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Programs and Events
When Trademarks Overlap with Other IP Rights
Program




 

 Monday, December 8

 
8:00 am–5:30 pm  
Registration and Information Desk Open
8:00 am–9:00 am 
Continental Breakfast
9:00 am–9:35 am 
Welcome

Etienne Sanz de Acedo, Chief Executive Officer, International Trademark Association (United States)
Axel Nordemann, Program Co-Chair, Boehmert & Boehmert  (Germany)
Neil Wilkof, Program Co-Chair, Dr. Eyal Bressler & Co. (Israel)

9:35 am–10:00 am
Keynote Address

Overlaid, Overlegislated and Overloaded: Trademarks in the Twenty-First Century

Professor Jeremy Phillips, best known as a Professorial Fellow in the Queen Mary Intellectual Property Research Institute and founder of the IPKat blog, will set the stage for this conference by describing how the lack of joined-up legislative policy and judicial thinking has led to a patchwork of protection in which some badges of origin seem to be protected several times over while others risk missing protection entirely.

Speaker:
Prof. Jeremy Phillips, Olswang LLP, London, and Queen Mary Intellectual Property Research Institute (United Kingdom)

10:00 am–1:25 pm
SESSION I
(Break 11:30 am–11:50 am)
 

Trademarks and Copyright Law

Distinguished speakers provide insight and valuable information about the interplay between the protection given by trademarks to works of art (for example, logos, characters such as Mickey Mouse or three-dimensional objects such as furniture). They will also discuss the scope of protection of such trademarks and the influence of aesthetic functionality or requirement of use as a trademark.

Speakers favoring the extension of protection through trademark registration despite public domain under copyright law will also discuss important issues with speakers who give more weight to the public domain, superseding trademark protection.

Other topics to be covered:

  • A view from the European Union
  • A view from Latin America
  • A view from the United States
  • Protection and enforcement strategies

Moderator:
Tara Aaron, Aaron | Sanders PLLC (United States)

Speakers:
Andrew P. Bridges, Fenwick & West LLP (United States)
Barbarita M. Guzmán, Markven S.C.  (Venezuela)
Maximilian Kinkeldey, Grünecker (Germany)
Axel Nordemann, Boehmert & Boehmert (Germany)
Ansgar Ohly, University of Munich (Germany)
Michael Ritscher, Meyerlustenberger Lachenal (Switzerland)

1:25 pm–2:30 pm 
Networking Lunch
2:30 pm–5:40 pm 
SESSION II
(Break 4:00 pm –4:30 pm)
 

Trademarks and Designs

Find out about various schemes that can be used to protect designs, including the following:

  • Design patent protection (United States)
  • Trade dress (United States)  
  • Community design rights (European Union)
  • Other schemes (e.g., Hague Agreement Concerning the International Registration of Industrial Designs, Asia-specific laws), focusing particularly on products and features that may be protected by both design rights and trademarks/trade dress

Panelists will explore the following areas:

  • The underlying frameworks of various types of rights and the rationale behind choosing particular types of protection
  • Obtaining protection
  • Limitations on protection and enforcement (including consideration of whether the available actions and remedies are adequate)
  • Pros and cons of design protection versus trademark protection
  • Registered versus unregistered protection

Moderator:
Mark Owen, Taylor Wessing (United Kingdom)

Speakers:
Gregoire Bisson, World Intellectual Property Organization (WIPO) (Switzerland)
Anna Carboni, Redd Solicitors LLP (United Kingdom)
Daniel Greif, Siam Premier International  (Thailand)
Annette Kur, Max Planck Institute for Intellectual Property, Competition and Tax Law (Germany)
Theophile Margellos, Office for Harmonization in the Internal Market (Spain)
Valerie Sonnier, Louis Vuitton Malletier (France)
Kenneth L. Wilton, Seyfarth Shaw LLP (United States)

5:45 pm 
Adjourn
6:00 pm–7:30 pm
Welcome Reception
 

 Tuesday, December 9

 
8:00 am–8:30 am 
Registration
8:00 am–8:30 am 
Continental Breakfast
8:30 am–8:35 am 
Overview of Day Two

Axel Nordemann, Boehmert & Boehmert (Germany)
Neil Wilkof, Dr. Eyal Bressler & Co. (Israel)
8:35 am–8:45 am 
Related Rights Committee Update

Speaker:
Keri Johnston, Johnston Law (Canada)

8:45 am–10:30 am
SESSION III

Trademarks and Geographical Indications

Experts in the field provide a global perspective on the interplay of trademarks and geographical indications (GIs) and will discuss the following issues: 

  • What are GIs?
  • How are they protectable in Europe?
  • How does GI protection overlap with trademark protection in Europe?
  • Is this protection too wide?
  • How does it compare with protection elsewhere?
  • Is this protection enforceable in courts in European countries? 
  • What are some of the important decisions of the Court of Justice of the European Union concerning the overlap of GIs and trademark protection?

These topics will be covered as well:

  • The U.S. approach to GIs and trademarks
  • GIs as collective / certification marks
  • Attempts at the international level to negotiate a worldwide framework for GI protection
  • The U.S. approach compared with the European approach
  • GIs and trademarks in India from a global brand perspective
  • GI protection in the European Union as collective marks and as protected geographical indications, and in the United States as certification marks
  • The Darjeeling case

Moderator:
Anna Carboni, Redd Solicitors (United Kingdom)

Speakers:
Irene Calboli, Marquette Law School and National University of Singapore (United States and Singapore)
Peter Harvey, Harvey Siskind LLP (United States)
Julia Holden, Trevisan & Cuonzo Avvocati (Italy)
Latha R. Nair, K & S Partners (India)

10:30 am–11:00 am
Break
11:00 am–1:00 pm
SESSION IV

Trademarks and Unfair Competition Law

A comprehensive discussion will cover the following topics:

  • Registered versus unregistered trademarks
  • Passing off and unfair competition
  • Trademark protection
  • Comparative advertising
  • Keyword advertising
  • Product imitation and other forms of source and source-like confusion versus trademark infringement
  • Overlap paradigms—
    • Does trademark infringement correspond to claims under unfair competition law? If so, are there still separate legal claims?
    • Does trademark law cover all potentially actionable uses of signs? If so, will unfair competition law “fill in” the lacunae?
  • Trademark/unregistered marks/unfair competition overlaps: conceptual overview of the common law and continental law approaches
  • The view from Continental Europe
  • The common law view
  • The view from South America

Moderator:
Axel Nordemann, Boehmert & Boehmert (Germany)

Speakers:
Gordian N. Hasselblatt, CMS Hasche Sigle (Germany)
Myrtha Hurtado-Rivas, Novartis AG (Switzerland)
Anselm Kamperman Sanders, Maastricht University (Netherlands)
Neil Wilkof, Dr. Eyal Bressler & Co. (Israel)

1:00 pm–1:15 pm 
Break
1:15 pm–2:00 pm  
Special VIP Interviews—Trademarks and Patents

Interviewer:
Ronald Van Tuijl, JT International S.A. (Switzerland)

Special Guests:
Christoph Ernst, Ministerialdirigent, German Federal Ministry of Justice (Germany)
Mihály Ficsor, Vice President for Legal Affairs, Hungarian Intellectual Property Office (Hungary)  

2:00 pm–3:00 pm  

Lunch

3:00 pm–5:30 pm 
SESSION V
(Break 4:30 pm–4:45 pm)  

Overlap Between Trademarks and the Right of Publicity

This session will address the interplay between the right of privacy or publicity and trademark rights, including implications for the use of trademarks in blogs and social media networks.

Learn about the following:

  • The differences and similarities between the rights afforded by publicity laws and the rights afforded by trademarks—e.g., what each type of right protects, whether they are property rights, whether the rights can be transferred?
  • Source of trademark rights and right of publicity in the law  
  • How rights of publicity overlap with trademark rights
  • How publicity rights are used to generate trademark rights
  • How rights of publicity can invalidate trademark rights (United States versus other jurisdictions on rights in a personal name as a trademark)
  • Celebrity names registered as trademarks (e.g., BLUE IVY); when celebrities sell their names, who owns the goodwill behind the name
  • Protection of likenesses of fictional characters and the actors who play them
  • Remedies for infringement
  • Interplay between right of privacy or publicity and trademark rights

Moderator:
Kenneth L. Wilton, Seyfarth Shaw LLP (United States) 

Speakers:
Tara Aaron, Aaron | Sanders PLLC (United States)
Alexander Ballasch, DFL Deutsche Fussball Liga GmbH (Germany)
Joseph J. Conklin, Coty, Inc. (United States)
Anne Lauber-Rönsberg, University of Dresden (Germany)
Mario Soerensen Garcia, Soerensen Garcia Advogados Associados (Brazil)
Mark Owen, Taylor Wessing (United Kingdom)

5:30 pm–6:00 pm 

CLOSING SESSION

The Future of Trademarks

Speaker:
Antonio Campinos, Office for Harmonization in the Internal Market (OHIM) (Spain)

6:00 pm
Wrap Up, Adjournment
 

 Continuing Legal Education

 
This conference qualifies as an educational program for Continuing Legal Education (CLE) credits and Continuing Professional Development (CPD) points.

The meeting has been approved in the following countries:
  • France, by the Conseil National des Barreaux (CNB)
  • Italy, by the Consiglio Nazionale Forense (CNF)

For more information, please email cle@inta.org. Be sure to stop by the Registration and Information Desk at the conference to sign the CLE book.

 

 Project Team

 
Exceptional topics, faculty and presentations have come to distinguish INTA programs and earn them an unmatched reputation in the field of trademark law and practice. INTA owes this achievement to the many volunteers who so willingly contribute their time and energy to this effort.

INTA would like to thank the Project Team for its excellent work in planning and presenting this conference.

Co-chairs
Axel Nordemann, Boehmert & Boehmert  (Germany)
Neil Wilkof, Dr. Eyal Bressler & Co. (Israel)

Members
Tara Aaron, Aaron | Sanders PLLC (United States)
Anna Carboni, Redd Solicitors (United Kingdom)
Barbarita M. Guzmán, Markven S.C. (Venezuela)
Julia Holden, Trevisan & Cuonzo  (Italy)
Mark Owen, Taylor Wessing (United Kingdom)
Ken Wilton, Seyfarth Shaw LLP (United States)

INTA Staff Liaisons
Ann Eng, Director of Education
Hilary Cohen, Senior Planner, Meetings, Conventions & Events Strategy