2017 Annual Meeting

Customs Training

INTA will be holding a customs training session before the Annual Meeting in Barcelona at the offices of Gómez-Acebo & Pombo. Transportation will be leaving the Convention Center at 9:00 am. At this session, corporate members will be grouped into industries to conduct brand identification trainings with local Spanish authorities in small, interactive groups. Participating members are encouraged to bring small samples and photos to facilitate the discussion. The session will be limited to 50 in-house only participants on a first-come, first-served basis. For more information or to RSVP, please contact INTA Anticounterfeiting Coordinator, Tiffany Pho at [email protected].

Workshop: Strategy + Collaboration: The Key to Success Against the Crime of Counterfeiting
(Day 1; Open to Corporate and Government Officials Only)

This workshop will give in-house teams and government officials an opportunity to benchmark and collaborate with other brand owners, investigators, law enforcement and governmental agencies, leading anticounterfeiting associations, and legal experts to identify best practices to help in the fight against the ever-growing crime of counterfeiting. Prosecution of counterfeiters via criminal proceedings and how law enforcement identifies, investigates, and prosecutes counterfeiters will be the focus of this workshop. Workshop participants will share case studies and lessons learned and will discuss how collaboration and the right strategy is the key to successfully fighting counterfeiting. This workshop is only for in-house counsel and government officials, and space is limited.

On Day 1 of the conference, there will be dual tracks—one for corporate members and a second track for government officials. Both groups will come together on Day 2 to work together to enhance collaboration by sharing best practices and learning to work together more efficiently. Learn more!

Please note this workshop will take place at the Hotel Santos Porta Fira, Plaça d’Europa, 45, 08908 Barcelona, Spain.

Course on International Trademark Law and Practice
(Day 1; advance registration required; CLE credit available)

This course is designed to provide a comparative analysis of trademark law and practice in countries around the world. Depending on the topic, the focus will vary from historical, philosophical, and legal perspectives to practical “how to” tips and advice. Each international jurisdiction covered in the course will be taught by a professor or practitioner from that region. Practitioners new to trademark law, law and paralegal students, trademark administrators, and in-house counsel seeking to obtain a well-rounded overview of trademark law and practice from around the globe are encouraged to attend.

Fee: US $650 (for a two-day program)

The registration fee includes breakfast, lunch, CLE credit, and course materials. Participants MUST commit themselves to attending the full, two-day program. Tickets for admission to this event will not be sold onsite. Registration is nonrefundable and limited.

Advanced Mediation Training: Cross-Border Mediation—28 or 60 Countries Divided by a Common Word

CANCELLED

Continental Breakfast

Continental breakfast will be served daily until 10:00 am in the Hospitality Area in Hall 8.1.

Registration and Hospitality

Board of Directors Meeting

Workshop: Strategy + Collaboration: The Key to Success Against the Crime of Counterfeiting
(Day 2; Open to Corporate and Government Officials Only)

This workshop will give in-house teams and government officials an opportunity to benchmark and collaborate with other brand owners, investigators, law enforcement and governmental agencies, leading anticounterfeiting associations, and legal experts to identify best practices to help in the fight against the ever-growing crime of counterfeiting. Prosecution of counterfeiters via criminal proceedings and how law enforcement identifies, investigates, and prosecutes counterfeiters will be the focus of this workshop. Workshop participants will share case studies, lessons learned and will discuss how collaboration and the right strategy is the key to successfully fighting counterfeiting. This workshop is only for in-house counsel and government officials and space is limited.

On Day 1 of the conference, there will be dual tracks—one for corporate members and a second track for government officials. Both groups will come together on Day 2 to work together to enhance collaboration by sharing best practices and learning to work together more efficiently.

Please note this workshop will take place at the Hotel Santos Porta Fira, Plaça d’Europa, 45, 08908 Barcelona, Spain.

Committee Meetings

Career Development Day

GENERAL SESSIONS

CSA20 The Ownership and Operation of Law Firms in Spain and the Broader EU—What Can Others Learn from Their Experience?

Law firms around the world have different ownership structures. Some laws and regulations prevent non-lawyers from having ownership interests. Some law firms are family owned. Some law firms have affiliations with larger professional businesses such as accounting firms. This panel will focus on the organization of law firms in Spain and in other countries in the EU. It will also delve into how such firms operate with an emphasis on the similarities and dissimilarities with the running of firms in other countries. Importantly, the discussion will highlight practices that attorneys in other jurisdictions can learn from and consider employing within their own firms.

Moderator:
Jordi Guell, CURELL SUNOL S.L.P. (Spain)

Speakers:
Mark Foreman, Rouse (United Kingdom)
Imogen Fowler, Hogan Lovells (Alicante) SL y Cia. (Spain)
Julia Holden, Trevisan & Cuonzo Avvocati (Italy)
Malte Nentwig, Boehmert & Boehmert (Germany)

CSA21 Geo-Branding: The Global Interplay Between Geographical Indications and Trademarks
(Intermediate Level)

As one of today’s truly hot topics in IP, geographical indications (GIs) are receiving renewed interest in various areas, including geo-branding of countries and cities, to the debate in ICANN on the scope of protection of so-called geo-names as domain names, and to expanded use of collective and certification marks to protect GIs in countries that do not have active GI registration systems. This expert panel with diverse views will discuss various GI topics, and how these GI developments interact with trademarks, on such subjects as:

• Advertising with geographical connotations: overview of possibilities, rules on product labeling, fair use, how to take benefit of geographical goodwill, and when do claims become misleading
• When do geographical names become GIs
• Overview of trademarks and certification marks with geographical significance
• Use of geographical terms in trademarks or as trademarks: how to avoid absolute grounds for refusal and misleading use
• Combining use of GIs and trademarks: advantages and pitfalls including overlapping protection in two different IP areas.
• New innovations, such as the SWISS MADE initiative
• Branding and advertising with GIs
• Use of geographical terms globally with diverse legal protection systems in place

Moderator:
Clark Lackert, Reed Smith LLP (United States)

Speakers:
Felix Addor, Swiss Federal Institute of Intellectual Property (Switzerland)
De Gryse, Simont Braun (Belgium)
Esteban Rubio, Federacion Nacional de Cafeteros de Colombia (Colombia)

Committee Meetings

Luncheon Table Topics

GENERAL SESSIONS

CSA50 Using Copyright to Protect and Enforce Rights in Logos

Logos are traditionally protected and enforced using trademark laws, but copyright may also be available. This presentation will focus on the benefits and challenges of using copyright to protect and enforce rights in logos in the United States, the EU, and China. The presentation will also compare and contrast trademark protection of logos in these jurisdictions and suggest best practices for protecting logos in these countries based on case studies.

Moderator:
Noel M. Cook, Owen, Wickersham & Erickson, P.C. (United States)

Speakers:
Richard Gilbey, GILBEY legal (France)
Catherine Rowland, U.S. Copyright Office (United States)
Joseph Simone, SIPS – Simone Intellectual Property Services Asia Ltd. (Hong Kong SAR, China)
Vivien Tsang, The Sherwin-Williams Company (United States)
Michael Shu, Chofn Intellectual Property (China)

CSA51 Cost-Effective Use of Patents: Protecting Inventions with Smaller Budgets

For small businesses (and startups in particular), funds for IP protection are limited, and in many cases, patents are not pursued because they are considered too expensive, particularly when compared with trademarks. Additionally, patent law is still strongly influenced by national laws and policies to stimulate innovation, resulting in a system that is far from harmonized. This can make it difficult for practitioners to appreciate what is possible in other countries and regions. After a short overview of the different possibilities, the speakers will discuss (i) how they deal with such clients and (ii) how to identify the options available in the main patenting countries for both domestic and foreign applicants.

Moderator:
Pete Pollard, Fireball Patents (The Netherlands)

Speakers:
Eric D. Morehouse, Kenealy Vaidya (United States)
Marieke Westgeest, Markenizer BV (The Netherlands)
Stephen Yang, Chofn Intellectual Property (China)
Hui Wang, Chofn Intellectual Property (China)

CSA52 Mastering the Art of INTA’s Online Resources: Tools and Techniques for Successful Trademark Research

From the Annual Reviews of Case Law to the Quick-Start Trademark Chart, to all of the fact sheets, checklists, online treatises, and searchable guides, come learn how to use INTA’s library of Member Resources to help you in your daily work. Let us show you how easy it is to access these materials and to find the quick answers you need to many of your preliminary research questions.

Moderator:
Marion Woods, Eversheds Sutherland (United States)

Speakers:
Emilia Cannella, Ropes & Gray LLP (United States)
Colleen Flynn Goss, Counsel, Fay Sharpe LLP (United States)
Santiago O’Conor, O’Conor & Power (Argentina)

Patent Professional Networking Reception

Are you a patent professional or spend any time working with patents in your regular workload? Join us for a cocktail and an opportunity to mingle with other registrants with similar patent interests and background.

Committee Meetings

Annual Meeting Registrant First-Time Orientation and Reception

Learn from experienced Annual Meeting attendees about the many resources and opportunities for education and networking; also, find out how to navigate the Exhibition Hall and make the best use of your time. Don’t miss out on this informative event and discover what’s new at this year’s Meeting. After you hear from experienced INTA attendees about how to maximize your time at the Meeting, stick around to network with other first-time attendees and get to know each other better.

First-time attendees, young practitioners, and students, as well as new INTA members, will find this orientation essential to making the most of their first Annual Meeting and will have the opportunity to network at a reception after the session.

Registration and Hospitality

Continental Breakfast

Continental breakfast will be served daily until 10:00 am in the Hospitality Area in Hall 8.1.

Course on International Trademark Law and Practice 
(Day 2; advance registration required; CLE credit available)

The course is designed to provide a comparative analysis of trademark law and practice in countries around the world. See Saturday’s program for a full description.

Advanced Mediation Training: Cross-Border Mediation—28 or 60 Countries Divided by a Common Word

CANCELLED

In-House Practitioners Workshop and Luncheon 
(Limited to in-house practitioners only; advance registration required)

Early Bird Fee (on or before March 3): US $150
Standard Fee (starting March 4): US $200

This combined workshop and luncheon, designed exclusively for in-house practitioners, offers a unique opportunity to network, benchmark, and exchange best practices for strengthening your brand in a marketplace where corporations of all sizes face challenges.

Registration includes admission to the workshop sessions and luncheon with keynote (not sold separately). Tickets for admission to this event and will not be sold onsite.

EUIPO Information Meeting for EUTM and RCD Users

Organized by the European Union Intellectual Property Office (EUIPO), the Information Meeting is aimed at everyone interested in developments at the Office over the past year, as well as future challenges. The highlights of the meeting are:

• Approaching tomorrow’s reality: SP2020: a user-driven plan
• Legal Reform: a year of achievements
  • Formalities and examination proceedings
  • Absolute grounds
  • Relative Grounds for Refusal
  • Fee structure (one-fee-per-class system; substantial fee reduction)
  • State of play of the secondary legislation: an insider’s view (Implementing & Delegated Acts)
• New Cooperation initiatives: building the European IP Network
• European Observatory on Infringements of Intellectual Property Rights: studies and tools
• Horizons ahead: Face-to-face with Executive Director António Campinos

Committee Meetings

Breakfast Table Topics

INTA’s International IP Court is in Session: Judges from International Jurisdictions Discuss Hot Topics in Trademark Law

Don’t miss this panel of judges from around the world as they share their perspective on the “Gummy Bear Uprising:” Haribo’s case for equal treatment over TM distinctiveness against the Swiss PTO. International judges will comment on the GOLDBAEREN decision, Haribo v. IGE (Swiss Federal Administrative Court decision of 02/01/2016) and share insights from their jurisdiction.

Judges:

Richard Arnold, High Court of London (United Kingdom)
Dr. David Aschmann, Federal Administrative Court (Switzerland)
Rajiv Sahai Endlaw, High Court of Delhi (India)
Hugo Gomez Apac, Andean Community Court (Ecuador)
Marianne Grabrucker, former Presiding Judge German Federal Patent Court, and President Circle of European Trademark Judges CET-J (Germany)
Sanjay Kishan Kaul, Supreme Court of India (India)
Michael Manson, Federal Court of Canada (Canada)
Motoyuki Nakashima, Tokyo IP High Court, First IP Division (Japan)
Elisabeth Ohm, Deputy Director Norwegian Board of Appeal for Industrial Property Rights (Norway)
Luis Rodriguez Vega, Appeal Court of Barcelona (Spain)
Junli Xia, Presiding Judge of 3rd Civil Division of the SPC (China)

Judges Workshop: Trademarks Beyond Borders—A Discussion with IP Judges on Hot Topics in Trademark Law (Exclusive to IP judges)

IP judges from several different jurisdictions worldwide will participate in an open and interactive discussion on hot topics in trademarks and recent noteworthy decisions in this workshop exclusively for IP judges.

GENERAL SESSIONS

CSU01 #TalkingIP: Optimizing Publishing Opportunities and Digital Platforms—INTA and Beyond

The focus of the program is incentivizing authors (from the IP industry, academic, and/or the business community) to submit their work for potential publication in The Trademark Reporter (TMR). Some of the proposed topics of discussion would be:

• Using the TMR (and other INTA publications) to push the boundaries of existing legal concepts, as well as studying the ever-changing nature of the IP industry in the digital and global age
• Exploring the changing modes of publication in the IP industry, such as blogging
• Using publication as an ongoing method of marketing
• Using social media platforms (such as Facebook and Twitter) for promoting digital publications
• Repurposing a previously written piece (such as a client alert or blog post) into an article, commentary, or practice-related piece for potential publication in the TMR
• Posting on law firm‒based blogs vs. independent blogs
• Connecting with international bloggers

Moderator:
Kathleen McCarthy, King & Spalding LLP (United States)

Panelists:
Michael Atkins, Atkins Intellectual Property, PLLC (United States)
Pamela Chestek, Chestek Legal (United States)
J. Michael Keyes, Dorsey & Whitney LLP (United States)
Jian Xu, Gowling WLG (China)
CSU02 Data Protection and Security Are Trademark Issues

Data Security affects every area of a company and, as we are seeing, can have a significant impact on the way companies do business.  Data security issues affect marketing, customer relations, sales and the security of trade secrets, trademarks and copyright. U.S. based companies are faced with having to understand EU data security rules and regulations and ensure compliance through practices, all while necessitating cultural shifts throughout their own organizations. Business practices have to be compliant, but they also have to be consistent with and supportive of brand identity. Join speakers who will discuss many security issues that practitioners face today.

Moderator:
Chris Kenneally, Copyright Clearance Center, Inc. (United States)

Speakers:
Iris Geik, Copyright Clearance Center, Inc. (United States)
Ray Thomas, Jr., Law Office of Ray Thomas, Jr. PLLC (United States)
Randi Singer, Weil, Gotshal & Manges LLP (United States)

CSU03 Mediation Live!

The mediation process cannot really be understood in the abstract. In order to give attendees a hands-on experience, Mediation Live! will recreate an actual mediation using experienced outside and in-house counsel and a seasoned mediator from the INTA Panel of Trademark Mediators. During this session, the presenters will work through the important steps in typical trademark mediation sessions. The audience will be taken through the mediation, start to finish.

Mediators:
Gonzalo Barboza, Arochi & Lindner (Spain)
Jill Easton, Darden Restaurants, Inc. (United States)
David Friedland, Friedland Vining, P.A. (United States)
Jami Gekas, Foley & Lardner LLP (United States)
David W. Grace, Loeb & Loeb LLP (United States)
Anne Gundelfinger, Swarovski AG (Liechtenstein)

Madrid System Users Meeting (MSUM)
Organized by the World Intellectual Property Organization (WIPO)

Don’t miss the opportunity to hear WIPO presenters provide an overview of key Madrid System developments, and engage with officials from a selection of Madrid System contracting parties. Invited officials will address specific issues regarding the designation of their countries in an international registration, including how to avoid and respond to provisional refusals. An interactive question-and-answer session will follow.

TM5 Workshop Presentation of the Compilation of Case Examples of Bad Faith Trademark Filing

Be sure to attend this TM5 workshop, being held jointly with INTA, based on the theme of Presentation of the Compilation of Case Examples of Bad-Faith Trademark Filings. Government officials and trademark users from the EU, Japan, South Korea, China and the U.S. will make presentations on bad-faith trademark filings. Names of speakers to be announced soon.

Committee Meetings

Trademark Administrators Brunch
(Advance registration required)

From the personal, to the practical, to the legal side, our experienced panel will share how best to work and communicate with trademark professionals around the world, respecting their unique languages, cultures, and customs. Being in the wonderful city of Barcelona, Spain, we will also mingle over some tapas to get to know each other better. Join us to learn, have some fun, and laugh about our different and similar “language” experiences throughout the world of trademarks.

Moderator:
Imogen Fowler, Hogan Lovells (Spain)

Speakers:
Mercedes Bullrich, Mitrani, Caballero, Ojam & Ruiz Moreno (Argentina)
Ali Buttars, Netflix, Inc. (United States)
Kim den Hertog, adidas International Marketing BV (Netherlands)
Joy Harrison-Abiola, Adepetun Caxton-Martins Agbor & Segun (Nigeria)
Mark McVicar, Winkler Partners (Taiwan)
Kevin Wong, Ella Cheong LLC (Singapore)

Fee: US $55

Tickets are sold on a first-come, first-served basis and will not be sold onsite.

Luncheon Table Topics

Exhibition Hall

Visit the 100+ exhibitors displaying their products and services. Exhibitors include trademark solution providers, law firms, media companies, IP offices, trade associations, and government offices.

GENERAL SESSIONS

Adjunct Professor Panel: Incorporating Practical Experience in the Classroom: Comparative Perspectives and Helpful Tips

Adjunct professors are facing questions on the extent to which they should focus on their practical experience when teaching trademark law and how to best impart this knowledge to students. Law clinics in the United States are well established, but other jurisdictions use different approaches to engage students in “experiential learning.” Please join us as expert teachers from several jurisdictions discuss the pros and cons of their respective teaching systems and share their tips on how to include practical training in their syllabuses.

Moderator:
Chris Lynch, Lee Hayes (United States)

Speakers:
Matthew Asbell, Ladas & Parry LLP (United States)
Ignacio Temino Ceniceros, Abril Abogados, S.L.P. (Spain)
Aurelio Lopez-Tarruella,  FJF Legal/ University of Alicante (Spain)
Moray Mclaren, Redstone Consultants (Spain)

CSU20 Discussion of Design Law as Applied to “Functional” Aspects of Designs
(Advanced Level)

This panel will provide an in-depth look at how so-called “functional” aspects of designs are—and should be—treated under design laws from different jurisdictions. Speakers from around the world will discuss the following topics:

• Limits, if any, placed by various jurisdictions on design protection for functional items/designs.
• Enforcement of those limits (e.g., by ex ante examination, by post-grant agency review, as part of claim construction, as an affirmative defense in court, etc.).
• Spare parts: are they (or should they) be protected under design laws.
• Recent developments in the law in this area.

Moderator:
John Froemming, Jones Day (United States)

Speakers:
Sarah Burstein, University of Oklahoma College of Law (United States)
David Stone, Allen & Overy LLP (United Kingdom)

CSU21 What’s the Use? Exploring Recent Challenges and Changes to Common Law Unfair Competition and Trademark Use Requirements in the U.S. and Canada

2016 saw an assault on the age-old axiom that for a markholder to have rights in the U.S., that same mark must actually be used in the U.S. And, while what constitutes “use” has long been debated in U.S. courts and before the Trademark Trial and Appeal Board (TTAB), use in the U.S. as a precondition to an unfair competition claim under the Lanham Act is no longer the law in the Fourth Circuit. In Belmora LLC v. Bayer Consumer Case AG et al., the Fourth Circuit concluded that a false advertising or false association claim under Lanham Act Section 43(a) (15 U.S.C. §1125(a)) need not be premised upon the ownership of a U.S. trademark registration or even use of a mark in the U.S. Rather, a §43(a) claim is available to “[a]ny person who believes that he is or will be damaged” as a result of a defendant’s conduct.  Thus, reasoned the Fourth Circuit,  the question to be resolved under §43(a) is not whether the defendant’s activities infringe the plaintiff’s registered mark; but rather, whether the defendant has used in commerce a word, term, name, or symbol that plaintiff believes is likely to cause it damage.

The Federal Circuit also abandoned this bedrock use requirement in Christian Faith Fellowship v. Adidas AG, where it reversed the TTAB’s cancellation of two marks on grounds that the registrant’s trivial out-of-state sales were nevertheless enough “use in commerce” to invoke protection under the Lanham Act.

But this sea change in the standards of use are not merely confined to the U.S. Canada too is scheduled to abandon its long time reliance on use as a precondition to obtaining a Canadian trademark registration. Canada’s recently amended Trade-marks Act is scheduled to be implemented in 2019 and looks to eliminate several filing bases, including proposed use.

The panellists will address relevant decisions and legislation and will explain how these developments contribute to an ever evolving trademark litigation and prosecution landscape in the U.S. and Canada.

Moderator:
Joel MacMull, Archer & Greiner P.C. (United States)

Speakers:
Ronald Coleman, Archer & Greiner P.C. (United States)
Lorraine M. Fleck, Fleck Innovation Law (Canada)

Committee Meetings

GENERAL SESSIONS

CSU50 dotBrand and You: Should You Apply in Round Two?
(Intermediate Level)

Over 600 brands applied for dotBrands in the 2012 new TLD round at ICANN. While a handful withdrew their applications, over 300 brands have already launched and are rapidly building experience with this important new option. With ICANN expected to open a new round in the future—and literally thousands of Chinese, Indian, and other companies expected to apply for new dotBrands, every large company needs to know the pros and cons of a “dotBrand” in order to make an informed decision. This panel brings together dotBRAND leaders and experts from across the globe to share their dotBrand experiences and discuss answers to the following questions: how have customers responded to the dotBrand; how are your dotBrand and legacy Internet presences being integrated; what benefits were expected and have they been realized; and what advice should be given to potential new applicants. If a sustainable and vibrant Internet presence is important to your company’s future, you should attend this lively and informative session.

Moderator:
Roland LaPlante, Afilias (United States)

Speakers:
Anil Garg, Dabur India Limited (India)
Gretchen Olive, CSC Digital Brand Services (United States)

CSU51 Annual Professor vs. Practitioner Debate
(Intermediate Level)

Don’t miss INTA’s annual Professor vs. Practitioner Debate, bringing passion and intellectual rigor (not to mention a fair bit of good humor) to the Annual Meeting. Each year, in a rumble between all-stars, a renowned professor battles a prominent practitioner regarding an important issue in trademark law. The debate resolution is designed to be provocative, and debaters are asked to take extreme opposing positions on it. Equivocation is discouraged! The debate will observe traditional rules and strict time limits, with an opportunity at the conclusion for audience voting.

This year’s debate, “RESOLVED: Geographical Indications Are the Antidote to Populist Nationalism,” will not disappoint.   Professor Robert Brauneis of The George Washington University Law School (United States) will argue the affirmative.  His counterpart practitioner, Burkhart Goebel of Hogan Lovells LLP (Germany), will argue the negative. The debate will highlight divergent attitudes regarding geographical indications, not only across the Atlantic Ocean but also across the occasional gulf between brand owners and academics.  A question and answer panel with the audience will follow.

Robert Brauneis, George Washington University Law School (United States)
vs.
Burkhart Goebel, Hogan Lovells International LLP (Spain)

CSU52 Inclusive Leadership: Recognizing and Defeating Our Unconscious Biases

All of us have unconscious biases—attitudes and stereotypes that we may not even be aware of, or agree with, that can affect how we view and work with others, and act as potential hurdles to successful leadership and teamwork. This interactive session will explore how to recognize, and overcome, the negative effects of such biases, and foster a more inclusive and effective teamwork environment. In addition, the speakers will explore how diverse teams can deliver better results.

Moderator:
Marina Stipanac, Perley-Robertson, Hill & McDougall LLP (Canada)

Speakers:
Jack Manhire, Texas A&M University School of Law (United States)
Leticia Provedel, Souto Correa (Brazil)

CSU53 Submitting Amicus Briefs in European Trademark Cases: Does Europe’s Approach Differ from that of the United States?
(Intermediate to Advanced Level)

Discover what constitutes the successful (and unsuccessful) filing of amicus briefs in European trademark cases, in the European General Court, the Court of Justice of the European Union (CJEU), and the national courts. Speakers will offer comparisons between Europe’s position with that of United States and will explore differences of approach while highlighting how to encourage European courts to adopt procedures allowing the submission of amicus briefs in situations where INTA believes they could play an important role in reference to the CJEU in relation to interpretation of trademark legislation. Topics the panel will explore include:

• Why do courts in the United States allow the submission of amicus briefs? What is the benefit to the U.S. judicial process?
• What are the recent amicus brief/third-party interventions submitted in EU courts? How do the number of amicus briefs filed in European trademark cases compare with those filed in U.S. trademark cases?
• How do judges in European courts view the submission of amicus brief/third-party interventions?

Moderator:
Tanguy de Haan, NautaDutilh (Belgium)

Speakers:
John Crittenden, Cooley LLP (United States)
M. Margaret McKeown, United States Court of Appeals for the Ninth Circuit (United States)
Ignacio Ulloa Rubio, judge at the General Court of the European Union (Luxemburg)

USPTO Users’ Meeting: News and Updates from the United States Patent and Trademark Office

Join Trademark Commissioner Mary Boney Denison for an overview of new USPTO initiatives, including proposed rulemaking regarding trademark fees and trademark maintenance filings, as well as an update on ongoing USPTO projects such as allowing registrants to amend IDs in registered marks to reflect technology changes.  In addition, Chief Administrative Judge Gerard Rogers will discuss proposed changes to Trademark Trial and Appeal Board rules.

Opening Ceremonies and Keynote Address

Hear from INTA’s CEO and 2017 President as they share their vision for the Association in 2017 and discuss INTA’s impact on the IP industry. The 2017 Annual Meeting Co-Chairs will also introduce you to this year’s program and welcome the keynote speaker.

INTA CEO’s Address

Etienne Sanz de Acedo, International Trademark Association (United States)

2017 INTA President’s Address

Joseph Ferretti, PepsiCo, Inc. (United States)

2017 Annual Meeting Project Team Co-Chairs

Jomarie B. Fredericks, Rotary International (United States)
Slobodan Petosevic, PETOSEVIC (Luxembourg)

Keynote Address

Íñigo Méndez de Vigo
Spain’s Minister of Education, Culture and Sport and government spokesperson

We are excited to welcome Íñigo Méndez de Vigo, Spain’s Minister of Education, Culture and Sport and government spokesperson, as the 2017 Annual Meeting Keynote speaker. In his role as Minister, Mr. Méndez de Vigo is responsible for developing and implementing government policy on professional training, university education and sports. The Minister is also responsible for promoting, protecting, and disseminating Spanish historic heritage and promoting cultural cooperation, overseeing state museums, the arts, books, reading and literary creation, film and audiovisual activity, and state-owned books and libraries, and for promoting and disseminating culture in Spanish.

Mr. Méndez de Vigo will share with registrants his views on the future of Europe and IP in this fast-paced and ever-changing world.

Welcome Reception

INTA is excited to bring the Annual Meeting back to Europe and Barcelona is an excellent host city. Join us at this great networking opportunity at the Fira Gran Via as we welcome all attendees to the 139th Annual Meeting.

Registration and Hospitality

Breakfast Table Topics

Committee Meetings

Continental Breakfast

Continental breakfast will be served daily until 10:00 am in the Hospitality Area in Hall 8.1.

Exhibition Hall

Visit the 100+ exhibitors displaying their products and services. Exhibitors include trademark solution providers, law firms, media companies, IP offices, trade associations, and government offices.

GENERAL SESSIONS

CM01 Exploring the Boundaries of Functionality: Aesthetic and Acquired Functionality in the United States and Europe
(Intermediate Level)

This panel will go beyond traditional notions of functionality and whether trade dress can be protected as design marks or 3D marks, to explore the outer boundaries, and often misunderstood notions, of aesthetic and acquired functionality. In particular, the panel will discuss:

• Timing for determining whether trade dress is functional in the United States and Europe: the time of conception or after secondary meaning acquired?
• Aesthetic functionality and acquired functionality; i.e., genericide for trade dress
• Functionality in word marks that indicate interoperability
• The new EUTM protections, extending beyond “shape”
• How function contributes to the value of a product

Moderator:
Ann Bartow, University of New Hampshire School of Law, Franklin Pierce Center for Intellectual Property (United States)

Speakers:
Sarah Burstein, University of Oklahoma College of Law (United States)
Dev Gangjee, University of Oxford (United Kingdom)
Mark McKenna, Notre Dame Law School (United States)
Miquel Peguera, Universitat Oberta de Catalunya (Spain)

CM02 Anti-Bribery: The Foreign Corrupt Practices Act (FCPA), the UK Bribery Act, and Beyond
(Intermediate Level)

Experienced practitioners will take a detailed look at anti-bribery issues around the world and discuss why they have become so important to everyone in trademarks, whether in industry or private practice.

Speakers will discuss topics covering:

• An overview of the key laws and why we have them
• Facilitation payments: What are they? Why do they matter? Do we pay bribes without realizing it? Is there any such thing as a “good bribe”?
• Issues in developing countries: Where bribes are a way of life, how can we stay clean and still succeed?
• Dealing with associates: How can we ensure that their actions don’t give rise to liabilities for those for whom they are acting?
• What can happen when it all goes wrong!

Moderator:
Stuart Adams, Rouse (Russian Federation)

Speakers:
Cecile Guillemard, Procter & Gamble France SAS (France)
Daniel Plane, SIPS – Simone Intellectual Property Services Asia Ltd. (Hong Kong SAR, China)

CM03 Trade Dress: Brands vs. Private Label—When Is It Too Close for Comfort?
(Intermediate Level)

Participate in a lively discussion of the general principles of trade dress and other protected rights in packaging, the balances and history of trade dress struggles between private label/store brands and consumer products, as well as the business realities and other influencing factors that come into play in this area of practice.

Speakers will offer their views on:

• General trade dress protection principles
• The history of trade dress struggles between private label and consumer products
• The current state of affairs
• The business realities and other influencing factors (Retail and brands are often competitors and business partners.

Moderator:
Karen Feisthamel, Kacvinsky Daisak Bluni PLLC (United States)

Speakers:
Melanie Bradley, Colgate-Palmolive Company (United States)
Joshua J. Burke, General Mills, Inc. (United States)
Ann Wessberg, Fredrikson & Byron, P.A. (United States)
John Pickerill, Fredrikson & Byron, P.A. (United States)

IM01 Industry Breakout: Trademark Issues in the News and Publishing Industries
(Intermediate Level)

The news and publishing industries are filled with fascinating trademark and branding issues. Join a panel of experts in the media and publishing industries as they explore ways to contend with issues such as fair use, rights of publicity, and trade dress infringement in the news and publishing spaces. The panel will look at how trademark rights and the rights of free speech around the world intersect and how this impacts trademark matters. Speakers will also discuss the issue of how to contend with “flattery” publications, which often are really just a form of trademark infringement. Finally, we will explore the public relations issues associated with enforcement of trademarks in the media and publishing spaces, which presents its own unique challenges and which can play a significant role in how trademark matters are treated in these areas.

Moderator:
Jeffrey D. Parnass, News Corporation (United States)

Speakers:
Karen Louie, Harlequin Enterprises Limited (Canada)
Nick Redfern, Rouse (Asia)
Kate Teh, Telegraph Media Group (United Kingdom)

Committee Meetings

GENERAL SESSIONS

CM20 Influential Communications: Becoming the Trusted Advisor
(Intermediate Level)

We all counsel clients for a living, but are we really communicating in a way that connects and inspires? This “soft skills” training session is designed to improve our ability to communicate in a manner that builds trust and helps us to better connect with clients and colleagues. Areas of focus will include active listening, culture and bias, non-verbal skills, recognizing and adapting to communication styles, and emotional intelligence and authenticity.

Speakers:
David H. McDonald, Johnson & Johnson (United States)
Say Sujintaya, Baker & McKenzie Ltd. (Thailand)

CM21 The Big Bang: When Trademarks Collide with Other IP Rights
(Intermediate Level)

Unlike other IP rights that are subject to time-limited protection, the potentially infinite protection that trademarks enjoy makes them a valuable tool for extending the IP protection of a product. This protection does, however, have its limits. This session will explore how different regions of the world address the conflict between (i) trademark protection for a product and (ii) patent, industrial design, and copyright protection for the same product. Topics covered will include:

• Differences in rationales and procedures for protecting trademarks vs. other IP rights
• Claiming trademark protection for product get-up with functional aspects
• Trademark rights in an embodiment disclosed, but not claimed, in a patent
• The interplay of and the clash between trademark and industrial design protection

Moderator:
Anthony M. Prenol, Blakes (Canada)

Speakers:
Iain Connor, Pinsent Masons LLP (United Kingdom)
Glenn Gundersen, Dechert LLP (United States)
Michael Williams, Gilbert + Tobin (Australia)

CM22 Trademark Litigation in Emerging Markets
(Intermediate Level)

Many of the most attractive opportunities for clients lie in emerging markets, whether it is for low-cost production, high-yield investment, or an attractive and populous territory for expansion of sales. Beyond traditional difficulties in international trademark enforcement, emerging markets present unique procedural and substantive challenges to trademark rights holders. This session will address these challenges, including:

• Accommodating practices and procedures in emerging markets, such as delays, frequent adjournments, and lack of costs sanctions for non-attendance at a hearing
• Developing strategies to address entering an emerging market and finding your mark already in use
• Establishing well-known trademark status within an emerging market absent active sales into the country

Moderator:
Rob Doerfler, Kellogg School of Management, Northwestern University (United States)

Speakers:
Zeynep Seda Alhas, Gun + Partners (Turkey)
Luiz Claudio Garé, Gare & Ortiz do Amaral – Advogados (Brazil)
Ranjan Narula, RNA, IP Attorneys (India)

RM20 Regional Update: Impact of Absence of Local Use in Trademark Protection in Latin America
(Intermediate to Advanced Level)

In this session, we will learn about acceptable use in the most important markets of Latin America (Mexico, the Andean Community, and Brazil) and how trademark owners can make sure to secure evidence of admissible use. We will also find out what regulations exist concerning foreign use and what effect the lack of local use has in trademark opposition and cancellation cases. Speakers will address relevant decisions and will explain how case law has developed in this area. Some of the important issues discussed will be:

• Requirements set forth by local laws regarding trademark use. What standards must be met to comply with use requirements?
• How do these requirements affect granted registrations?
• Is certain foreign use acceptable?
• What is the impact on trademark opposition and cancellation cases?
• What is the case law?

Moderator:
Audrey Williams, Benedetti & Benedetti (Panama)

Speakers:
Marcela Bolland, Uhthoff, Gomez Vega & Uhthoff, S.C. (Mexico)
Francisco Espinosa Reboa, Estudio Francisco Espinosa Bellido (Peru)
Rodrigo Affonso Ouro Preto, Ouro Preto Advogados (Brazil)

Luncheon Table Topics

Committee Meetings

Past Presidents and Past Counsel Luncheon
(By invitation only)

New! Lunch and Learn

Hear from an dynamic and innovative speaker while enjoying lunch.

Gerd Leonhard 

Gerd Leonhard is a widely-known and top-rated futurist, with over 1500 engagements in 50+ countries since 2004 and a combined audience of over 1 million people. Gerd focusses on near-future, ‘nowist’ observations and actionable foresights in the sectors of humanity, society, business and commerce, media, technology and communications. Gerd is also an influential author, a sought-after executive ‘future trainer’ and a trusted strategic advisor. He is the co-author of the best-selling book The Future of Music and the author of 5 other books including ‘The Humanity Challenge’ (June 2016). Gerd is also the host of the web-TV series TheFutureShow and the CEO of TheFuturesAgency, a global network of over 30 leading futurists.

Gerd’s keynotes, speeches and presentations are renowned for their hard-hitting and provocative yet inspiring, often humorous and always personal motivational style. Gerd is highly regarded as a global influencer and has advised many business leaders and government officials around the globe.

Professors Luncheon
(For full–time professors)

The annual Professors Luncheon will feature a discussion of practical aspects of the application of trademark law to business endeavors in the sports industry by in-house intellectual property attorney, Anna Guix Tornos and head of marketing, Vane Basora, from FC Barcelona. Matthew Asbell from Ladas & Parry LLP will moderate the panel.

GENERAL SESSIONS

CM50 A Passage out of China—Is It Any Easier?
(Intermediate Level)

This session is an update on Chinese trademark law and practice and the impact on foreign companies manufacturing in China, particularly for export. This includes (1) a strategy for the registration of marks in China, with emphasis on clearing the path for export; (2) using registrations in enforcement actions in China to prevent unauthorized exports; and (3) shifting the analysis to creative legal strategies to prevent or hinder the sale or marketing of counterfeits and—in particular—infringing gray market goods (or parallel imports) at their unauthorized destinations.

Moderator:
Timothy Golder, Allens (Australia)

Speakers:
Michael Shu, Zhong Lun Law Firm (China)
Scott R. Miller, MBM Intellectual Property Law LLP (Canada)
Dan Plane, SIPS – Simone Intellectual Property Services Asia Ltd. (Hong Kong SAR, China)
Volker Schmitz-Fohrmann, Boehmert & Boehmert (Germany)

CM51 New EU Trademark Law: The Reform Is Not Over!
(Advanced Level)

The Amending Regulation and the new EU Trademark Law Directive have been in force since early 2016, but additional changes in the law and brand-new secondary law will apply beginning October 2017. The deadline for the Member States to implement the new Directive is drawing closer, and the new law is starting to have a real impact on prosecution and enforcements of EU trademarks. A panel of sought-after experts on these aspects will provide insights and updates of immediate value for anybody dealing with trademarks in the EU.

Discussion will include:

• Background on the draft delegated and implementing acts that have been available since late 2016 and which enter into force on October 1, 2017
• Update on EUIPO practice under the new law that entered into effect March 23, 2016
• Legislative progress in the Member States regarding transposition of the new Directive: advances made and discussions
• First experiences with the new law, and, in particular, goods in transit and intervening rights provisions before EU trademark courts

Moderator:
Verena von Bomhard, Bomhard IP (Spain)

Speakers:
Ana Castedo, Hogan Lovells International LLP (Spain)
Tomás Eichenberg, European Commission/DG GROW (Belgium)
Michael Hawkins, Noerr Alicante IP, S.L. (Spain)
András Jókutí, Hungarian Intellectual Property Office (HIPO) (Hungary)

CM52 The Trademark Attorney’s Second Job: Spotting Key (Non-IP) Issues in Social Media
(Beginner to Intermediate Level)

This panel will focus on legal areas that are not exactly within the typical scope of a trademark professional, but areas on which they will likely come across or overlap now that social media is a part of doing business.

Issues to be discussed include the following:

• U.S. FTC decisions on social media advertising, including native advertising, influencer advertising, endorsements, employee advocacy programs, and best practices.
• Issues in live broadcasting on social media (includes United States and China).
• Other watch-outs for social media advertising or communications based on regulatory concerns (includes United States and China).
• Tips for social media policies (includes United States and China).
• Overview of China’s social media, including an overview of common social media platforms, trends, China State Administration of Industry and Commerce SAIC) decisions on social media advertising, and legal watch-outs or best practices.

Moderator:
Ann Chen, Abbott Laboratories (United States)

Speakers:
Jake Feldman, Johnson & Johnson (United States)
Anna Mae Koo, Vivien Chan IP Services (Beijing) Limited (China)

RM50 Regional Update: Protection and Enforcement Strategies in Africa
(Intermediate Level)

Speakers who practice across the continent will share their views and give updates on:

• Recent ground-breaking case law in Africa.
• The effectiveness of the Madrid Protocol in Africa and the implementation thereof by the African Registries.
• Anti-counterfeiting strategies in Africa, focusing on jurisdictions without counterfeit goods legislation.

Moderator:
Nolwazi Gcaba, Adams & Adams (South Africa)

Speakers:
Godfrey Bundeli, Adams & Adams (South Africa)
Vanessa Ferguson, Kisch IP (South Africa)
Monique Gieskes, Vlisco Netherlands B.V. (Netherlands)
Darren Olivier, Adams & Adams (South Africa)

Committee Meetings

China Trademark Association Panel

Speakers will focus on two main issues in separate panels focused on trademark protection and bad faith registrations. Speakers from government agencies, corporations and law firms will share their perspectives on these important issues and more:

• Reforming Measures to Facilitate Trademark Registration
• New Progress of Trademark Review since 2016
• Update on IPR protection of the e-commerce platform
• How to Protect IPR at Alibaba Platforms?
• A Survey of the Judicial Protection of Trademarks in China – A Case Study of the Large Data Analysis of the Trademark Lawsuits in China in 2016• Redefine Domain Name Registration and Protection Mechanism from the Trademark Protection Perspective
• Redefine Domain Name Registration and Protection Mechanism from the Trademark Protection Perspective
• New Strategy and New Model of IP Service in China under the transformation from  Made-in-China to Branded-in-China.
• The Perspective from CIPRUN’s Practice

Introductions:
Ouyang Shaohua, Deputy Counsel, The State Administration for Industry and Commerce, Trademark Office of the People’s Republic of China (CTMO, SAIC)
Li Zhijun, Deputy Director General, Trademark Review and Adjudication Board (TRAB) , SAIC

Facilitators:
Cao Hongying, Deputy Director General, TECC, SAIC
Ma Hao, President, Trademark Agent branch, China Trademark Association
Huang Hui, Senior Partner, Wan Hui Da

Speakers:
Ellen Lin,  Senior Legal Director of JD Group
Lynn X.L. FU, Brand Protection Cooperation Director, Platform Governance Department, Alibaba Group
Pu Xiang, CEO, IPhouse
Dennis Cai, President, Policy and Compliance, Domain Registry
Kong Junmin, Chairman, CIPRUN
Julia Zhong, Vice President of Lee and Li – Leaven IPR Agency Ltd.
Lena Shen, Partner, Beijing Sanyou Intellectual Property Agency Ltd
Huang Yajun, Senior Partner, Lifang & Partners

Concluding Speaker:
Xiao Yun, Deputy Secretary General, CTA

IP Office and Attaché Open House
Open to all registrants

This event is open to all Annual Meeting registrants and you are encouraged to take advantage of this special opportunity to get acquainted with IP Offices from around the world in a casual two-hour open house. This event will link the perspectives of IP Offices and IP Attachés to the global trademark community in an exciting, comfortable atmosphere and give registrants the valuable opportunity to meet with their local IP Office or Attaché or meet with an IP Office from a country of interest. Learn about the various initiatives and advocacy projects IP Offices are pursuing across the globe.

Participating IP Offices and Attachés:

• African Regional Intellectual Property Organization (ARIPO)
• IP Australia
• National IP Center of Georgia
• Organisation Africaine de la Propriete Intellectuelle
• Swedish Patent & Registration Office / SPRO
• The Danish Patent and Trademark Office
• United Kingdom Intellectual Property Office IP Attachés
• USPTO IP Attaché for Mercosur, Guianas,  Suriname (stationed in Rio de Janeiro, Brazil), and and IP Attaché for the Middle East & North Africa
• Japan Patent Office
• IP Office of the Supreme Court of Justice of Paraguay

India Reception

This reception provides registrants from India with an invaluable opportunity to network with colleagues and share experiences concerning the benefits and challenges of doing business in India. This reception provides an opportunity to meet with INTA’s CEO, India Representative and other INTA staff.

Africa Reception

This reception provides registrants from Africa with an invaluable opportunity to network with colleagues and share experiences concerning the benefits and challenges of doing business in the region. This reception provides an opportunity to meet with INTA’s CEO and other INTA staff.

Asia-Pacific Reception

Network with colleagues and share experiences of doing business in Asia. This is the must-attend reception for those in the INTA community who want to be plugged into our extensive Asia network and presents the opportunity to meet with INTA’s CEO and the Chief Representative of the Asia-Pacific office.

Latin America Reception

This reception provides registrants from Latin America with an invaluable opportunity to network with colleagues and share experiences concerning the benefits and challenges of doing business in the region. This reception provides an opportunity to meet with INTA’s CEO and other INTA staff.

China Reception

This reception provides registrants from mainland China with an invaluable opportunity to network with colleagues and share experiences concerning the benefits and challenges of doing business in the region. This reception provides an opportunity to meet with INTA’s CEO and other INTA staff from the China Office and NY Headquarters.

Middle East Reception

This reception provides registrants from the Middle East with an invaluable opportunity to network with colleagues and share experiences concerning the benefits and challenges of doing business in the region. This reception provides an opportunity to meet with INTA’s CEO and other INTA staff.

President’s Dessert Reception
(By invitation only)

Registration and Hospitality

Breakfast Table Topics

Committee Meetings

Continental Breakfast

Continental breakfast will be served daily until 10:00 am in the Hospitality Area in Hall 8.1.

INTA Roundtable Hosts Breakfast
(By invitation only)

The Roundtable Hosts Breakfast honors the hosts of the INTA roundtables that have taken place between June 2016 and May 2017. The Association is grateful to the many volunteers who have contributed to the roundtable program’s success.

IP Office Workshop: Working towards the 21st Century IP Office
(Exclusive to IP Office Representatives)

IP office officials are invited to join the second annual, all-day workshop developed exclusively for IP offices around the world. Coordinated by IP Australia and Colombia’s Ministry of Industry, Commerce and Tourism Office, the workshop will feature an open session to all Annual Meeting registrants and then several closed-door sessions for IP office registrants. This full day of programming is an excellent opportunity for registrants from your office to benchmark with other offices, network, and learn.

Exhibition Hall

Visit the 100+ exhibitors displaying their products and services. Exhibitors include trademark solution providers, law firms, media companies, IP Offices, trade associations, and government offices.

Trademark Scholarship Symposium

The Symposium offers academics and practitioners from around the world the chance to participate in small group discussions of scholarly works in progress in the field.

Presenters:
Ivana Kunda & Igor Materljan – “The EEA ‘Grey Market’ in Trademarked Products – How Many Shades of Grey?” (EU)
Shubha Ghosh – “First Amendment and the Death of Trademark”
Diana Pawlowska – “Harmonization of Classification in Europe”
Neil Wilkof – “Branding, Co-Branding & Innovation: The Dynamics of Leveraging Interdependancy and Brand Strength”

GENERAL SESSIONS 

CT01 Annual Review of Leading Case Law in the European Union
(Intermediate to Advanced Level)

Intended for a global audience, where speakers from Europe will provide a wide-ranging and concise analysis of recent key decisions that have shaped European trademark law.

Speakers:
Jordi Guell, CURELL SUNOL S.L.P. (Spain)
Guy Heath, Nabarro LLP (United Kingdom)
Georg Jahn, Noerr LLP (Germany)

CT02 Potential Liability of Intermediaries in the Real World
(Intermediate Level)

Industry experts will discuss the issues brand owners face in trying to tackle the problem of shipments of counterfeit goods both by sea freight and small packages by air. We will also hear of the efforts being made by the shipping industry to help ensure the goods they transport are not fake and the new realty of the direct selling of fake products. Discussion will include:

• New problems faced by brands
• The role played by counterfeiting facilitators
• How brand owners are working with the maritime industry to improve their “know your customer” (KYC) policy without impacting their ability to do business quickly
• Committing the maritime industry to a voluntary set of overarching principles in a declaration of intent

Moderator:
Jose Luis Arnaut, CMS Rui Pena & Arnaut (Portugal)

Speakers:
Toe Su Aung, Elipe Limited (United Kingdom)
Isabelle Madec, Clarins (France)
Valerie Sonnier, Louis Vuitton Malletier (France)

CT03 IP Representations and Related Provisions in M&A Transactions
(Intermediate Level)

This session will provide an overview of the various IP-related representations, warranties, and other provisions that trademark lawyers typically need to draft and negotiate in M&A and other complex corporate transactions.

Topics addressed will include:

• Overview of different transaction structures
• IP representations and warranties
• Transitional trademark licenses
• Special considerations for asset transfers

Moderator:
Aaron Hendelman, Wilson Sonsini Goodrich & Rosati (United States)

Speakers:
Nemone Franks, Linklaters LLP (United Kingdom)
Jeremy Roe, Anheuser-Busch InBev Services, LLC (United States)
Kristin Stammer, Herbert Smith Freehills (Australia)

IT01 Industry Breakout: Beyond #Ad—Guidelines and Guardrails for Working with Social Influencers and Brand Advocates
(Intermediate Level)

From social media policies and the protection of IP rights to common pitfalls and creative disclosures, this panel discussion will focus on the ins and outs of engaging third parties to advocate for a brand. The panelists will examine FTC guidance and enforcement cases regarding social influencers, as well as relevant case law and aspects of codes and guidelines applicable in the UK and EU, including the ASA British Code of Advertising Practice and the OFCOM Broadcasting Code.

Moderator:
Nicolette Hudson, Express, LLC (United States)

Speakers:
Thomas A. Adams, The Procter & Gamble Company (United States)
Staci Riordan, Nixon Peabody LLP (United States)
Adrian Smith, Simmons & Simmons LLP (United Kingdom)

Trademark Scholarship Symposium II

The Symposium offers academics and practitioners from around the world the chance to participate in small group discussions of scholarly works-in-progress in the field.

Presenters:
Rob Batty – “Lessons for Trademark Registration Systems from Torrens System of Land Recording (New Zealand)”
Glynn Lunney – “Trademark De-evolution” (US)
Apostolos Chronopoulos – “De jure functionality of shapes driven by technical consideration in manufacturing processes (UK)”
Victoria Schwartz – “The Celebrity Stock Market” (US)

GENERAL SESSIONS

CT20 Strategies for Online Brand Protection
(Advanced Level)

Brand protection experts will discuss the threat of counterfeiting online, including:

• The global scale of the problem
• Current challenges (fragmentation, postal courier impact, evidence collection, etc.)
• The importance and limits of awareness and cooperation initiatives (consumer education, MoUs, position papers, roundtables, etc.)
• The importance of suitable enforcement means (regulatory, investigative, and judiciary)

Moderator:
Stanislas Barro, Novartis (Hong Kong SAR, China)

Speakers:
Olivier De Combret, Chanel SAS (France)
Louise Delcroix, eBay Asia Pacific (Singapore)
John Kim, Lee & Ko (South Korea)
Eli Musfisovski, REACt (Balkans)
CT21 The Answer Is Not Always “It Depends:” Fair Use and Freedom of Expression under Copyright and Identity Rights Laws
(Intermediate Level)

“Why can’t I use this photograph? I downloaded it from the Internet and I see it all over!?”

“That actor has been dead for a long time, it would be funny to reference him in this tweet. You lawyers have no sense of humor!”

Have you encountered these questions/reactions in your practice? If so, then this panel will help you. We will explore the sometimes challenging but always interesting application of the doctrine of fair use–using other parties’ content, names, and likenesses. The panel will discuss the different standards under U.S. copyright and  right of publicity laws, touch upon how similar issues are treated in Europe, and address hypothetical examples of ad copy, press releases, and social media postings typically encountered by companies and outside counsel in order to provide real world guidance.

Moderator:
Craig Mende, Fross Zelnick Lehrman & Zissu, P.C. (United States)

Speakers:
Anthony T. Falzone, Pinterest, Inc. (United States)
Jonathan S. Jennings, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP (United States)

IT20 Industry Breakout: Fashion—What’s in a Name? Designers’ Names as Marks
(Advanced Level)

From Alexander Wang to Zac Posen, fashion designers have long chosen to use their personal names as their primary trademark. While using a personal name trademark can result in recognition and acclaim for the individual designer, personal names can present challenges ranging from establishing trademark rights to enforcement to eventual sale of a business. In this session, panelists will use a mock scenario to discuss the limitations of using names as brands, potential disputes over a designer’s right to use his or her name after an acquisition, and some practice pointers when addressing the ongoing right to use a personal name as a trademark in contracts and license agreements, from both U.S. and European perspectives.

Moderator:
Christine Hernandez, The H.D. Lee Company, Inc. (United States)

Speakers:
Anthony V. Lupo, Arent Fox LLP (United States)
Laurence Morel-Chevillet, Bulgari SpA (Italy)
Maricruz Villanea, Ideas Trademarks and Patents (Costa Rica)

RT20 Regional Update: Middle East and North Africa (MENA)
(Intermediate Level)

Speakers from the region will have a practical discussion on social media and IP issues in MENA including:

• An overview on social media usage and some basic statistic for MENA.
• Level of regulation of social media in each jurisdiction.
• High-profile examples of case law.
• Governmental approach to social media—use, monitoring, and intrusion.

Moderator:
Chad Dowle, Rouse & Co. International LLP (United Arab Emirates)

Speakers:
Bahieldin Elibrachy, Ibrachy & Dermarkar (Egypt)
Asif Iqbal, Kadasa & Partners (Saudi Arabia)
Jon Parker, Gowling WLG (United Arab Emirates)
Edward Hardcastle, Rouse & Co. International LLP (United Arab Emirates)

KIPO Users Meeting: Recent Development and Changes in Korean Trademark Law and System and Examination Practice

Open to all! Join KIPO trademark representatives for an informational users meeting. Attendees will be able to get an update on the KIPO’s recent activities and representatives will also provide information on trademark examination practices in Korea. Questions will also be taken from users.

Speakers:
Kijoong Song, Deputy Director in Trademark Examination Policy Division, KIPO (South Korea)
Jongin Lee, Trademark Examiner in TM examination Team 1, KIPO (South Korea)

Luncheon Table Topics

Committee Meetings

New! Lunch and Learn

Hear from an dynamic and innovative speaker while enjoying lunch.

Paul Birch

From baggage handling to market tactics and strategies, from mergers and acquisitions to Head of Business Planning. Paul Birch possesses a deep working knowledge of the complexities of corporate management at all levels and a passion for creating both organisational innovation and business cost effectiveness.

Paul was instrumental in the 1990s turnaround of BA’s culture. He helped develop the BA brand when at its very best, as well as taking a billion pounds out of the five billion cost base – astonishingly without incurring any industrial action.
His most innovative role, created in conjunction with the Chief Executive, was that of Corporate Jester – no joke, but a bold step that allowed him to challenge the complacency and out-of-touch world that can exist at the top of any large organisation. The role was a great success, with the side-effect of generating hugely positive media coverage for BA, leading to job applications which said that any company that employed a jester sounded like a great place to work!

Whether co-ordinating a team of consultants and merchant bankers to secure an investment in USAir, forecasting fuel pricing for the airline, helping to develop Club World, or negotiating rosters with union officials, his approach at BA was led by his belief in the innate capacity for people to think innovatively and creatively together, and find winning solutions.

Paul’s engaging speech will share practical tips on how to foster creativity and innovation in you work, life and beyond.

Trademark Scholarship Symposium III

The Symposium offers academics and practitioners from around the world the chance to participate in small group discussions of scholarly works–in–progress in the field.

Presenters:
Michael Handler – “Reforming Over-Reaching Rules Within Trademark Registration System – What Australia and US Can Learn From Each Other”
Connie Davis Nichols – “Article 6(bis) of the Paris Convention for Well – Known marks: Does it Establish an Independent Right to Challenge a Registered Mark in the United States By a Foreign Mark Holder?”
Arpan Banerjee – “Trademark Censorship in Hollywood and Bollywood”
Stacey Dogan – “Harm, Benefit, & Justification in United States Trademark Law” 

An Open Discussion with IP Offices
(Open to all Annual Meeting Registrants)

A recent INTA survey identified three common themes of interest to members in their interactions with trademark offices:

• Electronic filings and transactions with customers.
• Customer education initiatives.
• Quality and consistency.

Speakers:
Fatima Beattie, IP Australia (Australia)
Ana Cariño, Oficina Espanola de Patentes y Marcas (Spain)
Jose Luis Londoño Fernandez, Ministry of Industry, Commerce and Tourism (Colombia)

GENERAL SESSIONS

CT50 Social Media: Where Is it Going, and Can We Ethically Get There?

This session will address novel and provocative legal ethics issues (applicable to U.S. lawyers) raised by the rapidly evolving communication platforms that are transforming every corner of our world. Key topics will include:

• What is social media and why is it different?
• How has the informal and immediate nature of modern communication changed legal practice and the business of our clients?
• How do lawyers and companies use, need, and abuse social media?
• What does the future hold for social engagement?
• What rules and frameworks should you consider and understand?

Moderator:
Darren S. Cahr, Drinker Biddle & Reath LLP (United States)

Speaker:
Ann Chen, Abbott Laboratories (United States)

CT51 Wine, Women, Song…and a Cigarette: The Perils of International Advertising
(Intermediate Level)

The increase in both globalization of brands and digitalization of communications means that brand owners are looking to create single campaigns that can be used to flow through their key international markets. That’s great in theory, but what are the practical problems that these international advertising campaigns face? This session will take a helicopter viewpoint of the advertising industry itself, the use of international campaigns, and drill down into two areas that highlight the different national approaches: (1) taste and decency and (2) comparative advertising. We will also look to the future by discussing the impact of plain packaging on the tobacco industry and what this might mean down the line for advertising within the alcohol, fast food, and soft drink industries.

Moderator:
Dominic Farnsworth, Lewis Silkin LLP (United Kingdom)

Speakers:
Christopher R. Chase, Frankfurt Kurnit Klein & Selz, P.C. (United States)
Stephen Marcus Stern, Corrs Chambers Westgarth (Australia)

CT52 New Version 3.0 of WIPO’s UDRP Jurisprudential Overview
Beginner Level

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions is the premier global jurisprudential UDRP resource, covering, by way of distilling the collective wisdom of tens of thousands of WIPO domain name cases decided over the span of well over a decade, numerous frequently raised key substantive and procedural topics. Hardly a domain name case is filed by trademark counsel or decided by panelists nowadays without consultation of or citation to the WIPO Overview. As the Overview’s current “2.0” edition dates back to 2011, the WIPO Arbitration and Mediation Center has been investing considerable effort in a ground-up update of this jurisprudential resource.

WIPO staff and two pre-eminent WIPO UDRP panelists will give a timely preview of the WIPO Overview 3.0. Not only will the revised WIPO Overview inform users of updates to UDRP jurisprudence over the five years since its last revision, but it should also establish benchmarks for ICANN’s policy review.

Speakers:
Brian Beckham, World Intellectual Property Organization (WIPO) (Switzerland)
David Bernstein, Debevoise & Plimpton LLP (United States)
Erik Wilbers, World Intellectual Property Organization (WIPO) (Switzerland)
Tony Willoughby, WIPO UDRP panelist (United Kingdom)

RT50 Regional Update: Trademark Use in infringement and Non-use Cancellation

Speaker will cover recent Chinese cases relating to reverse infringement (e.g., WeChat/微信, New Balance/新百伦 clothing, Henda/恒大 mineral water, Feichengwurao/非诚勿扰 match-making services), which caused much controversy.

Moderator:
Tingxi Huo, Chofn Intellectual Property (China)

Speakers:
Charles (Chao) Feng, East & Concord Partners (China)
Shujie Feng, Cabinet LLR China Intellectual Property and an associate professor of law at Tsinghua University (China)

In-House Practitioners Industry Exchanges
(Exclusive to in-house practitioners; advanced registration required)

In-house practitioners have the ability to participate in moderated discussions with their corporate colleagues. Onsite registration will not be available.

Committee Meetings

Trademark Scholarship Symposium IV

The Symposium offers academics and practitioners from around the world the chance to participate in small group discussions of scholarly works–in–progress in the field.

Presenters:
Jan Dohnal – “Geographical Indications v. Trademarks: A comparison Between EU and U.S. Legislation”
Veronica Canton – “DMCA Challenges Regarding Secondary Liability and Wrongful Classification of Trademark Infringement” (US)
Quentin Ullrich – “Real Consumer Language: A Corpus-Based Methodology For Genericide Claims and Trademark Protection”

Legal Resources Contributor Reception
(By invitation only)

In-House Practitioners Reception
(Exclusive to in-house practitioners)

Join fellow in-house practitioners and corporate trademark professionals for cocktails and light refreshments during this exclusive networking opportunity.

INTA Political Action Committee (PAC) Reception
(By invitation only to non-corporate INTA Members who are U.S. citizens or permanent residents)

Show your support for the International Trademark Association Political Action Committee (PAC) by attending this reception. A contribution for this event will be used to support the campaigns of U.S. federal candidates identified by the INTA PAC Board as having shared interests with the trademark community. INTA accepts both personal checks and those drafted from non-corporate INTA member firm accounts, as well as all major credit cards. Donations can also be made online.

Only non-corporate, non-reimbursed contributions to INTA PAC will be accepted. Contributions to INTA PAC are not deductible for income tax purposes.

Government Officials Reception
(By invitation only)

Join INTA’s leadership and government officials from around the world for a reception thanking these officials for their dedication and support of the trademark community. This reception provides an opportunity for officials to share information and best practices with their colleagues in the trademark community.

Registration and Hospitality

Breakfast Table Topics

Committee Meetings

Continental Breakfast

Continental breakfast will be served daily until 10:00 am in the Hospitality Area in Hall 8.1.

Sponsors Breakfast
(By invitation only)

Exhibition Hall

Visit the 100+ exhibitors displaying their products and services. Exhibitors include trademark solution providers, law firms, media companies, IP offices, trade associations, and government offices.

GENERAL SESSIONS

CW01 Contracts with Vertical Restrictions: Trademarks and Selective Distribution Agreements—Protecting Distribution Networks Around the World with Trademarks
(Intermediate Level)

Experienced IP experts will discuss:

• How trademark owners use trademarks to protect their distribution network
• Enforcing trademark rights beyond exhaustion
• Value of trademark rights once the product is already in the market
• Defending your distribution stategies in the face of anticompetition issues

Moderator:
Salvador Ferrandis, Salvador Ferrandis IP Legal SLP (Spain)

Speakers:
Mario Soerensen Garcia, Soerensen Garcia Advogados Associados (Brazil)
Arty Rajendra, Osborne Clarke (United States)
Julia K. Sutherland, Seyfarth Shaw LLP (United States)

RW01 Regional Update:Developing an IP Strategy for South East Asia/Australia/New Zealand
(Beginner to Intermediate Level)

This is a moderated panel discussion about IP strategy within the region with Q&A opportunity. Join speakers from the region who have experience developing an IP strategy as they discuss:

• Brief case law and legislation update.
• IP pitfalls and strategies around doing business in the region, illustrated with real-life examples.

Moderator:
Jonathan Aumonier-Ward, AJ Park (New Zealand)

Speakers:
Caroline Francis, RamRais & Partners (Malaysia)
Vanja Kovacevic, Schmitt & Orlov Intellectual Property Co Ltd (Vietnam)
Titirat Wattanachewanopakorn, ZICOlaw (Thailand)

CW02 The Future of Trademark Protection in a World of Mega-Regional Agreements
(Intermediate Level)

From the Trans-Pacific Partnership Agreement (TPP) to the Transatlantic Trade and Investment Partnership (TTIP) to the Regional Comprehensive Economic Partnership (RCEP), mega-regional agreements have become one of the most important forums for discussions on the future of trademark protection and the development of trademark policies for the 21st century. This panel assembles a unique constellation of expert international trade negotiators and policy-makers, who will share their insights on mega-regional agreements and international trade agreements in general and the importance of these agreements for brand owners and trademark practitioners.

Moderator:
Irene Calboli, Texas A&M University (United States) and Singapore Management University (SMU) (Singapore)

Speakers:
Lauma Buka, European Commission/DG TRADE (Belgium)
Probir Mehta, Assistant U.S. Trade Representative for Innovation & Intellectual Property, Office of the U.S. Trade Representative (United States)
Daren Tang, Intellectual Property Office of Singapore (Singapore)

Committee Meetings

GENERAL SESSIONS

CW20 Annual Review of U.S. Federal Case Law and TTAB Developments
(Advanced Level)

Plan to attend this INTA annual favorite and hear a concise analysis of recent major decisions rendered by the U.S. courts and the Trademark Trial and Appeal Board (TTAB), as reported in Vol. 106, No. 1 of The Trademark Reporter.

Speakers:
Theodore H. Davis, Kilpatrick Townsend & Stockton LLP (United States)
John L. Welch, Wolf, Greenfield & Sacks, P.C. (United States)

RW20 Regional Update: Limits on Trademark Rights in India—Focus on Plain Packaging and Surrogate Advertisement
(Intermediate Level)

This session will explain the start of limits on trademark rights by lawmakers who introduced plain packaging for tobacco products and how the tobacco industry has mastered the art of surrogate advertisement. The session will seek to explore the middle path that rights holders and lawmakers have to walk so that the trademarks owners’ rights to market their products are not defeated by public health measures, while not compromising the public’s health.

Moderator:
Rahul Beruar, Clasis Law (India)

Speakers:
Chander Lall, Singh & Singh Lall & Sethi (India)
Hemant Singh, Inttl Advocare (India)

Luncheon Table Topics

Committee Meetings

Grand Finale

Enjoy an evening at Barceloneta Beach. Explore the different restaurants on the boardwalk and enjoy the music and atmosphere, all while networking with registrants one last time during the Meeting.