|Interview: From Rooftop Gardens to Civil Partnerships—How CSR Is Making a Difference in Taiwan
On day one of INTA’s Brand Authenticity conference, which is taking place in Berlin, Germany, from November 30‒December 1, Peter Dernbach of Winkler Partners will speak at a session on corporate social responsibility (CSR) and sustainability in developing countries. The session will show how organizations in developing countries with limited resources have created transformational CSR programs.
Can you tell us a bit more about Winkler Partners’ commitment to sustainability and corporate social responsibility, including how it started?
When our firm was founded in 2002, its founder, Robin Winkler, wrote a roadmap that outlined our three guiding principles, what we call our three Cs: colleagues, community, and clients. We want to be a purpose-driven enterprise and we also want to instill that in the DNA of how we work.
We hope that the way we work reinforces and builds and strengthens the relationships that we have in all of those areas so we can develop stronger, better relationships with our clients, our colleagues, and with our community. It’s a slightly different approach from the one that many companies have to CSR, which comes from a more profit-making enterprise perspective. We think of ourselves as an inherent part of community and, as all companies do, we have positive and negative impacts on the environment and community.
We think the law can be a powerful tool to help and preserve the natural environment and we focus on this area. We look at our own operations and how we can reduce our use of resources and waste. For example, we provide colleagues with reusable utensils, so we don’t generate a lot of the disposable lunchboxes and paper cups. We record and measure our carbon footprint and look at ways to reduce it through ongoing in-house training. We planted a rooftop garden that helps shade the top floor of the office and also helps our colleagues get together and grow vegetables, so it both reduces our negative impact on the environment and has a positive impact on colleagues by helping them connect in different ways.
This year we also installed solar panels on the roof. We think it is going to end up supplying 15‒20 percent of our energy needs—so it’s not going to come close to covering all of our energy needs, but it is a way of reducing the cost that running a business has on the environment and internalizing ways of paying for that cost.
Winkler Partners has a commitment to “1% For the Planet.” Please tell us what that is and how you qualified to join.
The insight of the founders of 1% For the Planet was that running a business is naturally going to have a cost on the environment while at the same time there are already NGOs working on critical environmental problems but lack a sustainable business model. They often have to divert a lot of resources towards fundraising each year, which makes it difficult to do any kind of intermediate or long-term planning. The founders thought that businesses should internalize their environmental cost and pay one percent of their revenue to these NGOs as an ongoing donation to support what they are doing. It is a straightforward way to connect businesses to NGOs. This provides stable financial support to NGOs, which can take on long-term programs confident that they will still get funding at a certain level from these sustaining members.
MNCs, or multibrand companies, don’t have to do it for the whole company. We are a small company and we primary use our donations to support one environmental charity—Wild at Heart Legal Defense Association—because it is set up as a public interest law firm and it builds on our core values of using the law as power for good and is local to Taiwan. But if you were at a big corporation, one of the brands or a subsidiary could become a member.
How do your clients react to your commitment to CSR? Do they join you in the journey?
We are seeing the 3Cs of clients, colleagues, and community interacting with each other more and more. I’m very excited that INTA is having this Brand Authenticity conference because I think that brands and consumers are looking at these issues and we as legal service providers should also be looking at them. We should stand for something, and being able to articulate what it is that you stand for will draw other like-minded people towards you, whether they are clients or potential colleagues. We have received very positive feedback from clients and prospective employees in the recruitment process.
What have been the main challenges you faced when developing a CSR program?
We try to be as participatory as possible. We leverage everybody’s ideas to see how we can continue to implement what we are already doing and where we can improve. An example of a recent challenge that we have faced concerns the solar panels on the roof. Because of the regulatory environment in Taiwan, it has actually taken us several months to get the necessary approvals.
The local government has a program in place by which you can receive subsidies for a percentage of the fees that you pay when installing solar panels, and we are in the process of doing that, but in all of Taipei city, we are the first applicant. The administrative structure is a little bit cumbersome. We are already generating solar power but we are also going to engage with the government and give them feedback on our experience and suggestions for how they might streamline the process.
Has pro bono legal advice played a role in your CSR programs?
The firm offers long-term legal support for some organizations. In addition to Wild at Heart, there is a group called Forward Taiwan that is looking to reform and normalize some of the immigration and naturalization regulations for foreigners that come to live and work in Taiwan. As we are a law firm with around one third of our employees from outside Taiwan, we realize how important it is that the laws and regulations enable them to become a part of civil society here.
We have also supported the Taiwan Alliance to Promote Civil Partnership Rights, which is an NGO that has been pushing for marriage equality and the establishment of a civil partnership system here. We have helped them with some translation services. Their secretary general is a former lawyer who worked at our firm. On the IP side, we have provided IP services to nonprofits in Taiwan and abroad—primarily brand clearance and trademark filings.
How advanced is Taiwan in terms of CSR and how rapidly is the picture changing?
Taiwan is run by small to medium-sized enterprises. Many of them are family-run companies and I think that for many of them CSR or some type of community involvement makes a lot of sense. They are far more interested in taking a long-term view and in building long-term relationships with their customers and colleagues than they are with quarterly earnings results.
I think that the picture is also changing rapidly in Taiwan in terms of high-profile CSR. In August, Winkler Partners took part in an Asia Forum held in Taichung, Taiwan, and organized by the B Corp community. Taiwanese companies obtaining B Corp certification is relatively new. The first B Corp was established 18 months ago and we already have 23 or 24 in Taiwan and there are dozens currently going through the certification process. That is taking shape here pretty quickly, compared with more generally in the region.
Recently, your firm became one of those certified as a B Corporation. Can you tell us a bit more about this?
A B Corp is a business that places doing good at the same level of importance as making money. Not only are you for profit, you are also for a purpose. B Corporation is a platform and a certification that all companies of any type (including law firm partnerships) can attain. It involves a very detailed questionnaire and follow-up interviews and supplying supporting documents. They look at five different areas of your work: workers, community, environment, governance, and business impact. There are a certain number of points in each of those areas and you need to reach a certain threshold to become a B Corp. I just learned about it being available here last fall and we were certified in February 2017—the first law firm in Asia-Pacific to be certified.
The benefit for us is that the process itself allowed us to focus on areas where we can do better. For example, there were some areas where we believed we were compliant with best practice but we might not have explicitly articulated that in our work rules. Another real benefit for us has been the chance to connect with other B Corps.
What advice would you give to other law firms setting out on their CSR journey?
Do an internal inquiry at your firm to see what is truly authentic to your brand. We have a strong commitment to using the law as a tool for good, in particular in connection with the natural environment. That is not everybody’s core value. Everybody has unique factors that motivate them and inform why they’re doing what they’re doing. The first thing is to look inwardly and determine what those core values are and then look externally to see if there are platforms that you can connect with that are aligned with those values.
Because we were focused on the environment, it was very natural to join 1% For the Planet. We have been a member for seven or eight years and it has been a great platform for us to learn about what other people are doing and how we can improve. If any firms decide that they do have a particular mission or role to play in connection with any particular cause, I would encourage them to check out the B Corporation certification to see if it is something that they would consider doing. I think any of those platforms can be very valuable, just as INTA is as a platform for brand owners and service providers and professionals to come together, share best practices, and learn from and encourage each other as they go forward.
Register now for INTA’s Brand Authenticity conference, taking place in Berlin, Germany, November 30–December 1, 2017. This first-of-its-kind conference will explore how today’s sustainability, corporate social responsibility, and integrity initiatives are driving brand purpose, brand value, and the bottom line.
This conference is preceded by a Free Trade Zones workshop on November 29. INTA has created this series of one-day workshops to provide a forum for brand owners, free trade zone authorities, government officials, and other key stakeholders to share their concerns and best practices and to work together toward solutions to combat the ongoing threat of counterfeiting in free trade zones. Learn more and register here.
Molly Fannon: How the Smithsonian Is “Reimagining ‘International’”
The Smithsonian Institution was founded in1846 and today is the world’s largest museum, education, and research complex. It features 17 museums and galleries as well as the National Zoo in Washington, D.C., and the greater National Capital Area, and two museums in New York City. Its collections include about 159 million objects, of which only about one percent are on display at any given time.
The job of fostering the many international relationships involved in finding and acquiring these collections falls to the Smithsonian’s Office of International Relations and Global Programs, which is headed by Molly Fannon. Whether she’s hopping on a plane to build a partnership for the Institution somewhere around the world or taking conference calls and meetings in Washington, D.C., Ms. Fannon is continually working with others to ask the “big questions” and challenge the institution’s notions of its role as perhaps the most important disseminator of cultural knowledge in the world.
Ms. Fannon will speak during the Leadership Enhancement and Development (L.E.A.D) session at this year’s Leadership Meeting in Washington, D.C., from November 7-10, where she will share with registrants her unique insight on successful leadership. She gave the INTA Bulletin a preview of some of the topics she will address and what she hopes INTA members will take away from her talk.
Can you describe the role of the Office of International Relations and Global Programs within the context of the Smithsonian’s larger mission?
In many ways, we think of the Office of International Relations like a startup within a larger organization that has been around for a very long time. The Smithsonian has always been an international organization; in fact, we were founded by a gift from a British citizen, James Smithson, who had never before stepped foot into the United States, but left his entire estate to the U.S. government to create an institution for the “increase and diffusion of knowledge.” Our mission has stayed the same ever since.
I’ve had the great honor of working to reimagine what an Office of International Relations can do for an institution like the Smithsonian.
What has been your personal role in helping the office to expand its objectives?
When I walked through the doors more than four and a half years ago, the Smithsonian was working in more than 150 countries, doing everything from climate change research, to biodiversity conservation, to global health, to predicting emerging pandemics, to working on disappearing languages, to protecting cultural heritage at risk, to engaging contemporary local artists—you name it, we were doing it. But there was no central office at the time that was looking across our many museums and research programs to tease out bigger questions of interest to the Institution and the world. For instance: What’s our overall global impact as the world’s largest museum research and education complex? What unique responsibilities might we have to address certain global challenges that we all face as a human community? How do we elevate and better coordinate our work both internally and with external partners so that, at the end of the day, we fulfill that mission of increasing and diffusing knowledge?
Molly Fannon on the Smithsonian’s Approach to Protecting IP and Traditional Knowledge
“Because we work with so many communities around the world, issues of IP and indigenous knowledge come up a lot. The first time I thought I might want to work with the Smithsonian was in 2005 when I attended a lecture the Institution was hosting around IP rights for indigenous cultural practice. That is what made me think it would be an incredibly interesting place to work. The United States doesn’t have any written protection for traditional knowledge, but the Smithsonian works hand in hand with the communities to understand their collection, whether they’re physical objects or intangible heritage. We’ve even had tribes ask that we not share information from our collections with the public, and in those cases we don’t. That’s coming out of a sense of respect for our relationships with those individuals. It’s not legally required, but it’s part of the soul of what the Smithsonian is.”
I took it upon myself to build a team that can act as a bit of a renegade, asking the tough questions that would challenge the Institution to think very differently about the way it did its work in the world and the kind of responsibility we have. We’ve made huge strides over the last four years. One of the interesting things I’ll talk about [during the Leadership Meeting] is leadership by building coalitions. The Smithsonian is a very large organization with 6,000 employees. We are dispersed across multiple museums and research centers around the world and the country, and we are largely decentralized. In order to get an institution that large and established to move in a new direction, we really needed to build relationships to reach a growing consensus about this new idea of global responsibility. We’ve done that, and my job now—together with other leaders at the Smithsonian—is to help orient the Smithsonian toward a more ambitious global perspective, to help it be poised to tackle the issues that matter the most to our current situation, as well as to future generations, and to build the partnerships and funding sources and relationships that make that possible. Our role is to be a big broad thinker and rally the troops across the Institution to make change happen.
My personal role was to be the first to ask those questions, and then to go out and build coalitions as well as a really dedicated and whip-smart team. Now, what I spend most of my time doing is working to motivate my team. My strongest asset as a leader is to identify very talented people and then get out of their way pretty quickly, realizing my role is to empower them to do work they feel passionate about.
What are the biggest challenges you’ve faced in trying to make these changes?
All of the biggest challenges have been rooted in our most significant strengths and assets, really. First, we are an incredibly diverse organization—we can be anything to anybody, really—from astrophysicists searching for evidence of life in the cosmos to entomologists understanding social systems through the study of ants … to modern art—we have it all. It’s all the Smithsonian. So, working to define a shared sense of ourselves as an institution is a challenge we all face, and are continuing to address through our most recent strategic plan. Focusing in on the global strengths and aspirations of an organization so diverse is quite a challenge. And yet, the trick of it is to not lose that diversity … all while focusing a bit more.
Likewise, we are a very established organization and brand. There are fantastic advantages to that, and yet the impetus to try new things and break out of your comfort zone can be more difficult for established organizations. We’ve been pushing the Institution out of that comfort zone by working with others with the appetite to try new things, and it’s worked so far—we’ve built great momentum and success. Success is catchy.
When you come into an organization and your mandate is to “reimagine ‘international,’” that’s a big challenge. I think our success is that we were inspired by the challenge, not frightened by it. We didn’t seek to quietly and incrementally build a platform—instead, we immediately set our sights high. I always tell our team we need to be “unabashedly ambitious.” When I joined, we really had no budget and very few staff, and I still said “Okay, the new mission of this office is to leverage the creativity and assets of every part of this institution to create meaningful change in the world.” I bet many laughed at that when they saw our reality—a mission without a penny to spend on it. But by setting our sights high, it’s really paid off. We’ve grown our staff by more than ten times in only four years, and our budgets by tens of millions.
The Smithsonian has about 159 million objects in its collections, of which only about one percent are on display at any given time. Most are housed in collection care facilities, where conservators consult closely with tribes and other indigenous communities to ensure proper care. This includes how to care for them from a traditional conservation perspective as well as spiritual care. “There are some objects that are supposed to be fed and nourished, or some that are supposed to be lying down or standing up,” says Ms. Fannon. “We’ve incorporated all of those practices—to the extent that we know of them—into our collections management policy as a matter of principle. It’s all about the relationships that we build with the communities and the good faith.”
How has your work in the private sector informed your approach to leadership in a public institution?
I was lucky in that the organizations I worked with in the private sector were mission driven, which is probably why I was attracted to them in the first place. While profit certainly was a major measure of success, it wasn’t the only one. And I’m glad to see more and more organizations thinking this way—whether as B corporations or as organizations embracing the notion of “shared value” along value chains.
I think too often the private sector is pitted against the public or nonprofit sector as though they were polar opposites. I believe strongly that both have strengths that can benefit and inform the other. And that they really aren’t all that different. I’ve embraced my private sector background at the Smithsonian. We apply a private sector mentality in my office to this mission-driven organization. We think about profit, just in different terms. We consider opportunity cost. We analyze deals, we project future scenarios. We’re able to be savvy with very few resources because we’re thinking with this private sector mindset. We’ve combined the best of both of those worlds.
What will you focus on in your address at the INTA Leadership Meeting?
I won’t talk much about me as an individual, but about how all of us—no matter what role we have—can lead and effect change. I’ll talk about strategies that I personally have learned can be effective, such as identifying talent in others, nurturing that talent, and creating free runways so that talent can take off. Knowing how to build coalitions and relationships so everyone can work together and finding the right mix of humble confidence are other key elements. And all of those then translate to institutional leadership—how do I lead as an individual, how do I lead as an office within the Smithsonian, and how do I help the Smithsonian to take a leadership role on a global stage on major issues? Those three levels of leadership are all important. I’ve really come to believe that, no matter your station in life, there are solid ways you can effect change through leadership.
How do you think your talk will be applicable for INTA’s audience?
None of what I’ll be talking about will be foreign to an audience of attorneys. What we wrestle with on a global stage are the issues that affect all of us as human beings and that are the most critical issues of our time. How are we going to deal with climate change? How will we protect the Earth’s biodiversity for future generations? How will we maintain our individual cultural identities around the world while still ensuring mobility of people and ideas across the world? They are the big, critical issues we all hold in common and that all disciplines have something to contribute to. In order to find solutions to these big issues you have got to draw on a multidisciplinary approach. I hope in telling the story of learning to be a leader—because I don’t have it down pat yet—that everybody can see how they too can be a leader on some of these issues that are connected to them personally. And we deal with legal issues all the time, including intellectual property issues. Plus, some of the colleagues I most enjoy working with at the Smithsonian are our attorneys in our Office of the General Counsel.
What are you most looking forward to about attending and speaking?
I’m really excited to attend the meeting and give this talk. I’ve appreciated the chance to reflect on what I’ve learned over the last couple of years. I’m also very excited to see the global diversity of the audience that will be there. I hope people will be engaged and not too shy to ask questions because I love a vigorous back and forth. I hope it will be an eye-opening and exciting talk that will make people realize how much they have in common with us here at the Smithsonian.
L.E.A.D Subcommittee Co-Chairs
The L.E.A.D Subcommittee of the Leadership Development Committee is led by Co-Chairs David M. Perry (Blank Rome LLP, USA) and Christopher Chaudoir (Chevron Corporation, USA). The INTA Bulletin
spoke with them about the subcommittee’s overall goals and what to expect from this year’s L.E.A.D session.
What is the purpose of the L.E.A.D session and how do you choose speakers?
Dave Perry (DP):
We want to take less of an academic or clinical approach to choosing a speaker and instead find people who come from interesting backgrounds. They are decidedly not trademark focused necessarily, but leadership focused.
Chris Chaudoir (CC):
We also want something topical to where the meetings are located. The concept has always been to provide a different lens to look at leadership outside of the law. INTA members are already familiar with how lawyers interact and lead and how to develop themselves in their law firm or in-house positions; we wanted to give members something they might not have thought about before.
Why did you choose Molly Fannon as this year’s speaker?
After brainstorming, the committee quickly determined that the Smithsonian is the preeminent institution in Washington, D.C., if not the United States, and one that is involved with all sorts of international issues. Molly is a dynamic speaker and has a unique perspective on leadership. She has adapted her leadership style in various contexts internationally as needed, while also motivating a substantial volunteer workforce.
How do you think Ms. Fannon’s talk will help INTA members in their role as leaders within the Association?
By definition, we’re an international organization and one of the few where that component is so vitally connected to the law that we practice. Interfacing with folks who aren’t from our geographic location or country requires a different skill set and Molly has a unique view on collaborating with an international audience. I’m hoping she’ll bring a whole lot of suggestions on how to do that effectively.
What have you learned about leadership through your work on the subcommittee?
I’ve learned a lot more about the concept of contracting yourself to allow more room for the committee to fill in the void and lead themselves. We want to allow everyone to participate in different ways. You learn to step back and realize you may be doing a better job leading by allowing others to weigh in.
I think that’s right. The biggest takeaway has been that leaders aren’t necessarily the president or vice president of an organization. Everyone has a role to play. Borrowing from one of my favorite quotes, “Being a leader doesn’t require a title; having a title doesn’t make you one.”
What do you hope people take away from the session?
We really want to give attendees something practical to take back with them. Molly understands that we’re trying to have our cake and eat it too—we want an interesting and engaging speaker showcasing an amazing institution, but we also want to give an audience of trademark professionals some thought-provoking ideas they can take back with them to all of the different kinds of positions they hold.
What we’ve been trying to emphasize is that members shouldn’t look at this as another training session on how to be a good trademark lawyer or about the latest trends in trademark law. It’s about learning how different people approach situations and how they lead. I want to challenge our members to attend the session with an open mind and take away something new on how to lead. We have an amazing opportunity to learn from Molly’s example.
Christoph Gasser, BianchiSchwald, on the Benefits of INTA Membership
Christoph Gasser is a partner at BianchiSchwald, LLC, in Zurich, Switzerland. He told the INTA Bulletin why he has renewed his INTA membership for nearly two decades.
Why is your firm an INTA member?
I took the initiative to become an INTA member after completing an internship at the U.S. law firm of Pennie & Edmonds in 1998. An attorney there, David Weild III, recommended I attend the INTA Annual Meeting, so when I went back to Switzerland I asked my firm at the time to join INTA. I attended the Annual Meeting for the first time in 2002 and took my membership with me to my current firm when I moved.
What is the main benefit for the firm?
For us, it’s networking. Between the Annual Meeting, Leadership Meeting, and working on committees, we have expanded our global network and brought on new clients thanks to the relationships we’ve made.
What are some other benefits?
We’ve found that we can also give work to contacts we make that might not have work for us, such as Latin American firms, for instance. This helps us with our clients in other ways, because we’re able to recommend people who we’ve met in person and trust. It’s also helpful when our international clients are able to attend so that we can meet with them easily. The contacts we make at INTA also serve as great resources on international legal developments throughout the year.
In a nutshell, why should someone join INTA?
INTA’s meetings host the biggest international community in the world with respect to trademark law. The Association has set up an enormous networking tool and really has a monopoly in this space from a global perspective. Local associations are important tools as well, but INTA has really succeeded in transcending the U.S. trademark perspective so that now it is the most important trademark organization for practitioners around the world.
Renew your INTA membership by December 31, 2017, to ensure that you continue to receive all INTA member benefits, including the member rate to the 2018 Annual Meeting. Annual Meeting registration begins in January 2018.
Meet Two of Tomorrow’s Leaders
Earlier this year, INTA announced the creation of a new award to encourage young trademark lawyers to participate in and contribute to the Association. The Tomorrow’s Leaders Award recognizes outstanding performances by two young professionals with less than five years of experience who have demonstrated early leadership qualities.
The first two recipients of the award have now been selected, and they will receive their awards in Washington, D.C., during the 2017 INTA Leadership Meeting. In addition to being presented with the award by INTA CEO Etienne Sanz de Acedo in November, Erica Rogers, Intellectual Property Attorney at Ward and Smith (USA) and Ana Leticia Allevato, Attorney-at-Law at DiBlasi, Parente & Associados (Brazil) will have the opportunity to serve on an INTA committee and will receive complimentary admittance to this year’s Leadership Meeting and the 2018 Annual Meeting in Seattle. Also, each will be assigned an INTA mentor.
Ms. Allevato and Ms. Rogers spoke with the INTA Bulletin about what the award means to them and why they are excited to become involved with INTA.
Ana Letícia Allevato, Di Blasi, Parente & Associados, Rio de Janeiro, Brazil
How long have you been practicing, and why did you choose IP law?
I have been with Di Blasi, Parente & Associados for more than three years—one of them as an intern and the remaining time fully practicing law. During these years, my practice has been focused on consultation, administrative procedures at the Brazilian Patent and Trademark Office, and judicial litigation involving trademarks, copyrights, and unfair competition.
My first contact with intellectual property came from my interest in fashion, after taking a Fashion Law course. Once I was introduced to the basic IP concepts, I realized how much a part of daily life IP is. It made me think that it would be a career of constant learning and growth, as it would not only require legal knowledge, but understanding about politics, history, and science, among other subjects.
How did you hear about the Tomorrow’s Leaders Award, and why did you apply?
I heard about the award from Elyssa Michelle LeFevre Chayo, head of Di Blasi, Parente & Associados’ International Business Department. She encouraged me to apply for it to give me an introduction to INTA and to help my professional development in the firm. I also knew it would be a great opportunity to become acquainted with other countries’ trademark practices.
What do you hope to gain by attending the INTA Leadership and Annual Meetings?
At the Leadership Meeting this year, I hope to observe some committee meetings, especially those I am interested in joining, in order to learn more about their operation and identify how my experience so far as a young trademark attorney would be most helpful. As to the Annual Meeting, it will give me the chance to learn best practices to protect trademark rights from top practitioners from around the world, as well as develop new relationships to expand my network of colleagues.
What is your view of INTA’s role in the international trademark community, and why do you think it’s important for young practitioners in particular to become involved?
As a leader in worldwide intellectual property matters, INTA provides a venue for practitioners and all those related to IP protection around the world, to consider developments and issues in global IP protection and enforcement through its events, webinars, and other engaging opportunities. By attending such events, young practitioners—potential leaders—will have the opportunity to dive into a countless number of IP matters and be encouraged to provide different perspectives and propose new solutions for emerging or existing problems, in order to ultimately become decision makers and influencers themselves.
Erica B.E. Rogers, Ward and Smith, P.A., Raleigh, North Carolina, USA
How long have you been practicing law, and why did you choose IP law?
I have been practicing intellectual property law, namely in trademark and copyright law, for about a year. I practice with Ward and Smith, P.A., which allowed me to return home to North Carolina after studying intellectual property law in New Hampshire.
I chose my law school for the specific purpose of focusing in IP law because I tend to thrive at the intersection of creativity and structure. My desire to be in this profession stems from studying piano performance (and Spanish) in college. When I realized a career in music was not for me, I decided to pursue law. I discovered lawyers could work for musicians, and working in intellectual property law is the logical continuation of that discovery. It is motivating to provide the legal structure to support the continuous creativity of businesses and individuals. It is the constant challenge, the drive to help others, and the unpredictability of the practice that motivate me.
How did you hear about the Tomorrow’s Leaders Award, and why did you apply?
I received an INTA email advertising the opportunity earlier this year. I am familiar with INTA based on exposure during law school and membership during my time at the firm. From a financial perspective, free registration to the Annual Meeting caught my attention right away! However, as I viewed and filled out the application, my reasons to apply broadened. I realized the larger purpose of the award, and how it could open doors for more meaningful contribution in INTA.
What do you hope to gain by attending the INTA Leadership and Annual Meetings?
From my understanding, one of INTA’s main goals is to continue to educate trademark attorneys across the world so that trademark law continues to develop and be enforced. I hope to gain more knowledge from the educational sessions during the meetings to further this goal.
I mostly cannot wait to make connections with other attorneys, particularly leaders of the organization. I'm looking forward to being involved in INTA and building my personal relationships there.
What is your view of INTA’s role within the international trademark community, and why do you think it’s important for young practitioners in particular to become involved?
By providing resources and connecting trademark attorneys across the globe, INTA can organize common goals and streamline effective ways to ensure continued education, development of the law, and enforcement of the law in the IP field. I truly believe that practitioners early in their career have innovative ideas and want to voice them. I appreciate INTA’s interest in creating an award geared towards newer practitioners because it expresses the Association’s interest in listening to the next generation. The award provides a platform for involvement to those who might not otherwise be able to participate, and I deeply appreciate the opportunity.
Experts Share Insight on the “Changing Landscape of Latin America” at INTA Conference in Cartagena
Pablo T. Armando, Noetinger & Armando, Buenos Aires, Argentina
INTA Bulletins Association News Subcommittee
INTA’s Changing Landscape of Latin America conference, held in Cartagena, Colombia, October 2‒3, drew lawyers, industry professionals, entrepreneurs, and representatives of major local and multinational companies from across the region to share and discuss important insights and practical tips for navigating the rapidly evolving economies that comprise Latin America.
From analysis of the economic and political perspectives in Latin America and their relationship to intellectual property (IP), to sessions on social networks, protection of personal data, regulatory issues, and strategies on how to protect IP rights in the Caribbean, among other topics, registrants benefited from two full days of excellent academic and professional-level discussions on the most pressing IP issues facing the region.
Advertising for Change
The event, co-chaired by Diana Arredondo (Grupo Televisa SAB, Mexico) and Maria Cecilia Romoleroux (Corral Rosales, Ecuador), included opening remarks by INTA CEO Etienne Sanz de Acedo, Jorge Chávarro (Inter American Association of Intellectual Property - ASIPI) and Juan Carlos Cuesta Quintero (Colombian Association of Intellectual Property - ACPI).
This was followed by a passionate keynote speech, given by Francisco Stamper, Founder and President of MullenLowe SSP3 and Regional Director of MullenLowe Latin America, titled “How Advertising Campaigns Influenced the Colombian Peace Process.” Mr. Stamper shared the experience of working together with the Colombian Ministry of Defence on a series of advertising campaigns with no precedents in the world, which managed to demobilize 18,000 guerillas throughout Colombia. Consistency, coherence, and understanding the product, the market, and the goal were the concepts that Mr. Stamper stressed as essential for any company to convey its message and grow. Ultimately, he urged attendees to become aware of the “importance of believing in the impossible and providing creative solutions.”
From IP Insight to Tasty Treats
On day two of the conference, Adriana Suárez, Executive Director of Endeavor Colombia, and Martín Umaran, Co-Founder and Chief Operating Officer of Globant S.A., inspired registrants with their focus on entrepreneurship in the region. Ms. Suárez addressed the issue from the perspective of organizations that contribute to the promotion of the entrepreneurial culture by trying to identify high-impact businesses, while Mr. Umaran provided an entrepreneur’s perspective, sharing tips and anecdotes about how Globant S.A. became the fastest-growing software product development company in the region.
An interesting exchange of ideas took place in a session titled “Entrepreneurs and IP: Working Together for Success,” featuring speakers Marcela García Caballero (Rappi, Colombia), Santiago Peralta (Pacari Chocolate, Ecuador) and Martín Umaran (Globant S.A., Argentina). The session focused on new and varied trends in technology and their relationship with entrepreneurship—and also gave registrants the chance to taste a delicious organic Pacari chocolate from Ecuador.
Surviving Social Media, Adapting Advertising
Mauricio Ferro (Edelman Colombia, Colombia), Alvaro Ramirez-Bonilla (B&R Latin America IP LLC, Colombia), and Carolina García (Carolina Rueda García, Colombia) provided registrants with strategies on how and when to react (or not) to a critical situation on social media in order to maintain the prestige of a brand in a variety of scenarios.
In a session on “Brands and Advertising: It’s Not One Size Fits All,” speakers discussed how companies should adapt advertising campaigns to the different markets and regimes of each country or jurisdiction. Vicente Carvajal (MARQAS Inc., Colombia), a specialist in “branding strategies and business identity,” highlighted the importance of having creatives, companies, and lawyers working together from the beginning of a campaign project. Eusebio Peralta Martinez (Hard Rock International, USA) gave his insight on the successful integration of in-house counsel with marketing teams and how in-house teams work together as business partners.
The conference also allowed registrants to network on numerous occasions during this two-day event.
Navigating Free Trade Zones
Following the Changing Landscape of Latin America conference, on October 4, INTA’s fourth Free Trade Zones workshop of 2017 took place. The workshop was also attended by lawyers, industry professionals, as well as public authorities, and provided an opportunity for the exchange of ideas and debate on best practices and strategies on IP rights infringement in free trade zones. The workshop’s format allowed attendees to actively participate, to ask questions, and to express their opinions. It was a very enriching day for everyone.
Both events were a great success, and INTA looks forward to hosting and participating in many more events in the region, with the help of its new Latin America and Caribbean Representative Office in Santiago, Chile.
Expertos comparten sus Percepciones del “Panorama Dinámico de América Latina” durante Conferencia de INTA realizada en Cartagena, Colombia
Pablo T. Armando, Noetinger & Armando, Buenos Aires, Argentina
INTA Bulletins Association News Subcommittee
La Conferencia de INTA “El Panorama Dinámico de América Latina” llevada a cabo en Cartagena, Colombia los días 2 y 3 de octubre, reunió a abogados, profesionales de la industria, emprendedores y representantes de grandes empresas locales y multinacionales de toda la región, para analizar y compartir importantes percepciones y consejos prácticos para navegar la rápida evolución de las economías latinoamericanas.
Desde el análisis de las perspectivas económicas y políticas en América Latina y su relación con la propiedad intelectual (PI), hasta sesiones sobre redes sociales, protección de datos personales, cuestiones regulatorias y estrategias de cómo proteger los derechos de PI en el Caribe, entre otros tópicos discutidos, los asistentes se beneficiaron de dos días completos de excelentes discusiones a nivel profesional y académico sobre los temas más críticos que enfrenta la región en materia de PI.
La Publicidad como Factor de Cambio
El evento, que tuvo como copresidentas organizadoras a Diana Arredondo (Grupo Televisa SAB, México) y María Cecilia Romoleroux (Corral Rosales, Ecuador), incluyó palabras inaugurales del CEO de INTA, Etienne Sanz de Acedo, Jorge Chávarro de la Asociación Interamericana de la Propiedad Intelectual (ASIPI) y Juan Carlos Cuesta Quintero, de la Asociación Colombiana de la Propiedad Intelectual (ACPI).
Ello fue seguido por un apasionante discurso de apertura por parte de Francisco Samper, Fundador y Presidente de Mullenlow SSP3 y Director Regional de MullenLowe Latinoamérica, titulado “Cómo las Campañas Publicitarias Influyeron en el Proceso de Paz de Colombia”. Francisco compartió su experiencia de haber trabajado de cerca junto al Ministerio de Defensa colombiano en una serie de campañas publicitarias sin precedentes a nivel mundial, que logró desmovilizar a más de 18.000 guerrilleros repartidos por toda Colombia. Consistencia, coherencia y comprensión acabada del producto, el mercado y los objetivos trazados, son los conceptos que Francisco Samper determinó como esenciales para cualquier empresa que quiera transmitir su mensaje y crecer en sintonía con éste. Por último, instó a los participantes a tomar conciencia de la “importancia de creer en lo imposible y proveer soluciones creativas”.
Reflexiones Sobre PI y Golosinas Deliciosas
Durante el segundo día de la Conferencia, Adriana Suárez, Directora Ejecutiva de Endeavor Colombia y Martín Umaran, Co-fundador y COO de Globant S.A., inspiraron a los asistentes con sus visiones sobre el emprendimiento de la región. Adriana Suárez abordó el tema desde la perspectiva de las organizaciones que contribuyen con la promoción de la cultura emprendedora, intentando identificar negocios de alto impacto, mientras que Martín Umaran realizó un análisis desde la perspectiva del emprendedor en sí, compartiendo consejos y anécdotas sobre cómo Globant S.A. se convirtió en la compañía desarrolladora de software de más rápido crecimiento en la región.
Un interesante intercambio de ideas tuvo lugar durante la Sesión II - “Emprendedores y PI: Trabajando Juntos por el Éxito”, que tuvo como panelistas a Marcela García Caballero de Rappi (Colombia), Santiago Peralta de Chocolates Pacari (Ecuador) y Martín Umaran de Globant S.A (Argentina). Esta sesión se enfocó en las nuevas y variadas tendencias tecnológicas y su relación con el emprendimiento. Además, los asistentes tuvieron la oportunidad de degustar deliciosas barras surtidas de chocolate orgánico ecuatoriano, cortesía de Chocolates Pacari.
Sobreviviendo a las Redes Sociales y Adaptándose a la Publicidad
Mauricio Ferro de Edelman Colombia (Colombia), Álvaro Ramírez-Bonilla de B&R Latin America IP LLC (Colombia) y la experta en redes sociales Carolina García Rueda (Colombia) entregaron a los asistentes valiosas estrategias de cómo y cuándo (o no) reaccionar frente a situaciones críticas o comprometedoras en las redes sociales, con el objetivo de mantener el prestigio de las marcas ante diferentes escenarios.
Durante la Sesión VI - “Marcas y Publicidad: No hay un Talle único para Todos”, los panelistas invitados discutieron sobre cómo las empresas deben adaptar sus campañas publicitarias a los diferentes mercados y regímenes legales de cada país o jurisdicción. Vicente Carvajal de MARQAS Inc. (Colombia), un especialista en estrategias de branding y de identidad en los negocios, destacó la importancia de tener a los creativos, empresas y abogados trabajando juntos desde las etapas más tempranas de las campañas publicitarias.
Por su parte, Eusebio Peralta Martínez de Hard Rock International (EE.UU.) contribuyó con su visión sobre la integración exitosa entre los abogados corporativos con los equipos de marketing, y de cómo los equipos legales in-house trabajan juntos como verdaderos socios.
La Conferencia también permitió a los asistentes tener numerosos espacios de networking durante los dos días del evento.
Navegando las Zonas de Libre Comercio
Una vez concluida la Conferencia sobre “El Panorama Dinámico de América Latina”, tuvo lugar un Taller de INTA sobre Zonas de Libre Comercio el día 4 de octubre. En este Taller también participaron abogados y profesionales de la industria, además de autoridades públicas afines, generándose excelentes instancias para el intercambio de ideas y debates sobre mejores prácticas y estrategias en materia de infracciones de derechos de PI en las Zonas de Libre Comercio. El formato del Taller permitió a los asistentes participar activamente, hacer preguntas y expresar abiertamente sus opiniones sobre estas problemáticas. Definitivamente fue un día enriquecedor para todos quienes estuvieron presentes.
Ambos eventos fueron considerados como muy exitosos, y en lo sucesivo INTA espera organizar y participar en muchos más eventos de esta naturaleza en la región, contando ahora con el apoyo de su recientemente inaugurada Oficina Representativa para América Latina y el Caribe, con base en Santiago de Chile.
Volunteer Spotlight: Alison Tan
Colleen Sarenpa, Polaroid Brand Services, Hopkins, Minnesota
INTA Bulletins Association News Subcommittee
Alison Tan graduated with a B.A. (Honors) in Jurisprudence from the University of Oxford in 1993, and is called to the UK, Singapore, and New York State Bars. Alison is a native of Singapore but became a naturalized U.S. citizen, together with her family, in 2012.
Alison began her career at Drew & Napier in Singapore. In 1998, she moved in-house with Procter & Gamble (P&G), initially working in Singapore on the company’s Asia-Pacific Beauty portfolio.
In 2005, her role and world expanded greatly, as she moved with her husband, and three sons under the age of five, to Cincinnati to begin working at P&G’s headquarters there.
In the last 12 years, she has worked to protect many P&G iconic brands, and credits her in-house marketing clients with keeping her both inspired and challenged. Most recently, Alison has been tasked with expanding her skill set to also include advertising for the United States and Canada—and she finds it both daunting and exciting to be a “newbie” again, after 25 years in practice.
Alison served on the INTA Anticounterfeiting and Non-Traditional Trademarks Committees, and currently is on the Leadership Development Committee. Her first INTA Annual Meeting was Boston in 1998. Her Annual Meeting advice is to wear comfortable shoes and to always have an umbrella.
When she is away from the office, Alison volunteers with the Cincinnati Boys Choir, where her two younger sons are in the Tour Choir. Occasionally, she also reluctantly stands knee-deep in cold water at the side of her fly-fishing-crazed husband, pretending to be interested in catching fish.
Welcome New Members
Ellis IP Ltd, Edinburgh, United Kingdom
Coughlin Duffy LLP, Morristown, New Jersey
WD-40 Company, San Diego, California
KHQ Lawyers, Adelaide, Australia
Ferrero S.p.A., Cuneo, Italy
Windt Le Grand Leeuwenburgh, Rotterdam, the Netherlands
CISUN International Patent & Law Firm, Seoul, South Korea
Red Points Solutions S.L., Barcelona, Spain
Patent-Help, Kyiv, Ukraine
Alcoba Law Group, P.A., Miami, Florida
Nu Skin Enterprises, Inc., Provo, Utah
Squire Patton Boggs, Hong Kong SAR, China
Trademarkclick.com, New Delhi, India
Ilaria Carli, Milano, Italy
Behlmann Attorneys at Law, Zurich, Switzerland
Istanbulluoglu Law Firm, Istanbul, Turkey
Scintilla, Glasgow, United Kingdom
Quicken Loans, Detroit, Michigan
DLA Piper (Canada) LLP, Toronto, Ontario, Canada
RJ Falconi, Beeton, Ontario, Canada
Wooin Patent & Law Firm, Seoul, South Korea
Christopher Rodermond, Hillsborough, North Carolina
Harris Bricken Mcvay, LLP, Seattle, Washington
Nahapet & Co. Ltd, Yerevan, Armenia
Icamp Trademarks and Patents, Sao Paulo, Brazil
LVMH Fashion Group Pacific Ltd., Shanghai, China
Tobar ZVS Spingarn, Quito, Ecuador
Cassiopi, Hérault, France
Henkel, Breuer & Partner, Munich, Germany
Patentanwaltskanzlei Hinkelmann, Munich, Germany
Luxottica Group SpA, Milano, Italy
INTA’s Data Protection Committee Asks, “Are You Ready for Europe’s Next Generation of Data Privacy Regulations?”
A growing number of trademark and brand attorneys are being asked to include data protection as part of their portfolio. In response to this trend in the profession, INTA’s Data Protection Committee is tasked with examining the growing intersection of brand protection and privacy. Off to a running start in its first term, the committee has recently published two articles to help guide INTA members in the intricacies of European data privacy laws.
Committee member Miriam C. Beezy (Baker & Hostetler LLP, USA) and her associate, Stephanie A. Lucas (
Baker & Hostetler LLP, USA) have drafted a timely article that provides guidance to U.S. practitioners titled “Compliance with the EU’s General Data Protection Regulation and U.S. Discovery Law.” Known as the GDPR, the new regulation will have wide-ranging implications for European and Non-European organizations that collect and process data relating to the offering of goods or services to EU data subjects. The GDPR is set to go into effect on May 25, 2018. There is a great deal of uncertainty as to how multinational businesses can comply with the GDPR while also complying with their domestic country’s rules and regulations.
Some of the key questions for U.S. practitioners center around how GDPR compliance and recently enacted changes to U.S. discovery law will impact data processing and retention policies and how the two sets of laws will work together. This is a must-read for anyone interested in this hot topic. The article explains the essential elements of the GDPR and explains the new U.S. Federal Rules of Civil Procedure for Discovery. It concludes with a helpful checklist to get you started on your own compliance and risk analysis.
As the GDPR is front and center of data privacy, the Data Protection Committee has also produced an insightful report on the “The Intersection Between Data Protection and Trademark Rights: Balancing Fundamental Rights.” Authored by Ruth Hoy (DLA Piper, UK) and Jeremy Blum (Bristows, UK), this piece surveys the state of European law at the national and regional level regarding trademark rights and the right to the protection of personal data. With helpful case citations, it explains the complexities surrounding balancing the factors for enforcement and data privacy. Proportionality seems to be a key consideration as to whether courts will grant trademark owners access to data for enforcement purposes. Both articles can be accessed on INTA’s Advocacy page under "Reports."
You can expect more to come from the Data Protection Committee as it is rounding out its first term with the anticipated publication of best practices for data protection for trademark practitioners. Stay tuned!
Survey on Decoding Conducted by Subcommittee of the Parallel Imports Committee
Benjamin Koch, Lubberger Lehment, Munich, Germany
Bariş Kalayci, Gün & Partners, Istanbul, Turkey
Niels Mulder, DLA Piper, Amsterdam, the Netherlands
Parallel Imports Committee
The removal of product identification codes is a phenomenon and topic which trademark owners in certain branches have been dealing with for decades. In many cases, these codes not only allow the identification or tracing of the product for product safety reasons (product recalls), but may also serve the purpose of identifying the authorized reseller to whom a product was initially delivered by the brand owner. In particular, perfumes, cosmetics, and alcoholic beverages are frequently “decoded” by gray market traders in order to hide the source of the product—i.e., the authorized reseller that sold the product to the gray market, often in breach of its contractual obligations. Decoded products have been subject to various court decisions, inter alia the well-known Court of Justice of the European Union (CJEU) decisions in cases C-349/95 (Loendersloot v. Ballantine) and C‑379/14 (TOP Logistics BV, Van Caem International BV v. Bacardi & Company Ltd, Bacardi International Ltd).
The European Subcommittee of INTA’s Parallel Imports Committee conducted a survey on the question whether decoding of trademarked products is considered illegal in the national jurisdictions of the EU and select neighboring countries. The findings of the survey that was conducted for 31 countries (Albania, Austria, Belgium, Bosnia and Herzegovina, Bulgaria, Croatia, the Czech Republic, Denmark, Finland, France, Germany, Israel, Ireland, Italy, Luxembourg, Malta, Macedonia, Montenegro, the Netherlands, Norway, Poland, Romania, Russia, Serbia, Slovakia, Slovenia, Spain, Switzerland, Turkey, Ukraine, and the UK) in 2016 and 2017, are summarized below.
While the survey has shown that in 13 of the countries no case law in relation to decoding seems to exist (mostly non-EU countries), it also confirmed that in particular, the courts in Belgium, France, Germany, the Netherlands, Spain, Switzerland, Turkey, and the UK have established a rather high number of precedents, not only with respect to parallel imports, but also in relation to decoded products.
None of the surveyed countries has specific laws which deal with the question whether decoding of products (i.e., the removal of trademarks, lot codes, serial numbers, etc., and the subsequent distribution of such products) is per se legal or illegal. However, in almost all jurisdictions, decoding and/or the distribution of decoded products can be illegal under the trademark laws, unfair competition laws, specific laws in relation to certain products (e.g., medication, cosmetics, and beverages), or general product safety laws, depending however on the specific circumstances.
The INTA Parallel Imports EU Subcommittee has noted that the criteria under which decoding is regarded to be illegal under the respective laws seem to vary to a certain extent among the countries. Some jurisdictions (apparently consistent with the general attitude in such jurisdiction towards parallel imports) apply rather strict requirements under which decoding will be regarded as infringing, whereas other jurisdictions take a more rights owner‒friendly approach by treating decoding as infringing in many cases.
More specifically, not only the EU member states, but also non-EU countries such as Macedonia, Montenegro, Russia, Switzerland, Turkey, and Ukraine, recognize that the alteration or impairment of a product may stipulate legitimate reasons for the trademark owner to oppose the further distribution of exhausted goods based on national trademark laws. The requirements under which decoding would be considered to reach the threshold of a significant alteration or impairment entitling the trademark owner to oppose, however, are inconsistent. Whereas, for instance, in France, Turkey, and Italy, the removal of serial numbers, lot codes, or hangtags with the rights holder’s trademark may already be sufficient to reach such threshold (even if lot codes or serial numbers merely serve the purpose of tracking distribution channels), the Swiss courts would usually not consider decoding to constitute a significant change to the specific properties and characteristics of a product.
The offering and distribution of products with removed serial numbers, lot codes, or other identifiers which serve product safety, consumer, and public health purposes in most jurisdictions (in particular in the EU where the laws on traceability requirements are widely harmonized) will be regarded to constitute a violation of the respective national or EU medication, foodstuff, cosmetic, or other product and health safety laws, and may result in administrative or criminal sanctions. Also, warranties for the decoded products (especially for machinery and electronics products) could be invalidated if the producer as a result of the decoding is unable to trace the defective product in its own system for warranty purposes, thereby causing problems for consumers. In addition, such violations in some countries (e.g., Germany and Spain) will constitute a significant alteration or impairment of the product, which in turn will prevent exhaustion and provide the trademark owner with a legitimate reason to oppose the further distribution of the products based on trademark law.
Finally, most jurisdictions seem to acknowledge that offering and selling decoded products under specific circumstances may constitute unfair competition, in particular, where the decoding (or repackaging) misleads consumers in relation to the quality or origin of the product. Nevertheless, there is only very little case law to be noted (e.g., in Finland) and it seems that the majority of cases are subject to review under trademark law rather than unfair competition aspects.
Overall, the INTA Parallel Imports EU Subcommittee concludes that the national laws and the interpretation of such laws and EU law by the national courts in relation to decoding is currently inconsistent. In its next term, the subcommittee will further review and assess adequate options to respond to the situation to the benefit of trademark owners, including a review whether INTA should call upon the EU lawmaking bodies to harmonize the law and to stipulate that the removal of product codes serving product safety purposes or the protection of a selective distribution system constitutes a trademark infringement or unfair competition.
Trademark Office Updates
Madrid Monitoring and Customer Support Improvements at WIPO
Matthew Forno, Senior Counsellor, Madrid Registry, Brands and Designs Sector, WIPO
Sally Khalil, Consultant, Madrid Registry, Brands and Designs Sector, WIPO
Make the Most of Madrid Monitor with All-New Video Tutorials
Have you heard? Madrid Monitor will soon become WIPO’s best and only tool for tracking your international trademark application or registration. WIPO’s brand-new series of free Madrid Monitor training videos can help get you started.
Starting December 1, ROMARIN, Madrid e-Alert, and Madrid Realtime Status will be discontinued and replaced with Madrid Monitor, providing a simpler and more streamlined way to monitor trademarks registered through the Madrid System. Users can also use Madrid Monitor to access the WIPO Gazette of International Marks, the official publication of the Madrid System.
To better support you through this transition, we’ve created a series of free video tutorials to help you get familiar with all that Madrid Monitor has to offer.
Watch and Learn: Tutorial Topics at a Glance
Designed for both new and seasoned Madrid System users, this new, eight-part tutorial series is available online now and offers step-by-step instructions and tips on how to make the most of Madrid Monitor’s best features.
In just a few minutes, you can learn to:
Ready to get started with Madrid Monitor? Check out the first video in the training video series.
About Madrid Monitor
Madrid Monitor is WIPO’s customized tool for following the latest developments on all trademarks registered through the Madrid System and tracking the status of your international application or registration.
Developed in-house, Madrid Monitor introduces a number of features designed with Madrid System users in mind—making it simpler than ever to browse, save, and share over 900,000 trademark records, and keep an eye on competitors’ marks.
For more on the features and benefits of the Madrid Monitor, check out the e-services webpage.
Questions or comments? Contact us.
- Do a simple search with key words or numbers;
- Filter your search results;
- View and download a trademark record;
- Use the advanced search;
- Save and share search reports;
- Access the WIPO Gazette; or
- Obtain real-time updates on your application or registration.
Customer Support at your Fingertips with New Contact Madrid Service
Madrid System customer support continues to improve with the all-new Contact Madrid online communication service. Transmit questions, notifications, and documents directly to the relevant WIPO professional, using this efficient and targeted contact form.
What’s in it for You?
The Contact Madrid service is designed to address the needs of all users—from trademark owners and representatives to IP offices of Madrid System members.
In a few short steps, this new service will direct your enquiry, request, or document to the right WIPO staff member, helping us help you more efficiently than ever before.
Trademark owners or their representatives can use the Contact Madrid service to:
If you work in an IP office, send us your questions using Contact Madrid.
- Ask a question;
- Submit an official form; or
- Submit a response to an irregularity letter.
Remember–The Madrid Office Portal is the most effective and efficient way for IP offices to transmit forms, corrections, decisions, responses, or other documents to WIPO. Contact us today to request secure access to the Madrid Office Portal.
A Single, Streamlined Point of Contact
Starting November 1, 2017, the Contact Madrid online service will replace the firstname.lastname@example.org email address as the preferred and most effective way to connect with our customer service team. Madrid processing team email accounts (e.g., email@example.com) will also be discontinued as of December 15, 2017.
The new Contact Madrid service is accessible under the “Contacts” section of the Madrid homepage, or visit www.wipo.int/madrid/en/contact to access the form directly.
Prefer to speak to a member of the team? Fear not—English, Spanish and French-speaking experts are available Monday to Friday, from 9:00 to 18:00 (Geneva time) to assist you by telephone at +41 (0)22 338 86 86.
Contact Madrid is available now in English, with French and Spanish versions coming soon.
Did You Know?
When you receive a response to a question submitted through Contact Madrid, you can reply directly and keep the conversation going? Simply include the ticket ID in the subject line of your reply to help us direct your message to the right person.
To discuss a different topic, use Contact Madrid to start a new enquiry.
CTC Briefing and a “View from the Outside”
On October 11, INTA, along with the U.S. Chamber’s Global IP Center, hosted a United States Congressional Trademark Caucus (CTC) briefing at the Capitol Visitor Center (CVC) on Trademarks and Brands with a focus on intellectual property enforcement, outreach, and education.
The CTC is a bipartisan, bicameral caucus that seeks to provide education, outreach, and engagement to consumers about trademarks and brands. In a packed room with Capitol Hill staff, government officials, and brand owners, the briefing provided insights on how the stakeholder community can work together to help combat the challenges presented by counterfeiting.
The briefing included keynote speeches from CTC House of Representatives Co-Chairs, Rep. John Ratcliffe (R-TX-4th) and Rep. Ted Deutch (D-FL-22nd), who both focused on the consumer and business harms caused by counterfeiting. Mr. Ratcliffe noted his role in relaunching the CTC this year on World IP Day. He discussed how consumers can be injured from counterfeit products and, therefore, the immense importance of educating consumers to only buy legitimate goods. Mr. Deutch added that counterfeiters are criminals who are affecting the ability of honest small businesses to survive and these criminals are not paying taxes on the goods they sell. Thus, they are stealing revenue that is needed by governments.
The briefing included a panel of INTA brand owners and focused on IP education and enforcement efforts. The panel was moderated by Fabricio Vayra (Perkins Coie, USA) and featured Ayala Deutch (NBA Properties, Inc., USA), Paul Brown (UL, USA), and Anthony Zook (Merck, USA). The panelists explained some of the industry programs and responses to counterfeiting, including work by the National Basketball Association (NBA) to educate consumers about counterfeit NBA products and an “online IP crime conference education series” that UL has created for the IP community and law enforcement.
USPTO Commissioner for Trademarks, Mary Boney Denison, talked about the USPTO’s work on IP enforcement, including the role of IP Attachés and the agency’s Stop Fakes program. Deputy Director of the National Intellectual Property Rights Coordination Center (NIPRCC), William Ross, spoke about the NIPRCC’s role in working with brand owners and the U.S. government’s role in investigating and prosecuting counterfeiters. Mr. Ross noted the creation of industry sector groups which are working together with government to help provide information and guidance as the NIPRCC investigates counterfeiters.
INTA looks forward to further discussions and briefings as government officials and the stakeholder community continue to develop strategies to help address the ever-increasing challenges presented by counterfeiters.
INTA Hosts USPTO Dialogue: A View from the Outside
On October 2, four INTA members who had previously worked at the USPTO held a panel discussion about their engagement and work with USPTO trademark examining attorneys. The panelists included Susan L. Heller (Greenberg Traurig, LLP, USA) and Jennifer Fraser (Dykema Gossett, PLLC, USA), both from the Trademark Office Practices Committee; Scott Woldow (Smith, Gambrell & Russell, LLP, USA) from the Government Officials Training Committee; and Christopher Turk, a member of INTA’s Board of Directors.
The group facilitated a lively and engaging dialogue about the trademark examination process, including discussions with trademark examiners about communication and legal requirements under the U.S. trademark system.
With more than 75 USPTO employees in attendance and a webcast to the teleworking trademark examining corps, the session provided a great opportunity for INTA members who formerly worked at the USPTO and understand the trademark examiners’ work requirements, to share their perspectives on the examination process. Additionally, the panelists shared insights about their careers and transitions from government service to the private sector.
INTA’s Senior Director of Government Relations, Debbie Cohn, stated, "This event provided a unique opportunity for INTA members to lead a productive dialogue with insiders' knowledge from former USPTO trademark examiners who are now part of the private bar. We hope to host this program again in the future at the USPTO and to expand the concept to other regions."
INTA is grateful for the time and dedication from its member speakers, who had a great perspective on, and respect for, the function and role of the trademark examining corps. Both USPTO management and attendees shared positive feedback on this successful program.
Law and Practice
EUROPEAN UNION: Online Sale and the Scope of Luxury Brands’ Control over Authorized Distributors
Contributor: Nina Ringen, Lundgrens Law Firm, Copenhagen, Denmark
Verifier: Alona Sivcova, Agency Tria Robit, Riga, Latvi
Ms. Ringen and Ms. Sivcova are members of the INTA Bulletins Law & Practice—Europe Subcommittee.
In Coty Germany GmbH (Coty) v. Parfümerie Akzente GmbH (PA) (Case C-230/16), the EU Advocate General (AG) issued an opinion on July 26, 2017, on whether a supplier in a selective distribution network may prohibit its authorized resellers from selling products via non-authorized third-party undertakings, such as Amazon or eBay.
Coty is a leading supplier of luxury cosmetics, selling products from certain brands via a selective distribution network. PA is an authorized distributor of Coty brands with points of sale in physical locations as well as online, including its own online store and via “Amazon.de.”
In 2012, Coty revised the network contract, including a prohibition on authorized resellers’ use of non-authorized, third-party undertakings, such as Amazon. PA refused to agree to the revised terms. Coty then filed an action seeking PA’s sales via Amazon be prohibited. The German court referred to the Court of Justice of the European Union (CJEU) the question whether the prohibition was compatible with EU competition law.
The AG initially stated that there may be legitimate reasons to justify a reduction in price competition in favor of competition relating to other factors than price (such as providing specific services in relation to high-quality products), as price is not the only form of effective competition. The AG then noted that the CJEU has recognized the legality of selective distribution systems based on qualitative criteria, referring to the decision in Metro (C-26/76), according to which the following criteria must be fulfilled: (i) resellers are selected on the basis of objective criteria of a qualitative nature which are determined uniformly for all and applied in a nondiscriminatory manner for all potential resellers; (ii) characteristics of the product must necessitate such a network to preserve quality and ensure proper use; and (iii) the criteria do not go beyond what is necessary.
The AG noted with regards to luxury products, that in the context of trademark law, the CJEU has emphasized that luxury products are defined not only by reference to material characteristics, but also on the specific perception customers have of them and particularly the “aura of luxury” they enjoy with the customers. Impairment of that “aura of luxury” is likely to affect the actual quality of those products and the selective distribution systems can in themselves, for example, preserve quality.
The AG consequently opined that seeking to preserve the luxury image of the products by prohibiting use of third-party sales platforms—while satisfying the Metro-criteria—may be compatible with EU competition law. The case is now pending the decision of the CJEU.
FINLAND: Supreme Court Rules on a 3D Trademark Based on Product Shape
Contributors: Henrik af Ursin and Eveliina Pekkala, Dittmar & Indrenius, Helsinki, Finland
Verifier: Nina Ringen, Lundgrens Law Firm, Copenhagen, Denmark
INTA Bulletins Committee Law & Practice—Europe Subcommittee
On June 13, 2017, the Finnish Supreme Court rendered a judgment in the case KKO:2017:42 between Abloy Oy (Abloy) and Hardware Group Oy (Hardware). In its decision, the Supreme Court assessed the distinctiveness of a 3D trademark and a likelihood of confusion about the commercial origin of similar and competing goods.
The plaintiff, Abloy, was the owner of a patent on a locking system and proprietor of a registered design, which protected some elements of the system in question. In August 2013, Abloy applied for registration of a 3D trademark to protect the shape of its EXEC key heads. After Abloy’s patent and design registrations had expired, Hardware brought a competing key product, EDGE, to the market—the shape of which was almost identical to the shape of Abloy’s product. Consequently, Abloy filed an action in the Market Court and claimed that Hardware’s product: (i) infringed its 3D trademark; (ii) caused a likelihood of confusion among the public; and that (iii) Hardware exploited the repute of Abloy’s distinctive mark.
In its ruling, the Supreme Court referred to the case law of the Court of Justice of the European Union and assessed the interpretation of Sections 4 and 6 of the Finnish Trade Marks Act and Article 5 of the Trade Marks Directive. With regard to the facts of the case, the Supreme Court duly noted that Abloy’s and Hardware’s products are similar but not identical; in addition, the Supreme Court noted that the products belong to the same product category and that Abloy has a high market share with high recognition in Finland.
Nevertheless, the Supreme Court considered that the scope of protection of Abloy’s 3D mark was narrow because the mark was only the representation of the shape of consumer goods. The Supreme Court held that the similarity of shape was merely due to the functional requirements and the purpose of use of such a product. Therefore, in its final ruling, the Supreme Court outlined that under the circumstances, even the slightest differences can be sufficient to avoid infringement. Accordingly, the Supreme Court dismissed Abloy’s appeal and ruled that Hardware was not infringing Abloy’s trademark, sustaining the Market Court’s judgment.
INDIA: Taj Mahal Palace Hotel Receives Trademark Status
Contributor: Bisman Kaur, Remfry & Sagar, Gurgaon, India
INTA Bulletins Law & Practice—Asia Pacific Subcommittee
Verifier: Shailendra Bhandare, Khaitan & Co., Mumbai, India
The Taj Mahal Palace Hotel (pictured right) in Mumbai is a 114-year-old building and iconic flagship of the Indian Hotels Company Limited (IHCL). With its Indo-Saracenic arches and a distinctive red-tiled Florentine gothic dome, the hotel is a defining aspect of the city’s skyline. On May 17, 2017, registration for the pictorial representations of the hotel building were secured by IHCL, which referred to these as “image trademarks”—likely the first instance of such rights being granted in India (Reg. No. 3386351). In so doing, the Taj Mahal Palace Hotel joins an elite club of landmarks, such as the Empire State Building and the Sydney Opera House, in securing trademark rights (the Empire State Building design was registered with the USPTO in 2001 and the Sydney Opera House with IP Australia in 2013).
The registration is in Class 43 and covers “services providing food and drink; temporary accommodation.” However, since the building is so well recognized, as with any other famous trademark, the registrations should also be useful tools for halting misappropriation for disparate goods and services.
In practical terms, this means that, for instance, when an artist makes a sketch of the hotel building and puts it up for sale, or when event organizers create memorabilia bearing the city’s skyline (as is the case of organizers of marathons in Mumbai, for example), these uses may give rise to legal action in the absence of a suitable license agreement with IHCL.
From an enforcement perspective, since the registrations are for “image marks,” and not shape or 3D marks, it can be argued that the statutory rights are restricted to the images alone and do not extend to 3D renderings of the hotel building. So, are third parties enjoined from building similar structures/buildings? The full scope of rights will only emerge should such a dispute arise.
Also, in India, “works of architecture” that bear an artistic character qualify for copyright protection, subject to several fair use exceptions, including private use and reportage of current events. For architectural works permanently situated in a public place, the exceptions extend to the making or publishing of a painting, drawing, or photograph of the work, as well as its inclusion in a cinematograph film. The Taj Mahal Palace Hotel is too old to claim copyright protection, but for famous buildings of more recent vintage, comparing the two forms of protection may lead some to argue that trademark rights are too expansive. The registrations, then, mark an interesting beginning.
ISRAEL: Newly Enacted Design Law Heralds a Modern Era for Design Protection
Contributors: David Gilat and Sa’ar Alon, Reinhold Cohn Group, Tel Aviv, Israel
INTA Designs Committee—Communications Subcommittee
Verifier: Eyal Price, Price Plinner Law Offices, Israel
Designs Committee—Design Law and Practice Subcommittee
A new Israeli design law will come into force on August 7, 2018. The new law will provide the legal basis for protection of designs, and will eventually replace the old Patents and Designs Ordinance of 1924. The law is inspired by EU and British legislation and has incorporated, mutatis mutandis, some of the definitions of said laws. Among the highlights of the new law are the following:
One of the new law’s prominent objectives was to provide small and medium-sized local enterprises and individual designers, as well as global enterprises, effective tools to protect their designs and enforce their rights.
UKRAINE: Agreement with EU in Force as of September 1
Contributor: Mariya Ortynska, IPStyle Patent Law Company, Kiev, Ukraine
- The new law replaces the term “article” in the Designs Ordinance with “product,” which covers also graphical symbols and screen displays.
- The new law replaces the requirement for novelty or originality with a cumulative requirement for novelty and individual character. A design will be considered as having ‘individual character’ when the general impression it creates on the informed user is different than the general impression created by a prior design.
- The term of protection for registered designs filed on or after the new law comes into force will be 25 years, counted from the Israeli filing date. Also, starting August 7, 2017, registered designs filed before the law comes into force are eligible for an additional third renewal term of three years (totaling 18 years, instead of 15 years).
- The new law replaces the requirement for local novelty (with a certain exception for publications over the Internet) with a requirement for absolute novelty. A design shall be considered new if an identical design or a design differing only in unsubstantial details was not published in or outside Israel before the determining date (with regard to a design for which a design application was filed, the determining date is the filing date of the Israeli application, or, if priority is claimed, the date on which the prior application was filed; with regard to a design for which a design application was not filed (unregistered design), it is the date on which the owner of the design or someone on its behalf first published in Israel the design or a product bearing the design, in Israel or outside Israel).
- Disclosure of a design by its proprietor or by a third party that obtained information on the design from the proprietor, lawfully or unlawfully, within a period of 12 months prior to the filing date of the application in Israel, or before its priority date, will not be considered prior publication (grace period).
- A design that is novel and has an individual character may be protected as an unregistered design, subject to some requirements. The unregistered design right affords its proprietor the right to prevent the copying of the design by way of manufacturing for commercial use of an identical product (or one that creates the same overall impression on the informed user). The term of protection for unregistered designs is three years.
- The new law provides for statutory damages of no more than ILS 100,000 (USD 28,621) for each infringement. When determining the amount of damages, the court may consider, inter alia, the scope of infringement, the severity of the infringement, the actual damage sustained by the plaintiff, as assessed by the court, etc.
- The new law establishes a criminal offense for intentional copying of a registered design. Under the new law, a person commits a criminal offense if in the course of business he or she commercially produces or imports a product whose design is identical to a registered design without the authorization of the registered design owner. The corporate functionaries will be presumed to have breached their duty to supervise in such case (and therefore will be held criminally liable for the corporation’s misdoing), unless they can establish that they had taken all measures to meet their duty.
- The owner of a registered design may request Customs to detain suspected infringing goods, subject to formal procedural requirements. This provision does not apply to goods imported for personal use.
- The new law contains an entire chapter dealing with international applications, which should pave the way for Israel’s accession to the Hague system.
Verifier: Tatiana Kharebava, Spenser & Kauffmann, Kiev, Ukraine
On September 1, 2017, the Association Agreement between the EU and the European Atomic Energy Community and their member states, on the one side, and the Ukraine on the other, fully came into force. The 28 member states of the EU ratified the document three years ago and the last instrument of ratification or approval was deposited on July 11, 2017.
The Agreement changes the regulation of numerous legal issues in the territory of Ukraine for both national and foreign citizens and businesses. With respect to intellectual property, the Agreement includes the following provisions:
There have been no resolutions issued or new laws adopted for implementing such changes within the Ukrainian legal system, and that could result in conflicts due to the fact that the laws and the Agreement regulate the same questions differently. However, in accordance with the Constitution of Ukraine and the Law of Ukraine on International Agreements of Ukraine, the agreements ratified by the Parliament of Ukraine become part of the national legislation with supreme legal force. Thus, if the provisions of the Agreement differ from the Ukrainian laws, the Agreement should be applied as of the effective date.
- The possibility of temporary protection for unregistered industrial designs for three years; in Ukrainian law, unregistered industrial designs are not protected.
- Ukrainian legislation provides for a term of protection of 15 years for industrial designs, with an annual validity fee, while the EU term of protection is for five years with the possibility of renewal no more than five times so maintenance fees are paid every five years and not annually.
- According to the Law of Ukraine on the Protection of Rights to Trade Marks, if a trademark is not used within three years from the date of registration, any interested person may file a claim for the cancellation of the trademark. In the EU, this term is five years.
- As regards the development of computer programs by an employee within the framework of the employee's ordinary job description, all tangible rights belong to the employer, unless otherwise provided by the contract. This provision differs from the Civil Code of Ukraine, where the right for the developed computer program, for example, may belong together to the employee and the employer, unless otherwise provided by the contract.
UNITED STATES: Keep A Breast Foundation Loses its Breast Cast Trademark
Contributor: Nina Osseiran, Cedar White Bradley, Washington, D.C.
Reviewer: Cynthia Moyer, Fredrikson & Byron P.A., Minneapolis, Minnesota
Ms. Osseiran and Ms. Moyer are members of the INTA Bulletins Law & Practice—North America Subcommittee.
The Trademark Trial and Appeal Board (TTAB or Board) affirmed the refusal to register a “three-dimensional cylindrical cast of female breasts and torso constituting a trade dress.” In re Keep A Breast Foundation, Serial No. 85316199 (TTAB Aug. 17, 2017).
The Keep A Breast Foundation applied to register the cast design shown below for breast cancer association services in Class 35, charitable fundraising in Class 36, and educational services in Class 41. The mark was refused on the grounds that: (1) the specimen fails to show use of the mark in connection with the services or as a source indicator; (2) the applied-for trade dress fails to function as a trademark; and (3) the evidence of acquired distinctiveness is insufficient to render the proposed mark as registrable.
As to the applicant’s specimens, the Board turned to the Trademark Manual of Examining Procedure (TMEP) Section 1301.04(f) which states:
To be acceptable, a service-mark specimen must show the mark sought to be registered used in a manner that demonstrates a direct association between the mark and the services. Essentially, the mark must be shown in a manner that would be perceived by potential purchasers as identifying the applicant’s services and indicating their source.
The Board found that the applicant’s specimens consisted of casts that lacked uniformity, did not match the drawing, and failed to associate the mark with any of the services.
Turning to the mark’s ability to function as a trademark under Sections 1, 2, 3, and 45 of the Lanham Act, the TTAB asked the central question, namely, what commercial impression the mark makes on the consumer. In other words, would the public perceive the mark as a source identifier of the services? The TTAB determined that based on the applicant’s specimen and the examining attorney’s evidence of third-party breast and body cast products and services, the mark fails to function as a service mark.
Lastly, the Board concluded that because the mark fails to function as a mark, “no amount of evidence of acquired distinctiveness can overcome such a refusal.” Additionally, due to third-party uses of breast/torso casts, the applicant failed to demonstrate its use of the proposed mark is “substantially exclusive” as required under Section 2(f), 15 U.S.C. Section 1052(f).
UNITED STATES: Live Cross-Examination Must Be in Reasonable Location
Contributor: Cynthia Moyer, Fredrikson & Byron, P.A., Minneapolis, Minnesota
Verifier: Deborah Wilcox, BakerHostetler, Cleveland, Ohio
Ms. Moyer and Ms. Wilcox are members of the INTA Bulletins Law & Practice—North America Subcommittee.
The Trademark Trial and Appeal Board (Board) recently held that live cross-examination during an opposition must occur in a reasonable location and thus, the Board quashed a notice of election of cross-examination that would have required four witnesses to travel across the country for live cross-examination. United States Postal Service v. RPost Communication Limited, Opposition No. 91210479 (Aug. 31, 2017).
During its testimony period, the opposer submitted its direct testimony via declarations from four witnesses pursuant to Trademark Rule 2.123(a), which allows a party to submit the testimony of witnesses by affidavit or declaration. Thereafter, the applicant filed and served a notice of election to take oral cross-examination of the declarants pursuant to Trademark Rule 2.123(a). The applicant’s notice stated that the cross-examination would occur in California. The opposer filed a motion to quash the notice of election, and also sought to require the applicant to conduct the cross-examinations in Washington, D.C., where the declarants worked and lived.
The Board read the provisions of Trademark Rule 2.123(c), which allow for a deposition to be noticed for “any reasonable time and place,” in conjunction with the provision in Trademark Rule 2.123(a), which provides that the deposing party “bear the expense of oral cross-examination.” It also considered the express intent of the rules to “minimize the ability of a party seeking cross-examination to thwart the [proffering] party’s efforts to rein in the cost of litigation by opting for testimony by affidavit or declaration.”
The Board observed that had the opposer opted to elicit live direct testimony, the depositions would have occurred in Washington, D.C., and counsel for the applicant would have had to travel to Washington, D.C., in order to conduct live cross-examination immediately following the conclusion of the direct examinations. Thus, the Board held that the applicant’s notice of election to take cross-examination in California did not comply with the Trademark Rule 2.123(c) requirement that the cross-examination be taken in a reasonable place. Requiring counsel for the applicant to travel to Washington, D.C., to conduct the live cross-examination imposed no greater burden on the applicant than if the opposer had conducted live direct examinations.
Lastly, the Board stated that Trademark Rule 2.123(b) allows for depositions to be taken in any manner, which would include examination by videoconference or telephone, and which the opposer offered to do in order to defray at least some of the applicant’s concerns about the cross-examination.
UNITED STATES: TTAB Rejects Bid to Register the Color Yellow for Cheerios Box
Contributor: Cynthia Moyer, Fredrikson & Byron P.A., Minneapolis, Minnesota
Verifier: Connie Limperis, San Diego, California
Ms. Moyer and Ms. Limperis are members of the INTA Bulletins Law & Practice—North America Subcommittee.
The Trademark Trial and Appeal Board (TTAB or Board) affirmed the refusal to register the color yellow on packaging for “toroidal-shaped, oat-based breakfast cereal” (also known as Cheerios), finding the CHEERIOS mark lacks acquired distinctiveness and therefore fails to function as a trademark. In re General Mills IP Holdings II, LLC, Serial No. 86757390 (Aug. 22, 2017).
The Board began its analysis by noting that a single color applied to a product or its packaging can never be inherently distinctive as a source indicator, and thus the applicant bore the burden of demonstrating the mark had acquired distinctiveness.
In support of its argument of acquired distinctiveness, General Mills submitted “voluminous” evidence, including information about advertising expenditures (over $1 billion in ten years), sales over ten years that exceeded $4 billion, a television ad that aired during the 2014 Super Bowl to 111.5 million viewers and that had millions of subsequent online views, expert testimony, and survey evidence. General Mills also established that it has used the color yellow in connection with packaging for Cheerios since the 1940s.
The Board was not persuaded, stating that non-exclusive use presents a “serious problem” when trying to register a mark that is not inherently distinctive. The Board explained:
The presence in the market of yellow-packaged cereals from various sources—even cereals that are not made of oats or are not toroidal in shape—would tend to detract from any public perception of the predominantly yellow background as a source-indicator pointing solely to [General Mills].
The Board further explained:
When customers see a color appearing on products from many different sources, they are less likely to expect the color to point to a single source of goods. Instead, customers are likely to perceive the color on packages as a device designed to make the packages attractive and eye-catching.
The Board discounted the survey evidence, which showed that 52.7 percent of respondents identified Cheerios when asked which brand of cereal comes in the yellow box depicted in the trademark application. The Board determined that the use of the word “brand” would be likely to make respondents think they were supposed to respond with only one brand, so the survey was insufficient to show whether respondents believed the color yellow was associated only with the maker of Cheerios.
In the end, the Board acknowledged that consumers are familiar with the yellow color of the Cheerios box, but the record in the case demonstrated that the yellow color is only one aspect of the complex trade dress for Cheerios that includes many other source identifying features. Thus, the Board was not persuaded that consumers perceive the color yellow alone as source indicating. Accordingly the Board affirmed the refusal to register the mark.
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.
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