As the end of the year draws closer and consumers are busy purchasing gifts for their loved ones, many people rely on the Internet to find the perfect gift, often to be delivered (preferably before the holidays) in small parcels.
In that context, a report released on December 12 by the European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Cooperation and Development (OECD) on Misuse of Small Parcels for Trade in Counterfeit Goods is timely.
The report is the latest in a series of joint EUIPO-OECD studies that analyze the impact on the economy of the global trade in counterfeit and pirated products, as well as their share of international trade. It covers global trade from 2011 to 2013 and uses data obtained from several sources.
The main—and concerning—findings include:
- Two-thirds of all customs seizures involve small parcels. Between 2011 and 2013, nearly 63 percent of customs seizures of counterfeit and pirated goods involved small parcels. This trend is even more concerning in the European Union: according to the European Commission, 76 percent of fake goods intercepted in the European Union in 2017 had been sent via small courier and postal shipments.
- Very small parcels are the majority. The size of these shipments tends to be very small, with packages of 10 items or less accounting for the majority of all seizures.
- Several sectors are most common. Of the postal parcels and express courier shipments seized by customs, 84 percent were counterfeit footwear; 77 percent were fake optical, photographic and medical equipment (mostly sunglasses); 66 percent were counterfeit information and communications technology devices; and 63 percent, were counterfeit watches, leather articles and handbags, and jewelry.
Given these findings, the report notes: “Policy makers and the private sector should be concerned about the significant scope of counterfeit trade using small parcels to harm legitimate businesses and economic activity, and to cause damage to the health, safety and security of citizens.”
While the study does not include detailed recommendations, it does offer some general suggestions that are worth exploring: develop more effective cooperation between customs authorities, postal and express couriers, e-commerce platforms, and right holders, in particular by improving mechanisms for collecting and sharing quality information, and improve risk assessment techniques to help customs authorities determine which packages should be checked.
It is now in the hands of rights holders, postal operators, and public authorities to define and implement solutions—a welcome gift for the holiday season.
Congressional briefing panelists provide insight about the direct health and safety challenges presented by counterfeit goods.
On December 6, INTA, in collaboration with the Congressional Trademark Caucus (CTC) and the Global Innovation Policy Center (GIPC), hosted a Congressional briefing entitled “What You Need to Know about Counterfeit Products during the Holiday Shopping Season.” The briefing was held in the United States House of Representatives’ Rayburn House Office Building.
Debbie Cohn, INTA’s Senior Director of Government Relations based in Washington, D.C., provided opening remarks about the importance of education and outreach to consumers about the dangers presented by counterfeit products. Additionally, Ms. Cohn shared information about INTA’s museum exhibit, about trademarks and counterfeiting, at the National Inventor’s Hall of Fame Museum (NIHF) at the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia. The exhibit includes useful tips for consumers on how to avoid purchasing counterfeit goods. Ms. Cohn noted that the museum is free and open to the public, and encouraged attendees to visit the museum and see the exhibit for themselves.
The briefing featured a special address from White House Intellectual Property Enforcement Coordinator (IPEC) Vishal Amin, as well as a panel featuring U.S. Federal government speakers and representatives from the business and nonprofit community. The discussion focused on intellectual property (IP) enforcement, consumer education, and awareness outreach.
With the IPEC office celebrating the 10th anniversary of its formation, Mr. Amin focused on his Office’s Joint Strategic Plan on IP Enforcement. The plan defines a roadmap for government coordination and stakeholder outreach for addressing the issues and challenges presented by counterfeiting.
The panel included IP experts from the U.S. Consumer Product Safety Commission (CPSC), the National Intellectual Property Rights Coordination Center (IPR Center), U.S. Customs and Border Protection (CBP), the U.S. Department of Justice (DOJ), and the National Crime Prevention Council (NCPC). It was moderated by Michael Castellano, Vice President of Government Relations from The Walt Disney Company. The speakers covered a wide range of government coordination efforts including:
- interdiction of counterfeits at U.S. ports of entry;
- addressing challenges presented by shipping processes; and
- strategies for outreach to consumers, including young consumers, about the health and safety dangers presented by counterfeit goods.
The panel highlighted the need for consumers to be ‘smart shoppers’ on all fronts. Specifically, consumers should be encouraged to research and examine online purchasing processes before determining where to purchase goods in order to ensure that they are indeed buying the authentic goods from sources they know and trust.
A full report about the Congressional briefing and other recent events in Washington, D.C. will be published in the INTA Bulletin early in the new year.
Featured in the above photo from left to right: Moderator: Michael Castellano Vice President, Government Relations The Walt Disney Company and panelists: Jim Joholske Director, Office of Import Surveillance U.S. Consumer Product Safety Commission, Dawn Nelson Chief, Intellectual Property Unit, National Intellectual Property Rights Coordination Center, Homeland Security Investigations, Bradley Hayes Executive Director, Office of Trade Relations U.S. Customs and Border Protection, Ann Harkins CEO, National Crime Prevention Council and Brian Levine Senior Counsel and National CHIP Coordinator, U.S. Department of Justice .
INTA’s committees are at the core of the Association, with volunteers contributing to advocacy, resources, communication, and the planning of educational events that drive INTA—and the trademark community—forward.
With that in mind, INTA’s Board of Directors on November 6 adopted a formal process to add new committees and sunset others. The new process is now included in the INTA Code of Policies.
The Board acted on a proposal submitted by the Planning Committee, which was charged with developing a formal and transparent framework for receiving and reviewing suggested changes to INTA’s committee structure.
For the next committee term, 2020‒2021, members and staff must submit proposals to add or sunset committees by December 15, 2018, for consideration by the Planning Committee in the selection process that takes place in 2019.
The process spells out who is eligible to propose a change and what must be included in the proposal. For example, suggestions for a new committee must state, in part, how the mission of the committee supports the objectives of the Association and/or the Strategic Plan, while suggestions to sunset a committee must explain why the committee is no longer needed and whether the goals or tasks should be incorporated elsewhere.
The action carries out the Implementation Plan of INTA’s 2018‒2021 Strategic Plan. The Implementation Plan calls for the creation of committee management tools and standardized processes and procedures to improve the efficiency of the committee structure, enhance the overall committee experience, and enable the Association to adapt to members’ evolving needs.
Details on who is eligible to put forth a proposed change and on the information required are available on INTA’s Committee Participation page.
* The following blog post is by Bassel El Turk, Rouse (United Arab Emirates) and Vanessa Ferguson, KISCH IP (South Africa) who are the co-chairs of the 2018 Middle East and Africa Conference. – GM
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Intellectual property (IP) is no longer a standalone topic. Business owners, trademark professionals, and practitioners cannot look solely at traditional perspectives surrounding IP and expect to achieve success locally or globally.
Nowhere is this more apparent than in emerging markets, such as those in the Middle East and Africa. As foreign investors increasingly eye these regions and as the Middle East transforms into an innovation- and knowledge-based economy, IP is taking on an increasingly significant role. IP has become a major component of business and economic objectives.
Steady commercial activity and innovation call for greater harmonization of trademark protection as well as robust IP strategies for effective protection and enforcement.
No longer does IP sit alone in a box. We all need to look at IP’s business value, including the marketing value that can be derived from it.
Along these lines, today, IP practitioners must understand that their roles go beyond IP, to that of business consultants at their organizations. And brand owners must view IP teams through a new lens: they are not cost centers but, rather, add value to a company’s business.
Conference Takes Holistic View
INTA’s 2018 Middle East and Africa Conference: Innovation, Investment, and IP, December 10‒11, in Dubai, United Arab Emirates, will explore these new perspectives. The conference will take a holistic view, examining IP from different angles and showcasing how IP has become important on both macro and micro levels.
At its core, the conference is about examining the impact IP has on investment and innovation—and vice versa, the impact that investment and innovation have on IP.
It will offer robust discussion about the opportunities and challenges of attracting investment into the region, as well as effective strategies to prioritize IP to support an innovation-based economy.
Hosting this conference in Dubai, an up-and-coming hub of innovation and IP, allows professionals to converge in a market that is relevant to the topics being addressed.
Click here to learn more about the Middle East and Africa Conference, including timely sessions on fighting counterfeiting offline and online, data privacy, the growing need for harmonization, and leveraging innovation in cross-border enforcement.
The European Commission – Directorate-General for Taxation and Customs Union released its annual report on customs enforcement of intellectual property rights (IPRs) late last month, offering insight into the volume and types of seizures by customs authorities of the 28 European Union (EU) member states during 2017.
According to the report, foodstuffs have now replaced cigarettes as the top category of seized fake articles, with 24 percent of these articles detained in 2017 (up from 13 percent in 2016). Other products that consumers use daily—such as toys, electrical goods, medicines, and health care—also had higher seizure rates, accounting for 42 percent of detained goods in 2017 (up from 34 percent in 2016).
Globally, EU customs stopped more than 31 million fake goods (down from 41 million in 2016), with a street value of EUR 580 million. While China was the main country of origin of most counterfeit goods (73 percent of all seizures), other countries rose to the top in specific product categories; this includes Turkey for clothing, India for medicines, Moldova for alcoholic beverages, and the United States for non-alcoholic beverages.
Regarding means of transport, courier and postal traffic accounted for 76 percent of the detentions, which mainly refer to products ordered via e-commerce. Of the detained articles, 74 percent were either destroyed or subject to court proceedings, while 24 percent were released (due to the rights holder’s lack of response to customs notification, or because the articles were found to be original or there was no infringement).
The report points out that rights holders may lodge an application requesting customs to take action in cases in which a suspicion exists that an IPR is infringed, and notes that the number of applications for action has shown a steady increase.
Commenting on the report, Pierre Moscovici, EU Commissioner for Economic and Financial Affairs, Taxation and Customs said: “Stopping imports of counterfeits into the EU also supports jobs and the wider economy as a whole. The European Union stands in support of intellectual property and will continue our campaign to protect consumer health as well as protecting businesses from criminal infringement of their rights."
To see the full report, click here.
It’s been a busy and productive year for the International Trademark Association (INTA) and our members. Join us in keeping that momentum going by renewing your INTA membership for 2019.
INTA remains committed to delivering significant benefits and providing support for all our members, including:
- Business development opportunities through the extensive INTA Membership Directory
- Educational sessions and networking for professional and business growth at INTA meetings and conferences for a discounted rate, including the Annual Meeting in Boston, Massachusetts, May 18-22, 2019
- Time-saving resources that provide comprehensive and comparative results
If you wish to renew your membership, please log in and click on “My Profile.” Then, click on the “renew” button on the right side of the page.
Download our membership renewal FAQs here for answers to 20 additional questions on the renewal process, including how to find out your user name and password, what payment methods are accepted, and how to update membership information.
Still need help? Email INTA’s Member Operations at email@example.com with any additional questions you may have.
We look forward to collaborating with you and your organization into 2019 and beyond!
*George Chan, Simmons & Simmons (Beijing) Intellectual Property Agency Company Limited (China), will be the moderator and a speaker at “Bringing Your Business Online: The View from China” at INTA’s 2018 Asia-Pacific Conference: Looking Beyond Trademarks, October 11‒12, in Sydney, Australia.
China’s growing affluent middle class is keen on experiencing the quality of food, cosmetics, clothing, and other goods that they often associate with foreign brands. This has made China the fastest growing import market for foreign brands. In fact, in 2017, it was the largest trading partner for both New Zealand and Australia, accounting for 22 percent of exports from New Zealand and 33 percent of exports from Australia.
Therefore, it is not surprising that many foreign brand owners have made China a strategic partner in their international expansion plans. However, instead of adopting a traditional brick-and-mortar approach for entry into the Chinese market, many foreign brand owners have been jumping in by creating an online presence on the country’s various online sales platforms (OSPs). China is home to the world’s largest online retail market, with more than US $499 billion in transactions in 2017.
This strategy appears sound for a brand’s relevance and growth given that Chinese OSPs can offer foreign brands a retail platform without incurring the costs associated with brick-and mortar outlets. More importantly, the rate of online retail sales in China is soundly outpacing the growth of traditional brick-and-mortar sales and chipping away at their market share.
While retail sales of consumer goods in China grew by 10.20 percent year-on-year from 2016 to 2017 (to reach 36.63 trillion yuan (approximately US $5.69 trillion)), online retail sales grew by 32 percent for the same period and now account for almost 20 percent of all retail sales in China (at 7.18 trillion yuan (approximately US $1.12 trillion)). Based on current and previous growth rates, online retail sales are expected to account for more than 26 percent of all retail sales in China by 2020.
To date, there has been almost no commentary on how to create a proper online branding strategy that may serve as a foundation for a brand’s success in China. Conversely, this lack of commentary leaves many brand owners in the dark about the risks associated with the failure to address basic commercial and legal issues related to such a strategy.
At INTA’s 2018 Asia-Pacific Conference: Looking Beyond Trademarks, in Sydney, Australia, in October, the panel session entitled “Bringing Your Business Online: The View from China” will be the first of its kind in discussing the law and commercial realities associated with bringing a foreign brand online in China.
Speakers will explore critical topics that include: Should you set up an online store or use a third-party retailer? What is the impact of an online presence on a business’s trademark filing strategy and protection efforts? How can Daigou channels positively or negatively affect brand reputation and business development?
For brand owners, answers to these questions—and others—will offer enormous insight into capitalizing on this online retail trend.
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In today’s global marketplace, brand owners and trademark professionals are facing an increasing number of opportunities and challenges around the world that can impact brand value and growth. Don’t you want to stay ahead of the curve?
On October 11 and 12, in Sydney, Australia, INTA will be hosting its 2018 Asia-Pacific Conference: Looking Beyond Trademarks—Protecting and Leveraging Your Brands for Growth. The conference will give brand owners, in-house counsel, law firm practitioners, trademark professionals, and government officials skills and knowledge on a range of topics that impact brand-related issues. Speakers will explore these issues from local, regional, and global perspectives.
One of the many educational offerings will be a session that will serve as a valuable primer for brands looking to establish an online presence in China—home to the world’s largest online retail market.
Among the timely topics covered by other sessions will be balancing intellectual property rights and regulatory restrictions, anticounterfeiting, corporate social responsibility (CSR), and enforcement issues such as ambush marketing and changes to the WHOIS domain name database in light of recent data privacy regulations.
The conference will also afford fertile ground for policy makers, brand owners, and IP professionals to engage in meaningful and insightful dialogues about strategies that impact brand value and growth.
Corporate Social Responsibility as Education and Action
In addition to offering an educational session about why CSR is important for brands in today’s market, the Asia-Pacific Conference will provide registrants with an opportunity to give back to the host country of Australia. As part of INTA’s CSR efforts, attendees are being asked upon registration to make a voluntary donation to Indigenous Community Volunteers, an Australian nonprofit community development organization that provides opportunities for Aboriginal and Torres Strait Islander people to “develop human and community capacity in order to improve their quality of life, health, social and economic wellbeing and participation in Australian society.”
Sydney is an innovative business center and the ideal place to hold a conference that looks beyond trademarks. The city is infused with a rich and vibrant culture and is easily accessible from other parts of the world.
Learn more about INTA’s 2018 Asia-Pacific Conference and register today.
Whether or not you’ve been to INTA’s Trademark
Administrators and Practitioners Meeting (TMAP) in the past, the 2018 TMAP
Meeting promises to provide both new and returning attendees with enormous
insight into the changing role of trademark professionals and the changing
intellectual property (IP) industry worldwide.
From September 12 through 14, hundreds of trademark administrators,
paralegals, and other practitioners will gather in Orlando, Florida, at the Rosen
Plaza Hotel to participate in dynamic programming, networking activities, and a
charitable team-building event.
The roles and responsibilities of paralegals and other trademark professionals are continuing to
evolve in response to rapid changes affecting IP worldwide. Clients, whether
they’re internal or outside the firm,
expect expertise on a wider range of IP-related subjects. That translates into
greater pressure for trademark professionals to stay ahead of the curve and
deliver quality work. TMAP is the place to get that quality training.
TMAP is the premier—and only global—event dedicated to the
area of trademark law for paralegals, administrators, and new practitioners. The
program will provide an intense learning experience that stresses issues
relevant to attendees globally and features presenters from around the world
who will add their distinct voices and experiences.
About IP-related Rights Worldwide
This year’s educational sessions will focus on trademark
topics as well as other IP-related issues that professionals now may be
encountering in their daily work. Sessions include trademark advertising,
clearing collateral, ethics in trademark investigations, lessons on copyrights
and designs, and data privacy.
Presenters also will explore timely topics such as challenges
resulting from changes to the WHOIS domain name registry, IP issues in Africa,
and trademark enforcement in the Asia-Pacific region. In addition, an entire
session will be dedicated to professional career development.
INTA has also changed the meeting’s structure to a single
track of course work, rather than concurrent sessions. With this new format,
registrants can take advantage of every presentation as well as share
experiences and best practices, and benchmark against their peers. Attendees
will also be able to explore hot-button issues during moderated small-group
discussions, known as Table Topics.
on Many Levels
Besides quality programming, networking opportunities and
fun events will enhance the experience of attendees. At a Dine-Around event, participants
can connect and build relationships during small-group dinners at Orlando-area restaurants.
Additionally, a team-building event at the Second Harvest
Food Bank of Central Florida will give volunteers the chance to work together
to sort and bag produce for thousands of families in need.
Out the Justification Toolkit
To win management’s support to attend TMAP, INTA has created
the Attendee Justification
Toolkit, which provides additional details and the
business benefits of participating.
As one past attendee, Busola Bakinson, Intellectual
Property Associate, Jackson, Etti & Edu, Lagos, Nigeria, notes: “Apart from the most beneficial content and
learning from the best in the IP field, TMAP has over the years created an
atmosphere for building long-lasting relationships across continents, and this
is one of the reasons I will be attending this year.”
To register for TMAP as well as learn more about the
program and sponsorship opportunities, click here.
Design Day 2018 at the United States Patent and Trademark Office (USPTO) provided a dynamic program that offered design patent examiners, practitioners, designers, and others the opportunity to learn about prevalent issues in the field of industrial design, as well as provided insight into the current state of the U.S. design patent system.
The event, which was held April 25 at the USPTO in Alexandria, Virginia, addressed a broad range of topics such as best practices, infringement via online sales platforms, and strengthening international design protection. INTA was one of the co-sponsors of the event.
Kicking off Design Day, Andrei Iancu, Director of the USPTO, articulated the importance of the design patent system—emphasizing that the inventor/designer of the Statue of Liberty obtained a design patent and leveraged the design rights to fund construction of the statue.
Karen Young, Director of TC 2900 (the Design Patent Group) at the USPTO, reviewed the current state of the USPTO’s design patent system, including:
- The number of design patent examiners: 183, with 13 more to be hired this fiscal year (FY).
- The total number of design applications filed this FY: 22,600.
- The total number of design applications waiting on 1st action: 44,677.
- The average pendency to receive a first action: 12.9 months.
- The average total pendency: 19.2 months.
Providing insight into forthcoming changes at the USPTO, Courtney Stopp, Patent Examiner at the USPO’s Office of Policy and International Affairs, said that the agency is creating a system that will make priority documents electronically available to other design offices, similar to current priority application sharing systems for patent applications.
On an international front, Ms. Stopp discussed the goals of the ID5—an Industrial design framework comprised of the European Union Intellectual Property Office (EUIPO), the Japan Patent Office (JPO), the Korean Intellectual property office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), and the USPTO. These goals include normalization of grace periods, normalization of partial design protection, development of design protection for cutting-edge technologies such as artificial intelligence and virtual reality, and development of consistency in registration and examination policies and procedures.
Tomoki Sawai, the Director General of the JPO, presented on the state of the art of design patent examination in the JPO and projects underway to improve its systems.
Among the other sessions, a panel of patent examiners and practitioners discussed design patent prosecution best practices, including permissible and strategic application/claim title practice, and how to eliminate prior art rejections when prior art from the grace period is applied.
For an on-the-ground look at design patents, guest speakers from four companies described their company’s use of design patents and the value of this form of intellectual property.
Sugarfina, LLC Co-Founders Rosie O’Neill and Josh Resnick presented on the evolution of the company and how its unique branding and product innovation has fostered its success. From a design perspective, they focused on the brand’s single unit packaging, and the label’s experience in creating a bento box-style packaging for selling multiple units. Sugarfina’s General Counsel Lance Miller provided examples of infringements that the company has seen.
Qudus Olaniran, Patent Attorney at Microsoft Corporation, presented on the importance of good design, good design patent examination, and acquiring a robust design patent portfolio. He pointed to Microsoft’s Surface products, Xbox systems, computer mice, and other products to illustrate how good hardware design creates “cool” products, and to Graphical User Interface (GUI) designs for Windows, Office, and Xbox to show the importance of good screen-related designs.
Noting that design patents are becoming more important, Michael Blankstein, Deputy General Counsel, Intellectual Property at Scientific Games, explained how the company uses all forms of IP to protect designs on its gaming-related products, such as video slot machines and lottery tickets.
Lastly, Bill McKeone, Manager of Design - Kallista at Kohler Co., described the considerations that influence the company’s faucet and other bathroom product designs. He noted how Kohler designers track trends over years, and consider them in the development of their products.
Also on the program, an interactive panel looked at “Enforcing Design Rights for Infringing Internet Sales.” After an introduction that framed the current situation, including how infringers are getting “smarter” and the negative impact of infringement on businesses and society, several brand representatives provided insight into the infringements their companies are experiencing, whether and how they are enforcing their design rights, the on-line takedown process, and other challenges.
Other speakers also presented throughout Design Day 2018—all contributing to an enlightening and successful event.
Katz (Banner & Witcoff), is Chair of INTA’s Design Committee.