Who’s Who Legal has brought together John Hackett of AJ Park, Patricia McGovern of DFMG and Maximilian Kinkeldey of Grünecker to discuss key issues facing trademark lawyers and their clients today.
John Hackett: Small-time infringers having access to a wider market via the internet remains an ongoing issue. The proliferation of online marketplaces, with the increasing ability to sell across borders, means our clients still need to be vigilant that their rights are not being infringed. These online marketplaces have varying levels of cooperation with IP owners, but even the best takedown systems require the IP owners to have a rigorous searching, monitoring and reporting system.
The use of trademarks as Google search terms and in metadata also remains an ongoing issue. Competitors continue to push the boundaries of what is legal and acceptable, and our clients are also needing to be vigilant in this space.
Patricia McGovern: This is not a new phenomenon but rather something that has been ongoing for many years. Infringement over the internet presents challenges for rights holders, site operators and law enforcement bodies. Clients are having to devote increased resources to monitoring the internet for potential infringements. Even if site operators are cooperative and operate efficient takedown policies, it is very easy for the infringer to reappear quickly in another guise. Therefore gathering intelligence to get to the source of the goods is particularly important. Tackling the issue of internet infringement is a multidisciplinary process involving rights holders, their legal teams, site operators, credit card operators and law enforcement agencies, particularly customs. We have found in practice that all industries are affected. Clearly there can be serious implications for brand owners where the goods in question may be dangerous such as pharmaceuticals, car or plane parts, electrical goods and even cosmetics. However, while there is a market, infringers will continue to operate. Therefore an increasing emphasis must be placed on education in an attempt to eliminate or at least reduce the market.
Maximilian Kinkeldey: It is true that work relating to infringements over the internet has increased substantially. The main areas where we have seen a rise in such activity are perfumes and luxury goods. One reason for this seems to be that customs measures regarding larger shipments work very effectively, forcing counterfeiters to adapt their strategies. Nowadays, it seems that plenty of smaller consignments of infringing goods, purchased over the internet, are being shipped into the EU. Also, infringers are trying more and more to use social media as their sales channels, and even though most social media providers offer very effective reporting channels, tackling infringements over the internet sometimes feels like cutting off a Hydra’s head.
John Hackett: We have seen some interesting decisions through the end of 2015 and the beginning of 2016 that have further clarified the law in a number of areas.
The Tasman v Knauf Court of Appeal decision considered when a trademark has become generic, and provided a good example of how a responsible trademark owner can run a compliance programme to best protect their registrations.
The Cure Kids decision is an interesting non–use decision, which also confirmed that the Commissioner does have a discretion to leave a mark on the register, even if it has not been used.
The TomTom decision addressed an issue that we have seen more and more in New Zealand – when a small New Zealand owner of a mark finds a later user coming from overseas with a well-known mark, it results in some confusion around the earlier user’s mark.
The latest instalment in the long history of Crocodile v Lacoste litigation in New Zealand has altered conventional thinking on what use of a mark can be sufficient to show that a mark has been used, in a form not altering its distinctive character, for the purposes of a non–use action.
It is also likely that 2016 will see the passage of a bill that will bring New Zealand’s geographical indications registration scheme into force.
For our exporting clients, obtaining protection in China remains an ongoing issue. Being proactive and strategic about the protection and enforcement of our clients’ IP rights in China has meant we have been able to help clients recover their trade marks in China, or prevent infringing use. While we’ve had some very good success in recent months, it isn’t always smooth sailing in China.
We are continuing to invest significant time and effort in building relationships with associates in the Greater China region, and in educating our clients around the pitfalls and challenges of doing business there. As an emerging economic super-power in our back yard, China’s IP laws and infrastructure will remain front of mind for us and our clients.
Patricia McGovern: The recent developments at the EUIPO (formerly OHIM) will be interesting over the coming months. As outlined above, the ever-increasing internet activity is also challenging. We are also seeing an increase in interaction between IP rights in general and, for example, data protection with rights to privacy being raised as possible shields to the enforcement of IP rights. Finally, here in Ireland, a common law jurisdiction, we are watching with interest the developments of the Unified Patent Court. Its procedures and way of operating are very different from the way our courts currently operate in Ireland and we are wondering to the extent to which, once operational, it may influence procedures in non-patent areas.
Maximilian Kinkeldey: I believe the predominant topic in EU trademark law in 2016 is the EU trademark reform which triggered a multitude of changes in EU trademark law. Also, member states will need to adapt their national laws accordingly. While some changes merely implement CJEU case law, and therefore do not call for any changes in everyday practice, some are quite significant and make it necessary to adapt previous practices, such as the reduced costs for single class applications. Another “hot topic” with regard to Germany is the recent developments in colour mark protection. The Federal German Supreme Court (BGH) last year rendered three separate decisions on the standards of colour mark protection (for the colours red, yellow and blue). Taken together, the three decisions provide for long-needed guidelines under what circumstances colour marks can be protected in Germany.
John Hackett: Yes, both large and small Australian and New Zealand businesses are looking for multi-jurisdictional advice for their own trade mark protection strategies. AJ Park has for a long time recognised this need, and we operate offices on both sides of the Tasman and provide advice across the New Zealand, Australian and Pacific Island markets.
With New Zealand’s accession to the Madrid Protocol in 2012 and the proposed merger of the New Zealand and Australian patent attorney profession, we expect this trend to continue. Australia and New Zealand’s participation in the recently signed Trans-Pacific Partnership agreement is also expected to fuel further demand for multi-jurisdictional advice.
Patricia McGovern: This is something that our clients have always demanded, namely that we have the ability to coordinate for them their requirements in other jurisdictions. Arising out of that, it is important to have a network of contacts with relevant areas of specialisation and expertise to meet clients’ needs including both litigation experience, portfolio management experience and transactional experience in intellectual property matters.
Maximilian Kinkeldey: Most services our clients request do not just concern Germany, but the entire EU. But even beyond that, many cases I worked on over the past years have concerned worldwide conflicts, triggered by the fact that goods or services were being offered over the internet in a plethora of countries, thus often creating a diffuse priority situation in a multitude of jurisdictions. For the purposes of developing an airtight strategy for resolving such a conflict, it is of vital importance to understand the complexity of a worldwide trademark conflict, and to be able to rely on a long-lasting, strong network of trademark professionals, who have been working in the clients’ industry sector and who understand the client’s specific needs. Sound knowledge of the national trademark laws of other important jurisdictions is key, having quite some impact on the current legal market. Only those law firms (or rather, individual lawyers) who are able to understand and work in a multi-jurisdictional environment will, in the long run, be able to effectively add value to their clients business, and take the lead in resolving such multi-jurisdictional conflicts.
John Hackett: A combination of factors. A sharp focus on clients and a good understanding of their business is essential. Ensuring we work hand-in-hand with our clients to align IP strategy and culture with their commercial objectives is also imperative.
Having skilled, talented, and engaged staff, who are passionate about their subject matter and helping clients succeed, is as vital today as it ever was. And continuous investment in staff education and development, technology, systems and processes that enable high-quality service delivery is a must.
The reality in today’s climate is that survival of the fittest often comes down to those that can innovate and adapt to both predictable and unpredictable forces of change.
Patricia McGovern: There is no doubt that technology is extremely important. It is important both as a tool for efficiency within law firms but also practitioners need to be very up to date on their knowledge of technology, because it is increasingly a mechanism by which clients’ rights can be infringed. Clients are increasingly cost-conscious. It is therefore important that practitioners are still able to provide a superior service, but in a cost-effective manner. In addition, particularly as the field of intellectual property is such a fast-changing environment, it needs to be populated by people who can adapt to such constant change. It is an area of law where you will never know it all, and almost every day you will encounter and have to deal with something new. It requires personnel who can accept and adapt to that.
Maximilian Kinkeldey: There is a simple and straightforward answer to this question: a modern law firm needs to understand its clients’ business needs, and act as a business partner rather than a mere legal adviser. The clients’ primary interest is usually not just in winning a lawsuit, but in being able to maintain and develop its business, uninhibited by legal obstacles, third-party infringers, and costs accumulating on the way. The focus of a firm competing successfully in the modern legal climate must therefore be on providing its clients with cost-effective solutions to a problem, and giving practical guidance to the business.