Perspectives

Trademark-related quotes, opinions and observations from around the globe

This case will affect policy no matter what the decision is. Even if the circuit decides there isn’t a First Amendment right, the policy issue will have been looked at in a more sophisticated way. The previous argument had been made on a precedent [re McGinley] that may or may not have been soundly based when it was made in 1981, but there is now a very strong argument that it is not even applicable in light of changes to trademark law since then. So in a world where so many substantive rights depend on trademark registration, it’s not enough merely to say, ‘It is well established that there is no First Amendment issue.’ It has got to be addressed on a substantive level.

Archer & Greiner partner Ron Coleman reacts to the issue by the US Federal Circuit of a sua sponte order to vacate a decision rejecting a trademark application by Asian-American band The Slants and rehear the appeal en banc, focusing on whether “the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violates the First Amendment” (April 28 2015)

We are in a transition, looking to and preparing ourselves for the future. That was the rationale behind our [recent] taskforces – one considering brands and innovation, one looking at committee structures and participation, and the third on building bridges. On brands and innovation, the focus was the interaction between the two and how they impact each other. The important thing was to consider introducing that topic into our future strategic plans and developing or financing studies that ascertain the interaction between brands and innovation.

International Trademark Association CEO Etienne Sanz de Acedo opens the 2015 annual meeting with an update on future goals (May 3 2015)

Usually, IP offices need to convince law firms about accession to Madrid – but we did not need to do this. We are aware that when accession is first announced, lawyers are often negative about the prospect. However, in Cambodia it was completely different. Law firms welcomed the Madrid Protocol – so much so, in fact, that a host of firms wrote a letter to the government in support of accession.

Sim Sokheng, director of the IP Department at the Cambodian Ministry of Commerce, tells World Trademark Review of the positive reception that the Madrid Protocol has received among the country’s legal community (May 5 2015)

If a lawyer comes forward as a member of the collective, our first move will not be to threaten a suspension – we will talk with them about the issues and questions they have and explain it from our perspective. If they leave that meeting and are still against the Madrid Protocol and the accession of OAPI to it, then we must take measures, because there cannot be a law firm assisting with international trademark applications for clients who have an employee who fundamentally disagrees with the international trademark system; that is a conflict of interest. We will give that law firm two choices: they dismiss the employee who disagrees with the Madrid Protocol or we remove the law firm from the list of accredited firms when the filer of an international trademarks needs a local law firm. We will also refuse marks that have that law firm listed on the application. We believe the choice is an easy one.

Maurice Batanga, director of legal affairs and cooperation at the Organisation Africaine de la Propriété Intellectuelle, confirms its stance on the Collectif des Conseils en propriété industrielle, a collective of IP counsel who oppose accession to the Madrid Protocol

We hereby demand that ICANN refrain from taking any further action in the future to impede Vox Populi’s ability to operate the new TLD ‘.sucks’ registry in accordance with its contractual rights and obligations. To the extent that ICANN, the ICANN IPC or any other ICANN constituencies engage in any further wrongful activities designed to injure Vox Populi, or prevent the operation of the registry, the company will take any and all actions necessary to protect its rights.

In a letter to the Internet Corporation for Assigned Names and Numbers (ICANN), Fish & Richardson’s David Hosp hits back at allegations that Vox Populi has engaged in “illicit” activities and that its practices are “predatory, exploitive and coercive” (May 11 2015)

I for one do not intend to be muzzled. It’s particularly troubling that Vox Populi has threatened to go after ICANN’s “constituent bodies (or any directly responsible member thereof)”. To my knowledge, it is unprecedented for an ICANN stakeholder to threaten to sue ICANN stakeholder groups – much less individual stakeholders acting within the multi-stakeholder model. In my opinion, this seems intended to have a chilling effect on speech within the ICANN community and particularly to intimidate individual volunteers – the lifeblood of the multi-stakeholder community, without which ICANN could not even exist.

Gregory S Shatan, partner at Abelman Frayne & Schwab and president of ICANN’s Intellectual Property Constituency, responds to the legal threat from Vox Populi (May 13 2015)

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