May 03
​Summit Explores Integration of Climate Change into Intellectual Property Strategies


INTA Chief Representative Officer Europe Hélène Nicora moderated a panel during a summit on “Industrial Property and Climate Change, What Opportunities Now?” on March 25 in Paris, France. The event was organized by the French Association for Industrial Property Counsel (CNCPI) with the support of Fabrice Mattei, Climate Change and IP Group Head of Rouse, Myanmar. 

Michael Haddad, a United Nations climate change champion who will be the keynote speaker at INTA’s 2019 Annual Meeting, kicked off the event with an inspiring speech to the 150 intellectual property (IP) professionals, entrepreneurs, French Parliamentarians, economists, environmental experts, and academics.

Speakers explored the integration of climate change into IP strategies and the contribution of IP rights (IPRs) to a sustainable economy transition. 

IPRs’ Influence on Climate Change 

Speakers discussed how some developing countries have been criticizing IPRs for allowing monopolies and thus limiting imports of new technologies and innovations, while developed countries have been defending IPRs as allowing for a fair return on investment which has helped trigger business’s interest in researching innovative solutions. Guillaume Henry, (SZLEPER | HENRY Avocats, France) concluded that IPRs are now more and more acknowledged as part of the solution, rather than as an obstacle to innovation. This can also be explained by recent research demonstrating that IPRs have a positive impact on foreign investments, but do not affect international trade of capital goods. 

Charlotte Beaumatin, IP Attaché in Washington D.C., French National Industrial Property Institute (INPI), explained that all IPRs can contribute to the fight against global warning. She acknowledged that the link between IP and climate change might not be so obvious at first glance, but that there is growing recognition that patents help provide a return on investment on green innovative solutions, while brands and designs also play a crucial role in marketing and developing these solutions. Ms. Beaumatin noted that IP will be featured in the “1planet lab,” an initiative launched by French President Emmanuel Macron, which consists of a group of 30 experts dedicated to identifying clear objectives to help save the planet. 

This initiative is particularly important as it will involve IPRs, finally and officially, in the fight against climate change. Indeed, IPRs did not feature neither in the 1992 United Nations Framework Convention on Climate Change nor any subsequent climate agreements. Only references to technology transfers were included. 

A Focus on Patents 

When considering IPRs with an impact on climate change, there is a tendency to focus on patents and technology transfers. Speakers at several sessions referred to them as tools to promote innovation, enabling the diffusion of known technologies and the multiplication of innovations—aspects considered key in the fight against climate change. 

Matthieu Glachant, Professor of Economy, MINES Paristech, PSL Research University, explained that 90 percent of of increased carbon emissions comes from developing countries. But while 90 percent of the need comes from developing countries, 80 percent of the needed technologies can be found in already developed countries, which highlights the importance of securing fair transfer of technologies.  

However, Mr. Glachant condemned the perspective that patents are always the solution to trigger innovation. “Much depends on the conjuncture,” he said. For instance, Chinese companies managed to perfect existing photovoltaic technology (“learning by doing” instead of “learning by researching”) and took the lead in the market without using patents. 

Right Patent Policy 

Yann Ménière, Chief Economist at the European Patent Office (EPO), emphasized that the economic value of innovation depends on how attractive environmental policies make these innovations. Patents are only “the start of the adventure,” he said, in the sense that they allow the necessary research and investment into the technology, which will later be brought to life on the market. Mr. Ménière also explained that more needs to be done to facilitate access to patents for innovative companies. The EPO signed validation agreements with certain countries, whereby a European patent applicant can submit a request for extension or validation, and, with a fee, enjoy the same protection in those countries as if the applicant had filed a national application or obtained a patent. The EPO has also established a new classification scheme for technical attributes of technologies that can be loosely referred to as climate change mitigation. This makes it easier to retrieve patent documents that cover these technologies, and helps in creating an “economic intelligence” at the service of climate change. 

In terms of best practices for patents, Christian Chun (Chun & Partners, Korea) presented the “accelerated procedure” to obtain a patent for green technologies introduced in China, Korea, and Japan.  

Michael Levy, VP, Research and Innovation (AAQIUS Research Center, France) and Andréas Schuster, Co-founder (Orcan Energy, Germany) illustrated how they were able to use a portfolio of patents to develop their green technologies, and the various challenges they faced on the way to bringing their products to market. They both rejected the concept of compulsory licenses because they believed it would prevent inventors from receiving a fair return on investment and would discourage future investment in green technologies. 

Norms and Green Certifications 

A representative from the Association Française de Normalisation (AFNOR), the French Association for norms and certification, explained how norms have helped to set different environmental standards for the production and marketing of products. Nevertheless, it seems that controls on the compliance of these products with the established norms remains problematic, since controls differ in frequency and depth depending on the norm itself. Consumers need to be educated about these differences.

Certification labels and certification marks are another tool to promote green products, such as the EU “Eco Label.” Certification marks in the EU provide a recognizable sign certified by an independent and impartial third party, thereby also fostering consumer trust. 

Brands and Their Role

In light of INTA’s mission to promote trademarks to foster consumer trust, economic growth, and innovation, the Association is interested in the way brands react to climate change. 

Consumers are more and more keen to purchase brands that are environmentally-friendly. Climate change is particularly important to millennials, as stressed by recent studies, so brands must adapt to sustainable development, if they want to remain successful and respond to their consumers’ needs. Some brands have even gone further and engaged politically in the fight against climate change. 

INTA’s 2019 Presidential Task Force on “Brands for a Better Society” will explore these issues, and whether there are strategic best practices for brands responding to climate change. 

Geographical Indications

Rights holders can opt for a mitigation strategy (i.e., take action to reduce their environmental impact) and/or adaptation strategy (i.e., take action to adapt to climate change). Identifying the right strategy to fight climate change ultimately poses a challenge for Geographical Indications (GI) producers, who are bound by strict specifications and cannot relocate. 

Charles Goemaere, Economic and Legal Director of the French Committee of Wine of Champagne, gave a presentation on how climate change has forced champagne producers to adapt, such as by banning pesticides by 2025, finding new grape varieties that would adapt to higher temperatures and resist insects without pesticides, or reducing the amount of glass in their bottles. This resulted in a change of their specifications. 

It is expected that more and more GI rights holders for agricultural products, wine, and spirits will have to modify their geographical territory or adapt their production, processing or storage methods to evolving climate conditions, with potential consequences to their reputation, quality, price, and location. 


David Desforges (Desforges Law, France), a lawyer who specializes in environment litigation, discussed the evolution of environment-related litigation. “It is important to note that we have evolved from an environmental law to a climate change law, with new rights and duties,” he noted. 

There are currently more than 880 lawsuits in the world dealing with disputes over action or inaction related to climate change. Governments were the first to be targeted. The Netherlands, for instance, was condemned to reinforce its action against climate change in 2015. Four NGOs have also initiated a dispute against the French government over missed climate targets in December 2018.  

However, more and more litigations are now instituted against companies and their technologies, such as petrol companies for their impact on carbon dioxide (CO2) emissions. For example, an Australian court decided to order the prohibition of the exploitation of a mine purely on environment grounds. 

It seems that companies will be more and more exposed to litigation if they do not consider a sustainable strategy. 

Impact of Emissions Trading

Emissions trading allows countries with higher carbon emissions to purchase the right to release more CO2 into the atmosphere from countries with lower carbon emissions. As such, carbon emissions trading is described as a tool that gives polluters an incentive to reduce their emissions. 

However, Emilie Alberola (EcoAct, France) explained that there are different emission trading markets, so there are also different carbon prices. Unfortunately, the price of carbon in Europe is insufficient to promote innovation and allocating permits on the basis of past emissions can result in companies having an incentive to maintain emissions, instead of innovating to get greener. 

The EU will be creating two funds, the so-called Innovation Fund (with revenues from the auctioning of 450 million allowances from 2020 to 2030) to finance green projects and the Modernization Fund to finance low carbon emitting energies. 

Carbon Footprint Calculation Tool

Mr. Mattei, who was recently interviewed about climate change on INTA’s Brand & New podcast​, spoke about a new tool that can calculate the carbon footprint of IPRs. The goal is for IPR holders to become aware of their carbon footprint, reduce it, and to compensate so as to achieve carbon emissions neutrality.

“The IP Carbon Footprint focuses on the CO2 emissions resulting from the acquisition, exploitation, or lack of exploitation of IPRs, expressed as CO2 equivalent. The calculation method captures the full life cycle of all IPRs ranging from their creation to enforcement. Internal and external, positive and negative CC effects are calculated,” he explained.

The summit concluded with the announcement of the creation of a new association focused on the ecological analysis of law, Association pour l’Analyse Ecologique du Droit (AED) on July 4, 2019, led by Guillaume Henry (SZLEPER | HENRY Avocats, France), co-author of the INPI report “Sustainable development & IP” and “Intellectual Property Rights and Green Technologies.” 

AED will promote a green accountability model, and the analysis of the most efficient rule of law from the perspective of limiting its negative effects on the environment. 

For more information on the summit, please contact Hélène Nicora, Chief Representative Officer – Europe at​. 

April 01
Uncertainty Remains for Elected Officials, Businesses, and Citizens Alike as Initial Brexit Date Came and Went

Will Brexit still happen and what does it mean for IP Professionals? Uncertainty remains as the intial Brexit day has passed. 

On March 21, the 27 EU heads of States and governments granted UK Prime Minister Theresa May an extension of the Brexit date beyond March 29, but with a condition. Read the Brexit Update in the April 1 INTA Bulletin​​ for the details. 

Will Brexit happen? 

On March 27, the UK Parliament held a series of votes on a possible way forward. These votes on the eight possible alternative scenarios (including a new referendum, the UK remaining in the Customs Union, etc.)  generated significant confusion since no alternative option reached a majority. On March 29, Prime Minister May, who offered her resignation if the deal was adopted, failed to get Parliament approval on the deal for a third time. This leaves heightened uncertainty while the EU is planning to hold an Extraordinary Summit on April 10 to discuss the issue.

When will Brexit happen? 

The UK Parliament passed legislation postponing the Brexit date from March 29 to at least April 12. The third rejection of the deal by the UK Parliament would hint towards a Brexit date on April 12, as per the conditions set by the EU. But the EU Summit on April 10 could grant a longer extension. Moreover, UK snap elections cannot be ruled out, which could lead to the formation of a new government and parliamentary majority that could end the Brexit process altogether. 

What does it mean for IP professionals?

While uncertainty remains, both the UK and the EU have tried to prepare for the following options.

Option One: ‘No-Fault Divorce’ 

If Brexit happens, and the UK Parliament ultimately adopts the draft deal on the withdrawal agreement, the ‘divorce’ will be governed by the provisions foreseen in the agreement, with a transition period set to end on December 31, 2020.

IP issues will be governed by Title IV (articles 54 to 61) of the draft agreement:

  • The main principle put forward is “continued protection in the United Kingdom of registered or granted rights.” 
  • The regional exhaustion principle is maintained in the draft agreement, stating, “intellectual property rights which were exhausted both in the Union and in the United Kingdom before the end of the transition period under the conditions provided for by Union law shall remain exhausted both in the Union and in the United Kingdom.” 
  • For GIs, the UK will grant automatic rights to EU GIs “as from the end of the transition period,” until a future relationship is established.
  • Registration of trademarks and designs will be carried out free of charge and IP right-holders will “not be required to introduce an application or to undertake any particular administrative procedure,” or be required to “have a correspondence address in the United Kingdom in the 3 years following the end of the transition period.”

Option Two: Divorce “with Fault”

If Brexit happens but the UK Parliament does not adopt the draft deal, the UK will exit without a deal. This scenario, known as the “cliff-edge,” means that from the date of Brexit, the UK will become a third-party overnight. Though, this scenario raises concerns over legal continuity and certainty on various issues, the EU and UK authorities respectively tried to prepare for this ‘no deal’ scenario.

On the EU side, the EU Commission published several ‘preparedness communications’ as well as direct links to national preparedness websites. None of them target IP specifically.

The UK has developed several ‘no deal’ instruments. Check out the resources below. 
For a comprehensive and detailed analysis of INTA’s actions and positions on Brexit, please visit INTA Brexit topic portal​ online. For any additional queries, please contact INTA Europe Office Chief Representative Officer, Hélène Nicora, at  
March 26
EUIPO Report: Volume of Counterfeit Goods Keeps Rising, Accounting for Greater Share of World Trade


Fake goods are becoming more prevalent, with counterfeits and pirated products accounting for 3.3 percent of world trade and 6.8 percent of European Union (EU) imports, according to a new study, Trends in Trade in Counterfeit and Pirated Goods published by the European Union Intellectual Property Office (EUIPO) and the Organization for Economic Co-operation and Development (OECD). 

The study, released on March 18, with data updated from its initial publication in 2016, provides a quantitative analysis of the value, scope, and magnitude of world trade in counterfeit and pirated products.

According to the study’s main findings:

  • Globally, counterfeit and pirated goods are now estimated to account for as much as 3.3 percent of world trade, compared to 2.5 percent in the 2016 study. This amounts to EUR 460 billion (US $509 billion) per year. 
  • From an EU perspective, 6.8 percent of imports from the rest of the world consist of fakes, compared to 5 percent in the earlier study. This amounts to EUR 21 billion per year (US $134 billion).

The results rely on customs seizure observations and do not include domestically produced and consumed counterfeit and pirated products; nor do they include pirated digital content on the Internet. This hints that the actual phenomenon is much larger.

Among the other notable findings, the study shows:

  • Small shipments are on the rise: The use of small shipments, sent by post or the most used express services, for trade in fakes also keeps growing, accounting for 69 percent of customs seizures of intellectual property-infringing products for the 2014–2016 period, versus 63 percent for the 2011–2013 period.
  • Top eight “most-counterfeit” product categories remains the same: The top eight product categories most subject to counterfeiting and piracy have not changed from the previous study—1) footwear; 2) clothing; 3)  articles of leather; 4) electrical machinery and equipment; 5) watches; 6) sunglasses; 7) perfumes and cosmetics; and 8) toys and games.
  • OECD countries remain main targets, but non-OECD economies are increasingly being hit: The companies suffering from counterfeiting and piracy continue to be primarily registered in OECD countries; mainly in the United States, France, Italy, Switzerland, Germany, Japan, Korea, and the United Kingdom. However, a growing number of companies registered in high-income non-member economies, such as Singapore and Hong Kong, SAR, China, are becoming targets. In addition, a rising number of rights holders threatened by counterfeiting are registered in Brazil, China, and other emerging economies.
  • Free Trade Zones (FTZs) garner more fakes: The share of fake goods from economies hosting the 20 biggest FTZs is twice as big as from economies that do not host any FTZs. Moreover, an additional FTZ within an economy is associated with a 5.9 percent increase in the value of these problematic exports on average.
  • Link established between counterfeiting and health safety: The reports highlights the link between counterfeiting and health safety, stressing that “a growing scope of counterfeit products can pose significant threats to the environment or to consumer health and safety” and that “the intensity of trade in fake goods that can lead to environmental or consumer health and safety risks keeps growing in almost all sectors impacted by counterfeiting.”

It is important to note that the study provides a quantitative analysis of the global trade in counterfeit and pirated products in order to inform and raise awareness among policy makers and the general public, but it does not include any policy recommendations. It is, therefore, ultimately up to policy makers to build such recommendations and follow-up actions based upon these findings.

INTA advocates at the national and international levels to strengthen anticounterfeiting laws and enforcement, and to increase governments’ cooperation to eliminate linkages between counterfeiting and organized crime, as well as serious threats posed by counterfeiting to the health and safety of consumers, economies, and national security.

In addition, the Association supports the development and passage of legislation, regulations, and trade agreements throughout the world that increase national and international enforcement mechanisms against counterfeiting. Through the organization’s Anticounterfeiting Committee and Unreal Campaign Committee , and, partnerships with governments and associations, INTA emphasizes the importance of strong anticounterfeiting measures and increased awareness of the harms of counterfeiting. 

For more information, please visit INTA’s Anticounterfeiting web page​ or contact INTA Manager, Anticounterfeiting Maysa Razavi at; INTA Advisor Anticounterfeiting Tiffany Pho at; or INTA Advisor Anticounterfeiting, Asia-Pacific, Valentina Salmoiraghi at For more information about the Unreal Campaign, contact INTA Associate, Strategic Partnerships & Unreal Campaign, Catherine Shen at
December 13
Small Parcels, Big Impact: Agencies Release Study on the Misuse of Small Parcels for Trade in Counterfeit Goods


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.

December 12
U.S. Federal Agency IP Experts and Consumer Groups Address Counterfeiting at Congressional Briefing

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 . 

November 27
INTA Adopts New Process to Add and Sunset Committees


​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. 

November 05
In-House Practitioners Idea Exchange: Tips and Tricks on Trademark Management

* The following blog post is by Michael Tschupp (Bosch, USA) and Mandar Chandrachud (Godrej Consumer Products Ltd., India), members of the In-House Practitioners Committee. - GM 


INTA’s In-House Practitioners Committee hosted two Idea Exchange sessions on Tips and Tricks on Trademark Management on October 30. Idea Exchanges are moderated benchmarking teleconferences—exclusive to in-house practitioners—to share insights, experiences, and issues on a specific topic. 

Jocelyn Belloni, Corporate Counsel at Yardi (USA); Raphael “Rafa” Gutierrez, Legal Director at Uber Technologies, Inc. (USA); and Helen Omapas, Director, Senior Counsel—IP at Harman International Industries, Inc. (USA), led the discussion among in-house practitioners from various industries and countries. Participants shared experiences of trademark management at their organizations, providing colleagues with food for thought on issues that affect their daily responsibilities and roles, including ways to demonstrate value within a company.

Portfolio and Team Compositions

Among the participants, their trademark portfolios ranged in size from 1,000 to 10,000 marks, and their team composition varied widely. Centralized global trademark portfolio management at corporate headquarters is the norm; however, some companies manage the marks at a regional level. The participants recommend good and frequent communication among the regional teams and headquarters for regionally managed portfolios. 

Depending upon team structure, work generally gets divided either by geography, brand, or product category, or a combination of these. In-house counsel work closely with marketing and other cross-functional teams and have regular interactions and calls; in-house practitioners also educate teams on the central policies and brand use and stay current on business developments. 

In-house lawyers and paralegals work in close partnership. Outside counsel will usually be brought in only selectively, primarily on disputed matters.

Trademark Watch Services

For key marks, participants often use worldwide watch service tools. The analysis of results by the in-house team adds accuracy and business context. 

Docketing/Document Management

Participants reported a preference for web/cloud-based trademark docketing systems, with extensive use of electronic records and minimal physical files.  

Dispute/Enforcement Matters

In-house trademark teams usually prefer to handle enforcement matters themselves, but bandwidth and headcount limits often require them to involve outside counsel. It is common for a brand owner to send dozens of cease-and-desist letters or takedown notices in a year; however, court litigation is rare. Uniform Domain Name Dispute-Resolution Policy (UDRP) proceedings, on the other hand, are more common, primarily because cybersquatters often ignore demand letters, leaving UDRP the most effective means of recovering or shutting down squatted domains.

International Portfolios 

Filing strategies differ based upon business scope and needs. Generally, core marks are filed nearly worldwide, with the filing of secondary trademarks limited to strategic markets. 

In general, in-house practitioners directly reach out to their outside counsel around the globe instead of routing their actions through a central firm, which saves them money and time. Participants agreed that it is advantageous to use INTA events such as the Annual Meeting to meet with their outside counsel. 

Non-Trademark Matters and Other Challenges

Teams are doing more than trademark work; they are also working in the areas of copyright, design, patents, social media matters, claim monitoring, agreements, advertisement reviews, data privacy, mergers and acquisitions, and domain names.

The participants stressed the importance of demonstrating the value of in-house counsel to their company. The perceptions of being a “cost center” must be broken; one means of doing this is through licensing revenue.

Tools for Success 

Brand and style guidelines—as well as intellectual property (IP) policies—are useful in fostering consistency. A strong relationship with marketing is key. It is helpful to have brand guidelines enforced by the marketing team. 

In-house professionals need to be mindful of international treaties and local taxation laws while dealing with overseas subsidiaries, crafting a brand royalty structure with those subsidiaries, and coordinating with finance teams and others within the organization for determining optimal IP licensing policies.


In-house counsel should work closely with local customs and other law enforcement authorities to get results. They should maintain good images, documentation, and press coverage of anticounterfeiting success, and record the seizure/destruction of counterfeit goods. This helps demonstrate value internally within the company and with licensees that pay for the authorized use of the brand. Good press coverage can also burnish the public image of local authorities.

October 17
Exploring the Value of Intellectual Property in Emerging Markets

* 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. 

October 05
New Report: Daily Use Products Account for Most Seized Counterfeit Goods at European Union Borders


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​.

October 03
INTA’s 2019 Membership Renewal Is Now Open


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​ with any additional questions you may have. 

We look forward to collaborating with you and your organization into 2019 and beyond!

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