Former President’s Award Winner Looks at a Positive Decade for Trademark Community
Published: September 9, 2020
With the September 11, 2020, deadline looming for nominations for this year’s INTA President’s Award and INTA Service Awards, Ruth Annand, one of the winners of the 2010 President’s Award, talks about her involvement with INTA, women’s leadership, and a decade of transformation in the trademark system.
Ms. Annand chaired the Community Trademark Office Subcommittee during the first years of the Office for Harmonization in the Internal Market (OHIM), helping establish INTA’s strong relationship with OHIM. She also served as one of the principal editors of INTA’s Practitioner’s Guide to the Madrid Agreement and Madrid Protocol, led INTA’s groundbreaking intervention in Special Effects v. L’Oréal, and served on the Steering Group that coordinated INTA’s response to the European Commission’s review of the European trademark system.
Ms. Annand (Senior Associate, Humphrey’s & Co., Bristol, United Kingdom) is an Emeritus Professor of Law at the University of Bristol and was designated by the Lord Chancellor as an Appointed Person under the UK Trademarks Act 1994 to hear appeals from decisions of the UK Trademarks Registrar at the United Kingdom Intellectual Property Office. Additionally, in 2017, she was appointed as Commander of the Most Excellent Order of the British Empire (CBE) by Queen Elizabeth II.
Now, a decade since winning the prestigious award, Ms. Annand discusses her engagement with INTA, advice for young practitioners, and some of the biggest changes in trademark law over the past years.
What do you see as some of the most significant changes in the field of trademark law in the past decade?
There’s been growth in the Madrid System, with much more use of the international trademark system with a lot more members from around the world. I’m a principal editor of INTA’s Madrid Publication Guide and we have contributions from many member countries on how they’re working with the Madrid System—and I think it’s quite a useful tool.
The counterfeiting rules have been extended and tightened up. Many loopholes in the system have been closed and there has been a clarification on bad faith as well. The EU trademark system used to be much more lax, but over the last decade, that has also tightened up.
[Over the past decade,] I think the worth of trademarks has been recognized more by the law around the world, but especially in Europe.
Overall, the past decade has been positive for members of the trademark community. In previous years, many trademark owners were seen as heavy handed, but now a balance has been achieved between trademark owners and their rights and defendants or the smaller person. I think the bad feeling towards trademark owners has decreased in recent litigation. It’s a positive thing, and the worth of trademarks has been recognized more by the law around the world, but especially in Europe.
You chaired the Community Trademark Office Subcommittee at the same time that the Office for Harmonization in the Internal Market’s (now the European Union Intellectual Property Office) came into existence. How did you help ensure that INTA had a strong relationship with OHIM from its inception?
I chaired the Community Trademark Office Subcommittee, which was part of the Trademark Office Practices Committee, from 1997 to 2001. INTA helped set up the European Trademark System, it’s as simple as that. We had a very broad spectrum of members consisting of practitioners and trademark owners, from various member states in the EU at the time. We looked at every single piece of paper that came out of the office on practice guidelines as they were being set up.
INTA was sent everything in advance and commented on everything in advance from a wide perspective. They were getting viewpoints from all member countries, but also practitioner input and trademark owner input. A lot of the suggestions that we put forward were adopted and put into the rules. We had a very good relationship with that office.
I think women make very good leaders. I’ve made many women colleagues and friends at INTA, and those friends and professional relationships have lasted until today.
INTA was there when it opened from day one. We helped grow the law. Our Subcommittee was very organized. I am a bit of a boss. I come from an academic background and I’m used to getting things done, and the members of the Subcommittee were fantastic. It was very productive and you felt like you were contributing in a very serious sense to something big that was going on. It was one of the best things I’ve ever done, and I think the Subcommittee members would have agreed. It was a very close relationship and I think INTA contributed in a wonderful way.
INTA recently introduced The Women’s LeadershIP Initiative to foster the development of strong leadership skills for women in IP. What are your words of advice for women who are looking to make an impact in the field?
It’s been very hard for women to get their contributions recognized. I’ve been fortunate that I’ve had some recognition, but I have also not had recognition for the work I’ve done.
I think it’s important that women take leadership roles, that they’re listened to, and that they’re given credit for what they do. I think it is still difficult, and INTA starting an initiative like that is great. I do truly think that INTA has given women a lot of encouragement over the years, and the fact that it’s now coordinated is beneficial to women in the community.
I think women make very good leaders. I’ve made many women colleagues and friends at INTA, and those friends and professional relationships have lasted until today. Many of them have been given leadership roles at INTA and they too have performed quite well in those roles. The formalization of what has been historically going on at the Association is a positive benefit.
You have remained an active member of INTA since winning the President’s Award. Can you describe the value that INTA has brought to your personal and professional lives?
Historically in the United Kingdom, lawyers didn’t do trademark application work—that was trademark agent work. I was one of the first people with my firm to do trademark office practice work, and INTA has helped me do that.
[On chairing an INTA Subcommittee] It was very productive and you felt like you were contributing in a very serious sense to something big that was going on. It was one of the best things I’ve ever done.
I was able to learn about international trademark systems, as well as my own. It has helped me meet other professionals that I’ve remained in contact with for many years. I was able to meet many trademark owners who have provided me with work. As an academic, INTA helped me do many things other academics cannot do. I’ve been able to keep in contact with students, many of whom have joined INTA, and watch their careers grow, which is a very rewarding thing for me. I’ve contributed to many publications and I have learned a lot through that.
Quite recently, I was awarded a CBE by the Queen for my services in intellectual property. So I would say INTA has been pretty important to my career.
What advice do you have for young practitioners who would like to one day win the President’s Award?
It’s important to be fully engaged with INTA. Volunteer with a committee and hope to get on one that interests you. Actively engage when you’re actually appointed to a committee, volunteer for jobs, and be sure to do those jobs on time and do those jobs well. Attend the educational sessions at the meetings and read [the Association’s] publications, like The Trademark Reporter. I think the way to eventually be recognized with an award like this is to join in and engage and work for INTA. The benefits will follow.
Submit your nominations for INTA’s President’s Award and INTA Service Awards by September 11, 2020. We will recognize this year’s award winners during the 2020 Annual Meeting & Leadership Meeting in November.
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.
© 2020 International Trademark Association
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