The Harmonization of Trademark Law and Practice Committee Advocates for the Creation of Common IP Standards for Trademark Law

Published: April 24, 2024

Isabel Cortes Martinez

Isabel Cortes Martinez PONS IP Madrid, Spain Chair, Harmonization of Trademark Law and Practice Committee

The Harmonization of Trademark Law and Practice Committee (HTLP) seeks to foster consistency and coherence in legal frameworks by aligning regulations and policies. It leads INTA’s efforts in advocating for the adoption of harmonized laws that streamline legal processes, reduce ambiguity, and improve the overall efficiency of the legal trademark ecosystem that reinforces the value of brands.

The HTLP pursues its mission by evaluating efforts on national, regional, and international levels through treaties, trade agreements, special conventions, and other nonbinding instruments that relate to trademark law and practice, and proposing policy recommendations to INTA’s Board of Directors. Committee work includes drafting proposed treaty language and advocating for the Association’s policy positions to stakeholders and relevant government officials.

The HTLP is divided into two different and very active subcommittees: The Free Trade Agreement (FTA) Subcommittee and the International Classification (IC) Subcommittee.

The FTA Subcommittee keeps track of the ongoing negotiations for free trade agreements (FTAs), provides pertinent information and policy stances to government negotiators, and assists in advocating for FTA-related matters within the context of the Association. The Subcommittee provides in-depth analysis and completes preparatory fieldwork, which includes a review of prior task force work, and advances the revision of INTA’s model FTA, aiming to bring it into alignment with FTA language. For example, with respect to the UK-India FTA negotiations, the FTA Subcommittee developed a baseline intellectual property (IP) test for both countries and compiled a legal analysis to determine an advocacy strategy.

The IC Subcommittee examines and oversees changes to current laws, regulations, and trademark procedures related to the categorization of goods and services. It monitors efforts by the European Union Intellectual Property Organization, TM5, the World Intellectual Property Organization (WIPO), and various trademark offices across multiple jurisdictions to synchronize initiatives regarding international classification, encompassing taxonomy structures, class scopes, item classification, and classification tools, including descriptions for new and innovative goods and services. In addition, the IC Subcommittee plays an essential role in fostering awareness and exchanging insights with other committees and relevant stakeholders.

Focusing on artificial intelligence, virtual environments, and currency categorization and international classifications, the IC Subcommittee furthers INTA’s advocacy by actively participating in the review of classification projects initiated by WIPO and other trademark authorities, including the assessment of the Nice Classification by WIPO’s Committee of Experts and the annual Committee of Experts of the Vienna Union, which are both held in Geneva, Switzerland. For example, a member of the IC Subcommittee made a statement during the April meeting regarding the challenges posed by turning Class 9 into a mega-class and possible solutions thereof.

Both Subcommittees actively engage in cross-committee collaborative initiatives, including webinars and roundtables, to cultivate a culture of awareness; the sharing of perspectives and best practices; and by staying informed about emerging trends in FTAs and classification. The goal is to contribute to the enrichment of knowledge and navigate the complexities associated with FTAs and classification issues alongside other stakeholders.

Recently, the HTLP participated in a training session webinar on classification matters related to the metaverse in collaboration with the Latin American and Caribbean Subcommittee of the Trademark Office Practices Committee and the Peruvian Patent and Trademark Office (PTO), along with representatives from other INTA committees.

The Committee is currently working on a more ambitious project concerning the rapidly growing Class 9. The class is rapidly developing due to the emergence of virtual goods and other new technologies and remains one of the most frequently listed classes in the world’s largest markets. Addressing the best approach to classification in this context is a formidable task, but the work is refreshing. The Committee members are wholeheartedly committed to demonstrating their knowledge and passion as they address these challenging topics.

All the Committee’s projects and advocacy efforts support the goal of creating a more cohesive and predictable trademarks environment across the globe. This includes revising agreements and providing comments on law regulations, fostering legal certainty, and facilitating smoother interactions among individuals, businesses, and institutions across borders. Our aim is to contribute to building a better society and a common IP playground through brands.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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