Dr. Thomas Marx Award 2014


Anna Porebska, RGW Roclawski Graczyk i Wspolnicy Adwokacka Spolka jawna

<b>WINNER</b>:  Anna Porebska

WINNER: Anna Porebska

Firm: RGW Roclawski Graczyk i Wspolnicy Adwokacka Spolka jawna


The paper is dedicated to topic which is very interesting and wide discussed by the legal scholar in many countries. A process of a development of the common originality standard throughout the EU is still in progress. The paper does not only provide a presentation of the particular case-law of the ECJ, but analyzes the main features of the common originality criterion as well as methods used by the ECJ by establishing this criterion.

Furthermore, it takes into consideration the differences existing between the originality concepts in the continental droit d’auteur and Anglo-Saxon copyright, and relates to the impact of the jurisprudence of the ECJ on the decisions of the national courts. As example it shows the problems of the protection level for works of applied arts in Germany, which is shown in the context of the decision of the BGH in the “Geburtstagszug” case.

It must be mentioned, that the copyright law is an area which has not been fully harmonized at the level of the European Union. Aquis communautaire consists of the numerous directives which relates to very special issues. In particular, the legal acts do not state a common definition of a copyright work. The European legislator formulated criteria which have to be fulfilled in order to be protected under the copyright only for computer programs, databases and photographs.

Since the ruling of the European Court of Justice in the “Infopaq” case issued in 2009 we witnessed a development of common originality criterion for the different categories of works. This criterion was formulated by way of analogy to the prior harmonized categories of work as “an author’s own intellectual creation”. In the further case law the ECJ confirmed this requirement and concretized by way of an autonomous interpretation of the directives’ terms as well as by using of the instruments of a judicial law-making. However, in the Member States exist still the numerous differences in the understanding of what is worth to be protected and the jurisprudence of the national courts show that the process of the harmonization without the legislation acts need some time to be successful. It should be pointed out, that harmonization of the concept of a copyright work would be a large step towards the full divergence of the copyright systems of the Member States.


The Common Definition of a Copyright Work in the European Union - The Harmonization of the Originality Standards Five Years after the Infopaq Ruling of the European Court of Justice

Sabina Amendola

Participant: Sabina Amendola

Firm: HütteLaw AG


The  improvement  in  communication  and  the  growing  internationalisation  of  the  business world have led to an increasing trend for lawyers to become involved in their profession on an  international  scale.  All  the  more  since  the  internal  market  in  the  European  Union comprises an area without internal frontiers in particular with regard to the freedom to provide legal services across borders. To mitigate the difficulties which result from the application of “double deontology” and to harmonise the rules of professional conduct, the Council of Bars and  Law  Societies  of  Europe  (CCBE)  codified  rules  of  professional  conduct  –  the  CCBE Code of Conduct.

A recent decision of the French Supreme Court, the “Cour de Cassation” in Paris, gave the occasion  to  draw  the  attention  to  the  importance  of cross-border  practice  of  law  and  the provisions  of  the  CCBE  Code  of  Conduct.  In particular the  decision  calls  attention  to  the responsibility  for  fees  between  lawyers  as  regulated  in  article  5.7  of  the  CCBE  Code  of Conduct.

A Belgian law firm has been entrusted by a French law firm with the advice of its client, due to  the  necessity  of  legal  knowledge  in  Belgian  law. The  French  “Cour  de  Cassation”  has ruled  in  favour  of  a  Belgian  law  firm  the  liability of  its  correspondent firm  in  France  in  the amount of the outstanding fees for the rendered services based on article 11.5 of the national French “Règlement Intérieur National de la Profession d’Avocat” and article 5.7 of the CCBE Code of Conduct.

In  Switzerland  the  question  arises,  whether  the  article  5.7  of  the  CCBE  Code  of  Conduct constitutes a legal basis for liability for fees of correspondent lawyers on the one hand for cross-border practice of law and on the other hand for national practice of law.

The CCBE Code of Conduct is not binding in itself, but only when its rules are adopted as enforceable rules by the national or local bars of the member states. Since 2006 Switzerland is a full member of the CCBE and is represented by the Swiss legal profession is the Swiss Bar Association. Switzerland has chosen a dynamic implementation of the CCBE Code of Conduct at the national level.  Thus, any change in the CCBE Code of Conduct is immediately implemented at national level.

Such a liability between colleagues as provided in article 5.7 of the CCBE Code of Conduct was completely unknown in Switzerland and has not been adopted to date into Swiss law.

For  the  execution  of  the  agreement  concerning  the  freedom  of  movement  between Switzerland and the European Union and its Member States the legislator has enacted a new regulation  for  lawyers  concerning  the  duties  of  both  domestic  and  foreign  lawyers  when practicing law in Switzerland: the Bundesgesetz über die Freizügigkeit der Anwältinnen und Anwälte (BGFA). However, this liability provision does not exist in the BGFA. This disposition concerns European law and is applicable only in connection with European lawyers. Within the  Swiss  rules  of  professional  conduct  hereby  new  rules  and  new  liabilities  have  been introduced and a parallel legal system of professional conduct has been created.

The area of validity of Swiss and European rules ofprofessional conduct are the same. In contrast they differ in their geographical application area. The extent to which the national or the European professional rules of conduct in European cross-border cases are applicable needs to be further investigated. It is, however, assumed that this would have to happen by interpretation of each different provision.  Article 5.7 of the CCBE Code of Conduct, for example, must be interpreted restrictively, wherebythe applicability to domestic cases must be rejected.

However, Swiss lawyers, as long as they are members of the Swiss Bar Association, can claim legal fees incurred in cross-border practice of law against foreign lawyers. On the other hand Swiss lawyers, being member of the Swiss Bar Association, should be aware of their liability for fees incurred in cross-border practice of law claimed by their foreign colleagues. Both  provided  that  no  special  arrangements  have  been  made  on  the  limitation  of  their personal responsibility.



The Impact of the CCBE - Code of Conduct on the Responsability for Legal Fees in Cross-Border Practice of Law in Switzerland

Anne-Sophie Barrere-Ortega

Participant: Anne-Sophie Barrere-Ortega

Firm: Morvilliers Sentenac Avocats


This paper addresses a specific issue on Immigration into the European Union: the free movement of Third Country lawyers residing legally in a Member State of European Union and seeking to pursue his/her activity in another Member State. The study demonstrates that Third Country national lawyers are far from being granted equal treatment with regard to Community national lawyers in respect to EU-intra mobility.

Firstly,  only  Third  Country  nationals  with  strong  links  with  the  European  Union  or  with  high qualifications are likely to be endowed with the right to undertake an activity under an employed and/or a self-employed capacity in another Member  State.  Concerning Third Country national lawyers, three statuses may allow them to be awarded such a free movement right: the family member status under the Directive 2004/35/EC, the Long-term residence under the Directive 2003/109/EC  and  the  issuance  of  an  EC  Blue  Card  for  highly  qualified  persons  under the Directive 2009/50/EC. Nevertheless, it is noteworthy to mention that the lawyer profession is regulated and the Member States require specific professional qualifications to pursue the legal activity.

Moreover, substantial differences may be observed in terms of the rules of conduct and law from one country to another. As a result, the right to undertake an activity in another Member State under Community law is not sufficient for the Third Country national to provide cross-border services or to establish him/herself in another Community country. He/she has to be granted the authorisation to practise in the other host Member State. Among the three Directives governing the free movement of lawyers within Europe (Directive 77/249/EC on temporary Cross-border Provision of Legal Services, Directive 2005/36/EC on the Recognition of Professional Qualifications and Directive 98/5/EC on the permanent establishment in another Member State under one’s home country professional title). Only the Directive 2005/36/EC on the Recognition of Professional Qualifications is likely to apply to the Third County national lawyers. Provided they are endowed with a Member State title, there is not any automatic recognition of the diplomas in the second Member State where the applicant seeks to move. An aptitude test and possibly a period of professional experience in the legal profession in the first Member State may be required. As a result, the use of Community law by a Third Country national to enjoy the right to undertake an activity in another Member State than where he/she is legally residing is submitted to meet a set of requirements which may make difficult the enforcement of such a freedom.

In conclusion, this paper identifies the gaps undermining the efficient integration of Third Country national lawyers seeking to use their right of intra-EU mobility.


Free Movement of Lawyers within the European Union - the Position of Third Country Nationals

Liliana Rosanne Nolan

Participant: Liliana Rosanne Nolan

Firm: Mersan Abogados


The seeding and harvesting of plants has been a principal activity for human beings throughout thousands of years; in effect, from the day we stopped being nomads and settled down to a defined portion of land, from the day we started farming, agriculture became an essential part of our lives, and this in turn, led to the commencement of scientific research and breeding – at first at small, empirical scale, later at a more advanced technical scale – of plants and its many varieties.

Today, the breeding and creation of new plant varieties and new plant genetic creations are crucial to mankind; the world population has increased enormously during the past two centuries and it is expected to grow even more and at a higher rate; the numbers are not going down; additionally, we have put the environment under a considerable amount of stress, due to deforestation, contamination and its results, climate change. And, even further, the planting of only one type of crops for thousands and thousands of acres at a time lead to the increase and proliferation of a number of pests.

Thus, the continual research in new plant varieties, adaptable to all such changes and with a superior yield is not only extremely important; it is vital. But research and expenditure in research, especially by big corporations who own the resources to that effect, is dependent on whether or not we are able to establish a thorough legal protection for creations in plants. Two legal systems have been undertaken for such purpose: the UPOV Convention, which protects plant varieties in general, and protection by means of patents. Additionally, the TRIPS Agreement – under the WTO – established a few norms with regards to the protection of plant varieties and creations in plants.

Although a considerable amount of countries across the world have adhered to the UPOV Convention, there is still much inconsistency with respect to the intellectual protection of plant varieties in different regions, especially when comparing the legislation in the developed and the developing countries. In developed countries, plants can be protected not only by plant breeder’s rights, but also by patents; if plant patents are not admitted, like in the European Union, for example, there is still room for protection of genetic creations in plants. In developing countries, specifically, in the MERCOSUR region, plant patents are not admitted, thus, protection by plant breeders’ rights, with its exemptions, is the only way to secure the intellectual property rights in plant varieties and plant creations.


Plant Varieties Protection - In the Pursuit of a Harmonized Legal Protection

Megan Ross

Participant: Megan Ross

Firm: Brian Kahn Inc.


The purpose of tax treaties is to align different countries and tax regimes due to the increase in international business and companies being created in different jurisdictions. The main aim is to create a fair tax system to be applied to various countries trading internationally and has become increasingly significant with the improved sophistication and ease of doing business internationally.

However, such improved sophistication is coupled with the tax advisors becoming increasingly smarter in their advice provided.

It becomes clear from the current international status regarding tax treaty agreements that there is a desperate need for a uniform regulatory system in order to align the various tax treaties between countries and the effects thereof. This is the current objective that the OECD is striving for, but there are many evident risks arising from countries that attempt to implement their own {peculiar and particular) independent tax changes to apply to their specific tax treaties.

The effect of tax treaty agreements {whether bilateral or multilateral) is experienced by a variety of countries across the globe. Tax treaties are currently a popular international topic due to the increasing variations on such agreements that are being considered by numerous states; one of the most prevalent reasons for such variations is tax treaty abuse which is becoming increasingly more widespread. Tax treaty abuse is a very unfortunate outcome to an initially brilliant idea to encourage cross border trade efficiency and improve the certainty of tax systems and international transactions for taxpayers and tax authorities throughout the world.

The paper covers various aspects pertaining to tax treaty agreements and the considered changes to same including {but not limited to):- (1) requirements to enter into a tax treaty agreement, (2) effects of tax treaties, {3) major countries currently effected by tax treaties and {4) the key role players in the proposed regulations of tax treaties. The starting point is the explanation and distinction between the meanings of tax evasion, tax avoidance and tax eversion and is the initial step to fully understand the current impacts that are being felt by parties involved in tax treaty agreements.

The Organisation for Economic Cooperation and Development ("OECD ") is one of the pivotal model conventions with its main objective to promote the serious need for a change in the way people view and implement tax treaty agreements. The OECD has raised this objective at a number of international forums including the G20 Meeting in Moscow and the G8 Summit in Northern Ireland.

This current international tax movement is greatly assisted by the affiliation to and contribution by the OECD; it has been tipped to be one of the most revolutionary modifications of tax laws in our lifetime.

The movement is starting to effect a number of major countries and the paper commences with the tax treaty agreement between Mauritius and South Africa; which was negotiated and entered into in 1996 just after South Africa had achieved full democracy. The paper starts with this particular tax treaty due to the writer being South African and the prevalence of tax treaty agreements that are concluded with Mauritius. This topic then extends to elaborate and discuss the current effects on other countries including: - (1) Germany, (2) the Republic of Ireland, (3) the United States of America, (4) Kenya, (5) India and (6) China.

The paper endeavours to give the reader a broad understanding of the current significant and valuable movement in international tax law, although it is apparent that there are still various changes and adjustments to be considered for the proposed methods of change and implementation thereof.

Once all these considerations have been thought through and the issues have been ironed out, there is a real prospect that the proposed changes could result in a massive global impact on countries and their economies internationally.


The Applicability and Effect of Tax Treaties Worldwide

Rossella Torraca

Participant: Rossella Torraca

Firm: MCM Avvocati


The paper concerning “The collapse of privacy: how to restore trust in data protection. May we reach a substantial change to “reinvent” data protection regulation?” that I am glad to submit to you with respect to the Dr. Thomas Marx Award 2014 addresses a very living matter, such as “Privacy”, which involves in the same way all the Member States of the European Union, highlighting – on one hand - the negative feeling of discomfort of EU citizens in today’s digital era and –on the other hand – the proposals of improvement of the EU data protection regulations which have remained so far unimplemented.

After having described the two great scandals of the last months (the NSA affair and the Safe Harbor infringements by several important U.S. companies), which have shaken the relationship between the European Union and the United States, I have explained the origins of the problems concerning the treatment of personal data of EU citizens by non-EU Countries, with particular reference to the U.S. which, historically, is considered by the E.U. a non-safe Country under the EU privacy laws, but in which are located the most important web storage, cloud services and/or peer-to-peer companies.

I have underlined the necessity of both EU citizens and businesses to trust in a strong and consistent legislation which seriously and factually protects the individual’s rights and I have investigated the inconsistencies and gaps of the current EU data protection legislation which inevitably are reflected in the national legislation of most of the EU Member States.

In this respect I thought necessary to list by bullet-points the main issues of the new privacy legislation, which has been proposed by the Commission since 2009. Although such proposal seems well-construed and complete, it has not been implemented to date.  However, after the above mentioned scandals and the important decision of April 8th, 2014, by which the Court of Justice of the European Union declared invalid the Data Retention Directive no. 2006/24, a new step forward to the reform has been done. The question is whether this is enough.


The Collapse of Privacy - How to Restore Trust in Data Protection. May We Reach a Substantial Change to Reinvent Data Protection Regulation

Rebecca Ungerechts

Participant: Rebecca Ungerechts

Firm: Junge, Schüngeler, Wendland


The question of good company management, or corporate governance, is of fundamental importance, irrespective of the legal form of the particular company. As however is explained and demonstrated at the beginning of this paper, listed companies, because of the principal-agent conflict that is characteristic of them and their viability for the capital markets, have traditionally been at the centre of national and international reform movements, and it is on them that the present paper focuses.

Aside from the member states' own reform movements -some stronger, some weaker -clear evidence of nothing less than reform actionism, aimed at the creation of a corporate governance framework, can be seen at European Union level. This paper delineates the reform movements at EU level, from the European Commission's first (serious) considerations, in 2003, on the creation of European corporate governance framework, up to the present day. It also seeks to spell out what (further) legislative measures are to be expected and to what extent they will impact on the companies and their investors.

In addition to the presentation of the individual reform initiatives, the core elements of corporate governance, as most recently identified by the Commission, are explored and elucidated. They are: improved checking on management bodies, the establishment of extensive rights for shareholders to have a say, and above all the creation of the greatest possible transparency.

The subject matter dealt with here is more topical than ever. The global financial crisis which started in the USA in 2007 resulted in a degree of market collapse almost worldwide, for which the defective and opaque corporate governance of the companies concerned was held to have central responsibility. Not the least striking sign of the topicality of the matter is that the European Commission very recently, on 9 April 2014,

adopted a comprehensive package of measures directed at creating a European corporate governance framework, on the basis of a number of studies, consultations and other preliminary work.

The aims of the paper are to alert the reader to the key elements of the reform movements and to contribute to better understanding of their substance and the background to their development.


The Role of the European Union in Corporate Governance for European Business

Rachel Weiss Jurist

Participant: Rachel Weiss Jurist

Firm: Meister Seelig & Fein LLP


This paper explores whether there is international agreement regarding what makes a proposed trademark too outrageous to be eligible for registration.  In doing so, it analyzes the laws and recent decisions from a cross‐section of jurisdictions – the U.S., E.U. and Australia – to gain insight. The topic, while often inadvertently humorous due to the provocative marks at issue, is threaded with more serious concerns, such as possible limitations on freedom of speech/expression and the unintended exposure of scandalous material to children.

Although there have been studies of scandalous and/or immoral marks in single jurisdictions, particularly the U.S., the author did not locate another paper discussing and importantly, comparing, this subject matter as it currently stands in the three English‐speaking jurisdictions at issue. In view of this, it is hoped that this paper helps to inform and educate the CONSULEGIS community on a heretofore untapped subject. Further, given the political and cultural ramifications of the registration (or rejection) of outrageous marks, it should make for interesting, topical reading.

It is worth noting however, that the material contained in this paper is not for the faint of heart or the easily offended.  Bear in mind that you may never look at your country’s trademark examiners the same way again. However, the ongoing global evolution of what is considered politically correct and socially palatable necessitates that international lawyers continually take heed of the current state of the law regarding scandalous and immoral marks.


That's Outraguous! A Study of (Allegedly) Scandalous and Immoral Trademarks Across Jurisdictions