Overlapping Intellectual Property Rights

• Provides an in-depth understanding of the nature of overlapping IP rights under UK, EU and US law
• Setting out practical scenarios in which each set of overlapping rights may be encountered
• Discussion of both conceptual and practical issues arising from overlaps in IP rights by an international team of specialist practitioners and academics
• Includes a valuable summary of the differing legal positions towards overlaps across a number of jurisdictions including Germany, France, Australia, Mexico, Japan and China
• Structured so that readers from outside the UK and US can use the content as a template for their own jurisdiction

Readership: Intellectual Property lawyers, in-house counsel, patent and trademark agencies, and policy makers interested in overlaps that result in extended monopolies.

Edited by Neil Wilkof, Member of the Bressler Group, Special IP Counsel to Herzog, Fox & Neeman, Israel, and Shamnad Basheer, The West Bengal National University of Juridical Sciences, Kolkata, India

Neil Wilkof is a member of the Bressler Group and he serves as special intellectual property counsel to Herzog, Fox & Neeman. He has been recognized by various surveys as a leading practitioner in the field of intellectual property and technology transfer. He has published numerous articles in the intellectual property law field and is on the editorial board of Intellectual Property Law and Practice. He has taught intellectual property law in several universities in the U.S. and Israel. Wilkof is a graduate of the Yale University, the University of Chicago and the University of Illinois.

Shamnad Basheer is the Ministry of Human Resource Development (HRD) Professor in Intellectual Property law at the National University of Juridical Sciences (NUJS), Kolkata. After graduating from the National Law School Bangalore, he joined Anand and Anand, a leading intellectual property law firm in New Delhi, where he rose to head the firm's IT and telecommunications law division. He then went on to do postgraduate studies as a Wellcome Trust Scholar at the University of Oxford and transitioned to academia. However he continues to consult with law firms, governments and intergovernmental institutions. In the past, he has been an IBA and an IPBA scholar and has published papers in leading intellectual property law journals. Shamnad was recently nominated as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF).

"Overlapping intellectual property rights should be central to both intellectual property theory and practice, yet the legal literature had not yet adequately addressed this important topic, The book edited by Neil Wilkof and Shamnad Basheer offers the first comprehensive, and much needed, analysis from multiple angles and with respect to multiple jurisdictions. Remarkably for a book written by many distinguished authors, the book adopts a uniform structure-hypothetical, discussion and conclusion-where each chapter addresses a specific pair of overlapping rights. In addition, the summary tables provide a comparative overview of the various overlaps across 18 different jurisdictions. The result is well-thought, coherent, and comprehensive. This book is a must have, and a must read, for any intellectual property practitioner and scholar, wherever located." - Dr. Irene Calboli, Professor of Law, Marquette University Law School

"Overlaps among intellectual property laws have grown more common as the laws themselves have grown. The result is often haphazard cumulative copyright, patent, trademark, design or other protection or liability, and consequent theoretical untidiness and practical complexity. This timely and impressive volume brings together a distinguished international team of legal experts from practice and academia to analyze and justify the extent and impact of cumulative protection and overlapping liability in key jurisdictions throughout the world. This is compulsory reading for intellectual property aficionados everywhere, from national and international policy makers and academic thinkers to those engaged in the daily practice of drafting contracts, giving legal advice, and litigating disputes." - Professor David Vaver, Emeritus Professor of Intellectual Property & Information Technology Law, University of Oxford, & Professor of Intellectual Property Law, Osgoode Hall Law School, Canada.

"The unique insight of the authors is that intellectual property cannot properly be understood as a set of distinct disciplines; each must be seen from the perspective of the others. The editors have assembled some of the world's leading experts to explain, in fully digestible prose, the connections and relationships among subjects normally treated in isolation. The result will not just inform you, but catalyze new thinking. You'll never look at IP the same way again." - James Pooley, Deputy Director, World Intellectual Property Organization

"This volume is an indispensable resource for the scholar, practitioner and policymaker alike. It deals with weighty but unavoidably complex issues with clarity, precision and a solid grounding in the policy foundations of the intellectual property system. It should both inform and stimulate much needed further debate and analysis on the wide array of issues it covers." - Anthony Taubman, Director, Intellectual Property Division, World Trade Organization

1: Navigating the Interface between Utility Patents and Copyright
2: The Overlap between Patent and Design Protection
3: Patents and Trade Secrets
4: Interfaces in Plant Intellectual Property
5: Patents and Utility Models
6: Patents and Regulatory Data Exclusivity for Medicinal Products
7: When Copyright and Trade Mark Rights Overlap
8: The Design/Copyright Overlap: Is there a Resolution?
9: Overlapping Forms of Protection for Databases
10: Moral Rights or Economic Rights
11: Protection of 'Famous' Marks under Trade Mark Law and Passing Off
12: Overlapping Rights in Designs, Trade Marks and Trade Dress
13: Overlaps between Trade Marks and Geographical Indications
14: Domain Names and Trade Marks
15: Publicity Rights, Trade Mark Right, and Property Rights
16: The Relationship between Trade Mark Rights and Unfair Competition Law
17: The Relationship between Intellectual Property Rights and Competition Laws