Bulletin

2129 users shared this document! click

BY CHEHRAZADE CHEMCHAM
INTA, New York, New York, USA O N S EPTEMBER 18, 2002, INTA held its quarterly board meeting in
Brussels. The meeting represented
a unique moment in INTA history
the first INTA board of directors
meeting outside the United States
of America. Brussels, one of the capitals of European politics, was a perfect
location for the board to meet.
Through its onsite representatives,
Thierry Lebeaux and Amaia
Betelu, INTA has established a
presence in Brussels for almost
four years making sure the
Associations European and inter-
national interests are represented.
Because of the numerous trade-
mark issues at stake (see page 3 of this issue), INTA arranged for its
board members to meet with
European Union (EU) officials on
September 18 and 19, 2002. One of the highlights of the board meeting was special guest
speaker Thierry Stoll, Director
within Directorate General for the
Internal Market. Mr. Stoll, who is
responsible for industrial and intel-
lectual property rights, addressed
the board regarding a number of
issues affecting trademark practice
in the EU Internal Market. In a thorough presentation, he
explained the European
Commissions (the Commission)
intention to streamline the OHIM
Board of Appeals and simplify A SSOCIATION N EWS Enforcement Discussed
at WIPO Meeting U.S. Court Rules in
Collective Mark Case Trademarking Professional
Law Firms INTA B ULLETIN B OARD INTA Website Wins Award N OTICE FROM THE N OMINATING C OMMITTEE W ORLD U PDATE U.S. Department of
Commerce and ICANN
Extend MOU L AW AND P RACTICE C OLOMBIA Trademark Office
Recognizes Secondary
Meaning in Descriptive and
Generic Trademarks G ERMANY Refusal of Pharmaceutical
Marks Similar to INNs I NDIA Code of Civil Procedure
Amended P HILIPPINES Rule on Search and Seizure
in Civil Actions for
Infringement of Intellectual
Property Rights U RUGUAY New Customs Law Fights
Counterfeiting T HE M ADRID P ROTOCOL A Primer for Practitioners
in the United States M ARK OF THE M ONTH VOLVO I N THE N EWS The Name of the Game Is ...
Trademark? Cornish Pasty Joins the
Ranks of GIs Brands Get Good Vibes Only One Wine
from Leelanau B RAND B UYS IN THIS ISSUE Madrid Protocol Passes
in U.S. Senate Bulletin OCT 15, 2002 THE VOICE OF THE INTERNATIONAL TRADEMARK ASSOCIATION VOL. 57, NO. 19 2 Board Meets in Brussels INTA board members lobby for better EU regulations 9 12 8 15 CONTINUED ON PAGE 2 7 Left: Robert Madelin, Director, Directorate General Trade, European Commission with INTA President Nils Victor Montan Below: Colette Flesch, member of the European Parliament discusses .eu and WHOIS issues. BY MICHAEL HELTZER, INTA New York, New York, USA O N W EDNESDAY , O CTOBER 3, the United States Senate passed by unanimous consent the Department
of Justice (DOJ) Authorization Conference Report,
which included the implementing legislation for U.S.
accession to the Madrid Protocol. The Senate bill was
sponsored by Senator Patrick Leahy (D-VT), chair-
man of the Senate Judiciary Committee. The House of Representatives passed the bill the previous week, by a vote of 400 to 4. In the House,
Congressman Howard Coble (R-NC), chairman of
the Subcommittee on Courts, the Internet and
Intellectual Property, was the Madrid Protocols
prime sponsor. The DOJ Authorization measure, which, in addition to the Madrid Protocol imple-
menting provisions, included a number of technical
provisions relating to intellectual property, will now be
sent to President Bush for his signature. The next step for U.S. accession to the Madrid Protocol is to have the Senate provide its advice and
consent to the treaty itself, a process required for all
treaties by the U.S. Constitution. Once the advice
and consent resolution is adopted, the president must
deposit the U.S. instrument of ratification with the
World Intellectual Property Organization. This
process and the actual implementation by the U.S.
Patent and Trademark Office is expected to require at
least one year. See page 12 for a primer on the Madrid Protocol in the United States. 14 13 10 Community office procedures.
He mentioned the Commissions
intention to revisit the opting
back clause which makes it
possible to convert an interna-
tional registration designating the
European Community into a
national trademark application
through a territorial extension of
the member states in order to
revive the debate on the Madrid
Protocol. Mr. Stoll provided
INTA with additional informa-
tion regarding the Commissions
ambitious proposal for a directive
on counterfeiting and clarified
the Commissions view regarding
the balance between geographical
indications and trademarks. On September 19, 2002, INTA board members met sever-
al senior officials who addressed
the board on a number of issues
that INTA monitors and acts
upon either at the Commission,
Council or Parliament levels. Geographical Indications Board Members discussed pro- tection for geographical indica-
tions (GI) with Robert Madelin,
Director within Directorate
General for Trade. Mr. Madelin
is responsible for the EU WTO
proposals on the establishment of
a multilateral register for wines
and spirits and on the extension
of the scope of GI protection to
products other than wines and
spirits. A group of board mem-
bers also met with Andrea
Pearson, Counselor with the
U.K. Permanent Representation,
and Carmen Casado from
Directorate General Agriculture
to discuss the Commissions recent proposal to amend regula-
tion 2081/92 on the protection
of GIs. WHOIS DOT EU Mrs. Colette Flesch, Member of the European Parliament who
was the Parliaments rapporteur
for the Regulation on the
Establishment of the DOT EU
Country Code Domain Names,
presented to the board the EU
process for establishing a DOT
EU top-level domain and the
challenges facing EU officials
with regard to granting trade- mark owners open access to the
WHOIS database. A group of
board members also met with
Diana Alonso Blas from the
Directorate-General Internal
Market and George Papapavlou,
Head of Unit within Directorate
General Information Society, to
raise again the concerns of trade-
mark owners regarding restricting
access to the WHOIS database
in light of EU data protection
laws. Counterfeiting, Parallel Imports
and the Madrid Protocol Ignacio Atorrasagasti (Counselor within the Spanish Permanent Representation in
Brussels), Manuel Medina
Ortega (Member of the
European Parliament and rap-
porteur for the proposal to
amend the Community Trade
Mark Regulation to allow for the
EU accession to the Madrid
Protocol) and Mirjam Soderholm
(Deputy Head of Unit responsi-
ble for industrial property) par-
ticipated in a panel discussion on
trademarks in the Internal
Market. Each speaker addressed
the board on the deadlock of the
EU accession to the Madrid
Protocol, the current debate at
the EU level to open up the cur-
rent Community Regime to
allow for parallel imports, and
the EU proposal for a counter-
feiting directive. Board members
discussed more thoroughly the
Commissions proposal for a
directive on counterfeiting and
border measures available under
the Customs Regulation
3295/94, with Christophe
Zimmerman from Directorate
General Customs and Taxation
and David Ellard from
Directorate General Internal
Market. Future Meetings The INTA board of directors is seriously considering alternat-
ing the location of its September
meetings between Brussels and
Washington, DC, and in the
future may meet in other key
regions of the world. Bruce MacPherson, INTAs Director of External Relations
emphasized when briefing the
board in Brussels: The boards
willingness to meet with policy
makers in Brussels and
Washington demonstrates
beyond a doubt INTAs dedica-
tion to promoting and protecting
trademarks worldwide. The INTA board of
directors is seriously
considering alternat-
ing the location of its
September meetings
between Brussels and
Washington, DC, and
in the future may
meet in other key
regions of the world. Thierry Stoll, Director within Directorate General Internal Market, European Commission explained to INTA board mem- bers the European Commissions intention to streamline the OHIM Board of Appeals and simplify Community office procedures. Board Meets in Brussels CONTINUED FROM PAGE 1 INTA Bulletin October 15, 2002 Vol. 57, No. 19 2 ASSOCIATION News October 15, 2002 Vol. 57, No. 19 INTA Bulletin 3 Geographical Indications (GIs)
European Union (EU) institutions
are currently discussing a proposal
to amend Regulation 2081/92 on
the protection of geographical indi-
cations. The proposed amendments
deal superficially with the link
between trademarks and GIs,
allowing their coexistence and not
taking into account the principle of
priority. At the WTO level the EU is
supporting the creation of a multi-
lateral register for GIs and the
extension of GI protection to prod-
ucts other than wines and spirits. Counterfeiting
The fight against counterfeiting in
the EU is carried out both within
the Internal Market and at the bor-
ders of the EU. The main instru-
ment for the latter is the Regulation
prohibiting the release for free cir-
culation, export, re-export or entry
of counterfeit and pirated goods.
Regarding the Internal Market, the
Commission is preparing a
Directive that will harmonize
national laws on enforcement and
counterfeiting. EU Enlargement
Bulgaria, Cyprus, the Czech
Republic, Estonia, Hungary, Latvia,
Lithuania, Malta, Poland, Romania,
the Slovak Republic, and Slovenia
have entered into negotiations with
the EU to become EU members.
The Acquis Communautaire (i.e., all primary and secondary law of
the EU, including the CTM regula-
tion and the Trademark Directive, all
Court of Justice and OHIM deci-
sions) will apply to all countries as
of their first day of accession. The
key issues are the conflict between
legitimate trademark rights in
accession countries and the unitary
character of Community Trade
Marks and the issue of bad faith
registrations. EU Accession
to the Madrid Protocol
The European Commission and
Parliament had agreed in 1997 to
the accession of the EU to the
Madrid Protocol. Opposition in the
Council, mainly due to the lan-
guage issue and the opting-back
clause, is blocking any decision on
this issue. Parallel Imports Exhaustion of
Trademark Rights
The Community Trade Mark
Regulation establishes a communi-
ty exhaustion regime (equivalent to
national exhaustion). However,
there is a split in Europe between
countries supporting the interna-
tional exhaustion regime and those
supporting the Community exhaus-
tion regime. The EU Parliament
debated the issue last year and
asked the Commission to draft a
report on cases of trademark abus-
es in the Internal market. WHOIS Access
The Commission has yet to estab-
lish the public policy rules that will
govern the Registry of the DOT EU
TLD and to decide whether the
WHOIS database will be open so
that anyone can check the contact
information of a domain name reg-
istrant. The Commission under-
stands that the WHOIS information
is important for intellectual proper-
ty right holders. However, it is also
committed to safeguard individual
privacy online. Single Name for Medicinal
Products
The EU Commission is proposing
amendments to Regulation
2309/93, laying down the
Community Procedures for the
authorization and supervision of
medicinal products for human and
veterinary use and establishing a
European Agency for the
Evaluation of Medicinal Products
(EAEMP). The Commission intro-
duced a new provision regarding
the names used for medicinal prod-
ucts which are authorized by the
EAEMP. The proposal now requires
the use of a single trademark for
medicinal products. For monthly updates on the state
of these issues within the EU, visit
www.inta.org and subscribe to the
Europe Update electronic digest. Trademark Issues at Stake
in the European Union Through its representation in Brussels, INTA continues to monitor
and act on the following trademark issues within the EU. INTA Bulletin October 15, 2002 Vol. 57, No. 19 4 O N S EPTEMBER 11 13, the World Intellectual Property
Organization (WIPO) held a
Consultation Meeting on
Enforcement in Geneva.
Chander M. Lall (New Delhi),
chair of INTAs
Anticounterfeiting and
Enforcement Committee and
Georg A. Jahn, a member of the
committee, were among the dele-
gates of member states, represen-
tatives of intergovernmental and
non-governmental organizations
to attend this meeting. The meeting was the third of its kind, following earlier meet-
ings held in 2000 and 2001 on
the same and similar topics. As expected, the delegates and the representatives unanimously
agreed that the issue of enforce-
ment of intellectual property
rights is important. They also
agreed that WIPO is in an
appropriate position to provide
technical assistance and educa-
tion, to contribute to the cre-
ation of awareness in this field,
and to assist and coordinate with
relevant organizations, to set up
or improve, adequate and effec-
tive enforcement mechanisms. Those attending the meeting noted the concerns expressed
about the effects of counterfeit-
ing and piracy on domestic
industries and stressed that the
fight against these phenomena
was a global concern. The issues discussed at the meeting included electronic
exchange of information, the
need for training and for the
development of enforcement
strategies, and difficulties and
practices in the field of enforce-
ment. Documents covering the
issues had been prepared in advance by WIPOs Secretariat
and reflected written inputs pro-
vided at the request of the
International Bureau by certain
member states, intergovernmen-
tal and nongovernmental organi-
zations. Regarding electronic exchange of information, the meeting wel-
comed the establishment of an
Electronic Forum on Intellectual
Property Enforcement Issues and
Strategies for which the existing
WIPO electronic facilities shall
be used. The INTA delegates
informed the gathering about the
Anticounterfeiting &
Enforcement Committee
(ACEC) of INTA ,which has
been actively working on the
establishment of an electronic
forum for the past few years. The
Country Data Forms (CDF)
Subcommittee has been working
on the completion of data forms for 127 countries, which will be
available on the INTA Members
Only Site in the near future. Regarding the need for train- ing and for the development of
enforcement strategies, the pro-
posal was one of exchange of
information on training pro-
grams carried out by national
governments or regional or inter-
national organizations. Narendra
K. Sabharwal, Senior Director
Cooperation for Development
Bureau for Asia Pacific, apprised
the gathering of WIPOs initia-
tives on training in the recent
past and immediate future. Once again, the gathering was
informed by the INTA delegates
about the activities of the
Outreach sub-committee of the
ACEC, which is completing a list
of enforcement agencies active in
certain target countries. The meeting was also apprised of the activities of the ACEC
Education Subcommittee, which
is preparing training templates for targets countries that will
culminate in training seminars
after the completion of a needs
analysis. Regarding difficulties and practices in the field of enforce-
ment, the gathering felt that
information should be solicited
on the amounts of damages and
award of criminal sentences in
intellectual property cases in
member countries. This informa-
tion could be compiled and
made available on the electronic
forum. Once again, the gather-
ing was informed of the activities
of the ACEC Legislation and Regulation Analysis
Subcommittee has concluded its
work on a comparison of Model
Provisions module for ten target
countries. This result will be
available on the INTA website in
the near future. The gathering
was also informed of the efforts
of the Public Information
Subcommittee of the ACEC,
which is in preparing articles on
anticounterfeiting efforts world-
wide. Regarding the future structure of the WIPO committee on
enforcement, the meeting stated
as its opinion that an intergov-
ernmental structure, in the form
of a single advisory or permanent
committee, should be set up
within WIPO to ensure an
appropriate continued action in
the field of enforcement by the
Organization. This committee
would cover industrial property
rights, copyright and related
rights and global enforcement
issues. The committee could
serve as a forum for exchange of
information and appropriate
coordination of activities in this
field and cooperation in the fight
against counterfeiting and piracy. Enforcement Discussed at WIPO Meeting INTA representatives with delegates from other nongovernmental organizations. Those attending the meeting noted the
concerns expressed about the effects
of counterfeiting and piracy on domestic
industries and stressed that the fight against
these phenomena was a global concern. October 15, 2002 Vol. 57, No. 19 INTA Bulletin 5 BY MICHAEL HELTZER
INTA, NEW YORK, NEW YORK, USA O N A UGUST 28, the U.S. Court of Appeals for the Eleventh Circuit issued a per curiam opinion affirming the judgement
entered by the District Court for the Southern District of
Florida in favor of the Sigma Chi Fraternity in the matter of
Taylor Corporation v. Sigma Chi Fraternity and Sigma Chi
Corporation. The ruling of the district court and subsequently the appeals panel are consistent with an amicus brief filed by INTA at the
appellate level, in which the Association urged the court to
uphold the principles of unfair competition applied by the dis-
trict court and the proposition that a trademark owner should
always have the right to control the quality of goods sold under
its mark. The INTA brief noted that the fact that products
bearing the trademark or collective mark are purchased to show
pride in affiliation with an organization should not serve to
undermine basic trademark concepts and the recognized rights
of the trademark owner to exploit the mark and control the
manner in which it is used. The INTA brief was drafted by Jerre Swann and Ted Davis of the law firm of Kilpatrick Stockton. For a copy, see
www.inta.org/downloads/brief_SigmaChi.pdf. U.S. Court Rules in
Collective Mark Case Learn More
About the CTM Count on INTA to keep you updated on any new develop-
ments within the European Union. INTAs newly supple-
mented publication, titled The Community Trade Mark,
Regulations, Practice and Procedure, will give you the latest
updates that you need. Get a further update in December,
when you attend the Community Trade Mark Forum at the
OHIM Headquarters in Alicante, Spain. The Community Trade Mark: Regulations,
Practice and Procedure Editors: Julian Gyngell, Allan Poulter, Peter Brownlow Let 18 expert European practition-
ers lead you through the intricacies
of CTM law, practice and procedure
in this, the single most comprehen-
sive resource on the subject. For information on how to order,
visit www.inta.org/pubs. Community Trade Mark Forum December 45, 2002
OHIM Headquarters, Alicante, Spain Join us for this unique forum where renowned
experts on Community Trade Mark (CTM) practice,
users of the System and representatives of the
Office for Harmonization in the Internal Market
(OHIM) and INTA will provide authoritative informa-
tion on the latest developments in this area. Take
advantage of the opportunities to tour the OHIM
facility, meet with members of the OHIM staff and
enjoy the beauty and hospitality of Alicante, Spain. The brochure for this program is available online at
www.inta.org/forums/2002/ctm/index.html. Mark
your calendars now to register for this exceptional
forum! Leadership Meeting
2003 Mark your calendars for November 12 November 16, and check your mailboxes for INTAs annual Leadership Meeting brochure. The brochure is available on the INTA website (www.inta.org/mdyr). HOTEL RESERVATIONS AND MEETING REGISTRA- TIONS ARE NOW BEING ACCEPTED. INTA Bulletin October 15, 2002 Vol. 57, No. 19 6 Trademarking
Professional Law
Firms BY EDGARDO BOURGOING, B OURGOING , L EON & L OZANO , Mexico City, Mexico R ECENTLY , MANY professional law firms throughout the world have been branding their names and
depending on their trademarks and service marks to
alert the world to their existence and practice. It is
quite common for printed media, meetings and con-
ferences to bear messages, advertising, slogans and
logos, many developed by professional law firms
using a brand strategy to build or enhance a
reputation. Normally, the trademarks and service marks of a law firm are based on the last names of the founders
and/or partners, some with the addition of words
such as trademark, patent or intellectual proper-
ty. More recently, however, other elements, such as
logos or slogans, have been used to identify law firms.
A significant example is the famous black and yellow
logo from Australia-based firm DAVIES COLLISON
CAVE SOLICITORS. Raymond Hind, a partner at Davies Collison Cave, states, It has been an effective marketing tool -
most definitely yes. The logo colors are black and yel-
low and this color combination appears throughout
all our promotional material. The logo in these colors
will always be featured in advertisements, banners,
posters used for seminars, speaking engagements,
sponsorships and so forth, both in Australia and over-
seas. Other examples are the unicorn logo of New Zealand-based Pipers firm and the representative
plane of the U.S. firm Morrison & Forrester. In addi-
tion, U.S. firm Fulbright and Jaworski uses a zebra in
its advertisements to indicate that the firm has
earned its stripes, and the African firm Spoor and
Fisher, uses a yellow African-type design. New ways to brand law firms will continue to appear in the years to come as firms expand their
advertising campaigns. Such branding is essential for
successfully doing business in an increasingly global-
ized environment. New ways to
brand law firms
will continue to
appear in the
years to come as
firms expand
their advertising
campaigns. Such
branding is
essential for
successfully
doing business
in an increasingly
globalized
environment. A Very Special Word
of Thanks from the
Brand Names
Education Foundation We would like to thank the following Corporations,
Firms and Individuals for their recent generosity: Oblon Spivak McClelland Mair & Neustadt - David
Kera and Jeffrey Kaufman David Hill Morgan & Finnegan John Vassil Anthony Askew Alfred M. Marks Robert Shafter In Honor of Dolores K. Hanna Bret I. Parker Edward A. Lehman Edward E. Lehman Lehman, Lee & Xu Through their gifts, they have demonstrated their com-
mitment to the mission of BNEF to advance, through
education and research, worldwide knowledge of the
nature, purpose and value of brand names, and the
responsibilities associated with their use. October 15, 2002 Vol. 57, No. 19 INTA Bulletin 7 Online
Membership
Renewals Visit www.inta.org to renew your
2003 membership To renew your membership online, you need
your NEW Member ID, which was emailed to
all Member Designees on October 3. For
those of you who have your New Member ID
and wish to renew now, visit the INTA web-
site, www.inta.org, and click on the Renewal
Membership Link on the shortcut menu. If you
are a Member Designee and do not have your
Member ID, please contact
customerservice@inta.org to request it. In addition to online renewal, members may
still renew by mail and fax. Membership
Renewal Notices were mailed to all Member
Designees on October 4. If you are a
Member Designee and do not receive a
notice by the end of October, please contact
Customer Service at: +1 (212) 768-9887 x 157,
fax to +1 (212) 768-1234 or email custom-
erservice@inta.org to request your renewal
notice. A list of INTAs major achievements for 2002
was included with the Renewal Notice, and
with this INTA Bulletin. These achievements could not have been accomplished without
the help and support of you our members. Thank you! Ken Germain has joined the
firm of Thompson Hine LLP
as the head of its Cincinnati,
Ohio, USA IP Group. Dor Cohen-Zedek has com-
pleted her Sabbatical at
Darby & Darby and resumed
her position with Eitan Pearl
Latzer & Cohen Zedek in
Herzlia, Israel. Nate A. Garhart has joined
the firm of Coblentz, Patch,
Duffy & Bass LLP in San
Francisco, California, USA. Lara Pearson, formerly of The
Law Offices of Skinner,
Watson & Rounds, has
formed the Law Office of Lara
Pearson, Ltd., in Incline
Village, Nevada, USA. Brian Bigalke has joined the
INTA staff in New York, New
York, USA as Programs
Development Manager.
David Sokolosky has joined
the INTA staff as a graphic
designer. Stephen W. Feingold, Esq.,
formerly of Morgan, Lewis &
Bockius LLP in New York, New
York, USA, has joined Pitney
Hardin Kipp & Szuch in New
York. Elise Tenen-Aoki, formerly of
Oppenheimer Wolff &
Donnelly, LLP in Los Angeles,
California, USA, has joined
Greenberg Traurig, LLP in Los
Angeles. The INTA Bulletin Board announces news of a professional nature about individuals belonging to INTA, includ- ing practice changes, accomplish- ments, promotions, relocations, and awards received. This column does not accept notices of published arti- cles or items of a personal nature. All submissions are subject to accep- tance by the INTA Bulletin Editorial Board. To submit an item for the INTA Bulletin Board, send an email to bulletin@inta.org. INTA B ULLETIN BOARD BY ELAINE CZACH, INTA, New York, New York, USA INTAs website, www.inta.org, was recently awarded the
Standard of Excellence WebAward by the Web Marketing
Association (WMA) in its 2002 WebAward Competition. The WebAward Competition is an annual contest designed to judge corporate websites against an Internet standard and peer
sites within their industry. Judges include members of the
media, advertising executives, site designers, content providers
and webmasters. INTA Website Manager Elaine Manios said she is honored that INTAs website was included with other high-quality
entries, such as the American Medical Association and Time
magazine sites, for the award. It is nice that the staff of INTA
has been recognized for its hard work, she said. INTAs award web page can be viewed at www.webaward.org/winner.asp?eid=1764. INTA Website Wins Award To renew your membership online, visit:
www.inta.org/mbrshp/renew.shtml. INTA Bulletin October 15, 2002 Vol. 57, No. 19 8 Notice from the Nominating Committee Board of Directors Pursuant to Bylaws, Article IV
(For election by the Voting
Members, November 13, 2002) Nominees for Term Ending 12/31/2003 Anne Gundelfinger
Intel Corporation Jacqueline A. Leimer
Kraft Foods Kathryn Barrett Park
General Electric Company Paul W. Reidl
E. & J. Gallo Winery Rhonda Steele
Mars, Incorporated Scott E. Thompson
Colgate-Palmolive Company Dee Ann Weldon-Wilson,
Exxon Mobil Corporation Nominees for Term Ending 12/31/2005 Toe Su Aung
BATMark Limited Xuemin Chen
Zhongzi Law Office Theodore H. Davis, Jr.
Kilpatrick Stockton LLP Mary Boney Denison
Manelli Denison & Selter
PLLC Ayala Deutsch
NBA Properties, Inc. Keith Howick
Carpmaels & Ransford Leslie J. Lott
Lott & Friedland, P.A. Michael S. Metteauer
Fulbright & Jaworski L.L.P. Colleen M. Sarenpa
International Multifoods
Corporation Verena von Bomhard
Lovells Directors Continuing
to Serve Term Ending 12/31/2003 Domna L. Candido, Major
League Baseball Properties, Inc. Ingrid Desrois
Procter & Gamble Lisa M. Gigliotti
LOreal USA, Inc. Richard Heath
Unilever P.L.C. Rhonda R. Hetman
Hewlett-Packard Company Dolores A. Moro
The Coca-Cola Company Maury M. Tepper, III
Womble Carlyle, Sandridge &
Rice, PLLC Madeleine Vendeuil-Denise,
LVMH-Perfums & Cosmetics Term Ending 12/31/2004 Susan Anthony
MCI WorldCom Brands Michael F. Clayton
Morgan, Lewis & Bockius LLP Sarah B. Deutsch
Verizon Communications Susan Flook
The Body Shop International
PLC David J. Gould
E. I. du Pont de Nemours and
Company Werner Haring
Intellectual Property Law &
Internet Services Anne Moses
Citigroup Inc. Nicola Pratt-Barlow
Nintendo of America, Inc. Jo-Ann See
Allen & Gledhill Robin L. Smith
Lego Systems, Inc. Heather C. Steinmeyer
Blue Cross and Blue Shield
Association Kelly Mahon Tullier
PepsiCo, Inc. / Frito-Lay Inc. Ex Officio
Pursuant to Bylaws
Art. IV, Sec. 2 Nils Victor Montan
Warner Bros. Officers and Counsel (For election by the board of
directors, November 13, 2002) President Kathryn Barrett Park
General Electric Company Executive Vice President Jacqueline A. Leimer
Kraft Foods Vice President Anne Gundelfinger
Intel Corporation Vice President Rhonda Steele
Mars, Incorporated Vice President Paul W. Reidl
E. & J. Gallo Winery Treasurer Dee Ann Weldon-Wilson
Exxon Mobil Corporation Secretary Scott E. Thompson
Colgate-Palmolive Company Counsel Daniel R. Bereskin
Bereskin & Parr INTAs Nominating Committee has recommended the following candidates for election to the Associations board of directors by the vot-
ing members. The election of new members to the board of directors will take place at the Annual Meeting of Members of the Association
on Wednesday, November 13, 2002, at 8:00 a.m., at The Phoenician, 6000 East Camelback Road, Scottsdale, Arizona, USA. The
bylaws of the Association provide that voting privileges are limited to Regular Members. October 15, 2002 Vol. 57, No. 19 INTA Bulletin 9 World Update BY MICHAEL HELTZER, INTA New York, New York, USA O N S EPTEMBER 20, the United States Department of Commerce (DOC)
and the Internet Corporation for
Assigned Names and Numbers
(ICANN) announced that they had
reached an agreement that would
extend their memorandum of under-
standing (MOU) for another 12
months. The present MOU was set
to expire on September 30 of this
year. Under the MOU, the DOC
grants ICANN the authority to
administer the domain name system. In announcing DOCs decision, Assistant Secretary of Commerce for
Communications & Information
Nancy J. Victory said: The
Department is frankly disappointed
that ICANNs progress on the MOU
tasks thus far has moved so slowly.
Nevertheless, the Department consid-
ers the organizations recent broad
reform efforts to be a substantial jus-
tification for affording ICANN a
limited amount of additional time to
achieve the MOU tasks. ICANN
President Stuart Lynn commented on
the new agreement, by stating: We
are pleased that the Department of
Commerce and ICANN were able to
reach agreement on what would best
serve the global Internet community.
The continued cooperation and sup-
port of the Department of
Commerce will allow ICANN to
complete its ongoing reform process-
es, and to resume progress towards its
stated goals. Among other provisions, the extended agreement calls for: ICANN to develop improved trans- parency and accountability mea-
sures, and mechanisms that foster
informed participation in ICANN
by the global Internet community. Collaboration between DOC and ICANN on a study of and a plan
for an enhanced root-server system
architecture, and Collaboration between DOC and ICANN to achieve stable agree-
ments with country code top-level
domain (ccTLD) operators. ICANN will continue the process of implementing new global top-level
domains, including evaluation of the
technical effects, selection procedures,
and consumer costs/benefits of new
TLDs. Concerning future gTLDs,
the MOU adds that ICANN should
consider: Recommendations from
expert advisory panels, bodies, agen-
cies, or organizations regarding eco-
nomic, competition, trademark, and
intellectual property issues. ICANN will provide quarterly reports to the Commerce
Department beginning December
31, 2002. The ICANN evolution and reform process is ongoing. The ICANN
board is expected to make decisions
on areas of reform when it meets in
Shanghai, China in late October. See
www.icann.org for details on the
upcoming meeting, as well as the
extended MOU. U.S. Department
of Commerce and ICANN
Extend MOU Under the MOU, the
DOC grants ICANN the
authority to administer
the domain name
system. Members
US $99.95
Nonmembers
US $129.95 Copyright 2002
480 pages Paperback/Annual
Series ISBN: 0-939190-50-8 Order online at:
www.inta.org/pubs or
call +1 (212) 768-9887,
ext. 157 From INTA
Publications Country Guides Basic Information on Trademark Registration Worldwide Editors:
Robert Weston, John Hornick, Julia Holden,
Allen Israel, Davina Lee This expanded third edition, with 18 new seg-
ments, now covers more than 90 jurisdictions
and offers glossaries of 33 commonly used
trademark terms in nine languages: English,
Chinese, French, German, Spanish, Japanese,
Russian, Italian and Arabic. This invaluable tool
contains basic information, updated and verified
by local practitioners, on trademark filing, prose-
cution, registration, maintenance and enforce-
ment, in an easy to understand question-and-
answer format. Each Country Guide provides
clear, concise answers to 33 common questions,
and copyright restrictions are waived to allow
users to provide clients with selected segments.
As an authority for quick comparative points of
worldwide practice and procedure, or as a basic
educational tool, this handy reference is a must. To order online, visit: www.inta.org/pubs To order by phone, call: +1 (212) 768-9887, ext. 157 INTA Bulletin October 15, 2002 Vol. 57, No. 19 10 OMEPRAZOL. Therefore,
OMEPRAZOK was not regis-
trable. However, the FPC ruled
that the trademark OMEPRA-
ZOK fulfils the requirements of
registrability. The FSC affirmed this deci- sion pointing out that
OMEPRAZOK has a distinctive
character since OMEPRAZOK
differs from the INN
OMEPRAZOL, phonetically as
well as visually, particularly with
respect to the end part ZOK.
Therefore, the trademark
OMEPRAZOK is not
descriptive. Additionally, the FSC con- firmed that OMEPRAZOK
does not consist exclusively of
signs or indications, which have
become customary in everyday
language or in the bona fide
trade for the registered goods. Moreover, the FSC ruled that OMEPRAZOK is not decep-
tive, especially as to the kind or
quality of the goods. According
to the current case law, a trade-
mark is deceptive if a use of the
trademark for the claimed goods
gives rise to any misunderstand-
ing. Since OMEPRAZOK
could also be used for pharma-
ceutical products without confu-
sion, namely for those products
containing OMEPRAZOL,
there is no reason to cancel the
trademark from the register. Finally, the FSC ruled that the mark could not be cancelled
because the use of OMEPRE-
ZOK obviously cannot be pro-
hibited pursuant to provisions of
law other than trademark law.
The applicant argued that
Directive 92/27/EEC, regarding
labeling of medicinal products for human use and package
leaflets of March 31, 1992 is
such a provision. According to
this Directive, pharmaceutical
products marked with a sign
may not be used in commerce if
confusion with a customary sign
is likely to occur. The FSC left
the question open whether this
Directive binds the Registrar,
since the mark could be used for
the goods claimed without con-
flicting with the Directive,
namely for all products for
which the mark claims protec-
tion and are not affected by the
Directive. The decision confirms earlier jurisprudence that had been
questioned in the past years. Source: Dr. Martin Tongbhoyai, Patentanw