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Special IP Reports | May 2008

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Contents

4 | CORRESPONDENT PROFILES

6 | SPECULATION IN DOMAIN NAMES THE NEW CYBERSQUATTERS William R. Towns of Novak Druce explores the changing face of cybersquatting in an e-commerce age

9 | CHANGES AND DEVELOPMENTS TO IP IN PERU By José Barreda of Barreda Moller, Lima, Peru

12 | THE EVIDENCE OF TRADEMARK USE Eva Ulviczki of Sar & Partners Attorneys at Law reviews ‘use and fulfilment’ of trademarks in Hungary

14 | THE REPAIRS CLAUSE IN FORCE IN POLAND Elzbieta• Wilamowska-Maracewicz of Polservice Patent and Trademark Attorneys Office debates Poland’s adoption of the so-called Repairs Clause

17 | DESIGNATE CAREFULLY… EU APPLICANTS FOR UNITED STATES TRADEMARKS MAY BE FORCED TO TESTIFY IN UNITED STATES Karen H Bromberg of the Intellectual Property Group at Cohen & Gresser, explains the potentially far reaching implications of the Rosenruist case

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Correspondent profiles

OFFICIAL CORRESPONDENT – UNITED STATES William R. Towns is a Partner at Novak Druce + Quigg. William is a seasoned attorney, mediator, and arbitrator with over twenty- five years of federal and state court litigation experience. His areas of concentration in his litigation and dispute resolution practice include intellectual property, unfair competition, complex business and commercial litigation, and other international and trans-national disputes. William is a WIPO Approved Neutral and Domain Name Dispute Resolution Panellist, a Member of the Chartered Institute of Arbitrators, and a past member of the Advisory Board of Directors to the Texas Collaborative Law Council.

GUEST CORRESPONDENT – PERU José Barreda is partner of Barreda Moller. He is specialised in Intellectual Property Law, Commercial Law, Civil Law and litigation and related arbitration law. He has held post of professor at the Law School of Universidad de Lima and at the school of Universidad Peruana de Ciencias Aplicadas – UPC. José was president of the Interamerican Association of Intellectual Property, ASIPI and member of the International Arbitration Court of the International Chamber of Commerce of Paris, ICC.

GUEST CORRESPONDENT – HUNGARY Eva Ulviczki is a candidate of attorney of Sár and Partners Attorneys at Law, a Budapest law firm. She concentrates on the representation of companies and individuals involved in all aspects of trademark law. Eva’s wide experience of trademarks includes infringements, law enforcement, trademark searches and domain names.

GUEST CORRESPONDENT – POLAND Elzbieta• Wilamowska-Maracewicz is a partner and member of the Managing Board of Polservice Patent and Trademark Attorneys Office. Elzbieta• has been a patent attorney since 1975 and is a European patent attorney. A professional attorney before the OHIM, she graduated from the Faculty of Chemical Engineering of Warsaw Technical University. She completed post- graduate studies in industrial property protection at the Faculty of Law and Administration of Poznaƒ University in 1985 and gained two years of professional experience in industry. She has organised and participated in many courses on intellectual property protection. Elzbieta• joined Polservice in1973 and has managed the mechanical department since1988. She is Secretary of the Polish Group of AIPPI and a Member of the National Council of Patent Attorneys at the Polish Chamber of Patent Attorneys. As well as being a member of LESS and UNION.

GUEST CORRESPONDENT – USA Karen H Bromberg is a partner and head of the Intellectual Property Group at Cohen & Gresser LLP, a New York City law firm. Her practice focuses on transactions and disputes involving trademarks, copyrights, and patents. Experienced in all facets of litigation and dispute resolution mechanisms, Ms. Bromberg draws on these skill sets to assist clients in developing global protection strategies, registration and enforcement programs and to maximize and protect their trademarks, trade names, trade dress, copyrights and other intellectual property. She is responsible for the international trademark portfolios for numerous companies in a diverse range of industries.

May 2008 www.ipworld.com 6 REVIEWREVIEW USA

OFFICIAL CORRESPONDENT William R. Towns is a Partner at Novak Druce + Quigg. William is a seasoned attorney, mediator, and arbitrator with over twenty-five years of federal and state court litigation experience. His areas of concentration in his litigation and dispute resolution practice include intellectual property, unfair competition, complex business and commercial litigation, and other international and trans-national disputes. William is a WIPO Approved Neutral and Domain Name Dispute Resolution Panellist, a Member of the Chartered Institute of Arbitrators, and a past member of the Advisory Board of Directors to the Texas Collaborative Law Council.

Speculation in domain names

The new cybersquatters

William R. Towns of Novak Druce explores the changing face of cybersquatting in an e-commerce age

he Uniform Domain Name Disputed click portal sites and domain name Resolution Policy (UDRP), launched tasting are all recent developments in the in December 1999, is intended to DNS that have contributed to a discourage and resolve the abusive resurgence of cybersquatting. This Tregistration of trademarks as domain names, article explores recent developments in commonly referred to as “cybersquatting.” the DNS and new challenges presented The UDRP has proven particularly adept at for intellectual property owners in discouraging traditional cybersquatting, enforcing rights under the UDRP. involving the registration of trademarks as domain names by individuals seeking to sell Overview of the UDRP the “squatted” domain names to the rightful The UDRP is incorporated into the trademark owners. registration agreements used by all The face of cybersquatting has changed, ICANN-accredited registrars for generic however, and the commercialisation of the top-level domains (gTLDs). The UDRP domain name registration system (DNS) provides trademark owners with a has reinvigorated cybersquatting. Domain streamlined and inexpensive names today are seen as commodities. administrative dispute resolution “Domainers” acquire domain name procedure. The complainant must portfolios, buy and sell domain names, and demonstrate that the disputed domain park domain names to generate pay-per- name is identical or confusingly similar click advertising revenue. Domain names to its trademark, that the respondent that can drive Internet traffic have become does not have rights or legitimate valuable, and the intrinsic value of interests in the domain name, and that trademarks to drive traffic is being the respondent registered and is using exploited by a new generation of the domain name in bad faith. Disputes cybersquatters. are decided by qualified neutrals (panels), The proliferation of new registers and resulting either in the dismissal of the practices such as automated bulk complaint or the transfer or cancellation registration of domain names, the of a domain name. Most complaints are parking of domain names on pay-per- decided in sixty days or less.

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The evolving nature of the DNS Where advertising links are based on the The proliferation of registrars trademark value of the domain name, the Close to one thousand companies now are trend in recent UDRP panel decisions is accredited as ICANN registrars, an to recognise such practices as enormous increase over the handful of cybersquatting. Enforcing rights in registrars that existed in 2000. Registrars trademarks consisting of common or or related entities buy and sell domain dictionary words, however, remains names, and offer privacy protection services problematic under the UDRP. for the registrants, domain name tasting, and pay-per-click domain parking. There Domain name tasting are increasing concerns that some ICANN policy provides a five-day period registrars may be engaging in or colluding following the initial registration of a with cybersquatting practices. In any event, domain name when the registration may such practices blur the line between the be deleted at no cost to the registrar. registrars’ ICANN-mandated obligations Domain name tasting is the practice of and speculation in domain names, creating registering domain names during this opportunities for mass registration of five-day grace period, without paying the domain names with little or no attention to registration fee, to generate pay-per-click third party intellectual property rights. advertising revenue. Tens of millions of domain names are temporarily registered Automated bulk registration of on this basis each month, frequently domain names involving trademarks. Registrar collusion The automated bulk registration of is a problem, and enforcement under the domain names for resale or to generate UDRP is virtually impossible. There may pay-per-click revenue poses significant be some prospective good news for problems for trademark owners. Bulk trademark owners, however: ICANN is buyers of domain names (i.e., domainers) considering an annual fee for registrar often pay little or no attention to third- domain name registrations, and Google party intellectual property rights. may introduce technology to exclude However, a number of recent UDRP panel repeatedly tasted domain names from its decisions have held that respondents who lucrative advertising programs. routinely register large numbers of domain names must make reasonable good Conclusion faith efforts to avoid registering names The evolving nature of the DNS is cause that are identical or confusingly similar to for concern for trademark owners. Recent marks held by others. Wilful blindness to developments in the commercialisation of whether such registered domain names the DNS are encouraging serial reflect third-party trademarks may registrations of domain names with little constitute bad faith registration. Whether or no attention to third party intellectual the “wilful blindness” standard articulated property rights, opening doors for a new in these decisions will be applied generation of cybersquatters. UDRP consistently under the UDRP in bulk panels are beginning to address the registration cases remains to be seen. cybersquatting phenomenon associated with domain name speculation, but any Domain name parking precipitous decline in cybersquatting is The use of domain names on pay-per-click unlikely given the sheer volume of parking websites is driving speculative domain registrations and the prevalent behaviour in the domain name use of domain names to generate pay-per- marketplace. The use of domain names click advertising. K consisting of common or dictionary words to generate advertising is permissible under the UDRP, provided the domain names are used in their descriptive or generic sense. Conversely, the deliberate targeting of another’s trademark for profit constitutes bad faith use under the UDRP. www.ipworld.com May 2008 Peru REVIEWREVIEW 9

GUEST CORRESPONDENT José Barreda is partner of Barreda Moller. He is specialised in Intellectual Property Law, Commercial Law, Civil Law and litigation and related arbitration law. He has held post of professor at the Law School of Universidad de Lima and at the school of Universidad Peruana de Ciencias Aplicadas – UPC. José was president of the Interamerican Association of Intellectual Property, ASIPI and member of the International Arbitration Court of the International Chamber of Commerce of Paris, ICC.

Changes and developments to IP in Peru By José Barreda of Barreda Moller, Lima, Peru

eru and the U.S. recently concluded amendment to the obligations as detailed in negotiations on a Free Trade the Community legislation). Agreement (FTA), which should The most important proposals for come into effect as of 1 January amendment are: P2009. Article 16 of the FTA contains • The fourth paragraph and numeral a) of regulations related to Intellectual article 9 of Decision 486 to extend the Property, including obligations to adhere term to claim priority of patent or ratify treaties administered by the applications and utility models to fourteen World Intellectual Property Organization. months, when applicant demonstrates Peru is now working on new IP legislation impossibility of filing the application to abide with the Agreement. within the twelve months period. The This presentation comments on the Secretariat has declared that such amendment first proposal by the Republic of Peru to would imply an obligation of procedural the Secretariat of the Andean character only for those countries, which would Community for amendment of certain allow such extension, suggesting that they will rules of Decision 486 and comments not oppose this proposal. made by the Secretariat to such proposal. • Article 17 of Decision 486 to regulate the All four member countries of the concept of “divulgation of the invention”. Agreement –Bolivia, Ecuador, Colombia, The proposal is that any divulgation will and Peru-, must agree on the changes. not imply loss of novelty when such When proposing the amendments, Peru divulgation has been made, authorised or stated that the Andean Community as a derived from the applicant, deriving from whole and the countries which conform the patent applications filed in another Andean Community have initiated (or country within the last year, which has concluded) commercial negotiations with been published. The Secretariat has stated third countries, individually or jointly. It is that even though this is a substantial therefore necessary to amend Decision 486 amendment, it would not oppose the proposal, to allow the member countries to develop since member countries may maintain the certain areas of the law through internal exceptions to the divulgation as currently legislation, (this not necessarily implying considered in article 17 of Decision 486.

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• Article 19, by the addition of a paragraph consider as licit, without patent violation, the regulating the concept of “industrial manufacturing or use of the patent product for application”, so that all inventions will purpose of conducting clinical evaluations and have industrial application if it possesses studies. The Secretariat states that since there a specific utility, substantial and credible. are no uniform criteria, the countries must The Secretariat has indicated this proposal consider which acts are specifically allowed. only qualifies the concept of “utility” but does • Article 138, to allow filing of multiple-class not eliminate the other requisites of trademark applications. The Secretariat patentability –novelty and inventive level-, reports it has no objection to this proposal. and is not mandatory for all other • Article 155 paragraph d) so to extend a Community countries. right of the trademark holder to object, • The first paragraph of article 28, to based on its registered mark, the use and clarify rules of “clarity and completeness” registration of an identical or similar for the comprehension of the invention, term as denomination of origin. The limiting examiner’s ability to conduct Secretariat suggests that member countries improper or undue experimentation or should seriously evaluate the consequences, perform acts to comprehend or analyse taking into consideration, in any event, that the invention, different to those detailed such amendment should be drafted in terms of in the specification. The Secretariat allowing country members to optionally apply indicated that the concept of “undue such rule since it could affect future owners of experimentation will” have to be clearly terms which are not currently denominations defined so to allow this proposal, and suggests of origin in the Andean Community but can that the Authority is authorised to conduct merit such protection in the future. tests unless this is not justified. • Article 156, to allow the trademark holder • Article 34, to allow inclusion within the to block use of a trademark identifying official files, of material, which has been goods in transit. The Secretariat has indicated inadvertently omitted at the time of filing, that the rule of law can be directly implemented for instance, missing pages in the by each country in its internal legislation. specification or missing designs, without • Article 162, to eliminate mandatory the risk of this new material being recordal of a license agreement. The considered as extension of the invention. Secretariat reports it has no formal The Secretariat has ruled that Peru must objection against this proposal. clarify the concept of “omissions” and the • Article 202, by adding paragraph e), which term to comply with the filing of the corrected would block recognition of an expression material, before considering the proposal. as denomination of origin, if identical or • The inclusion of article 50 A so to allow, similar to trademark applications or through internal legislation, extension of registrations covering identical products or patent rights consequence of unreasonable for those in respect to which the use of the delay in the grant process. The Secretariat denomination of origin could cause a risk General expressed that the proposal must be of confusion. The Secretariat considers that further clarified in order to attribute “the the countries are free to implement this unreasonable delay” to a specific party, and has regulation in its internal legislation. further established that this compromise does not need to be assumed by all member countries. The Secretariat General has commented • Inclusion of article 53 A, limiting the that Decision 486 allows countries to ability of the patent holder to exercise develop internal legislation on matters not rights derived from a patent, when a third detailed in Decision 486. The Secretariat party uses the invention to generate has reported that member countries must necessary information to support the evaluate if the amendments as proposed are petition for approval of a pharmaceutical positive not only in terms of protection of product or agricultural product (Bolar IP rights but if it benefits its citizens. It has Exception). The Secretariat stated there is no therefore stated that political evaluations consensus of the type of acts which a third must be made before a formal meeting for party may conduct, some entities considering amendment of Decision 486. K that clinical evaluations to demonstrate bio- equivalency is permitted as long as the production of the generics is initiated after expiration of patent rights, while others

May 2008 www.ipworld.com 12 REVIEWREVIEW Hungary

OFFICIAL CORRESPONDENT Eva Ulviczki is a candidate of attorney of Sár and Partners Attorneys at Law, a Budapest law firm. She concentrates on the representation of companies and individuals involved in all aspects of trademark law. Eva’s wide experience of trademarks includes infringements, law enforcement, trademark searches and domain names.

Use it or lose it

The evidence of trademark use

Eva Ulviczki of Sar & Partners Attorneys at Law reviews ‘use and fulfilment’ of trademarks in Hungary

he big issue in connection with Section 18 trademarks besides registration is (1) If the proprietor of the trademark does the obligation of trademark use not begin actual use of the trademark and the fulfilment of this in the domestic territory in Tobligation. This articles primary aim is to connection with the goods or services provide a short review on the practice of listed in the specification of goods for the Hungarian Patent Office and which the trademark is registered within Metropolitan Court. a period of five years from the date of Almost every member state of the registration, or if he fails to use the European Union has a use requirement trademark for a period of five regulated by its national law. The consecutive years, the legal countries are also standardised in consequences set forth in this Act providing a grace period of five years for shall be applied to the trademark the start of the trademark use and in protection [namely it cannot serve as a requiring this use to be roughly basis of opposition and revocation and continuous. The national practices of the mark itself may be the subject of a trademark offices and courts with regard proceeding aiming the establishment of to which act and operation shall be termination of trademark protection - considered as the genuine use of the author] unless the proprietor is able to registered trademark and what kind of demonstrate due cause for such failure circumstances are accepted as excuses of to use the trademark. non-fulfillment of this obligation show a (2) In the application of Subsection (1) the colourful picture. Now, we intend to place following shall also be deemed actual under magnifying glass the Hungarian use in the domestic territory: related law enforcement and practice. a) use of the trademark in such a form Section 18 of Act No. XI of 1997 on which only deviates from the the protection of trademarks and registered form of the trademark in geographical indications (further on: elements which do not affect its Trademark Act) incorporates the distinctive nature; trademark use requirement as follows: b) placement of the trademark on

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goods within the country or on In general, there are 15-20 such their packaging exclusively for the proceedings initiated annually, mainly purpose of export. against national trademarks. When the (3) In the application of Subsection (1), use defense of the trademark protection is of the trademark with the consent of based on proving that a certain use by a the proprietor shall be considered as third party shall be accepted as a use by use by the proprietor the trademark owner, license contracts, company register extracts and other It is rather definitive with regards to the written documentations are necessary to nature of the obligation. However, some prove the consent of the trademark phrases of the law act provide wide range holder, as the key point of the of possible interpretations and leaves a applicability of this regulation and then broad field for a legal enforcement further documentations are required adjusted to the specifications of the from this third party certifying the use of relevant trademark matter. In the course the trademark. Obviously, these shall be of implementation, some guidelines have applied if in the course of an opposition been formed at the Hungarian Patent proceeding, the proper use of the Office and at the Hungarian trademark of the opponent is contested. Metropolitan Court bearing jurisdiction The Hungarian Metropolitan Court over trademark cases. decisions are more sophisticated by the actual circumstances in their The Hungarian trademark system adjudications of appealed trademark Generally, prospects, invoices, brand revocation orders or of refusals of products, handouts or advertisements are oppositions based on non-used accepted as proof of use. The number of trademarks of the Hungarian Patent these documents necessary for the Office. The ‘due clause’ condition is successful defense against ‘an accuse’ of handled with more flexibility and not non-use depends on the type of the necessarily required item per item of the trademark and the scope of the list of goods. Moreover, in a recent case protection, meaning the prolixity of the an oral agreement between the parties list of goods. For example if a class accompanied by some e-mail exchanges heading is indicated, evidence for the and joint plans of marketing materials wide variety of the products belonging to was considered to be adequate to support that class of goods or services is deemed that the use of a third party was well founded. Obviously, it is not completed by the consent of the necessarily the great amount of evidence trademark proprietor. submitted but the complexity and The outlined practices of the coherency that must be convincing. Hungarian national authorities do not The Hungarian Patent Office is rather reveal any discrepancies but refer to a strict with the trademark owner who harmonization with the practice of the intends to prove his/her excuses for the OHIM and of the European Court. They failure of the use requirement. The show a path of case-law, which is lined by reason of the non-use shall be carefully a commitment to the defense of and fully evidenced and must form a trademark protections, without being serious and real obstacle for the impartial for the trademark holders and trademark holder regarding the entire being open to involve new market actors list of goods. Revocation on the ground behind same or similar trademarks for of non-use is not a frequent way of the benefit of the circulation of termination of the trademark protection. merchandising. K

www.ipworld.com May 2008 14 REVIEWREVIEW Poland

GUEST CORRESPONDENT Elzbieta• Wilamowska-Maracewicz is a partner and member of the Managing Board of Polservice Patent and Trademark Attorneys Office. Elzbieta• has been a patent attorney since 1975 and is a European patent attorney. A professional attorney before the OHIM, she graduated from the Faculty of Chemical Engineering of Warsaw Technical University. She completed post-graduate studies in industrial property protection at the Faculty of Law and Administration of Poznaƒ University in 1985 and gained two years of professional experience in industry. She has organised and participated in many courses on intellectual property protection. Elzbieta• joined Polservice in1973 and has managed the mechanical department since1988. She is Secretary of the Polish Group of AIPPI and a Member of the National Council of Patent Attorneys at the Polish Chamber of Patent Attorneys. As well as being a member of LESS and UNION.

The Repairs Clause in force in Poland

Elzbieta• Wilamowska-Maracewicz of Polservice Patent and Trademark Attorneys Office debates Poland’s adoption of the so-called Repairs Clause

oland introduced the so-called Repairs Clause concerns all visible Repairs Clause with effect from component parts of devices; 1 November 2007, which liberalises nevertheless it has aroused the greatest the aftermarket in spare parts. Article controversy among the producers of P1061 of the Industrial Property Law automotive spare parts. (IPL), enforced as of 1 November 2007, states that: The debate 1. Protection on the grounds of the right The Clause is likely to increase in registration of a design shall not be competition in the market. It is granted to a product that constitutes a especially beneficial for SMEs that component part of a complex product produce non-original spare parts, and is used for the purpose of repairing whereas it is definitely unfavourable for the product so as to restore its original car manufacturers, who enjoyed the appearance. monopoly resulting from design 2. Third parties may exploit the protection of spare parts. Automotive product referred to in paragraph 1 by concerns and the dependent spare parts way of manufacturing, offering, producers raised a number of marketing, importing, exporting or arguments against this solution. The using the product in which the design monopoly in spare parts production and is contained or applied, or by way of trade, combined with the power to storing such a product for the said dictate prices allowed them to get faster purposes. return on investments made to prepare new models of cars, which seems to be Article 1061 does not exclude the fair and in line with the idea of protection of visible spare parts of a industrial property protection. The complex product, but limits the scope of customers’ point of view, however, is the right granted. different. When the customer buys a The adoption of this legal regulation car, he pays for its good design. He is was preceded by heated debate between free to choose between different models its supporters and opponents. The of car depending on price. With the

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automotive concerns’ monopoly for the insurance rates. Insurers declared to spare parts, the customer has to pay for prepare a diversified offer for the use the same design every time he buys a of original and non-original spare part for his car. Thus, the cost of replacement parts. The consumer will spare parts for old cars is often thus be able to choose between different inadequate when compared with the options. There is a danger, however, value of the car itself. that with the lack of quality and safety An important argument raised by the control of spare parts, neither the producers of authorised spare parts, consumer nor the insurer will be able who were against the Repairs Clause, to assess properly whether a given concerned the quality of spare parts replacement part is compatible with and the resultant impact on the safety the original one. of car users and pedestrians. Original spare parts ensure safe use of cars. Going foward Car manufacturers must obtain official It is too early to assess the impact technical approval for both individual of the adoption of the Repairs Clause component parts and the whole in Poland. Some claim that the decision vehicle and are obliged to carry out to introduce the Repairs Clause in collision tests. Poland was premature, as the European This requirement does not apply regulations do not yet impose such to the majority of independent obligation. During the plenary producers. In Poland, approval must session held on 12 December 2007 be obtained for auto glazing, mirrors, the European Parliament supported external lighting units, and reflective the EC motion to adopt the Clause. elements, whereas there is no obligation Eurodeputies, however, decided to obtain the approval and safety on a transitory solution: Member certificate for the body parts. States whose current legal regulations “There is a danger, however, that with the lack of quality and safety control of spare parts, neither the consumer nor the insurer will be able to assess properly whether a given replacement part is compatible with the original one” The manufacturer or importer of provide for the design protection of a product may voluntarily perform spare parts may maintain this regime safety tests and obtain an appropriate for the period of 5 years after the date certificate; nevertheless this has when the Directive on the Repairs rarely been done so far. The advocates Clause became effective. In addition, the of the Repairs Clause argue that non- European Parliament introduced an original spare parts often come from amendment according to which the same producers as the original consumers must be informed about the ones, the only difference being that origin of spare parts. K the former do not have the producer’s logo and are much cheaper. Yet, the lack of quality marks and the producer’s logo may mean that the price will be the only factor determining the choice of spare parts. Another argument in support of the Clause was the possible reduction in www.ipworld.com May 2008 USA REVIEWREVIEW 17

GUEST CORRESPONDENT Karen H Bromberg is a partner and head of the Intellectual Property Group at Cohen & Gresser LLP, a New York City law firm. Her practice focuses on transactions and disputes involving trademarks, copyrights, and patents. Experienced in all facets of litigation and dispute resolution mechanisms, Ms. Bromberg draws on these skill sets to assist clients in developing global protection strategies, registration and enforcement programs and to maximize and protect their trademarks, trade names, trade dress, copyrights and other intellectual property. She is responsible for the international trademark portfolios for numerous companies in a diverse range of industries.

Designate carefully…

EU applicants for United States trademarks may be forced to testify in United States

Karen H Bromberg of the Intellectual Property Group at Cohen & Gresser, explains the potentially far reaching implications of the Rosenruist case

U applicants for US trademarks company with no employees, offices, or should be aware of a recent decision business activities in the United States, by the United States Court of filed an intent-to-use (ITU) application Appeals for the Fourth Circuit with the PTO and designated its Eholding that a non-US trademark applicant Virginia-based attorney as its domestic can be compelled to testify in the United representative. Virgin Enterprises Ltd. States about matters related to the mark. (Virgin) opposed the registration of Even if the applicant has no other contacts Rosenruist’s mark and served Rosenruist’s with the United States apart from having domestic representative with a notice of filed the trademark application at the US deposition. When Rosenruist refused to Patent and Trademark Office (PTO). The appear for a deposition, Virgin moved to ruling, in Rosenruist-Gestao E Servicos LDA compel Rosenruist’s appearance. However, v. Virgin Enterprises Ltd., 511 F.3d 437 (4th Trademark Trial and Appeal Board (the Cir. 2007), may affect whether, when, and Board) denied the motion to compel, how non-US business entities choose to file noting that the Board’s Manual of trademark applications in the United States. Procedure states that a party residing in a Non-US trademark applicants typically foreign country may be compelled to give designate a person residing in the United testimony only through the procedures States on whom may be served notices or provided in The Hague Convention or via process in proceedings affecting the letters rogatory to the appropriate legal trademark. If no such designation is authority.1 Virgin then served Rosenruist’s made, the Director of Patents and Virginia attorney with a 30 (b)(6) Trademarks, located in Alexandria, deposition subpoena issued by the United Virginia, is deemed by default to be the States District Court for the Eastern applicant’s designee for purposes of District of Virginia. service of process. The District Court refused Rosenruist’s request to quash the Notice of deposition subpoena and subsequently imposed In Rosenruist, the Applicant, Gestao E sanctions against Rosenruist when it Servicos LDA (Rosenruist), a Portuguese failed to attend the scheduled deposition.

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Virgin then filed a motion to compel ITU applications in the United States or Rosenruist to designate a corporate wait until they can file use-based representative to appear at a deposition applications here. Rosenruist is particularly as directed by the subpoena. significant for foreign ITU applicants Notwithstanding its earlier ruling that because such applicants are not using the Rosenruist had been ‘properly served’ mark in the US and may not have any with a valid subpoena, the District Court other contacts that could subject them to determined that it could not require the subpoena power of the US courts. The Rosenruist to produce a corporate case has less significance for use-based designee for the deposition unless that applications, because a foreign company designee “personally” resided within the using a mark in US commerce is more Eastern District of Virginia. likely to have a physical presence in the US Reversing this decision, the Fourth and therefore to be subject to the general Circuit held that the District Court could jurisdiction of the US courts, making the compel the attendance of a representative “contact” question less important. of Rosenruist, and that Rosenruist could If the decision is made to file a not avoid producing a 30 (b)6 witness on trademark application, non-US registrants the basis that none of its potential who might not previously have designated designees were “personally” residing a representative in the US may wish to within the Eastern District of Virginia. select a representative who resides outside Instead, the court held that Rosenruist’s the Fourth Circuit to avoid the contacts within the district were sufficient precedential effect of Rosenruist.3 By the to subject it to the court’s subpoena power. same token, non-US entities that have As the dissenting opinion in Rosenruist already filed US trademark applications noted, this is the first decision to “hold that and/or received their registrations should a foreign company that has no United carefully review their applications or States employees, locations, or business registrations to determine – and consider activities must produce a designee to testify changing – their domestic representative at a deposition in the Eastern District of designations. To conclude: Virginia so long as it has applied for a • If a non-US trademark applicant does trademark registration with a government not designate a US representative to office located there.” Rosenruist, supra, 511 receive notices and service of process, F.3d at 449. Prior to Rosenruist, it was the Director of Patents and unquestioned that where a foreign Trademarks, located in Alexandria, trademark applicant had no US contacts Virginia – in the Fourth Circuit – is other than a domestic representative, an deemed by default to be the applicant’s opposer had to serve process on the designee for purposes of service of applicant only through the international process, and the applicant can therefore procedures of The Hague Convention or be compelled to testify in the United the issuance of letters rogatory to the States under the Rosenruist decision. K appropriate non-US based legal authority. Notes What next? 1. The Trademark Trial and Appeal Board Manuals Whether Rosenruist will be reviewed and of Procedure § 703.01(f)(3) (2d Ed. Rev 2004). reversed by the US Supreme Court and 2. Although Rosenruist is planning to petition for whether other US Courts of Appeals will review in the U.S. Supreme Court, as of the date follow Rosenruist remains to be seen.2 In of this article no petition has yet been filed. the meantime, however, the Rosenruist 3. The Fourth Circuit includes the states of decision is one that all non-US trademark Maryland, Virginia, West Virginia, North Carolina applicants and the firms that act for them and South Carolina. However, because federal should bear in mind when deciding courts located elsewhere potentially could reach whether, when and how to file trademark the same conclusion as the court in Rosenruist, a applications in the United States. designation outside the Fourth Circuit will not As a preliminary matter, non-US entities necessarily ensure that a foreign applicant is free may consider whether they wish to file from the subpoena power of a U.S. federal court.

May 2008 www.ipworld.com From the publishers of:

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