While our increasingly online world makes it easier for brands to expand globally, it has also increased the geographic reach of infringements, prompting companies to seek judicial relief and enforcement in multiple jurisdictions to protect their intellectual property (IP) rights.

Leading jurists from several countries shared their expectations and insights on what the future holds for substantive IP law and judicial processes, during yesterday’s All Rise—Predictions from the Bench: The Judiciary of the Future.

The panellists are all members of INTA’s newest think tank, the IP Judiciary of the Future.

The think tank is composed of 10 judges from various jurisdictions who are discussing the issues they see becoming relevant to IP in the next 15 years. It has identified five key areas affecting brands today: court and tribunal court developments, extraterritorial and cross-border relationships, harmonization, online trade and violations, and technological developments.

“In a world where trade knows no boundaries, the same goes for trademarks. We know that there is a need for greater harmonization. Different results in different jurisdictions leave trademark holders in a bit of a pickle,” explained Judge Elisabeth Ohm, Norwegian Board of Appeal for IP Rights (Norway).

A Need for Harmonization

Judge Ohm drew attention to a trademark case that achieved different outcomes when litigated in Germany and in the EU courts, most recently rearing its head in Bavaria Weed v. EUIPO (May 2021).

In this case, the German producer of medical cannabis, Bavaria Weed, had argued that the word “weed” in its name should be associated with medical cannabis.

While it was registered in Germany as a trademark according to this logic, the EU General Court ruled that a reasonable person with an average knowledge would not understand the term “weed” as a reference to medical cannabis.

“It is clear that for historical, cultural, and linguistic, or societal reasons, there is a different understanding in the member states of what shall, and shall not, be allowed for registration as a trademark,” said Judge Ohm.

Judge Paolo Catallozzi, Supreme Court of Italy (Italy), echoed his colleague’s call for greater harmonization. This is especially important given the growth in online commerce in recent years, and, consequently, “an increased risk of trademark infringement, through online sales of counterfeits, counterfeited goods sold outside a closed selective distribution network, and goods that bear a confusing sign,” he explained.

Judge Catallozzi suggested that different jurisdictions should adopt similar criteria when assessing trademark infringement cases to help brand owners in their war against counterfeiters.

For example, he warned that judicial protection of trademarks against online infringements could lose effectiveness if decisions are not recognized and executed in a different jurisdiction where, for example, an infringer holds its financial assets.

“A possible solution could come, through international agreement, by embracing the principle of mutual recognition of judgments,” Judge Catallozzi said.

An Applicant’s Burden

Justice Manmohan, High Court of Delhi (India), noted that in many cases it was difficult for courts to take action due to the lack of IP law harmonization worldwide.

One solution, he suggested, is for courts to grant antisuit injunctions (ASIs) as a way to help brands better protect their IP.

“Its intent is to avoid oppressive and vexatious proceedings as well as conflicting judgments on similar issues,” he said. “A brand owner’s trademarks can be further protected if a court injuncts a party from pursuing an ASI before another court (including a foreign court).”

However, Justice Manmohan noted, the ASI applicant bears the burden of establishing that the foreign court is a forum non conveniens. Further, he suggested, ASIs should be granted sparingly.

For example, in a patent case—Interdigital Technology v. Xiaomi Corporation (2021)—the Delhi High Court found that the granting of an ASI by the Wuhan Intermediate Court in China was “oppressive” as it interfered with Interdigital’s “fundamental right to pursue legal remedies of injunctive relief for patent infringement” under Indian patent law, and that such a foreign order could not be enforced in India.

AI and Inventorship

The think tank members also addressed the pressing issue of whether an artificial intelligence (AI) can be named as an inventor on a patent application.

Judge Kwangnam Kim, Patent Court of Korea (South Korea), explored the worldwide impact of the Dabus case, in which jurisdictions differed on the issue.

“Due to the advent of AI, it may be necessary to review the entire IP system. This is because AI has been applied to creative activities that were thought to be exclusively for humans,” he said.

The judge noted that AI can impact the judicial process as well, and suggested, “Online dispute resolution procedures may be more active. Access to a judiciary system such as a more powerful judgment search system can be further improved.”

Judicial Training

All the significant and emerging issues affecting global brands underscore the need for more training for judges on IP developments, according to Judge Luis Diez Canseco, a retired judge and former president of the Court of Justice of the Andean Community (Ecuador).

“Because of globalization and the growing harmonization of legislation there is a need to interact and understand legal developments. Judges are the ones who finally decide about the law. It is of the utmost importance to provide training in IP,” he said.

Effective training and a better understanding of international developments will facilitate trade, help promote investment, and provide judicial security, he added.

Judge Canseco concluded by striking an optimistic note on law at least, if not jurisprudence. “Through the World Intellectual Property Organization, there is intensive work aimed at harmonizing IP law in general, and trademark law, in particular,” he said.

Video courtesy of Envato Elements / AlexeyD