Feature By Trevor Little

World Trademark Review’s 50 market shapers

To mark World Trademark Review’s 50th edition, we on the basis of their daily work, but rather for their contributions identify 50 of the people, companies, cases and big- to particular debates (after all, if you are seeking potential legal picture issues that have defined the market on which partners, we offer the World Trademark Review 1000 – The World’s Leading Trademark Professionals for just that purpose). The list is we have been reporting for the last eight years presented alphabetically and is therefore ranked in no particular order; but it does provide a snapshot of the industry in which we all operate. Before we reveal the 50, it is important to acknowledge the single biggest influence on our evolution to date: you. Since World Trademark Review first hit subscribers’ desks in 2006, Without the loyalty of our subscribers, the World Trademark many aspects of the trademark world have changed beyond Review platform would not be where it is today, and you have measure. However, peruse that first issue and what instantly stands been integral to every step that we have taken along the way. out is how much remains familiar. The cover story focused on And I say ‘platform’ rather than ‘magazine’ quite deliberately. the fight between Anheuser-Busch and Bude jovický Budvar over Although the inaugural issue of World Trademark Review was the Budweiser brand – a battle that would rage on for a further published in April 2006, we can trace the origins of the title back eight years. Evie Kyriakides, chief privacy officer and global digital, a further four years. Bucking the established publishing trend, privacy and security, associate general counsel at Mars, was the whereby print titles transitioned into electronic format, World first trademark counsel to author an article in the magazine, Trademark Review began life as an online legal resource, World highlighting the difficulties posed by copycat brands; it is a problem Trademark Law Report, in 2002. Once established, it became that still exercises professionals today. Elsewhere, we looked at the clear that there was an audience for a printed magazine which challenges facing brand owners in China, the impact of changes to considered the application of trademark law in the corporate the European enforcement framework and the hazards caused by environment and presented in-depth analysis to complement inaccurate WHOIS records – all topics that would sit quite naturally the online case updates. in the current issue. The response was overwhelmingly positive and over the But there are also some notable absentees when viewed from past eight years we have considerably expanded our offering today’s perspective. The generic top-level domain (gTLD) name as a result. In addition to the magazine and WTR Daily email, expansion was still far off the agenda (the most recent strings we have built up a portfolio of supplements, including the approved at the time included ’.biz’ and ‘.info’ – ‘.brands’ was not World Trademark Review Yearbook, Anti-counterfeiting– A yet on the horizon). Social media was nowhere near the full-time Global Guide, Online Brand Enforcement, Designs: A Global preoccupation that it has now become, with Facebook founded Guide and Pharmaceutical Trademarks – A Global Guide. We just two years previously and Twitter still three months from have also established the WTR Industry Awards as a key event official launch. And the tablet computer design wars, the spectre of in the trademark calendar and the aforementioned research mainstream 3D printing and political disputes over plain packaging guide, the World Trademark Review 1000, as the go-to resource for tobacco products had all yet to appear on the trademark for those seeking legal trademark expertise. We therefore see counsel’s radar. ‘World Trademark Review’ as much more than a magazine – it is We thus thought that it would be a useful exercise to look back an information content specialist providing a diverse range of and identify some of the individuals, disputes and big-picture market intelligence, strategic advice and tools to assist trademark issues that have shaped the trademark world since our launch. practitioners in their daily endeavours. Naturally, we have decided to identify 50 of them. The list is wholly But whatever the format, none of this would be possible without subjective and far from exhaustive, reflecting the people and the loyalty, feedback and guiding hand of our subscribers. You truly developments that have impacted on trademark practice and those are the driving force behind the magazine and we are so grateful for that have shaped World Trademark Review itself. We have tried to your support. So thank you for the past 50 issues, and here’s to the avoid listing IP associations, and the limited selection of private next 50. practice lawyers who we have highlighted have been included not In the meantime, our list commences overleaf. www.WorldTrademarkReview.com August/September 2014 World Trademark Review 13 Feature: The 50 market shapers

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12 Who’s who on the cover? 3 16 17 2 11 20 4 Alexander von Mühlendahl, 12 J Thomas McCarthy, 1 Bardehle Pagenberg Dost The McCarthy Institute Altenburg Geissler at the University of San 5 Victoria Espinel, former Francisco 23 US intellectual property 13 David Gooder, Jack Daniel’s 15 enforcement coordinator Properties 4 19 22 6 Jack Chang, chairman of 14 Toe Su Aung, INTA 6 7 China’s Quality Brands 15 The International Olympic 21 18 Protection Committee Committee 5 7 Francis Gurry, director general 16 Janet Kobrin, Warner Bros of the World Intellectual 17 eBay Property Organisation 18 Russell Pangborn, 8 Lego Marksmen 10 9 9 Lynne Beresford, former 19 Facebook commissioner for trademarks 20 Thomas La Perle, Apple 1 Raj Abhyanker, Legalforce at the USPTO 21 Patrick Leahy, US senator 8 Trademarkia 10 The Budweiser battles for Vermont 2 Anna Troberg, The Swedish 11 Alan Drewsen, former executive 22 Terri Chen, Google Pirate Party director of the International 23 António Campinos, 3 Etienne Sanz de Acedo, INTA Trademark Association president of OHIM

Raj Abhyanker, Legalforce Trademarkia at targeting this dollar spend in a bid to choke off the flow of money Raj Abhyanker made waves in the trademark sector when he to counterfeiters, brokering voluntary agreements and strategic launched online services site Trademarkia, a Google-optimised, partnerships with companies such as MasterCard, Visa Europe, Visa user-friendly filing portal that propelled him to the top of the list of International, PayPal, Discover/PULSE/Diners Club, American Express, the most prolific trademark filers at the US Patent and Trademark MoneyGram and Western Union designed to target counterfeiters Office (USPTO). Critics have raised concerns over what they regard as and merchant accounts. This is just one such initiative that Barchiesi the commoditisation of trademark applications, as well as aggressive – drawing on experience earned in roles at the Recording Industry marketing tactics. For his part, Abhyanker has hit back at what he Association of America, the New York City Police Department and the deems mischaracterisation and suggested that the criticisms stem US Virgin Islands Office of the Attorney General – has spearheaded as from fears about how his operation has shaken up the traditional he represents the coalition’s members, coordinates public awareness trademark filing model. Abhyanker has now set his sights on real- programmes, provides training to law enforcement officials and world expansion, revealing plans to create a network of commonly serves as a thought leader on anti-counterfeiting. branded law firms, with clients able to book and pay for services via the Trademarkia site. Whatever the future holds, Abhyanker has Benelux Office of Intellectual Property clearly polarised industry opinion and the impact of his activities The question of exactly what constitutes genuine use of a mark in has been felt across the legal sector. the European Union has been the focus of intense political and legal debate for several years. A key voice in this discussion has been the Toe Su Aung, 2013 president, INTA Benelux Office of Intellectual Property (BOIP), following its decision That Toe Su Aung, then general counsel, anti-illicit trade for BATMark in what became known as the ONEL case. BOIP stated that national (a subsidiary of British American Tobacco), was the International borders within the Community should play no role and account Trademark Association (INTA) president the year that the plain should be taken of all relevant circumstances, including the relevant packaging debate went global was accident rather than design. market of goods or services. The European Court of Justice (ECJ) However, it proved a positive, as INTA sought to highlight the related subsequently confirmed that “all facts and circumstances” should be concerns to its members. But this was just one area of focus during her considered, ruling out a de minimis rule and suggesting that the bar tenure, with Aung – the association’s first Asian president – also laying for showing genuine use within the Community will be somewhat the groundwork for this year’s annual meeting in Hong Kong (itself higher than that for showing the same in a specific member state. the first in Asia), representing INTA in discussions with government Last year, BOIP’s Diter Wuytens proclaimed to World Trademark and industry, and speaking out against creeping anti-IP sentiment. Review: “Wednesday December 19 2012 will go down in the IP history Aung has now moved on from BAT, teaming up with Chris Oldknow – books as the day on which the ECJ ruled that the territorial scope of formerly of Microsoft – to establish Elipe, a new venture focusing on IP use of a trademark within the Community should in general surpass policy and strategy. Her experience at INTA and BAT should stand her use in a single member state.” BOIP’s role in facilitating the decision in good stead as she moves to a full-time policy-facing role. should not be downplayed.

Robert C Barchiesi, International Anti-Counterfeiting Coalition David Bernstein, Debevoise & Plimpton “Every dollar spent on knockoffs feeds an underground economy that Trademark clashes that extend into the international political does not pay taxes and supports forced child labour, organised crime arena are few and far between, but David Bernstein has played an and funding of terrorist activities,” asserts Bob Barchiesi, president active hand in one of the highest-profile examples – the dispute of the International Anti-Counterfeiting Coalition – a Washington over the Havana Club brand of rum. This fiercely contentious case DC-based non-profit organisation devoted to combating product turns on Section 211 of the US Omnibus Appropriations Act of 1998. counterfeiting and piracy. And Barchiesi has proved singularly adept Section 211, known as the ‘Bacardi Bill’ for having allegedly been

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Issue 1 May/June 2006 www.WorldTrademarkReview.com World Also in this issue... Chinese solutions for worried brand owners How Europe is tackling enforcement Trademark Nortel’s approach to portfolio management The complete guide to trademarks in Canada Major developments in US law and practice Review drafted and championed by lobbyists on behalf of Bacardi, forbids the registration or enforcement of a trademark in the United States The battle of the beers Inside the world’s longest-running trademark dispute that is the same as or similar to one used in connection with a confiscated business or assets. As a result, the only Havana Club- branded rum available to buy in the United States at present is that produced by Bacardi, with the brand marketed by Cubaexport and Pernod Ricard (which Bernstein represented) barred from the market. While this remains the case, Bernstein ensured that the debate transcended trademark circles. This is just one of the many high-profile disputes he has been involved in – another being the internationally reported Christian Louboutin SA v Yves Saint Laurent Am Holding Inc ‘red soles’ case.

Lynne Beresford, former commissioner for trademarks, USPTO “I saw myself as a public servant, trying to do the best job I could to improve the trademark registration system for trademark owners and the trademark bar,” says Lynne Beresford of her 30-year tenure at the USPTO. On retiring, Beresford certainly left behind a more beneficial trademark system than that which existed when she first took up her post. During her time at the USPTO, she slashed pendency and improved quality through a customer-centric approach. Her efforts to shape the wider trademark environment have proved similarly influential: Beresford was instrumental in the implementation of the Madrid Protocol in the United States, helping to negotiate the regulations for the Protocol at the World Intellectual Property Organisation. She also led the US team that The cover story of World Trademark Review’s inaugural issue focused negotiated the Singapore Treaty in 2008 and was responsible for the on a dispute that would continue to run over the next eight years IP portions of the green paper and white paper which eventually led to the founding of the Internet Corporation for Assigned Names and Numbers (ICANN). In short, a job well done. António Campinos, president, OHIM “In the past three years, we have evolved from a pure registration In re Bose Corporation office to something else.” So said António Campinos, president of On August 31 2009, in a landmark ruling, the US Court of Appeals the Office for Harmonisation in the Internal Market (OHIM), at for the Federal Circuit clarified that “a trademark is obtained the 2013 MARQUES annual conference. During the early months fraudulently under the Lanham Act only if the applicant or of his presidency, Campinos kept a low media profile, with early registrant knowingly makes a false material misrepresentation with conference speeches providing the first clues of his plans for the intent to deceive the [USPTO]” (Case 2008-1448). The Federal the agency. Then came a sudden flurry of activity. Following an Circuit rejected the Trademark Trial and Appeal Board’s (TTAB) extensive consultation period, in May 2011 OHIM unveiled a new strict rule of fraud on the USPTO established in Medinol Ltd v Neuro organisational structure designed to strengthen the organisation, Vasx Inc (Case 92040535), which held that an applicant or registrant improve quality and expedite operations, and promote convergence commits fraud on the USPTO when it makes a statement that is false of practice. Cooperation fund projects continued, new tools were and material and knew, or should have known, that such statement launched and the European Trademark and Design Network – a was false or misleading, but acted with “reckless disregard for the vision of OHIM that seeks to bring together, as much as possible, truth”. The decision was important – and long awaited – as it eased the practices, databases, IT systems and search capabilities of the the fear that honest mistakes would lead to the loss of rights. IP offices in Europe – moved forward. Elsewhere, the European Commission entrusted OHIM with responsibility for the EU Budweiser battles Observatory on Infringements of Intellectual Property Rights (which As previously mentioned, World Trademark Review’s first cover story subsequently published studies into the contribution of IP-intensive focused on a trademark battle between Anheuser-Busch and industries to economic performance in the European Union and the

Bude jovický Budvar over the Budweiser brand. The spat continued public perception of IP among European consumers). OHIM remains to play out over the following eight years in diverse national (from a filing hub, but under Campinos’ stewardship, it has also become South Korea to Nigeria to Italy) and international forums. Both sides something much more. claimed victories along the way, and in 2011 the European Court of Justice (ECJ) introduced the concept of ‘honest concurrent use’ into Jack Chang, chairman, Quality Brands Protection Committee EU law when considering a dispute between the two companies. In As if his day job as senior IP counsel for General Electric were not Case C-482/09 (September 22 2011) the ECJ confirmed ‘acquiescence’ challenging enough, Jack Chang is also responsible for spearheading as a European concept to be applied uniformly across all member the activities of China’s Quality Brands Protection Committee (QBPC). states, recognised the established English concept of ‘honest These range from organising workshops for law enforcement officers concurrent use’ within EU law and clarified the conditions under to hosting an annual awards ceremony to recognise government which the provisions relating to acquiescence apply. The jousting agencies that have excelled in IP enforcement and lobbying for continues in a fight that has been both high-profile and fiercely legislative change. The QBPC’s constituent roster read like a ‘who’s who’ contested by both sides. of global brands, including names such as Apple, BP, General Motors, www.WorldTrademarkReview.com August/September 2014 World Trademark Review 15 Feature: The 50 market shapers

Gucci, Mattel, Microsoft, Pfizer, Samsung, Sony and Toyota. The fallen under intense international scrutiny – and has had to meet committee has made a valuable contribution to the understanding the Herculean task of ensuring that examinations keep pace with and outlook of foreign investor companies seeking to do business in applications. In 2013, for example, it accepted over 1.8 million China. Chang has been leading this initiative every step of the way. trademark applications (a year-on-year increase of 14.15%) and examined 1.42 million applications. It also registered and preliminarily Terri Chen, Google approved 436 geographical indications and certification marks, an Much of the debate over online infringement and intermediary increase of 16.89% on the previous year. With the introduction of recent responsibility has focused on the brand perspective, but as amendments to the Trademark Law, the challenges will continue, with director of trademarks at Google, Terri Chen has fought hard to new examination time limits and multi-class examinations now a ensure that the search engine voice is also heard in the discussion. reality. In May the office noted that the work involved in examining a “Intermediaries are doing more than takedown and notice,” she single trademark has now reached the same level as was required for 2.2 insists. “We allocate a lot of resources and are engaging proactively trademarks in 2008.“It would be a hard task and serious challenge for too. But I would argue that it is too simple to say that one group will the trademark office to further shorten the examination period to nine be able to solve this problem. What we are missing is attacking the months as required by the law,” it stated. However, the applications will source and the incentives for infringers. As long as it is profitable for continue to flow in as brands increasingly seek to tap the opportunities bad actors to infringe, they will. Placing the intermediary into the presented by this lucrative market. role of police force is not the best solution. Where we can do things, we are; but I think we need to be careful about expecting any one Consolidation in the trademark services sector player in the ecosystem to solve the problem.” On top of this, Chen Over the past couple of years, a spate of major acquisitions were also leads the team tasked with protecting the properties of the announced in the non-legal trademark services space – 2013 alone world’s most valuable and innovative brands. saw Corporation Service Company snap up the digital brand services division of Melbourne IT; Thomson Reuters CompuMark China’s trademark office acquire Canadian outfit Onscope’s trademark business and German As brands increasingly look to secure their rights in China, whether transactional trademark search company Eucor; and Wolters for defensive or commercial purposes, China’s trademark office has Kluwer Corporate Legal Services purchase multinational trademark

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Feature By Adam Smith

A foot in the door Getting trademarks on the corporate agenda

As the world’s only magazine dedicated to trademark law and practice, WTR is uniquely positioned to take the pulse of the industry. Our second annual Global Trademark Survey illuminates exactly where trademarks stand in the corporate structure

Although trademark counsel are no longer locked in the corporate basement, many are still struggling to integrate their function into the wider business structure. Exclusive WTR research reveals that many corporations still have no grasp of their trademark assets, with a staggering 84% of in-house counsel admitting in WTR’s second annual Global Trademark Survey that their company has not valued its trademark portfolio. The research paints a gloomy picture in which trademark teams are still seeking vital support from key departments, yet find many doors closed to them. This comes as something of a surprise, given that the value of weaving a trademark practice into the fabric of the business is undisputed. Trademarks can help to rescue struggling brands and launch new ones. For example, while the Sony Ericsson joint venture brought the two communications titans together, it was their trademarks that synchronized these powerful brands. Justin Pierce, Sony Ericsson’s head of trademarks and brand protection, recognized early on that success would depend on strategic use of the new brand and the trademarks brought to the table by the shareholders, Sony and Ericsson. “One of my tasks in this area was twofold,” he recalls. “To build an electronic database for colleagues around the world to consult when referring to our trademarks and brands, and then to make it part of the company’s culture.” This dynamic resource has since stitched together disparate groups across the business. So what accounts for the continued failure to appreciate trademark value – does it stem from the near impossibility of producing an accurate valuation or is it reflective of blinkered thinking in the C-suite?

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The battle to ensure that the trademark function is both understood and valued continues to this day

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Issue 5 January/February 2007 www.WorldTrademarkReview.com World Also in this issue... Inside an anti-counterfeiting sting Why the US is learning to love brand securitization Trademark European CTM litigation on the cusp of change Trademarks in China: myth and reality Making sense of Mexico Review research company Avantiq (with its offerings positioned under the Corsearch brand). While it may be a coincidence, this acceleration in consolidations has come at a time when national offices are increasingly opening up online databases and offering users free online tools. Clearly, the competition for trademark spend has heated up. While professional trademark services companies can offer the bells and whistles of enhanced functionality that so appeal to counsel, those juggling corporate trademark budget will doubtless hope that the free offerings will keep providers on their toes – in terms of both further innovation and keeping costs at an acceptable level.

Pedro Cruz Villalón, advocate general, ECJ As the seizure of goods in transit has been a hot-button issue in recent years, Pedro Cruz Villalón’s opinion in Koninklijke Philips Electronics NV v Lucheung Meijing Industrial Company Ltd and Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs (Joined Cases C-446/09 and C-495/09, February 3 2011) was keenly awaited. While his opinion – that goods in transit or temporary The 3D dilemma storage cannot automatically be considered counterfeit, and LEGO Group faces up to its biggest challenge therefore seized by Customs, without sufficient grounds to suspect that they will be put on the market in the European Union – was not necessarily the one most brand owners were seeking; but it did prepare counsel for the ECJ’s later decision. Yet this is not the only contentious issue to which Cruz Villalón has directed his attention. The use of keywords was addressed in Wintersteiger AG v Products 4U Sondermaschinenbau GmbH (Case C-523/10, February 16 2012), Lego has been an ever-present brand in the debate over design rights with Cruz Villalón stating that the registration of an AdWord that and the scope of protection for 3D trademark disputes was identical to an allegedly infringed trademark – although limited to the top-level domain ‘.de’, which uses the German language and is accessible in Austria – constituted a set of facts which was clearly numbers and the opening of regional offices in Shanghai, Brussels indicative of actual infringement of the trademark in Austria. In DHL and Washington DC. Express (France) SAS v Chronopost SA (Case C-235/09, October 7 2010), he also delivered a much-anticipated opinion in a case regarding the eBay pan-European effect of a Community trademark (CTM) court ruling “All we do is provide a toolbox for all users, and it’s the same tools and its enforcement. that everybody has that they use to shape their own listings. We have no activity of involvement in that.” Talking to World Trademark Wubbo de Boer, former president, OHIM Review on the day that the ECJ issued its ruling in L’Oréal SA v “The council will have to justify the transfer of money and that is not eBay International AG (Case C-324/09 July 12 2011), eBay Europe’s easy. You can’t just say, ‘Well, we had to bribe member states to get senior director and counsel government relations Stefan Krawczyk the other changes agreed to.’” So said outgoing (and often outspoken) explained that he could live with the judgment, which stated that an OHIM president Wubbo de Boer about the September 2008 online marketplace is not exempted from liability when it has played compromise under which a CTM fee reduction was agreed, with one an “active role” in the sale, including “optimising the presentation of related concession being that national offices take a 50% split of the offers for sale in question or promoting them”. CTM renewal fees. The compromise still colours the discussion over The L’Oréal dispute was not the only spat between the online fee levels and allocation of the OHIM surplus, and highlights the auction giant and luxury brands. A year later, in the long-running political dexterity that the OHIM presidency demands. This was just eBay Inc v LVMH Fragrance Brands case, the French Supreme Court one issue de Boer grappled with during his decade-long stint at the partially annulled a Paris Appeal Court decision finding that eBay agency – a period during which the Community expanded from 15 to was liable for the sale of counterfeit products on its online platforms. 27 member states, application numbers increased and OHIM adapted In an earlier judgment, the US Court of Appeals for the Second its processes to embrace the electronic era. Circuit sided with eBay in a dispute with Tiffany (Case 08-3947, April 1 2010), establishing that trademark owners have the burden Alan Drewsen, former executive director, International of policing for counterfeit items when their products are sold in an Trademark Association online marketplace. Similar arguments over auction site liability With a varied career including service in the US army and legal roles continue in other forums; but for many brand owners, the debate both in-house and in private practice, Alan Drewsen brought a multi- started with, and was effectively shaped by case law involving, eBay. faceted skill set to INTA when he joined the organisation in 1998. And although, as he told World Trademark Review in 2012, “while Entrepreneur Media Inc I had a general understanding of the principles of trademark law, The trademark bully question is one of the most divisive in the INTA was my immersion into the fascinating world of trademarks”, trademark world, raising the hackles of accused bullies, their alleged his impact has been considerable. Over the subsequent 15 years victims and even those who consider the whole thing a non-issue he masterminded the expansion of the association into the global (it is certainly the topic on which we receive most correspondence). powerhouse it is today – overseeing a growth in membership This is arguably best represented by the fierce debate surrounding www.WorldTrademarkReview.com August/September 2014 World Trademark Review 17 Feature: The 50 market shapers

Entrepreneur Media Inc’s (EMI) enforcement of its ENTREPRENEUR had not yet opened its portals to internet users worldwide. Fast forward trademark for use in relation to magazines, reports and other printed eight years and the site is now attracting some 1.28 billion monthly matter under Class 16 of the Nice Classification, as well as registrations active users (as of March 31 2014). In addition to creating an environment in Classes 9, 35 and 41. The company has filed infringement suits in which brands can establish their own presence in a bid to engage against a wide range of entities, and for decades has also been fending consumers, the policing of third-party trademark use has become a key off allegations from small businesses, multinationals and critics that preoccupation. Whether gripe pages, parody accounts, fan art, trademark its trademarks are generic and invalid, and that it is over-reaching (one use in social media games or imposters seeking to exploit the profiles of victim told World Trademark Review in 2009 that he hoped the Federal particular brands, the challenges for counsel are relentless. Facebook has Bureau of Investigation would investigate his claims). also become a forum in which cease and desist letters can go viral and enforcement efforts come under hawkish scrutiny, adding a further layer Victoria Espinel, former US IP enforcement coordinator of complexity to policing. Whether your brand is on the social media site In December 2009 the US Senate confirmed the nomination of or not, Facebook cannot be ignored. Victoria Espinel as the first US IP enforcement coordinator, charged with creating an effective national IP enforcement strategy. The David Gooder, Jack Daniel’s Properties first step was publication of the Joint Strategic Plan on Intellectual “In many ways, it is quite flattering but not something us trademark Property Enforcement, which aimed to streamline the coordination lawyers are always used to seeing.” So commented David Gooder, of IP enforcement across US government departments. Over the managing director and chief trademark counsel at Jack Daniel’s following three years Espinel led the administration’s efforts to Properties, speaking to World Trademark Review the day after a cease encourage private sector engagement in education efforts against and desist letter which the company sent to author Patrick Wensink illegal online pharmacies and increase customs seizures. She went viral. Instead of the usual outcry over perceived heavy- commissioned the ground-breaking study to identify the most handedness, Jack Daniels was praised for what was dubbed “perhaps IP-intensive industries and worked with industry to encourage the most polite cease-and-desist letter ever written”, and for offering the adoption of voluntary best practices for online advertising to to pay some of the costs of the redesign if Wensink chose to pull the cut off revenue to websites that distribute counterfeit and pirated existing copies of the book that infringed the company’s marks. In an goods. Just months after publication of the 2013 Joint Strategic Plan, environment where negative stories are seized upon by the media, it Espinel exited the administration and became president and CEO was good to see a positive trademark story gaining traction. of The Software Alliance. As the country’s first IP czar, however, she helped to ensure that IP rights were represented at the top table. Francis Gurry, director general, World Intellectual Property Organisation Facebook “The politics of intellectual property are, in my view, becoming more, When World Trademark Review magazine first published, Facebook was rather than less, challenging,” commented Francis Gurry on May 8 just two years old – having launched in 2004 as thefacebook.com – and 2014, following his appointment to a second six-year term of office

The inaugural WTR Industry Awards took place in Chicago (seven years later, they are still going strong – for profiles of the 2014 winners see page 27)

18 World Trademark Review August/September 2014 www.WorldTrademarkReview.com as director general of WIPO. “I do not think that this is a disturbing development. Rather, I would view it as a natural consequence of the increased economic value of intangibles and innovation, and of the mission of intellectual property of finding the right balance in relation to all the interests that surround innovation in our society.” During his time at WIPO, which he first joined in 1985, Gurry has proved an adept political player; among his achievements, he was instrumental in establishing the WIPO Arbitration and Mediation Centre and played a pivotal role in developing the Uniform Domain Name Dispute Resolution Policy. Going forward, Gurry will need to call on the full extent of his political powers to ensure that IP interests are properly reflected in the wider societal narrative.

Charles ‘Chuck’ Hill, 3D Systems While his name may be less familiar than some others on this list, Chuck Hill is the brains behind an innovation that is fast becoming a key preoccupation for many counsel – the 3D printer. In 1982 Hill invented stereolithography and subsequently the ‘.stl’ file format used to transmit files for the printing of 3D objects. Over the past few years, World Trademark Review has been covering the debate on the technology’s likely impact – both the good (whether in terms of assisting product development and the delivery of goods to customers or helping trademark counsel in their daily duties – for instance, brand owners can now send design files to Hong Kong Customs which officers use to print out products to use as comparisons when trying to ascertain whether a product Issue 30 considered how innovation is breaking out of the patent is legitimate or counterfeit) and the bad (could counterfeiting bubble as more people recognise its relationship with trademarks become harder to detect and electronic delivery of design files allow consumers to download and print their own counterfeit products, complicating policing and enforcement activities?). As the tech goes registered”. Subsequent debate centred on how dilution can be mainstream, the discussion over the impact of 3D printing on the proved in practice; but the decision laid out a clear basis for courts to trademark world will only become more pressing. determine whether trademark dilution has occurred.

ICANN International Olympic Committee In 2001 World Trademark Review reported on the “significant Where the Olympics go, trademark legislation inevitably follows. expansion” of the generic top-level domain (gTLD) space with the A fierce defender of its own rights, the International Olympic advent of ‘.biz’, ‘.info’, ‘.name’, ‘.pro’, ‘.aero’, ‘.museum’ and ‘.coop’. Committee (IOC) also acts to protect the exclusive rights of sponsors In 2008 news broke of a larger online revolution, as the Internet to capitalise on the games, with anti-ambush marketing legislation a Corporation for Assigned Names and Numbers (ICANN) gave the key element in the bid to host the Olympics. The legislation can result green light to a multi-language expanded online world in which in some confusion at local level (in the run-up to the 2012 games, brands could run their own strings and the universe of generic words for instance, London Organising Committee for the Olympic and would be open to all (or at least those with the requisite funding and Paralympic Games (LOCOG) chairman Lord Coe told reporters that technical capabilities). After six years of fierce debate over trademark spectators probably would not be allowed into games venues in a rights protection mechanisms and likely cybersquatting levels – Pepsi T-shirt “because Coca-Cola are our sponsors”; but LOCOG itself plus disgruntlement at the prospect of increased policing costs, then stated: “Any individual coming into our venues can wear any consideration of the potential opportunities that branded spaces item of clothing, branded or otherwise.” For his part, London Mayor could create and expansion of law firm offerings – the expansion is Boris Johnson told local traders via Sky News: “If you want to stick five now a reality. Time, then, to see whether the hype was justified. doughnuts in your window and call them Olympic rings then be my guest!”). However, enforcement of the legislation is taken seriously Intel v CPM (Case C-252/07) – and stokes the creativity of brand professionals as they attempt to The shadow of Intel Corporation Inc v CPM United Kingdom Limited skirt around the edges of the rules. The net result is that the treatment (Case C-252/07), in which the ECJ found that Intel’s reputation of trademarks is as much a part of the Olympic experience as athletic alone was not enough to cancel CPM’s mark, continues to loom endeavour. Elsewhere, the IOC has been at the centre of discussions over dilution cases in the continent. The upshot of the ruling was for additional rights protection mechanisms for inter-governmental that rights holders cannot automatically use a mark to prevent use organisations and international non-governmental organisations in of a similar mark by third parties for dissimilar goods or services the gTLD expansion. While the issue remained unresolved at the time – evidence of injury to the trademark (or a serious risk of such of writing (before the ICANN meeting in London), the IOC has been injury occurring) is required. With regard to dilution, Paragraph central to the rights protection narrative. 77 stated that “proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires IP Translator evidence of a change in the economic behaviour of the average While application class headings may have been one of the consumer of the goods or services for which the earlier mark was less interesting trademark stories for the mainstream media, www.WorldTrademarkReview.com August/September 2014 World Trademark Review 19 Feature: The 50 market movers

for practitioners it was a debate that mattered. In 2003, in targeting China, Hong Kong, Macau, Taiwan, Australia, New Zealand, Communication 4/03, OHIM announced that the use of language South Korea and Brazil – essentially meaning that a single policy from the class headings of the Nice Classification to specify goods now applies worldwide. The moved echoed the 2011 liberalisation of and services “constitutes a claim to all the goods or services Google’s AdWords programme in Europe, which – in the aftermath of falling within this particular class” – a ‘class-heading-covers-all’ an ECJ ruling that Google was not liable for infringement in the case approach that was followed by eight of the European national of trademark use as keywords – allowed advertisers to include third- trademark offices. In contrast, 17 offices favoured the ‘means party trademark terms in ad text and aligned the position with the what it says’ approach, which holds that only the meaning of the US approach. It was also a milestone in the years of legal wrangling words actually used in a trademark specification can determine over the use of trademarks as keywords. The debate remains active, the scope of protection. These divergent interpretations were at as evidenced by the recent disputes between Cosmetic Warriors and the centre of Chartered Institute of Patent Attorneys v Registrar of Amazon.co.uk over the use of LUSH as a keyword and Interflora and Trademarks (Case C-307/10), often referred to as IP TRANSLATOR. Marks & Spencer over the latter’s use of the mark INTERFLORA as an In June 2012 the ECJ had its say, noting that “goods and services for AdWord. Interflora, and the subsequent German Federal Supreme which the protection of the trademark is sought to be identified Court ruling in a dispute over the FLEUROP mark (likewise involving by the applicant with sufficient clarity and precision to enable flower delivery services), illustrated that there are instances where the competent authorities and economic operators, on that basis use of a mark in keyword advertising can amount to trademark alone, to determine the extent of the protection conferred by infringement, but much will rest on the specific nature of the case. the trademark”. OHIM promptly repealed Communication 4/03, The debate thus continues, albeit in a more limited form. with Communication 2/12 addressing the treatment of current applications/registrations and requiring future applicants to specify Janet A Kobrin, Warner Bros Entertainment expressly the intended breadth of their application. Today’s brands live and breathe, adapting themselves to new environments and channels and creating challenges for those Keywords seeking to extend protection. As vice president of senior IP counsel On April 23 2013 Google changed its trademark policy to allow and head of the trademark group at Warner Bros, Janet A Kobrin advertisers to select a third party’s trademark as a keyword in ads worked at the forefront of the intersection of creative content

WTR_28 PAGINATED FINAL 02:WTR 22/10/2010 18:55 Page 24 WTR_28 PAGINATED FINAL 02:WTR 22/10/2010 18:55 Page 25

Feature By Adam Smith

Brave new world How the trademark community is preparing for new gTLDs

This autumn, WTR conducted an in-depth survey to find out how industry is preparing for the launch of new gTLDs. The data reveals how outside counsel are devising new business models, what marketing professionals really think and how brand owners are bracing for their greatest trademark challenge yet ©iStockphoto.com/Manfred Konrad

24 World Trademark Review December/January 2011 www.WorldTrademarkReview.com www.WorldTrademarkReview.com December/January 2011 World Trademark Review 25

The generic top-level domain expansion has created both opportunity and risks for brands

20 World Trademark Review August/September 2014 www.WorldTrademarkReview.com Issue 39 October/November 2012 www.WorldTrademarkReview.com World Also in this issue... Risk and reward: when licensing goes too far Techniques for valuing promiscuous brands Trademark Practical social media strategies defined How to establish trademark fame in China Fighting the parasites: countering lookalikes ReviewTM and legal protection. As she explained to World Trademark Review in 2010, in addition to the traditional trademark challenges, this has involved grappling with a range of new legal issues – whether relating to the company’s worldwide trademark portfolio, the rights embedded in affiliated companies such as DC Comics or iconic properties such as Harry Potter. “Another area in which we are developing a business is the electronic games arena,” she told us. “An area of focus is the ability to manipulate characters in these interactive games – we have to ask what, if any, impact this will have on the ability to protect them.” Herself the co-author of a range of children’s books, Kobrin was deeply immersed in the creative industry and was keen to share her experience and knowledge. Sadly, she passed away earlier this year after a long illness, but her influence continues to be felt.

PH Kurian, former controller general, Indian Intellectual Property Office The notorious opposition backlog in India has been a recurring tale in the pages of World Trademark Review over the years. During his tenure as controller general of the office, PH Kurian was viewed as a positive force in the bid to modernise the agency and streamline its operations. Dubbed by many ‘the Godfather of reform’, Kurian faced down a Creating convergence number of high-profile challenges in his time at the office – not least OHIM, users and national offices look to the future of European trademarks reports of the loss of 44,000 trademark files and the media storm that followed the March 2011 arrest of Chennai’s deputy registrar of trademarks for possession of 3.8 kilograms of gold and Rp10 million, Over the past eight years, World Trademark Review has tracked OHIM‘s assets far disproportionate to her known income. While the latter efforts to create converged European practices threw the spotlight on alleged corruption, it also highlighted Kurian’s efforts to increase transparency, lending further momentum to his reform measures. The struggle to reduce the backlog and keep pace that catapulted him onto our list. PROTECT IP caused a political with application levels (of which approximately 70% are still filed in and public firestorm, with social media blackouts and online paper form) continues, with current controller general Shri Chaitanya protests generating headlines the world over. While the legislation Prasad at the helm. There is still much to do, but the modernisation stalled, Leahy has since played a key role in the debate on IP rights programme that Kurian spearheaded remains in place today, with enforcement – and has signalled his intention to keep fighting on further improvements for filers planned. these issues.

Thomas La Perle, Apple LEGO systems For a modern-day icon like Apple, every launch, product iteration, With 4,000 trademark registrations, 2,000 design registrations, success and misstep is closely scrutinised – whether by customers 9,000 domain names and approximately 100 different patent eager to get their hands on the latest gadgets, competitors seeking families worldwide to protect, Lego must tackle the entire spectrum to gain an edge in the market, media keen to capitalise on the of infringements on a daily basis – which means that over the years brand’s ubiquity or legal practitioners scrutinising the application of it has made an invaluable contribution to the development of case trademark law in the high-tech industries. Protecting such a valuable law. Its highest-profile disputes have revolved around design and and visible brand is no easy feat, but over the past decade La Perle 3D trademark protection for its much-loved toy brick, although it has built a trademark team that consistently positions itself at the is also one of the most prolific users of the Uniform Domain Name vanguard of industry developments. Whether fighting fake stores in Dispute Resolution Policy. Meanwhile, the popularity of using LEGO China, registering and negotiating the rights for marks such as IPAD figures and bricks for political, satirical and other purposes has and IPHONE or testing design law in disputes over tablet computers, thrown up some unique reputational challenges along the way – the trademark – led by La Perle – has functioned on the frontlines, variously encompassing the creation of a fake LEGO set depicting an under the world’s intent gaze, for the past decade. Don’t expect that Auschwitz-style death camp, a competition run by an adult film star to change anytime soon. who offered intimate personal services to the person who built her the best LEGO creation, and more recently the use of LEGO figures in Patrick Leahy, US Senator for Vermont a UK government campaign against Scottish independence. At the time of writing, US Senator Patrick Leahy was making waves for pulling sweeping patent reforms from the Senate Judiciary Angel Margáin Gonzalez, director general, IMPI Committee agenda. However, the politician has also been a The Mexican Institute of Industrial Property (IMPI) has had a prominent figure in trademark and piracy-related discussions couple of challenging years following Mexico’s accession to the over the past five years. He was the driving force behind the study Madrid System in February 2013. Overseeing the transition to the into aggressive litigation tactics that was built into the Trademark new regime is director general Angel Margáin Gonzalez, who only Technical and Conforming Amendment Act 2010; but it is his joined IMPI the month before. It is fair to say that things have not role as sponsor of the proposed PROTECT IP Act (itself a rewrite of been plain sailing: uptake of the Madrid system appears lower his earlier Combating Online Infringement and Counterfeits Act) than expected, with some practitioners blaming inefficiencies www.WorldTrademarkReview.com August/September 2014 World Trademark Review 21 Feature: The 50 market shapers

at the issuing office. In May 2014 Margáin told World Trademark “Well, they need to be told!”). Since 2010, the McCarthy Institute and Review: “It has been a hard process. It has involved a big increase Microsoft have jointly hosted an annual symposium on trademark in our workload, including capacity building in terms of personnel law, bringing together policy leaders from corporations, government, and technology. However, this has helped us, not only for Madrid academia and private practice to examine cutting-edge issues in applications, but also in terms of strengthening the traditional trademark law. Through initiatives such as this, McCarthy’s influence [national] system.” He therefore remains bullish about the direction on trademark thinking continues – and shows little sign of slowing. of IMPI and the benefits it can offer both domestic and international brands. Margáin brings over 20 years of experience to his current John Morton, former director, US Immigration and Customs role and is the first IP practitioner to be appointed to the post; his Enforcement background should ensure that the practitioner viewpoint continues A divisive figure (as he told The Washington Post in 2010, “I can get to influence IMPI decision making. criticised on the same issue from both sides on the same day”), John Morton led a department that was an active voice in the debate on J Thomas McCarthy, The McCarthy Institute at the University of online counterfeiting and oversaw such high-profile campaigns as San Francisco Operation In Our Sites, which targets websites selling counterfeit The influence of J Thomas McCarthy – an internationally renowned goods. Morton identified the rise in websites selling counterfeit goods author on IP issues whose seven-volume treatise, McCarthy on direct to consumers as a key factor behind increases in the number Trademarks and Unfair Competition, has been relied upon in over of seizures at US mail and express courier facilities. However, the 2,000 judicial opinions – pre-dates World Trademark Review’s programme has come under fire from the free-speech lobby, and in existence by decades. In the last eight years, however, he has 2011 Morton was forced to defend the programme in congressional continued to shape the wider ecosystem, never shy to voice his hearings, arguing that it had been developed by due process under US opinion on trademark law and corporate strategies (when we put law: “Domain names seized under Operation In Our Sites are seized it to him that this his suggestion that brand owners stop sending only in furtherance of ongoing criminal investigations into violations “shock and awe” cease and desist letters was bold, considering that of US federal laws.” As director of US Immigration and Customs he was addressing a room of full of attorneys, his reply was simple: Enforcement (ICE) – a post which he left last year – intellectual property was just one area of interest for Morton, but he was a regular speaker at anti-counterfeiting events, where he expounded the WTR Industry Awards In-house Counsel of the Year winners virtues of those working on behalf of the ‘good guys’.

2014: Jerry Xia, Honeywell International Frederick Mostert, Richemont 2013: Thomas La Perle, Apple For Frederick Mostert, chief legal counsel at Richemont and former 2012: Russell C Pangborn, Microsoft president of INTA, a historical analogy best illustrates the preferred 2011: Dana Northcott, Amazon.com approach to the online counterfeiting problem. “A legal issue raised 2010: Janet Kobrin, Warner Bros Entertainment during the first construction of railway networks in the 1800s was 2009: Vanni Volpi, Gucci who bore the loss if a spark from a steam locomotive flew onto crops 2008: Bruce Proctor, Diageo and set them alight – the railway company or the farmer?” Progress 2007: Richard Biribauer, Johnson & Johnson would stall if railway companies were deluged with legal claims, yet was it really fair that the farmer effectively paid for the scientific innovation of others? So lawsuits were filed, with both parties taking WTR Industry Awards Lifetime Achievement winners seemingly irreconcilable positions. However, reason and practical common sense prevailed, and a voluntary middle ground was 2014: Miles Alexander, Kilpatrick Townsend negotiated: firebreaks along the tracks and spark arresters on the 2013: Kimbley L Muller, Shell Oil Company trains to prevent – or at least minimise – the danger.” Today, he urges 2012: Alan Drewsen, International Trademark Association brands to “pick up the phone and talk” to auction sites, and “work 2011: Jerome Gilson, Brinks Hofer Gilson & Lione together both to eradicate fakes and to avoid restraining online 2010: Alexander von Muhlendahl, Bardehle Pagenberg Dost progress”. Drawing on his own experience with eBay, it is a message Altenburg Geissler that he has taken to brand owners at IP events across the world as he 2009: Rhonda Steele, Mars seeks to change the way that disputes are handled. 2008: Dee Ann Weldon-Wilson, ExxonMobil Lucy Nichols, CREATe.org For the first six years of World Trademark Review’s existence, Lucy INTA presidents since World Trademark Review appeared on the scene Nichols was globetrotting in her role at Nokia, working variously from Finland, China and the United States. As director of legal and 2014: Mei-lan Stark, Fox Entertainment Group IP rights, she had global responsibility for the company’s trademark, 2013: Toe Su Aung, BATMark Limited design and domain portfolios, as well as for anti-counterfeiting and 2012: Gregg Marrazzo, Estée Lauder Companies brand-related enforcement and litigation. Nokia, of course, was at 2011: Gerhard R. Bauer, Daimler AG the heart of the goods in transit debate in Europe – its dispute with 2010: Heather Steinmeayer, WellPoint, Inc UK Customs over a consignment of allegedly fake mobile phones in 2009: Richard Heath, Unilever PLC transit from Hong Kong to Colombia resulted in the ECJ ruling that 2008: Rhonda Steele, Mars Incorporated EU Customs may seize goods in transit through the European Union 2007: Dee Ann Weldon-Wilson, Exxon Mobil Corporation from one non-member state to another only where there has been a 2006: Paul Reidl, E&J Gallo Winery “commercial act” in relation to the goods. Nichols is also a prominent figure in the wider trademark community – speaking out against the

22 World Trademark Review August/September 2014 www.WorldTrademarkReview.com Issue 44 August/September 2013 www.WorldTrademarkReview.com

Also in this issue ... The WTR Industry Awards winners profiled A survey of surveys: global approaches compared Latest EU trademark proposals dissected MasterCard reveals its trademark strategy Dressed for success: protecting store designs broad scope of the Anti-counterfeiting Trade Agreement, advising on best practices at industry events and helping enforcement authorities to improve detection and seizure strategies. Nichols is currently vice president at INTA and last year joined the Centre for Responsible Enterprise & Trade (CREATe), a non-profit organisation dedicated to helping companies – and their suppliers and business partners – to reduce counterfeiting, piracy, trade secret theft and corruption. In many respects, the role is a natural extension of her previous community engagement work.

Russell Pangborn, Marksmen Russell Pangborn recently joined Marksmen as chief executive Setting out officer, having transitioned out of his role at Microsoft where, the legal stall as associate general counsel, trademarks, he led the team that The role of brands in the trademark legal protects some of the world’s most famous brands, including services market Microsoft, Windows, Xbox, Kinect and Bing. During his decade at Microsoft, Pangborn also established himself as a strong industry advocate for the interests of trademark owners. For instance, as a member of the Implementation Recommendation Team for ICANN’s new gTLD programme, he contributed to the development of trademark rights protection mechanisms. In addition to his previous roles as officer and board member of INTA, he made valuable contributions to policy debates, speaking at conferences and helping to raise awareness of trademark-related issues (he was a co-founder of the McCarthy Institute-Microsoft annual symposium on trademark law and its challenges). Prior to taking Brand identity is key for corporates. In issue 44 we considered the on his new role at Marksmen, he told World Trademark Review degree to which they matter for law firms that he was looking forward to joining the team and “engaging with them in the continued support of IP owner interests”. His experience at Microsoft certainly qualifies him to continue his “With a brand as famous as Red Bull, you can certainly imagine the advocacy on behalf of trademark owners. type of coat-tailing that goes on by third parties, and we invest a lot of time and money to stop such infringements as the brand is that Plain packaging legislation important to the company.” Whether in relation to trademarks, trade On December 1 2012 Australia became the first country to impose dress, designs, online infringement, lookalikes, content creation, plain packaging restrictions on tobacco product; other countries online infringement or the establishment of mark fame, Red Bull soon signalled their intent to follow suit. While the issue is hotly has been there and done that, and continues to seek creative ways to debated in political and health policy circles, the trademark protect its intellectual property. community has fought hard to ensure that other sectors understand the potential dangers of plain packaging legislation. As Silverberg, Kristina Rosette, Covington & Burling LLP Goldman & Bikoff’s James Bikoff told World Trademark Review in “All brand owners will occupy one or more possible roles in the 2013: “For the moment, the plain packaging requirements have introduction of new gTLDs – applicant, objector and registrant. Each been limited to the tobacco industry, but it is anticipated that other brand owner must decide soon which role(s) it will have, design a industries producing potentially ‘harmful’ consumer products plan for fulfilling that role and be prepared to execute it.” In the four may also adopt similar regulations, including the pharmaceutical years since she made that statement, Covington & Burling’s Kristina industry and food and beverage manufacturers. Thus, we believe Rosette has worked tirelessly on behalf of clients, and brand owners that governments, legislatures and their regulatory bodies in general, through her work within the ICANN structure. Currently worldwide will play a major role in what may arguably be considered president of ICANN’s Intellectual Property Constituency, Rosette an erosion of intellectual property rights of brand owners.” The has had a hand in drafting ICANN’s policy recommendations for World Trade Organisation is due to consider complaints that the new gTLDs, developing and implementing trademark protections, Australian regime conflicts with international trademark protection advising on nearly 100 new gTLD applications and designing new rules later this year. Its decision could significantly affect other gTLD objection and acquisition strategies. As a new era dawns in sectors should plain packaging be found legal and subsequently the online world, Rosette has been at the forefront, ensuring that introduced in other industries. trademarks interests are represented.

Red Bull Rovio and the Angry birds franchise The bullying debate is a controversial one in trademark circles, but “Piracy may not be a bad thing: it can get us more business at for Red Bull’s Jennifer Powers – who is tasked with protecting a brand the end of the day.” This candid admission of Mikael Hed, chief that has been an innovator in terms of content creation and sports executive of Angry Birds creator Rovio, at the Midem 2012 event and event sponsorships (as well as a leading brand in its core energy in Cannes was immediately seized upon by mainstream media drinks market) – the equation is simple: protect it or lose it. “In my keen to downplay the impact of counterfeiting on big business. His opinion, just because companies take their rights seriously and colleague, chief marketing officer Peter Vesterbacka, added to the defend their brands does not mean that they are bullies,” she says. debate when he told the Jakarta Globe: “We are now the most copied www.WorldTrademarkReview.com August/September 2014 World Trademark Review 23 Feature: The 50 market shapers

brand in China. It means we are more loved than Mickey Mouse and and approval of OHIM’s new strategic vision. As INTA embarks on Hello Kitty.” In reality, the arguments they were making were more implementation of its own 2014-2017 strategic plan and prepares to nuanced, and Rovio’s chief legal officer Kati Levoranta later told face future challenges in the wider trademark world, Sanz de Acedo’s World Trademark Review that the Finnish company pulls no punches star will remain on the ascendant for some time to come. when it comes to protecting its intellectual property. The company has also sought to turn foes into friends, partnering with infringers J Scott Evans, Adobe Systems Incorporated of its intellectual property to turn them into bona fide licensees and J Scott Evans has been at the forefront of the debate over trademark franchisees. Whatever your views on this strategy, the company has protections in the gTLD space, previously serving as president of the brought a new dimension to the counterfeiting debate. Intellectual Property Constituency and on ICANN’s Implementation Recommendation Team. His involvement in the latter was a natural Etienne Sanz de Acedo, INTA extension of his previous work on the five-member drafting As a global organisation, it is critical that INTA is not seen as US- committee that assisted ICANN with the drafting of the Uniform centric in its leadership and outlook; last year’s appointment of Dispute Resolution Policy. When it comes to the online space, Evans Etienne Sanz de Acedo as chief executive was a clear statement is clearly a go-to expert. He joined Adobe Systems Incorporated in of intent in this regard. However, while INTA itself noted that his October 2013, moving from the legal team at Yahoo! Inc, where he “expansive international credentials reflect the multicultural spirit” served as a senior legal director – global brands and trademarks. of the association, the appointment was based on much more In addition to his daily duties at corporate level, he is a frequent than mere geography or culture. Sanz de Acedo has been a familiar lecturer on trademark and internet policy issues, and is also the face on the European trademark scene for some time, primarily current president-elect at INTA. His profile will thus only become through his role as a member of OHIM’s cabinet, where he led a more prominent over the next 18 months. global consultation process with multinational IP organisations, government and EU officials which ultimately led to the adoption Eleanor Sharpston, advocate general, ECJ It is rare that the ECJ diverges from the opinions of its advocates general, making the latter key players in the development of World Trademark Review – a potted history trademark case law. As such, Eleanor Sharpston has made an important contribution to answering some of the big questions in 2002: Legal resource World Trademark Law Report launches online. European trademark law, such as what constitutes genuine use in 2005: The World Trademark Law Report (later World Trademark the Community. In 2012 Sharpston issued an opinion in the Leno Review) Yearbook makes its first appearance. Merken case holding that use of a CTM in one member state can – but 2006: World Trademark Review magazine is born, with the dispute not necessarily will – constitute genuine use in the Community. She between Anheuser-Busch and Budejovicky Budvar over the went on to state that ‘genuine use’ “is use that, when account is taken Budweiser name the first cover story. of the particular characteristics of the relevant market, is sufficient 2007: The inaugural WTR Industry Awards take place in Chicago to maintain or create market share in that market for the goods and (seven years later, they are still going strong – for profiles of services covered by the CTM”. This built on her earlier opinion in the 2014 winners, see page 27). PAGO International GmbH v Tirol Milch registrierte Genossenschaft 2011: WTR 1000 – The World’s Leading Trademark Professionals is mbH (Case C-301/07, April 30 2009), which clarified what constitutes launched. a ‘substantial part’ of the Community and provided an interpretation of the phrase based on market realities rather than national boundaries. She has also tackled issues such as on the concept of The most-read blogs on www.worldtrademarkreview.com bad faith (Chocoladefabriken Lindt & Sprungli AG v Franz Hauswirth (as of June 15 2014) GmbH (Case C-529/07, March 12 2009) and dilution (Intel Corporation Inc v CPM United Kingdom Limited (Case C-252/07, June 26 2008)). gTLD reveal day looms, the time to review strategies is now (June 12 2010) The Internet just changed: gTLDs (and their subsequent brand Rhonda Steele, Mars Incorporated challenges) are a go (October 24 2013) “To be really successful in trademarks, you must be totally aligned with the business priorities so that you are registering and protecting New domain name issues emerge at INTA meeting (May 27 2010) those rights that are truly important to them. That then needs to be Another internet landmark as public registration opens for seven balanced with what is important to the consumer and what he/she new gTLDs (January 29 2014) sees.” As senior marketing properties manager, Asia-Pacific at Mars, ICANN stakeholders square up over gTLD rights protection Rhonda Steele has seen the company’s presence in her bailiwick grow mechanisms (October 29 2012) from two sales offices to an extensive network across the region. The Mars team is also a shining example of what can be achieved through The top two gTLD applicants outline their rights protection plans synergy between the legal and marketing functions. “We don’t have (November 12 2012) to go through as many hoops in taking swift action to protect our Name brand and private label: the golden ratio (June 18 2012) brand assets,” she told World Trademark Review in 2012. “We have very Trademark protection proposals could benefit more brands collaborative relationships with various departments, but the one we (November 15 2012) have with marketing is very much a partnership of equals.” Steele – a past president of the International Trademark Association and WTR Phantom brands take private-label products beyond supermarket Industry awards Lifetime Achievement winner – has nearly 25 years’ shelves (September 24 2012) experience at Mars and continues to exemplify best practice when USPTO on the defensive after error triggers litigation (February 18 2009) it comes to fostering cross-company appreciation of brands and the trademark function.

24 World Trademark Review August/September 2014 www.WorldTrademarkReview.com Anna Troberg, The Swedish Pirate Party Trademark System). Given his significant contributions to the EU “The pirates turned out to be good people. When I took the time to First Trademarks Directive in 1988 and, in 1993, the Community actually listen to them, they seemed to be the only ones who had Trademark Regulation, it seems apt that his influence will again be a reasonable idea of how to create a thriving and positive cultural felt in the latest modernisation efforts. landscape for the future. Convinced that there was no way of beating them, I decided to join them, and I have not looked back since. In 2011 Dee Ann Weldon-Wilson, Exxon Mobil Corporation I became the leader of the party”. So said author Anna Troberg of her Upon assuming the INTA presidency in 2007, Exxon Mobil’s senior ascent to the leadership of Sweden’s Pirate Party – the first of its kind counsel Dee Ann Weldon-Wilson was keen to ensure that the in the world. While the party has not focused its agenda exclusively association would remain relevant and valuable to its membership on the reform of IP law, this is a central plank of its philosophy and long into the future. To this end, she established a Long Range Troberg – with a background in publishing – has been a key voice in Planning Group to examine how INTA should position itself in the the debate. next 15 to 20 years. Her efforts to progress the interests of the trademark community continue to this day – she currently serves on Alexander von Mühlendahl, Bardehle Pagenberg Dost Altenburg the USPTO’s Trademark Public Advisory Committee. She is also Geissler highly regarded for her dedication to mentoring the trademark Alexander von Mühlendahl has made an indelible mark on the leaders of tomorrow. “In my career so far, I’ve learnt that embracing trademark world, not least through his roles as vice president of change is important, teamwork is essential, leadership matters and OHIM, principal author of the German Trademark Reform Law the ability to listen to viewpoints remains very important,” she of 1994 and chief German representative in the negotiations on previously told World Trademark Review. “I believe that working with the adoption of the EU trademark legislation. As the European one another in productive and respectful ways will continue to be a Parliament grapples with the specifics of changes to the European hallmark of the trademark bar.” Weldon-Wilson continues to put this trademark system, von Mühlendahl continues to play his belief into practice on a daily basis. WTR part, having co-authored the study that started the whole ball rolling (the Max Planck Institute for Intellectual Property and Competition Law’s Study on the Overall Functioning of the European

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