Industry Awards 2013

On May 7 2013, WTR announced the winners of its seventh Industry Awards at an exclusive ceremony at the stunning Belo Mansion in the heart of the Dallas Arts District. The awards are designed to recognise the vital work carried out by in-house trademark counsel, and identify the teams and individuals that are performing their functions to the highest possible standards. Over the following pages we speak to the winners and explain why they were judged to be leading examples of industry best practice.

www.WorldTrademarkReview.com August/September 2013 World Trademark Review 25

In-house Counsel of the Year Thomas La Perle – Apple

Protecting the world’s most impressive knowledge of the law valuable brand (as revealed in in many jurisdictions, but also a WTR issue 42) is no easy feat. complete understanding of the Every move is scrutinised business and public relations and any trademark tussle implications of legal action”. quickly attracts widespread Such is the appeal of the media attention. A number of Apple brand that it demands qualities are required for this protection that goes far beyond most demanding of briefs – the usual. For example, in pragmatism, coolness under January, after almost three pressure, a keen commercial years of effort, the company outlook, astute legal expertise, secured service mark protection responsiveness, innovative for its retail store design. “The problem-solving abilities and, store features a clear glass of course, a sense of humour. storefront surrounded by a These are all qualities that panelled facade consisting of numerous nominators for large, rectangular horizontal Thomas La Perle identified as panels over the top of the glass central to his success. front, and two narrower panels The past 12 months have not stacked on either side of the been plain sailing for Apple: its storefront. Within the store, high-profile spat with Proview rectangular recessed lighting Shenzen over the IPAD mark units traverse the length of the in China cost it nearly $60 store’s ceiling… The walls, floors, million to resolve and made lighting and other fixtures headlines across the globe. But appear in dotted lines and La Perle has navigated these are not claimed as individual challenges with a steady hand, features of the mark; however, as one nominator noted: “La the placement of the various Perle manages an excellent items are considered to be part team which is faced with many of the overall mark.” (For more big conflicts all around the on store design protection, see world, successfully defending page 87.) Thomas La Perle (Apple) receives his award from John Olsen (Edwards Apple’s valuable trademarks It also necessitates a cutting- Wildman) in a professional manner.” As a edge approach – whether that result of his efforts, “the team’s be in terms of embracing the members not only have an new generic top-level domain his ability to think across WTR did not obtain reaction expansion by applying for the borders of the various from La Perle after the awards a ‘.brand’ or adapting intellectual property rights. ceremony so this profile is offerings to reflect This interdisciplinary scheme based on only those elements of the changing of thinking allows him to the nominations which do not technological resolve even complex legal breach the confidentiality of environment. questions and avoid potentially individual nominators. Despite his problematic areas.” lengthy tenure Another concluded: Other nominees: (almost 15 years) “Looking after the iconic Apple Lesley Skipp – Billabong at Apple, La logo and name, and ensuring International Perle won praise that it is globally protected, is a Thomas Kingsbury – for his effortless huge undertaking and directly Bridgestone Corporation adaptability. in the public gaze. Today, no Sophie Bodet – One nominator brand is more significant in GlaxoSmithKline stated: “What is people’s lives and consciousness Terri Chen – Google worth stressing than the Apple brand. Across all is not only his generations, it has real meaning knowledgeable and importance. Thomas has approach been an integral part of that vis-à-vis development – leading the unprecedented trademark group since 1998 – scenarios and, as and that is a feat that is worthy a consequence, of recognition.” ‘new’ legal Following Apple’s position issues, but also of centralising media liaison, www.WorldTrademarkReview.com August/September 2013 World Trademark Review 27 Leading global IP firm

Proud sponsor of the World Trademark Review Industry Awards

Congratulations to all winners!

[email protected] | www.rouse.com

Rouse - WTR Industry Awards 2013 - WTR44 June2013.indd 1 11/06/2013 11:48:38 Asia-Pacific Team of the Year Leading global IP firm Billabong International

It has been an eventful of the ‘basic’ mark, we may 12 months at Billabong apply for an international International: among other application. We are wary of things, the surf clothing the five-year dependency rule, company has been the subject so we wouldn’t risk it if the of intense takeover speculation mark was not strong or past a and implemented a wholesale dependency period.” internal restructuring. In the The team has further face of such challenges, the streamlined its operations ability to keep calm and carry on through a sophisticated “in- is a vital asset – and one which house database designed for the company’s trademark team our specific needs – not an off- fortunately boasts in spades. the-shelf package”. The system Global IP manager Lesley “tracks each and every matter Skipp explains: “The Billabong which the team is handling and Group has undergone some is capable of setting general significant internal changes and reminders, deadlines and has also been a takeover target follow-ups. It enables us to be for several different groups an almost ‘paperless’ office, over the last year. This means and we scan all trademark extra work from a due diligence registration certificates and perspective and uncertainty for renewals etc into the system. the team. However, we all love With this, we can provide other what we do here at Billabong – business units anywhere in the we have a great suite of brands world, and/or the board, with and committed, creative people.” detailed reports on the status The Billabong Group is of our IP by brand, by country, headquartered in Queensland, by licensee, by class and so where it was established in 1973 on, at the push of a button. by founder and current board We can also forward PDFs of member Gordon Merchant. our trademark registration Today, it encompasses 12 brands certificates easily whenever and accounts for approximately requested. We upload Nick Redfearn (Rouse) presents Lesley Skipp (Billabong International) 3,000 trademarks and 45 patents. and record all settlement with the award Skipp manages a lean agreements, so that everything team of three (one senior IP related is centrally located, IP administrator and two IP and we are not reliant on any is encouraging. The marketing concludes: “This has been a assistants), with the trademark external counsel to provide department is also helpful and great morale boost for myself and patent work split by us with this information. We generally keeps us apprised and my team during a difficult brand. For such a small unit, believe we achieve significant of new developments, and the year for the Billabong Group.” precision organisation and cost savings due to this board has been very keen to cost efficiency are key focuses. bespoke database”. understand more about how IP Other nominees: Skipp explains: “To preserve For Skipp, further factors is managed at Billabong.” Banco De Oro costs, we do our own searches behind the team’s success When asked what keeps the Burberry Group in as many countries as we include “ensuring that we have team functioning so smoothly Nike would be interested in filing dependent, reliable external against such a changeable Philip Morris in prior to filing. We generally counsel and a good relationship corporate backdrop, the file in Australia first, then file with them”, and “building strong response is immediate: “As convention applications based relationships internally to mentioned, we love what we on our Australian application. assist with evidence collection do. IP work is very challenging, This enables us to spread the and keeping on top of what’s yet very rewarding, and the job costs and also anticipate any happening with the brands”. scope is great – it enables us to problems we may encounter “We have been working to build relationships with people Proud sponsor of the with the trademark office, while build stronger relationships from all over the world and gain retaining the all-important with other departments within knowledge about many other priority date. Additionally, we the business,” she elaborates. countries and their practices. As World Trademark Review Industry Awards have a strong presence in the “In particular, we provide one of my team has said, ‘I travel US, and this strategy alleviates training and tools for our the world every day, minus the the problem of having to ‘use designers on trademark use and frequent flyer points.’” your mark in commerce’ prior copyright, and to respect the IP And recognition for their Congratulations to all winners! to gaining a registration in the owned by others. They welcome achievements should only US. Depending on the strength our help and support, which motivate them further, as Skipp [email protected] | www.rouse.com www.WorldTrademarkReview.com August/September 2013 World Trademark Review 29

Rouse - WTR Industry Awards 2013 - WTR44 June2013.indd 1 11/06/2013 11:48:38 ŽIVKO MIJATOVIĆ & PARTNERS LAW OFFICE - INTELLECTUAL PROPERTY CONSULTANTS Unique Service in the region.

• 12 Of�icesBalkans in 11 EuropeanCentral Europecountries. • Our network covers the countries of the and

Our network covers the protectionWe ofwere Community voted Trademarks (CTM)because and provides full IP service in the countries of theclient Balkans, Central care and Easterncomes Europe, namely:�irst Albania, Bosnia and Herzegovina, Bulgaria, Croatia, Czech Republic, Hungary, Kosovo*, Macedonia, Montenegro, Romania, Serbia, Slovak Republic, Slovenia, Spain (CTM)

Main Ofﬁces for Correspondence

Serbia Postal Address: P.O. Box 526, 11000 Belgrade, Serbia Air Courier: Svetogorska 7, 11000 Belgrade, Serbia e-mail: [email protected]; Tel: +381 11 3341771, +381 11 3341797; Fax: +381 11 3341792 Spain Postal Address: P.O. Box 111, Playa San Juan, 03540 Alicante, Spain Air Courier: Av. Fotógrafo Francisco Cano 91A, 03540 Alicante, Spain e- mail: [email protected]; Tel: +34 96 515 42 44; Fax: +34 96 516 03 63 www.zm-p.com Europe, Middle East & Africa Team of the Year GlaxoSmithKline

ŽIVKO MIJATOVIĆ & PARTNERS LAW OFFICE - INTELLECTUAL PROPERTY CONSULTANTS With a host of new product worked hard to develop good £2.7 million of counterfeit GSK among the wider trademark releases on the horizon working relationships with our products were seized as a result community by participating in and a rigorous anti- commercial colleagues and of these activities. This figure policy debates at the national counterfeiting programme to have built up a significant level does not take into account and international levels. “We Unique Service in the region. run, the trademark team at of trust.” the significant disruption we make the time to be at the GlaxoSmithKline (GSK) has Over the past 12 inflicted on the operations forefront of topical discussions certainly had its plate full over months, the team has been of those engaged in the and developments affecting the past year. instrumental in the process of manufacture and distribution trademarks,” says Bodet. “Some Comprising around 50 naming new products across of counterfeit GSK products.” recent examples include people working from four emerging markets for the The team has also comment on the European locations (the United Kingdom, GlaxoSmithKline Classic Brands taken the lead in educating Commission’s Community China and two US sites), the business, as Bodet explains: “We colleagues and enhancing their trademark reform proposals, team manages an expansive have been busy clearing and awareness of the company’s our contribution to the • 12 Of�ices in 11 European countries. portfolio of approximately filing trademarks on a global anti-counterfeiting strategy, industry position on key issues Balkans Central Europe 110,000 trademark registrations basis for 14 new medicines from developing internal e-learning such the implementation • Our network covers the countries of and 13,000 domain names. It the pipeline of products.” modules that have been rolled of the Falsified Medicines is divided into four sub-teams Combating the trade in fake out across the entire GSK legal Directive and the revision the and covering pharmaceuticals, medicines and other products department of almost 600 staff. to the European Customs consumer healthcare, vaccines also takes up a significant “Compared with many of its Regulation, and contributing and corporate matters, each amount of the group’s peers, the team plays a broad to discussion over the approval of which collaborates with time. “Anti-counterfeiting role in GSK’s anti-counterfeiting process for trademarks with colleagues throughout the is particularly challenging, strategy, working closely with regulatory authorities such business. “The team works due to the diverse nature of colleagues in corporate security, as the European Medicines closely with commercial GlaxoSmithKline’s global pack security, government Agency.” and regulatory colleagues, product portfolio, requiring affairs, communications, Looking to the year ahead, providing leadership and subtle differences in strategy quality and local operating Bodet predicts that regulatory guidance on trademark for tackling the threats posed units,” says Bodet. issues and anti-counterfeiting issues and contributing by counterfeit pharmaceuticals The trademark group are likely to dominate the proactively to the development and vaccines as well as further demonstrates value by workload. On the counterfeiting of innovative trademark, consumer healthcare products regularly undertaking detailed front, the group will seek branding and enforcement such as toothpaste and reviews of its processes and to liaise more closely with strategies,” says Sophie Bodet, toothbrushes,” she says. “Our portfolios in order to improve customs authorities. “We global head of trademarks latest figures are from 2011, quality and efficiency. It also recognise the importance of at GSK since 2008. “We have when we estimate that in total, maintains a strong profile Customs in the fight against Our network covers the protectionWe ofwere Community voted Trademarks (CTM)because and provides full IP counterfeiting, and strive to forge close links with Customs service in the countries of the Balkans, Central and Eastern Europe, namely: authorities around the world, client care comes �irst record rights with Customs, develop risk analysis materials Albania, Bosnia and Herzegovina, Bulgaria, Croatia, Czech Republic, Hungary, Kosovo*, and provide training in key Macedonia, Montenegro, Romania, Serbia, Slovak Republic, Slovenia, Spain (CTM) markets,” Bodet concludes. “The team has participated in World Customs Organisation Main Ofﬁces for Correspondence operations and seminars in Africa, where we have had notable successes with large Serbia seizures followed up by Postal Address: P.O. Box 526, 11000 Belgrade, Serbia successful prosecutions. In 2012 Air Courier: Svetogorska 7, 11000 Belgrade, Serbia we commenced an online brand monitoring pilot programme e-mail: [email protected]; Tel: +381 11 3341771, +381 11 3341797; Fax: focusing on some key GSK +381 11 3341792 brands selected for their international counterfeiting Spain profile.” Postal Address: P.O. Box 111, Playa San Juan, 03540 Alicante, Spain Such efforts show no sign of slowing down. Air Courier: Av. Fotógrafo Francisco Cano 91A, 03540 Alicante, Spain e- mail: [email protected]; Tel: +34 96 515 42 44; Fax: +34 96 516 03 63 Other nominees: adidas Christian Louboutin www.zm-p.com Angela Wilson (GlaxoSmithKline), Terry Dixon (GlaxoSmithKline), Sopie Bodet (GlaxoSmithKline), Djura Mijatović (Živko LVMH Group Mijatović & Partners), Joanne Green (GlaxoSmithKline), Katarina Kompari (Živko Mijatović & Partners) onstage Procter & Gamble

www.WorldTrademarkReview.com August/September 2013 World Trademark Review 31 WTR_ad2013.pdf 1 04/06/13 16:57 WTR_ad2013.pdf 1 04/06/13 16:57

Latin America Team of the Year Grupo Televisa

The Grupo Televisa team has the trademarks. Finally, we have also protection for its content and possible protection for the daunting task of managing and conducted workshops for key intangible assets in Mexico. company’s brands”. protecting a portfolio of more decision makers regarding IP Meanwhile, the international When asked what sets his than 20,000 IP rights across practices, and our requests are area coordinates IP protection team apart, he muses: “Our over 90 countries. In addition valued and taken into account.” and enforcement abroad, main objective as an IP team to 9,500 Mexican trademarks, Promoting such a drawing on support from is to protect, manage and the company maintains 4,200 cooperative approach has had more than 80 specialised law efficiently administrate all foreign trademarks, 2,900 a direct impact on the team’s firms. While the IP department matters related to distinctive reservations of rights, 1,600 prosecution activities, he is based in Mexico City, the signs, copyrights, related and copyright works and 2,500 observes: “By implementing legal international manager in neighbouring rights, domain domain names. better internal processes in charge of Europe, Asia, Africa names, the Internet, use of The key to successfully order to limit the scope of the and Oceania operates from image, collective management accomplishing this, explains commercial departments in Switzerland. societies, television formats, legal director Gerardo Munoz requesting distinctive and The company’s outlook music, new media and social de Cote, is fostering an IP- original trademarks, this results has become increasingly media, among many others. friendly corporate environment: in easier efforts with respect international in today’s online Every team works by trying to “We have harmonised to prosecution from the outset age, explains Munoz de Cote: adapt to the particularities of the administration of 33 and optimises our brand value “We have been monitoring its company, but we try to adopt different portfolios (including proposition.” trademarks and related content a more practical perspective trademarks and other kinds of Grupo Televisa’s IP of the company through all on each matter in order to IP assets). Each is now handled department comprises an IP kinds of platforms (primarily advise and report as if we were in a customised manner, director, who heads the team regarding internet and social part of the same commercial working synergistically with and supervises all IP matters media), and our enforcement department that requested the commercial and marketing worldwide, aided by two senior efforts are evolving as the service – anticipating the departments – in some cases legal coordinators, six legal expected, thanks to the work that will have to be done, from the beginning of the managers, one paralegal and one different services that we have updating and following up on creative process until the assistant. The department is then been implementing over the worldwide trends regarding respective IP right is granted. We divided into two main areas – last year in connection with the protection of IP rights, and have also established policies national and international. The digital content”. However, it implementing them through and guidelines referring to IP national area oversees IP affairs is a challenge that will only the best possible schemes.” matters in order to encourage in Mexico, including registering increase going forward, and the better practices by our creative trademarks, literary and artistic company is preparing for the Other nominees: teams – for instance, on the works, the reservation of rights new gTLD expansion by “taking Grupo Bimbo correct use of third-party and domain names, as well as a solid and consistent role in Nestlé content and the importance and licensing, litigation issues and the Trademark Clearinghouse Organizações Globo commercial uses of distinctive all other functions requiring IP to ensure we have the best Red Bull

Joaquin Balcarcel Santa Cruz (Grupo Televisa), Andrea Fierros (Televisa SA de CV), Cristina Pinto (Grupo Televisa), Antonio Belaunzarán (Olivares y Cia), Diana Arredondo Ramirez (Televisa SA de CV), Gerardo Munoz de Cote (Grupo Televisa), Alonso Camargo (Olivares y Cia)

www.WorldTrademarkReview.com August/September 2013 World Trademark Review 33 Fish congratulates the World

Trademark Review Industry

Award winner Beam Inc for

being named North America

Team of the Year.

You inspire us!

201442F Fish WTR ad.indd 1 6/13/13 11:24 AM North America Team of the Year Beam Inc

The trademark team at Beam Inc is responsible for an international portfolio of Fish congratulates the World premium spirits that includes Jim Beam Bourbon, Maker’s Mark Bourbon, Sauza Tequila, Pinnacle Vodka, Canadian Club Whisky, Courvoisier Cognac, Trademark Review Industry Teacher’s Scotch Whisky, Skinnygirl Cocktails, Cruzan Rum, Hornitos Tequila, Knob Creek Bourbon, Laphroaig Scotch Whisky, Kilbeggan Irish Whiskey, Larios Gin, Whisky Award winner Beam Inc for DYC and DeKuyper Cordials. The company, which boasted sales of $2.5 billion (excluding excise taxes) in 2012, has positioned brand front and being named North America centre of its corporate strategy, as president and chief executive Matt Shattock explains: “We are driving momentum for our business with a strategy focused on three simple platforms: A beaming success: Cynthia Walden (Fish & Richardson PC), Maria Martin (Beam Inc), Maria Iozzo (Beam Inc) Team of the Year. creating famous brands, building winning markets and Diageo North America Inc had The Sixth Circuit agreed with fuelling our growth.” infringed through its use of the district court’s finding “that This approach places great a red dripping wax seal on its the Maker’s Mark red dripping responsibility on the shoulders premium tequila (Maker’s Mark wax seal is an extremely strong of the trademark team. In Distillery Inc v Diageo North mark due to its unique design addition to the household-name America Inc (Civ No 10-5508, and the company’s singular master brands, regular line May 9 2012). The trademark marketing efforts”. additions are launched on the registration describes the mark market, each of which requires as consisting of a “wax-like Other nominees: protection. In 2012, these coating covering the cap of Apple You inspire us! innovations included Knob the bottle and trickling down Google Creek Rye, DYC Red One, Jim the neck of the bottle in a Microsoft Beam Lime Splash and two Red freeform irregular pattern”. SanDisk Corp Stag by Jim Beam expressions: Honey Tea and Spiced. The portfolio is also ever expanding, thanks to acquisitions of both companies (eg, Irish whiskey producer Cooley Distillery in January 2012) and brands (eg, Pinnacle Vodka and Calico Jack Rum). As such, there is plenty to keep the trademark team busy as they register and enforce the associated rights around the world. Perhaps their most notable court victory in 2012 – and one that made national headlines – came when the US Court of Appeals for the Sixth Circuit held that Maker’s Mark Distillery Inc’s red dripping wax seal was a valid trademark that

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201442F Fish WTR ad.indd 1 6/13/13 11:24 AM www.boyesturner.com

The ‘top-notch’ IP group at Boyes Turner delivers a ‘world-class service at good commercial rates’.

The Legal 500

For further information please contact Sarah Hadland [email protected] +44 (0)118 952 7247

World Trademark Review(216x280)June2013.indd 1 07/06/2013 12:06:30 Fashion, Cosmetics & Luxury Goods Team of the Year Christian Louboutin

Christian Louboutin SA was the counterfeiting threat, involved in one of the highest- explaining how it engages with profile IP disputes in 2012, online auction sites, works making mainstream media with search engines to identify headlines and capturing the sellers of fake Louboutin attention of all trademark shoes and has taken to the www.boyesturner.com counsel, not just those in the blogosphere as infringers adopt fast-paced world of fashion. new routes to market. As previously reported in These online policing WTR, in Christian Louboutin endeavours are critical to the SA v Yves Saint Laurent company, which launched America Holding Inc (11-3303- its first European internet cv, September 5 2012), the US boutique in April 2012. But real- Court of Appeals for the Second world efforts are also a focus, Circuit held that a single colour with field investigators scouring is protectable as a trademark markets around the globe and for fashion items in appropriate overseeing a comprehensive circumstances. The court raid programme. The company The ‘top-notch’ IP group at rejected the lower court’s per se also collaborates with relevant rule of functionality for colour agencies – as an example, marks in the fashion industry, it worked closely with US opining that this would amount Immigration and Customs Boyes Turner delivers a to an improper denial of Enforcement’s Homeland trademark protection to “any Security Investigations and deployment of a single colour the US Intellectual Property in an item of apparel”. Rights Coordination Centre on The case focused on Operation ‘In Our Sites – Cyber ‘world-class service Louboutin’s “lacquered red Monday 3’, which led to the sole on footwear” trademark seizure of 132 domain names registration and its bid to that were illegally selling prevent Yves Saint Laurent (YSL) counterfeit merchandise online. at good commercial rates’. from selling a red shoe with a Importantly, the company red sole in its monochrome line. uses its ‘Stop Fake’ website Shoes off for the celebration: Marion Couvreur (Christian Louboutin) and The Legal 500 Ultimately, both sides presence to chronicle successful Vicki Salmon (IP Asset LLP on behalf of Boyes Turner) claimed victory. Louboutin actions and seizures, reassuring welcomed the decision rejecting its aspirational customers that the lower court’s adoption of it is continually striving to a per se rule that colour can safeguard its premium brand. never be a trademark in the fashion industry and finding Other nominees: the Louboutin red sole mark Avon strong, valid and enforceable. Billabong International Meanwhile, YSL was equally LVMH Group For further information please contact Sarah Hadland positive about the ruling, True Religion Brand Jeans which concluded that YSL had [email protected] not infringed on Louboutin’s trademark and allowed it to +44 (0)118 952 7247 continue production of its monochromatic shoes with red outsoles. While the outcome may thus have been ambiguous, what is clear is that both sides were involved in a landmark decision. Other nominations for Louboutin highlighted its anti-counterfeiting initiatives, with its online “Stop Fake – Christian Louboutin” platform helping customers to identify genuine – and bogus – retailers. The site also outlines the company’s efforts to fight

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World Trademark Review(216x280)June2013.indd 1 07/06/2013 12:06:30

Financial & Professional Services Team of the Year Visa

Visa’s current trademark its first global advertising portfolio analysis and concludes: “We are a cohesive, portfolio contains over 6,700 campaign, titled “More people maintaining a trusted network collaborative team that works active trademark applications go with Visa” and designed to of experienced external well with both our external and/or registrations, and communicate its evolution trademark counsel globally.” counsel and our internal over 3,500 domain names. In to a single, global company. Meanwhile, enforcement stakeholders.” her role as associate general Efforts to protect the campaign requires a nimble approach, counsel, trademarks, Denise have since continued apace as the team has “to stay Other nominees: Yee manages the global and last year – in a decision current on new marketing American Express trademark practice, having that WTR highlighted for media and technology”. “The Bank of America worked at the company for establishing precedent on the proliferation of unauthorised Citigroup 13 years. The trademark team registration of slogans in the uses of a brand owner’s Zurich Financial Services further comprises two senior jurisdiction – the company trademarks online presents an trademark paralegals, a secured protection for its enforcement challenge for all domain name specialist and a MORE PEOPLE AROUND THE companies,” she explains, “but legal assistant, all based out of WORLD GO WITH VISA slogan we also view the upcoming Visa’s corporate headquarters in Montenegro, successfully launch of a myriad of new in California. overturning the Intellectual generic top-level domain Over the past year, Yee Property Office’s initial extensions as an evolving explains, the team has rejection of the mark. enforcement challenge.” been tackling “a myriad of On what makes for a The nature of Visa’s brand- clearance, prosecution and successful prosecution related activities likewise enforcement matters” – both strategy, Yee suggests: “It necessitates a cross-enterprise new and old. For example, in involves a well-defined set of perspective. For instance, the 2009 the company unveiled parameters for conducting company is a keen sponsor of high-profile events – initiatives which involve both oversight of agreements and policing against related infringement. In 2012, for example, it continued its sponsorship of the Olympic Games, and was identified by Ace Metrix – an analytics measure for television and video advertisers, which scored every nationally airing US Olympic ad leading up to and during the London 2012 games – as one of the four most successful sponsoring advertisers. The year also saw Visa become a partner of the Caterham Formula One team, while continuing its sponsorship of the National Football League and South American football tournaments the Copa Libertadores and the Copa Sudamericana. Given this level of activity, which demands multi- department coordination, Yee notes that the team operates as “an integral part of the company. We provide support on all matters relating to trademarks and domain names across the organisation, including our various marketing teams worldwide”. Pravin Anand (Anand and Anand) makes the presentation to Denise As to what she feels Kuwabara-Yee (Visa) makes them really tick, she www.WorldTrademarkReview.com August/September 2013 World Trademark Review 39 Innovation, a matter of talent, not years.

Good ideas don’t wait and need proper protection to create value. Cabinet Beau de Loménie helps innovative startups, as well as established businesses, to secure their groundbreaking ideas and exploite them throughout the world. One of the largest patent and trade mark attorney ﬁrms in Europe, Cabinet Beau de Loménie provides global and custom-made solutions for organizing, optimizing and defending IP rights.

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BDL-PUB-MIP-040613.indd 1 04/06/13 10:46 Food, Beverages & Tobacco Team of the Year Jack Daniel’s Properties

The Jack Daniel’s trademark general trademark and IP team hit the headlines last year guidance,” says Gooder. “The when author Patrick Wensink other group is focused on Innovation, a matter of talent, not years. published a cease and desist contentious matters - both letter he had received from the offence and defence - and Good ideas don’t wait and need proper protection to create value. company, describing it as “the brand protection.” Cabinet Beau de Loménie helps innovative startups, as well as established most polite cease and desist This structure also allows businesses, to secure their groundbreaking ideas and exploite them throughout ever written”. The distillery’s the corporation’s marketing constructive and conciliatory and field teams to collaborate the world. approach towards the potential closely with the paralegals and One of the largest patent and trade mark attorney ﬁrms in Europe, Cabinet infringement won it a slew of lawyers who cover their brands accolades. or markets, Gooder explains. Beau de Loménie provides global and custom-made solutions for organizing, While many factors “Although some of our people optimizing and defending IP rights. contribute to a successful are focused on specific brands, enforcement strategy, any everyone is expected to have Recommended by Legal 500 EMEA, Legal 500 Paris and Managing Intellectual Property. measures to protect company a good working knowledge trademarks must crucially of all our brands and our key align with the values of the markets around the world,” he brand, says David Gooder, adds. “I think this - together chief trademark counsel of with being responsive to our Brown-Forman Corporation clients wherever they are – owner of Jack Daniel’s located - helps us to build and and other beverage brands maintain a close relationship including Southern Comfort, with the marketing teams Chambord, Finlandia and and regional and in-country Tequila Herradura – and management.” managing director of Jack The broad geographic Daniel’s Properties Inc, the scope and iconic status of the subsidiary in which the company’s beverage brands trademark team resides. mean that the “enforcement “One of my high priorities effort [is] operating at full is to be sure that whatever capacity all the time”, says action is taken, we speak and Gooder. The growth of those act, to the extent possible, in brands, in both mature and the voice and personality of emerging markets, also keeps the brand. Another piece of the group extremely busy in David Gooder (Jack Daniel’s Properties) receives his award from Aurelia Marie advice I received early in my terms of portfolio-related work. (Cabinet Beau de Loménie) legal career – well prior to the The past year has seen the team Internet – was to be careful additionally working on the picking fights with people selection and implementation group would be unable to who buy ink by the barrel. of a new portfolio management accomplish as much within The Internet has, of course, system. the budget we have.” changed that tremendously, Gooder puts his team’s Gooder says that he and in that almost anyone can be success down to the passion of his team are thrilled and a publisher and yell at a brand its members for the company’s humbled to receive the WTR owner. I think that regardless brands, as well as the solid Industry Award for Food, of the technology, though, this relationships they maintain Beverages & Tobacco Team theory still holds true.” with their external counsel of the Year: “The trademark Gooder started the and other service providers world is full of talented, trademark and IP rights group globally. “As a group, we are interesting and accomplished at Brown-Forman in 1996 when also very dedicated to our people, and to receive an he made the move in-house trademark protection partners award based on their view of from private practice. His who work with us around the our group is quite an honour 12-strong team is essentially world,” he explains. “These indeed.” divided into two sections, each lawyers, agents, paralegals, with its own primary remit but investigators, scientists Other nominees: with a great deal of crossover and our anti-counterfeiting Beam Inc between them. “One group federation colleagues do an Heinz focuses more on the portfolio outstanding job for us, and we Red Bull side, including trademark consider them part of our IP The Hershey Company Paris - Lyon - Lille - Marseille - Munich - Duisburg - Birmingham I www.bdl-ip.com clearance, filing, prosecution, family. Without their force- maintenance, licensing and multiplying effort, our IP rights

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montréal • ottawa • toronto • hamilton • waterloo region • calgary • vancouver • beijing • moscow • london your brand is your identity Healthcare & Life Sciences Team of the Year Merck & Co, Inc

It is fair to say that the response care organisations of the on compliance, supply chain, it’s imperative to start the at pharma giant Merck & Co company.” The attorneys quality assurance, packaging, [registration and prosecution] to its WTR Industry Award was and paralegals divide their communication and technical process early, have back-up unreservedly enthusiastic. “Our responsibilities by therapeutic operations, and is managed by trademarks that the business trademark legal department area or business unit, and all corporate security. teams support and aim to is thrilled and honoured to report into the senior vice While the Internet may secure trademark registrations receive the award – especially president for intellectual offer counterfeiters the ideal worldwide.” And when it given the other exceptional property, who in turn reports to platform from which to sell comes to enforcement? “Being nominees in this category,” said the general counsel. their wares through rogue vigilant, prioritising and managing trademark counsel The key to their success, online pharmacies, other issues taking appropriate actions for Nancy Rowe. “We feel a great believes Rowe, is their inclusive arising in the virtual world each situation are key factors sense of pride, as it is so nice to approach: “Our team works are increasingly preoccupying to successfully protecting be recognised by our peers; we very collaboratively with the the team. “As with many and enforcing company truly appreciate their support.” business organisations of the companies, the internet/social trademarks.” Rowe has been leading company by fostering and media space is an area in which the division – comprising 17 building strong relationships we find ourselves spending Other nominees: professionals based at Merck’s with them, and by working increasing amounts of time Alcon Laboratories New Jersey offices – for the past closely together on trademark and energy,” Rowe confirms. “As Bausch & Lomb eight years (initially as head of development and enforcement. social media continue to evolve, GlaxoSmithKline the trademark department at Together, we strive to achieve we don’t anticipate this will Wellpoint Schering-Plough Corporation pragmatic, successful change anytime soon.” before its merger with Merck in solutions.” On top of all this, Rowe 2009). “The team is responsible The challenges facing and her team must constantly for prosecuting, enforcing the team are particularly navigate the complex terrain and maintaining trademark acute, given the dangers that of the pharma sector: “Similar applications and registrations counterfeits pose to both the to many of our colleagues in in more than 190 countries,” brand and its customers. It this industry, we continuously she explains. “Our department has therefore won praise for face the challenge of getting handles the global trademark its role in the Merck Anti- new trademarks approved operations for the global counterfeiting Operational by regulatory bodies around human health (pharmaceutical), Network – a cross-functional the world,” she explains. “In animal health and consumer group of experts that also draws order to succeed, we believe we’ll protect your most valuable asset

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Group celebration: Christopher Pibus (Gowlings), Sophie Anger (Merck & Co, Inc), Nancy Rowe (Merck & Co, Inc), Robert MacDonald (Gowlings), Chris Bolinger (Merck & Co, Inc), Amy Van Eepoel (Merck & Co, Inc), Jennifer Morton (Gowlings), Scott Jolliffe (Gowlings) montréal • ottawa • toronto • hamilton • waterloo region • calgary • vancouver • beijing • moscow • london www.WorldTrademarkReview.com August/September 2013 World Trademark Review 43

Household & Consumer Goods Team of the Year Inter IKEA Holding Services SA

A single-minded devotion to one the IKEA trademark in most intense cybersquatting in certain hard on the ‘one-brand’ strategy of Sweden’s most famous brands countries worldwide upfront,” markets. This work represents and the marketing department is the ace up the sleeve of the she elaborates. “The number the downside of being a well- is very careful not to develop IKEA trademark team, according of classes varies, depending on known brand.” new trademarks or change the to Gabrielle Olsson Skalin, general time to entrance on a market. One question exercising existing IKEA trademark. This counsel and head of the legal We also have an international all big brands with an online strategy has resulted in the IKEA department at the Inter IKEA sales department that sells in all presence of late is whether to trademark becoming a very Group. “We have a ‘one-brand markets where we do not have apply for a ‘.brand’. For some, the distinct and well-known mark, strategy’ and concentrate very any IKEA stores. They are doing answer has been obvious; for which helps us to enforce our hard on the IKEA trademark,” she a great job, and this ensures others, more opaque. At IKEA, rights.” explains. “The team members that we have genuine use in the decision-making process Having worked for IKEA have a large amount of freedom all markets where the IKEA has been a collaborative one: since 1984, Skalin has a bird’s-eye to set targets and manage their trademark is registered.” “The internal discussions on view of the evolving challenges daily work to deliver results.” International expansion the perceived pros and cons of that face the brand. As such, Based in Waterloo, Belgium, always brings its own unique ‘.IKEA’ were invigorating and she is ideally placed to lead the Skalin and her colleagues – two challenges, and for IKEA the many different views were company’s Trademark Council, other lawyers, one trademark situation is no different. The presented. We held meetings with which handles all questions and administrator and an assistant roll-out of the brand in new and different external consultants issues pertaining to use of the – manage an international unknown markets – particularly and we met several times with IKEA trademarks by retailers portfolio of approximately 1,700 in Asia, where the team has our marketing department. The all over the world. The council trademark and 400 domain already expended a lot of energy task of the legal department comprises representatives from name registrations. The team’s and resources on combating was primarily to explain the trademarks, marketing and diminutive size and steely focus lookalike stores – is what Skalin rules and requirements of concept monitoring – a blend are its USPs, she suggests. “We are highlights as the source of operating a gTLD.” The company that ensures its output does not a small team and we focus on one greatest concern in the near ultimately decided against filing become too law-heavy. “The mix trademark,” she reiterates. “We are future. “We will have to deal an application; but the process, ensures the inclusion of both all located in the same premises; with new challenges, including suggests Skalin, was enlightening: legal and business perspectives therefore, we have short from those wishing to take “We found the journey very and ensures a pragmatic communication lines, which undue advantage of the goodwill stimulating and extremely useful approach to issues,” Skalin makes decision making efficient associated with the IKEA brand for our company, as it brought confirms. The team recently and ensures consistency.” on these new markets,” she together different parts of our updated the company trademark Entrusted with the states. For the moment, however, organisation.” manual and continually reviews stewardship of such a global it is the World Wide Web that Within this spirit of “Clear and Simple”, its online brand, Skalin and her team must is proving the stickiest issue collaboration, one trusted partner guidance for retailers on how to think tactically to ensure that for the IKEA trademark team. of the IKEA trademark team is apply the IKEA trademark to all the IKEA mark is well protected “The Internet is a big problem the marketing department, with products and services, ranging even in those countries where for us,” Skalin acknowledges. which Skalin and her colleagues from credit cards to apps. the retailer does not currently “We have had to step up our have a cast-iron relationship. Skalin speaks for her team have a physical presence. “Our domain name protection and “We are 100% aligned,” she when she says how delighted strategy has been to register recovery measures due to confirms. “We both focus very they are to receive the WTR Industry Award for Household and Consumer Team of the Year. “We are absolutely overwhelmed and very proud of winning the award; we were very honoured simply to be nominated,” she enthuses. “Winning the award in the face of strong competition from the IP departments of very prominent companies was the icing on the cake. The team feels privileged to work with a truly unique trademark for products and services much appreciated by large numbers of consumers across the world.”

Other nominees: General Electric Mattel Cecilia Emanuelson (Inter IKEA Holding Services SA), Martin Broden (IKEA International A/S) and Gabrielle Olsson Skalin Newell Rubbermaid (Inter IKEA Holding Services SA) celebrate with Elena Solovyova (ARS-Patent) Procter & Gamble www.WorldTrademarkReview.com August/September 2013 World Trademark Review 45 Your Swiss IP Specialists since 1878

Trademarks Patents Designs Copyright Litigation Licenses

ZURICH, SWITZERLAND PHONE ++41 43 222 56 00 FAX ++41 43 222 56 01

www.eblum.ch Internet & Telecommunications Team of the Year CenturyLink

Maintaining brand integrity during times of change is no simple feat, but it is one that the trademark team at communications multinational CenturyLink has achieved with some aplomb. “We faced the expected challenges associated with integrating and managing multiple portfolios as a result of the three mergers involving four brands that have taken place over the last few years,” explains senior corporate counsel Gretchen Testerman. “These include new filings, as well as updating many of the existing applications and registrations, and developing and implementing brand guidelines and enforcement strategies.” This evolution saw the merged CenturyTel/Embarq entity renamed as CenturyLink back in 2009, followed by the acquisitions of Qwest and cloud specialist Savvis in 2010 and 2011 respectively. Despite these amalgamations, today the CenturyLink IP team comprises just two attorneys – Testerman and colleague Christine Searls – supported by two paralegals and Mathias Meyer (E Blum & Co AG), Laurie Korneffel (CenturyLink Inc), Gretchen Testerman (CenturyLink Inc) a legal administrative assistant. and Sandra Przewloka (E Blum & Co AG) onstage The team is based in Denver, Colorado and manages not only top of that, the team handles fluidity of the sector the Testerman’s team is ideally the company’s 900 registered international prosecution and greatest of all. “We see many positioned to meet these and pending trademarks, but all enforcement issues either companies attempt to register challenges head-on, thanks to aspects of CenturyLink’s IP legal independently or directly with for internet and telecoms a deep understanding of their work. “Over the years and several foreign counsel. services that are conducting role in the wider business and mergers, we have had to learn to Over the past year, Madrid business online or using how the latest developments do more with less,” Testerman Protocol filings have kept telecommunications services to in trademark law and practice explains. “We are a small team Testerman’s team busy, as have perform their business, but are relate to them. “Key factors to with a small budget; we’ve been the generic top-level domain not true internet or telecoms the successful enforcement forced to look for efficiencies in (gTLD) developments. “Our service providers,” she explains. of trademarks include having our practice, including better enforcement strategies are “From a prosecution and a prosecution strategy which use of technology, enhanced evolving to include new areas, enforcement standpoint, this supports the enforcement client training and regular, such as new gTLDs, as well as adds to the workload. Another policy and revisiting the open communication with the focusing on new growth areas challenge in the internet and enforcement policy on a business. We work hard, but we of the business,” she elaborates. telecom space is that services regular basis with impacted have fun too. We’ve found that For anyone entrusted with are always expanding and business groups,” having a sense of humour helps.” stewardship of a brand, she converging with each other. For she concludes. Budgetary constraints suggests, managing protection example, in the past, computer mean that outsourcing is kept strategies while balancing the services were important, Other nominees: to a minimum, and Testerman financial issues surrounding but perhaps secondary to Cisco Systems and her team process much the new gTLD launch will be the traditional telecoms services. Go Daddy of the company’s trademark primary hurdle to overcome in Today, computer services, Google work in-house. This includes the near future. which include cloud services, Skype almost all clearance searches, As for those challenges are an expanding and critically as well as domestic prosecution specific to her industry, important area to our and enforcement work. On Testerman considers the company.” www.WorldTrademarkReview.com August/September 2013 World Trademark Review 47

Not-for-profit Team of the Year Association of American Medical Colleges

The Association of American Medical Colleges (AAMC) – winner of the inaugural WTR Industry Award for Not-for- Profit Team of the Year – was founded in 1876 and serves the academic medicine community. Drawing its members from all 141 accredited US and 17 accredited Canadian medical schools, nearly 400 major teaching hospitals and health systems (including 51 Department of Veterans’ Affairs medical centres) and 90 academic and scientific societies, it represents 128,000 faculty members, 75,000 medical students and 110,000 resident physicians. This constituency directly informs the AAMC’s trademark prosecution strategy, as senior William Pecau (Steptoe & Johnson LLP), Amber Sterling (Association of American Medical Colleges), Rosa Hernandez IP specialist Amber Sterling (Association of American Medical Colleges) and Brian J Winterfeldt (Steptoe & Johnson LLP) at the presentation of the explains: “At the AAMC, we inaugural Not-for-Profit Team of the Year award focus on our mission and members. We therefore considered our services department is a lean operation, and programmes, areas for drawing on three attorneys potential fraud which could and two paralegals. Frank harm our members and the Trinity is chief legal officer, countries we are engaging Heather Alarcon is senior in. We also considered our corporate counsel and Cecilia budget. With those factors, Boudreau is corporate counsel. we developed a tiered Working alongside Sterling, registration strategy, which who has managed the AAMC’s we implemented five years intellectual property for ago. Today, our portfolio is in a the past six years, is legal great place. As a not-for-profit operations specialist Rosa organisation, our name really Hernandez. While Sterling is our reputation and we all manages the trademark and work together to promote the copyright portfolios, “Rosa and AAMC’s mission of improving I are point on the enforcement our nation’s health.” and proper use guidelines From left to right: Cecilia Boudreau, Heather Alarcon, Rosa Hernandez, Amber The AAMC currently for the association. Rosa Sterling and Frank Trinity oversees 23 brands with 129 also manages our copyright registrations around the world, permission requests”. If that were not enough, our names and retaining the including 25 countries where it And there is much to keep the team is also proactive in public’s trust. Generally, a not- administers the MCAT® exam the team busy. In addition to terms of non-profit community for-profit does not have a large (the standardised admissions enforcement and protection outreach, seeking to foster an team focused on intellectual test to US and Canadian medical work, both the PIVIO™ and environment in which not-for- property concerns, so building schools). Two initiatives are GHLO™ (“a programme which profits can work together to a community to discuss and jointly owned – the LCME® provides a global network that achieve common goals: “We are compare experiences seemed accrediting body for US medical facilitates educational mobility actively working to develop a appropriate.” schools is a joint initiative for health professionals”) community of not-for-profit with the American Medical initiatives were launched over organisations to discuss Other nominees: Association, while the PIVIO™ the past year, and the team is intellectual property protection American Red Cross electronic portfolio project is also working to develop new strategies. Not-for-profits face Federation of the Swiss Watch jointly run with the National preparatory content for the wide fair use of their names, Industry FH Board of Medical Examiners. MCAT® exam, which will be services and programmes, The Colombian Coffee Growers At the centre of this administered in a new format and we must balance that fair Association network, the AAMC legal in 2015. use with the protection of UL www.WorldTrademarkReview.com August/September 2013 World Trademark Review 49 CMS_LawTax_CMYK_from101.eps AT HOME IN EUROPE

With over 2,800 lawyers in 48 cities throughout Europe and beyond, CMS provides national and cross-border advice on every aspect of business law. More than 100 leading IP specialists in our pan-European CMS team provide customised legal support to international corporations, technology leaders and R&D experts. We help you protect your intellectual property – wherever you are in Europe.

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RRH13132_ADV_ENG_120618_World_Trademark_Review_216x280.indd 1 18.06.2013 12:51:02 Software & Online Services Team of the Year Twitter

Twitter has become an a brand protection associate infringement. West predicts in our decision making, even CMS_LawTax_CMYK_from101.eps online phenomenon since manage a portfolio of 250 that it will remain a challenge if our ideas sometimes sound its establishment in 2006 marks from Twitter’s San to scale up the team’s efforts risky or unconventional. We and today ranks as one of Francisco headquarters. The to match Twitter’s growing communicate well and enjoy the Web’s top 10 most visited team is firmly embedded in the presence. what we do, which makes it fun AT HOME sites. Global brand protection company, she explains: “Twitter As an online and ultimately more efficient.” manager Jillian West has been is like a small community, so communication-focused involved with the company for we communicate very openly company, Twitter does not Other nominees: almost five years, managing and listen to questions and take a traditional approach to Amazon.com trademarks, domains and policy concerns and work closely trademark work, and has found Facebook IN EUROPE issues relating to the Twitter with almost each team in that its creativity has paid Google brand. “I’ve been managing our the company in some way. handsome dividends. “We have Microsoft brand and trademarks since Our teams understand the an incredibly small team with a before we had a legal team or importance of brand protection small budget, so we try to think in-house counsel,” she explains. balanced with creativity and resourcefully and do whatever “Within a few weeks of temping new ideas.” we can,” emphasises West. The at the small start-up, I saw a Amicable enforcement is team has had to learn how to With over 2,800 lawyers in 48 cities throughout Europe and beyond, CMS provides need for someone to respond essential for an online outfit let some things go so that it national and cross-border advice on every aspect of business law. More than to requests to use our marks, and Twitter does all of its can spend more strategically, 100 leading IP specialists in our pan-European CMS team provide customised legal as well as deal with domain initial outreach directly. “That and also focuses on identifying support to international corporations, technology leaders and R&D experts. squatting and maintenance helps in achieving positive where users are located and We help you protect your intellectual property – wherever you are in Europe. of our young trademark outcomes without being teasing out the nuances of applications, so I began to aggressive or overspending,” international filing systems, liaise with outside counsel says West. “And having clear, while trying to think ahead as and created the role based on fair and visible policies and much as possible. the company’s needs. We were educating employees about “We are honoured about 25 people at the time, so what to look out for and report and excited to have been there was a lot of work to do are very helpful.” In the last acknowledged by the and policies to organise, but it year the team has been busy community, “ West concludes, was exciting to watch the brand with the launch of a new logo “Having a great relationship grow so quickly while trying to and the Vine video app, while with our internal teams as protect it.” also contending with a rise in well as outside counsel means Between them, West and bad-faith players and related that we always feel supported

Stuart Helmer (CMS), Micaela McDonald (Twitter), Christine Kao (Twitter), Eric Gardner (CMS), Sofi Hersher (Twitter), Jose Luis Arnaut (CMS) and Anton Bankovskiy (CMS) www.cms-rrh.com www.WorldTrademarkReview.com August/September 2013 World Trademark Review 51

RRH13132_ADV_ENG_120618_World_Trademark_Review_216x280.indd 1 18.06.2013 12:51:02 What a knock-out! Congratulations to IBML for winning Sport, Entertainment & Media Team of the Year 2013 award! To protect your World famous IP rights, choose Eproint.

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Costa Rica Phone: (506) 2256-4260 Fax: (506) 2255-1010 Web: www.eproint.com Email: [email protected] [email protected] Sports, Entertainment & Media Team of the Year What a knock-out! IBML Congratulations to IBML for winning Sport, Entertainment & Media Team of the Year 2013 award!

To protect your World famous IP rights, choose Eproint. In the same month that global basis. They are supported and our brands become more other parts of the business who International Brand by two formalities clerks and a well known, we face increased understand what you are trying Management & Licensing paralegal. Besides myself, there threats from third parties to achieve and appreciate that (IBML) scooped its WTR are three other in-house lawyers copying our brands and you often need their assistance Industry Award, it was in the broader legal team.” attempting to beat us into the in order to deliver results; identified as one of the world’s To coordinate this portfolio, market. We always need to be agents you can rely on to tell leading global licensors, the team “ensures we have thinking two steps ahead – you how it is and not just sit on placing 12th on the Top 150 direct relationships with particularly in terms of the state the fence or tell you what they Global Licensors list compiled agents in every country where of our portfolios and existing think you want to hear; and by License! Global magazine. we operate, ensuring faster registers – in order to overcome management who are prepared With iconic brand names as response times on urgent issues these threats.” to invest in what is quite often a Dunlop, Everlast, Slazenger, and avoiding the extra costs The team tackles these businesses most valuable asset Lonsdale, Kangol and No Fear which invariably arise from the myriad challenges from – its trademarks.” under its stewardship, it is double handling of matters via within a supportive corporate The legal team also perhaps unsurprising that the intermediaries”. environment – one that “well has its own role to play in IBML licensing programme And the portfolio gets understands that without promoting dialogue across the beat tough competition more international by the a properly protected and organisation. Olsen concludes: such as the National Football month. When asked about the managed trademark portfolio, “Our office is very open plan League, the National Basketball aspects of prosecution and we wouldn’t have a business. – we all sit in one space, and Association, Procter & Gamble clearance work that have kept The trademark team has a high consequently listen in and and Dreamworks Animation in the team busy this last year, level of visibility within Sports offer suggestions and views on terms of retail sales figures. Olsen says: “Owing to recent Direct and, over time, we have each other’s matters. We enjoy Cameron Olsen, head of brand acquisitions such as developed close relationships what we do, but the fact that we legal at IBML, explains how Hot Tuna, Dunlop, Soviet and with the marketing team and all get along as individuals is the programme is managed: Firetrap, portfolio assignments the brand managers. We always absolutely fundamental to the “We currently have over 11,000 have taken up a large share of strive to provide commercial success of the team as a whole – marks in our portfolio and the team’s capacity. We also advice to the business, which we couldn’t do what we do any are actively engaged in over face particular challenges at a I think is why the board is other way.” 150 countries. The legal team, registry level in parts of South so receptive to our requests which is part of the Sports America, an area where many of and keen for our input and Other nominees: Direct Group, is based in central our inherited brands have not guidance on all brand issues”. British Broadcasting The Whole Package. London and is made up of been particularly well managed Olsen is crystal clear as Corporation three trademark managers, prior to our taking over.” to the secrets of a successful Dainese who are each responsible for Looking ahead, he predicts: trademark team: “Close working Electronic Arts Intellectual Property a selection of our brands on a “As we enter new markets relationships with colleagues in Nike in the Caribbean and beyond...

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Costa Rica Phone: (506) 2256-4260 Fax: (506) 2255-1010 Web: www.eproint.com Email: [email protected] [email protected] Aaron Montero (Eproint), Cameron Olsen (IBML), Craig Brown (IBML), Gabriela Bodden (Eproint) and Pedro Chaves (Eproint) onstage

www.WorldTrademarkReview.com August/September 2013 World Trademark Review 53 Our congratulations Our admiration Our support

Strength. Across the Board. Venable LLP is pleased to support World Trademark Review as a sponsor of the 2013 Industry Awards. We are pleased to congratulate Honeywell International for being named Technology & Consumer Electronics Team of the Year.

CALIFORNIA • DELAWARE • MARYLAND • NEW YORK • VIRGINIA • WASHINGTON, DC 1.888.VENABLE | www.Venable.com Technology & Consumer Electronics Our congratulations Team of the Year Our admiration Honeywell International Managing over 12,000 “At any given time we have continued growth, in terms so many countries that it trademark registrations hundreds of outstanding of both expansion and is difficult to stay on top of worldwide and approximately trademark search requests at acquisitions, will present everything,” Cohen continues Our support 3,000 domain name various stages of review, as further challenges for the “And the people making fake registrations for a Fortune well as dozens and dozens of team in the future. “On the products try to adapt their 100 company, the Honeywell international enforcement expansion side, Honeywell efforts to make detection and team has its work cut out, matters. As you would expect, has put a greater emphasis on enforcement more difficult. but has clearly risen to the our anti-counterfeiting new business opportunities Making sure that we employ challenge, as its WTR Industry activities keep us quite busy,” in emerging regions,” he new and different strategies Award bears out. David Cohen, he explains. explains. “Given the large is something we consistently assistant general counsel and Honeywell has over number of brands and many explore.” chief trademark counsel, was 130,000 employees and businesses we have, it is a Overall, the key to delighted by the accolade: comprises a multitude of challenge to make sure that success for the Honeywell “It is such an honour to be brands across the consumer we have our rights properly team has been its close recognised along with all of the electronics, aerospace, energy protected in all countries in working relationships, both other prestigious companies and automotive sectors. “Given which we are seeking new internal and external. “The and great lawyers who were the size of our company, sales opportunities. We cannot people in our group enjoy nominated. Winning was such its international scope and simply register every mark in this area of the law, as well an unexpected and welcome ordinary attrition, it is a every class in every country, as the business people we surprise, which serves as an constant challenge to make so staying in tune with our work with and our outside acknowledgement of all of our sure all of the people within businesses is critical.” When counsel,” Cohen concludes. hard work and efforts to protect our company dealing with it comes to acquisitions, the “With this enjoyment comes our company’s assets.” trademarks know about the company frequently purchases the additional effort which is The brief of Cohen and his proper processes we have companies with new brands, needed to manage a worldwide Morristown, New Jersey-based put in place,” says West. “Our and taking over their portfolios portfolio such as Honeywell’s. team includes domestic and trademark department has educating the new businesses We enjoy working with international trademark work, a close working relationship on trademark needs and each other, and all of us are such as clearance, registration with the product managers ensuring that their assets interested in learning and and enforcement, as well as and communications are protected is an ongoing getting better at protecting and associated contractual matters groups for each of our many mission. enforcing Honeywell’s assets.” such as licensing and mergers businesses, and we regularly As for many companies and acquisitions. The team host international conference with such a sweeping Other nominees: also handles domain name calls to discuss the various geographical scope, anti- Apple registration and enforcement, trademark issues facing each of counterfeiting measures Intel as well as copyright registration, our distinct businesses.” are also a focus: “We have Microsoft Strength. Across the Board. enforcement and licensing. Cohen believes that so many products sold in Motorola Mobility Venable LLP is pleased to support World Trademark Review as a sponsor of the 2013 Industry Awards. We are pleased to congratulate Honeywell International for being named Technology & Consumer Electronics Team of the Year.

CALIFORNIA • DELAWARE • MARYLAND • NEW YORK • VIRGINIA • WASHINGTON, DC Andrew Price (Venable LLP), Mimi Datta (Honeywell International), David Cohen (Honeywell International), Justin Pierce (Venable LLP) in the spotlight 1.888.VENABLE | www.Venable.com www.WorldTrademarkReview.com August/September 2013 World Trademark Review 55 World Trade Review Ad 6.2013.v2:Layout 1 6/19/13 11:26 AM Page 2

The Dykema Trademark Team: Helping You Create, Grow and Protect Your Most Valuable Asset

In today’s global economy, sustained monitoring services and international protecting trademarks from misuse by business success depends upon a affiliates—helps clients create, maintain, third parties, Dykema professionals company’s ability to safeguard its enforce and otherwise leverage their can assist in every aspect of trademark intellectual property. And nowhere is trademark portfolios. acquisition, protection and defense. this more important than in procuring and protecting a strong brand. That’s From helping choose new company To learn more, we invite you to contact why businesses—large or small—turn names, marks, logos or slogans to Eric T. Fingerhut, leader of Dykema’s to the law firm of Dykema. conducting domestic and global Trademark Practice, at +1.202.906.8618 clearance searches and providing risk or [email protected]. Our trademark team—comprised of assessments; from obtaining registrations lawyers, legal assistants, investigators, in the U.S. and around the world to

Travel & Leisure Team of the Year Starwood Hotels and Resorts

The trademark team at Starwood’s global trademark value and tax savings for the in Hong Kong, will give her Starwood Hotels & Resorts group is headed by vice business. the opportunity to meet safeguards some of the president and associate general The trademark team with colleagues and service world’s leading hospitality counsel Ainslee Schreiber. has also won several recent providers in the region. “I’m brands, including Sheraton, Le Based in New York, the team decisions in major jurisdictions, especially looking forward to Meridien, Westin, Four Points, comprises one attorney, with courts finding that next year’s INTA meeting, as it W, St Regis, Element, The one paralegal, one docket Starwood’s W and WESTIN will give us the chance to visit Luxury Collection and Aloft, clerk and one administrative brands qualify as famous our Asia-Pacific headquarters in addition to the Starwood assistant, and manages over marks. This has significantly and to meet with our business brand itself. As of January 2013, 20,000 records covering key improved the company’s units and external counsel the company owned, managed global brands and numerous ability to prosecute and there,” she says. “We will be able or franchised 1,134 properties secondary brands. Schreiber and enforce those marks in new to update them on what we across 100 countries. her group handle trademark markets. Schreiber and her are doing in the region, what This global footprint is portfolio strategy, clearances, team also successfully secured we are planning to do and the continually expanding, with applications, prosecution and well-known status for the continued development of our Asia-Pacific now a key point contentious proceedings, and SHERATON mark in China – brands.” of focus. Starwood opened provide trademark expertise for something that few foreign 69 new hotels – comprising new brand launches. brand owners have successfully Other nominees: some 18,000 rooms in total – In the last couple of years, done to date. Alitalia worldwide in 2012, including Starwood has undergone Schreiber works closely with CrossFit the Sheraton Macao, its largest a number of corporate external counsel across the InterContinental Hotels Group property to date. It also struck restructurings involving cross- multiple jurisdictions in which Winnebago Industries deals to open another 131 border migration of IP assets. the company has properties. hotels in the future, bringing Schreiber and her team played Next year’s International the total pipeline of new an instrumental role in this Trademark Association (INTA) properties to 400. process, generating significant annual meeting, to be held The Dykema Trademark Team: Helping You Create, Grow and Protect Your Most Valuable Asset

www.WorldTrademarkReview.com August/September 2013 World Trademark Review 57 CommITTed To TeAm SpIRIT Congratulations to all 2013 WTR Industry Award winners

Heidehofstraße 9 · 70184 Stuttgart · Germany · www.lkpa.de

428-13-006_AZ_WorldTradem.indd 1 14.06.13 08:47 Vehicles & Transport Team of the Year CommITTed To Ford Global Technologies LLC

Ford is a company that is business worldwide – mean well aware of the value of that members of the trademark its trademarks. In 2006 it team have been collaborating TeAm SpIRIT secured a loan of around increasingly closely with their $23 billion by putting up its colleagues in the marketing Congratulations to all iconic blue oval logo and other department. “Our focus is truly assets as collateral. Last year, global, with new products 2013 WTR Industry Award winners a revitalised Ford reclaimed going to new markets,” says control of its key mark. Tassie. “We work very hard Chief trademark counsel to support and counsel our Pete Tassie assumed marketing clients as they work responsibility for Ford’s to grow the business around trademark operation a year ago, the world.” taking over the reins from Bill The trademark division Coughlin, president and CEO also works closely with the of Ford Global Technologies, licensing department in order the subsidiary responsible for to coordinate establishment, the company’s intellectual use and enforcement of the property. “The team includes company’s trademark rights. our in-house group located in Tassie suggests that its strong Dearborn, Michigan, working relationships with other parts together with Brooks Kushman, of the company and external a Detroit-area law firm, to service providers are key to manage our global trademark its success. “We have great portfolio and our relationships teamwork with our clients and with global counsel,” Tassie outside counsel,” he explains. explains. “As a team, we strive “We value long-term, trusting to provide our clients with relationships with those inside the best and most practical and outside the company, service and strategic advice. both locally and around the Ford currently has a global world. By working to create portfolio of approximately and maintain those strong 15,000 trademark applications relationships, we are able Peter Tassie (Ford Global Technologies LLC) celebrates with Ursula and registrations, and we to provide the best possible Stelzenmüller (Lichtenstein, Körner & Partners) are currently expanding the service and maintain our focus in-house team to include on supporting the business.” more copyright and licensing Those solid connections must evolve in order to both resources.” across the company will benefit prevent and stop infringement One of the issues that the Ford trademark team as it and counterfeiting in these has taken up much of the looks to the year ahead. “Our channels,” Tassie concludes. Ford trademark group’s time brands are among the most “We are also stepping up our over the past year has been valuable in the world, which enforcement efforts with enforcement relating to its Go makes them attractive targets respect to counterfeit items that Further advertising campaign. for people to attempt to exploit involve safety features, as those The blue oval is conspicuous them through infringement are the most critical to our by its apparent absence from and counterfeiting,” says consumers.” Go Further, and the trademark Tassie. “With the continuing team had to obtain and protect expansion of non-traditional Other nominees: a range of new IP rights, as well access to the marketplace Bridgestone Corporation as enforcing existing marks. through the Internet, we can Caterpillar Inc “The new global brand promise, expect to see continuing Porsche ‘Go Further’, represented the challenges.” The proliferation of Tesla Motors first truly global positioning online marketplaces and other for the Ford brand,” Tassie internet channels means that elaborates. “The launch drew on opportunities for counterfeiters a wide range of our team’s skills, are growing. That presents from clearance and prosecution problems for all brand owners to trademark and domain name – and for the automotive acquisition.” industry, concerns about the These new advertising impact of fakes on consumer initiatives – coupled with safety are especially salient. rapid expansion of Ford’s “Our enforcement strategies

Heidehofstraße 9 · 70184 Stuttgart · Germany · www.lkpa.de www.WorldTrademarkReview.com August/September 2013 World Trademark Review 59

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To subscribe go to www.worldtrademarkreview.com/subscribe or email [email protected] Lifetime Achievement Award Kimbley L Muller

Kimbley L Muller, managing Section of the State Bar of counsel of the trademark Texas. However, ask him which division at Shell Oil Company, achievement he is proudest of has served at the Texas- and he looks to his presidency headquartered company for of INTA: “My leadership at INTA almost 30 years. He explains: during a time of transition in “I was trained as a scientist in the 1999 to 2001 timeframe, chemistry and IP seemed like when we re-energised the a natural fit for me. I was on committee work and leadership Not yet a subscriber? the patent side, but was always timing, really was a highlight.” interested in the trademark His experiences at area. I was appointed to do INTA inform his response the trademark work at Shell in when considering what 1986, more out of being in the one change he would make right place at the right time to to the trademark world: “I fulfil a need for the corporate would greatly increase the client.” And thus a career in governmental punishments for trademarks was born. counterfeiting. It is an activity Licensed to practise law in that right now is profitable to Texas and Illinois and before those that trade in non-genuine the Court of Appeals for the goods and harm consumers Federal Circuit, Muller has from getting what they think observed great change in the they are paying for in the trademark environment over marketplace. In the coming the decades: “The passage of years I would hope that all the first Dilution Act, which governments will make the led to the law we have today, act of counterfeiting non- and the US accession to the rewarding.” Madrid Protocol are the policy From his career at Shell, highlights I have experienced. meanwhile, a string of The most significant change was courtroom victories stand out. the Trademark Law Revision “I am proud of the litigation Kimbley L Muller (Shell Oil Company) receives the 2013 Lifetime Act and the adoption of the work we have engaged in, Achievement award from 2012’s winner, Alan Drewsen (INTA) ‘intent to use’ provisions of the from the Shell v Commercial Lanham Act. We needed to do Petroleum case [928 F2d away with token use and we did 104, March 11 1991 – which trust us. It is important always turn, has most influenced him? just that in the International centred on the quality to be driving the message home He concludes: “It is hard Trademark Association (INTA)- control standards for the that a proper budget and good to single out individuals, as led legislative review revisions. transportation and storage of professional trademark counsel many people have helped me I also think the globalisation of the bulk oil sold by Shell and can make a big difference; but get to where I am today. But trademark rights and the advent the use of the ROTELLA and without either, the task in very early in my career, the late of the Community trademark SHELL ROTELLA T marks by difficult. As to the last question, John Lanahan was very helpful were extremely important to Commercial Petroleum] to the a steady hand with long-term to me. Both Robin Rolfe and trademark holders.” most recent ‘Motor Oil Matters’ goals is critical to succeed in Alan Drewsen also made a big Engagement with the campaign,” he says. “Both have the long run.” impact on me as to what can be Subscribe to WTR now and receive: wider trademark ecosystem established new law and new Muller has been wreathed accomplished to change public has characterised Muller’s procedures in the commercial in awards throughout his policy through collaborative career to date, which has seen and branded installed markets career, including the Houston corporate efforts. I found all WTR him take up positions on the to protect consumers.” Intellectual Property Law my fellow officers at INTA to • Six issues of magazine Trademark Public Advisory Muller’s lengthy tenure Association’s Distinguished be inspiring – they had a large • Instant online access Committee of the US Patent at Shell makes him ideally Service Award (1998-1999), the influence on knowing the right and Trademark Office and the placed to advise on how best University of Houston Law thing to do and when was the • Daily news by email Intellectual Property Advisory to approach the challenges Centre Institute for Intellectual right time to do it. Finally, Council of the University of facing in-house counsel and the Property and Information Law’s I have tried to pattern my • Regular supplements Akron School of Law. He has formula for success in the role: Distinguished Service Award professional practice through • Complete eight-year archive also served as president of the “Getting the focus correct on (2000), the State Bar of Texas what I have seen from Paul Houston Intellectual Property the importance of trademark Intellectual Property Section’s Van Slyke, Louis Pirkey and Law Association, as chapter rights with the right people in Chair Award (2004) and the Michael Metteauer, all of whom president (SE TX Chapter) of the company is very important. INTA President’s Award (2008). I admire greatly – they provide To subscribe go to www.worldtrademarkreview.com/subscribe the John Marshall Law School, The brands reveal to the public These honours attest to the a great example of everything or email [email protected] and as chair of the Patent, what we stand for as a company lasting influence he has had a great trademark attorney Trademark and Copyright and why consumers should across the industry; but who, in should comprise.”

www.WorldTrademarkReview.com August/September 2013 World Trademark Review 61 Awards night

Over 200 senior IP professionals attended the seventh WTR Industry Awards ceremony (www.WTRIndustryAwards.com) at the Belo Mansion, in the heart of the Dallas Arts District, on May 7 2013. Representatives from the shortlisted teams mingled with leading private practice lawyers at the exclusive champagne reception in honour of the world’s top in-house trademark counsel. WTR wishes to thank all nominees and sponsors for making the WTR Industry Awards 2013 such a successful event.

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1. Canapés are served 8. Amy Van Eepoel (Merck & Co, Inc) and Chris Bolinger 2. Jeremy Pisigan (Dykema (Merck & Co, Inc) Gossett PLLC), Anton Bankovskiy (CMS Reich- 9. Joaquin Balcarcel Santa Rohrwig Hainz) and Shannon Cruz (Grupo Televisa), Diana McKeon (Dykema Gossett Arredondo Ramirez (Televisa PLLC) SA de CV), Cristina Pinto (Grupo Televisa), Andrea 3. Capturing the shortlist Fierros (Televisa SA de CV) and Gerardo Munoz de Cote 4. Sandra Przewloka (E Blum (Grupo Televisa) & Co AG) and Jean-Pierre Maeder (Nestlé) 10. Christopher George (Intel), Leslie Skinner (Intel) 12 5. Camila Santamaría Balen and Lisa Greenwald-Swire (Federación Nacional de (Fish & Richardson PC) Cafeteros de Colombia) and Sandra Mora (guest of 11. Katie Hunt (Burberry Group) Camila Santamaría Balen) and Jeff Warren (Burberry Group) 6. Deborah Hampton (Steptoe & Johnson LLP), Heather 12. Some smooth jazz Steinmeyer (WellPoint) and Amy Keenan 13. Awards ready for collection (WellPoint) 14. Preparing for the 7. Lisa Marie Martens (Fish presentations on a hot & Richardson PC), Paul evening Martens (guest of Lisa Marie Martens) and Dana Northcott (Amazon.com)

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www.WorldTrademarkReview.com August/September 2013 World Trademark Review 63