Anti-Counterfeiting is the main topic of this episode. We interview Kristina Montanaro – Vice President of Legal Affairs & Strategic Planning of the International AntiCounterfeiting Coalition (IACC). We also tell you more about the newly released EU Action Plan on the enforcement of Intellectual Property Rights. Finally, we show you a useful online tool to determine the similarity of goods and services.

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IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 11 – September 19, 2014

 

RC = Rolf Claessen

KM = Kristina Montanaro

KS = Kenneth Suzan

 

 

This is Jeanine Percival Wright, the Director of Legal Affairs for Intellectual Property and Litigation with True Religion Brand Jeans in beautiful Los Angeles, California. You are listening to IP Fridays. Thanks for the great podcast guys.

 

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Today’s show is mostly dedicated to anti-counterfeiting measures. We will talk about the new EU action plan on enforcement of intellectual property rights. We have the Vice President of Legal Affairs of the IACC, Kristina Montanaro. She will tell us about the work the IACC is doing. And then we also tell you about a little helpful tool for comparing the goods and services of trademarks and we will tell you about that tool right now.

 

OHIM, many people call it the European Patent and Trademark Office, is providing a really cool tool for comparing the goods and services of trademarks. The tool is simply called “Similarity” and the link is in the show notes. Many offices are sharing their decisions in opposition proceedings to feed this database. Among them is the OHIM, and the relevant offices from Bulgaria, Cyprus, Estonia, Spain, the UK, Greece, Latvia, Malta, Portugal, Romania and many offices will join in the near future.

 

In the basic search interface you just type in two different terms and then the tool will tell you if there are any decisions in these countries where these terms were compared. Let’s say you are comparing advertising services to public relations. You could just enter these two terms and then it would spit out a list of all the decisions rendered about these two terms. So, I find this really useful and I really hope that the German Patent and Trademark Office will join soon.

 

There is also an advanced search interface and you can enter that when you click on “compare terms”. You can limit the different terms by Nice classes. You can also search in particular languages, or the degree of similarity, or you can limit the search by certain kinds of offices and in theory you could also compare lists of terms so you can paste in the list of goods and services of the one trademark and the list of goods and services of the other trademark and then hit “search”. In my personal experience, I had very divided results. The algorithm doesn’t really seem to match the terms very intelligently but I am sure OHIM is working on this very hard. If you want to learn more about this tool, just go to www.ipfridays.com/similarity.

 

We are very excited to have Kristina Montanaro on the show today. She is Vice President of Legal Affairs and Strategic Planning for the IACC and Ken had the chance to interview her. So Ken, take it away…

 

KEN SUZAN’S INTERVIEW WITH KRISTINA MONTANARO, VICE PRESIDENT OF LEGAL AFFAIRS AND STRATEGIC PLANNING OF THE INTERNATIONAL ANTI-C...