From IP to NP, Day One: Part 4

The final session of AIPPI Israel's "From IP to NP" conference programme today offered three parallel sessions:

1 (for senior management) The Role of Trade Marks in New Businesses of the 21st Century  

2 (also for senior management) Stakeholders & Entrepreneurs: IP in the Digital Age  

3 (for legal professionals) Business and Taxation Aspects of IP 

Again, this Kat opted for session 1, convened by Nachman Cohen Zedek, Senior Partner, Pearl Cohen Zedek Latzer Baratz (PCZLB), together with Ellen B. Shankman (of the eponymous Ellen B. Shankman & Associates).

Shay Haguel (Marketing Director, Elite Confectionery Products, part of the Strauss Group) opened the session by showing us three scenes from his daily life: one involved buying up domain names round "para" (the Hebrew for "cow") to protect the interest of his company in a chocolate cow brand; in the second, the launch of a "vafel or bafel?" campaign in order to establish rights in the generic term "vafel" ('wafer') for a generic term; in the third involved a competition with a 50,000 NIS prize, which was somewhat lost on this Kat but which he hopes someone will explain to him in days to come.

Shay was followed by Katfriend Verena Von Bomhard (Partner, Hogan Lovells, Alicante office, Spain), who spoke on new generic top-level domains (gTLDs) and trade marks on the social media.  There are now 24 gTLDs but that's rising sharply soon to just under 1,400, a real explosion.  There are also 280 country code TLDs (ccTLDs).  The process of obtaining a new gTLD was so long and expensive that there wasn't much scope for brand- snatching, but brand owners must still watch carefully for registration of their brands within each new gTLD. Verena explained the modus operandi of the Trademark Clearinghouse and Uniform Rapid Suspension, before moving on to the social media.

After offering a facts-and-figures survey of the social media, Verena reminded us that, while the internet is global in its reach, there is no global internet law.  Brand owners who use the social media for marketing and allow third party comments and content are however generally responsible for that content.  A brand strategy, monitoring and enforcement plan is essential whether a brand-owning business is active on the social media or not: such a business should provide user guidelines too.  Third party content can be monitored ahead of its being hosted, or may need to be swiftly removed.

A good place for a spot
of discreet priority filing

Verena concluded with some words about trade mark clearance in today's global environment, especially where the cleared brand will be exploited on the internet.  First, one should get a priority filing in place. Vietnam is a great place to file if you want priority but don't want others to know about it, since it takes around seven months for that information to be publicly available (Poland used to be pretty good too, for that purpose, but publication is now at around four months).  Don't forget to document everything, including how you use the new brand and how others should. In short: stay ahead, but be realistic.

Hao Zhou (WIPO Economics and Statistics Division) then spoke, announcing the forthcoming publication of a WIPO document on the economics of trade marks. He observed that there was an uneven distribution of trade mark filing internationally, and only a few jurisdictions account for most of the growth of new brands -- especially China.  He then gave a short survey of international and national filing trends and asked: how many trade mark registrations are actually useful? At least 20% of them last for 30 years and, once they reach that age, there's a good chance that they will continue.

Michal Agmon-Gonnen (a judge in the Tel Aviv District Court) was the day's final speaker.  She opened by suggesting that, considering the "NP" part of the conference title, we've given too much profit to the trade mark owner.  Once upon a time there was just confusion doctrine, then came unfair competition and ultimately dilution -- "which has nothing to do with consumers whatsoever", citing the case of some four-striped trainers that were not likely to be confused with Adidas' three striped shoes. Trade mark litigation to protect such interests is abusive, she said. Judge Agmon-Gonnen then cited further examples, one involving the trade mark of the Monster energy drink, another involving an action by Pillsbury Dough Boy's action against a Dough Girl product.  She complained about large corporations owning the entire dictionary and small businesses being unable to bring products to market without infringing someone or other's trade mark.

At this point Verena observed that it's not just a question of trade marks becoming property rights -- trade marks and indeed trade mark applications are actual property rights that are respected as human rights legislation.