On November 22, 2017, Kenyah Pinnock and Lisa Chin-Forde, legal assistants at HSM IP Ltd., presented INTA’s Unreal Campaign to a class of 20 Creative Media and Business students between 15- and 16-years-old at the Cayman Islands Further Education Centre (“CIFEC”). CIFEC is a school dedicated to offering students continuing opportunities after Year 12 and is committed to inspiring all students to develop the knowledge, skills, and understanding to equip them for success in the wider world.
Kenyah Pinnock started off the presentation by explaining the concepts of trademarks and counterfeiting and providing some background on the Unreal Campaign and its purpose. “I gave the students examples of the different types of trademarks, including words, designs, trade get-ups, and nontraditional marks,” Kenyah said. “I impressed upon the students the importance of trademarks to both consumers and companies. I think that they found it most interesting to hear how under certain circumstances even the shape of a buildings can be registered as a trademark.”
Lisa Chin-Forde delivered the second part of the presentation, which focused on counterfeiting and engaged the students in a lively game of “Real vs. Fake.” The students actively took part in discussions about the concept of counterfeiting and the importance of observing and enforcing trademark and anticounterfeiting legislation. Lisa said, “All in all, we seemed to get through to the students the necessity of making smart purchasing choices as consumers and making sure that they are purchasing real branded goods rather than counterfeit goods. After we had delivered our full presentation, the students and teachers were kind enough to thank us personally for lending our time to educate them on such an important topic. It was a very rewarding experience.”
Owing to its heritage and geographical position, the Cayman Islands enjoys access to a vast number of brands from around the world, including those from the Caribbean, the United Kingdom, and the United States. At HSM, we passionately believe in the importance of IP education, so it was rewarding as well as fun to spend a morning raising awareness of the negative impact of counterfeiting on communities large and small. We look forward to delivering our next Unreal presentation and spreading the message even further!
Thank you to our 2017 sponsors for making this event possible. Learn about the 2018 sponsorship program today!
Sponsored by the law firm of Ladas & Parry LLP, the Ladas Memorial Award Competition was established in memory of the outstanding contributions to international intellectual property law made by the distinguished practitioner and author Stephen P. Ladas. This yearly award for academics, students, and practitioners interested in trademark law is presented in Student and Professional categories for a paper on trademark law or a matter that directly relates to or affects trademark law.
Authors must be enrolled as either full- or part-time law or graduate school students. For students outside the United States, university enrollment is acceptable.
Authors may be legal practitioners, business professionals, and/or academics. No restrictions regarding level of experience or years in practice apply.
Award winners will be announced in March 2018! Student winners receive US $2,500 each and professional winners receive a set of Stephen P. Ladas’ three-volume treatise. Each winner also receives a free registration to INTA’s 2018 Annual Meeting.
To complete an application, to submit your paper(s), and for the official rules, visit www.inta.org/ladasapply.
Email email@example.com with questions.
A number of amendments to the Common Regulations under the Madrid Agreement and Protocol entered into force on November 1, 2017.
What you need to know
Although the scope of amendments covers a wide range of topics, trademark owners and users of the Madrid System will benefit directly from three key changes:
1. Voluntary description of a mark (Rule 9)
Certain countries (such as the United States and India) require applicants to provide a description of their mark in an international trademark application (Form MM2). This may be the case where the trademark is represented in “non-standard” or non-Latin characters. Applicants who fail to provide the required description can find themselves dealing with an unexpected provisional refusal.
To help avoid the risk of this type of provisional refusal, you now have the opportunity to include a voluntary description of your mark in an international application or subsequent designation.
This means that an international application:
- must include, if required by the office of origin, the same description of the mark contained in the basic application or registration (i.e., in the “basic mark”); and
- may also contain any other description of the mark (a “voluntary description”).
Tip! A voluntary description can be added in a later subsequent designation only if one was not already included in the original international application or a previously recorded subsequent designation.
International application Form MM2 and subsequent designation Form MM4 have been modified to allow you to include up to two descriptions for your trademark. These updates were available as of November 1, 2017.
To about find out more about the requirements for the description of a mark in your target market(s), use the Member Profiles Database
2. Appointment or cancellation of a representative (Rules 3, 25, and 32)
Beginning next month, each time you officially appoint
or cancel a representative for your international trademark registration (i.e., each time a representative is recorded in the International Register in connection with your international trademark registration), WIPO will notify the IP offices in the countries/regions covered by your registration and publish the appointment or cancellation in the WIPO Gazette
3. Cancellation of subsequent designation of the United States caused by irregularities with Form MM18 (Rule 24(5)(c))
Remember: if you use the Madrid System to expand the scope of your international registration to cover the United States, you are required to file an additional form—Form MM18 (Declaration of intention to use the mark)—with your subsequent designation request.
If an irregularity that relates only to Form MM18 is found during WIPO’s examination, and this irregularity is not remedied within three months, only the designation of the United States will be cancelled. Any other countries/regions included in your request will no longer be affected.
The changes outlined above, as well as additional amendments aimed at assisting the IP offices of Madrid System members, will be available in an upcoming Information Notice
Questions or comments?
In the last three years, INTA has become increasingly engaged in economic research. In 2015, INTA began making inroads in this area, commissioning a study on the economic impact of trademark-intensive industries in five countries in Latin America—namely Chile, Colombia, Mexico, Panama, and Peru. Throughout 2016–2017, INTA, through the work of the newly formed Impact Studies Committee, commissioned and launched three other studies:
- Impact of Anticounterfeiting to Global Trade (February 2017);
- New gTLD Cost Impact Survey (June 2017); and
- The Economic Contribution of Trademark-Intensive Industries in Indonesia, Malaysia, the Philippines, Singapore, and Thailand (August 2017).
These studies and reports have provided valuable information that has assisted INTA in engagement with the global business, academics, and policy community globally. To download copies of these reports, at no additional cost, visit INTA’s Impact Studies’ page.
In May 2017, INTA launched its 2018–2021 Strategic Plan at the Annual Meeting in Barcelona, Spain. Reinforcing consumer trust is one of INTA’s three Strategic Directions. More specifically, this Strategic Plan envisages that one of the ways to reinforce consumer trust is through economic studies. This firmly entrenches INTA’s need and commitment to research.
In an effort to enhance and grow this strategic direction, INTA’s 2018–2019 Chair of the Impact Studies Committee, Phil Cox, and Sheila Francis, Director of Strategic Partnerships and Economic Research, attended the 2017 IP Statistics for Decision Makers (IPSDM) conference in November in Mexico City, Mexico. The conference was organized by the Organization for Economic Cooperation and Development (OECD) and the Mexican Institute of Industrial Property (IMPI), in cooperation with the United States Patent and Trademark Office and the Canadian Intellectual Property Office (CIPO).
As a first-timer at the IPSDM conference, INTA had the unique opportunity to dialogue with over 100 IP economists, academics, and the global research community about the crucial role of quantitative and qualitative data. Panel discussions focused on how data is driving organizational goals forward by guiding decision makers in diverse sectors. Further, candid discussions brought to light key information needs and possible shortcomings that participants were encouraged to consider in greater depth in 2018.
This conference also provided opportunities for IP offices to share information about current data sets and their use in strengthening of intellectual property frameworks. Other topics that were discussed at the conference included the following:
- IP and the digital transformation of economies and societies
- IP, big data, and artificial intelligence
- IP and Industry 4.0
- IP valuation and IP transactions
- IP and trade: The role of intellectual property in global value chains
- Trade secrets and IP
- IP bundles, strategic behaviors, and competition in global and digital markets
- The economic impact of IP system harmonization
- Patent policy optimization
INTA looks forward to continuing its participation in the IPDSM conference and plans to commission new studies on brand perception by young consumers, the impact of artificial intelligence on trademarks and the trademark profession, and other pressing issues in 2018 and beyond. For more information about INTA’s impact studies and research projects, contact Sheila Francis at firstname.lastname@example.org.
On October 11th, the INTA Academic Committee partnered with the Intellectual Property Law Society at the Florida State University (FSU) College of Law to host a career panel discussion for Tallahassee-area law students. Panelists included longtime INTA member Crystal Broughan, a shareholder at Marks Gray, P.A. in Jacksonville, Florida; longtime INTA member, Joe Englander, a partner at Peretz, Chesal & Herrmann, P.L. in Miami, Florida; and Carter McMillan, who serves as general counsel for the UberOps company in Tallahassee, Florida. INTA Student Ambassador Isabelle Campbell moderated the Career Panel.
The panelists spoke openly to FSU law students who have expressed an interest in intellectual property law, touching on topics such as advice the panelists wish they had been given when they were beginning their practices, the importance of finding and developing a mentor, the significant role that INTA membership has played in their ability to network with other IP practitioners, and how to make the most of the law school experience.
A networking reception followed the event, and the student attendees were provided an opportunity to speak with the panelists and ask specific questions. All panelists expressed an interest in maintaining a relationship with FSU’s IP law society, and the students who attended came away with great enthusiasm for the International Trademark Association. One lucky attendee—second-year law student, Kathryn Judson—was even selected, by raffle drawing, as the recipient of a one-year student membership in INTA.
On November 30th and December 1, 2017, the European Union Intellectual Property Office (EUIPO) hosted the 6th Annual Meeting of the TM5 at EUIPO headquarters in Alicante, Spain. The TM5 is a collaborative initiative of five major trademark offices: the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the EUIPO, China’s State Administration for Industry and Commerce (SAIC), and the United States Patent and Trademark Office (USPTO). The TM5 partners adopt joint projects and exchange information on trademark-related matters, and they hold an annual fall meeting. On the second day of the meeting, the TM5 welcomed representatives of their invited user groups to engage in a day-long interactive user session with TM5 partner representatives. INTA’s USPTO users were represented at the TM5 2017 Annual Meeting by Elisabeth Escobar of Marriott International, Inc., and INTA’s EUIPO users were represented by Kerstin Gründig-Schnelle of Lichtenstein, Körner & Partners mbB. Elisabeth is the current chair of the TM5 Subcommittee of INTA’s Trademark Office Practices Committee, and Kerstin will serve as chair of the TM5 Subcommittee during the upcoming 2018–2019 term.
On October 24, 2017, the European Union Intellectual Property Office (EUIPO), through the European Observatory on Infringements of Intellectual Property Rights, released the second phase of a study on ‘online business models infringing intellectual property rights’ (IPR). The study was commissioned in 2015, and was divided into two phases:
- Phase 1, a qualitative study aimed at providing an overview of the different business models used to infringe IPR online; and
- Phase 2, a quantitative study, where one or more important specific business models and strategies would be researched in detail.
Phase 1 was released on the EUIPO website on July 12, 2016, and can be found on its website here. Phase 1 focused solely on a study carried out in Denmark that focused on a detected pattern of a specific use of the domain name system (DNS) taking place on the Danish country code top-level domain (ccTLD) .dk was identified. The aim of this study was to analyze patterns behind the way different e-shops were set up online. The study found that e-shops suspected of marketing infringing goods were set up using domain names that had been previously used online. When these domain names were available for re-registration, the infringing entities would systematically re-register the name and set up their online store. The results of this study indicated that infringers were likely conducting the same re-registration tactics in other European countries. Based on this conclusion, the EUIPO commenced Phase 2, which focused on four European countries with large e-commerce sectors: 1) Sweden; 2) Germany; 3) the United Kingdom; and 4) Spain.
The research conducted showed that the same pattern previously found in Denmark also occurred in Sweden, Germany, the United Kingdom, and Spain. Out of 27,870 e-shops that were suspected of marketing trademark-infringing goods in these four countries, 21,001 of these shops (75.35%) were detected using domain names that had previously been used to direct Internet traffic to websites that had no relation to their prior use. Nonetheless, the research also seems to indicate that what on the surface seems like thousands of unrelated e-shops are likely to be one or only a few businesses marketing suspected trademark-infringing goods. Some other conclusions of the study include:
- product category: shoes are the product category mainly affected in 67.5% of the suspected e-shops and clothes are the product category mainly affected in 20.64%;
- software used: 94.6% of the detected suspected e-shops used the same specific e-commerce software;
- registrars: 40.78 % of the detected suspected e-shops in Sweden and the United Kingdom were registered through the same registrar.
The findings of this study do not include any policy recommendation but are rather aimed at providing material to the law enforcement community and Internet intermediaries, as well as trademark holders and consumers, in order to understand the scale and traits of this business model.
The full report can be found here.
As communities around the world gear up for the shopping frenzy associated with the season of giving and receiving, consumers are turning to brands for more than just the best source for the perfect holiday gift: consumers are also searching for brands that mirror their commitment to contributing to the greater good. As a result, Corporate Social Responsibility (CSR) as a means of accelerating social and environmental progress has become a core business strategy central to many successful brands across a spectrum of industries.
The idea of holding brands accountable to higher standards is emerging as an increasingly universal priority for consumers across the globe. According to the September‒October 2017 Harvard Business Review, “Consumers increasingly expect brands to have not just functional benefits, but a social purpose.” A 2014 international survey by Cohn & Wolfe asked consumers what they valued most in brands, and found that 87% of global consumers consider it important for brands to “act with integrity at all times,” ranking authenticity above innovation (72%) and product uniqueness (71%).
As sustainability, better business practices, and CSR become a part of consumers’ everyday vernacular, brands are scaling up their efforts to prioritize operating responsibly. Today, a brand is asked to be more than just a logo or its intellectual property; a brand must define itself as an organization, and CSR initiatives have become the heart and soul of this definition. CSR is such a hot topic that the International Trademark Association (INTA)—a global organization of more than 7,000 trademark owners and professionals from more than 190 countries—is devoting a two-day conference in Berlin on November 30‒December 1 to the exploration of CSR and its impact for brands and consumers.
When it comes to integrating sustainable business practices with brand values, TOMS Shoes, Inc. exemplifies a company that is improving lives through business. The TOMS business model addresses needs that advance health, education, and economic opportunity for children and their communities around the world. Its initiative began with this promise: for every pair of shoes purchased, a pair of shoes would be given to a child in need. Today, the program has expanded beyond shoe provision so consumers have helped make an impact in other areas as well. For example, as a result of shoe purchases, 2 million children have not experienced hookworm and access to maternal health services has increased by 42%.
While the benefits are undeniable, CSR can also present a host of challenges that brands will need to overcome to ensure long-term and sustainable integration into a brand’s identity. Specifically, at a fiscal level, brands will need to demonstrate that CSR efforts can be profitable. Brands will also need to ensure mechanisms are in place to maintain transparency and uphold accountability. On a related note, accurately communicating impact while ensuring transparency will be critical on rapidly evolving communications platforms like social media. Finally, the long-term success of CSR will hinge on overcoming myths and misperceptions that these efforts are just marketing buzzwords and a tool designed for turning heads and creating hype.
Despite these challenges, this is just the beginning for CSR as more brands recognize that it is possible to “do good and do well”—building a profitable business while simultaneously committing to reducing the negative footprint of doing business. The mutual benefits of CSR for both brands and consumers are vast. Efforts to advance social and environmental well-being can enhance a brand’s value, strengthen consumer trust, and build brand loyalty. As consumer-driven demand for CSR continues to grow, we can expect to see an increasing number of brands incorporating these principles into their mission. As the “do good, feel good” effect crescendos for consumers during and even beyond the holiday season, how rewarding it is to see brands of all sizes following suit and investing more into achieving social good.
About Jessica Murray
Jessica Murray is Director of Intellectual Property and Corporate Social Responsibility at TOMS Shoes, Inc., USA, which is a member of the International Trademark Association (INTA).
This Blog post was co-authored by Tugce Guven.
On September 27, 2017, the Ministry of Customs in Turkey held its final seminar in the project started in March 2016 titled “Protection of IP Rights Before Customs.” In its final meeting, Ms. Evgeniya Tabova, team leader of the project and the European Union Delegation, and Mr. Cenap Asci, Undersecretary to the Ministry of Customs, summarized the benefits of the project as a result of the cooperation of the Turkish Ministry of Customs and European Union. A strong emphasis was made on the importance of the joint activities that resulted as part of the cooperation and the impact that the new Turkish IP Code. Finally, Mr. Kenneth Wright, an expert on the European Union, presented on “The Contribution of IPR to World Economies and the Damages of Counterfeiting.”
Following the three opening speeches, a panel discussion focused on different aspects of Turkish trademark law. Topics included: the advantages and challenges of registration to the market; brands and the Turkish economy; the enforcement of rights and fighting against counterfeiting; and future plans and expectations. Esteemed panelists included high-level officers from top Turkish firms in a variety of industries: Mr. Mustafa Kucuk, as CEO of LC Waikiki Magazacilik Hiz. Tic. A.S. (LC Waikiki is a firm acting in the “ready-made clothing” sector); Mr. Burak Ovunc, as CEO of FLO Magazacilik ve Pazarlama A.S. (FLO is a firm acting in the “footwear” sector); Mr. Tankut Turnaoglu, as CEO of P&G (Procter & Gamble) in Turkey; Mr. Ahmet Yanıkoglu, as CEO of A.S. Watsons Group (Watsons is a firm acting in beauty and care retail sector); Mr. Cemil Tokel, as Vice Chairman of the Board of Directors, Pasabahce Cam San. ve Tic. A.S. (Pasabahce is a firm acting in the glass sector). These esteemed speakers spoke about their companies from past to present, emphasized the importance of their companies’ brand values, and discussed different strategies used to combat counterfeiting.
Mr. Bulent Tufenkci, Minister of Customs and Trade, emphasized the importance of IPR and discussed the issue of geographical indications in Turkey. Mr. Tufenkci stated that customs will not tolerate any counterfeiting in Turkey and that they are determined to combat counterfeiting. Mr. Tugenkci emphasized the fact that the brand value of the country can increase as long as there is a strong fight against counterfeiting and piracy. Mr. Tufenkci also shared the seizure statistics of Turkey and how they have improved since 2014. Mr. Tufenkci stated that in 2014, there were 196 seizures; in 2015, there were 431 seizures; in 2016, there were 447 seizures. Mr. Tufenkci expects the number of seizures to continue to increase in 2017.
The project was launched on March 7, 2016, and was split into two components: 1) training activities and 2) awareness activities. Under component 1, study visits were conducted to the United Kingdom, Portugal, and Hungary. During these visits, 28 representatives of the customs administration were familiarized with the experiences of their EU counterparts in implementing the EU customs legislation. Additionally, under component 1, three regional seminars were held. The first, held in November 2016, focused on the “Intellectual and Industrial Property System in Turkey-Achievements and Challenges”; the second, held in March 2017, focused on “New Law on Industrial Property from the Perspective of Enforcement of IP Rights”; and the third and final seminar, held in July 2017, focused on “Current Trends in Counterfeiting and Piracy.” In total, there were over 380 customs officers, police officers, judges, prosecutors, and right holders who attended the seminars. Finally, under component 1, eleven service training events were organized around Turkey, which included: Ankara, Istanbul, Bursa, Mersin, Antalya, Izmir, Trabzon, Gaziantep, Mardin, Sakarya, and Edirne Customs. In total, 550 customs officers were trained on IPR enforcement as a result of these trainings.
Under the second component, two IPR seminars were held. The first was in December 2016 in Ankara, which focused on “Intellectual and Industrial Property Rights Protection System in Turkey,” and the second was held in September 2017 in Istanbul on “Trademarks in Turkey and Their Role for the Turkish Economy.” Over 500 representatives of government institutions, such as the Ministry of Culture and Tourism, the Ministry of Interior, the Ministry of Food, Agriculture and Livestock, as well as judges, prosecutors, and representatives of nongovernmental organizations and private sectors attended the seminars and discussed various IPR issues. In an effort to raise awareness, 3000 posters and 10,000 brochures targeting various societal groups were published and distributed.
INTA’s participation in the project and support of the efforts of the EU and Turkish Ministry of Customs provided a good opportunity to increase collaboration with the customs
I recently had the distinct pleasure of presenting INTA’s Unreal Campaign sessions at Felsted School.
Felsted is a large independent/private school in Essex, England, about 60 miles from London. On September 30, I presented the Unreal Campaign program to the school’s 17- to 18-year-olds (about 250 students), and on October 14, I made the presentation to the 15- to 16-year-olds (again, about 250 students). My presentations were part of a school program that engages outside speakers to discuss issues considered to be of relevance to the students in the context of helping them become more rounded individuals with a broader outlook than they would gain from textbooks alone.
Astute readers will have already noted that September 30th and October 14th were both Saturdays. Yes, these kids have to go to school on Saturdays! The students go to their classrooms in the morning and take to the sports fields in the afternoon to take on other schools at rugby, hockey, soccer, etc.
Though I had the pre-lunch slot, when one might expect the students to be getting restless, anticipating their usual sports activities after lunch, I was very pleasantly surprised with how attentive and engaged they all were. I briefly introduced them to the fundamentals of trademarks, to INTA, and to the Unreal Campaign, before launching into an explanation of counterfeits and the damage they can cause. This was the point at which I was expecting the students to push back. I anticipated that several of them—emboldened in such a large crowd—would be prepared to challenge whether counterfeiting is always “wrong,” in particular in those cases where they know that what they’re buying is counterfeit and thus they are not themselves deceived or conned. Perhaps surprisingly, I was confronted with very little argument. I genuinely believe that the students learned that even such cases still amount to theft, and that in any event there are much wider repercussions than just the impact on the rights holder and the purchaser. We explored the very simple but fundamental questions: Where do you think these goods were manufactured? And where do you think the money goes?
Having (hopefully) won the argument and convinced them that counterfeits are bad, we moved on to discuss some of the ways to try to avoid purchasing counterfeits by mistake. This inevitably led to a discussion about purchasing on the Internet and some of the telltale signs that the goods advertised are likely to be fake. Judging by their reactions, I think much of this was new to the students.
My recounting of my “war stories” turned out to be a treat. It certainly helps to have spent many years running around some far-flung places to carry out raids on counterfeiters. Mostly, these operations are fairly turgid affairs, but just using the word “raid” in front of a group of teenagers was enough to grab their attention. What most engaged them was the (true) story of the factory in Thailand that made counterfeit products, where not only did much of the labor force consist of young children, but where some of them had broken legs—a punishment meted out by the factory owner if any of the children tried to escape. A stunned silence followed this story.
What I found most interesting was the level of existing knowledge about the availability of counterfeits. Many hands shot up when I asked if anyone had seen or purchased counterfeits. Most of the students had seen (and many had purchased) cheap fakes from beach vendors in tourist hot spots around the Mediterranean. But none were prepared to put their hand up when asked if they would purchase again! So perhaps I got through.
If any of you has an opportunity to lead an Unreal Campaign presentation, I would highly recommend you do it. I feared a hard time from a hostile audience, but my experience was quite the opposite. Instead, I left on both occasions feeling like I’d actually made a difference. Bring it on!! More please.
To learn more about the Unreal Campaign, visit inta.org/unrealcampaign. Thanks to our 2017 sponsors for making this possible.