20 May 2018

Africa, Geographical Indications, and 3D Marks

Session RM01 Africa Regional Update: Land, Sea and Air Adventures—New Developments and Trends in the Protection and Enforcement of Trademark Rights in Africa (Monday, 10:15 am–11:30 am)

“The African continent is one of the most thriving and dynamic places in the world,” according to Marius Schneider, Attorney-at-law at IPvocate Africa Law Firm Cabinet d’Avocats (Mauritius), one of the speakers at this session.

“Individuals such as judges, trademark practitioners, and law enforcement authorities are highly motivated because they are aware that they are engaged in pioneering work,” he says.

As an example of the progress made in the region, Mr. Schneider notes that some countries, such as Nigeria and Tanzania, have introduced online filing of trademark applications.

The continent may be embracing new developments, but it still faces challenges, he notes.

To overcome these, brand owners are partnering with local officials and practitioners to invest in protecting their rights.

“There can no longer be any doubt that Africa is rising: its growing middle class represents an untapped, dynamic, fast-moving, and competitive market for brands,” adds Mr. Schneider.

The session will be moderated by Vanessa Ferguson, Director at KISCH IP (South Africa), who says that the African continent’s fast-growing young population is making the region attractive to investors and brand owners alike.

However, she says that “Africa has the tendency to test a brand holder’s patience. Navigating the legal minefield requires patience, cooperation, and collaboration.”

Ms. Ferguson notes that the panelists will share “top tips, advice, cautionary tales, and other stories” resulting from their experiences in protection and enforcement of IP rights in Africa.

The session will also include the following speakers: Vanessa Halle, a Partner at Nico Halle & Co. Law Firm (Cameroon); Karen Kitchen, Director at KISCH IP (Zimbabwe); and Sandra Wens, Technical Expert, IPR, at the World Customs Organization (Belgium).

Session CM50 Geographical Indications in the Domain Name Space (Monday, 3:30 pm–4:45 pm)

Scott Gerien, a Partner at Dickenson Peatman & Fogarty, PLC (USA), says that in many cases, geographical indications (GIs) have greater consumer recognition than trademarks and provide the producers with instant consumer recognition.

“The problems GIs face in the domain name system are a result of the larger international conflict as to the treatment of GIs under international systems,” suggests Mr. Gerien, who will be one of the presenters at this session.

“While the Agreement on Trade-Related Aspects of Intellectual Property Rights treats trademarks and GIs as equivalent properties, the lack of an international registration system for GIs similar to the Madrid Protocol for trademarks or the Patent Cooperation Treaty for patents means that it is difficult for regional producers to secure registered rights equivalent to those of trademarks,” he explains.

According to Mr. Gerien, the “genericness” of a small number of GIs in certain jurisdictions presents a problem, with the political sensitivity of this issue preventing governments from enacting an international system that could be valuable to the large majority of regional producers that use and benefit from GIs.

Mr. Gerien will be joined tomorrow by Jonathan Agmon, Senior Partner at Soroker Agmon Nordman, Advocates & Patent Attorneys (Israel); Charles Goemaere, Deputy General Director at Comite interprofessionnel du vin de Champagne (France); Massimo Vittori, Managing Director at oriGin (Switzerland); and Mary Wong, Senior Policy Director at ICANN (USA). The panel will be moderated by Francine Tan, Director at Francine Tan Law Corporation (Singapore).

Session CT21 3D Trademarks after Rubik’s Cube (Tuesday, 11:45 am–1:00 pm)

In a competitive market, it is important for brand owners to explore different avenues to set their products apart. Whereas European Union Trade Marks (EUTMs) tended traditionally to be words and logos, this is no longer necessarily the case.

“More recently, brand owners have attempted to obtain trademark registrations for other types of marks, including color or the shape of the product or packaging,” says David Stone, a Partner at Allen & Overy LLP (UK), a speaker at this session.

He explains that EUTM reforms have removed the requirement for a mark to be “capable of graphical representation.” This should allow for further types of trademarks such as holograms and sounds.

"There is a tension between the reforms allowing nontraditional marks and numerous Court of Justice of the European Union cases."

“However, there is a tension between the reforms allowing nontraditional marks and numerous Court of Justice of the European Union cases where EUTM protection has been rejected for 3D shapes on the basis that they are not distinctive, or are functional,” he continues.

According to Mr. Stone, this creates uncertainty and has increased brand owners’ reluctance to fight to protect this type of trademark.

Mr. Stone believes that brand owners should develop global filing strategies to provide the best chance of successfully registering 3D trademarks.

“Overall, it is far more difficult to obtain registered protection for 3D marks than more traditional forms of trademarks,” he adds. “It can take many years to prove that a shape functions as a trademark, so owners may want to embark on this fight only for their signature brands.”

Another speaker at this session, James Johnson, Intellectual Property Counsel at Eversheds Sutherland (USA), says that in the United States, 3D trademarks give a brand the opportunity to set itself apart from the competition.

“3D trademarks offer unique possibilities for a mark owner to step out of the pack, distinguishing, identifying, and safeguarding their brands,” he says.

According to Mr. Johnson, globalization has helped the market accelerate toward saturation, “thus giving rise to an increasing demand for novel ways of identifying brands.”

“The use of nontraditional trademarks is now more important than ever, with consumers having a significantly larger social presence online … and impacting the way today’s generation communicates,” he says.

Maximilian Kinkeldey, Lawyer at Grunecker (Germany), is joining Mr. Johnson and Mr. Stone to discuss these issues on Tuesday. The session will be moderated by Georg Schönherr, a Partner at Schwarz Schonherr Rechtsanwalte (Austria).

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