Executive Summary
The 37th Global Digital Encounter (GDE) explored the evolving challenges and opportunities in protecting and enforcing trademarks and designs in the digital age. With digital transformation reshaping the way businesses operate and innovate, the session examined how traditional intellectual property frameworks must adapt to address the complexities of digital assets and environments.
Objectives:
- Examine the impact of digital transformation on trademarks and designs.
- Explore legislative adaptations and practical strategies for protecting digital and physical assets.
- Discuss global trends and case law shaping the enforcement of digital IP rights.
Panel Members:
- Juna Shehu: Director General, INDICAM.
- Virginia Melgar: Chairperson, EUIPO 5th Appeals Board.
- Moderator: Rubén Cano Pérez: Academic Fellow, Bocconi University, Milan, and Baker McKenzie, Madrid.
Organisers’ Contributions:
- Laurent Manderieux: Professor of Intellectual Property Law at Bocconi University and Director of TIPSA. Co-Director of the Global Digital Encounters.
- Javier Fernández-Lasquetty: Professor of Law at IE University, Partner at ELZABURU, and coordinator of the GDE series.
- Manuel Desantes: Co-Director of the Global Digital Encounters.
Key Discussions
1. Opening Perspectives: The Digital Transformation of IP
- Laurent Manderieux highlighted the critical role of trademarks and designs in bridging the physical and digital worlds, pointing out that businesses increasingly depend on these assets to maintain relevance in the digital economy demands not only legal innovation but also a shift in how businesses strategize their IP protection.
2. The Growing Importance of Digital Trademarks and Designs
- Rubén Cano Pérez opened the discussion by framing the issue as part of a broader evolution that began with the advent of the internet. He stressed that while the challenges of digital IP are not entirely new, they have accelerated in recent years due to the proliferation of new business models, products, and services.
- Juna Shehu discussed the importance of registering digital trademarks under Class 9 for virtual goods, NFTs, and downloadable digital assets, enabling brands to protect their identities in new markets like the Metaverse.
- Virginia Melgar outlined legislative changes, such as the removal of the graphic representation requirement, which have allowed for the registration of multimedia trademarks and digital designs.
3. Challenges of Classification and Enforcement in the Digital Realm
- Rubén Cano Pérez raised questions about whether trademarks for virtual goods, such as perfumes in the Metaverse, should be classified differently from their physical counterparts. He emphasized the need for clarity in classification to avoid unnecessary disputes and ensure enforceability.
- Virginia Melgar acknowledged the classification debates, noting that digital goods are typically placed in Class 9, but this approach may evolve as the Metaverse economy develops. She highlighted ongoing case law addressing this issue, such as the Glashütte case on virtual watches.
4. Proving Use and Enforcement Strategies
- Rubén Cano Pérez stressed the importance of adapting proof of use methods to reflect digital activities, such as social media engagement and website interactions. He noted that collecting robust digital evidence is essential for enforcing trademarks in global markets.
- Juna Shehu explained how businesses are increasingly using digital tools, including screenshots, chatbots, and online marketing data, as evidence of trademark use. These proofs are gaining acceptance in courts, although they present unique challenges for SMEs.
- Virginia Melgar discussed key cases like Mood Media and VAPIX, which have set precedents for the use of social media and websites as evidence. However, she cautioned that digital proofs must meet traditional standards of distinctiveness and territorial relevance.
5. Case Study: Juventus Football Club and NFTs
- Rubén Cano Pérez highlighted the landmark Juventus Football Club case, where trademarks were enforced against unauthorized NFT use despite the absence of registration for digital goods. He pointed out the significance of reputation and merchandising activity in securing such outcomes.
- Juna Shehu elaborated on the legal implications, emphasizing that the case underscores the potential for enforcing digital trademarks based on reputation and market presence, even in unregistered categories.
6. Legislative Adaptations and the New Design Package
- Rubén Cano Pérez commended the EU Design Package, which modernizes design definitions to include animation and non-physical items. He stressed the importance of harmonized legislative efforts to keep pace with the digital economy.
- Juna Shehu and Virginia Melgar highlighted the package as a significant step forward in empowering rightsholders to protect their digital assets, but noted that further updates to trademark legislation are necessary to meet evolving needs.
7. Future Directions for Digital IP
- Rubén Cano Pérez concluded by emphasizing that businesses must integrate IP strategies across legal, marketing, and operational teams to navigate the digital economy effectively. He stressed the need for proactive approaches tailored to specific markets and products.
- Laurent Manderieux and Manuel Desantes echoed these sentiments, highlighting the need for international collaboration and innovative tools to address the complexities of digital IP management.
Conclusion
The session concluded that protecting and enforcing digital trademarks and designs is both a challenge and an opportunity in the digital age. Laurent Manderieux and Rubén Cano Pérez emphasized the importance of aligning legal frameworks with market realities while ensuring robust enforcement mechanisms. Manuel Desantes called for abandoning outdated, territory-focused IP models in favor of more globally aligned, digital-first strategies.
The speakers collectively expressed optimism that legislative advancements, such as the EU Design Package, alongside adaptive business strategies, will empower rightsholders to thrive in the evolving digital landscape.
