INTA
Bulletin
The Voice of the International Trademark Association
March 15, 2004 Vol. 59, No. 6
INTA Expands Members Only Site
Membership renewal, benefits, ordering event
materials, by-laws, policies and volunteer information can sometimes be a mystery for the new
member or even those that have been members of
INTA, well, forever.
INTA hopes to shed some light on these and
other “mysteries” through
its Members Only Site.
Accessible only to INTA
members from the
Member Services section
on the main menu of
www.inta.org, the Site has
recently been expanded to
include member-specific
FAQs, articles and guides on membership, complete committee and policy sections, an INTA
awards page and a searchable database with
archived issues of The Trademark Reporter®
(TMR) journal.
The FAQs cover myriad member-related concerns, including information on how to join a
committee, how to submit a job listing to INTA’s
job bank (a members-only benefit), or how to add
people from your company to INTA’s database.
However, if a member-related question is not covered, please contact us. Your question might
appear here in the near future.
The articles and guides on membership are
designed to help you make the most of your member benefits. The articles are mostly written by
members, just like you, and
cover everything from
INTA’s work with governments to use of INTA’s
trademarks. The guides are
provided to give helpful
information. The INTA
Guide to the Annual Meeting
gives tips on what to bring,
how to network and how to generally maximize
your Annual Meeting experience. The INTA
Membership Brochure provides detailed information about membership, and includes the many
benefits to members, while the INTA Annual
Report lets you see what the Association accomplished in the past year on your behalf.
For those who have wanted to join a committee
or volunteer their time, but didn’t know how, the
SEE
IN THIS ISSUE
2
Taxing Issues for New INTA
Subcommittee
Notes from the OAMI User Group
Meeting
Trademark Trivia
How Did GRAPE-NUTS Cereal Get
Its Name?
3
Trademark Sightings
“ELF”
4
In the News
Asics Runs After Payless for
Infringement of Sneaker Trademark
Welcome New Members
Thirty-five New INTAMembers Joined
in February 2004
5
Committee Comments
Anti-Counterfeiting & Enforcement
Committee Ready for Action
INTA EXPANDS MEMBERS ONLY ON PAGE 3
6
which it had imported from
Germany, into 30-capsule packs
because otherwise it would not
have had effective access to the
market for 30-capsule refill
packs. It relied on what it
alleged to be “well established
medical prescriptive practices
based, inter alia, on standard
sizes recommended by professional group and sickness insurance institutions.” This is one of
the factors cited in the
European Court of Justice ruling in Boehringer Ingelheim KG
& Others v. Swingward Limited
& Others (2003 CH. 27) as an
impediment to effective market
access.
In upholding the interim
interdict, the Appeal Court stated that Munro had not shown
that it was likely to succeed at a
final trial. Munro had relied on
statistical material to the effect
that 80 percent of prescriptions
for the drug in Scotland for the
first five months of 2003 were
for single 30-capsule packs.
Although not the subject of evidence at this interim stage, it
was assumed that similar statistics might apply across the
whole of the United Kingdom.
Munro argued that 80 percent
was a substantial part of the
market to which it was being
denied access. However, the
Appeal Court held that the staSEE
TRADEMARK ON PAGE 7
Law and Practice
India
Accessibility of Domain Names
Eases Territorial Jurisdiction
Trademark Owners Gain Victory in Parallel
Import Pharmaceutical Case
The rights of pharmaceutical
trademark owners against parallel importers of their products
have been further strengthened
by a decision of the Scottish
Appeal Court in Edinburgh.
The January 15, 2004 judgment, in the case of Boehringer
Ingelheim Pharma GmbH & Co.
KG [BI] v. Munro Wholesale
Medical Supplies Limited
[Munro], upheld BI’s previously
obtained interim interdict
(injunction) preventing sales by
Munro of re-boxed 30-capsule
packs of the BI product trademarked SPIRIVA.
Munro had argued that it
should be entitled to re-box 60capsule packs of SPIRIVA,
Association News
OAPI
Amendment of Regulation for
Extension of Existing Rights to New
Territories
Peru
Fair Use of Trademark, But Not
Domain Name
Panama
Criminal Penalties for Counterfeiting
Peru
Registration Cancelled for Bad Faith
Romania
Determination of Requisite Confusion
in Trademark Opposition
Proceedings
7
INTA Bulletin Board
Association News
Taxing Issues for New INTA Subcommittee
INTA’s Emerging Issues Committee has formed the Tax Issues
Subcommittee to evaluate the legal issues surrounding the growing
practice of trademark holding companies. Essentially, trademark holding companies are formed by major brand owners to manage their
valuable intellectual property assets in a centralized location.
Trademark ownership rights are then transferred to the holding company and in payment of a royalty, the holding company licenses the
marks to the parent company for use in the manufacture and sale of
the branded products or services.
Considering that the parent company pays royalties to regain use of
the marks, it is categorized under the U.S. Internal Revenue Tax Code
as a business expense and not taxable income. The root of the controversy lies in that many of these holding companies are headquartered
in certain states where royalty income is excluded from taxation.
Therefore, neither the original brand owner nor the holding company
is subject to state tax on the assets of the marks in question.
With the objective of drafting a resolution for consideration of the
INTA Board of Directors, the Tax Issues Subcommittee is requesting
assistance from INTA members that use IP holding companies and
those familiar with the practice.
Of particular interest are the following:
• If employed by a holding company, does the company practice
business internationally or just domestically?
• Did the reduction of tax burdens motivate the parent companies
decision to develop the holding company?
• How long has the holding company been in existence and where
was it established (state/country)?
• What were the approximate costs or burdens in developing the
holding company?
• Has your company benefited from U.S. state or international tax
savings as a result of establishing its holding company?
• Has the recent wave of litigation launched by state tax authorities
placed your holding company at risk of tax and other liabilities?
• Have you taken any steps to strengthen your defenses?
• Is there a particular direction you would urge INTA’s Tax Issues
Subcommittee to explore in its policy work in this area?
The Subcommittee extends its appreciation to those who wish to
send comments. For more information about how you can participate, please contact Caren Fitzgerald, INTA’s external relations coordinator for the Americas, at [email protected].
Notes from the OAMI User Group
Meeting
On February 16, 2004, the 10th OAMI User Group Meeting took place on the premises of the Office
for the Harmonization in the Internal Market (OHIM) in Alicante. This is a biannual all-day event at
which OHIM, the EU Commission and representatives of all major intellectual property associations
exchange ideas and information regarding the workings of OHIM. INTA was represented by the chair
and two members of the Community Trade Mark (CTM) and Design Office Subcommittee – Verena
von Bomhard, Maria Fernandez-Marques and Rosalia Ballester.
Meeting participants discussed the OHIM Business Plan for 2004, the ongoing legislative initiatives
concerning CTM Reform and Accession to the Madrid Protocol, the improved e-Business strategy of
OHIM, the various draft guidelines currently under discussion and on which INTA officially commented, the impact of the jurisprudence of the European Court of Justice and the Court of First Instance and
their workload resulting from trademark cases, EU enlargement, the difficulties of obtaining information
on jurisprudence in the member states concerning CTM enforcement, the handling of Community
Designs, and the endeavors of the Office to increase customer satisfaction.
INTA’s representatives actively participated in the discussion, particularly regarding the removal of the
current backlogs in examination and opposition, the draft transitional rules regarding EU enlargement,
and e-business. In this last respect, OHIM presented its plans to greatly improve its online search tool,
CTM-online, by allowing additional search terms and data. OHIM also announced that it would make
its entire files available once a CTM was published. This triggered some discussion concerning the
potential impact on confidentiality, as electronic publication is perceived to be different from individual
access to files upon payment of an inspection fee.
The next OAMI User Group Meeting is scheduled to take place on November 29, 2004. For more
information on INTA’s positions and comments on CTM reform, Madrid Protocol, Implementing
Regulations and OHIM Draft Guidelines, please contact the chair of the Community Trade Mark and
Design Office Subcommittee, Verena von Bomhard at [email protected] or INTA’s external
coordinator for Europe, Chehrazade Chemcham at [email protected].
2
Vol. 59, No. 6
Trademark
Trivia
How did GRAPENUTS cereal get
its name?
Made of wheat and malted
barley, GRAPE-NUTS cereal was so named because its
inventor, Charles William
Post, said that grape sugar
was formed during the baking process. He also
described the cereal as having
a nutty flavor.
Editor: Elaine Czach, INTA, New York,
New York, USA
Representing the Trademark Community since 1878
Trademark Sightings
“ELF”
Leonardo da Vinci painted his Mona Lisa on
canvas, but Will Farrell is able to produce an
impressive replica of the masterpiece on an
ETCH A SKETCH toy in the film “Elf.”
Farrell stars as “Buddy,” an elf who leaves the
North Pole to search for the human family
in New York City that raised him. Buddy’s
ETCH A SKETCH skills were apparently
developed at work, where elves are seen
building ETCH A SKETCH toys on Santa’s
assembly line.
“It’s not like a James Bond movie where
BMW paid thousands to have him use their
car,” said Martin Killgallon, president of
ETCH A SKETCH maker Ohio Art Co.
“New Line [Cinema] sought out toys that
are recognizable as classics to be part of
Santa’s workshop. They were trying to sell
INTA Expands
Members Only Site
CONTINUEDFROM PAGE
1
expanded committee section provides general information as
well as specifics about each committee in the 2004 – 2005 term.
Find out whom to contact, or see actual work product from each
of the committees. You’ll find out why INTA considers committees vital to the organization.
To keep the Association running as smoothly as possible,
INTA provides a set of strict guidelines, plans and policies, some
of which include the Association Bylaws, the 2002 – 2005
Strategic Plan, INTA’s Editorial Style Guide, Bulletin and TMR
publication guidelines and submission guidelines for requests for
action by the INTA Board of Directors.
New benefits aside, the Members Only Site is still the place
that you can turn to if you want to look up a Bulletin article,
search the INTA Membership Directory or access basic information on trademark registration worldwide, via our online publication Country Guides.
In fact, Daryl G. Grecich, the director for communications
and marketing at INTA encourages members to consider the
Site as an additional benefit to membership. “This is part of our
continuing effort to provide our members with the most current
and updated information possible,” he says.
this concept to kids that if you were a kid
and you went to Santa’s workshop, what
would you expect to see?”
The ETCH A SKETCH toy received
some additional face time when Farrell did
the late night and morning talk show circuit
to promote “Elf” and presented personalized
ETCH A SKETCH portraits to program
hosts like Jay Leno.
Sources: “Etch ASketch Draws Prize Product
Placement,” AdAge.com, November 10, 2003; “‘Elf’a
Boost for Etch ASketch Maker,” Toledo Blade,
November 15, 2003; Editor: Tarah Grant, Hogan &
Hartson, McLean, Virginia, USA
WORKSHOPS
Electronic Filing:
What, Why and How
April 7 or 8, 2004
Chicago - Dallas - New York - Palo Alto
With the fast-paced nature of today’s technology, it
is increasingly important for trademark professionals to be current in their skills. By attending INTA’s
“Electronic Filing: What, Why and How” workshop,
participants will gain the essential facts, tips and
training to learn how to file electronically in the
United States.
Visit
www.inta.org/events to register today!
By Naeran Rubio, INTA, New York, New York, USA
www.inta.org
Vol. 59, No. 6
3
In the News
“In the News” is a compilation of articles about trademark law and business abstracted from news
Brand
Babies
publications Name
from around the
world. In this issue, items in the news include the following:
ASICS Runs After Payless for
Infringement of Sneaker Trademark
On January 5, 2004, ASICS America Corporation and ASICS Corporation Japan
(“ASICS”) filed suit in the U.S. District Court of the Central District of California
against Payless Shoe Source. ASICS is alleging trademark infringement, false advertising,
unfair competition and trademark dilution.
Through its continuous Marketplace-Monitoring Program, the athletic shoe and
sportswear maker ASICS learned that the United States’ number one footwear retailer,
Payless, was selling several styles of shoes featuring a stripe design that ASICS alleges is
confusingly similar to the ASICS famous stripe logo.
In seeking a permanent injunction; damages, including profits and attorney’s fees; and demanding that customs seize the allegedly infringing footwear, ASICS Vice President and General Counsel Michael Zall called Payless’ actions “a blatant attempt to free-ride on the brand
image and goodwill ASICS has developed over the years.”
Sources: “ASICS Seeks Injunction and Damages From Payless ShoeSource Inc., Findlaw Corporate Counsel Center from PR Newswire, January 5, 2004; Contributor:
Kelly Garrone, McCarter & English, LLP, Newark, New Jersey, USA
Welcome New Members
Thirty-five new INTA members joined the Association in February 2004. Following is a list of these members. For full contact information, visit the online INTA Membership Directory on the Members Only Site of the INTA website at www.inta.org.
Anaqua SA, London, UK; Bell, Boyd & Lloyd PLLC, Washington,
Members by Region
DC, USA; Black Forest Industry (Arregation), Shanghai, China,
People’s Republic; Build-A-Bear Workshop, Inc., St. Louis, Missouri,
South Asia Sub-Saharan Africa
USA; Cahn & Samuels, LLP, Washington, DC, USA; Crowell &
1% 2%
Moring, Brussels, Belgium; Daniel B. Schein, Ph.D., Esq., San Jose,
California, USA; Destek Patent Inc., Bursa, Turkey; Djingov
Europe &
Gouginski Kyutchukov & Velichkov, Sofia, Bulgaria; Ellis King
Central Asia
McEwan, South Yarra, VIC, Australia; Enterprise Rent-A-Car
25%
North America
Company Inc., St. Louis, Missouri, USA; Fiebinger, Polak, Leon &
46%
Partners, Vienna, Austria; Fierst, Pucci & Kinder LLP, North
Hampton, Massachusetts, USA; Global Trademarks, Inc., Victoria,
East Asia
& the Pacific
Mahe, Seychelles; Gowling Lafleur Henderson LLP, Hamilton,
12%
Ontario, Canada; Guaranty Financial Services, Dallas, Texas, USA;
Habermann, Hruschka & Schnabel, European Patent & Trademark
10%
4%
Latin America
Attorneys, Munich, Germany; Hailey, McNamara, Hall, Larmann &
Middle East
& the Caribbean
Papale, L.L.P., Metairie, Louisiana, USA; House of Worth Limited,
& North Africa
Hertfordshire, UK; Ineureka, Moscow, Russian Federation;
International Law & Corporate Services (Pty) Ltd, Victoria, Mahe,
Seychelles; Larreategui, Meythaler & Zambrano Abogados, Quito, Pichincha, Ecuador; McCarthy Tetrault LLP, Toronto, Ontario,
Canada; Morris, Manning & Martin, Atlanta, Georgia, USA; NEIT International Patent & Law Office, Seoul, South Korea; Piliero
Goldstein Kogan & Mitchell, LLP, New York, New York, USA; Rebecca Lo & Co, Central, Hong Kong, SAR; Robert W. H. Wang &
Woo, Singapore; Sanchez Devanny Eseverri SC, Nuevo Leon, Mexico; Sato & Associates, Tokyo, Japan; Societe BIC, Clichy, France;
Stites & Harbison, PLLC, Atlanta, Georgia, USA; The Hearts On Fire Company, Boston, Massachusetts, USA; Troesch Scheidegger
Werner AG, Zumikon, Switzerland; Zetetic Inc., Hitchcock, Texas, USA
4
Vol. 59, No. 6
Representing the Trademark Community since 1878
Committee Comments
Anti-Counterfeiting & Enforcement Committee
Ready for Action
The Anti-Counterfeiting & Enforcement Committee,
led by Chair Richard Heath, head of the Corporate
Trade Marks department and general trademark counsel
of Unilever PLC, London, is one of the largest and most
active INTA committees, with 120 members from more
than 50 countries. The Committee is divided into five
geographic subcommittees, covering North America and
Latin America, Europe and Central Asia, the Middle
Richard Heath
Chair, Anti-Counterfeiting
East and Africa, South Asia, and East Asia and the
& Enforcement
Pacific. Each subcommittee is led by a member from
Committee
Unilever PLC
that region.
The goals of the Committee are to analyze treaties,
laws, customs regulations and proposed legislation to
deal with anticounterfeiting issues on the local, regional
and international levels and, while doing so, to join
forces with other major organizations and coalitions concerned with these issues. The Committee also makes recommendations to INTA regarding the Association’s official position on counterfeiting issues, and establishes
roundtables and other educational programs for the dissemination of anticounterfeiting information.
It is not enough for a coun- Heath says that the issue of stopping
counterfeiting is largely one of public politry to have wonderful legis- cy, which requires adequate legislation as
lation on the books unless well as the cooperation of business leaders,
local agencies are empow- law enforcement agencies, customs and
ered to implement such other government agencies, to create a
united front against the manufacture,
legislation.
import and export of counterfeit goods.
Indeed, it is not enough for a country to have wonderful
legislation on the books unless local agencies are empowered to implement such legislation. Heath indicates that
China, for instance, has excellent regulations against
counterfeiting, but that enforcement of these laws is very
sporadic. Moreover, the effective enforcement of the laws
on an international level is even more complicated,
because agencies of different nations and coalitions must
coordinate their efforts and strategies. Among the countries INTA has identified for special consideration are
Brazil, Mexico, Paraguay, China, Vietnam, India, the
Russian Federation, the United Arab Emirates and
Ukraine.
Heath points out that counterfeiting is no longer just
a national issue, but one involving very sophisticated
supply chains that source goods internationally.
Counterfeit goods lead not only to loss of jobs, corporate income and tax revenue, but also to a source of
funding for the darkest elements of society, such as
organized crime, terrorist groups and drug dealers. In
June 2003, the International Anti-Counterfeiting
Coalition (IACC) submitted a 28-page white paper to
www.inta.org
the U.S. Congress on the links between counterfeiting
and international terrorism. As the adverse economic
impact of counterfeit goods increases, the issue becomes
more and more of interest to all nations across the
world.
While several industry groups – e.g., the recording
industry, designer clothing, toys, etc. – have been active
in bringing groups together to combat counterfeiting,
INTA is among the few organizations that are broadly
based to cover all industries. It is INTA’s objective to
reach out to other non-industry specific organizations,
such as the IACC, World Intellectual Property
Organization, World Customs Organization, World
Trade Organization, Interpol, Global AntiCounterfeiting Group, Global Business Leaders Against
Counterfeiting, and other non-governmental national or
regional organizations, international business leaders and
groups in establishing effective and consistent enforcement policies in all countries.
Heath indicated that the Committee is also actively
involved in studying and keeping abreast of changes in
the provisions of the draft European Union (EU)
Enforcement of Intellectual Property Rights Directive,
currently under consideration by the European Counsel
and European Parliament. The Directive is particularly
timely in view of the accession of several countries to the
EU in May 2004. The Anti-Counterfeiting Committee
will help INTA formulate a position and possible formal
comment on the issue of counterfeit goods for submission to the European Counsel at the appropriate time.
For further information on the status of the Directive,
please refer to INTA’s anticounterfeiting portal page
(www.inta.org/anticounterfeiting), which includes links
to the latest published draft and the commentary of
INTA and others on this very important policy statement.
Lastly, the Committee has established roundtables for
business leaders, corporate counsel and government officials in specific localities to meet and exchange views on
counterfeiting issues. At the end of last year, the
Committee held a very successful meeting in Dubai, the
major free port for import and distribution of goods
throughout the Middle East. Similar meetings are
planned for 2004 and 2005 in China, Russia, Vietnam,
Brazil and again in the United Arab Emirates. Heath is
confident that these meetings, along with the
Committee’s other educational activities, will lead to further discussions and joint efforts to stem the flow of
infringing counterfeit goods.
By Mary A. Donovan, Donovan & Yee LLP, New York, New York,
USA
Vol. 59, No. 6
5
Law and Practice
INDIA
Accessibility of Domain Names Eases Territorial Jurisdiction
The interim injunction imposed by the Delhi High Court on
September 8, 2003 in the case of Casio India Co. Limited v. Ashita
Tele Systems Pvt. Limited [2003 (27) PTC 265 (del)] has opened the
way for other courts in India to decide issues of confusion or deception arising from the use of domain names.
The dispute in this case concerned the domain name www.casioindia.com, which was being used by the defendant to promote its business. The plaintiff brought an action before the Delhi High Court
seeking an injunction to restrain the defendant from using the
domain name www.casioindia.com, any of its derivatives, or the trade
name of the plaintiff, CASIO. The defendant argued that its principal place of business was in Mumbai (approximately 1,400 kilometers from Delhi) and the Delhi High Court therefore had no jurisdiction.
Restraining the defendant from using the plaintiff’s trademark and
brand name CASIO in its domain name, the Court held that the
claim related to a passing off action in respect of a domain name, and
not to any clandestine specific sale of tangible products. Since the
impugned domain name website was accessible worldwide, the jurisdiction in such matters cannot be confined to the territorial residence
of the defendant. Further, the Court held that proof of actual deception at a particular place is not required. Mere likelihood of deception, whereby an average person is likely to be deceived or confused,
is sufficient to entertain an action for passing off.
The court observed that the “objection with regard to the territorial jurisdiction needs to be considered in the overall context of
advances and developments in the field of information technology
and not in the usual conventional manner ….” In a nutshell, the
decision provides brand owners the right to choose the forum in a
domain name dispute.
Although the grant of the interim injunction has not been
appealed, the principal case between the parties remains pending.
OAPI
PERU
Amendment of Regulation for Extension of
Existing Rights to New Territories
Fair Use of Trademark, But Not Domain Name
On December 18, 2003, the OAPI Administrative Council passed a
resolution to amend the regulation concerning the extension of rights
in respect of new OAPI member states.
An OAPI registration covers those territories that were members of
OAPI at the time of filing the application for registration. The
Extension Regulation of December 4, 1998 introduced procedures
for the extension of an existing OAPI registration to states not originally covered by that registration, or for the extension of existing registered rights in a new OAPI member state to the other OAPI states.
There was a non-extendable deadline of 18 months in which to apply
for the extension of rights.
Under the revised regulation, extension of rights may now be
requested at any time during the life of the existing registration, subject to the payment of a late fee if the extension application is filed
more than 20 months after the date of the new member state joining
OAPI. Accordingly, it will now be possible to apply for extension of
rights for which previous deadlines were missed.
The current OAPI members are Benin, Burkina Faso, Cameroon,
Central African Republic, Chad, Congo, Equatorial Guinea
(November 23, 2000), Gabon, Guinea (January 30, 1990), Guinea
Bissau, (July 8, 1998), Ivory Coast, Mali (September 30, 1984),
Mauritania, Niger, Senegal and Togo. (Dates of adhesion of new
member states are indicated in parentheses.)
Contributor: Caroline van Dijk, Lysaght & Co., Jersey, Channel Islands; Verifier:
Maurice Batanga, Organisation Africaine de la Propriete Intellectuelle, Yaounde,
Cameroon
6
Vol. 59, No. 6
Contributor: Taj Kunwar Paul, Rouse & Co. International, Dubai, United Arab
Emirates; Verifier: Manmohan Singh, Manmohan Singh Associates, New Delhi,
India
The Peruvian PTO Appeal Board has issued Resolution 447-2003TPI-INDECOPI in file 127218-2001, declaring well-founded the
infringement action filed by Caterpillar Inc. against COMERCIO E
IMPORTACIONES E.I.R.L. for selling spare parts of different
brands that were compatible with Caterpillar brand products and
advertising them as “Legitimate Equivalent Spare Parts.”
While the PTO had considered that the defendant was using the
trademarks CAT and CATERPILLAR for information purposes
only and thereby not infringing Caterpillar Inc.’s rights, the Appeal
Board held that the defendant’s use of the website
www.catdelperu.com caused consumers to think that the defendant
had a business relationship with the trademark owner, thereby
infringing Caterpillar Inc.’s rights.
After defining domain names as “atypical distinctive signs,” and
the second level as containing the distinctive function usually bearing the name or trademark of the company, the Appeal Board concluded that the use of a domain name may cause risk of confusion
with a registered trademark if the domain name and the registered
trademark are similar or identical and the services or products for
which the trademark is registered are identical or similar to those for
which the domain name is being used.
The risk of confusion and therefore infringement of trademark
rights can arise when the website does not clearly warn that the person operating said website is not the trademark owner and bears no
relation to the trademark owner.
Contributor: Claudia Fernandini, Clarke, Modet & C°, Lima, Peru; Verifier: Enrique
Berckholtz, Barrios, Fuentes, Urquiaga Abogados, Lima, Peru
Representing the Trademark Community since 1878
ROMANIA
Determination of Requisite Confusion in
Trademark Opposition Proceedings
At the beginning of January 2004, the Examination Committee
(Committee) of the Romanian State Office for Inventions and
Trademarks (SOIT) rendered judgments in two trademark opposition proceedings. The first was between Glaxo Group Limited
(Glaxo) and Prisfar Produtos Farmaceuticos SA (Prisfar), and the second was between Sanofi-Synthelabo (Sanofi) and Prisfar. In both
proceedings, the Committee interpreted the meaning and type of
confusion and association required when opposing pharmaceutical
trademark applications seeking protection for “pharmaceutical products” generally.
On July 16, 2002, Prisfar applied to register an international trademark for FORTAL in Class 5 (which includes “pharmaceutical, veterinary and hygiene products”). In October 2002, the trademark was
published in the WIPO Gazette. On January 6, 2003, Glaxo filed an
opposition with SOIT against the trademark based on the similarity
of the mark with its own Romanian-registered word marks FORTUM, and FORTAZ, registered in Class 5 for “pharmaceutical products and substances.”
The Committee reasoned that because FORTAL covered the very
general specification “pharmaceutical products” and Glaxo’s trademarks were also protected for “pharmaceutical products,” the risk of
Trademark Owners Gain Victory
CONTINUEDFROM PAGE
1
tistics did not “provide compelling prima facie support for the proposition that there existed or exists (in the sense indicated in the authorities) a well established medical prescriptive practice ... which hindered or hinders effective access to the market or a substantial part of
it by importers of refill packs containing 60 capsules.”
This is partly because for most of those five months, 60-packs were
simply not available. The Appeal Court indicated that for there to be
a well established prescriptive practice, it must “causally have a practical inhibiting effect on access to the market of refill 60-capsule
packs.” The Appeal Court Judges stated, “No doubt the marketing of
familiar 30-packs would initially be an easier task and thus a preferred
course for the parallel importers.”
Although it is only at interim stage, this straightforward decision
by the Scottish Appeal Court has established a helpful precedent for
trademark owners in the pharmaceutical area. It should at least prevent parallel importers from relying on the mere fact that the trademark owner sells in a certain pack size in a certain market (i.e., the
state of importation) to justify re-boxing to sell that particular pack
size.
Contributor: Gill Grassie, Maclay Murray & Spens, Edinburgh, Scotland; Verifier:
Roisin Higgins, Advocate, Scottish Bar, Edinburgh, Scotland
confusion and association should be assessed according to the average
consumer (but not taking into account the specific consumer to
whom the product bearing the trademark is aimed or how specialized
such a consumer is on that basis). The Committee stated that FORTAL was sufficiently different phonetically from FORTUM and
FORTAZ, and rejected Glaxo’s opposition.
However, in parallel opposition proceedings filed with SOIT by
Sanofi, the Committee’s decision resulted in the opposite outcome.
Sanofi filed an opposition with SOIT in November 2002 against the
same trademark, FORTAL, based on the similarity of the mark with
its own nationally registered word mark FORTRAL, protected in
Class 5 for “pharmaceutical products and substances.”
The Committee reasoned that because FORTAL and FORTRAL
are very similar phonetically and both registered for “pharmaceutical
products,” the risk of confusion (including the risk of association)
existed. Consequently, the Committee accepted Sanofi’s opposition
and rejected the FORTAL trademark.
Both decisions may be further appealed to the Re-Examination
Committee of SOIT.
Contributor: Alexandru Harsany, Nestor Nestor Diculescu Kingston Peterson SCA,
Bucharest, Romania; Verifier: Doina Tuluca, Inventa Trademark and Patent Office,
Bucharest, Romania
INTA Bulletin Board
The following individuals joined Fish & Richardson:
• James W. Babineau, L. Lee Crews, Jennifer K. Godsil, Laurie
Butler Lawrence, David A Simons, Craig R. Smith (Boston,
Massachusetts, USA office)
• Kelly D. Hine, Neil J. McNabnay, Spencer C. Patterson,
Jason
C. Rodgers (Dallas, Texas, USA office)
• Timothy Devlin (Delaware, USA office)
• Stacy J. Grossman, John T. Johnson, Peter L. Korn, Jr. (New
York, New York, USA office)
• James S. Cleary, Roger A. Denning, John P. Schnurer,
Andrew
D. Skale, Andrew Watson (San Diego, California, USA office)
• Brian J. Dorini (Washington, DC, USA office)
Arthur Loke, Stephen Soh, Patsy Koh and Edward Tay became
principal partners at the new firm of Arthur Loke & Partners in
Singapore.
Karen Anne Hayne became a partner at the law firm of Coudert
Brothers LLP in Sydney, Australia.
The “INTABulletin Board” announces news of a professional nature about individuals who belong to INTAcompanies. To submit an item for consideration, send a
message to [email protected].
www.inta.org
Vol. 59, No. 6
7
Mark Your Calendars
April 7 or 8, 2004
INTA BULLETIN EDITORIAL BOARD
Workshop on Electronic Filing: What, Why and How
New York, Chicago, Dallas, San Francisco
To contact a member of the INTA Bulletin, send an
email to [email protected].
April 12 – 23, 2004
Editor-in-Chief
Trevor Stevens, Davies Collison Cave
Roundtable on the Role of Trademarks in Business Transactions
Various cities in the United States
Senior Editor
Mary DeLongis, Diageo North America Inc.
Executive Editor: Law & Practice, Middle East,
Africa, Pacific Rim
Kay Rickelman, Spoor & Fisher
Executive Editor: Law & Practice, Europe
and Central Asia
Richard Penfold, Harbottle & Lewis
Executive Editor: Law & Practice, Americas
Jennifer Van Kirk, Lewis and Roca LLP
Executive Editors, Features
Amanda Laura Nye, King & Spalding
Adriana Casati, Berkemeyer
INTA BULLETIN STAFF
Managing Editor
Naeran Rubio
Associate Editor
Elaine Czach
Designer
Katie Frichtel
INTA SENIOR STAFF
Executive Director
Alan C. Drewsen
Director, Human Resources & Association
Governance
Maria Bachman
Director, Education
Ann Eng
Director, Marketing & Communications
Daryl G. Grecich
Executive Assistant
Maribel Lajara
Director, External Relations
Bruce MacPherson
May 1 – 5, 2004
126th Annual Meeting, Atlanta, Georgia, USA
June 14 – 25, 2004
Trademark Administrators Roundtables
Various cities in the United States
June 21 – 22, 2004
Shanghai Forum 2004
Pudong Shangri-La
Shanghai, People’s Republic of China
September 20 – 21, 2004
Famous and Well-Known Marks Forum, Brussels, Belgium
October 3 – 6, 2004
Trademark Administrators Conference 2004, Arlington, Virginia, USA
Pay directly from your bank account whenever you register for an INTA
event or renew your membership online with INTA’s new automated clearing house system. Visit the INTA website at www.inta.org/events or call
Customer Service at +1-212-768-9887, ext. 157.
Although every effort has been made to verify the accuracy of items carried in this
newsletter, readers are urged to check independently on matters of specific concern
or interest. The INTA Bulletin primarily relies on members of the INTA Bulletin
Committee and INTA staff for content but also accepts submissions from others. The
INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication.
Manager, Finance & Administration
Melissa Starr
Director, Operations & Meetings
Feikje van Rein
International Trademark Association
INTA Department Email Addresses
1133 Avenue of the Americas
New York, NY 10036 USA
+1-212-768-9887 • f: +1-212-768-7796
www.inta.org • [email protected]
Executive Director: [email protected]
Membership: [email protected]
TM Affairs & Policies: [email protected]
Meetings: [email protected]
Publications: [email protected]
The Trademark Reporter®: [email protected]
Public Relations: [email protected]
Administration & Finance: [email protected]
Customer Service: [email protected]
Job Bank: [email protected]
Brand Names Education Foundation: [email protected]
Sponsorship: [email protected]
© 2004 International Trademark Association