GlobalReportChinaChina in Focus at Hong Kong Annual Meeting

EuropeTrademark Reform Process Continues

Latin America The Ambush Marketing Challenge Comes to Brazil

North America Parliament Approves Canadian Trademark Amendments

July 2014, Vol. 1, No. 1

Trademark TransformationCountries around the globe strengthen trademark laws

INTA Global Report, July 1, 2014, Vol. 1 No. 12

GlobalReport

Africa 4 Asia-Pacific 6 China 8 Europe 10 India 12 Latin America 14 Middle East 16 North America 18

This report was compiled with the help of INTA’s Global Advisory Councils, as well as the INTA Bulletin Committee and the authors named herein. Please direct all comments/feedback to emcdermott@inta.org.

This first official issue of INTA’s quarterly Global Report comes following the Association’s Annual Meeting in Hong Kong—the first ever held in Asia, and a shining success on all fronts, with more than 8,600 total attendees. The many alliances forged during that trip, which are detailed in this report, will help to further strengthen the Association’s presence in the region.

Each of the Councils met in Hong Kong to dis-cuss how to fulfill their three main objectives:

1. Advise INTA on how to grow corporate membership from each region/country.

2. Advise INTA on public policy and advocacy efforts.

3. Better communicate key issues to our membership.

It is this third objective, together with the 2014–2017 Strategic Plan goal of internation-al expansion, that inspires this quarterly Global Report.

The Global Advisory Councils are headed by seasoned INTA volunteers and committee mem-bers who have helped to prepare and suggest the contents of these reports.

The report does not replace INTA’s bi-monthly newsletter, the INTA Bulletin, but instead offers a snapshot of activities, news and policy devel-opment on a quarterly, regional basis.

We hope you will find it a useful tool, and we welcome your feedback.

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 Bulletin 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 emcdermott@inta.org. Global Report sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.

© 2014 International Trademark Association

Global Report StaffChief Executive Officer Etienne Sanz de Acedo

Director, Marketing and Communications James F. Bush

Managing Editor, News & Policy Eileen McDermott

Senior Periodicals Editor Joel L. Bromberg

Designer Eric Mehlenbeck

INTA Officers & CounselPresident Mei-lan Stark, Fox Entertainment Group

President Elect J. Scott Evans, Adobe Systems Incorporated

Vice President Gabrielle Olsson Skalin, Inter IKEA Holding Services S.A.

Vice President Lucy Nichols, The Center for Responsible Enterprise And Trade (CREATe)

Treasurer Joseph Ferretti, PepsiCo, Inc./ Frito-Lay, Inc.

Secretary Ronald Van Tuijl, JT International S.A.

Counsel David Fleming, Brinks Gilson & Lione

Mei-lan Stark (Fox Entertainment Group, USA), INTA 2014 President

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INTA’s Global Trademark Resource, Country Guides, provides valuable information in over 100 jurisdictions on trademark law and practice, including:

· Trademark filing· Prosecution· Registration· Maintenance· Enforcement

Newly Updated and Expanded!Increased coverage of:

• Nontraditional marks• Geographical indications• Domain names

INTA membership gives everyone in a member office access to INTA’s global trademark resources, which also include the INTA Bulletin, The Trademark Reporter, and other multijurisdictional databases.

www.inta.org/globaltrademark

Taking your business international?

INTA Global Report, July 1, 2014, Vol. 1 No. 14

Global Report: Africa

Chair Lara Kayode, O. Kayode & Company, Nigeria

Council MembersBarbara Berdou, Berdou Attorneys, South AfricaDavid Broodryk, Remgro Management Services Ltd, South AfricaVanessa Ferguson, D.M. Kisch Inc., South AfricaBrenda Kahari, B.W. Kahari, ZimbabweMadelein Kleyn, Oro Agri Inc., South AfricaWilliam Mansfield, ABRO Industries, Inc., USAStaff LiaisonBruce MacPherson, Director, External Relations bmacpherson@inta.org

Africa Global Advisory Council

Interview: Dr. Paulin Edou Edou, African Intellectual Property Organization (OAPI) Dr. Paulin Edou Edou became head of the Af-rican Intellectual Property Organization (OAPI) on August 1, 2007. He shared his vision for OAPI, as well as some of the challenges the Or-ganization faces, with the INTA Global Report.

What does it mean to be an OAPI member state?Becoming an OAPI member state simply means ratifying the Bangui Agreement, which is the Organization’s founding text. This agree-ment reinforces creativity and the protection of intellectual property rights, to guarantee investments, facilitate technology transfers and thus contribute to the economic growth of our member states. A state’s ratification of the Agreement entitles intellectual property rights holders to protection not only within that state but also throughout the OAPI territory. In other

words, submissions to OAPI in Yaoundé con-stitute rights filed in each of our 17 member states. These include: Benin, Burkina Faso, Cameroon, Central African Republic, Comoros, Congo, Equatorial Guinea, Ivory Coast, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Chad and Togo.

What is your vision for OAPI?My vision has always been to build a modern organization. In the African environment—which is often resistant to change—you need to have strong convictions, without which any change is bound to fail. My ambition was to push our pan-African institution up to the level of its peers around the world.

The Organization has four main missions:

Growth and Change Provide Opportunity for Trademark OwnersAfrica is quickly changing and rising in impor-tance to the global economy and to trademark owners. Especially significant is the surge of Chi-nese companies doing business in Africa. This presents a huge opportunity for INTA and its members, not only to assist Chinese and other companies seeking to protect their marks, but also in building relations with African registries and enforcement agencies. How to leverage these changes became the focus of the Africa Global Advisory Council during the Association’s 136th Annual Meeting, in Hong Kong.

One way for INTA to help is through its com-mittees, particularly several within the Policy Development & Advocacy (PDA) Group—for example, the Anticounterfeiting, Legislation & Regulation and Trademark Office Practices committees. Although eager for more volun-teers in the region, the dedicated leaders and volunteers on Africa-related subcommittees are pushing forward projects that will have an impact on trademark prosecution and enforcement issues, spurred by the exponen-tial growth in trade and investment on the continent. Complementing the policy work are project teams from INTA’s Education and Legal Resources committees, which are planning forums and training for members and officials over the next year.

The Council believes a high priority should be to get more information to INTA members on is-sues facing trademark owners and practitioners in Africa and on how the Association is respond-ing. To this end, INTA’s Communications staff has developed a “Messaging Tool Kit” to inform members, as well as prospective members and

governments, about the Association’s overall strategic objectives and activities. Council mem-bers would like to see the Tool Kit customized for the special situation in Africa and provide detailed information about specific projects.

Another way to leverage the opportunities on the continent is to connect with INTA’s multina-tional corporate members that have extensive operations in Africa. Membership marketing brochures, as well as personalized messages to trademark counsel at both corporate and regional headquarters, should spur consid-eration of additional corporate supplemen-tary memberships by in-country operations. Having corporate “boots on the ground” has a tremendous impact on national governments that are sizing up INTA as a potential partner in advancing their trademark regimes.

Another key to improving relations with nation-al offices is working with the two key regional organizations in Africa, OAPI (see interview) and ARIPO. Both are INTA members, have cooperation agreements with the Association and are willing to serve as a conduit to na-tional officials. Encouraged by the attendance of several national offices from Africa at the

See “Interview” on page 5

Annual Meeting in Hong Kong, the Council is making plans to expand this participation manyfold at the 2015 Annual Meeting in San Diego, California.

Finally, the Africa Global Advisory Council is providing guidance to INTA in connection with a two-day, multitopic forum, which would be held in Africa in 2015. In addition to identifying desirable venues with convenient access for INTA members both inside and outside Africa, the Council is seeking ideas on topics most relevant to members. Your ideas would be par-ticularly welcomed. Please email suggestions to aeng@inta.org.

The surge of Chinese companies doing busi-ness in Africa presents a huge opportunity.

5

Global Report: Africa

Additional Resources on INTA.orgCountry Guides Recently added: Morocco

Country Portal

Testimony and SubmissionsINTA Comments on South Africa Protection of Traditional Knowledge Bill

Trademark Office Benchmarking

Amie Bensouda & Co LPDDJ Law LDA Ellis & Co. Mehrteab Leul & Associates Law OfficeRoyal Heritage

Welcome! Recent New Members

Interview: Dr. Paulin Edou Edou Continued from page 4

to issue industrial property titles, to provide intellectual property training, to contribute to our member states’ economic development and to participate in documentation and information actions.

What challenges do you face in your work today?Other than infrastructure modernization proj-ects—including, first, the construction of a new

headquarters building—we have invested in training and the demystification of intellectual property, through awareness-raising actions at multiple levels. Recently, the Organization has become extremely involved in intellectual prop-erty training, through the creation of a Master II program. Now in its fourth year, the program has already trained more than 100 managers. Even more recently, “intermediate” training has been launched. Indeed, after we diversified our training options, extending them to journal-ists and lawyers, we did not want to leave our system’s other users stranded by the wayside. This intermediate training will be provided at an annual session, designed to introduce people of varied profiles to intellectual property.

What direction has IP taken in your territo-ries in recent years?Today, Africa is a major target of global economic transactions. It goes without saying that this is the result of, first, our continent’s geographic location and, second, its unique human, geological and other contributions. However, despite OAPI’s efforts over the years, we recognize that our African states are

struggling to establish protective regimes with regard to their knowledge and innovations. This is why we continue to emphasize aware-ness-raising actions. ■

ETHIOPIA It’s Time to Audit Your Portfolio!

Egypt Increase in Official Fees

According to Council of Ministers Regulation No. 273/2012 on Trademark Registration and Protection, trademark owners must now take the following measures:

• New trademark applications must be submitted no later than June 22, 2014, for all trademarks registered in the country before July 7, 2006.

• These trademarks will not be registered automatically; these new applications will be subject to examination on absolute and relative grounds.

• Re-registration will not be required for trademark applications filed between July 7, 2006, and June 22, 2007 (inclusive). These registrations are now considered due for renewal, as the protection period is now sev-en years, instead of six, from the filing date. Renewal filings must be submitted before June 22, 2014.

• Trademark applications filed after June 22, 2007, that have already matured into reg-istrations will be receiving new registration

certificates. Requests should be submitted to the Trademark Office for this purpose well before the renewal due date of each mark.

The Egyptian government recently revised the official fees schedule in connection with the registration of trademarks. By virtue of

Ministerial Decision No. 95 of 2014, issued on March 19, 2014, the official fees for a number of trademark-related matters have increased substantially. Specifically, the increase affects the fees for (1) oppositions; (2) availability search and status search; and (3) obtaining certified copies of pending applications.

The new rates went into effect on April 1, 2014.

Contributor: Zeina SalamehSaba & Co. IP (Head Office), Beirut, Lebanon

Verifier: Yared TesfayeIndustrial Property Office, Addis Ababa, Ethiopia

Contributor: Mohammed Al-Masri Saba & Co. IP, Cairo

Verifier: Hassan Abd El Tawab El ShehemiArab Lawyers Hassan El Shehemi Associates, Cairo

In the African environ-ment—which is often resistant to change—you need to have strong convictions, without which any change is bound to fail.

INTA Global Report, July 1, 2014, Vol. 1 No. 16

INTA Commits to Asia Events During Hong Kong Annual MeetingThe Association’s first Annual Meeting in Asia far surpassed all expectations, with 8,605 total attendees—the largest attendance ever outside North America—joining INTA in Hong Kong. Overall, the meeting saw the most attendees from Asia ever, with a final count of 2,462 from the East Asia and Pacific region.

In his opening ceremony address, INTA CEO Etienne Sanz de Acedo announced that the Annual Meeting will be back in Asia in 2020, a testament to the Association’s commitment to expanding its presence in the region. “We want to do more,” Mr. Sanz de Acedo said, adding that, in 2015, INTA will open a repre-sentative office in Southeast Asia and hold a conference in Asia on nontraditional marks.

While in Hong Kong, the Asia-Pacific Global Advisory Council also met to discuss the need to expand corporate membership in the region. In view of the number of growing and healthy economies that currently exist in Asia, the Council believes that more can be done to attract Asian brand owners to the Association. Recommendations include providing more educational programming in the region and

holding at least some of these events in the local language. Such outreach might build upon and expand existing INTA efforts to offer training to examiners and customs officials.

The Council also proposed several marketing ideas to reach corporate members, such as preparing a short pamphlet on the benefits of INTA membership (preferably in local languages), filming the testimonies of current brand owner members and having such films available on the Association’s website and social media sites, having INTA representa-tives attend non-INTA conferences (including key industry trade shows, in-house counsel forum conferences and bar association conferences), meeting with non-member cor-porations to introduce membership benefits to them and creating more opportunities for exposure to INTA through open, in-person social networking events, such as the Pre-

Co-ChairsZaheera Hashim, Procter & Gamble Europe S.A., Singapore branch, Singapore

Mona Lee, Hanol Law Offices, South Korea

Council MembersAlan Adcock, Tilleke & Gibbins, ThailandEarl Gray, Simpson Grierson, New ZealandDaniel Greif, Siam Premier International Law Office Limited, ThailandMarion Heathcote, Davies Collison Cave, AustraliaSharmini Lohadhasan, BP Singapore Pte Limited, SingaporeAdam Sears, Davies Collison Cave, AustraliaLynell Tuffery Huria, AJ Park, New ZealandMichael Wolnizer, Davies Collison Cave, AustraliaJay Young-June Yang, Kim & Chang, South KoreaChristopher Young, Minter Ellison Rudd Watts, New ZealandStaff LiaisonSeth Hays, Manager, External Relations, Asia-Pacific shays@inta.org

Asia-Pacific Global Advisory Council

Global Report: Asia-Pacific

In 2015, INTA will open a representative office in Southeast Asia and hold a conference in Asia on nontraditional marks.

Annual Meeting Receptions that have been held in the past few years.

The Council will also be looking into providing recommendations on venues to consider for the 2020 Annual Meeting, as well as pro-gramming ideas.

INTA Submits First Brief to a Court in JapanINTA’s Amicus Committee has submitted an opinion to the Supreme Court of Japan in a case involving the LADY GAGA trademark, which is owned by Ate My Heart, Inc. The As-sociation believes the Court should accept Ate My Heart’s petition for appeal and overturn the final appeal of the IP High Court decision (Case No. 2013 (Gyo-Ke) 10158), which affirmed a decision of the Japan Patent Office (JPO) rejecting the mark (Appeal No. 2011-27961).

The IP High Court agreed with the JPO’s as-sessment that Ate My Heart Inc.’s mark LADY GAGA lacked distinctiveness in relation to “phonographic records; downloadable music files; exposed cinematographic films; pre-re-corded video discs and video tapes” in Class 9, and would be misleading as to the quality (content) of goods if the mark were used for goods unrelated to Lady Gaga.

INTA argues that this is an incorrect assess-ment, for the following reasons, among others:

1. LADY GAGA does function as a badge of ori-gin for Class 9 products and is not descrip-tive in that the mark does not demonstrate any particular quality (content) or other characteristics of the goods.

2. The decision would raise questions of consistency with existing trademark registrations. “For example, it is a known fact that the famous trademarks in the fashion industry come from the name of the founder and the designer of the brand,” said the brief, and these marks have not been rejected for the reason that the mark would mislead consumers about the quality (content) of the goods.

The IP High Court’s decision “suggests that

the more famous an artist or other person well known in their industry is, the more likely an application to register that artist’s name as a trademark will be rejected if the application covers goods which are associated with the artist and, indeed, if the application covers goods which are not associated with the artist.”

The ruling is also inconsistent with internation-al practice, including in the USA, the UK, Korea and Australia. The full brief can be download-ed here.

For more information, please contact INTA’s Manager, External Relations, Asia-Pacific, Seth Hays, at shays@inta.org.

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Global Report: Asia-Pacific

Ricardo Blancafor was appointed as the Direc-tor General of the Intellectual Property Office of the Philippines (IPOPHL) in February 2010. Mr. Blancafor spoke with the INTA Bulletin about the steps IPOPHL and the government are taking to make IP an “engine of growth” for the country.

What are the biggest challenges you face?So far, the biggest challenge is to get the rest of the government involved in intellectual property development and protection. It is not an easy process, but I am delighted to share that we have managed to make some gains in that area. We need to make each concerned stakeholder in the government understand that IP encompasses almost every sector and plays an important role in the country’s growth and development.

Are there particular changes to the trade-mark laws that you would like to see enact-ed, and is there any pending IP legislation that might help?One of the areas that we are looking at is the registration of nontraditional marks in the Phil-ippines. In this time of innovative marketing,

nontraditional marks—such as colors, shapes, moving images, holograms, positions, sounds, scents, tastes and textures—have become effective business tools.

You met with INTA staff and officers last year during a delegation visit to the Philippines. What was the outcome of that? We discussed future initiatives related to capacity building for trademark examiners at IPOPHL and to the streamlining of regulations to make the trademark registration process faster and more convenient to applicants.

We also discussed future programs on brand development and further INTA assistance to strengthen and enhance the awareness of trademark registration for SMEs. IPOPHL is grateful for INTA’s generosity in always inviting delegates from the Office to INTA events.

Are there any major trademark-related projects underway within the Office that you would like to highlight?IPOPHL is now drumming up awareness and adoption of the Madrid Protocol. There are now at least 1,013 Madrid designations and 656

Madrid applicants. We see our recent acces-sion to the Madrid Protocol as facilitating the expansion of our home-grown brands abroad. The system will also make the Philippine mar-ket more attractive to foreign brands.

In addition, the Philippines is preparing to introduce a registration system for geographi-cal indications (GIs).This is one way to develop further unique Filipino artistry and products and as a result boost our exports and tourism industries.

What one major goal do you have for the Office?To make the IP system an engine of growth for the Philippines.

Read the full interview in the INTA Bulletin.

Trademark Office Profile: Ricardo Blancafor, Intellectual Property Office of the Philippines (IPOPHL)

Roundtable Report

The fourth and fifth rounds of negotiations on the Regional Comprehensive Economic Partnership (RCEP) took place during the second quarter of 2014. The RCEP is a pro-posed free trade agreement (FTA) between the ASEAN member states and the six states with which ASEAN has existing FTAs: Aus-

tralia, China, India, Japan, Korea and New Zealand. Intellectual property is one of the issues being discussed. Although negotia-tions are closed to the public, INTA’s Free Trade Agreement Committee—Asia-Pacific Subcommittee will be engaging negotia-tors to highlight the Association’s priority

issues. These include mandating accession to international trademark treaties such as the Madrid Protocol, including protection for well-known and nontraditional marks and automating trademark office practices and procedures, among other issues.

Issues to Watch: RCEP Negotiations

At an April 10 INTA roundtable in Hanoi, Vietnam, speakers gathered to discuss “Overlapping Protection of 3D Marks: Industrial Design and Copyrights.” Bross & Partners hosted the event.

Accolade WinesAMOREPACIFICM-System Co.,Ltd.OT Group ICaRe InstituteOzaki International Co., Ltd.Ronba TechnologySeiko Epson Corporation

Welcome! Recent New Members

Additional Resources on INTA.orgCountry Guides Recently added: Papua New Guinea and Samoa

Country Portal

Representatives of INTA member firms and nonprofit organizations teamed up in Singapore with the IP Academy of Singapore for a roundtable titled “Marking for a Cause” on April 4.

INTA Global Report, July 1, 2014, Vol. 1 No. 18

Global Report: China

China in Focus at Hong Kong Annual Meeting

Hong Kong Annual Meeting: China Reception

Co-ChairsAyala Deutsch, NBA Properties, Inc., USAZhen (Katie) Feng, Hogan Lovells (Shanghai), ChinaCouncil MembersGeorge Chan, Rouse & Co. International LLP, Ltd., ChinaJing He, Anjie Law Firm, ChinaKa Yan Karen Law, Alibaba Group, ChinaLucy Nichols, The Center for Responsible Enterprise and Trade, USAChen Yoadong, AkzoNobel China Investment Company, Ltd.Fang Zhoum China Telecom, ChinaStaff LiaisonSeth Hays, Manager, External Relations, Asia-Pacific, shays@inta.org

China Global Advisory Council

In a critical assist to INTA’s Strategic Plan goals, the Association’s leadership hosted a number of high-level Chinese government officials during the 2014 Annual Meeting in Hong Kong, and welcomed their valuable participation in several key sessions and meet-ings. As China becomes a more open market and continues to strengthen its IP regime, the importance of engagement at the government level cannot be emphasized enough.

Following a productive visit with INTA President Mei-lan Stark, CEO Etienne Sanz de Acedo and other INTA delegation members in March, Mr. Li Zhenzhong, Director-General of the Office of the National Leading Group on the Fight against IPR Infringement and Counterfeiting (NLGO), graciously accepted the Association’s invitation to Hong Kong. Mr. Li’s participation was instrumental to the success of a session that marked another first—a panel composed of Chinese government officials and a dis-cussion that was conducted in Mandarin and simultaneously translated into English. The session also included Judge Yin Shaoping, of the Intellectual Property Tribunal of China’s Su-preme People’s Court; Ms. Zhang Feifei, from the Division of Intellectual Property Rights at the Economic Crime Investigation Department of the Ministry of Public Security; and Mr. Tao Xinliang, Dean of the Intellectual Property Insti-tute of Shanghai University. The panel provided an interactive forum for the representatives to

report on the work of their departments and to exchange views with one another, as well as with INTA members and other attendees.

Mr. Li also participated in the meeting of the China Subcommittee of INTA’s Anticounter-feiting Committee. He reported that in 2013 China dealt with 280,000 criminal cases relating to IP crime, captured 53,000 criminal suspects, concluded 12,000 criminal cases and effectively sentenced 14,000 suspects. A delegation of ten representatives from the China Trademark Association (CTA), which is under the leadership of China’s State Adminis-tration for Industry and Commerce (SAIC), also attended the Annual Meeting. They introduced

CTA’s mission to the INTA leadership and explained their key goal of publicizing and implementing China’s new Trademark Law. CTA also plans to launch a Product Brand Research Institute by September of this year, aimed at gathering public opinion on key project topics. In addition, CTA will celebrate its 20th anni-versary in September with the Brand Economy Summit and will host the China International Trademark Festival in November. INTA also hosted a number of officials from Guangdong Province IP-related ministries. Notably, officials from Guangdong Customs attended the full committee meeting of the Anticounterfeiting Committee.

During the meeting of the China Global Advi-sory Council in Hong Kong, Council members discussed ways to further improve the Associ-ation’s communication efforts in China. Part-nering with associations such as the Quality Brands Protection Committee (QBPC)—with which INTA signed a Cooperation Agreement in Hong Kong—and the NLGO was one of the Council’s recommendations. Working together with such groups will be a focus for INTA as its work and presence in China expands.

In 2013 China dealt with 280,000 criminal cases relating to IP crime and sentenced 14,000 suspects.

From left: QBPC Chairman Steven Wang, Jack Chang (General Electric, China), INTA President Mei-lan Stark, INTA CEO Etienne Sanz de Acedo.

9

Issues surrounding the authorization and determination of trademark rights under China’s new Trademark Law were the subject of a roundtable discussion hosted by Unitalen Attorneys at Law in Beijing on April 18. Among other topics, speakers shared their opinions about what the Su-preme People’s Court’s legal interpretation

on jurisdiction of trademark cases will be after the amended Trademark Law takes effect. Participants included a judge of the Supreme People’s Court, Unitalen attor-neys and representatives of more than six IP agencies and law firms.

Global Report: China

Additional Resources on INTA.orgChina Microsite

China Bulletin

Country Guides: China

Country Portal: China

Testimony and Submissions

Trademark Office Benchmarking

Recent Roundtable

Qiuli Huang, Trademark Specialist, Proya Cos-metics Co., Ltd.

When did you join INTA? April 3, 2014.

Why did you join? We joined in order to participate in the 2014 INTA Annual Meeting in Hong Kong and to learn about other countries’ intellectual property policies and strategies in preparation for the company’s internationalization. INTA membership provides

an opportunity to learn about the ex-perience of others, and we hope to obtain better infor-mation and advice on trademarks, patents and other aspects through this platform.

What is Proya?Proya Cosmetics Co., Ltd. is a large group inte-grating research and development, production and sales of cosmetics. The company currently has six brands, including Proya, UZRO, Anya, Yoya, Cats & Roses, and O’Laxsn, which cover skin care, cosmetics, personal care, fragrance and other fields.

Based on natural and healthy skin care as its core philosophy, Proya Cosmetics Co., Ltd. has occupied a large market and developed rapidly in the cosmetics industry with a distinctive brand image, superior product quality, innovative mar-keting strategies and an accurate grasp of the cosmetics market, becoming one of the leading cosmetics companies in China.

What do you see as the biggest challenge to effective IP protection/enforcement in your country or region?One of the main challenges is a lack of commu-nication platforms, resulting in poor communi-cation among companies and between compa-

nies and professional firms and companies and government. Many companies obtain trade-marks and patents, but the actual protection they get is relatively superficial and does not meet the specific needs of the company.

New Member Spotlight: Proya Cosmetics Co., Ltd.

At-A-GlanceFirm name: Proya Cosmetics Co., Ltd.

Number of employees worldwide: 2,000

Number of offices worldwide: Headquartered in Hangzhou, China. The production base is located in Huzhou, Zhejiang. We also have independent subsidiaries in China, Korea and France.

Currently, there are more than 4,000 Proya stores in China.

Main IP focus: Trademarks and patents

INTA leadership—including President Mei-lan Stark, CEO Etienne Sanz de Acedo and President Elect J. Scott Evans (Adobe Systems, USA)—and other INTA corpo-rate members will meet with government officials in Beijing, China and present at an

INTA conference set for late October 2014. This will be the second high-level delega-tion INTA sends to Beijing this year, with a strong focus on continuing work with the National Leading Group Office. Two confer-ences are tentatively being planned: one

will focus on online counterfeiting policies; the other will focus on industry issues, such as the issue of Chinese industries’ trademarks being squatted in bad-faith (bad faith registrations) in jurisdictions outside China.

Bose CorporationHEC Pharm Co., Ltd.Oriental DreamWorksShisheido China Company, Ltd.Schneider Electric

Coming Up: INTA Heads Back to Beijing

Qiuli Huang (Proya Cosmetics Co., Ltd., China)

Welcome! Recent New Members

INTA Global Report, July 1, 2014, Vol. 1 No. 110

The Journey Toward Trademark Reform Continues

Global Report: Europe

Co-ChairsSheila Henderson, Richemont International Limited, UKGabrielle Olsson Skalin, Inter IKEA Holding Services S.A., Belgium

Council MembersToe Su Aung, Elipe Limited, UKDeborah Brincat, Procter & Gamble France SAS, FranceFleur Folmer, NautaDutilh, NetherlandsOlaf Gillert, Taylor Wessing, GermanyMichael Hawkins, Noerr Alicante IP, S.L., SpainKeith Howick, Carpmaels & Ransford, UKMaximilian Kinkeldey, Grunecker, GermanyBartosz Krakowiak, Polservice Patent and Trademark Attorneys Office, PolandSusan Payne, Valideus, UKEmma Pitcher, Boult Wade Tennant, UKRoger Staub, FRORIEP, SwitzerlandVerena von Bomhard, Hogan Lovells (Alicante) SL y Cia., SpainStaff LiaisonCarla Schwartz, Manager, External Relations, Europe cschwartz@inta.org

Europe Global Advisory Council

During the 2014 Annual Meeting in Hong Kong, INTA’s Europe Global Advisory Council discussed a variety of interesting and challeng-ing issues for brand owners and their repre-sentatives in the region.

Trademark ReformAt the EU level, there are many challenges associated with the ongoing review of the EU’s trademark legislation. The most recent development comes from the Council’s side, which represents national interests, follow-ing the publication of the EU Presidency’s Compromise Proposals for the Community Trade Mark Regulation (CTMR) and Trade Marks Directive (TMD), issued in early May. There seems to be alignment among EU member states on a majority of issues raised in the framework of the review. However, EU Member States remain divided on provisions regarding counterfeit goods in transit, OHIM funding and cooperation between OHIM and national offices. The Association sent its anal-ysis of the proposals and subsequent recom-mendations to the relevant policymakers on May 28. INTA’s main concerns continue to be the proposals dealing with counterfeit goods in transit, the harmonization of procedures and substantive matters across the EU at both the CTM and national levels and iden-tifying the proper framework for cooperation between OHIM and EU national offices.

The Council Trademark Working Group met again at the end of May for further discus-sions, although without any breakthrough on the counterfeit goods in transit issue. The political-level meeting of the Committee of Permanent Representatives (COREPER), which was expected to take place on June 25 in order to finalize agreements, was cancelled. The debate continues, and a potential political meeting to address the remaining issues could be scheduled in July under the Italian Presi-dency of the EU.

Plain PackagingPlain packaging for tobacco products contin-ues to be a hot trademark topic in Europe, as it is across the globe. The World Trade Orga-nization’s (WTO’s) case involving Australia is moving forward, with panels recently appointed (Ukraine, Dominican Republic, Honduras, Cuba and Indonesia). In Europe, the United King-dom and Ireland are moving ahead without waiting to see the outcome of the WTO case. On June 19, the UK government launched a consultation on the introduction of regulations for standardized tobacco packaging. Matters have further progressed in Ireland: On June 10, the Irish Health Minister announced that the government had approved the publication of the Public Health (Standardised Packaging of Tobacco) Bill 2014, which would make Ireland the first EU member state to introduce such legislation and the third country worldwide (fol-lowing Australia and New Zealand). The Bill was presented to the Seanad (Senate) on June 11.

Under the EU’s Tobacco Products Directive, re-vised in 2014, member states have the option to introduce plain packaging. Such an action would trigger a notification process within the European Commission in which Member States would have three months to send com-ments to the Commission. If any member state sends comments, the period will be automat-ically extended to six months to allow other member states to comment.

Black-and-White MarksAt the level of practice developments, OHIM’s Convergence Programme recently issued a Common Communication on the Common Practice of the Scope of Protection of Black and White (B&W) Marks, a topic that has been discussed by INTA’s Trademark Office Practic-es—OHIM Subcommittee and by the Europe Global Advisory Council.

The overall Convergence Programme was launched in 2011 with the goal of facilitating the effort by OHIM and EU national offices to reach a common ground in areas where IP of-fices have different practices, on topics that do not require legislative change. The project on black-and-white marks answers the following questions:

• Is a trademark in B&W and/or gray scale from which priority is claimed identical to the same mark in color?

• Is an earlier trademark in B&W and/or gray scale identical to the same mark in color when assessing relative grounds?

• Is the use of a color version of a trademark registered in B&W and/or gray scale (or vice versa) acceptable for the purpose of estab-lishing genuine use?

The Europe Global Advisory Council will continue to monitor these issues and provide feedback to the substantive policy committees handling these individual topics as needed.

EU Member States remain divided on pro-visions regarding coun-terfeit goods in transit, OHIM funding and cooperation between OHIM and national offices.

11

ASSA ABLOY AB

BTG International Ltd

Grupa Allegro Sp. z o.o.

Louis Vuitton Malletier

Sony Computer Entertainment Europe

Sopharma AD

Welcome! Recent New Members

INTA Participates in Greek EU Presidency Conference on Trademarks and Anticounterfeiting

Global Report: Europe

Additional Resources on INTA.orgCountry Guides Recently added: Croatia, Kosovo, Moldova, Montenegro, Serbia and Ukraine

International Opposition Guides Recently added: Cyprus

Testimony and SubmissionsCommendation of the Implementation of Specialized Court on IP Rights

Trademark Office Benchmarking

Review of the European Union Trademark System

With the review of EU trademark legislation underway, the Greek Presidency of the Europe-an Union hosted a Conference on Trade Marks and Measures against Counterfeiting on June 18 at the Zappeion Megaron conference hall in Athens. Organized by the Greek Ministry of Development and Competitiveness, the confer-ence brought together more than 100 partici-pants, from the European Commission and the Court of Justice of the EU; EU member states; trademark offices (EU member states, OHIM and the USPTO); the judiciary; private-sector stakeholders; and IP associations, including INTA. The Greek Secretary General for Com-merce and Deputy Minister for Development and Competitiveness opened the conference.The event was divided into three sessions: the EU trademark system’s legal reform and re-cent perspectives; effective protection of trade-marks and anticounterfeiting measures; and feedback from trademark users on trademark reform and anticounterfeiting measures.INTA Chief Executive Officer Etienne Sanz de Acedo was an invited speaker on the last session. He reiterated the importance of the current reform for trademark owners and out-lined the Association’s position on issues such

as governance, finances and cooperation be-tween OHIM and national offices; enforcement measures; and harmonization of procedures and substantive matters.

The EU member states remain divided on whether to adopt provisions regarding counter-feit goods in transit. Mr. Sanz de Acedo high-lighted the importance for member states of agreeing on an efficient solution for counterfeit goods in transit, which would depart from the Nokia ruling. He explained the loopholes of the ruling and urged member states to adopt the Commission’s proposal, which would define

the transit of counterfeit goods as trademark infringement. This would benefit trademark owners, legitimate operators and consumers. He also stressed the importance of consulting trademark users on tasks that have a practical impact on them, such as cooperation projects, and suggested having an explicit reference to users within the legislation.

Representatives from MARQUES and CCIA Eu-rope (Computer and Communications Industry Association) also spoke at this session. Mr. Sanz de Acedo was accompanied by INTA Pol-icy Officer Hélène Nicora, from INTA’s Europe Representative Office in Brussels.

The conference provided an invaluable oppor-tunity for participants to network and interact with government officials, share thoughts with other user associations and stakeholders, and advocate the Association’s positions on the review of the European trademark system. The event came at a critical moment in the legislative process, where the Council needs to finalize its position.

Speakers at the Greek Presidency’s Conference on Trade Marks and Measures against Counterfeiting. in Athens.

Issues to Watch: Copycat Packaging

EU Commission Adopts IPR Communications

In late April, the UK Department of Business, Innovation and Skills (BIS) opened a call for evidence (consultation) as part of its review of the Enforcement Provisions of the Consumer Protections from Unfair Trading Regulations 2008 in respect to copycat packaging. INTA sent informal comments to the Department in response. The call for ev-idence asked respondents to outline the na-ture and scale of any problems associated with the current enforcement arrangements, the extent of any consumer detriment aris-

ing from copycat packaging, and the equiva-lent enforcement provisions existing in other Member States, among other topics. The BIS is holding a roundtable discussion on the issues identified in the call for evidence, set to take place on July 14 in London. INTA will be represented at this meeting by Sahira Khwaja (Hogan Lovells, UK), member of the Legislation and Regulation—Europe and Central Asia Subcommittee.

On July 1, the European Commission ad-opted a package comprising both an Action Plan to address infringements of intellectual property rights in the EU and a Strategy for the protection and enforcement of intellectu-al property rights (IPR) in third countries. According to the Commission’s press re-lease, the plans each include ten proposed actions, which will be carried out in 2014

and 2015, monitored by the Commission and considered at a later stage to assess the need for possible legislative measures. The new Italian Presidency of the EU will continue working on the reform of the EU trademark system and will detail its priori-ties on IP rights following the Commission’s July 1 communication.

INTA Global Report, July 1, 2014, Vol. 1 No. 112

Global Report: India

Co-ChairsAlexander Klett, Reed Smith LLP, GermanyPurnima Singh, Mulla & Mulla & Craigie Blunt & Caroe, India

Council MembersMurlidhar Balasubramanian, Castrol India Limited, India

Chetan Chadha, Chadha & Chadha, An Intellectual Property Law Firm, IndiaVikram Grover, Groverlaw, IndiaSarita Joglekar, Reliance Industries Ltd., IndiaShwetasree Majumder, Fidus Law Chambers, India Samta Mehra, Remfry & Sagar, IndiaSean Merrill, General Electric Company, USALatha Nair, K & S Partners, IndiaRanjan Narula, RNA, IP Attorneys, IndiaDee Ann Weldon-Wilson, Exxon Mobil Corporation, USAStaff LiaisonSimran Daryanani Zainulbhai, India Representative sdaryanani@inta.org

India Global Advisory CouncilHong Kong Highlights, Madrid Gains Ground and IP Change on the Horizon

The 2014 Annual Meeting in Hong Kong—the first ever held in Asia—marked a significant event in INTA’s history. It helped the Association to achieve its goal of becoming increasingly global, with the most attendees ever from Asia, including impressive overall attendance from India and several events with an India focus.

The Association held a special India Reception in Hong Kong, during which INTA CEO Etienne Sanz de Acedo made a presentation on the cur-rent status of INTA’s activities in India, including the results of the delegation visit to India in February 2014. As part of the regular confer-ence program, a panel of international speakers also led a session on “Doing Business in India.” Finally, the India Global Advisory Council met in person for the first time in Hong Kong.

The Council members discussed how to expand INTA membership in India further, particularly among Indian corporate members. It was agreed that the benefits of membership for subsidiary companies—such as local net-

working, training and education offerings, the opportunity to influence local developments in trademarks and access to INTA’s global trade-mark resources—must be better communicat-ed, particularly to corporations with branches in India where a foreign company parent entity is already a member. INTA 2014 President Mei-lan Stark also addressed the Council to thank them for their efforts and to stress to members the importance of their advisory role.

Madrid Progress: Slow But SteadyIndia entered the Madrid System on July 8, 2013. To date only about 100 Madrid appli-cations originating from India have been filed. An important discussion during the Council meeting was examining reasons why Ma-drid applications from India are still so low. It appears that WIPO and the international trademark community still have some work to do in explaining the benefits and opportunities offered under the Madrid system to trademark owners from India.

At the same time, India has already been designated in more than 6,000 Madrid appli-cations based on foreign basic marks. This is bound to influence not just the practices of

Indian trademark lawyers but also the strate-gies adopted by Indian brand owners, who may find themselves in a situation whereby they are required to file oppositions or take other mea-sures for the protection of their brand against a trademark applicant who has designated India in its Madrid filing. The Council expects that the gap between outgoing and incoming Madrid filings in India will narrow as domestic confidence in the system builds and as more southern Asian countries join the system.

India has already been designated in more than 6,000 Madrid applications based on foreign basic marks.

Attendees mingle at the India Reception during the Hong Kong Annual Meeting.

Enterprise Successful in Establishing Trans-Border Reputation in India

In Enterprise Holdings, Inc. v. Enterprise Auto Rentals, Justice Manmohan Singh of the High Court of Delhi delivered a judgment in favor of

the plaintiff against an entity using the trade name Enterprise Auto Rentals and the trade-marks ENTERPRISE and ENTERPRIZE. Enter-prise Holdings, Inc. v. Enterprise Auto Rentals, CS(OS) No. 489/2013 (Del. Mar. 11, 2014).

Enterprise Holdings had registered the trade-mark E-ENTERPRISE in Class 39 for vehicle rental and leasing services. Its word mark ENTERPRISE was pending registration in India. Enterprise Holdings was able to establish that it had been marketing its services in India

since 2007, although it did not have any busi-ness presence there.

The defendant argued that “enterprise” was a common dictionary word and there were six other applications and registrations for trade-marks in Class 39 that included the word “en-terprise.” The defendant also stressed that the plaintiff had no local business presence and that its presence in India was only on the In-

Contributor: Ms. Disha DewanR K Dewan & Co., Pune

Verifier: Mr. Jatin TrivediY J Trivedi & Co., Ahmedabad

Both are members of the INTA Bulletin Law & Practice—Asia-Pacific Subcommittee.

See “Reputation” on page 13

From the INTA Bulletin: Regional Update

13

Havells India Limited

Sun Pharmaceutical Industries Limited

Wockhardt Limited

Welcome! Recent New Members

When did you join INTA? March 2014.

Why did you join? What is the value for your firm?The INTA Annual Meeting is one place where we as a company get a chance to meet all of our foreign attorneys on one common platform and get updates about the latest news.

What do you see as the biggest challenge to effective IP protection/enforcement in your country or region? In the East Africa region, the main issue is counterfeiting; in India, it is the slow pace of the trademarks registry. Chinese counterfeits flooding the African markets is also a problem, and there are not always sufficient legal reme-dies in China for rights holders in Africa.

New Member Spotlight: Godrej Consumer Products Ltd.

At-A-GlanceCompany name: Godrej Con-sumer Prod-ucts Ltd.

Number of employees worldwide: More than 1000 employees.

Offices worldwide: Mumbai, Jakarta, London, Buenos Aires, Lagos, Johannes-burg, Dubai.

Global Report: India

Additional Resources on INTA.orgCountry Guides: India

Country Portal: India

Amicus Briefs

Madrid Agreement and Protocol

Trademark Office Benchmarking: India

Enterprise Successful in Establishing Trans-Border Reputation Continued from page 12

Issues to Watch: IP in Focus Under New Prime Minister

ternet. The plaintiff countered that its website had received more than 500,000 hits every year from Internet service providers based in India, and several people traveling from India had used its services outside the country.

The court observed that the requirement of a local business presence was formerly an element of a passing off action. However, the concept of passing off had undergone changes with the advent of technology and moderniza-tion. Therefore, a transformation had taken place, and courts could excuse the lack of a local goodwill and business if there was proof of substantial reputation and the business had some nexus in the territory where protection was sought. Justice Singh went on to say that the reputation of a business could transcend

boundaries by virtue of its advertisement in newspapers, media circulation, expatriate reputation and other relevant factors.

Justice Singh also extended the principle of trans-border reputation to include the Internet. He relied on an earlier case, Cadbury UK Ltd v. Lotted India Corp. Ltd., in which the Delhi High Court observed that a merchant’s presence on webpages of foreign origin and in social media was sufficient to show the trans-border nature of the merchant’s reputation despite the fact that the merchant had no activity in India at the relevant time. However, he added a rider to this broadened concept and opined that trans-border reputation would always be a question of fact in each case.

Justice Singh issued an interim order restrain-ing the defendant from using the trademark ENTERPRISE or ENTERPRIZE in relation to the business of offering vehicle rental and leasing services, and any related services under the name Enterprise Auto Rentals, which activities had created confusion and deception and infringed the plaintiff’s trademark.

This case sets the precedent for the protec-tion in India of those trademarks and service marks that have an international reputation and substantial Internet presence, even where the proprietor has no actual business within the country. ■

INTA’s Annual Meeting in Hong Kong took place the same week in which the results of the Indian elec-tions were an-nounced—the largest demo-cratic elec-tions anywhere in the world. With the new government in place, significant changes to the landscape of doing business in India and also to intellectual property protection

and enforcement are expected. Prime Minister Narendra Modi and his party (the

Bharatiya Janata Party, or BJP) announced in their election manifesto that they will introduce an “IP rights regime which maximizes the incentive for generation and protection of IP” and which would include specialized IP courts in India. It will be ex-citing to see how these proposed changes will be implemented.

During this time of change, INTA will remain actively involved in developments in India.

The BJP Party says it will introduce an “IP rights regime which maximizes the incen-tive for generation and protection of IP”

INTA Global Report, July 1, 2014, Vol. 1 No. 114

Co-ChairsSergio Barragan, PepsiCo, Inc./Frito-Lay, Inc., Mexico

Gustavo Giay, Marval, O’Farrell & Mairal, Argentina

Council MembersAriela Agosin, Albagli Zaliasnik, ChileFederico Berger, Ferrer-Reyes, Tellechea & Bouche, ArgentinaMarta Berkemeyer, Berkemeyer, Attorneys & Counselors, ParaguayAlvaro Jose Correa Ordonez, Baker & McKenzie Colombia S.A., ColombiaPatricia Hoet-Limbourg, Hoet Pelaez Castillo & Duque, VenezuelaGerardo Munoz de Cote, Televisia, S.A. de C.V., MexicoUrko Ochoa, Minino, Dominican RepublicCristina Pinheiro Palmer, Pinheiro Palmer Advogados, BrazilIris Quadrio, Marval, O’Farrell & Mairal, ArgentinaVianey Romo De Vivar, Saucedo, Romo De Vivar y Asociados, S.C., MexicoCamila Santamaria, Federacion Nacional de Cafeteros de Colombia, ColombiaAndres Wyld, Pollo Campero, S.A., GuatemalaStaff LiaisonGabrielle Doyle, External Relations Coordinator, Latin America gdoyle@inta.org

Latin America Global Advisory Council

Global Report: Latin America

See “Update” on page 15

With the 2014 World Cup being held in Brazil in June and July, Latin America is in the spotlight this quarter. Such events often present complex IP risks, and members of the Latin America Global Advisory Council reported during the An-nual Meeting in Hong Kong that INTA’s Anticoun-terfeiting Committee—Latin America Subcommit-tee will hold a government roundtable in Brazil following the games to discuss the problems that were faced by trademark owners there.

The Council also noted a number of trademark issues to monitor in the region generally. These include increased abuse of criminal procedures, inconsistent decisions by Latin American trademark offices and the accep-tance of international, rather than local use, as proof of use in trademark disputes.

But there are opportunities to improve the environment for trademarks in the region. To this end, INTA plans to sign a Memorandum of Understanding with the Colombia Trade-mark Office later this year during a delegation visit to Bogotá. This will be the third MOU the Association has signed with a Latin American trademark office, following Brazil and Mexico in 2013. These MOUs provide a framework for INTA to cooperate with the trademark offices on education, training and sharing of research.

Another opportunity for INTA is to partner with national and regional associations. During the Annual Meeting in Hong Kong, INTA lead-ers met with Brazilian Intellectual Property Association (ABPI) President Elisabeth Fekete to continue discussions about a possible coop-eration agreement between the two associa-tions. ABPI is planning on releasing near the end of 2014 a major study on the impact of IP on the Brazilian economy. Such studies are key to communicating the importance of IP to the global economy. INTA and the Asociación Interamericana de la Propiedad Intelectual (ASIPI) also are considering undertaking a study similar to ABPI’s regarding the impact of IP on the economies of several other countries in Latin America.

The leadership of INTA and ASIPI also dis-cussed a possible cooperation agreement for advancing their awareness campaigns for youth regarding counterfeits in Latin America—INTA’s Unreal Campaign targeted at 14—18-year-olds and ASIPI’s Educa program for primary school children. Events are being considered for the near future in Brazil and Colombia.

MOUs and IP Studies Planned for 2014

During the Hong Kong Annual Meeting, mem-bers of the Council shared their respective subcommittees’ plans for the upcoming year.

• The Latin America Trademark Office Rela-tions Subcommittee of the Trademark Office Practices Committee is planning examiner training in Brazil in August touching upon: (a) well-known marks and how the INPI con-siders evidence related thereto, (b) searches made by the examiners, and (c) how INPI’s office actions on appeal add a new bar to registration. The subcommittee will also give presentations to the trademark offices in Chile, Colombia, Paraguay and Peru this year and will hold the 2nd Annual INTA/IMPI Training Seminar with the Government Officials Education & Training Committee.

• The Parallel Imports—Latin America Sub-committee is completing contributions to

INTA’s Country Guides that will assist trade-mark owners in addressing parallel import issues in the region. The subcommittee also is customizing INTA’s general position paper to make it more specific to Latin America, which primarily adheres to international exhaustion.

• The Latin America Amicus Subcommittee is planning a workshop during the upcoming ASIPI meeting in Mexico City to educate prac-titioners and trademark owners in the region on the importance and impact of INTA’s amicus process. Given the unfamiliarity with the amicus process, which derives primarily from the United States, the subcommittee has faced challenges in finding cases to consider. It is hoped that through coopera-tion with ASIPI, ABPI and other associations in the region, more amicus opportunities can be generated. The Council will provide

assistance to the subcommittee in identify-ing potential cases.

• In addition to the post-World Cup roundta-ble, the Latin America Subcommittee of the Anticounterfeiting Committee is considering projects to increase awareness of online counterfeits and how such infringement is handled in various jurisdictions. The subcom-mittee is also cooperating with IMPI to plan a regional roundtable in Merida, Mexico, in February 2015 to engage officials in Central America and the Caribbean.

• The Legislation & Regulation Committee’s Latin America & Caribbean Subcommittee mentioned a number of projects dealing with potential legislation and regulation in the region, including Internet regulation,

Latin America Subcommittee Update

INTA plans to sign a Memorandum of Un-derstanding with the Colombia Trademark Office later this year.

15

Additional Resources on INTA.orgCountry Guides Recently added: Honduras and Nicaragua

Country Portal

Madrid Portal in Latin America

The 2014 World Cup Brings the Ambush Marketing Challenge to Brazil

This article is an excerpt from a feature article first published in the INTA Bulletin, Vol. 69. No. 10, June 1, 2014.

When major sporting events—such as the 2014 FIFA World Cup, which is being hosted by Brazil—attract the attention of billions of viewers worldwide, the eyes of the organizers are anywhere but on the game. In the buildup to such events, one of the organizers’ main concerns is ambush marketers, which take advantage of the event to promote or advertise their businesses and their brands even though they are not officially sponsoring it. Bearing in mind that advertising revenue covers most of the expenses incurred in organizing such events, monitoring the action of ambush mar-keters is crucial to protecting the investment of official sponsors.

A specific law regarding the 2014 FIFA World Cup in Brazil (Law No. 12,663/2012), also called the World Cup Law, provides for mea-sures to keep ambush marketers away from the competition venues. These measures comprise setting restricted areas around the stadiums where it will be forbidden to sell or promote products or services that do not carry the mark of an official sponsor. The law also provides for compensation for losses and dam-ages for unauthorized advertising activities around or related to the event. The same law also provides that FIFA (Fédération Internatio-nale de Football Association) can present a list of marks that will automatically be declared as famous by the Brazilian Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property) (INPI), including a special (and much faster) regime for granting registra-tions of FIFA’s marks and exemption from any official INPI fees.

The mayor of Rio de Janeiro, which will host several matches during the FIFA World Cup, including the final on July 13, 2014, recently published a decree determining that (1) a radi-us of one kilometer around Maracanã Stadium

will be FIFA’s exclusive area for the practice of commercial and advertising activities and (2) FIFA will have police powers to enforce intellectual property rights and seize potential counterfeit products.

In a recent and controversial decision by the 25th Federal Chamber of Rio de Janeiro (Confederação Brasileira de Futebol v. Caixa Econômica Federal, Lawsuit No. 0805184-80.2010.4.02.5101), the judge held that because the World Cup usually attracts major attention from the media, referring to the World Cup in a descriptive manner in adver-tisements would be a common practice and not unfair competition.

In spite of the consensus that the investments made by FIFA and official sponsors should be protected against ambush marketers, there is no consensus regarding the scope of actions that should be described as ambush marketing.

Read the full version of this article in the INTA Bulletin, Volume No. 69, Issue No. 10. You can read INTA’s position on ambush market-ing here.

Global Report: Latin America

Isadora Ramos and Renata Carneiro Soerensen Garcia Advogados Associados, Rio de Janeiro, Brazil

Ms. Carneiro is a member of the INTA Bulletin Features Subcommittee.

Regina Sampaio provides a snapshot of one of INTA’s newest members in Brazil.

When did you join INTA?Globo became an Associate Member this year.

However, I have been attending INTA’s meet-ings for approximately 10 years.

Why did you join? What is the value to your company?INTA is the most important event in the world that discusses intellectual and industrial prop-erty. For our company, such discussions are incredibly relevant, in the sense that our core business is that of intellectual property.

What do you see as the biggest IP challenge in Latin America?One challenge is that many countries do not offer effective protection for our content and portfolio (the lack of recognition of sound marks in the region, for instance). We must also find more ways to stop counterfeiting.

New Member Spotlight: Globo Comunicação e Participações S.A.

At-A-Glance

Company Name: Globo Comunicação e Partici-pações S.A.

Number of employees worldwide: 15,000

Main IP focus: Copyrights and trade-marks

Madrid Protocol accession/implementation, labeling, consumer protection, designs, etc. The subcommittee expects to produce charts, INTA Bulletin articles and other materials stemming from its research.

• The Famous & Well-Known Marks (FWKM)—

Latin America & Caribbean Subcommittee has several projects planned, including: pro-ducing a Practitioner’s Tool Kit on Evidence in famous and well-known marks cases; holding a roundtable for examiners with INDOCOPI in Peru; analyzing gaps in current

protection for FWKM in the region, including dilution; and reviewing case law regarding Internet issues dealing with FWKM. ■

Latin America Subcommittee Update Continued from page 14

Asensio, Barrios, Andrade & Asociados, Limitada.

Gallardo Hurtado & Cia., S.C.

Inaga Asesores & Consultores

Fernandez Oropeza & Asociados, S.C.

MENDEZ+CORTES, S.C.

Welcome! Recent New Members

INTA Global Report, July 1, 2014, Vol. 1 No. 116

Global Report: Middle East

Co-ChairsHoda Barakat, Hoda Barakat Legal Consultancy, United Arab Emirates

Charles Shaban, Abu-Ghazaleh Intellectual Property, Jordan

Council MembersMotasem Abu-Gazeleh, Abu-Ghazaleh Intellectual Property, United Arab EmiratesGhaida Ala ‘Eddein, Saba & Co. IP, JordanHossein Badamchi, Reza Badamchi & Associates, IranMohammad Badamchi, Hami Legal Services, IranFaisal Daudpota, Daudpota International, United Arab EmiratesAlireza Laghaee, Dr. Laghaee & Associates Inc. International, IranMohammad Jomoa, Kadasa & Partners, Saudi ArabiaOmar Obeidat, Al Tamimi & Company, Advocates & Legal Consultants, United Arab EmiratesOmar Shteiwi, Nestle Middle East FZE, United Arab EmiratesStaff LiaisonMaysa Razavi, External Relations Coordinator, Anticounterfeiting mrazavi@inta.org

Middle East Global Advisory CouncilFinding Solutions to Trademark Office Difficulties

From the INTA Bulletin: Regional Update

INTA has been active in the Middle East, most recently with its successful conference in Dubai. The creation of the Middle East Global Advisory Council (GAC) underscores the Association’s new focus on and dedication to the region. The group is looking at resources to translate into Arabic and tactics to get the INTA name out into this unexploited market. These include solutions such as developing a strate-gy to build corporate membership and looking at ways to build bridges with local associations and governmental bodies.

In an effort to do both, Council Co-Chair Hoda Barakat (Hoda Barakat Legal Consultancy, UAE) presented at the Small and Medium Enterprises (SME) World Summit on March 26–27 in Dubai, which was hosted by the Dubai Economic Council. Ms. Barakat partic-ipated in a panel titled “SMEs from the Expo 2020 Perspective” to introduce INTA to Middle Eastern SMEs and to highlight the importance of trademarks for SMEs building their brands in preparation for EXPO 2020, which will take place in Dubai. The presentation provided exposure for the Association and its resources to the Middle Eastern market. From a policy perspective, the GAC is focused on the trademark office practices in the region. Trademark search is an essential feature of trademark practice that helps to determine

whether there are any existing marks that may have priority over a trademark a company is seeking to register. However, many trade-mark offices in the region, such as the Kuwait Industrial Property Office, have no search function for issued trademarks or trademark applications. In these countries, practitioners need to rely on searches provided by private companies, which may not be reliable.

Another trademark office issue is the rigid classification of goods in the e-filing systems. This problem, most prevalent in Iran and Saudi Arabia, forces trademark owners to pick from a predefined list of classifications of goods and services. Such a system does not allow for similar marks existing in similar markets to be registered. This allows certain brands to dominate markets where the mark is not necessarily being used.

The Council has identified one solution to these issues. Many Middle Eastern coun-tries, including Saudi Arabia, the United Arab Emirates, Egypt, Iran, Kuwait and Jordan, do not have formal guidelines for their examin-ers. Council member Mohammad Jomoa has translated INTA’s Examination Guidelines into Arabic. The Council is working on drafting a letter to these countries asking them to adopt

BAHRAIN Consular Legalization of Trademark Documents No Longer RequiredFollowing its accession last year to the Apostille Convention (Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents), Bahrain will now start accepting Apostille legalization of documents related to trademark matters.

There will be no need for further legalization up to the Bahraini Consulate as long as the applicant’s home country is a member of the Apostille Convention.

Contributor: Zeina Salameh Saba & Co. IP, Beirut, Lebanon

Verifier: Saad El Shamlan El Shamlan Law Offices, Manama, Bahrain

Having INTA’s Examina-tion Guidelines in place will lead to transparen-cy for the public, which in turn will result in more consistent deci-sions by examiners.

these guidelines. Having the guidelines in place will lead to transparency for the public as to how the trademark offices make their decisions, which in turn will result in more consistent deci-sions by examiners on applications.

Although the Council is still in its infancy, the group is excited to work on the many opportuni-ties to shape policy and recruit members in the Middle East.

Hoda Barakat (Hoda Barakat Legal Consultancy, UAE)

17

Associated Patent & Trademark Services

Easyway Intellectual Property and Business Services

Eldib Advocates

ISRAMARK

Maccabim.com Ltd.

Welcome! Recent New Members

Global Report: Middle East

Additional Resources on INTA.orgCountry Portal - Recently added: Bahrain, Jordan, Kuwait, Lebanon, Qatar and Syria International Opposition GuideRecently added: Jordan and Kuwait Report: U.S. Economic Sanctions and Anti-Boycott LawTrademark Office Benchmarking

SAUDI ARABIA What You Should Know About

Power of Attorney Requirements

Over the past few weeks, more than one trademark office in the Arab region has opted to make some revisions vis-a-vis Power of Attorney (PoA) formalities. Reasons and justifications vary across the board.

The Saudi Trademark Section of the Ministry of Commerce and Industry announced that the new deadline for submitting a PoA will be 90 days from the date notification is received from the office. Previously, the PoA had to be submitted within 30 days of the filing date. This change comes as a result of the introduction of an electronic filing system.

With regard to authentication requirements, in general, under most by-laws of the region, a PoA to act must be legalized or notarially executed. Oman and Bahrain are the only two countries that allow for Apostille legalization. Simply signed PoAs are accepted in very few countries—Algeria, Djibouti, the independently governed Palestinian territory of Gaza, Lebanon, Morocco and Tunisia.

A PoA must also be dated. Any PoA without an express date of execution is void.

Submission of a PoA at the time of filing is re-quired by Iraq, the UAE, Bahrain, Djibouti, Gaza, Lebanon, Libya, Qatar and Yemen. An extension of time is not possible. A general PoA may be used for subsequent filings in all countries except Algeria and Djibouti.

Contributor: Zeina Salameh Saba & Co. IP, Beirut, Lebanon

Verifier: Robert Elian Salem Law Firm, Amman, Jordan

The Bahraini government has approved adop-tion of the unified Gulf Cooperation Council (GCC) Trademark Law. The purpose of this law is to replace the local trademark laws of the GCC member states and create unified trademark regulations in those countries. Other GCC mem-ber states that have announced their approval of the unified GCC Trademark Law are Saudi Arabia, Qatar and the United Arab Emirates.

The Bahraini decision was published in the country’s Official Gazette on February 27, 2014. The unified Trademark Law is expected to enter into force in the country six months after implementing regulations are issued by the GCC Trade Cooperation Committee (made up of the trade ministers of the GCC member states).

While the system is expected to create a unified trademark protection scheme, it is not expected to offer a unified filing system, as is the case with the GCC Patent Law. Trademark applications will continue to be filed separately in each GCC member state for protection.The Law, which comprises 50 articles, outlines the general directives and rulings governing trademark registration, renewal, assignment and cancellation procedures in the GCC coun-tries. The main features are as follows:

1. The definition of a trademark has been broadened to include sound and smell marks.

2. A trademark may be owned individually or jointly.

3. A separate application is required for each class.

4. Claims of priority based on an earlier-filed foreign application are possible.

5. Trademark applications accepted by the Registrar will be published for opposition purposes. Oppositions must be filed within 60 days of the publication date.

6. Trademark registrations are valid for ten years from the filing date and are renew-able for like periods. There is a grace period of six months for late renewals.

7. A trademark is vulnerable to cancellation by any interested party if there has been no effective use of the mark for a period of five consecutive years after registration.

8. The Law recognizes famous marks that are well known in the GCC member states and ensures their protection, even if the marks are not registered.

9. The Law gives trademark owners the right to initiate civil and criminal actions against any infringing party. Penalties include a maximum of five years’ imprisonment and payment of fines up to US $270,000.

Contributor: Zeina Salameh Saba & Co. IP, Beirut, Lebanon

Verifier: Saad El Shamlan El Shamlan Law Offices, Manama, Bahrain

BAHRAIN GCC Trademark Law Approved

INTA members in the Middle East are waiting for the Gulf Cooperation Council (GCC) to set out implementing regulations for the Trademark Law issued by the GCC in 2006. Most recently ratified by Bahrain, the law has

yet to be ratified by all GCC member states. The GCC law harmonizes trademark laws across member states and requires harmo-nized processes for registration, but will be managed by local trademark offices. This

differs from the GCC patent law, which offers a common registration system. It is expected that INTA’s Model Examination Guidelines will be a useful tool for local offices during this transition process.

Issues to Watch: Implementing Regulations to the Gulf Cooperation Council Trademark Law

INTA Global Report, July 1, 2014, Vol. 1 No. 118

Council Stresses Need to Communicate Canadian Trademark Changes and Raise Consumer Awareness on the Value of IP

USPTO Proposes Lower Fees for E-Filings

At the second meeting of the North American Global Advisory Council, during INTA’s 2014 Annu-al Meeting in Hong Kong, the Council focused on two key topics: changes to the Canadian Trade-marks Act and how INTA should approach anti–intellectual property sentiment among the public.

Canada: Seismic Changes to Law, Practice and AccessThe Canadian Parliament approved substantial amendments to the Trade-marks Act in the form of Bill C-31, “An Act to implement certain provisions of the budget tabled in Parliament on February 11, 2014 and other measures,” which received Royal Assent on June 19. The main objective of the legislation is to allow Canada to join the Nice Agreement on International Classifi-cation, the Singapore Treaty on the Law of Trade-marks and the Madrid Protocol. Unfortunately, the bill was rushed through Parliament without adequate consultation with the trademark com-munity. INTA, along with other organizations, had weighed in with the government to excise those provisions of the bill that affected Canada’s use-based system. However, the provisions are expected to be implemented sometime in 2015.

The Council during its meeting stressed the need for INTA to reach out to users of the Cana-dian trademark system to ensure they, particu-larly those outside of Canada who may be less familiar with the developments, are apprised of the significant changes in Canadian law and its effect on trademark practice and the expected access to international registration through the

Madrid Protocol. While many of these develop-ments may be viewed as positive, the ability to achieve registration based on foreign registra-tion and use without use of the mark in Canada is viewed as a problematic departure from Canada’s historically use-based register.

Combating Anti-IP SentimentThe members of the North America Council also discussed ways to address growing anti-intel-lectual property sentiment among the public, courts and legislatures.

It was noted that trademark rights are the only IP rights defined and delineated by consumer protection; if consumers are not likely to be con-fused, mistaken or deceived as a result of the use of a similar mark, no infringement exists. Given that INTA’s mission explicitly includes advancing trademarks for the sake of consumer protection, it was suggested that INTA’s consum-

The United States Patent and Trademark Office (USPTO) in May proposed reducing the current fees for many new trademark applications and most renewals of registrations.

Under the Notice of Proposed Rulemaking, which has been posted on the Federal Register, the fee for a new application filed using the regular Trademark Electronic Application System (TEAS) application form will be reduced $50, from $325 to $275 per class, if the applicant authorizes email communication with the USPTO and agrees to file documents electronically during the prosecution of the application. The fee for a new application filed via the existing TEAS Plus option will be reduced $50, from $275 to $225 per class. The fee for an application for renewal of a registration submitted via TEAS will be reduced from $400 per class to $300 per class.

During the INTA Annual Meeting in Hong Kong, USPTO Commissioner for Trademarks Deborah Cohn (pictured) said that the aim of the pro-posed reductions is to lower costs and promote efficiency for customers.

In response, INTA submitted comments sup-porting these efforts. In particular, INTA supports the TEAS Reduced Fee (TEAS RF) application, which has a lower application fee than the regular TEAS application but does not require applicants to select identifications of goods and services from the Acceptable Identifications of Goods and Services Manual.

While the Association does not oppose the pro-posal to lower the filing fee for TEAS Plus appli-cations, a recent subcommittee poll suggested that the fee reduction for TEAS Plus applications is not likely to cause applicants to switch from TEAS to TEAS Plus.

INTA looks forward to further discussions with the USPTO regarding this and other issues raised in its comments.

Co-ChairsLori Ball, Molson Coors Canada, Canada

Adam Scoville, RE/MAX, LLC, USA

Council MembersAmalia Berg, Goodmans LLP, CanadaTim Bourne, Ridout & Maybee LLP, CanadaAyala Deutsch, NBA Properties, Inc., USASarah Deutsch, Verizon Communications, USAElisabeth Escobar, Marriott International, Inc., USAKathryn Eyster, Tepper & Eyster, PLLC, USAPeter Giddens, McMillan LLP, CanadaJulia Huston, Foley Hoag LLP, USASusan Kayser, Jones Day, USADavid Lipkus, Kestenberg Siegal Lipkus LLP, CanadaKaren MacDonald, Bull, Housser & Tupper LLP, CanadaCarrie Olson, Day Pitney LLP, USALiisa Thomas, Winston & Strawn LLP, USAStaff LiaisonBruce MacPherson, Director, External Relations bmacpherson@inta.org

North America Global Advisory Council

Global Report: North America

The ability to register based on foreign reg-istration and use with-out use of the mark in Canada is viewed as a problematic departure.

er awareness activities should extend beyond the realm of counterfeiting to also emphasize the positive and pro-consumer aspects of trade-mark protection in general.

19

Global Report: North America

Thanks to sponsors Estée Lauder, Fox, and Guc-ci, as well as event partner Kilpatrick Townsend, INTA’s Unreal Campaign traveled south this quarter for a student engagement event in Atlanta just before holding its first-ever student session outside of the U.S. in Hong Kong and then hosting 19 students at INTA’s headquar-ters office in New York.

Atlanta – May 7

The Unreal Campaign took to Atlanta to educate local students about fakes, with the help of host Kilpatrick Townsend & Stockton, LLP. Held at the firm’s Atlanta office, the student engage-ment session included 25 students from KIPP Atlanta Collegiate High School, who got a lesson in anticounterfeiting efforts and trends from experienced IP professionals. Charlie Henn (Kil-patrick Townsend & Stockton, USA) moderated the event; speakers included Lauren Fernandez (FOCUS Brands, USA) and Bruce Siegal (The Collegiate Licensing Company, USA). The panel discussed their experiences working in the IP field, the value of trademarks and the enforce-ment methods they use to protect their brands.

Students later broke into groups for an inter-active activity, where they debated and made recommendations on fictional anticounterfeit-ing legislation.

Hong Kong – May 12

INTA’s Unreal Campaign kept busy this quarter with its first event held outside the United States. At the 136th Annual Meeting, in Hong Kong, the Unreal Campaign con-ducted its first student engagement session in another language (Cantonese). Fifty local students joined INTA President Mei-lan Stark (Fox Entertainment Group, USA), Hong Kong Intellectual Property Department (HKIPD) Director Peter Kam-fai Cheung, Vincent Lai of the Hong Kong Customs and Excise Depart-ment and Fornia Lo of Gucci at the Hong Kong Convention & Exhibition Centre to learn about the harms of counterfeit products. Ms. Stark explained to students that research has revealed that jobs in IP-rich industries pay up to 40 percent more than jobs in other sectors. Mr. Cheung engaged the students in an anti-fakes tune and updated them on HKIPD’s anti-fakes initiatives.

New York – May 26

Nineteen students from Bronx Haven High School and Flushing High School heard from IP industry professionals about anticounterfeiting issues during an event at INTA headquarters.

Gregg Marrazzo, 2012 INTA President (Estée Lauder Group of Companies, USA), Jessica Haugen (Gucci America, Inc, USA) and Anthony Orosz, Assistant Director of the Pharmaceuti-cals, Health and Chemicals Center of Excellence and Expertise for the U.S. Customs & Border Protection (CBP) Agency, discussed the global and domestic consequences of counterfeiting.

Unreal Report

INTA Files Amicus Brief With U.S. Supreme Court

Comments in Response to USPTO’s Infor-mal Request for Comments Regarding Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution

Comments on USPTO Draft of Exam-ination Guide: Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services

Country Guides

Country Portal

Testimony and SubmissionsINTA Submission in response to Canada Bill C-56: An Act to Amend the Copyright Act and the Trade-marks Act and to make consequential amendments to other Acts

Trademark Office Benchmarking

The Unreal Campaign

U.S. State Trademark and Unfair Competition Law

Additional Resources on INTA.org

Hot Topic, Inc.NHS, Inc.Novus International, Inc.Pocket City Construction & Dev. Co., Inc.SAS Institute Inc.

Welcome! Recent New Members

Anthony J. Dreyer, SkaddenArps, Slate, Meagher & Flom LLP, New York, New York, USAChair, U.S. Subcommittee, International Amicus Committee

On May 21, 2014, INTA filed an amicus brief with the U.S. Supreme Court in a case that raises the question of whether a rebuttable presumption of irreparable harm exists in Lan-ham Act trademark infringement cases once likelihood of success is established. The brief, filed in support of petition for certiorari, argued that longstanding precedent supports a pre-sumption of irreparable harm in Lanham Act cases upon a showing of likelihood of success on the merits, notwithstanding the Court’s

rejection of the presumption in patent cases.

The Ninth Circuit appeals court reversed the lower court’s grant of injunctive relief, finding the evidence of irreparable injury unsupported and conclusory. Applying the Supreme Court’s decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), and citing an earlier Supreme Court decision, Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), the Ninth Circuit held that a presump-tion of irreparable harm does not apply in trademark cases and that a plaintiff instead must establish irreparable harm.

The Association disagrees that eBay and Winter should apply in the Lanham Act context:

eBay was a patent case, and Winter was wholly outside the intellectual property context. The Lanham Act is a consumer protection law rath-er than a law designed principally to protect private property rights such as patents—thus, the harm suffered by the trademark owner is suffered by the public as well. Further, the nature of the injury to intangible goodwill caused by trademark infringement and the use of a plaintiff’s mark without its permission or oversight is inherently irreparable and can be difficult, if not impossible, to quantify.

Read the full report in the July 1 issue of the INTA Bulletin.

INTA Global Report, July 1, 2014, Vol. 1 No. 120

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.

INTA Calendar of EventsPlan your calendar with these INTA events and stay up to date on issues that affect your trademarks.

July 9 INTA/USPTO Roundtables Cincinnati, OH, USA

July 28 INTA/USPTO Roundtables Alexandria, VA, USA

September 2–12 TMA Roundtables Various U.S. Cities

September 18–19 Internet, Innovation and ICANN: San Francisco, CA, USA The Evolving Landscape of the Net

October 12–15 Trademark Administrators and Practitioners Meeting Arlington, VA, USA

October 20–31 U.S. Roundtables: Social Media, Chapter Two Various U.S. Cities

November 11–15 Leadership Meeting Phoenix, AZ, USA

December 8–9 When Trademarks Overlap with Other Munich, Germany IP Rights Conference