World Trademark Review's 50 Market Shapers
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Feature By Trevor Little World Trademark Review’s 50 market shapers To mark World Trademark Review’s 50th edition, we on the basis of their daily work, but rather for their contributions identify 50 of the people, companies, cases and big- to particular debates (after all, if you are seeking potential legal picture issues that have defined the market on which partners, we offer the World Trademark Review 1000 – The World’s Leading Trademark Professionals for just that purpose). The list is we have been reporting for the last eight years presented alphabetically and is therefore ranked in no particular order; but it does provide a snapshot of the industry in which we all operate. Before we reveal the 50, it is important to acknowledge the single biggest influence on our evolution to date: you. Since World Trademark Review first hit subscribers’ desks in 2006, Without the loyalty of our subscribers, the World Trademark many aspects of the trademark world have changed beyond Review platform would not be where it is today, and you have measure. However, peruse that first issue and what instantly stands been integral to every step that we have taken along the way. out is how much remains familiar. The cover story focused on And I say ‘platform’ rather than ‘magazine’ quite deliberately. the fight between Anheuser-Busch and Bude jovický Budvar over Although the inaugural issue of World Trademark Review was the Budweiser brand – a battle that would rage on for a further published in April 2006, we can trace the origins of the title back eight years. Evie Kyriakides, chief privacy officer and global digital, a further four years. Bucking the established publishing trend, privacy and security, associate general counsel at Mars, was the whereby print titles transitioned into electronic format, World first trademark counsel to author an article in the magazine, Trademark Review began life as an online legal resource, World highlighting the difficulties posed by copycat brands; it is a problem Trademark Law Report, in 2002. Once established, it became that still exercises professionals today. Elsewhere, we looked at the clear that there was an audience for a printed magazine which challenges facing brand owners in China, the impact of changes to considered the application of trademark law in the corporate the European enforcement framework and the hazards caused by environment and presented in-depth analysis to complement inaccurate WHOIS records – all topics that would sit quite naturally the online case updates. in the current issue. The response was overwhelmingly positive and over the But there are also some notable absentees when viewed from past eight years we have considerably expanded our offering today’s perspective. The generic top-level domain (gTLD) name as a result. In addition to the magazine and WTR Daily email, expansion was still far off the agenda (the most recent strings we have built up a portfolio of supplements, including the approved at the time included ’.biz’ and ‘.info’ – ‘.brands’ was not World Trademark Review Yearbook, Anti-counterfeiting– A yet on the horizon). Social media was nowhere near the full-time Global Guide, Online Brand Enforcement, Designs: A Global preoccupation that it has now become, with Facebook founded Guide and Pharmaceutical Trademarks – A Global Guide. We just two years previously and Twitter still three months from have also established the WTR Industry Awards as a key event official launch. And the tablet computer design wars, the spectre of in the trademark calendar and the aforementioned research mainstream 3D printing and political disputes over plain packaging guide, the World Trademark Review 1000, as the go-to resource for tobacco products had all yet to appear on the trademark for those seeking legal trademark expertise. We therefore see counsel’s radar. ‘World Trademark Review’ as much more than a magazine – it is We thus thought that it would be a useful exercise to look back an information content specialist providing a diverse range of and identify some of the individuals, disputes and big-picture market intelligence, strategic advice and tools to assist trademark issues that have shaped the trademark world since our launch. practitioners in their daily endeavours. Naturally, we have decided to identify 50 of them. The list is wholly But whatever the format, none of this would be possible without subjective and far from exhaustive, reflecting the people and the loyalty, feedback and guiding hand of our subscribers. You truly developments that have impacted on trademark practice and those are the driving force behind the magazine and we are so grateful for that have shaped World Trademark Review itself. We have tried to your support. So thank you for the past 50 issues, and here’s to the avoid listing IP associations, and the limited selection of private next 50. practice lawyers who we have highlighted have been included not In the meantime, our list commences overleaf. www.WorldTrademarkReview.com August/September 2014 World Trademark Review 13 Feature: The 50 market shapers 14 13 12 Who’s who on the cover? 3 16 17 2 11 20 4 Alexander von Mühlendahl, 12 J Thomas McCarthy, 1 Bardehle Pagenberg Dost The McCarthy Institute Altenburg Geissler at the University of San 5 Victoria Espinel, former Francisco 23 US intellectual property 13 David Gooder, Jack Daniel’s 15 enforcement coordinator Properties 4 19 22 6 Jack Chang, chairman of 14 Toe Su Aung, INTA 6 7 China’s Quality Brands 15 The International Olympic 21 18 Protection Committee Committee 5 7 Francis Gurry, director general 16 Janet Kobrin, Warner Bros of the World Intellectual 17 eBay Property Organisation 18 Russell Pangborn, 8 Lego Marksmen 10 9 9 Lynne Beresford, former 19 Facebook commissioner for trademarks 20 Thomas La Perle, Apple 1 Raj Abhyanker, Legalforce at the USPTO 21 Patrick Leahy, US senator 8 Trademarkia 10 The Budweiser battles for Vermont 2 Anna Troberg, The Swedish 11 Alan Drewsen, former executive 22 Terri Chen, Google Pirate Party director of the International 23 António Campinos, 3 Etienne Sanz de Acedo, INTA Trademark Association president of OHIM Raj Abhyanker, Legalforce Trademarkia at targeting this dollar spend in a bid to choke off the flow of money Raj Abhyanker made waves in the trademark sector when he to counterfeiters, brokering voluntary agreements and strategic launched online services site Trademarkia, a Google-optimised, partnerships with companies such as MasterCard, Visa Europe, Visa user-friendly filing portal that propelled him to the top of the list of International, PayPal, Discover/PULSE/Diners Club, American Express, the most prolific trademark filers at the US Patent and Trademark MoneyGram and Western Union designed to target counterfeiters Office (USPTO). Critics have raised concerns over what they regard as and merchant accounts. This is just one such initiative that Barchiesi the commoditisation of trademark applications, as well as aggressive – drawing on experience earned in roles at the Recording Industry marketing tactics. For his part, Abhyanker has hit back at what he Association of America, the New York City Police Department and the deems mischaracterisation and suggested that the criticisms stem US Virgin Islands Office of the Attorney General – has spearheaded as from fears about how his operation has shaken up the traditional he represents the coalition’s members, coordinates public awareness trademark filing model. Abhyanker has now set his sights on real- programmes, provides training to law enforcement officials and world expansion, revealing plans to create a network of commonly serves as a thought leader on anti-counterfeiting. branded law firms, with clients able to book and pay for services via the Trademarkia site. Whatever the future holds, Abhyanker has Benelux Office of Intellectual Property clearly polarised industry opinion and the impact of his activities The question of exactly what constitutes genuine use of a mark in has been felt across the legal sector. the European Union has been the focus of intense political and legal debate for several years. A key voice in this discussion has been the Toe Su Aung, 2013 president, INTA Benelux Office of Intellectual Property (BOIP), following its decision That Toe Su Aung, then general counsel, anti-illicit trade for BATMark in what became known as the ONEL case. BOIP stated that national (a subsidiary of British American Tobacco), was the International borders within the Community should play no role and account Trademark Association (INTA) president the year that the plain should be taken of all relevant circumstances, including the relevant packaging debate went global was accident rather than design. market of goods or services. The European Court of Justice (ECJ) However, it proved a positive, as INTA sought to highlight the related subsequently confirmed that “all facts and circumstances” should be concerns to its members. But this was just one area of focus during her considered, ruling out a de minimis rule and suggesting that the bar tenure, with Aung – the association’s first Asian president – also laying for showing genuine use within the Community will be somewhat the groundwork for this year’s annual meeting in Hong Kong (itself higher than that for showing the same in a specific member state. the first in Asia), representing INTA in discussions with government Last year, BOIP’s Diter Wuytens proclaimed to World Trademark and industry, and speaking out against creeping anti-IP sentiment. Review: “Wednesday December 19 2012 will go down in the IP history Aung has now moved on from BAT, teaming up with Chris Oldknow – books as the day on which the ECJ ruled that the territorial scope of formerly of Microsoft – to establish Elipe, a new venture focusing on IP use of a trademark within the Community should in general surpass policy and strategy.