Profile

INTA PresidentGerhard Bauer Page 8

Interview

Lily S. Cheungof DolbyLaboratoriesPage 12

Feature

MadridProtocol inLatin AmericaPage 6

N e w s 2 | Q u i z 2 | T h i n g s t o d o 1 0 | Vo x p o p 1 5 | S c h e d u l e 1 6 | W e a t h e r 5 5 ° F

T he USPTO’s Trademark Trial andAppeal Board (TTAB) has pub-lished the long-awaited third edi-

tion of its Trademark Board Manual ofProcedure (TBMP), to the delight of UStrademark owners and practitioners.

The manual was last updated in March2004. The new version has been anticipat-ed since soon after the 2007 changes to therules for litigating inter partes trademarkregistrability proceedings before the TTABcame into effect. While INTA’s USPTOSubcommittee Chair, Anna Manville ofArnold & Porter, noted that the trademarkcommunity is “still getting used to” the2007 rules—which have made Board pro-ceedings a bit more like the civil litigationprocess—she said that “having a manualthat’s up to date is a big help.”

The third edition supersedes all previousversions of the manual and incorporates the2007 rules, as well as all statutory changesand new case law since 2006. Previously,trademark practitioners had to visit severalsites in order to find up-to-date information.INTA members have been eagerly awaitingthe final version of the manual. “It’s a great

tool that people have been looking forwardto for a long time,” said Manville.

The previous edition of the TBMPcould not be easily updated or searchedonline. The new manual is available on theUSPTO website in both pdf and HTMLformats, and users can search for termswithin the entire manual or by chapter.

Manville said that the Index of Changesincluded at the back of the manual is par-ticularly helpful. The index features achart highlighting differences between the

second and third editions by section. The preface to the new manual highlights

several of the key changes, and in particularemphasizes Accelerated Case Resolution(ACR), which the Board dubs “a more effi-cient and less costly method of obtaining adecision on the merits, thus holding thepotential for savings in party resources.”

As of last year, there had only been ahandful of pure ACR cases—fewer than 10as of April 2010—despite much effort bythe USPTO to advertise the process.

However, many parties have been choosingto use hybrid versions of ACR instead, suchas adopting abbreviated trial schedules inwhich the discovery process is shortened.

The new TBMP identifies specificinstances in which the Board might recom-mend ACR. While the extensive updatemay have taken some time, the Board saidthat “all users of the manual will be well-served by the attention to detail exercisedby Administrative Trademark Judge AngelaLykos,” who supervised the project.

O HIM will lead the harmonizationof tools, practices and law in theEU as part of an ambitious five-

year plan for the Office, which has been setout by its President António Campinos.The draft plan was approved by OHIM’sAdministrative Board on May 4 and comesinto effect immediately.

The plan comprises 33 initiatives in sixcategories and covers human resources, ITand infrastructure as well as European har-monization. It will also involve a reorgani-zation of the Office’s management,Campinos told the INTA Daily News. Hewas speaking seven months after takingover as President of the Office, which han-dles Community trade marks and designs.Full interview: page 3

Campinos setsout five-yearOHIM plan

DailyNewsPublished by

www.inta.org www.managingip.com

Sunday, May 15, 2011 133rd Annual Meeting, San Francisco

New U.S. trademark manual welcomed by practitioners

USPTO TTAB AdministrativeTrademark Judge AngelaLykos supervised the revisionof the third edition of theTBMP, which began in 2009.She was also the primarydrafter of Chapter 400 on dis-covery, which includes some ofthe most significant changes.She and the other judges andattorneys who worked on the

manual took on the project inaddition to their regular caseloads, although Lykos has beenworking on it full time now formore than a year. Once final-ized, the manual also had to bereviewed and approved by theSolicitor’s office.

Lykos notes that the newmanual was drafted under thepresumption that all filings

will now be done via theElectronic System forTrademark Trials and Appeals(ESTTA), and that it includestips on using ESTTA through-out the manual. She also flagsthe addition of the chapter onAccelerated Case Resolution(ACR) and advice on usingACR throughout the manualas another central change

from the second edition. The new manual is also

expected to be updated atleast once every six monthsin order to avoid such a sub-stantial project in the future.“All of the judges and attor-neys have put in a tremen-dous effort,” says Lykos. “Ittook a group effort for such amajor change.”

Interview: Judge Angela Lykos

Last night’s Gala Dinner was held in the Garden Court of the San Francisco Palace Hotel. Titled Nuit de Moulin Rouge, it featured can-candancing, violinists, a contortionist and magician Paul Nathan. INTA President Gerhard Bauer honored this year’s awards for academic andlegal excellence. The Ladas Memorial Competition Professional Recipient, supported by Ladas & Parry, was Anthony Fletcher, SeniorPrincipal at Fish & Richardson. Michael Johnson from Vanderbilt University Law School was the Student Recipient. The winning team ofthe Saul Lefkowitz Moot Court Competition, which celebrates its 20th anniversary this year, was Marilyn Osborn and Whitney True of theUniversity of Louisville Louis D. Brandeis School of Law. They were coached by Jack Wheat of Stites & Harbison, who attended last night’sdinner. The Dolores K. Hanna Best Brief Award went to Ian Chen, Emily Gische and Jenny Grantz of UC Hastings College of the Law.

N othing says homelike the aroma ofchocolate chip cook-

ies baking in the oven.To create this feeling for

families who will soon ownhomes in the San Franciscoarea, INTA volunteers yester-day poured brown sugar,flour and chocolate chips intojars as a housewarming gift.

“It’s not just giving them ahouse,” said Michael Riley,who led the project for Habitat forHumanity, this year’s volunteer serviceproject. “They’re putting together all thelittle things that make the house a home.”

By tomorrow, the items will be in thehands of single mothers who otherwisecouldn’t afford houses in the area, headded.

At the session in the Marriott Marquis,several attendees traded in their suits forjeans and T-shirts and spent the afternoonpainting, stapling and hammering. Theycame to the Annual Meeting from as far as

Singapore, Australia, Guatemala andIndia, in most cases as strangers.

“I just think it’s a fabulous opportunityto work together with each other, first inthe same practice area, and really bond ina way you don’t really get to bond,” saidDavid C. Lee, of Fitzgerald Abbott &Beardsley in Oakland.

In her second year doing the project,Keri Johnston, of Johnston Wassenaar inToronto, said she valued the opportunity.“It’s important that INTA gives back to thecommunities it goes to.”

Professor Charles Gielen ofNautaDutilh has been appointedOfficer in the Order of Orange-

Nassau. He was presented with the honorat a ceremony earlier this month inrecognition of his services to intellectualproperty and other community activities.

Gielen is a long-time par-ticipant in INTA. He won the2006 INTA President’sAward and has served onseven Committees—includingthe Anti-Counterfeiting &Enforcement Committee andthe International AmicusCommittee—as well as the

Publishing Board, the Brand NamesEducation Foundation, various presidentialtask forces, two terms on the Board ofDirectors, (including the Executive andNominating Committees) and as a Co-Chair of the 2003 Annual Meeting inAmsterdam, the first INTA Annual Meeting

outside of North America. Aspart of his work on the INTAAmicus Committee, hechaired the Europe AmicusSubcommittee, and wasinvolved in the first amicusbriefs that were filed withthe European Court ofJustice.

T his year’s Annual Meeting co-chairshave three main hopes for attendees:That they will be impressed with the

quality of the sessions; that they will makeseveral new business connections; and thatthey will drink some great wine.

Maximillian Kinkeldey of GrüneckerKinkeldey Stockmair & Schwanhausser inMunich says that he and co-chair DanaGilland of Diageo spent most of their timemaking sure this year’s sessions coveredpractical, timely topics and choosing akeynote speaker. The rest was easy.

“With a fantastic co-chair and an unbe-lievable staff liaison like Sarah Bourke, itwasn’t that much of a challenge,” saysKinkeldey. “It has been unbelievably easyand exciting.”

Gilland agrees, and says that she foundthe process “to be incredibly organized.”

With everything running so smoothly,Gilland and Kinkeldey were able to con-centrate on building a solid program. “Itried to make sure there wasn’t a single ses-sion I wouldn’t attend myself,” saysKinkeldey.

Kinkeldey’s “all time favorite session”for this year is WM01, Workshop-EffectiveOral Presentations, which he encourageseveryone to attend. “Over the past 14 yearsof my career I’ve seen people give presenta-tions that were very good quality as far asthe content, but could have been deliveredso much better,” says Kinkeldey. Amongother tips, the session will pinpoint the“seven deadly sins of public speaking.”

Kinkeldey’s other standouts include ses-sion CT02 on ambush marketing, whichboth he and Gilland identified as a topic ofinterest this year. Gilland is also excitedabout CM21, Women in Trademarks and

session IT20 on how companies can pro-mote their brands through social media.

Gilland and Kinkeldey also workedhard to choose a keynote speaker whocould offer the best mix of trademarkknowledge and charisma. Their choice—San Francisco local John Anderson,President and CEO of Levi Strauss &Co.—promises to deliver and will addressthe Annual Meeting tomorrow morning.

While the program includes more thanenough to keep attendees busy, Gilland andKinkeldey urge members not to miss theSan Francisco sights. The tour of Alcatrazand, of course, a visit to wine country areat the top of their lists of activities. “I wantpeople to fly back home thinking that thiswas a high-quality meeting with high-qual-ity sessions and that they took somethinghome with them,” says Kinkeldey. “I reallywant people to say: ‘I learned.’”

News

INTA Da i ly News Sunday, May 15 201 1 www.manag ing ip .com2

Kinkeldey: San Antonio, 1997Gilland: San Diego, 1996

Euromoney Institutional Investor PLC

Nestor House, Playhouse YardLondon EC4V 5EX United KingdomTel: +44 20 7779 8682 Fax: +44 20 7779 8500Email: mip@managingip.com

Editorial Team

Editor James Nurton Reporters Karen Bolipata, Simon Crompton, Eileen McDermott,Peter Ollier and Erica Poom

Production manager Luca ErcolaniWeb designer Joshua Pasanisi

AdvertisingGroup publisher Daniel ColeTel: +852 2842 6941Email: daniel.cole@euromoneyasia.comPublisher Alissa RozenTel: +1 212 224 3673Email: arozen@euromoneyny.comAsia manager Bryce LeungTel: +852 6126 3601Email: bryce.leung@euromoneyasia.com

Europe, Middle East & Africa manager Ali JawadTel: +44 20 7779 8682Email: ajawad@managingip.comNorth AmericaTom St DenisTel: +1 212 224 3412Email: tstdenis@iinvestor.net

Divisional director Danny Williams

Subscription hotline UK Tel: +44 20 7779 8999US Tel: +1 212 224 3570

Editorial TeamEditor James BushPhotography Orange PhotographyDirector Randi Mustello

Marketing & Programs TeamJesse Riggle (Design), Devin MatthewToporek (Marketing)

The INTA Daily News is produced by ManagingIntellectual Property in association with theInternational Trademark Association. Printed byEssence Printing Inc. The INTA Daily News is alsoavailable online at www.inta.org andwww.managingip.com. © Euromoney InstitutionalInvestor PLC 2011. No part of this publication maybe reproduced without prior written permission.Opinions expressed in the INTA Daily News do notnecessarily represent those of the INTA or any ofits members.

First Annual Meeting

Gilland: “Getting to know outside coun-sel on a personal level. You get advicethat’s more concise and relevant toyour business—that’s been invaluable.”Kinkeldey: “INTA is the only truly glob-al platform any trademark practitionerhas. I really feel at home in the INTAcommunity. If you’re willing to dedicatethe time, INTA pays back.”

What has been the best partof participating in INTA?

Planning a meeting to remember

Making a house a home

Charles Gielen honored

Send your best photographs of San Francisco to contest@inta.org by 2:00 p.m. Tuesdayto have a chance of winning INTA goodies. The INTA Daily News will publish a selectionof the best pictures on Wednesday and the overall winner will receive the prizes.Look out for tomorrow’s INTA Daily News for more chances to win

Win an INTA totebag and baseball cap!

willemleppink Willem Leppink

Great that INTA started again! Long lines at registration are gone. Good jobINTA! LeasonEllis Peter S. Sloane

foodies (who are vegetarian) try Millennium restaurant on Geary Street. It'sexcellent sjrutherford Scott Rutherford

I don't know if this year’s @#INTA meeting has a slogan, but if not, I'd like tosuggest “Trademarks don't sleep, why should you?”BJvandenAkker Bert-Jan vd Akker

Goodmorning! After a day of 30 hours and a good night's sleep ready for#intasf First meeting at 11.30 AM and then later today to an A's gameVisaePatentes Falk Metzler

Just met two Chinese colleagues desperately looking for a German Attorneyat Westin St. Francis, couldn't convince them it was me

#INTASF

N othing says homelike the aroma ofchocolate chip cook-

ies baking in the oven.To create this feeling for

families who will soon ownhomes in the San Franciscoarea, INTA volunteers yester-day poured brown sugar,flour and chocolate chips intojars as a housewarming gift.

“It’s not just giving them ahouse,” said Michael Riley,who led the project for Habitat forHumanity, this year’s volunteer serviceproject. “They’re putting together all thelittle things that make the house a home.”

By tomorrow, the items will be in thehands of single mothers who otherwisecouldn’t afford houses in the area, headded.

At the session in the Marriott Marquis,several attendees traded in their suits forjeans and T-shirts and spent the afternoonpainting, stapling and hammering. Theycame to the Annual Meeting from as far as

Singapore, Australia, Guatemala andIndia, in most cases as strangers.

“I just think it’s a fabulous opportunityto work together with each other, first inthe same practice area, and really bond ina way you don’t really get to bond,” saidDavid C. Lee, of Fitzgerald Abbott &Beardsley in Oakland.

In her second year doing the project,Keri Johnston, of Johnston Wassenaar inToronto, said she valued the opportunity.“It’s important that INTA gives back to thecommunities it goes to.”

Professor Charles Gielen ofNautaDutilh has been appointedOfficer in the Order of Orange-

Nassau. He was presented with the honorat a ceremony earlier this month inrecognition of his services to intellectualproperty and other community activities.

Gielen is a long-time par-ticipant in INTA. He won the2006 INTA President’sAward and has served onseven Committees—includingthe Anti-Counterfeiting &Enforcement Committee andthe International AmicusCommittee—as well as the

Publishing Board, the Brand NamesEducation Foundation, various presidentialtask forces, two terms on the Board ofDirectors, (including the Executive andNominating Committees) and as a Co-Chair of the 2003 Annual Meeting inAmsterdam, the first INTA Annual Meeting

outside of North America. Aspart of his work on the INTAAmicus Committee, hechaired the Europe AmicusSubcommittee, and wasinvolved in the first amicusbriefs that were filed withthe European Court ofJustice.

T his year’s Annual Meeting co-chairshave three main hopes for attendees:That they will be impressed with the

quality of the sessions; that they will makeseveral new business connections; and thatthey will drink some great wine.

Maximillian Kinkeldey of GrüneckerKinkeldey Stockmair & Schwanhausser inMunich says that he and co-chair DanaGilland of Diageo spent most of their timemaking sure this year’s sessions coveredpractical, timely topics and choosing akeynote speaker. The rest was easy.

“With a fantastic co-chair and an unbe-lievable staff liaison like Sarah Bourke, itwasn’t that much of a challenge,” saysKinkeldey. “It has been unbelievably easyand exciting.”

Gilland agrees, and says that she foundthe process “to be incredibly organized.”

With everything running so smoothly,Gilland and Kinkeldey were able to con-centrate on building a solid program. “Itried to make sure there wasn’t a single ses-sion I wouldn’t attend myself,” saysKinkeldey.

Kinkeldey’s “all time favorite session”for this year is WM01, Workshop-EffectiveOral Presentations, which he encourageseveryone to attend. “Over the past 14 yearsof my career I’ve seen people give presenta-tions that were very good quality as far asthe content, but could have been deliveredso much better,” says Kinkeldey. Amongother tips, the session will pinpoint the“seven deadly sins of public speaking.”

Kinkeldey’s other standouts include ses-sion CT02 on ambush marketing, whichboth he and Gilland identified as a topic ofinterest this year. Gilland is also excitedabout CM21, Women in Trademarks and

session IT20 on how companies can pro-mote their brands through social media.

Gilland and Kinkeldey also workedhard to choose a keynote speaker whocould offer the best mix of trademarkknowledge and charisma. Their choice—San Francisco local John Anderson,President and CEO of Levi Strauss &Co.—promises to deliver and will addressthe Annual Meeting tomorrow morning.

While the program includes more thanenough to keep attendees busy, Gilland andKinkeldey urge members not to miss theSan Francisco sights. The tour of Alcatrazand, of course, a visit to wine country areat the top of their lists of activities. “I wantpeople to fly back home thinking that thiswas a high-quality meeting with high-qual-ity sessions and that they took somethinghome with them,” says Kinkeldey. “I reallywant people to say: ‘I learned.’”

News

INTA Da i ly News Sunday, May 15 201 1 www.manag ing ip .com2

Kinkeldey: San Antonio, 1997Gilland: San Diego, 1996

Euromoney Institutional Investor PLC

Nestor House, Playhouse YardLondon EC4V 5EX United KingdomTel: +44 20 7779 8682 Fax: +44 20 7779 8500Email: mip@managingip.com

Editorial Team

Editor James Nurton Reporters Karen Bolipata, Simon Crompton, Eileen McDermott,Peter Ollier and Erica Poom

Production manager Luca ErcolaniWeb designer Joshua Pasanisi

AdvertisingGroup publisher Daniel ColeTel: +852 2842 6941Email: daniel.cole@euromoneyasia.comPublisher Alissa RozenTel: +1 212 224 3673Email: arozen@euromoneyny.comAsia manager Bryce LeungTel: +852 6126 3601Email: bryce.leung@euromoneyasia.com

Europe, Middle East & Africa manager Ali JawadTel: +44 20 7779 8682Email: ajawad@managingip.comNorth AmericaTom St DenisTel: +1 212 224 3412Email: tstdenis@iinvestor.net

Divisional director Danny Williams

Subscription hotline UK Tel: +44 20 7779 8999US Tel: +1 212 224 3570

Editorial TeamEditor James BushPhotography Orange PhotographyDirector Randi Mustello

Marketing & Programs TeamJesse Riggle (Design), Devin MatthewToporek (Marketing)

The INTA Daily News is produced by ManagingIntellectual Property in association with theInternational Trademark Association. Printed byEssence Printing Inc. The INTA Daily News is alsoavailable online at www.inta.org andwww.managingip.com. © Euromoney InstitutionalInvestor PLC 2011. No part of this publication maybe reproduced without prior written permission.Opinions expressed in the INTA Daily News do notnecessarily represent those of the INTA or any ofits members.

First Annual Meeting

Gilland: “Getting to know outside counselon a personal level. You get advice that’smore concise and that’s relevant to yourbusiness – that’s been invaluable.”Kinkeldey: “INTA is the only trulyglobal platform any trademark practi-tioner has. I really feel at home in theINTA community. If you’re willing todedicate the time, INTA pays back.”

What has been the best partof participating in INTA?

Planning a meeting to remember

Making a house a home

Charles Gielen honored

Send your best photographs of San Francisco to contest@inta.org by 2:00 p.m. Tuesdayto have a chance of winning INTA goodies. The INTA Daily News will publish a selectionof the best pictures on Wednesday and the overall winner will receive the prizes.Look out for tomorrow’s INTA Daily News for more chances to win

Win an INTA totebag and baseball cap!

willemleppink Willem Leppink

Great that INTA started again! Long lines at registration are gone. Good jobINTA! LeasonEllis Peter S. Sloane

foodies (who are vegetarian) try Millennium restaurant on Geary Street. It'sexcellent sjrutherford Scott Rutherford

I don't know if this year’s @#INTA meeting has a slogan, but if not, I'd like tosuggest “Trademarks don't sleep, why should you?”BJvandenAkker Bert-Jan vd Akker

Goodmorning! After a day of 30 hours and a good night's sleep ready for#intasf First meeting at 11.30 AM and then later today to an A's gameVisaePatentes Falk Metzler

Just met two Chinese colleagues desperately looking for a German Attorneyat Westin St. Francis, couldn't convince them it was me

#INTASF

Profile António Campinos

www.manag ing ip .com INTA Da i ly News Sunday, May 15 201 1 3

O HIM President António Campinos has pledged touse the Office’s surplus to enhance its services andimprove cooperation with other offices in Europe.

Speaking to the INTA Daily News shortly after his five-year strategic plan was approved by OHIM’sAdministrative Board on May 4, he said the Office wouldwork with national offices in Europe to develop common“tools, practices and law.” He added: “There is an oppor-tunity over the next five years to create a European trade-mark and design network.”

For example, said Campions, common databases such asTMview and Designview as well as common classificationsystems would be enhanced. Four European nationaloffices are already signed up to a classification system cov-ering 100,000 goods and services. The OHIM Presidentstressed that this harmonization could be extended interna-tionally, with the database growing as new terms are added:“We also need a system to agree on new product terms and,if there is not agreement, then for WIPO to arbitrate.”

Campinos also signalled an expanded role for the office,which at present handles the registration of Communitytrade marks and registered Community designs, and issuesdecisions in contested matters. The European Commissionis expected to suggest this week that the Office, based inAlicante (Spain), takes on the administration of the EU

Counterfeiting Observatory and it may also be asked tomanage a database of non-food geographical indications.Campinos said it would happily take on the extra responsi-bilities, and become “the true IP office for Europe” cover-ing all IP rights apart from patents.

The strategic plan has already come into effect and issummarized in a 10-minute video on OHIM’s website. Itcomes six months after Campinos took over as Presidentfrom Wubbo de Boer, and results from consultation withstaff, users and other offices as well as four external audits.It has six themes and envisages an expanded role for theOffice, with improvements to IT, a new wing added to theexisting building and the establishment of an IP Academy,which would enhance the Office’s existing training activities.

In total, the plan sets out 33 initiatives, covering humanresources, the OHIM 3.0 information system, an improvedworking environment, thought leadership, holistic qualityand a European network. Campinos said that while theOffice has made big steps in improving timeliness in recentyears, there remains room to improve the quality and con-sistency of decisions. One means of improving quality, asset out in the plan, is to simplify OHIM’s IT systems whichnow comprise 84 IT systems and 57 databases.

The plan will also result in all of OHIM’s nearly 1000 per-manent and temporary staff being housed under one roof, in

redeveloped offices, which will cost �70 million. This willmake a dent in the Office’s accumulated surplus, which isbelieved to exceed �400 million, but Campinos stressed itwould benefit staff morale, saying there had been “many dis-connections” between staff and management in recent years.

A new vision for trademarks in EuropeIn his first interview as OHIM President, António Campinos tells JamesNurton about his plans for the Office and the future of trademarks in Europe.

Profile António Campinos

INTA Da i ly News Sunday, May 15 201 1 www.manag ing ip .com4

But the surplus remains one of his biggest challenges—it grew by another �26 million last year, and is likely togrow further this year as applications continue to soar(the 1 millionth CTM is expected to be registered bySeptember this year). In 2008, the Office and memberstates agreed a deal that would see OHIM devote �50million to cooperation projects with European national IPoffices as well as a fee reduction for CTMs. These haveboth been implemented, and the cooperation fund is nowworking on 23 projects. A further aspect, the distributionof 50% of CTM renewal fees, will be put into action oncethe CTM Fees Regulation has been amended, which isexpected later this year.

But Campinos, who chaired OHIM’s AdministrativeBoard at the time of the agreement, stressed that therewere other aspects to it too, including a commitment toreview OHIM’s budget every two years. He said his aimis that the budget be balanced by 2014-2015 and thatthe reserve should cover just one year’s expenditure.“We are looking for good ways to use the surplus,” headded, but rejected a proposal by his predecessor thatfees should be refunded to users. “I would be delightedto do that if all the other offices would do the same. Butthere is no question of this—and it is legally not feasible.Modernizing our services is a way of giving money backto users.”

Campinos took office as OHIM President last October,following a period in charge of the Portuguese national IPoffice. His first year in office coincides with a major review

of the trademark system in the EU by the EuropeanCommission, which is expected to lead to legislativereforms later this year or early next. As part of this, theMax Planck Institute published a report with recommen-dations on reform in February. This addressed issuesincluding the supposed cluttering of the register, what con-stitutes genuine use of CTMs and the relationship betweenCTMs and national marks.

Campinos said he welcomed the report, which repre-sented “lots of work done by very good people.” But headded that any changes made to the laws governing thetrademark system should aim to “simplify and modern-ize”, implicitly rejecting the Institute’s recommendation ofa coexistence system for trademarks where the CTM hasnot been used throughout the EU during a period of 15years. “Let’s not revisit the arguments of the past. Let’s not

revisit genuine use,” said Campinos. “Instead, let’simprove what needs to be improved and put forwardstrong harmonization of legislation in member states andOHIM, while retaining differences where appropriate.”

Campinos stressed that he believes there remains a rolefor complementary national, regional and internationaltrademark systems: “Then you will have a system thatworks and industry can make decisions based on strategiesand not on differences in law and practice.” He said he hasa “good relationship” with all the member states’ repre-sentatives, and pointed out that there are already 25 bilat-eral agreements on cooperation.

He also emphasised that he is “very good friends” withEuropean Patent Office President Benoît Battistelli, whorecently visited Alicante where the two men made a jointstatement.

“Modernizing our services is a way of giving money back to users.”

Your lawyer. Your law firm. Your business advisor.

Plug into Bennett Jones.

CALGARY | TORONTO | EDMONTON | OT TAWA | BE I J I NG | DUBA I | ABU DHAB I

requires anintellectual approach.

Protecting your intellectual property

1996 OHIM opens; receives more than 40,000 CTM applications in first year1998 OHIM website launched2000 OHIM moves to present building2002 Electronic filing of CTMs; online payment2004 Registered Community design system launched2005 Application fees reduced by about 25%2008 Agreement on cutting fees and distributing renewal fees2010 Campinos elected President until 20152011 Max Planck report published; Commission reviews CTM Regulation; 1 millionth CTM expected

Evolution of OHIM

Profile Mark Lemley

www.manag ing ip .com INTA Da i ly News Sunday, May 15 201 1 5

T hink back to this time last year, and an enduringmemory was the wall-to-wall coverage on all newschannels of BP’s catastrophic oil spill from its

Deepwater Horizon rig in the Gulf of Mexico.BP was under fire not just for the oil spill, but for its

mishandling of its public relations. This led one speculatorto register an unofficial Twitter handle @BPGlobalPR,which struck a chord with the public with its parody ofBP’s efforts at brand management, and even managed tohave BP’s real life PRs react to postings on its site. At onestage BP asked that the account holder to make it clearerthat the handle was not official. “It was not an outrageousrequest,” says Mark Lemley, a professor at Stanford LawSchool and partner in law firm Durie Tangri.

The request sparked outrage, and only served to swellfollowers of the unofficial handle. This is a good exampleof why trademark owners have to be careful “not to over-reach,” says Lemley. Even if the trademark owner is with-in its rights to make a certain action, it can have disastrousconsequences for brand management.

This is the basis of the author’s talk to INTA’s In-HousePractitioners Luncheon taking place today, for whichattendees have pre-registered. “I’m going to talk about thechallenges that social media pose to brands and enforce-

ment,” Lemley told the INTA Daily News.And Lemley is in a good position to speak

about the intersection of IP and technology,with the Internet a consistent themethroughout his career, which dates back to1992 when he started working with the nowdefunct Silicon Valley firm Brown & Bain.From there, Lemley moved to Fish &Richardson, helping to set up the firm’s SiliconValley office.

He began teaching law at the University of Texas LawSchool in 1994, before returning to the San Franciscoregion in 2000 to lecture at the University of California,Berkeley. In 2004 he took up his position at Stanford,where he can still be found today.

As a lawyer Lemley works as an IP litigator for clientsincluding Linden Labs, the maker of virtual reality gameSecond Life.

Lemley, who is married to Google’s former trademarkcounsel Rose Hagan, argues that in-house counsel, whilekeen to take advantage of the opportunities social mediapresent, need to also get wise to the perils social mediapose to brands. Hence the theme of his talk.

It has been noted many times over how social media is

different from traditional media, and so the rules ofengagement, so to speak, are different. Social media isabout everyone having the chance to chip in, which scares

some trademark owners and can lead to them try-ing to exert control over how their brand is dis-

cussed. “That can lead to problems,” saidLemley. “It turns out to be difficult toenforce in that context, without creating abacklash against the trademark owner.”

The Stanford professor offers anotherexample of how mistakes in the online space

can damage brands and turn previouslyunknown sites into a cause célèbre. Surprisingly

this example involves the king of social mediaFacebook, which you might think would know better.

Two Texans set up a site called Lamebook, whichdescribes itself as “a fun humor blog that allows us to allshare and marvel at the funny, ridiculous, and outrightcrazy posts that can be found on your favorite social net-working site.” Facebook took exception to the site,although Lamebook was the first to actually sue.“Facebook sued for trademark infringement, and gave thesite a lot of publicity,” says the Stanford lecturer.

Lemley is still pondering his tips to avoid these types ofincidents, but he has a theory as to why so many brandskeep tripping up in the social media world. “I think some-times maybe outside counsel recommend an aggressiveapproach,” he explains, “but the problem is they do itwithout thinking about the publicity.”

In social media, normal rules don’t applyAggressively enforcing the letter of the law in the social media world isn’talways the brightest idea, according to Professor Mark Lemley who will bespeaking at today’s in-house luncheon. By Fionn O’Raghallaigh.

Profile Policy Work—Latin America/Madrid System

INTA Da i ly News Sunday, May 15 201 1 www.manag ing ip .com6

W ith a bill pending in Congress on its accession tothe Madrid Protocol, Colombia could become thefirst Latin American country (apart from Cuba) to

join the international trademark system. Bill 061 wasapproved by the Senate in December and is now waiting tobe considered by the House of Representatives. If passed, itmight provide the momentum Madrid System proponentsseek throughout the region.

In a March letter to Congressman Eduardo JoseCastaneda Murillo, INTA President Gerhard Bauer urged theColombian House of Representatives to pass Bill 163 in theinterests of promoting global trade. “As a major tradingpartner in the region, Colombia can take the lead in itsapproach to economic development through adopting prag-matic policies designed to promote trade and social well-being simultaneously,” Bauer wrote. “INTA also believesthat the Protocol will be an instrument to help local business,which in turn will contribute to Colombia’s economicgrowth and will facilitate the registration of trademarks com-ing from abroad.”

For years, INTA and other IP associations, as well as theUSPTO and WIPO, have promoted the benefits of theMadrid Protocol in Latin America, especially with the launchof INTA’s advocacy strategy in 2006. INTA, for example, hasheld a number of seminars to educate industry and politi-

cians in the region about the advantages of joining theSystem. “We think it’s important that those jurisdictions,where consideration is taking place, get to hear about otherexperiences,” says Laura Cruz, INTA’s external relationsmanager for Latin America. “We have invited legal counselfrom Spain, for instance, to speak at our seminars about howto overcome the main challenges the Protocol presented.”

The WIPO-administered Madrid Protocol offers manyadvantages to trademark owners, and more than 80 coun-tries are already members. It enables owners of a trademarkregistration in one country to extend that registration toother member states through a centralized system. Thisresults in benefits such as savings on the initial fees, more effi-cient record keeping and a single renewal date.

But, despite extensive discussions and the introduction ofSpanish as the third working language of the System, mostLatin American countries have yet to be convinced of thebenefits. This is partly due to concerns among trademarkpractitioners about the impact membership will have onworkloads. Says Olof Fickert, of Herrero & Asociados inMadrid and a former subcommittee chair of INTA’s MadridSystem subcommittee: “The main concern of many LatinAmerican trademark attorneys was the loss of the trademarkapplication filing work, which, in my opinion, is preciselythat part of our ‘IP world’ that is continuously losing eco-

nomic interest,” he says. “IP consultancy, legal advisers’ andlawyers’ activities support the core of our profession.”

Now, supporters of accession say they can sense a moodshift. “I am convinced of the domino effect that one country’sconsent in the region will have over the others,” says DamasoPardo, of Perez Alati Grondona Benites Arntsen & Martinezde Hoz, in Argentina. “Once Colombia joins Madrid, trade-mark attorneys will be able to develop an expertise in theinternational system, which will put them in a stronger posi-tion than the rest of the region’s lawyers.”

Cruz adds that INTA is optimistic that the Colombiangovernment recognizes the importance of intellectual proper-ty, especially when it comes to trade policies. “There is a real-ization of the need to establish a modern and solid IP system,and with this comes the Protocol, which sets in place a fastand cost-effective trademark registration system,” she says.

Across the regionWhile Colombia’s accession will be a landmark for theMadrid System, there is still much work to be done in rais-ing awareness in other regions. But behind the scenes a lot ofwork is going on.

In Brazil, for example, Congress members have showninterest in possible accession to the system. “They were keento stress that while the benefits for foreign multinationals are

Trademark owners have long been calling for more Latin American countries to join the Madrid System forinternational registrations. Recent developments in Colombia could signal a regional shift, reports Karen Bolipata.

Colombia paves way for Madrid System in Latin

obvious, the advantages of Madrid to Brazilian businessesare, if anything, even more compelling,” says Richard Heath,who runs a private practice in Cambridge, UK, and wasINTA’s President in 2009. “At a time when Brazilian businessis investing heavily internationally, this would only be a goodthing.”

Eduardo Magalhães Machado, of Montaury PimentaMachado & Lioce in Brazil, says in the past, local business-es weren’t so receptive. “In my opinion, one of the main rea-sons why the Protocol has not been successfully received bythe business community in the past was due to the lack ofinformation about its benefits,” he explains. A group of pro-fessionals in recent years has worked with INTA and MAR-QUES to organize seminars, visits and meetings to educatethe business community. WIPO also arranged for membersof Congress to see the workflow of the system at its head-quarters in Geneva.

There seemed to be progress when former President LuizInácio Lula da Silva requested that Congress examine thecountry’s potential accession to the Protocol. “Unfortunately,due to the bureaucratic issues at the Civil Cabinet, the entireprocess was delayed,” Machado says. Now, the newBrazilian President Dilma Vana Rousseff has taken up thetopic and a bill could soon be introduced in Congress. “Iknow that this will happen, simply because that is the desireof the people that will eventually use the Protocol,”Machado says. “The matter under discussion is when.”

In Argentina, meanwhile, despite increased activity in thepast five years, talks of accession stalled in 2009, with the

campaign for Congressional elections. Before then, theHouse of Representatives had sent a formal petition to theexecutive recommending ratification of the Protocol.Authorities, congressmen and diplomats have attended sem-inars and meetings to move the discussion forward, but theprogress towards accession is slow.

“The union representing the largest Argentine companieshas not pushed the Madrid System, and the small and medi-um enterprises that will benefit most from the system do nothave enough clout or resources to lobby for Madrid,” Pardosays. “Politicians are always otherwise engaged, leaving proj-ects like the Madrid System off the agenda.”

Looking aheadGiven the hurdles other countries have faced, proponents ofthe Madrid System are counting on Colombia to pave theway for the rest of the region. In the next few months, theHouse of Representatives will look at the bill at committeelevel and then in plenary session.

Fickert says he has met with open-minded and what hecalls “pro-MP” colleagues who recognize the benefits of join-ing the Protocol, among them direct access to theCommunity trade mark. “With respect to the public IP stake-holders, my impression was some years ago that there didexist in many countries a positive attitude in terms of recog-nition of possible benefits for their countries’ internationallyactive enterprises and a shy willingness to adapt their owninfrastructures accordingly,” Fickert adds.

While large enterprises seem most informed about theadvantages of an international trademark system, it is thesmall- and medium-sized companies INTA especially hopesto galvanize. Cruz says they are the ones most likely to ben-efit from the system. “There is still a lack of understandingand awareness of what advantages the Protocol can pro-vide,” she adds.

Still, there has been significant progress in recent yearswith government authorities and local trademark offices.

Colombia, INTA members say, is just the beginning. “Onceone or two countries sign up, the process will snowball,”Heath says. “The administrative systems in Latin Americahave seen vast improvements to efficiency in recent years,and I have every confidence they would be able to cope.”

Profile Policy Work—Latin America/Madrid System

www.manag ing ip .com INTA Da i ly News Sunday, May 15 201 1 7

2006 INTA hosts seminars in El Salvador with thecollaboration of the USPTO and in Argentina, col-laborating with the Argentine Foundation EXPOR-TAR and the Association of European TrademarkOwners (MARQUES), to promote the Protocol.

2007 In a letter to EU authorities regarding its freetrade agreement negotiations with Argentina,INTA writes of the local industry’s interest in thesystem: “There is also a receptive attitude fromthe Argentine authorities to support the ratifica-tion of the Madrid Protocol.”

The Association meets with members ofAMCHAM/Nicaragua, the Nicaraguan Associationfor Export and the National Registry Office.Orlando Solorzano, the Nicaraguan Minister forIndustry Trade, and Ambrosia Lezama, Director ofthe National Registry, join INTA in a seminar.

2008 INTA promotes the Protocol in Lima, Peru. 2009 Letters are written to Colombian Congress in

support of Bill 277/09 as well as Brazil as it consid-ers accession to the Protocol.

2010 The Association applauds the ColombianSenate’s passage of Bill PL061/10 in December.

2011 INTA President Gerhard Bauer sends a letter tothe Colombian House of Representatives in supportof Bill 163. He calls the Madrid Protocol one of themost important international trademark treaties.

INTA and the Madrid Protocol in Latin America

America

T his year’s INTA President Gerhard Bauer has IP inhis blood. His father was a patent attorney andGerhard can trace his own IP experience back to

the age of 13, when he filed a patent application for aninvention in Germany. The patent, for a sealing device fora rotary combustion engine, was granted but Bauer mod-estly explains that it did not lead to a career as an inven-tor: “Of course it was not a commercial success, no onewas interested.”

Instead, Bauer followed his father into the IP profes-sion. After graduating from Stuttgart University, he joinedthe patent department of Mercedes-Benz, qualifying as apatent attorney before switching to work in trademarksfor the same company. “First I changed from the inventorside to the IP side,” he says. “Then in 1992 I had a uniquechance to take over the trademark department when mypredecessor retired.”

He has worked in trademarks for the company eversince and says he has no regrets about making the move:“There is so much attention on trademarks now. They ful-fil a role for consumers as well as for the brand owner. Ifsomething is going on with a trademark it’s very visible.”Working with trademarks means trying to understandwhat appeals to consumers, and how they interact withbrands, he adds: “The consumer looks at the name and

design as well as the technology that’s in the product.”This means he has not entirely left behind his formerpatent-oriented role: “Even in the trademark field, I’mglad to have the scientific background. So many trade-marks in the automotive industry relate to technical fea-tures so it’s helpful to have a scientific background toknow whether something is descriptive or not.”

Bauer now heads a team of 13 people (12 in Germany,one in China) at Daimler, who manage a portfolio of some36,000 trademarks worldwide, as well as 5,000 designsand 6,000 domain names. In addition, they are responsiblefor the company’s IP contracts, including patent licenses.Over the past few years, Daimler (which demerged fromChrysler in 2007) like many companies has had to dealwith the impact of the global economic crisis. “I was afraidthe crisis would have a big effect on IP strategies, but theyremained unchanged and the need for IP even increased,”says Bauer. But he adds that the crisis has accelerated exist-ing trends, such as the need to do more with less: “We haveto work with limited resources—financial or human. Thatmeans you have to be innovative.”

Another challenge that is increasing is the globalizationof business, says this year’s President: “If we file a trade-mark we want to use it throughout the world. So the needfor an extensive clearance search for trademarks is becom-

ing greater. Look at China where there are up to 1 millionfilings a year.” This also means, he says, that “INTA’sgoal—and my goal—is to foster harmonization.” Thatencompasses the harmonization of laws and regulations,but it also means reconciling procedures, says Bauer:“There is a need to abolish some of the requirements forlegalization and notarization of documents in each andevery country.” He adds that he welcomes the big stepsthat have been made in many offices with e-business butregrets that “we sometimes remain in the old age withrespect to document requirements which could easily betransferred by electronic means.”

In the context of increasing harmonization and simplic-ity, Bauer says there are three “burning issues” that arebeing addressed during his term as President this year: EUtrademark reform, ACTA and new gTLDs.

Burning issuesThe first of these is particularly close to home, as Bauer isthe first INTA President from continental Europe, as well asthe first non-native English speaker to hold the office. TheCommission’s review is partly based on a detailed study car-ried out by the Max Planck Institute, which was publishedin February this year. The study, which included a survey ofusers, runs to more than 200 pages, and is still being digest-ed by trademark practitioners. It examines and makes sug-gestions on issues including fees/revenues, use requirementsand cluttering of the register. “The Commission has invitedINTA to comment on the study and we will do so. We will

Gerhard Bauer of Daimler is INTA’s first non-native English speaking President.James Nurton spoke to him about brands, the Bay Area and burning issues.

Profile Gerhard Bauer

INTA Da i ly News Sunday, May 15 201 1 www.manag ing ip .com8

From teenage inventor to INTA President

come up with our proposal in due time,” says Bauer, whonotes that there is a large team of volunteers, spanning sev-eral INTA committees, working on a response.

Once the Commission has consulted, it is expected topropose changes to the existing Trade Marks Directive, oreven its replacement with a new Directive, later this year orearly next. Bauer says it is too early to predict what the mainchanges will be, but says that “clarification on some details”is needed, including on what constitutes genuine use of aCTM and enforcement issues such as whether goods in tran-shipment can be infringing. Both of these issues are alsoaddressed in cases before the Court of Justice of the EU.

The second hot issue is ACTA. Since last year’s AnnualMeeting there has been significant progress in this area, withthe circulation of draft versions of the agreement being fol-lowed by the publication of an agreed text late in 2010.Bauer welcomes the final text, describing it as “intended toprotect brand owners and consumers” and adding that “weachieved a major goal in creating the transparency”. He saysthe agreement will be helpful in providing guidance to mem-ber countries on improving anticounterfeiting activities andadds that INTA’s priority is now to see if more countries

than the 37 signatories will join: “Having more countriesaccede will mean it has more of an impact on the IP world.”

INTA’s third priority this year is the proposed expan-sion of the domain name system, which is under discussionat ICANN. Plans to allow anyone to apply for a generictop-level domain (gTLD) are now well advanced, meaningthat the 20 or so gTLDs such as .com and .org couldbecome 200 or even 2000 in the future. ICANN is due tohold an extraordinary meeting in Singapore next month, atwhich final approval for the expansion may be given.

Bauer insists that trademark owners have nothing to fearin principle from the “opening up of the domain space” aslong as it is properly regulated: “There should be rules oninteraction of trademarks and domains, recognising priorrights.” INTA has been active in observing the process andsubmitting comments on programs such as a clearinghouseof trademark rights and the institution of a quicker versionof the UDRP, as well as consistent application of sunriseperiods. If properly implemented, these should ensure thattrademark rights are respected, says Bauer: “The decisionon the number of TLDs is a business decision. But if youhave them, they have to be handled safely.”

International and visibleBauer says all these issues demonstrate why trademarksare important in today’s economy. “Trademarks help buildup trust with consumers. They are international and veryvisible,” he says. “They also increasingly interact withother IP rights and affect a wide range of products andconsumers.” In the light of this, says Bauer, “flexibility” isa vital asset for trademark practitioners: “You have toadapt to many situations very quickly.”

Being involved with INTA enables members to knowabout trademark developments, and even in some casesinfluence them, he says: “INTA is constantly moving. Thecommittee structure can adapt and we review the strategicplan to keep it up to date.” An example is the revised web-site, which includes the social networking tool MyPowerful Network. Bauer says within a few weeks of thewebsite launching he had more than 170 contacts. “Being amember of INTA gives me an understanding of the interna-tional aspects of trademarks and helps me get informationon what’s going on in the trademark world,” he says. “It isalso about making new friendships, which makes it easierto work with colleagues wherever they are in the world.”

Profile Gerhard Bauer

www.manag ing ip .com INTA Da i ly News Sunday, May 15 201 1 9

Gerhard Bauer says he is delightedthat the INTA Annual Meeting dur-ing his presidency is taking place inSan Francisco as it is “a gateway toother regions and continents”. Thisyear’s President first attended theAnnual Meeting in 1998 in Boston:“It rained all week. But that didn’tstop me from coming back the nextyear and getting more involved.” Heexpects the attendance at thisyear’s Meeting to reflect the “really

international” nature of INTA’smembership and leadership.

Bauer adds that there is also aneat link to Germany as this year’skeynote speaker, John Anderson, isCEO of Levi Strauss & Co. The com-pany was founded in San Franciscoin 1853 (at the height of the goldrush) by Levi Strauss, an immigrantfrom Bavaria in Germany. Straussand his business partner JacobDavis received a patent for the use

of copper rivets in denim pants in1873 and the company’s jeans soonbecame celebrated worldwide.

Today, San Francisco is known asa global melting pot, with a varietyof cultures and strong economicties to Asia, as well as the Americasand Europe. In that sense, saysBauer, it also points forward forINTA, as in 2014 the AnnualMeeting will be held in Asia for thefirst time, in Hong Kong.

One Annual Meeting, one world

Asian Art MuseumOne of theworld’slargest muse-ums dedicat-ed to Asianart is in San

Francisco’s Civic Center, a short walkfrom Union Square. It holds some17,000 objects spanning 6,000 yearsof history, including the oldest knownChinese Buddha in the world. Abouthalf of the permanent collection wasdonated by industrialist AveryBrundage in the 1960s. The display isorganised by seven geographicalregions, linked by three themes: thedevelopment of Buddhism, trade andcultural exchange and local beliefsand practices. At the moment there isa temporary exhibition Bali: Art,Ritual, Performance, which features131 works of art as well as shadowpuppetry, gamelan performances andmasked dances.

Open: Tuesday through Sunday10:00 a.m.-5:00 p.m.; Thursdaysuntil 9:00 p.m.; closed Mondays

Admission: Adults $12 or $17(including Bali exhibition)

Address: 200 Larkin Street, SanFrancisco, CA 94102

Contact: www.asianart.org

Cartoon Art MuseumOne of the city’snewest attrac-tions, theCartoon ArtMuseum openedin a permanentlocation in 1987

thanks to an endowment by Peanutscreator Charles M. Schulz. In the past25 years it has produced more than100 exhibitions and 20 publicationsspanning animation, comics, graphicnovels, zines, book illustration, andmore. The permanent collection com-prises about 6,000 original pieces.Two temporary exhibitions on thisweek focus on the works of TessaBrunton and Berkeley Breathed.

Open: Tuesday through Sunday 11:00a.m-5:00 p.m.; closed Mondays

Admission: Adults $7

Address: 655 Mission St, SanFrancisco, CA 94105

Contact: cartoonart.org

ChinatownThe largestChinatown outsideof Asia is just ashort walk fromUnion Square. TheChinese communityin San Franciscodates back to 1848,when the first immi-

grants arrived. As well as a widevariety of restaurants and shops,there is much to see—including his-toric churches, temples and build-ings. One of the most famous is theBank of Canton, formerly theChinese American TelephoneExchange. You can also visit theChinese Culture Center and theGolden Gate Fortune Cookie Factory.

Address: The famous gateway is onGrant Avenue, at Bush Street

Contact: www.sanfranciscochinatown.com

San Francisco Museumof Modern Art

Housed in a famousbuilding designed bySwiss architect MarioBotta, and the secondlargest such museumin the U.S., the SanFrancisco Museum ofModern Art featuresmore than 26,000

works (and keeps on growing). Theseinclude photography, painting andsculpture, architecture and design andmedia arts. The museum was foundedin 1935 and the latest addition is a roofgarden. Current temporary exhibitionsinclude Helios: Eadweard Muybridge ina Time of Change and Paul Klee. Thecafe is also recommended.

Open: Daily 11:00 a.m.-5:45 p.m.;Thursdays until 8:45 p.m.; closedWednesdays

Admission: Adults $18

Address: 151 Third Street, SanFrancisco, CA 94103

Contact: www.sfmoma.org

Things to do

INTA Da i ly News Sunday, May 15 201 1 www.manag ing ip .com10

San Francisco: sights

Classified

www.manag ing ip .com INTA Da i ly News Sunday, May 15 201 1 1 1

DE SOLA PATE & BROWNAttorneys & Counselors

Caracas, Venezuela

Intellectual property attorneys specializing in trademarks, patents,copyrights, foreign investment, technology licensing, franchising,

trademark litigation and unfair competition.

Contact:Irene De Sola (irene@desolapate.com) and/orRichard N. Brown (rbrown@desolapate.com)

www.desolapate.comdplaw@desolapate.comTel. 58-212-7939898Fax. 58-212-7939403

De Sola Pate & Brown Attorneys & CounselorsTorre Domus, 16th FloorAv. Abraham LincolnSabana GrandeCaracas, Venezuela

Est. 1944 “Global Experience

brought to Venezuela”

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: email@deepnfar.com.tw www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

Interview Lily S. Cheung

INTA Da i ly News Sunday, May 15 201 1 www.manag ing ip .com12

What are your key brands?At center stage is the DOLBY brand and it is usually accom-panied by the double D logo. And then we have core tech-nologies that have core sub-brands such as DOLBY DIGI-TAL, DOLBY DIGITAL PLUS and DOLBY TRUEHD.Dolby technologies can be found across the whole entertain-ment ecosystem—in broadcast, cinema, mobile, consumerelectronics and PC markets. Those are our key brands. Wehave a number of others, but they are the biggest ones.

What is your trademark strategy?Our strategy is basically to build on the strength of ourhouse marks DOLBY and the double D logo. Most of ourtechnology logos or secondary marks are used in conjunc-tion with the double D and DOLBY trademarks. So weregister our house marks pretty widely.

How long have you been with the company? I’ve been with the company for 28 years.

So how has the company’s strategy changedover that period?I would say the main trademark strategy has always beento focus on the DOLBY brand. We have in the past intro-duced trademarks that were a little bit more distinctive

that kind-of took off on their own, which is difficult. Sowe just want to focus on the DOLBY mark.

What are the major countries for your company?Because we license our technologies throughout the world,all the countries are important to us. But the main marketsare the U.S., Japan, China, Taiwan and Europe.

Do you register your trademarks in all of thosecountries?Yes, we do. We actually have registrations in almost every

country, except for very emerging ones I guess. When welicense, we actually license our patents, our copyright, ourknowhow, and our trademarks together. So it’s a hybridlicense in a way.

So describe your role in DOLBY?My role is to direct worldwide filing, prosecution andmaintenance of our trademarks. I’m also responsible forpatent and trademark operations.

How do you find the difference between thepatent and trademark sides?It’s different. Trademarks are more fun, in a way. But Ienjoy the patent side because it is very technical. It takes alot of people to actually apply for a patent. You need theinventors to come up with an idea, and then you needsomeone to write what the application is—you need verycompetent people all the way through the process to filethe applications.

What is your background? How did you moveinto IP?It is interesting because I am kind of unique in my field,because my background is in business information sys-tems. So when I first started working in Dolby

Protecting the mark behind the soundLily S. Cheung of Dolby Laboratories Inc. explains the difficulties that being an ingredient brand for othercompanies can pose and why she is so fond of San Francisco’s cable cars. By Fionn O’Raghallaigh.

Laboratories, I was working in the licensing department.And I was managing our licensee agreements and our rela-tionships with the licensees, and also licensing operations,developing and managing the operations.

Then after a few years in that position, I was asked toalso manage our patents and trademarks. So I have beendoing that ever since 1986.

How big is your team?My team with regard to trademark issues is one trademarkparalegal and me. And then, the rest of my team, I havefour more paralegals that work primarily with patents,and an assistant. My extended trademarks and patentsteam includes five patent attorneys, the chief patent coun-sel, two patent engineers, two patent agents and a coordi-nator in patent landscaping.

What trademark problems does the DOLBYbrand face?Because we have so many technologies that can be includ-ed in a product, one issue that we have is that for a top-of-the-line product, it is sometimes difficult for a licensee todecide which logos to use. Because of that we are movingtowards experience-based trademarks, rather than tech-nology-based marks.

Could you explain the difference?Experience-based would be more like a surround experi-ence as opposed to this is DOLBY DIGITAL, this is onetype of technology. So, in the PC area we have a logo forwhat we call the Personal Computer EntertainmentExperience, and so that is a package with a lot of differenttechnologies and you just use one logo to represent thebundle of technologies.

What issues do you face specific to your industry?Most of the products with the DOLBY brand go into othercompanies’ products. So as an ingredient brand we have totry much harder than other brand owners to make sure ourlicensees use our trademarks correctly. So we produceguidelines, and have a lot of face-to-face meetings with ourlicensees to talk about that and to keep them up to dateand cement relationships.

Do you suffer much IP abuse online?We have some; I don’t think there is anybody immune tothat. With online issues we regularly and actively monitordomain names, so we try to nip the problem in the budwhen they are emerging.

There are some domain registrations that containDOLBY, and we basically monitor them and keep them ona watch-list and see if they enter into trademark abuse.

There are websites offering products that bear theDOLBY mark, but the products aren’t manufactured by

our licensees. Sometimes you even find unlicensed prod-ucts offered in big retailers’ online stores like Walmart.

Fortunately, these big retailers have been very helpful tous, addressing our enquiries about brands that areunknown or questionable to us.

How does a big store take in counterfeits ofDOLBY goods? They might purchase a product like a DVD player and theydon’t look more in depth at what is inside the product.They might think this looks like a good DVD player for$29 that we can sell for $129, they don’t necessarily knowthey don’t have the proper licenses to use the IP.

What would you recommend doing in SanFrancisco?I really like the cable cars experience. I would recommendtaking the Powell and High Street car to experience thehills and views of San Francisco. If you get a multiple-ridepass, I think they have one-day passes called passports forany transportation, if you get one of them you can take thePowell and High St car and get off on Lombard and walkdown the most crooked street in San Francisco.

I think in May it is very ornate with flowers and hair-pin turns. I would recommend renting a bike and bikingacross the Golden Gate Bridge, I think it is one of the real-ly cools ways to see it.

I have an affinity for the cable cars, because when I wasgoing to school I used to take them, it wasn’t a touristattraction. At that time there were no limitations on num-bers in a cable car, so as long as you could find room for afoot you were on. So I used to jump off early to save a fewsteps to my house, which was fun because there was an ele-ment of danger. They bring back good memories.

If you have a car and a day I would recommend the 70-mile drive from Pacific Bay to Carmel and then Montereyand seeing Cannery Row and Monterey Bay Aquarium.

Interview Lily S. Cheung

www.manag ing ip .com INTA Da i ly News Sunday, May 15 201 1 13

Providing pragmatic and global solutions since 1978

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T oday, WIPO staff—including Deputy DirectorGeneral Wang Binying—will discuss recent devel-opments in the Madrid System, including the lat-

est and expected new members. They will be joined byrepresentatives of the Australian, Chinese and EU officeswho will provide additional information on how theSystem is working in practice, before taking questionsfrom users.

The three offices presenting this year are among thebiggest players in the Madrid System. In addition, OHIMand IP Australia are what Debbie Roenning of WIPO calls“model offices” from WIPO’s perspective as they commu-nicate with the International Bureau entirely online. Atpresent, only six of the 85 member states do so, althoughmore than 70% of them communicate electronically forsome transactions.

Neil Wilson, a director in WIPO’s brands and designssector, says the Organization is encouraging greater use ofelectronic communication, but take up has been “piece-meal at best”. He adds: “We see progressive improvement,but obviously it is a question of priority and there arepolitical and resource constraints.”

Wilson said that e-communication means faster reac-tion, more efficient processes and more predictable resultsfor users. For example, sending images digitally rather

than by fax leads to fewer errors and means data can bemanipulated more easily.

But it is not just IP offices that WIPO wants to talk toelectronically. It is also rolling out three new online servicesfor trademark owners and applicants. These are: MadridPortfolio Manager, which enables users to see the status ofall the international marks in their portfolio, as well as man-age payment and renewals online; Real Time Status, whichallows anyone to check the status of Madrid registrationsonline; and Madrid Electronic Alerts, a watching service forinternational registrations, which sends an email alert when-ever there is a development with a particular mark.

All three services are being beta-tested and will bedemonstrated at WIPO’s booth in the Exhibition Hall dur-ing the Annual Meeting. They are expected to be fullyoperational in the second half of this year. Wilson told theINTA Daily News he is “very confident that the softwareworks well” and invited all attendees to visit the booth totest all three systems and provide feedback on how theywork and if they need to be improved. “A key priority forus is to improve e-commerce with holders of internationalregistrations,” he said.

Preview Madrid Users Group Meeting

INTA Da i ly News Sunday, May 15 201 1 www.manag ing ip .com14

The Madrid System is going electronic, and you can help shape it. WIPO willdemonstrate three new services at its booth in the Exhibition Hall.

The WIPO Madrid Users Group Meeting takes place at11:00 a.m. today.

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Madrid’s electronic future

Vox pop

www.manag ing ip .com INTA Da i ly News Sunday, May 15 201 1 15

MadridJ&A Garrigues, S.L.P.

MoscowGowlings

MunichGrünecker Kinkeldey Stockmair & Schwanhäusser

New DelhiRanjan Narula Associates New York

ParisSBKG & Associés

SeoulDW Partners

South AfricaSpoor & Fisher

ZeistNetherlands-De Gier Stam & Advocaten

Michael Lin, Marks & Clerk, Hong KongMeeting up with old friends and getting intro-duced to new ones. I’m also going to enjoy theculture, the cuisine and the atmosphere—this ismy first time back in the city for many years.Dr. Niti Dewan, R.K. Dewan & Co, Pune I’mreally looking forward to going to Muir WoodsNational Park. There are Redwood trees therethat are over 2,500 years old. David Nelson, inovia, Sydney Our company hasoffices all over the world, so I’m really looking for-ward to being in the same room as my colleaguesrather than having to do 6:00 a.m. phone calls!Wanda Honwana, INTRUST General Law &Intellectual Property, Maputo, Mozambique I’mlooking forward to meeting new people, estab-lishing new work relationships and learning moreabout IP. I love San Francisco—it’s so beautiful. Shafin Adamu Yauri, Trademarks Patents &Designs Registry, Abuja, Nigeria Sharing expe-riences and best practices with my colleaguesfrom around the world. I’d also like to discussthe challenges that we face, especially overapplications, litigation and procedures. Herbert I. Cantor, Cochran Freund & YoungLLC, Fort Collins My wife and I are looking for-ward to sampling good food, especially the freshseafood you can get here. This time we want togo in the cable car and to see the Coit Tower. Louise Company Ekburg, Valea Technology &Law, Gothenburg Meeting my colleagues andcatching up on IP news. I also want to attendthe sessions looking at licensing and designsand fashion.

What are you most looking forwardto doing in San Francisco?

INTA thanks the firms that hosted pre-Annual Meeting receptions. In addition to the locations pictured here, receptionswere held in Beijing (hosted by Unitalen), Brussels, Los Angeles (Zuber & Taillieu), Miami (Foley & Lardner), Quito(Falconi Puiq, Abogados), San Francisco (Harvey Siskind) and Warsaw (LDS Laweszki Depo & Partners and Polservice).

Today’s Schedule | Sunday, May 15, 2011Most events take place at the Moscone Center West (MCW, 800 Howard Street) and the San Francisco Marriott Marquis (SFMM, 55 Fourth Street).

8:30 am – 4:00 pm TOUR BOOTH MCW Foyer

9:30 am – 7:30 pm REGISTRATION MCW Foyer

9:30 am – 7:30 pm HOSPITALITY MCW Hall

10:00 am – 12:00 pm BRUNCH TABLE TOPICS MCW Rooms 2022-2024

10:00 am – 12:00 pm COMMITTEE MEETINGS

INTA Bulletin Committee SFMM Yerba Buena Ballroom Salon 7

Online Reference Committee SFMM Yerba Buena Ballroom Salons 13-14

PDA Executive Council SFMM Yerba Buena Ballroom Salons 10-11

Programs Committee SFMM Yerba Buena Ballroom Salon 4

11:00 am – 1:00 pm MADRID SYSTEM USERS’ MEETING (WIPO) USERS MEETING MCW Room 2007

11:30 am – 1:30 pm TRADEMARK ADMINISTRATORS BRUNCH MCW Rooms 2003-2005

11:30 am – 1:30pm IN-HOUSE PRACTITIONERS LUNCHEON SFMM Yerba Buena Ballroom Salon 9

12:00 pm – 4:00 pm EXHIBITION HALL MCW Hall

12:15 pm – 2:15 pm COMMITTEE MEETINGS

Annual Meeting 2012 Project Team SFMM Yerba Buena Ballroom Salons 13-14

Anticounterfeiting Committee (ACC) Leadership SFMM Yerba Buena Ballroom Salon 6

Anticounterfeiting Committee—Full Committee (starts at 1:15pm) SFMM Yerba Buena Ballroom Salon 8

Internet—Online Trademark Use Subcommittee SFMM Golden Gate Ballroom B

LRC–East Asia & Pacific Subcommittee SFMM Yerba Buena Ballroom Salon 5

LRC–Europe & Central Asia Subcommittee SFMM Yerba Buena Ballroom Salon 12

LRC–Latin America & Caribbean Subcommittee SFMM Nob Hill A

LRC–Middle East, Africa & South Asia Subcommittee SFMM Nob Hill B

LRC–U.S. Model State Trademark Bill Subcommittee SFMM Nob Hill D

1:00 pm – 3:00 pm LUNCHEON TABLE TOPICS MCW 2022-2024

1:30 pm – 5:00 pm IN-HOUSE PRACTITIONERS WORKSHOP SFMM Yerba Buena Ballroom Salon 7

2:00 pm – 3:00 pm SPEED NETWORKING MCW Hall

2:30 pm – 4:30 pm COMMITTEE MEETINGS

Annual Meeting 2011 Project Team SFMM Nob Hill B

ACC–China Subcommittee SFMM Yerba Buena Ballroom Salons 10-11

Famous & Well-Known Marks (FWKM) Full Committee (until 3:00pm) SFMM Yerba Buena Ballroom Salons 13-14

FWKM–East Asia & Pacific Subcommittee (3:00pm–4:30pm) SFMM Nob Hill A

FWKM–Eastern Europe & Central Asia Subcommittee (3:00pm–4:30pm) SFMM Laurel

FWKM–European Union Subcommittee(3:00pm–4:30pm) SFMM Yerba Buena Ballroom Salon 9

FWKM–Latin America & Caribbean Subcommittee (3:00pm–4:30pm) SFMM Yerba Buena Ballroom Salon 12

FWKM–Middle East, Africa & South Asia Subcommittee (3:00pm–4:30pm) SFMM Yerba Buena Ballroom Salon 6

FWKM–North America Subcommittee (3:00pm–4:30pm) SFMM Yerba Buena Ballroom Salon 8

Internet—ccTLDs and IDN Subcommittee SFMM Nob Hill C

Internet—Generic Top-Level Domain Registry Issues Subcommittee SFMM Yerba Buena Ballroom Salon 5

3:45 pm – 5:00 pm Getting Involved with INTA: How a Leadership Role Can Define Your Career Path MCW Rooms 2016-2018

5:00 pm – 6:30 pm WELCOME RECEPTION MCW Level 3 Foyer