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Some tea, possibly Darjeeling, yesterday
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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.
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Registered EUTM
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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.
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Form of use -
Alex believes this is meant
to represent a Saguaro cactus,
although expert confirmation
would be welcome
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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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