INTA Bulletin

December 15, 2016 Vol. 71 No. 21 Back to Bulletin Main Page

INTA’s Impact Studies Committee Publishes Latin America Economic Impact Study and Seeks Input on gTLD Study

The Impact Studies Committee (ISC) was created at the direction of the INTA Board of Directors based on recommendations by the 2014–2015 Presidential Task Force on Committee Structure and Participation. It is a new INTA committee formed in 2016The mission of the ISC is to focus on commissioning and coordinating research projects and studies that support INTA’s policy, resources, and communications activities. Led by Heather Steinmeyer (Anthem, Inc., USA) and Philip Cox (Global Law Marketing, USA), the ISC liaises with committees in the Advocacy, Resources, and Communications Groups to assess needs for such studies, develop and field requests for proposals (RFPs) for studies, and work with internal or external resources to conduct or commission the studies.

Trademarks in Latin America

A Spanish version of the first study undertaken by INTA was published on December 15, 2016, and is available here. INTA and Asociación Interamericana de la Propiedad Intelectual (ASIPI) collaborated on the study to determine the impact of trademark-intensive industries on the economies of Chile, Colombia, Mexico, Panama, and Peru. The study was first announced during a series of launch events taking place in all five countries included in the study.

The Project Team assembled to develop the study include Sergio Barragan (Mexico), Juan Berton Moreno (Argentina), Marissa Lasso de la Vega (Panama), Ramón Benedetti (Panama), Gregg Marrazzo (USA), Mónica Wolf de Camhi (Colombia), Jaime Durand (Peru), Francisco Silva (Chile), Justin Young (USA), and Luis Alejandro Henríquez (Venezuela). The Project Team and ISC worked together when appropriate. The ISC thanks the Project Team for sharing their experiences and best practices, which have helped shape the processes for future studies. 

Overall, the results of the study are positive. Across the five countries, trademark-intensive industries generated 8 to 26 percent of total employment; and 10 to 21 percent of GDP. This is equivalent to 18.5 million jobs and a value added per person of US $2,390 annually. These results underscore the huge potential for economic growth that can be unlocked by promoting trademarks within the business communities, and by further developing national trademark systems and trademark-intensive industries.

The study is intended to be used as a basis for raising awareness of trademarks and their value to a country’s economy, and to support policymakers in developing related legislation. The English version will be published in the coming weeks.

Additional studies in the pipeline include studies on the economic and social impact of counterfeiting and piracy and an ASEAN economic impact study.

The Cost of New gTLDs to IP Owners

In 2017, the ISC is commissioning a study on the costs that the new expanded gTLDS have imposed on intellectual property owners. This study in part is in response to a request from ICANN’s Competition, Choice and Trust Review Team (CCT-RT), which is examining the extent to which the introduction or expansion of gTLDs has promoted competition, consumer trust and consumer choice, as well as the effectiveness of (a) the application and evaluation process, and (b) safeguards put in place to mitigate issues involved in the introduction or expansion. More information on the CCT-RT can be found on ICANN’s website.

Launching on Monday, January 9, 2017, this study will take the form of a survey of all INTA Regular Members—and all voices need to be heard. Not only will this data be helpful in INTA’s fight to ensure appropriate and cost-effective rights protection mechanisms are in place at ICANN before the second round of the new gTLDs begins, it is critical to INTA’s primary strategic direction to advocate for the vigorous enforcement of strong laws that provide protection for trademarks throughout the world. In addition, such data will not only allow INTA to finally quantify the financial impact new gTLDs have had on brand owners, it will allow INTA to identify trends, allow benchmarking, and reveal best practices, all for the benefit of our members. The study will aggregate the data to protect the confidentiality of individual responses.

While the specific survey questions are in development, the types of data that may be collected include the following:
  • Costs (defensive registrations, Trademark Clearinghouse registrations, Internet monitoring/watch services, cease and desist letters, UDRP proceedings, civil actions, Uniform Rapid Suspension System (URS) proceedings, Anti-cybersquatting Consumer Protection Act (ACPA) lawsuits and appeals, diversion of web traffic from trademark owner’s legitimate web site, counter-confusion marketing efforts, such as corrective advertising, and the time and effort of educating internal teams about enforcement efforts related to the New gTLDs). 
  • Number of Trademark Claims notices received and the number that have led to costs associated with warning letters, cease and desist letters, UDRPs, and other actions. 
  • Feedback on level of satisfaction with current online enforcement tools and procedures and proposed changes/improvements thereto.
INTA would appreciate the participation of all INTA Regular Members, so please take a moment to share this news with your organization and/or your outside counsel before the end of the year so they can plan the appropriate resources to assist INTA in this critical endeavor.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association