IPKAT IN GENEVA - DAY TWO

The second day of the INTA-WIPO 2003 Worldwide Forum on Trademark Protection focused on various issues relevant to international trade mark protection strategies. The first session covered the creation of minimum procedural standards for trade mark offices under the Trademark Law Treaty. The main message was that efficient trade mark registration and maintenance systems facilitate and encourage would-be trade mark proprietors in the upkeep of their trade mark portfolios, making life more difficult to pirates and counterfeiters. Panel number two of the day considered issues of substantive trade mark law harmonisation. The speakers evaluated the different means by which such harmonisation could be carried out, including soft law, such as joint recommendations, treaties and harmonisation driven by each individual state. Additionally, the IPKat’s master, Jeremy Phillips suggested a manifesto for harmonisation, the top priorities being exhaustion of rights, graphic representation of what is claimed by a trade mark and the interface between trade mark rights and design rights in the area of functionality. This was followed by an assessment of the problems and challenges posed by EU enlargement for existing and future trade mark owners.

The afternoon session began with an overview of the success of the UDRP system in settling domain name disputes. The system has been heavily used and decisions under the instrument have been frequently cited. There has however been a slow-down in people bringing cases, though the UDRP is still relied upon by the owners of famous marks in particular. A couple of issues for the future were also highlighted: what to do in cases involving domain names in characters other than Roman script and how many of the new gTLDs (such as .biz and .info) will be used and seen as brands in the way that many dotcoms have, e.g. amazon.com. Recent UDRP decisions involving interesting issues were also considered, such as whether cybersquatters can rely on the fact that the address that they have squatted on is associated with their nicknames and whether the protection of a logo that contains perhaps even descriptive wording extends to protecting that wording from use by third parties as a domain name. Finally, the relative advantages and disadvantages of mediation, arbitration and litigation were considered, the conclusion being that while alternative dispute resolution methods offer parties more control over the cost and duration of dispute procedure, as well as the opportunity to offer unorthodox remedies such as payment of damages in kind, ultimately, the suitability of ADR will depend on the particular case.

The IPKat congratulates the organisers and speakers on a successful conference and is sure that the issues raised will remain on the forefront of the world trade mark agenda for months, if not years, to come.

More than you ever wanted to know about Switzerland here
Famous Swiss trade marks here, here and here
Cuckoo clock here