What are your top recommendations for rights holders looking to use the interplay between different rights (eg, trademarks and design rights) to protect their brands?
Rights holders should consider protection in the form of copyright, which is increasingly fostered by the courts: foremost by the European Court of Justice (ECJ) and by some national courts, in particular in Germany, but recently also the US Supreme Court. Thus, more designs are protected by copyright than before. It follows that both ownership of copyright in view of standing to sue as well as independent creation as a defence against third parties’ claims must be secured for all new designs. For effective enforcement, however, one should not only rely on copyrights, but continue to register all new designs before their first publication. Another top recommendation for brand owners is to regularly secure evidence of both genuine use and the degree of notoriety of their brands, in view of both trademark law and possible claims based on the law against unfair competition.
As we start to emerge from the pandemic, what covid-prompted changes and restrictions are you looking forward to saying goodbye to, and which business developments of the last two years are here to stay?
In general, setting aside the pandemic’s human and other miseries and related restrictions, the pandemic has proven to be a promoter for business. We have learned how to do ‘smart-work’, as they say in Italy, instead of ‘home office’. And we have discovered that time commuting can be significantly reduced by working from outside the office. Both can be achieved without reducing profitability for the firm. In order to strengthen both a feeling of community and quality of work products, however, three to four working days should be in person in the office. At MLL, prior to the pandemic, we allowed our employees to work up to two days at home, and we continue doing so. Regarding virtual court hearings, experiences are mixed and evidently it very much depends on the specific circumstances. In Switzerland, where court proceedings take place in writing, we usually consider virtual court hearings to be acceptable.
What are the biggest challenges facing clients when it comes to protecting their brands online and how can these be overcome?
The biggest challenge is enforcement against intermediaries. This can be overcome by vigorously enforcing IP rights before the courts and by not giving up until the intermediaries either fully respect these rights or until they are considered by the courts to be direct infringers, with all the sanctions available under the existing laws. It remains to be seen if other, nongovernmental initiatives will prove effective.
If you could make one change to the way that design rights are protected in Europe, what would it be and do you expect it to happen?
Considering that there is no defence of independent creation against registered design rights, the possibility of reliably, swiftly and cost effectively searching for prior design registrations is crucial for those manufacturing and/or marketing new products. Although some private entities offer design searches, it is difficult to understand why IP offices still do not provide this service. The longer they wait to collect and structure existing data, the more tedious it will be to finally offer a service that is a must for the authorities.
What emerging trends/technologies are having the biggest impact on your clients’ IP strategies?
Aside from big data, AI, blockchain technology and NFTs, we do not yet see new trends in prosecution. Regarding enforcement of IP rights, the focus is both on finding courts that are competent and fast and also on ADR mechanisms, in particular IP arbitration. We believe that the UPC will be a success and will have a strong impact on our clients’ patent litigation strategies, including deciding to opt out certain patents. In trademark and other non-technical areas of IP law, we do not see similar developments.
What are the most common mistakes that brand owners make in cross-border litigation – and how can they avoid them?
Despite, or actually because of the principle of territoriality and the major procedural, as well as substantive differences between legal systems, it is of the utmost importance to have an accurate understanding of at least the basics of important legal systems. IP rights owners - and competitors - can consequently develop the most efficient cross-border litigation strategy. This bird’s-eye view can best be offered not by very small nor global law firms, but by strong teams of lawyers who are internationally well connected and are close to and understand their clients, while sharing their culture.
Head of Intellectual Property
Head of intellectual property Michael Ritscher is recognised as one of the most experienced and esteemed IP litigators and arbitrators in Switzerland and beyond. He is often at the forefront of precedent-setting cases and has an extensive practice, notably in the fields of life sciences, luxury goods and retail. Mr Ritscher is a reference for companies seeking his support on cross-border contentious affairs involving Swiss, EU and international law.