INTA Bulletin

March 15, 2016 Vol. 71 No. 5 Back to Bulletin Main Page

INTA's Mumbai Corporate Workshop: Preparing for India’s Emergence as a Global Economic Powerhouse

INTA’s Strategic Brand Management Workshop, held on March 2 at the St. Regis hotel in Mumbai, India, boasted a packed house of 115 attendees from Indian and international companies and law firms, including representatives of 50 corporations.

On the morning of the workshop, INTA’s Annual India Delegation had a very productive meeting with senior officials of the Mumbai Trademarks Registry, where a number of issues were discussed and concrete action points decided. A detailed account of this meeting is available here

The Delegation’s meeting at the Trademarks Registry was followed by an INTA-hosted prospective corporate lunch, which gave potential corporate members a chance to interact with and get to know the Association’s 2016 President, Ronald van Tuijl, in an informal setting.

The workshop itself was held that afternoon, and consisted of two main sessions. Mr. van Tuijl kicked things off by providing an overview of INTA, highlighting the diversity of its members. He also introduced the new “umbrella” Regular + membership exclusively available to Regular members.

Protecting Trademarks
Mr. van Tuijl moderated the first session of the day, “Trademark Protection in India & Attractive Export Markets.” He emphasized the importance of transitioning from a mindset in which IP is seen as a cost to one in which it is seen as an investment and he encouraged Indian companies to take the opportunity to shape international public policy with respect to trademarks.

Brenda M. Wood Kahari (B W Kahari, Zimbabwe) explained to the audience the best routes of trademark protection in Africa, emphasizing the increasing bilateral relations between India and various regional trade organizations in Africa, and also provided insights into the importance of corporate social responsibility and mobile app presence for enhanced brand recognition in Africa.

Hemant Singh (Inttl Advocare, India) then took the audience through the most important trademark judgments of 2015–2016, specifically Supreme Court judgments dealing with jurisdiction, prior user versus registered user and conceptual similarity of trademarks. 

Ghaida’ Ala’ Eddein (Saba & Co., Jordan) spoke about trademark law and practice in the Middle East and North Africa (MENA). She highlighted the dichotomy between import and trademark filings from India into the UAE by providing statistics showing the average import value of 14 percent and trademark filings of just 2.9 percent for the year 2013. She provided information on the trademark law and infrastructure in place in the MENA region, including a robust customs recordal and enforcement system in Jordan, and encouraged Indian companies to consider Jordan as a potentially rewarding market.

During the Q&A portion of the session, Dr. Mohan Dewan (RK Dewan & Company, India) pointed out that perhaps one of the reasons for low filings in Jordan and other Middle Eastern countries is the mandatory requirement of document legalization—a long and costly process involving numerous formalities—and is a major deterrent for many clients. This statement caused many heads in the audience to nod in agreement. He went on to suggest that perhaps INTA could step in and take up this issue to support a policy move towards more liberal and less tedious practices.

Cross-Border and Domestic Enforcement

The next session, “Tools for Cross-Border and Domestic Enforcement of Trademark Rights,” was moderated by Mr. Singh and featured in-house counsel sharing their anticounterfeiting experiences. The audience chimed in throughout the discussion, adding their observations and knowledge. Pulin Kumar (adidas Group, India) and Florence Wong (adidas Group, Hong Kong) shared the success story of adidas’ “small-parcels program,” in coordination with courier companies and post offices, in tackling counterfeits. They addressed the importance of working with other brand owners and sharing intelligence and provided many useful tips for refining search criteria to investigate counterfeit products.

Dev Bajpai (Hindustan Unilever Limted, India) touched upon the need to educate consumers about respect for intellectual property rights and suggested that counterfeiting should be treated as a national issue comparable to money laundering. He also highlighted the innovative programs being implemented by Hindustan Unilever Limted (HUL) to spread awareness about counterfeits, such as holding debate competitions in schools and street plays acted out by HUL employees, particularly in poorer areas.

Farokh Bhiwandiwalla (One-Red India Licensing Pvt. Ltd, India) led the audience through the unique problems faced by companies that are highly vigilant and frequently conduct anticounterfeiting raid actions. Some notable examples include the selling of counterfeit products under a code name (for example, “Philips” products being sold under the name “Classic”) and the execution of delivery of such goods on bank holidays. Murlidhar Balasubramanian (Castrol India Limited, India) concluded the session with a talk on anticounterfeiting measures related to packaging and dealing with repeat offenders.

Tackling Problems Early through Unreal
Dr. Dewan concluded the workshop by introducing the audience to INTA’s Unreal Campaign to educate teenagers (ages 14-18) about counterfeit products, and on behalf of the Unreal Campaign Committee, requested attendees’ assistance in providing samples of real versus fake products, financial sponsorship and donating their time to this cause.

Closing and Cocktails
Following closing remarks, attendees gathered for a networking cocktail reception, where they mingled and caught up in a relaxed atmosphere. The event was very well received, with a number of participants expressing their desire to bring along more team members to the next INTA-hosted workshop.

The workshop was part of a three-day delegation led by INTA President Ronald van Tuijl and INTA CEO Etienne Sanz de Acedo. The delegation included a series of high-level meetings. A detailed account of the delegation is available here.

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.

© 2016 International Trademark Association