Connected devices are transforming the way we live our lives, but from an intellectual property perspective, they add complexity to an already complicated landscape, as Peter Scott finds out.
The numbers are clear: There are currently approximately 25 billion devices in the world connected to the Internet. Intel Corporation (USA) forecasts that number will rise to as much as 200 billion by the end of 2020. Each second, 127 devices connect for the first time.
This growth has profound implications for intellectual property (IP) owners, especially because today, devices increasingly connect not just to the Internet, but through the Internet, to each other.
During yesterday’s Session IM01 Industry Breakout: How Connected Goods Are Transforming Our IP Assets Management, panelists offered a range of perspectives on this brave new world.
In discussions about the legal challenges associated with the Internet of Things (IoT), trademarks are often overlooked in favor of issues around data, privacy, liability, and patents. However, as Alexandre Nappey, Founding Partner at SCAN AVOCATS (France), observed, IoT presents particular challenges for those in the trademark industry.
For example, Mr. Nappey said thatthe list of goods and services for which protection is claimed is determined at the time of filing under the Nice Class headings, but these do not take account of connected devices.
Emmanuelle Ragon, Associate Vice President, Trade Mark at SANOFI (France), agreed, citing the hypothetical example of a “smart T-shirt,” which could monitor biological information from the individual wearing the shirt and report that data to a medical practitioner or other source.
The main thing for us is to file for protection as a medical device, Ms. Ragon said, “but if we have a smart T-shirt, are we going to have to file for T-shirts?” Similarly with services, she said, it would be important to cover the provision of medical services, but it may also be necessary to cover communications services to accurately reflect the connected nature of the device.
Further complicating the picture is the fact that, when dealing with newly developed connected devices, brands may expose themselves to the risk of genericide in the act of obtaining trademark protection.
Mr. Nappey said that a trademark for a successful new product “could easily lead to genericide” because as new products enter the same marketplace, they are likely to be referred to in relation to the original product. He suggested brands should plan a robust defense strategy to defend their rights in this situation.
Ms. Ragon suggested that one sensible approach with novel products would be to simultaneously develop both a generic name and a brand name, which will help to make the trademark right more secure by distinguishing it from the generic name.
Communication Is Key
One of the biggest challenges associated with connected devices is that they are, by definition, connected to the Internet—and therefore subject to all the risks associated with operating in the online space.
Patrick Hauss, Regional Director at CSC Digital Brand Services (USA), observed that while domain names are “often at the bottom of the list of IP rights”, they are “probably going to be more and more important” as our devices become more connected.
In simple terms, the IoT is also just “things on the Internet,” and “domain names are already used to run connected device platforms,” he said.
“We need to learn as IP lawyers from recent developments in the domain space,” especially domain name system (DNS) attacks, Mr. Hauss explained. These attacks involve hackers exploiting vulnerabilities in the domain name system to take control of particular domain names. This is bad at any time, but with domain names related to connected devices, such attacks could have grave implications for data security and even for the control of the devices involved.
Mr. Hauss suggested businesses need to ask themselves two questions: The first is, “Which are our business-critical domains?” The second is, “Have we put the right security measures in place to protect them?”
In order to accurately identify business-critical domains, companies need to ensure optimal internal communication. “You can’t answer that question unless you have excellent cooperation and discussion between teams,” he said.
Indeed, the panel agreed that internal communication is vital to operating in the connected devices space, partly because of the sheer number of IP considerations in play. Any connected device is likely to raise issues regarding freedom to operate assessments, patents (and potential defense against patent trolls), open source licenses, exclusivity, and especially the question of who owns what rights related to the product.
“Teams need to work hand in hand to do a 360-degree assessment” of the IP landscape surrounding a given product, Ms. Ragon said. In addition, she noted, the team also must collaborate externally since “you may have different owners [of relevant technology] around the table who you need to negotiate with.”
Internet of Things, IoT, Intel Corporation, SANOFI, SCAN AVOCATS, CSC Digital Brand Services, domain names,