Trademark tips from around the world
Albania has taken a huge step forward in its IP enforcement; there’s a new trademark law in Serbia; and generally social media is becoming the new frontier for infringement. Where would you find such a comprehensive and detailed summary of trademark law around the world, but at the INTA Annual Meeting Academic Course that ran all day on Saturday and Sunday?
The Academic Course on International Trademark Law is structured as a series of updates from leading lawyers in their respective regions and specialist areas. Although mostly geographical, the updates also included talks on areas of practice, such as famous and well-known marks.
This allows time to get into some niche areas. For example, Slobodan Petosevic of eastern European firm Petosevic explained how far IP rights have progressed in Albania. Two recent cases, involving the marks MOTOREX and RED BULL, broadly followed EU practice and decisions by the Court of Justice of the EU, despite the fact that Albania is not a member of the EU. The RED BULL case in particular involved a finding of infringement at both the first and second instances based on trade dress rights, even though Albanian law does not mention trade dress at all.
These small countries often have an importance for brand owners that is disproportionate to their size. Kosovo, for example, is still not recognized as a country by the UN and is therefore not a signatory to any international IP agreements. But its position in the heart of southern Europe, with easy access to the sea, makes it an important venue for counterfeiters.
There has been some confusion in recent years as to the best way to protect rights in Kosovo. Local officials at one point said that brand owners could simply re-register their Madrid Agreement applications and they would be converted to national rights. But these have not always been recognized in subsequent litigation. “My advice now would be to just register a national mark directly with the Albanian office,” said Petosevic.
The annual updates are particularly popular with in-house IP counsel looking to create an international registration strategy. Robert J. Pascal, Intellectual Property Director at Textron Innovations Inc. in Providence, RI, was joining the course for the first time: “We are an industrial company with many different marks, among them CESSNA planes and BELL helicopters. We have hundreds of different registrations around the world—some of them national, some regional, and some that overlap in a belt-and-suspenders approach. Right now we’re trying to streamline those registrations, so this level of analysis is perfect for trying to work out which we should keep and which we should let lapse.”
Although Textron doesn’t have many issues with counterfeit helicopters, it does license its brands to producers of model aircraft, and therefore needs to enforce against counterfeit versions of these toys. “The key is to try and map our most important markets against the relative cost and effectiveness of registration in these various countries,” said Pascal.
The news from across eastern Europe was generally positive, with all countries increasingly following EU law and jurisprudence whether they were prospective, potential or unlikely members of the European Union. Serbia, for example, introduced a new trademark law in January that recognizes exhaustion of rights for the first time. This is important as the country had been a popular route for parallel imports into the rest of Europe.