Issue 027
  March 2013
Contents:
 

New MARQUES Chair

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The HouseMARQUES interview: Chris Barnard

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MARQUES Teams meet in Barcelona

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Response to EU trade mark reforms

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OHIM User Satisfaction Survey

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All about the EU TMDN

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Euroclass becomes TMclass

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EU Customs Agreement approved

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World IP Day 2013

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WIPO annual figures published

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Outer Borders Team

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TMCH

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Keywords

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MARQUES Media Roundup

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Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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New MARQUES Chair
Diana Versteeg of Akzo Nobel NV took over as MARQUES Chair at the Council and Teams Meeting in Barcelona this month.
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The HouseMARQUES interview: Chris Barnard
Chris Barnard became the first MARQUES Executive Director last month, following a 32-year at Coca-Cola. He discusses his career and interests, and explains what his new role involves.


What is your background?
I started my legal career in private practice in Wellington, New Zealand, working in litigation. After two or three years I decided to join Coca-Cola as a management trainee, and then had responsibility for the juice product category and also for the fountains (the pressurised taps found in bars). This was the late 1970s and early 1980s and there was huge growth: fast food was taking off and we were just breaking into cinemas.

I was then invited to join the legal function and moved to Australia. I worked in general law, but there was always a lot of IP involved – not so much at the technical level, but more on issues such as marketing and advertising law, unfair competition, infringements and parasitical copying as well as managing the trade mark use programme. One of the issues we had to deal with at that time was the Pepsi Challenge. Part of the job was protecting the trade mark from the exuberance of the marketing people: when you work for a large branded goods company, everything comes back to the brand.

After two years I moved to the United States doing general legal work covering Asia and Africa, including issues relating to parallel trade and anti-counterfeiting. I also spent time in Hong Kong working on the Company’s re-entry into China, and I had two spells in Japan, where I also covered Korea. Ultimately I had responsibility for legal issues throughout Asia, including India – where an NGO hijacked the brand to highlight issues in India with pesticides and water quality. This resulted in a great deal of litigation and brand reputational issues.

Finally I moved to London with responsibility for everything outside the Americas; that was a very big role, which proved impractical, so it was changed to cover all of Europe instead. Over my 32-year career I worked pretty much all over the world, except for the Middle East and Latin America. It sounds like a long time to be at one company, but I only ever spent a few years in one place and each jurisdiction had its own leadership style so it felt like joining a new company every time. I think that’s one reason why Coke is so successful internationally.

How did you get the role at MARQUES?
I was approached by a headhunter and the role attracted me because it was outside mainstream legal work but still involved legal subject matter, and both private practice and in-house lawyers. It also had a management element and I was used to that – in the global role at Coca-Cola I was managing about 120 people.

What is the aim of the role?
We want to take MARQUES to an even more professional level. MARQUES is run very well, essentially, by a group of volunteers and a small number of retained staff and by coordinating the organisation we can take it to another level. I think there is a lot of scope to grow MARQUES without losing the intimacy that people value.

Membership is a big part of that, and in particular creating awareness of the organisation and the work that it does. I think that work distinguishes MARQUES from some other professional organisations, but people are not always aware of that. So we want to build awareness and membership, and leverage the excellent substance that goes on in the teams. I have a lot of admiration for the people on the teams and the work they do, and we want to make sure it’s not just for internal use.

I will also be talking to prospective new corporate members. I think they can contribute a lot to MARQUES but also learn a lot. It is very valuable, especially for junior IP lawyers, to be able to learn from seasoned practitioners and the training is a huge benefit for the employer. MARQUES also has very good contacts at the government and inter-governmental level which is a big benefit for corporates. If you corporates can see view the cost of membership as being part of the training and legal/external relations budgets it can be viewed as an investment rather than a cost. Corporates want to see value for money and I think we MARQUES can show that.

From a corporate point-of-view, it is also enormously beneficial to hear from people in other industries, and how they approach particular problems. It can provide a great support network for in-house professionals. We have a lot to learn from each other on a range of issues such as plain packaging, for example.

Will you be doing a lot of travelling?
I recently attended a meeting of the sister organisations in Turin. The meeting was very congenial and the different groups all have useful views. I think MARQUES uniquely brings the brand-owner perspective.

Next I will be going to Alicante for the conference on designs in April and I will be going to the INTA Annual Meeting in Dallas in May.

What do you do in your spare time?
I like to play tennis. I used to play in Regents Park when I lived in London before and that is a good way to keep fit. I used to play golf a lot when I was in the US and Japan, but I haven’t played for a few years. I’m also interested in classic cars – I had a ’68 Mercedes SL, but I sold it when I moved to Australia. I wished I hadn’t now.

Having worked all over the world, which is your favourite city?
I enjoyed my two spells in Tokyo, which was very different to everywhere else I’ve been – in terms of culture, food and the people. Flying back in to Tokyo always felt like coming home. I had lessons in Japanese, so I picked up a bit but everyone there was always keen to speak English, and I travelled around Japan a bit. The orderliness of the country appeals to me, and the sense of community and pride among people. I try to go back about once a year to see friends.

I now live in London, a city which I really enjoy, and also have a home in Sydney. But I still have a New Zealand passport. It’s useful really – not that many of us and located at the end of the world, so it often sparks a conversation and eases the way – it’s kind of neutral in a way.

MARQUES Teams meet in Barcelona

 

Response to proposed changes to EU trade mark law

The MARQUES Council and Teams met for two days in Barcelona last month, to discuss plans and compare experiences, and to hear the Kay Uwe Jonas Memorial Lecture.   MARQUES has published an information note on the planned changes to EU trade mark law.
Read More >>   Read More >>

OHIM User Satisfaction Survey launched

 

Introducing the EU Trade Mark and Design Network

OHIM launched its annual User Satisfaction Survey earlier this month, sending out invitations to those who used OHIM’s services during 2012.   Find information and electronic services from OHIM and the EU national IP offices at the European Trade Mark and Design Network.
Read More >>   Read More >>

Euroclass becomes TMclass

 

Agreement on customs enforcement

The online classification tool formerly known as Euroclass has been renamed TMclass.   The Council of the European Union has reached political agreement on a draft regulation to strengthen the conditions and procedures for action by EU customs authorities with regard to the enforcement of IP rights.
Read More >>   Read More >>

World IP Day – Creativity: the next generation

 

Trade mark and design filings grow at WIPO

This year’s World Intellectual Property Day, taking place on 26th April, will focus on the theme Creativity: the next generation.   Trade mark and design applications using the Madrid and Hague systems grew strongly in 2012, according to figures published by WIPO this month.
Read More >>   Read More >>
Appropriating traditional culture – the controversy, consequences and challenges
Controversies triggered by perceived misuses of the cultural heritage of indigenous peoples in trade marks and branding are garnering increased visibility. This is the first in a series of articles prepared by Diane Silve and Marion Heathcote on the current international debate concerning the extent of protection to be afforded indigenous peoples’ symbols, lore and other cultural expressions, and ways to minimize the risks associated with perceived misappropriations thereof.

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Time to protect your marks in new gTLDs
What is the Trademark Clearinghouse and should brand owners be using it? Sarah Clayton and Nevan Chellen explain.
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Keyword advertising updates

 

MARQUES Media Roundup

The MARQUES Cyberspace Team has posted two new documents on keyword advertising to help members to gain knowledge and guidance on the practice followed by search engines and the current case-law in Europe.  

Keep up with MARQUES news and developments on Class 46, LinkedIn and Twitter.

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