From December 10 through 11, INTA’s 2018 Middle East and Africa Conference: Innovation, Investment, and IP in Dubai, United Arab Emirates, will examine the most pressing issues for intellectual property (IP) owners in these vast and developing regions. The two-day conference will feature an inspirational keynote from athlete Michael Haddad, whose paralyzing jet ski accident at age six did not stop him from winning three world records in walking, climbing, and snowshoeing, and ultimately led to breakthroughs in spinal cord research and advancements in exoskeleton technology. The conference will also include sessions focused on innovation as an economic growth-driver, cross-border enforcement, counterfeiting, regulatory challenges, and harmonization.
Jon Parker (Gowling WLG, United Arab Emirates), a member of the Middle East and Africa Conference Project Team, will be moderating Session 3—State of Play: The Growing Need for Harmonization, and Session 6—Balancing IP Rights and Regulatory Restrictions. Mr. Parker spoke with the INTA Bulletin
about what these sessions will address and why brand owners should be focused on this region of growing commercial importance.
What will the panelists in Session 3—State of Play: The Growing Need for Harmonization address, and how do you think their various perspectives will be useful for attendees?
I am truly honored to be moderating a panel consisting of national trademark offices (the United Kingdom Intellectual Property Office and the South Africa Companies and Intellectual Property Commission), a Middle-East‒based IP specialist from the United States Patent and Trademark Office (USPTO), and a representative from the World Intellectual Property Organization (WIPO). It is an extremely powerful panel. The panelists will look to cover some of the harmonization projects each have worked on, or are working on now. This will include an outline of the Trademark Convergence Programme in the European Union, and similar harmonization projects in Africa. It will also include an update on the Madrid Protocol, particularly in the MEA region (the Middle East and Africa). We will no doubt find that, with the approach of Brexit, we may hear how the United Kingdom intends to stay harmonized or re-harmonize with its European neighbors and the harmonization challenges the Brexit decision has posed to the officials.
What are some of the biggest challenges remaining with respect to achieving global trademark harmonization?
Cultural differences can play a significant role in harmonization, as can safeguarding the national interest/national identity. For example, many countries in the Middle East and Africa require legalized supporting documents, which can generate government revenues in countries where taxes are low or do not exist. As such, there are different competing needs upon IP offices within their own countries, as well as in the wider region or on a global scale, that need to be considered in any harmonization projects. We will touch on harmonizing treaties such as the Singapore Treaty on the Law of Trade Marks.
We find that, even within the region, practice and requirements can vary significantly from one country to another. The question for harmonization is do we adopt the "lowest" setting or do we adopt the "highest" setting, or something in between? If you are looking at countries where one has a fairly light touch for inherent registrability, for example, alongside another which has a robust process, which is better? If you are a brand with a nontraditional mark, you would prefer the lighter touch system where you could cost-effectively obtain protection, over and above a regime where the bar is set very high and there is no guarantee of protection even with extensive evidence of use. Against that, you could argue that in obtaining a registration through a tougher regime, such a registration should be afforded more evidentiary weight. But in reality, does that sway the enforcement official, or do they simply see the registration certificate? These are the key questions.
There are also times when you may lose out due to harmonization. A local example of this is that, once Oman fully implements and adopts the Gulf Cooperation Council (GCC) law, there are a number of areas in the current local law that will no longer be available, such as “honest concurrent use,” which allows similar marks to coexist. While harmonization is generally for the greater good, we can sometimes lose some useful parts of local law and practice like this along the way; however, harmonization is still to be lauded and something we should look to achieve, even if it may come at a “cost” at the national level in some respects.
What are the main challenges for IP owners operating in a global marketplace that isn’t harmonized?
Clients are frustrated that the lack of harmonization can lead to additional costs for them in processing and obtaining registered rights. They may be able to easily acquire rights in one country but run into significant issues in another. Also, many companies can be deterred from filing in order to save or manage costs, but are then in a position where their rights have been hijacked by third parties. In some cases this has led to criminal actions being brought against the true trademark owners by third parties who have misappropriated the trademark.
Often, there are frustrations due to the cost and delays in putting in place supporting documents for filings, where in other countries applications can simply be filed. By moving towards harmonization, such as through the Singapore Treaty, this could assist significantly and see an upturn in applications being filed.
What are some examples of successful harmonization in the Middle East/Africa so far, and are there any upcoming plans to improve harmonization in the region?
We have already seen the role of the GCC Trade Mark Law—a harmonizing law for the six member states of the GCC—in three of the six GCC member states: Bahrain, Kuwait, and Saudi Arabia. We are still waiting for the law to come into force in the remaining three member states: Oman, Qatar, and the United Arab Emirates.
What will Session 6—Balancing IP Rights and Regulatory Restrictions address?
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As we see more regulatory requirements across certain product or service areas, companies now need to take these into account alongside their IP strategies. It will be really interesting hearing how companies are addressing this and what they have been doing so far to balance the potentially competing needs.
Are there other sessions you’re looking forward to?
I am particularly keen to hear the keynote address by Michael Haddad. He is an inspiration to all and I am sure we will all benefit from his wisdom and battles against the challenges life has thrown at him. What a wonderful way to start this conference.
What do you think the value is for INTA members in attending the conference overall?
For some time, the region has been growing in commercial importance for local and international brand owners. Many international brand owners are looking to the region for growth and so it is key that they have their IP rights in place, and that the region provides a framework for enforcement of those rights in order to safeguard the continued commercial investments.
The value for INTA members—whether they are corporate or associate members—is that they will be able to see and hear the significant steps that have been and will continue to be undertaken to help improve practices and the IP framework in the region. They will also see and hear about the steps being taken by officials to educate themselves and the public in relation to IP rights and the dangers posed by counterfeits.
And finally, it will allow people to revisit, or visit for the first time, this wonderful city I have had the pleasure to call home for more than 12 years. While the IP world has seen significant progress and changes since 2013, I think it is fair to say that Dubai has itself changed even more, and continues to do so!
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