Reviews from Germany:
Lawyer, Paul Lange, Honorary Professor of Industrial Property, along with twenty-one other authors, has now ploughed the sparsely furrowed field of sign protection law in an international context. The harvest remains to be brought in. Well-known experts on the law of sign protection in their own countries have provided an overview of the law on trademarks, trade designations, titles, domain names and indications of geographical origin. Readers can see how up-to-date all the information is by looking at the issue date preceding the contributions for each country.
The various country contributions all follow a uniform pattern, starting with a description of types of distinguishing signs followed by their relationship to each other, taking in the creation of protection, proprietorship of rights, licences, the law on infringements as well as substantive and procedural format on the way and culminating in strategies to safeguard branding. It is therefore easy to appreciate the peculiarities attributable to different countries. Although Community law might certainly, for the most part, have regulated the protection of trademarks and indications of geographical origin in Europe, even within EU countries there remain areas of unharmonised law the significance of which to international economic collaboration should not be overlooked. The work by Lange fills a large gap here.
The comprehensive review of sign protection law in Switzerland and the industrialised nations of Russia, China, Japan and Canada also provide the international investor with strategically important guidance with decisions. It shows that, despite all the differences in the detail, vital issues – such as the assignment and licensing of trademarks, on the one hand, and trade designations, on the other – tend to find a common solution. The Italian legislature very quickly put a stop to the risk of consumers being deceived as to the origin and quality of goods, which was something associated with the grant of licences to product designations; this is now also countered by § 5 II of the UWG [German Unfair Competition Act] implementing Directive 2005/29/EC concerning unfair commercial practices. We learn that under Article 23 II of the Italian c.p.i. the legality of non-exclusive licences is contingent upon the goods marked by the licensee corresponding to those of the trademark proprietor.
It would be interesting to discover what the position in the various countries might be as regards the continuation of licences when a trademark proprietor becomes insolvent – a topic that has not yet been taken up by the national legislature despite a great deal of preliminary work having been undertaken (§ 108 InsO-E [Insolvency Bill]; cf. also in this respect Ullmann, Mitt. 2008, 49). The handbook ends with two chapters of importance to internationally expanding companies: one on marketing – also confronting the "Chinese challenge" – and the other on evaluation of trademarks, with examples of trademark valuations being given.
The work by Lange shows that, given economic globalisation, there is a dynamic integration factor inherent in the law on distinguishing products, services and businesses, which can also ultimately lead to a universal legal order. This international handbook on sign protection should not just be consulted by multinational companies and others applying the law; it should also be a work of reference in political circles responsible for the regulation of world trade.
Dr Eike Ullmann, Presiding Judge of the Federal Court of Justice (retired) Karlsruhe
In 2006, based on his decades of experience as a lawyer in the trademark and sign protection field, the editor produced a systematic presentation of this area of German law that has been considered by leading reviewers and representatives of the German judiciary to be an excellent benchmark practitioners' handbook (see Erdmann, GRUR 2006, 835 and Teplitzky, WRP 2006, 489). Lange now consolidates this work with publication of a follow-up handbook from a comparative law aspect. This project originates in the irrefutable need in business practice for international protection for marks and signs due to globalisation of the economy.
This means that there is a need for legal practitioners and patent agents, as well as in-house corporate lawyers, to obtain quick and reliable information on the law in foreign countries, a need which is met in this new work by Lange in the same excellent manner that has already been demonstrated in his former work on German law.
The first part of his new work therefore consists of a total of 14 chapters setting out the legal position in that same number of countries – with Germany as the yardstick – that is to say, in Belgium, China, France, Italy, Japan, Canada, the Netherlands, Austria, Portugal, Russia, Switzerland, the Czech Republic and the United Kingdom. One particularly welcome element is that it would appear that the editor, instead of claiming to have the relevant knowledge himself, has attracted the participation of acknowledged experts in each of the respective countries, thus acting as editor of the individual country contributions. However, all of the country contributions follow the same proven pattern as the editor's overall work, thereby making comparison between the various legal systems easier (types of signs, legislative provisions and their relationship with each other, foundation of protection, proprietorship of rights, transfer and licensing, expiry of protection, conflict groups, scope of protection, available defences, rights against infringements, court action and strategy to safeguard branding). The list of signs covered is also uniform – that is to say, trademarks, trade names, titles, domain names, indications of geographical origin and various other types of signs.
In addition to the legal side the new work by Lange also includes two other elements that are also vital to a successful international sign-protection strategy – namely, presentations on brand development and management as a marketing instrument plus brand valuations, for which the editor was also able to call on expert authors.
Dr. Paul Katzenberger
Dr. iur., retired Head of Research Group at the Max Planck Institute for Intellectual Property, Competition and Tax Law, Department of Intellectual Property and Competition Law, Lawyer, Munich.
Reviews from Switzerland:
This international handbook appeared last year as a follow-up to the established "Trade Mark and Signs Protection Handbook" on German law from the same publishers.
It covers the law on sign protection in Belgium, China, Germany, France, Italy, Japan, Canada, the Netherlands, Austria, Portugal, Russia, Switzerland, the Czech Republic and the United Kingdom. For each of the 14 countries the law on sign protection is summarised with a comprehensive commentary. The authors of the commentaries for the individual countries are competent and respected experts; the commentary for Switzerland is provided by Eugen Marbach.
It is very practical, not to say unusual, to find commentaries on the sign protection law of 14 countries in a single book – let alone in the German language.
The uniqueness of this handbook lies, however, in the fact that all of the commentaries on each of the countries follow exactly the same pattern. It displays that very clear and detailed structure that the publisher has tried and tested over many years in its German handbook.
Its uniform structure offers an immense advantage in that certain questions of the law on sign protection in one country can be immediately looked up and compared with the law in another. Although it is not yet possible to jump from one country's commentary to another with the click of a mouse, the relevant sections can be found in seconds.
For example, if you want to know whether a trademark is created by registration or by use you just have to look up the chapter for the relevant country headed "§ 3 Foundation of protection / Requirements" and you will then find the answer under "A. Trademarks". Whilst it is common knowledge that trademark protection is created in Switzerland by registration, in Italy, however, trademarks can also be acquired by mere usage.
Trademark disputes today are seldom confined to just one country and will often be played out on an international stage. Despite all of the standardisation and harmonisation of trademark law that has taken place, there are still some considerable differences in the detail. In an international dispute therefore the legal position in the various countries concerned can be very different. One is instinctively inclined to assume that the law in other countries will be more or less the same as that at home. However, in other countries there might be other aspects to take into consideration, such as the aforementioned first usage in Italy.
Of course, the handbook will not obviate the need to consult experts abroad but in order to comprehensively and accurately understand their advice a basic knowledge of the foreign law on sign protection and of its special features is a must. Only someone who understands what factors and legal issues might be relevant can adequately set out the facts of a case for a foreign expert and ask the right questions. This is the only way to obtain both correct and comprehensive legal advice about a particular country and provide appropriate advice to clients.
Isler & Pedrazzini AG
sic! 4/2010 (Journal for Intellectual Property, Information and Competition)