When Trademarks Overlap With Other IP Rights: conference report 1

The Westin Grand: a lot warmer in than out ...

"When Trademarks Overlap with Other IP Rights", the International Trademark Association (INTA) European winter conference, opened today in the lovely if somewhat chilly city of Munich in the serene comfort of the Westin Grand Munich Hotel. Unlike the hotel, however, the programme, co-chaired by its architects Neil J. Wilkof and Axel Nordemann, was not designed to cosset and comfort the registrants but rather to put them through a rigorous and demanding series of focuses on things that can and do go wrong when trade mark rights in the real world overlap with other intellectual property rights.

Etienne Sanz de Acedo (INTA Chief Executive Officer, left) opened the event by thanking the local German contingent for being seated on time, and by announcing that, with some 350 people registered, this was the largest ever INTA event in Europe.  Since this was the last conference of the year, Etienne delivered an end-of-term report on the organisation's many and varied activities and achievements and a trailer for INTA's 2015 programme. Etienne then handed over to co-chairs Neil and Axel, who explained the rationale for this event.  Overlapping Intellectual Property Rights, edited by Neil and Shamnad Bashir [published by OUP and noted by the IPKat here] provided much of the intellectual inspiration for this event, which took more than 250 conference calls to stitch together.  Neil then reminded us that overlapping rights are so important that no professional practitioner can responsibly ignore them -- even though we are taught our IP rights one-by-one. Neil launched into a disquisition on Venn diagrams and their use which should surely qualify for further exploration in a future conference.

This is what it's all about *

IPKat team member Jeremy spoke next, the title of his keynote address being "Overlaid, Overlegislated and Overloaded". He first described some different types of overlap: (i) where two or more different IP rights attach to the same mark, (ii) where two or more different trade mark rights attach to the same sign and (iii) where two or more different rights attach to the same product. It was the first of these that this event is principally concerned with. He then charted the move from "Underlap", where most things weren't protected by IP at all, to "Overlap" where the same thing could be protected by two or more rights. How did we get there, he asked? In the first place, there has been a good deal of trade mark "creep": subject matter such as colours, smells, packaging, product shapes, sounds, motion marks and positional marks which didn't originally attract attention in many jurisdictions, now do so. In addition, over the past 30 years many countries that only granted trade marks for use in relation to goods extended the scope of registration to cover services. This meant for example that the footprint of a trade mark was bigger, in that a likelihood of confusion between a mark used on goods and one used on complementary services fell within the ambit of trade mark protection. Over the same period, copyright and design law have also seen a degree of "creep".

This one was litigated here

Meanwhile, Jeremy observed, the legal bases for the protection of trade marks and for the protection of the more "creative" IP rights were quite different. In the United States Constitution, for example, the Commerce Clause, for example. did not provide a convenient means for acting as a check on the application of the Copyright Clause. In the European Union, where different fundamental considerations apply, there is equally no check on the growth of overlap. In a way it is almost irrelevant, since the competition-driven EU tends to think in binary terms of is a product or service covered by IP or not. If it isn't, then there is no impediment to the functioning of the Single Market. If there is, the question is not one of overlap or no overlap, but of whether the IP right or rights operate as an abuse of monopoly (where they are in the same hands) or serve so as to distort trade within the Single Market.

Where does all this leave us? The consequences of overlap can be severe for traders and inconvenient for their professional representatives. We have reached the situation in the UK, for example, where a simple industrially manufactured object might be protected by UK registered and unregistered design rights, Community registered and unregistered design rights, copyright, trade mark registration and passing off. A trader who wants to import that object might easily be deterred from doing so by the difficulties in clearing all those rights, or might rashly go ahead and find himself infringing one or more right if he doesn't.

* Overlap, an explanation of Venn diagrams by Brian Cook, here