INTA Bulletin

January 1, 2015 Vol. 70 No. 1 Back to Bulletin Main Page

Munich Conference Provides Insight into Overlapping IP Rights

INTA’s 2014 event calendar concluded on a high note December 8–9 at the Westin Grand Munich Hotel in Munich, Germany, where 348 participants from 57 countries received tips and updates on the law and issues surrounding “overlapping IP rights.”

Co-Chairs Axel Nordemann (Boehmert & Boehmert, Germany) and Neil Wilkof (Dr. Eyal Bressler & Co., Israel) spent two years preparing for the event and grappling with what Mr. Nordemann described as the two main challenges: “putting substance into the material” and “finding the right balance between speakers” with regard to country of origin and professional background.

The conference, “When Trademarks Overlap with Other IP Rights,” provided a comprehensive program examining the interface between trademarks on the one hand, and copyrights, designs, patents, geographical indications, unfair competition and the right of publicity on the other.

Following a welcome message by INTA CEO Etienne Sanz de Acedo, Professor Jeremy Phillips (Queen Mary Intellectual Property Research Institute, UK) delivered an insightful keynote address in which he outlined the development from “underlap” to overlap in the realm of intellectual property.

On day one, speakers explored the interplay between trademarks and copyrights and trademarks and designs, including an update from the World Intellectual Property Organization (WIPO) on the current state and future developments of the Hague System. An overview of trademark and design protection throughout the Asia-Pacific region was also provided.

Day two’s opening session focused on the overlap between trademarks and geographical indications (GIs)—a very timely and somewhat divisive topic. The European Commission recently published a Green Paper, on which INTA submitted comments, regarding the possible extension of GI protection to non-agricultural products, a position that differs from the U.S. approach. This has caused some conflict in negotiations concerning the Transatlantic Trade and Investment Partnership (TTIP) free trade agreement. As the only U.S. speaker on the panel, Peter Harvey (Harvey Siskind LLP, USA) remarked that he felt like an “onion in a petunia patch.”

The next panel of the day provided a very detailed look at the development of unfair competition law in different jurisdictions, as well as a practical example of its application in an infringement case. During a special VIP interview with Mihály Ficsor, Vice President for Legal Affairs at the Hungarian Intellectual Property Office and Christoph Ernst, Ministerialdirigent, German Federal Ministry of Justice, Mr. Ficsor remarked that the EU’s 2013 study on the contribution of IP-intensive industries to the EU economy and employment indicated a very high proportion of companies that are intensive in more than one type of IP, which highlights the importance of looking at the “overlap” issue.

The final session, dealing with the overlap between trademarks and the right of publicity, treated the audience to a review of U.S. case law. Entitled, “Dictators, Baseball Cards and Bad Girls in Short Shorts” by Tara Aaron (Aaron Sanders PLLC, USA), the session also gave Mario Soerensen Garcia (Soerensen Garcia Advogados Associados, Brazil) the opportunity to demonstrate how the Earth, Sun, Moon and stars could be used to illustrate overlap between patents, trademarks, copyrights and related rights.

The Office for Harmonization in the Internal Market (OHIM) President Antonio Campinos concluded the conference by addressing the future of trademarks, highlighting OHIM’s various projects and the expected outcome of the ongoing EU Trademark Reform. He stressed that this reform could change both the well-recognized name of OHIM and the scope and structure of its cooperation with EU National Offices for Intellectual Property.

Additionally, Myrtha Hurtado Rivas (Novartis, Switzerland), in a session on trademarks and unfair competition, provided insights in the various elements to take into account when deciding on a strategy for a legal action based on trademark infringements and/or on unfair competition, providing concrete examples; Alexander Ballasch (DFL Deutsche Fussball Liga GmbH, Germany), in a session on trademarks and rights of publicity explained the difference of rights between a football player, its football club and the Liga; and Joseph J. Conklin (Coty.Inc, USA), also in the session on overlap between trademarks and the right of publicity, illustrated the different rights and claims possible for a perfume commercial.

The event met with rave reviews from its audience. “First-timers,” such as Michael Browne (Redd Solicitors LLP, UK), Flore Bouhey-Dwan (Twitter, Inc., Ireland) and Miquel Peguera (Universitat Oberta de Catalunya, Spain), had been drawn by the relevance of the topic and stated that they very much enjoyed the conference and its practical application. Prior attendee Iana Madey (Petosevic, Bulgaria) lauded the “very structured and informative presentations” and noted that her expectations were exceeded, calling it a “top-level conference” that showed that “the world is still a patchwork when it comes to IP.” Stefanos Tsimikalis (Tsimikalis Kalonarou, Greece) called it “one of the best conferences” he had ever attended. José Ataíde (Francisco de Novaes, Portugal), another first-time attendee who had come “for the place as well as the subject matter,” said he “enjoyed the international mix of the panels as well as the attendees,” and noted that the only thing that had been missing from the conference was “a beer at lunch.”

INTA members can look forward to hearing more about the interplay between trademarks and geographical indications at INTA’s 2015 conference in Rome.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. 

© 2015 International Trademark Association