Advocating for Worldwide Consistency, Fairness, and Harmonization in Protection of IP Rights

The Enforcement Committee serves to develop and advocate policy on the timely and effective enforcement of trademarks and business identifiers, including through administrative and judicial proceedings; monitor and analyze cases, legislations, and regulations; propose trademark enforcement policy recommendations to INTA’s Board of Directors (the Board); evaluate enforcement mechanisms adopted by jurisdictions worldwide; and formulate best practices to achieve harmonization of enforcement procedures for better protection of trademark rights.

The Committee’s most recent focus has been to formulate and develop positions on key enforcement measures such as preliminary injunctions and monetary awards and to harmonize and advocate for best practices to streamline these enforcement processes worldwide.

After the Board Resolution on Harmonization of Preliminary Injunction Legislation sponsored by the Judicial Administration and Trademark Litigation Subcommittee was adopted by the Board in 2020, the Committee collaborated with the World Intellectual Property Organization (WIPO) on a presentation during WIPO’s 15th Session of the Advisory Committee on Enforcement in 2022 in Geneva, Switzerland, to further promote INTA’s policy position on this critical issue. The presentation served as a platform to emphasize the importance of aligning preliminary injunction procedures across jurisdictions. By advocating for best practices, the Committee aimed to provide clarity and predictability for brand owners navigating complex legal landscapes in different jurisdictions. The Committee’s initiative garnered recognition and support from WIPO’s member states, affirming the impact of its advocacy work in promoting harmonization in trademark enforcement. The Preliminary Injunctions Task Force has since been advocating these positions and is examining standards for the granting of dynamic blocking injunctions and anti-suit injunctions in different jurisdictions.

More recently, the Enforcement Committee’s Damages Task Force, within the Judicial Administration and Trademark Litigation Subcommittee, conducted a comprehensive survey spanning 63 jurisdictions to evaluate monetary relief mechanisms in trademark infringement cases. The findings highlighted challenges faced by claimants in obtaining adequate compensation for damages suffered due to infringement. As a result, the Committee proposed a policy position advocating for efficient and effective mechanisms to secure monetary relief, including enhanced damages for bad-faith or willful violations of trademark rights and multiple bases for calculating and awarding such reliefs, which was adopted by the Board by way of resolution in November 2023. The adoption of the Board Resolution on Monetary Relief for Trademark Violations signifies INTA’s commitment to addressing these shortcomings and advocating for fair compensation for brand owners.

In addition to policy advocacy, during the 2022–2023 Committee Term, the Judges’ Workshop Task Force organized judicial workshops in Argentina, Chile, China, Greece, Jordan, Malaysia, and the Philippines. These workshops provided valuable opportunities for judicial education and collaboration, with international speakers sharing insights and expertise on intellectual property enforcement. Notably, the workshop in Malaysia last October attracted more than 100 judges, including Supreme Court justices from Malaysia and other ASEAN countries, emphasizing the global significance of INTA’s efforts in promoting effective enforcement practices.

Looking ahead to the 2024–2025 Committee Term, the Enforcement Committee is poised to build upon its previous achievements and focus on the enforcement aspects of coexistence agreements, cancellations, oppositions, and enforcement issues in artificial intelligence and the metaverse. The Committee will also continue its focus on bad-faith filings and increase its outreach to governments and stakeholders in key jurisdictions to encourage implementation of best practices as adopted into policy through the November 2020 Board Resolution. With policy positions established on injunctions and monetary relief, the Committee aims to explore harmonization opportunities to further enhance brand owners’ enforcement capabilities by examining the issue of enforcement of judgments and awards. Additionally, plans are underway to organize judicial workshops in Croatia, India, Nigeria, Türkiye, and jurisdictions in the Middle East, fostering greater collaboration and knowledge-sharing among judicial stakeholders.

The Enforcement Committee’s recent activities demonstrate its proactive approach to addressing challenges in trademark enforcement and advocating for solutions that aim for consistency and fairness in trademark enforcement practices globally. Through advocacy, education, and international collaboration, the Committee continues to play a pivotal role in advancing effective enforcement practices and safeguarding trademark rights in an ever-evolving global landscape.

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