INTA 2008

The sessions covered today were:

(1) Workshop: Indigenous Rights Reconciled with Trademark Rights: Boutique Interests in a Macro Market moderated by Marion Heathcote (Davies Collison Cave) featuring speakers Florence T. Fenton (Munro Leys), Barbara Sullivan (Henry Hughes), and David Haigh (Brand Finance Plc).

(2) Workshop: Genuine Use Requirements in the European Union moderated by Jean L. Pire (Gevers & Partners) featuring speakers Claes Agnvall (Zacco), Ruth E. Annand (Taylor Wessing LLP), Olof Fickert (Herrero & Asociados, S.L.), Hub. J. Harmeling, (Freshfields Bruckhaus Deringer), and Olga M. Nedeltscheff (Limited Brands, Inc.).

(3) Session: Trademarks and Advertising: Fair Use and Parody moderated by Paul R. Garcia (Kirkland & Ellis) featuring speakers Marc Groebl (Howrey LLP Rechtsanwaelte), and Christy N. Hurley (Expedia, Inc.).

Read more about each at the respective post.

The days last session was moderated by: Paul R. Garcia (Kirkland & Ellis) featuring speakers Marc Groebl (Howrey LLP Rechtsanwaelte), and Christy N. Hurley (Expedia, Inc.). The focus was on a series of television commercials.

Ms. Hurley began by noting that it is important to define what the client’s goals as far as creativity vs. protection are, educating marketing teams, participating in the creative process (e.g., reviewing story boards at each phase), developing a timely internal review process (e.g., a checklist), and cultivation of strong working a relationship with outside advertising agencies. Mr. Garcia outlined the litigation aspects of trademarks and advertising, namely various types of comparative advertising (superiority, exclusivity, establishment: “tests show…”) and false advertising claims (literal false or misleading, materiality as to consumers, and puffery). Mr. Groebl next outlined the European view as to trademark advertising, reiterating Ms. Hurley’s point that it is important to be involved from the outset. He also made the fair point that humor does not necessarily translate across borders and cultures. He then highlighted the relevant provisions of EU Directives regarding the criteria which cause comparative advertising to be either lawful or unfair.

The first TV commercial example was Subway’s “cheeseburger combo meal with a spare tire, regret, loss of boyfriend, and side order of guilt…” ad, which from the U.S. perspective was fair use in that it did not specifically mention or target any fast-food competitor of Subway (whether by name or trade dress, employees uniform, etc.). The panelists noted that it would also be important for Subway to back up the nutritional claims. From the European perspective, the threshold question was whether the competitor was recognizable, in which case, the less likely that the commercial would be interpreted as targeting a specific competitor, the better from fair advertising purposes. Also, as in the U.S., the fact must be verifiable (which could be nebulous if there is conflicting or loose data).

The next TV commercial is Burger King’s “we switched the Big Mac for the Whopper for a day” commercial in which the commentator laments at the end: “Whopper: anything else is a freaking disappointment.” From the U.S. perspective, the first concern is that it uses hidden cameras, and requires such consent. One customer in the commercial says emphatically that he hates McDonald’s, and it would be important to clear this as fair use advertising as per FTC testimonial guidelines (note the screen caption was: “actual customer hidden camera”). Also, it was noted that this was not a traditional taste test, but was done to surprise the customer, and one must ask the question whether there is actually any bona fide chance of consumer confusion. From the European perspective, this commercial is clearly comparative advertising by statutory definition, and moreover, it €almost clearly does not create confusion as noted by the U.S. panelists. However, the “I hate McDonald’s” and “Whopper: anything else is a freaking disappointment” quotes would not pass muster in the E.U., as they were made to denigrate or disparage the competitor.

The third and fourth commercials, Pepsi’s showed a young boy buying two cans of Coke only to stack them up so he could stand on them to reach the Pepsi button on the vending machine. The next showed Jackie Chan doing a commercial where the Diet Coke can was the Pepsi stunt double. From the European perspective, the first commercial might present some cause for reservation, but would pass muster. Similarly, the U.S. perspective would approve the first commercial since it is really a grey are as far as comparative use as it is more in the line of a testimonial since the boy chooses the Pepsi. Turning to the “stunt can” commercial, the E.U. perspective in the panelist opinion would cross the line of fair advertising in that it denigrates the competitor and implies destruction of the Diet Coke can. The U.S. perspective was that the stunt double commercial was “fun and harmless” and in the end, fair use for advertising purposes.

The next TV commercial was an old Total vs. Cornflakes commercial in which a customer offers to “bet my shirt on it” that his is the most nutritious brand. From the U.S. perspective, the nutritional claims would need to be verifiable, and the claims of “best” and “better” taste are potentially problematic. On the same note, those terms might be seen as mere puffery. (On this case, one U.S. panelist would green-light the commercial, one would not). The E.U. perspective raised similar concerns regarding verifiability.

Next was an Audi TV commercial depicting a man waking form his bed to find the grill of his old sports car in bed with him (ala the horse in the godfather) followed by the new Audi. Next was the bride running off from her wedding to hop into the Audi with Dustin Hoffman who says to his daughter: “you’re just like your mother.” Finally was an ad for “Battletanks” for Nintendo 64 in which the tanks smashed and pillaged the snuggly fabric softener bear. From the E.U. perspective, the Nintendo ad was clearly not an acceptable fair use. Notably also was the issue that the use of the bear was not to parody the fabric softener, but solely to promote the unrelated products of Nintendo. As to the Audi godfather commercial, since the grill of the “dead” car was not identifiable, it would be fine. On the U.S. perspective, the Audi ads would likely be o.k. as far as fair use, but would require significant clearance from the movie’s owners. Similarly, the Nintendo commercial would likely be problematic in the U.S. (and indeed was since a preliminary injunction was granted in that regard) as to tarnishment.

In conclusion, the panelists mentioned that it is important for counsel not be known as the “sales prevention department,” and that often counsel would not make legal calls, but would provide buoys to chart the course for the client, i.e., have your ducks in a row, and to anticipate future comparative advertising developments (e.g., follow case law and legislation), especially in the areas of grey market goods and privacy protection regarding suggested online purchasing (e.g., the RFID chip in your phone would trigger an ad on a billboard as you walk by).

Moderated by Jean L. Pire (Gevers & Partners) featuring speakers Claes Agnvall (Zacco), Ruth E. Annand (Taylor Wessing LLP), Olof Fickert (Herrero & Asociados, S.L.), Hub. J. Harmeling, (Freshfields Bruckhaus Deringer), and Olga M. Nedeltscheff (Limited Brands, Inc.).

Moderator Jean L. Pire played the part of a prospective client polling his panel of E.U. counsel on the “breaking point” between mark use and registration under European Community Law and on a National Member State level.  He provided the example of a company seeking to use the silhouette of a cat as its mark for beverages and nuclear power plant services.

The panelists noted at the outset that guidance might be found in Directive 89/104/EEC (21-Dec-1988), and Council Reg. (EC) 40/94 (20-Dec-1993).  The first question posed to the panel was whether use of the mark in Malta would satisfy use requirements to maintain a CTM mark.  Based on guidance from the above statutes, the panelists agreed the answer could go either way.  As to “Genuine use,” the panelists noted that on a national level, the ECJ decision in Ajax / Ansul required that the essential origin function must be preserved such that token and internal uses would not generally suffice (the mark must continually preserve or create an outlet for the goods or services).  Furthermore, the use must be one in which there is a contact with a consumer, but the nature of the goods or services can be significant in defining the scope of this.  According to the ECJ case La Mer, there is no quantitative threshold, and on remand, the English Court of Appeals held that use by a single importer was sufficient.  Significantly, this is treated different in each European jurisdiction (generally free samples distributed to consumers may suffice, whereas mere advertising would not).  Furthermore, the extent of use and market share might bear on the analysis.  In the CTM, often a category / sub-category approach is used whereas in the U.K., courts look at the nature of the use, and how consumers perceive the mark.  Somewhat similar to the U.S. model (where in renewal applications and affidavits of use, goods which are not in use should be stricken to avoid future challenges based on fraud or otherwise).  As to timing, if not used in 5 years, a mark is likely to be revoked if challenged, but each jurisdiction has different periods from which this 5 year period begins, especially where there are oppositions.

The bottom line: E.U. use requirements are complex and varied and while they may fit a general framework, the nuances would often warrant consulting local counsel.

Tuesday’s first session was a Workshop on Indigenous Rights Reconciled with Trademark Rights: Boutique Interests in a Macro Market hosted by Moderator Marion Heathcote (Davies Collison Cave) featuring speakers Florence T. Fenton (Munro Leys), Barbara Sullivan (Henry Hughes), and David Haigh (Brand Finance Plc).

Moderator Marion Heathcote began by providing some modern historical background on indigenous societies, noting that there are today roughly 350 million indigenous peoples accounting for nearly 5,000 indigenous languages in 70 countries. Their culture is often passed on by the oral tradition, which makes it easy for outsiders to ignore, violate, or under appreciate, pitting them on a “collision course” with western IP values as stated by Maui Solomon.

The backdrop: Ms. Heathcote provided a hypothetical case study to the audience where the revered indigenous coconut plant of a small island was discovered and exploited by outsiders. This island, typical to that of Fiji, was one of an oral tradition. Moreover, its indigenous coconut plant held a unique position in the culture as it every part of it was used by the islanders for some purpose, and it held special nutritional and medicinal values. The hypothetical island was discovered by western missionaries. Highlighting the contrast between the two cultures, the panelists noted that in the case of early New Zealanders, they natives were surprised that the westerners were freely giving away copies of their bibles – a text which held the key truths and moral code for them, in contrast to the natives who vested such highly cherished concepts in a small group of elders who passed this on orally to future generations.

The outside exploitation: Once the outsiders discovered the unique properties of this coconut, they soon purchased the tribal lands and patented the pharmaceutical compound derived from it. The panel noted that this was like the case of the Hoodia cactus (which had been used for centuries by the San Bushmen of the Kalahari) which was patented by a pharma company for its appetite-suppressant capacity. Although in the hypo, the outsiders negotiated and paid for the land, the panel noted this was a classic example of “talking past each other” in that the natives did not understand that they were losing rights in their cherished coconut in exchange for fast money which brought problems of its own in e.g., alcoholism. When the elders suggested the natives return to the sacred lands, they were faced with the reality that they no longer had rights of access to their homeland.

Inappropriate Use?: Continuing on with the hypo, the coconut was so wildly popular in western culture, that sports teams of western employees on the island prompted professional sports teams to adopt a team name based on the coconut name. (Take for example, the Atlanta Braves, Washington Redskins, or former Miami Redskins). A modern example given was that of pop artist Robbie Williams who found his Maori tattoo caused some controversy as traditionally such tattoos carry significant cultural meaning. All this underscored the panel’s point that often uses of culturally significant “marks” may be inappropriate where uses by outsiders are not in compliance with the social code behind the culture; then again they may be simply look-alikes, e.g., in the case of “meaningless squiggle” tattoos vs. “actual [Maori] designs”. (Though the panel clarified that this may well often be an ethical concern rather than a strictly legal one).

Solution?: Consent: The panelists remarked that often indigenous cultures are willing to share their culture with outsides so long as certain cultural norms / terms of use are respected (i.e., corporate citizenship in line with the values of the indigenous peoples) and (undetermined) royalties paid. One commentator from the audience noted that often attempts to contact indigenous peoples presents quite significant difficulties in and of itself (e.g., as in the case of the Hoodia cactus).

Guidance?: Ultimately, when, how, and from whom to obtain consent will present obstacles to those interested in using indigenous concepts as trademarks. In addition, it will not always be clear when use as a mark will cross the threshold of acceptable vs. offensive use (which itself might possibly be outside the scope of strictly legal considerations). Guidance may however be found in social norms, best practices, publicity (or perhaps more pointedly, the desire for lack of negative publicity), corporate responsibility, guidance from working groups and draft model legislation may guide those seeking to use traditional knowledge and expressions of culture.

The sessions covered today were:

(1) Effective Global Branding: Crossing Cultural and Global Borders featuring Klos Morel Vos & Schaap) with speakers Anamaria Cashman (Playboy Enterprises, Inc.), Paul Rawlinson (Baker & McKenzie), and Jennifer Powers (Red Bull GmbH)

(2) Similarity in a Global Context featuring Dr. Michael Best (Freitag & Best, Rechtsanwälte) with speakers Fabio Angelini (De Simone & Partners S.p.A.), Bernard Volken (Furhrer Marbach & Partner), and H0-Hyun Nahm (Braun IP & Law)

(3) Resolving Disputes with ADR featuring Eduardo M. Machado (Montaury Pimenta, Machado & Lioce Advogados) and speakers Jose Barreda (Barreda Moller), Katrina Burchell (Unilever PLC), and Gregory P. Giula (Duane Morris LLP).

Read more about each at the respective post.

The day’s final session was Resolving Disputes with ADR featuring Eduardo M. Machado (Montaury Pimenta, Machado & Lioce Advogados) and speakers Jose Barreda (Barreda Moller), Katrina Burchell (Unilever PLC), and Gregory P. Giula (Duane Morris LLP).

Moderator Eduardo M. Machado noted at the outset that the session would focus specifically on Trademark Mediation in the United States, Latin America, and E.U. Speaking first was Gregory P. Giula who noted that when done at the correct stage, mediation could be a cost-saver, could provide the parties with a mediator with specific technical expertise, may or may not be applicable for certain practical issues (e.g., injunctions, venue, or the scope of protection for a mark), provides the parties with a certain degree of flexibility (e.g., re: discovery, timing of proceedings), is often time-efficient (e.g., the mediation can be conducted on an expedited basis), and importantly, the confidentiality of he proceedings (as opposed to judges who may be reluctant to issue confidentiality orders). Mr. Giula also highlighted that where parties seem willing to settle, mediation through a trained mediator may be particularly applicable and often bears much more fruit than counsel or parties simply picking up the phone to discuss the matter. Still, he noted several possible disadvantages, namely, lack of formal (i.e., binding precedent) award, scope of discovery, the fact that the parties may “walk away” at any time, potentially a less thorough review of the facts and law, lack of damages, lack of provision for attorney fees.

Speaking next was Jose Barreda who noted that in some Latin American courts, mediation is required by courts as a preliminary step to resolving a dispute. He curiously noted that mediation had no formal constitutional support, and may not be enforceable, but is rather a suggested solution, and may not have effect as to use of a mark in commerce (where e.g., an injunction to prevent certain uses would be preferred). Mr. Barreda closed by noting that parties typically would not use mediation, but would instead use a “mock arbitration” which is then passed on to applicable legal authorities who would follow the finding.

Speaking on the E.U. perspective, Katrina Burchell noted that arbitration was far more prevalent than mediation (as there is a distinct lack of demand for trademark mediation) in that practitioners might have a lack of expertise using and/or conducting mediation (except e.g., for compulsory mediation under the Nominet domain name dispute policy). She noted that the U.K. IPO offered a mediation service, and that party demand seemed to be increasing. She also noted that there was a pending E.U. Mediation Directive which would: place an obligation on member-states to train qualified mediators who would adhere to a single code, provide the judiciary with mechanisms to mandate mediation, potentially have the force of law (e.g., as a court order), remain confidential. She did note that the Directive left open whether mediations conducted outside the E.U. would have effect in the E.U., and whether the mediator could later be called as a witness in future disputes. Ms. Burchell next noted certain points which may or may not make mediation attractive especially from an in-house perspective, namely the cost (which in non-U.S. countries may be similar to litigation as there is no discovery in either mediation or litigation), outcome, confidentiality, “win-win” scenario, facilitation of negotiated settlements, and consumer / shareholder perspective for respect of law / mark strength. She also addresses that certain cultures may be more or less willing to mediate.

Fielding questions from the audience, the panel noted that as to controlling the mediation, the parties could carve out the intended scope of the mediation at the outset to direct the mediator. Moreover, it was noted that fundamentally, there may be two types of mediations, namely, an evaluative type (where a mediator is making suggestions rather than teasing out negotiations from the parties) and a facilitative type, the former of which may make it appropriate for a party to walk away. The panel also noted various hybrid forms of mediations / arbitrations including “neutral evaluation.”

The mid-morning session was Similarity in a Global Context featuring Dr. Michael Best (Freitag & Best, Rechtsanwälte) with speakers Fabio Angelini (De Simone & Partners S.p.A.), Bernard Volken (Furhrer Marbach & Partner), and Ho-Hyun Nahm (Braun IP & Law).

Moderator Michael Best kicked off the session by illustrating a case example of an in-house counsel (played in this case by Fabio Angelini) seeking advice of outside counsel as to the registrability of his client’s proposed new mark. The in-house counsel provided an instruction letter to the outside counsel (referred to humorously and perhaps as an intentional double-entendre as the out-house counsel by one panelist) clarifying the scope (i.e., classes of goods & services) of the intended mark and the intended geographic scope of the mark’s roll-out along with certain factual information such as the sophistication of the marks consumers and the desire not to license the mark. The three proposed marks for the architectural firm were: ANLOD, deBUILD, and SKYLINES. Speaking first, Angelini noted that the first step prior to outsourcing the search was a knock-out or “identical marks” search. Based on these results, he outlined 4 levels of risk he would anticipate receiving from outside counsel: mark available, manageable risk (e.g., a risk that could be eliminated by cancellations, buy-out, or amicable resolution), substantial risk (e.g., a risk of litigation or other adverse action that may exceed the client’s budget or willingness to assume such a risk), and unacceptable risk (e.g., direct conflicts).

Bernard Volken spoke next about the scope of searches when rolling out new marks, namely, whether the search should cover classes of goods and services closely related to the anticipated offered services. He gave examples of court precedent to the effect that a trademark owner might want to conduct a cross search for financial services if their product is automobiles as automakers typically offer leasing services. Similarly, banking, counseling, and legal services have been held to be related such as to require counsel to conduct cross-searches in appropriate circumstances. However, he noted that his is not an easy concept to define, and that it may not always work both ways. Finally, he noted that it is important to conduct searches for domain names that may conflict with a proposed mark.

Next Mr. Nahm built on this idea of cross-searching by noting that in some instances, goods such as breads, ham, and bacon were held to be similar to restaurant services. He (dovetailing on the morning session) highlighted that it is important to conduct searches both with regard to the phonetic and transliteration of a mark. He noted that the KIPS looked at factors such as pronunciation, appearance, and concept (i.e., transliteration), all of which must be dissimilar to proceed with a proposed mark. Turning to the SKYLINE example proposed mark, he noted that it would also be important to look at whether the mark was seen as singular, or whether it could be viewed in a dual sense, i.e., SKY – LINE.

Turning back to the in-house perspective, Mr. Angelini confirmed that given the above information, he would expand the scope of the searched goods and services because of possible crossover from architectural services to other goods and/or services. He noted particularly, that there might be close calls in which a mark owner might shy away from product roll out because of the distinct possibility of expansion into the owner’s core goods or services by prior owners in similar classes. However, where this is the case, he noted that if the risk is otherwise low, it may be appropriate to consider use investigations which could be used to bring cancellation proceedings, buy-outs, co-existence agreements, or letters of consent. In the end, the informed panel opined that there was no right or wrong answer as to which proposed mark would present less challenge (as each presented unique obstacles, e.g., in its descriptiveness, transliteration, or existence of similar marks) at least legally speaking. Ultimately, it would boil down to the client’s perspective on risk, which geographic regions they might expand into, and their marketing and legal budget.

The first of the week’s sessions: Effective Global Branding: Crossing Cultural and Global Borders was moderated by Sven Klos (Klos Morel Vos & Schaap) with speakers Anamaria Cashman (Playboy Enterprises, Inc.), Paul Rawlinson (Baker & McKenzie), Jennifer Powers (Red Bull GmbH).

Moderator Sven Klos started by speaking of today’s global culture fueled by cross-border applications such as the Internet. He recalled a visit to the former east Germany where it formerly appeared drab and cold in part because there was no advertisements, no branding, no color.

Paul Rawlinson began by recalling the theme of “Breaking Down Barriers” pointing out the challenges trademark owners face when they expand brands away from their “home turf.” Mr. Rawlinson showed slides of several examples of brands that successfully crossed borders (predominately by graphic logos, e.g., the McDonald’s arches). He continued noting that two presently challenging markets in particular because of their different alphabets and cultural values are Russia and China. He then illustrated examples of cases where U.S. or U.K. companies were faced with post product roll-out rebranding because of inappropriate translations of the native language to English, or vice versa. With Chinese for example, not only is the linguistic / phonetic translation important to factor into branding, but the transliteration (letter-by-letter translation) of the Chinese characters is a factor to consider. Using IKEA, PEPSI, and COCA-COLA as examples, Mr. Rawlinson illustrated how these brands had Chinese translations that corresponded to the desired English translation (e.g., IKEA meant “fit for home” in Chinese). He pointed out that it was incumbent on trademark counsel to work with a broad audience, e.g., marketers, translators, and business persons. Using a case example of Starbucks, he noted that as to infringers and copycats, often the fame of the mark would assist in enforcement efforts.

Anamaria Cashman spoke next about the challenges Playboy faced in reaching across cultures by way of case studies in China, Indonesia, and Singapore. She noted that it is important not only to conduct a trademark registrability search, but a “cultural” search when expanding brand lines. She noted that part of the global nature of Playboy – which is marketed in 130 countries – stemmed from its expansion into various consumer areas such as magazines, internet, apparel, radio, and clubs. Apparently, Playboy evokes different images in different cultures, in some cultures, it evokes images not only of women, but of thought-provoking articles discussing current events. For example, in China, Playboy overcame the hurdle that Playboy in China was offensive to cultural norms by convincing, inter alia, government officials that Playboy is a responsible corporate citizen, and intended to bring only high-class apparel to China (of which it is a leading seller). She underscored that not only is it important to research literal and phonetic translations, but to work closely with local counsel and officials. She proceeded to give the case study of Indonesia where there was strong opposition by Muslim groups to the expansion of Playboy into Indonesia. She noted that there were protests, stonings, and obscenity charges against the Editor (on which Playboy prevailed). The magazine is not yet available in Indonesia, but overcoming these obstacles lays the groundwork for its future marketing. Moving next to the case study of Singapore, she noted that although Playboy had no present plans to expand in Singapore, they secured defensive domain name registrations. Next she summarized of the often expensive priorities of protecting a global brand, noting three key areas: protection (e.g., multi-country registrations – including defensive, docketing, and trademark monitoring services), prioritization (e.g., resources, investigations – including with local experts, brand goals – whether cease & desist actions, criminal investigations, or otherwise, internal teams, hidden costs – notably with respect to local customs officials and practices, and sharing the good news of enforcement efforts to inside and outside counsel), and partnerships (”partnerships, partnerships, partnerships”).

Jennifer Powers spoke next regarding IP management for a global brand whose presence extends to 146 countries. Part of this expansion is due to reaching out to consumers in varying contexts, e.g., Red-Bull sponsored events. She went on to highlight several critical aspects of global brands, namely, strong management support (e.g., ownership standing by the brand), a clear strategy and well-defined goals of classes of goods and services communicated to insiders, precise docketing, clear communications, a committed global team, a clearly defined budget, and flexibility in tackling legal and cultural developments. Mrs. Powers proceeded to highlight several goals of Red Bull, namely, world-wide recognition of the mark, world-wide coverage, maintenance of merchandising and licensing, consolidation of marks, and effective enforcement and use of appropriate brand-management tools, (e.g., marks, uses, survey evidence). She next discussed the company’s prosecution strategy, namely, defining the classes of goods and service, re-applications, renewals, new mark searches, and a degree of required flexibility with non-traditional marks (e.g., the blue/sliver color combination which Red Bull has defended in some contexts). She specifically mentioned that with regard to prosecution duties counsel should collect evidence of use on at least an annual basis (which in turn can be used on affidavits), conduct annual legal and consumer market surveys, and continually re-evaluate the previously defined branding strategy. Regarding a trademark conflict strategy, Mrs. Powers noted in closing that it was the policy of Red Bull to opposed identical marks in all classes, and confusingly similar marks incorporating part of the Red Bull mark.

In sum, the speakers outlined the many surmountable challenges facing brand owners expanding into new and global markets.

Acting President Rhonda Steele (Mars Inc.) kicked off the INTA Annual Meeting with the theme: “Breaking Down Barriers.” Welcoming attendees to Berlin and encouraging them to enjoy the diverse and historical city, Mrs. Steele noted her steering of INTA efforts particularly in the Asia-Pacific region and E.U. She observed that the challenges and opportunities facing trademark owners and counsel in emerging markets might be summed up by the moniker: “one size does not fit all.” Mrs. Steele remarked that this multi-faceted approach to trademarks could be seen in efforts to promote new ways of thinking about trademarks, e.g., with respect to protecting non-traditional marks (sight, sound, color, taste) as well as using trademark law to protect traditional knowledge, culture, and folklore. Building on this, she noted that a broader goal was in harmonizing the recognized harms of counterfeiting (the focus of the recent Fourth Global Congress to Combat Counterfeiting & Piracy in Dubai) and global criminal enforcement of counterfeiting laws. Finally, she commented that activities and resources should be focused on a forward-looking approach to understanding the value of Alternative Dispute Resolution (ADR) in trademark disputes as well as education and outreach focused on NGOs, the judiciary, consumers, and retailers.

Wrapping up the evening was Keynote Speaker Hans Van Bylen (Henkel). Mr. Van Bylen summarized the importance of trademarks at the outset of his talk by noting that Henkel’s reputation is built on inventions and brands. Underscoring the role of trademarks to the company’s broader IP portfolio, he pointed out that 10 years ago Henkel was primarily a German company, but presently it has a significant U.S. presence and an increasing one in emerging markets. This expansion has seen the birth of 110,000 trademark registrations in 198 countries. Mr. Van Bylen illustrated that one of the key aspects of Henkel’s success was in its disciplined use of “Master Brands” (e.g., house mark) “Schwarzkopf”. Schwarzkopf was acquired in 1995, and has seen tripled sales from then to 2007. Mr. Van Bylen provided examples demonstrating the gradual packaging changes to incorporate the Schwarzkopf master brand as part of the company’s long term trademark strategy. He also highlighted the importance of adapting Henkel’s product lines for an international market (“göt2b” in the U.S. became “got2b” in E.U. markets – with a plus sign inside the “o” instead of the “ö”). Finally, Mr. Van Bylen illustrated what he called “Glocal” branding – where a master brand is tied to local designations, e.g., the Schwarzkopf brand complemented by local linguistic variations (English, French, or Greek) in the secondary product designations.

Internet Cases contributor Brian Beckham is attending the 130th annual meeting of the International Trademark Association in Berlin, Germany May 17-21 and will be liveblogging important events. Follow along here at http://inta.internetcases.com.