CPD Course:
Trade Mark Challenges
and Opportunities
in Times of
Social Media and
Non-Conventional Marks

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.

Trade mark law is facing the following challenges and opportunities in the era of social media and non-conventional trade marks:

• User-generated content, online service providers, such as social media and search engines, can complicate or simplify life for brand/trade mark holders when faced with unauthorized use of their trade marks;
• Non-conventional trade marks provide brand/trade mark holders with unprecedented opportunities to distinguish brands even in mature markets, but getting them is not an easy task.

Non-conventional trade marks, such as colour trade marks, as three-dimensional trade marks, sound trade marks, scent trade marks, taste trade marks and hologram trade mark will be introduced and the problems of getting them registered will also be discussed.

• Consider why safe harbours that immunize online service providers against copyright and trade mark infringement are ineffective;
• Consider why strict liability and automatic enforcement is preferable and inevitable in the era of social media;
• Realize that courts and social media are moving towards that direction, and that higher filter standards are prescribed for online service providers;
• Review the different non-conventional trade marks such as colour marks, three-dimensional marks, sound, taste and scent marks;
• Identify the distinctinveness and representability challenges and solutions for non-conventional trade marks;
• Identify the legal developments in the EU, which provide opportunities for non-conventional trade marks;
• Realize the advantages and disadvantages of the Nice Classification system and the problems related to trade mark extensions.