What is fascinating about IP law? On November 21, a group of about 23 students from the Instituto de Empresa Law School from Madrid (IE Law School), Spain, got a glimpse of IP law’s allure at the INTA Europe Representative Office in Brussels. The event was part of a study visit in Brussels where the students visited European Union Institutions and private-sector organizations.
The visit to INTA consisted of a short introduction about the Association and a presentation on trademark law given by Ignacio Lazaro (PETOŠEVIĆ). This was the second time that the IE Law School had visited INTA (the first time being in November 2014, thanks to the European Law Students’ Association).
Milesh Gordhandas, INTA Advisor, Europe Office, talked about the importance of trademarks in the economy (with reference to the “IP Contribution” study by the European Patent Office/European Union Intellectual Property Office), INTA’s role in trademark protection, and the Association’s academic activities—such as the recently launched Ladas Memorial Award essay competition for 2017. Students asked questions about the Association’s committee structure and how to become involved.
Ignacio Lazaro then took the floor and tackled the central question: “Why trademark law?” He started with a brief overview of the Spanish, European, and international legislation and then moved on to explain the dual nature of the work of a trademark lawyer: prosecution and enforcement.
Despite its somewhat common perception as a dull, administrative activity, prosecution can be an appealing and demanding field for lawyers. Mr. Lazaro demonstrated the appeal of prosecution when he challenged students’ knowledge of various famous cases, such as the BABY- DRY case. He noted that a high degree of expertise is needed to avoid the pitfalls of trademark registration and introduced the concept of “absolute grounds” for trademark registration refusals. The students asked several detailed questions, and Mr. Lazaro then discussed ways in which trademark applicants can avoid these registration pitfalls, either by administrative actions (i.e., by creating a more precise description of the sign for a registration application)—or, if appropriate, by a business strategy focused on brand development and acquisition of trademark distinctiveness through use.
Mr. Lazaro then presented some real-life examples of enforcement, which is the second major area of activity for trademark lawyers. He highlighted the relevance of following the process in all its steps, from the identification of a violation to the implementation of enforcement measures. The questions that followed concerned the fight against counterfeiting in China by local authorities. Students asked questions on other non-enforcement-related topics as well, such as the criteria used in determining whether a trademark has become generic.
In summary, the students were fascinated by trademark law. As trademarks are strictly linked to the perception of a sign, and as the examination and registration of signs may sometimes seem arbitrary or subjective, this area represents a particularly challenging and exciting field for future lawyers, and INTA’s presentation helped the IE Law School students recognize this challenge. INTA thanks Ignacio Lazaro for his support and looks forward to hosting further educational events for students!
For more information about INTA’s academic activities, including individual academic memberships for students and professors, visit www.inta.org/academics.