Shane Smyth (FRKelly & Co, Ireland Member of MARQUES Council, Amicus Curiae and Education Teams) and his colleague Carol Gormley then explained this year's conference theme -- a revisit of some popular and ever-relevant topics tackled in the past. Shane's unforgettable rendering of the housekeeping notes was followed by a delightful disquisition on the need to revisit the past in order to understand the reality of the present.

"Brave New World" was the title of the first session of the programme, chaired by Willem Leppink (Ploum Lodder Princen). First to speak was Professor Dr Joachim Bornkamm (Presiding Judge, German Federal Supreme Court). Focusing on AdWords, he summarized the background: European trade mark law is now highly harmonised, though national traditions live on. This is understandable, since Article 267 TFEU is too weak an instrument to deliver more than that. The lack of guidance in Court of Justice rulings doesn’t help, but the CILFIT principles suggest that there should be rather more references to the Court than there have been so far. The German courts have decided more than 500 cases under the current European regime so far, and if this is reflected in other countries the Court of Justice could be overwhelmed. However, the quality of guidance is inversely proportionate to the speed of its delivery, so a slower flow of rulings from Europe's supreme judicial authority may be preferable. 

The judge then reviewed the IMPULS metatag case [mentioned by Birgit Clark in her CIPA paper, referred to on Class 46 here], which indicated that even the invisible use of a trade mark as a metatag was “use” for trade mark purposes, and the PCB-Pool case, in which the use of the descriptive term “pcb” as a search term for a “broad match” which trawled in registered trade marks such as PCB POOL was not an infringement. He then explained Beta Layout: this was a case involving a trade name, not a trade mark, so (i) there was no possibility of a reference to the Court of Justice and (ii) the only issue to be determined was that of risk of confusion – which, in the case of sponsored search results – was not present, especially since the defendant’s advertisement, summoned in response to the challenged use, did not mention the term Beta Layout.

This was all a prelude to the reference to the Court for a preliminary ruling in Bananabay (a.k.a. eis.de), which sought to know which function of the trade mark was adversely affected by keyword use – was it the function of indicating origin, or was it the function of ‘communication, investment and advertising’? It looked as though L’Oréal v Bellure answered that question in favour of the latter option, since it affected the advertising function, but the later rulings of the same court in the three Google France AdWords cases suggested that this is not automatically the case and that whether the origin function is affected must be established on the facts on a case-by-case basis. It now remains for the Bundesgerichtshof to apply these principles to Bananabay.

To the great disappointment of many of us who thought the next speaker was 007, licensed to kill,, Dr Bornkamm was followed by the aurally highly similar James Pond (Google, Germany).  James emphasized Google’s three driving principles for AdWords: relevancy, advertiser responsibility and user choice. The patchwork of conflicting legal decisions prior to the Court of Justice Google AdWord ruling, and inconsistencies as between Europe and the United States —and even within Europe—caused uncertainty for Google and its advertisers alike. Google’s announcement of a single AdWord policy across Europe is part of the fruit of the Court’s decisions.

Opening the second session ("Short cuts", chaired by Taylor Wessing's Thomas Raab), David Stone (Simmons & Simmons), a leading light on MARQUES’ highly active Designs Team, then tackled the topic of design law, “one of the arrows in the quiver of protection” available to brand owners.  He led the audience through a quick canter through the legal basics and the law of the Court of Justice—focusing on the European position alone. Design right is “not a jealous right”, he added; it’s happy to share its subject matter with other rights. Stylised versions of descriptive words, which generally fall foul of trade mark protection, are ideally suited for Community design protection.

Unregistered Community designs were then reviewed; curiously, while the unregistered design right was designed with the fashion industry in mind, it is apparent that there is much filing of fashion designs as registered rights. All of these rights are increasingly the subject of litigation, so a substantial body of jurisprudence has built up. Discussing Grupo Promo v Pepsico (the “pog” case) David reminded the conference that bad faith is not a ground of invalidity of a registered Community design—a matter that may require legislative attention.  He also discussed the concept of “the informed user” in design law, highlighting the difference between defining the concept and identifying the persona which matches it.

The final pre-lunch presentation came from Bert-Jan van den Akker (Dijkstra Voermans) on the concurrence of trade mark and copyright protection the appreciation of which is increasing: this is reflected in, for example, infringement litigation, where two or more rights are cited in the claims. Statutory barriers to overlap, such as those that limit trade mark protection of three dimensional goods, can be compensated by the existence of parallel rights that are not so restricted. Where two or more rights exist, issues such as ownership (does the same owner hold all the rights?) and different applications of the principle of exhaustion of rights can cause problems, as well as the existence of moral as well as economic rights in copyright which are not correspondingly reflected in trade mark law. Permitted uses of different rights are also substantially different as between rights: copyright exceptions address social, cultural and informational needs, while trade mark exceptions relate to trade and commerce. A stimulating point Bert-Jan made concerned the privatization of cultural assets: once such assets fall out of copyright protection they are in the public domain and can therefore be re-appropriated as trade marks. Is this a good thing or is it bad? A recent case in point was the Norwegian decision to refuse registration of PEER GYNT as a trade mark for entertainment services was based on the notion that the term, relating to a work by Ibsen that had fallen out of copyright, should be free for all to use.