Lenz & Staehelin
How has your experience at the Swiss IP Institute helped shape your current IP practice?
It has certainly sharpened my understanding of the function of the law in general and of IP law in particular – in both the business world and wider society. Working on legislative projects was a very good experience, especially in a country such as Switzerland, which has a long tradition of comparative legal analysis within national legislative projects. Small countries act like good IP actors; they analyse what solutions are available and try to do better. This offers the possibility of learning and absorbing the legal framework and the legal realities (ie, the jurisprudence of the most important countries in the IP world). Representing my country at WIPO was also a good starting point for my IP practice.
Over the course of your career, what changes have you seen in IP awareness and how can practitioners help generate greater awareness in the wider community?
There has been a steady rise in IP awareness. The big picture, as I see it, is this: the wider community, as you call it, has understood that IP rights and intangible assets are not static institutions. They are constantly developing. In the early days of IP rights, the primary concern was to establish rights to immaterial, empirically verifiable values, drivers of life such as creations, identifiers and innovations. This was followed by an ongoing debate about the extension (or not) and the scope of IP rights. There will always be a struggle between exclusivity and competition or free access; this is inherent to a legal system driven by property rights. The past 20 years then saw a facilitated legal marketability of IP rights, which of course is a key factor for their transactional relevance. This logically led to questions of financial evaluation becoming more important. Today, statistical and empirical tools and studies are available thanks to the work of some governmental agencies. These allow practitioners not only to raise awareness of a specific case among their clients but also to include the respective findings of the importance of intellectual property for our economies in their general communications. Every child in Switzerland and many other countries learns very early that cheating in school is a bad thing – whether that involves copying your neighbours’ work and math solutions or taking text from the Internet for your homework without proper citation. That is the first step for generating awareness.
What does leadership in the field of IP law look like to you?
There is no miracle about that; these rules are of a generic nature. In intellectual property, a top-notch academic education is crucial. Then, at the beginning of one’s career, it is extremely important to learn from experienced colleagues and mentors. Being open minded, taking an interest in the real world outside the office, staying sincerely interested in interdisciplinary matters, especially in economics, and working hard is important. Leadership also means being creative, sometimes – to use that well-worn phrase – “thinking outside the box” is certainly helpful. With regard to visibility and being accepted as a serious member of the IP community – you will not like that – it is more important to publish traditional papers and articles than generic marketing material.
Your expertise ranges from intellectual property, competition and commercial to sports, technology and media law. How do you remain at the forefront of industry developments with such a broad practice?
Interest and work. To be serious, it is a privilege to work on IP issues in different industries. I am convinced that, overall, this brings intellectual and experience-based added value for all areas of work.
Your work on behalf of the Federal Office for Defence Procurement Armasuisse exemplifies the firm’s success in complex prosecution matters. What are the key characteristics that clients look for in a hard-hitting IP litigator?
My answer here is extremely boring; today it is no longer enough simply to know the law. Many people can read laws, analyse legal literature and case law. This is not a differentiating factor; such skills and knowledge are only the starting point for advising and accompanying a client. I would even question whether clients are looking for a “hard-hitting” IP litigator. This is more of a marketing phrase. What clients are looking for are advisers and litigators who help them to develop a strategy from the starting point to the end that allows them to achieve their commercial goals without collateral damage. These qualities require more than just knowing the legal situation and more in the way of strategic and negotiating skills. Therefore, I prefer the term ‘smart hits’ to ‘hard hits’.
What are your top three tips for ensuring long-lasting relationships with international clients?
Good work. Looking ahead for the client. Good work.
What are the main challenges facing brand owners when it comes to enforcing their rights in the European Union?
This begins with the creation of a brand, although it has become more and more difficult – and sometimes even painful - to create a trademark that you can use in many if not all jurisdictions.
As to the European Union, my feeling is that enforcement of non-traditional trademarks has become an even bigger challenge. It is no wonder that design rights and copyright for the shape of consumer products have become a major topic in EU jurisprudence. Raising the barrier for the enforcement of non-traditional trademarks has triggered initiatives to obtain protection for these products based on design rights and copyright.
Are there any changes that you would like to see made to the protection regime for geographical indications (GIs) and appellations of origin – either in Europe or internationally?
Over the past couple of years, we have seen the EU protection regime for GIs in action, especially with regard to the essential legal instrument of evocation as one of the possibilities to infringe a GI (ie, a protected designation of origin (PDO)). The European Court of Justice has developed what I call a six-step test. Evocation presupposes: triggering directly; confusion in the average European consumer’s mind; the image of the product protected as a PDO; through (alternatively) partial incorporation of the name or phonetical or visual similarity; or any/sufficiently clear and direct conceptual proximity. This is complex but not rocket science. Practitioners are used to similar concepts in trademark law and in unfair competition law.
We will see the Geneva Act of the Lisbon Agreement on appellations of origin and GIs becoming operational soon. The story of this agreement is well known. The negotiations within the World Trade Organisation framework on the extension of the level of protection and the creation of a multilateral register for PDOs and GIs under the Agreement on Trade-Related Aspects of Intellectual Property Rights made no progress. The countries interested in protecting GIs therefore further developed the Lisbon Agreement. The so-called Geneva Act – which was negotiated until 2015 and came into force on 26 February 2020 – now functions as an international treaty, which is accessible not only to PDOs but to all GIs and offers new perspectives for interested parties. The European Union has already ratified it, while the Swiss government has just proposed that Parliament ratify the Geneva Act and amend the Trademark Act in order to implement it.
The Geneva Act is not really a love story for many countries outside Europe – and for legitimate reasons, since their approach to GI has traditionally been very different. Many of these countries are therefore unlikely to ratify the act in the near future. However, for the countries that do ratify, and for the industries and practitioners concerned, it will be an important new legal instrument.
How do you expect recent changes in EU court proceedings to affect future litigation work?
I do not expect relevant material changes.
What long-lasting effects do you expect recent global events to have on IP firms and practices?
This is obviously a very difficult question. I have two possible answers. First, general economic development – which is equally difficult for experts to predict – will also affect the legal market and the IP sector. This could have an impact on willingness to invest in intellectual property or to really enforce IP rights. However, it could also mean that intellectual property will be used more in cooperation platforms (eg, technology pools). IP licensing as a business model could experience an unusual upswing if it is possible to keep licensing costs lower than development or production costs. This could well be possible if economic development remains uncertain for a longer period. Second, looking beyond the economic crisis shows that although these crises always affect the consumption and production side, they do not usually affect innovation or marketing. As the saying goes, “necessity is the mother of invention”. In this respect I am not pessimistic. But who knows? What the world is actually experiencing right now is beyond expectation.
Jürg Simon is renowned as a leading expert in IP and competition law, advisory, litigation and transactional matters, with a specific focus on trademarks, designs, licensing, selective distribution systems, IT, media and geographical indications. He is also involved in significant patent litigation in the food industry. Prof Dr Simon was a director at the Swiss IP Institute and is a professor of intellectual property at the University of St Gallen. He regularly authors publications on IP and competition topics