Tuesday 25 November 2014

Expanding Trademark Subject Matter and Overlapping Rights: a Website, Case and Conference

The issue concerning expanding trademark subject matter is a relatively hot one.  Trademark subject matter has continued to expand in the U.S. to cover everything from single colors alone to interesting forms of trade dress, such as a website or a restaurant's décor, to sounds to tastes to smells.  Indeed, motion marks are common now as well.  Attorney Michael Spinks has an interesting, helpful and entertaining blog titled, "Funky Marks."  (Well, I suppose these marks can be smelly, have a cool sound and are a little weird, but they don't all involve Mark Wahlberg.)   If you are interested in seeing just how far trademark subject matter is going, enjoy the website.
And, another new case on the subject of trademarks was just issued today.  The EU General Court in Luxemburg apparently upholds a three dimensional trademark over the Rubik's Cube despite the expiration of a patent.  The Simba Toys case can be found, here.  And, here is commentary by Bloomberg.  (Hat Tip to BNA). 
Couple expanding trademark protection with overlapping rights and you have a very hot topic.  With expanding trademark subject matter (and rights), you get the potential for conflict with other areas of intellectual property.  And, INTA (among others) is sponsoring an upcoming timely conference on the subject featuring our very own Neil Wilkof (Congratulations to Neil for his appointment to the board of INTA) and Jeremy Phillips.  (And, here is a link to an IPKat (Neil and Jeremy) post on the subject of the consumer protection function of trademarks.)
Here is information about the conference:
December 8–9 
Westin Grand Munich Hotel
Munich, Germany

The overlap between trademarks and other intellectual property rights is everywhere—whether in registration, enforcement or commercialization. For example:

  • A product design can be protected as a two- or three-dimensional mark, trade dress, design patent, registered design, unregistered design or a work of applied art under copyright law.
  • An artistic work can be registered as a trademark, whether or not it is protected under copyright law.
  • A geographical indication can be registered as such or protected as a collective or certification mark, under passing off or unfair competition law.
  • A trademark can be subject to unfair competition law, comparative advertising statutes or consumer protection laws. A trademark, as used in blogs and social media, can involve rights of privacy and rights of publicity.

It is essential that trademark and other IP practitioners have a solid understanding of the many opportunities and pitfalls of intersecting rights. The intersection of these rights also raises fundamental questions about the nature of trademark law and its relationship to the other areas of IP protection, and how policy should best address these overlaps.

Join the International Trademark Association (INTA) in Munich, Germany, on December 8–9, 2014, at the Westin Grand Munich Hotel for two days of information-packed, advanced-level sessions. Presented by leading authorities in their field, these sessions will deal with these and other emerging issues concerning the overlap of trademark rights with other IP rights.

This conference is cosponsored by the INTA’s Programs and Related Rights Committees and with the kind support of the German Association for the Protection of Intellectual Property (GRUR).

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