The future of trademarks
This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight
This chapter offers a personal perspective on the role that MARQUES plays in helping brand owners confront the diverse challenges of protecting IP rights in a rapidly changing world.
Global brand owners face increasing challenges in protecting, managing and enforcing their IP rights. These include challenges arising from new technologies, new business models and new markets. It is therefore more important than ever for brand owners to work together on areas of common interest, share expertise and learn from each other. MARQUES facilitates this cooperation thanks to its network of more than 750 members drawn from all over the world and a variety of industry sectors. These 750 organisations have over 2,000 individual member representatives.
Supporting our members
In September 2018 the MARQUES Annual Conference will take place in Paris, with this year’s theme being Branding Style: Appearance, Aesthetics and Éclat. Many sessions will focus on topics such as branding, design and luxury goods and there will be panels on EU case law, as well as the latest developments from the World Intellectual Property Organisation and the EU Intellectual Property Office. There will be six interactive workshops on:
- protection of well-known trademarks in China;
- the EU General Data Protection Regulation (GDPR);
- geographical indications;
- the average consumer;
- licensing brands; and
- mediation.
Of particular note is the workshop on well-known trademarks in China, which is being hosted by the China Trademark Association (CTA) and will be opened by the CTA’s president Ma Fu. MARQUES and the CTA have been cooperating extensively in recent years as part of the aim to expand MARQUES activities into China and Southeast Asia.
In 2017 MARQUES hosted a workshop at the CTA’s Annual Trademark Festival and in June 2018 a CTA delegation visited the Netherlands and the United Kingdom to discuss matters of mutual interest with a variety of MARQUES members. Experiences in China and Europe were discussed and compared in order to learn more about the latest developments in each area.
As well as the annual conference, MARQUES hosts many other seminars and meetings, including the first EU Judges Meeting in January 2019. The association is also active in policy discussions, sharing information, analysis and raising brand owners’ concerns on relevant topics, such as the impact of the GDPR on the WHOIS system and the impact of Brexit on registered trademarks and designs.
All these activities bring together the diverse experiences of MARQUES members and provide an invaluable resource for trademark practitioners.
Protecting our creative assets
I am currently chief legal officer of King, a leading interactive entertainment company for the mobile world, but prior to becoming chief legal officer, I was head of intellectual property and litigation, focusing on IP protection and enforcement. Transitioning to chief legal officer has given me a much broader role, but intellectual property remains a key part of the work I am involved with.
One reason for this is that intellectual property is extremely important for a games company such as King: it protects the creative assets of the company, which is vital in a crowded industry. It is essential to stand out and stay ahead of the game. King wants its players to know that a game they play comes from King and that because it’s a King game, players can trust that the quality and experience will be awesome.
Nevertheless, protecting brands in the online world is not easy. King games launch globally – systems and laws vary and there is no consistency in procedure, time, cost or remedies. For a global brand this keeps things interesting. Trademarks and copyright are vital to protecting the creative elements of a game, but design rights are also helpful in strengthening rights. The breadth of work done by MARQUES reflects the matrix of rights that are relied on in protecting brands and games. For example, there is a dedicated designs team, cyberspace team and a recently launched copyright team.
As a market leader, dealing with IP infringement is a natural part of the job, as people will always attempt to free-ride on creativity. When it is on a global scale, this can make things tricky. App platforms have their own mechanisms for taking down infringing content. Such apps tend to work fairly well, but not everywhere outside Europe and the United States will have the same luxury and access to these apps. It would be great for brand owners to see more early resolution systems operating in other parts of the world such as Asia. MARQUES has put a high priority on building relationships and reaching out to Asia, particularly China, through cooperation with the CTA and the work of the many MARQUES members in that region. There is also a dedicated China team – China will become increasingly important for international brand owners, demonstrated by the fact that it receives some 7 million trademark applications a year.
Joining one of the MARQUES teams is a great way to learn about and help shape the area of IP practice that is important to the work that you do, as well as a good opportunity to meet like-minded practitioners from other companies and regions. When I joined MARQUES, I was working at Skype/Microsoft, and I decided to join the brands and marketing team, which particularly looks at issues arising in advertising and marketing. I stayed with this team when I moved to King as I felt that the issues discussed were relevant to a lot of the work that we were doing in trying to protect our brands and also gave useful insights into brand-related issues for marketing strategies (eg, building brand loyalty, engaging the brand with the public, brand sustainability, creating connection among people, expressing talent and innovation). Among the achievements of the brands and marketing team in recent years are publications on brand valuation guidelines and methodologies, environmental labelling, transliterations and the use of evidence in trademark proceedings.
Learning from each other
More recently, I have benefited from being on the MARQUES Council and Executive. The MARQUES Articles of Association provide that the MARQUES Council must be representative of its membership and the majority of Council members represent brand owners. At present, the members come from countries including Austria, Denmark, France, Germany, Ireland, Italy, Liechtenstein, Mexico, the Netherlands, Spain, Switzerland, the United Kingdom and the United States, and represent industries such as consumer goods, pharmaceuticals, luxury goods, fashion and jewellery. The MARQUES Executive is a smaller group that is delegated with managing day-to-day MARQUES affairs.
The council and executive identify new perspectives which help with the day-to-day work. It is a valuable way for MARQUES to keep ahead of the key challenges and issues in terms of IP changes as they emerge. Although the focus of MARQUES is Europe, useful information on brand protection is gained from across the globe, providing the opportunity to learn from others as MARQUES decides on its policies and practices.
It is useful to be part of a network of IP professionals and to gain early insights into changes that could affect business, and in some cases to influence those changes in a positive way. Sometimes it is difficult or inappropriate for in-house counsel to put out their views on a particular topic, so having a body that represents the views of brand owners as a whole (based on proper debate and review) provides an invaluable way to address those topics. Two examples of that are the MARQUES Amicus Curiae Team and the MARQUES Brexit Task Force.
The Amicus Curiae Team reviews important pending trademark cases at both EU and national level, and where appropriate recommends that MARQUES submit written comments and take part in oral proceedings. The final decision about whether to do so, and what line to support, is always taken by the MARQUES Council, taking into account the different views and interests of MARQUES members. MARQUES has submitted a number of amicus briefs before the European Court of Justice (ECJ) and the General Court, most recently in the Red Bull case concerning the registration of colour combination trademarks (Joined Cases T-101/15 and T-102/15). In this case, MARQUES was granted leave to intervene in support of Red Bull’s position and argued its case at the hearing. The General Court’s judgment acknowledged the force of MARQUES’ arguments, even though the outcome was not what MARQUES had sought. The case is now pending before the ECJ and MARQUES continues to monitor its progress.
The Brexit Task Force was set up following the United Kingdom’s vote to leave the European Union in June 2016. It quickly became apparent that this decision, and the subsequent Article 50 notification sent by the UK government, would have wide-ranging but unpredictable consequences for IP practitioners, particularly owners of EU trademarks and registered Community designs. The task force has invited contributions from MARQUES members across the European Union, drawn up recommendations and communicated these to the relevant authorities in London and Brussels. Throughout this process, MARQUES is working closely with other associations representing brand owners and IP practitioners to ensure that MARQUES’ interests are presented to both the UK government and the EU negotiators, and the solutions proposed meet industry needs. Working for a UK-based company, which does business in many countries, I know how important it is to have practical, simple and clear solutions to the challenges raised by Brexit and welcome the ongoing work on this topic.
Looking ahead
In Summer 2019 I will become chair of MARQUES and keenly anticipate continuing the excellent work done over the past few years. MARQUES has become a powerful voice for brand owners and a valuable resource for its members covering trademark developments as well as important related issues, and I look forward to building on that work.
This has been achieved thanks to the work that has gone into making the internal workings of MARQUES highly efficient and productive, with strong lines of communication between the executive, council and team members. The constant introduction of new blood, both as members and people attending our events, has also been important. It is valuable in this respect that the leadership of teams and the senior officers is refreshed every two years. MARQUES has extremely high standards in terms of the input that it gives to policy makers and legislators and it will be top of my agenda to maintain that standard.
I have a few issues on my radar that I hope to explore. These include ensuring that as an association, MARQUES looks towards the future and keeps an eye on the areas which may require attention, such as technology, which has helped make the world smaller and more connected, with more brands becoming truly global. Making it easier for businesses to protect and enforce their intellectual property in this evolving landscape is something that MARQUES can really help with. It is vital that MARQUES continues to represent the interests of brand owners and reacts flexibly to market changes and challenges.
With the structures that MARQUES has in place, and the enthusiasm and knowledge of its members, I am confident that it can confront the challenges unearthed by this evolving landscape and the various political, economic and technological changes that are to be expected in the coming years.
MARQUES
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