INTA Files Amicus Brief in Patent Case with Broad Implications for Trademark Litigants

Published: February 15, 2018

Brexit: Informal Talks on IP Begin as INTA Continues Advocacy Efforts

As the months pass in Brussels, Brexit remains the core issue of concern. The negotiations have finally moved further: an agreement in principle has been reached between the European Union (EU) and the United Kingdom (UK) to move from the first phase (the “divorce”) of the Brexit negotiations to the second (the “future relationship”). While the first focused on priority issues only-i.e., the bill, the fate of EU, and UK citizens living in the UK and the EU, respectively, as well as the border with Ireland, the second should focus on all remaining issues, including agriculture, customs, and financial services. Intellectual property (IP) was not among the priority issues so far, leaving brand owners and practitioners without clarity as to what will happen to IP after Brexit actually occurs. Nonetheless, IP will now be included in the discussions in the second phase: informal talks between the two sides are reported to be ongoing, while formal discussions should take place in late March-early April, once the EU adopts the negotiating guidelines for that second phase of the negotiations during a summit on March 22-23.

In that context, INTA, through the leadership of the Europe Representative Office, has been mobilized from the start to provide its membership with the latest information affecting businesses that own or rely on IP and to raise awareness about the importance of IP in the negotiations. Concretely, the creation of INTA’s Brexit Rapid Response Group and Brexit Cross-Committees Task Force led to, first, the adoption, as early as March 2017, of INTA’s Brexit Brands Toolkit: Preparing Brand Owners for Brexit, a guide for companies to anticipate key challenges. This was followed by the adoption by INTA’s Board of Directors in November 2017 of a position paper, which provides concrete recommendations on issues of particular concern to brand owners and practitioners. In particular, INTA is advocating for four core principles the EU and the UK need to safeguard during Brexit negotiations and when Brexit becomes effective: minimum disruption of trade; minimum costs; maximum retention of rights; and maximum transparency and legal clarity.

INTA will meet with UK government and UK Intellectual Property Office officials later this month, in the margins of the INTA Designs Conference. Likewise, the Europe Office will stay in close contact with the EU negotiating team to promote its position paper and advocate its recommendations.

Learn more about the latest on Brexit and INTA’s related activities in the dedicated Topic Portal on INTA’s website.

INTA Addresses Challenges of Online Counterfeiting and Bad Faith Registrations at EU-China High Level IP Business Meeting

On January 22, 2018, Lucy Nichols (GSK, UK) represented INTA at the EU-China high-level IP business meeting organized by the European Commission in Brussels. The Chinese delegation was led by the Deputy Director General at the Chinese Ministry of Commerce, YE Jun, who was accompanied by representatives from Chinese ministries, courts, and agencies. Ms. Nichols presented two specific issues of concern for brand owners in China: online counterfeiting and bad faith trademark registration. This presentation was followed by a constructive exchange with the Chinese delegation.

INTA Advances Cooperation on Anticounterfeiting-Related Activities with the Italian Patent and Trademark Office

On February 1, INTA had a fruitful exchange with the Anticounterfeiting Unit of the Italian Patent and Trademark Office (DGLC-UIBM) on potential activities under the renewed memorandum of understanding (MOU) between INTA and DGLC-UIBM. INTA was represented by Marie-Laure Bonnafous (Fendi, Italy, Member of the Board of Directors); Laurence Morel-Chevillet (Bulgari, Italy, member of the Anticounterfeiting Committee); and Eugenio Cancedda (Perfetti, Italy).

Topics discussed included (1) online enforcement on e-commerce platforms and social media, a priority for the DGLC-UIBM, where INTA representatives presented the newly updated INTA best practices guide, “Addressing the Sale of Counterfeits on the Internet”; (2) common actions for 2018, including the possibility to host a joint IP Policy Dialogue in Italy; the development of trainings with INDICAM (Istituto di Centromarca per la lotta alla contraffazione), Guardia di Finanza, and the Roman Police; and the hosting of Unreal Campaign events in Italy, among other subjects. INTA looks forward to continuing its work with the Italian office on the implementation of the MOU.

INTA Provides Input to EUIPO on How to Address Fraudulent Invoices

INTA continues to stay engaged on the issue of fraudulent invoices. On January 31, INTA submitted its replies and suggestions to a questionnaire by European Union Intellectual Property Office (EUIPO) concerning a potential common list of senders and examples of misleading invoices. The questionnaire was drawn up to devise a concept plan to implement the Joint Statement on an Expert Cooperation Charter in the Area of Anti-Scam, to which INTA subscribed last September. Twenty-three national offices, seven user associations, WIPO, the European Patent Office (observer), and Europol (observer) have accepted EUIPO’s invitation and subscribed to the Joint Statement. EUIPO expects this engagement from many participants to allow the Anti-Scam Network to launch concrete activities to address and fight fraudulent solicitations that constantly mislead users.

Need a Demonstration (or Refresher) on INTA’s Online Legal Resources?

Is a jurisdiction first-to-file or first-to-use? Is proof of use required to renew a trademark? Is opposition available, and if so, is it pre- or post-grant? What are the advertising restrictions on geographical indications, certification, and collective marks in a given jurisdiction?

The answers to these and other questions are available in the Searchable Practice Guides on the INTA website. These guides are a free-of-charge benefit that comes with your INTA membership, and can be accessed by all individuals working at a member location.

The Europe Office is happy to visit members in and around Brussels for a demonstration of INTA’s legal resources, and to offer a demonstration via Skype to any members in Europe, upon request.

On January 11, Milesh Gordhandas, Advisor, Europe Office, visited INTA member firm Valipat (Brussels, Belgium) to give a demonstration of these resources, upon their request. The Europe Office is happy to visit members in and around Brussels for such a demonstration, and to offer a demonstration via Skype to any members in Europe, upon request.

Looking ahead: INTA Visits London for Design Conference in February

Protecting design assets in a global marketplace is becoming increasingly important to companies of all sizes, as will be demonstrated during INTA’s 2018 Designs Conference: The Power of Design, taking place February 26‒27 in London, United Kingdom. The conference will bring together IP offices, leading businesses, and legal experts who will discuss with the audience how to harness the power of designs and navigate the challenges of obtaining valid and enforceable protection.

Learn more at

Pre-Annual Meeting Receptions Throughout Europe

As has become tradition, the first half of the year will be dedicated to Pre-Annual Meeting Receptions.

Kindly organized by members on a volunteer basis, these events are planned to allow members to share experiences and stories about past Annual Meetings, to inform new and prospective members about the value of the Annual Meeting and INTA membership in general, and to offer members an educational and networking opportunity. The Pre-Annual Meeting Receptions usually feature an educational roundtable or a guest speaker.

European events kicked off in Vienna, Austria, on January 26 and the next one is in Istanbul, Turkey, on February 16. Keep an eye on our calendar of events to see if a Pre-Annual Meeting Reception has been scheduled near you! Should you wish to volunteer to host a Pre-Annual Meeting Reception in your city, please contact Associate, Member Acquisition, Sharón Armogan-Aguayo at [email protected].

The Europe Office Is Looking for an Intern, Membership and Communications

The Europe Office has been hosting students for internships ranging between three to six months. The activities focus around membership, marketing, communications, and overall support to the team. Candidates must be enrolled as students at an educational institute that offers internship agreements. Full details here. Thank you for spreading the word!

INTA’s Europe Representative Office, based in Brussels, Belgium, represents the Association’s 1,800+ members across Europe (including those in EU and Non-EU Member States, and Russia and the Commonwealth of Independent States). Working in collaboration with staff at INTA’s headquarters in New York City, the Europe Representative Office leads the Association’s policy, membership, marketing, and communications initiatives throughout the region. To learn more about INTA’s activities in Europe, please contact INTA Chief Europe Representative Officer Hélène Nicora at [email protected].

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.

© 2018 International Trademark Association