World Trademark Industry Review Awards 2008

On May 20 2008 World Trademark Review announced the winners of its second Industry Awards for in-house trademark counsel at a ceremony in Berlin. The awards are designed to recognize the vitally important work done by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest possible standards. The following pages feature profiles of the winners

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 17 OKA4817 SHE World Trademark Review:OKA4817 SHE World Trademark Review Ad 11/6/08 2:51 PM Page 1

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www.ShelstonIP.com | Sydney | Brisbane | Newcastle Telephone +61 2 9777 1111 | Facsimile +61 2 9241 4666 Asia-Pacific Team of the Year Yamaha

Infringement and counterfeiting in China the senior executive officer and director apology to Yamaha in a motorcycle weigh heavily on the minds of many of Yamaha in Japan. “We hope our lawsuit magazine. global trademark owners these days, but serves as a useful reference to other “We will continue to respond to in 2007 they had the legal department of enterprises confronted with similar infringements of IP rights with a resolute Yamaha Motor Company to thank for trademark infringements.” attitude,” confirms Ohtsubo. Meanwhile, easing their worries a little. In June While it was the size of the damages Jeroen Auping, general counsel of Yamaha China’s Supreme Court awarded the that grabbed the headlines, the way in Motor Europe who collected the award on company Rmb8.3 million (approximately which they were calculated was also behalf of his Asia-Pacific colleagues, said $1.1 million) in an action for infringement notable. According to a court-appointed that his team took inspiration from their of its registered trademarks YAMAHA and auditor’s report, defendant Zhejiang Japanese counterparts. “What is important FUTURE. The result represented a major Huatian had incurred a loss in for a company like Yamaha is that we victory not only for the Japanese manufacturing the 2,113 infringing guard our trademarks properly,” he manufacturer of motorized vehicles, but motorcycles. The court reasoned, however, comments. “Regional head offices are a for all brand owners operating in the that profits may have been transferred to feature of our organization and we aim to burgeoning Chinese market. The damages affiliated companies and decided to guard our IP rights throughout the world.” were the highest amount ever awarded to disregard the report, which was based on a foreign company for trademark incomplete financial information. Instead, infringement, which some took as a sign it accepted Yamaha’s calculation of the of increasing willingness on the part of likely profit made, and also ordered two Other nominees: China’s judges to get tough when it comes distributors of the infringing bikes to Anheuser-Busch to IP enforcement. contribute to part of the damages. The Lacoste “In our opinion, the judgment was a icing on the cake came when all three Lenovo landmark decision,” says Toyoo Ohtsubo, companies were ordered to issue a public LVMH Group

Sean McManis (right) of Shelston IP presents the Asia-Pacific Team of the Year award to Shigeki Hirasawa (centre) and Jeroen Auping of Yamaha

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 19 Stay ahead of your competitors

Strategic use of IP is becoming the most important tool to stay ahead of the competitors. One of the reasons is the increasing amount of companies offering similar products. Zacco is one of the leading intellectual property consultancies in Europe, with eight offices in Scandinavia and Benelux. We achieve measurable results by creating freedom for our clients’ businesses combined with cost-effective and efficient handling of Intellectual Property Rights.

For further information, visit www.zacco.com Europe, Middle East & Africa Team of the Year Philips

For Jef Vandekerckhove, Philips’s vice full range of technology, financial, business depending on the situation. president, value extraction, it is the people and IP perspectives. Teams are put together Philips also cooperates very closely with that make the company’s IP team so on a cross-functional basis, with various other brand owners at the customs successful. “The people we employ are very professionals working in an integrated way procedure level. It has created IP tools which proud to work for Philips and are proud of to help the company realize its business it has distributed to various customs the valuable Philips brand,” he says. “We are goals. The organizational change has authorities across Europe. “Over the past a highly motivated and committed group.” required a significant level of adaptation year or so we have been working with other While the expertise within the company and the process is ongoing. “Everyone rights holders to develop a digital is second to none, it is the organizational involved in the IP side is now generalist in enforcement toolkit,” explains structure of the IP team that makes it stand their approach, which broadens the Vandekerckhove. “It will provide customs out from the crowd. In 2000 Philips merged experience and expertise of Philips’s counsel authorities with important information the IP team with the various standards teams across the board,” says Vandekerckhove. regarding, among other things, the brand to form a department known as Intellectual Philips is as innovative in its approach owners’ goods, shipping routes and shipping Property & Standards (IP&S) – an to dealing with other brand owners as it is schedules. It is for this kind of collaborative independent business unit within the Philips in relation to its internal organization. In and open approach, that Philips’s IP&S team organization. “IP&S looks at IP rights in recent years Philips has developed a is rightly championed by many in the combination, not in isolation,” explains number of collaborative ventures with industry and in private practice. Vandekerckhove. “We have created an other leading rights holders. Producing a international integrated intellectual asset number of highly successful co-branded Other nominees: management system, whereby the traditional products. Philips’s flexible approach BATMark silo structure has been abandoned.” comes in useful in these circumstances as Nestlé When dealing with an IP issue, the IP&S the protection and enforcement strategies Nokia experts look at the overall picture across the for its trademark rights, by necessity, vary Unilever

Tove Graulund of Zacco presents the Europe, Middle East & Africa Team of the Year award to Jef Vandekerckhove of Philips

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 21 Deep roots. Wide perspective.

Congratulations to World Trademark Review Industry Award winner - Petrobras, Latin America Team of the Year

To get world-class advice, you need an instinctively global law firm – Baker & McKenzie.

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www.bakernet.com Latin America Team of the Year Petrobras

Petrobras may have won our award for Latin communications experts to ensure the worth recently when a staff member America, but there is no doubt that its victory company gives the best impression possible. vacationing in the United States came signals global ambitions. Profits at the “This is a challenge,” says Felberg, “because across a car repair workshop that copied Brazilian energy company have increased the size of Petrobras and Brazil make some Petrobras’s corporate logo. sharply during the past few years and brand people wary, and the culture and economies Other problems will require similarly strategy has been stepped up to match. of Latin American countries is very varied.” inventive solutions as the company takes its “Before 2000 most of our business was a These differences extend to the local brands global and registers trademarks monopoly here in Brazil,” comments Eduardo efficacy of trademark protection and anti- in countries which 10 years ago it did not Felberg, Petrobras’s manager of corporate counterfeiting regimes across the region. anticipate entering. Felberg, however, has the image and brands. “We knew we weren’t Nevertheless, Petrobras pursues hard those confidence which comes from working for strong in terms of international protection, who imitate its service station trade dress the third-largest company by market value in so we set out to learn from others and work or fill branded containers with inferior the Americas after ExxonMobil and General with the best people around the world.” product, wherever it finds them. “We have Electric. “We’ve had real success building Based in Rio de Janeiro, Felberg’s 20- to follow this up because it can be very trademark and brand structures around the strong central team handles trademarks and damaging for our reputation,” Felberg world, and this was in great part due to the 4,066 registrations in around 100 countries. observes. “Unfortunately, in some Latin fact that we work well as a team,” he says. Additional team members are located in American countries it’s very common.” Argentina, Bolivia, Colombia, Paraguay, But as Petrobras develops mass Other nominees: Uruguay, the United States, Libya and Japan. visibility further afield it is aware that Coca-Cola Latin America In the first four countries listed, the infringement will likely spread too. To stem Federación Nacional de Cafeteros prevalence of Petrobras petrol stations gives the tide, it has rolled out communications de Colombia the brand a strong presence. In other training to turn all employees into brand Pepsico Latin America countries, the team liaises with local ambassadors – a strategy which proved its Procter & Gamble Latin America

Richard de Marco, Grace Salomão, Juliana Tostes, Fabiana Schneider and Marcelo Curi of Petrobras receive the Latin America Team of the Year award from Alvaro Correa and Esther Flesch of Baker & McKenzie

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 23 Instinctively global.

Congratulations to World Trademark Review Industry Award winner - Google, North America Team of the Year

To get world-class advice, you need an instinctively global law firm – Baker & McKenzie.

We are built to help clients address the We combine an uncompromising commitment to We are able to see risks others often overlook challenges they face with natural ease excellence with fluency – in the way we think, work and opportunities that many miss. At the same and sophistication, whether they operate and behave. We have the ability to help companies time, deep local knowledge and understanding in North America or northern China – or both. navigate sophisticated legal and business issues at means we are skilled at dealing with the home and across practices and borders, bringing subtle nuances in business and culture that the right team and solutions regardless of location. exist everywhere.

www.bakernet.com North America Team of the Year Google

Up until around five-and-half years ago, Google over the past year. “The US Court infringement and dilution, Google did not really have much of a of Appeals for the Second Circuit has and violation of the Anti-cybersquatting trademark department. “When I joined heard arguments and we are awaiting a Consumer Protection Act. Whether there the company at that time, I was the only decision,” notes Hagan. In the District is any justification in the complaint trademark specialist at Google. In fact, Court for the Fifth Circuit American remains to be seen, but it is clear that you could say I was the trademark Airlines has sued Google over its policy Google will fight its corner as vigorously department!” jokes Rose Hagan, Google’s of selling third-party marks as keywords; as it has done in relation to keyword managing counsel for trademarks. She the case is still in the discovery phase at advertising. now manages a team of seven from the present. Meanwhile in Europe, the French Whether defending its trademark company’s headquarters in California. Supreme Court has referred three rights or online advertising policies, While Google actively protects and questions regarding keyword advertising Google continues to play a vital role in enforces its trademark rights, it is third- to the European Court of Justice. making law in a number of important party action against the company that has During 2007 Google also found itself areas. “We are really fortunate to be been the focus of the team’s attention embroiled in a dispute in the United involved in some of the most interesting over the past year. The defence of Google’s States relating to domain name parking cases happening in the region right now,” keyword advertising policy remains a issues. In Vulcan Golf LLC v Google Inc the says Hagan with justified pride. keenly contested area, with litigation in plaintiff, Vulcan Golf, is attacking Google’s the United States and many other policy of providing advertising, which is jurisdictions. hosted on allegedly infringing domainer Other nominees: Some clarity to the law may come in sites. Vulcan maintains that Google is in Apple the near future. In the United States, the position of domain name licensee, E I du Pont de Nemours and Company Google has been staunchly defending its and it is pursuing various claims against Intel position in the appeal of Rescuecom v the search engine, including trademark Levi Strauss

Christopher Aide (right) and Pamela Church (left) of Baker & McKenzie present the North America Team of the Year award to Jackie Lawrence, Tu Tsao, Terri Chen, Rose Hagan and Annabelle DanielVarda of Google

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 25 Grau & Angulo Abogados

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www.gba-ip.com [email protected] Automotive & Aviation Team of the Year Harley-Davidson

A mere glimpse at Harley-Davidson’s best customers. “We try to explain that we Seventh Circuit decision made clear that it is latest annual report is enough to grasp really appreciate their enthusiasm, but it’s not generic for other ventures Harley- just how strong this brand is – and the important that we protect the brand they Davidson may run – such as the Harley unique set of problems that poses for its love so much.” In many cases, initial Owners Group – and is therefore protectable trademark team. On the cover, as you contact is made by someone other than a in those regards. “That was a huge victory for might expect, is a beautiful, colourful lawyer. Last year, the team developed us,” observes Heban, “It can be a difficult representation of the motorcycle internal guidelines for dealing with distinction to grasp for people who do not manufacturer’s logo – but it is not from a potential enthusiast problems and these have a background in trademarks, so we billboard or a bike. Rather, the photo is of suggest initially searching within the drafted our papers very carefully.” a tattoo running from the nape to the company for an employee who may The ardent enthusiasm Harley-Davidson waist of a devoted super-fan. happen to have a relationship with the inspires makes it likely that such challenges “He is obviously one of our group or fan and can explain the problem. will continue – but also that the 12-strong enthusiasts and takes Harley-Davidson “It really facilitates coming to a resolution global trademark team will go on enjoying very seriously,” comments Linda Heban, we can live with that doesn’t offend the success. “We have so many devoted, vice president and chief trademark customer,” says Heban. passionate employees here and they’re all counsel at the Midwest-based company. However, sometimes the team needs to committed to protecting the brand,” Heban “Unfortunately, a number of our other take stronger action and one of the affirms. “It takes it to another level.” fans show their support by starting up highlights of Harley-Davidson’s year was commercial endeavours using our brand.” securing a very favourable US court decision Other nominees: Over the years, Heban and her team with regard to its HOG trademark. While a Adam Opel have developed an educational approach to 1999 US Court of Appeals for the Second BMW handle enthusiast infringers, who Circuit ruling held that ‘hog’ is a generic Honeywell International frequently overlap with the manufacturer’s term for a large motorcycle, the recent Tata

Lori Burke, Nadja Bergen, Blair Gerdes, Nikki Bullock and Linda Heban of Harley-Davidson receive the Automotive & Aviation Team of the Year award from Alejandro Angulo of Grau & Angulo

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 27 Proud sponsor of the World Trademark Review Industry Awards Congratulations to all winners

+44 020 7536 4100 [email protected] www.iprights.com Energy Team of the Year BP

One of only two teams to win an award BP forges ahead with confidence by It has become expert in indentifying two years in a row, BP’s trademark pooling its expertise. A single database fraudsters and shutting down their practitioners make protecting a global collapses distance between its five operations quickly. “We’ve been brand – or rather several global brands – international trademark offices and an increasingly successful in our campaign of look easy. Following a spate of acquisitions Indian anti-counterfeiting team, each able disruption,” comments Boad, something at the turn of the millennium – including to operate in the thick of the action while which has encouraged other brand owners the major American companies Amoco benefiting from centralized resources. The to start tackling the problem. and Arco, the lubricants specialist Castrol result is an operation that fully engages It takes a certain kind of person to and the leading German fuel retailer Aral, all members in achieving the company’s forge new ground and Boad concludes these days BP is about much more than strategic business priorities – and one that another key factor behind his team’s British petroleum. More surprisingly which in Boad’s words “aligns its success is the people comprising it. perhaps is that BP is now one of biggest functions with broader efforts of brand “We look beyond ordinary legal skills to sellers of brewed coffee in the United management and communications”. give us the edge,” he affirms. “Our people Kingdom through its Wild Bean Café – all Over the past year a particularly are likely to find themselves in uncharted of which keeps the proactive trademark important development has been the waters. Their willingness to exhibit team on its toes. team’s pioneering efforts to step up the commercial awareness and to live BP’s “The BP business is an exceptionally fight against fraudulent emails and brand values in ‘going beyond’ is crucial.” exciting client for us,” head of department websites which use reputable brands to Bob Boad enthuses. “We look around and trick ordinary people into handing over Other nominees: ask, where are the precedents, who else cash, providing bank details or phoning ExxonMobil has done this? Often you find yourself on premium rate numbers. The scams range General Electric a lonely path until you raise the interest from false job advertisements to fake Royal Dutch Shell of others.” lotteries, but BP refuses to be daunted. Total

Bob Boad and Niki Armstrong of BP receive the Energy Team of the Year award from Rupert Ross-MacDonald of Rouse & Co International

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 29

Entertainment & Media Team of the Year Viacom

Viacom’s businesses span television, film, pre-broadcast review and general IP good relationship with the business side digital media and a wide variety of related advice for MTVN. Marks related to of the company is another key factor. “It’s merchandise. Its world-renowned brands Nickelodeon (eg, SPONGEBOB very easy to be over or under-inclusive in include MTV, NICKELODEON and COMEDY SQUAREPANTS) are particularly our work, so we need to make sure we CENTRAL, and the company owns and susceptible to counterfeiting, with Asia (in know the needs of the different business operates more than 160 television particularly China) and Latin America teams,” Lawrence-Dillon explains. This channels and 330 websites worldwide. being the most problematic regions. “But requires continuous effort, especially as Laurie Lawrence-Dillon, vice president, this is not limited to these regions; the there is a relatively high turnover of staff intellectual property for MTV Networks problem is really a worldwide one,” on the business side. “For every step we (MTVN), said that the team was very Lawrence-Dillon adds. take forward, it feels like we take one excited to have won the award. “It’s such MTVN’s IP work is divided back,” Lawrence-Dillon says. “We need to an honour, especially as the competition internationally and domestically; one make sure we’re known to our business is also very deserving,” she declared. team handles US prosecution, clearance colleagues. Winning the award will help MTVN’s IP and litigation department and enforcement, and another does the keep the IP team on the corporate map.” is headed by Michelena Hallie, senior vice same internationally. Thanks to the president and deputy general counsel, team’s thorough screening process, litigation and intellectual property. The few opposition and litigation actions 19-strong department, made up of are filed against MTVN. lawyers, IP professionals and support Hallie can take a lot of credit for the Other nominees: staff, manages a portfolio of around team’s success, as she provides “all the Apple 20,000 active trademarks for a host of elements the team needs”. But the team News Corp television channels, websites and related also has “unbelievable knowledge” and TimeWarner consumer products, as well as litigation, takes “immense pride” in its work. A very The Walt Disney Company

Laurie Lawrence-Dillon, Amanda Charter and Michelena Hallie accept on behalf of Viacom the Entertainment & Media Team of the Year award from Bruce Alexander of Boult Wade Tennant

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 31

Fashion & Luxury Team of the Year adidas

It is possible that one or two finely plucked “It’s good to win cases,” he says with counsel with the most appropriate eyebrows were raised at the victory of sports admirable understatement. “Our results experience for a particular issue, while giant adidas in this year’s fiercely speak a lot about what we do.” Behean says that respect for expertise within competitive fashionista category. Yet while At present the range of that activity the adidas group has created a balanced and the group’s IP department is relatively sees a team of 38 people managing a unified in-house team. The acquisition of small, it is also extremely active – and few portfolio of about 9,000 marks, Reebok in 2006 added an extra level of brands of any kind have rivalled it over the conducting 820 oppositions, researching complexity – together with a lot of new past year when it comes to achieving results. over 14,000 names for clearance and marks, patents and people – but there is In particular, two recent court triumphs conducting anti-counterfeiting obvious synergy between the brands, and in Europe and the United States have been programmes in 70 countries – leading to Behean observes that subsidiary and parent akin to winning Olympic and World the seizure of over 7 million counterfeit are now “well aligned”. Nevertheless, he Championship golds back to back. In April products annually. The team instigates expects that organic growth will continue to the European Court of Justice strengthened around 100 or so anti-counterfeiting raids present challenges as the group expands adidas’s three-stripe mark, perhaps finally in China alone every month. Behean further in territories with strong laying to rest the old argument that because stresses that the department’s success is counterfeiting cultures and weak the logo comprises stripes it cannot enjoy facilitated by a supportive board, willing to enforcement regimes. “We’re not going to full protection. Then in May a US court found resource a big-picture IP strategy. take our foot off the pedal,” he concludes. that a rival shoemaker had violated adidas’s “Brand protection is not just a question signature mark with two and four-stripe of winning or sometimes losing cases,” he Other nominees: designs. The jury awarded adidas $304.6 explains. “Long-term planning is very Gucci million – a figure which associate general important. Working with quality people is LVMH Group counsel Tim Behean believes may be the also essential.” Nike largest ever award in a US trademark dispute. Much effort goes into selecting outside Richemont

Andreas Lubberger of Lubberger Lehment accepts the Fashion & Luxury Team of the Year award on behalf of Tim Behean of adidas

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 33 The business magazine about maximising IP value

IAM magazine is, in my opinion, the premier magazine in the space of managing intellectual assets for value creation. It brings a fresh business-driven perspective, rather than a purely legal perspective, on this issue. I would highly recommend it to anyone dealing with how to manage and drive value from intellectual assets. David A VandenEinde Senior Intellectual Asset Manager Cargill Incorporated

Global superstars It’s time Why chief IP officers think more companies should appoint people like them The world’s strongest and most valuable brands revealed Meet the collaboration challenge • Why we need an intangibles capitals market Why Microsoft says it is time to make peace • Inside the great patent quality debate The win-win case for spinning out IP • Financing innovation in the developing world Being a charter subscriber Kimberly-Clark’s recipe for intangible success • Software and business method protection revisited How gaming leads to better strategic planning How KSR is reshaping Federal Circuit decisions of IAM, I have found useful articles How KSR is reshaping Federal Circuit decisions in every issue from the beginning. I like the variety in the subject Intellectual property and other types Subscribers to IAM include: matter and the depth at which of intellectual asset are now of major 3M; ABB; Air Liquide; AstraZeneca; AT&T; most articles explore. Your ability importance to companies. Intellectual Avaya; BASF; Bayer; Boeing; BorgWarner; to attract the best practitioners Asset Management (IAM) is the first Boston Scientific; BP; BT; Chevron; of IAM to submit articles keeps magazine specifically designed as a Commerzbank; Deere & Company; the quality and usefulness of your single source of IP information for senior Deloitte; Deutsche Bank; Dorsey & publication at a consistently decision makers in companies, as well as Whitney; Dow Chemical; DuPont; EADS; for investors and analysts. Ericsson; France Telecom; General Electric; high level. Halliburton; Harness, Dickey & Pierce; A combination of news, case studies, Bruce Story Herbert Smith; Honda; Honeywell; IBM; ICI; interviews, profiles, feature articles and Senior Director, Intellectual Capital Intel; Jones Day; Kenyon & Kenyon; Kodak; data, IAM ensures that its readers are Performance Businesses KPMG; Kraft Foods; L’Oreal; Marks & always at the cutting edge of the latest The Dow Chemical Company Clerk; Microsoft; Motorola; Nestlé; NIKE; thinking and therefore best placed to Nissan; Nokia; O’Melveny & Myers; Philips; make the right decisions about IP. Pirelli; PricewaterhouseCoopers; Renault; IAM is an excellent publication IAM is designed for: Rouse & Co; Royal Bank of Scotland; Shell; for helping with the management • General counsel, IP counsel, Simmons & Simmons; Sterne Kessler of an intellectual property patent counsel, trademark counsel Goldstein & Fox; Swiss Re; Syngenta; portfolio. There is always one • CFOs, CTOs, CIOs, CEOs Taylor Wessing; TD Bank; Telstra; Tetra Pak; Thomson; TOTAL; UBS; Unilever; UPS. article in each issue, and often (or equivalent positions) at more, which is relevant to our IP-owning companies For subscription details or to request a current business situation. • Lawyers in private practice free trial, visit www.iam-magazine.com, call Alan Mowat on +44 20 7234 0606 or • Fund managers, brokers, analysts, Paul Johnston email [email protected] Group Trade Mark Counsel heads of research at investment banks, ICI Group Intellectual Property venture capitalists www.iam-magazine.com Financial Services Team of the Year MasterCard

MasterCard may have won our award for claims and lawsuits against everyone from edges to build the widest scope of legal financial services, but senior vice pornographers to major US media players, protection possible.” Innovations such as the president and associate general counsel such as HBO and NBC. “We tried to get MasterCard PAYPASS service – enabling small Colm Dobbyn prefers to characterize his across clearly that we were very protective payments to be made simply by tapping team’s field of operations differently. of the intellectual property in our ad your card on a point-of-sale terminal – “We’re really a consumer product brand,” campaign,” recalls Dobbyn. “As a result, ensure new challenges await. Equally he explains. “While many financial service misuse dropped off very quickly.” significant, however, was the 2006 addition brands are local, there are more than 900 With MasterCard now securing over of an extra circle to the firm’s corporate logo. million MasterCard cards and over 25 half of its revenue from outside the United This required a worldwide filing campaign, million merchant locations across the States, clearance and enforcement efforts but also strengthened the famous world that accept MasterCard. That makes increasingly focus overseas. Dobbyn and interlocking circles marks of MasterCard, our brand instantly recognizable.” his team of three trademark paralegals Maestro and Cirrus by pushing for exclusive One way that MasterCard, associated manage a portfolio of over 15,000 marks, rights for three circles as well as two. debit brand Maestro and ATM access mark working closely with counsel on the “A lot of trademark work is done down CIRRUS have acquired such strong ground in the company’s regional offices. in the trenches,” concludes Dobbyn, “but it presence has been through a tough Meanwhile, the IP team has made domain is work you have to do to prevent your approach to enforcement. The wisdom of name enforcement a priority, and rights being chipped away.” this strategy was evidenced 10 years ago continues to be intimately involved in new when MasterCard launched an advertising global service and marketing programmes. Other nominees: campaign featuring the now well- “My job is to protect our brand and Allianz established PRICELESS mark. Almost enhance its value,” affirms Dobbyn. “Our Citigroup immediately others tried to copy it, marks are fairly mature and a lot of what GE Financial Services leading the corporation diligently to bring we’re doing now is protecting around the UBS

Jean-Frédéric Gaultier of Clifford Chance accepts the Financial Services Team of the Year award on behalf of Crystal Howard of MasterCard

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 35 Trust us with your brand

Lovells congratulates Anheuser-Busch on winning the World Trademark Review Food and Beverages Industry Award.

Lovells has been protecting the brands of food and drink clients for over 100 years. The firm has over 200 trade mark practitioners, including over 160 qualified lawyers, in 14 jurisdictions across Europe, Asia and the US. We act for some of the world’s best-known brand owners in a wide range of areas including financial services, computers and telecommunications, fashion, cosmetics and fragrances, food and drink, consumer goods, toys, pharmaceuticals and the motor industry.

Through our network of offices in all of the world’s major economic centres we provide:

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If you would like further information, please contact: Burkhart Goebel on +34 (91) 3498-256 or David Latham on +44 (20) 7296 5696

For further information on our trade marks practice, please visit our website at www.lovells.com

Lovells LLP and its affiliated businesses have offices in: $OLFDQWH $PVWHUGDP %HLMLQJ %UXVVHOV &KLFDJR 'XEDL 'XVVHOGRUI )UDQNIXUW +DPEXUJ +R&KL0LQK&LW\ +RQJ.RQJ /RQGRQ 0DGULG 0LODQ 0RVFRZ 0XQLFK 1HZ

As a party to one of the longest-running and screened for potential trademark Anheuser-Busch’s hard-line approach has most extensively litigated IP rights battles infringement prior to the incorporation of proved to be incredibly effective. in history, Anheuser-Busch is never far from the company. This has led to the In addition to protecting and the spotlight within the wider trademark registration of numerous shadow maintaining its portfolio of around 5,800 community. “We have made further companies that use well-known brands in trademark registrations, Anheuser-Busch’s progress in the last year in our ongoing their names. The shadow companies then IP section has also been dealing with dispute with the Czech brewer Budějovický license use of the name to businesses in internal challenges in recent times. Budvar,” explains Frank Hellwig, the head of China, which produce various types of Mounting pressure to cut costs is Anheuser-Busch’s IP section for the past 12 infringing goods. If the Chinese entities something that is affecting many brand years. “The main battleground is in Europe are subjected to a raid, they can produce owners, including Anheuser-Busch. and so far we have the right to use the the licences from the Hong Kong “We’ve tried to be creative in reducing marks BUD or BUDWEISER in 22 of the 27 EU companies as a defence. Often, this would our costs and ensuring that the section member states.” prove sufficient to put the Chinese is as streamlined as possible,” explains However, it is not just Anheuser-Busch’s authorities off the scent or, at best, delay Hellwig. “For example, we’ve brought a lot activities in Europe that have caught the further action. more work in-house, which has proved to attention of practitioners during the past “Around two years ago this was a be highly successful for us and the year. It also won a significant victory significant problem for us,” explains company as a whole.” against a number of so-called shadow Hellwig. “A number of shadow companies companies in Hong Kong – a case that is were using our marks in their names. Other nominees: likely to have significance for other brand However, during the past couple of years Cadbury Schweppes owners facing similar issues in the region. we have been very aggressive in our pursuit Coca-Cola Under Hong Kong law there is no of these companies and we have managed Diageo requirement for company names to be to have all the infringing names changed.” Nestlé

Cindy McKeehan, Scott Miller and Frank Hellwig of Anheuser-Busch receive the Food & Beverages Team of the Year award from Burkhart Goebel of Lovells

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 37

Household & Electronics Team of the Year Apple

“When I first joined Apple almost 10 years Apple’s small team of five attorneys and the terms of a settlement agreement ago it was primarily a computer hardware two paralegals runs fairly lean. negotiated in the early 1990s, Apple Corps and software company,” recalls Tom La While many in-house teams have filed suit against Apple in the United Perle, senior IP counsel at Apple. A lot has heavy workloads, they do not tend to be Kingdom and the United States. Following changed since then. In that time Apple under the same level of scrutiny as a decision from the UK court in favour of has introduced the iPod and has become Apple’s trademark department. This the US company, the two sides agreed a the number one distributor of music in scrutiny comes not just from competitors settlement last year. “It’s fair to say that the United States. Its retail business has and the press, but also from the legions of the dispute between Apple and Apple evolved beyond all recognition and brings Apple fans. “People watch all of our filings Corps has been ‘settled’ on a number of in several billions of dollars in revenue to try to second-guess our next move,” other occasions,” acknowledges La Perle. each year. Added to this, Apple took the says La Perle. “We often rely on priority “But I think this time we have genuinely mobile communications industry by claims and very rarely file our first resolved the issue. This and the positive storm last year with the launch of its applications in the United States or other outcome to the negotiations with Cisco iPhone product. jurisdictions with publicly accessible over the iPHONE mark were among the With so much going on things tend to trademark databases.” significant results for us last year.” change very quickly and the trademark Apple also tries to avoid the limelight department has to work exceptionally when it comes to litigation. However, hard to keep pace. The scope of the things do not get much more high profile company’s products and services, which than a protracted dispute with a record Other nominees: continues to expand in terms of variety label founded by the Beatles – a case that Beiersdorf and geography, is almost unparalleled. was successfully settled in 2007. Nokia But considering the size of the portfolio Claiming that Apple’s use of the APPLE Philips and the amount of work carried out, logo for online music services breached Procter & Gamble

Georges Nahitchevansky (left) and Chris Woods (right) of Kilpatrick Stockton present the Household & Electronics Team of the Year award to Tom La Perle of Apple (centre)

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 39

Internet Team of the Year eBay

When Mike Yaghmai was recruited as head time and prioritize our matters effectively.” A great relationship with outside of eBay’s trademark department two years Yaghmai states that eBay is very counsel – with eBay since the very early ago, his interviewers left him under no diligent about protecting its IP assets. days – has been another key ingredient in illusions as to the pace of the work. “They For example, “using ‘bay’ as a generic the success of eBay’s enforcement strategy. told me it was like drinking out of a term for online marketplaces is Nevertheless, he hopes one day to grow firehose,” recalls Yaghmai. “There’s so much something we simply do not tolerate,” the internal team too. “Winning the award coming at you at once that you just try to explains Yaghmai, “as the term ‘bay’ had is almost a double-edged sword,” he get as much in your mouth as possible. no relation with, and was not used for, observes wryly. “On the one hand, it’s great That’s actually been very accurate!” online marketplaces before eBay adopted to have the recognition. On the other, we But while joining eBay from private its name in 1995.” In November 2007 the can always use more headcount and I don’t practice may have been a baptism by US Court of Appeals for the Ninth Circuit want our management to think that the deluge, it has certainly had its rewards. sided with eBay in its battle against trademark team is operating nicely as it is Based in San Jose, California, Yaghmai and perfumebay.com, providing eBay with a so let’s not disturb things!” his team of three paralegals manage a victory it has since relied on in other portfolio that includes not only traditional ‘generic plus bay’ disputes. eBay marks, but also those of associated With that said, Yaghmai maintains that properties, including PayPal, Kijiji, eBay generally prefers to resolve matters StubHub, StumbleUpon and MarketPlaats, amicably. The online auction site’s among others. “We truly are a central substantial customer base means that in Other nominees: function that supports the business many instances infringers are also eBay Amazon globally,” comments Yaghmai, who users – enabling the relationship between Google characterizes his team as small but the parties to be leveraged to encourage an Microsoft effective. “We maximize the value of our amicable solution. TimeWarner

Mike Yaghmai (centre) and Dan Dougherty of eBay receive the Internet Team of the Year Award from Isabel Davies of CMS

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 41 [ WHAT’S IN A NAME? ]

BRAND OWNERSHIPIP

IP. Trademarks are often the most valuable asset associated with a new brand in virtually every business sector. Just ask the trademark law attorneys at Fitzpatrick.

At Fitzpatrick, we respect and value the exceptional talents and ingenuity of our clients, and applaud the impact their vision has on business. It is a great pleasure to congratulate GlaxoSmithKline – winner of the 2008 World Trademark Review Industry Award for Pharmaceuticals Team of the Year – and those on the shortlist for this honor. Their creativity and high standards continue to inspire us all.

www.fi tzpatrickcella.com NEW YORK WASHINGTON CALIFORNIA 30 Rockefeller Plaza 975 F Street, NW 650 Town Center Drive, Suite 1600 New York, NY 10112-3800 Washington, DC 20004-1405 Costa Mesa, CA 92626-7130 212.218.2100 202.530.1010 714.540.8700

1031_Fitz_WTR 1 6/13/08 9:30:22 AM Pharmaceuticals Team of the Year GlaxoSmithKline

“Winning this award for the second time department that we managed to function discovered fake toothpaste containing running is just fabulous!” declared Scott seamlessly with these changes.” dangerous ingredients, enabling the Thompson, acting vice president of The team has remained strong on both trademark team to have it removed from trademarks at GlaxoSmithKline (GSK). transactional and enforcement matters, several Latin American markets promptly. “I am very proud indeed of the team’s which are handled mainly in-house. On the In addition, the team has continued dedication and accomplishments.” transactional side, the team assisted in 2007 to work around the difficulties specific to These are not empty words. In 2007 the in a number of acquisitions worth hundreds pharmaceutical trademark registration. team managed to operate at the same high of millions of dollars (eg, the purchase of “When we face an adamant refusal by a level as in previous years despite being Reliant Pharmaceuticals and Sirtris Pharma, regulatory body, we have to be prepared short-staffed (several key players were on among others). Counterfeiting remains the with back-up names to go forward without maternity leave), and the fact that main problem for GSK in terms of any delays,” Thompson explains. Thompson himself, who had restructured enforcement, but global anti-counterfeiting With his departure now imminent, the team to great effect when he joined coordinator David Butler has carried on the Thompson thinks his successor’s main three years ago, announced his departure good work, backed by the rest of the priority will be to continue to draw upon from the company on September 1 2007. trademark team and corporate security the talent that the team has. “It is an Since then, Thompson has continued “without which we couldn’t do our job outstanding team of individuals,” working for GSK (his replacement – Sophie properly”, Thompson adds. For instance, it Thompson comments. Bodet from Sanofi-Aventis – will take over was GSK’s trademark attorneys and on September 1 2008) while starting a new paralegals who spotted the knock-offs of the Other nominees: job as a partner at Greenberg Traurig LLP. ALLI diet pills as soon as the genuine Bayer “This is a unique situation, as far as I product was launched – which enabled the Johnson & Johnson know,” admits Thompson, before adding: trademark team to stop the infringement Pfizer “It is an enormous credit to the straight away; it was the security team that Sanofi-Aventis

Pasquale Razzano (right) of Fitzpatrick Cella Harper & Scinto presents the Pharmaceuticals Team of the Year award to Emma Stopford (centre), David Butler and Sarah Jeffery of GlaxoSmithKline

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 43 UNLOCKING THE POWER OF IP™

“ )LHOG)LVKHU:DWHUKRXVHKDVWKHGH¿QLWLYH7UDGH0DUN3UDFWLFH ” The Legal 500, The Clients’ Guide to the Legal Profession

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Contacts

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%HOJLXP)UDQFH*HUPDQ\8. In-house Counsel of the Year Bruce Proctor, Diageo

“Doing a good job is a lot easier when you decision was to bring trademark registry both brand groups and regions. So, for have an excellent team behind you,” Bruce matters in-house. “This enabled us to instance, the senior lawyer responsible Proctor of Diageo declared upon receiving make significant savings and improve for all vodka brands, based in Connecticut, his award for In-house Counsel of the Year. quality. The 46-strong team is based in works as a centre of excellence for all But it is clearly Proctor’s leadership London, Norwark (Connecticut), Miami vodka brand matters, but also for all that enables his team to perform to the (for Latin America), Shanghai, India and North American IP matters. Meanwhile, highest standards. “Although I get Australia, and handles all Diageo’s IP more lawyers have been sent to regional involved in day-to-day business issues, as issues (trademarks, copyrights, patents offices to provide real-time support to the well as high-level strategic issues, like and advertising and marketing law). marketing and business teams on the M&A and litigation, my job is primarily to Cohesion is ensured by a leadership team ground. “Ultimately, we see ourselves as motivate the team, make sure they are of six senior lawyers, including a technical business executives, not just lawyers – happy to get up every morning and come IP lawyer, plus an administrative manager. especially given our unique vantage point to work,” he explains. Being a good Until last year the team was primarily in the business and the number of issues technical lawyer is only half of the skill set brand focused (managing a portfolio of we get involved with,” Proctor explains. required. “I’m expected to create and run 30,000 registrations, including brands This philosophy may well be the key a team of super-engaged people who are such as Bailey's, Johnnie Walker and to Proctor’s (and his team’s) success. not satisfied with simply being good Guinness). Then Proctor and his lawyers, paralegals or secretaries; they leadership team realized that as the need to be enthusiastic members of this company’s greatest growth would come Other nominees: business – that’s what produces real regionally, from markets such as Brazil, Jean-Pierre Maeder, Nestlé business results.” Russia, India, China, Mexico and Africa, it Rhonda Steele, Mars And Proctor has achieved just that made sense to provide greater regional Rose Hagan, Google during his six years at Diageo. His first focus. Most team leaders are in charge of Toe Su Aung, BATMark

Bruce Proctor (left) of Diageo receives the In-house Counsel of the Year award from John Olsen of Field Fisher Waterhouse

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 45 At the IAM website you can: Read the contents of the latest issue Search and read articles from previous issues Update your account details Renew your subscription And don’t forget to read the editor’s blog – a different slant on breaking IP news stories Lifetime Achievement Dee Ann Weldon-Wilson, ExxonMobil

The irrepressible Dee Ann Weldon-Wilson by the public service imperative of continues to evolve,” she comments was surprised to find herself “totally practitioners to protect “not only “and trademark law and practice, as well speechless” when first informed that she property, but the consumer and the as individuals, must evolve to meet the had won our Lifetime Achievement award, marketplace”. needs and challenges presented by the but there is no doubt that a long career of Weldon-Wilson’s tireless service with changes.” spirited advocacy on behalf of the the International Trademark Association The importance of Weldon-Wilson’s trademark profession has made her a (INTA) has helped to develop the many public achievements is clear, but truly deserving winner. trademark practice both internally and in equally noteworthy is her infectious “Any accomplishments I make are wider society. As INTA president in 2007 enthusiasm, which proves an inspiration through my great love and appreciation she established a Long Range Planning to those fortunate enough to work with of trademarks and their role, and of the Group to examine how INTA might her closely. Her dedication to mentoring trademark community,” she later told the position itself in the next 15 to 20 years to the trademark profession’s leaders of assembled crowd at her acceptance ensure it remains relevant and valuable to tomorrow is well known, and she has speech. “How wonderful to receive an its members. She also emphasized the acquired a wealth of advice to pass on. award for doing something you love.” importance of helping the development “In my career so far I’ve learnt that An alumnus of Vanderbilt University of trademark protection in emerging embracing change is important, School of Law, Weldon-Wilson first worked markets such as Brazil, Russia, India teamwork is essential, leadership matters in-house at The Southland Corporation and China, which collectively represent and the ability to listen to viewpoints (now 7-Eleven) before becoming nearly half of the world’s consumers. remains very important,” Weldon-Wilson trademark counsel at ExxonMobil. Furthermore, a key aspect of her observes. “I believe that working with one She remains passionate about the leadership has been to raise awareness of another in productive and respectful ways importance of teamwork and leadership the possible impact of global trends and will continue to be a hallmark of the to the profession, and is equally enthused technological innovations. “The world trademark bar.”

Dee Ann Weldon-Wilson of ExxonMobil accepts the Lifetime Achievement award from Jerome Gilson of Brinks Hofer Gilson & Lione

www.WorldTrademarkReview.com July/August 2008 World Trademark Review 47