Day
During my six year term I have supported four presidents and provided continuity in steering the organisation László Bérczes
Farewell to the Treasurer Departing ECTA Treasurer, László Bérczes, reflects on his time in ECTA management, his future and the future of the association How would you reflect on your time as ECTA’s treasurer? What were your best accomplishments? I accepted the invitation of ECTA’s Past President F. Peter Müller for the Treasurer position in 2012. During my six year term, I have supported four presidents and provided continuity in steering the organisation. I am a problem solver, a highly operational person. I manage my own legal practice this way and truly believe, that any size and type of organisation will only function well financially if a very few key business principles are kept: income should be generated in
order to be able to finance operations, projects and work force, at the same time costs should be closely monitored and kept at a reasonable level. The ratio of these two should be managed in order to generate the financial background of the operation. I planned to apply these same principles in my treasurer role when I took over the position from my predecessor. Then, having an insight into ECTA’s operation from a management point of view, I realised that finance management in a continued on page 08
ECTA’s new Treasurer
United in Diversity
View from the Chair
Geographical Indications
Hear from Jordi Güell as he takes up
Carina Gommers considers the EU’s
Internet Committee Chair Delia Belciu
Find out about Paola Ruggiero’s session
the mantle of ECTA Treasurer
motto ahead of her session on the
on the effects of GDPR
on geographical indications later today
latest case law
The opinons expressed within this publication are those of the authors and not ECTA
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View from the Chair
ECTA’s new Treasurer
ECTA Internet Committee Chair Delia Belciu gives a brief overview on the effects of GDPR and the Internet Committee’s involvement in shaping the future.
With the six-year tenure of his predecessor, László Bérczes, coming to an end, ECTA’s new Treasurer, Jordi Güell, delves deep into his new role
Now that the General Data Protection Regulation (GDPR) has been in effect for some time, what has been the knock-on effect for EU privacy and/or intellectual property? So far, in my view, the accessibility to WHOIS data was the most affected, however, other unexpected effects might appear in the future, mainly regarding the accessibility to data which, in the past, was publicly available. Has GDPR had a massive impact on WHOIS? If so, how has that affected the URS and UDRP? Yes, GDPR had a massive impact on WHOIS. For example, a WHOIS search may no longer reveal contact information for domain name registrants. The UDRP and URS were affected also, but, in principle, brand owners’ ability to file a UDRP / URS complaint is not excluded by the GDPR. If a UDRP / URS complaint contains all available registrant information—for example, where the respondent identified in the complaint matches the publicly identified registrant in the registrar’s WHOIS database such as ‘Name Redacted’—then such a complaint is accepted in principle by the service providers for processing and compliance review. What work has ECTA’s Internet Committee done with ICANN in the past year? ECTA’s Internet Committee is a member of the IPC constituency of ICANN and has followed closely all the debates within such, especially on WHOIS and GDPR.
Delia Belciu Chair of the Internet Committee ECTA
As new Treasurer, what have you learnt from your predecessor and how do you plan to use this knowledge to excel in your role?
How do you plan to leverage your experience as an attorney and at ECTA in your new role within the association?
ECTA is currently a financially sound and stable association. I am here to work together with the excellent ECTA team to continue in the same line as in the past years and, if possible, to improve it. There are always aspects that can be improved.
ECTA is an association I know very well. My first contact with ECTA was in 1996, when I attended my first ECTA Annual Conference in Alicante. I had just started working in IP and it was my first IP congress ever.
My predecessor, László Bérczes, has done a great job and has been extremely helpful in the transition. From the moment I was elected Treasurer General of the Association, he explained to me in detail the challenges of the job and what is expected from the Treasurer. He recently invited me to a meeting at the ECTA headquarters in Brussels, where I had the opportunity to get to know firsthand the exact role of all the ECTA staff. They are one of the reasons why the association works so well. ECTA is really a family and this what makes it so unique. What are your key goals for your time as Treasurer? ECTA has a six-year Strategic Plan. The five pillars of the current plan are: (i) To develop membership benefits (ii) To broaden ECTA’s expertise (iii) To reinforce external partnerships (iv) To strengthen the internal organisation (v) To broaden the financial basis. My key goal as a Treasurer is to maximise resources and minimise risks. ECTA is currently working hard to increase the number of members from industry and this will bring more revenue. As a Treasurer, I will keep a close eye on expenses, but always give the best value for what our members pay. We must make sure the next Annual Meetings in Copenhagen (2020) and Vienna (2021), the Autumn Meetings and workshops are all well attended. We are currently preparing a December 2019 workshop in Luxembourg with high profile speakers from the Court of Justice of the EU. I have no doubt the next few events will be great successes.
Since then, I have had a long-standing involvement with the Association, attending Annual Conferences, being a speaker on several occasions, writing articles for the ECTA Gazette, being a member of the AntiCounterfeiting Committee and, the last six years, as a Council Member. In my more than 20 years of professional experience and involvement with ECTA, I have learnt the do and do not. I am always motivated by challenges, and being the Treasurer of ECTA is certainly one. My nomination as Treasurer has coincided with another big challenge: starting my own firm, GUELL IP. For my firm I have had to negotiate with suppliers and talk to banks and tax authorities, while giving clients the best service. It has worked out well and now I plan to do the same at ECTA. I have an immense amount of energy to dedicate to the association. More importantly, I have the passion, because I love ECTA.
Jordi Güell Treasurer ECTA
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The ‘relentless march of Eastern trade mark applications’ China will overtake the US in terms of EU trade mark numbers within two years, according EUIPO Executive Director Christian Archambeau. He highlighted that currently, China sits in the third highest spot for EU trade mark numbers and fourth for registered designs. He estimated another two years before China overtakes the US. Achambeau described the rise in trade mark applications out of Asia as the “relentless march of eastern applications”. Archambeau expressed the importance of adding Chinese trade marks to the EUIPO’s
TMview search tool, stating it would be important for transparency. He emphasised the need to work with Chinese authorities to make sure counterfeit and pirated goods do not make it into Europe via China’s Silk Road project. The Silk Road is part of China’s Belt and Road Initiative and aims to connect European and Eurasian trade with China via rail. A collaboration with Chinese authorities should mean illicit goods don’t make it on the train in the first place, he said.
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Seeking new horizons: an EU case law overview Carina Gommers considers the EU’s motto of being ‘united in diversity’ next to the harmonisation in its trade mark system
The EU case law overview is always one of the most interesting sessions during the ECTA Annual Conferences, in particular from a practitioners’ point of view. This year, the focus of the EU case law overview is tied in with the motto of the EU: ‘United in diversity’. This has been the motto of the EU since 2000. The EU’s website clarifies that this motto refers to how the EU was formed “to work for peace and prosperity, while at the same time being enriched by the continent’s many different cultures, traditions and languages”. Almost twenty years after adoption of this motto, it is still very much of the centre of what the EU stands for as it faces increased challenges currently.
of the EU trade mark in and of itself is charac- spoken within the EU, but also due to nationterised by both parts of the “unity and diver- al rights that can have an impact, the balance sity” principle. can shift to either upholding the unitary character or applying the exception, for instance The EU trade mark is the epitome of the ‘unity’ when there is no detriment to the functions part of the principle as far as EU trade mark of the trade mark. The principle also plays a law is concerned. Recital 3 of the Regulation role when examining genuine use within the of the EU Trade Mark (EUTM) indeed already EU, demonstrating acquired distinctiveness sets out the desirability to promote a harmo- or in establishing the scope of an injunction nious development of economic activities in enforcement proceedings. within the internal market, as well as to provide for instruments such as the EUTM that The EU case law overview session provides enables companies to scale up their activities an in-depth analysis of the recent interesting to reach the whole of the EU. Providing for jurisprudence in which this balancing act beone EUTM having unitary character is defi- tween unity and diversity has been demonnitely an efficient instrument for business strated. In this respect, a.o. the Companyline trading within the EU. Article 1.2 of the same (C-104/00), Chronopost (C-235/09), Halloumi The motto is not just a slogan but reflected in Regulation also emphasises the unitary char- (C-393/12 P), El Benna (C-147/14), Combit the laws adopted within the EU. Indeed, the acter of the EUTM, in providing that “it shall (C-223/15), Neuschwanstein (C-488/16), Kitsame ‘unity and diversity’ principle is shown have equal effect throughout the Union: it Kat (C-84/17) and the Queso Manchego (Cin the world of intellectual property rights shall not be registered, transferred or surren- 614/17) cases will be analysed and discussed. and in particular in the landscape of trade dered or be the subject of a decision revoking The prominent speakers of the session will marks within the EU. The EU strives for uni- the rights of the proprietor or declaring it in- provide practitioners with the necessary guidty, while at the same time taking the diversity valid, nor shall its use be prohibited, save in ance to be able to steadfastly walk the path of into account. This is first apparent in the fact respect of the whole Union”. the ‘unity and diversity’ principle when seekthat EU trade marks exist in parallel with naing new horizons in future cases. tional trade marks granted by the EU Member The ‘diversity’ part of the principle is howevStates or the Benelux Office for Intellectual er never far away and can be found in recitProperty. The two parallel systems work side al 4, as well as in the same Article 1.2 of the by side, while safeguarding that, in so far as Regulation. Recital 4 starts of by underlining the national and Benelux trade marks are the principle of the unitary character of the concerned, these are regulated by a suffi- EUTM but adds that exceptions to this uniciently harmonised set of rules. tary principle may apply when foreseen in the Regulation. Article 1.2 of the Regulation This level of harmonisation aims at ensuring encompasses the same exception. the ‘unity’ part of the principle as much as possible, whereas leaving room for the ‘diver- In practice, having to take into account both Carina Gommers sity’ part of the principle as well. the ‘unity’ part of the principle and the ‘diPartner at Hoyng Rokh Monegier and versity’ part thereof, has been shown to be a Secretary of the ECTA Anti-Counterfeiting Committee and ECTA Council Member Secondly, this is apparent from the set-up of balancing act if one looks at the EU case law. the EU trade mark regulation. The regulation Not only due to the multiplicity of languages 6
continued from front cover non-profit organisation is slightly different from a for profit business. Income can only be generated via limited channels, which are the subscription fees paid my members and conference registration fees. At the same time, funding needs to be provided for new projects that will either bring additional professional opportunities (such as workshops and roundtables with online broadcasting in various cities of Europe) or enable the organisation to keep pace with the technical developments in communication platforms, digital media and the online world of doing business (such as conference apps and the common working tool project). Hence, the challenge for the Treasurer is to ensure that funding can be provided for plan to project conversions, that daily operations are not endangered because of overspending, that member’s subscription fees are kept at acceptable levels and at the same time ECTA’s good practices of safety reserve generation is continued. Keeping in mind all the above, I recommended changes in how we calculate conference registration fees, reformed the way how conference budgets are monitored on a daily basis by the competent group responsible for the event organising.
After a few years I plan to come back and participate in forming ECTA’s future
During my term, the ECTA management has appointed a new professional conference organiser company in order to decrease the workload of ECTA staff and in order to take financial and professional advantages of the experience and good connections of a professional event organising company. All this of course could not have been realised without great teamwork of fine professionals in the management team and the support of the staff of the Secretariat in Brussels. I appreciate the opportunity and I hope I could contribute to ECTA’s growth as a professional organisation. There are still plenty of development opportunities in the area of how finances should be managed in ECTA and I wish perseverance and great success in exploring these for my successor.
What has most surprised you about being ECTA’s Treasurer? I have not expected that much hands on work that this role required. It was very interesting to learn how different the tax and financial practices could be in the different EU Member States, which I have experienced through the conference financial administration processes. For example we could not open a new bank account in a Member State despite several months of administrative work of several colleagues, while in another Member State one of the senior Council members could open a bank account within a couple of days with very little administrative support. In addition, in one Member State we had to invest a lot of additional work with the local tax advisor and were waiting for almost a year for the reimbursement of the VAT we had paid to local conference suppliers, while in another Member State the same process with the local tax authority took place in a very swift and fast way. I have to say that I am really proud that this latter Member State was my home country, when ECTA had its conference in Budapest two years ago.
Wonderous weather, friendly faces, and unnerving uncertainties ECTA president Sozos-Christos Theodoulou has thanked all attendees and committee members for making this year’s Annual Conference, the largest ever organised by the conference alone. In his welcome address yesterday (27 June), Theodoulou welcomed “friendly faces from all around the world” and thanked them for their “collaboration and support”. Referring to the good spell of weather in Edinburgh framing the 2019 ECTA Annual Conference this week, Eric Ramage of ECTA’s Local Organising Committee joked that Theodoulou had made an arrangement with the Athenian gods from last year’s event to bring Athens’ sunshine to Edinburgh.
It is also an unexpected but very useful experience, that while on a daily basis I am a legal service provider as a lawyer, but as ECTA treasurer I had the opportunity to sit on the other side and be the customer of several service providers, let it be accounting, IT or financial consultancy services or even law firms supporting ECTA’s activities.
This year’s conference theme ‘New Horizons through the Highland Haze’, was played on by Mladen Vukmir, ECTA Second Vice-President, in the first session of the day. He said: “It is a passion of mine to see what is coming.”
This experience allowed me to reflect on service quality and I will definitely benefit from it in my own practice.
The theme encompasses the uncertainty surrounding Brexit and changes in European trade mark and copyright laws.
What’s next for you within ECTA? In another life I would definitely be a full time finance professional as I like numbers, monitoring progress, analysing statistics and finding answers to financial challenges. But for now, I would certainly be there for my successor to pass on learning and best practices. Honestly, now I will take a break from effective voluntary work for a while and will participate in the forthcoming ECTA conferences as an IP professional, but after a few years I plan to come back and participate in forming ECTA’s future if there is a need for my contribution.
Many are surprised that the UK did not leave the EU on 29th March, instead delaying its exit further. But some speakers, including EUIPO Executive Director, Christian Archambeau, said this might not be a bad thing, although he warned that the chance of a hard Brexit has increased. Despite concerns, Archambeau said he hoped that the UK would to continue to be a valued partner for the EUIPO.
Session preview: New horizon in geographical indications protection Paola Ruggiero offers a preview on her session later today, which will cover the evolution of geographical indications protection
What is going on with geographical indications? This is the core of our ECTA session today. This session will have four amazing speakers. The first one is Francis Fay, Head of Unit B3, GI, in the EU Commission’s DG Agriculture and Rural Development.
We will look forward to seeing all the ECTA members keen on GIs there and our amazing speakers will be more than pleased to answer to all questions
He will tell us news such as consolidation of the new legislation on wine and spirits, international ongoing agreements, the joining of EU to the Lisbon Agreement. He will also update us on the outstanding business of DG Agri, such as rural and global developments, building of a strong partnership with the EUIPO and, last but not least, enforcement and internet challenges. We then pass to focus our attention on GIs in UK with Simon Crabbe, who is the Head of GIs team of the UK Government Department for Environment Food & Rural Affairs. He will give us a background on GIs in the UK and on what they are doing to establish their own schemes as (when and if) the UK leaves. 10
He will also give us examples of cutting edge techniques coming out of UK research and development and their potential uses and
Session name: New horizons of
limitations in GI protection.
protection - 6th Session: GIs
We will then continue with Dev Gangee, who is the Director of the Oxford Intellectual Property Research Centre and Associate Professor at the Faculty of Law, University of Oxford.
Time: 11.15 - 13.00
He will start talking about the national implementation of the EU GI regime in UK, focusing on what is the work the UK will need to do to amend its existing legislation/ regulatory systems to create a standalone GI regime. He will also show us the wide range of divergences at present within the EU, in light of the varied implementation of EU GI law that is documented in EUIPO report. He will then conclude focusing on one particular issue within the overarching implementation question: evocation! He will present some of the most interesting cases.
Panellists: Moderator: Paola Ruggiero, Chair of the ECTA GI Committee, Bird & Bird, IT Francis Fay, Head of Unit B3, GI, DG AGRI, European Commission, BE Prof. Dev Gangjee, Member of the ECTA GI Committee, Oxford University, UK Dr. Simon Crabbe, Head of GIs, DEFRA, UK Fernando Cano Treviño, Chief Representative Officer for Europe Tequila Regulatory Council (CRT), CH
We will then close our session with Mr. Fernando Cano, the Chief European Representative Officer of Consejo Regulador del Tequila (CRT). He is responsible for the international protection of the Appellation of Origin Tequila and will explain to us how they are enforcing Tequila not only in Europe but all around the world. He will also explain us Tequila’s point of view about Brexit. We will look forward to seeing all the ECTA members keen on GIs there and our amazing speakers will be more than pleased to answer to all questions.
Paola Ruggiero Chair of the ECTA Geographical Indications Committee ECTA
COUNTRY HEADING
2019 GLOBAL IP DIRECTORY
Photos from ECTA’s Welcome Speech
Attendee views You attended the ECTA Conference sev- appreciate ECTA’s willingness to support eral times and were a speaker here in office initiatives at the best possible level. Edinburgh. Please could you share your Doing things together with our users gives impressions of the conference? us a sense of purpose and direction and, at the end of the day, helps us to improve. I have been attending ECTA events on behalf of the EUIPO since Palermo, in 2012. Why are events like this important? ECTA Annual Conferences have evolved over time to become one of the most interesting For the EUIPO, attending ECTA’s Annual events in the EUIPO’s calendar. Edinburgh Conference is not just returning the favour complies with these high standards, and for ECTA’s participation in office activities. the focus on ‘new horizons’ adds a chal- It is a great opportunity to reach out to a lenging, forward looking perspective to varied and knowledgeable audience to prothe discussions. mote our practice and receive feedback about new or ongoing office initiatives. What sets ECTA apart? And this applies not only to the plenary sesECTA is one of the EUIPO’s most valued sions, but also to less formal discussions institutional partners. It is a truly European with ECTA officials and members in the association that brings together the major- margin of the conference events. ity of probably the most qualified practitioners in the area of EU trade mark and How do you connect with attendees? design law. Nevertheless, ECTA’s significance for the office lies not only in what it After all these years, connecting with is, but also in what it does. For us, ECTA is attendees comes naturally. I know most of also an important operational partner with the participants either from their involvewhom we have excellent everyday cooper- ment in EUIPO activities as ECTA’s repreation in a number of key areas: from ECTA sentatives, or from their private practice, committees’ comments to our guidelines for instance, we may have been parties and strategic planning, to the contribu- in the same case before the Court. This tion of ECTA’s members to the Stakeholder previous connection certainly makes comQuality Assurance Panels audits and their munication easier and more intimate, participation in the working groups of the knowing that you can trust your partner Convergence Programme, the Anti-Scam is important! Network and the Observatory. Dimitris Botis We know that all this takes an incredible Deputy Director, ICLAD amount of time and effort and we truly EUIPO
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Kristóf Váczi Photography
(27th June 2019)
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Agenda
08.00-18.30
Registration and Information desk - Strathblane Hall
09.05-09.25
Parallel Sessions Until 13:00 Hills and valleys to conquer - 4th Session: IP challenges within sports Moderator: Mireia Curell, ECTA Past President, Curell Suñol SLP, ES Michael Short, Legal Counsel, Event Legal Services, UEFA, CH Anna Guix, IP Lawyer in FC Barcelona’s Legal Department, ES Stamatia Tsirozi, Brand Enforcement Attorney Europe, Red Bull GmbH, AT David Gill, Trade Mark Attorney, Gill & Gill, UK
10.45-11.15
Coffee break - Cromdale Hall, EICC
11.15-13.00
New horizons of protection - 6th Session: GIs Moderator: Paola Ruggiero, Chair of the ECTA Geographical Indications Committee, Bird & Bird, IT Francis Fay, Head of Unit B3, Geographical Indications, DG AGRI, European Commission, BE Prof. Dev Gangjee, Member of the ECTA GI Committee, Oxford University, UK Dr. Simon Crabbe, Head of Geographical Indications, DEFRA, UK Fernando Cano Treviño, Chief Representative Officer for Europe Tequila Regulatory Council (CRT), CH
13.00-14.30
Lunch - Cromdale Hall, EICC
14.30-14.45
Seeing through the haze - 5th Session: Digital content: how can you make it available to the public within EU Moderator: Dr. Christian Freudenberg, Chair of the ECTA Copyright Committee and ECTA Council member, Schomerus & Partner, DE The CJEU saga, Dr. Eleonora Rosati, Associate Professor in IP Law, Southampton University, UK Political background and financial stakes related to big ISPs, Speaker TBC Enforcement on digital content; main issues and current strategies, Dr. Cedric Manara, Head of Copyright, Google, FR
A highland battle? - 7th Session: ICANN / WHOIS update and discussion Moderator: Delia Belciu, Chair of the ECTA Internet Committee and ECTA Council member, DB Law Offices, RO Alexander Heirwegh, PETILLION, BE Olivier Bringer, Head of the Next Generation Internet Unit/Future Networks Directorate E, DG CONNECT, BE Geo Van Langenhove, Legal Manager, EURID, BE Nathalie Dreyfus, Member of the ECTA Internet Commitee, Dreyfus & associés, FR
ECTA 2019 Award Presentation Sozos-Christos Theodoulou, ECTA President, The Law Offices of Dr. Christos A. Theodoulou LLC, CY Dr. Peter Lukácsi, Chair of the ECTA Professional Affairs Committee, SBGK Attorneys at Law, HU
14.45-15.15
Strength from the Spirit of Scotland - 8th Session Helicopter Speech Alan Park, Member of the ECTA GI Committee, Director - Legal Affairs, Scotch Whisky Association, UK
15.15-15.45
Coffee break - Cromdale Hall, EICC
Seeking new horizons - 9th Session: EU Case-Law Moderator: Carina Gommers, ECTA Council member, Secretary of the ECTA Anti-Counterfeiting Committee and Member of the ECTA EUIPO-Link Committee, Hoyng Rokh Monegier LLP, BE 15.45-17.15
17.15 - 17.25
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The unitary character and the influence of national rights and case law, Judge Ulloa Rubio, EU General Court, LU The unitary character and the multiplicity of languages, Alexandra Kusturovic, Member of the Second Board of Appeal, EUIPO, ES Dimitris Botis, Deputy Director, ICLAD, EUIPO, ES Tobias Dolde, Chair of the ECTA EUIPO-Link Committee and Member of the ECTA Harmonization Committee, Noerr Alicante IP, S.L., ES Summary Anette Rasmussen, ECTA First Vice-President, Awa Denmark A/S, DK
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