Issue 037
  January 2014
Contents:
 

Latest news on OHIM website

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HouseMARQUES interview: Lee Grosskreuz Hechtel

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Update on EU trade mark reform

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Find out about the OHIM Observatory

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New CTM and RCD examination guidelines

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Design Liaisons Meeting in Alicante

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IP Outer Borders Team publishes fair use report

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China trade mark flowcharts updated

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Field Notes from the Outer Borders

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Coexistence Workshop in Zurich

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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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Latest news on OHIM website
MARQUES has been actively monitoring the difficulties arising from the launch of the new OHIM website.
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HouseMARQUES interview: Lee Grosskreuz Hechtel
Lee Grosskreuz Hechtel is deputy general counsel of NBTY and chair of the MARQUES Regulatory Team. She talks to James Nurton about nutraceuticals, plain packaging – and Airedale terriers.


Tell us a bit about your role?
I am deputy general counsel for NBTY, which is the parent company for the largest nutraceutical group of companies in North America. I head the IP department, which is two of us, and also handle the licensing. I do a lot of trade mark work and work with the major licensees. There is a bit of patent work, a little copyright, and trade mark is the majority of the work. I’ve been here just over seven years now.

Before that I was outside counsel doing patent and trade mark work for this company and others. I was offered an in-house position and I couldn’t refuse.

It’s very different to being in a law firm – it functions differently. You still have multiple clients but they are departments rather than different companies. Sometimes they have conflicting views and goals but generally you get to see the whole picture from conception to final product. I like being involved in the whole process and being involved with the commercial side, which is a lot of fun.

What kind of work do you do yourself?
My colleague, Sofya Peysekhman, and I share the trade mark work. We have a global docket and are fortunate to have excellent local representation worldwide. I also handle a small patent docket, some trade dress, copyright work and lots of licensing work.

How did you join the MARQUES Regulatory Team?
I had met Dor Cohen Zedek, who is now a dear friend, at a PTMG meeting and she persuaded me to attend the MARQUES meeting in Nice, where I was offered a place on the Regulatory Team. (At the time we did not have a regulatory attorney in-house so I was doing a lot of regulatory work, checking labels, etc, together with the trade mark work.)

At the time, the Team had been around for about a year. A regulatory team within a trade mark organisation makes a lot of sense because the ways we use our brands in many forms are often regulated, depending on the type of product. My company makes vitamins and nutritional supplements which are regulated, as are pharmaceuticals and foods. A trade mark can be considered a label claim about a product in many jurisdictions, as could some of the images on the trade dress. So there is an important overlap between regulatory law and trade mark law.

Currently, we have a broad scope on the team and we are up to about 17 members, so we get input from everywhere, many different views and sources. I’m really fortunate to work with such an impressive group of members.

Do regulatory laws vary much?
Depending on the territory, the laws can vary greatly. Most of the EU countries are similar, somewhat on the same page. Canada has very specific regulatory laws, and we have interesting input from Turkey and also from some developing countries that have very interesting issues.

What issues are you working on?
The last couple of years we have done quite a bit with plain packaging in Australia, New Zealand and the EU.

At the last meeting in Monte Carlo, we presented a joint workshop on labelling requirements in the EU and US with the Brands and Marketing Team. We are also working on allergy labelling and we have a slot for another workshop at the Copenhagen Meeting this year, also in conjunction with the Brands and Marketing Team. The workshops keep us busy.

We have a conference call once a month, and we are fortunate that everyone contributes to the team efforts.

Are regulatory issues becoming more important for trade mark practitioners?
Absolutely. You can’t advise a client how to use a trade mark on the product and advertising without being aware of the regulatory issues as well.

A lot of the public support plain packaging. What is the trade mark objection?
MARQUES, and our team, support the health reasons behind these proposals but we object to the approach of these regulations. Legislating for the removal of property means trade mark rights will be lost and there is no evidence that it will lead to a reduction in smoking. There are also concerns that it will lead to a great increase in black market goods, and it’s much more difficult for consumers to tell the difference. Black market goods can contribute greatly to illness and death, since the goods have no oversight at all.

Do you think it will be followed by plain packaging for other products?
I think it’s a very slippery slope. It’s already come to pass in Thailand with alcohol and it is in discussion in the EU for snack foods. The same argument could be made for pharmaceuticals or vitamins – but the consumer should have a right to choose the brand.

Are trade mark owners doing enough to raise these points?
In the EU, trade mark organisations have been very active – MARQUES works with sister organisations and we have worked jointly to submit position papers.

What do you like about MARQUES?
Through Dor and the MARQUES meeting in Nice, I’d also met our friends Aaron Hurvitz as he defended my handbag from potential loss, and Isik Ozdogan, who always has a smile. MARQUES brings together a fantastic group of people.

I like that MARQUES is constantly moving forward in terms of education and information. It’s not just meet-and-greet – we work on keeping up to date with the latest developments, and everyone is very willing to share information, which is very important. The meetings are small enough that you can interact on a personal level and be very productive.

The most recent meeting in Monte Carlo was very well done and enjoyable. I might even say that has been my favourite annual conference.

What do you do in your spare time?
I love to travel just about anywhere. I’m involved with dog rescue, particularly with Airedale terriers. I have fostered many dogs over the years, which involves doing whatever is necessary to get them on their feet, and even had five at one time in the house. Now I have just one, and he is staying. It can be hard to let them go- but that can be a good thing as it means you have to be comfortable about their new homes. I live in Port Jefferson, which was an old shipping port in Long Island, with a small back yard so the dogs can run around.

I also like to spend time with my five-year old granddaughter, and am just (considering) buying a new camera to play with.

Update on EU trade mark reform
MARQUES’ EU Trademark Reform Task Force has published comments on the latest plans for European trade mark reform.
Read More >>

Find out about the OHIM Observatory

 

New CTM and RCD examination guidelines

The OHIM Observatory now has its own website and recently distributed its first newsletter.   OHIM recently published new examination guidelines for Community trade marks and registered Community designs, which come into effect on 1st February.
Read More >>   Read More >>
Design Liaisons Meeting in Alicante
MARQUES was invited to attend the 12th Liaison Meeting on Design held in Alicante on 25th and 26th November 2013. The two vice-chairs of MARQUES’ Designs Team, Sebastian Fischoeder and Robert Stutz, participated.
Read More >>
IP Outer Borders Team publishes fair use report
The IP Outer Borders Team has been surveying trade mark practitioners throughout the world regarding the intersection of trade marks and freedom of speech, including parody, art, personal and political expression or simply comparative advertising.
Read More >>
China trade mark flowcharts updated
For the past 12 months, the China Team has been working on flowcharts on the PRC trade mark prosecution and opposition procedures, cancellation proceeding and civil litigation.
Read More >>
Field Notes from the Outer Borders
The IP Outer Borders Team collects and reports on unusual trade marks from around the globe. This month: How can a philosophy be hidden in a trade mark?
Read More >>

Coming soon: Coexistence Workshop in Zurich

 

MARQUES Media Roundup

The next MARQUES Coexistence Agreement Workshop will be held in Zurich on 5th February.   Follow twitter, LinkedIn, Facebook and the blogs Class 46 and Class 99 for the latest news and debate around trade marks.
Read More >>   Read More >>

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