Tell us about the Unfair Competition Team?
The Team was founded by Paul Steinhauser. I was invited to join it; I do quite a lot of unfair competition cases in Germany and across the EU and was interested in helping to build a new Team. I was vice-chair for a while and took over as chair when Paul retired. Marcus Luepke of Finnegan in Washington, DC is now vice-chair.
We now have 21 members from 16 countries, including most of Europe and also the US, Chile and Uruguay, so it is a very diverse Team. We also have representatives of brand owners Red Bull, GlaxoSmithKline and Inditex. So we are a strong and active Team, with different legal backgrounds. The interesting thing is that we all face similar problems: sometimes the solutions are the same but the road to get there is different.
What are you working on at the moment?
The hot topic for us is lookalikes: that is logos and packaging that are not similar to trade marks, but look and feel similar. So our function as a Team is to look at unfair competition matters outside of the trade mark autobahn: the question is can we get rid of things on the market even if there is not a trade mark issue?
We will be looking at that question in a workshop at the Annual Conference in Monte Carlo this year. I will introduce the topic with another Team member, Paul Reeskamp of Klos Morel Vos & Schaap, and we will touch on the interesting topic of protecting product shapes in the EU and asking: does it make sense to protect them under trade mark law or unfair competition law?
Paul and I will argue the case for trade mark and unfair competition law and then we will ask the audience “what do you think?” We hope to get examples and case studies from different countries.
Why are you focusing on product shapes?
From a legal standpoint, it’s almost impossible to protect product shapes under the CJEU case law – they either lack distinctiveness or are too technical. 3D trade marks are a brilliant idea, but they are not really working: even if you can get one registered, it seems like you can only enforce it against something that is absolutely identical.
In the workshop we will look at unfair competition law in different jurisdictions in Europe, and whether there might be protection for product shapes: how do courts in France, Germany, Italy, the Netherlands or Spain deal with this issue? Of course, unfair competition law is notoriously diverse. The idea was to harmonise the law on 3D trade marks, but that has not happened, and that means for big trade mark owners, it’s very hard to get round the copycats.
Some of the questions to ask are: is it better to have a flexible response based on unfair competition law? What are your chances in court? Can you get good results in practice? Some jurisdictions like Germany and the Netherlands have highly developed case law on this issue but other jurisdictions less so.
What else is the Team doing?
In Monte Carlo we will also present the latest update to our chart showing the development of unfair competition law in different countries. Marcus Luepke and Selma Unlu (of NSN Law Firm in Turkey) have been working hard on that. This is updated every couple of years and lists the typical questions a trade mark owner would have concerning unfair competition law, such as forum shopping and interim injunctions. It will be given to every attendee, and we think it is a useful first check before you obtain legal advice.
Does the Team look at both sides of the debate on lookalikes?
Absolutely. We’ve held a workshop where we argued the case for the brand owners and also for the retailers and we also had a fun panel at an Annual Conference called “The Good, the Bad and the Ugly”, which some members will remember.
What other activities do you do?
I’m involved with the German Judges Meeting, and the third one of these will take place later this year. By coincidence, quite a few members of our Team have helped plan the various Judges Meetings in their own countries. Three members of the Team are also part of the Study Task Force looking at the proposed EU trade mark changes.
When did you join MARQUES?
My first Annual Conference was in Dresden in 1999. Other partners of my firm had attended before and said it was very good, but they wanted someone younger to go. I went and liked it so much that I have never missed a MARQUES Annual Conference since! I think it is one of the nicest conferences – it feels like a big family, everything is very professionally organised and it is very good for business. There are a lot of in-house counsel, who give you a different view of things and the lectures are always very useful.
MARQUES has become much more international over the years, with members from the US, Latin America, Asia and Africa.
Which have been your favourite Annual Conferences?
The recent conference in Baveno was a wonderful venue. I remember Athens in 2000 very well and also Prague and I was proud to have Berlin as a venue.
The Winter/Spring meetings are also very good. They are short and focused and you see what the other Teams are doing, so you can get a lot of information very quickly. I also think MARQUES is very transparent – it’s very easy to get in touch with Council members, for example.
What does your everyday work involve?
Harmsen Utescher is a boutique firm covering all areas of IP. I joined in 1992 and have been with the firm ever since. I do mainly trade marks and designs work, as well as copyright, unfair competition and food law, which is a small but quite an important area in Germany. Like all our lawyers, I do both litigation and filing work and I enjoy that: you get to see the baby grow up and help raise it! We are very busy these days, and there is a lot more international work than in the 1990s – both German clients going overseas and international clients. That’s one of the most enjoyable things about working in trade marks: looking at the EU and international issues.