When Trademarks Overlap With Other IP Rights: conference report 10

The final session of the INTA's two-day conference marathon continued the theme of the previous session, but looked at the trade mark/publicity overlap from the perspective of some trade mark owners which rely on taking licences from well known celebrities and sportsmen: Joseph J. Conklin (Coty) and Alexander Ballasch (DFL Deutsche Fussball Liga GmbH).  The DFL football connection is obvious, but Coty has a football connection too, via the Beckham brand.

Alexander spoke of the contents of the licences granted to the DFL by the football players. Players do not transfer all their rights, but only their rights as Bundesliga players and their rights other than in relation to their own football teams, and the football clubs transfer their equivalent rights to the DFL too. In contrast, in the US the use of a persona is governed by state tort law. As Joseph explained, licensing-in of celebrity rights starts with a definition of "Artist Rights", which might include the celebrity's real name, album name(s), nicknames, image(s), approved biography, archival images, soundbites and slogans with which the celebrity is associated, and so on.

Licences should be specific as to use, timing (including termination as well as permitted post-termination use) and contol mechanisms.  So far as Coty is concerned, the drafting of a publicity licence will list explicitly all items for which use is sought, making it plain that the licensor is restricted from using or licensing to anyone else those items that fall within the scope of "Artists Rights".  The DFL does not have many players' trade marks to play with, since most players haven't registered their names and likenesses as trade marks. Alexander added that players' rights contracts contain details relating to use in video games, collecting cards, and so on.  Since it initially takes rights, the DFL is the licensor, not the licensee. The content of each licence is unsurprisingly spelled out in detail.  What about unauthorised use? Coty is always on the watch for third party information about non-licensed products and services used by their celebrities. Even carrying a shopping bag can lead to a $6 million dollar lawsuit, as when a tweet picked up the fact that Katherine Heigl shopped at the Duane Reade drug store in New York (here),

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The grand finale to this event was an address by Office for Harmonisation in the Internal Market (OHIM) President Antonio Campinos. Antonio spoke about trialogue discussions and the various governance issues concerning OHIM, including its rebranding: he hoped that a new name, chosen to replace the existing name which had lasted some 20 years, would never need to be changed again --  whatever name was chosen.

Europe has a two-tiered system, based on national and Community rights. To make it work, one has to know exactly what are the rights contained within those two tiers. This is why TMview and a number of database products have been developed. At present, information from 47 European offices, in 34 different languages, must be processed.  Tools are being created to make this information more transparent, accessible and user-friendly so that it can deliver significant benefits to all users of the European trade mark system. So far, more than 300 implementations of OHIM's 19 IT tools have taken place around Europe's offices, facilitating a convergence of national office practices and processes. Negative externalities have to be rooted out too.

Fast track: now racing ahead

Users of the system need high-quality rights and decisions, which should be well drafted and timely. Right now, CTM applications are processed in just over 5 months, and for two consecutive quarters the Office has performed overall very well. With ex post checks now in place for all OHIM operations, ex ante checks are planned too. A customer services department has been created and efforts are being made to improve the user interface and enhance the user experience of different types of users. Since 24 November the OHIM Fast Track procedure has been available. Around 30% of users are already using this scheme and more use is being made of the harmonised terms database, which entitles users to a fee reduction.

Antonio then spoke enthusiastically about the OHIM Observatory and OHIM's work in assessing the impact of IP and attitudes towards it. He concluded with a quote from Isaac Asimov:

"It is change, continuing change, inevitable change, that is the dominant factor in society today. No sensible decision can be made any longer without taking into account not only the world as it is, but the world as it will be...". [Very nice, but the quote continues: "This, in turn, means that our statesmen, our businessmen, our everyman must take on a science fictional way of thinking". Let's see how SciFi OHIM can be!]