Trademark professionals unflappable in the face of global upheaval
This year is being characterised by major change – both in the IP world and beyond. Certain shifts at the EUIPO (eg, its growing involvement in SEP issues) are being met with serious concern by some of WTR’s Global Leaders, who worry that trademarks could take a back seat. Meanwhile, the expected surge in counterfeiting as we approach the 2024 Olympics and UEFA Euros means that brand owners must be extra vigilant in their approaches to fighting the inevitable uptick in fake merchandise. Across the Atlantic, the upcoming US presidential election could affect IP protection in the United States, while applicants fear the impact of geopolitical conflicts on other foreign registries.
However, many Global Leaders remain confident that despite these significant global events, the trademark sphere can – and will – weather the storms. They are armed with guidance for rights holders to help them stay one step ahead.
Evolving role of the EUIPO gets mixed reviews
Some practitioners are unfazed by the shifting role of the EUIPO, despite the widespread expectation that it will cause major headaches in the trademark world. Peter Schramm of MLL Legal is relaxed about the EUIPO’s growing involvement in SEP issues. He claims to have “no objection to an authority at EU level being responsible for trademarks, patents and designs”. Meanwhile, Jurg Simon of Lenz & Staehelin does not “have specific concerns with regard to the trademark sphere”.
“Good IP lawyers should have knowledge in all areas of intellectual property to advise their clients,” Schramm says. So they should have no reason to worry.
Lee Curtis, Alexander Hagen, Kasper Radstake and Pieter de Ruijter of HGF also remain confident that the change in EUIPO job description will not have a negative impact on the registry’s ability to carry out its primary objectives. “We see no reason why the new responsibilities should have any significant impact on [the quality of services],” they say. “The EUIPO may provide a wider range of services in the future, but we do not anticipate that the overall quality…should deteriorate.”
However, others wait with bated breath about the implications of such a transition.
“It will be very interesting to see what role the EUIPO will play in both trademark and SEP matters in the future,” says Simon Holzer of MLL Legal. “We are observing with some concern that the patent system – which has so far been primarily shaped by the European Patent Office (EPO) at the European level – is increasingly becoming an EU topic with the Unified Patent Court (UPC), and now there is the possible role of the EUIPO in SEP matters too.”
Some are extremely unhappy. “The EUIPO’s role in the SEP regulation is unfortunate and has been rightfully met with widespread criticism from prominent expert voices, including even the president of the UPC and president of the EPO,” says Peter Ruess of ARNOLD RUESS. “Experts have pointed out that…this role shift effectively means impairing proper access to justice.”
Ruess anticipates that the trademark world will take a hit as a result – even if this impact is indirect – because “the EUIPO might divert time and resources from the trademark field to embark upon this new territory”.
Practitioners armed with advice ahead of Olympics and UEFA Euros counterfeiting surge
When global international sporting events take place, there is a high risk of counterfeiting activities involving fake merchandise – both in retail markets and on online platforms.
Indeed, “counterfeiting operations are becoming increasingly clandestine” with most counterfeiters having moved online, says Gang Bai of Wanhuida Intellectual Property. Brand owners need a dedicated database to pool information, should create an online monitoring programme and must develop a multi-pronged enforcement approach, he advises.
“Brand owners must be extra vigilant as these events approach, carefully reviewing their IP portfolios, strengthening trademark protection and working closely with enforcement authorities in the physical and digital arenas to ensure that fakes do not flood the market,” agrees Satyapon Sachdecha of Satyapon & Partners. “They should also be prepared to send take-down notices to online platforms illegally streaming the events, block URLs if possible and monitor social media for any infringing activities.”
However, Michael Ritscher of MLL Legal remains calm in the face of these challenges. He insists that “if you have a viable brand protection strategy and have implemented it successfully, you should not need to make any special preparations” for these events. “For both clients that organise such events and those that use such events as marketing opportunities, the strategy should include a chapter on ‘ambush marketing,’” Ritscher says.
Potential political disruption in the Americas
In the United States, Andrew Price of Venable anticipates that the country’s IP landscape could be significantly affected by the outcome of the upcoming presidential election. “If Donald Trump or another Republican is elected, the administration will likely put more pressure on China to protect the intellectual property of US brand owners, and increase pressure to clamp down on bad actors from China filing improper documents with the USPTO,” he muses. “If Joe Biden or another Democrat is elected, the administration will likely continue the status quo.”
Elsewhere, there is growing concern about IP offices cancelling foreign marks as a result of geopolitical conflict. In January, Yemen’s IP Office started cancelling US-owned trademarks connected to the conflict in Gaza.
However, Consuelo Gonzalez Rodriguez and Saul Santoyo Orozco of Uhthoff Gomez Vega & Uhthoff offer reassurance that this need not be a cause of worry for clients protecting their rights in Mexico. “We are of the opinion that it would be unlikely to happen in Mexico, considering the neutral stance that our country has taken throughout history – even in very difficult and convulse times,” Orozco states.
“Fortunately, the Mexican Trademark Office does not get involved in geopolitical conflict,” says Rodriguez. “At least until this point, [it] has never taken sides or applied criteria that could cause negative repercussions for clients or users of Mexico’s IP system.”
Global Leaders is WTR’s annual opportunity to showcase some of the world’s top private practice trademark experts, allowing them space to share valuable insight into the most pressing issues dominating the IP space and their thoughts for the future. The 2024 edition is available now.