INTA has been given the opportunity to help provide important counterfeit targeting information to two offices in Latin America:
The National Directorate of Taxes and Customs of Colombia (DIAN) is gathering information on illegal importation to organize a pilot information sharing program within customs. DIAN is requesting that brand owners provide a list of their authorized importers to use as a basis for the information sharing program.
The National Institute for the Defense of Competition and Protection of Intellectual Property of Peru (INDECOPI) is actively seeking information from the private sector in order to strengthen the country’s borders against counterfeit trade. INDECOPI is looking to create a blacklist of importers and has asked for brand owners’ assistance in gathering this information.
INTA and its Anticounterfeiting Committee (ACC) are dedicated to combatting the growth of counterfeit trade globally through the development and passage of legislation, regulations, and trade agreements throughout the world that increase national and international enforcement mechanisms against counterfeiting. The ACC is committed to raising awareness about counterfeiting by engaging with relevant stakeholders and supporting the efforts of our public sector partners.
If you are a brand owner interested in connecting with DIAN or INDECOPI for the above initiatives, please contact INTA’s Anticounterfeiting Manager, Maysa Razavi, at firstname.lastname@example.org.
If you would like to learn more about INTA’s anticounterfeiting initiatives and/or the ACC and its activities, please visit our website here or contact Ms. Razavi or INTA’s Anticounterfeiting, Advisor, Tiffany Pho at email@example.com.
This blog post was written by Maysa Razavi, Anticounterfeiting Manager.
This blog post was written by Susan Taplinger, Managing Editor, Communications
YBhg. Dato’ Mohd Roslan bin Mahayudin (pictured, right) was appointed as Director General of Intellectual Property Corporation of Malaysia (MyIPO) on January 2, 2019. With more than 30 years’ service in government, Dato’ Mohd Roslan has extensive experience in the field of prosecution. Prior to his appointment as Director General of MyIPO he was the Director of Enforcement at the Ministry of Domestic Trade and Consumer Affairs.
Here, Director General Mohd Roslan discusses some of the key legislative and policy developments affecting the intellectual property community in Malaysia.
How does MyIPO work to strengthen intellectual property (IP) laws and promote awareness of IP in Malaysia? How is MyIPO taking the lead to promote brand value in Malaysia and globally?
To strengthen IP laws in Malaysia, it is necessary for MyIPO to make sure that the country’s IP legislation is in line with international standards.
Over the years, MyIPO has acceded to seven treaties administered by the World Intellectual Property Organization (WIPO), including the Paris Convention, the Berne Convention, the Patent Cooperation Treaties, the Nice and Vienna Agreement, the WIPO Copyright Treaty, and the WIPO Performance and Phonograms Treaty. Malaysia is also a signatory to the Trade-Related Aspects of the Intellectual Property Rights (TRIPS) Agreement.
There are three main International treaties that are priorities for Malaysia: the Madrid Protocol, the Budapest Treaty, and the Marrakesh Treaty. Due to the commitments and obligations under these international treaties, the law in Malaysia has undergone a great transformation to align the local IP laws with standards as provided under these agreements. Compliance with the treaties has shown that Malaysia’s IP laws have the appropriate legislative structure in protecting IP rights. Nevertheless, due to the rapid changes in the technologies and demand from markets, Malaysia IP law has also needed revision from time to time, in order to take into account current IP issues, and to align with international practice.
In developing Malaysia’s IP structure, MyIPO also works to enhance strategic partnerships with international IP offices, such as the Japan Patent Office, the European Union Intellectual Property Office, the United States Patent and Trademark Office, and others to collaborate in organizing trainings to educate and increase awareness of IP issues.
MyIPO also has held a number of programs and initiatives to raise awareness of the importance of IP protection, and to facilitate filing procedures and utilization of IP practices. Additionally, MyIPO has held trainings, workshops, and seminars based on its target participants. For instance, MyIPO organized National IP Day activities and awards, which were introduced to recognize the highest IP achievements in each category, to increase the recognition of the value of IP, as well as to encourage local companies, universities, researchers, SMEs, individual entrepreneurs, and students to be more creative and innovative in creating IP.
Additional programs included seminars and workshops for stakeholders on the protection of IP and filing procedures in Malaysia. For students and teachers, MyIPO organized IP Summer Camp, aimed at raising awareness of IP protection among the younger generation through fun and interactive educational activities, and set up the IP Portal for Youngsters, which is a database of ideas for youth or students, where they can send their innovations or creative works.
MyIPO is also working to strengthen its partnership with INTA by increasing collaborative efforts in promoting the public’s awareness of IP rights and educating young consumers about IP. It is particularly important, in light of MyIPO’s accession to the Madrid Protocol, to educate the public regarding the implications of this system.
In addition to the initiatives mentioned earlier, Malaysia has adopted brand development best practices for SMEs by through IP CONNECT, which is a major program of MyIPO and government universities in collaboration with private companies. This program includes IP Talk, IP Clinic, and Entrepreneurs Filing. Through IP Talk, MyIPO provides guidance to entrepreneurs on brand management, marketing, and growing the business, while the IP Clinic provides one-on-one consultations with companies. At the filing stage, with Entrepreneurs Filing, university involvement comes into play in the form of funds to cover the cost of application and registration.
What are some of the most important developments and recent amendments to Malaysia’s trademark law that practitioners and brand owners should be aware of? Will this encourage greater numbers of trademark registrations?
On July 23, the Malaysian parliament passed a new and revamped trademark bill titled “Trademarks Bill 2019.” The new act, which will soon come into force, would bring significant changes to the existing legal regime for trademark protection and enforcement in Malaysia. The major reforms in the Trademarks Bill 2019 include:
- A new definition of “trademark” and the recognition of nontraditional trademarks;
- New examination approach and practices by the substitution of current practices with provisions on absolute grounds and relative grounds of refusal;
- Extension of the mode of applications from single class application to multiple class application;
- New provisions regarding the international registration system to facilitate Malaysia’s accession to the Madrid Protocol;
- Enhanced provisions on infringement, including remedies such as injunction, damages, account profit, delivery order, destruction, order as to disposal of infringing goods, and erasure of offending marks;
- The introduction of criminal offenses for counterfeiting a trademark (Sections 8 and 9 of the Trade Description Act 2011 are adopted into Trademark Bill 2019.);
- Provisions on monetization and securitization of trademark rights in the financial sector; and
- Additional provisions on licensing where licensees are allowed to bring proceedings for infringement, introducing collective marks as obligation under the Paris Convention as well as enhancement of border measure provisions for customs.
MyIPO believes that the coming Trademark Act may encourage greater numbers of trademark registrations due to a wider scope of protection for trademarks, including sound marks, scent/smell marks, and color marks. In addition, being a member of the Madrid Protocol may also contribute to increase trademark protections for other countries that are members of the Madrid Protocol. MyIPO estimates an increase of 7‒10 percent in yearly trademark applications.
What opportunities will there be to provide feedback on draft implementing rules? How does this kind of feedback help MyIPO advance its initiatives?
In implementing the trademark rules to align with Malaysia’s economic growth and to protect customers’ needs, from 2010 to 2018, MyIPO conducted several public consultation sessions, seminars, meetings, and dialogue sessions with stakeholders, universities, government agencies, legal practitioners, and the public in order to receive their feedback and suggestions.
MyIPO has also conducted regulatory assessments through the Malaysia Productivity Corporation to determine the regulatory costs and the impact of the new proposed regulations on businesses. The assessment also emphasized strategies for implementation, including mechanisms to ensure their effective implementation. MyIPO is currently considering all the feedback, comments, and suggestions received from all the above initiatives regarding the new Trademark Bill 2019.
What do you see as some of the most important emerging issues for enforcement of trademarks in Malaysia? How can brand owners feed into efforts and initiatives by authorities?
The most important emerging issues for the enforcement of trademarks in Malaysia is the same that many other countries are facing, such as counterfeit goods in the market, especially through online selling. Monitoring counterfeit trade and controlling cross-border counterfeit goods are among the most important and challenging issues to be tackled by enforcement bodies in Malaysia.
For brand owners, it is important for them to be aware of their IP rights, and not to hesitate to initiate their own legal actions against those that breach those rights. Brand owners may bring civil actions against infringers in the High Court or file complaints at the Ministry of Domestic Trade and Consumer Affairs for criminal enforcement.
With the new Trademarks Bill 2019, MyIPO has enhanced the criminal enforcement of trademark rights with respect to the false application of trademarked goods and services. The provision also grants powers to investigate, arrest suspects, search, and seize suspicious goods—powers which were previously governed under the Trade Description Act.
Join us at the 2019 Asia Conference: Brands in Changing Times
Innovate. Protect. Enforce. Grow. October 17–18, Kuala Lumpur, Malaysia
This two-day, advanced-level Conference features leading business and legal experts and government officials, to help you navigate innovation in the marketplace and in the practice of trademark law, IP protection strategies, the changing enforcement landscape, and growth opportunities in the region.
This post written by Ken King, Manager, Member Engagement and Retention.
As a member, what does belonging to INTA mean to you?
This year at INTA’s 141st Annual Meeting in Boston, Massachusetts, we asked members what belonging to INTA means to them, and we asked them to post their answers on sticky notes on a central message wall at the Meeting.
Some responses included “professional development,” “getting knowledge,” “building relationships,” “coming together and future of IP,” and “Education/Service/Lifelong connections and friendships forever.” This feedback allows the Association to continue its efforts to foster community spirit and to provide value to our members around the world.
2019 has been a busy and rewarding year for INTA. Here are just a few examples of the information, knowledge, and resources that INTA has been working on to support you and your organization:
- Over 2,300 hours of innovative, forward-looking educational programming with CLE credits
- A Brexit Toolkit to help your organization prepare for the United Kingdom’s withdrawal from the European Union
- The formation of a Brand Value Task Force focused on the commercialization of brands
- The attitudinal study Gen Z Insights: Brands and Counterfeit Products, which explores the relationship between Gen Zers and brands and their attitudes about and perceptions of counterfeit products
- The largest Annual Meeting to date with 11,000+ global registrants
- Introduction of corporate Industry Groups, offering benchmarking with colleagues from the same industry
By renewing your 2020 membership, you and your colleagues
not only will continue to have access to innovative educational programs and
resources as well as numerous opportunities for networking and business
development, but you will also be supporting INTA as it advances its mission as
a trusted and influential advocate for the economic and social value of brands.
Our goal is to make this renewal process easy for you. To
renew your membership, please log onto www.inta.org,
click on “My Profile,” then click on the “renew” button on the right side of the
If you need additional guidance, please download our
membership renewal FAQs.
Thank you for your continued membership, your participation
in our programs, and your volunteer efforts throughout the year.
This blog was co-authored with INTA Manager, Anticounterfeiting, Maysa Razavi.
Three studies released this month highlight the intellectual property (IP) landscape in the European Union, including a look at the current state of counterfeiting in the region.
The European Union Intellectual Property Office (EUIPO) and the European Patent Office (EPO) jointly published two of the studies. They explore the ever-increasing contribution of trademarks to job creation and the economy in the EU, as well as the ongoing pressing issue of counterfeit products at EU borders and in member states.
The studies, released on September 19 and September 25 respectively, are: the third update of “Intellectual property rights intensive industries and economic performance in the European Union,” and the new “Report on the EU enforcement of intellectual property rights: results at the EU borders and in Member States 2013‒2017.”
The first study, which covers 2014‒2016, highlights the strong contribution of IP rights (IPR)-intensive industries to the economic health of the EU. The major findings include:
- More contribution to the economy and more jobs. Industries that use IPRs such as patents, trademarks, industrial designs, and copyright contribute EUR 6.6 trillion or 45 percent of gross domestic product (GDP) in the EU every year and generate 63 million jobs (29% of all EU jobs). This reflects an increase of three percent to the EU economy and one percent in job growth compared to 2011‒2013.
- Higher wages. IPR-intensive industries pay on average 47 percent more in wages than other sectors, a one percent increase compared to 2011‒2013.
- IPR-intensive industries counterbalance small deficit in non-IPR intensive trade. IPR-intensive industries also account for most of the EU's trade in goods and services with the other regions of the world (81%). This represents a slight decrease since 2011‒2013, which is attributed mostly to the decrease of EU trade overall. Indeed, the EU as a whole had an overall trade surplus in IPR-intensive industries of approximately EUR 182 billion in 2016, counterbalancing a small deficit in non-IPR intensive trade.
- Trademarks are the main driver, followed by designs. Industries that make intensive use of trademarks contribute 37 percent to the EU’s GDP and support 46.7 million jobs. Industries that use design rights contribute 16.2 percent to the EU’s total GDP and account for 30.7 million direct jobs.
The second study focuses on fake goods detained by customs at the EU borders and in member states for the 2013‒2017 period. The main findings are as follows:
- One fake item detained per EU citizen. Between 2013 and 2017, approximately 438 million fake items were detained in the EU—equating to one fake item detained per EU citizen (aged 15 years and over). Of these goods, 60‒70 percent were detained in the national markets of member states, and 30‒40 percent were detained at EU borders.
- The value of fakes detained equals the GDP of Malta. The estimated value of fake items detained in the EU amounts to approximately EUR 12 billion—almost equivalent to the 2018 GDP of Malta, an EU member state. About 70‒85 percent of the total value of the items was accounted for by detentions in the national markets, while the remainder was detained at EU borders.
- Ten member states account for almost 90 percent of the number of items and 95 percent of the estimated value of the fake items detained. Italy recorded the highest individual figures, with 54 percent by volume and 60 percent by estimated value. There is no data currently available for national market detentions in some of the larger member states, such as Germany, Poland, and for part of the United Kingdom.
- Fake clothing accessories and toys mark the highest number of detentions. In terms of volume, the four most common subcategories of detained products, accounting for more than 33 percent of the products recorded, were clothing accessories, toys, recorded CDs/DVDs, and cigarettes.
- Trademark-infringing items rank first in detention by volume and estimated value. Trademark infringement accounted for almost 70 percent by volume and 54 percent by estimated value of detentions at EU borders and in the national markets.
Source: EUIPO and EPO
- Detentions at EU borders have decreased since 2014. Following a peak in 2014, detention of counterfeit goods by customs authorities have gradually decreased through 2017. The estimated value of the detained goods has also decreased, though at a slower pace in three of the years; they rose in 2015 and 2016.
The findings show an increase in the number of cases and procedures conducted by customs officials, but fewer goods seized. The numbers indicate that officials are looking more closely at small parcels coming into the EU. Cigarettes (15.6%) topped the list of fake goods seized, followed by toys (14.2 %); packaging material (9.4 %); labels, tags, and stickers (8.9 %); and clothing (8.6 %).
The top countries of origins for these goods included China (50.5 %), Bosnia and Herzegovina (9.66 %), Hong Kong (9.43 %), Cambodia (8.77 %), and Turkey 7.02 %.
Source: EU Commission
Given the findings of these new studies, public education and strong IPR protection remain important tools for highlighting the value of trademarks and preventing the proliferation of counterfeit goods.
INTA advocates at the national and international levels to strengthen anticounterfeiting laws and enforcement, to increase governments’ cooperation to eliminate linkages between counterfeiting and organized crime, and to emphasize the serious threats posed by counterfeiting to the health and safety of consumers, economies, and national security.
In addition, the Association supports the development and passage of legislation, regulations, and trade agreements throughout the world that increase national and international enforcement mechanisms against counterfeiting. Through the organization’s Anticounterfeiting Committee, the Unreal Campaign
Committee, and partnerships with governments and other organizations, INTA emphasizes the importance of strong anticounterfeiting measures and increased awareness of the harms of counterfeiting.
For more information about the EU reports, please contact Hadrien Valembois, INTA Policy Officer, Europe, at firstname.lastname@example.org
. For more information on INTA’s anticounterfeiting work, please contact Maysa Razavi, INTA Manager, Anticounterfeiting, at email@example.com
. For more information about the Unreal Campaign, please contact Catherine Shen, INTA Associate, Strategic Partnerships & Unreal Campaign, at firstname.lastname@example.org
This blog post was co-authored with INTA's Chief Representative Officer - Europe, Hélène Nicora.
What do European brands represent? How do they contribute to the environment or protect children’s safety? In a nutshell, why are they important to you?
These are some of the questions that the International Trademark Association (INTA) is answering in its just-released Brands Manifesto. INTA developed the Manifesto to serve as a practical tool to raise awareness among European decision makers about what brands stand for and what benefit they generate for EU society as a whole.
The Association’s release of the Manifesto comes against the background of the European elections of May 23‒26, 2019, the new European Parliament’s legislature, and the new mandate of the European Commission for 2019‒2024. It was born out of the necessity for brands and intellectual property (IP) professionals to reach beyond the IP “bubble” and to raise awareness among high-level EU decision makers and the general public.
Therefore, INTA chose to structure the Manifesto using five keywords that resonate among European citizens, as attested by the results of the European elections that saw, among other outcomes, the rise of climate change as a top political issue as well as the unprecedented mobilization of European youth.
1. Trust: Trust is the most obvious link between brands and consumers. Brands stand for the promise of consistent quality, enabling consumers to make informed and quicker purchasing choices. When faced with shelves packed with countless variations of the same product category, consumers will opt for the brands they trust, without having to analyze the different products first. Brands offer that knowledge and comfort, and may also provide an anchor with local communities.
2. Jobs: Building on data from the European Union Intellectual Property Office (EUIPO), INTA is showcasing the contributions of EU brands to the economy: specifically, they generate 3 out of 10 jobs, provide 50 percent higher wages, and contribute €5.7 trillion annually to the economy
3. SMEs: Often described as the backbone of the EU economy (they make up 99% of it), small and medium-sized enterprises (SMEs) are key because every major brand or company started as an entrepreneur or an SME. Think about Microsoft’s Bill Gates creating his first computer in his garage or Mark Zuckerberg developing Facebook in his dorm. None of this could have happened without IP protection, which helps differentiate SMEs’ products and services from other competitors in the market.Brands are a company’s business card—the way it is known to the outside world. But one out of three SMEs face a violation of their IP rights, and they often lack the knowledge or resources, human and/or financial, to protect their brand.
4. Safety: The safety aspect of brand protection, although unfortunately less known, is nonetheless a concerning one: while genuine branded products have to comply with EU safety requirements, counterfeit products, by their nature, do not. Therefore, fakes can be hazardous to the health and safety of EU citizens and lead to severe illness, injuries, and even death. This issue is affecting every sector. Think about fake toys (1 out of 10 of toys in the EU) with lead paint that children put in their mouths, or a fake airbag that explodes while a car is driving on the highway.
5. Environment: How do brands contribute to environmental protection and the fight against climate change, a key concern of European citizens and, notably, the youth? The link between brands and the environment is clear: 40 percent of European online consumers would pay more for brands that are eco-friendly and socially responsible; and 55 percent of young consumers choose to buy brands with those same values. Brand reputation is key. Consumers’ increasingly conscious purchasing choices prompt brands to take responsible actions involving the environment and society.
By committing to brand protection, EU businesses, decision makers, and the public protect major aspects of the EU identity: the EU economy and jobs, SMEs, consumers’ health and safety, and the environment.
- Create a high-level IP Coordinator’s position at the European Commission;
- Position the EU as an IP champion on the international scene;
- Launch and support an EU-wide IP education campaign targeting consumers, youngsters, SMEs, and policy makers;
- On the legislative front, initiate EU legislative reform on designs and work on the implementation of the EU trademark system;
- Ensure that the EU Intellectual Property Office continues providing a high-quality and efficient public service to its users; and
- Promote the creation of national IPR enforcement centers and specialized IP units within police departments in EU member states.
INTA is distributing the Manifesto to policy makers and will communicate its messages to stakeholders and the public through social media and other means.
For more information, please contact INTA staff Hélène Nicora, Chief Representative Officer–Europe, at email@example.com
, or Hadrien Valembois, Policy Officer–Europe, at firstname.lastname@example.org
Astronauts Kathryn D. Sullivan and Paul Richards with Deputy Undersecretary of Commerce for IP and USPTO Deputy Director Laura Peter speaking at the National Inventors Hall of Fame®(NIHF) Museum.
Recognizing that Intellectual property (IP) has helped protect inventions in space technology for decades, the U.S. Patent and Trademark Office (USPTO) celebrated IP’s role amongst the stars with a special event “Apollo 50: The Role of Intellectual Property in Space Commerce” on July 23.
The event commemorated the 50th anniversary of the Apollo moon landing and highlighted the space ecosystem in general, including astronauts, engineers, and technical staff.
In his keynote address, U.S. Department of Commerce Secretary Wilbur Ross emphasized how the U.S. IP system is a key component in the success of a global economy and provides the roadmap for the commercialization of innovative technologies. He noted that continued worldwide interest in space technology led to US $414 billion in global space revenue in 2018.
“Protecting the intellectual property of new space companies, entrepreneurs, inventors, and individuals is essential for U.S. success,” Secretary Ross said.
He emphasized the need for ongoing collaboration with private entities for investment and research in space technology.
The event underscored the importance of the USPTO in examining trademark and patent applications to provide the appropriate IP protection for brands and innovation. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, said that “innovation leads to remarkable things” in the space technology sector.
According to Jim Bridenstine, former member of Congress and current NASA Administrator, space technology has many benefits, including directly improving communications and GPS technology.
Further, he noted space technology has the ability to bring people together—as illustrated by the more than 500,000 people who visited the National Mall to participate in a festival celebrating the Moon landing anniversary.
A panel moderated by Laura Peter, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, featured astronauts who discussed the academic, physical, and practical preparations for their space missions.
The panelists discussed the “real potential” that life forms may exist on the Moon in the form of microscopic organisms which may have the bacteria and other components that could be used in health research to help humans on earth. With this possibility, the scientists said they are encouraged by the Administration’s steps toward developing a new mission to the Moon and beyond.
The panelists also noted they are excited by an increased interest in space among youth, and noted the importance of science programs such as the National Inventors Hall of Fame®’s Camp Invention, a summer program that engages children in science and engineering activities.
The USPTO event illustrated how IP protection is an important consideration during all stages of innovation and a crucial component of any successful business, including the exploration of space.
USPTO’s Commissioner for Trademarks Mary Boney Denison (left) and Peter Brody (Ropes & Gray LLP), who serves as Chair of INTA's Legislation and Regulation Committee's U.S. Subcommittee, delivered testimony centered on a request for Congress to introduce legislation amending the Lanham Act on Thursday, July 18, in Washington D.C. before the United States House Committee on the Judiciary.
INTA participated in a Congressional hearing held by the United States House Committee on the Judiciary titled “Counterfeits and Cluttering: Emerging Threats to the Integrity of the Trademark System and the Impact on American Consumers and Businesses,” on Thursday, July 18, in Washington, D.C. The hearing took place before the Subcommittee on Courts, Intellectual Property and the Internet.
Peter Brody (Ropes & Gray LLP), who serves as Chair of INTA’s Legislation and Regulation Committee’s U.S. Subcommittee, delivered testimony on behalf of INTA. His testimony centered on a request for Congress to introduce legislation amending the Lanham Act—the federal statute that governs trademarks, service marks, and unfair competition.
Mr. Brody argued that the Lanham Act should be amended to reestablish “an endangered but vital” principle—the assurance that injunctive relief is available in “appropriate cases involving trademark counterfeiting, infringement, dilution, false advertising, and cybersquatting.” The amendment would “clarify and standardize enforcement of the Lanham Act across the country to safeguard the interests of American consumers and businesses,” he said.
INTA passed a Board Resolution in May 2017 to address inconsistencies in the U.S. federal courts’ application of the rebuttable presumption of irreparable harm. The resolution called for the Lanham Act to be amended so as to provide that, when a claimant seeks injunctive relief under Section 34 of the Act, a rebuttable presumption of irreparable harm will apply where there has been a finding of liability, or in the case of a motion for a preliminary injunction, a finding of probable success on the merits of the claim.
In his testimony, Mr. Brody explained this issue to Members of Congress and illustrated how businesses and consumers are adversely affected, noting that, “trademarks are invaluable to the owners of businesses large and small. They identify a particular source in a crowded marketplace, enabling businesses to develop a reputation and goodwill, symbolized by their brand.” He went on to explain how goods or services sold under infringing and confusing trademarks weaken consumer trust in quality and consistency.
Coming full circle, Mr. Brody highlighted recent developments in Lanham Act remedies that have resulted in “federal court rulings that hinder trademark owners’ ability to obtain relief,” which, he argued, “threaten to undermine Congressional objectives in protecting both consumers and businesses from harm.”
Members of Congress expressed an interest in learning more about this issue and in understanding how this issue affects consumers and their engagement with brands.
The hearing also included testimony from USPTO’s Commissioner for Trademarks Mary Boney Denison, who focused on the agency’s initiatives to maintain the integrity of the U.S. Trademark Register. “The recent rise in improper trademark submissions and bad faith behavior are very concerning, as is the proliferation of counterfeit goods in the marketplace,” Commissioner Denison said. She used this opportunity to outline technology strategies that the agency is exploring to help assist with examination as well as the role of a task force that is focused on fraudulent filings.
The hearing included testimony from several additional witnesses from other organizations who focused on the challenges to consumers and businesses presented by counterfeiting.
The hearing illustrated the interest of bipartisan Members of Congress in learning more about the challenges facing the trademark community and opportunities for Congress to engage in a dialogue with stakeholders about initiatives and ideas to solve these challenges with the goal of protecting consumers, supporting businesses, and enhancing the economy.
INTA will continue its direct and focused advocacy for this legislative change.
INTA 2019 President David Lossignol (Novartis, Switzerland) provides the ‘Industry’s perspective’ on IP enforcement at the EUIPO-OECD IP Enforcement Forum in Paris on June 12.
Intellectual property (IP) professionals and government officials gathered in Paris, France to discuss solutions related to global counterfeiting and ways to bolster collaborative IP enforcement strategies at the International Forum on IP Enforcement 2019, on June 12–13.
This high-level IP forum brought together key European and international decision makers, enforcement agencies, multinational companies, and other private actors (brand owners and online platforms), as well as relevant stakeholders to discuss trends and alternative enforcement techniques for IP both at the EU and global levels. Key speakers included Vishal Amin (IP Enforcement Coordinator, White House, USA), Christian Archambeau (Executive Director, EUIPO), and Sławomir Tokarski (Director, DG GROW, EU Commission).
INTA 2019 President David Lossignol (Novartis AG, Switzerland) provided an industry perspective at the beginning of the forum’s first day. Mr. Lossignol emphasized two key messages to combat the proliferation of counterfeiting: collaboration and changing perceptions. On the first point, he said, “We need a team effort—in all countries, with all stakeholders, with all generations. The issue is too large for any one brand or one government authority to tackle alone.” Secondly, he called for raising awareness and educating consumers, especially youth, to change perceptions, noting “We must educate early and educate often.”
Mr. Lossignol provided an overview of the key findings of INTA’s “Gen Z Insights: Brand and Counterfeit Products” study, which highlights the attitudes of Gen Z consumers in 10 countries toward purchasing counterfeit products and the factors that might change their behaviors. Among education solutions, he pointed to INTA’s Unreal Campaign, which raises awareness among young consumers about the dangers of counterfeits and emphasizes the importance of trademarks and brands.
Also at the event, the European Intellectual Property Office and EUROPOL unveiled their 2019 Intellectual Property Crime Threat Assessment, an update to previous editions released in 2015 and 2017. The report assesses the threat posed by counterfeiting and piracy in the EU in several product sectors, as well as cross-cutting factors that influence or impact the criminal environment.
The report stresses that counterfeit and pirated goods are increasing, amounting to as much as 6.8 percent of EU imports, or €121 billion. It also notes a decrease in customs’ detention of counterfeits since 2013, “even if the number of items seized and their estimated value has decreased at a lower pace, with a temporary recuperation in 2015 and 2016,” though this decline is mainly due to the effectiveness of customs’ operations. In addition, it points out that most counterfeit items still come from China.
The forum included sessions focused on the role of intermediaries in the fight against counterfeiting. Brand owners asked online platforms to intervene more proactively, and online intermediaries showcased the measures they are already taking, including reactive measures and take downs.
Government officials, notably the European Commission, defended, on its end, voluntary measures, such as its own Memorandum of Understanding with Internet platforms, rights owners, and associations to prevent offers of counterfeit goods from appearing in online marketplaces. On this front, INTA Vice President Zeeger Vink (Maus Frères, France) raised a possible solution, namely traders’ identification when they sell online, since “all the enforcement tools in the world are useless” if you cannot identify the counterfeiters.
“The fight against IPR infringement needs to be strengthened,” emphasizes a new report by the European Union Intellectual Property Office (EUIPO). The report cites substantial loss of sales in the EU and growing health and safety concerns as a result of counterfeiting, and highlights the challenges in tackling this problem.
EUIPO published its 2019 Status Report on IPR Infringement: the importance of intellectual property rights, the infringement of intellectual property rights and the actions taken to combat it, on World Anticounterfeiting Day, June 6.
The report, published annually, acts as a synthesis of the findings of the research carried out in recent years by the EUIPO, through the European Observatory on the Infringement of Intellectual Property Rights (Observatory), on the extent, scope, and economic consequences of Intellectual Property Rights (IPR) infringement in the EU.
- Contribution of IPR to the economy: The total contribution of IPR-intensive industries to the EU economy accounts for approximately 42 percent of gross domestic product (€5.7 trillion) and 28 percent of employment (plus another 10% in indirect employment effects in non-IPR intensive sectors).
- Negative impact on trade: IPR infringement in international trade in 2016 could reach as much as 3.3 percent of world trade. Up to 6.8 percent of EU imports, amounting to €121 billion per year, consist of fake goods.
- Losses in sales: Estimated lost sales in 11 sectors in the EU (directly in the industries being analyzed and across their associated supply chain), as a result of counterfeiting, went beyond €92 billion per year from 2012 to 2016.
- Incentives for counterfeiters: The main incentives for counterfeiters are the conjunction of abundant value, lenient sentences, and high returns on investment while making significant use of the Internet to distribute their products and to promote the distribution and consumption of illegal digital content.
- Incentives for consumers to purchases counterfeits: The incentives for consumers to purchase counterfeit goods lie in lower prices, easy accessibility, and a low degree of social stigma associated with such activities.
- Health and safety: These concerns are increasing as counterfeiting of everyday consumables such as cosmetics or medicines becomes more prevalent.
- Coordination of cross-border investigations and tackling new technologies that criminals are using to hide their locations and activities. In that regard, the evolution of the role of intermediaries to fight counterfeiting themselves appears of upmost importance. Indeed, the report says, “the rapid growth in e-commerce and the improvements in the speed and availability of high-bandwidth connections mean that intermediaries such as online retail platforms and video sharing sites are increasingly misused by infringers to market and distribute both counterfeit goods and copyright-infringing digital content.” The EUIPO is of the opinion that “those and other intermediaries, including providers of payment and logistics services, need to play a constructive role in the efforts to curb infringement of IP rights.”
- Closer coordination among EU institutions and bodies involved in the fight against IPR infringement; and
- Closer collaboration at the enforcement level and a simplified data exchange within the possibilities of data protection are essential elements in the effort to curtail this problem.
Responses and actions by the EUIPO, and the public and private sectors:
- Information: Providing rights owners with information on the changing infringement landscape. EUIPO’s support in that matter needs to be “reviewed and adapted to the complex and changing IPR infringement landscape,” the report says.
- Concrete enforcement actions: Working with Europol on wider responses to IP crime, including participating in the funding of a specialized IP crime unit.
- Action in third countries: Supporting the European Commission’s efforts to address the supply of counterfeit goods in non-EUcountries and to help small and medium-sized enterprises (SMEs) protect their IPRs.
- Public awareness: Providing citizens with information on the availability of legally accessible digital content and on the economic and social impact of purchasing counterfeit goods or accessing digital content illegally.
INTA advocates at the national and international levels to strengthen anticounterfeiting laws and enforcement, and to increase governments’ cooperation to eliminate linkages between counterfeiting and organized crime, as well as serious threats posed by counterfeiting to the health and safety of consumers, economies, and national security.
In addition, the Association supports the development and passage of legislation, regulations, and trade agreements throughout the world that increase national and international enforcement mechanisms against counterfeiting. Through the organization’s Anticounterfeiting Committee, the Unreal Campaign
Committee, and partnerships with governments and other associations, INTA emphasizes the importance of strong anticounterfeiting measures and increased awareness of the harms of counterfeiting.
European citizens voted on May 23–26 to elect the members of the European Parliament (MEPs) for the 2019–2024 term.
the election is over, there is still much to be determined. First, results are
not final at this stage (results, abstentions, and reshuffling and allocation
of seats may still change. In addition, the repartition per political group—a political
group consists of at least 25 members elected in at least seven member states—is
provisional (based on the 2014–2019 structure) since each national party has
until June 24 to decide in which political group they will sit.
General Overview: A Divided and Renewed Parliament with No Clear Majority
- A historic turnout: More than half (50.94%) of EU citizens cast ballots. The turnout marks the highest in 20 years, and reverses the steady decline in voter participation since the first EU elections were held in 1979.
- Important reshuffle: New members of the EU Parliament account for more than 50 percent of those elected (the exact number is not yet known).
- A vote throughout 28 EU Member States (including the UK) that put forward three main trends: a strong opposition between pro- and anti-EU sentiments; a strong call in favor of putting the environment as a top priority; and increased mobilization of youth.
- A more divided Parliament with no clear majority.
- What it means:
- Any majority in the new Parliament will have to go beyond the traditional left-right divide (which was already the case under the last term with the coalition between the European People’s Party, and the Progressive Alliance of Socialists and Democrats), and will need to include at least three groups, making it necessary to compromise and therefore harder to define a clear and strong political line.
- The anti-EU (Europe of Nations and Freedom, and Europe of Freedom and Direct Democracy) and Eurosceptic parties (European Conservatives and Reformists, Non-Inscrits) account for 175 seats, an increasing number though still far from a majority. Nonetheless, their solid representation offers them a strong voice and makes them a force to consider on any political and legislative issue.
- What to expect:
- A more polarized Parliament, given the lack of clear majority, which will be structured along three main lines: 1) political (the traditional divide right, left, far left, far right); 2) national (division per member state); and 3) pro-/anti-EU (the latter being new—and probably the prominent one for this term with the surge of anti-EU and Eurosceptic parties).
- A more “political” Parliament: The surge of anti-EU and Eurosceptic parties, though not with a majority, is expected. This will translate into a polarization of Parliament between pro- and anti-EU lines to the detriment of the policy and technical sides of issues.
- A “beginners” Parliament: The important reshuffle implies that more than half of the MEPs are newcomers with little to no expertise in Parliament.
- An expected mobilization and exposure on big policy issues, such as the future of the EU, budget, migration, and climate change, to the detriment of technical ones, including intellectual property (IP).
Changing EU Political Landscape Infiltrated by Eurosceptics?
The election of the new European Parliament—whose President will be elected on July 2–5—is only the beginning.
This year will also feature major changes in the other main EU institutions—the EU Commission, EU Council, and European Central Bank.
- Uncertainty as to the next President of the EU Commission. The process gets underway June 20–21, when a qualified majority of the EU Council (28 EU heads of state and government) will designate a candidate. The EU Parliament must then confirm the designee by a simple majority, which can prove difficult given the division in Parliament and the absence of a clear majority among groups.
- An EU Commission with a significant portion of anti-EU Commissioners? Each member state has to submit a candidate to serve as commissioner. Given the number of Eurosceptic governments in the EU (Italy, Poland, Hungary, Czech Republic, Romania, Bulgaria, etc.), the next Commission will most likely include a strong anti-EU contingent of Commissioners. The Commissioners will also then be subject to an individual parliamentary hearing in September–October followed by a vote of consent by Parliament on October 21–24. This could lead to the first fight between pro- and anti-EU MEPs who will try to vote down their respective opponents, with the hearings’ emphasis put more on politics than on policy issues.
- In December, a new President of the Council to succeed Donald Tusk (European People’s Party Poland) will be elected by the EU heads of state and government for a two-and-a-half-year term. The President of the Council is mainly tasked with representing the EU to the outside world and largely tackles big political and institutional issues.
- Finally, also in December, the EU heads of state and government, with the consent of Parliament, will designate a new President of the European Central Bank to succeed Mario Draghi (EPP, Italy) for an eight-year mandate.
The selection of these top positions will result from careful and significant political negotiations and compromises between EU heads of state and government, based on political lines national lines (Germany and France are the front runners), and gender (to increase the presence of women).
Intellectual Property: A Technical or Political Issue?
IP per se is not expected to be a priority during the new term. IP was not at the center of the political campaign for the EU elections, nor was it a priority under the last parliamentary term, with copyright being a notable exception. How IP will fare in the next term will depend on the commissioner’s profile (e.g., anti- or pro-EU? heavyweight or lightweight?), and whether IP is central in the next commissioner’s portfolio.
Which concrete IP issues could develop during the 2019–2024 term?
- The EU Designs legislative framework, following the public consultation that took place in early 2019.
- Among the other possible initiatives that could develop: the EU Directive on the enforcement of intellectual property rights (IPRED); an initiative on non-agricultural GIs; a review of the e-commerce directive; and future initiatives on artificial intelligence and blockchain.
Calendar and Next Steps
- June 20–21: European Council’s Summit designates its candidate for the President of the EU Commission
- June 24: Political groups notify their composition
- July 2–5: Inaugural plenary session of the 2019–2024 legislature
- Election of Parliament’s President by MEPs, the 14 Vice-Presidents, and the five Quaestors; and MEPs will vote on the number and composition of parliamentary committees
- July 15- 19: First parliamentary vote to elect the President of the European Commission
- Early September: 27 Commissioner-designates appointed by new President of the Commission and approved by Council
- Second half of September–October: Hearings of Commissioners-elect (in Brussels).
- October 21–24: Plenary session to vote on the confirmation of Commissioner-designate as a whole and President of the Commission provides inaugural address
- November 1: Start of the new Commission’s mandate (until October 31, 2024)
- December 1: Designation of the President of the European Council
- Appointment of the European Central Bank’s President