With Second-Phase Negotiations Imminent, INTA Steps Up Mobilization on Brexit

Published: April 15, 2018

Spring looms in Brussels and marks a change from the “winter of discontent” over Brexit, which was characterized by the absence of formal negotiation rounds, opposing statements on the part of the UK over the “first phase” (the divorce), and disputes over the transition period.

Negotiations on the draft Withdrawal Agreement are still ongoing but have progressed well. While it is important to note that “nothing is agreed until everything is agreed,” the latest draft text illustrates the progress achieved, including on intellectual property (IP), where both parties push for continued protection in the UK of registered rights.

In parallel, the second phase-the “future relationship”-has officially started with the adoption of the negotiating guidelines by the EU27 Council, from March 22 to 23. The EU aims at a free trade agreement with the UK, which would include “other areas of interest to the Union, for example (…) protection of intellectual property rights, including geographical indications.” Moreover, the EU stresses that “personal data protection should be governed by Union rules on adequacy with a view to ensuring a level of protection essentially equivalent to that of the Union.” Formal negotiations are due to resume sometime this month.

INTA has been quite active on that front. Following the high-level delegation from its Board to London at the end of February, INTA was back in London twice in March. On March 21, Giles Corbally (Bomhard IP, Spain), a member of the Legislation & Regulation Committee-Europe and Central Asia Subcommittee and liaison to INTA’s Brexit Task Force, and INTA Europe Office Chief Representative Officer Hélène Nicora attended, together with other user associations, the “EU Exit Update” organized by the UKIPO to discuss the latest draft withdrawal agreement.

On March 29, INTA was invited, together with a few selected associations, by the UK Minister of State for Universities, Science, Research and Innovation, in charge of IP, Sam Gyimah MP, to exchange on the status of IP in the Brexit negotiations. INTA was represented by Philippa McLeod (Rolls-Royce plc, UK), member of the INTA Board of Directors, and co-leader of INTA’s Brexit Taskforce. This meeting provided the opportunity for INTA to reiterate its main point: IP-related issues should be treated as “technical” issues by the negotiators in order to be resolved relatively easily, pragmatically, and quickly. Failure to address IP issues in a timely and appropriate manner could trigger adverse effects for businesses, small and medium-sized enterprises, and consumers operating in or with the UK. Minister Gyimah and the UKIPO seemed receptive to the need to provide reassurances to businesses, to obtain maximum retention of IP rights post-Brexit, and transparency, for minimum costs and burden.

Among the myriad of events organized on Brexit in Brussels, on March 27, INTA Europe Office Policy Officer Hadrien Valembois attended an event on “Brexit & E-commerce” organized by EMoTA (European e-Commerce and Omni-Channel Trade Association) at the European Parliament. UPS, Amazon, and SereniMax provided insights as to how Brexit will impact their sectors and business models. On the same day, Europe Chief Representative Officer Hélène Nicora attended a seminar organized by the British Chamber of Commerce, ICC Belgium, and the Brussels Chamber of Commerce on “Brexit & Other Political Uncertainties: Prepare Your Business” with exchanges on the concrete impact of Brexit on businesses.

For the latest updates and more on Brexit, including INTA’s Brands Brexit Toolkit, visit INTA’s dedicated webpage.

European Commission and OECD Release New Studies on Illicit Trade and Counterfeiting

Illicit trade was a focal point in Europe in March: two events were held in Brussels and Paris, respectively, while two key studies were published at the same time. The objective? Putting forward data and figures on the negative impact of counterfeiting in order to raise awareness and enable decision-makers and private stakeholders to better address the issue.

The first event, co-organized by the European Commission’s Directorate General for Trade (DG TRADE) and the Organization for Economic Cooperation and Development (OECD) on March 9 in Brussels, touched upon “countering illicit trade, with a special focus on counterfeiting.” The meeting, attended by Ms. Nicora and Mr. Valembois, featured interventions by DG TRADE, the EU Joint Research Center, and a presentation of the latest OECD’s study titled Governance Frameworks to Counter Illicit Trade. The study looks at the adequacy and effectiveness of sanctions and penalties applicable, the steps taken by illicit traders to lower the risk of detection, and the use of free trade zones (FTZs) as hubs for managing illicit trade. Interestingly, it also identifies gaps in enforcement, including in BRICS economies-those of Brazil, Russia, India, and China.

The second event was the OECD’s Task Force on Illicit trade meeting in Paris from March 15 to16. INTA was represented by Myrtha Hurtado Rivas (Novartis, Switzerland), Vice-Chair of the Anticounterfeiting Committee, and Mr. Valembois. Several issues were discussed: FTZs, the development of guidance on countering illicit trade, countering illicit trade on wildlife, effects of illicit trade on the private sector, professional enablers of illicit financial flows, the role of intermediaries to counter illicit trade, and information sharing between law enforcement (the last being open only to public authorities). The OECD and the European Union Intellectual Property Office (EUIPO) presented their newly released joint study entitled Trade in Counterfeit Goods and Free Trade Zones: Evidence from Recent Trends. For the first time, the “clear” link between counterfeiting and FTZs is at the core of a specific study. FTZs are found to be “associated with a 5.9% increase in the value of these problematic exports [counterfeit and pirated products] on average.”

EUIPO Liaison and User Group Meetings in Alicante Provide Updates on EUIPO Activities

From March 20 to 22, Paola Ruggiero (Bird & Bird, Italy), member of the EUIPO Subcommittee of the Trademark Office Practices Committee) and Carolina Oliveira, INTA Policy Officer-Europe, attended the EUIPO’s 13th Liaison Meeting on Cooperation (March 20‒21), which gathers experts from the EU Member States’ National Offices and User Associations and the 2018 User Group Meeting (March 22), both held at the EUIPO premises in Alicante, Spain.

In both meetings, the EUIPO provided an update on its strategic plan implementation, noting that there has been a higher demand for trademark-related work at the Office due primarily to an increase in the number of trademark applications: 16 percent more in the first two months of 2018 when compared to the same period in 2017. Another interesting trend registered is the growing volume of trademark applications by Chinese entities and individuals.

An update on different initiatives by the Office, such as the Anti-Scam Network, International Cooperation, and the European Cooperation Projects was also provided. The Office presented the preliminary outline and scope of the CP11 convergence project, “Examination of Formal Requirements and Grounds of Refusal for New Types of Marks.” This is an ambitious project of fundamental interest to all users as it lies at the core of the changes

resulting from the EU Trademark Reform. The project will be further discussed at the Liaison Meeting on Trade Marks to be held in April and is expected to be endorsed at EUIPO’s Management Board and Budget Committee Meeting in June.

EU Observatory Private Stakeholders’ Meeting Discussed the Extension of the Multiannual Work Plan and New Working Methods

On March 22, Ms. Nicora and Mr. Valembois attended the EU Observatory’s private stakeholders meeting in Brussels. The event featured several panels including, among others, a presentation of the Observatory’s endeavors (studies, events, databases, and tools, and cooperation with other agencies), and an update from the EU Commission’s work on IP rights by DG GROW, DG TRADE, and DG TAXUD. The Observatory notably presented the extension of its multiannual work plan and new working methods which foresees changes in the structure of the working groups (from five currently, to nine), with a proposed split between counterfeiting and piracy. Discussions with stakeholders on this proposed structure is ongoing and a final proposal is expected by the plenary session in September. The EU Observatory also asked for the participation of brand owners in its upcoming study on cybersquatting (expected by the end of the year) as well as for its blockathon event, a four-day competition of teams composed of high-level programmers to develop prototypes of applications on blockchain that could act as an interface to different supply chain track and trace technology. The EU Observatory also announced its upcoming study on Health and Safety Risks Linked to Counterfeited Goods (also expected for end of 2018).

Law Students Learn More About Trademarks and INTA in Brussels
On March 20, a small and inquisitive group of law students visited the INTA Europe Office in Brussels for an introduction to trademark law as well as an overview of INTA.

The students are enrolled in the LLM program on International Business Law at the Instituto de Empresa Law School in Madrid, Spain, which has one specific class dedicated to IP. The visit to INTA was part of the “Brussels Experience Week,” where the students visited the EU Institutions and other organizations in the “EU Capital.” This was a very international group, with students from Spain, China, Peru, the United States, and elsewhere, with some of them already showing a good grasp of IP law.

After a short introduction on INTA by Milesh Gordhandas, Advisor-Europe, and the Association’s academic activities, Florence Verhoestraete (NautaDutilh, Belgium), member of the INTA Bulletins Committee, gave a presentation to students about trademark law. After a brief history of trademark law development, she talked about trademark definition, scope, requirements, territoriality, grounds for refusal, and opposition and enforcement. To illustrate her presentation, she brought packages of various chocolates and cookies to demonstrate brands’ various shapes and colors (needless to say, the packages were promptly opened and the products instantly devoured).

This led to a very engaging Q&A session between students and INTA. Students asked pertinent questions on various topics: whether or not fragrances could be registered as trademarks; clarification regarding the registration of the shape of a Bang & Olufsen speaker; resolution of trademark conflicts outside courts; reputation of trademarks and brands on social media; and more. They also had questions on INTA’s relationship with academics and anti-IP sentiment (linking it to the controversial discussions around legalizing the sale of counterfeits in the streets of Madrid). A quiz on INTA membership was also organized at the end, with chocolates for the winners.

All in all, it was a very enriching event, for both students and speakers!

INTA thanks Florence Verhoestraete for volunteering to speak and for providing the chocolates.

For further reading, visit our Student Membership webpage and Academic Activities webpage.

Roundtables and Pre‒Annual Meeting Receptions Around Europe: Join One Close to You!

Volunteers across the European continent have been busy holding receptions and educational events. Amsterdam, Copenhagen, Madrid, Helsinki, Stockholm, Munich, Vienna and Zurich have hosted various INTA events. Our forthcoming events include Pre‒Annual Meeting receptions in London (April 25) and Paris (April 26), and a Young Practitioners and Trademark Administrators mock trial and reception at the Benelux IP Office for IP in The Hague (April 20).

All events are open to members and nonmembers of INTA, making these a good opportunity for you to join a local INTA event, network with your peers, and introduce INTA to prospective new members.

For details and registration find the events at www.inta.org/calendar.

INTA thanks the various member firms for volunteering to organize these events.

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. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association