19 May 2019

GDPR and Beyond: The Intersection of Privacy and Trademark Law

Since the EU General Data Protection Regulation (GDPR) came into force almost a year ago it has become increasingly difficult for intellectual property (IP) owners to investigate infringements online, says Flip J.C. Petillion, Partner at PETILLION (Belgium).

Mr. Petillion shares his views ahead of CSU52 Global Data Protection—Beyond GDPR: Developments and Best Practices for Trademark Practitioners Dealing with Non-European Privacy Laws, which will take place today between 1:00 pm and 2:15 pm.

According to Mr. Petillion, privacy laws have restricted access to the resources that IP owners have historically relied on to scrutinize online infringements—from domain name directories like WHOIS, to records held by Internet service providers and social media platforms.

“As a result, IP owners will have to revert to other measures of investigation and enforcement, such as analyzing website content and substantive evidence, consulting associated websites, and filing disclosure requests with online intermediaries controlling the identification and contact information of the (potential) infringers,” he says.

But privacy laws are not just affecting trademark enforcement online. Mr. Petillion notes that brands all over the world are also feeling the extensive and unprecedented impact of privacy laws in relation to their goodwill, marketing efforts, and customs procedures.

Another speaker on the panel, Laetitia d'Hanens, Partner at Gusmao & Labrunie Intellectual Property (Brazil), suggests that GDPR is just the beginning, and going forward, global data protection will be used to boost brand loyalty and trust.

In Mr. Petillion’s view, “balance” needs to be the key word. He says that the further development and implementation of national and global privacy laws needs to be balanced not only with IP rights, but with all fundamental rights and interests such as the right to freedom of expression, access to information, and the protection of consumers.

During today’s session, the panelists will explore the current impact of privacy laws   on the enforcement of trademarks in the context of social media platforms, online marketplaces, and country code top-level domain domain name registries.

“The session will provide trademark practitioners with an important insight into many external effects of the GDPR, both geographically and substantially,” Mr. Petillion says.

For example, Brazil has recently adopted a GDPR-inspired data protection law that takes effect in August of 2020, Ms. D’Hanens points out.

“Historically, the country has not experienced a detailed legal framework on personal data, and now companies are challenged to move from a very permissible scenario to a regulated one,” she says. “The panel will bring together different views on the subject, combining jurisdictions where the possible conflicts have already matured to court examination and jurisdictions where the legal system is about to be tested.”

Smita Rajmohan, Associate at Cooley LLP (USA), who will also be a panelist, notes that the discussion of data privacy laws outside of the EU’s GDPR adds a further element of interest to the session.

“It will be great to learn about how different jurisdictions across the world are balancing the need for data privacy with the ability of brand owners to enforce their trademark rights,” she comments.

Brian King, Director of Internet Policy and Industry Affairs at MarkMonitor (USA), the panel moderator, adds: “While new privacy laws certainly bring challenges, we’ll also share some exciting opportunities for trademark practitioners to counsel clients in today’s privacy-focused world.”

Joining these speakers at the session is Diane Plaut, Global General Counsel and Data Protection and Privacy Officer at Corsearch (USA).

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