Top Stories - International Trademark Association

INTA Takes Anticounterfeiting Message to Argentina, Ecuador, and Uruguay

In April, INTA CEO Etienne Sanz de Acedo, Anticounterfeiting Manager Maysa Razavi, and Latin America and the Caribbean Chief Representative Officer José Luis Londoño traveled to Buenos Aires, Argentina, and Montevideo, Uruguay, to support several activities led by the Anticounterfeiting Committee.

The highlight of the trip was the “Third Forum on Enforcement of Intellectual Property Rights: The Role of Intellectual Property Offices,” which was hosted by the National Directorate of Intellectual Property of Uruguay in Montevideo. IP offices from 12 countries were in attendance: Argentina, Belize, Chile, Colombia, Cuba, Ecuador, El Salvador, Guatemala, Mexico, Paraguay, Peru, and Uruguay. There were also officials in attendance from the United States, the World Customs Organization, Uruguayan Customs, and local judges. The meeting was a two-day seminar focused on ways the offices can champion anticounterfeiting efforts in their countries. The event was sponsored by INTA, the International Chamber of Commerce-Business Action to Stop Counterfeiting and Piracy, and the Inter-American Association of Intellectual Property.

The event began with a review of last year’s Forum in Santiago by Maximiliano Santa Cruz, National Director of Chile’s National Institute of Industrial Property. Next, Hector Balmaceda, Directorof the National Directorate of Intellectual Property of Paraguay, and Rogelio Canales, Executive Director of El Salvador’s National Center of Registries, discussed the innovative ways in which their offices are tackling counterfeiting. INTA Board Member Maria Cecilia Romoleroux (CorralRosales, Ecuador) moderated a panel on oppositions and cancellations with the representatives from Belize, Ecuador, and Uruguay. Ray Meloni, Director of Peru’s National Institute for the Defense of Competition and Protection of Intellectual Property and John Alexander García Rodríguez Head of Cancelations and Oppositions of Colombia’s Superintendencia de Industria y Comercio discussed the role of IP Offices in consumer protection and respect for IP. A panel titled “Cooperation between National Enforcement Agents and IP Offices” was held with the various agencies from Uruguay and Irely Aquique Pineda, IP Enforcement Division Director at the Mexican Institute of Industrial Property (IMPI). The first day closed with a prestigious panel of Uruguayan judges focused on judicial criminal actions.

The second day started with a panel on intra-border measures with the Miguel Ángel Margain, General Director of IMPI, and Aracely Quingalombo, Legal Expert of the Ecuadorian Institute of Intellectual Property. INTA Anticounterfeiting Committee Chair Virginia Cervieri (Cervieri Monsuarez & Associates, Uruguay) led a session on border measures with the help of representatives from Uruguay Customs, the Navy Investigation Division of Uruguay, and the World Customs Organization. Finally, DÁmaso Pardo, President of Argentina’s National Institute of Industrial Property, Mr. Santa Cruz, and Marianela Delor, National Director of Uruguay’s National Directorate of Industrial Property, wrapped up the day with highlights of the meeting and a presentation of the conclusions and recommendations for the next IPO Seminar in Paraguay. INTA hopes to facilitate further discussions between the IPOs to implement the recommendations of the event in Montevideo throughout the next year.

Before traveling to Uruguay, the INTA delegation visited Buenos Aires, Argentina. First, INTA and the Asociación Antipiratería Argentina (AAA) organized a policy dialogue titled “Combatting Online Counterfeiting” that took place at the offices of Marval, O’Farrell & Mairal in Buenos Aires on April 17. More than 50 people attended the event, including members of both INTA and AAA and law enforcement officers in charge of fighting online counterfeiting.

Martin Chajchir (Marval, O’Farrell & Mairal, Argentina) gave the opening remarks on behalf of INTA and provided a brief overview of the issue. He also referred to the recently updated best practices guide, “Addressing the Sale of Counterfeits on the Internet,” prepared by the Anticounterfeiting-Online Counterfeiting Project Team. Leonardo Barbieri, AAA Treasurer, commented on this hot topic from the perspective of the members of his association.

The first panel addressed the current status of the situation in the region and offered the views of Pedro Duarte Guimaraes, Project Leader of the European Union (EU)-funded project for intellectual property in Latin America, “IP Key Latin America,” at the European Intellectual Property Office; Diego Farreras (LVMH Fashion Group, Argentina);and Martín Gimenez, Chief of the Cybercrime Department of the Buenos Aires Police. The second panel, moderated by Claudia Serritelli (Estudio Chaloupka, Argentina), focused on the actions that the different stakeholders are taking to curb counterfeiting, and included presentations by Maria Laura Perna (adidas Group, Argentina) and Guadalupe García Crespo (MercadoLibre, Argentina). Finally, the third panel, moderated by Juan Porta (Ryan Lussich & Asociados, Argentina), featured Esteban Lescano, Director Committee on Legal Affairs and Public Policies of the Argentine Internet Chamber, and Gustavo Giay (Marval, O’Farrell & Mairal, Argentina), a member of the AAA and former INTA Board Member, engaging in an interesting discussion on the draft bill addressing Internet service provider liability for third-party-generated content, which is currently being considered by the Argentine Congress.

After the policy dialogue, the delegation met with several important enforcement officials. Ms. Razavi and Andrés O’Farrell (Marval, O’Farrell & Mairal, Argentina) traveled to meet the Honorable Dr. Federico Villena, Federal Judge of the Court of Lomas de Zamora, and Lomas de Zamora Mayor, Martín Insarralde, to discuss counterfeiting problems within La Salada, the largest informal market in South America. At the same time, Mr. Londoño and Mr. Giay met with representatives of Argentine Customs to ask them to share more information with the private sector. Finally, Mr. Sanz de Acedo, Mr. Giay, and Ms. Perna met with Patricia Bullrich, Minister at the Ministry of Security, to join the National Roundtable Against Illegal Commerce, a coordination body of all public agencies, which is supported by the private sector and focused on illicit trade, including counterfeiting.

Finally, separate from the delegation, INTA held a cross-border customs training in TulcÁn, Ecuador, for authorities from Colombia and Ecuador. Besides a brand identification training for several INTA members, the Anticounterfeiting Committee was able to take the opportunity to explain the complicated procedures involved with the Colombian legal system and identify the gaps in the Ecuadorian regime. On April 17, a Binational Training took place in the city of TulcÁn, Ecuador, by committee members from member firms, Estrategia Juridica and Correal Rosales.

For questions or information about INTA’s Anticounterfeiting Activities, please contact Maysa Razavi, INTA Anticounterfeiting Manager, at [email protected] or Tiffany Pho, Anticounterfeiting Senior Coordinator, at [email protected].

Interview

Interview: How the CROSSFIT Trademark Avoids Genericide

Rodrigo Bermeo-Andrade, Bermeo & Bermeo Law Firm, Quito, Ecuador
INTA Bulletins-Latin America and Caribbean Subcommittee

Federico Berger, Buenos Aires, Argentina
Famous and Well-Known Marks-Latin America and Caribbean Subcommittee

INTA’s Famous and Well-Known Marks-Latin America and Caribbean Subcommittee (FWKM, Latam SC) researches and advises on how famous marks can maintain their distinctiveness and avoid so-called genericide. Genericide occurs when a product or service is new in a particular market and the brand name, by default, becomes the generic term of reference for the product or service by the general public.

The FWKM, Latam SC, in February 2018, organized a dynamic and successful workshop in BogotÁ, Colombia, to discuss this topic. As a follow-up to that workshop, the Subcommittee also reached out to Marshall Brenner, General Counsel at CrossFit, Inc. (USA), Lindsay Gonzalez, Counsel at CrossFit, Inc. (USA), and the company’s outside counsel, Zachary Eyster (Greenberg Traurig, USA) to learn more about the experience of this successful company in protecting the value of its famous mark, CROSSFIT-particularly with respect to avoiding genericide.

How important is the CROSSFIT trademark to the company’s brand?

The CROSSFIT mark symbolizes our values of fitness, nutrition, innovation, competitiveness, community, and social action. Because there are so many instructors teaching “functional fitness”-fitness designed to prepare you for the expected and unexpected physical demands of daily life-the CROSSFIT brand distinguishes our health-and-fitness-focused lifestyle, culture, and values from our competitors. The CROSSFIT trademark is the most valuable asset of our company because it is so well-recognized. When consumers see the CROSSFIT mark, they know the goods and services offered under it will be of the highest quality; they know the goods and services will be rigorously tested for safety and effectiveness; and they know the information connected with the CROSSFIT mark will be assiduously researched, well-sourced, and reflective of the state of the art for proper training, health, and fitness.

In how many countries is the CROSSFIT mark registered and in how many is it being licensed?

The CROSSFIT mark is registered in more than 140 countries and enjoys worldwide recognition. CrossFit, Inc. has licensed affiliates in 152 countries and provides its crossfit.com Workout of the Day, CrossFit Journal website, and CrossFit Games Open worldwide. CrossFit also offers direct-to-consumer and licensed CrossFit-branded goods like instructional posters, clothing, shoes, and exercise equipment.

A trademark is at particular risk of genericide when the mark becomes the generic name for the goods or services on or in connection with which it is used. What is the generic term for the discipline or the services your company offers through your fitness program?

Although our company offers a wide variety of goods and services under the CROSSFIT mark, the generic name of our company’s principal service is strength and conditioning training. Sometimes the type of strength and conditioning training is referred to as “high-intensity interval training” (HIIT) or “functional fitness.”

Has the use of CrossFit as a generic term caused commercial damage to your company?

The CROSSFIT brand is stronger than ever thanks to global efforts to combat intentional infringement and genericide. In many instances, however, CrossFit has sought to vindicate its rights for injunctive purposes only to protect the CrossFit community from being tricked into attending classes with instructors not properly trained, supervised, and insured as required by CrossFit. The commercial impact has primarily been significant spending on legal fees.

In which countries do you believe there is a higher risk of genericide?

The risk in a country is generally proportional to the number of CrossFit affiliates and customers. The more people that say CrossFit, the more likely some people are to misuse the mark, and the greater the incentive for competitors to attempt to free-ride off the goodwill of the CROSSFIT brand through systematic disregard for trademark rights. The United States remains CrossFit’s largest market.

Has the company sent cease and desist letters to other competitors who use CrossFit to identify or designate similar fitness programs? If so, in what percentage of cases have the competitors agreed to stop using the CROSSFIT trademark?

We regularly send demand letters to any person or entity impermissibly using the CROSSFIT mark, or any other marks we own, whether intentional infringement or unintentional genericide. We have achieved success in virtually 100 percent of these cases. One of our greatest assets is a highly vigilant community of consumers and licensees who take pride in their connection to the brand and who are eager to assist in its growth and protection. We use an accessible IP theft program to collect this information from the community.

In what percentage of the aforementioned cases did the competitors argue that they would not stop using “CrossFit” for being a word of common use for this type of fitness program? How did the company respond to this?

Occasionally, a competitor argues that it “must” be allowed to use “CrossFit” to describe what it does, either because the competitor does not wish to take the time and effort to receive proper credentialing or licensing, or because the competitor is too lazy to create and grow its own brand. There is no legal support for this misguided position, and in such cases, a court will cause the competitor to take involuntary corrective action.

Have you taken any legal actions against competitors who use CROSSFIT as a trademark or as a generic term?

Yes, regularly.

Does the company take any actions in order to educate the general public that CROSSFIT is a trademark and not a generic term, for instance, by means of advertisement campaigns?

Yes, but the best action is constantly strengthening the commercial value of the CROSSFIT brand through excellence and strategic partnerships.

Which other actions does the company take to avoid misuse of the trademark?

In addition to our regular enforcement actions, we educate our licensees on proper use of the CROSSFIT mark and have a robust IP theft program for reporting infringements and other improper uses of the CROSSFIT mark. For our size, we have a relatively large legal department to address these issues, reinforcing the value of the brand.

In which countries does the company take more actions in order to avoid genericide?

We take actions everywhere there is an issue. Our efforts have targeted infringements and improper generic uses all over the world.

Has the trademark CROSSFIT been opposed in its registration process in any country because the authorities considered it to be a word of common use?

Yes, initially. But we have argued vigorously against such objections, even suing a trademark office in court. There has never been a final, non-appealable decision adverse to the registrability of the CROSSFIT mark.

Are there any lawsuits from third parties seeking the cancellation of the CROSSFIT mark due to genericide? How were they decided?

Yes, actions of this nature have been filed in the United States and in the European Union, typically as counterclaims in infringement actions. None has been successful. Rather, these matters have reinforced the protectability and fame of the CROSSFIT mark.

Ironically, a trademark may become a “victim of its own success.” What are your recommendations to other brand owners that are initiating a business for using their trademark correctly from the start in order to avoid genericide?

Determine the generic name of the goods and services you offer, and position yourself as a brand offering those goods and services. Use a licensing program to grow your brand as a brand outside of your core good/service. And make certain that all employees and licensees authorized to use the mark understand proper trademark use. INTA provides great educational materials for this purpose.

Association News

Country Names as Trademarks: WIPO Roundtable Discusses Current Best Practices

Clark Lackert, Reed Smith, LLP, New York, New York, USA
Geographical Indications Committee

As the extent of country name protection continues to be debated, from “nation branding,” to new gTLD domain names, to possible sui generis protection, the World Intellectual Property Organization (WIPO) sponsored an informational roundtable of experts for the Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications (SCT) on April 24 in Geneva, Switzerland, on the subject.

The roundtable was moderated by David Musker (School of Law at Queen Mary University of London, UK) and included representatives from intellectual property (IP) offices in Chile, the European Union, Georgia, Singapore, Switzerland, and the United States, as well as from the African Intellectual Property Organization. INTA was represented by Clark Lackert (Reed Smith LLP, USA) and Bruno Machado, INTA Geneva Representative. The International Federation of Intellectual Property Attorneys (FICPI) also was represented.

The roundtable lasted more than three hours and featured a wide-ranging discussion on the core topics of trademark protection for country names, including registration and use. Other related areas, such as geographical indications and domain names, were on the agenda of the SCT, but not included in this program.

Concerning trademark registration, the key issues included: