On the first day of spring in the northern hemisphere, with snow still on the New York City streets, the INTA Board of Directors gathered for its first meeting of 2017.
Not only was this the first meeting for the newest class of Board members, but it was also the first ever meeting to include our three Advisory Directors. The Advisory Director role was introduced during the 2016 Bylaws revision to incorporate individuals with special expertise into the Board. We were very pleased to welcome our Advisory Directors: Doug de Villiers, CEO, Intergroup Brand Consulting; Andrea Gerosa, Chief Thinker, Founder, ThinkYoung; afnd Cindy Tian, formerly the Asia-Pacific Regional Vice Chair, Edelman.
One of the main agenda items of this meeting was the approval of the Association’s 2018–2021 Strategic Plan, as presented by the Planning Committee of the Board. In order to be as inclusive and forward thinking as possible, the Planning Committee solicited feedback not only from INTA past presidents, the Board of Directors, members, and staff, but also from IP offices around the world, individuals from other IP organizations, and individuals from non-IP organizations. The full roll-out of the 2018 – 2021 Strategic Plan will begin at the Annual Meeting in May and will serve as a road map that INTA will follow to set objectives for the 2018–2019 committee term and to track that all Association activities advance the Plan.
The Board also approved the leadership for the Saul Lefkowitz Moot Court Competition. The competition runs from March to March, and planning for the next competition will begin immediately following the 2016–2017 national finals that were just held on March 18. The Board approved the election of Joe Nabor, Fitch, Even, Tabin & Flannery, LLP (USA) as Chair and Cindy Walden, Fish & Richardson P.C. (USA) as the Vice Chair of the 2017–2018 Saul Lefkowitz Moot Court Competition. Please join me in congratulating them.
Finally, the Board approved the Resolution on the Madrid Protocol Dependency Period, which supports reducing the dependency period of an international registration on the basic mark from five to three years under the Madrid Protocol.
Following a successful board meeting, there were many INTA activities that took place throughout the week.
On March 21, INTA hosted a luncheon with special guests at the United Nations to discuss Internet capacity building—how trademark law and Internet governance enable sustainable development and growth. This same day, the Association hosted a Free Trade Zone Workshop in New York. The purpose of these workshops is to provide a forum for brand owners, free trade zone authorities, government officials, and other key stakeholders to share their concerns, best practices, and to work together toward solutions to combat the ongoing threat of counterfeiting in free trade zones. To conclude the week of events, the Brands and Fashion Conference took place from March 22 to March 23,. With 354 attendees from 50 countries, it was a sold-out event! An INTA Bulletin article will feature a full report on this conference in the coming weeks.
On March 1, 2017, INTA had the opportunity to brief representatives of the Canadian Senate in Ottawa, Canada, during an open caucus focused on counterfeiting. The purpose of the caucus was to discuss the challenges posed by counterfeiting and what action the Canadian government can take to combat it in Canada. Several Canadian senators attended the caucus session, which was chaired by Senator Art Eggleton.
- Etienne Sanz de Acedo, INTA CEO
- Myra Tawfik, Professor, University of Windsor
- Grant Lynds, President-Elect Intellectual Property Institute of Canada (IPIC)
- Georgina Danzig, Chair, Canadian Bar Association Anti-Counterfeiting and Trade Offences Committee
- Amir Attaran, Professor, University of Ottawa
The panelist’s presentations focused on the harms caused by counterfeiting. Etienne provided a global overview of the challenges and harms caused by counterfeiting and stated that “we must establish a multistakeholder anticounterfeiting network, both nationally and across jurisdictional boundaries.” Further, Etienne focused on the need for coordination of law enforcement, including customs and judiciary, as well as the need for brand owners to collaborate by sharing information and working with the IP stakeholder community. Finally, Etienne noted that intellectual property protection is a crucial component for an economic agenda grounded in innovation and that strong IP frameworks are critical to allow businesses to strive toward their goals and grow.
INTA enjoyed the opportunity to communicate the Association’s positions and concerns about counterfeiting in Canada to key government officials while also building relationships with the Canadian IP stakeholder community. We look forward to working with the community to help enhance Canada’s anticounterfeiting programs and strengthen anticounterfeiting legislation and regulation.
Following is a link to the Canadian open caucus program: http://liberalsenateforum.ca/open-caucus/march-1-2017-countering-counterfeits/.
On January 25, 2017, the Department of Homeland Security released its Intellectual Property Rights Seizure Statistics report for fiscal year (FY) 2016. The U.S. Customs and Border Protection’s (CBP) and U.S. Immigration and Customs Enforcement (ICE)—Homeland Security Investigations (HSI) enforce intellectual property rights (IPRs) to mitigate the financial and welfare risks posed by imports of illicit products.
In FY 2016, the number of IPR seizures increased by 9 percent from 28,865 to 31,560. The total estimated MSRP of the seized goods, had they been genuine was $1,382,903,001. The seizure report also highlights the continuation of the voluntary abandonment pilot program, which is a partnership between CBP and the Express Association of America. The pilot program was supported through formal recommendation by the Commercial Customs Operational Advisory Committee (COAC) and resulted in 3,763 voluntary abandonments of detained goods and over $3 million in estimated interdiction cost savings to the government.
Other highlights of the report include:
- The combined total number of all IPR border enforcement actions in FY 2016 increased 11 percent over FY 2015;
- In FY 2016, the largest category of seizures was in the apparel/accessories industry, which comprised 20 percent of the total amount of seizures, followed by consumer electronics, with 16 percent of total seizures;
- The top two sources of counterfeit goods were China, with 52 percent, and Hong Kong, with 36 percent;
- In FY 2016, ICE-HSI arrested 451 individuals, obtained 304 indictments, and received 272 convictions related to intellectual property crimes.
The full report can be found here.
For more information on INTA’s anticounterfeiting activities, please contact INTA’s Anticounterfeiting Manager, Maysa Razavi (email@example.com) or INTA’s Anticounterfeiting Coordinator, Tiffany Pho (firstname.lastname@example.org).
On February 16, twenty-five law students from various universities across Austria were warmly welcomed at INTA’s European premises in Brussels. The study visit of this group was sponsored by the European Law Students Association (ELSA), as part of ELSA Study Visits program that brings law students from all over Europe to the heart of the European Union.
The students were welcomed in German by Christina Sleszynska, INTA’s Chief Representative Officer – Europe. Milesh S. Gordhandas (INTA Advisor, Europe Office) briefly introduced INTA to the students before our guest speaker, Florence Verhoestraete (NautaDutilh, Belgium), took the floor and gave a lecture on the basics of trademark law. A member of the INTA Bulletins Committee—Law and Practice: Europe Subcommittee, Florence described the Association’s mission, its core values, its membership structure, and its variety of academic programs and activities. Students were keen to learn more, raising questions about how INTA can contribute to their professional development and lead to career opportunities.
Florence then started to unpack a shopping bag filled with chocolates, biscuits, and other products to demonstrate how distinctive characteristics such as colors (e.g., MILKA’s purple) and shapes (e.g., TOBLERONE chocolates) were important from a legal perspective.
While students sampled the MILKA, TOBLERONE, and SPECULOOS goodies, Ms. Verhoestraete described several trademark dispute cases, emphasized the importance of protecting trademarks, and explained how trademarks can become generic, using ROLLER-BLADES and ASPIRIN as examples. She went on to discuss how trademark protection can cover not only daily consumer goods (such as chocolates and tissues) but also sophisticated products in industries such as biotechnology and pharmaceuticals.
During the question-and-answer exchange, students raised many questions including how Brexit might impact trademarks, the price of registering a trademark, and cutting-edge topics on IP that could be used for a Master’s thesis. Concerning Brexit, Ms. Verhoestraete highlighted the uncertainty that currently lies upon trademarks and trademark owners, who wish to see a smooth conversion of their rights after Brexit negotiations. Regarding cutting-edge topics, Florence mentioned nontraditional marks and, more controversially, the restriction on trademark rights due to other policy concerns such as public health.
INTA would like to thank Ms. Verhoestraete for volunteering to speak to this young and enthusiastic audience about INTA and trademark law. We look forward to welcoming new students in the near future!
If you would like to learn more about INTA's activities in Europe, please contact Milesh Gordhandas (Advisor, Europe Office) at email@example.com. If you are interested in learning more about INTA's Academic Program, contact Kensey Cybul (Coordinator, Academics) at firstname.lastname@example.org.
On December 29, 2016, the Italian Patent and Trademark Office (IPTO) launched an initiative in connection with “historical trademarks.” The objective of this initiative is to increase the value of historical Italian trademarks and to enhance the history and merit of Italian companies.
The initiative applies to Italian trademarks still in force that are registered and that were first applied for at the IPTO before January 1, 1967, or European Union Trade Mark (EUTM) registrations that claim an Italian seniority prior to January 1, 1967.
The owners of those historical trademarks that were registered by micro, small, or medium-sized companies operating in Italy can apply (see: http://www.marchistorici.it/P42A0C2S1/Bando-Imprese.htm) beginning on April 4, 2017, to obtain financial assistance toward the relaunching and promotion of those historical trademarks. The financial assistance would cover the cost of purchasing specific and technical consulting services (e.g., marketing and communication services or consulting services) and acquiring equipment and software. The services, software, and equipment covered are limited to those applicable to the same field of goods and services claimed in the relevant historical trademark registrations. In other words, they must be useful for the relaunching of the historical trademarks. Moreover, activities conducted by the applicants must be linked to those trademarks, such as watch services, preliminary searches, and new filings at higher level (European Union Intellectual Property Office, World Intellectual Property Office, etc.).
The total allocated budget is EUR 4.5 million. Financial aid is provided in the form of grants of up to (1) a maximum of 80% of eligible costs borne by the applicant companies in purchasing specialized consulting services and (2) a maximum of 50% of the costs for purchasing equipment and software. The maximum amount of funds that any company can receive is EUR 120.000.
For further information and to apply for this special financial assistance, please visit the website here.
This is my third year serving as an oral argument judge at the Eastern finals of INTA’s Saul Lefkowitz Moot Court Competition. Each year I feel honored to be asked to serve. For many reasons, it was, once again, a thoroughly rewarding experience.
First, serving as a moot court judge gives me an opportunity to dig into a challenging problem that raises multiple issues on the cutting edge of trademark jurisprudence. The moot court materials are always well-designed and researched. Every year, I look forward to receiving my “moot court packet” and getting ready for oral argument day.
Second, serving as a moot court judge gives me a chance to meet first-time judges and to reconnect with INTA members and staff who are returning to moot court. A great sense of camaraderie among the judges grows out of their common experience. The judges are committed to being well prepared, so that they can be both rigorous in their questioning from the bench and fair to the competing teams of law students. The INTA members and staff who run the competition are always knowledgeable and helpful.
Finally, serving as a moot court judge is a satisfying way to give back to the legal community by helping to prepare the next generation of trademark attorneys. I am always impressed with the students’ level of preparation, which is evident during oral argument. I do my best to contribute to the competition by providing my perspective, based on my current position as Senior Counsel at LeClairRyan and my years of experience in the field.
The Saul Lefkowitz Moot Court Competition is one of INTA’s great annual traditions. I have been delighted to be a small part of it for the past three years. I hope to continue serving as an oral argument judge for many years to come.
The much-anticipated new Trade Marks Rules, 2017 were notified on March 6, 2017. These Rules replace the Trade Marks Rules, 2002. As expected, there is an increase in filing fees and in other official fees.
INTA had submitted comprehensive comments to the draft version of these Trade Marks Rules in December, 2015. Since then, the Association has regularly attended follow-up meetings to discuss the rules’ development. INTA is currently studying the notified rules in detail and will post an analysis.
In the meantime, the new Rules can be accessed here.
A high-level delegation led by INTA 2017 President Joe Ferretti and INTA CEO Etienne Sanz de Acedo will visit India next month to meet with members and government functionaries. To kick off the delegation, INTA will host a half-day workshop in Mumbai on March 15, 2017.
The workshop will focus on how in-house and outside legal counsel have become even more vital to upper management as more corporations begin to do business in India. These businesses also acknowledge the impact of the digital world and how it is changing the very way business is carried out. At a time when IP lawyers are often consulted from the strategic conception to the ultimate evolution of a brand, registrants will hear from experts and industry leaders from India and beyond. They will discuss key aspects of brand and business strategy that can help a company’s trademark portfolio thrive in both the real world and the fast-paced digital world. The workshop will also feature a panel of experts who will discuss the different aspects of female-centric brands, as well as how woman power can be used as a tool in brand protection and development.
After the workshop, participants and registrants will have a chance to network at a reception with their colleagues, speakers, and members of the INTA delegation.
For a detailed workshop agenda and to register, please visit www.inta.org/2017Mumbai.
This year, INTA has launched a series of workshops titled “Free Trade Zones: Commerce vs. Counterfeits.” Balancing the positive economic impact of free trade zones (FTZs) with the proliferation of counterfeit goods in FTZs remains an ongoing struggle. INTA’s one-day FTZ workshops are designed to bring together key stakeholders to discuss their FTZ experiences and share best practices, in an effort to work together toward a solution to effectively combat counterfeit products. Want to attend an upcoming workshop, but don’t know a lot about FTZs? We’re here to help!
What are free trade zones? FTZs take a variety of forms and can include international airports, major ports, national frontiers, or any other designated area that allows for the duty-free import of raw materials, components, sub-assemblies, semi-finished goods, or finished goods. Such items can be stored, displayed, assembled, or processed for re-export or entry into the general market of the importing country (after paying the required duties). FTZs are also called foreign trade zones or free zones.
How many FTZs exist? The number of FTZs has increased dramatically over the last four decades and is growing rapidly. In 1975, there were only 79 FTZs worldwide, employing roughly 800,000 people. Today, there are an estimated 3,000 FTZs in 135 countries, accounting for 68 million jobs and USD 500 billion in direct trade‒related value.
Why are FTZs beneficial? FTZs attract employers, stimulate the regional economy, and promote economic growth for the host country by increasing foreign investment, employment, innovation, and technological development. Governments are increasingly promoting international trade by creating FTZs as free trading areas within their borders in regions where a minimum level of oversight occurs.
FTZs offer a number of incentives to attract business and trade, including non-discriminatory access, streamlined customs procedures, import and export duty exemptions, and liberal foreign exchange policies. Given the considerable economic benefits, FTZs have become indispensable tools for global business.
Why are there problems with FTZs? Along with the recent global proliferation of FTZs has come increasing vulnerability to a wide range of abuses by criminal actors who have taken advantage of relaxed oversight, softened Customs controls and the lack of transparency in these zones. For example, the 2010 OECD/FATF report titled Money Laundering Vulnerabilities of Free Trade Zones delineates abuses in FTZs, including: “participation in an organized criminal group and racketeering, illicit trafficking in narcotics, fraud, smuggling and counterfeiting and piracy of products.” The very reason that FTZs are so popular—the relaxation in regulations and the loosening of the overseeing of operations—has enabled criminal networks to use the transit or transshipment of goods, through multiple, geographically diverse FTZs, for no other purpose than to disguise the nature of illicit products.
This hijacking of FTZs not only impairs their primary function—to facilitate legitimate trade, but also creates an enormous drain on the global economy. Billions of dollars (USD) in legitimate economic activity are being crowded out, facilitating “underground economies” that deprive governments of tariffs.
What is INTA’s rationale behind organizing FTZ workshops? The movement of counterfeit goods through FTZs remains a key concern for the Association. While criminals today are choosing to sell their counterfeits online, they still need to get the goods to consumers. Although we’re seeing an increase of counterfeiters using express courier services for small consignments, the use of large shipping containers continues to play a significant role in moving counterfeit goods.
Governments, including customs departments and the courts, need support and guidance. To address this issue, all stakeholders from across the international community must work together as an anticounterfeiting network. These FTZ workshops are designed to provide a forum for brand owners, FTZ authorities, government officials, and other key stakeholders to share their concerns and best practices, and to work together toward solutions to combat the ongoing threat of counterfeiting in FTZs.
As an association, INTA is continuing to try and work to protect FTZs from illicit trade. The Anticounterfeiting Committee (ACC) is the largest committee within the Association, with 270 members worldwide. The ACC is instrumental in helping to organize member events and in drafting anticounterfeiting resources for members, as follows:
With a successful event previously held in Hong Kong, INTA is eager to present the upcoming FTZ workshops. Join us for the following Free Trade Zone: Commerce vs. Counterfeits Workshops to learn more:
For more information about Free Trade Zones, read ICC’s Business Action to Stop Counterfeiting and Piracy (BASCAP) report titled Controlling the Zone: Balancing facilitation and control to combat illicit trade in the world’s Free Trade Zones and watch INTA’s video on the expansion of the Panama Canal.
On February 8, 2017, the European Observatory on Infringements of Intellectual Property Rights (Observatory) published its tenth sectorial study on the impacts of counterfeits in the pesticide and agrochemical sector. The Observatory, based at the European Union Intellectual Property Office (EUIPO) in Alicante, Spain, works to provide evidence-based data on the impact of intellectual property on the economy of the European Union (EU) as well as on its role and public perception. A full list of the Observatory’s intellectual property studies can be found here.
The Observatory previously published sectorial studies on the following: cosmetics and personal care; clothing, footwear, and accessories; sports goods; toys and games; jewelry and watches; handbags and luggage; recorded music; spirits and wine; and pharmaceuticals. The Observatory’s tenth sectorial study analyzes the negative impact of counterfeiting on businesses, governments, and consumers and highlights two case studies where counterfeit pesticides were seized.
Some highlights of the study include:
- The biggest producer of pesticides in the EU is Germany, with €4 billion in sales, followed by France, with €3.5 billion in sales, with an estimated loss of 500 jobs per year in both countries.
- The total lost sales in the pesticides sector in the United Kingdom is estimated at €76 million each year, with an estimated 200 jobs lost.
- The EU pesticides industry consists of more than 600 enterprises, with an average of 35 workers per firm.
- The direct estimate of sales lost by legitimate manufacturers of pesticides in the EU is €1.3 billion.
- Total lost taxes on the counterfeit products is estimated to be €2.8 billion.
The full study is available here.