INTA Brand Authenticity Conference (Report 2): Building brand value via ethical and sustainable credentials

Some tea, possibly Darjeeling, yesterday

After the first report from INTA's Brand Authenticity Conference, Alex Woolgar (Allen & Overy) is back with further updates from today's Berlin event.

Here's what Alex writes:

"The afternoon's proceedings kicked off with a session on the benefits and challenges of 3D printing for brand owners. This is a topical issue in the INTA world - a cross-committee effort co-ordinated by the Designs Committee recently resulted in an INTA position paper on 3D printing (which concluded that the area should be monitored, but the technology is not yet sufficiently advanced to render current IP protections inadequate). 

Mette Andersen of Lego gave the inside view from a business that one might speculate is more threatened by 3D printing than most. Lego's view is quite balanced - subject to due respect for Lego's IP rights (e.g. trade marks for the logo, word mark and the shape of Lego characters, but not the shape of the bricks, and some designs and patents), it is quite relaxed about the developing technology. There may be some benefits for consumers e.g. the ability to obtain special and out-of-production parts, and to customise models. There are however limitations e.g. the quality and time of production are currently inferior to plastic moulding. Lego is monitoring the area and, subject to improvements in quality, may explore offering customised 3D-printed pieces. 

Next was Lars Thalmann, co-founder of e-NABLE, a non-profit community which provides open source designs for, and 3D prints, customised prostheses, primarily for human hands. He listed some of e-NABLE's many success stories, including Söckchen, a Secretary bird of prey (and now a minor celebrity in Germany), whose prosthetic leg was designed and printed within 34 hours. As Class I medical products, human prostheses have to be CE-marked within the EU. In discussion on the possibility of using 3D printing to produce spare parts, Lars noted that (in Germany at least) replacing a vehicle part with a 3D-printed spare may push the vehicle outside of regulatory authorisation. This may raise liability issues in the case of an accident if the spare part is manufactured by a specialist producer and/or it is made negligently. 

Registered EUTM 

Finally, John F. Hornick of Finnegan gave a counterbalancing perspective. John argued that 3D printing will bring a dramatic change for brands, such that traditional IP rights and legal strategies will be undermined. In John's opinion, the technology will only become better, faster, cheaper and more widely available over time. John expects this to usher in a move from mass production to "mass customisation" (allowing e.g. replacement of a single plate from a set) and, ultimately, greater consumer control and power. The solution for brand owners may therefore lie in non-IP based business solutions / new economic models. John drew an analogy with the iTunes and Spotify solutions to the first wave of music streaming and file sharing websites - although Napster could be shut down, suing all consumers was never an option. 

Form of use - 

Alex believes this is meant 

to represent a Saguaro cactus, 

although expert confirmation 

would be welcome

There followed a session on the value of CSR and sustainability, led by Adam Garfunkel of Junxion. This session explored the concept of the "triple bottom line" and the rising importance of social and environmental concerns for companies: 84% of investors now take these factors into account alongside the traditional financial bottom line. But social and environmental  factors also influence the economic picture: these issues are important to Millennials, who will make up 80% of the workforce in 2025. As is often reported, Millennials tend to be flightier in their working lives, and look for the values of their workplace to align with their own. Adam suggested that if companies do not do sufficiently well on engaging employees with CSR initiatives, turnover rate may increase, leading to productivity and recruitment challenges and costs (and the converse is also true). From a trade marks perspective, the panel noted that sustainability metrics are currently piecemeal, and are not yet sufficiently standardised for companies to communicate their credentials clearly and concisely to consumers e.g. by way of a new certification mark. 

The third session, moderated by David Stone of Allen & Overy LLP, featured Beate Schmidt, President of the Bundespatentgericht, and Alexander Von Mühlendal of Bardehle Pagenberg (and former OHIM/EUIPO Vice-President) discussing six recent trade mark court decisions covering the green/environmental area. The author's take-home is that it remains challenging to register and/or to achieve a broad scope of protection for trade marks denoting "green" credentials or GIs. Beate recounted Bundespatentgericht decisions on GREENIT DAS SYSTEMHAUS (descriptive and non-distinctive for IT services) and SMART SUSTAINABILITY (descriptive and non-distinctive for motor vehicles and associated equipment and services) - as readers may recall, the average consumer in Germany is usually taken to have a good understanding of English. Readers may not be aware that the Bundespatentgericht is obliged to investigate the cases before it ex officio, which explains the court referring in its judgment to its own Google searches for other uses of SMART SUSTAINABILITY in Germany.  

I dealt with four CJEU decisions - Darjeeling, Porto, Kerrygold and Cactus. In Darjeeling, the CJEU ruled that the essential function of the Darjeeling Tea Board's collective marks was not to guarantee a particular geographical origin (unlike GIs), and consequently the opposition against registration of marks including DARJEELING for lingerie failed. In Porto, the CJEU overturned the General Court's decision that although the opposition against PORT CHARLOTTE for whisky was not made out on the basis of the GI for PORT/PORTO wine,  the opposition was made out under protections under Portuguese law (the CJEU held there was no justification for a broader scope of protection under national law). In Kerrygold, the CJEU held that peaceful co-existence of the KERRYGOLD and KERRYMAID dairies in their native Ireland (Kerry is a county famous for its cattle) was a relevant factor in the overall assessment of confusion between the marks in Spain, but not determinative. Finally, in Cactus, use of a cactus device (see below) was held to have the same semantic content and distinctive character as a composite mark featuring the device and the word CACTUS, such that there was genuine (trade mark) use.

Finally, in a session moderated by Mladen Vukmir of Vukmir & Associates, Camille van Gestel of Waka Waka and Peter Dernbach of Winkler Partners (Taiwan) explained their personal motivations for their organisations' respective sustainability and CSR missions. Waka Waka developed from a carbon offset programme for the 2010 FIFA World Cup in South Africa, into manufacturer and supplier of solar-powered micro lights, with the aim of reducing the number of people without electricity worldwide (currently over one billion). This has clear quality of life and educational benefits. Peter explained his own mission to give something back in his adoptive country of Taiwan, in the form of his firm's extensive CSR programme based on the three Cs (colleagues, community and clients). He advocated a collaborative and experimental approach to the development of CSR programmes."

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