INTA President Toe Su Aung yesterdaysigned a Memorandum of Understandingwith Miguel Ángel Margáin González,

Director General of the Mexican Institute ofIndustrial Property (IMPI). The MoUbetween INTA and IMPI aims to assistMexico with the full implementation of theMadrid Protocol.

The Protocol entered into force inMexico in February this year. YesterdayMargáin, as well as representatives of theColombian and New Zealand offices,spoke to the INTA Daily News about theinternational trademark system.

Colombia deposited its instrument ofaccession in May 2012 and the Protocolentered into force in August last year. JoseLuis Londoño Fernandez, Deputy forIndustrial Property in Colombia’sSuperintendency of Industrial Property,said that the first International Applicationbased on a Colombian registration wasfiled last week: “We are on the map now.Our key objective going forward is that theMadrid Protocol should be used by domes-tic companies. We will do a seminar aboutit in July in three of the main industrialcities in Colombia.”

Since the Protocol entered into force inMexico, there have been at least 12 inter-national applications filed by nationalapplicants, and the country has been desig-nated in about 100 international applica-tions.

“We had to implement some changes tothe law to accommodate the MadridProtocol. For example, we are a singleclass country—we didn’t have multi-classapplications. Our data system had toinclude the Madrid system applications,”said Margáin. “We don’t have a trademarkopposition system, but that’s not a require-ment to be part of the Madrid Protocol.We are talking to the industry associationsabout whether an opposition system isneeded,” he added.

Since joining the System in October lastyear, New Zealand has been designatedabout 1,400 times and some 100 appli-cants have used the country as the basis foran international application. IngridBayliss, National Manager of NewZealand’s Intellectual Property Office, saidthe system has been popular with domesticapplicants, including small businesses, as italso covers most of New Zealand’s main

trading partners, such as Australia, Chinaand the United States.

She added that the Office used acces-sion as an opportunity to update its IT sys-tems. It now has a 100% online case man-agement system, which is compulsory forapplicants. “This has enabled us to cut anumber of costs from the Office, and wehave passed those savings on to appli-cants,” said Bayliss.

Margáin said Mexico is following asimilar path: “The Madrid Protocol hasalso helped us to build the e-filing system.By 2014, we will have the whole processavailable electronically.”

See also: the future of the MadridProtocol, page 2

Profile

INTA PresidentToe Su AungPage 6

Preview

Fluid trademarksPage 10

Interview

Soumit Roy,Whole FoodsMarketPage 16

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Next steps onMadrid Protocol

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www.inta.org www.managingip.com

Monday, May 6, 2013 135th Annual Meeting, Dallas

O n Friday, the European TradeMark and Design Network(TMDN) published its first

Common Communication, setting out thedifferences between European trademarkoffices in how they interpret class head-ings. The TMDN was established recentlyas a means for OHIM and national trade-mark offices in the EU to work together toharmonize tools and practices. TheCommon Communication was spurred bylast year’s ruling by the Court of Justice ofthe EU in the IP Translator case, which

concerned the goods and services that arecovered by trademarks that just use a classheading in their application.

The importance of the issue was madeclear in yesterday’s CTM and RCD Users’Meeting (which was heavily branded as aTMDN presentation, rather than OHIM).An Italian attorney described a recent casewhere her client had an opposition to aCTM application partially rejected. TheCTM and the client’s national Italian markwere identical and both cited a class head-

Europe aims to harmonizetrademark practice

Find out more about the MadridProtocol and the Global Brand Databaseat WIPO’s booth in the Exhibition Hall.The Database includes records of morethan 11 million marks from 10 offices,including the United States and WIPO.Enhancements, including a link withOHIM’s TMview database, are expectedto be added soon. Glenn Macstravic,Head of the Brand Data Base Unit atWIPO, said he welcomed feedback fromusers at the Annual Meeting: “Don’t beafraid to come and tell us what we cando better to help you.”

Global Brand Database

The old with the new: At yesterday’s Welcome Reception, INTA members were treat-ed to a piece of modern Dallas. Attendees helped themselves to traditional Texasfare with roast beef and beer, but modern cosmopolitan Dallas was also present inthe form of grilled salmon, fine wines, and live lounge music.

Continued on page 2.

Toe Su Aung and Miguel Ángel Margáin González

B inying Wang, WIPO’s AssistantDirector General, told users of theMadrid Protocol yesterday that

they should expect further expansion ofthe System in the next few years.

Following the recent accessions ofColombia, India, Mexico and NewZealand, Wang said she hoped anothertwo to three countries would join theProtocol this year. Possible future signato-ries include Barbados, Costa Rica, theDominican Republic, Jamaica, Pakistan,South Africa and Tunisia. Brazil has alsorecently modernized its trademark prose-cution systems, which some see as a sign itis preparing to join.

In addition, it is possible that Trinidadand Tobago will join next year and that all10 ASEAN member countries would bemembers by 2015.

Following the accession of India lastmonth, the Protocol now covers 88 coun-tries and the EU, covering two-thirds of theworld’s population. At yesterday’s WIPOsession, Junying Tao, Senior Counsellor forthe Information and Promotion Division ofWIPO, said the number of applicationsunder the Madrid Protocol continued togrow in 2012. Last year, over 44,000 inter-national applications were received, upfrom over 42,000 in 2011.

Europe was the largest source of appli-cations, followed by the United States.Swiss pharmaceutical giant Novartis wasthe top filer under the Madrid Protocol in2012, with 176 applications. At the end of

2012 there were half a million registrationsin force under the System belonging to178,000 trademark owners.

The top category for filing, with over

9,500 applications last year, was comput-er hardware, software and other electricalor electronic apparatus of a scientificnature.

News

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com2

Who will be next to join the MadridProtocol?

Panelist Grégoire Bisson, Head of WIPO’sInternational Designs Registry, said theHague System is also expanding its influ-ence. The 60-member System offers simi-lar benefits to the Madrid Protocol, allow-ing an owner of an industrial design to filean international registration in all signato-ry countries, unless a country’s nationaloffice refuses protection in that country. Bisson told attendees that between

2001 and 2011, the number of applicationsfor industrial designs increased by 158%.But over the same period, he said thatnon-resident filings have remained flat

while resident filings have grown.Several large countries may soon

become members of the Hague System,including China, Japan and the UnitedStates. Korea and Russia are also expect-ed to join in 2014. However, Bisson saidthat the expansion would result in “anunavoidable complication” of the system,because of differences between the legalsystems in member states and those inpotential signatories. For example, theexamination process in China, Japan,Korea and the United States includesrequirements relating to novelty.

Designs progress

Attendees browseworks at the ArtShow, whichopened yesterdayat the ConventionCenter. The show,which featuresworks by INTAmembers, is openall week.

The benefits ofbeing involved:Speakers at yes-terday’s workshop“Getting Involvedwith INTA: How aLeadership RoleCan Define YourCareer Path” dis-cussed how atten-dees can benefitfrom active par-ticipation.

ing for the goods and services covered. ButOHIM ruled that the Italian mark shouldbe interpreted to cover just the items in theheading, while the CTM covered every-thing in the class under that heading. “Itseems completely unfair to me—my clientlost some of its rights because of differentpractices,” said the attorney.

In response Dmitris Botis, Head of theLitigation Service at OHIM, highlighted theCommon Communication, saying that thisshould prevent different interpretations bythe same trademark office. OHIM shouldalso, he said, recognize the same goods andservices for a national mark as that attrib-uted to it by the national office. But thisdoes not solve the problem of the existingvariations between offices. Julio LaportaInsa, Head of the Legal Practice Service atOHIM, could only say that OHIM was“conducting meetings and having many dis-cussions” with national offices.

The reaction to the IP Translator casealso highlighted how OHIM is changingits practice on updating the office’s guide-lines. Previously it came up with propos-als, put them out for public consultationand then edited and published them.OHIM has now added two initial steps tothe process: suggestions from users andanalysis from Knowledge Circles. TheCircles are groups composed of lawyers,examiners and judges that are each taskedwith following a particular area of prac-tice, such as absolute grounds. They studythe case law, identify trends, and suggestchanges to the official guidelines based onthose trends. The first new draft guidelinesusing this process will be available in June.They will be translated over the summerand discussed at OHIM’s Liaison Meetingin the first week of October. An expeditedversion of this process was used to changethe guidelines following IP Translator.

“The important things here are theextra steps and the fact that the process isnever-ending,” said Laporta Insa.“Practice never stops changing so ourprocess cannot either. It is a circle, andnext year we will begin revising everythingall over again.”

Elsewhere, OHIM reported someimpressive performance statistics, withmost of its targets for pendency being met.Even oppositions—which had the mostroom for improvement—had 85% of deci-sions made within the target of 10 weeks.Next year it is bringing its targets down fur-ther, with cancellations aimed to be decidedin 10 weeks instead of 16, for example.

90% Average for OHIM meeting itspendency targets

10 weeks New target for cancella-tion actions, down from 16

84% Customer satisfaction withOHIM examinations

26,500 People to be surveyed byObservatory on attitudes to IP

5% Projected increase in CTM appli-cations this year

OHIM statistics

Continued from page 1.

WIPO officials yesterday

“B udget budget budget.” That was the messagefrom Michelle Renne of Campbell Soups tocounsel looking to attract international

clients. Sitting on a panel yesterday with other trademarkprofessionals at the Trademark Administrators Brunch,she explained some of her frustrations when working withforeign counsel.

Renne said that she seeks to build relationships withpractitioners that are sensitive to the company’s businessrealities and will work with it to find solutions. “I’m notan expert in your country; help me out,” she said. “I hategetting an email saying ‘you have no other options, and theonly option is to file a lawsuit and that costs $10,000;what do you want to do?’”

Toni Hickey of Cummins in Indianapolis agreed, sayingforeign lawyers need to be well-versed in her company’soperations and be able to give the lay of the land of thejurisdiction. She gave Brazil as an example, where hercompany has a manufacturing facility. Because of this, sheprefers to work directly with local lawyers there ratherthan through her US-based counsel in order to foster thatrelationship.

Despite some complaints, the panelists also expressed ahigh level of satisfaction with trademark practice. “I fellinto [trademark work],” said moderator DeborahHampton of Steptoe & Johnson. “It’s one of the mostrewarding things I’ve done. I would do it for free.” Thenshe quickly added: “But I won’t.”

News

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 3

What administrators look for inoutside counsel

Ethics and professionalconduct formed a majorfocus of yesterday's In-House PractitionerLuncheon and Workshop.After a keynote presenta-tion on Ethics and SocialMedia by Thomas E.Spahn (McGuireWoodsLLP, USA), small groupsof attendees grappledwith questions such aswhether it was proper tooffer advice to partners ina co-branding agreement.

The INTA Daily News is produced by Managing Intellectual Property inassociation with the International Trademark Association.

Photography by Kevin Brown Photography.Printed by Supreme Printing.

The INTA Daily News is also available online at www.inta.org andwww.managingip.com.

© Euromoney Institutional Investor PLC 2013.

No part of this publication may be reproduced without prior writtenpermission. Opinions expressed in the INTA Daily News do not necessari-ly represent those of the INTA or any of its members. Full productioncredits at www.managingip.com/about-us.html

T he tables were turned during asession yesterday morning, withstudents teaching professors. The

speakers were five students from univer-sities in the United States and UK, whilethe audience was largely made up ofadjunct professors (lawyers teaching, orpreparing to teach, part time). A series ofquestions from chair Lawrence Nodineof Ballard Spahr probed the students fortheir experiences and advice for theaudience.

“Adjunct professors have the best sto-ries,” said David Mayer of EmoryUniversity. “They’re working on cases allthe time, so their war stories are real andup to date.”

But like all the other students, Mayerdidn’t pull his punches: “Sometimesadjunct professors aren’t as organized asthe regular professors—the classes canbe all over the place and you turn up notreally knowing what to expect.”

Coincidentally, Nodine had been anadjunct professor to Mayer previouslyduring his career. “So far, David hasbeen very generous and not told any

embarrassing stories about me,” saidNodine. “But we still have an hour leftso there’s plenty of time.”

Irene Chang of Washington Universityin St. Louis advised adjuncts to be a bitmore prepared.

“Full-time professors teach the samecourse a lot, so they know how it worksbest and they know how to manage thestudents through it,” she said. “Adjunctprofessors need to think about this inadvance and anticipate reaction from theclass.”

A similar theme ran through the dis-cussion of guest lecturers invited in bythe adjuncts. While the students saidthey can be very stimulating and enter-taining, guest speakers tend to be evenmore disorganized and off topic—theadjunct professors need to help out and

not just “consider it a day off.” Nodineadded: “The question everyone will havein their head is: ‘will this be on thetest?’”

Several members of the audienceasked questions of the speakers, particu-larly regarding whether adjuncts need tohave regular office hours and the prac-tice of cold calling. The students weresplit on both issues.

On office hours, some said they hadfew expectations while others insistedthe part-time professors needed toalways be available at certain times. Oneaudience member said he was about tostart teaching, and was planning on hav-ing an informal “brown bag” sessionafter each class, where he would reservea table in a restaurant and studentscould bring their own sandwiches, givingeveryone the chance to talk throughthings that had come up during class.

Nodine said: “In my experience, aftertwo hours of being taught by me the stu-dents can’t get away fast enough. Sodon’t be disappointed if your take-up isa little small.”

Discussion of cold calling, where pro-fessors randomly ask questions to stu-dents, revealed a range of classroompractices. Some professors divide up theclass by name, or split it into groups, sothat only a few are “on call” at anypoint.

But David Mayer said “I think every-one should be called on, bring it on”which was echoed by members of theaudience. Nick Hoeffler of ValparaisoUniversity admitted that the fear ofbeing called on made students do all oftheir reading “but it can sometimes dis-tract them from other classes.”

The value of adjunct professors wasunderscored by Maria Tymofienko ofQueen Mary’s College in London, whostudied in the Ukraine before Belgiumand London.

“We don’t have the concept of adjunctprofessors in the UK, but practitionersdo teach sometimes and it is incrediblyvaluable. It’s something that is unheardof in many countries, including theUkraine,” she said.

News

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com4

What do students expect from theirprofessors?

The following awards were honord atthe INTA Gala on Saturday night:

Ladas Memorial Award Winners Sponsored by Ladas & Parry

Professional Category• Yvette Joy Liebesman, AssistantProfessor of Law, Saint LouisUniversity School of Law

• Benjamin Wilson, Law Clerk for theHonorable William D. Stiehl of theU.S. District Court for the SouthernDistrict of Illinois

Student Category• Ukeme Awakessien Jeter, LawStudent, Case Western ReserveUniversity School of Law

Saul Lefkowitz Moot Court Competition Winners

Winning Team• University of Hawaii William S.Richardson School of Law (ShirleyLou, Avery Matro, AndreaMaglasang-Miller, Nikki Yamauchi)

Second Place Team• University of Iowa College of Law(Alexander Johnson, Ravi Narayan,Samuel Young)

Best Oral Argument• University of Hawaii William S.Richardson School of Law

Second Place Oral Argument Team• University of Iowa College of Law

Dolores K. Hanna Best Brief• University of Iowa College of Law

Second Place Brief• Brooklyn Law School (Alina Levi,Glenn Schieck)

Saul Lefkowitz Moot Court Competition Sponsors

National Final Competition• Finnegan, Henderson, Farabow,Garrett & Dunner, LLP

East Regional Competition• Goodwin Procter LLP• Day Pitney LLP• Arnold & Porter LLP

Midwest Regional Competition• DLA Piper US LLP• Husch Blackwell LLP• Intellectual Property LawAssociation of Chicago (IPLAC)

South and West RegionalCompetitions• Kilpatrick Townsend & Stockton LLP

Academic Awards winners

“They’re working on cases all the time, so theirwar stories are real and up to date.”

“The questioneveryone will have intheir head is: ‘will thisbe on the test?’”

A lbania has taken a huge step forward in its IPenforcement; there’s a new trademark law inSerbia; and generally social media is becoming the

new frontier for infringement. Where would you find sucha comprehensive and detailed summary of trademark lawaround the world, but at the Academic Course that ran allday on Saturday and Sunday?

The Academic Course on International Trademark Lawis structured as a series of updates from leading lawyers intheir respective regions and specialist areas. Althoughmostly geographical, the updates also included talks onareas of practice, such as famous and well-known marks.

This allows time to get into some niche areas. Forexample, Slobodan Petosevic of eastern European firmPetosevic explained how far IP rights have progressed inAlbania. Two recent cases, involving the marksMOTOREX and RED BULL, broadly followed EU prac-tice and decisions by the Court of Justice of the EU, despitethe fact that Albania is not a member of the EU. The REDBULL case in particular involved a finding of infringementat both the first and second instances based on trade dressrights, even though Albanian law does not mention tradedress at all.

These small countries often have an importance forbrand owners that is disproportionate to their size.Kosovo, for example, is still not recognized as a country bythe UN and is therefore not a signatory to any internation-

al IP agreements. But its position in the heart of southernEurope, with easy access to the sea, makes it an importantvenue for counterfeiters.

There has been some confusion in recent years as to thebest way to protect rights in Kosovo. Local officials at onepoint said that brand owners could simply re-register theirMadrid Agreement applications and they would be con-verted to national rights. But these have not always beenrecognized in subsequent litigation. “My advice nowwould be to just register a national mark directly with theAlbanian office,” said Petosevic.

The annual updates are particularly popular with in-

house IP counsel looking to create an international regis-tration strategy. Robert J. Pascal, Intellectual PropertyDirector at Textron Innovations Inc. in Providence, RI,was joining the course for the first time: “We are an indus-trial company with many different marks, among themCESSNA planes and BELL helicopters. We have hundredsof different registrations around the world—some of themnational, some regional, and some that overlap in a belt-and-suspenders approach. Right now we’re trying tostreamline those registrations, so this level of analysis isperfect for trying to work out which we should keep andwhich we should let lapse.”

Although Textron doesn’t have many issues with coun-terfeit helicopters, it does license its brands to producers ofmodel aircraft, and therefore needs to enforce againstcounterfeit versions of these toys. “The key is to try andmap our most important markets against the relative costand effectiveness of registration in these various coun-tries,” said Pascal.

The news from across eastern Europe was generallypositive, with all countries increasingly following EU lawand jurisprudence whether they were prospective, poten-tial or unlikely members of the European Union. Serbia,for example, introduced a new trademark law in Januarythat recognizes exhaustion of rights for the first time. Thisis important as the country had been a popular route forparallel imports into the rest of Europe.

News Academic Course

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 5

Trademark tips from around the world

W hen the INTA Daily News caught up with Toe SuAung she was spending a rare few days inLondon, between attending the Global

Anticounterfeiting Congress in Istanbul (where she shared astage with the Turkish Prime Minister Recep Erdogan) andleaving for the INTA Annual Meeting in Dallas, where shewill today welcome attendees as this year’s President. Suchglobetrotting has become routine for Aung: in the past yearalone, she has also been to India, Indonesia, Japan, Korea,Myanmar, Russia and Singapore on behalf of INTA.

The international travel comes naturally to someonewho was born in Japan, spent five years of her childhoodin Myanmar and later grew up in Singapore, before mov-ing to London about 20 years ago. She says the UK capitalis now the place she considers to be home—“it’s the placeI’ve lived in the longest” but adds: “I also feel at home inmany parts of the world.” Aung works for an internation-al tobacco company (BAT) based in the UK (but with aBrazilian CEO) and also spends a lot of time in theAmericas. And she still has a Singaporean passport.

Asian pushAung’s global heritage makes her well-suited to leadINTA this year, as the Association steps up outreach to

both governments and brand owners in Asia. “It’s impor-tant to talk to governments and see that they understandwhat INTA can do to support them. We’ve had somegood conversations with governments and in particularnational IP offices,” she says. In Myanmar, for example,INTA has been helping the government, which is writingits first IP laws. “We’ve been very impressed with theopenness and willingness to listen. They’re determined topass the law sometime this year,” says Aung. “They see itas a way of attracting foreign investment. It’s a prerequi-site to have IP laws and we’re keen to support whatthey’re doing.”

Aung identifies countries such as Indonesia, Korea andVietnam where there are brand-owning companies thatcould benefit from joining INTA: “We want to recruit localbrand owners, to make sure they add their voice.” Sheadds that, though companies in Asia might have differentways of working compared to those in Europe or NorthAmerica, their interests are essentially the same.

One of these interests is fighting counterfeits - some-thing that Aung has been particularly focused on for thepast five years, since she took on the role of GeneralCounsel, Anti-Illicit Trade, at BATMark Limited (she wasformerly head of IP at the tobacco company, which owns

some 90,000 trademarks and more than 2,000 patents).The role covers not just counterfeit goods but also smug-gling and tax evasion, and involves dealing with everythingfrom investigations and intelligence gathering to interna-tional advocacy. She heads a global team comprising inves-tigators, forensic technicians and commercial specialists.“Actually,” she says after a pause, “I’m the only lawyer inthe group.”

Aung admits she was “reluctant” to move away from apure IP role when offered the opportunity, but says sheenjoys it: “It’s a much broader role, more commercial andvery diverse. There is the criminal and law enforcementside, and a lot of engagement and advocacy work.” Forexample, BAT has signed an agreement with the 27 EUmember states and the EU Commission to tackle illicittrade in tobacco.

But Aung acknowledges that tackling counterfeitsrequires “a multi-faceted solution” involving not just legalaction, but authentication technology and awareness-rais-ing: “There is no silver bullet.” She notes that some of themost useful weapons in the battle against counterfeits areactions over money laundering and the proceeds of crime:“This has worked well in the UK and we should promoteit in other countries.”

Profile Toe Su Aung

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com6

Counterfeiting, collaboration and communicationToe Su Aung of BATMark is this year’s INTA President. James Nurton talked to her about anticounterfeiting, publicviews on IP—and body combat

Promoting public awarenessThe fight against counterfeits has become harderbecause of what Aung describes as the “backlash”against IP protection. This peaked last year with thecampaign against ACTA in Europe. “That was quite afrightening thing,” she says. She also warns trademarkpractitioners against complacency: “As trademark own-ers, we have to fight the battle with everyone else. Wecan’t say it’s just a copyright issue and stand back … Theissue of plain packaging is one example. It’s about mak-ing sure people understand the impact on IP. It’s aboutbalance and proportionality.”

The solution, she suggests, is two-fold, First, IP owners

need to promote a positive image of IP. Second, they needto work together.

“The debate has moved on: it’s not about counterfeitsbeing bad—governments get that. In terms of increasinggovernment goodwill, it’s about appreciating the fundamen-tal IP rights. For example, in Istanbul, WIPO ran sessions onbuilding respect for IP. At some level you need to say theserights themselves are important,” she says. This means pro-moting public awareness, for example by researching theeconomic benefits of IP, including its role in job creation.Aung welcomes research done by the USPTO and that beingworked on at OHIM’s new Observatory in this area.

She also notes that there is “a lot more cooperation

within law enforcement (Customs and police) and betweenthe private sector and law enforcement” than in the pastand that there are significant benefits in “doing things col-lectively.” Following this year’s Seventh Global CongressCombating Counterfeiting & Piracy, she says: “Some peo-ple say we’re still talking about the same things but Ibelieve the debate has moved on and the GlobalCongresses have been important in that.”

INTA of course has a key role to play in that work, andAung identifies some initiatives underway, including herown visits and those of other Board members, the recentlaunch of the INTA blog and plans to make the Boardmembers more visible at various events during this year’sAnnual Meeting. She also urges trademark practitioners toparticipate in INTA’s work: “I don’t want them to see INTAas just a big party they go to twice a year, or just a good net-working opportunity, though it is both of those things. Themore you get involved, the more you get out of it.”

But Aung also acknowledges that no one organizationcan provide all the answers and that INTA must collaboratewith other IP and related associations and people where itcan: “We don’t just want to barge in.” In south-east Asia,for example, INTA has a good relationship with the ASEANIP Association, which has helped to promote reform in theregion, which will hopefully lead to more countries accedingto both the Madrid Protocol and the Hague Treaty ondesigns. “We need to get the message out to the IP barsabout the Madrid Protocol,” she says. “There are concernsabout work, but if you talk to attorneys in countries thatjoined recently such as the UK and United States they saywork has changed but they have more added-value work soit hasn’t diminished their revenue—in fact the contrary.”

Toe Su Aung will give her President’sAddress during today’s OpeningCeremonies, which start at 8:45 am.

Profile Toe Su Aung

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 7

One of Toe Su Aung’s hobbies (she calls it an “addic-tion”) is body combat. She describes it as “martialarts movements to music” and adds swiftly: “There’slots of punching and stabbing but no contact.” Aunghas been taking classes whenever she has time forabout five years and says: “It’s very cheesy but reallyfun. You should try it sometime.”Other interests are probably more conventional for

an INTA President: theater, opera (“Puccini is proba-bly my favorite composer”), good food, wine and theEnglish countryside. Aung’s President’s DessertReception this week will combine some of these pas-sions, with an operatic sound track and a new cocktaildevised in honor of the President by her friend,trademark lawyer and professional winemaker MarionHeathcote. “I think it’s gin-based with kaffir lime andlime leaves, and I’m really looking forward to tryingit,” says Aung.

How the INTA President relaxes

Preview Australia and New Zealand

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com8

A ustralia’s Raising the Bar amendments have sub-stantially changed opposition proceedings.Today’s panel will explain the new system and

how it compares to other jurisdictions around the world,and how to best utilize strategic tools to coordinate yourbrand protection worldwide.

Moderator Michael Wolnizer of Davies Collison Cavein Australia explains that the changes are not minor andthat rights holders need to be careful about meeting thestricter requirements. “It’s not a small adjustment thattweaks this and tweaks that part of the law; these are bigchanges.”

He continues: “In 2009, the IP office identified anumber of things that it wanted to do to make the sys-tem better: it wanted to make the system faster, simpler,easier to understand, and cheaper.” He adds that thoughthe office probably did not achieve all four goals, a num-ber of changes are positive and the system should be bet-ter overall.

Tighter timeframesThe new system tightens up the timeline of oppositions,and perhaps more importantly, makes it much more dif-ficult to get time extensions. For example, the period to

file a Notice of Opposition has been shortened from 3months to 2 months after the advertisement of accept-ance of the mark. The challenge of meeting this shorterdeadline is compounded by the fact that extensions arenow only granted for “errors or omissions” or “circum-stances beyond a person’s control.” Previously, exten-sions were granted if the party showed that it neededmore time for research or to enter into settlement ofnegotiations.

Similarly, deadlines throughout the opposition proceed-ings have been tightened in order to ensure speedier out-comes. For example, the opposing party must file its evi-dence within three months of its Notice of Opposition,while the applicant also has three months to reply.Extensions are also more difficult to obtain and are limit-ed to errors or circumstances beyond the party’s control.

Other changes intended to speed up proceedings maynot be as successful. Under the new law, the applicant mustfile a Notice of Intention to Defend with one month of theNotice of Opposition. The application lapses if no noticeis filed. Wolnizer notes that there is no disincentive to filethis notice even if the applicant has no intention to defendthe application, especially if the goal is to string out theproceedings. A fee, he suggests, would have cut down onfrivolous notices.

Still, overall the changes should have a positive effect onthe speed of proceedings. Wolnizer says that it should bepossible to have cases resolved in about two years, whileeight years was not uncommon under the previous law.

More preparationThe amendments also require opposing parties to do morepreparation at the outset. Under the old system, the

Prepare now for Australia’s new opposition systemRecent amendments in Australia will make opposition proceedings quicker, but also more expensive, with morework needing to be done upfront. Peter Leung explains.

opposing party had to file a Notice of Opposition to ini-tiate proceedings. After the change, a Statement ofGrounds and Particulars must be filed along with theopposition notice. These statements, which plead thegrounds of the case, are also used in the Australian patentsystem. If the statement is not sufficiently particular aboutthe grounds of the case, the Registrar may amend or evendismiss the opposition. Amendments to the pleadings willonly be granted in limited instances.

Wolnizer explained that this is one reason why thenew system may be costlier than the old. “Under the pre-vious system, the opposing party didn’t have to incurcosts until it finalized its evidence. This change is notgood for brand owners because most cases don’t go tohearing, as they are often settled, so now there are morecosts at the outset.”

Still, Wolnizer says that the new system is an

improvement especially in light of speedier proceedings.Though unfamiliarity with the new opposition systemraises concern among some brand owners and a fewhave strategically filed earlier to conduct their opposi-tions under the old system, the new procedure shouldresolve cases more quickly.

Committees in INTA’s Policy Development andAdvocacy Group participated in a series of public com-ments on Raising the Bar. To learn more or find out howyou can get involved, contact Seth Hays, INTA ExternalRelations Manager for Asia-Pacific, at shays@inta.org.

RM01 Regional Update: New OppositionCase Management in Australia and aComparison to New Zealand and Hong Kong

in Terms of Procedure and Outcomes takes placetoday from 10:15 am to 11:30 am in Ballroom D3-4

Preview Australia and New Zealand

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 9

In addition to outlining the proce-dural changes, Wolnizer and BenFitzpatrick of the Victorian Bar willdiscuss some of the strategic con-siderations under the newAustralian system. Some areas ofparticular importance involve theproduction of evidence, cross-exam-ination and the role of theRegistrar. The panelists will also look at

strategic considerations for interna-tional brands working to protecttheir rights worldwide. BarbaraSullivan of Henry Hughes Patent &

Trademark Attorneys in NewZealand said that she thinks theAustralian system should lend morecertainty for brand owners, thoughthe stricter deadlines may be achallenge at first. Perhaps moreimportantly, the system is more inline with international practice,including New Zealand’s. Becauseof this, the experience of the pan-elists from other jurisdictions canlend insights on how to best pro-ceed in Australia.For example, Sullivan notes that

New Zealand’s system requires the

grounds of opposition to be laid outat the outset, similar to theStatement of Particulars inAustralia. She explains: “As a gen-eral message, brand owners oppos-ing a registration need to sort outthe grounds of opposition rightaway and they need to think aboutthe evidence to support thosegrounds, earlier rather than later.”She added: “People can’t just sit

on their hands; they have to put alot of thought into preparing theevidence in an earlier stage of theprocess.”

Strategic considerations

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QUIZINTA DailyNews 2013

O ne of the most interesting trends in trademark useover the past few years has been the way brandshave increasingly played with their logos, creating

different versions in order to keep up their appeal to con-sumers—particularly online. It’s especially interestingbecause few of these so-called fluid marks have been test-ed in court, so the way in which different versions under-mine the mark’s functions is not yet clear. A session onfluid marks today will try to set out some best practices forbrand owners, in the face of this uncertainty.

All such discussions start with GOOGLE. As the streamof GOOGLE logos across the bottom of this page illus-trates, the company changes its logo regularly to reflectanniversaries and world events. The designs range fromthe simple addition of a snowball to an unreadable scrib-ble mimicking artist Jackson Pollock. They are all collect-ed at google.com/doodles.

It is—in the words of one of today’s speakers, LisaPearson of Kilpatrick Townsend & Stockton—the quintes-sential information-age brand. It is the antithesis of the tra-ditional view of the trademark: a signature of the ownerthat is stronger the more often it is used in the same formto identify the same source.

The GOOGLE mark is actually stronger for being sodistorted and adapted. Internet users find themselvessearching out the GOOGLE letters within the pictures thatcelebrate the birthdays of Colombian writer Jorge Isaacsor Czech inventor Prokop Diviš. It is a game that engagesthe consumer in a way a traditional mark never would.

Another good example is ABSOLUT vodka, which hasused the shape of its bottle as the basis for various artisticcollaborations. The result—as shown opposite—is a seriesof interpretations by others of the ABSOLUT trade mark.The campaign specifically engages others by inviting themto distort the logo. It is the outsourcing of a fluid mark.Google actively solicits suggestions for its doodles as well,as do other brands such as the British TV station E4.

At the other end of the scale, an increasing number ofdynamic institutions are making use of fluid marks. TheCity of Melbourne, for instance, uses a range of different

patterns within its M logo to demonstrate its cultural andcreative diversity. And New York’s Museum of Arts andDesign does something similar, with different materialsmaking up its MAD logo.

Fluid marks are not for everyoneBut it is striking that these examples all come from one oftwo types of brand owner: ones with very well-knownmarks and ones with relatively unknown marks.

The former have such strong brand recognition thatthey are not afraid of losing recognition from consumers,or from losing their trademark rights in particularly dis-torted designs. The latter, on the other hand, are often notcommercial organizations or are so small that they havelittle to fear from weaker trademark rights. A good exam-ple is Nordkyn, a peninsula on the top of Norway that cre-ated a dynamic logo for itself which changes shape withthe prevailing weather. It is arguably a weak mark; butthen counterfeiting is hardly a prime concern.

So should brand owners that don’t fall into one of thesecategories avoid using fluid marks? “Yes, the best candi-dates for fluid marks are always going to be conceptually orcommercially strong marks,” says Pearson. “Brand owners

How much should you play with your mark?An increasing number of brands are regularly changing or distorting their trademarks in order to retain theirappeal—particularly online. Ahead of today’s session Simon Crompton examines the risks and rewards of theseso-called fluid marks.

Preview Fluid marks

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com10

run big risks using weak marks as fluid mark templates. Forexample, if a word mark is in danger of becoming a gener-ic term, presenting it in a lot of different permutationscould not only hasten its demise but also potentially hinderthe development of trademark rights in other source identi-fiers such as a distinctive logo or trade dress.”

The key is retaining the main identifying points of themark, such as the typography or device elements. In mostversions of the GOOGLE logo, for example, the letters areretained in some form. Other brand owners shouldn’tmimic the versions where the logo is entirely obscured,such as the Pollock version.

Other fluid marks retain these core pillars—NICK-ELODEON, for example, recently switched from its well-known orange ‘splat’ logo to the same text over a range ofdifferent orange shapes. AOL, equally, has used a logo fora while that is a cut out of some other image, with the AOLletters being created by the negative space. In fact, Pearsonpoints out that AOL has been slightly better in this regardthan Nickelodeon, as the latter has used slightly differenttypographies over time, where AOL has been consistent.

Should you register a fluid mark?One reason that it’s important to retain these core elements,of course, it links the versions of the mark to the registeredtrademark. Most companies also continue to use their regis-tered mark, even if it’s in less public spaces. Anyone usingGmail or with a personalized GOOGLE homepage—whichhappens automatically for Internet users with any form ofGoogle account cached on that computer—will see theunadulterated GOOGLE mark more often than the doodles.

Google hasn’t registered any of its doodles. Given theirshort life, registration is likely to be neither practical nor eco-nomical. However, fluid marks can become more permanentfixtures in a company’s branding, in which case it is worthregistering them. The different versions of LOUIS

VUITTON’s monogram, for example, have gone on to beused on a range of products and therefore protected. One ofthe few cases involving fluid marks saw Vuitton sue Dooney& Burke, an American handbag company, for a design thatresembled a rainbow-colored version of the monogram.

Other fluid marks have been used so consistently thatthey might justify registration in some form. Saks FifthAvenue, for example, has been using a scrambled version ofits logo on its shopping bags for years. Design companyPentagram streamlined the typography of Saks’ classic scriptlogo, cut it up into 64 tiles, and reshuffled them to transformwhat was essentially a signature into a new graphic image.

One part of a bigger trendThe recommendations that Pearson and her fellow speak-ers will have this afternoon are similar in many ways tothose usually given for working with social media.Trademark lawyers that work frequently with social mediausually tell brand owners not to be too precious abouttheir mark, to encourage customers to engage with it andto be prepared for some derogatory use.

“The level of flexibility you see with fluid marks is partof the broader trend towards interactivity and involvementwith the customer—you see that across social media plat-forms today,” says Martha Kimes of GoDaddy.com, whowill also be speaking on today’s panel.

She gives the example of Human Rights Campaign,which encouraged its supporters to use its red equals sign ina multitude of different ways during recent cases at the

Supreme Court. As well as a huge response around socialmedia, companies such as Budweiser created versions—intheir case using two Bud Light cans lying on their side. Andin a nice link back to other fluid marks, Absolut vodka cre-ated a version with the caption “Absolut support”.

Has GoDaddy considered being more creative with itsmark? “We’ve had conversations about it, but I don’t thinkour brand is recognisable enough for it to work,” says Kimes.“We’re building it up though, so maybe in a few years.”

Is it anything more than a trend?One of the other speakers on today’s panel, Flip Petillonfrom Crowell & Moring in Brussels, is a little bit more scep-tical about fluid marks. “This kind of use of trademarks hasbeen going on for quite a long time. In Europe the mostobvious example is Channel 4’s idents, which started backin 2004,” he says. “In Europe there is no specific case law,but it’s not really needed—the issues are the same as for anytrademark, it’s just that the use is slightly different.”

There are a few differences in the law between the USand EU, however, which affect the protection of thesemarks. The biggest risk in using a fluid mark is probablythat the original, registered mark could be canceled fornon-use—unless it is still used regularly, as with Google. Inthe EU, a trademark owner has five years after registrationto begin using the mark; in the US, use has to be shownupon registration, so a mark that is not used in its originalform could be revoked much more quickly.

Whether fluid marks represent a new area of trademarkpractice, or merely one particularly dynamic form ofbranding, INTA attendees are likely to come across themmore and more in years to come.

CM23 Fluid Marks: Consistency Is Key—orIs It? takes place today from 11:45 am to1:00 pm in Ballroom D3-4

Preview Fluid marks

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 1 1

C orporate social responsibility is no longer a nicheconcern. Instead, it’s gone mainstream. In fact, ifyour employer or your client is in the S&P 500 and

isn’t publishing a sustainability report then it is now in theminority. But what does that mean for trademarks andbrands and the attorneys that protect them? Today’s ses-sion will provide plenty of information about how CSR ischanging the way that companies interact with suppliers,partners, employees, consumers and the wider communityand what it means for IP lawyers.

Session moderator Iris Günther of Lapointe RosensteinMarchand Melancon LLP, who describes herself as “pas-sionate” about the issue of CSR, says that companiesshould adopt a robust policy on corporate social responsi-bility for two reasons: not only is it the right thing to do,it is also good for a business’s bottom line. Most obvious-ly, companies can save money by controlling their CO2emissions and cutting water use. But good CSR can alsohelp make their brands stand out in crowded markets andhelp keep customers loyal.

Consumer interest in CSR is not confined to consumersin rich countries, says Günther. Research carried out lastyear suggests that shoppers in important emergingeconomies are even more likely than their fellow shoppers

in Europe and the United States to question the companybehind a brand (see chart above).

“As well as asking ‘is the product cool?’ and ‘is it func-tional?’ they ask, ‘do I like the company behind it?’,” saysGünther. “If people in emerging markets are making thesechoices then engaging in corporate social responsibilityreally does makes good business sense.”

Attendees of the session will hear from IP lawyers fromthree companies that champion CSR: Ana Luiza MachadoAlves of Brazilian company Natura Cosmeticos, a pioneerof refillable and carbon-neutral beauty products; VictoriaWisener of Virgin, which encourages each of its businesses

to produce a “product story” document that outlines thecorporate responsibility and sustainable developmentissues it faces; and Katrina Burchell of PPR, owner of arange of luxury and sportswear businesses, which plans toroll out environmental profit and loss accounts across itsbrands by 2016.

They will be revealing how their employer’s commit-ment to CSR impacts their day-to-day legal work as wellas the strategic management of their company’s brands. Ifa business markets itself as a caring, sharing type of com-munity player, for example, its trademark lawyers need tobe wary of coming down hard on people infringing the

CSR and youIs your company publishing a sustainability report? If not why not? Emma Barraclough examines the impact ofCSR on brand owners.

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INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com12

0 10 20 30 40 50 60 70

As a society, I believe we need to consume a lot less to improve the environment for future generations

I believe that I have responsibility to purchase products that are good for the environment and society

I often encourage others to buy from companies that are socially and environmentally responsible

Made, repaired or reused products (e.g., clothing, etc.) rather than buy them new

In tough economic times, I am willing to pay more for products with social and environmental benefits

Avoided a product because of its environmental or social damage

Purchased a product because of its environmental or social benefits

Shared or borrowed products (e.g., gear, equipment, cars) to reduce the need to buy new products

Source: Re:Thinking Consumption (a report on

consumers and the future of sustainability carried

out among 6,224 people across six markets in

late 2012 available at http://theregeneration

roadmap.com/research/consumer-study/)

brand if there is a danger that they could open themselvesup to accusations of commercial bullying.

“Sometimes there is a fine line between old-school pro-tection and enforcement and questioning whether theinfringer is doing any damage,” says Günther.

In-house lawyers at companies with strong CSR poli-cies need to ensure that they streamline internal relation-ships so that they are in close communication with theircolleagues in marketing. Well-intentioned and enthusias-tic co-workers who make unsubstantiated claims abouta product’s qualities can quickly damage a brand’s repu-tation in a world where social networking puts the con-

sumer in a position of unprecedented power. “Before the Internet, when people wanted to express

their views about a company’s policies they would send aletter that might get shredded. Now they can create aFacebook page and give the company a really hard time,”says Günther. “There’s nowhere to hide”.

The panel will also explain how in-house counsel cantake a more creative approach to patrolling the use of theirtrademarks on social media (including sites where peoplecriticize brands) and develop a response in line with thecompany CSR policy.

Ultimately, few companies can remain immune to the

commercial pressure on them to be more accountable totheir communities, says Günther. While corporate socialresponsibility might have initially attracted young andaffluent customers, a growing number of people in a grow-ing number of markets are taking more interest in theprovenance of the products they buy. “Principle doesn’tdepend on the age of the consumer,” says Günther.

CM52 Green, Clean and Powerful: TheImpact of Corporate Social Responsibility(CSR) on Trademarks and Brands takes

place today 3:30 pm to 4:45 pm in Ballroom D3-4

Preview Corporate social responsibility

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 13

A growing number of companieswant to tout their CSR creden-tials. But it is vital that theirclaims are justified. If they arenot, then social networkers andgovernment regulators are wait-ing to hold them to account. TheUK’s advertising watchdog, theAdvertising Standards Authority,has made a series of rulingsover the past three years ban-ning ads that make inflatedclaims about the environmentaland social impact of products.Here are just a selection.

October 2010: WaitroseIn 2010 the ASA ruled againstsupermarket chain Waitroseover ads it ran for pork prod-

ucts that showed pigs wander-ing in fields and celebrity chefsextoling the virtues of the com-pany’s outdoor-bred pigs.“Outdoor bred” is an industry-wide term for pigs that are bornin fields and then moved insideafter weaning. Waitrose said itwas careful not to use the term“outdoor reared” but the ASAruled that the ads were mislead-ing because viewers were likelyto think that the pigs spenttheir lives outside.

March 2010: RenaultA TV ad for Renault used avoice-over that said: “For us,global warming goes beyond theemissions coming out of the

exhaust. It’s an issue we addressbefore, during and after manu-facture. From next year, Renaultwill launch a range of zero emis-sion vehicles to drive the carforward again.” The ASA saidthat because driving the vehiclewould result in CO2 emissions ifcharged from conventionalenergy sources, and becauseRenault could not prove thatthere would be no emissionsfrom the car from production todisposal, the claim the vehiclehad “zero emission(s)” was mis-leading.

September 2011: TescoStores One year after the Waitrose rul-

ing, rival supermarket chainTesco got into trouble for asimilarly porky tale. A TVadvert for its Butcher’s Choicesausages contained a scenethat showed pigs roaming in afield. Three pigs were thenshown in a hay barn and walk-ing with a farmer down a lane.The voice-over said: “Why nottry specially selected, Britishfarmed, expertly produced, deli-ciously fresh butcher’s choicebangers on your barbie?Quality and freshness at Tesco...” The ASA upheld complaintsthat viewers were likely tointerpret the advert to meanthat the pigs used to make thesausages were reared in an

unrestricted environment andhad access to outdoor pasture,despite the sausages alsoincluding meat from animalsthat lived indoors.

March 2012: European FurBreeders AssociationIn 2011, the European FurBreeders Association pub-lished an advert in a magazinestating “Why it’s eco friendlyto wear fur”. The ASA ruledthat readers would interpretthe statement as an absoluteclaim about the product’s“cradle to grave” environmen-tal impact, which it said thatthe Association had not pro-vided.

Beware greenwashing dangers

I t used to be the case that the role of a trademark wasto reassure consumers about who was providing aproduct or delivering a service. Now, however, trade-

marks are expected to work much harder. In a series ofcases decided by the Court of Justice of the EU over thepast 10 years, judges have ruled that trademarks also havean investment function and an advertising function—andmade it clear that their list is not exhaustive.

In a session today, a group of academics and practition-ers will review some of the leading cases in this area andexplain what it means for the scope of trademark protec-tion on offer in Europe.

Tobias Cohen Jehoram, of De Brauw BlackstoneWestbroek N.V., who is chairing today’s session, says thatthe audience can expect a high-level discussion from thepanelists, but with plenty of practical advice. Among theissues they will be discussing are the impact of online com-merce on trademark functions and the likelihood of thecourts extending trademark functions to the goodwill in abrand. They will also be revisiting some of the key casesdealing with trademark functions.

In O2, for example, a case that centered on compara-tive advertising, Cohen Jehoram says that the Court ofJustice created “wriggle room” for itself to define the func-tions of a trademark. The Court ruled that trademarkowers can prevent comparative advertising only if it cre-ates a likelihood of confusion among consumers.

In L’Oréal v. Bellure, the Court was asked to clarifywhether the defendants (who produced so-called smell-alike perfumes) could be guilty of infringement even if theyhad not impaired the essential function of a trademark(that of guaranteeing trade origin).

The Court replied by ruling that a trademark owner canstop a rival from using comparative advertising even whenthe use does not threaten the essential function of the markbut affects, or might affect, other functions of a trademark,including “guaranteeing the quality of the goods or servic-es in question and those [functions] of communication,investment or advertising.”

The decision was met with some disquiet when itreturned to the English courts. Lord Justice Jacob (as hethen was) said in his ruling that his own “strong predilec-tion” would have been to hold that “trademark law didnot prevent traders from making honest statements about

their products where those products are themselves law-ful”. He went on to suggest that those functions of a trade-mark identified by the Court of Justice that go beyond amark’s essential identifying function (i.e. communication,investment and advertising) were “vague and ill-defined”when separated from the essential function.

More recently, in the keyword advertising case Interflorav. Marks and Spencer, the Court provided guidance aboutthe use of trademarks on the Internet. In particular, it saidthat the use of a mark as a keyword does not adverselyaffect the mark’s advertising function. The function of indi-cating origin, however, is adversely affected if Internet userscannot easily establish whether an advert originates fromthe trademark owner or one of its rivals.

Cohen Jehoram says that the development of the lawhas been something of a “puzzle” for lawyers. After all, thelaw has traditionally focused on protecting consumersfrom confusion. The recent expansion of the concept oftrademark functions and the uncertainty surrounding theirexact scope means that it is essential that lawyers providecase-specific advice to their clients. “It’s hard to give gen-eral rules and that’s one of the problems in practice in thisarea in particular,” he says.

CM21 The Functions of a Trademark andTheir Impact on Protection takes place from11:45 am to 1:00 pm today in Ballroom C

Preview Trademark functions

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com14

Making trademarks work harder

Classified

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 15

Through May 8, save 10% when you register for the 2014 AnnualMeeting in Hong Kong. If you choose to take advantage of this offerand register early for the meeting, you will also obtain early access tothe hotel booking system in January 2014. Visit Registration today!

Save 10% When You Register Now for Hong Kong!

Join us for INTA’s second annual blood drive, hosted in partnership with the American RedCross. The event will run from 10:30 am - 4:00 pm on Monday in the back of the Exhibition Hall.

To participate please visit RedCrossBlood.org and search for sponsor code: INTA.

Not sure you’re eligible to donate? Read about eligibility requirements at redcrossblood.org.

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Free Managing IP anti-counterfeiting map

Pick up your copy at booth 818, 820, 822 in the Exhibition Hall while stocks last

How long have you been with Whole FoodsMarket and what is your background?I have been at Whole Foods Market for five years now.Before that, I worked for Expedia as an in-house counsel.Before that I was in private practice in Houston.

What does your role entail on a daily basis?In addition to being the in-house intellectual propertycounsel, I am in charge of the transactional relationshipswith Whole Foods Market outside of our exclusivebrands and product vendor relationships. Our legal teamis about 20.

For transactional matters, we have one attorney sup-porting our exclusive brand and private label team, oneattorney supporting our vendor relationship and procure-ment team and I support the remaining transactional mat-ters. In addition, because of my background, I handle allthe IP, including litigation.

Do you have any sound or other nontraditionaltrademarks?We do not. We don’t have any sound marks or any colormarks, although I would probably secure a lifetime job if I

could get the color green. We have a lot of image and wordmarks.

What is the one piece of advice that you havefor outside counsel and the most importantquality you look for in outside counsel?They need to understand what I am asking for. I knowit sounds simple, but a lot of outside counsel do notcomprehend what’s important for me. They compre-hend what’s important from a trademark law perspec-tive.

I need responsiveness and specific content that I am ask-ing for. I want you to tell me what I am asking for and notgive me too much information.

I would tell them that relationships are the most impor-tant thing before billing. If you can build a solid relation-ship then the billing will sort itself out.

What are you looking forward to most at theINTA Annual Meeting this year? Are there spe-cific sessions you’re interested in? How longhave you been attending the meeting?I am most looking forward to meeting other in-housecounsel. I meet outside counsel throughout the year but it’shard to sit down with other in-house counsel at large cor-porations and discuss the challenges we face.

I’m hoping to attend the Monday session on SocialMedia: Sidestepping Problems & Pitfalls and theTuesday session called Retweet, Repost and Repin: HowDo Brands Get Their Message Out and whose Content IsIt Anyway. We have a large social media component. Wehave over 6 million Twitter followers, which places ussecond behind Google for the largest number of Twitterfollowers, among the Fortune 1000 corporations. Weuse social media to communicate our standards andmarketing and to create a community and a connectionwith our shoppers.

Profile Soumit Roy

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com16

The whole is greater than the sum of its partsSoumit Roy, global transactional counsel for Austin, Texas-based Whole Foods Market, talks to Alli Pyrah about thevalue of relationships, building an umbrella brand and the difference between a luxury brand and being “best inclass.”

We use social media tocommunicate our standardsand marketing and to create acommunity and a connectionwith our shoppers.

How has the company’s brand strategy changedthroughout the years?Our brand strategy has grown with the size of the compa-ny. Originally, the brand strategy was very regional andnow we are going larger and more global. Our stores stillreflect the community that they are in and we grow withthe community.

What changes to the trademark system wouldyou most welcome?A little bit more certainty with respect to trademark litiga-tion procedure would be nice.

In which countries do you protect your marks?We protect out important marks worldwide. We have apresence in Canada, the UK and the U.S. so we prosecutethem there. We occasionally use the Madrid Protocol, on acase-by-case basis.

What is the single biggest challenge you face inprotecting your brand?Asia is very challenging right now. We are focused on tryingto protect our brand there, especially in China. In China, thereare always some challenges with local government and due tothe size of the country you have a lot of bad actors in China.

As a brand, Whole Foods is associated with ethi-cal and egalitarian values. How do these valuesaffect the way the company manages andenforces its trademark portfolio?We are very sensitive to our customers. We are in a fortu-nate position in that most of the individual customers whoare infringing are doing it out of a position of admirationand respect. So we tend to get a lot further with a politerequest and an explanation of why we are asking them tochange their behavior.

Brands often operate as a kind of mental short-cut for consumers. Whole Foods Market has afocus on small batch produce and individual pro-ducers. How does the company unite thesediverse sources under one brand without diffus-ing the overall message of the brand?Those small relationships build the brand. When people gointo Whole Foods, they want to see the relationship to thesmall farmers and local growers. We have our private labeland exclusive brands but we feel that the WHOLE FOODSMARKET brand is an umbrella when it comes to all theserelationships. We are very happy to see our partners grow.

Whole Foods Market is regarded by many as aluxury brand, but some of the values it encom-passes, such as sustainability and egalitarian-ism, seem almost at odds with the exclusivityand flashiness consumers typically expect fromtraditional luxury brands. Is the definition of lux-ury changing?We are not really a luxury brand. We are a best in classbrand. I think a lot of people mistake the two. There are alot of luxury products that are not best in class and a lotof best in class products that are not luxury products.

We strive to provide the best possible products and gro-ceries, both organic and conventional; we can find in themarketplace and because of that I think our consumers feelvery confident that they are getting good value.

Is the move towards organic, locally sourcedfood part the result of a generational shift inattitudes?I think it’s more that we are putting more value on what wewant to put into our bodies. In the last 10 to 15 years, whatwe put into our bodies has become less of a convenienceissue and more about values and quality. When they comeinto Whole Foods, people know that they are getting that.

What is there to do and see in Dallas?The Dallas Cowboys stadium is a huge, beautiful architec-tural masterpiece. For food, try The Original SonnyBryan’s Smokehouse BBQ off Inwood Road. It’s small andit’s a little run down but it has some of the best barbequearound. The North Park Mall is wonderful for shopping.For nightlife, try Uptown and for sightseeing, the NasherSculpture Center is beautiful. You could also go for a runoff White Rock Lake, or the Katy Trail. If you have thetime, go out to Fort Worth to watch the Cattle Drive andenjoy the Stockyards.

Profile Soumit Roy

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 17

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

We are not really a luxurybrand. We are a best in classbrand. I think a lot of peoplemistake the two.

H ow do you devise your offers in negotiations? Doyou base them on a careful analysis of the caseand what you think a particular deal is worth? Do

you take into account “off the table” considerations suchas the other party’s cash flow problems? Or do you, as onehigh-level insurance representative does, use a randomnumber generator in response to the perceived unreason-ableness of the other side’s demands?

At the two-and-a-half-day advanced mediation train-

ing, trademark practitioners from all around the worldgathered to discuss how to break down obstacles to com-promise by understanding the motivations and thoughtprocesses of the parties.

Though negotiations and mediation are oftenthought of as primarily about money, the session train-ers warned that there are other goals involved and eventhe financial demands are framed by more subtle pres-sures and values.

What do they really want?One exercise featured a video reenactment of a mediationinvolving a sexual harassment claim. The mediator facedthe challenge of not only navigating a highly emotionalcase, but reading between the lines of what the parties aresaying to understand what their goals are.

“I have a job offer that more than matches my salary,”declared the accuser. Trainer Samuel Jackson (left) askedthe 28 attendees what this statement revealed about herposition and goals. Some suggested that she may be blus-tering, while others thought that it revealed that moneywas not her main motivation, notwithstanding her initialclaim of $2 million in damages.

This bore out later on, when the accuser explained thatall she wanted to do was to move on with her career, getan apology from the company, and demand that theaccused be fired. She explained her demands in moral

News

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com18

Our goal: To completely satisfy you, our clients, through our prompt and

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What kind of negotiator are you?

“As mediators we have torecognize the level at whichthe person has decided theother side is the devil.”

terms, stating she did not want the company to continue toportray itself as friendly to women.

Dealing with evilThe moral component of a party’s thought process canexplain why some negotiations fail. Trainer RobertDobbins of Judicate West and Appropriate DisputeResolution talked about dealing with parties who feel thatthe other side is “evil” and that to bargain with themwould be morally wrong.

Not only can the sense of moral righteousness itself leadto an impasse, it can also create other obstacles, such as abelief that the other party is pathologically dishonest andunlikely to honor any agreement anyway. In a trademarksituation, this evil party could be a former business partnerwho may have stolen your intellectual property, or aninfringer.

Overcoming this subjective notion of evil is an impor-tant task for a mediator. “As mediators we have to recog-nize the level at which the person has decided the otherside is the devil, and maybe need to have a conversationshowing that other people in a similar situation may havea different perspective,” explained Dobbins.

Beyond emotions, the trainers also talked about howunderstanding the full range of the parties’ objectivescan lead to successful agreements. Addressing theseneeds can sometimes make negotiations more of a coop-erative affair.

Interest-based bargaining with non-monetary compo-nents such as non-disclosure agreements and the structureof payments can be revealing about what is important tothe parties, explained Denise Madigan of PMA DisputeResolution. Distributive negotiations focusing solely onthe amount of money are generally more adversarial.

“If you are able to negotiate across dimensions, it tendsto lessen the competitive tension,” she said.

Skills beyond mediationWhile many of the attendees hailed from North Americawhere mediation is more common, other countries suchas Anguilla, China, Germany and Spain were also wellrepresented.

“There’s not very much formal mediation in [Brazil],but there are a lot of informal situations where you haveto negotiate with the other side, and the topics discussedhere are very helpful,” explained Carlos Eduardo Neves deCarvalho of Crivelli & Carvalho in São Paulo.

The wide applicability of these skills is reflected inthe discussions and what constitutes the “dance” ofnegotiations. Some of the most active discussionsinvolve non-legal scenarios. The hypothetical negotia-tion for a used car drew a lot of comments as attendeesshared their favorite techniques for dealing with sales-men. And in a separate group session, Jia He Yang ofYang & Associates in Shanghai noted that some of thesituations discussed remind her of dealings with herteenage son.

Regardless of the legal context, ultimately the role ofthe mediator is to get the parties to overcome suchobstacles and agree to the rules of the negotiationdance, even when emotional or cultural differences getin the way.

“The problem is that one party thinks we’re dancing thewaltz, and the other party is listening to Jimi Hendrix,”said Dobbins.

News

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 19

“If you are able to negotiateacross dimensions, it tends tolessen the competitivetension.”

Vox pop

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 2 1

Praneet Singh Davar, L. S. Davar & Co., Kolkata,India “The transition to the Madrid Protocol,which is coming up on July 7, is the biggest chal-lenge. It is a huge thing for us to cope with—notjust attorneys but also the Registry.”

Monserrat Alfaro, Unimark (NassarAbogados), San Jose, Costa Rica “The fightagainst counterfeiting could be improved. Thelaws are fine but the enforcement in practice isnot so good. The authorities need moreresources and more education.”

Noëlle Jeanneret, Barrios Muñoz Jeanneret yCia, Santiago, Chile “Trying to introduce newconcepts to the Trademark Office is difficult asthey are very conservative. When you suggestnew criteria they are not receptive and can bereally stubborn.”

Kerem Uslu, Uslu Law Firm, Ankara, Turkey“We are trying to follow the EU and the UnitedStates and get new trademark legislation.We’re here at the INTA Annual Meeting to findout what’s going on around the world.”

Stephan Wegner, Baudelio & Cia., S.C., MexicoCity, Mexico “The most challenging issue is theMadrid Protocol. It affects everyone and it willbring important changes. Some people arescared but I don’t think it will be that bad.Change will be slow and so far lots of clientsare still doing national filings.”

Vanessa Bockhorni, Bockhorni & Kollegen,Munich, Germany “German and EU law is slow-ly converging. For example, following the Levi’sv. Colloseum Holdings case, there is now a sim-ilar interpretation on relevant use and on May2 we just had a common declaration on classheadings after the IP TRANSLATOR case. Butthere is still some uncertainty about how it isinterpreted.”

Segun Okuwobi, Rehoboth Attorneys, Lagos,Nigeria “The first-to-file system is an issuebecause sometimes our clients want to file amark and find that someone has beaten themto it in Nigeria. It is difficult to prove bad faithespecially where there is no connectionbetween the applicant and the owner.”

Clotilde Iaia, Taylor Wessing, Dubai, UAE“Most countries in the Middle East are notpart of the Madrid System but many interna-tional brand owners do not realize that. Theywant to enforce their rights, and then realizethe mark is not registered. It’s a question ofknowledge.”

Nathan Drake, Drake Marks, Vancouver,Canada “Canada doesn’t use the internationalclassification system and also broad terms arenot acceptable so you have to be very specific.This presents a challenge for internationalclients entering the Canadian market and it canget complex.”

Emanuele Montelione, Lexico, Perugia, Italy“In Italy the majority of business is done bysmall or micro companies. The cost of filingtrademarks is reasonable but they cannotafford enforcement. The litigation systemfavors big companies.”

Amy Chan, UTC Intellectual PropertyGroup, Hong Kong, SAR “The time thatexamination takes in China has been a bittoo long, which can cause problems fortrademark applicants. Recently the Officehas gotten better and examination timeshave come down from more than two yearsto 12 to 15 months.”

Michael Barth, Stolmár & Partner, Munich,Germany “I do a lot of work in patents andthe EU unitary patent is the next big chal-lenge for us. Hopefully it will come into effectnext year. I think it will be a good thing andwill overall be cheaper, but there will be somedrawbacks. Enforcement will be easier but itwill also be easier to kill patents with onestroke.”

Gregory A. Nylen, Greenberg Traurig, LosAngeles, CA, U.S.A. “It’s really chasing downcounterfeits in the Internet age. The rise ofdrop shipping makes it very difficult to stopcounterfeits being shipped. It’s like a game ofWhac-A-Mole. You have to be diligent, have asystem in place and follow the plan.”

What is the biggest challenge in your jurisdiction?

Affiliate parties

INTA Da i ly News Monday, May 6 2013 www.manag ing ip .com22

ASIPIAvahlegal & Lerroux & Fernandez-Pacheco Baker & McKenzie

Brandstock Davies Collison Cave Dennemeyer Ferraiuoli

Gowlings Marks & Clerk Partridge IP Law Racheli & BMLEX

Pictures fromsome of theaffiliate receptionsheld on Saturdayand Sunday.

Affiliate parties

www.manag ing ip .com INTA Da i ly News Monday, May 6 2013 23

Julia Huston @JuliaHuston

Enjoying #INTA13 so far; nice to connect withso many brand owners & attorneys interestedin #parallelimports

Anthua Ramírez @Anthu_RV

INTA Day 2, just walked through the exhibithall, met some colleagues and drank a coffee.Now, moving to my next meeting! #INTA13

TM.BIZ @tmdotbiz

#inta13 hearing about dot brands seekingchanges to icann contract. Brand applicantsshould settle in for a long slog

Scott MacKendrick @RSMacKendrick

Just completed great Bulletin Committeemeeting. Fun exercise led by Walter, Barbaraand James. #INTA13

Tracy Corneau�@Tracytms#INTA13 - hearing about new ipm tool - mobileapp for customs officials 2 make it easier 2 goout in the field + contact tm owners

Barbara Cookson @filemot

And now Madrid real time status comes toyour mobile device - work on the beach next#inta13

Paul Reidl @TMguy#inta13: Breakfast catching up with friendsfrom Mexico, meeting with counsel fromJapan, then chatting with Mr. TTABlog at theAdolphus.

#INTA13Twitter

Bardehle Pagenberg Barnes & Thornburg

Field Fisher Waterhouse Frommer Lawrence & Haug

Venable Zacco

Today’s Schedule | Monday, May 6, 2013All events take place at the Dallas Convention Center (DCC) or Omni Dallas Hotel (OMNI) unless otherwise indicated. Consult the Final Program for times and locations of invitation-only events.

7:30 am – 5:00 pm REGISTRATION DCC Lobby F7:30 am – 5:00 pm HOSPITALITY DCC Hall F8:30 am – 5:00 pm Tour Booth DCC Lobby F8:45 am – 10:15 am OPENING CEREMONIES OMNI Dallas Ballroom10:00 am – 4:00 pm EXHIBITION HALL DCC Hall F10:15 am – 11:30 am Career Development Day What They Didn’t Teach You in Law School About Trademark Law OMNI Arts District 510:15 am – 12:15 pm COMMITTEE MEETINGS

Anticounterfeiting–Latin America & Caribbean Subcommittee DCC A115-117Branding and Social Media Conference Project Team DCC D164Enforcement—Issues of Proof Subcommittee DCC A130-131India Project Team DCC C151Legislation & Regulation—East Asia & Pacific Subcommittee DCC D162Legislation & Regulation—Europe & Central Asia Subcommittee DCC C141Legislation & Regulation—Latin America & Caribbean Subcommittee DCC C154Legislation & Regulation—Middle East, Africa & South Asia Subcommittee DCC C152Trademark Office Practices—USPTO Subcommittee DCC Ballroom A2

10:15 am – 11:30 am CONCURRENT SESSIONSCM01 Global Searching: How to Find a Needle in a Haystack DCC Ballroom CCM02 Social Media: Sidestepping Problems & Pitfalls OMNI Dallas BallroomCM03 Trademark Boundaries: Conflict and Cooperation in Legal Doctrine DCC Ballroom D1-2RM01 Regional Update: New Opposition Case Management in Australia and a Comparison to New Zealand and Hong Kong DCC Ballroom D3-4

10:20 am – 11:35 am Intellectual Property Constituency (IPC) DCC Ballroom A110:30 am – 11:30 am SPEED NETWORKING DCC Hall F10:30 am – 4:00 pm Red Cross Blood Drive DCC Hall F11:45 am – 1:00 pm CONCURRENT SESSIONS

CM20 Do We Have Launch? Assessment of the New gTLD Program OMNI Dallas BallroomCM21 The Functions of a Trademark and Their Impact on Protection DCC Ballroom CCM22 Tricks of the Trade for Trademark Administrators DCC Ballroom D1-2CM23 Fluid Marks: Consistency Is Key—or Is It? DCC Ballroom D3-4

11:45 am – 1:15 pm Career Development Day Getting Involved with INTA: Working Lunch for Law Students OMNI Arts District 612:00 pm – 1:00 pm SPEED NETWORKING DCC Hall F12:00 pm – 1:30 pm Academic Day Professor Luncheon OMNI Arts District 71:15 pm – 3:15 pm COMMITTEE MEETINGS

Anticounterfeiting—North America Subcommittee DCC Ballroom A2Enforcement—Opposition & Cancellation Standards & Procedures Subcommittee DCC C156In-House Practitioners Committee DCC C148International Amicus Committee DCC D167Nontraditional Marks—Middle East, Africa & South Asia Subcommittee DCC C154Programs—Roundtables Subcommittee DCC C145The Trademark Reporter® Committee DCC C146Trademark Office Practices—China Trademark Office Subcommittee DCC C152Trademark Office Practices—European National TMO Relations Subcommittee DCC C144Trademark Office Practices—Latin America TMO Relations Subcommittee DCC D166Young Practitioners Committee DCC D173

1:15 pm – 3:15 pm LUNCHEON TABLE TOPICS DCC Hall F1:30 pm – 2:30 pm Career Development Day Speed Networking Part 1 OMNI Arts District 61:30 pm – 2:30 pm SPEED NETWORKING DCC Hall F1:45 pm – 3:45 pm COMMITTEE MEETINGS

International Amicus—Asia Pacific Subcommittee DCC 167International Amicus—Canada Subcommittee DCC 167International Amicus—Europe Subcommittee DCC 167International Amicus—Latin America Subcommittee DCC 167International Amicus—U.S. Subcommittee DCC 167

2:00 pm – 3:15 pm Career Development Day Trademark Scholarship Symposium Session I OMNI Greenville Ave, Deep Ellum A, Deep Ellum B2:00 pm – 3:30 pm The Africa Intellectual Property Group (AIPG) Meeting DCC Ballroom A12:30 pm – 3:30 pm Career Development Day Speed Networking Part 2 OMNI Katy Trail3:00 pm – 4:00 pm SPEED NETWORKING DCC Hall F3:00 pm – 4:30 pm Press Reception DCC D2273:30 pm – 4:45 pm CONCURRENT SESSIONS

CM50 “I Know it When I See It”—Do Ambush Marketing Laws Go Too Far? DCC Ballroom D1-2CM51 The Ethics of Trademark Bullying OMNI Dallas BallroomCM52 Green, Clean and Powerful: The Impact of Corporate Social Responsibility on Trademark and Brands DCC Ballroom D3-4IM50 Industry Breakout: Going Big: How Luxury Brands Grow Big Without Diluting Their Cachet DCC Ballroom C

3:30 pm – 4:45 pm Career Development Day Trademark Scholarship Symposium Session II OMNI Greenville Ave, Deep Ellum A, Deep Ellum B3:30 pm – 5:00 pm Career Development Day Careers in Trademark Law: A Panel Discussion for Law Students OMNI Arts District 43:45 pm – 5:45 pm COMMITTEE MEETINGS

Anticounterfeiting—Middle East, Africa & South Asia Subcommittee DCC Ballroom A2Emerging Issues Committee DCC Ballroom A1Government Officials Education & Training DCC C148Law Firm Committee DCC D173Nontraditional Marks—Canada Subcommittee DCC D175Nontraditional Marks—East Asia & Pacific Subcommittee DCC D162Nontraditional Marks—Europe & Central Asia Subcommittee DCC D164Nontraditional Marks—Latin America & Caribbean Subcommittee DCC C152Nontraditional Marks—U.S. Subcommittee DCC C155The Trademark Reporter ® Minders & Solicitors Task Force DCC C146Trademark Administrators Committee DCC C142

5:15 pm – 7:15 pm Career Development Day Academic and Young Practitioners Happy Hour OMNI Trinity 55:30 pm - 6:30 pm India Reception (by invitation only) OMNI Katy Trail6:00 pm - 7:00 pm Nonprofit Reception (by invitation only) OMNI Fair Park 26:00 pm - 7:30 pm INTAPAC Reception (by invitation only) OMNI West End6:00 pm - 7:30 pm China Reception (by invitation only) OMNI Fair Park 1