the terms of the distribution 

license, the registration with the Ministry of 

Commerce is valid for only two years, but can 

be renewed for subsequent two-year terms 

indefinitely. However, registrations of exclusive 

distributorships under prior practice are no 

longer valid after June 30, 2016, and must be 

reregistered under the new declarations. The 

renewal application must be made to the Department 

of Intellectual Property within three 

months of the expiry of the registration. 

Contributor: Pheng Thea 

Abacus IP, Phnom Penh, Cambodia 

Verifier: Ly Pharavy 

Trademark Agent, Phnom Penh, Cambodia 

SOUTH KOREA: Recent Amendments to the 

Trademark Act 

Many amendments to the Korean Trademark 

Act came into effect on September 1, 2016. 

One significant change that, unfortunately, was 

not implemented was the proposed adoption 

of a consent system. The Korean Intellectual 

Property Office (KIPO) currently does not permit 

a junior trademark applicant to obtain a registration 

for an existing mark even if a letter of 

consent from the senior registrant is submitted 

consenting to the registration. In order to 

harmonize with global trademark standards, 

it was expected that the Act would be revised 

during this round of amendments to recognize 

such consent between the parties, as long as 

granting a registration for the junior trademark 

would not create confusion among consumers. 

However, this proposed amendment was not 

implemented. 

Some of the major changes that were implemented 

are summarized below. 

1. Elimination of the legal standing requirement to 

file non-use cancellation actions 

Previously, a party required legal standing 

to petition for cancellation of a mark due to 

non-use. By eliminating this requirement, the 

amendment is expected to make it easier to 

cancel unused marks and thereby create a 

larger pool of available trademarks for new 

market entrants. On the other hand, brand 

owners are encouraged to review their portfolios 

and take appropriate measures if they own 

registered marks that are not in use in Korea. 

2. Delayed evaluation of similarity to senior marks 

Previously, KIPO would reject a pending application 

if a similar or identical senior registration 

or application existed at the time the pending 

application was filed, even if the senior mark 

had subsequently been removed from the 

Register. The Act has been amended to address 

this problem by providing that similarity to senior 

marks will only be reviewed as of the time 

the registrability of the applied-for mark is being 

reviewed, rather than the application date. 

3. Elimination of one-year bar against registering 

marks similar to expunged marks 

A potential applicant previously had to wait 

one year before registering a mark similar or 

identical to a registration that was expunged 

from the Register. The intended purpose of this 

one-year rule was to protect consumers from 

potential confusion. However, in order to give 

new market entrants more choices when selecting 

their trademarks, this one-year bar has 

been eliminated. 

4. Expanded restrictions against applications filed 

by agents 

The Act previously provided that an agent or 

representative of a party who owns a registered 

mark in a [Paris Convention] member 

country could not register a similar/identical 

mark in Korea within one year of the termination 

of the agency relationship. 

The amended Act expands this provision to 

prohibit “any party who was in a contractual or 

business relationship, such as a partnership or 

employment, or other relationship” from registering 

a similar or identical mark. The one-year 

limitation has also been removed. 

Contributor: Sung-Nam Kim and Angela Kim 

Kim & Chang, Seoul, South Korea 

Verifier: Joong-hyo Kim 

Choice Kim Intellectual Property Law, Seoul, South 

Korea 


9



THAILAND: New Trademark Act Comes into Force 

Thailand’s new Trademark Act was published in 

the Royal Gazette on April 29, 2016, and came 

into force on July 28, 2016. The Act brings 

several changes, including the long-anticipated 

accession to the Madrid Protocol. The most important 

changes under the Act are as follows: 

1. Sound marks: The Act allows registration 

of sound marks, provided that they are not 

directly descriptive of the goods for which 

protection has been applied, the natural 

sound of said applied goods, or the sound 

arising from the functionality of said applied 

goods; 

2. Multi-class applications: Multi-class applications 

are available; 

3. Time frame for dealing with office actions and 

oppositions: The permitted time frame for 

responding to office actions and oppositions 

has been reduced from 90 days to 60 days; 

4. Association of marks no longer required: 

The concept of associated marks has 

been abolished. Previously, in the case of 

registered or pending marks of the same 

proprietor covering similar or related goods/ 

services where the public might be confused 

or misled as to the proprietor or origin of 

the goods if used by different persons, the 

examiner was required to register the marks 

as “associated marks.” The consequence 

of accepting an association order was that 

the associated marks always had to be 

assigned to the same owner at the same 

time. The new rule will affect all associated 

marks under the previous Act, which will be 

treated as if they had not been registered as 

associated marks; 

5. Partial assignment: Assignment either for 

the whole or parts of goods is allowed; 

6. Official fees: Official fees, particularly for 

filing, registration, and renewal, will be 

doubled; 

7. Renewal grace period: A grace period for 

renewal of six months from the expiry date 

is available. A 20 percent surcharge of the 

official renewal fee is required during the 

grace period; 

8. Refilling: The Act creates an offense for the 

unauthorized refilling of the genuine packaging 

or container to mislead consumers about 

the origin of the goods; and 

9. Madrid Protocol: The Act provides for 

international trademark registration under 

the Madrid Protocol. The accession to the 

Madrid Protocol will require a separate Royal 

Decree, which is expected to be issued in 

the fourth quarter of 2016. 

The new Trademark Act is a positive step forward 

for Thailand toward harmonizing trademark 

protection procedures with international 

practices. We believe that the new Act will greatly 

benefit both Thai and foreign businesses. 

Contributor: Nuttachai Unaratana 

Rouse & Co., Bangkok, Thailand 

Verifier: Prasantaya Bantadtan 

LawPlus Ltd., Bangkok, Thailand 

Geographical Indications 

Certification Marks and Collective Marks: An International Guide 

This resource helps you determine how to protect geographical indications, certification marks, and collective 

marks in select jurisdictions, whether under sui generis laws or other types of law. 

Visit www.inta.org /giguide to learn more about this tool and how it can help you in your daily research! 



Enforcement: An International 

Litigation Guide 



Global Portal 



Trademark Cancellations Guide 


INTA Comments to the Draft 

Certification Mark Regulations 

of the Kingdom of Cambodia 

INTA Comments to IP Australia’s Proposals 

to Streamline IP Processes and Support 

Small Business 


ASEAN 

TMview 

TM5 Website 

10 INTA Global Report, February 2017

Global Report: China 

INTA Participates in China Trademark Festival, 

TM5 User Group Meeting 

From October 27–30, the China Trademark 

Association (CTA) held its 10th Annual China 

Trademark Festival in Kunshan, China, just outside 

of Shanghai. An INTA delegation hosted a 

panel session on trademark financing and held 

meetings with CTA leadership. The Trademark 

5 (TM5), hosted by the China Trademark Office 

(CTMO), also held its annual meeting, and INTA 

participated in the User Group meeting. 

On October 29, 2016, INTA organized a panel 

session, titled “Trademark Valuation and 

Financing.” INTA 2016 President Ronald van 

Tuijl gave opening remarks and INTA Bulletins— 

Asia-Pacific Subcommittee Chair Wayne Liu 

(Yuanhe United Intellectual Property Partners, 

China) moderated. The five panelists covered 

a range of topics, including the use of trademarks 

as collateral for a loan, management 

to safeguard trademark value, the method 

and operation of trademark valuation and 

financing, legal risk and control of trademarks 

used in financing schemes, and how brands 

are valued and ranked based on trademark 

valuation. The topic received great attention 

with standing-room only attendance. The forum 

ran 30 minutes overtime due to the intense 

Q&A session. 

The CTA posted a report of the INTA session on 

its official website. 

INTA would like to thank its panelists, Fu 

Yongjun, Division Chief of the China Trademark 

Office, Maggie Wang (Ladas & Parry, China), 

Luna Zhang (Thomson Reuters, China), Kirk 

Xing (Yuanhe United Intellectual Property 

Partners, China), and Simon Chan (Jones Lang 

LaSalle, Hong Kong SAR, China). 

The INTA delegation also met with CTA Secretary 

General Wang Peizhang to discuss cooperation 

between INTA and CTA, including more 

involvement at the INTA 2017 Annual Meeting 

in Barcelona, Spain. 

Also on October 29, the TM5 held its annual 

meeting concurrently with the CTA Festival. An 

INTA delegation, including Asia-Pacific Chief 

Representative Seth Hays and Trademark 

Office Practices Committee—TM5 Subcommittee 

member Joe Simone (Simone Intellectual 

Property Services Asia Ltd., Hong Kong SAR, 

China), attended the User Group meeting. INTA 

raised a number of questions regarding the 

China Global Advisory Council 

Co-Chairs 

Li Yongbo, Unitalen Attorneys At Law, China 

Jing He, Anjie Law Firm, China 


Gang Bai, Wan Hui Da Intellectual Property 

Agency, China 

George Chan, Simmons & Simmons 

(Beijing) Intellectual Property Agency 

Company Limited, China 

Ding Xianjie, King & Wood Mallesons LLP, 

China 

Zhen Feng, Hogan Lovells International LLP, 

Shanghai 

Karen Law, Digital Domain Holdings Limited, 

Hong Kong SAR, China 

Fei Liao, King & Wood Mallesons LLP, China 

Chunxiang Shen, NTD Patent & Trademark 

Agency Ltd., China 

Fang Zhou, China Telecom, China 

Iris Chao, Johnson & Johnson, China 

Scott Palmer, Sheppard Mullin Richter & 

Hampton LLP, China 

Sam Xu, Tencent Technology (Shenzhen) 

Co., Ltd., China 

Staff Liaison 

Seth Hays, Chief Representative, Asia-Pacific 

Office, shays@inta.org 

TM5 projects on increasing user engagement, 

image search, and bad-faith registration. 

In the News 

District Court Finds Vacuum Cleaner Products for 

Export to Be Infringing 

On August 4, 2016, the Beilun District Court 

of Ningbo City, Zhejiang Province, concluded a 

first instance judgment on the trademark dispute 

initiated by Robert Bosch GMBH (Bosch) 

against trading company Ningbo Ming Fei Intl. 

Trading Co. Ltd. (Ming Fei) (court docket No. 

2016 Zhe 0206 Min Chu 1735). Ming Fei had 

used the trademark BOSCHTURBO on vacuum 

cleaner products, 1,220 of which had been detained 

by Ningbo Customs on their way to Iraq. 

Bosch filed a lawsuit on March 24, 2016, arguing 

that the Ming Fei products infringed on its 

BOSCH marks, and the hearing was conducted 

on July 11, 2016. After examining the evidence 

submitted by both parties, the collegiate bench 

determined that the activity of the defendant 

constituted trademark infringement against 

Bosch, and all infringing products were ordered 

to be destroyed. An economic penalty of RMB 

200,000 (approx. USD 30,303) was imposed 

against Ming Fei, and, as the sole investor and 

legal representative of Ming Fei, Shen Qiping 

was deemed to have joint liability. Although 

Ming Fei is a limited liability company, the 

court deemed that Shen Qiping did not submit 

evidence to prove that the company’s property 

was independent of his personal property. 

This was a first instance court judgment. It has 

become effective since neither party appealed. 

Contributor: Nikita Xue 

Hong Fang Law, Shanghai, China 

INTA Bulletins Law & Practice—Asia-Pacific 

Subcommittee 

Verifier: Wu Wenjing 

Trademark Office Official, Guangzhou Administration 

for Industry and Commerce, Guangzhou, China 


11

Global Report: China 


Domain Name Dispute Resolution Policy: Breaking 

the Two-Year Time Limit 

In a decision regarding the domain name 

“leister.net.cn,” the Hong Kong International 

Arbitration Centre (HKIAC) ruled that the transfer 

of a “.cn” domain name from one party to 

another constitutes a new registration under 

the China Domain Name Dispute Resolution 

Policy (CNDRP) and “resets” the two-year time 

limit for bringing a domain name complaint. 

In 2006, the China Internet Network Information 

Center (CNNIC), which administers all .cn 

domain names, revised the CNDRP to include 

a two-year time limit for trademark owners 

to bring a complaint against the owner of an 

infringing .cn domain name. 

Consequently, brand owners that failed to file 

a complaint within two years of registration of 

the domain were limited to seeking redress 

from the Chinese courts. This time limit 

placed a heavy burden on trademark owners 

to monitor the registration of any potentially 

infringing .cn domain names and act quickly 

to bring a complaint. 

Until now, it has been unclear whether the 

CNDRP was applicable to .cn domain names 

that have been transferred within the last two 

years. 


Essential Information on TM Protection Worldwide 

In Leister Brands AV v. Chen Qiuheng, HKIAC 

DCN-1500641 (Oct. 10, 2015), the Panel held 

that the transfer of a domain name from one 

party to another constitutes a “new” registration 

under the CNDRP, which restarts the twoyear 

time limit to bring a complaint. 

According to the Panel, the language “registering 

or acquiring,” which appears in Article 9 

of the CNDRP, indicates that a domain name 

that has been assigned to another party can 

be subject to the CNDRP as an acquisition for 

two years after the date of assignment. See 

Leister Brands AV v. Chen Qiuheng, HKIAC 

DCN-1500641. The Panel found that since the 

procedures for registration and assignment of 

a domain name are substantially similar, the 

assignment of a domain name is essentially a 

form of registration. Id. 

The Panel also referred to the fact that it has 

generally been accepted that the transfer of a 

domain name constitutes a new registration 

under the Uniform Domain-Name Dispute-Resolution 

Policy (UDRP), the equivalent policy 

widely used for generic top-level domain names 

such as “.com.” See id. 

As a policy matter, the Panel noted that if 

the assignment of a domain name were 

not deemed to be a new registration under 

the CNDRP, this would indirectly encourage 

cybersquatting and allow a number of domains 

to remain unused. Moreover, application of 

the CNDRP to domain names that have been 

assigned would not result in injustice to the 

parties since either party in a CNDRP proceeding 

may apply to the courts for relief. 

The Panel’s decision in Leister Brands AV v. 

Chen Qiuheng expands trademark owners’ ability 

to enforce against cybersquatting and sets 

welcome precedent for trademark owners that 

were previously faced with the prospect of long 

and costly court actions in order to recover .cn 

domain names that were first registered more 

than two years ago. 

Now that the HKIAC has confirmed that transfer 

of a .cn domain can be considered a new 

registration, trademark owners may utilize the 

relatively cheap, fast, and predictable CNDRP 

domain name procedure to recover a greater 

number of infringing .cn domains. 

Contributor: James Godefroy 


Rouse & Co. International LLP, London, United 

Kingdom 

Verifier: Nikita Xue 


INTA Bulletins Law & Practice—Asia-Pacific 

Subcommittee 

A searchable guide of country profiles offering basic, practical information on trademark filing, prosecution, 

registration, maintenance, and enforcement. 

Visit www.inta.org /countryguides 


China Bulletin 

China Microsite 


Guide 

Geographical Indications, Certification 

Marks and Collective Marks: 

An International Guide 


Trademark Cancellations 



INTA Comments to the Hong Kong Panel on 

Health Services on Legislative Proposals to 

Strengthen Tobacco Control 


China Trademark Association 

State Administration for Industry 

and Commerce 


Global Report: Europe 

UKIPO Hosts Discussion on 

Impact of “Brexit” on UK IP Rights 

Patrick Wheeler 

Collyer Bristow LLP, London, UK 

Simon Clark 

Berwin Leighton Paisner LLP—UK 

Giles Corbally 

Bomhard IP—Spain 

David Stone 

Simmons & Simmons—UK 

In September, the UK Intellectual Property 

Office (UKIPO) held a series of three meetings 

with representatives from various bodies 

concerned with the protection of intellectual 

property rights in the UK to explore the implications 

of the “Brexit” referendum vote on June 

23, 2016. UKIPO identified three priorities for 

discussion: 

1. The question of the recognition of patent, 

trademark, and design attorneys and lawyers 

before EU courts and tribunals; 

2. The impact on EU and UK unregistered 

design rights; and 

3. The impact on UK and EU registered trademark 

and design rights. 

The purpose of these meetings was to assist 

the UKIPO in identifying specific difficulties and 

concerns and, to the extent possible, to identify 

possible solutions to the risks and difficulties. 

This will feed into the much wider work being 

carried out by the Department for Exiting the EU 

of the UK Government (DEXEU). 

Impact assessments will also be required for 

each of the options, which are then likely to be 

made available for public comment. So great is 

the anticipated financial and business impact 

of registered and unregistered rights being lost 

as a result of no action being taken, that this is 

not being considered as a serious possibility. 

The sessions covered rights of representation 

before the EUIPO and the Court of Justice 

of the European Union (CJEU); unregistered 

Community design (UCD) rights and UK unregistered 

design rights (UK UDRs); and registered 

trademarks in the UK and EU. A detailed report 

of all discussions is available in the October 

15, 2016, issue of the INTA Bulletin. 

So great is the anticipated 

financial and business impact 

of registered and unregistered 

rights being lost as a result 

of no action being taken, 

that this is not being considered 

as a serious possibility. 

While no firm conclusions were reached at any 

of the three meetings, they achieved a growing 

consensus on the key issues and will assist 

DEXEU in identifying preferred options to put 

forward for discussion and negotiation. Further 

meetings are planned to explore issues and 

solutions in more detail. This will be a lengthy 

process, and it is only a very small part of the 

very large task that faces DEXEU, but INTA will 

continue its dialogue with the UK government 

and UKIPO to make sure that the importance 

of continuing protection for registered and unregistered 

trademarks and designs is not lost. 

INTA will continue monitoring the subject and 

informing its members on the potential implications 

of Brexit on IP to help them anticipate 

Europe Global Advisory Council 

Co-Chairs 

Anne Gundelfinger, Swarovski AG, 

Liechtenstein 

Michael Hawkins, Noerr Alicante IP, 

S.L., Spain 


Carsten Albrecht, FPS Fritze Wicke 

Seelig, Germany 

Jose Luis Arnaut, CMS Rui Pena & 

Arnaut, Portugal 

Gerhard Bauer, Gerhard Bauer, Germany 

Catherine Boudot, Biofarma, France 

Geert Glas, Allen & Overy LLP, Belguim 

Lorenzo Litta, Società Italiana Brevetti, Italy 

Jeremy Newman, Rouse, United Kingdom 

Gabrielle Olsson Skalin, Inter IKEA Holding 

Services S.A., Belgium 

Petter Rindforth, Fenix Legal KB, Sweden 

David Stone, Simmons & Simmons LLP, 

United Kingdom 

Zeeger Vink, Maus Fréres, France 

Vanni Volpi, GUCCI, Italy 

Verena von Bomhard, Bomhard IP, Spain 

Staff Liaison 

Christina Sleszynska, Chief Representative 

Officer, Europe 

CSleszynska@inta.org 

upcoming changes. To this end, INTA has set 

up a “Brexit Rapid Response Group,” with 

the purpose of assisting INTA in monitoring, 

understanding, and engaging on Brexit-related 

matters as they affect brand owners. Stay 

tuned and check the INTA calendar of events 

for updates. 


INTA Hosts Regional Receptions Honoring 56th 

Series of Meetings of WIPO Assemblies 

In honor of the 56th Series of Meetings of 

the World Intellectual Property Organization 

(WIPO) Assemblies, INTA hosted three different 

receptions on October 5–6, 2016, in 

Geneva, Switzerland, for government officials 

from countries in the ASEAN, Africa, and Latin 

America and Caribbean regions, respectively. 

2016 INTA President Ronald van Tuijl (JT 

International, S.A., Switzerland), INTA Geneva 

Representative Bruno Machado, and INTA 

External Relations Senior Associate for Latin 

America Gabrielle Doyle, represented INTA in 

each of the receptions. 

ASEAN 

On October 5, 2016, Mr. van Tuijl, together 

with Mr. Machado and Ms. Doyle, hosted a 

luncheon with government officials from the 

ASEAN region to touch on issues affecting their 

jurisdictions and receive office updates. The 

luncheon included 18 attendees and included 

participation from the heads of the industrial 

property offices of Cambodia, Indonesia, Laos, 

Malaysia, and Singapore. Each office provided 

the attendees with legislative updates and 

other relevant developments. Some offices, 

including Malaysia and Singapore, provided 

updates on offices that were unable to attend. 

Mr. van Tuijls gave opening remarks on the 


13


Association Activities continued from page 13 

current priorities of INTA and other activities in 

the ASEAN Community. 

Africa 

The INTA cocktail reception for the government 

representatives from Africa took place on the 

evening of October 5. The reception drew 25 

representatives from the offices of the Central 

African Republic, Chad, Congo, Equatorial 

Guinea, Kenya, Swaziland, United Republic 

of Tanzania, OAPI, and ARIPO. Mr. van Tuijl 

gave opening remarks on the priorities of INTA 

and its recent activities in Africa, in particular 

the success of the Building Brands in Africa 

Conference. 

Latin America and the Caribbean 

On October 6, 2016, Mr. van Tuijl, Mr. Machado, 

and Ms. Doyle hosted a luncheon with government 

officials from Latin America and the 

Caribbean to touch on issues affecting their 

jurisdictions and to receive office updates. The 

luncheon featured 21 attendees and included 

the heads of the industrial property offices 

of Argentina, Chile, Colombia, the Dominican 

Republic, El Salvador, Guatemala, Honduras, 

and Mexico, as well as officials of the industrial 

property offices of Brazil, Costa Rica, and Peru, 

and WIPO’s Director of the Regional Bureau 

for Latin America. Mr. van Tuijl gave opening 

remarks on the current priorities of INTA and 

its recent activities in Latin America and the 

Caribbean, including the anticipated opening of 

INTA’s Representative Office in Santiago, Chile, 

this year. The offices were delighted by the 

news and pleased to know that it would serve 

as a means to provide additional focus to the 

region. 

The receptions were an overall success. INTA 

was pleased to have such a broad turnout 

from the various IP offices and looks forward 

to organizing these events again next year. 

For more information on INTA’s activities with 

WIPO, please contact Chief Policy Officer Bruce 

Macpherson at bmacpherson@inta.org. 

Government Officials Training Committee Co-Hosts 

13th Annual Industry Training with EUIPO 

Each year, INTA’s Government Officials Training 

(GOT) Committee collaborates with the EUIPO 

on an Industry Training presentation for the 

Office’s examining attorneys and staff. The 

industry trainings provide a forum whereby an 

industry sector and the EUIPO come together 

to share information on the latest trends within 

the industry that may affect the examination 

of trademark applications. The trainings are 

mutually beneficial—examiners hear about 

common trademark challenges that in-house 

counsel face, while in-house counsel have a 

direct line of communication to the examiners. 

This year’s training was the 13th annual event 

and was held at the EUIPO on October 5, 2016. 

The topic was titled “Telecommunications and 

the Software Industries: IP Challenges.” Reyes 

Campello Estebaranz (CEALAW EUIP Attorneys, 

Spain), GOT Committee Vice Chair; Seana 

Smith (Pfizer, USA), GOT Committee EUIPO 

Subcommittee Chair; and EUIPO Subcommittee 

members organized a successful and well-received 

event. More than 100 representatives 

from EU National Offices and EUIPO attended 

the panel presentation in the morning and 

workshops in the afternoon. 

The training seminar presentation was 

co-moderated by Stefan Martin of EUIPO and 

Ms. Campello Esteberanz. Speakers were INTA 

members Angie Hankins (Samsung Electronic 

Strategy & Innovation Center, USA); Helen Stanwell-Smith 

(Orange Brand Service Limited, UK); 

and Sanjiv Sarwate (Dell Inc., USA). While there 

was overlap in the issues faced in the various 

industries, each panelist presented concerns 

unique to his or her company and industry. A 

hot topic of discussion was the impact of the 

Internet of Things on a company’s trademark 

strategy, with some of the major challenges being 

ownership of data, privacy and data security, 

interoperability of devices, and bandwidth. 

The GOT Committee also collaborated with the 

Trademark Office Practices Committee on an 

industry training that took place on October 

26–27 in Mexico City, Mexico, at the Mexican 

Institute of Industrial Property (IMPI). 

For more information on government officials 

training events, contact GOT Committee Staff 

Liaison Carin Diep. 

INTA Participates in Anticounterfeiting Activities 

in the European Union 

International Law Enforcement Intellectual 

Property Crime Conference 

On September 19 and 20, 2016, INTA was 

represented at the 10th Annual International 

Law Enforcement Intellectual Property Crime 

Conference at the Guildhall in London, 

England. The event was co-hosted by INTERPOL 

and the City of London Police in partnership 

with Underwriters Laboratories (UL). 

INTA was a Silver Sponsor of the event and was 

able to exhibit materials to promote anticounterfeiting 

events and the Customs Connection 

program to officials. INTA Anticounterfeiting 

Manager, Maysa Razavi, spoke on a panel 

addressing the effectiveness of investigation 

outcomes. She discussed the elements of a 

successful investigation and also highlighted 

that consumers, as the victims of counterfeiting, 

are an underutilized source of information 

for these investigations. The Association was 

able to coordinate several meetings with 

officials in the United Kingdom, including the 

Risk and Intelligence Service of Her Majesty’s 

Revenue and Customs, Police Intellectual Property 

Crime Unit of the City of London Police, 

and the Intelligence Unit of the U.K. Intellectual 

Property Office. Other meetings were held with 

local associations, including the Anti-Counterfeiting 

Group, National Market Group, and 

the Intellectual Property Chartered Trading 

Standards Institute. 

INTA would like to thank the following members 



for participating in the conference and various 

meetings on behalf of the Association: 

• Jeremy Newman (Rouse, UK), Anticounterfeit 

ing Committee Chair for the EU Subcommittee; 

• Myrtha Hurtado Rivas (Novartis, Switzerland), 

Anticounterfeiting Committee Chair for Eastern 

Europe and Central Asia Subcommittee; 

• Ed Wilkie (Apple, USA); 

• Brandon Scott (Abercrombie and Fitch, USA); 

• Natalie Wong (Abercrombie and Fitch, USA); 

• Laurence Morel-Chevillet (Bulgari, Italy); and 

• Scott Gelin (Apple, USA). 

For those who are interested in anticounterfeiting 

activities in London, please see the Intellectual 

Property Office’s IP Crime Report. 

In the News 

GEORGIA: Georgia Joins TMview and DesignView 

The National Intellectual Property Center of 

Georgia (SAKPATENTI) joined the TMview and 

DesignView databases on July 7, 2016. The 

databases are hosted and administered by the 

European Union Intellectual Property Office’s 

(EUIPO’s) European Trade Mark and Design 

Network. 

The move will provide users of the TMview 

and DesignView search engines access to the 

content of SAKPATENTI databases on national 

trademarks and designs, comprising more than 

28,000 trademarks and almost 1,800 designs. 

Likewise, SAKPATENTI users will be able to 

search the EUIPO databases via the Georgian 

interface. 

According to the notice available on SAKPATEN- 

TI’s website, “the cooperation between EUIPO 

and National Intellectual Property Centre of 

Georgia Sakpatenti is a result of the Memorandum 

of Understanding signed in 2015. The 

Memorandum also provides for capacity building 

of Georgian examiners, assistance in developing 

the trademark and design guidelines 

and cooperation with the Intellectual Property 

Educational Center founded by Sakpatenti.” 

This step is one of the most visible indicators 

of the significant efforts made by SAKPATENTI 

to promote IP awareness and education and to 

support enforcement of IPR. 

João Jorge 

Raul Cesar Ferreira (Herd.) S.A., Lisbon, Portugal 

EUROPEAN UNION: Recent Developments for 

EUTM Renewals 

The Court of Justice of the EU (CJEU) has 

clarified, in the case of Nissan Jidosha KK v. 

EUIPO (Case C-207/15), that, under Regulation 

No. 207/2009, not only can a European 

Union trade mark (EUTM) be renewed for all 

the classes it covers, but also the successive 

renewal of only some of the goods or services 

for which the EUTM is registered may be 

requested within the six-month period following 

the end of protection. 

Article 47 of EU Regulation No. 207/2009 

provides that a request for renewal of an 

EUTM shall be submitted within a period of six 

months, expiring on the last day of the month 

in which protection ended (the initial six-month 

period). The fees should also be paid in this 

period. If the proprietor misses that deadline, 

the request may be submitted and the fees 

paid within a further period of six months (the 

further six-month period) following the day the 

protection ends, provided that an additional fee 

is paid within this further period. The regulation 

further allows that the request for renewal 

may also comprise only some of the goods or 

services for which the EUTM is registered with 

the consequence that the registration will be 

renewed solely for those goods and services. 

This Article has been replaced by Article 47 of 

Regulation No. 2015/2424, which is a similar 

provision. However, in the new Article 47, the 

initial six-month period expires on the expiry of 

the registration. 

The General Court (GC) found 

that it was incorrect to treat 

Nissan’s request for partial 

renewal as equivalent to a 

surrender of the mark but 

nevertheless confirmed that 

a successive renewal request 

was prohibited. 

Nissan is the owner of the figurative EUTM 

CVTC (continuous variable valve timing control), 

which was registered with respect to goods 

in Classes 7, 9, and 12. Within the initial sixmonth 

period, Nissan requested the EUIPO 

renew that mark, but only with respect to the 

goods in Classes 7 and 12. The Office confirmed 

the partial renewal with respect to those 

two classes and informed Nissan that the remaining 

Class 9 goods had been removed from 

the Register. In the further six-month period, 

Nissan requested several times the renewal of 

its mark in regard to the Class 9 goods. The Office 

refused Nissan’s request, finding that the 

request for renewal of the mark with respect 

to the goods in Classes 7 and 12 constituted 

a surrender of that mark with regard to goods 

in Class 9. Furthermore, partial renewal of that 

mark had already been registered by the EUIPO 

and notified to Nissan. 

Nissan appealed. The General Court (GC) found 

that it was incorrect to treat Nissan’s request 

for partial renewal as equivalent to a surrender 

of the mark but nevertheless confirmed that a 

successive renewal request was prohibited. 

Nissan’s appeal to the CJEU was successful, 

the judgment of the GC was set aside, and 

the Office’s decision was annulled. The CJEU 

decided that: 

• It is not prohibited to file requests for renewal 

of an EUTM staggered over time and relating 

to different classes of goods or services; and 

• The only requirement for the submission of 

a request for renewal of an EUTM—either 

including all goods and services registered 

or only relating to some of those—during the 

further six-month period is the payment of an 

additional fee. 

Contrary to the General Court’s opinion, the 

CJEU held that Article 47 of 207/2009 does 

not require that the request for renewal must, 

as a general rule, be submitted during the ini- 


15



tial six-month period and that it is only by way 

of exception—where no request has been submitted 

during that period—that the proprietor 

of a mark may submit such a request during 

the further six-months period, in return for the 

payment of a surcharge. 

Consequently, proprietors of EUTMs can file 

successive requests for partial renewal of 

their marks until the end of the further sixmonth 

period. 

Contributor: Christopher Benson 

Taylor Wessing LLP, London, UK 

Verifier: Dimitar Batakliev 

PETOŠEVIĆ, Sofia, Bulgaria 

INTA Bulletins Law & Practice—Europe 

Subcommittee 

FRANCE: Supreme Court Rules on 

Acquiescence in the EU 

In a decision dated July 5, 2016, the French 

Supreme Court ruled that the Paris Court of Appeal 

was correct in assessing that the French 

cosmetic company L’Oréal, owner of a prior EU 

registration, should not have ignored the use 

of a similar, more recent EU registration by the 

Spanish company Cosmetica Cabina in various 

territories of the EU for the same activity and 

for more than five consecutive years. As a consequence 

of this acquiescence, L’Oréal lost the 

right to challenge the more recent registration. 

L’Oréal owned the EU registration for NOA for 

goods in Class 3 that dated back to 2002. It 

filed an infringement action against the trademark 

AINHOA, which was registered in 2003, 

based on the risk of confusion with NOA. 

The Court of Appeal of Paris in a decision dated 

February 19, 2014, ruled that in accordance 

with Article 54 of the European Union Trade 

Mark Regulation (EUTMR), L’Oréal, owner of 

a prior EU registration for the mark NOA, had 

acquiesced in the use of a later EU registration 

AINHOA in the EU for a period of five successive 

years and would no longer be entitled on the 

basis of the earlier trademark to challenge the 

use and validity of the later trademark AINHOA 

with respect to the goods for which the later 

mark had been used. 

L’Oréal challenged the Court of Appeal decision 

on the ground that it wrongly interpreted the 

law. According to L’Oréal, the acquiescence 

could apply only to goods that have been used 

for a consecutive five-year period. By simply 

mentioning “goods in class 3” without listing 

them one by one, the Court of Appeal failed to 

correctly apply Article 54 of the EUTMR. 

To this the Supreme Court answered that since 

the EU trademark AINHOA does not list all the 

goods in International Class 3 but only “cosmetic 

products,” the Court of Appeal did not 

need to identify the specific products that were 

used by the trademark owner. 

L’Oréal also challenged the Court of Appeal decision 

on the ground that it did not judge that 

L’Oréal had willingly accepted the use of the 

later registration but only deduced that L’Oréal 

“was necessarily aware” of the use of the later 

registration. 

To this the Supreme Court ruled that the Court 

of Appeal rightly substantiated its decision by 

listing the advertisements for both marks NOA 

and AINHOA in numerous magazines distributed 

in the EU, sometimes even in the same 

magazines, by stating that the trademarks 

had been present, side by side, in various fairs 

since 2001 and that both L’Oréal and Cosmetica 

Cabinas were members of the same 

business associations. 

Therefore the Court of Appeal rightly concluded 

that, considering that the owners of the registrations 

were competitors, L’Oréal could not get 

away with ignoring the use of the later mark for 

a continuous five-year period. 

This decision is important because it clearly 

sets out that in some circumstances the owner 

of a prior registration cannot simply claim to 

not know of the use of a later registration. 

Contributor: Guillaume Mortreux 

IPSIDE, Paris, France 

INTA Bulletins Law & Practice—Europe 

Subcommittee 

Verifier: Susanna Heurung 

Kotitschke & Heurung Partnerschaft, Munich, 

Germany 

Co-Chair, INTA Bulletins Law & Practice— 

Europe Subcommittee 

POLAND: Trademark Opposition System Introduced 

On April 15, 2016, the Amendment to the 

Polish Act on Industrial Property Law of June 

30, 2000, came into effect. (The Amendment 

itself is dated September 11, 2015 (Journal of 

Laws 2015, item 1615)). The main objective of 

the Amendment concerns the transition from 

a system based on examination to one based 

on opposition. Before the Amendment, the 

Patent Office of the Republic of Poland (PPO) 

was required to examine not only absolute but 

also relative grounds for refusal of granting 

protection, such as the conflict of a trademark 

application with earlier rights of third parties. 

As of April 15, 2016, the PPO is obliged to 

verify solely absolute grounds for refusal. It 

means that the protection for a trademark will 

be granted by the PPO to the applicant when 

there are no absolute grounds to refuse registration 

and there are no third-party oppositions 

against the application. 

Oppositions can be filed within a non-renewable 

three-month deadline from the date of 

announcement of the trademark application 

in the PPO Bulletin. After this period lapses, 

potentially conflicting new trademarks being 

filed and registered can be contested only 

through invalidation proceedings. Additionally, 

as a result of the Amendment, these invalidation 

proceedings are now less burdensome as 

there is no longer a requirement to prove legal 

interest in such proceedings by a party seeking 

invalidation. 

The changes made by the Amendment also 

apply to international trademark registrations 

designating Poland applications. 



The Amendment sets out an important change 

in the procedure of registering trademarks in 

Poland. It requires the constant vigilance of 

existing trademark (and other rights) owners 

through regular monitoring of applications published 

in the PPO Bulletin. The changes are expected 

to substantially reduce the time it takes 

the PPO to examine applications. The PPO 

expects registration time to be reduced from 

approximately 14 months to seven months, 

from the moment of filing an application 

(according to the statement of the President 

of the Patent Office published in the Bulletin 

Legal Gazette on June 11, 2016). This should 

certainly benefit trademark applicants. 

Contributor: Adriana Zdanowic and Karina 

Zielińska 

CMS, Warsaw, Poland 

Verifier: Adrianna Zięcik 

AOMB, Warsaw, Poland 

RUSSIA: IP Court Rules against Parallel Imports 

On June 20, 2016, the Russian Intellectual 

Property Court ruled in favor of German 

brewery Paulaner Brauerei Gmbh & Co. KG in a 

parallel import lawsuit against a local importer, 

Water Group, LLC, which imported 24,600 bottles 

of beer without the rights holder’s consent. 

The IP Court upheld both the Moscow Arbitrazh 

Court (first instance) and the Ninth Arbitrazh 

Court of Appeal (second instance) decisions, 

and the Russian importer eventually had to 

withdraw the products from the market. 

While the Russian courts treat parallel imports 

as counterfeits, the Russian Federal Assembly 

is considering draft amendments to Article 

1487 of the Civil Code (Exhaustion of the 

Exclusive Right to a Trademark) that would 

legalize parallel imports, an initiative driven by 

Russia’s Federal Antimonopoly Service (FAS). 

The amendments would substitute the current 

principle of regional exhaustion of trademark 

rights with the international principle of exhaustion 

by excluding the phrase “within the 

territory of the Russian Federation” from the 

provision. It should be noted that two principles 

of exhaustion of trademark rights exist in the 

Russian Federation: national and regional. The 

regional principle exists for the members of the 

Eurasian Customs Union, the national principal 

exists for other countries. 

According to FAS, legalizing parallel imports 

would help prevent monopolization and reduce 

prices by 20 percent. Opponents of this legislation 

change argue that real counterfeit goods, 

in addition to parallel imports, would flood 

the Eurasian Customs Union (EACU) because 

trademark owners would not be able to guarantee 

the quality of these goods. 

According to the latest estimates, the changes 

may be implemented by 2020, not by 2018, as 

initially projected in 2014. To test the waters, 

Russian Prime Minister Dmitry Medvedev approved 

parallel importation of specific products 

in April 2015 and the following list of products 

is now subject to government approval: 

• Medicine and medical products; 

• Perfumes and cosmetics; 

• Spare parts for passenger cars and for commercial 

vehicles; 

• Food; 

• Non-alcoholic beverages (excluding beer); 

• Personal hygiene products, including diapers; 

and 

• Baby products, including car seats. 

Additionally, Igor Artemyev, head of FAS, has 

stated that all EACU members had decided to 

legalize parallel import by 2020. The EACU is 

also creating a list of products, for which it suggests 

parallel importation should be legalized, 

and it will circulate it for discussion among 

member states. 

Contributor: Sitora Rakhmanova 

Petošević, Moscow, Russia 

Verifier: Maxim A. Voltchenkok 

Duane Morris LLP, Philadelphia, 

Pennsylvania 

SWITZERLAND: Christian Louboutin Loses Position 

Trademark Appeal 

On April 27, 2016, the Swiss Federal Administrative 

Court declined the registration of the 

position trademark RED LADIES’ SHOE SOLE 

(International Registration No. 1031242; 

pictured right) for lack of distinctiveness. 

Christian Louboutin v. Swiss Federal Institute 

of Intellectual Property, Case B-6219/2013. 

The trademark was applied for ladies’ footwear 

in International Class 25, in particular, with the 

following information: “The mark consists of 

the color red (Pantone No. 18.1663TP) applied 

to the sole of a shoe as shown in the representation 

(the outline of the shoe is not part of the 

mark but is intended only to show the placement 

of the mark).” 

The Swiss Federal Administrative Court argued 

that the distinctiveness of a position trademark 

must be assessed by means of a general analysis 

of the claimed position and of the figurative 

elements. The position may add to the distinctiveness 

of a trademark if, in particular, the 

relevant positioning on the product or its packaging 

is unusual or striking or if the positioning 

has acquired distinctiveness through use. 

However, the position of a graphical element 

on a product is frequently banal and often just 

decorative, but not distinctive, the court wrote. 

In the case at issue, the court regarded the 

lower side of a ladies’ shoe sole as not being 

a position where the affixing of a trademark is 

unusual or striking. Evidence showed that several 

producers of high-heel shoes offered on 

the Swiss market are coloring the lower side of 

the soles, and that red soles of high-heel shoes 

do not deviate from the current state of the art. 

This Swiss Federal Administrative Court decision 

is available online in German here. An 

appeal brought against this decision is pending 

before the Swiss Federal Supreme Court. 

Contributor: Christoph Gasser 

Staiger, Schwald & Partner Ltd., Zurich, 

Switzerland 

INTA Bulletins Law & Practice—Europe Subcommittee 

Verifier: Lorenz Ehrler 

Bugnion Ballansat Ehrler, Geneva, 

Switzerland 


17



UKRAINE: State Intellectual Property Service 

to Be Liquidated 

The Government of Ukraine adopted a resolution 

providing for (a) the liquidation of the 

State Intellectual Property Service of Ukraine 

(SIPS); (b) the transfer of functions related to 

implementation of the national policy in the 

field of IP to the Ministry of Economic Development 

and Trade of Ukraine (MEDT); (c) transfer 

of the management over the state enterprise 

“Ukrainian Intellectual Property Institute” 

(Ukrpatent), the state organization “Ukrainian 

Agency of Copyrights and Related Rights,” and 

the state enterprise “Intelzakhyst” from the 

SIPS to the MEDT. 

Resolution No. 585 was adopted on August 

23, 2016, in the framework of implementation 

of an action plan on realization of the concept 

of reforming the state system of intellectual 

property protection in Ukraine (Order No. 

632-р) and is aimed at the optimization of the 

activity of central bodies of executive power 

of the state system of IPR protection. In the 

course of implementation of the action plan, a 

particular emphasis will be placed on introduction 

of a transparent two-level structure of the 

state management in the field of intellectual 

property, reorganization of the collective copyrights 

management system, improvement of 

national legislation, and its harmonization with 

EU requirements. 

On the basis of Ukrpatent (through its reorganization) 

and SIPS, the National Intellectual 

Property Agency (NIPA) will be formed. Thus, 

A particular emphasis will be 

placed on introduction of a 

transparent two-level structure 

of the state management 

in the field of intellectual 

property, reorganization 

of the collective copyrights 

management system, improvement 

of national legislation, 

and its harmonization 

with EU requirements. 

there will be a single body responsible for implementation 

of the state policy in this sphere. 

NIPA will be coordinated by MEDT and will carry 

out examination of IP applications, issue registered 

IP rights, consider requests for invalidation 

of registrations of IP rights under administrative 

(out-of-court) procedures, register facts 

of disposal of proprietary intellectual property 

rights, and maintain respective registers of 

ownership of rights. The functions pertaining to 

monitoring compliance with the legislation are 

expected to be transferred to the law enforcement 

authorities, which is in line with the best 

European practices. 

At the same time, MEDT will fulfill functions 

related to developing policy in the field of IP, in 

particular developing and approving strategic 

directions in this field, elaborating legislative 

proposals and regulations, and maintaining 

continual public dialogue in the industry. As 

explained by Olena Minitch, Director of Department 

of Innovation and Intellectual Property, 

MEDT, there should be no technical problems 

with the issuance of protection documents 

(including trademark registration certificates), 

and no interruptions in the examining and 

appellate proceedings. The MEDT will provide 

for a specific sequence of steps to ensure no 

interruption in the consideration of applications 

and issuance of protection documents 

and legal continuity in court cases. 

Prior to the changes (the exact date of adoption 

has not been specified), the SIPS will continue 

performing its functions, including those 

related to examination and registration. 

Contributor: Antonina Pakharenko-Anderson 

Pakharenko and Partners, Kyiv, Ukraine 

Verifier: David Aylen 

Gowling WLG (International) Inc., Moscow, Russia 

Ms. Pakharenko-Anderson and Mr. Aylen are members 

of the INTA Bulletins Law & Practice—Europe 

Subcommittee. 




Guide Global Portal 





and Collective Marks: 




Review of the European Union 

Trademark System 

EU Observatory Work Programme 2017 


EUIPO 

EUROPA 

European Commission 

European Parliament 



Global Report: India 

Third Quarterly Corporate Member Meeting 

Held in Mumbai 

INTA’s corporate members in India convened 

for the Association’s third quarterly Corporate 

Member Meeting, which was held in ITC 

Grand Central Hotel, Mumbai, September 16. 

In previous meetings, India corporate members 

had suggested having overseas INTA corporate 

members share insights into various IP best 

practices on these forums. To maximize the 

reach of these quarterly meetings and encourage 

our corporate members outside Mumbai to 

interact with their peers, the meeting featured 

an audio presentation by Meena Sayal, Global 

Brand Protection Director, Unilever PLC. During 

her presentation, Ms. Sayal discussed at length 

tips on building a robust brand protection 

program within organizations. She spoke about 

best practices in order to combat counterfeiting 

and highlighted understanding the source, 

the environment, the risks, and the flow of 

counterfeit goods. Ms. Sayal also discussed her 

role in INTA’s Customs Connection Webcasts. 

Members attended the meeting in person or 

remotely and participated interactively. 

Members were also updated on the various 

activities of INTA in the region, including official 

meetings and current projects that the Association 

is pursuing. They were invited to register for 

and attend an INTA roundtable in Gurgaon, India, 

on October 5, hosted by Ranjan Narula of RNA, 

IP Attorneys, on the topic “Addressing Counterfeits 

and Infringements in the Digital World,” with 

highlighted speakers from Snapdeal. 

INTA Task Force Submits Gap Analysis to India’s Controller 

General of Patents, Designs & Trade Marks 

A task force created under the aegis of the 

Trademark Office Practices—India Subcommittee 

produced a gap analysis of the issues 

pertaining to the Indian Trade Marks Office. 

On August 22, 2016, INTA CEO Etienne Sanz 

de Acedo shared this gap analysis with the 

Controller General (CG) of Patents, Designs & 

Trade Marks, O.P. Gupta. The analysis focuses 

on substantive matters and also offers recommendations 

to increase procedural efficiencies. 

This exercise originated from a meeting 

with the CG in June, during which he asked 

INTA to undertake this study in order to better 

understand issues faced by companies and IP 

professionals in registering and protecting the 

brands they own and represent. 

INTA members are invited to attend an upcoming 

INTA workshop. Titled Building Aspirational 

Brands—Insights for Competitive Advantage 

in Today’s Global Marketplace, the workshop 

will take place in Mumbai on March 15, 2017. 

Registration is open. 

Interview 

O.P. Gupta, Controller General of Patents, Designs & Trade Marks, India 

India’s Office of the Controller General of 

Patents, Designs & Trade Marks (CGPDTM) 

functions under the Department of Industrial 

Policy & Promotion, Ministry of Commerce & 

Industry, Government of India, and is tasked 

with administration of IP laws in the country, 

including registration of IPRs and carrying 

out the day-to-day operations of the various 

IP registries under its charge. O.P. Gupta, 

Controller General (CG) of Patents, Designs 

& Trade Marks, who heads the Intellectual 

Property Office of India, faces some significant 

challenges, but has initiated key measures and 

implemented many recent changes that have 

led to vast improvements in the system. Below, 

CG Gupta answers questions on the minds 

of trademark owners and practitioners in—or 

looking to expand into—India. 

What is your professional background, and 

how did you come to work with CGPDTM and 

with IP in general? 

I graduated with a degree in mechanical engineering 

and became an officer of the Indian 

Administrative Service. The head of the country’s 

IP office is appointed by the Government 

of India and chosen on a merit-cum-selection 

basis from the Indian Administrative Service 

officers who have engineering or post-graduate 

science degrees. The development of 

intellectual property rights in India (after India 

became signatory to the TRIPS Agreement) was 

an upcoming and developing field, and this 

piqued my interest and encouraged me to join 

the office. 

Everyone knows of the challenges being faced by IP 

stakeholders in India, but what are the challenges 

that you face as Controller General? 

As Controller General, one of the major 

challenges I face is to speed up intellectual 

property registration, specifically with respect 

India Global Advisory Council 

Co-Chairs 

Ranjan Narula, RNA IP Attorneys, India 

Shwetasree Majumder, 

Fidus Law Chambers, India 


Murlidhar Balasubramanian, 

Castrol India Limited, India 

Shailendra Bhandare, Khaitan & Co., India 

Vikram Grover, Groverlaw, India 

Abhayan Jawaharlal, CIPLA Ltd., India 

Latha Nair, K&S Partners, India 

Samta Mehra, Remfry & Sagar, India 

M.S. Bharath, Anand & Anand, India 

Shilpa Joshi, Mahindra & Mahindra 

Limited, India 

Rick McMurtry, Turner Broadcasting System, 

Inc., United States 

Sarita Joglekar, Reliance Industries Limited, 

India 

Hemant Singh, Inttl Advocare, India 

Staff Liaison 

Gauri Kumar, India Consultant 

gkumar.consultant@inta.org 

to patents and trademarks. Stakeholders 

have historically experienced long waits due to 

large-scale pendency in offices. To meet this 

objective, recruitment of new staff, improvements 

and automation of existing processes, 


19


Interview continued from page 19 

and upgrading of technical resources are key 

challenges. 

In line with the government’s “Make-in-India” and 

“Start-up India” campaigns, as well as the National 

IPR Policy, what steps are being considered by 

CGPDTM for increasing IP awareness? 

In the National IPR policy, one of the main 

objectives is increasing IP awareness, not 

only among stakeholders, but also among the 

general public across the country. Accordingly, 

the IP Office of India has had discussions with 

various stakeholders, including industry associations, 

research and academic institutions, 

and IP professionals/facilitators. We have 

worked out a plan for conducting workshops, 

seminars, and awareness programs to be held 

in schools and colleges apart from various 

cities and universities in cooperation with the 

relevant stakeholders. 

To give effect to the National IPR Policy, the DIPP 

seeks to bring down the time taken for the first 

examination of a trademark application from the 

present 13 months to one month by March 2017. 

What improvements in the current IP administrative 

framework at the Trademarks Registry are necessary 

in order to achieve this objective? 

To achieve the objective of reducing pendency 

of examination in trademarks from 13 to 

one month, the following strategy has been 

put into place: 

The Trade Marks Registry has enhanced its 

workforce by hiring 100 examiners; 

• Automation of processes relating to registration, 

renewal, and other related activities has 

been implemented; 

• Intensive training of examiners and other officers 

so as to reduce superfluous objections 

on absolute and relative grounds, thereby 

speeding up the process as a whole; and 

• Setting up quality control mechanisms so as 

to ensure that unsupported objections to applications 

are filtered and reexamined before 

issuance of the formal examination report, 

thereby increasing the number of accepted 

and published applications. 

The above steps have resulted in increasing 

the acceptance of applications for publication 

from around 9 percent to 33 percent, thereby 

reducing pendency at subsequent stages. 

Through the automation of the registration 

process, published applications (with no 

opposition or deficiency) automatically get 

registered and the electronic registration certificate 

is issued to the applicant. These steps 

have resulted in reduction of first examination 

pendency to less than five months currently, 

and will be brought down to one month or less 

before March 2017. 

These steps have resulted 

in reduction of first examination 

pendency to less 

than five months currently, 

and will be brought down 

to one month or less before 

March 2017. 

Are there any new initiatives on further digitization of 

records and communication via electronic mail? 

The Trade Marks Registry has taken several 

steps toward automation of the entire registration 

process. Accordingly, all applications are 

digitized at the application stage itself and further 

processing takes place through electronic 

module only. All communications are generated 

and uploaded, and the same is digitally available 

to applicants along with their applications. 

Applicants can file their responses and other 

communications electronically and, only when 

the applicant insists, does any formal postal 

communication take place. The examination report, 

registration certificate, renewal certificate, 

and other correspondence in between is also 

sent to the applicant by electronic mail only. 

What do you expect for the future of the Indian 

trademark regime? 

The Indian trademark regime has undergone 

various changes already and the process will 

be completed once the new amended trademark 

rules come into force in the near future. 

I expect that the steps already taken and the 

proposed steps being taken in the future will 

result in new applications (without deficiency or 

opposition) being registered in less than a seven-month 

period from March 2017 onwards. 

Also, with the induction of more officers in the 

Trade Marks Registry, the pendency clearance 

in opposition matters and disposal of objected 

cases will also speed up in the near future. 

What is your advice to trademark owners looking to 

expand into India? 

In addition to many positive changes, as elaborated 

above, India is also a Receiving Office for 

the Madrid Protocol, which enables international 

trademark applicants to obtain early 

registration and subsequent protection in India 

by designating India, and vice versa for domestic 

applicants, who can choose India as the 

First Filing Office (Receiving Office) for getting 

registration and subsequent protection in other 

countries by designating them as Designated 

Office. Trademark owners should take advantage 

of these mechanisms to start or expand 

their business in India and abroad. 

Fast Facts 

The Office of Controller General of Patents, 

Designs & Trade Marks 

Boudhik Sampada Bhawan, 

S.M. Road, Antop Hill 

Mumbai-400 037 (India) 

Departments/Registries under the CGPDTM: 

i. Patent Office at Kolkata, Mumbai, 

Chennai, and Delhi 

ii. Trade Marks Registry (TMR) at Mumbai, 

Delhi, Chennai, Kolkata, and Ahmedabad 

iii. Design Office at Kolkata 

iv. Geographical Indications Registry at 

Chennai 

v. Rajiv Gandhi National Institute of 

Intellectual Property Management at 

Nagpur 

vi. Copyright Office at Delhi 

Date O.P. Gupta appointed as CG: 

Shri O.P. Gupta joined as CGPDTM on 11- 

16-2015. 

Number of trademark applications received 

2015: 264,558 

Number of Madrid filings 2015 (1-1-2015 to 

12-31-2015): 

10,682 

Which includes: 

10,500 international registrations seeking 

protection of trademarks in India as notified 

by WIPO; and 

182 domestic applications for international 

registration of trademarks under the 

Madrid Protocol. 

Total Madrid applications received by TMR India 

up to 12-31-2015: 

20,472, with 20,094 as notified by WIPO 

and 378 domestic applications 



In the News 

New Logo for CIPAM 

On October 19, Nirmala Sitharaman, Minister 

of State (Independent Charge) for Commerce 

& Industry, unveiled the new logo of the Cell for 

IPR Promotion and Management (CIPAM) 

CIPAM functions under the aegis of the Department 

of Industrial Policy & Promotion (DIPP), 

and was set up pursuant to the National IPR 

Prominent International Use Trumps Local 

Registration and Use 

The Delhi High Court’s July 8, 2016, ruling in 

Toyota Jidosha Kabushiki Kaisha v. Deepak 

Mangal & Ors, C.S. (O.S.) No. 2490 of 2009, 

held that prior international use of well-known 

marks could trump rights stemming from domestic 

use and registration. 

The plaintiff (Toyota) sought to register PRIUS 

as a trademark, only to discover it had already 

been registered by the defendants, which had 

been manufacturing and selling auto parts/ 

accessories under the trade name “M/s Prius 

Auto Industries” and “M/s Prius Auto Accessories 

Pvt. Ltd.” since 2001. Additionally, the 

packaging on some of the defendants’ goods 

prominently displayed the TOYOTA mark and device 

as well the INNOVA mark—both proprietary 

to the plaintiff. 

Alleging misuse, Toyota filed a suit seeking a 

permanent injunction against infringement 

of TOYOTA/INNOVA/TOYOTA DEVICE and to 

halt the passing off of its trademark PRIUS. It 

also sought and obtained an ex parte interim 

injunction restraining the defendants from 

using the disputed trademarks, but this was 

vacated when the defendants appealed. In a 




Guide 

Global Portal 






Policy to facilitate the promotion, creation, and 

commercialization of IP assets. 

setback, Toyota’s further appeal before a twojudge 

bench was also dismissed, and though 

the order did curb the defendants’ use of the 

TOYOTA and INNOVA marks during trial, use 

was permitted for describing the nature/use of 

the defendants’ products. 

In the main suit, the High Court ruled that the 

defendants’ use of the marks was not descriptive; 

it constituted trademark use and, since it 

was unauthorized, the defendants were liable 

for infringement of Toyota’s Indian registrations. 

With respect to the passing off claim, the court 

relied on precedent to establish that common law 

rights were independent of statutory rights; thus, 

even though the defendants had prior PRIUS 

registrations in India, this had no bearing on the 

plaintiff’s standing to file a passing-off action. 

The defendants’ earliest registration for PRIUS 

dated from 2002. In contrast, Toyota sold its 

first Prius car in India in 2010. However, Toyota 

submitted voluminous evidence to show the 

1990 origins of the PRIUS brand; how the PRI- 

US commercial launch in 1997 as the first hybrid 

vehicle in the world had been immediately 

met with widespread success and renown; and 

that this renown had spilled over into India 


INTA’s letter to Indian Law Minister on the 

issues surrounding Section 115 (4) of the 

Indian Trade Marks Act, 1999 

INTA Comments on India’s Draft National 

IPR Policy 

Annexure A 

Annexure B 

INTA Comments on India’s Draft Trade Marks 

(Amendment) Rules 

Presiding over the logo launch, DIPP Secretary 

Ramesh Abhishek discussed the pivotal role of 

IPR policy in protecting the public interest, as 

well as promoting creativity and innovation in 

the country. He said that the CIPAM logo has 

been designed keeping in mind the clarion call, 

“Creative India; Innovative India” as the Cell 

is tasked with the crucial role of achieving the 

objectives of the IPR policy. 

well prior to 2001, when the defendants had 

commenced use. 

The High Court concurred and—in an unusual 

ruling on an unregistered mark—declared that 

PRIUS had attained the status of a “well-known 

mark” in India. Relying upon the Supreme 

Court’s seminal decision in Milment Oftho, 

2004 (28) PTC 585, it held that establishing 

prior rights in such a case involved determining 

who had prominence in the world market. It 

also held that reputation in the technological 

age could exist even without trade of a product 

in a country. 

With their long history in the automobile business, 

the court found it implausible that the 

defendants had remained unaware of Toyota’s 

rights. The charge of passing off was, therefore, 

upheld. An order of permanent injunction 

was issued and punitive damages were calculated 

at INR 1 million (about US $14,900). 

Contributor: Bisman Kaur 

Remfry & Sagar, Gurgaon, India 

INTA Bulletins Asia-Pacific Subcommittee 

Verifier: Shailendra Bhandare 

Khaitan & Co, Mumbai, India 


INTA Suggestions on Opposition Proceedings 

at the Indian Trade Marks Registry 

Department of Industrial Policy 

and Promotion 

IP India 

Spicy IP (blog) 

21

Global Report: Latin America 

INTA-ASIPI Project Team Publishes 

Latin America Global Advisory Council 

Trademarks in Latin America 

A Spanish version of the first study undertaken 

by INTA and Asociación Interamericana de la 

Propiedad Intelectual (ASIPI) was published 

on December 15, 2016, and is available here. 

INTA and ASIPI collaborated on the study to 

determine the impact of trademark-intensive 

industries on the economies of Chile, Colombia, 

Mexico, Panama, and Peru. The study 

was first announced during a series of launch 

events taking place in all five countries included 

in the study. 

The Project Team assembled to develop the 

study included Sergio Barragan (Mexico), Juan 

Berton Moreno (Argentina), Marissa Lasso de 

la Vega (Panama), Ramón Benedetti (Panama), 

Gregg Marrazzo (USA), Mónica Wolf de Camhi 

(Colombia), Jaime Durand (Peru), Francisco 

Silva (Chile), Justin Young (USA), and Luis 

Alejandro Henríquez (Venezuela). The Project 

Team and ISC worked together when appropriate. 

The ISC gratefully ackowledged the 

Project Team for sharing their experiences and 

best practices, which have helped shape the 

processes for future studies. 

Overall, the results of the study are positive. 

Across the five countries, trademark-intensive 

industries generated 8 to 26 percent of total 

employment; and 10 to 21 percent of GDP. 

This is equivalent to 18.5 million jobs and a 

value added per person of US $2,390 annually. 

These results underscore the huge potential 

for economic growth that can be unlocked by 

promoting trademarks within the business 

Trademarks in 

Latin America 

A study of their economic 

impact in five countries 

in the region 

(Chile, Colombia, Mexico, 

Panama, and Peru) 

communities, and by further developing 

national trademark systems and trademark-intensive 

industries. 

The study is intended to be used as a basis 

for raising awareness of trademarks and their 

value to a country’s economy, and to support 

policymakers in developing related legislation. 

The English version will be published in the 

coming weeks. 

Additional studies in the pipeline include 

studies on the economic and social impact of 

counterfeiting and piracy and an ASEAN economic 

impact study. 

Latin America Global Advisory Council 

Co-Chairs 

Gustavo Giay, Marval, O’Farrell & Mairal, 

Argentina 

Vianey Romo de Vivar, Romo de Vivar IP 

Services, S.C., Mexico 


Sergio Barragan, PepsiCo, Inc., Mexico 

Jacobo Cohen Imach, MercadoLibre.com, 

Argentina 

Agustina Fernandez Giambruno, Fernandez 

Secco & Asociados, Uruguay 

Luis Alonso Garcia, Estudio Echecopar 

(Baker & McKenzie International), Peru 

Elisabeth Kasznar Fekete, Kasznar 

Leonardos Intellectual Property, Brazil 

Rodrigo Marre, Mackenna, Irarrazaval, 

Cuchacovich & Paz, Chile 

Hugo Moran R., Icaza, Gonzalez-Ruiz & 

Aleman, Panama 

Gerardo Munoz de Cote, Televisa, 

S.A. de C.V./Mountrigi Management 

Group Ltd., Mexico 

Urko Ochoa, Minino, Dominican Republic 

Graciela Perez de Inzaurraga, Hausheer 

Belgrano & Fernandez, Argentina 

Monica Wolf de Camhi, Wolf Mendez 

Abogados Asociados, Colombia 

Staff Liaison 

Gabrielle Doyle, Associate, 

External Relations, Latin America 

gdoyle@inta.org 


INTA Delegation Travels to Buenos Aires for 

ASIPI Event, Government Meetings 

From December 4–7, 2016, INTA President 

Ronald Van Tuijl (JT International, SA, Switzerland) 

and External Relations Senior Associate 

for Latin America, Gabrielle Doyle, attended 

the XIX Work Sessions and Administrative 

Council of the Inter-American Intellectual 

Property Association (ASIPI), held in Buenos 

Aires, Argentina. Mr. Van Tuijl and Ms. Doyle 

took the opportunity to meet with government 

officials, local associations, and members 

from the region to discuss collaboration projects 

and current events in Latin America and 

the Caribbean. 

The INTA delegation, which included Latin 

American and Caribbean members as well as 

INTA representatives, met with a variety of IP 

offices from the region. On December 5, the 

delegation met with Ray Meloni, Director of the 

Distinctive Signs Division of Peru’s Commission 

of the National Institute for the Defense of 

Competition and Protection of Intellectual Property 

(INDECOPI) to discuss IP office updates in 

Peru and the dissemination of the Latin America 

Impact Study. The INTA delegation also met 

with Damaso Pardo, President of the Argentina 

National Institute of Industrial Property (INPI); 

Carlos Gallo, the Director of Trademarks; 

Matias Schweizer, INPI official; and Mercedes 

Cullen, International Relations Coordinator at 

2016 INTA President Ronald van Tuijl presents the INTA- 

ASIPI Latin America Impact Study during ASIPI’s XIX Work 

Sessions and Administrative Council. 

INPI. This was INTA’s first official one-on-one 

meeting with Dr. Pardo and his team. The 

discussion included collaboration events for 



2017 and INPI’s modernization plans for the 

next three years. 

On December 6, 2016, INTA held a meeting 

with Eliseo Montiel Cuevas, Director of Trademarks 

at the Mexican Institute of Industrial 

Property (IMPI), in which they touched on the 

success of the 4th Annual Training Seminar 

that took place in October 2016, and discussed 

plans for the 2017 event. Later that 

day, the National Institute of Industrial Property 

Chile (INAPI) gave a presentation to the INTA 

delegation on the vast updates the Office made 

in 2016 and their online portal titled “INAPI 

Proyecto.” INTA ended the day with a meeting 

with President of the Andean Community 

Tribunal of Justice, Justice Hugo Gomez Apac. 

The INTA delegation learned of the Tribunal’s 

modernization efforts and commended the Tribunal’s 

various initiatives to advance processes. 

Finally, the delegation met with the USPTO 

IP Attaché for Mercosur, Laura Hammel, and 

Maria Beatriz Dellore, Regional Legal Advisor 

for Intellectual Property, and talked about 

the USPTO’s view of the region in terms of 

challenges and opportunities for cooperation. 

INTA looks forward to working together on joint 

events in 2017. 

During the ASIPI Congress, INTA also had the 

opportunity to meet with the presidents of 

the national IP associations of Argentina and 

Brazil, Carolina Fernandez of the Argentina 

Association of Intellectual Property Agents 

(AAAPI), and Maria Carmen de Souza Brito of 

the Brazilian Intellectual Property Association 

(ABPI), respectively. Each president presented 

on the status of IP in her respective country 

and the possibility for joint collaboration projects 

with INTA. 

INTA ended the ASIPI Congress with a high-level 

presentation of the just-released Latin 

America Impact Study. The study was officially 

announced, and released to the public, during 

a series of launch events that took place in the 

five countries included in the study, namely, 

Chile, Colombia, Mexico, Panama, and Peru. 

Each event was organized in collaboration with 

ASIPI and each country’s respective IP office 

and included a press conference and roundtable 

meeting with government officials. The 

Spanish version of the study is available here. 

The English version will be published in the 

coming weeks. 

At the ASIPI Work Sessions presentation, Mr. 

van Tuijl, ASIPI President Maria del Pilar Troncoso, 

and ASIPI/INTA Impact Study Project Team 

Co-Chair Juan Berton Moreno (Berton Moreno 

INAPI Director Maximiliano Santa Cruz, President of 

the National Chamber of Commerce Ricardo Mewes, 

INTA CEO Etienne Sanz de Acedo, and ASIPI Vice 

President Rafael Covarrubias at the Impact Study 

Launch Event in Santiago, Chile. 

& Asociados, Argentina), provided attendees 

with an overview of the study, including the 

reason for its development, methodology, the 

value of the results, and next steps. Attendees 

at the panel included IP office representatives, 

corporations, and local members. 

For more information on the Latin America 

Trademark Impact Study or INTA’s initiatives in 

Latin America, please contact Gabrielle Doyle 

at gdoyle@inta.org. 

INTA Organizes Fourth Annual IMPI/INTA Training 

Seminar in Mexico City 

From October 26–27, 2016, INTA and the 

Mexican Institute of Industrial Property (IMPI) 

hosted their fourth Annual Training Seminar 

at the IMPI Offices in Mexico City, Mexico. The 

annual Seminar unites INTA’s Trademark Office 

Practice Committee’s Latin America Subcommittee 

and the Government Officials Training 

Committee, which together organize the event. 

The two-day seminar included both industry 

and trademark examination-focused presentations 

for the examiners at IMPI, featuring 

experts from around the world. Opening remarks 

were delivered by Eliseo Montiel Cuevas, 

Director of Trademarks at IMPI, and Gabrielle 

Doyle, INTA External Relations Senior Associate 

for Latin America. 

Trademarks and Certification Marks 

The session on October 26, 2016, highlighted 

trademark-specific issues in the area of certification 

marks, as presented by Paul Brown (UL, 

USA), and Rodolfo Consuegra (ANCE, A.C., Mexico), 

and was moderated by the Government 

Official Training Committee IMPI Subcommittee 

Chair Britt Anderson (K&L Gates, LLP, USA). 

Following these informative presentations 

Paul Brown (UL, USA), speaks to participants about 

the certifications marks industry. From left to right: 

Todd Reves (USPTO, USA), Rodolfo Consuegra (ANCE 

(Mexico), Vianey Romo de Vivar (ROMO DE VIVAR V.IP 

SERVICES, S.C., Mexico), and Paul Brown. 

was a Q&A session moderated by Government 

Officials Training Committee Chair Vianey Romo 

de Vivar (Romo de Vivar V.IP Services, Mexico) 

and the USPTO IP Attaché for Mexico, Central 

America, and the Caribbean, Todd Reves. 

Trademark Examination after TPP and Mexican 

Opposition System 

The second day of the seminar focused on 

trademark examination issues, particularly 

best practices for examiners with respect to 

nontraditional marks and opposition procedures. 

The presentation topics were selected 

based on the new and pending updates to the 

trademark examination guidelines following the 

requirements in the Trans-Pacific Partnership 

(TPP) Agreement. The presentation on non-traditional 

marks, by Victor M. Adames (Becerril, 

Coca & Becerril, S.C., Mexico), member of the 

INTA Trademark Office Practices Latin America 

Subcommittee and Catalina Lozada Brown 

(Arochi & Lindner, Mexico), member of the INTA 

Non-Traditional Marks Latin America Subcommittee, 

focused primarily on sound marks. The 

Opposition Procedures presentation by Alvaro 

Huerta (Malpica, Iturbe, Buj y Paredes, S.C, 

Mexico) and Alfredo Pineda (Hogan Lovells, 

Mexico), members of the INTA Enforcement 

Committee Oppositions and Cancellations 

Subcommittee, covered best practices for 

examiners following the implementation of 

the trademark opposition system in Mexico in 

January 2016. 

For more information on INTA’s activities in 

Latin America, please contact Ms. Doyle at 

gdoyle@inta.org. 

23


In the News 

ARGENTINA: Foreign Trademarks Protected against 

Bad Faith Registrations 

Division I of the Federal Court of Appeals in Civil 

and Commercial Matters of the City of Buenos 

Aires confirmed the lower court’s decision in Velasco 

Baquedano, Juan Ignacio v. Agrícola San 

José de Peralillo S.A. on April 5, 2016. The decision 

allowed an opposition filed by the defendant, 

owner of the marks ANTU and ANTU NINQUÉN in 

Chile and other countries, but not in Argentina. 

The plaintiff filed a complaint requesting that 

the opposition filed against his trademark 

application for ANTU in Class 25 be declared 

ungrounded. He said that he was well-known in 

the wine industry and that at the time of filing 

the opposition, the defendant had no local 

rights to ANTU. 

The defendant argued that it had registered 

the marks ANTU and ANTU NINQUÉN for wines 

in Chile and the United States, and ANTU in 

the European Union, before the plaintiff’s 

application. The company said that the ANTU 

NINQUEN wine was exported from Chile to 21 

countries, having received awards from 2005 

to 2011. The company also claimed that it had 

opposed the plaintiff’s mark as it was a slavish 

imitation of their mark. 

The Court of First Instance rejected the complaint. 

On appeal, the Federal Court of Appeals 

held that notoriety required two elements: 

broad knowledge of the sign (to be known by 

all the public and not only by the purchaser of 

the relevant market) and people spontaneously 

connecting the sign with the product. 

The Court of Appeals ruled that the notoriety of 

the opposing mark had been proven. Moreover, 

it added that, upon conducting an Internet 

search of the keywords “ANTU wines,” it found 

several articles and photos of the products sold 

by the defendant, and an even larger number 

of articles and photos in the case of the mark 

ANTU NINQUÉN. 

The court added that the marks were identical 

and protected wines. It mentioned that the Mapuche 

word ANTU (related to the sun) was not 

commonly used and people could be confused 

regarding the origin of the products. 

The Court of Appeals concluded that it was 

reasonable to accept that the plaintiff must 

have known of the existence of the foreign 

mark ANTU, pointing out that such knowledge 

constituted an act of unfair competition. 

Finally, the court held that, on account of the 

circumstances of the case and regardless of 

the local and foreign renown and reputation 

of the mark, the plaintiff had tried to copy 

the foreign trademark ANTU, adding that the 

plaintiff had illegally attempted to register the 

trademark ANTU in order to unlawfully benefit 

from its prestige and renown. 

The case is an example of the protection granted 

by Argentine courts to foreign marks that 

have not been locally registered against bad 

faith registration attempts. 

Contributor: Diego Laurini 

Estudio Gold, Buenos Aires, Argentina 

INTA Bulletins Law & Practice—Latin America 

Subcommittee 

Verifier: Claudia Serritelli 

Estudio Chaloupka, Buenos Aires, Argentina 

INTA Bulletins Features Subcommittee 

BRAZIL: New Regulation on Trademark Disclaimers 

Comes into Force 

On June 1, 2016, Resolution No. 166/2016, 

issued by the National Institute of Industrial 

Property (INPI), came into force, setting out 

new rules regarding trademark disclaimers in 

Brazil. 

The resolution establishes that all trademark 

registrations will be issued containing the 

following standard disclaimer: “the protection 

conferred by this registration is limited by 

article 124, paragraphs II, VI, VIII, XVIII and 

XXI, of Law No. 9.279, of May 14, 1996.” The 

paragraphs contained in the default disclaimer 

refer to legal impediments based on lack of 

distinctiveness, such as paragraph VI, which 

deals with the prohibition against the registration 

of colors and their denominations unless 

displayed or combined in a peculiar and distinctive 

fashion. 

Before this resolution, INPI had issued different 

types of disclaimers for each case, which 

might explain, for instance, that the mark was 

being granted with protection as a whole or 

that a certain part or element of the mark remained 

free. 

The standard disclaimer now adopted will not 

contain an explanation from INPI as to which 

part has been protected and what has been 

left out. It will also not contain any indication 

of which specific legal impediment was considered 

by the examiner. 

All future registrations as well as applications 

granted as of February 23, 2016, which had 

the corresponding certificates of registration 

still pending at the date of entry into force 

of the resolution, will receive the standard 

disclaimer. Certificates of renewal and official 

copies of old certificates will also feature the 

default disclaimer. 

INPI indicated on the resolution that the standard 

disclaimer is expected to expedite the 

examination of trademark applications and 

create consistency in future disclaimers issued 

by the Office. 

However, there may also be downsides. The 

number of conflicts brought before INPI and 

before judicial courts may dramatically increase, 

since there will be space for a wide 

range of interpretations regarding the scope of 

protection conferred by the registrations. 

Some critics have stated that INPI has transferred 

to the judiciary its duty of examining the 

elements that deserve protection in a given 

mark when issuing the appropriate disclaimers, 

which is prohibited by the Brazilian legal system, 

on both constitutional and infra-constitutional 

levels. 

The market and IP practitioners will have to adjust 

their practices and, where there is a lack 

of clarity, resort to the judiciary. 

Contributor: Conrado Vieites Novaes de Freitasi 

Ouro Preto Advogados, Rio de Janeiro, Brazil 

Verifier: Rodrigo Borges Carneiro 

Dannemann Siemsen Bigler & Ipanema Moreira, 

Rio de Janeiro, Brazil 


Subcommittee 



CAYMAN ISLANDS: Trade Marks Bill Would Update 

Local Trademark Regime 

Ms. Van Deusen Hely is Co-Chair and Ms. 

Pearson is a member of the INTA Bulletins Law 

& Practice—Latin America Subcommittee. 

On August 31, 2016, the Cayman Islands issued 

Trade Marks Bill, 2016. Once passed, the 

new law would completely overhaul the current 

trademark regime. An implementation date for 

the new law has not yet been set. 

Perhaps most notably, the bill provides for a fully 

local registration system and abolishes the 

current system, which requires trademark owners 

to file on the basis of an already-registered 

UK mark, EUTM, or International Registration 

designating the UK. Of the English-speaking 

Caribbean jurisdictions, the Cayman Islands is 

the last jurisdiction without a local registration 

system in place. 

Although the current system of registration 

can be quite quick, it may also frustrate mark 

owners that have no need for a European 

registration. Without one of the prerequisite 

registrations, mark owners currently have no 

way to register their marks locally in the Cayman 

Islands. 

Also, under the current system, applications 

are granted as a right, as the local registry 

relies on the prior examination of the base 

registration. Once the new law is implemented, 

applications will be examined on both absolute 

and relative grounds and be subject to opposition 

by third parties. 

Once enacted, the Cabinet of the Cayman 

Islands will have regulatory powers relating to 

the laws, including the power to determine the 

effective date, trademark fees, and transitional 

regulations, among other things. It is not clear 

how existing registered marks will be treated 

under the new law, particularly with respect 

to renewal. Under the current law, the term of 

registration for the Cayman mark is the same 

as that of the underlying registration to which 

the mark is based, no matter the date of local 

filing. Marks to be registered under the new law 

will be registered for a term of ten years from 

the date of registration. The official registration 

date will date back to the filing date. There will 

be a six-month grace period for late renewal. 

Mark owners must continue to pay annual fees 

each year to maintain their marks. While the 

new fees have not yet been set, it is unlikely 

they will decrease under the new system. As 

was noted in an earlier INTA Bulletin article, 

trademark owners can no longer pay annual 

fees in advance. Instead, annual fees must be 

paid between January 1 and March 31 of the 

year in which they are due to retain the mark in 

good standing. 

Contributor: Katherine Van Deusen Hely 

Caribbean IP, West Palm Beach, Florida 

Verifier: Kathryn Pearson 

Livingston Alexander & Levy, Kingston, Jamaica 

COLOMBIA: Good News for Tactile Trademarks: 

The “Old Parr” Bottle Case 

In a June 2, 2016, decision of the Superintendencia 

de Industria y Comercio (SIC), a registration 

was granted to the Dutch company, 

Diageo Brands B.V., for a tactile trademark. 

On February 27, 2015, Diageo filed a tactile 

trademark application in Colombia for the 

crackle-glass texture of their Old Parr Whisky 

bottle (see right). During the substantive examination 

of the application, the SIC requested 

a prejudicial interpretation before the Andean 

Court of Justice (ACJ) concerning the eligibility 

of tactile trademarks for registration. 

In Decision 242-IP-2015, the ACJ issued the 

preliminary ruling accepting the registrability 

of tactile trademarks, as long as they show 

distinctiveness with the following two requirements: 

• A clear, precise, and specific description, 

including a 3D drawing or a photograph of 

the product; and 

• A physical sample of the product. 

Diageo’s tactile trademark application and the 

ACJ prejudicial interpretation have provided the 

foundation for tactile trademark registration 

in Colombia. In the June 2 decision of SIC, 

an application was granted to Diageo for the 

following description of texture (see above): 

A wrinkled, cracked, hard texture (surface), 

that is, striated or scraped in the form of an 

agglomeration of irregular geometric shapes 

which include mainly, pentagons, rhomboids 

and hexagons, which shared walls are between 

3 and 6 millimeters long, 0,08 and 0,5 millimeters 

high and between 0,1 and 1 millimeters 

wide. Walls and areas contained in the walls 

are smooth. The material in which this texture 

is used will be a glass in amber color and will 

be used in different sizes. 

The cited ACJ prejudicial interpretation has 

been very important, not only for the Old Parr 

bottle case, but also—and most importantly—for 

the future of tactile trademarks in Colombia. 

On February 2, 2016, SIC enacted Resolution 

3718/2016, regulating the filing of nontraditional 

trademarks in Colombia. The requirements 

fixed by the ACJ prejudicial interpretation are 

now mandatory for filing tactile trademarks. 


25



Despite the fact that registrations protecting 

the texture of the Old Parr bottle have already 

been granted in other jurisdictions, such as 

Ecuador and the United States, this marks the 

first tactile trademark registration in Colombia. 

For local trademark practice and rights owners 

in Colombia and abroad, this is excellent news, 

as the time has come to protect the creativity 

and investment of companies and product designers 

that create textures that are distinctive 

enough to obtain trademark protection. 

Contributor: José Roberto Herrera 

Herrera Díaz Abogados, Bogota, Colombia 

Verifier: Pedro Vilhena 

Kasznar Leonardos Advogados, Brazil 

COLOMBIA: New Software for Managing 

Trademarks Launched 

On July 18, 2016, the Superintendencia de 

Industria y Comercio (SIC) launched a new 

technology platform (SIPI) to manage and 

handle all aspects of trademark and patent 

prosecution in Colombia. 

With this new software, the SIC has taken another 

step in its process of modernization and 

adaptation toward international standards 

regarding the management of trademarks, 

patents, and industrial designs. The hope 

is that all of the procedures and paperwork 

related to registration, appeals, cancellations, 

recordal of assignments, changes of names, 

changes of domiciles, and renewals will be 

able to done online, including the presentation 

of evidence. 

Furthermore, the SIC is in the process of 

improving the process of revising and correcting 

its database of trademark registrations 

and applications, which contains more than 

700,000 trademarks. It is expected that with 

this revision and the new system, the reliability 

of information about the intellectual property 

protected in Colombia will be enhanced. 

Among the new tools, SIPI will provide the 

possibility of keeping information on patent 

and trademark owners up to date in a more 

agile and efficient manner. Because all of the 

information in the files will be digital, the hope 

is that the examiners’ reviews of the relevant 

information will be available more quickly and 

will be more precise. At the same time, SIPI will 

introduce a new electronic payment method 

focused on making the trademark and patent 

filing procedure a much easier task. 

Likewise, with SIPI, one will be able to access 

the trademark class in order to make product 

descriptions. Examiners will be able to discuss 

salient points with the representatives in case 

any doubts arise during the administrative 

process. This will be done by implementing 

a system based on tasks and conversations 

that each representative will receive every day 

according to the different requirements that 

arise during the administrative process. It’s 

important to take into account that SIPI will 

allow representatives to view and reply to those 

requirements in a very intuitive way, providing 

the possibility of attaching digital files and images 

instead of filing them in a physical way. 

In addition, Colombia’s Industrial Property Gazette 

will be published more regularly and will 

include direct access to the digital dossier of 

the application, making it possible to present 

evidence supporting oppositions in a more 

effective manner. 

The intellectual property community views this 

software as extremely positive for IP owners. It 

will almost certainly allow the SIC to improve its 

industrial property procedures and make their 

responses more timely. 

Contributor: Tatiana Carrillo 

Lloreda Camacho, Bogota, Colombia 

Verifier: Gerardo Florez 

Philippi Prietocarrizosa & Uria S.A.S., 

Bogota, Colombia 


Subcommittee 

JAMAICA: Seek and Ye Shall NOT Find: New Rules for 

Searches at JIPO 

On September 20, 2016, the Jamaica Intellectual 

Property Office (JIPO) issued a notice to its 

customers stating that trademark searches done 

via JIPO’s publicly available computers would be 

limited to searches for “obtaining information on 

specific trade marks and trade mark clearance 

searches, i.e. checking if a similar or identical 

trade mark has been filed.” Proprietor and date 

range searches, among other types of searches, 

will no longer be available, except “upon request 

and payment of the requisite fees.” 

The most notable change in practice is that of 

the newly restricted proprietor searches. Prior 

to this change in policy and the issuance of this 

notice, it was possible for any member of the 

public to use public computers at JIPO’s New 

Kingston offices to search for the trademark 

holdings of any person or entity. The information 

supplied would include details on pending 

applications not yet accepted for registration 

and not yet published in the Trade Marks 

Journal. With this new policy in place, it will no 

longer be possible to get this type of information 

in this manner, although applicants can 

still use JIPO’s facilities for trademark clearance 

searches. 

The trademark statute and regulations are not 

clear as to whether unpublished applications 

should be accessible to searching, and so it is 

possible that JIPO’s position could change in 

the future. 

Contributor: Kathryn Pearson 

Livingston Alexander & Levy, Kingston, Jamaica 

Verifier: Katherine Van Deusen Hely 

Caribbean IP, West Palm Beach, Florida 

Ms. Pearson is a member and Ms. Van Deusen Hely 

is Co-Chair of the INTA Bulletins Law & Practice— 

Latin America Subcommittee. 



MEXICO: Burden of Proof in Trademark Invalidation 

Actions Clarified 

In a binding decision published July 1, 2016, 

Contradicción de tesis 9/2016; tesis PC.I.A. 

J/78 A (10a.), a Mexican appellate court resolved 

a conflict between previous decisions 

regarding the burden of proof in trademark invalidation 

actions brought on the basis of false 

statements in the application. 

The court held that the burden in these actions 

falls on the plaintiff, reversing years of practice 

by the Mexican Institute for Industrial Property 

(IMPI) and earlier jurisprudence of IMPI’s primary 

reviewing court. 

A trademark registration may be declared 

invalid under Article 151.III of the Industrial 

Property Law (LPI) if it was granted on the basis 

of an application containing false information. 

Typically, cases under Article 151.III involve 

dates of first use. 

The LPI is silent on the burden of proof under 

Article 151.III. However, under Article 81 of 

the Federal Code of Civil Procedure, a plaintiff 

must prove the facts that form the basis of its 

action. Also, Articles 82.I and 82.II of the Code 

state that a party that denies a fact need only 

support the denial with evidence if the denial 

involves the express affirmation of another fact 

or if it seeks to rebut a legal presumption. The 

application of these principles to cases arising 

under Article 151.III was subject of great debate 

between plaintiffs and registrants. 

Historically, IMPI has placed the burden of proof 

on the registrant, reasoning that the documents 

required to prove the truth or falsity of a 

claimed date of first use are in the possession 

of the registrant. IMPI’s primary reviewing court, 

the Federal Court for Fiscal and Administrative 

Justice (TFJFA), reached the same conclusion in 

a binding decision published in 2006, tesis V-J- 

SS-90. However, the Collegiate Circuit Courts for 

Administrative Matters of the First Circuit, which 

review decisions of the TFJFA, have issued conflicting 

decisions. 

The recent decision, published by the Plenary 

of the Collegiate Circuit Court for the First 

Circuit, resolves the issue by placing the burden 

of proof on the plaintiff. The court reasoned 

as follows: 

• As a general rule, that which is ordinary may 

be presumed, while that which is extraordinary 

must be proven; 

• An applicant for trademark registration 

need not provide evidence to corroborate its 

claimed date of first use. In other words, the 

LPI presumes the good faith of the applicant 

and the accuracy of the date of first use 

claimed in the application; 

• Because of this presumption, a plaintiff 

seeking the invalidation of a trademark 

registration under Article 151.III is claiming 

something “extraordinary” (an incorrect date 

of first use) which must be proven; and 

• Further, from a public policy standpoint, placing 

the burden on the registrant to corroborate 

its claimed date of first use encourages 

the filing of baseless invalidation actions 

under Article 151.III. 

Since there is virtually no discovery under 

Mexican law, the initial burden of proof often 

determines the outcome of the litigation. Thus, 

the likely effect of the court’s decision will be to 

greatly reduce the number of successful invalidation 

claims under Article 151.III of the LPI. 

Contributor: Aldo de Landa 

Arochi & Lindner S.C., Mexico City, Mexico 

Verifier: Juan M. Alvarez 

Bufete Ocampo, Mexico City, Mexico 


Subcommittee 

MEXICO: Mexico Adopts Opposition System 

Mexico has harmonized its industrial property 

laws to international standards by incorporating 

the opposition system into its legal framework. 

As of August 31, 2016, trademark owners 

became entitled to oppose not only the registration 

of any trademark filed by third parties 

that may be considered to be infringing such 

owners’ rights but also any applications lacking 

distinctiveness, as well as any applications contrary 

to public order, moral, and good customs, 

or contravening any other legal provision. 

As in other jurisdictions, one of the opposition 

proceeding’s main objectives and advantages 

is to avoid the granting of trademark registrations 

that could invade previously conferred 

rights. Oppositions provide trademark owners 

with a solution to potentially extensive and 

expensive litigation proceedings while preventing 

the dilution of registered trademarks 

and trademark hijacking, as well as warning 

trademark owners about potential non-use 

cancellation actions. 

Even though it is not mandatory to file or 

contest an opposition, trademark owners 

should not overlook the possibility of influencing 

the animus of the examiner analyzing a 

trademark’s registrability. It is therefore worth 

evaluating this legal resource to strengthen 

and secure trademark rights. The implementation 

of a trademark watch service in Mexico 

is intended to become a common practice in 

order to monitor conflicting applications and 

either oppose their registration or contest any 

opposition filed by third parties, within the 

non-extendible 30-day term from the date of 

publication in the Industrial Property Gazette. 

Contributor: Veronique Durand 

Baker & McKenzie Mexico, Mexico City, Mexico 




Guide 

Global Portal 

International Oppositions Guide 






ABPI 

Andean Community 

ASIPI 

27

Global Report: Middle East 

Learn About Enforcement Laws in Saudi Arabia with 

INTA’s New Practice Guide 

INTA’s Publications Committee launched a new 

searchable practice guide on November 15, 

2016,titled Enforcement: An International Litigation 

Guide. Its purpose is to assist attorneys 

in addressing and answering straightforward 

client questions about basic litigation issues in 

their jurisdictions. 

Mohammad Jomoa (Kadasa & Partners, Saudi 

Arabia), a member of the Middle East Global 

Advisory Council, participated as the contributor 

for Saudi Arabia. That particular chapter 

deals with the new Gulf Cooperation Council 

(GCC) trademark law, which was adopted in 

Saudi Arabia on September 27, 2016. Subject 

to the procedure in each member state for legislative 

adoption, the law is equally applicable 

in all of the GCC member states (Saudi Arabia, 

Bahrain, Kuwait, Qatar, Oman, and the United 

Arab Emirates). 

Among other changes, the GCC trademark law 

specifically: 

• Recognizes and extends the right over prior 

In the News 

use of trademarks to disputes over ownership; 

• States that enforcement of a registered 

trademark may be challenged by defendants 

on a plea of unlawful registration; and 

• Establishes cause of action to file a cancellation 

action against trademarks registered 

unlawfully. 

It is expected that infringement cases in the 

future may be challenged via counterclaims 

within the region. Before September 27, 2016, 

such rights or causes of action were not recognized 

by Saudi courts. 

The law presents many challenges from an 

enforcement perspective for trademark rights, 

so the practice guide is a timely and useful 

contribution. 

Members may view the full database in the 

Member Resources section of INTA.org, under 

Searchable Practice Guides/Enforcement 

Guides. 

Middle East Global Advisory Council 

Co-Chairs 

Hoda Barakat (Chair), Hoda Barakat Legal 

Consultancy, United Arab Emirates 

Charles Shaban (Chair), Abu-Ghazaleh 

Intellectual Property (AGIP), Jordan 


Motasem Abu-Ghazaleh, Abu-Ghazaleh 

Intellectual Property (AGIP), United Arab 

Emirates 

Ghaida Ala’Eddein, Saba & Co. IP, Jordan 

Elie Atallah, Brand Owners’ Protection 

Group, United Arab Emirates 

Faisal Daudpota, Daudpota International, 

United Arab Emirates 

Mohammad Jomoa, Kadasa & Partners, 

Saudi Arabia 

Hady Khawand, Saba & Co. IP, United Arab 

Emirates 

Alireza Laghaee, Dr. Laghaee & Associates 

Inc. International, Iran 

Omar Obeidat, Al Tamimi & Company, 

Advocates & Legal Consultants, United 

Arab Emirates 

Staff Liaison 

Bruce MacPherson, Chief Policy Officer 

bmacpherson@inta.org 

IRAN: Judiciary Starts to Enforce New 

Criminal Procedure Law 

On April 1, 2016, the Iranian judiciary began 

enforcing the Iranian law of criminal procedure, 

which was passed two years ago and 

introduced important changes to criminal 

procedure that will have consequences for 

IP cases. 

According to the Iranian Criminal Procedure 

Law, issued on February 23, 2014 (Articles 

22, 294, 426), due process of criminal law 

has three stages: (1) a preliminary investigation 

in the prosecutor’s office (under the state 

attorney), which may end in issuing an indictment; 

(2) proceedings before the court of first 

instance primary court, which issues a ruling in 

either sentencing or acquittal; and (3) proceedings 

before the court of appeal. 

The new Islamic Penal Code, Article 19, issued 

on April 21, 2013, has classified all punishments 

into eight categories based on their 

severity. Article 19 of the new Islamic Penal 

Code defines category 7 in the following terms, 

“imprisonment from 91 days to six months; 

fines ranging between 10 million Ryials and 20 

million Ryials; between 11 and 30 lashes; deprivation 

of social rights for up to six months.” 

Article 61 of the Patents, Industrial Designs and 

Trademarks Registration Act (issued in 2008) 

prescribes the following punishment for all IP 

cases dealt with in this law: a fine of between 

10 and 50 million Ryials, or imprisonment of 

between 91 days and six months, or both. 

Taking the new classification into consideration, 

this punishment falls under category 7 

of the Islamic Penal Code described above, 

although lashes will not apply in IP cases. 

Under Article 340 of the Criminal Procedure 

Law, crimes subject to punishments in categories 

7 and 8 will be directly investigated by the 

primary court, including all IP cases. The judge 

in the primary court will also issue orders for 

seizure and detention if necessary. Then an appeal 

can be filed in the Appellate Court. As the 

prosecutor’s office no longer has jurisdiction in 

IP cases, the due process of law in these cases 

is effectively reduced from three to two stages. 

This legislation passed three years ago, but 

only recently began to be implemented. The 

goal of the legislator was to reduce the workload 

of the prosecutor’s office, and to accelerate 

the process of law when the crimes are not 

that serious. 

The other reform that affects the length of the 

process in criminal prosecution is Article 450 

of the Criminal Procedure Law, according to 

which, if the Appellate Court wants to sentence 

in a given case or to approve a sentence issued 

in the primary court, it must schedule a hearing 

and invite the parties to the court. In the 

former version of the law, this was optional, but 

it is now mandatory. This new requirement will 

give more precision to the court hearing and 

more effectively protect the defendant’s rights, 

but it may add several months or even a year to 

the length of the criminal process. 

Contributor: Hossein Badamchi 

Reza Badamchi & Associates, Tehran, Iran 

Verifier: Kerem Gokmen 

Dis Patent, Istanbul, Turkey 



JORDAN: Promoting the Use of Arabic on Signboards 

Pursuant to the issuance of Arabic Protection 

Law No. 35 of 2015 on July 1, 2015, which 

became enforceable as of September 1, 2016, 

Jordan now joins Egypt, Oman, Qatar, the UAE, 

Saudi Arabia, Yemen, and Syria in their call 

for the compulsory use of Arabic script on 

signboards. 

Article 5 of the Law allows for the use of a 

language other than Arabic on signboards as 

long as the Arabic portion appears in a much 

larger font. The scale is not explicitly identified 

in the Law. 

Although Article 16 of the Law says that all 

affected parties had until September 1, 2016, 

to ensure full compliance with the underlying 

provisions, it is not yet clear how this will be put 

into practice since the regulations implementing 

the Law have not yet been issued. In principle, 

violations will be subject to fines ranging 

between US $1,400 and US $4,200. 

Since use of a mark in Arabic will no longer be 

a matter of choice but a statutory requirement 

governed by local regulations, it is advisable 

to register the transliteration in the local script 

in Class 35, in addition to the registration in 

the Latin version. A key disadvantage of filing 

an Arabic trademark is the additional costs of 

clearance and registration. However, the benefits 

of protecting a mark in Arabic outweigh the 

associated costs. Problems can certainly arise 

when it comes to enforcing trademark rights 

against third parties using or attempting to 

register confusingly similar Arabic transliterations. 

It is always easier to enforce marks in the 

same language. 

Contributor: Zeina Salameh 

Saba IP, Beirut, Lebanon 

Verifier: Liana Robert Elian 

Salem Law Firm, Amman, Jordan 

LEBANON: New Requirements for Recordals 

According to a new regulation issued by the 

Trademark Office of Lebanon’s Office of 

Intellectual Property, power of attorney (PoA) 

in relation to new applications, renewals, and 

recordals must be legalized by the Lebanese 

Consulate, and late filing of documents is no 

longer accepted. 

The decision took effect on September 1, 

2016. Accordingly, applicants are asked to 

provide legalized PoAs as well as other original 

documents related to any recordal transactions 

along with the application. Priority documents, 

however, do not require legalization and can be 

submitted within two months of the filing date 

(a scanned copy by email is required for filing). 

Contributor: Firas Qumsieh 

NJQ & Associates - Dubai, United Arab Emirates 

Co-Chair, INTA Bulletins Law & Practice—Middle 

East & Africa Subcommittee 

Verifier: Mujeeb Al-Rahman Harmal 

Unimark Trademark & Intellectual Property, 

Sana’a, Yemen 

SAUDI ARABIA: Increase in Official Fees and 

Substantial Procedural Changes in Trademark 

Opposition 

Pursuant to Ministerial Decree no. 306 of 2014 

approving the Implementing Regulations of the 

GCC Trademark Law, effective September 30, 

2016, the official fees for trademark-related 

matters have increased significantly in comparison 

with their previous level, with registration 

fees increasing from around USD 1,870 to USD 

2,400, and renewal fees from USD 1,600 to 

USD 2,270. The new rates are applicable on all 

new applications, as well as applications that 

are still pending examination. 

The increase in fees will also be coupled with 

the introduction of a number of substantial 

procedural changes related to trademark 

opposition: 

• The opposition period has been modified. It 

will be set as 60 days from publication date 

(pre-grant of registration), instead of 90 days 

from publication date, based on Article 12 of 

the regulations, bringing the procedure more 

in line with international standards. An extension 

of time to oppose will not be possible. 

• An opposition will no longer be a legal 

proceeding—administered only by the Board 

of Grievances or the Court of First Instance. 

Pursuant to the new regulations, oppositions 

will be handled by a newly established 

Trademark Board, an administrative tribunal 

responsible for hearing inter partes opposition 

proceedings. 

• Pursuant to Articles 12 and 13 of the regulations, 

the Trademark Board is expected to 

notify the applicant of the opposition within 

30 days from opposition date. Afterwards, 

the applicant is expected to submit a written 

counterstatement within 60 days from notification 

date, non-extendable. The Trademark 

Board will then appoint a hearing for 

oral submissions by the opponent and the 

applicant as well as submissions of sufficient 

documentary evidence. The decision is 

expected to be rendered by the Trademark 

Board within 90 days following the hearing. 

This is an incremental process change which, 

in time, is expected to streamline the system 

and result in quick turnaround for decisions. 


Saba IP, Beirut, Lebanon 

Verifier: Bassel El Turk 

Executive, Rouse Dubai Office, United Arab Emirates 

UNITED ARAB EMIRATES: Trademark Litigation 

Goes Online 

On August 7, 2016, the Corporate Commercial 

Compliance & Consumer Protection Sector of 

the Department of Economic Development (the 

Department) in Dubai announced the launch 

of the Intellectual Property Gateway, the first of 

its kind in the region, which will specialize in receiving 

infringement complaints online through 

the Department’s website. 

Through this electronic gateway, the Department 

aims to automate all transactions related 

to IP practice in the Emirates, starting with the 

opening of complaint files to the issuance of 

a final decision. The service will become available 

online on September 1, 2016. 

This new tool is said to have added value for 

trademark owners, law offices, and IP firms by 

allowing them to file a complaint online within 

a relatively short time rather than having to 

visit the Department’s office. It also gives them 


29



the chance to follow up on each case update 

and see its development. 

The Department also aims to reduce the 

number of walk-in visitors to its premises by 80 

percent by the year 2018; likewise, this system 

is expected to reduce the number of trademark 

owner and law firm visitors by 100 percent. 

This electronic gateway will develop IP practice, 

enhance the quality of service provided by the 

Department, protect traders’ rights, and facilitate 

interaction between the government and 

private sectors by reducing time and effort. 

Contributor: Firas Qumsieh 

NJQ & Associates - Dubai, United Arab 

Emirates 

Co-Chair, INTA Bulletins Law & Practice—Middle 

East & Africa Subcommittee 

Verifier: Mujeeb Al-Rahman Harmal 

Unimark Trademark & Intellectual Property, 

Sana’a, Yemen 

UNITED ARAB EMIRATES: Customs Recordal Kicks 

Off in Abu Dhabi 

It is now possible to file for customs recordal 

in Abu Dhabi, effective as of August 21, 2016. 

This makes Abu Dhabi the fifth Emirate (out 

of the seven Emirates of the UAE) to allow for 

recordal, in addition to the Emirates of Dubai, 

Sharjah, Ajman, and Ras Al Khaimah. 

Recordal of marks will undoubtedly help 

customs officials target, intercept, and seize 

shipments of infringing goods. The request for 

a recordal must be accompanied by the certificate 

of registration of the mark and a power 

of attorney, among other documents. Recordal 

will be valid for the trademark’s protection term 

and will be renewable for like periods. 

There is now a total of nine countries in the 

Middle East and North Africa (MENA) region 

that allow for customs recordal. These countries 

are Algeria, Cyprus, Jordan, Morocco, 

Saudi Arabia, Sudan, Tunisia, Turkey, and the 

abovementioned Emirates of the UAE. 


Saba IP Head Office, Beirut, Lebanon 

Verifier: Bassel El Turk 

Executive, Rouse Dubai Office, United Arab Emirates 

Enforcement 

An International Litigation Guide 

David Allison (Bird & Bird), one of Enforcement Guide’s principal editors, discussed the guide during its 

rollout at the 2017 Leadership Meeting in Hollywood, Florida. Please watch David’s video and visit the 

Enforcement landing page to learn more about this exciting new resource. 

Visit www.inta.org /EnforcementGuides 



Geographical Indications, Certification 

Marks and Collective Marks: 


Global Portal 



Trade Dress: International Practice and 

Procedures 




Gulf Cooperation Council 

Report: U.S. Economic Sanctions and 

Anti-Boycott Law 


Global Report: North America 

INTA Meets with Canadian Prime Minister’s Office, Top 

Officials During Delegation Visit 

On October 17, 2016, INTA CEO Etienne 

Sanz de Acedo, Government Relations Senior 

Director Deborah Cohn, and Anticounterfeiting 

Manager Maysa Razavi traveled to Ottawa, 

Canada, for several high-level meetings with 

Canadian officials. During these meetings, INTA 

discussed amendments to the Trade-marks 

Liaison to the Parliamentary Secretary, and two 

officials of the Royal Canadian Mounted Police: 

Andris Zarins, Director of International Policing 

Development, and Jeffrey Karran, Intellectual 

Property Rights Crime Federal Coordinator. This 

conversation included an active discussion 

of issues with the current anticounterfeiting 

North America Global Advisory Council 

Co-Chairs 

Paula Clancy, Clancy P.C. + Brion Raffoul, 

Canada 

Adam Scoville, RE/MAX, LLC, United States 


Lori Ball, Molson Coors Canada, Canada 

Phillip Barengolts, Pattishall, McAuliffe, 

Newbury, Hilliard & Geraldson LLP, United 

States 

Thomas Brooke, Holland & Knight LLP, 

United States 

Anthony Dreyer, Skadden, Arps, Slate, 

Meagher & Flom LLP, United States 

Elisabeth Escobar, Marriott International, 

Inc., United States 

Julia Huston, Foley Hoag LLP, United States 

Christopher Kindel, Pirkey Barber PLLC, 

United States 

Jennifer Morton, Gowling Lafleur 

Henderson LLP, Canada 

Cynthia Rowden, Bereskin & Parr LLP, 

Canada 

Act, development of an IPR Coordination Center 

in Canada, establishment of a trademark 

caucus in Parliament ,and INTA support of 

Canadian trademark strategies. 

The first meeting was an introductory meeting 

with Mesmin Pierre, the new Director General 

of the Trademarks Branch of the Canadian 

Intellectual Property Office (CIPO). Mr. Pierre 

promised to continue the close collaboration 

of CIPO with INTA, and both organizations 

proposed several possible projects for 2017. 

The delegation then went on to meet with the 

Prime Minister’s Office for the first time, where 

members had a discussion with the Deputy Director 

of Policy, Justin To, about the importance 

of trademarks to Canada’s innovation agenda. 

Members continued their meetings with a 

conversation with Greg Fergus, the Parliamentary 

Secretary for the Minister of Innovation, 

Science, and Economic Development. INTA 

has met with the Department of Innovation, 

Science, and Economic Development several 

times in the past, but this first meeting with Mr. 

Fergus led to discussions on how to cultivate 

the current trademark and anticounterfeiting 

landscape in Canada. The Delegation met with 

Michael Picard, the Parliament Secretary for 

the Minister of Public Safety, Eloge Butera, Policy 

Advisor to the Minister of Public Safety and 

regime and ways to improve it, including the 

establishment of an IPR Coordination Center, 

among the many departments and agencies of 

the Canadian government focused on combating 

counterfeiting. 

The day ended with a reception hosted by the 

Honorable Senator Joseph Day to promote the 

establishment of a Trademark Caucus in the 

Canadian Parliament (pictured right). Senator 

Day is a strong supporter of a stronger trademark 

and anticounterfeiting agenda in Canada 

and he proposed several actions that INTA will 

explore with him to better advocate this agenda 

in Ottawa. 

INTA would like to thank the members that participated 

in the delegation trip: Perveen Atwal 

(lululemon athletica, Canada), Rod Jones (UL, 

LLC, USA), Shelley Jones (Blackberry Limited, 

Canada), Monique Couture (Gowling WLG, Canada), 

Jennifer Morton (Gowling WLG, Canada), 

Lorne Lipkus (Kestenberg Siegal Lipkus LLP, 

Canada), and Karen MacDonald (Bull, Housser 

& Tupper, LLP, Canada). INTA Consultant Gar 

Knutson (Borden Ladner Gervais LLP, Canada) 

was the delegation’s guide in Ottawa. 

For more information on INTA’s activities in 

Canada, please reach out to INTA 

Staff Liaison 

Deborah Cohn, Senior Director of 

Government Relations, dcohn@inta.org 

Anticounterfeiting Manager, Maysa Razavi, at 

mrazavi@inta.org. 

31



INTA Opposes U.S. House of Representatives Office 

of Law Revision Counsel Plan to Re-Codify the 

Lanham Act 

Recently, INTA learned of a proposal by the 

United States House of Representatives Office 

of Law Revision Counsel (OLRC) to re-codify 

the Trademark Act of 1946 (the Lanham Act). 

INTA’s Legislation and Regulation Committee—U.S. 

Subcommittee and INTA Washington, 

D.C., staff reviewed the draft legislation and 

determined that INTA should oppose it due to 

the long-term confusion and financial burdens 

that the re-codification would cause. 

Following this review, INTA sent a letter expressing 

its concern to the Chairman of the 

House Judiciary Committee, Representative 

Bob Goodlatte (R-VA), and the House Judiciary 

Committee Ranking Minority Member, Representative 

John Conyers (D-MI), opposing this 

proposal and requesting an opportunity to discuss 

the issue with House Judiciary Committee 

leadership. 

This is not a new position or issue for INTA. In 

2006, INTA objected to a similar proposal and 

INTA is unaware of any 

other people or organizations 

that share the OLRC’s 

concern that the federal 

trademark law is somehow 

not authoritative in its 

current form. 

ten years later continues to believe that the 

negative implications and burdens of re-codification 

far outweigh any intended benefits. In 

summary, the OLRC proposal removes the Lanham 

Act from Title 15 of the U.S. Code, rewrites 

the statute into positive law, and places the law 

into Title 35, which contains the Patent Act. 

INTA is unaware of any other people or organizations 

that share the OLRC’s concern that the 

federal trademark law is somehow not authoritative 

in its current form. In our letter, we note 

that over the years, U.S. courts have not had 

difficulty accepting the statutory language in 

Title 15. Additionally, for the public and trademark 

owners who need access to the courts, 

the changes would introduce uncertainty as to 

their rights and available remedies. 

Further, the OLRC proposal would have real 

financial consequences, not only to trademark 

practitioners who need to keep track of current 

law, but also to the United States Patent and 

Trademark Office, which would have to update 

all of its content, from its many online forms to 

the Trademark Manual of Examining Procedure. 

INTA will continue to review this issue, including 

a close analysis of the draft legislation, to 

further examine the changes, especially if it 

moves ahead in Congress. Additionally, INTA 

plans to continue to reach out to key members 

of Congress and others about its opposition to 

this proposal. 

For more information, contact Debbie Cohn, 

INTA Senior Director for Government Relations 

at dcohn@inta.org. 

Interview 

Shira Perlmutter, USPTO: Get to Know Your IP Attachés 

Shira Perlmutter has worn hats ranging from 

law professor, author, and consultant at 

WIPO to the Associate Register for Policy and 

International Affairs at the U.S. Copyright 

Office and Vice President and Associate General 

Counsel for IP Policy at Time Warner—to 

name a few. Today, in her role as Chief Policy 

Officer and Director for International Affairs 

at the USPTO, she serves as a policy advisor 

to the Under Secretary of Commerce for Intellectual 

Property and Director of the USPTO, 

Michelle Lee. 

As part of that role, Ms. Perlmutter is 

responsible for the administration of a 

network of 13 IP attachés based in ten 

countries who serve as the USPTO’s “eyes 

and ears on the ground,” says Ms. Perlmutter. 

Along with Dominic Keating, the 

Director of the IP Attaché Program, it is Ms. 

Perlmutter’s job to oversee the work of the 

attachés, monitor the need for expansion 

of the program, hire qualified candidates, 

and make sure IP stakeholders are aware 

that they can contact attachés for help. Ms. 

Perlmutter spoke with the INTA Bulletin to 

explain more about the program. 

What is the role of the USPTO Office of Policy and 

International Affairs? 

In addition to the attaché program, OPIA has 

several diverse areas of responsibility. In 

addition to dedicated teams of subject matter 

experts in each type of IP, and a separate China 

team, we have the Office of Governmental 

Affairs, the Office of the Chief Economist, and 

our Global IP Academy. 

OPIA handles issues related to policy in all 

areas of IP—that includes not only patents 

and trademarks, but also copyrights, trade 

secrets, and enforcement policy issues. I think 

of policy as looking at what the law should be, 

rather than interpreting and applying the law 

as it is. Often, this comes up in the context of 

legislation, litigation that raises policy issues, 

economic research and analysis, and other 

matters that arise in the government where we 

help to ensure that the IP perspective is taken 

into account. 



Then, there is the international side of our 

work. That includes representing the United 

States at the World Intellectual Property Organization 

(WIPO), assisting the Office of the U.S. 

Trade Representative (USTR) in the negotiation 

of IP provisions of trade agreements, providing 

IP education and training, and engaging 

in bilateral discussions with other IP offices 

and governments around the world. In doing 

that, we of course work closely with our sister 

agencies, like the U.S. State Department, USTR 

and other parts of the Department of Commerce, 

with the Copyright Office on copyright 

issues, and internally with the USPTO’s Patent 

and Trademark Operations, which implement 

a lot of the international agreements that we 

work on. 

What’s a typical day like for you? 

I wish there was such a thing as a typical 

day. I do a fair amount of traveling, sometimes 

speaking at conferences, but also participating 

in international meetings, primarily 

at WIPO. Given the diversity of OPIA’s work, 

there are always ongoing meetings within 

the USPTO and with stakeholders, as well 

as significant management responsibilities. 

We also have a lot of meetings with other 

agencies. The U.S. government is very good 

at having coordinated policy positions that 

take into account input from all parts of the 

government. Other countries don’t always 

have that same level of coordination, and 

I think it makes U.S. government positions 

particularly strong, well-balanced, and 

thought-through. 

What is the USPTO’s IP Attaché Program, and what 

is an IP attaché? 

The IP attachés are IP experts based at embassies 

and missions around the world. Their 

job is to promote U.S. government policies on 

IP and to do their best to ensure high-quality 

IP systems in their host countries and regions, 

ultimately for the benefit of U.S. stakeholders. 

That entails a number of things. They work 

with their host governments and meet with 

government officials on a whole range of IP 

issues; they serve as our eyes and ears on 

the ground, reporting on developments in the 

region, communicating on our behalf in an 

informal and prompt manner; they organize 

and run outreach and education programs; and 

last, but not least, especially from the perspective 

of INTA members, they have an important 

role in assisting U.S. stakeholders in navigating 

the local IP systems. If a U.S. trademark owner 

is having a problem getting a registration, or 

handling litigation, they can talk to the attaché 

about how the local system works and—if it’s 

the kind of thing where it would help to talk to 

someone—the attaché can explain who would 

be the right person to contact. 

Who are they? 

The backgrounds of IP attachés are quite 

diverse. Several are attorneys who come from 

OPIA or elsewhere at the USPTO, but we have 

drawn people from a variety of backgrounds. 

We have had partners in law firms, law professors, 

one head of a nonprofit, and several from 

other agencies in the U.S. government, such as 

the USTR, the General Counsel’s Office of the 

Department of Commerce, and the Intellectual 

Property Enforcement Coordinator’s Office at 

the White House. 

The backgrounds of IP 

attachés are quite diverse. 

Several are attorneys who 

come from OPIA or elsewhere 

at the USPTO, but we 

have drawn people from a 

variety of backgrounds. 

When was the program created, and why? 

It goes back to the Uruguay Round negotiations 

that established the World Trade Organization 

(WTO). Our very first attaché was placed in Geneva 

at the U.S. Mission to the WTO in 1993. 

The idea was to have someone with technical 

expertise in IP who would be on the ground and 

could help with negotiation of the TRIPS Agreement. 

The next attaché position wasn’t created 

for another ten years, and then was based in 

Beijing because of the growing importance of 

IP matters in China. The first attaché in Beijing 

was Mark Cohen, who is now Senior Counsel 

for China, here at the USPTO. 

Because those initial forays seemed to be 

working very well, in 2006, we expanded 

the program and created attaché positions 

in Brazil, Russia, India, in Thailand covering 

Southeast Asia, and in Egypt covering the 

Middle East. 

Over the past ten years, we have expanded 

quite a bit. Today, we are up to 13 attachés in 

ten countries. In addition, we’ve added one 

more attaché in Geneva, so now we have one 

representing us at WIPO and one at the WTO. 

We also have two more in China—one each in 

Beijing, Shanghai, and Guangzhou. We have 

moved the Middle East position from Cairo to 

Kuwait City, just because of political developments 

in the region. We’ve created a position 

in Mexico City, and most recently, in the last 

year, we created one in Lima, Peru, and one 

in Brussels, covering the EU and EU Member 

States. Ultimately, we’re going to be moving the 

attaché position in Moscow to Kiev. Contact 

information for each attaché is available on the 

program’s homepage and is kept up to date. 

How are you measuring the success of the program? 

On the one hand, we’re measuring it by the 

feedback we’re getting. We’ve had overwhelmingly 

positive feedback from industry associations, 

individual companies, and other stakeholders. 

We’ve also had tremendously positive 

feedback from other government agencies. 

The attachés provide information, assistance, 

and input to all government agencies. User 

feedback is the primary means, but sometimes 

there are specific positive outcomes on particular 

matters as well. 

How are you deciding where to place attachés? 

That’s a relatively complex process. The overall 

question is, “What are the locations where 

there’s the greatest need?” from the perspective 

of both the U.S. government and stakeholders, 

which generally tends to be the same. 

We are in regular communication with other 

agencies and stakeholders about the program 

and where they see a need. Whenever we begin 

to hear there’s a need, we have discussions with 

the International Trade Administration, the State 

Department, and USTR to see what kind of interagency 

support there is for the position. If there 

seems to be general agreement that this would 

be a good place to put an attaché, then we start 

a formal interagency process to create the position, 

which includes the embassy or consulate 

where the position would be based to get their 

input as well. The factors we consider include 

the size of the market there, the importance of 

IP issues in that market to the U.S. government 

and stakeholders, and the nature of our bilateral 

relationship with that government. 

How do you promote the program—do you find that 

most people are aware of it? 

More and more, we’re getting the word out, but 

there’s still more that can be done. It’s a big 

country and a lot of stakeholders don’t necessarily 

participate in Washington processes, 

so we’re trying to reach out more broadly. This 

interview, for example, will be one fantastic 

opportunity for people to learn about the 

program. In addition, all attachés come home 

to headquarters every December for a week of 

consultations, and during that time, they meet 

with a lot of different stakeholders, including 


33


Interview continued from page 33 

INTA. In recent years, we’ve been having the 

attachés go to our regional offices as well, 

now that we have them. And we’ve also been 

including them in IP association meetings—at 

the INTA Annual Meeting we had a panel of 

attachés, for example. And then, of course, we 

disseminate information through the website. 

Do other countries have similar programs? 

They do. Japan was actually the first country to 

have an IP attaché—they started at the WTO in 

Geneva and since then they’ve expanded. A lot 

of countries see IP protection and enforcement 

as a global issue, and some are also following 

our lead, because they’ve seen the good work 

our attachés do. Korea, the EU, France, UK, 

and Italy have all placed IP attachés and we 

see that as a very positive development. Our 

attachés are able to work with other attachés 

in the countries where they’re posted. They can 

collaborate and cooperate and help each other 

lighten their load and share information. 

What does the future of the program hold? 

One thing we keep looking at is whether we 

should expand further. At the moment we have 

pretty broad coverage, but we do keep looking 

at whether expansion would be useful, so we 

welcome any input from INTA members. We 

are also trying to facilitate more cross-regional 

collaboration between attachés—both our 

own and attachés of other countries—because 

we see more and more cross-regional issues 

We need high quality 

attachés to make sure 

the program continues 

to be as successful as it 

has been to date. 

arising, especially in the enforcement space 

with counterfeit goods that can flow across 

one country’s borders into others’. We are also 

formalizing our procedures and policies more 

because the program has been in existence for 

more than ten years now, so it has matured. 

And then, last but not least, we are very interested 

in continuing to ensure a pipeline of 

good candidates for these positions. As you 

can imagine, given the nature of the job, we 

need people who are not only experienced and 

knowledgeable IP lawyers, but who are able 

to be excellent diplomats as well, and that’s a 

range of skills not everyone has. Of course, the 

attachés also have to deal with all types of IP 

issues. So what we’ve been trying to do is to 

educate the public about the program, and to 

make sure everyone at the USPTO is fully aware 

of it, so we get good candidates from within our 

ranks as well as the broader U.S. government. 

We need high quality attachés to make sure 

the program continues to be as successful as it 

has been to date. 

Who should INTA members contact for more input? 

The first point of contact should be Dominic 

Keating at Dominic.Keating@uspto.gov, the 

Director of the program. They’re also welcome 

to email me directly at Shira.Perlmutter@ 

uspto.gov. We’d be delighted to hear any 

suggestions. 

In the News 

CANADA: Benefit Now from Using the Nice 

Classification 

Canadian Intellectual Property Office (CIPO) 

The Canadian Intellectual Property Office 

(CIPO) is working on modernizing its IP system 

to be better aligned with international best 

practices. Part of this modernization process is 

the amendment of the Trade-marks Act. 

Once the newly titled Trademarks Act comes 

into force, applicants will be required to classify 

their goods and services according to the 

Nice Classification. To make things easier, the 

CIPO Goods and Services Manual’s (GSM’s) 

pre-approved list of goods and services, which 

are compliant with Section 30(a) of the Trademarks 

Act, has been updated to include the 

appropriate Nice classes. This list of terms 

deemed acceptable by CIPO should be used 

when filing a new or revised application. 

Use it Now 

Using the pre-approved list with Nice Classification 

provides efficiencies in examination 

of your application and may result in quicker 

processing time to approval. Further, once the 

Using the pre-approved list 

with Nice Classification 

provides efficiencies in 

examination of your application 

and may result in 

quicker processing time to 

approval. 

new Trademarks Act comes into force, renewal 

will be dependent on the inclusion of Nice Classification 

for the goods and services. 

With Canada’s introduction of the Madrid 

Protocol, Canadians who wish to register a 

trademark in other countries using the Madrid 

System and the pre-approved GSM terms, will 

know their goods and services are compliant 

with World Intellectual Property Office (WIPO) 

standards and will already designate the appropriate 

class. 

Provide Your Suggestions 

Some discrepancies can occur between countries 

in the classification of goods and services. 

Canada has taken the position to closely follow 

the classification methods of WIPO according 

to the latest edition of the Nice Classification. 

The CIPO GSM is an evolving document. It was 

updated during August 2016 to add 5,000 new 

acceptable entries; and it was updated again in 

January 2017 to align itself to the 11th edition 

of the Nice Classification, adding even more 

entries. We expect that by the end of March 

2017, a minimum of 20,000 additional entries 

will have been included in the GSM, bringing 

the total to 65,000. 

We encourage you to provide suggestions for 

additions to the GSM by filling out the CIPO 

feedback form found on the GSM webpage of 

the CIPO website and include the subject reference: 

Trademarks Goods and Services Manual. 

Requests will be reviewed to ensure compliance 

with Section 30(a) of the Trade-marks Act 

before they will be added to the GSM. 



CANADA: Federal Court of Appeal Endorses 

Punitive Damages 

The Canadian Federal Court of Appeal (FCA) 

has endorsed the awarding of significant punitive 

damages in a decision in the case of Lam 

v. Chanel S. de. R.L., 2016 FCA 111, which 

was handed down on April 11, 2016. This is 

noteworthy because punitive damages are relatively 

rare in Canada. In the same decision, the 

FCA also endorsed the use of summary trial in 

cases involving counterfeit goods. 

The appellant, a repeat infringer who flouted 

previous awards of the court, continued to deal 

in knock-off Chanel merchandise after purporting 

to sell her business to her children. In light 

of some ambiguity in the trial judge’s decision, 

the case was ultimately sent back to the trial 

judge for redetermination. 

The FCA confirmed both the appropriateness 

of an award of nominal damages in cases 

involving counterfeit goods and the awarding of 

CA $8,000 per act of infringement to both the 

trademark owner and its Canadian licensee. 

More specifically, the FCA held, “The authorities 

support a nominal damages award in a 

case like this, where the defendants are uncooperative, 

proof of actual damages is difficult 

and it is hard to estimate the harm done to the 

trade-mark owner’s goodwill through the sale 

of inferior quality goods.” Para 17. 

In endorsing an award of significant punitive 

damages the FCA identified the factors that 

warrant an award of significant punitive damages 

as including: the need for deterrence, compensatory 

damages being calculated on a nominal 

basis due to the nature of the appellant’s 

infringing acts, repeated violations, flouting of 

court orders, and the attempts of the appellant 

to obscure their involvement. Para 26. 

This decision clears the way for future cases 

involving counterfeit goods to proceed by way 

of summary trial. The FCA held that “[c]ases 

like the present, involving ongoing sales of 

counterfeit goods by a defendant that seeks to 

put forward a specious defense, are particularly 

well-suited to being decided by way of 

summary trial.” Para 16. 

In a summary trial, almost all of the evidence is 

in writing. The availability of summary trial is a 

discretionary decision based upon a number of 

factors, including whether credibility is at issue. 

Contributor: Tamara Ramsey 

Chitiz Pathak LLP, Toronto, Canada 

Verifier: Timothy O. Stevenson 

Smart & Biggar/Fetherstonaugh, Ottawa, Canada 

INTA Bulletins Law & Practice—North America 

Subcommittee 

UNITED STATES: TTAB Refuses to Register Mark Used 

in Selling State-Legalized Marijuana 

The U.S. Trademark Trial and Appeal Board 

(the Board) affirmed the refusal to register the 

mark HERBAL ACCESS for “retail store services 

featuring herbs” in the matter of In re Morgan 

Brown, Serial No. 86362968 (T.T.A.B. July 14, 

2016) (precedential). The Board based the refusal 

to register on its finding that the services 

at issue were illegal under federal law, so it 

was not being used in lawful commerce. 

The applicant’s own specimen of use demonstrated 

that the applicant’s retail store was 

engaged in the business of selling marijuana in 

Washington State. While the Board noted that 

marijuana has been legalized for adults in the 

state, it found this state legalization immaterial 

in light of the continued federal prohibition on 

possession of marijuana under the Controlled 

Substances Act, 21 U.S.C. §§ 801, et seq. It 

held that federal registration requires the mark 

to be used in commerce lawful under federal 

law. 

The Board also rejected the applicant’s argument 

that the services which were listed on 

the application, “retail store services featuring 

herbs,” were themselves legal under federal 

law. The Board found that there was objective 

evidence that marijuana is considered a “herb” 

and, accordingly, its sale would be covered by 

the registration of the mark if it were allowed. 

As the Board found this to be impermissible 

under federal law, it denied registration. 

Contributor: Richard Rivera 

Gambrell & Russell, LLP, Jacksonville, Florida 

Verifier: Cynthia Moyer 

Fredrikson & Byron P.A., Minneapolis, Minnesota 

Mr. Rivera and Ms. Moyer are members of the 


Subcommittee. 

UNITED STATES: Important New U.S. TTAB 

Rules to Know for 2017 

In an effort to provide more efficiency and 

clarity to proceedings, conform rules to current 

practice, and codify case law, the U.S. Patent 

and Trademark Office (USPTO) published 

Miscellaneous Changes to Trademark Trial and 

Appeal Board Rules of Practice, 81 Fed. Reg. 

69950 (Oct. 7, 2016) (Final Rules Notice), 

effective for all cases filed and pending as 

of January 14, 2017 (collectively, Amended 

Rules). The Amended Rules mark the most 

significant changes to practice before the 

Trademark Trial and Appeal Board (TTAB) since 

2007. A summary of some of the key rule 

changes for inter partes proceedings before 

the TTAB are discussed below. 

All Submissions Must Be Filed through ESTTA 

The TTAB’s filing system, the Electronic System 

for Trademark Trials and Appeals (ESTTA) was 

launched in 2002, and the vast majority of submissions 

are currently made through ESTTA. 

Under the Amended Rules, all submissions 

must be filed through ESTTA unless extraordinary 

circumstances or technical difficulties 

prevent filing through ESTTA. In such cases, 

which should be rare, a party may file on paper 

pursuant to the procedures outlined in these 

Amended Rules. However, extensions of time to 

oppose and notices of opposition against applications 

under Section 66(a) of the Trademark 

Act, 15 U.S.C. Section 1141f(a), must be filed 

through ESTTA, with no exceptions. 

Change in Service Requirements 

The TTAB, not the plaintiff, will now serve the 

complaint on the defendant in an opposition or 

cancellation proceeding by email or to the correspondence 

address of record for the parties, 

attorneys, or domestic representatives under 

37 C.F.R. Sections 2.105(a)–(c) and 2.113(a)– 

(c). The notice of institution will include a 

web link or web address for the defendant to 

access the electronic proceeding record. If the 

notice of institution is returned to the TTAB as 

undeliverable, additional notice may be given 

by publication in the Official Gazette under 37 

C.F.R. Section 2.118. 


35



All papers must be served on an adversary by 

email, and alternative service methods provided 

under 37 C.F.R. Section 2.119(b)(1)–(6) are 

permitted only if email service cannot be made 

due to technical problems or extraordinary 

circumstances. When service of voluminous or 

large electronic file sizes may not be practical 

through email, the TTAB encourages the parties 

to agree on alternative methods of service, 

such as cloud storage, Dropbox, USB drives, 

and other methods of service. 

Content and Filing of the Complaint 

The Amended Rules clarify that, under 37 

C.F.R. Sections 2.104(c) and 2.107(b), for 

oppositions filed against applications under 

Section 66(a) of the Trademark Act, 15 U.S.C. 

Section 1141f(a), the ESTTA cover sheet controls 

and all goods and/or services opposed 

and grounds for opposition are limited to those 

set forth in the ESTTA cover sheet and may not 

be amended after filing the complaint. 

For applications filed under Sections 1 and 44 

of the Act, 15 U.S.C. Sections 1051 and 1126, 

however, the ESTTA cover sheet is considered 

part of the complete complaint, and the scope 

of the opposition is not necessarily limited to 

the ESTTA cover sheet. However, the complaint 

may not be amended to add to the goods or 

services or to add or join an opposer after the 

opposition deadline. 

In addition, the Amended Rules require a petitioner 

to provide, “to the best of petitioner’s 

knowledge, a current email address(es) of the 

current owner of the registration” in the petition. 

The TTAB also encourages plaintiffs to provide 

information about any new owner of the registration, 

domestic representatives, and current contact 

information for attorneys and any contact 

information for the designated representative 

for registrations under 66(a) of the Act. 

Disclosures and Discovery 

Under 37 C.F.R. Section 2.120(a)(3), all discovery 

requests must be served, and all responses 

and objections and documents must be served 

and produced on or before the close of the 

discovery period. The Final Rules Notice specifically 

states that discovery must be served early 

enough in the discovery period that all responses 

and documents will be served by the close 

of discovery. This is a change from the current 

rules and practice, where responses, documents, 

and objections thereto may be served 

after the close of the discovery period. 

Further, under 37 C.F.R. Sections 2.120(d), (e), 

and (i), the number of document requests and 

requests for admissions is limited to 75, counting 

subparts, similar to the current limitations 

on interrogatories. If a party believes that the 

number of these discovery requests exceeds 

75, it may serve a general objection. 

In addition, under 37 C.F.R. Section 2.120(i), a 

party may serve “one comprehensive request 

for admission of any adverse party that has 

produced documents for an admission authenticating 

specific documents or specifying 

which of those documents cannot be authenticated.” 

This rule requires the identification 

of “specific documents,” instead of a broad 

request for admission to authenticate “all documents 

produced.” 

The deadline to respond to written discovery 

requests has also changed under 37 C.F.R. 

Section 2.120(a)(3), so that responses to 

interrogatories, requests for production of documents, 

and requests for admission must be 

served within 30 days from the date of service 

of such discovery requests. The additional five 

days previously added under 37 C.F.R Section 

2.119(c) for responding to written discovery 

requests is eliminated. 

Contributors: Linda McLeod 

Kelly IP, LLP, Washington, D.C. 

Amy Keenan 

Anthem, Inc., Chicago, Illinois 

UNITED STATES: Pizza Dispute Clarifies Knowledge 

Requirement to Prove Fraud 

A unanimous Second Circuit Court of Appeals 

panel clarified the knowledge requirement to 

prove fraud with the USPTO. The case arose 

from a dispute among cousins operating 

pizza parlor locations in New York. MPC Franchise, 

LLC v. Tarntino, 2016 WL 3512500 

(June 27, 2016). 

In 1963, the Cleary brothers opened a pizza 

parlor in Elmira, New York, named “Pudgie’s.” 

The three brothers then formed Pudgie’s Pizza 

Franchising Corporation (PPFC), which granted 

a franchise to Bernadette Tarntino, the brothers’ 

sister, in 1973. PPFC then registered the 

PUDGIE’S mark with the USPTO in 1978. 

In 1985, PPFC failed to file the required use 

declaration and the USPTO canceled the 

PUDGIE’S registration. PPFC officially dissolved 

in 1993 and the franchisees became independently 

run restaurants. 

Following Bernadette Tarntino’s death in 2007, 

her son, Brent Tarntino, inherited one third of 

her franchised restaurant, as did each of his 

two brothers. In 2010, Tarntino filed a trademark 

application in his individual name with 

the USPTO for a mark consisting of the word 

“Pudgie’s” displayed in custom font. Tarntino 

then informed all owners of Pudgie’s pizza 

restaurants that he was the registered owner 

of the PUDGIE’S mark and use of the mark beyond 

the regions they currently served required 

his permission. They responded by filing a lawsuit 

in the Western District of New York alleging, 

inter alia, violations of the Lanham Act and 

seeking cancellation of Tarntino’s registration. 

Upon summary judgment, the district court 

canceled the registration due to fraudulent 

procurement, finding that Tarntino had met 

the standard set in Patsy’s Italian Restaurant, 

Inc. v. Banas, 658 F.3d 254 (2d Cir. 2011). 

In Patsy’s, the court stated that the scienter 

requirement is met when a plaintiff shows that 

an applicant “should have known” the falsity 

of a representation in the application. Tarntino 

appealed, arguing that the proper standard 

for scienter is the higher standard of “actual 

knowledge,” as established in In re Bose Corp., 

580 F.3d 1240, 1243 (Fed. Cir. 2009). The 

Second Circuit Court of Appeals agreed that 

the scienter required for proving trademark 

fraud is “actual knowledge,” and held that to 

the extent Patsy’s suggested a standard that 

the applicant “should have known” the falsity 

of his representation, that was mere dicta. 

The higher standard for fraud, however, did 

not save Tarntino. Notwithstanding its citation 

to Patsy’s “should-have-known” standard, 

the district court unequivocally had found 

that Tarntino had “actual knowledge” of the 

fraudulent nature of his declaration, according 

to the court. Beyond filing the application in his 

own name when he was only one-third owner, 

Tarntino had knowledge of multiple other Pudgie’s 

locations using the mark; familiarity with 



the history of the original Pudgie’s locations, 

which grew into a family business; knowledge 

of his mother opening a Pudgie’s as a franchisee; 

and submitted as the specimen for his 

application, a pizza box containing the words 

“® Pudgie’s Pizza Franchising Corporation 

1972,” which he testified at deposition meant 

he knew someone else had the right to use the 

mark as well. 

Finding no genuine issue of Tarntino’s actual 

knowledge of the false declaration and his 

intent to mislead the PTO, the court affirmed 

summary judgment canceling the registration. 

Contributor: Deborah A. Wilcox 

Hostetler LLP, Cleveland, Ohio 

Verifier: Kevin W. Grierson 

Culhane Meadows PLLC, Washington, D.C. 

Ms. Wilcox and Mr. Grierson are members of the 


Subcommittee. 

UNITED STATES: Incontestable Status Does Not 

Preclude Later Genericness Finding 

On May 13, 2016, the United States Court of 

Appeals for the Federal Circuit affirmed that 

prior registrations of related marks lack precedential 

value as to whether marks are generic. 

In re Cordua Restaurants, Inc., No. 2015- 

1432 (Fed. Cir. May 13, 2016). 

In Cordua Restaurants, the Federal Circuit 

affirmed a final decision of the U.S. Patent and 

Trademark Office’s Trademark Trial and Appeal 

Board (TTAB), which refused to register the 

stylized word mark CHURRASCOS for use in 

connection with “Bar and restaurant services; 

Catering.” The applicant serves a number of 

South American dishes and its “menu describes 

chargrilled ‘Churrasco Steak’ as ‘our 

signature[,]’” the court noted. The applicant 

also owns a previous registration for the word 

mark CHURRASCOS for the same services. The 

TTAB refused to register the stylized mark finding 

it was merely generic for the steaks served 

by the applicant and for a restaurant serving 

the steaks. The applicant argued that its prior 

registration for the word mark CHURRASCOS 

was incontestable, precluding a finding that 

the stylized mark was generic for the same 

class of services. 

The Federal Circuit held the TTAB properly 

found the stylized mark generic. In so holding, 

the court reasoned that under its precedent, 

the only relevant inquiries for genericness 

are: (1) what is the genus of goods or 

services sought to be protected by the mark; 

and (2) does the public understand the mark 

to primarily refer to that genus of goods and 

services. The court found that the TTAB properly 

applied this test. 

It further reasoned that incontestable status 

does not protect a mark from being canceled 

on the basis of being generic for the 

protected goods or services. Thus, the court 

found, the TTAB did not err in refusing to consider 

the prior registration as evidence that 

the stylized mark is not generic. The court 

stressed that each application must be considered 

on its own. 


Smith, Gambrell & Russell, LLP, Jacksonville, Florida 

Verifier: Sonia F. Lakhany 

Lakhany Law, PC, Atlanta, Georgia 

Mr. Rivera and Ms. Lakhany are members of the 


Subcommittee. 

UNITED STATES: ITC Limits Protection for 

Chuck Taylors 

A United States International Trade Commission 

(ITC) decision of June 23, 2016, 

extends protection to one aspect of Converse’s 

famous Chuck Taylor sneakers—the 

diamond-patterned outsole. The ITC is an 

“independent, bipartisan, quasi-judicial, 

federal agency of the United States government” 

that has the power to grant investigations 

into imported products that potentially 

infringe patents, trademarks, and other IP 

rights. Going forward, Converse will be able 

to block any company importing shoes that 

violates Converse’s trademark outsole, which 

has been a long-time part of the iconic Chuck 

Taylor brand. This broad exclusion order by 

the ITC goes beyond any one specific company, 

which gives Converse protection against 

potential future knockoffs as well. 

The decision also means, however, that the 

remaining notable aspects of the Chuck Taylor 

sneakers—the rubber-toe band, toe cap, and 

stripes—are not afforded the same protection. 

Effectively, competitors can and likely will continue 

to design and sell similar footwear, simply 

without the diamond outsole. 

Converse owns several federal trademark 

registrations for its various brands and logos, 

both in connection with footwear as well as 

in other categories of goods. The three in 

particular that were referenced in Converse’s 

complaint to the ITC were (1) U.S. Registration 

No. 4,398,753 (covering footwear in Class 25) 

(see below) for the two stripes on the midsole 

of the shoe, the design of the toe cap, the design 

of the multi-layered toe bumper featuring 

diamonds and line patterns, and the relative 

position of these elements to each other (the 

’753 Trademark); (2) U.S. Registration No. 

3,258,103 (covering footwear in Class 25) for 

the three-dimensional tread design located 

on the outsole of the shoe (the ’103 Trademark); 

and (3) U.S. Registration No. 1,588,960 

(covering athletic footwear in Class 25) for the 

three-dimensional sole design of the shoe, 

including the lining and stippling elements of 

the sole design (the ’960 Trademark). 

In a public opinion issued in early July 2016, 

the ITC explained that its decision was based 


37



on its conclusion that the ’753 Trademark 

lacks secondary meaning in the eyes of consumers. 

In effect, it could potentially be more 

challenging for Converse to claim exclusive 

rights to certain elements of its sneaker design, 

such as the toe cap and multilayered toe 

bumper with the diamond and line patterns. 

The ITC was largely persuaded by evidence 

that the Converse outsole design at issue 

had actually been used by several other shoe 

designers for over eight decades. Converse’s 

rights in its other two registrations at issue, the 

’103 and ’960 Trademarks, remain affirmed by 

the ruling. 

Contributor: Sonia Lakhany 

Lakhany Law, PC, Atlanta, Georgia 

Verifier: Rui W. Geissler 

Muncy, Geissler, Olds & Lowe, P.C., Fairfax, Virginia 

Ms. Lakhany and Ms. Geissler are members of 

the INTA Bulletins Law & Practice—North America 

Subcommittee. 

UNITED STATES: TTAB: Amended Identification 

Cannot Exceed Scope of Original ID 

The U.S. Trademark Trial and Appeal Board (TTAB) 

affirmed a refusal to register the mark PITCHING- 

SMART because the applicant’s amendments to 

the identification of services exceeded the scope 

of the original identification, and the specimens 

did not show use of the mark. In re Jimmy Moore 

LLC, Serial No. 86353015 (T.T.A.B. Aug. 24, 

2016) (precedential). 

The applicant filed its trademark application 

for “entertainment in the nature of baseball 

games.” According to the applicant, it inadvertently 

misidentified the services and filed 

a “voluntary amendment” ten days after the 

application was filed. In that amendment, the 

identification was changed to a baseball and 

softball pitching training system. 

During examination, the examining attorney 

rejected the amendment because it was 

beyond the scope of the original identification. 

She reinstated the original identification but rejected 

the applicant’s specimens because they 

did not show the mark’s use for the originally 

identified services. The applicant submitted 

substitute specimens, but those were also 

rejected on grounds that they did not show use 

of the mark for the identified services. 

In response, the applicant tried to amend 

the identification once more to educational 

seminars for baseball and softball pitching. It 

also provided new specimens. However, the 

amendment and specimens were rejected for 

the same reasons the previous amendment 

and specimens had been rejected. 

The applicant petitioned the Director to reverse 

the examining attorney’s actions as procedural 

error because the initial amendment was voluntarily 

filed shortly after the application had been 

filed and before the examining attorney had 

performed a substantive review. The Director, 

however, dismissed the petition. Trademark 

Rule 2.71 prohibits amendments that broaden 

the scope of the original identification of 

services or goods. Accordingly, the Director 

determined that the examining attorney could 

not accept the amendment since it was outside 

the scope of the original, even though the initial 

amendment was filed voluntarily before being 

reviewed. Also, the Director found that reinstating 

the original identification was proper. 

The applicant then appealed the refusal and 

claimed (among other things) that the examining 

attorney improperly refused the applicant’s 

preliminary amendment and specimens. 

However, the TTAB did not consider that issue 

because “a formal requirement which was the 

subject of a petition decided by the Director 

may not thereafter be the subject of an appeal 

to the Board.” TBMP § 1201.05 (2016). 

Instead, the TTAB addressed, among other 

issues, whether the amended identifications 

were broader than the original identification. 

Although the TTAB found the applicant’s 

arguments were “quite creative,” it was not 

persuaded by them, and found that the proposed 

amendments exceeded the scope of the 

original. Furthermore, the TTAB rejected the 

applicant’s specimens, as they did not support 

the original identification, and the applicant 

had acknowledged as much. 

Contributor: Connie Limperis 

Law Office of Connie P. Limperis, 

San Diego, California 

Verifier: Cynthia Moyer 

Fredrikson & Byron, P.A., Minneapolis, Minnesota 

Ms. Limperis and Ms. Moyer are members of the 


Subcommittee. 

UNITED STATES: Federal Courts Have Jurisdiction 

over Cross-Border Conduct 

The Ninth Circuit Court of Appeals has reversed 

a trial court’s finding that it lacked jurisdiction 

over claims arising from selling branded goods 

in a Canadian store meant to mimic the trade 

dress of the brand owner. Trader Joe’s Co. v. 

Hallatt, No. 14-35035 (9th Cir. Aug. 26, 2016). 

The plaintiff owns several federal trademark registrations 

for its mark TRADER JOE’S for grocery 

store services and food products in the United 

States. It also claims rights in its South Pacific– 

Among other things, the 

owner alleged that the 

defendant had failed to 

adhere to quality control 

standards in transporting 

the goods, thus tarnishing 

its reputation. 

themed trade dress in its stores. The defendant 

allegedly purchased large quantities of TRADER 

JOE’S branded goods in a Trader Joe’s store 

located near the United States/Canada border 

and sold them at higher prices in a Canadian 

store, which employed a trade dress similar to 

that of Trader Joe’s stores and did business as 

Pirate Joe’s. The trial court dismissed the case 

for lack of subject matter jurisdiction over the 

non-U.S. activity of the defendant. 

The appellate court determined that the 

Lanham Act was meant to have an expansive 



application and its grant of jurisdiction to 

federal courts was not meant to be limited 

to U.S. conduct. The court further found that 

the question of whether the conduct at issue 

affects U.S. commerce is an element of the 

substantive claim, and not a potential bar to 

the court’s jurisdiction. 

In this case, the court found that the brand 

owner had alleged a sufficient nexus between 

the defendant’s conduct and its business within 

the United States, as well as a detrimental 

effect on its business, to apply the Lanham Act 

extraterritorially. Among other things, the owner 

alleged that the defendant had failed to adhere 

to quality control standards in transporting the 

goods, thus tarnishing its reputation. 

As a result, the appellate court reversed the 

trial court’s dismissal of the Lanham Act claims 

and remanded the case to the trial court for 

further proceedings. 


Smith, Gambrell, & Russell, LLP, Jacksonville, Florida 

Verifier: Connie Limperis 

Law Office of Connie P. Limperis, San Diego, 

California 

Mr. Rivera and Ms. Limperis are members of the 


Subcommittee. 

Brands and Fashion 

March 22–23, 2017 | New York, NY 

Register today! 

www.inta.org/2017Fashion 




Guide 

Global Portal 

International Oppositions Guide 


Trademark Administration 



The Unreal Campaign 

U.S. State Trademark and Unfair 

Competition Law 


INTA Testimony before the U.S. 

Congressional Hearing, “Stakeholders Perspectives 

on the Operation of the Internet 

Corporation for Assigned Names and Numbers 

(ICANN)” 


CIPO 

USPTO 

USTR 

39

th 

Fira Gran Via: Barcelona | May 20–24, 2017 

Register Today! 

www.inta.org/2017AM 

INTA Calendar of Events 

Plan your calendar with these INTA events and stay up to date on 

issues that affect your trademarks—domestically, regionally, and globally. 

March 15 India Workshop in Mumbai Mumbai, India 

March 21 Free Trade Zones Workshop New York, NY, USA 

March 22–23 Brands and Fashion Conference New York, NY, USA 

April 19 Free Trade Zones Workshop Dubai, UAE 

May 20–24 INTA’s 139th Annual Meeting Barcelona, Spain 

September 17–19 TMAP Meeting New Orleans, LA, USA 

October 2–3 The Changing Landscape in Latin America Cartagena, Colombia 

October 4 Free Trade Zones Workshop Cartagena, Colombia 

November 7–10 Leadership Meeting Washington, D.C., USA 

November 29 Free Trade Zones Workshop Berlin, Germany 

November 30–December 1 Brand Authenticity: How Sustainability, Berlin, Germany 

Responsibility, and Integrity Impact your Bottom Line 

Learn more about INTA events, including international roundtables, networking receptions, 

e-Learning, academic competitions, and more, at www.inta.org/programs 

Dates and topics subject to change. Contact meetings@inta.org for the latest information.

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