The Big Bang: When Trademarks Collide with Other IP Rights

Recorded On: 05/22/2017

Pre-recorded from INTA's 2017 Annual Meeting. 

Unlike other IP rights that are subject to time-limited protection, the potentially infinite protection that trademarks enjoy makes them a valuable tool for extending the IP protection of a product. This protection does, however, have its limits. This session will explore how different regions of the world address the conflict between (i) trademark protection for a product and (ii) patent, industrial design, and copyright protection for the same product. Topics covered will include:

  • Differences in rationales and procedures for protecting trademarks vs. other IP rights
  • Claiming trademark protection for product get-up with functional aspects
  • Trademark rights in an embodiment disclosed, but not claimed, in a patent
  • The interplay of and the clash between trademark and industrial design protection

Anthony M. Prenol (Moderator)

Blakes (Canada)

Iain Connor

Pinsent Masons LLP (United Kingdom)

Glenn Gundersen

Dechert LLP (United States)

Michael Williams

Gilbert + Tobin (Australia)


Open to view video.
Open to view video.