Inside Scoop of the AIPPI World Congress – LEGO Figurines Trademarked – Important Change of the Canadian Copyright Law – IP Fridays – Episode 32

Laurent Thibon, Sarah Matheson, and  Luiz Henrique O. do Amaral

Laurent Thibon, Sarah Matheson, and Luiz Henrique O. do Amaral

Today we will get the full inside scoop of the upcoming AIPPI World Congress by Laurent Thibon, Sarah Matheson, and Luiz Henrique O. do Amaral. LEGO sucessfully defended their Community Trademark for their LEGO figurines. And there is an important change of the Canadian Copyright Law.

 

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 32 – July 10, 2015

 

RC =   Rolf Claessen

KS =    Kenneth Suzan

LT =    Laurent Thibon

SM =   Sarah Matheson

LHA =            Luiz Henrique do Amaral

 

Hello.  I am Laurent Thibon.  I am a French and Europe patent attorney working at the Cabinet Beaumont firm in France and I am also Secretary General of AIPPI and you are listening to IP Fridays.

 

KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC:      Welcome to Episode 32 of IP Fridays.  We are just over one year old and we already have over 23,000 MP3 downloads of our episodes so thank you dear listener for tuning in and obviously recommending this show to your friends.  Thank you very much.

 

What’s coming up today?  We have the full inside scoop of this year’s upcoming AIPPI World Congress in Rio de Janeiro.  I had the chance to interview Secretary General Laurent Thibon, as well as Reporter General Sarah Matheson from Australia and Luiz Henrique do Amaral who is currently the Assistant Secretary General but also the Chairperson of the conference.  But before we jump into the full discussion about the AIPPI World Congress, Ken has discovered two really interesting pieces of information.  He will talk about an important decision with regard to Lego bricks and a really important change in Canadian Copyright Law.  So, Ken, what did you find out about the Lego bricks?

 

KS:      Rolf, Lego bricks have been around for ages, and you may remember owning them while growing up. Recently, the Danish toy giant’s Community Trademark for the three-dimensional shape consisting of yellow Lego male and female figures was under attack. Best Lock, a British competitor that manufactures similar figures, had contested the three-dimensional shape registration for the Lego figurines on the grounds that the shapes were part of a toy that is part of “interlocking building blocks for play purposes”.  Lego had registered this shape trademark in the year 2000.  The specific grounds for opposition included: (1) consisting exclusively of the shape which results from the nature of the goods themselves, and (2) consisting exclusively of the shape of goods necessary to obtain a specific technical result.  The General Court of the European Union disagreed and held in favor of Lego.  The Court ruled that the shape of the Lego figurines which includes their feet and legs containing holes, did not serve a “technical function”.  The Court’s ruling contains drawings of a Lego figurine’s full body complete with the smiley head.  As such, Lego’s 3-D shape registration for their figurines stands in full force and effect in the European Union.

 

This ruling comes at a time when Lego in the European Union had suffered a setback in 2010, when Lego competitor Mega Bloks, challenged a Lego trademark for a red brick building and won.  Other companies that have trademarked the shape of their products are Atlanta-based giant, Coca-Cola.  Their bottle has a unique three-dimensional shape that is protected by trademark law.

 

RC:      Thank you Ken.  As I have three little kids, I really must admit that I like the original.  So, Ken, you told us that the Canadian Copyright Law really changed.  Please tell us more.

 

KS:      Rolf, there’s a new law in place in Canada that will surely be music to the ears of many. The copyright term for sound recordings and performance rights in Canada has been extended from 50 years to 70 years.  With this change, Canada is now in line with international standards.  This modification is part of Bill C-59 which contains several amendments to the Trade-Marks Act, the Copyright Act, the Patent Act and the Industrial Designs Act in Canada.

 

Extending the copyright term to 70 years will prevent many more songs from entering into the public domain.  This is of particular importance for those songs recorded in the 1960s which could have fallen into the public domain in Canada.  For example, songs from artists such as Leonard Cohen, Neil Young, Gordon Lightfoot, Joni Mitchell, and Anne Murray.  Through this change in the law, copyright owners will be able to receive and benefit from copyright royalties well into the future.

 

The president of Music Canada, in a statement posted to Music Canada’s Website states, “By proposing to extend the term of copyright in recorded music, Prime Minister Harper and the Government of Canada have demonstrated a real understanding of music’s importance to the Canadian economy.  Thank you.  We look forward to seeing the full details when the Budget Implementation Act is tabled.”

 

It is important to note that the extension of the copyright term to 70 years only applies to sound recordings.  It therefore affects performers, singers, musicians, and record companies.  It does not apply to other copyrighted works such as books and paintings.  In those types of works in Canada, the copyright covers the life of the author, plus 50 years following the death of the author.

 

RC:      I would say that this is really an important step in harmonizing the intellectual property laws worldwide so thank you Ken for discovering that.

 

Let’s jump into the full inside scoop of the World Congress of AIPPI.  I am very happy to be joined by three distinguished guests in our interview today.  We are advertising the AIPPI Congress later this year and I am joined by Laurent Thibon who is currently serving as Secretary General and is also a managing partner of the patent firm Cabinet Beaumont in France.  I am also joined by Sarah Matheson who is currently serving as Reporter General for AIPPI and is also a partner with Allens, a full service firm in Australia, which is globally aligned with Linklaters, and she is in the IP group of that firm.  I am also joined by Luiz Henrique do Amaral who is currently serving as Assistant to the Secretary General and is also chair of the organizing committee of the Rio Congress.  He is also the managing partner of Dannemann Siemsen in Brazil in Rio.  Thank you for being on the show.

 

LT:      Thank you Rolf and I am very delighted to be with you today on this show.  You are very welcome for your interview.

 

SM:     Thank you very much for having me Rolf.

 

LHA:  Thank you very much for having me, it’s a great pleasure.

 

RC:      Laurent, can you tell our listeners more about what AIPPI is about?

 

LT:      Yes, I will try.  AIPPI is quite an old organization of nearly 120 years and this organization is dealing with all fields of IP, not only patents, but also the other fields like trademark design and copyright and aims at promoting the protection of intellectual property and also works to harmonize the different legal systems and law all around the world.  AIPPI is an organization which is closely linked to organizations like WIPO, the EPO and others.  The AIPPI is composed of national groups which means that national associations which are joined into the international organization IPPI.  We have currently 64 national groups and 2 regional groups.  All of these groups work together to establish harmonization in IP law.

 

RC:      Okay.  That is really interesting for our listeners because they are a complete mix of trademark professionals, copyright professionals, patent professionals, in-house and private practitioners, everything basically.  I heard that you will get new stuff and in particular a new executive director.  Tell us more.

 

LT:      Oh yes.  Thank you.  This is very new because it was announced only last week.  John Bochnovic who is a Canadian IP practitioner, will join AIPPI starting September 1st of this year in our Zurich office to complement this office and to lead this office.  For AIPPI, having an executive director is a very important step and we are very much looking for that in order to increase the visibility of the organization and also as a service to our members.

 

RC:      So he will be permanently based in Switzerland?

 

LT:      Yes, exactly.

 

RC:      That is a big step.  It is very good.  We wanted to talk about the annual meeting of AIPPI in Brazil this year.  Tell our listeners why it would be interesting to join the meeting in Brazil, in Rio.

 

LT:      Well, Rio is a very important location when it comes to IP.  Brazil is a country which is really growing in the IP field and we will have more than 1,200 to 1,500 participants.  At the end of last week we already had more than 1,200 registrations for Rio which is very a good level for this annual AIPPI Congress.  Rio is a location which is also convenient to be reached by most of the parts of the world. North America mainly, but also Europe and people from Asia can reach easily Rio.  In the program of this Congress, which will have a duration of three days, you will have not only the usual work of AIPPI national groups which concerns drafting resolutions about the working questions that we are working on but also 16 workshops in the different fields of IP for not only patent as already told earlier in this interview but we will have a specific pharma day, we will have trademark issue and design and copyright issues also.  This for me would be one of the reasons to join in Rio.  The other one is to meet all your colleagues from all the other countries because you will be able to meet many, many professionals and to network and exchange with them for that.

 

RC:      Right, that’s exactly the reason why I attended the AIPPI meeting in the past.  Sarah, I’m sure some of the attendees of this year’s AIPPI Congress in Rio de Janeiro will be there for the Copacabana and the Sugar Loaf Mountain but in fact many should be interested in the great panel sessions that you have.  Let our listeners know more about the topics.

 

SM:     Rolf, those are two excellent reasons of course to attend Rio, but another really good reason to attend the AIPPI Congress in Rio this year is the excellent educational and professional development program.  At the Congress, we will be offering 15 panel sessions.  There will be expert moderators and speakers over three days of the Congress and we have, as we usually do, gone to some care to try to make sure that we have a really wide array of topical issues in IP law and a range of panel sessions from invention remuneration post-grant oppositions, non-traditional trademarks, collective marks and geographical indications, protection for green technology, ISP liability, protection for plant varieties.  So there is an incredibly wide selection of topics and hopefully something that will interest everybody.  One of the sessions that I am really excited about this year is a session dedicated to mediation.  We recognize that various forms of alternative dispute resolution are really important in the tool kit for resolving IP disputes and mediation is a really important mode of alternative dispute resolution in Brazil, as well as in many other countries, of course.  So we are going to have a session that will be dedicated to mediation techniques and really look at mediation strategy and how it can be used effectively to resolve IP disputes.  There will also be consideration of the use of alternative dispute resolution in the context of disputes concerning standards and essential patents and brand.  We are going to have a double session focusing on brand.  We are going to be looking at injunctions and safe harbors, brand determination and the use of alternative dispute resolution in connection with disputes concerning standard essential patterns and brand licenses.  One of the other strings of our panel sessions will later return about very popular pharma day.  This has really become a fixture in the Congress Program at AIPPI and we offer four panel sessions that run over an entire day.  This year we will be focusing on a number of topical issues in the pharmaceutical industry covering personalized medicine, technology transfer, policy-based examination of patentability and looking at some of the very specific issues that arise in relation to trademark selection and enforcement in connection with pharmaceuticals.

 

RC:      Can I ask you a question about the pharma day or the pharma session?  I am working with one pharma company and I think the farmer companies are really concerned with the situation in India currently.  Will you address the kinds of questions that arise from the current developments in India?  The enforcement of pharma patents in India?

 

SM:     Two of our panel sessions in pharma day will look at related issues.  We have, not surprisingly, had some panel sessions in the past that focused on exactly the type of difficultly that pharma companies are facing in India and one of the sessions this year will be looking at the concept of technology transfer and trying to balance public versus private interests and that will bring in a whole lot of issues concerning compulsory licenses and looking at the Brazilian system, which is aiming to facilitate technology transfer on the private sector to local laboratories and looking at how manufactured products locally for distribution can benefit the public health system.  One of the interesting things will be to contrast that with a traditional compulsory license model which the private sector sells the final product but doesn’t license or transfer the technology behind it.  That session will look at the Brazilian program and contrast that with more traditional compulsory licensing regimes such as we have seen in India and obviously the compulsory licensing regime that we see in India is tied to some of the issues that pharmaceutical companies face when trying to enforce their patent in India because this balance between public and private interests really plays out in the context of patentability and patent enforcement in countries like India where there are legitimate concerns about properly serving the public health interests.

 

In addition to our panel sessions, which take the format of a moderator and some speakers and hopefully some interesting debate about the relevant topics, we are also going to have a dedicated session that will be run by AIPPI’s standing committee on the Unitary Patent and the Unified Patent Court.  As you can imagine, this standing committee has been extremely busy in recent times.  That committee has been working on formulating recommendations in relation to a number of key issues concerning this UP and the UPC and we are going to hold a dedicated meeting during the Rio Congress to discuss some of the latest developments and that’s likely to include such things as various fee proposals, rules of procedures, transitional provisions and issues of overlapping jurisdiction.  While most of our committees will be holding their own meetings during the time of the Congress, we really hope to open this meeting to all Congress participants who are interested in attending because that committee is really looking for the broad input of AIPPI members to help it refine it’s recommendations in relation to a number of current topics and to help shape it’s future areas of focus.  As you are probably aware, the progress towards the Unitary Patent and Unified Patent Court is really now proceeding a pace so it is very important that AIPPI’s standing committee that monitors developments in this regard is contributing to the debate and making sure that AIPPI’s voice is heard in relation to a range of issues that still have yet to be resolved.

 

RC:      Sarah, another important part of the work of AIPPI are the working questions.  You are reviewing topics in different jurisdictions and looking to improve and harmonize the laws in the important areas of law.  So what are the working questions to be discussed in Rio?

 

SM:     Rolf, we have four working questions that will be the subject of no doubt vigorous debate and hopefully will allow us to move towards resolutions.  The working questions for the Rio Congress relate to four areas.  The first is inventorship of multinational inventions.  The second is a trademark question looking at __________________.  There is also a copyright question which will be focusing on exceptions and limitations to copyright protection for libraries, archives and educational and research institutions.  Finally, the very topical issue of trade secrets.  So, in light of the current discussions concerning the European Directive, this seemed very timely to look at a number of key issues concerning trade secrets.  The focus there will be looking at the overlap with restraint of trade and aspects of enforcement.  If you would like me to say anything more about the content of those working questions, I am very happy to do so.

 

RC:      Yes, especially the last one is interesting for me personally because Europe is now harmonizing the way they are treating trade secrets and I think so far they have been treated very differently in different jurisdictions just because the systems of law are so different.  Do you see if there is a chance to harmonize this on a worldwide level like the way trade secrets are dealt with or can the European approach be taken as a template for discussions on a worldwide level?

 

SM:     That’s a really interesting question.  It is one of the constant challenges of the work that AIPPI does in trying to improve laws and where harmonization would improve the system for users.  That’s what we aim to do.  This particular working question is really going to focus on not so much the need to protect trade secrets because we think that most countries today would not really question the need to protect trade secretes or confidential information but what we see is that there is great diversity in how the relevant law is applied and implemented.  So this working question is really going to sort of focus on several areas.  As I said, one of them is the exchange of overlap between trade secret protection and laws prohibiting restraint of trade because there doesn’t really seem to be a great deal of guidance on the fine line that divides trade secrets that can be protected versus the employee’s ability to use their own skill and knowledge so that is one of the areas of focus.  The other one is how to ensure that confidentiality is actually maintained in the course of court proceedings that are brought expressly to protect the confidential information.  In some countries there are systematic procedural measures and in others it is very much an ad hoc process so that is one area that we see could really lend itself to greater harmonization.  Another area is the assessment of damages.  So notwithstanding that the trade secret holder may be looking to an injunction for the primary remedy where there is a valuable trade secret that is being diluted by public disclosure then there will be some monetary damage that is being suffered and trying to put a value on that damage and have some uniform principles about how to assess damages and when damages should be payable is another area where there is a lot of uncertainty.

 

RC:      Yes, since the calculation of damages is so different in the different countries of the world currently.

 

SM:     Absolutely, and of course you have the complications that arise by reference to different jurisdictions having different procedural rules so in civil systems where there is no system of discovery, how do you actually obtain access to the documentation that will allow you to make that damages calculation and I can say coming from a common law country that even where you have extensive discovery, it’s still not that easy.

 

RC:      So, Luis, now that we have heard some general information from Laurent and Sarah, can you tell our listeners what they can expect to see in Rio and what will they be able to experience there.

 

LHA:   Besides all the programs and the activities, this Congress will be a good experience for participants to visit Brazil, visit Rio, and get a little flavor of what is happening in the country in terms of economic growth and also experience the Brazilian culture.  They will be able to participate in several different social programs to the culture of Brazil.  On the first night we will have the opening ceremony and after the opening ceremony we will have the reception and dinner with Brazilian food and music.  The second evening will be the cultural evening at the Copacabana Palace where we will have a show and carnival both like we normally have in February in Brazil.  Then, organized by the Brazilian law firms, on Tuesday we will have a very interesting reception. The idea is for us to have drinks and welcome drinks on the float and then we will move up to the booth where we will have dinner with Brazilian music.  For the last night, we will have our gala dinner at the Jockey Club which is a very prestigious club in Rio where we will also have a horse race for AIPPI where I hope the participants will be able to bet on horses in the IP area like copyrights, trademarks, patents, and so on.  So we hope to expose all the participants to a lot of fun experiences and enjoy the networking with their colleagues in a very nice atmosphere.

 

RC:      That sounds really cool.  I bet people will love that program.  Luis, tell me, do you also have plans for organized day trips or other tours?

 

LHA:   Oh yes.  We will have pre-Congress and post-Congress tours and these tours may vary from tours closer to Rio for one to two hours where they can visit the islands, they can visit the peninsulas, lots of ocean views and beach or go to the mountains and visit our imperial city.  Brazil was a monochary and so it was a very interesting city built for the emperor of Brazil.  Also, if people want to go a little further, there will be tours going to the Iguazu Falls which is the largest falls in the world.  It is very massive and impressive.  Or they could go to the swamps or the coast.  There are lots of different things.  As you know, Brazil is the size of a continent and it is very different geographic areas to visit.  The programs can be selected online and you can have a preview of what you will experience.  We will have a series of tours in Rio to visit Rio to visit downtown Rio, the historic part of the city, but also to visit the modern hotels, the beaches, so it is a very interesting program for a company person as well.

 

RC:      Wow, that sounds cool.  I think I could just skip the program and just do the tours.

 

LHA:   Well this is just for the company persons.

 

RC:      I should be a company person then.

 

LHA:   You see, because the hotel, the convention center, they are all together in front of the ocean, in front of the best beach in Rio so if people bring their families, they will be able to be just in front of the ocean with a lot of outdoor activities.

 

RC:      That sounds really cool.  Thank you so much.  Where can our listeners register for the event and find out more about the event?

 

LHA:   All of the information and the registration process take place online so they will have to visit www.aippi.org and once you open up the site all of the information will be there.

 

RC:      We will have the link in the show notes so dear listeners you can just go to the show notes and register for the AIPPI meeting in Rio.  Thanks for all three of you for being on the show.

 

LT:      Thank you very much.

 

SM:     Thank you.  It was nice to meet you.

 

LHA:   That you very much and I will see you in Rio.

KS:      That’s it for this episode.  If you liked what you heard, please show us your love by visiting http://ipfridays.com/love and tweet a link to this show.  We would be so grateful if you would do that.  It would help us out to get the word out.  Also, please subscribe to our podcast at ipfridays.com or on iTunes or Stitcher.com.  If you have a question or want to be featured in one of the upcoming episodes, please send us your feedback at http://ipfridays.com/feedback.  Also, please leave us a review on iTunes.  You can go to http://ipfridays.com/itunes and it will take you right to the correct page on iTunes.  If you want to get mentioned on this podcast or even have comments within the next episode, please leave us your voicemail at http://ipfridays.com/voicemail .

You have been listening to an episode of IP Fridays.  The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms.  None of the content should be considered legal advice.  The IP Fridays podcast should not be construed as legal advice or legal opinion on any specific facts or circumstances.  The contents of this podcast are intended for general informational purposes only and you are urged to consult your own lawyer on any specific legal questions.  As always, consult a lawyer or patent or trademark attorney.

 

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