1 December 2012Trademarks

Sign of the modern times: Marques

A packed conference hall in Athens enjoyed a thought-provoking opening hearing entitled Sign of the modern times. Sahira Khwaja, partner at Hogan Lovells in London, talked through the opportunities and threats of social media, and stressed that brand owners should draw up clear guidelines if they decide to exploit sites such as Twitter and LinkedIn.

On the plus side, she said, social media provide new channels to engage with consumers and maintain brand loyalty. But she warned that there are numerous grey areas in the social media world, including “several individual areas of overlapping and interacting law”, which brands should be aware of. Once employees begin tweeting, ‘Facebooking’ and the like, they should never comment on litigation linked to the company and must always obtain permission before using the company’s trademarks or logos.

Expanding on the session’s modern theme, Stacey King, an IP lawyer based in London, provided a fascinating insight into the blossoming world of augmented reality, described as “a live view of an environment with elements augmented through computer-generated input.”

She provided a snapshot of Google’s Project Glass, which is developing a set of eye glasses that provide access to the Internet through voice commands. The glasses use geo-location technology that enables users to interact with friends on social media, take and share photographs, set reminders, and more.

Theoretically, King said, there will be business opportunities to explore, such as making it easy for people to navigate through a business’s shop, once they are inside. Realistically, however, she said brands should prepare for an onslaught of advertising and key words that envelop the service, and should be wary of potential trademark infringement.

Following two more sessions either side of lunch— focusing on the power of design rights and civil litigation strategies—speakers in the Copying the sign session discussed how to improve the image of IP, amid criticism that brand owners are overassertive towards infringers. “Clearly we cannot take the IP completely out of counterfeiting and piracy,” said John Anderson of Pakharenko & Partners in the UK, “but we might have some more success if we play down the effects of them on IP.”

Chris Oldknow of Microsoft urged brand owners to publicly defend IP better in order to match the wave of anti-IP and free speech sentiment, embodied by groups such as Anonymous and The Pirate Party, that has risen in recent years.

“A number of companies (such as Microsoft , Philips and AIM with their ‘Why ideas matter’ campaign) believe we need to speak up for IP to uphold its legitimacy. People on the other side of the debate are better at communicating. The voice saying ‘we need IP’ needs to be heard,” Oldknow said, wrapping up the day’s discussions.

On Thursday morning, Asta Valdimarsdóttir of the World Intellectual Property Organization (WIPO) provided updates on the Madrid system, which facilitates the international registration of trademarks in more than 80 territories. WIPO expects India to sign next year, with Mexico “maybe” joining by the end of 2012, she said. WIPO believes that some ASEAN countries, such as Cambodia and Laos, will accede by 2015.

According to a graph provided by Valdimarsdóttir, since 2010 trademark owners have applied for (and then been designated) EU Community trademarks before applying for (and being designated) international marks at a much faster rate than in previous years. Adrian Smith, of Simmons & Simmons in the UK, said the statistics were “very interesting indeed”.

As trademark practitioners continue planning for the creation of more than 1,000 new generic top-level domains (gTLDs) next year, WIPO’s Erik Wilbers was on hand to clarify some of the current legal issues in the programme. The Arbitration and Media Center, which Wilbers leads, is handling legal rights objections (LROs), a mechanism available to IP owners who believe that a gTLD application infringes their mark.

After explaining the LRO criteria, and saying WIPO had not yet received any objections, Wilbers said the window for filing an LRO closes in January 2013 [since revised to March 2013]. “We don’t expect a large number,” he said, before adding that WIPO will adjudicate on any disputes once the evaluation stage closes— expected to be June 2013.

After lunch, the conference departed from its usual format and divided into four separate workshops, one of which was entitled Times without signs. In this smaller discussion, tucked away from the main exhibition hall, listeners heard from Anthony Gibson, a branding and advertising specialist based in Portugal.

During a 30-minute presentation, his message was clear: the increasing restrictions on advertising are unfairly attacking branding, trademarks and packaging. From tobacco to alcohol—and now a “serious” threat to the food industry—plain packaging is “severely” threatening brands, he said. “It increases consumer confusion, decreases the ability to compete and violates IP law. Industry must defend branding and marketing freedoms.”

On the final morning, and following a late night at the Gala Dinner, the president of the Office for Harmonization in the Internal Market (OHIM), António Campinos, provided a series of updates from the organisation. The first was about OHIM’s Cooperation Fund, which is designed to promote harmonisation, modernise national IP offices and make things easier for users of the EU trademark and design system.

“There are 18 cooperation funds in the pipeline,” he said. “Many of these will be rolled out in the next few months.” Campinos then revealed that, as of August 2012, OHIM had received 71,000 Community trademark registrations, representing an increase of 20,000 since August last year. He added that the organisation has “dealt with backlogs and will continue to do so”, before saying he will oversee a “root and branch re-think of quality, taking a more holistic approach and encouraging more engagement from users”.

In a similar vein to his speech at this year’s European Communities Trademark Association in Palermo, Campinos called for an economic study that shows the contribution of IP-intensive industries to EU GDP and the number of jobs lost to counterfeiting. That there is not a similar study to the one in the US “just isn’t good enough,” he said.

This topic is particularly pertinent now that OHIM oversees the European Observatory, which provides a platform to share best practice dealing with infringement. “The Observatory needs to be effective, credible and transparent,” he said, before updating the audience on the Convergence Programme, which aims to reach common ground on a series of issues where IP offices in the EU have different practices. “It has made significant progress. I am determined to see it through."

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