CPD Course:
Transnational
Trademark Issues:
Observations
from a Century of
Budweiser Conflicts

Dr. Danny Friedmann is an award-winning researcher and lecturer of Intellectual Property Law based in Hong Kong.

His monograph is called 'Trademarks and Social Media, Towards Algorithmic Justice' (Edward Elgar Publishing, September 2015).  His peer-reviewed articles are published by Journal of Intellectual Property Law and Practice (Oxford University Press), European Intellectual Property Review, Benelux Trade Marks and Design Rights (BMM) Bulletin and GRUR Int.  He also published in the California Western International Law Journal.

His book chapter on Google and China was quoted by the Advocate General of the Court of Justice of the European Union in Google Spain C-131/12 in 2013.

Friedmann has been involved with WILMap of the Stanford Center for Internet and Society since 2014.  His blog called IP Dragon, which he founded in 2005, is widely read.  Friedmann also publishes regularly in media, such as IP Kat, IP-Watch, SCMP and Hong Kong Free Press.

He was invited as International Guest Speaker of the EU Centre for Global Affairs at the University of Adelaide in October 2016, and Castetter Visiting Scholar at California Western School of Law in San Diego, in July 2016.  He is a Principal Commentator and External Examiner at the University of Macau since 2016.  In October 2017 he will be a visiting scholar at the University of Macau.

This course will provide an insight into transnational trademark law.  The trademark law in Hong Kong will be used as a reference point: to clarify the differences and similarities between the Hong Kong, EU and US systems.

The course will illustrate transnational trademark law in the process via the ongoing legal battles between the US and Czech beer breweries in many jurisdictions all over the world.  Rationales of trademark law, trademark categories and new challenges for the trademark are building blocks to comprehend the cases that will be used.  The case law, including that of the CJEU, makes clear that beside trademark law, EU regulations about Geographical Indications, the Lisbon Agreement to Protect Appellations of Origin, contract law and bilateral agreements are all relevant factors to the matter.

• Rationales of Trademark Law
1. By the end of this course the participants will know the rationales of trademark law, the essential function of trademark against confusion or a likelihood of confusion: source of origin, quality and product distinctiveness and their derivatives; the doctrines of sponsorship and affiliation confusion, initial-interest confusion, post sale confusion and reverse confusion will be all explained.
2. Beside the "essential" function, the participants will also learn about the communication, advertisement and investment functions, and the measures against trademark dilution or a likelihood of trademark dilution, which can be crucial for the trademark proprietor.  There are two branches of the trademark dilution doctrine, which will be illustrated by relevant case law: trademark dilution by blurring and trademark dilution by tarnishment.


• Characteristics of Trademarks
1. Trademarks will be discussed in regard to different categories, each having very different characteristics: registered/unregistered, inherently distinctive/acquired distinctiveness, well-known/famous/reputable, collective/certification, appellation of origin/geographical indication.


• New Challenges for the Trademark
1. First the history of trademark infringement and trademark dilution will be highlighted in order to better understand the present situation.  This course will then elaborate on the challenges of two fundaments of trademark law; territoriality principle in regard to globalisation and the internet, and the specialty principle and the problems related to the Nice Classification. Alternative systems will also be reviewed.


• Relevant Treaty Law for Geographical Indications
1. The course will explicate how collective/certification trademarks, Paris Convention, TRIPS and Lisbon Agreements are relevant for the protection of Geographical Indications, the similarities and differences in the different jurisdictions will be discussed.  The participants will understand the relation and conflict between a normal trademark and a Geographical Indication.


• European Intellectual Property Law
1. This course includes a primer on EU IP law; the participants will understand the difference between regulations and directives, and how the National Courts of the EU, the European Court of Justice/Court of Justice of the European Union and the Advocate General of the CJEU and their relationships.


• The Budweiser Cases
1. After comprehending the aforementioned building blocks of the course, the participants will fully appreciate and comprehend the rich case law on the manifold Budweiser legal conflicts which will be reviewed.  By the end of this course, the participants will have an up-to-date knowledge of the ECJ/CJEU decisions and even an ECHR (human rights) judgment in regard to the Budweiser cases.