IBIL Masterclass: The Protection of Famous Marks with Frederick Mostert

IBIL Masterclass: The Protection of Famous Marks
Course of two sessions on Tuesdays 23 & 30 November 2010 
6 – 8pm at the UCL Faculty of Laws

Famous marks are incredibly valuable assets for their owners, but their fame also puts them at an increased risk of being hijacked by unscrupulous third-parties. This is particularly so in today’s networked world, where the internet presents unprecedented opportunities for the unauthorised exploitation of famous marks across the world and with minimal effort.

This Masterclass is designed to equip participants with a thorough understanding of the special legal protection granted to famous marks at the international level and in the US and European Union. It also introduces the challenges faced by famous marks on the internet, and the legal and practical means that famous mark holders have to control unauthorised used of their marks online.

The Masterclass is led by renowned expert in the field, Dr Frederick Mostert, Chief Counsel at Richemont (owner of brands including Cartier, Montblanc and Alfred Dunhill), former president of the International Trademark Association, author of the leading treatise on famous marks and visiting professor at UCL laws.

The Masterclass will cover:  

• An introduction to the protection of famous marks
  • Art.6bis of the Paris Agreement
  • Protection under the TRIPs Agreement 
  • WIPO Joint Recommendations – content and status
  • International implementation of international obligations – an overview
  • The dilution action in the US and EU
• The internet – Friend or Foe?
• How should a brand owner protect its IP rights online? Self regulation v
• the courts or a middle way?
• Dealing with auction sites – brand owners view and current view from the
• courts.
• Dealing with keywords – self regulation and current view from the courts.
• Making new law – how do we keep up with technology?
• “Notice and Takedown” - an efficient tool in the copyright realm.
• Can “Notice and Takedown” be applied in the trademark world?
• How would a new legal framework in a perfect world scenario work?
• Comparing the pros and cons in this area of law.

Taught by:
Frederick Mostert
Chief Counsel, Richemont
Visiting Professor, UCL 

Dr Mostert holds a masters degree from Columbia University School of Law in New York City and a doctorate from the University of Johannesburg. He is a member of the New York Bar, a solicitor of England and Wales, and has practised corporate law at Shearman and Sterling and international intellectual property law at Fross, Zelnick, Lehrman & Zissu in New York. He joined Richemont in 1990.

Dr Mostert is a past President of the International Trademark Association, serves on the Advisory Board of the University of San Francisco McCarthy Institute for Intellectual Property and Technology Law and is a guest professor at Peking University.

He has written widely on intellectual property and is principal author and editor of Famous and Well-known Marks – An International Analysis (INTA, 2004). He has also authored From Edison to iPod – Protect Your Ideas (Dorling Kindersley, 2007) and International Trademark Treaties & Agreements (INTA, 1998).

Each session of this Masterclass is accredited by the Solicitors Regulation Authority and the Bar Standards Board with 2 CPD hours.