|David Fleming, 2016 President’s Award Winner
INTA’s President’s Award is designed to acknowledge the profound appreciation of the global trademark community to individuals who, over the course of a career in trademark and related IP law, have made a lasting impact on INTA and the Association’s mission. INTA President Ronald van Tuijl (JT International, SA, Switzerland) and INTA member Jomarie Fredericks (Rotary International, USA) presented the award to this year’s winner, David Fleming (Brinks Gilson & Lione, USA) (pictured right), at the INTA Leadership Meeting on November 15.
Mr. Fleming’s peers chose him for his dedication to guiding the Association during his 2014–2015 tenure as INTA Counsel and for leading the Governance Review Task Force to streamline INTA's Bylaws and to create a flexible Code of Policies, among other contributions. He has served on INTA committees consistently since 1998, including the CEO Search Committee, and was first elected to the Board of Directors in 2010. Over the years, Mr. Fleming has also co-chaired meetings such as the 2007 Annual Meeting and participated for years as an oral argument judge in the Saul Lefkowitz Moot Court Competition.
During his tenure as Counsel, Mr. Fleming provided insightful guidance on a number of first-time challenges for the Association, ranging from major changes made to the New York State non-profit law for the first time in over 40 years and their impact on Board procedure, to the application of changing laws with regard to INTA’s China Representative Office.
Mr. Fleming spoke with the INTA Bulletin about his road to trademark law, how the practice has changed, and gave his advice for young lawyers.
What (or who) led you to practice trademark law?
I started my practice as a commercial litigator. As my career progressed, I focused on trademark matters. When I joined Brinks Gilson, I had the privilege of working with Jerry Gilson, one of the giants in our field, as well as many other talented trademark lawyers in our firm, in-house with our clients, and at other firms.
What (in addition to your colleagues) is the best thing about working in the trademark field?
The field is fascinating because it touches on so many aspects of commercial activity. We support brands that are key assets for our clients, often on a worldwide basis. We focus on consumer perception and protection of consumers from confusion, while learning about our clients’ businesses in a wide range of industries and technical areas. We are involved with development of the law through the cases we handle in court and sometimes through legislative advocacy. And we work to apply trademark law principles to rapid technological changes.
What has changed most for your practice area over the course of your career?
What I notice most is the pace of change, not just in the trademark area, but in the practice of law generally. Developments such as the growth of the Internet and social media have changed the ways our clients reach their consumers. And technological developments, from fax, to email, to the use of extranet portals and real-time web-based interaction, have dramatically changed how we work with our clients.
What advice do you give to people just starting their careers?
I tell people to get involved in professional groups, such as INTA, as soon as possible. These extracurricular activities help to provide experience, develop skills, and create relationships that enhance our practices and our lives.
Do you have a favorite trademark? What is it and why?
I don’t really have a favorite trademark. I’ve worked with many companies that have famous and popular brands, and it’s impossible to pick one that is my favorite. I can’t pick a favorite, but I can remember marks that made an impression on me as a young kid. For example, my father was a commercial artist and frequently did illustrations for advertisements by major brands. One of the earliest I remember is the GREYHOUND logo, which Dad included in travel posters of Niagara Falls and the Pacific Northwest that he created for the company.
What do you do when not practicing law?
My wife and I have always liked to travel. My work with INTA has allowed us to travel widely and to make friends around the world. Although I must add that more and more of our discretionary travel these days is to places where our grandchildren are living.
INTA Brands & Innovation Committee: Defining the Brand-Innovation Relationship
During her term as INTA President in 2014, Mei-lan Stark (NBC Universal Media, LLC, USA) established a Presidential Task Force on Brands & Innovation, with the goal of more fully exploring the nature of the brand/innovation relationship. “Innovation has traditionally been associated with patents and technology, but I believe there is a real nexus between brands and innovation, in the sense that brands can stimulate innovation and pave the road for innovation to take hold,” Ms. Stark said in a 2014 interview with the INTA Bulletin. Ms. Stark’s Task Force, co-chaired by Curtis Krechevsky (Cantor Colburn, USA) (pictured right) and Heather Steinmeyer (Anthem, Inc., USA), thus spent 15 months surveying the existing literature about the relationship between brands and innovation, ultimately presenting a final report to the INTA Board of Directors in March 2015, which included six recommendations for the Association to implement in order to become a leading authority on the subject.
One of those recommendations was to establish a standing Brands & Innovation Committee, which the Board agreed to during its meeting in March of 2015. Mr. Krechevsky chairs the committee, with Mladen Vukmir (Vukmir & Associates, Croatia) (pictured below) serving as Vice Chair. One year into its mission, the committee has now made the Task Force Final Report public, refined and presented working definitions of the terms “brand” and “innovation,” engaged in concerted collaborative efforts with other INTA committees working on related tasks, and much more. Mr. Vukmir and Mr. Krechevsky spoke with the INTA Bulletin about the committee’s background, what lies ahead, and why curiosity about how brands and innovation interact must become integral to the Association’s mission.
Mr. Krechevsky, how was the Presidential Task Force organized, and how did you handle the transition to the committee?
INTA Past President Heather Steinmeyer and I were invited to become the co-chairs of the Task Force, with an additional eight members drawn from the three main categories of INTA membership: regular, associate, and academia. In addition, the Task Force had a broad geographic representation, which reflects the diversity of INTA’s membership. The Task Force made findings and recommendations for INTA to execute on, and we presented those to the INTA Board of Directors in the form of a 66-page Final Report, delivered at the Board Meeting in March of 2015. The Board received that report very enthusiastically and adopted it.
The Final Report contained six key recommendations, the first of which was to make the relationship between brands and innovation a primary strategic direction for the INTA Strategic Plan for 2018–2021. Within each of the six recommendations were a series of specific steps to implement them, and one of those was for INTA to establish a permanent standing committee on the subject of Brands and Innovation. Both Heather and I were very gratified when the Board approved the creation of such a committee during the March 2015 meeting.
The Brands & Innovation Committee initiated its work in January as part of the 2016–2017 committee term. I was invited to chair the committee and was joined by Mladen as Vice Chair. We also had a superb staff liaison designated, Christina Sleszynska, INTA’s Chief Representative Officer, Europe Office. However, during the remainder of 2015, and with the support of the Presidential Task Force which continued operating through year-end 2015, we developed a structure for the committee, considered which subcommittees would be advisable, who should chair them, and also developed a set of objectives for the committee to tackle in its inaugural term. Those objectives were meant to implement various parts of the six Final Report recommendations, as well as support the existing and future INTA Strategic Plans. The foundational items for the committee were finalized during the 2015 Leadership Meeting in Panama City, Panama, and we started communicating with the new committee members in November and December of last year, so that we could hit the ground running in January 2016.
(The remaining questions were answered jointly by Mr. Krechevsky and Mr. Vukmir).
Was there a lot of interest in the new committee from the membership?
Yes, the Brands & Innovation Committee was very popular during committee selection.
How is the committee now organized?
Ultimately, after debating about how many subcommittees there should be and what they should focus on, we wound up with four.
The Definitions Subcommittee, is chaired by Elisabeth Bradley (Bristol-Myers Squibb Company, USA) a Presidential Task Force alumnus and INTA Board Member. Her mission was to take a fresh look at a working definition of “innovation,” and one of the great things Elisabeth’s subcommittee achieved was to refine it even further.
The Task Force also realized that while the committee was called Brands & Innovation and that INTA encompasses the concept of brands in its tagline, there did not seem to be a usable definition of “brand” within INTA. The committee therefore broadened the scope of the Definitions Subcommittee to also develop a working definition of “brand.” It was a more complicated task than expected, but we asked the subcommittee to come up with both new definitions by March of this year, and they met that objective. Both working definitions of “brand” and “innovation” were adopted by the committee, were subsequently reviewed by the Advocacy Group Council and INTA’s Executive Committee, and were finally presented to the Board at the Leadership Meeting in November 2016. Ultimately, the ideal objective is to come up with definitions that work—if not universally—at least internally and for many of the other constituencies we’re hoping to approach. If you read the definitions, they don’t merely include references to the legal concepts behind “trademarks,” they are much broader. They are definitions for the future.
The Research and Policy Development Subcommittee is chaired by Aimee Mahan (Amazon.com, Inc., USA). This subcommittee’s mission is to consider what further research INTA could conduct or sponsor to develop a better understanding of the nature of the relationship between brands and innovation. The Task Force had noted that existing literature in the field was rather sparse and somewhat equivocal about whether the nexus between brands and innovation was a positive one—in the sense of brands acting as a catalyst or stimulus for innovation—or a negative one, or whether there was any type of causal relationship at all. Much of the literature appeared to equate a correlation between brand-related activity and innovation, such as studies showing that in countries known for technological development more trademark applications are filed, with causation, but there was other commentary that the Task Force thought properly criticized making the jump from correlation to causation.
The Research and Policy Development Subcommittee has been developing a request for a proposal (RFP) to conduct a study on the above topic (see Final Report) and has been working closely with the new Impact Studies Committee (ISC), chaired by former Task Force Co-Chair, Ms. Steinmeyer. We hope to submit the RFP to the ISC by the end of this year.
This subcommittee also will collect the latest literature and the traditional resources and reference materials that we consulted, in order to make this information available to INTA members via our website. Finally, there will be recommendations from this subcommittee in the form of policy proposals for INTA, although that’s a little bit down the road.
The Stakeholder Outreach Subcommittee, chaired by Jeremy Roe (Anheuser-Busch InBev Services, LLC, USA), is tasked with making sure that what we are looking at and doing is coordinated internally within INTA and the other relevant committees, and with messaging the Association’s position to external audiences. For example, INTA’s new Building Bridges Committee is both an internal and external facing group and we want to coordinate very closely with them in terms of reaching out to other entities to establish a dialogue. Such entities could include legal associations that focus more on patents and technology development and protection, societies of industrial engineers and designers, marketing associations, and advertising associations. We hope to start reaching out in the new year and believe that all kinds of opportunities can arise out of this external engagement on the subject of brands and innovation.
Similarly, representatives of the subcommittee have been invited to attend the discussions of other committees and subcommittees that are interested in some of the same topics we are. For example, 3D printing is a new technology that presents both opportunities and risks for brand owners and has attracted the attention of other INTA committees, including the committees on Designs, Emerging Issues, and Famous and Well Known Marks. We met with representatives of some of these committees at the Leadership Meeting and discussed how to work together to avoid duplication of work and coordinate efforts. I think that’s a great example of the kind of cooperation, coordination, and communication among committees that INTA wants to see.
Finally, the Programming & Communications Subcommittee, chaired by Marc Trachtenberg (Greenberg Traurig, LLP, USA) is tasked with developing helpful materials and helping to ensure that they are made available to INTA members. An immediate example will be the publication before the end of 2016 of the Presidential Task Force Report.
The Presidential Task Force Report also lists a number of technologies and even entire industries that have been negatively impacted by disruptive innovation over the last 20 years. Indeed, there are two sides to the brands and innovation coin—the impact that brands have on innovation, but on the flip side, the impact that innovation has on brands. One of the committee’s objectives is to contribute to the development of tools and resources for INTA members in order to help them anticipate and respond to the impact, whether positive or negative, of innovation on the brands they are responsible for.
What are some of the “disruptive technologies” the Brands & Innovation Committee will be looking at?
We are looking at technologies that are emerging as we speak, such as 3D printing, wearable technology, virtual reality, and the Internet of Things, to determine whether we can be an early forecaster of issues that may present themselves to brand owners once these technologies are adopted and exploited.
Artificial intelligence (AI), for instance, is a technology that is likely to experience a very rapid expansion, and AI is an area we would like the committee to look at in the future. In conjunction with this, we will be looking at the integrity and morality of doing business using AI, and the implications for brands if consumers perceive its use as unethical or dishonest. The development of general AI that comes close to or equals human intelligence is something a lot of organizations are looking at or working on, but there are some very serious risks that these and other truly disruptive technologies can present. For example, we already have seen some of the potential impact of AI in the increased use of robotics in the manufacturing industries and the impact on the traditional employee base. AI has the capability of throwing millions of people out of their jobs, and unless there is a concerted effort to retrain these people, you’re looking at tremendous dislocation and negative impact on people’s lives. That in turn affects the brand owners, many of whom may employ some of these people. Suddenly, you’re introducing a technology that will be a very big disruption to the traditional business model and production system that we have, and so we’re starting to think about those kinds of things too, as part of anticipating and providing resources to members about what to do if AI really takes off as many are predicting.
To what extent do you think the relationship between new technologies and brand value will become a core part of INTA’s mission as an Association?
The publication of the Final Report truly marks an important moment in the way the Association sees its role and the scope of its mission. The INTA Board of Directors is currently developing the next Strategic Plan (2018–2021), and the concepts of brands and innovation will be mentioned. These concepts were also reflected in the opening remarks of INTA President Ronald van Tuijl at the 2016 Leadership Meeting. We were delighted to hear him quote verbatim the working definition of “brand” that we had presented to the Board earlier that day. In addition, he listed in one of his slides what he believed were the three main themes for the next Strategic Plan: (1) brands, (2) consumer trust, and (3) innovation. We are confident that these will be key themes for INTA as it moves into the next Strategic Plan period.
What do you see for the future of the committee?
This committee has received great support from INTA CEO Etienne Sanz de Acedo, INTA staff, the Officers, and the Board of Directors. All of them have encouraged us to think broadly, make bold proposals, and they really do believe that this is an area INTA needs to educate itself about. We both are seasoned INTA leaders and members, but this is one of the most exciting tasks we’ve had the opportunity to participate in at INTA.
As INTA Past President J. Scott Evans (Adobe Systems Incorporated, USA) said, Association members should think of themselves as brand ambassadors, and the concept of “brand” is broader than the legal aspects of trademarks. Brands have emotional and psychological as well as intellectual components. To be effective practitioners in the trademark field, this understanding is going to become ever more important in representing and counselling clients. Also, issues may emerge that we are not even aware of now. Curiosity and detachment from specific positions are necessary prerequisites for this committee to maintain its importance in the future. This committee is positioned to support INTA very well in that endeavour. In addition, this is an area that naturally lends itself to INTA’s goal to start engaging with organizations and people we’ve traditionally considered not to be interested in or relevant to the Association. This interconnectivity is paramount. It’s the right time, and it’s incredibly exciting.
Ingrid Desrois, 2016 President’s Award Winner
Julie Desrois accepted the President’s award on behalf of her mother, the late Ingrid Desrois, an active INTA member volunteer, mentor, and Association leader for over 18 years.
Ms. Desrois passed away on April 14, 2016. She served as the European Director of Trademarks for Procter and Gamble (P&G) until 2003 and as Special Advisor to the Office for Harmonization in the Internal Market (OHIM) beginning in 2004. She was raised in Munich, Germany, but moved to Paris in the mid-1960s, where she began her trademark career.
Ms. Desrois began attending INTA Annual Meetings in the mid-1980s. She was active on the Look-Alikes Committee, the OHIM Subcommittee of the Trademark Office Practices Committee, the INTA Board of Directors, and the Executive Committee, and as a member of the Government Officials Education and Training Committee, among many other Association activities.
One of Ms. Desrois’ most notable contributions to INTA was organizing government official trainings at the European IP Office in Alicante, Spain. With Ms. Desrois’s support, the government officials training program expanded considerably to ultimately become its own committee. In the years to follow, Ms. Desrois continued to enhance and expand the program. She served on a number of other committees during her career, including on the Historical Committee, Trademark Office Practices Committee, Executive Committee, and on INTA’s Board of Directors from 2000-2003.
The Association was pleased to be able to celebrate her dedication and commitment to the advancement of trademarks by presenting this award to her daughter during the Leadership Meeting.
INTA Files Amicus Brief in Patent Case with Broad Implications for Trademark Litigants
On September 13, 2016, INTA filed an amicus curiae brief
with the United States Court of Appeals for the Federal Circuit in the case of NantKwest, Inc. v. Lee,
(NantKwest Inc. v. Lee,
No. 2016-1794 (Fed. Cir., appellant brief filed 6/6/16); Nantkwest, Inc. v. Lee
, No. 1:13-cv-1566-GBL-TCB (E.D. Va. Feb. 5, 2016).
The case involves an appeal from the United States District Court for the Eastern District of Virginia, which held that a patent applicant seeking federal district court review of a Patent Trial and Appeal Board (PTAB) determination in ex parte
proceedings is not required to pay the legal fees of the United States Patent and Trademark Office (USPTO) regardless of who ultimately prevails. Although not directly involving trademarks, the significance of the case becomes apparent when viewed in the context of the Eastern District of Virginia’s earlier holding in Shammas v. Focarino,
784 F.3d 219, 221 (4th Cir. 2015).
, the district court held that a trademark applicant who sought federal district court review of a Trademark Trial and Appeal Board determination in an ex parte
proceeding was required to pay the legal fees of the USPTO, regardless of the outcome of the case. The fees provision at issue in both NantKwest
, although arising under the Patent Act and Lanham Act respectively, was identical; thus, the court’s decision in NantKwest
was a direct repudiation of the holding in Shammas
. Moreover, as the Shammas
decision was affirmed by the Fourth Circuit, the NantKwest
decision represents a break from the reasoning of that court as well (the district court was not required to follow Shammas
as patent cases are appealed to the Federal Circuit, rather than the Fourth Circuit; INTA submitted an amicus curiae
brief to the Fourth Circuit, arguing that the district court’s holding should be reversed, as well as an amicus curiae
brief to the United States Supreme Court in support of Shammas
writ of certiorari. The Supreme Court denied Shammas
’s certiorari petition).
In fact, the district court’s decision in NantKwest
specifically addressed and criticized the reasoning employed by the Fourth Circuit in affirming Shammas
. Therefore, the NantKwest
appeal presents the Federal Circuit with the crucial choice to either create what amounts to a circuit split regarding attorney fees under the Patent and Trademark Acts, or reverse the district court’s decision and embrace reasoning that has been heavily criticized (by both INTA and others).
The NantKwest Case
The patent applicant, NantKwest, Inc., applied for a patent for a method of treating cancer by administering natural “killer cells.” When its patent application was denied, NantKwest, Inc., appealed to the PTAB, which upheld the denial of the application. Exercising its rights under Section 145 of the Patent Act (35 U.S.C. § 145), NantKwest, Inc., filed an action in the United States District Court for the Eastern District of Virginia seeking review of the PTAB’s decision and asking for discovery to supplement the original PTAB record. NantKwest, Inc., chos
e not to appeal directly to the United States Court of Appeals for the Federal Circuit, an alternative avenue of review that would have been limited to just the record before the PTAB without the ability to take discovery and supplement the record. Under such an appeal, NantKwest would not have been required to pay the USPTO’s “expenses.”
Unlike review by the Federal Circuit, review before a district court requires that the applicant seeking such review must pay “[a]ll the expenses of the proceeding” regardless of which party prevails. The source of the matter at issue in NantKwest
is that the Patent Act does not expressly define “expenses of the proceeding.” The district court held that the term “expenses” does not include attorney fees, as sought by the USPTO, as such an interpretation of the Patent Act would contradict the longstanding principle in American jurisprudence, often called the “American Rule,” that each party must bear the burden of its own legal expenses absent a clear mandate from Congress to the contrary. Further, the district court explicitly criticized and rejected the Fourth Circuit’s decision in Shammas
which held that the American Rule applies only in circumstances where the losing party is directed to pay the prevailing party's fees. As INTA pointed out in its brief to the Federal Circuit, contrary to the two Shammas
decisions, multiple courts, including the Supreme Court of the United States, have routinely held that “unless Congress provides otherwise, parties are to bear their own attorney fees.” Fogerty v. Fantasy, Inc
., 510 U.S. 517, 533 (1994). Importantly, INTA has not identified a single court holding, apart from the Shammas
decisions, limiting the American Rule to prevailing-party fee-shifting situations only.
INTA also argued that any deviation from the American Rule would create a chilling effect on applicants’ rights to seek review of ex parte
PTAB decisions in the district courts. By creating a review process that allows applicants to commence a plenary action in district court, Congress recognized that certain circumstances would require an applicant to turn to a district court’s broad jurisdiction and more expansive discovery process in order to introduce facts outside the scope of the USPTO and PTAB review process. The burden of being obligated to pay the USPTO’s attorney’s fees is such a prohibitive expense that it would effectively remove district court review under Section 145 as a viable procedure for all but the wealthiest applicants. Such a result runs counter to the dual system of PTAB review as drafted by Congress, and any interpretation of Section 145 that allows that result cannot stand.
The brief was written by Anthony J. Dreyer, Jordan A. Feirman, and David M. Lamb of Skadden, Arps, Slate, Meagher & Flom LLP and Mark N. Mutterperl and Meghan Sullivan of Zeisler PLLC, with input from members of the International Amicus Committee’s U.S. Amicus Subcommittee.
Board Passes Resolution on Hague Agreement Concerning the International Registration of Industrial Designs
During the November meeting of INTA’s Board of Directors in Hollywood, Florida, the Board heard from the Association’s Designs Committee regarding a proposed Resolution, titled "Hague Agreement Concerning the International Registration of Industrial Designs."
The Resolution states that registered designs are a powerful tool in intellectual property protection and enforcement. They are the natural means to protect the form of products, particularly given that trademark owners are unable to register 3D trademarks in many countries.
The Resolution noted that:
In line with INTA’s core mission of promoting further harmonization of trademark rights and related rights, the Resolution therefore resolved that:
- The Hague System is the designs equivalent of the Madrid System for trademarks. It offers an efficient and cost-effective procedure to protect registered designs in multiple jurisdictions via a single application;
- 65 countries and intergovernmental organizations (including the EU and OAPI) are currently members of the Hague System. Recently the United States, Japan, and the Republic of Korea (South Korea) have joined; and
- It is critical for countries acceding to the Hague System to enact implementing legislation for the registration and enforcement of design rights.
Read the full text of the Resolution here.
INTA would like to thank 2016–2017 Chair of the Designs Committee, David Stone (Allen & Overy, UK); 2016–2017 International Design Harmonization Subcommittee Chair, Gregg Paradise (LernerDavid, USA); and 2016–2017 Designs Committee Members Simon Bennett (Fox Williams, UK), Marc-Christian Perronnet (M.C. Perronnet Law Firm, Switzerland), and Sandra Mau (TrademarkVision, USA), for all of their efforts.
INTA 2016 Leadership Meeting: The Future of Trademarks Is Brands
INTA President Ronald van Tuijl (pictured right) told registrants at INTA’s 2016 Leadership Meeting that “sound personal branding is not only good for us, our careers, our firms, and brands, it’s also good for our Association and our community.” Mr. van Tuijl was addressing INTA committee members and Association leaders at the Diplomat Resort and Spa Hollywood, Florida, USA, where the Leadership Meeting was held from November 15–18.
Before presenting the Association’s Pattishall Medal for Teaching Excellence of Trademark and Trade Identity, President’s Award, and Volunteer Service Awards winners, Mr. van Tuijl expanded on the theme of personal branding, which has been developed over the last several years by INTA past presidents. Beginning with Past President Mei-lan Stark (NC Universal Media, LLC, USA) in Hong Kong, INTA’s recent presidents and leadership have emphasized the importance of thinking beyond trademarks. “Trademarks enable consumers to make quick, confident, and safe purchasing decisions, whereas brands resonate with all of us on a personal level and have the power to make an emotional connection,” said Mr. van Tuijl. He noted that INTA members who advocate on behalf of the Association to governments around the world are leveraging the INTA brand, which is comprised of the collective reputations and personal brands of its membership.
As the concept of brands is a key component of the 2018–2021 Strategic Plan, INTA is working through committees such as the Brands & Innovation Committee, the Public and Media Relations Committee, and the Building Bridges Committee to communicate this new approach, said Mr. van Tuijl.
INTA CEO Etienne Sanz de Acedo (pictured below) also addressed Leadership Meeting registrants, updating them on the Board of Directors Meeting held on November 15, as well as the year’s activities and achievements. At the Board Meeting, a new Board Resolution was adopted on the Hague Agreement Concerning the International Registration of Industrial Designs. The Board also elected a number of new Directors, Officers, and Counsel during the Board Meeting.
Since the Panama Leadership Meeting, some of the major milestones for the Association include the rapid internal response to the “Brexit” vote and its impact on trademarks; the registration of an Asia-Pacific Branch Office in Singapore; the first-ever Board Meeting held in China in September; the announcement of a Latin America Representative Office opening in Santiago, Chile, in 2017; and much more.
The Leadership Meeting was co-chaired by Barry Cohen (Royer Cooper Cohen Braunfeld LLC, USA) and Cathy Lueders (MasterCard International Incorporated, USA). The program featured three days of educational sessions on cutting-edge topics, including sessions on trademarks in the booming craft beer industry; implications for trademark owners of the opening of the Cuban marketplace; navigating IP issues unique to entrepreneurs and startups; and the impact of the “Brexit” vote.
On Thursday, November 17, INTA’s Leadership Development Committee, through its L.E.A.D. (Leadership Enhancement and Development) initiative, introduced former NASA Astronaut Michael Foreman, who is now Vice President of Business Development, Venturi Outcomes LLC. Mr. Foreman spoke on leadership as seen through the eyes of a recently retired U.S. astronaut who flew on two Space Shuttle missions (STS-129, STS-129) and conducted five spacewalks. He described his journey from military service into the civilian world, to his critical roles in the development and accomplishment of tasks and missions both on land and in outer space.
INTA would like to thank the sponsors of the 2016 Leadership Meeting, Kashish Intellectual Property Group, LexOrbis, R.K. Dewan & Co., and TrademarkNow.
2016 Treasurer's Report
Ayala Deutsch, NBA Properties, Inc., New York, New York
- The International Trademark Association encourages countries and intergovernmental organizations to accede to the Hague Agreement Concerning the International Registration of Industrial Designs; and
- Countries and intergovernmental organizations acceding to the Hague Agreement should enact implementing legislation on the registration and enforcement of design rights.
As I end my term as Treasurer, I am pleased to report that our Association is in sound financial standing. The 2016 budget, adopted by the Board of Directors in Panama last November, projected a net revenue (total revenue minus total expenses) of US $371.8 thousand. We expect to end the year with net revenue of US $2.1 million.
We maintained an 89 percent membership retention rate in 2016, added 184 unique new member organizations and now have 7,097 member organizations around the world. Our primary source of revenue continues to be our Annual Meeting, which consistently accounts for more than 50 percent of our gross revenue. When we prepared the 2016 budget, we assumed that attendance in Orlando would be approximately 5 percent less than the budgeted attendance in San Diego, which had been the largest attendance until now. I am pleased to report that we exceeded that threshold and hosted more than 10,000 trademark professionals in May. As a result of the Membership Dues and Annual Meeting results, primarily, the Association’s gross revenue for 2016 is expected to be approximately US $1.6 million more than budget.
Following a successful year of expanding our international city selections for our larger meetings in 2015, this year we held a conference in Cape Town, our first educational event in Africa; and a conference in Singapore, co-hosted with AIPPI. As of yesterday, “Enforcement: An International Litigation Guide” was added to our suite of legal resources. At the initial launch, more than 44 jurisdications are included. Also during 2016, we introduced the Unreal Campaign to students at a dozen engagement sessions in locations outside the U.S., most recently in Nigeria. Early in the year, we opened our Asia-Pacific Branch Office. In addition, by the end of the year, we will have led delegations to India, Canada, Latin America, China, and other Asian jurisdictions; and we held our September Board Meeting in Beijing, our first Board Meeting in a region other than Europe or the U.S. We continue to convey an important set of messages to our members, prospective members, and government agencies around the globe of our commitment to education, advocacy, and public policy in all regions. Our U.S. based events continued to draw strong interest, as evidenced by the number of attendees at the Brands & Sports Conference in March in New York, the TMAP Meeting in Washington, D.C., in October, and at this Leadership Meeting, where we hosted more than 1,400 volunteers.
Our Association’s staff continued to demonstrate their ability to manage operating expenses during 2016. The forecasted variance of total expenses vs. budget is less than 1 percent. The noteworthy year-over-year increase in expenses were in the areas of professional fees, where we have expanded our committee-driven impact studies; and meeting services, which is directly correlated to the events we are providing.
As of September 30, the Reserve Fund balance was US $20.6 million, US $1.6 million more than when we met at this meeting one year ago. During 2016, the Finance Committee has been diligently monitoring and reviewing performance with our new investment advisors at JPMorgan. There is an expectation that the overall portfolio will continue to move with the relevant market indices and marginally gain value in the near term.
2016 marks the third year of the 2014–2017 Strategic Plan. In implementing that strategic plan, the CEO and his management team developed a detailed roadmap to grow membership, enhance educational offerings through educational events and online resources, further extend public policy and advocacy around the globe, and develop staff core competencies, all to solidify our Association’s sustainability. The team is well on its way to accomplish this implementation.
The 2017 budget will be presented to the Board of Directors today as well. Membership retention is budgeted to be comparable to this year, and Membership Revenue is budgeted to increase 3 percent. For conservative budgeting purposes, we are projecting Annual Meeting attendance in Barcelona will be comparable to the budgeted attendance this year. In addition to the unique programming that will be provided in May, we have an ambitious offering of meetings and other programs scheduled around the globe throughout 2017, including programs in Hong Kong, Cartegena, Colombia, and Berlin. Revenue from our other meetings, conferences, and programs next year is expected to generate US $2.6 million, an increase of 15.4 percent.
We have plans to expand our legal resources, and public policy and advocacy. INTA’s representative offices in Europe, China and Asia Pacific continue their advocacy, membership development, and communications. We will be opening our Latin American Office in Santiago, Chile at the end of the first quarter. Our Washington, D.C., office will continue to enhance our presence and effectiveness in Washington, with the support of two staff members supplemented by expert lobbying and consulting support. We continue to be well served by our consultants in Geneva and Delhi. Underlying all of these activities is the dedication to grow our membership base globally, and consistently enhance our member benefits.
2017 will be an important year for INTA as we execute the final year of the Association’s implementation plan developed to support the 2014–2017 Strategic Plan and introduce the 2018–2021 Strategic Plan. As Treasurer, it has been an honor to work with the officers, committee members, the general membership, the staff—especially the staff—and the Chief Executive Officer, and I am confident in the continuing progress of our Association.
Annual Meeting of Members
INTA President Ronald van Tuijl called the meeting to order at 8:30 am on November 15, 2016, at the Diplomat Resort and Spa in Hollywood, Florida, then turned the meeting over to Secretary Tiki Dare.
Ms. Dare certified that the official notice of the Annual Meeting of Members was mailed on October 28, 2016, and requested a motion that the notice be filed as part of the minutes of the meeting. Jomarie Fredericks moved that the notice of the 2016 Annual Meeting of Members be filed as part of the minutes of the meeting, and David McDonald seconded. The motion was passed on a voice vote.
Ms. Dare reported that the total number of INTA Regular Members was 1,069 and that a quorum of Regular Members as defined in the Bylaws was present in person or by proxy. Mr. van Tuijl declared the meeting regularly and lawfully convened and open to transact business.
Mr. van Tuijl reported that the minutes of the 2015 Annual Meeting of Members were published and circulated to the members and asked for any amendments or corrections. There was none. Elizabeth Pearce moved that the minutes be approved as published and Ms. Fredericks seconded the Motion. The motion was passed on a voice vote.
Mr. van Tuijl called on Treasurer Ayala Deutsch to deliver the 2016 financial report on the affairs of the Association. Ms. Deutsch made the report and Mr. van Tuijl called for a motion to approve it. Mr. McDonald moved that the report be approved and Ms. Pearce seconded the motion. The motion was passed on a voice vote.
Mr. van Tuijl stated that the President’s report on the activities of the Association during the 2016 year would be presented at the Opening Ceremonies of the Annual Meeting on Sunday, May 21, 2017, at 4:00 pm at the Fira Gran Via Convention Center in Barcelona, Spain.
J. Scott Evans, Chair of the Nominating Committee, presented the report of the Nominating Committee. Mr. van Tuijl advised that no nominations for these elected offices were made other than those proposed by the Nominating Committee. Ms. Fredericks moved that a single vote be cast for the Nominating Committee’s slate of candidates for election to the INTA Board of Directors and Mr. McDonald seconded. The motion was passed on a voice vote and the Directors were elected.
Mr. van Tuijl asked if there was any new business and there was none. He asked for a motion to adjourn. Ms. Pearce so moved, Ms. Fredericks seconded, and the motion passed.
Elections for INTA’s Board of Directors, Officers, and Counsel
On November 15, 2016, at INTA’s Leadership Meeting in Hollywood, Florida, the voting members of the Association elected the following persons for the INTA Board of Directors:
Term Ending December 31, 2017
Tish Berard, Hearts On Fire Company LLC (USA)
Tiki Dare, Oracle Corporation (USA)
Ayala Deutsch, NBA Properties, Inc. (USA)
Joseph Ferretti, PepsiCo, Inc./Frito-Lay, Inc. (USA)
David Lossignol, Sandoz International GmbH (Germany)
Term Ending December 31, 2019
Carsten Albrecht, FPS Fritze Wicke Seelig (Germany)
Daretia Austin, AT&T Services, Inc. (USA)
Louis Chan, Procter & Gamble Asia (Singapore)
Barry Gerber, Philip Morris International Management SA (Switzerland)
Michael Graham, Expedia, Inc. (USA)
Mona Lee, Hanol Law Offices (South Korea)
Pamela Mallari, Mars, Inc. (USA)
Paul McGrady, Winston & Strawn LLP (USA)
Philippa McLeod, Rolls-Royce plc (UK)
Judy McCool, HBO (USA)
Maria Cecilia Romoleroux, CORRALROSALES (Ecuador)
Christopher Turk, The H.D. Lee Company Inc. (USA)
On November 15, 2016, the Board of Directors elected the following:
Joseph Ferretti, PepsiCo, Inc./Frito-Lay, Inc. (USA)
Tish Berard, Hearts On Fire Company LLC (USA)
David Lossignol, Sandoz International GmbH (Germany)
Ayala Deutsch, NBA Properties, Inc. (USA)
Tiki Dare, Oracle Corporation (USA)
Zeeger Vink, Maus Frères (France)
Maury Tepper, Tepper & Eyster, PLLC (USA)
Andrea Gerosa (Belgium)
Cindy Tian (China)
Doug de Villiers (South Africa)
, Inter IKEA Holding Services S.A. (Belgium), to fill the Unexpired Board Term of Zeeger Vink through December 2017 as of January 1, 2017.
Volunteer Spotlight: Lorraine Fleck
Timothy J. Lockhart, Willcox & Savage, P.C., Norfolk, Virginia
Co-Chair, INTA Bulletins Association News Subcommittee
Lorraine M. Fleck is the founder of Fleck Innovation Law, an intellectual property boutique located in Toronto, Canada. She has been practicing trademark law for ten years, but did not always want to be a trademark lawyer. “My motto should be, ‘life is what happens when you have other plans,’” she says. After obtaining a bachelor’s degree in molecular plant biology, Lorraine chose law over medicine and thought a good career focus would be pharmaceutical patent litigation. But early in law school, she realized how much she enjoyed the various aspects of branding and the many arguments one can make when arguing a trademark case. “Although I do practice in other areas of intellectual property, such as copyright and trade secrets, trademark law is my first IP love because of the creativity that goes into developing a good trademark,” Lorraine says. “It is really hard work, yet like most things, when branding is done well, it seems effortless.”
Lorraine likes protecting clients’ brands, especially new ones, and also protecting clients and consumers from those who try to cause trademark confusion. “Being able to help launch a new line of business and protect the public on the same day is very gratifying,” Lorraine says. “I also like learning about different industries and interacting with colleagues from around the world on a daily basis.” She adds that after she successfully negotiated her first trademark settlement agreement and saw how pleased her client was with the outcome, “I realized then that what I did really mattered, and that motivates me in my work.”
Lorraine’s first involvement with INTA was during the 2006 Annual Meeting in Toronto. “I will never forget going alone to a reception, not knowing anyone, and having to be sociable in a room with literally hundreds of people,” she says.
Lorraine has been fortunate to have been on INTA committees since the start of her career. She previously served on the Security Interests Subcommittee of the Emerging Issues Committee, the Internet Governance & Contractual Relationships Subcommittee of the Internet Committee, and the United States & Canada Law & Practice Subcommittee of the INTA Bulletins Committee. She is now assigned to the Health Policy and Trademarks Rights Subcommittee of the Emerging Issues Committee. Lorraine has also moderated Table Topics on social media policies, and at this year’s Annual Meeting she spoke on social media topics such as hashtags as trademarks.
Her family, Lorraine says, includes “a very adorable rescue cat named Matty Munchkin, who provides us with hours of entertainment and snuggles.” Lorraine’s hobbies center around food and drink, travel, physical fitness, and photography. “I love visiting new countries and learning how the local food and drink reflect the physical environment and the country’s history and traditions,” she says. “It is interesting to explore the reasons why the food in Hong Kong is quite different from the food in Germany.”
Committee Spotlight: Geographical Indications Committee
Donna Tobin, Frankfurt Kurnit Klein & Selz PC, New York, New York
INTA Bulletins Association News Subcommittee
The mention of geographical indications (GIs) can illicit tension among those familiar with the issues surrounding them due to the alternative systems used to protect GIs throughout the world and the resulting differences in views surrounding those systems. The primary mission of INTA’s Geographical Indications (GI) Committee is to develop INTA’s policy position related to GIs and to analyze and provide comments on GI law, practice, and policies on the international, regional, and national levels. The GI Committee also monitors relevant developments and provides comments on international trade agreements addressing GIs.
Reflecting the geographic diversity and different industries of the INTA membership, the GI Committee assists the Association in developing policy that recognizes the importance of protecting trademark rights, while also demonstrating the benefits of GI protection to trademark owners and the importance of the correct use of geographical names in accordance with fair use principles.
In the present term, the GI Committee will examine the need for updating the current INTA Board Resolution on GIs from 1997. It will also consider the model framework for a multilateral GI register that could potentially limit conflicts between GIs and trademarks and improve harmonization and legal certainty. Finally, the GI Committee is examining use of geographic terms in the gTLD system and corresponding regulations.
The GI Committee often is asked to comment on proposed regulations and recently reviewed proposed laws relating to GIs in Azerbaijan, New Zealand, and Pakistan. GI Committee members also responded to requests for comment from the European Union Intellectual Property Office (EUIPO) on the treatment of GIs in the enforcement context and plan to provide comments on GI issues associated with EU legislation.
Other upcoming projects include possible participation in an amicus brief in Argentina, examining certification and collective trademark regulations, monitoring Lisbon Working Group discussions at WIPO, gathering information on bilateral and multilateral treaties, and preparing for possible comments to expanded legislation on non-agricultural GIs.
The current Chair of the GI Committee is Eric De Gryse (Simont Braun, Belgium) and the Vice Chair is Anna Manville (Arnold & Porter LLP, USA). The GI Committee is comprised of three subcommittees focusing on particular aspects of GIs: GI Enforcement, GI Expansion, and International Agreements. Each subcommittee has about 15 members with representation from members in Africa, Asia, Europe, Latin America, and North America.
Be sure to watch for the GI Session the committee will be organizing for the 2017 Annual Meeting in Barcelona on geographic branding issues.
Welcome New Members
Pendl Mair Attorneys at Law, Vienna, Austria
Sko Oyarabal Marcas E Patentes, Porto Alegre, Brazil
Cabinet M-P Escande, Paris, France
TMT Law Practice, New Delhi, India
Kyowa Patent and law Office, Tokyo, Japan
Minami Aoyama Patent and Trademark Attorneys, Tokyo, Japan
Tandbergs Patentkontor A/S, Oslo, Norway
Avalos Brunetti Abogados, Asuncion, Paraguay
Calissendorff Swarting Advokatbyrå KB, Stockholm, Sweden
Holland & Knight, Stamford, Connecticut
Brannon Sowers & Cracraft PC, Indianapolis, Indiana
Kaela Joyner, Hastings-on-Hudson, New York
Kruzliak Advokatska kancelaria, Bratislava, Slovakia
Zorro Huertas & Zorro Sanchez, Bogotá, Colombia
Albert Santillan & Meneses Law Offices, Makati City, Philippines
Shutts & Bowen LLP, West Palm Beach, Florida
Simi, Cambridge, Massachusetts
Myers Bigel & Sibley P. A., Raleigh, North Carolina
Schmitt & Orlov Intellectual Property Co Ltd, Ho Chi Minh City, Vietnam
Hickies, Inc., New York, New York
DK Lalwani & Co., New Delhi, India
Webber PLLC, Billings, Montana
Venable LLP, San Francisco, California
Mimi Datta, Cleveland Heights, Ohio
Delta Patents, Eindhoven, Netherlands
Mulino & Mulino, Panama, Panama
McInnes & McLane, LLP, Worcester, Massachusetts
Groupon International Limited, Dublin, Ireland
Claudia Bettendorf Rechtsanwältin, Wiesbaden, Germany
Huang & Partners, Taipei
MAPA GmbH, Zeven, Germany
Cerberus Investigations Limited, London, United Kingdom
Anticounterfeiting Activities in Brussels, Buenos Aires, Canada, and the Philippines
Capacity Building with IPOPHL and Unreal Event (Philippines)
INTA participated in two anticounterfeiting events in the Philippines on October 14, 2016. The first session was conducted in collaboration with Quisumbing Torres and the Intellectual Property Office of the Philippines (IPOPHL) and held at the IPOPHL office. The event was a capacity building session for members of the National Committee on IPR (NCIPR), including the Bureau of Customs (BOC), National Bureau of Investigation (NBI), Philippine National Police (PNP), Optical Media Board (OMB), Department of Trade and Industry-Fair Trade Enforcement Bureau (DTI-FTEB), and the Philippine Food and Drug Administration (FDA). The event was aimed at promoting Intellectual Property Rights (IPR) by providing a venue for brand owners to demonstrate how to distinguish genuine versus real products.
Association Concludes a Landmark Year in Asia-Pacific
INTA members have kept busy with high-level advocacy and education activity as 2016 comes to a close across the Asia-Pacific region. December concludes a signal year for the Association following a number of achievements, including the establishment of its branch office in Singapore in March.
Weighing in on Plain Packaging
IPOPHL Deputy Director General Allan Gepty welcomed more than 40 enforcement agency representatives to the training session and emphasized the importance of education in fighting counterfeiting. Representatives from Procter & Gamble, WD-40, Wheel Pros, and Bose also participated in the capacity building session. Bienvenido Marquez III, Group Head and Partner of the Intellectual Property Practice at Quisumbing Torres, and Chair of the INTA Anticounterfeiting Subcommittee for East Asia and the Pacific, represented WD-40 in the program and stressed the negative and harmful effects that counterfeit goods have on industries and on consumer health.
INTA’s second event in the Philippines was the launch of the Unreal Campaign at Assumption College (Makati). The Unreal Campaign is INTA’s consumer awareness program, which aims to educate high school students (ages 14 to 18) about the dangers of counterfeiting and the importance of trademarks. More than 300 students from Assumption College attended the event and represented various departments, such as Media Production, Advertising, Performing Arts, Corporate Management, Human Resources, International Business, Marketing Management, Entrepreneurship, and Tourism Management. Quisumbing Torres’s Intellectual Property Practice Group Partner, Divina IIas-Panganiban, provided an overview of IP concepts, including trademarks, copyrights, and patents. Ms, IIas-Panganiban spoke on the importance of protecting strong brands and presented actual case studies on enforcement to the students. The event also included speakers from Procter & Gamble, V&A Law Villaraza & Angangco, MarksPro Philippines, and Cesar C. Cruz & Partners Law Offices. IPOPHL Deputy Director General Allan Gepty provided closing remarks and discussed the role of the Philippine government in protecting IP rights in the country. For more information on the Unreal Campaign
, please contact Laura Heery at email@example.com
INTA–BASCAP Workshop: Intermediaries and Rights Holders—Working Together to Stop Counterfeiting and Piracy (Brussels, Belgium)
On November 30, INTA and the International Chamber of Commerce - Business Action to Stop Counterfeiting and Piracy (ICC-BASCAP) jointly organized a regional workshop in Brussels, as part of its series on “Intermediaries and Rights Holders—Working Together to Stop Counterfeiting and Piracy.” A diverse group of more than 70 panelists and attendees, including intermediaries, rights holders, government officials, trademark lawyers, and enforcement authorities, facilitated a fruitful discussion on how to address current and future challenges. The workshop began with a keynote speech from Slawomir Tokarski, Director of Innovation and Advanced Manufacturing, Directorate General for Internal Market, Industry, Entrepreneurship and SMEs (DG GROW) of the European Commission. He announced that the proposal to review the IPR Enforcement Directive (IPRED), most likely to be launched during the first half of 2017, is expected to be quite ambitious. He also emphasized the importance of the Memoranda of Understanding (MoUs), facilitated by the European Commission, which have been initiated under the “follow-the-money” approach to attacking counterfeiters.
In the first session, the panel addressed the shipment of fake goods and highlighted the steps which are being taken to control the supply chain and stop the flow of illicit goods across borders. The second session focused on the counterfeiters’ places of doing business. Rights holders and property owners exposed the vulnerabilities and exchanged views on best practices on how to prohibit access to counterfeiters in spaces where they can develop business. The third session explored the complex intermediary scheme involved in the supply chain of the Internet marketplace and discussed how intermediaries and rights holders can collaborate effectively to eliminate illicit traders’ online access, using existing voluntary programs and actions, but also developing new ones. Finally, the fourth session addressed the issue of disrupting the revenue stream for counterfeiters, where the panel described how counterfeiters make money from their criminal activities and which innovative approaches could be taken to stop the money flow.
Workshop: Intermediaries and Rights Holders—Working Together to Stop Counterfeiting and Piracy (Buenos Aires, Argentina)
On December 3, INTA successfully hosted a workshop in Buenos Aires, Argentina, prior to the XIX Work Sessions and Administrative Council of the Inter-American Association of Intellectual Property (ASIPI). The workshop was the fifth and final workshop in the 2016 intermediary series that brought together key stakeholders to discuss the role of intermediaries in addressing the sale of counterfeit goods. The workshop was supported by ASIPI and BASCAP. Dr. Sebastián Basso, Federal Prosecutor, Morón, Province of Buenos Aires (pictured far left), provided the keynote address and María del Pilar Troncoso, ASIPI President (pictured middle left) and Dolores Moro, INTA Senior Strategist , Education (pictured middle right), provided the welcome and opening remarks. Gustavo Giay (Marval, O’Farrell & Mairal, Argentina) (pictured far right) set the stage for the day’s discussion and Ms. Moro provided the closing remarks.
More than 70 delegates joined expert panelists and moderators from Latin America, including representation from industry, government officials, and legal and business experts, for in an interactive and engaging workshop. Delegates agreed that the key to effectively combating counterfeits requires education of consumers and enhanced collaborative networks of industry, government, and intermediary representatives.
INTA gratefully acknowledges the support provided by ASIPI for this workshop. The workshop would not have been possible without the generosity of ASIPI and the Association is grateful that ASIPI was a local co-organizer of the event.
INTA Sends Third Delegation of 2016 to Canada
On November 30, 2016, INTA CEO Etienne Sanz de Acedo and Anticounterfeiting Coordinator Tiffany Pho traveled to Toronto for INTA’s third 2016 delegation to Canada. The delegation coincided with the 21st Annual Fraud and Anti-Counterfeiting Conference
in Toronto, held by Kestenberg Siegal Lipkus LLP. INTA CEO Etienne Sanz de Acedo delivered one of the opening keynote addresses and spoke on the need for stronger action in Canada and some of the initiatives that INTA has taken. INTA Anticounterfeiting Committee—Canada Subcommittee Chair, Monique Couture (Gowling WLG, Canada), participated on behalf of the Association on a panel covering “Resources through Various Agencies & Organizations.” Ms. Couture was able to present, in detail, INTA’s Canadian anticounterfeiting advocacy efforts this year.
During the delegation, INTA met with officials from the Royal Canadian Mounted Police and the Canadian Anti-Fraud Centre to discuss current counterfeiting issues. INTA was also able to meet with the Canadian Anticounterfeiting Network to discuss anticounterfeiting collaboration strategies.
INTA would like to thank the members that participated in the delegation trip: Shelley Jones (Blackberry Limited, Canada), Janice Bereskin (Bereskin & Parr, Canada), Monique Couture (Gowling WLG, Canada), and Cynthia Rowden (Bereskin & Parr, Canada).
For more information on INTA’s anticounterfeiting events, please reach out to INTA Anticounterfeiting Manager, Maysa Razavi, at firstname.lastname@example.org
, and INTA Anticounterfeiting Coordinator, Tiffany Pho, at email@example.com
Most recently, INTA’s Chair of the Legislation and Regulation Committee—Asia-Pacific Subcommittee, Soh Kar Liang (Ella Cheong, Singapore) (pictured second from right), spoke at a Financial Times Business Regulations Seminar on December 8 in Singapore. The theme of the conference was “Business Regulation: Burden or Benefit?” Mr. Soh spoke on the pressing concerns presented by regulatory encroachment on trademark rights through plain packaging. A number of jurisdictions in the Asia-Pacific region have proposed or enacted plain packaging of tobacco products. Mr. Soh mentioned that trademark rights are an interesting area where the interests of consumers and producers intersect: trademarks protect the consumer from confusion and dangerous counterfeit goods, while at the same time protecting producers from unfair competition and creating valuable IP rights.
Promoting Stakeholder Engagement
INTA also supported a regional seminar on December 6 organized by the Singapore Office of the World Intellectual Property Offices (WIPO) and the IP Office of Singapore (IPOS) dedicated to enhancing IP Office customer service and stakeholder engagement. INTA corporate member, Niki Franks (BP plc, Singapore), spoke on behalf of INTA, citing the practical needs that users of IP office services would like to see. Attendees came from a diverse number of countries around the Asia-Pacific region, including Bangladesh, Bhutan, Cambodia, Indonesia, Lao People’s Democratic Republic, Malaysia, Myanmar, Pakistan, Papua New Guinea, the Philippines, the Republic of Korea, and Singapore.
Comments to IPOPHL and Indonesian Customs
INTA has supported advocacy through written comments to countries across the region. INTA submitted comments to the IP Office of the Philippines (IPOPHL) on December 1 regarding changes to the IP Code and to the Indonesian Directorate General of Customs on areas to improve procedures to seize infringing goods at the border earlier in November. INTA joined other associations and interested foreign governments for a roundtable in Jakarta with the customs authorities on the matter on November 30.
Engaging in Dialogue on Border Enforcement
On November 8, INTA’s Chief Representative, Asia-Pacific, Seth Hays (Singapore), participated in an event organized by the ASEAN Secretariat and USPTO on transnational cooperation in the border enforcement of intellectual property rights, which included participants from the Ministries of Trade, Customs and IP Offices from ten ASEAN countries. INTA spoke on the importance of international cooperation and communication among customs agencies, particularly in light of the increases in trade due to the formation of the ASEAN Economic Community in 2015 and the movement of manufacturing from China to lower cost labor markets in developing Southeast Asia.
INTA has been further supporting enforcement efforts in the region by participating in the 6th Philippines Enforcement Summit in Manila on October 24. Mr. Hays presented on INTA’s efforts to educate the public on the danger of counterfeit goods, namely through the Association’s Unreal Campaign, which conducted a program for children the prior week.
Delegation Visit to Japan
INTA President Ronald van Tuijl led a delegation of INTA members to meet with association counterparts and authorities in Japan from October 25–26, including the Japan Patent Office (JPO) (pictured right), the Japan IP High Court, Customs, the Japan Trademark Association, and the Japan Intellectual Property Association. Mr. van Tuijl spoke with JPO Commissioner Yoshinori Komiya about INTA’s work in the region, and indicated INTA’s support for JPO’s leadership on IP in Asia and the world through its network of IP attaches, and through projects at the TM5, such as the Bad-Faith Registration Project. Commissioner Komiya remarked that protection of brands from counterfeit goods was a major priority for his office and supported INTA’s efforts in this regard. INTA would like to thank the kind efforts of INTA Board of Directors Member, Shunji Sato, and Mitsuko “Mimi” Miyagawa (TMI Associates, Japan) for their kind support of the delegation activities in Japan.
Looking Forward to 2017
INTA looks forward to 2017 to continue its engagement with governments across this important region through delegations, submission of important views and comments, and educational programming, including the INTA Hong Kong Anticounterfeiting Conference, which will be held February 6–7, 2017.
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:
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.
- 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.
In-House Practitioners Idea Exchange: E-Commerce Trademark and Brand Protection Strategies for In-House Practitioners
Belinda Berman, United States Golf Association, Far Hills, New Jersey
Rosa Jimenez, SeaWorld Parks & Entertainment, Inc., Orlando, Florida
A diverse group of INTA corporate in-house members from various countries and industries participated in the teleconference. Heidi Belongia, Senior Counsel Intellectual Property for Kohl’s Department Stores, Inc., Angela T. Isabell, Assistant General Counsel for the Council of Better Business Bureaus Inc., and Shelley Jones, Senior Legal Counsel, Trademarks & Brand Enforcement for BlackBerry Limited, were the moderators for the sessions. This article provides a general overview of the issues discussed and the experience encountered by a number of participants in the session, but does not identify any individual or corporate views discussed during these two Idea Exchange sessions.
When asked if trademark issues in e-commerce are treated any differently than those found in brick and mortar stores, the majority of participants indicated that there is no differentiation based on the platform. Many expressed that their expectations and experiences in terms of enforcement was that issues in e-commerce required faster action and had faster resolutions, especially with the takedown procedures in place by various entities. In addition, they found that their clients expressed more anxiety about the implications for their brand and the ramifications of actions taken when it involved e-commerce. They also felt that it was like playing a losing game of whack-a-mole because as soon as one issue was taken care of, three more arose to take its place.
Participants were asked if they treated the clearance process for a slogan meant for an in-store sign differently than when that slogan is used on a website. Many agreed that the approach is not much different when clearing a mark that is going to be on a website or on or in connection with brick and mortar. A number of factors are taken into consideration, such as the level of risk, duration, and extent of use. Some of the most common questions are: How quickly can the mark be removed? How expensive would it be to remove it? What kind of disruption level will it create for the business? They also weigh the risk of how easily marketing materials can be pulled back, the cost to reprint such materials, and how fast they can get materials back from distributors. “If distributors continue to use these materials, we continue to be exposed to a lawsuit,” said one participant.
When it comes to risk assessment, participants found that because e-commerce is more public, they have been a bit more conservative in how they approach infringements. For example, they might scope out the prominence of the infringing matter and investigate how long it has been active and how much traffic the site gets. Because takedown notices and other cease and desist communications are likely to become public, the public relations aspects needed to be taken into account. Letters are very carefully prepared to be amicable and thoughtful due to the expectation that it will be made public. Therefore, counsel will often work with their communications team or social media team before sending cease and desist communications. In jurisdictions in which the company is only present online, the consensus was that due to limited budgets, prioritizing the most important items for the business was most important, and the strategy was set jointly by the legal and marketing groups.
With respect to counterfeit goods, some companies used a third-party service provider for online takedowns, and some filed certificates of registration with customs in various countries. Most found it to be a labor intensive process and continually look for ways to make it less labor intensive internally. Several use a third-party provider to monitor online trading platforms and use another party to separately monitor applications and registrations.
“When dealing with counterfeits, we have a zero tolerance policy whether online or in the market, and we take a very aggressive approach,” said one participant on the call. When the counterfeit is on an e-commerce site, some in-house teams deal directly with the platform. Others in the pharmaceutical industry find it effective to turn to a regulatory agency (like the FDA) and have the agency go after the counterfeit product.
The group then turned their attention to trademark concerns related to affiliate networks. When the marketing team has third parties that are allowed to use their marks and logos, working with the marketing team to manage enforcement is important. There are also a number of third-party providers specializing in affiliate network monitoring which assists by monitoring who is bidding on your key words and platforms.
When it comes to typo squatting, some participants noted that it’s a bit of a struggle with the business team because they want to go after everyone. From a resources perspective that doesn’t always make sense, so they need to evaluate the traffic on that site. However, if it’s a major launch or if someone takes traffic away, they will often take action. Others have taken an approach to let those typo squatting issues go now that searches have changed the landscape.
With respect to online scams and enforcement, participants pursued fraudulent sites with similar names because of the effect on the reputation and credibility of the company, its products, and services.
One strategy for online takedowns shared with the group was the use of copyright registrations. “A lot of unauthorized sellers are taking legitimate photos from legitimate websites and listing them as a legitimate product when they are not,” explained one participant. “Although a copyright registration for images is recommended, for many U.S.-based e-commerce platforms you don’t need to register your copyright. Just send them a link of the copyrighted image and they will verify the original source. For other international marketplaces it is recommended that you have a federal registration,” expressed another participant on the call.
In the App World
Discussion then turned to when a third party is using your name and creating an app. Many participants found that it takes four to eight weeks to get the platform/company to pull it down. Third-party services that work across various platforms and have relationships with big app stores have had success getting blatant issues responded to quickly. There are also third-party services that assist with domain enforcement. They scan the app platforms for potential infringing apps and then the brand owner instructs who to go after. While it can be part of the domain enforcement package with a third party, 99 percent do all that work in-house and find it very time consuming.
Truth in Advertising
When it comes to truth in advertising issues, it was a mix between trademark counsel and marketing counsel handling those issues. Often there is a full team in place to address the review process, including documentation to support substantiation claims.
The Legal Team and Social Media
Many participants indicated that they have brand guidelines which are provided to various business units, including corporate communications. The legal team works closely with the brand marketing and licensing departments to ensure conformance to the guidelines. Often the business unit will contact the third-party licensee to address brand guideline issues.
With respect to social media, the group was asked whether they review and clear content before it is posted by their organization. It was a mixed response which included use of the guidelines developed by their department by the media and PR departments. “We were seeing everything and that wasn’t working,” said one of the participants on the call. Some industries have the resources to vet social content. They look at the language, references, photos, footage, use, etc., but agree that it is voluminous. The group noted that the business units were mostly monitoring social media matters. Some have separate departments that handle monitoring.
When working with bloggers and endorsers, some in-house teams provide a one pager with guidelines on how to use trademarks properly, but do not provide a lot of detail. “We have disclosures in place and expect them to comply with company standards, but the legal team does not review content,” said one participant on the call.
How to Quantify Success to Senior Management
Companies are actually looking at the number of takedowns on e-commerce platforms as a measure of success. Some legal teams only monitor four major Chinese websites. Some factor in a change in sales when they see an increase in the purchase of original equipment rather than counterfeits or resales. “Sometimes it’s more of a listing improvement campaign rather than a removal,” said one participant on the call. All agreed that improved listing is a good thing because there is less consumer confusion but are not sure what the competitive impact is.
Other participants on the call quantify success based on the number of shipments being stopped at customs or the number of seizures that have taken place.
The discussion then turned to gTLDs, which everyone recognized could be the topic of a separate Idea Exchange session. Generally, the participants in these sessions did not register with .brand, however if they did, it was being redirected back to their main site. Many found that it doesn’t fit into their multi-brand strategy, and even when it has been registered, it hasn’t been used often. The participants noted that it was not particularly useful to have the additional registrations when web traffic is being largely driven by key words and meta tags and following the traffic. Some used the Uniform Rapid Suspension System when not interested in actually using the domain because they found it to be cost effective.
Fostering EU-China Relations, EUIPO Engagement, and Europe Office Celebrations
The past few weeks have been quite busy for the Europe Office, culminating in a number of events in Brussels and the celebrations of the tenth Anniversary of the Europe Office.
EU-China IP Relations
In November, INTA participated in two events on EU-China IP relations, hosted by the European Commission – DG Trade in Brussels.
On November 10, an EU-China IP Business Meeting took place, where business representatives were able to exchange views directly with high-level Chinese and EU officials from various departments, agencies, and ministries. Topics included the management of caseloads at the China Trademark Office and the State Intellectual Property Office, the enforcement role of administrative IP and judicial authorities, and the rapid growth of e-commerce. Jan De Visser (Philips International B.V. - Intellectual Property and Standards, The Netherlands), member of INTA’s Anticounterfeiting Committee—China Subcommittee, made a well-received presentation at that meeting about general counterfeiting issues in China.
On November 11, the 19th EU China IP Working Group
took place, which is the formal meeting between EU and Chinese officials. The discussion focused on the state of deliverables for priority areas defined in the 2015 EU-China IP Dialogue, including trademarks (particularly bad faith issues), enforcement, online counterfeiting, and academic cooperation, among other areas.
Mr. De Visser attended both meetings and was accompanied by Hélène Nicora, Representative Officer – Europe, on the first day and by Milesh Gordhandas, Advisor, Europe Office, on the second day.
EUIPO and Observatory Meetings in Alicante and Milan
On November 15–17, Ms. Nicora attended the meetings of the Management Board and Budget Committee (MBBC) of the European Union Intellectual Property Office (EUIPO) in Alicante, Spain.
INTA is one of the User Associations with a permanent Observer status at the EUIPO MBBC. Items on the agenda included the implementation of the new EUIPO Guidelines, the state of implementation of the EUIPO 2020 Strategic Plan, the evaluation of the EU Observatory on Infringements of IP Rights (which the EUIPO manages) and its 2017 Work Program, international cooperation, and legislative issues (including the implementation of the EU trademark reform). The activity-based budget for 2017–2021 that was presented highlighted the continuing importance of trademarks and designs by the EUIPO.
Between November 29 and December 2, the EU Observatory on Infringements of IP Rights held the meetings of its Working Groups
: Legal; Enforcement; Economics and Statistics; IP in the Digital World; and Public Awareness. The meetings were held in Milan alongside the DesignEuropa Awards
, which were held on November 30. INTA was represented by Elio De Tullio (De Tullio and Partners, Italy), member of the Anticounterfeiting EU Subcommittee and Chair of INTA’s Observatory Task Force, and María González Gordon (Gómez-Acebo & Pombo, Spain), member of the Trademark Office Practices Committee – EUIPO Subcommittee.
Promoting Trademark Law to Law Students
On November 21, a group of 23 law students from the Instituto de Empresa Law School in Madrid, Spain, visited INTA’s Europe Office for a lecture on basic trademark law and the work of a trademark professional. The lecture was given by Ignacio Lázaro (PETOSEVIC, Russian Federation), who explained the differences between prosecution and enforcement work and challenged students with real-life trademark application cases. It is the second time that this Spanish Law School has visited INTA. A detailed report of this visit can be found here on the INTA Blog.
Workshop on Intermediaries and Rights Holders, Conference on the Digital World, and the Europe Office Turns Ten
Finally, on November 30, INTA and ICC-BASCAP held a workshop on intermediaries and rights holders. This was followed by the Association’s two-day Digital World Conference.
At the end of day one of the Conference, a reception was held to celebrate the tenth anniversary of the Europe Office, with interventions by INTA President Ronald Van Tuijl (JT International, Switzerland); past President Toe Su Aung (Elipe Ltd, United Kingdom); and Geert Glas (Allen & Overy LLP, Belgium) (pictured right). Christina Sleszynska, Chief Representative Officer – Europe—and head of the Europe Office since its inception ten years ago—gave a ten-minute speech (one minute per year) reminiscing about past achievements and future challenges. The reception was attended by conference registrants and by invited guests, including officials from the EU Institutions, other associations and stakeholders, from Brussels and beyond, with whom the Europe Office regularly interacts.
A detailed report of the workshop can be found here
. A report of the conference will be published in the January 15 INTA Bulletin
For more information on the activities of the INTA Europe Office contact Christina Sleszynska, Chief Representative Officer – Europe (details here). To keep updated on developments follow @INTABrussels on Twitter.
CIPAM-INTA Collaboration for IPR Awareness and Education for Children
In March 2016, INTA and the Department of Industrial Policy and Promotion (DIPP), (Ministry of Commerce and Industry, Government of India) discussed exploring a collaborative project to educate children in India on intellectual property rights (IPRs). To give effect to this project, INTA put together a working group that, based on further discussions with DIPP and Cell for IPR Promotion and Management (CIPAM), submitted a proposal for cooperation with DIPP and CIPAM in order to offer its support towards the fulfillment of Objective 1 of the National IPR Policy, IPR Awareness: Outreach and Promotion. On November 4, 2016, DIPP and CIPAM accepted INTA’s proposal through an official memorandum. This is the first initiative of its kind for the Association.
These are some of the main features of the collaboration:
- The campaign will cover an introduction to IPR as well as the four main forms of IPR: patents, trademarks, copyright, and designs.
- The term of the proposal is financial year 2016–2017 onwards.
- The target audience is primary schools (Class I to Class VIII) in Tier 1, 2, and 3 cities in India.
- Campaign material will include PowerPoint presentations, comic books, posters, pamphlets, and interactive games.
India Intellectual Property Office’s Prominent Ranking in WIPO’s World Intellectual Property Indicators 2016
Call to Action
DIPP and CIPAM have called for volunteers from INTA’s India membership to conduct IPR awareness drives in schools as part of this IPR awareness campaign. Encourage young associates in your organization to participate and make a difference. If you or your associates are interested in volunteering in this campaign, contact INTA’s India Consultant, Gauri Kumar at firstname.lastname@example.org.
According to World Intellectual Property Organization’s (WIPO) annual World Intellectual Property Indicators (WIPI) report for 2015 that was released on November 23, 2016, India’s IP Office is ranked fifth worldwide in terms of the highest number of trademark filings. Trademark filing in India also reported the fourth highest growth rate globally, at 21.9 percent. As per the report, India has ranked among the top five offices in trademark filing activity for the first time, moving up from seventh position in 2014 to fifth in 2015.
Latin America Update
INTA Delegation Travels to Buenos Aires for ASIPI Event, Government Meetings
From December 4–7, 2016, INTA President Ronald Van Tuijl (JT International, SA, Switzerland) and External Relations Associate for Latin America, Gabrielle Doyle, attended the XIX Work Sessions and Administrative Council of the Inter-American Intellectual Property Association (ASIPI), held in Buenos Aires, Argentina. Mr. Van Tuijl and Ms. Doyle took the opportunity to meet with government officials, local associations, and members from the region to discuss collaboration projects and current events in Latin America and the Caribbean.
The INTA delegation, which included Latin American and Caribbean members as well as INTA representatives, met with a variety of IP offices from the region. On December 5, the delegation met with Ray Meloni, Director of the Distinctive Signs Division of Peru’s Commission of the National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI) to discuss IP office updates in Peru and the dissemination of the Latin America Impact Study. The INTA delegation also met with Damaso Pardo, President of the Argentina National Institute of Industrial Property (INPI); Carlos Gallo, the Director of Trademarks; Matias Schweizer, INPI official; and Mercedes Cullen, International Relations Coordinator at INPI. This was INTA’s first official one-on-one meeting with Dr. Pardo and his team. The discussion included collaboration events for 2017 and INPI’s modernization plans for the next three years.
On December 6, INTA held a meeting with Eliseo Montiel Cuevas, Director of Trademarks at the Mexican Institute of Industrial Property (IMPI), in which they touched on the success of the 4th Annual Training Seminar that took place in October this year and plans for next year’s event. Later that day, the National Institute of Industrial Property Chile (INAPI) gave a presentation to the INTA delegation on the vast updates the Office has made in the last year and their online portal titled “INAPI Proyecto.” INTA ended the day with a meeting with President of the Andean Community Tribunal of Justice, Justice Hugo Gomez Apac. The INTA delegation learned of the Tribunal’s modernization efforts and commended the Tribunal’s various initiatives to advance processes. Finally, the delegation met with the USPTO IP Attaché for Mercosur, Laura Hammel, and Maria Beatriz Dellore, Regional Legal Advisor for Intellectual Property, and talked about the USPTO’s view of the region in terms of challenges and opportunities for cooperation. INTA looks forward to working together on joint events in 2017.
During the ASIPI Congress, INTA also had the opportunity to meet with the presidents of the national IP associations of Argentina and Brazil, Carolina Fernandez of the Argentina Association of Intellectual Property Agents (AAAPI), and Maria Carmen de Souza Brito of the Brazilian Intellectual Property Association (ABPI), respectively. Each president presented on the status of IP in their respective countries and the possibility for joint collaboration projects with INTA.
INTA ended the ASIPI Congress with a high-level presentation of the just-released Latin America Impact Study. The study was officially announced, and released to the public, during a series of launch events that took place in the five countries included in the study, namely, Chile, Colombia, Mexico, Panama, and Peru. Each event has been organized in collaboration with ASIPI and each country’s respective IP office and will include a press conference and roundtable meeting with government officials. The Spanish version of the study is available here. The English version will be published in the coming weeks.
At the ASIPI Work Sessions presentation, Mr. van Tuijl, ASIPI President Maria del Pilar Troncoso, and ASIPI/INTA Impact Study Project Team Co-Chair Juan Berton Moreno (Berton Moreno & Asociados, Argentina), provided attendees with an overview of the study, including the reason for its development, methodology, the value of the results, and next steps. Attendees at the panel included IP Office representatives, corporations, and local members.
For more information on the Latin America Trademark Impact Study or INTA’s initiatives in Latin America, please contact Gabrielle Doyle at email@example.com.
Latest Issue of the TMR and New Guide to International Litigation
Since the last update in October, The Trademark Reporter (TMR) has published its September-October, 2016, issue (Vol. 106, No. 5), which includes articles on free speech, the Michael Jordan v. Qiaodan case in English and Chinese, and registrability of nontraditional marks in Brazil (in English and Portuguese). Commentaries topics include a marijuana dispensary service mark application, Canada’s official marks regime, and disregarding national decisions in the EU. The issue is punctuated with a book review on The Law and Practice of Trademark Transactions: A Global and Local Outlook. The next issue of the TMR will be a theme issue on damages, scheduled to publish in mid-December.
A new INTA searchable guide launched at the Leadership Meeting in November! In Enforcement: An International Litigation Guide, you’ll find information on the many facets of trademark litigation, including pre-filing requirements, claims for infringement of registered and unregistered marks, emergency measures, early resolution of litigation, evidence, trials and oral hearings, judgment and final orders, post-judgment issues, costs of litigation, and remedies. More than 40 jurisdictions are included, with more to come! We would like to especially thank our principal editors:
Before year’s end, look out for Release 56 of U.S. Trademark and Unfair Competition Law on the INTA website.
We hope that you will make INTA’s member resources your first stop for basic trademark practice information.
Everyone at your member organization can access INTA’s legal resources simply by logging into inta.org! If you don’t have a user name and password, or can’t remember them, please contact member operations: MemberOperations@inta.org.
Trademark Office Updates
SIPO Hosts Second Meeting of ID5 in Beijing
Tracy Durkin, Sterne, Kessler, Goldstein & Fox P.L.L.C, Washington, D.C.
The State Intellectual Property Office (SIPO) of the People’s Republic of China hosted the second annual meeting of the Industrial Design 5 Forum (ID5) in Beijing, China, on November 1–2. The forum consists of representatives from the five largest offices that protect industrial designs: the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the European Intellectual Property Office (EUIPO). The forum focuses on improving consistency in registration policies, cataloging office practices, promoting interoperable procedural frameworks, and protecting emerging designs such as graphical user interfaces (GUIs), animations, and other new technology designs.
In addition to updates from the individual offices, the delegates discussed 12 projects that were approved for further study. The projects include:
- David Allison, Bird & Bird, Hong Kong SAR, China
- Odette Gourley, Corrs Chambers Westgarth, Sydney, NSW, Australia
- Christoph Kleiner, Kleiner Rechtsanwalte, Stuttgart, Germany
- Allan Poulter, Bird & Bird, London, United Kingdom
- Fernando Triana, Triana, Uribe & Michelsen, Bogotá, Colombia
- Rick Young, Quarles & Brady, Chicago, Illinois, United States
Representatives from various user groups attended the second day of the meeting, including the ABA, INTA, IPO, and Marques. INTA was represented by Tracy Durkin (Sterne, Kessler, Goldstein & Fox P.L.L.C, USA, member of the Designs Committee). The next meeting will be in 2017 and will be hosted by EUIPO in Alicante, Spain.
Engaging with a New Administration, Advocating and Educating on the Hill
After a busy November, INTA’s Washington, D.C., Office is preparing to engage with the new U.S. Presidential Administration, including President-Elect Donald J. Trump’s team and members of the 115th Congress. INTA is non-partisan and continues to maintain excellent working relationships with both political parties.
Currently, Congress is engaged in a “lame duck” session where they are finishing the legislative and oversight business for the 114th Congress, including funding of the U.S. government, which should be passed by mid-December.
INTA will continue to have many supporters and friends in the new 115th Congress. The Association would like to thank Congressional Trademark Caucus (CTC) Co-Chair, Rep. J. Randy Forbes, who unfortunately will not be returning to serve in the next session of Congress. INTA is thankful for his support of the CTC and his championing of the Caucus in the House of Representatives. We hope to be able to announce a new CTC co-chair early in the new Congress.
Following is an update on some key activities since our last article in the November edition of the INTA Bulletin. Please contact Debbie Cohn, Senior Director of Government Affairs, at firstname.lastname@example.org with any questions.
- A competitive study of practices regarding product indication;
- A catalog of view and drawing requirements;
- Analysis of economic factors and their effect on design filings;
- A compilation of common design statistics;
- A study of design classification conventions and practices;
- A catalog of eligibility for design protection;
- Creation and maintenance of the forum website at www.id-5.org and id-five.org;
- A study of requirements for priority claims;
- A study of requirements for grace periods;
- A comparative study of partial designs; and
- A study of the feasibility and development of an electronic priority document exchange.
INTA’s Political Action Committee (PAC) Holds Successful Reception at the Leadership Meeting
INTA PAC continues to work to further the interests of INTA and the trademark community through financial participation in the U.S. legislative electoral process. INTA PAC held a reception with members at last month’s Leadership Meeting where the PAC raised US$4,850. At the reception, the PAC discussed the recent elections and plans for the 115th Congress. A new program of contributions designed to enhance INTA PAC participation was also discussed. For more information on the program and how to enroll, please contact Ms. Cohn or any of the INTA PAC Board of Directors listed on our website.
INTA Continues to Oppose Recommendation to Re-Codify the Lanham Act
As reported in the October 15, 2016, issue of the INTA Bulletin, INTA continues to oppose the proposal by the U.S. House of Representatives Office of Law Revision Counsel (OLRC) to re-codify the Trademark Act of 1946 (the Lanham Act). INTA continues to review this issue and is developing a strategy for further action if this proposal moves forward in the next session of Congress.
INTA and the Congressional Trademark Caucus (CTC) Hosting a Holiday Shopping Educational Briefing on Capitol Hill
On December 12, INTA and the U.S. Chamber of Commerce’s Global Intellectual Property Center (GIPC) hosted an educational briefing in the Senate about the dangers of purchasing counterfeit goods. The briefing featured remarks by the Intellectual Property Enforcement Coordinator (IPEC), Daniel Marti, and a panel discussion with representatives from Underwriters Laboratories (UL), Canon USA, Inc., the National Intellectual Property Rights Coordination Center (IPR Center), and the National Crime Prevention Council. This briefing provided a key opportunity for INTA to provide education and outreach to members of Congress and Capitol Hill staff about the direct harm to consumers and the economy caused by counterfeit goods.
Law and Practice
EUROPEAN UNION: CJEU Rules on Possibility to Limit the Territorial Scope of EU-Wide Injunctions
Contributor: Dimitar Batakliev, PETOSEVIC, Sofia, Bulgaria
Verifier: Jan Weiser, UNIT4 IP, Stuttgart, Germany
Mr. Batakliev and Mr. Weiser are members of the INTA Bulletins Law & Practice—Europe Subcommittee.
In a judgment issued on September 22, 2016, the Court of Justice of the European Union (CJEU) ruled that, despite the unitary character of EU trademark (EUTM) protection, it is possible to limit the territorial scope of an injunction for the infringement of an EUTM. C-223/15, EU:C:2016:719.
The plaintiff, combit Software, is the proprietor of German and EU word mark “combit” for goods and services in the computer industry. Commit Business Solutions, the defendant, sells software bearing the word sign COMMIT in a number of EU Member States through its website. The trademark proprietor brought an infringement action before the German courts and, on the basis of its EUTM, sought an order to prohibit the defendant from using the word sign COMMIT for its software marketed in the EU.
The District Court of Düsseldorf, Germany, dismissed the claim for a Europe-wide injunction and combit Software appealed asking for an injunction covering the entire EU territory. The Higher Regional Court of Düsseldorf considered that the use of COMMIT gave rise to a likelihood of confusion with the trademark “combit” on the part of the German public. However, the court found no likelihood of confusion with respect to the English-speaking public, as the latter would easily perceive the conceptual difference between the verb “to commit” and the word “combit,” notwithstanding the phonetic similarity. In this context, the Higher Court made a reference for a preliminary ruling to the CJEU asking whether, if there is a likelihood of confusion only in some Member States, the EU trademark has been infringed across the EU, or the Member States must be differentiated individually.
The CJEU importantly ruled that territorially limited injunctions are possible under EU law despite the unitary character of the EUTM protection. According to the ruling, the uniform protection means that a likelihood of confusion in a part of the EU will suffice to conclude that the exclusive right conferred by the EUTM has been infringed. Consequently, the order prohibiting the use of the infringing sign, as a rule, should extend to the whole of that area. However, following the principles set out in DHL Express France C-235/09, EU:C:2011:238, where likelihood of confusion was found not to exist in one part of the EU, the courts should exclude this territory from the scope of the injunction. The CJEU also ruled that the burden to identify such territories in principle lies with the defendant and that to avoid uncertainty national courts should specify such parts with precision.
LIBERIA: New IP Act Partially Clarifies Effectiveness of International Treaties
Contributor: Ilse du Plessis, ENSafrica, Stellenbosch, Western Cape, South Africa
Co-Chair, INTA Bulletins Middle East & Africa Subcommittee
Verifier: Alfred V. Tubman, Attorney-at-Law, Monrovia, Liberia
The long-awaited Intellectual Property Act, 2014 was approved by Liberia’s House of Representatives on June 14, 2016, and published on July 22, 2016. The Acting Director General of the Liberia Industrial Property Office has confirmed that accompanying regulations will now be drafted, once the new Act is signed into law, the timing of which is not yet known.
The new Act repeals the Industrial Property Act of 2003 in its entirety. The 2003 Act was implemented by the Industrial Property Office under a previous executive decision and was particularly unclear on whether Liberia would give full effect to the provisions of international treaties such as the Paris Convention, Madrid Agreement, Madrid Protocol, and Banjul Protocol.
The new Act deals explicitly and extensively with the Paris Convention and the Madrid Agreement and Protocol, clarifying that they will be applicable to domestic law. However, although the Banjul Protocol is defined in the definitions section, no further reference is made to the Banjul Protocol in the Act. It is therefore still unclear whether the Banjul Protocol has any effect on domestic law in Liberia.
One interesting feature of the Act is that it deals extensively with geographical indications, including the scope of and the exclusion from protection. It also sets out the requirements for filing an application for the registration of a geographical indication.
The Act also deals with the protection of copyright, patents, utility models, and layout designs of integrated circuits. The old law dealt only with copyright, patents and industrial designs.
Although the new Act requires further clarification, it is a step in the right direction.
PERU: IP Office Issues New Famous and Well-Known Marks Guidelines
Contributor: María Inés Herrera, BARLAW - Barrera & Asociados, Lima, Peru
Verifier: Joaquín Fernando Escobar Cabezas, Escobar & Escobar, La Paz, Bolivia and Marcela Robles, Kresalja I.P., Lima, Peru
Mr. Cabezas and Ms. Robles are members of the INTA Bulletins Law & Practice—Latin America Subcommittee.
On July 12, 2016, the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI) published Resolution No. 129-2016-INDECOPI/COD in the “El Peruano” Official Gazette, which is published on INDECOPI’s website. Resolution No. 129-2016-INDECOPI/COD is a series of guidelines developed by certain offices at INDECOPI.
Among these guidelines is Resolution No. 007-2016/DSD-INDECOPI, issued on June 30, 2016, by the Peruvian Trademark Office (PTO), which establishes several criteria that should be considered by trademark owners when filing a market survey as evidence to prove trademark fame.
Market surveys are included in many cases by trademark owners as one of the documents to establish fame. While surveys are not the only documents used by trademark owners in an opposition, nullity, or infringement procedure to establish that they are well-known/famous, they are considered important. The PTO considered it necessary to issue guidelines for these surveys, as some submissions were incomplete and lacked technical specifications, making it impossible for the PTO to carry out a proper analysis.
The PTO’s criteria for establishing the fame of a trademark via market survey include the following:
- Date and place of the study;
- Investigation design;
- Fact sheet;
- Data compilation methodology;
- Objectives, scope, and restrictions;
- Sampling and data collection; and
- Data statistical analysis.
The PTO will analyze this information, which should now always be included, in order to obtain a better understanding of the survey. However, trademark owners must take into consideration that the survey will not be the only document analyzed, and filing a survey that includes this information does not guarantee that a trademark will be determined to be famous.
SWITZERLAND: Capsule with Figurative Elements Not Protected as a 3D Trademark for Narrowly Defined Medical Indication
Contributor: Christoph Gasser, Staiger, Schwald & Partner Ltd., Zurich, Switzerland
INTA Bulletins Law & Practice—Europe Subcommittee
Verifier: Lorenz Ehrler, Bugnion Ballansat Ehrler, Geneva, Switzerland
On September 14, 2016, the Swiss Federal Administrative Court rejected a trademark registration filed by Novartis to register the 3D shape of a capsule for “pharmaceutical preparations for the prevention against and the treatment of multiple sclerosis” (or, as a fallback position, “of relapsing-remitting multiple sclerosis”) in International Class 5. The court regarded the capsule as nondistinctive despite its figurative elements and despite its restriction to a narrowly defined medical indication. Novartis AG v. Swiss Federal Institute of Intellectual Property
, Case B-3612/2014.
The 3D trademark application, including the color claim “yellow, white,” consists of a capsule whose outer layer is half colored in yellow and half colored in white, whereas the white part features two thin, yellow rings.
There are a variety of shapes existing for medications to treat multiple sclerosis, according to the Swiss Federal Administrative Court. That court concluded that the 3D trademark at issue did not sufficiently set itself apart from the other shapes for drugs on the market administered for multiple sclerosis. The trademark therefore lacked distinctiveness.
As a fallback position, the applicant limited the list of goods to “pharmaceutical preparations for the prevention against and the treatment of relapsing-remitting multiple sclerosis.” The Swiss Federal Administrative Court acknowledged that there are not a wide variety of shapes in the drug market for this narrowly defined medical indication, unlike in the market for drugs against multiple sclerosis. However, the Swiss Federal Administrative Court still rejected the application, arguing that the 3D shape at issue—even within this narrower category—did not sufficiently deviate from what would be deemed as expected and usual.
UNITED STATES: Rare Surname Refused Registration
Contributor: Deborah Wilcox, Baker Hostetler, Cleveland, Ohio
Verifier: Nina Osseiran, Cedar White Bradley, Washington, D.C.
Ms. Wilcox and Ms. Osseiran are members of the INTA Bulletins Law & Practice—North America Subcommittee.
The Trademark Trial and Appeal Board (Board) affirmed the refusal under Section 2(e)(4) of the Trademark Act to register ALDECOA on the ground that it is primarily merely a surname in In re Eximius Coffee, LLC, Serial No. 86262060 (T.T.A.B. Sept. 27, 2016).
The applicant filed for ALDECOA in standard characters on the Principal Register for “coffee, caffeine-free coffee, instant coffee, single serve coffee.” The examining attorney rejected the application finding that, when viewed in relation to the goods, the primary significance to the purchasing public of the term Aldecoa is that of a surname. In affirming the rejection, the Board considered the following questions of fact: (1) whether the term is the surname of anyone connected to the business; (2) whether the term has any recognized meaning other than as a surname; (3) whether evidence shows that the term has the structure and pronunciation of a surname; and (4) whether evidence shows use of the term as a surname is rare.
As to the first factor, the applicant’s website identified “de ALDECOA” as the surname of the founder of the applicant, as well as the applicant’s current generation of coffee brewers. The applicant’s label submitted as the specimen of use featured the phrase “Premium Family Coffee” below “ALDECOA.” The Board therefore found the applicant’s connection of the surname to the goods was persuasive evidence of consumer perception of Aldecoa primarily as a surname.
For the second factor, the evidence showed that the term has no other recognized meaning other than as a surname; a search of “aldecoa” in a Spanish dictionary yielded no results.
Regarding whether aldecoa has the structure and pronunciation of a surname, the Board determined there was insufficient evidence in the record.
Turning to the last factor, rarity, the 2000 U.S. Census showed just 233 people were named Aldecoa. Public records in 2014 showed only 950 listings for the surname. Newspaper articles referenced Aldecoa as a surname, but the Board noted that those few examples in the record did not reflect the kind of broad exposure that would place a rarely encountered surname more frequently in the public eye. The evidence thus showed that Aldecoa is a surname rarely encountered by the consuming public.
Despite this rarity, the Board gave particular weight to the applicant’s association of the goods with the family name Aldecoa when answering the question of the primary significance of the term to the purchasing public. The Board also gave weight to the lack of evidence that Aldecoa would be perceived as anything other than as a surname in the United States. These factors outweighed the rarity of the surname. The Board thus agreed with the examining attorney that the term is primarily merely a surname and not registerable on the Principal Register in the absence of acquired distinctiveness.
On an interesting procedural note, the applicant had requested in the alternative that its application be amended to the Supplemental Register. Before issuing its ruling, the Board had suspended the appeal and remanded the case to the examining attorney, who accepted the amendment (in the alternative). After affirming the refusal under Section 2(e)(4) of the Trademark Act, the Board ordered that the application issue on the Supplemental Register.
UNITED STATES: TTAB Bars Second Attempt to Cancel BEACH PIZZA
Contributor: Deborah Wilcox, BakerHostetler, Cleveland, Ohio
Verifier: Sonia Lakhany, Lakhany Law, PC, Atlanta, Georgia
Ms. Wilcox and Ms. Lakhany are members of the INTA Bulletins Law & Practice—North America Subcommittee.
In NH Beach Pizza LLC v. Cristy’s Pizza Inc., 2016 WL 4938672 (T.T.A.B. Aug. 29, 2016), the Trademark Trial and Appeal Board (TTAB or Board) ruled that the petitioner’s new cancelation action was barred because the Board previously determined that the petitioner had no standing to cancel the same registration.
The petitioner had filed a cancelation action in 2014 against BEACH PIZZA alleging, inter alia, that it would be damaged should it be prevented from using the generic term “beach pizza.” Following trial and briefing, the Board dismissed that action for lack of standing, finding that the petitioner “failed to establish a ‘real interest’ and ‘reasonable belief in damage.’” The petitioner then filed a new cancelation petition.
The Board found that issue preclusion barred the re-litigation of the same issue in the second action, namely the issue of standing. B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2051 (2015). Each of the elements of issue preclusion had been satisfied: (1) identity of an issue in the current and prior proceeding; (2) actual litigation of that issue in the prior proceeding; (3) determination of the issue was necessary in entering judgment in the prior proceeding; and (4) the party with the burden of proof on that issue in the second proceeding had a full and fair opportunity to litigate the issue in the prior proceeding.
With respect to the first element, the petitioner pleaded the same basis for standing that it had pleaded in the prior action, namely that it uses “the generic term ‘beach pizza’” to promote its goods and that the respondent had asserted that such use has caused actual consumer confusion.
Turning to the second factor, the Board determined that since standing is a threshold issue that must be proven in every inter partes proceeding, and that the Board had decided the issue of standing after a full trial, that standing was actually litigated. The Board reached this conclusion despite the petitioner’s failure to introduce any evidence regarding its alleged standing.
The third factor of issue preclusion was also met, given that the Board’s determination that the petitioner failed to prove its standing was necessary to the Board’s decision in the prior action.
Last, the fourth factor of issue preclusion was satisfied as the petitioner was fully represented in the prior action and had a full and fair opportunity to introduce testimony or other evidence on the issue of its standing. It simply had failed to do so.
UNITED STATES: Appellate Court Confirms Feature’s Functionality Prevents it from Acting as Trade Dress
Contributor: Richard Rivera, Smith, Gambrell & Russell, LLP, Jacksonville, Florida
Verifier: Kevin W. Grierson, Culhane Meadows PLLC, Washington, D.C.
Mr. Rivera and Mr. Grierson are members of the INTA Bulletins Law & Practice—North America Subcommittee.
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. Law & Practice updates are published without comment from INTA except where it has taken an official position.
On July 21, 2016, the Third Circuit Court of Appeals found no infringement of a registered trade dress because the design at issue, a six-fold design for a single-serve pastry, was functional. Sweet Street Desserts, Inc. v. Chudleigh’s Ltd., 119 U.S.P.Q. 2d 1641 (3d Cir. 2016) (non-precedential).
Chudleigh’s Ltd., a Canadian apple farm and bakery, sells baked goods directly to consumers and to commercial entities. It developed a single-serving apple pie to sell to restaurants and registered its “blossom” design, consisting of a round bottom with six partially overlapping petals folded together on the top of the pastry, as trade dress. Chudleigh’s spoke with a restaurant about supplying it with a signature apple dessert, but they never made a deal to do so.
The restaurant asked Sweet Street Desserts, Inc. (Sweet St.) to develop a single-serving apple dessert for its locations and Sweet St. designed a round “apple pocket that consisted of a unitary, pie-like bottom with an open top covered by six rectangular pieces of dough folded around the filling[.]” Id. at 1643. Sweet St. discussed outsourcing production of the dessert with Chudleigh’s, but ultimately decided to produce the dessert in-house and sold it to the restaurant.
Chudleigh’s claimed that Sweet St. infringed Chudleigh’s registered trademark and also contacted the restaurant regarding the alleged infringement.
Image from Registration No. 2262208 owned by Chudleigh’s Ltd.
Chudleigh’s Ltd.’s product
Sweet Street Desserts, Inc.’s product
Sweet St. brought an action for declaratory judgment asking for a declaration that its use did not infringe Chudleigh’s registered trademark, requesting cancelation of the registration on grounds that the design was functional, and claiming tortious interference with Sweet St.’s contractual relationship with the restaurant.
The district court applied the Supreme Court’s test of functionality: whether the feature “is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Id. at 1644 (citing TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001)). The court found that the petal design was essential to contain the filling and that six was the minimum number of petals necessary to prevent leakage. The Third Circuit affirmed the district court’s finding of no infringement and cancelation of the trademark registration.
In a separate discussion, the Third Circuit held that the cease and desist letter that Chudleigh’s sent to the restaurant was not tortious interference with a business relationship. Sweet St. argued that the letter did not fall under the Noerr-Pennington doctrine, which protects parties engaged in activity incidental to exercising their First Amendment rights to petition the government, because the lawsuit was a sham. The court found that although Chudleigh’s trade dress was ultimately found to be non-protectable, at the time that Chudleigh’s sent the letter, it had a good faith basis to believe that it was protected. Thus, the doctrine shielded Chudleigh’s from tort liability.
© 2016 International Trademark Association