Brand & New

A frightening new threat cascades around the world, upending familiar routines, disrupting the global economy, and endangering lives. While all multi-layered impacts of the Covid19 pandemic have yet to unfold, we already know that we are experiencing a major health crisis with significant global economic and social fallouts.

Our guest today, Peter McAleese, is a partner with the intellectual property firm Akran, based in Rome, Italy, one of the nations worst hit by the pandemic. Peter deals mainly with trademark prosecution and consulting as well as litigation support for Italian and international clients. In addition, Peter has been a member of the Italian Institute of Trademark Attorneys since 2005. He is also the co-Chair of INTA’s European Global Advisory Council and a member of the right of publicity committee. 

In this very special episode, we discuss with him what it means to him to be a lawyer in such trying times, specific legal risks to be on the watch for. How to keep going, while trying to mitigate effects of the crisis and with resilience?

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment.

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet
Contribution of M. Halle & S. Lagedamond - Music by JD Beats

FOR MORE INFORMATION, VISIT INTA.ORG

To go further:
About Peter McAleese (link to https://www.linkedin.com/in/peter-mcaleese-b985b78/?originalSubdomain=it)

Also of interest:

- Lexology: Article about Covid-19 and Intellectual Property Law (link to https://www.lexology.com/library/detail.aspx?g=67dfcc56-c968-40ed-aef7-1ba00e42a926)

- Forbes: "Covid-19 will turbocharge legal industry transformation" (link to https://www.forbes.com/sites/markcohen1/2020/03/24/covid-19-will-turbocharge-legal-industry-transformation/#6b1f08801195)

- Yale University: "Coronavirus holds key lessons on how to fight climate change" (link to https://e360.yale.edu/features/coronavirus-holds-key-lessons-on-how-to-fight-climate-change)

- US News: "The impact of the coronavirus on legal education" (link to https://www.usnews.com/education/blogs/law-admissions-lowdown/articles/the-impact-of-the-coronavirus-on-legal-education)

General Counsel no longer are limited to a reactive role overseeing legal operations farmed out to law firms, but instead are key members of the corporate decision-making team. This is a major shift that has occurred  over the past decades: General Counsel are leaders, innovators, decision makers at the highest levels, far beyond being technicians in the law.  They also have to be agile, in an ever-evolving environment. 

Let’s take technology as an example. Tech has “invaded” legal practice over the last decade. From sophisticated legal analytics technologies in e-discovery tools or prior rights search software, to “smart contract” protocols to facilitate negotiations, mobile collaborative platforms, or even high-end IT security features aimed at protecting files integrity, lawyering does not look quite like it did 20 years ago!

This is part of the discussion  in this episode with Aurélien Hamelle, Group General Counsel of Total, Paris, France. The French multinational energy company is one of the six supermajor oil companies in the world, with an adjusted net income at US $11.8 billion in 2019, around 100,000 employees, and active in more than 130 countries. Since 2016, Mr. Hamelle has overseen   a team of around 500 lawyers at Total, including an important intellectual property department. Previously, he was a regulatory and dispute resolution lawyer with various firms, including being a partner at both Metzner Associés and Allen & Overy. He will share with us his vision on what the legal leadership of tomorrow means, in terms of relevant skills—from openness to innovation to new perspectives on performance and knowledge management.

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment.

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet - Contribution of M. Halle & S. Lagedamond - Music by JD Beats

FOR MORE INFORMATION, VISIT INTA.ORG

To go further:
About Aurélien Hamelle (link to https://www.linkedin.com/in/aurelien-hamelle-5775271/?locale=fr_FR)

Also of interest:
- Harvard Law Today—In the Driver’s Seat: The changing role of the general counsel
(link to https://today.law.harvard.edu/feature/in-the-drivers-seat-the-changing-role-of-the-general-counsel/)
- INTA Daily News: What Brands Want in a Shifting Legal Services Landscape (link to https://www.inta.org/PDF%20Library/2019Daily/2019DailyNews_Day4.pdf)
- International Trademark Association’s “The Women’s LeadershIP Initiative”  (link to https://www.inta.org/Press/Pages/The_Womens_LeadershIP_Initiative_0320.aspx)
- Deloitte: The legal department of the future- (link to https://www2.d

The 2020 Global Gender Gap Report, published by the World Economic Forum, shows that gender parity will not be attained for 99.5 years.  In the intellectual property (IP) industry, even though genders are similarly creative and innovative, it is not a secret to say that the field is predominantly male-oriented.  Women are, for instance, underrepresented in patenting; one study has even projected that women will not see parity in patenting until 2092!  This issue is addressed by the World Intellectual Property Organization (WIPO), which is committed to promoting gender equality and women’s empowerment, as well as by many other local and international initiatives. 

Our guest today will help us to understand women’s positions when it comes to IP both as an industry and as a practice. Ayala Deutsch is the Executive Vice President and Deputy General Counsel at NBA Properties Inc., based in NYC. The National Basketball Association is widely considered the premier professional basketball league in the world, composed of 30 teams, and is one of the four major professional sports leagues in the United States and Canada. She joined the NBA in 1998 and currently is responsible for managing commercial legal affairs and IP matters for the NBA and its affiliated leagues, including the global acquisition, protection and enforcement of IP rights belonging to the NBA, the Women’s National Basketball Association (WNBA), the NBA G League, the NBA 2K League, and USA Basketball.  

Ms. Deutsch is also the INTA 2020 President, and will tell us more about her priorities during her tenure as president. In line with Ms. Deutsch’s priorities for her term as INTA’s 2020 President, the Association is proud to launch The Women’s LeadershIP Initiative, a subject held close to her heart. The Initiative—rolled out on International Women’s Day, March 8, 2020—is designed to foster the development of strong leadership skills for women in the IP field, acknowledging the contribution of all-star female professionals to the IP industry while also empowering women to advance their IP careers to the next level. As part of INTA’s strategic direction and focus, the Women’s LeadershIP Initiative will look at where and how the Association may further support and add value to its members in the long run. It will involve the organization of workshops promoting the exchange of views and experiences among women on issues like gender and opportunities, and career development or work-life balance, as well as the development of targeted content to champion women’s talent and professional growth.

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment. 

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet

To go further:
About Ayala Deutsch (link to https://www.linkedin.com/in/ayala-deutsch-b410418/,  https://www.inta.org/Officers/Pages/Deutsch.aspx and https://careers.nba.com/executive/ayala-deutsch/)
INTA Press Release: International Trademark Association Elects Ayala Deutsch of NBA Properties as 2020 President  (link to: https://www.inta.org/Press/Pages/2020_President_Ayala_Deutsch_1119.aspx)
Video: Meet INTA’s 2020 President Ayala Deutsch, INTA (link to: 

This episode is part of a special series of interviews with candidates for the position of Director General of the World Intellectual Property Organization.

Intellectual property (IP) rights have always been challenged by new technologies and new market trends, but the pace and depth of these challenges have increased over the last decade or so. In particular, groundbreaking technologies such as artificial intelligence, the Internet of Things, or even life science innovations have a disruptive impact on traditional IP legal concepts and systems. 

Our guest shares his views on the future of the IP legal system and its governance, at a time when the number of patents and trademarks registrations indicate a rising demand for IP rights globally, confirming a global shift towards an “economy of knowledge”, with entirely new business lines thriving without almost any tangible assets – think software and algorithms, operating systems, or social media. 

Ivo Gagliuffi Piercechi is a Peruvian lawyer with more than 20 years of experience in intellectual property, competition, and consumer law in both the private and public sectors. In 2016, the Peruvian government appointed him Chairman of the Board of Directors of the National Institute for the Defense of Free Competition and the Protection of Intellectual Property (INDECOPI), a public agency in charge of IP competition and consumer protection. He is also one of the remaining six candidates for the position of WIPO’s Director General. The Director General will be nominated in March 2020 and appointed in May 2020, for a term beginning October 1, 2020.

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment.

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet
Contribution of M. Halle & S. Lagedamond - Music by JD Beats

FOR MORE INFORMATION, VISIT INTA.ORG

To go further:
- About Ivo Gagliuffi (link to https://www.wipo.int/export/sites/www/about-wipo/en/elections2020/circular3952.pdf and https://www.indecopi.gob.pe/documents/1902049/3608052/Ivo+Gagliuffi+Piercechi.pdf/47d987b0-f1bc-a204-f2bd-bb2bd2ca1cf4)

Also of interest:
- Nomination of Ivo Gagliuffi Piercechi for WIPO Director General (link to https://www.wipo.int/export/sites/www/about-wipo/en/elections2020/circular3952.pdf)
- WIPO official website (link to https://www.wipo.int/portal/en/)
- WIPO 2020 Election of the Director General (link to https://www.wipo.int/about-wipo/en/elections2020/ and https://www.worldtrademarkreview.com/governmentpolicy/inside-wipo-director-general-candidate-interviews-exclusive-guest-post)
- INTA Impact Study: Trademarks in Latin America: Economic Impact in 10 Latin America and Caribbean Countries   (link to: http://www.inta.org/Communications/Pages/Impact-Studies.aspx)
- World Trademark Review candidate interviews  (link to https://www.worldtrademarkreview.com/governmentpolicy/inside-wipo-director-general-candidate-interviews-exclusive&

This episode is part of a special series of interviews with candidates for the position of Director General of the World Intellectual Property Organization.  Repeat of earlier interview conducted prior to announcement of Daren Tang's candidacy 

"Innovation, technology and digitalisation are now key drivers of global economic growth, and enterprise value will increasingly be in intangible assets such as IP, data and know-how"
These words come from Daren Tang, the Chief Executive of the Intellectual Property Office of Singapore (IPOS), that has reached the No. 2 spot for being the most innovative IP office in the world (and Asia's most innovative office), according to a study published by World Trademark Review in February 2019.  Daren is the guest of this new episode of Brand&New. Before he took over the IP Office, he was taking care of its registry.  As an expert in international law, he has been involved in the negotiation of key free-trade agreements, between Singapore and the US, and also the European Union.  Considering, as he says, that “IP is territorial, but innovation is global”, he shares with us his views about the goals and the general role that an IP Office shall play today as well as tomorrow in a small country that is one of the most stable and open economies in the world.
Daren is also one of the remaining six candidates for the position of WIPO’s Director General. The Director General will be nominated in March 2020 and appointed in May 2020, for a term beginning October 1, 2020.

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment.

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet
Contribution of M. Halle & S. Lagedamond - Music by JD Beats

FOR MORE INFORMATION, VISIT INTA.ORG
To go further:
About Daren Tang (link to https://www.linkedin.com/in/daren-tang-5a568759/?originalSubdomain=sg and https://www.wipo.int/export/sites/www/about-wipo/en/elections2020/circular3937.pdf)
About IPOS (link to https://www.ipos.gov.sg)

Also of interest:
- WIPO official website (link to https://www.wipo.int/portal/en/)
- WIPO 2020 Election of the Director General (link to https://www.wipo.int/about-wipo/en/elections2020/ and https://www.worldtrademarkreview.com/governmentpolicy/inside-wipo-director-general-candidate-interviews-exclusive-guest-post)
- Articles about Singapore IP Office and the 2019 IP Office Innovation Ranking (link to https://www.worldtrademarkreview.com/governmentpolicy/eu-chile-singapore-and-spain-ip-offices-named-most-innovative-world and https://www.opengovasia.com/singapore-most-innovative-intellectual-property-office-in-asia/
- INTA Bulletin: Enforcing Trademarks and Copyright at the Border of Singapore  (link to: https://www.inta.org/INTABulletin/Pages/Singapore_Customs_Assistant_Head_Edward_Yue_Interview_7401.aspx

This episode is part of a special series of interviews with candidates for the position of Director General of the World Intellectual Property Organization.

The fundamental goals of the intellectual property (IP) system, as designed for the industrial era about 100 years ago, have always been to foster creativity and innovation, by granting monopoly rights, providing them with a sustainable economic basis. 

IP rights have always been challenged by new technologies, new market trends, but the pace and depth of these challenges have increased over the last decade or so. In particular, groundbreaking technologies such as artificial intelligence, the Internet of Things, or even life science innovations have a disruptive impact on traditional IP legal concepts and systems. For instance, how to create property rights in an algorithm that is constantly changing. 

Our guest shares his views on the future of the IP legal system and its governance, at a time when the number of patents and trademarks registrations indicate  a rising demand for IP rights globally, confirming  a global shift towards an “economy of knowledge,” with entirely new business lines thriving without almost any tangible assets – think software and algorithms, operating systems, or social media. 

Marco Matias Alemán is a Colombian lawyer who has spent the last 28 years in the IP world, as an IP attorney in a law firm, as Head of the Colombian Industrial Property Office (1995-1998) and at the policy level, holding several positions at the World Intellectual Property Office (WIPO) in Geneva since 1999.  Currently, he is  the  Director of the Patent Law Division at WIPO, and is also one of the remaining six candidates for the position of WIPO’s Director General. The Director General will be nominated in March 2020 and appointed in May 2020, for a term beginning October 1, 2020.

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment.

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet
Contribution of M. Halle & S. Lagedamond - Music by JD Beats

FOR MORE INFORMATION, VISIT INTA.ORG

To go further:
- About Marco M Alemán (link to https://www.linkedin.com/in/marco-m-alemán/?originalSubdomain=ch, https://www.wipo.int/export/sites/www/about-wipo/en/elections2020/circular3946.pdf and https://aleman.world)

Also of interest:
- WIPO official website (link to https://www.wipo.int/portal/en/)
- WIPO 2020 Election of the Director General (link to https://www.wipo.int/about-wipo/en/elections2020/ and https://www.worldtrademarkreview.com/governmentpolicy/inside-wipo-director-general-candidate-interviews-exclusive-guest-post)
- INTA Impact Study: Trademarks in Latin America: Economic Impact in 10 Latin America and Caribbean Countries   (link to: http://www.inta.org/Communications/Pages/Impact-Studies.aspx)

Trademark law and the First Amendment to the U.S. Constitution seem from the outset to have a complex and conflicted relationship. Indeed, while protection of the right to freedom of expression can encourage the creation and dissemination of ideas and information, government protection of trademarks can suppress and punish expression that incorporates another's registered trademark.  Even further, trademark law sometimes prevents registration of signs that would otherwise be considered speech protected by the First Amendment, with numerous and strict conditions on what may or may not be registered. 

Lisa P. Ramsey, Professor of Law at the University of San Diego School of Law, who teaches in the areas of trademark law and intellectual property in general, will explain the interactions between free expression and trademark law. Lisa’s most recent articles in the Houston Law Review, The Trademark Reporter, and other publications put the focus on the potential conflict between trademark and free expression rights in national and international laws; and a paper published by Oxford University Press explored nontraditional trademarks and inherently valuable expression.

She notably talks about two recent groundbreaking U.S. Supreme Court cases right on point, namely Matal v. Tam (2017) and Iancu v. Brunetti (2019) about the right for the government to deny trademark registration to certain categories of trademarks “potentially disparaging” marks and “immoral or scandalous” marks, respectively.

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment.

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet
Contribution of M. Halle & S. Lagedamond - Music by JD Beats

FOR MORE INFORMATION, VISIT INTA.ORG

To go further:
About Lisa Ramsey (link to http://www.lisapramsey.com)

Also of interest:
- Article about Lee v. Tam decision (link to https://www.scotusblog.com/case-files/cases/lee-v-tam/)

- INTA statement re: Amicus Brief in the case of Lee v. Tam (link to: https://www.inta.org/Press/Pages/Lee_v_Tam_Amicus_Brief_Media_Statement.aspx)

- Opinions/articles about the Iancu v. Brunetti decision (link to https://www.supremecourt.gov/opinions/18pdf/18-302_e29g.pdf, https://www.scotusblog.com/2019/06/long-time-prohibition-on-registration-of-scandalous-and-immoral-trademarks-is-struck-down/ and https://www.americanbar.org/groups/litigation/committees/intellectual-property/practice/2019/iancu-v-brunetti-trademark-registration/)

- Articles written by Lisa Ramsey about free speech and trademark protection - link to:
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2860302, https://papers.ssrn.com/sol3/papers.cfm?abstract_id=728572 https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1692954
- https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3310854
- https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3104939
- https://globa

Over the last decades, the domain of trademark law and the scope of trademark protection have grown exponentially, and a wide variety of nontraditional marks, including color, sound, smell, and shape marks, can now be registered in many jurisdictions. However, this continuous extension of trademark protection has led to debate and controversies about the impact of  non-traditional marks on fundamental rights, such as freedom of competition and freedom of expression, and also on the intellectual property (IP) system as a whole.
These tensions have led to an increasing number of administrative and judicial decisions across several jurisdictions, which address the validity of these marks.
Irene Calboli has analyzed in depth and with an interdisciplinary approach the questions raised by the acceptance of nontraditional trademarks. Based in Singapore, she is Professor of Law at Texas A&M University School of Law (Dallas/Fort Worth, Texas, USA); fellow at the Transatlantic Technology Law Forum, a joint international initiative of Stanford Law School (USA) and the University of Vienna School of Law (Austria); and a visiting professor at several academic institutions worldwide.  A dedicated teacher and a prolific scholar, she has published articles and books in the area of intellectual property law, including the book  “The Protection of Non-Traditional Trademarks, Critical Perspectives” in 2018 with Martin Senftleben.

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment.

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet
Contribution of M. Halle & S. Lagedamond - Music by JD Beats

FOR MORE INFORMATION, VISIT INTA.ORG
To go further:
About Professor Irene Calboli (link to https://www.linkedin.com/in/irene-calboli-5456813/)

Also of interest:
The Protection of Non Traditional Trade Marks: Critical Perspectives, by Irene Calboli and Martin Senftleben (link to https://www.amazon.com/Protection-Non-Traditional-Trade-Marks/dp/0198826575)
INTA Topic Portal about Non-Traditional Trademarks (link to https://www.inta.org/Advocacy/Pages/Non-traditionalMarks.aspx)
The Trademark Reporter (May-June 2019)—Acquired Distinctiveness in the European Union: When Nontraditional Marks Meet at (Fragmented) Single Market  (link to: https://www.inta.org/TMR/Pages/vol109_no3_a1_porangaba.aspx)
INTA Board Resolutions on Nontraditional Marks (link to https://www.inta.org/Advocacy/Pages/BoardResolutions.aspx)
INTA Bulletin—Committee Spotlight: Non-Traditional Marks Committee (link to: https://www.inta.org/INTABulletin/Pages/comm_spotlight_02_7405.aspx)
INTA 2020 Annual Meeting, April 25-29, 2020, Singapore  (link to: https://www.inta.org/2020Annual/Pages/Home.aspx)
WIPO Magazine about Non-Traditional Trademarks (link to https://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html)

Even though Africa seems like a late bloomer when it comes to the adoption of cryptocurrencies, this continent is widely converted to mobile money, representing over 50 percent of the world’s mobile money services. For instance, Google search trend shows that the region showing the highest interest in the term "bitcoin" is Africa, and particularly Kenya, Nigeria and South Africa, even though this interest is predominantly limited to trading activities on exchanges. 

Brenda Kahari, founder of the firm BW Kahari, has been a lawyer specialized in intellectual property and commercial transactions in Harare, Zimbabwe, for more than 30 years. Thanks to her deep knowledge of the economic, social and of course legal dynamics in Africa, she gives us keys to understand cryptocurrencies and the applications of the blockchain in this continent, the opportunities they represent and the legal and IP challenges occurred.

Every two weeks, on Tuesday, Brand & New gives the floor to inspiring individuals, with a 360-degree vision, to help brand owners, intellectual property lawyers, and marketing and finance professionals (and beyond!) stay curious and agile in an ever-evolving business environment.

Brand & New is a production of the International Trademark Association
Hosted by Audrey Dauvet
Contribution of M. Halle & S. Lagedamond - Music by JD Beats

FOR MORE INFORMATION, VISIT INTA.ORG

To go further:
About Brenda Kahari (link to https://zw.linkedin.com/in/brenda-wood-kahari-98166338)
About BW Kahari (link to http://www.lawyersforafrica.com)
Also of interest:
- About regulation of cryptocurrency (link to https://www.loc.gov/law/help/cryptocurrency/world-survey.php)
- About blockchain in Africa - Article from Forbes (link to https://www.forbes.com/sites/tatianakoffman/2019/04/04/blockchain-africa-rising/#67a045ac7711)
- About Africa as the next frontier for cryptocurrency - Article from Africa Renewal (link to https://www.un.org/africarenewal/magazine/april-2018-july-2018/africa-could-be-next-frontier-cryptocurrency)
- INTA On-Demand Webcast: Blockchain 101  (link to: https://learning.inta.org/products/blockchain-101)
- INTA Daily News (page 6)—Blockchain: A Viable Solution to Fight Counterfeits? (link to: https://www.inta.org/PDF%20Library/2019Daily/2019DailyNews_Day4.pdf)
- INTA 2020 New York Conference—Brands in Society: Their Influence and Responsibility (link to: https://www.inta.org/Programs/Pages/2020NewYork_Overview.aspx )
- INTA Bulletin: Applications of Blockchain Technology to Trademark Protection, Enforcement, and Practice   (link to: https://www.inta.org/INTABulletin/Pages/ApplicationsofBlockchainTechnologytoTrademarkProtection7312.aspx)