Case law analysis from intellectual property judges and insight from the daughter of Martin Luther King Jr on why IP was so important to her father were among the highlights on day two of the INTA Annual Meeting taking place in Atlanta this week.
In between networking and meeting colleagues, Sunday also marked the first time that attendees were able to attend open panel sessions.
One session delved into differing judicial interpretations around the world.
Judicial differences
During that panel, members of the judiciary from Canada, Japan, South Korea, China, Germany, and Kenya analysed notable decisions from their courts and discussed the impact on brand owners.
Judge Justice Jing Yan from the Supreme People’s Court (SPC) of China said that in recent years the court has issued decisions that are “much more favourable to foreign rights owners”.
She referenced a 2023 dispute involving Siemens. The German company was awarded RMB 100 million ($13.8 million) in damages after a Chinese company called Ningbo Qishuai Electrical Appliance used the term ‘Shanghai Siemens Electrical Appliance’. The Chinese company was found liable for unfair competition and trademark infringement.
She also referenced the Panpan door dispute in which Swedish security device company Assa Abloy was awarded RMB100 million in damages after three Chinese companies were found to have infringed its trademarks for ‘Panpan’.
Yan said China, and in particular the SPC, had been issuing more decisions that provided assurances to brand owners.
It was a slightly different story in Kenya, however.
Justice Francis Tuiyott, a judge at the Court of Appeal of Kenya, referenced a decision he handed down in 2020 which he said many brand owners found surprising.
In that ruling, Tuiyott found that Japanese technology company Sony had not provided enough evidence to show that it had a well-known trademark in the country.
Kenyan property developer Sony Holdings had been using the term Sony, but the court found that it was not deceiving the public.
Although the Japanese Sony had registered trademarks in Kenya, it had not demonstrated that it was a well-known brand.
Meanwhile, Judge Naoyuki Iwai from the IP High Court of Japan gave a rundown of disputes concerning colour trademarks.
Colour trademarks, which became available in Japan 2014, have proved to be “rather difficult to protect” he said.
In January 2023, fashion designer Christian Louboutin failed to secure protection for the “red sole” shoe. The Japanese court, contrary to decisions in the EU, US and China, determined that it was not in the public interest to grant protection for a red sole colour.
Further, the colour had not acquired distinctiveness.
In another decision, this time from earlier this year, fashion brand Hermès also failed to secure protection for a shade of orange it uses on product packaging.
The session was moderated by Iris Gunther, director for brand enforcement and sustainability at INTA.
Keynote King
The highlight of the day was hearing from Bernice King, a lawyer and daughter of the late Martin Luther King Jr. Bernice was the keynote speaker for this year’s opening ceremonies.
Auma Reggy, co-chair of the 2024 annual meeting and managing lead IP counsel at health care company McKesson in the US, interviewed King.
King credited her mother, Coretta Scott King, for being the reason why people were still familiar with her father, who she noted was a "great man".
"But if you don't have anyone to carry your legacy, whatever you leave behind – it's going to die. She was very systematic in the way she built his legacy. She built the largest social change brand in the world," King said.
Coretta Scott King founded the Martin Luther King Jr. Center for Nonviolent Social Change, of which Dr Bernice King is now CEO, in 1968.
King went on to explore why IP was important to her father and how it helped maintain his legacy.
She noted that Luther King Jr’s famous "I have a Dream" speech was protected by copyright.
She added that a 1982 ruling from a lawsuit filed by the Center for Nonviolent Social Change was responsible for establishing a post-mortem right of publicity in Georgia.
In the lawsuit, the non-profit sued a defendant who had developed the concept of marketing a plastic bust of Luther King Jr.
King added that the non-profit sought and obtained trademark protection for its initiatives. The organisation was open to licensing its IP, but wanted to understand how it would be used, she said.
"We have to protect the integrity of the brand and the words and teachings of my father," she said.
King's talk ended with a standing ovation from attendees.
Brand Action
For the third year in a row, Brand Action is encouraging attorneys at the INTA Annual Meeting to try to raise money for vital causes.
Managing IP’s editor Max Walters stopped by the charity’s sponsors’ drinks event at the Hard Rock Cafe in Atlanta on Sunday afternoon.
Brand Action is a charity that brings the global trademark community together to help people in crisis.
Efforts this year are focused on supporting the World Central Kitchen's work in Haiti, and on raising funds to donate a second fully-equipped ambulance to provide relief in Ukraine.
Phil Cox, the US-based co-founder of Brand Action (pictured), told Managing IP: “We have an easy way to help people going through unimaginable turmoil. In the last year alone, we have fed people in Turkey, Syria, Ukraine, Mexico, and now Haiti, through our standing charity World Central Kitchen.
“After disasters happen, practitioners have asked Brand Action if we could help the people starving and dying in their countries. And we’ve been able to do it. These are the friends and colleagues our community works with daily. The people you see come and go at the conferences, and you often don’t know what is really going on for them at home.
“It seems that crises are happening everywhere these days, and there is no reason why next time it won’t be you who needs help.
“Brand Action stands as a place where we can collectively help our colleagues in their darkest time of need. These acts of kindness are the things that make a true community. This is more than just giving a few bucks to a good cause.”
You can support Brand Action by purchasing merchandise at the Alt Legal booth in the exhibition hall or via making a donation at BrandAction.org.
The charity will host its annual fundraising event at STATS Brewpub on Monday, May 20.
Question of the day
In addition to attending panels and events, we also caught up with some of our sources and other delegates, put faces to names, and learned more about law firm strategy and the IP issues concerning attorneys.
Today, we asked sources what they hoped to gain from the conference this year.
Saul Perloff, partner at A&O Shearman in Austin, noted that there were very few conferences where attendees have the opportunity to meet so many clients in one place.
“To me, it’s irreplaceable,” he said.
Jennifer Morton, partner at Gowling WLG in Toronto, said she was looking forward to catching up with clients who hadn't been able to attend INTA in the years immediately after the pandemic.
"It hasn't been like this until now. So, it's a great opportunity and the first time we'll be able to meet a lot of our big clients. A lot of corporate America didn't attend INTA before now [post COVID] and they're here at this meeting, which is fantastic."
Morton added that she was also excited to bring a younger associate, who is attending the conference for the first time.
"She's been working with my clients for a year and a bit, and this is the moment where I get her to introduce her to everyone. She's marvelous. And that for me is very fun. I remember being the baby once and how marvelous this conference was, and she's experiencing that."
Looking ahead
Sunday’s receptions included the INTA opening reception at the exhibition centre, a drinks reception at the Omni Hotel with CWB, and an event hosted by Barnes & Thornburg. Law firm Adams & Reece also took delegates to an Atlanta Braves baseball game.
On Monday we’ll report on a panel delving into law firm management concerns, Brand Action’s fundraiser, and much more.
The INTA Annual Meeting runs from May 18 to 23 at the Georgia World Congress Center in Atlanta.
