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Policy and Advocacy


Amicus Briefs


INTA provides expertise in trademark law to courts around the world through amicus briefs and other filings. INTA briefs are drafted by the Association's International Amicus Committee and approved for filing by the Executive Committee or Board of Directors.

Policies and procedures for requesting an INTA amicus submission

2014

 Shammas v. Focarino


Court: U.S. Court of Appeals for the Fourth Circuit

INTA Position: The Court should reverse the Eastern District of Virginia’s decision to include attorney’s fees in the amount of the portions of the Patent and Trademark Office’s attorney and paralegal salaries that were dedicated to the litigation as expenses as defined in Lanham Act Section 21(b)(3), which states that, for “any case where there is no adverse party . . . unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not.” The district court’s decision should be reversed because: (1) Section 21(b)(3) lacks “explicit authorization from Congress” to award attorney’s fees, (2) the legislative history of section 21(b)(3) provides no authority for the award of attorney’s fees, and (3) the district court’s approach would create a chilling effect and introduce such a prohibitive expense that it would effectively remove district court review under Section 21(b) as a viable procedure for all but the wealthiest applicants.


Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc.

Court: U.S. Supreme Court

INTA Position: The Court should grant certiorari in order to resolve the active dispute among various Circuits regarding the traditional presumption of irreparable harm in both false advertising and trademark infringement cases under the Lanham Act.


Ate My Heart, Inc. v. Japan Patent Office

Court: The Supreme Court of Japan

INTA Position: The Court should accept the petition for appeal and overturn the ruling of the IP High Court, allowing the LADY GAGA mark to proceed to registration. The IP High Court misjudged the distinctiveness of the Mark. “LADY GAGA” does function as a badge of origin for Class 9 products and is not descriptive in that the Mark does not demonstrate any particular quality (content) or other characteristics of the Goods. Furthermore, consumers or traders would not recognize any particular quality (content) of the Goods from the Mark, so there is no likelihood of confusion as to their quality (content). The Decision would also pose a question as to consistency with existing trademark registrations. Many famous trademarks in the fashion industry are derived from the name of the founder and the designer of the brand and have not been rejected on the basis that they may mislead consumers about the quality (content) of the goods. There is no legitimate reason to treat the name of a singer and the name of a designer of a brand differently, and consider that these names represent the quality (content) of the goods.

Outcome: The Supreme Court refused to hear the appeal. The decision of the IP High Court refusing the registration of the LADY GAGA mark will stand.


Pom Wonderful v. The Coca-Cola Company

Court: U.S. Supreme Court

INTA Position: The Court should reverse the Ninth Circuit's decision holding that a private party cannot bring a Lanham Act false advertising claim challenging a product label regulated under the Food, Drug, and Cosmetic Act (FDCA). Congress enacted the Lanham Act and FDCA for different but complementary purposes and there was no irreconcilable conflict in the application of the statutes here. By reversing the decision, the Court will recognize Congress's intent to enact a broad, federal unfair competition law that promotes fair business competition and benefits the public interest.

Outcome: 
The Court reversed the Ninth Circuit decision, ruling that competitors may bring Lanham Act claims challenging food and beverage labels regulated by the Federal Food, Drug, and Cosmetic Act (FDCA) because, among other reasons: a) the case does not raise the question whether state law is pre-empted by a federal law, but instead concerns the alleged preclusion of a cause of action under one federal statute by the provisions of another federal statute; and b) neither the Lanham Act nor the FDCA, in express terms, forbids or limits Lanham Act claims challenging labels that are regulated by the FDCA. Read the full decision here.

2013


Lexmark International Inc. v. Static Control Components, Inc.

Court: U.S. Supreme Court

INTA Position: The Court should resolve a three-way split among the Circuit Courts of Appeal with respect to the proper analysis of prudential standing for false advertising claims brought under Section 43(a) of the Lanham Act by adopting the broad and flexible "reasonable interests" test applied by the Second and Sixth Circuits. In adopting this uniform standard, the Court should reject the two alternative prudential standing tests for Section 43(a) claims—the "categorical" test and "AGC Factors" test—advocated for by the petitioner and applied by other Circuits.

Outcome: The Supreme Court rejected all previous tests applied by the courts and fashioned a new test for bringing a false advertising claim under the Lanham Act. Read the decision here.


Magasins Best Buy Ltée et al v. Office Québécois de la langue française

Court: Quebec Superior Court

INTA Position: The Office Québécois de la langue française (OQLF) conflates the distinct concepts of trademarks and trade names in its 2011 interpretation of the Charter of the French language and the Regulation respecting the language of commerce and business by requiring trademark owners to include a generic French translation of their publicly displayed marks. The Court should reject this new interpretation, which has the potential to confuse consumers and result in the cancellation of Canadian trademarks in certain cases.

Outcome: The court held that trademarks are distinct from trade names, and that the OQLF's interpretation of the Charter and Regulation was incorrect. Read the decision here (French). 


 Ferring Pharmaceuticals v. Watson Pharmaceuticals

Court: U.S. Court of Appeals for the Third Circuit

INTA Position:
The court should hold that a showing of likelihood of success under the Lanham Act continues to give rise to a rebuttable presumption of irreparable harm and that such a presumption is not inconsistent with the Supreme Court’s decisions in eBay Inc. v. MercExchange and Winter v. Natural Res. Def. Counsel, Inc. This longstanding presumption remains appropriate in Lanham Act cases because the injury that results from false advertising and trademark violations is inherently unquantifiable and, as such, irreparable.

Outcome: The court held that the presumption of irreparable harm—which traditionally has been applied following a showing of a likelihood of success on the merits in trademark and false advertising cases—no longer applies. INTA has urged the Supreme Court to grant certiorari in the Herb Reed case (see above) so that it can resolve the conflict among the lower courts on this issue, and reinstate the principle that irreparable harm can be presumed in Lanham Act cases upon a showing of a likelihood of success on the merits. 


 Samsung Electronics Company Ltd. & ANR v. Kapil Wadhwa & Ors

Court: Supreme Court of India

INTA Position: The principle of trademark exhaustion should apply only nationally with respect to parallel imports unless there is clear proof that the trademark owner has expressly consented to the sale and import of the goods in a foreign market.


2012

 Specsavers International Healthcare Limited & others v. Asda Stores Limited

 Annexes to INTA brief

Court: Court of Justice of the EU

INTA Position: Community Trade Mark registrations for graphic device marks and word marks can be used in combination for the purposes of Articles 15 and 51 of the CTMR. It does not make a difference if: (i) the word mark is superimposed over the graphic device; or (ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trade mark. Where a Community trade mark is not registered in color, but the proprietor has used it extensively in a particular color or combination of colors such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the Community) with that color or combination of colors, such color or colors are relevant in the global assessment of (i) likelihood of confusion under Article 9(1)(b) and (ii) unfair advantage under Article 9(1)(c) of Regulation 40/94. Finally, it is also relevant that as part of the global assessment the defendant itself is associated in the mind of a significant portion of the public with the color or particular combination of colors which it is using for the sign in question.

Outcome: The CJEU agreed with all of INTA's positions. The case will now return to the UK Court of Appeal (England & Wales) (Civil Division) to be decided in accordance with the CJEU ruling.


 Sunbeam Products, Inc., d/b/a Jarden Consumer Solutions v. Chicago American Manufacturing, LLC

Court: U.S. Supreme Court

INTA Position: The Court should grant certiorari in order to resolve a conflict among the courts of appeal regarding whether a licensee can continue to use a licensed trademark after the trustee in a bankruptcy of the licensor has rejected the license under the bankruptcy rules allowing rejection of executory contracts.

Outcome: The Court denied the petition for certiorari.


 Already, LLC, d/b/a Yums v. Nike.Inc.

Court: U.S. Supreme Court

INTA Position: The Court should affirm the Second Circuit's decision that an unconditional, broad covenant not to sue divests a federal court of Article III jurisdiction over a trademark cancellation claim because (1) such a covenant renders moot the original trademark infringement action, thereby removing the necessary "case or controversy" before the court, (2) the trademark cancellation claim does not provide an independent basis for jurisdiction, (3) the claimant has recourse to request cancellation from the USPTO Trademark and Trial Appeal Board, which is a more appropriate forum for resolution of cancellation claims, and (4) the Second Circuit's decision promotes the important public policy of favoring amicable resolution of disputes without resort to the courts.

Outcome: Following the reasoning in INTA's amicus brief, the Court held that Nike's broad covenant not to sue divested the district court of subject matter jurisdiction to hear the defendant's counterclaims against Nike for non-infringement and for cancellation of Nike's registration underlying the dispute. The Court held that Nike bore a heavy burden under the “voluntary cessation” doctrine to show that its covenant was so broad that it "could not reasonably be expected" to sue the defendant again in the future over the disputed shoe designs, and found that Nike had met burden. Moreover, because the defendant had not produced evidence of plans to make or sell a shoe that would fall outside of Nike's broad covenant not to sue, the counterclaims were moot, and the district court no longer had jurisdiction to hear them.


2011

 Unilever N.V. v. Administrative Resolutions No. 537 of August 2010 and No. 241 of October 2010

Court: The Honorable Exchequer Court, First Chamber of Paraguay

INTA Position: the decisions by Paraguay’s Industrial Property Directorate—rejecting registration of the slogan “Ensuciarce Hace Bien” (“Dirt is Good”) on grounds that is is contrary not only to public order, good customs and morals, but also the Constitution’s requirement to protect public health—demonstrate a need for developing reliable standards and guidelines for analyzing or determining what it means to be “contrary to health” in order to eliminate arbitrary rulings and to establish a framework on which future applicants can rely.
 
Outcome: Pending


 Richemont International SA v. Russian Patent and Trademark Office

Court: Arbitrazh Court of Moscow

INTA Position: Rospatent and the lower courts erred in limiting the operation of Article 10bis of the Paris Convention to cases where there is "confusion" or where a mark is well known in the Russian Federation.

Outcome: The Supreme Arbitrazh Court's opinion, while not citing INTA's brief, followed the Association's position with respect to the bad faith and unfair competition aspects of the case.


 Christian Louboutin S.A. et al. v. Yves Saint Laurent America Holding, Inc. et al.

Court: U.S. Court of Appeals for the Second Circuit

INTA Position: the court should vacate and remand to the district court, which made two legal errors in analyzing the plaintiffs’ federally registered Red Sole Mark. First, the district court misconstrued the mark as consisting solely of “the color red” and failed to recognize the presumption of validity attendant to federal trademark registrations. Second, the district court erred in finding the Red Sole Mark functional.

Outcome: The Second Circuit's opinion, consistent with arguments advanced in INTA's brief, held that the plaintiffs held a valid federal trademark registration for a red lacquered outsole, but the Court modified the registration to limit it to a red sole that contrasts with the color of the adjoining upper. Because the court found no infringement of that more limited mark, it did not reach the question of whether the trademark was nonfunctional, but it did confirm, as advocated by INTA in its brief, that aesthetic functionality may only be found if granting trademark protection to the feature would substantially hinder competition.


 PT Bintang Pesona Jagat v. PT Karya Tajinan Prima

Court: Supreme Court of Indonesia

INTA Position: the court should overturn the decision of the Commercial Court because 1) the fact that the defendant had been granted an excise license based on a statement that its tobacco products were not similar to the products of another should not prevent consideration of the plaintiff's trademark law claims; and 2) the fact that the plaintiff did not use its trademark exactly as registered should not result in invalidation of its trademark registration.

Outcome: the case was dismissed for procedural reasons and not heard by the Supreme Court.


 International Hair Cosmetics Ltd v. International Hair Cosmetics Group Pty

Court: Full Court of the Federal Court of Australia

INTA Position: INTA sought to intervene to make submissions on issues relating to how the courts of New Zealand, the United Kingdom and the United States have approached the issue of online trademark use and its interaction with domestic trademark rights. The trend in international jurisprudence indicates that, generally, drop-down boxes, currency conversion tools, distribution maps, delivery and a country-specific domain name suffice to amount to trademark use in a jurisdiction.

Outcome: the parties came to an agreement out of court before the hearing.


 Fleischer Studios, Inc. v. A.V.E.L.A., Inc.

Court: U.S. Court of Appeals for the Ninth Circuit

INTA Position: the court should rehear the case to correct two errors in the original panel's majority decision, namely: 1) the majority's application of the doctrine of aesthetic functionality, which is in conflict with another Ninth Circuit decision that substantially limited that doctrine; and 2) the majority's statement in dicta that when a copyrighted work falls into the public domain, the owner of a trademark comprised of that work can no longer assert trademark rights, which ignores precedent holding that the two areas of law protect against different wrongs.

Outcome: the panel withdrew the portions of its original opinion that INTA had identified as in error and issued a new opinion that made no mention of 1) the doctrine of aesthetic functionality; or 2) the status of trademark rights with respect to copyrighted works that have fallen into the public domain.


2010

 Penguin Group Inc. v. American Buddha

Court: New York State Court of Appeals

INTA Position: the court should, in its decision on a jurisdiction question referred by the U.S. Court of Appeals for the Second Circuit in a copyright case, limit its opinion on where the "situs of the injury" occurs to copyright cases, rather than answering the question with respect to "intellectual property" cases in general 

Outcome: the jurisdiction question was decided solely with respect to copyright cases 


 Masterpiece Inc. v. Alavida Lifestyles Inc.

Court: Supreme Court of Canada

INTA Position: the should clarify that the fact that two parties' marks were not used in the same geographical area on the date the junior user applied to register its mark is not relevant to the determination of likelihood of confusion between the marks

Outcome: the Court, noting INTA's participation as an intervener, held that geographical separation in the use of otherwise confusingly similar trademarks does not play a role in the determination of likelihood of confusion


Nokia Corporation v. Her Majesty’s Commissioners of Revenue and Customs (HMRC)

 UK Court of Appeal submission

INTA Position: the Court should refer to the Court of Justice of the EU the question whether the EU Counterfeit Goods Regulation permits local customs authorities to seize counterfeit goods that are in transit but not intended for sale in a member state

Outcome: UK Court of Appeal referred the case to the Court of Justice of the EU and granted INTA formal leave to intervene in the subsequent hearing

 Court of Justice of the EU written submission

 Court of Justice of the EU oral hearing submission

Oral argument was heard on November 18, 2010 in Luxembourg. INTA was represented by Nicholas Saunders and Matthew Harris.

INTA Position: the EU Counterfeit Goods Regulation is intended to permit local customs authorities to seize counterfeit goods that are in transit but not intended for sale in a member state

Outcome: the Advocate General's opinion was delivered February 3, 2011.


 Rosetta Stone Ltd. v. Google, Inc.

Court: U.S. Court of Appeals for the Fourth Circuit

INTA Position: First, the district court misapplied the doctrine of functionality when it used that doctrine to consider whether a search engine is liable for trademark infringement when it uses trademarks to offer keyword advertising. Second, the district court erred 1) in holding that the defendant could not be liable for dilution because it did not use the plaintiff’s marks to identify its own services and 2) in holding essentially that the plaintiff was required to show actual dilution.

Outcome: In its decision reversing the district court’s grant of summary judgment to Google, the court  adopted INTA’s arguments and also held that the sufficiency of Rosetta Stone's evidence of confusion should be assessed at trial, not on summary judgment.


 Tiffany (NJ) Inc. v. eBay, Inc.

Court: U.S. Supreme Court

INTA Position: The Court should grant certiorari in order to resolve a conflict among the courts of appeal regarding the knowledge required to impose contributory infringement liability on the operator of an online marketplace for the sale, by third parties, of counterfeit and infringing merchandise

Outcome: The petition for a writ of certiorari was denied


2009

 Levi Strauss & Co. v. Abercrombie & Fitch Trading Co. 

Court: U.S. Court of Appeals for the Ninth Circuit

INTA Position: Under the U.S. Trademark Dilution Revision Act, the “degree of similarity” of two marks should be weighed along with the five other statutory blurring factors to determine whether there is a likelihood of dilution by blurring

Outcome: Agreeing with INTA's amicus brief, the court ruled that trademarks do not have to be “identical or nearly identical” in order to support a finding of likelihood of dilution by blurring; instead, courts should consider the "degree of similarity," along with the other statutory factors, in deciding whether a challenged use is likely to blur a famous trademark.


 Chloe v. Queen Bee of Beverly Hills 

Court: U.S. Court of Appeals for the Second Circuit

INTA Position: Operating an interactive website that offers to sell merchandise to a U.S. state and actually shipping a counterfeit item to a recipient in that state should be sufficient to establish jurisdiction

Outcome: In agreement with INTA's position, the court reversed the district court's holding that there was no personal jurisdiction


 Grupo Anderson’s S.A. de C.V. v. Mexican Institute of Industrial Property

Court: Mexican Administrative Federal Court of Appeals

INTA Position: Mexican trademark owners should have the right to seek cancellation of a registration on the ground of bad faith, a right currently enjoyed by foreign trademark owners

Outcome: The court confirmed the decision of the Mexican Institute of Industrial Property and did not permit the Mexican trademark owner to seek cancellation of a trademark registration claimed to have been obtained in bad faith


2008


 Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.

Court: U.S. Court of Appeals for the Second Circuit

INTA Position: For a finding of likelihood of dilution, the U.S. Trademark Dilution Revision Act does not require that the marks be very or substantially similar and does not require that the defendant have a bad faith intent to associate its mark with the plaintiff's mark

Outcome: The court agreed with INTA's position on both counts


2007


 Austin, Nichols & Co. Inc. v. Stichting Lodestar

Court: New Zealand Supreme Court

INTA Position: In its first intervention in a New Zealand court, INTA argued that in appeals from decisions of the Commissioner of Trademarks, the issue of deference to the Commissioner’s decision should be a factor to be weighed by the High Court in making its decision

Outcome: In an approach that was consistent with INTA’s submission, the Supreme Court held that the High Court is required to come to its own view on the merits. The weight it gives to the Commissioner’s decision is a matter of judgment



 ITC Limited v. Punchgini 

Court: U.S. Court of Appeals for the Second Circuit

INTA Position: The U.S. state of New York does not (and should not) have a common law famous/well-known marks doctrine; such disputes can be adequately analyzed and decided using traditional unfair competition law

Outcome: The court held that New York common law does not have a famous marks doctrine


 Intel Corporation Inc. v. CPM United Kingdom Ltd. 

Court: European Court of Justice

INTA Position: Under the European Union's trademark dilution law, the analysis should not focus on whether there is a "link" between the well-known mark and the junior mark, but rather whether under all the circumstances there is a likelihood of unfair advantage because of use of the junior mark

Outcome: While the court did not reject the "link" analysis, it held—consistent with INTA's submission—that "existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case"


 Adidas AG et al. v Marca Mode et al. 

Court: European Court of Justice

INTA Position: The scope of protection of a registered trademark does not depend on a consideration of the "requirement of availability" (that is, the avaibility of marks to other traders).

Outcome: Consistent with INTA's position, the court held that infringement should be determined by analyzing likelihood of confusion, not by considering the "requirement of availability"


 Prestone Products Corporation v Pt. Teguh Mulia Perdana and Drs. Nengrat Kwandou

Court: Supreme Court of Indonesia

INTA Position: Indonesian opposition proceedings against the registration of an allegedly infringing mark should not deter the Indonesian court from deciding on an infringement action relating to the same mark

Outcome: Consistent with INTA's position, the Court held that the lower court should not have deferred to the trademark office and should have made independent findings as to whether there was infringement. The Court examined the marks at issue and determined that there was a likelihood of confusion with the plaintiff's well-known mark


 Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC

Court: U.S. Court of Appeals for the Fourth Circuit

INTA Position: The U.S. district court erred by 1) permitting a parody defense to a claim under the U.S. Trademark Dilution Revision Act (TDRA) despite the fact that the defendant used the mark as a designation of source for its own goods and 2) failing to apply the six likelihood of dilution factors stated in the TDRA

Outcome: The court accepted INTA’s positions that (1) the TDRA's parody defense does not apply because the defendant was using the trademark for its own products and (2) the district court had inadequately considered the six TDRA factors for assessing likelihood of dilution by blurring.  However, instead of remanding the case so that the district court could further analyze the factors, the Fourth Circuit analyzed the factors itself and determined that there was no dilution by blurring


2006

 Special Effects v. L'Oréal SA

Court: UK Court of Appeal

INTA Position: Defendants should not be stopped from challenging the validity of a mark in defense to trademark infringement proceedings, where they made a similar but unsuccessful challenge in an opposition proceeding

Outcome: With special mention of INTA's participation as an intervener, the Court held that defendants' unsuccessful challenge to the mark's validity in an opposition did not bar defendants from challenging validity in an infringement action


 Intel v. Pt. Panggung Electric Corporation

INTA Position: It is the period of non-use and not the exact date of last use that determines whether a trademark qualifies for deregistration.


2005

 SARL Céline v. SA Céline 

Court: European Court of Justice

INTA Position: Use of a registered trademark as a company or trade name can be an infringing use within the meaning of Article 5(1) of the European Trademark Directive

Outcome: The Court stated use of a registered trademark as a company name may be infringing if it is used in connection with goods and services such that it amounts to unfair competition


 Contessa Premium Foods, Inc. v. Berdex Seafood, Inc. et. al.

Court: U.S. Supreme Court

INTA Position: The court should grant certiorari in order to resolve a long-standing split among the courts of appeal on whether a trademark owner must prove willful infringement as a prerequisite to recovering the trademark infringer’s profits from the sale of goods bearing the infringing mark

Outcome: The petition for a writ of certiorari was denied


 Tungsway Food & Beverage Holdings, Pte Ltd v. PT Istana Pualam Kristal 

INTA Position: In its brief to the Indonesian Supreme Court, INTA argued that the protection of well-known marks and the protection against bad faith registration, although related, are independent legal concepts. Moreover, use or registration of a mark in a jurisdiction should not be a requirement to determine whether that mark is well known or whether a third party's application for the same mark is made in bad faith


 Bovemij Verzekeringen N.V. v. Benelux Merkenbureau 

Court: European Court of Justice

INTA Position: Pursuant to European Trademarks Directive Article 3(3), distinctiveness can be acquired under Benelux law as a result of the use made of a trademark in a substantial part of Benelux territory (i.e., the Netherlands)

Outcome: The Court ruling was consistent with INTA's submission and held that distinctiveness acquired in the Netherlands was sufficient to permit registration in the Benelux territory


 Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Les Boutiques Cliquot Ltee

Court: Supreme Court of Canada

INTA Position: Under Canadian law, famous marks can be entitled to a broader scope of protection than lesser-known marks in the context of both likelihood of confusion and dilution. Also, depreciation of goodwill is a cause of action unique from likelihood of confusion

Outcome: The Court held that the fame of a mark is an important consideration in a likelihood of confusion analysis. Referring to INTA’s brief a number of times, the Court pointed out that the Association’s participation helped bring “to the fore” the seldom-discussed depreciation of goodwill cause of action under Trade-marks Act Section 22


2004

 Test Masters Educational Services, Inc. v. Singh

Court: U.S. Court of Appeals for the Fifth Circuit

INTA Position: By permanently denying a mark owner the ability to register a mark or contest a competitor’s attempt to register a similar mark, the U.S. district court ignored the possibility that trademark rights can change over time. Any such injunction must be made in light of factual findings of the case

Outcome: The appeals court held that a party could be permanently enjoined from applying for registration of a mark and could be enjoined from interfering with or opposing another party’s application for registration of a mark; however, such an injunction would need to be narrowly tailored to the facts


 French Connection Ltd v. DB Mirchandani

Court: Indonesian Supreme Court

INTA Position: Bad faith registration of a mark should be protected against, regardless of whether the mark is well-known


 KP Permanent Make-Up, Inc. v. Lasting Impression Inc.

Court: U.S. Supreme Court

INTA Position: A defendant asserting the fair use defense need not prove the absence of likely confusion if the three statutory prerequisites for the defense in Section 33(b)(4) of the Lanham Act are met

Outcome: The Court held that a party asserting a fair use defense in a trademark infringement action does not bear the burden of negating likelihood of confusion


2003

 Schering-Plough Ltd v. European Commission and EMEA 

Court: European Court of First Instance

INTA Position: There should be no prohibition on the use of one trademark for the pharmaceutical form of a medicinal product and a second trademark for a dosage form of, or delivery device for, the product

Outcome: Action dismissed by the court without decision on the merits


 JSL Corp. v. Visa International Services Ass'n 

Court: U.S. Court of Appeals for the Ninth Circuit

INTA Position: Adding generic or otherwise nondistinctive elements to a mark (such as the prefix "e") does not make it nonidentical to the senior mark, for either infringement or dilution purposes

Outcome: The court held that the marks at issue were "effectively identical" and that the "e" prefix "does no more to distinguish the two marks than would the words "Corp." or "Inc." tacked onto the end."


 Davidoff & Cie S.A. v. N.V. Sumatra Tobacco Trading Company 

Court: Indonesian Supreme Court

INTA Position: Emphasizing accepted international rules on well-known marks, particularly those contained in the WIPO Joint Recommendation on the Protection of Well-Known Marks, INTA argued that bad faith is an important factor to consider when assessing competing interests in a mark

Outcome: The Court followed the guidelines advocated by INTA


 Paranova A/S v Merck & Co., Inc, Merck, Sharp & Dohme B.V. and MSD (Norge) A/S

Court: European Free Trade Association Court

INTA Position: INTA argued that a trademark proprietor has legitimate reasons to object to repackaging by a parallel importer where a connection to the parallel importer and damage to the trademark could be established

Outcome: The court held that legitimate reasons to object to repackaging of pharmaceutical products may exist where changes to packaging are liable to damage the trademark's reputation


 Tabacalera Boquerón S.A. vs. Nobleza Piccardo SACI and/or BAT and/or BAT BRANDS Limited 

Court: Paraguay Supreme Court of Justice

INTA Position: In its first submission to a high court in South America, INTA encouraged the Court to consider the significance of a trademark owner's right of exclusivity, as protected under the TRIPS Agreement

Outcome: The Court’s opinion was consistent with INTA’s position


 Praktiker Bau- und Heimwerkermärkte AG
 

Court: European Court of Justice

INTA Position: European trademark law allows the registration of service marks for retail services

Outcome: The Court ruled that to register a trademark for retail trade services, it is not necessary to specify the services. Rather, the application should provide details about the goods or types of goods to which the services relate


 Dastar Corporation v. Twentieth Century Fox Film Corporation

Court: U.S. Supreme Court

INTA Position: An action for unfair competition under the Lanham Act requires a showing of likelihood of confusion, not "bodily appropriation"

Outcome: The Court held that unaccredited copying of an uncopyrighted work is not actionable under the Lanham Act.


2002

 Victor Moseley and Cathy Moseley d/b/a Victor's Little Secret v. V Secret Catalogue, Inc. 

Court: U.S. Supreme Court

INTA Position: The U.S. Federal Trademark Dilution Act requires the owner of a famous trademark to show a likelihood of dilution to obtain an injunction

Outcome: The Court ruled that the Federal Trademark Dilution Act requires proof of actual dilution rather than mere likelihood of dilution. After an INTA-led campaign in response to this ruling, the Trademark Dilution Revision Act of 2006 was passed, which, among other things, established an express likelihood of dilution standard


 Taylor Corporation v. Sigma Chi Fraternity and Sigma Chi Corporation

Court: U.S. Court of Appeals for the Eleventh Circuit

INTA Position: A trademark owner should always have the right to control the quality of goods sold under its mark.

Outcome: The Ucourt’s decision was consistent with INTA’s position.


 Intel v. Hanitio Luwi
 

 Intel v. Panggung Electronics 

 Prefel SA v. Fahmi Babra 

Court: Indonesian Supreme Court

INTA Position: INTA's briefs outlined the accepted international rules on well-known marks, particularly those contained in the WIPO Joint Recommendation on the Protection of Well-Known Marks and in 1996 and 1999 INTA Board Resolutions


 Prefel SA v. Jae Ik Choi 

Court: Korean Supreme Court

INTA Position: INTA's brief examined the international standards for well-known mark protection and considered the legal basis for well-known mark protection on dissimilar goods and services


2001

 Playboy Enterprises, Inc. vs. Netscape Communications Corp. 

 Playboy Enterprises, Inc. vs. Excite, Inc. 

Court: U.S. Court of Appeals for the Ninth Circuit.

INTA Position: Traditional principles of trademark law, including those regarding secondary meaning and the types of uses that can trigger infringement claims, apply to cases involving the Internet just as they do in more conventional contexts

Outcome: The court agreed with INTA’s position


 Shield Mark v. J. Kist

Court: European Court of Justice

INTA Position: Under European trademark law, a sound, under appropriate factual circumstances, can function as a trademark.

Outcome: The Court ruled that sounds may function as trademarks, provided they are capable of distinguishing the goods and services of one undertaking from another and are capable of being represented graphically


 Libertel Groep B.V. v. Benelux Merkenbureau

Court: European Court of Justice

INTA Position: Under European trademark law, a color, under appropriate factual circumstances, can  function as a trademark.

Outcome: The Court ruled that color alone, without any form or shape, may function as a trademark if it has a distinctive character and if the color may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.


2000


 TrafFix Devices, Inc. v. Marketing Displays, Inc. 

Court: U.S. Supreme Court

INTA Position: Whether or not a feature is addressed in a utility patent, it could nevertheless be eligible for protection when it otherwise meets the requirements for protection under the U.S. Lanham Act, which include non-functionality

Outcome: The Court agreed, holding that regardless of whether a product feature is the subject of an expired patent, trade dress protection can be asserted only in features that are not functional


 IKEA Inter-systems Inc. v. Beijing Cinet Co. Ltd. 

Court: Chinese Supreme Court

INTA Position: In its first brief filed in a Chinese court, INTA argued that the act of registering a domain name similar or identical to a famous trademark constitutes unfair competition

Outcome: The Court held that registration of a domain name can constitute unfair competition and trademark infringement


 Glaxo Group Limited v. Dowelhurst Limited and Swingward Limited 

Court: European Court of Justice

INTA Position: A parallel importer should be entitled to make only the minimum changes to the packaging necessary to maintain the principle of the free movement of goods. Changes to packaging should not be permitted to damage the assurance of quality or the brand image of the trademark owner.

Outcome: The Court held that a trademark owner may rely on its trademark rights to prevent a parallel importer from repackaging pharmaceutical products unless the exercise of those rights contributes to a restriction of trade.


 Major League Baseball Players Association v. Cardtoons, L.C. 

Court: U.S. Supreme Court

INTA Position: In a brief in support of certiorari, INTA argued that the use of cease-and-desist letters is essential for prompt and adequate protection of trademark interests and should not be limited

Outcome: The petition for a writ of certiorari was denied


 Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

Court: U.S. Supreme Court

INTA Position: For purposes of Lanham Act trade dress protection, nonfunctional aspects of a product’s design may be an inherently distinctive trade dress that is protectable without secondary meaning. The differing perceptions consumers attach to a product’s appearance, as opposed to packages and labels, should be considered

Outcome: The Court held that a product design can never be inherently distinctive, and therefore protectable, in an action for infringement of unregistered trade dress. The Court concurred with INTA that a different standard should be applied to products as opposed to packaging and designs