INTA Bulletin – Volunteer Spotlight : Marc-Roger Hirsch


phd_200Joseph Conklin, Coty Inc, New York, New York, USA   INTA Bulletin Association News Subcommittee

Marc-Roger Hirsch is the senior partner of Hirsch & Associés, based in Paris, France. When Marc’s firm first joined INTA in 1975, Annual Meetings consisted of approximately 800 people, less than 10 percent of the average attendance at the Annual Meeting in recent years. Since that time, the firm’s practice has expanded along with Marc’s participation in INTA. He has an active practice in the fields of patents, trademarks and designs, and he regularly provides updates on intellectual property developments in France for INTA.

In terms of training, Marc was formerly a research fellow at the Netherlands Engineering School of Delft and is a former examiner at the International Patent Institute of the Hague. He holds an engineering degree from the Chemical Engineering School of the University of Strasbourg as well as an degree in physics.

When asked about recent developments that could have a significant impact on trademark practice, Marc points to the Court of Justice’s judgment in Leno Merken BV v. Hagelkruis Beheer BV (Case C-149/11 (CJEU Dec. 19, 2012)) concerning the scope of use necessary in a single EU member state to support “genuine use” of a Community trade mark. He expects this decision to have a significant impact on the relationship between the relevant market and the specification of goods or services covered by the registration at issue and on which uses of the mark contribute to obtaining market share.

Marc is an avid reader of history and economics, and it is clear that he would do quite well in a professorial role. Marc prides himself on his mentoring of the young attorneys in his firm; he believes this collaborative approach leads to the best results for his clients, as thereby work can be efficiently handled by more junior lawyers.

While noting that the growth of INTA has been impressive, Marc sees the growth of top-level domain names as quite another story. He views the explosion of gTLDs, and the diligence and expense associated with enforcement, as posing a threat to the rights of brand owners.

As Marc lives in Paris, it is not surprising that his favorite trademarks relate to wine. While infringement actions in this area compare marks from a visual, aural and conceptual perspective, Marc believes that taste comparisons for counsel should be a mandatory aspect of the analysis.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2014 International Trademark Association