From teenage inventor to INTA President
Gerhard Bauer of Daimler is INTA’s first non-native English speaking President. James Nurton spoke to him about brands, the Bay Area and burning issues
This year’s INTA President Gerhard Bauer has IP in his blood. His father was a patent attorney and Gerhard can trace his own IP experience back to the age of 13, when he filed a patent application for an invention in Germany. The patent, for a sealing device for a rotary combustion engine, was granted but Bauer modestly explains that it did not lead to a career as an inventor: “Of course it was not a commercial success, no one was interested.”
Instead, Bauer followed his father into the IP profession. After graduating from Stuttgart University, he joined the patent department of Mercedes-Benz, qualifying as a patent attorney before switching to work in trademarks for the same company. “First I changed from the inventor side to the IP side,” he says. “Then in 1992 I had a unique chance to take over the trademark department when my predecessor retired.”
He has worked in trademarks for the company ever since and says he has no regrets about making the move: “There is so much attention on trademarks now. They fulfil a role for consumers as well as for the brand owner. If something is going on with a trademark it’s very visible.” Working with trademarks means trying to understand what appeals to consumers, and how they interact with brands, he adds: “The consumer looks at the name and design as well as the technology that’s in the product.” This means he has not entirely left behind his former patent-oriented role: “Even in the trademark field, I’m glad to have the scientific background. So many trademarks in the automotive industry relate to technical features so it’s helpful to have a scientific background to know whether something is descriptive or not.”
Bauer now heads a team of 13 people (12 in Germany, one in China) at Daimler, who manage a portfolio of some 36,000 trademarks worldwide, as well as 5,000 designs and 6,000 domain names. In addition, they are responsible for the company’s IP contracts, including patent licenses. Over the past few years, Daimler (which demerged from Chrysler in 2007) like many companies has had to deal with the impact of the global economic crisis. “I was afraid the crisis would have a big effect on IP strategies, but they remained unchanged and the need for IP even increased,” says Bauer. But he adds that the crisis has accelerated existing trends, such as the need to do more with less: “We have to work with limited resources—financial or human. That means you have to be innovative.”
Another challenge that is increasing is the globalization of business, says this year’s President: “If we file a trademark we want to use it throughout the world. So the need for an extensive clearance search for trademarks is becoming greater. Look at China where there are up to 1 million filings a year.” This also means, he says, that “INTA’s goal—and my goal—is to foster harmonization.” That encompasses the harmonization of laws and regulations, but it also means reconciling procedures, says Bauer: “There is a need to abolish some of the requirements for legalization and notarization of documents in each and every country.” He adds that he welcomes the big steps that have been made in many offices with e-business but regrets that “we sometimes remain in the old age with respect to document requirements which could easily be transferred by electronic means.”
In the context of increasing harmonization and simplicity, Bauer says there are three “burning issues” that are being addressed during his term as President this year: EU trademark reform, ACTA and new gTLDs.
The first of these is particularly close to home, as Bauer is the first INTA President from continental Europe, as well as the first non-native English speaker to hold the office. The Commission’s review is partly based on a detailed study carried out by the Max Planck Institute, which was published in February this year. The study, which included a survey of users, runs to more than 200 pages, and is still being digested by trademark practitioners. It examines and makes suggestions on issues including fees/revenues, use requirements and cluttering of the register. “The Commission has invited INTA to comment on the study and we will do so. We will come up with our proposal in due time,” says Bauer, who notes that there is a large team of volunteers, spanning several INTA committees, working on a response.
Once the Commission has consulted, it is expected to propose changes to the existing Trade Marks Directive, or even its replacement with a new Directive, later this year or early next. Bauer says it is too early to predict what the main changes will be, but says that “clarification on some details” is needed, including on what constitutes genuine use of a CTM and enforcement issues such as whether goods in transhipment can be infringing. Both of these issues are also addressed in cases before the Court of Justice of the EU.
The second hot issue is ACTA. Since last year’s Annual Meeting there has been significant progress in this area, with the circulation of draft versions of the agreement being followed by the publication of an agreed text late in 2010. Bauer welcomes the final text, describing it as “intended to protect brand owners and consumers” and adding that “we achieved a major goal in creating the transparency”. He says the agreement will be helpful in providing guidance to member countries on improving anticounterfeiting activities and adds that INTA’s priority is now to see if more countries than the 37 signatories will join: “Having more countries accede will mean it has more of an impact on the IP world.”
INTA’s third priority this year is the proposed expansion of the domain name system, which is under discussion at Icann. Plans to allow anyone to apply for a generic top-level domain (gTLD) are now well advanced, meaning that the 20 or so gTLDs such as .com and .org could become 200 or even 2000 in the future. Icann is due to hold an extraordinary meeting in Singapore next month, at which final approval for the expansion may be given.
Bauer insists that trademark owners have nothing to fear in principle from the “opening up of the domain space” as long as it is properly regulated: “There should be rules on interaction of trademarks and domains, recognising prior rights.” INTA has been active in observing the process and submitting comments on programs such as a clearinghouse of trademark rights and the institution of a quicker version of the UDRP, as well as consistent application of sunrise periods. If properly implemented, these should ensure that trademark rights are respected, says Bauer: “The decision on the number of TLDs is a business decision. But if you have them, they have to be handled safely.”
International and visible
Bauer says all these issues demonstrate why trademarks are important in today’s economy. “Trademarks help build up trust with consumers. They are international and very visible,” he says. “They also increasingly interact with other IP rights and affect a wide range of products and consumers.” In the light of this, says Bauer, “flexibility” is a vital asset for trademark practitioners: “You have to adapt to many situations very quickly.”
Being involved with INTA enables members to know about trademark developments, and even in some cases influence them, he says: “INTA is constantly moving. The committee structure can adapt and we review the strategic plan to keep it up to date.” An example is the revised website, which includes the social networking tool My Powerful Network. Bauer says within a few weeks of the website launching he had more than 170 contacts. “Being a member of INTA gives me an understanding of the international aspects of trademarks and helps me get information on what’s going on in the trademark world,” he says. “It is also about making new friendships, which makes it easier to work with colleagues wherever they are in the world.”
One Annual Meeting, one world
Gerhard Bauer says he is delighted that the INTA Annual Meeting during his presidency is taking place in San Francisco as it is “a gateway to other regions and continents”. This year’s President first attended the Annual Meeting in 1998 in Boston: “It rained all week. But that didn’t stop me from coming back the next year and getting more involved.” He expects the attendance at this year’s Meeting to reflect the “really international” nature of INTA’s membership and leadership.
Bauer adds that there is also a neat link to Germany as this year’s keynote speaker, John Anderson, is CEO of Levi Strauss & Co. The company was founded in San Francisco in 1853 (at the height of the gold rush) by Levi Strauss, an immigrant from Bavaria in Germany. Strauss and his business partner Jacob Davis received a patent for the use of copper rivets in denim pants in 1873 and the company’s jeans soon became celebrated worldwide.
Today, San Francisco is known as a global melting pot, with a variety of cultures and strong economic ties to Asia, as well as the Americas and Europe. In that sense, says Bauer, it also points forward for INTA, as in 2014 the Annual Meeting will be held in Asia for the first time, in Hong Kong.