December 1, 2017
Vol. 72 No. 20
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Top Stories Barbara Kolsun: What the Future Holds for Fashion Law Earlier this year, Barbara Kolsun (Cardozo, USA) treated those attending INTA’s Brands and Fashion Conference in New York City to a presentation that offered insight into her pioneering career in the fashion industry and advice on how practicing lawyers can develop their own brand. Building upon her impressive career leading many of America’s premier fashion brands, Ms. Kolsun now serves as Director of the Fashion, Arts, Media & Entertainment (FAME) Law Center at Cardozo in New York City, where she also teaches Fashion Law and the Fashion Law Practicum (in which Cardozo students counsel masters-level students at the Fashion Institute of Technology (FIT) on their capstone projects). Ms. Kolsun also provides counsel to Weight Watchers as a consultant. Ms. Kolsun’s career highlights include her prior employment as General Counsel (and first lawyer) for then-startups Kate Spade, Stuart Weitzman, and 7 For All Mankind, and as Assistant General Counsel at WestPoint Stevens and Calvin Klein Jeans. Ms. Kolsun has also coauthored two seminal books on fashion law. In anticipation of The Trademark Reporter’s upcoming November–December, 2017, theme issue, which will focus on fashion law and related topics such as luxury brands, Jessica Elliott Cardon, Senior Counsel, Quality King Distributors, Inc., and Perfumania Holdings, Inc., Co-Chair of INTA’s Brands and Fashion Conference, and Vice Chair (and incoming Chair) of The Trademark Reporter Committee, sat down with Ms. Kolsun to discuss some of the latest trends in fashion law and what changes we should anticipate going forward. Jessica Elliott Cardon (JEC): You were a featured keynote speaker earlier this year at INTA’s Brands and Fashion Conference in New York City. What was that experience like? Barbara Kolsun (BK): I thought it was a fantastic conference. The quality and the substance of the presentations were top notch, like most everything that INTA does. Having been involved in INTA for many years, and having pushed for much more of a focus on brands and branding, and certainly fashion, I was thrilled to see a conference devoted to just that subject. When they asked me to speak on the topic of building your own brand, I remember thinking, “What could I possibly say?” A lot of what I focused on had to do with surviving the business. Fashion is not necessarily the best spouse. There are a lot of mergers and acquisitions, a lot of re-branding, re-grouping, reorganizing—a lot of change. I also spoke about the kinds of things that a lawyer can do to keep relevant, like continuing to learn so that you’re not caught short-handed and shortsighted when the day comes that your company is sold or your job is eliminated for various reasons. Ultimately, it was very satisfying. I got such positive feedback from the attendees—particularly women. JEC: What do you feel has changed the most in the practice of fashion law since you began your career? BK: The business has of course changed dramatically. When I started, there was no Internet, there were no online businesses. Basically, fashion brands were retail stores. Usually, a fashion brand started by selling in a Saks or Macys, or a big department store, and then eventually brands like Ralph Lauren and Calvin Klein opened their own retail stores. In some cases, companies like Michael Kors opened 600 stores over a relatively short period of time, and then went public. And then suddenly, we were in the age of Amazon. Most people shop online now. I think the first issue is how relevant the retail store is going to be going forward. I think we’ll see a lot more mixed-use spaces—restaurants and gyms, and entertainment-type facilities. Brands and retailers are going to have to really re-strategize in terms of how many stores to keep open and mall owners are going to have to re-strategize in terms of what’s going to be in those malls. Brands have to deal with the reality of social media and online shopping—it has just exploded. That’s the short answer—it’s in flux. It’s not going to go away. One other thing that’s really important is that consumers are much more concerned with sustainability, with where products are made, and with who makes them. Particularly younger customers care deeply about those things. I think brands are focusing more on sustainability, too. There have been events in the news that have resulted in changes and an increased focus. JEC: Another big change in the industry has to do with technology advances. Companies are trying to incorporate algorithms and analytics into not just how to better serve their customers and dictate what their customers are responsive to with respect to their fashion offerings, but trying to actually generate design algorithms and using artificial intelligence to do this. I’m curious what your thoughts are on the use of AI in designing fashion articles and how that could affect what we consider the author or designer of those articles? BK: In almost all the start-ups that I worked for, the first thing that I discovered when I arrived was that there was nothing in writing. The first agreement that I had to draft was a design services agreement asking the designer to confirm that the designs belonged to the brand and assigning those designs to the brand. Often the brand didn’t appreciate why that was necessary. I think the same concept applies to technology. It’s really important to hammer home those rights and who owns what so you’ve addressed all possible permutations of where this is going to go. JEC: With the prevalence and frequent use of influencers for brand promotion and product sales conversion by many fashion brands and other industries that cross over with fashion these days, do you think influencers are the next wave of fashion brands and design talent? Or, will traditional design talent continue to lead the way? BK: I think traditional design talent will continue to lead the way. Influencers are very helpful, but ultimately, it’s about the talent. As a teacher at FIT, I can tell you it’s very exciting to see what’s happening, not just in the U.S., but all over the world. I’m very enthusiastic about the continuing rise of new and exciting designers. JEC: You’ve authored or edited two books on fashion law. Fashion Law: Guide for Designers, Fashion Executives, and Attorneys and Fashion Law: Cases and Materials, which I believe was one of the first case law textbooks for fashion law. What drove you to create these books? BK: The first book happened because Cardozo had asked me many years ago to come up with a syllabus for a course in fashion law. At around that time, I got to be friendly with Guillermo Jiménez, who is the co-editor of the book and who was teaching at FIT. He asked me to give him a list of lawyers in the fashion industry, and we started to have breakfasts at FIT just to talk about fashion law issues. I think it was probably the very first gathering of lawyers working in the fashion business. And from that meeting, Guillermo said we should write a book. Once the book happened, I immediately started teaching. Suddenly, fashion law was being taught in law schools all over the country, and many of them were using our book. Then I got a call from Carolina Press and they asked if I would be interested in doing a casebook. I said, absolutely, but only if I can co-edit it with Guillermo Jiménez. So, we did the same kind of wonderful, collaborative thing. JEC: That case law book was published in 2016, but there was a pretty important case that was decided by the Supreme Court just this year [Star Athletica v. Varsity Brands]—do you think that will end up being the most important case in your next edition? BK: Absolutely. I think the Star Athletica case is one of the main reasons for moving into the next edition. Even though I don’t think it’s really changed anything significantly with respect to the protection of designs and copyright law’s place in the fashion business, it’s still an important case because it cleans up the law. JEC: I think there has been enhanced activity among many fashion brand owners, luxury and nonluxury alike, in pursuing protection and design infringement cases with respect to unregistered trade dress or elements that are loosely defined as trade dress but that go a step or two beyond a color trademark. Even though there’s obviously less protection for fashion designs in the U.S., do you think we’re going to see a change, finally, in the United States, where fashion will get earlier protection nearing the fashion protection afforded in the European countries? BK: No, I don’t. We’ve certainly seen over the last several decades numerous attempts to amend the copyright law, but I don’t believe it’s going to happen in the United States. I don’t think there’s a will. Each time it gets introduced and debated, suddenly the year is over and Congress is finished and it has to be reignited. That’s always going to be a challenge because brands now are global, so a particular element may be protectable in Europe but not in the U.S. JEC: Why do you think fashion as a theme resonates so well in the trademark field? BK: Well, I think there’s definitely passion for it. It’s a sexy subject. Fashion covers copyright, trademark, trade dress, patent, design patent—almost every aspect of IP. Fashion is one of the industries where, because of weak copyright protection and weak design protection in the United States, trademark law has become so important. Most fashion brands have really had to rely on trademark protection to enforce their rights. Also, fashion is a trillion dollar industry. It’s bigger than music. It’s bigger than sports. Designers are celebrities. People are really fascinated.
Interviews Don’t Be Blindsided by Business Transactions In response to member interest, INTA is hosting a series of pre-recorded webcasts beginning this year covering a wide variety of mid- to advanced-level topics that trademark practitioners encounter in business transactions. The series was developed and organized by a Project Team led by Brian Daniel (Charles River Associates, USA), a member of the Leadership Programming Subcommittee of the Leadership Development Committee. Mr. Daniel spoke with the INTA Bulletin about some of the common problems that arise around trademarks in the course of business transactions and why INTA members should not miss this unique series. What prompted this series? We began thinking about this in 2016 in response to a lot of interest in the subject. These are topics that have been covered every so often at an Annual Meeting or Leadership Meeting and have been well received. In 2012, INTA held a Trademarks in Transactions conference in Chicago, Illinois, that addressed similar topics, and it was very well attended, so we were interested in revisiting these topics in a different format. This webcast series will allow us to cover more topics over a longer period of time. Why is it important for trademark practitioners to know about transactional matters? When there’s a transaction involving trademarks in your organization, it’s generally a very visible activity. It’s often high profile and important for the strategy and the business success of the company that it gets executed properly. There are a lot of complex issues that come up in dealing with these types of transactions, which include M&A, licensing agreements, divestitures, acquisitions, and more. For some practitioners, they may only be dealing with these kinds of matters very infrequently. The idea behind the series was to give participants an overview of the types of issues they’ll encounter, what questions to ask, practical solutions, ways to avoid problems, and lessons to be learned from people who have experience with these issues. If you know what to expect ahead of time, you can plan better and organize your team in a way to be more efficient and effective. What kinds of topics will you address? There will be seven webcasts covering a range of topics (see box). For instance, listeners will learn about things like the due diligence process: What’s a checklist of things to do in a transaction? What order should you do them in? To whom should the tasks be assigned? Among other topics, participants will learn about quality control in licensing agreements, how to deal with disputes, and how to negotiate particular clauses in agreements. These are all examples of issues our speakers will address during the sessions so that even if someone hasn’t had firsthand experience, they’ll get the benefit of hearing from people who have. What are some of the most common mistakes made in these types of transactions? There are a lot of things that can go wrong. First, it’s important to communicate across the different groups within your organization. You have to make sure the business people are talking with your in-house trademark and legal teams and corresponding with your outside counsel and tax team. If you have subsidiaries or affiliates that control rights or licenses, make sure you have everyone on the same page so there are no surprises. Sometimes in an M&A deal, for instance, the organizational structure could be complex. IP rights may not all be owned by one company—there could be foreign affiliates or holding companies. One key is to make sure you create an effective team to manage the transaction and that you have stakeholders from the various departments within the organization so that you’re not working in a silo or vacuum. That goes a long way to identifying the proper issues and avoiding problems that could arise because you’re not familiar with the intricacies of laws in another country, for example. Each of these sessions will bring up examples where something did go wrong and what can be done proactively to avoid problems. We’re trying to make this series a resource for the trademark practitioners so that when an issue comes up, they can say, “Let me go back and look at that session and the course materials.” What do you hope listeners take away from these webcasts? My expectation is that people will come away with a better understanding of the issues they’re going to face when they’re involved in these types of transactions and that they will have more confidence in how they’re going to undertake those assignments. For the more experienced practitioners, it’s an opportunity to hear about some recent developments in the area and some continued best practices. The regulatory environment is constantly changing and the litigation environment is constantly evolving, so even though you may have taken some classes ten years ago, that environment may look very different than it does today. The series will be available for purchase at learning.inta.org in December.
Business Transactions Webcast Series Here are some highlights of the scheduled webcasts. The series will be available for purchase at learning.inta.org in December. Trademarks in Business Transactions: Behind Closed Doors and Getting the Deal Done Practical tips on getting the deal done, sharing experiences from behind the closed doors of trademark transactions Key tools and strategies for managing transactions where trademarks and brands are the key assets Pointers on developing a tailored plan for your transaction Overview of Corporate Transactions and Due Diligence Due diligence tips and tricks from both buyer and seller perspectives Share sale vs. asset sale, points to watch Defining the scope of due diligence at the outset Mergers, Acquisitions, and Divestitures: Managing Domain Names and Social Media Accounts in Transactions A discussion of best practices in performing domain due diligence: Considerations in valuing domain names Purpose of and intro to due diligence Common issues and considerations involved in reviewing/investigating a domain portfolio A discussion of best practices in performing social media due diligence: What social media assets, agreements, and policies form part of any transaction How to define and pass social media assets from one party to another Addressing third-party rights in social media assets Economic Aspects of TM Transactions: Valuation, Taxes, and Financial Planning Examples and highlights from recent transfer pricing cases, as well as legislation that impacts IP ownership and the protection of IP, to illustrate the importance of minimizing risk through proper management of trademarks and IP assets in a dynamic regulatory environment Overview of valuation and transfer pricing, including reasons for trademark valuations, appraisal methodologies, and the distinction between legal and economic ownership International tax developments including base erosion and profit shifting (BEPS) developments, EU developments, and issues relevant to specific countries Social Media Bloggers and Influencers Statistics on advertising spend on social media Use of influencers by advertisers FTC enforcement guides Overview of recent regulatory actions ------------------------------
The Project Team Project Team Leader: Brian Daniel (Charles River Associates, USA) Stuart Ash (Gowling WLG, Canada) Nicola Benz (FRORIEP, Switzerland) Scott Lebson (Ladas & Parry, USA) Inga Smith (Cisco Systems, Inc, USA)
Carla A. Federis, BDO Unibank: Why You Should Renew Your INTA Membership Carla A. Federis is an attorney with BDO Unibank, Inc., in Makati City, the Philippines. She spoke with the INTA Bulletin about how her company benefits from INTA membership and why she has been an active INTA member for seven years. Why is your organization an INTA member, and how does it benefit from membership? BDO Unibank, Inc., has been a member of INTA since 2015. As the largest bank in the Philippines, it owns an IP portfolio consisting of over 600 trademarks across 60 countries worldwide. The bank benefits from INTA membership by harnessing its extensive network of trademark professionals in order to register and protect its trademark assets in different countries around the world. Furthermore, BDO Unibank’s IP team utilizes INTA’s multiple online resources, directories, and publications to remain up to date on the emerging legal issues and current challenges facing brand owners. Finally, through its INTA membership, the bank is able to advocate for the development and advancement of trademark laws, especially within the ASEAN region and in the Philippines. How long have you personally been an active INTA member, and where do you find the most value in membership on a personal level? I have been an active INTA member for seven years now. The first Annual Meeting I ever attended was held in Boston, Massachusetts. It was a wonderful experience, as it exposed me to like-minded colleagues working towards the same goals and discussing timely and relevant issues in the field of trademark law. On a personal level, I think one of the most valuable benefits of being an INTA member is the relationships you form with other trademark practitioners from different parts of the world. There is really no better place for trademark professionals to discuss ideas, exchange best practices, and be kept up to date on the challenges and emerging issues within the field. Further, being involved through my appointment to the Data Privacy Committee has broadened my understanding of an issue that is not typically associated with IP and trademark law, but is particularly useful and relevant to issues we are currently facing in our organization as a financial institution. Outside of the Annual Meeting, what other ways do you make use of your membership throughout the year? As a representative of BDO Unibank, we normally use the Annual Meetings to connect with our outside counsel and discuss any ongoing trademark issues we may be facing in a particular jurisdiction. Outside of the Annual Meetings, we also find the In-House Idea Exchanges conducted throughout the year to be especially helpful, as they tackle a variety of issues and allow us to exchange best practices with other in-house practitioners on how to cope with certain challenges that are relevant within our industry. Now that BDO Unibank is continuously growing and expanding its services outside of the Philippines, we have also used INTA’s extensive network to identify and connect with trademark professionals who can assist us with our trademark needs in new jurisdictions. In a nutshell, why should trademark professionals join INTA? Trademark professionals should join INTA not just to expand their network and connect with other practitioners from around the world, but also to remain informed and educated about ongoing developments and future challenges in the field of trademark law. Renew your INTA membership by December 31, 2017, to ensure that you continue to receive all INTA member benefits, including the member rate to the 2018 Annual Meeting. Annual Meeting registration begins in January 2018.
Association News Taking Trademarks International: 2017 President’s Award Winner Gerhard Bauer INTA’s President’s Award is designed to acknowledge the profound appreciation of the global trademark community to individuals who, over the course of a career in trademark and related IP law, have made a lasting impact on INTA and the Association’s mission. INTA President Joe Ferretti (PepsiCo, Inc., USA) presented the award this year to Theodore (“Ted”) Davis (Kilpatrick Townsend & Stockton, USA) and Gerhard Bauer (Germany) at the INTA Leadership meeting in Washington, D.C., on November 7. After the meeting, the INTA Bulletin spoke with Mr. Bauer about the lessons he has learned over the course of his career. More information on the award and Mr. Bauer’s achievements is available in the official 2017 President’s Award announcement. Who or what has taught you the most about trademarks? Brands and trademarks always have been fascinating to me and led me to an early decision to become an IP specialist with a focus on trademarks. In the course of learning about the different trademark systems around the world, U.S. trademark law especially intrigued me. For that I have to thank my mentor, Vito Giordano, for his patience and enthusiasm when teaching me about U.S. trademark law. One of his often repeated sentences that I will never forget is, “You must have a BONA FIDE INTENTION TO USE.” What is your favorite memory from the year you were INTA President? It’s the 2011 Annual Meeting, starting with the fascinating venue—San Francisco. The city is a center of technology and commerce for both the Western and Eastern worlds. This was reflected in the list of moderators, speakers, and the registrants. To see all these people coming together from all sectors and regions in one venue for one purpose, partaking in lively discussions and exchanges of views—in addition to seeing old friends and making new ones—was fantastic. What are two or three highlights of your time as an INTA member overall? One was certainly having been elected to the Board of Directors, which provided me with a better overview of the diverse activities and possibilities of the Association and allowed me to learn more about the complexities of the Association’s work. Another highlight was the opening of INTA’s Europe Representative Office, which was one of the first steps toward INTA’s goal of becoming a truly international Association. I was very lucky to have been part of the formation of the Brussels office and to see the appreciation of European trademark owners, as well as government authorities, for the staff of the Europe office. Do you have a favorite Annual Meeting of those you’ve attended? All Annual Meetings have been fantastic, but I have to admit that three of them have been particularly special. The first was the 2003 Annual Meeting in Amsterdam, which was the first time INTA held its Annual Meeting outside of North America. I had the pleasure to be part of the Project Team for that meeting. Secondly, the 2008 Annual Meeting in Berlin was a favorite because it was held in the capital of my home country. Finally, as mentioned above, was the 2011 Annual Meeting in San Francisco during my presidency. These are just three highlights among a great number of Annual Meetings I attended. What do you think is the biggest challenge that brand owners will face in the next five years? Anti-IP sentiments due to a misunderstanding of how the IP system works and is beneficial to all stakeholders, from brand owners to brand users and consumers in general. I have myself experienced many biased discussions and attitudes completely ignoring the facts that strong IP rights create jobs, improve economic performance, and increase consumer safety. What has been the biggest frustration for you over the course of your career from a trademark law perspective? Despite real progress achieved by all trademark stakeholders, it is the never-ending battle against counterfeiting. If you could make one change to the EU trademark system, what would it be and why? My biggest wish for the most recent amendments to the EU trademark system would be to see it successfully transform from a well-thought-out legislative effort into national/EU-wide reliable and predictable protection. What have been the biggest changes you have seen since you started practice? Over the past 30 years there have been many big changes. The introduction of the Madrid Protocol at WIPO, which has made international trademark protection available to many more countries in an easier and more cost-effective way is one. Its success is evidenced by the number of countries continuing to join the Agreement each year. Another is the creation of the European Union trade mark (formerly known as the Community Trade Mark) system. It began more than 20 years ago from scratch and has kept up with many countries acceding as the EU grew over the years. It was not only the creation of the system alone, but the way the system has adapted to the needs of a changing commercial, industrial, and social environment, combined with cooperation and convergence regarding the respective national trademark systems, which made the system so fascinating and successful. What advice do you have for young trademark attorneys? I would first confirm that they have chosen the right profession. I foresee many challenges and changes in the trademark world due to legislative and social evolutions, which will need to be addressed by those young attorneys via amendments and changes to the trademark systems around the world. I would encourage them to not give up, since our work sometimes takes time and patience before we see a fruitful result. What does winning the President’s Award mean to you? I was totally surprised when I received a call from this year’s President, Joe Ferretti, announcing the news to me. I hadn’t expected it at all! I am very grateful and feel honored to have been awarded. It is a highlight for me personally after working in the field of IP for almost 30 years. At the same time, I would like to express my thanks and respect to all those people who made this work possible: trademark professionals, committee members, a fantastic INTA staff, the Board of Directors, and CEOs Alan Drewsen and Etienne Sanz de Acedo, who always supported me by giving wise advice.
Technology, Trolls, and Travel: 2017 President’s Award Winner Ted Davis INTA’s President’s Award is designed to acknowledge the profound appreciation of the global trademark community to individuals who, over the course of a career in trademark and related IP law, have made a lasting impact on INTA and the Association’s mission. INTA President Joe Ferretti (PepsiCo, Inc., USA) presented the award this year to Theodore (“Ted”) Davis (Kilpatrick Townsend & Stockton, USA) and Gerhard Bauer (Germany) at the INTA Leadership meeting in Washington, D.C., on November 7. After the meeting, the INTA Bulletin spoke with Mr. Davis about the lessons he has learned over the course of his career. More information on the award and a description of Ted’s achievements are available in the official announcement. What has changed most for your practice area over the course of your career? Technology has changed my practice the most. I started practicing at a time when computers were the exception rather than the rule and of course now they are the rule, not the exception. We also have access to a lot more tools now than we had back in the day—all of which have improved practice dramatically. Has there been a downside? I’m not sure. There is perhaps a long-term threat to trademark lawyers and to lawyers generally posed by artificial intelligence: if the practice of law is about predicting what courts may do, we may soon get to the point at which artificial intelligence can do a better job of predicting that than a classically trained lawyer can. That may be a threat to some and an opportunity to others. There is a potential downside to people who don’t see that coming. What is the funniest or strangest case that has come up in your time working for The Trademark Reporter? There are some disputes that just will not die and produce reported opinions year after year after year. But those tend to be pretty conventional. I think the most unusual series of cases I’ve had to address are those arising from efforts by an individual who was frequently characterized as a trademark troll back in the 1990s—Leo Stoller. His attempts to lock up a large number of trademarks throughout the United States for a variety of goods and services spawned all sorts of litigation and reported opinions. Mr. Stoller generally wound up losing. This went on for a number of years and also produced opinions within the USPTO which were covered by my co-authors in The Trademark Reporter at the time. What advice do you give to people just starting their careers? It’s important to get your name and yourself out there as soon as and as often as you can. Billing a lot of hours can only get you so far in the long run, although it may be necessary in the short term. Ultimately your goal is to end up with your own self-supporting practice. The only way to do that is to get out and build the relationships that will facilitate that. Any organization can help you do this. It may not necessarily be an IP or legal organization. You never know what’s going to pay off—it’s very difficult to predict in advance, so it’s important to be open to any invitation. What was the best piece of advice that you received during your career and who did it come from? It came from a number of my colleagues (now partners) at our law firm. It was to write articles early on in my career. That got me some exposure I would not have received otherwise. Of those I wrote, probably the one that stands out is the first one, which received INTA’s Ladas Award and got a certain amount of good press. It was on a provision of the Lanham Act called Section 2(a), specifically a prohibition against the registration of immoral, scandalous, or potentially disparaging trademarks. That provision has just been declared unconstitutional by the U.S. Supreme Court, and I had the opportunity to write the very first article on that provision. What do you think is the biggest challenge that brand owners will face in the next five years? The biggest challenge is predicting what the biggest challenge will be! Society and the law are so dynamic now that it is very difficult to spot emerging issues five years off. No one would have expected the explosion of trade dress litigation in the early 1990s. Few people would have predicted the disruption to trademark law that the Internet caused. So, predicting what the next issue will be five years out is inherently difficult. What has been the biggest highlight of your career? Receiving the President’s Award is one—it is a great honor. But INTA has also given me the opportunity to co-author a number of amicus briefs filed with the U.S. Supreme Court. The Court takes so few trademark cases that the opportunities to participate in a case as lead counsel or counsel for one of the parties are very rare. But I have had the chance to participate in a number of cases over the years thanks to my membership on the INTA Amicus Committee. The standout would have to be the Supreme Court opinion in TrafFix [TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001)] in which we had the opportunity to interact with the now Chief Justice of the U.S. Supreme Court, who represented the defendant in that proceeding. I got the sense the Court may have read the brief that INTA submitted. INTA filed a brief in support of neither party, and the Court’s opinion turned out to be rather consistent with the position we asserted. What do you do when not practicing law? I read a lot—mostly historical biographies and other non-fiction history. Favorite eras are the Victorian era in the UK and the Progressive era in the United States. I also enjoy travel. My family and I will be spending U.S. Thanksgiving visiting Stonehenge. We have also taken recent trips to Istanbul and Vienna, as well as a photo safari in Tanzania in the recent past.
Annual Meeting of Members INTA President Joe Ferretti called the meeting to order at 8:30 am on November 7, 2017, at the United States Patent and Trademark Office in Alexandria, Virginia, then turned the meeting over to Secretary Zeeger Vink. Mr. Vink certified that the official notice of the Annual Meeting of Members was mailed on October 16, 2017, and requested a motion that the notice be filed as part of the minutes of the meeting. Elena Grimme moved that the notice of the 2017 Annual Meeting of Members be filed as part of the minutes of the meeting, and Elisabeth Escobar seconded. The motion was passed on a voice vote. Mr. Vink reported that the total number of INTA Regular Members was 884 and that a quorum of Regular Members as defined in the Bylaws was present in person or by proxy. Mr. Ferretti declared the meeting regularly and lawfully convened and open to transact business. Mr. Ferretti reported that the minutes of the 2016 Annual Meeting of Members were published and circulated to the members and asked for any amendments or corrections. There was none. Stacey Berg Keller moved that the minutes be approved as published and Ms. Escobar seconded the motion. The motion was passed on a voice vote. In the absence of Treasurer Tiki Dare, Mr. Ferretti called on President Elect Tish Berard to deliver the 2017 financial report on the affairs of the Association. Ms. Berard made the report and Mr. Ferretti called for a motion to approve it. Ms. Berg Keller moved that the report be approved and Ms. Escobar seconded the motion. The motion was passed on a voice vote. Mr. Ferretti stated that the President’s report on the activities of the Association during the 2017 year would be presented at the Opening Ceremonies of the Annual Meeting on Sunday, May 19, 2018, at 4:30 pm at the Washington State Convention Center (WSCC) in Seattle, Washington. Ronald van Tuijl, Chair of the Nominating Committee, presented the report of the Nominating Committee. Mr. Ferretti advised that no nominations for these elected offices were made other than those proposed by the Nominating Committee. Ms. Berg Keller moved that a single vote be cast for the Nominating Committee’s slate of candidates for election to the INTA Board of Directors and Ms. Grimme seconded. The motion was passed on a voice vote and the Directors were elected. Mr. Ferretti asked if there was any new business and there was none. He asked for a motion to adjourn. Ms. Escobar so moved, Ms. Grimme seconded, and the motion passed.
Elections for INTA’s Board of Directors, Officers, Counsel, and Advisory Directors On November 7, 2017, at INTA’s Leadership Meeting in Washington, D.C., the voting members of the Association elected the following persons for the INTA Board of Directors, Officers, Counsel, and Advisory Directors: Term Ending December 31, 2018: Tish Berard, Hearts On Fire Company LLC, USA Tiki Dare, Oracle Corporation, USA Ayala Deutsch, NBA Properties, Inc., USA Jomarie Fredericks, Rotary International, USA David Lossignol, Sandoz International GmbH, Germany Zeeger Vink, Maus Frères, France Term Ending December 31, 2020: Marie-Laure Bonnaffous, FENDI ADELE SRL, Italy Annabelle DanielVarda, Google, USA Cecilia Emanuelson, Inter IKEA Holding Services S.A., Belgium Elisabeth Kasznar Fekete, Kasznar Leonardos Intellectual Property, Brazil Jeremy Kaufman, Netflix, Inc., USA Uche Nwokocha, Aluko & Oyebode, Nigeria Joan Pinaire, Realogy Holdings Corp., USA Melody Schottle, Exxon Mobil Corporation, USA Kowit Somwaiya, LawPlus Ltd., Thailand On November 7, 2017, the Board of Directors elected the following: President: Tish Berard, Hearts On Fire Company LLC, USA President-Elect: David Lossignol, Sandoz International GmbH, Germany Vice President: Ayala Deutsch, NBA Properties, Inc., USA Vice President: Tiki Dare, Oracle Corporation, USA Treasurer: Zeeger Vink, Maus Frères, France Secretary: Jomarie Fredericks, Rotary International, USA Counsel: Anna Carboni, Wiggin LLP, UK Advisory Directors: Andrea Gerosa, Switzerland Doug de Villiers, South Africa
Treasurer’s Report 2017 Tiki Dare, Oracle Corporation, Redwood City, California INTA Board of Directors—2017 Treasurer Tish Berard (Heart’s On Fire Company LLC, USA) presented the Treasurer’s report in Tiki Dare’s absence.
As I end my term as Treasurer, I am pleased to report that our Association is in sound financial standing. The 2017 budget, adopted by the Board of Directors last November, projected a net loss (total revenue minus total expenses) of US $1.1 million, so that we could make strategic investments in benefits for our membership worldwide. We have outperformed on our budget, and we expect to end the year with a net loss of less than US $0.4 million. We maintained a 91 percent membership retention rate in 2017, added 477 unique new member organizations, and now have 7,119 member organizations around the world. Our primary source of revenue continues to be our Annual Meeting, which consistently accounts for more than 50 percent of our gross revenue. When we prepared the 2017 budget, we assumed that attendance in Barcelona would be approximately 5 percent less than the actual attendance in Orlando. I am pleased to report that we exceeded that threshold and hosted more than 10,600 trademark professionals in May. As a result of the Membership Dues and Annual Meeting results, primarily, the Association’s gross revenue for 2017 is expected to be approximately US $22.2 million and US $0.5 million more than budget. Our global footprint and outreach to members continues to grow. This year we held four conferences: an anticounterfeiting conference in Hong Kong; a Latin America conference in Cartagena, Colombia; the Brands and Fashion Conference in New York; and we will be hosting a Brands and Authenticity Conference in Berlin in December. Additionally, Free Trade Zone workshops have been held in Hong Kong, Dubai, and Cartagena. Late this year, we will launch a social media campaign for the Unreal Campaign in an effort to expand our reach to students globally. Earlier this year, we opened our Latin America Branch Office in Santiago, Chile. In addition, by the end of the year, we will have led delegations to India, Canada, Latin America, China, and other Asian jurisdictions, and we held our September Board Meeting in Brussels. We continue to convey an important set of messages to our members, prospective members, and government agencies around the globe of our commitment to education, advocacy, and public policy in all regions. Our U.S.-based events continued to draw strong interest, as evidenced by the number of attendees at the Brands and Fashion Conference in March in New York, the TMAP Meeting in New Orleans in October, and at this Leadership Meeting, where we are hosting more than 1,400 volunteers. Our Association’s staff continued to demonstrate their ability to manage operating expenses during 2017. The forecasted variance of total expenses vs. budget is less than one percent. The noteworthy year-over-year increase in expenses was a result of the Annual Meeting costs, which were higher in Barcelona than in Orlando, and the impact of our International Representative office expansion in Asia and Latin America. As of September 30, the Reserve Fund balance was US $23.1 million, US $2.5 million more than when we met at this meeting one year ago. This is over 100 percent of our operating budget, consistent with our goal for the reserve. During 2017, the Finance Committee has been diligently monitoring and reviewing performance with our investment advisors at JPMorgan. There is an expectation that the overall portfolio will continue to move with the relevant market indices and marginally gain value in the near term. 2017 marks the final year of the 2014–2017 Strategic Plan. In implementing that strategic plan, the CEO and his management team developed a detailed roadmap to grow membership, enhance educational offerings through educational events and online resources, further extend public policy and advocacy around the globe, and develop staff core competencies, all to solidify our Association’s sustainability. The team is well on its way to accomplish this implementation. The 2018 budget will be presented to the Board of Directors today as well. Membership retention is budgeted to be comparable to this year, and Membership revenue is budgeted to increase one percent. For conservative budgeting purposes, we are projecting Annual Meeting attendance in Seattle will be in line with prior U.S.-based meetings. In addition to the unique programming that will be provided in May, we have an ambitious offering of meetings and other programs scheduled around the globe throughout 2018, including programs in London, Sydney, and Dubai. Revenue from our other meetings, conferences, and programs next year is expected to generate US $2.6 million, an increase of almost 9 percent over this year’s forecast. We have plans to expand our legal resources, and public policy and advocacy. INTA’s representative offices in Europe, China, and Asia-Pacific continue their advocacy, membership development, and communications. Our Latin American Office was opened in Santiago, Chile, during the second quarter this year. Our Washington, D.C., office will continue to enhance our presence and effectiveness in Washington, with the support of two staff members, supplemented by expert lobbying and consulting support. We continue to be well served by our consultants in Geneva and Delhi. Underlying all of these activities is the dedication to grow our membership base globally, and consistently enhance our member benefits. The 2018 budget includes projects which will result in a net loss as a result of the full year impact of the Latin America Rep Office, new recruitment, and investment in technology. 2018 will be an important year for INTA as we execute the initial year of the Association’s 2018–2021 Strategic Plan. As Treasurer, it has been an honor to work with the officers, committee members, the general membership, the staff—especially the staff—and the Chief Executive Officer, and I am confident in the continuing progress of our Association.
INTA Hosts Successful Leadership Meeting in Washington, D.C.
Last month, INTA convened the largest Leadership Meeting in the Association’s history in Washington, D.C. Held at the Washington Marriott Marquis, INTA committee members and Association leadership gathered for education, networking, and the last in-person committee meetings during the 20162017 committee term. INTA welcomed members of Congress at several events, including the Welcome and Awards Ceremony and the INTA Political Action Committee (PAC) reception. Additionally, several committee meetings featured dialogues with government officials. Board of Directors Meeting On Tuesday, November 7, the Board Meeting was held at the USPTO, where the Board elected several new Directors and Officers. Additionally, the Board discussed the updated and expanded report on “Best Practices for Addressing the Sale of Counterfeits on the Internet,” which outlines best practices for Internet service providers, search engines, auction sites, and payment providers. Since the 2016 Leadership Meeting, some of the major milestones for the Association recounted by the Board include the opening of the Latin America & the Caribbean Representative Office in Santiago, Chile, an increase in global outreach and engagement on all continents, and the development and implementation plan for the 20182021 Strategic Plan. Further, the Brand Restrictions Presidential Task Force presented to the Board with recommendations for action/future study, as well as strategies for advocacy and communications efforts to raise INTA’s visibility on brand restrictions within a defined scope of issues. Following the Board review of the report, later in the week there was a Leadership Meeting education session focused on this topic, in which panelists discussed the need for brand owners to be focused on this issue with the increase on brand restrictions globally and its challenging effects on brand owners’ products. The Board also passed two new Board Resolutions: Copyright Registration as a Precondition to Infringement Suit Resolution, which recommends that courts permit infringement actions to proceed when a copyright owner has filed an application to register a copyright with the U.S. Copyright Office, along with the required application and fee, rather than requiring applicants to obtain a registration certificate back from the Copyright Office before filing suit. The second resolution adopted Model Design Law Guidelines, which will serve as a standard for INTA analysis and comment on national and regional design laws and regulations. Association Opens Exhibit at the National Inventors Hall of Fame Museum The Board of Directors, in collaboration with officials from the National Inventors Hall of Fame (NIHF), also held a ribbon cutting for the opening of INTA’s exhibit at the NIHF museum, located at the USPTO. At the opening, the NIHF representative stated that “the museum stands as a monument to innovation with the goal to show the power of trademarks, copyright, and patents while educating visitors on issues including the dangerous effects from counterfeiting as illustrated in INTA’s exhibit.” The exhibit was curated by an engaged INTA brand owner project team in collaboration with INTA staff and NIHF officials. INTA’s exhibit at the museum focuses on trademark education and outreach on counterfeiting with interactive activities, published data about the challenges presented by counterfeiting, and tips to help protect consumers from purchasing counterfeit products. It is expected that more than 30,000 visitors will come through the museum in the next year, including school groups, visiting tourists, and the global IP community. INTA is excited by the opportunity to engage with the visitors through the exhibit about the challenges posed by counterfeiting products. INTA’s exhibit will be on display until May 2019 and the museum is free and open to the general public. If you have plans to be in the D.C., Maryland, or Virginia area, we hope you will consider a visit to the NIHF museum! Welcome and Awards Ceremony Following the INTA Board of Directors meeting, the Welcome and Awards Ceremony kicked off at the Washington Marriott Marquis. INTA CEO Etienne Sanz de Acedo welcomed Leadership Meeting registrants to Washington, D.C., and provided brief opening remarks, including an update on the Board Meeting, and announced the incoming Directors and Officers elected to begin their term in January 2018. For the first time at an INTA Leadership Meeting, two Congressional Trademark Caucus (CTC) co-chairs from the U.S. House of Representatives, Representative Ted Deutch (D-Fl-22nd) and Representative John Ratcliffe (R-TX-4th) addressed the audience at the opening ceremony. (Their remarks are available here.) As champions for trademarks on Capitol Hill, their leadership of the bi-partisan, bicameral CTC provides opportunities for education and outreach about trademarks and provides a strong voice for the importance of intellectual property enforcement on Capitol Hill. Their remarks provided registrants with insight about how INTA works with the CTC and its direct effect on educating consumers, businesses, and policymakers about trademarks. In a state of the Association address, INTA 2017 President Joe Ferretti (Pepsico, Inc., USA) touched upon some of the many accomplishments made under the 20132017 Strategic Plan. Highlighting key successes from the past four years, Mr. Ferretti covered a wide array of Association activities, from increased engagement with governments and policymakers worldwide, such as the Congressional Trademark Caucus; expanded global engagement and outreach, including the opening of new offices in Latin America and Singapore; expansion of global education programs, including programs on several continents; and a major global increase in INTA membership. Mr. Ferretti also spoke about how INTA has heightened its presence as a global thought leader with new quantitative studies that focus on data collection and information to help INTA educate, strategize, and collaborate with policymakers, businesses, and consumers. Concluding his address, Mr. Ferretti stressed how the hard work of members and staff are “innovating and moving our Association into the future,” concluding that, “we are poised to begin our next chapter. I believe—and submit to you—that the state of our organization is strong.” Finally, Mr. Ferretti honored members of the INTA community with Volunteer Service Awards, the President’s Awards, and the inaugural Tomorrow’s Leaders Awards. INTA congratulates these members on their achievements and dedication to the Association’s work. INTA PAC Reception Features Senator Cornyn (R-TX) and Representative Issa (R-CA-49th) On Wednesday evening, INTA’s Political Action Committee (INTA PAC) hosted a Leadership Meeting reception with a packed Presidential Suite and remarks from U.S. Senator John Cornyn (R-TX) and U.S. House of Representatives Member, Representative Darrell Issa (R-CA-49th). Senator Cornyn, who is serving as the Senate Majority Whip, discussed current issues in the Senate and answered questions posed by INTA registrants. Representative Issa, who is a patent holder himself and an entrepreneur, noted the importance of the trademark system and the challenges presented by counterfeiting. INTA PAC attendees enjoyed the opportunity to talk with Senator Cornyn and Representative Issa at the reception and appreciated their support and advocacy for brand owners’ interests. INTA Concludes Successful Strategic Plan and Implements New Strategic Plan in January In January, INTA will implement its new Strategic Plan (20182021) and kick off the new committee term with the committee’s objectives and goals tied to the new Strategic Plan. The Strategic Plan and its corresponding Implementation Plan were presented in-depth during a panel discussion featuring INTA President Elect Tish Berard (Hearts On Fire Company LLC, USA), INTA Vice President David Lossignol (Sandoz International GmbH, Germany), INTA Chief Governance Officer Randi Mustello, and Mr. Sanz de Acedo. During the course of the hour-long presentation, which included a lively Q&A, the panelists demonstrated continuity from the 20132017 Strategic Plan to the new Strategic Plan, provided insight into the methodology behind the development of the new Strategic Plan, the rationale behind the updated mission statement, and a shared vision for the future of the Association and its role on the global trademark community. A key goal of the session was to infuse a common understanding of what needs to be accomplished over the next four years among Association leaders and committee members. Looking at the Implementation Plan, Mr. Sanz de Acedo provided concrete examples of projects to be undertaken during the course of the next four years, while Ms. Mustello explained how the committees can be most effective in serving the new Strategic Plan and reminded committee leaders of the various tools available to them. The session was video recorded and will be made available to all members in the coming weeks. Educational Sessions The Leadership Meeting was co-chaired by Elisabeth Escobar (Marriott International Inc., USA) and Peter Chalk (Ashurst, Australia) who developed an innovative program with three days of educational sessions on cutting-edge topics, including sessions on the Madrid Protocol, rights protection mechanisms included in the gTLDs program, public policy strategies, trademark piracy, and the intersection of trademarks and copyrights. A highlight of the educational program was INTA’s Leadership Development Committee session, through its L.E.A.D. (Leadership Enhancement and Development) initiative, which invited the Smithsonian Institution’s Director of the Office of International Relations and Global Programs, Molly Fannon, to address Leadership Meeting registrants. Ms. Fannon spoke about her views on leadership, including that “you have to be human to be a good leader.” In her speech, she encouraged registrants to be innovative in their leadership and to think about how to best share their ideas and passions with others as part of an effort to achieve shared goals and objectives. During an engaging session on the Madrid Protocol, panelists noted the importance of understanding the key role and value of using the Madrid System and the opportunity it provides through trademark protection in a streamlined and cost-effective manner. With increased interest by governments and brand owners, the panelists noted that they believe that the number of Madrid Protocol filings will increase as brand owners further educate themselves about the process. Additionally, with several countries interested in joining the Madrid Protocol, especially in the ASEAN region, interest in the Madrid Protocol will likely soar. With the Leadership Meeting being held in Washington, D.C., there was a unique opportunity to have a public policy and lobbying education session. The panelists provided an overview of the lobbying and compliance rules and processes in the United States, including how political action committees (PACs) work, and discussed components of lobbying and public policy programs. In the trademarks and copyrights session, panelists discussed the importance of reviewing companies’ copyright policies and ensuring that companies have licenses for the content that is being used internally and externally. The panelists explained their compliance programs and how they monitor copyright use in their company and with their customers. See You in Seattle! INTA thanks its members for serving on committees during this committee term and for their active engagement throughout the term, including at the Leadership Meeting. The Association looks forward to an exciting 2018, with the launch of the new Strategic Plan, the new committee term and new committee leadership, and the 2018 Annual Meeting in Seattle, for which registration launches in January. See you in Seattle, Washington!
Committee Spotlight: Famous & Well-known Marks Committee Michael W. Rafter, Kilpatrick Townsend & Stockton, Atlanta, Georgia INTA Bulletins Association News Subcommittee
INTA’s Famous and Well-Known Marks (FWKM) Committee develops and advocates policies and positions to advance balanced protection of famous and wellknown marks (FWKM), which are marks that may enjoy broader protection than ordinary marks in view of their widespread reputation or recognition. The FWKM Committee monitors and analyzes laws, regulations, procedures, and court decisions throughout the world relating to the protection of FWKM, and also maintains a database of FWKM registries worldwide. The FWKM Committee also works with other INTA committees to prepare reports addressing issues relating to famous and well-known marks, such as how the use of 3D printers may impact the protection of such marks. The FWKM Committee consists of more than 190 members and six subcommittees, which are divided by regions (Canada; East Asia & Pacific; Europe & Central Asia; Latin America & Caribbean; the Middle East, Africa, & South Asia; and the United States). During this committee term, those subcommittees have been working on a number of projects: The Middle East, Africa, & South Asia Subcommittee is preparing a report for the Indian Trade Marks Office highlighting potential issues relating to the establishment of recordal of well-known trademarks in India, such as treatment of trademarks that already have been recognized as well-known by various authorities including courts, the Intellectual Property Appellate Board, and the Trade Marks Office. The East Asia & Pacific Subcommittee is working to complete a Domain Name Project as well as a Business Name/FWKM Dispute Project by gathering information relating to those practices in East Asia and Pacific countries, and then, based on that information, produce reports and recommendations on best practices. The Latin America & Caribbean Subcommittee is addressing the issue of protection of FWKM in the context of domain names by completing country questionnaires. The Canada Subcommittee is evaluating and addressing issues relating to new trademark regulations in Canada. The United States Subcommittee is continuing to identify court decisions involving marks that are famous, particularly those in which fame was discussed by the court or played a role in the court’s determination. Based on that work, the subcommittee is working to publish articles addressing best practices for owners of famous marks. Finally, the Europe & Central Asia Subcommittee has worked to publish “The Report on Application of Article 6 (bis) of the Paris Convention in selected Europe and Central Asia jurisdictions.” FWKM Committee members work with government officials around the world to protect the rights of FWKM and to share information about the protection of FWKM. The Famous and Well-Known Marks Practitioner’s Toolkit is evidence of the committee's hard work and a valuable resource for INTA members. Additional content created and maintained by the FWKM Committee is available here. To contact any of the FWKM Committee leaders, visit the committee landing page on the INTA website.
Department Spotlight: External Relations Niti Dewan, R. K. Dewan & Co., Pune, India INTA Bulletins Association News Subcommittee The External Relations department plays a vital role in representing the interests of INTA and its members before intellectual property offices, organizations, and national governments worldwide. “The External Relations department simply helps to make the world safe for trademarks,” says Bruce MacPherson, Director of External Relations and also INTA’s Chief Policy Officer. Bruce oversees INTA’s global public policy issue identification, issue development, and advocacy. He is also the staff liaison for the Association’s Advocacy Group (AG). Bruce leads an agile core team of six staff with government relations backgrounds. They are: Debbie Cohn, Senior Director, Government Relations; Lori Schulman, Senior Director, Internet Policy; Iris Gunther, Advisor, Enforcement; Maysa Razavi, Manager, Anticounterfeiting; Tiffany Pho, Coordinator, Anticounterfeiting; and Tat-Tienne Louembe, Africa and Middle East Representative. External Relations works closely with INTA’s regional offices in Brussels, Santiago, Shanghai, Singapore, and Washington, D.C., and also retains consultants in New Delhi and Geneva, further strengthening INTA’s advocacy efforts. In performing its public policy and advocacy functions, External Relations works closely with and supports the AG along with its Council, 19 standing committees, 103 subcommittees, and five regional advisory committees consisting of about 1,500 volunteers. The External Relations staff don a number of hats on a daily basis to further INTA’s mission and Strategic Plan goals. A glimpse into a normal day at work reveals a plethora of responsibilities, such as: making recommendations for the development of INTA’s policies and positions on trademark-related issues; researching and drafting position papers, testimony, reports, speeches, and correspondence; analyzing proposed legislation and regulations of interest to INTA; reviewing materials for submission to government and intergovernmental entities; participating in INTA’s strategic planning and communications; and representing the Association at various meetings, conferences, and forums worldwide with governments, intergovernmental and non-governmental organizations, including those in the private sector with similar goals. The External Relations staff is also responsible for organizing meetings of top-level delegations of INTA officers and the CEO, with policy-shapers, executives, and the judiciary in key regions of interest for INTA and its members, to put forth and further and promote the Association’s position on important trademark issues. Furthermore, External Relations reviews all material to be placed before the Executive Committee and the Board and plays a key role in facilitating the acceptance of INTA’s proposed positions by the Executive Committee and the Board. Currently, the External Relations team has a number of important initiatives in the pipeline. Some of the interesting priority projects include: getting Board approval on resolutions coming from the Copyright and Designs Committees; organizing dialogues and training for Customs officials, trademark examiners, and judges; assisting the current committees to complete numerous projects before the end of the committee term; ensuring INTA’s voice is heard on a host of legislative and regulatory issues, including putting in final INTA submissions and meeting directly with officials; and supporting INTA delegations to Canada and China. Among its many accomplishments in the last couple of years, those that particularly stand out are the projects the team undertook with several INTA regional offices, including: several submissions to governments regarding brand restrictions and implementation of the EU Trade Mark Directive; forging new relationships with trademark offices in Africa and Southeast Asia; expanding INTA’s visibility and credibility as a significant player in Internet and anticounterfeiting spaces; leading the effort to establish the Latin America Representative Office; expanding the membership and activity of the Congressional Trademark Caucus in the U.S. Congress; and organizing policy dialogues on enforcement matters, particularly with the judiciary. The External Relations team indeed exemplifies international cooperation and team spirit. This article would not be complete without a behind the scenes dive into the personal experiences and personalities of the talented and motivated External Relations team. “I was hired in March 1993 as the International Manager for the United States Trademark Association to handle ‘international’ government relations and to help expand the Association’s influence and presence outside the U.S.,” recalls Bruce. “That May, the name of the Association was changed to the International Trademark Association, which greatly boosted my ability to fulfill my mission,” he adds. The most enjoyable project during his 24-year career with INTA would “definitely have to be finding a way to break the deadlock over voting rights within the Madrid Union, which led the way for the United States and the EU to accede to the Madrid Protocol. The groundwork for the accession of the EU and the United States took about six years, and another ten years for the breakthrough in Latin America with Mexico and Colombia’s accession,” he explains. When he does get some time off, Bruce enjoys visiting Lake George, New York, with his family. When asked about his favorite trademarks, Bruce is careful to give a diplomatic answer, “As an INTA staffer, it is better not to choose among trademarks. All are beautiful and need to be protected!” Maysa joined INTA five years ago as the Anticounterfeiting Coordinator. In her present role as Anticounterfeiting Manager, she develops INTA’s anticounterfeiting strategy and implements it worldwide with the support of INTA’s Anticounterfeiting Committee. She also supports the INTA U.S. Amicus Subcommittee. The most exciting project she has worked on was the Seventh Global Congress on Combating Counterfeiting and Piracy, which took place in Istanbul in 2013—her first international trip representing INTA, where she met with several officials to advocate for stronger anticounterfeiting measures. “I came to INTA looking to change the world a little bit, and this was the first time I felt like I was really meeting that objective,” says Maysa. When she is not reinforcing consumer trust with her work on INTA’s Unreal Campaign, Maysa enjoys playing with her tenmonth-old daughter, Natalie, going to the theater, and traveling. Tiffany, who has been with the External Relations team for just over a year, enjoys working with the Anticounterfeiting Committee and working on the Association’s global anticounterfeiting policy. Her favorite project so far has been the Customs training programs, which she believes provide a lot of value to members, as it gives them the opportunity to interact one on one with officials in the public sector, thereby building great relationships. Tiffany believes that anticounterfeiting enforcement plays a huge part in promoting the value of trademarks and protecting consumers: “Brands devote so much time and resources into creating a product that consumers trust, and when the consumer inadvertently gets a counterfeit product, their trust in that brand is impacted.” In her free time, you can find Tiffany cooking and going on long walks with her dog Shoyu or visiting the Metropolitan Museum of Art. Iris is an Advisor, External Relations, Enforcement and deals with substantive legal issues related to enforcement, drafting of legal comments or submissions to government authorities on legislative projects, and planning advocacy events. She also manages and supervises the INTA trademark portfolio. “There have been several interesting projects so far, but at this point the organization of the Brand Authenticity Conference, the judges workshops, and management of INTA’s involvement in the development of the Hague Convention stick out,” she says. Iris has diverse interests, such as hiking, watching her child play baseball, photography, painting, gardening, traveling, and volunteering at shelters. She likes trademarks with a mission and a good message, such as PATAGONIA, TOMs, and NATURA. “As far as great marketing goes, GEICO wins—I can’t stop laughing over these goofy ads!” Tat-Tienne (“Tat”) is from Congo Brazzaville in Central Africa. He recently moved to New York from Vienna, Austria, where he was working for the United Nations Industrial Development Organization. Tat is an Associate on the External Relations team in charge of coordinating INTA engagement with brand owners and government officials in Africa and the Middle East. “IP could be an interesting tool for the two regions to boost job creation and further economic diversification,” Tat says. “My role with INTA allows me to interact with many interesting people.” While their mandate is daunting, the dedicated External Relations team members along with the extraordinary volunteer members from the AG channel their energy and passion into expanding INTA’s growing influence on important trademark issues and advancing the cause of brand owners worldwide.
Department Spotlight: Finance & Administration Shefali Sewak, Sewak & Associates, New Delhi, India INTA Bulletins—Association News Subcommittee
The Finance & Administration department works behind the scenes to maintain INTA’s financial health and to keep the cogs duly turning. Although this department is not a member-facing one, its role is vital because it handles everything from preparing annual budgets and providing accounting support to INTA’s overseas office, to monitoring expenses and seeking ways to reduce costs. The department is staffed with some INTA veterans as well as newcomers. Michael Lindsay is Director of Finance & Administration, and has been with INTA for four months. Although his daily tasks vary, they include reviewing and overseeing INTA’s financial results, coordination of the annual budget process and forecasts, analyzing INTA’s cash flow position and forecast, and working with various vendors, including investment advisors, auditors, insurance agents, and benefit providers. His primary focus since joining the Association has been the production of the 2018 budget, in addition to becoming familiar with the structure of the Association and its various departments. Michael’s role is to ensure that senior leaders understand the current financial status of the Association and how strategic decisions can have an impact on its financial well-being. He is responsible for ensuring that financial and cash flow forecasts are up to date, reflect current business initiatives, and are available to assist in the decision-making process. Michael has enjoyed getting to know the members of the Finance team. When not working, he enjoys fishing off the New Jersey coastline, and attempts to hit the treadmill a few times a week. He is an avid college sports fan, following both football and basketball. Michael always makes time for his family, including his three daughters. Although he is not a techie, he has always admired how Steve Jobs changed people’s everyday lives, so it is no wonder that his favorite trademark is APPLE. Andrea Grant has been with INTA for over 11 years and currently serves as Analyst, Finance & Accounting. Her job covers accounts receivable, finance, and accounting for the U.S. offices, budgets, and finance core support. She particularly enjoys working on INTA’s budgets. She sees the Finance department as helping in implementing INTA’s mission and Strategic Plan goals by supporting all the other departments. For fun, Andrea likes to spend time with family, travel, and attend sports events and concerts. Her favorite trademarks are HALLMARK, GRACE FOODS, and BRIDGET SANDALS. Trevor Longchamps has been working with INTA for one year as Analyst, Finance & Accounting. Although he sits in INTA’s New York headquarters, he is responsible for providing finance, accounting, and budget support to INTA’s Representative Offices around the world, as well as helping to coordinate the value-added tax (VAT) filings in many countries where INTA does business. In order to accomplish this, he uses multiple systems at a time, including INTA’s accounting software, payables management system, and budgeting and reporting portal. Although Trevor finds that this is usually the point in his job description when his audience’s eyes glaze over, he finds it very rewarding work and thinks the people he works with are top-class. His favorite project has been the rollout of INTA’s new budgeting and reporting software, BI360, which provides a dynamic and efficient way to collect data and report financials that INTA did not previously possess. However, his favorite experience with INTA has been the Annual Meeting in Barcelona this past year, where he enjoyed meeting members and observing the incredible end product that he had been hearing about since day one. As the team member responsible for finance support for INTA’s Representative Offices, he does his part to ensure that INTA’s offices are compliant with the varying tax and audit requirements in their respective countries, so that they may continue to promote the value of trademarks and brands, reinforce consumer trust, and embrace innovation and change. Trevor is an avid runner. He tries to go for a run every day, usually along the Hudson River in New York. His favorite trademarks are MASERATI and BURBERRY. Carolann Bowen has been with INTA for five years. She originally started as a receptionist for the Association, but after one year a position opened and she was invited to the new role of Human Resources and Governance Assistant. She is currently Associate, Accounting, within the Finance Department. She processes all payments for INTA and secures approvals with respect to the current Banking Resolution. During her career with INTA, she most enjoyed working on the launch of the new Electronic Payables Process. As part of the Finance team, she monitors expenses and constantly seeks ways to reduce costs, which goes a long way in supporting INTA’s mission and Strategic Plan goals. Carolann likes to travel and entertain when she is not working. Her favorite trademark is PATRÓN. Kirk Colquhoun has been with INTA for a little over 17 years. He began working with the Finance & Administration Department in the role of Production Room Coordinator and is currently Assistant, Operations. As Assistant, Operations, Kirk is responsible for handling all day-to-day facilities issues, including interfacing with operations vendors, security, and building management, while maintaining the overall quality and operational functionality of the INTA office. He works directly with the organization’s management team to help maintain a safe and professional work environment for INTA’s staff. Kirk enjoys working on the Annual Meetings. As part of the supporting team that puts the Annual Meetings together, Kirk finds it gratifying to see how successful they are, and to be part of an event that helps its members in such a great way. He is a huge soccer fan, and his favorite teams are Argentina, Manchester United, and FC Barcelona. In his spare time, he likes to not only watch soccer but also play a little soccer himself. He also enjoys a good game of dominoes with friends, as well as spending quality time with his wife Sacha, and daughters Kacey and Ashlee. His favorite trademarks are MANCHESTER UNITED, FC BARCELONA, NIKE, and ADIDAS.
Welcome New Members Beyond Talent Intellectual Property Agent Ltd., Beijing, China Lian & Lien IP Attorneys, Beijing, China Martinez Devia & Asociados, Bogota, Colombia Gruner + Jahr GmbH & Co KG, Hamburg, Germany Innova & Partners S.r.l., Rome, Italy Salvatore Ferragamo Spa, Firenze, Italy Tokai Patent Law Firm, Aichi, Japan Online Patent, Moscow, Russia KLP IP Firm, Seoul, South Korea Peleato Patentes Y Marcas S.L., Zaragoza, Spain Jeffree Star Cosmetics, Chatsworth, California Revision Legal, Traverse City, Michigan Nadia Molina Law Office, Guayas, Ecuador Bertelsmann SE & Co. KGaA, Gutersloh, Germany Pang Wei Hsu, Taipei, Taiwan IP.TECH-Legal, Istanbul, Turkey IP Together Limited, London, United Kingdom Dogfish Head Craft Brewery, Milton, Delaware Moore & Van Allen PLLC, Charlotte, North Carolina Studebaker & Brackett PC, Tysons, Virginia Trademark Well, San Jose, California ARAG LTD, Yerevan, Armenia Johnson IP, Shenzhen, China Ming Dun Law Firm, Beijing, China Artpatent Law Office, Praha, Czech Republic HGF BV, Duivendrecht, Netherlands RIEBLING IP, PLLC, Washington, D.C. Guangzhou Zhengyu IP Co., Ltd., Guangzhou, China KG Intellectual Property Law Firm, Hangzhou, China Standard Patent & Trademark Agent Ltd., Shenzhen, China A, O & O Legal Practitioners, Lagos, Nigeria
Asia Pacific Update INTA Renews MOU in Vietnam: Sets Course for Next Three Years On Friday, November 17, INTA and the Vietnam Ministry of Science and Technology (MOST) Inspectorate celebrated the conclusion of a three-year research project on Vietnam’s well-known mark regime and renewed the Memorandum of Understanding (MOU) for another three years. Under the new MOU, INTA and MOST will work on a research project focused on e-commerce anticounterfeiting. Representing INTA at the closing ceremony was Louis Chan (Proctor & Gamble Singapore, Singapore), a member of INTA’s Board of Directors. “Under the MOU, INTA and the Vietnam Ministry of Science and Technology Inspectorate have worked together for three years researching global trends on well-known marks protection, the situation on the ground in Vietnam, and together we worked on a series of recommendations for improvements to the legislative and regulatory framework in Vietnam,” Mr. Chan said. A task force of INTA volunteers, Vietnamese academics, government officials from a cross-section of IPRrelated departments, and members of the Vietnam IPR community worked on a series of policy dialogues over the three years of the MOU project. These dialogues were held in several major cities in Vietnam, including Hanoi, Ho Chi Minh City, and Danang. Vice Minister of MOST addressed the audience of more than 150 attendees at the closing ceremony. He noted that well-known marks protection is an important feature of Vietnam’s IP commitments and a key feature of the country’s economic strategy to grow innovative companies. He noted the strong cooperation of leading Vietnamese brands, including VINAMILK and VINACAFE. INTA Asia-Pacific Chief Representative, Seth Hays, provided the audience with INTA’s perspective on wellknown marks, including INTA’s position in support of the WIPO Joint Recommendation from 1999. Tom Treutler (Tilleke & Gibbins, Vietnam) and INTA subcommittee chair of the Famous and Well-known Mark Committee, spoke on behalf of practitioners. He said that, although Vietnam IP practice has been using provisions for well-known marks, this project has provided new opportunities to study the pros and cons of other systems, such as well-known marks registries. The Deputy Chief Inspector of MOST, Nguyen Nhu Qunh, noted at the ceremony that the MOU implementation was challenging work, but results had forged substantial friendships for Vietnam’s IP community at an international level. The forthcoming MOU project will focus on the emerging issue of e-commerce anticounterfeiting in Vietnam. Internet penetration is growing in the country, and retail sales online are outpacing brick-and-mortar sales, as in most countries. E-commerce is a focus of the regional Free Trade Agreement, the Regional Comprehensive Economic Partnership (RCEP), which includes 15 countries. Next year, as Singapore takes the chair of ASEAN, news reports indicate that ecommerce integration in ASEAN will be a focus. In this context, INTA would like to bring platforms and brands to the table to discuss IP protection, as recommended in the recently approved Voluntary Best Practices to Combat the Sale of Online Counterfeits, passed by the INTA Board at the Leadership Meeting in Washington, D.C., in November. INTA’s activity has been growing recently in Vietnam. On November 16, INTA held a reception of members to discuss the new 20182021 Strategic Plan, and the next day following the MOU ceremony held an IP Valuation, Equity, and Commercialization workshop focused on what INTA can do for the Vietnam IP community in this space over the next few years. For more information or to get involved in the future activities in Vietnam, please contact Seth Hays at [email protected]
Committee Updates 3D Printing: Key Legal Issues and Options for Change John Froemming, Jones Day, Washington, D.C. Designs Committee
The 3D Printing Task Force of the Designs Committee, Designs Communications Subcommittee, prepared a comprehensive report summarizing the law of direct and secondary liability under copyright, trademark, trade dress, design, and patent law as it relates to 3D printing. In the report, it is recommended that brand owners and IP associations continue to monitor developments in this emerging area before advocating any changes to existing law. Given the difficulty and inefficiency of identifying and proving direct infringement by large groups of smaller users or sellers of 3D-printed articles, the report notes the different standards that rights holders face in pursuing “upstream” providers and platforms of infringing designs under one or more of these different areas of law. Under copyright law, a defendant is a contributory copyright infringer if it has knowledge of a third party’s infringing activity, and induces, causes, or materially contributes to infringing conduct. Owners of 3D printers, or Internet service providers (ISPs) that create or distribute copies or digital files of copyrighted 3D objects, may therefore be liable for contributory copyright infringement to the extent their offerings are replete with copyrighted works or designs for models thereof. Secondary liability for trademark or trade dress infringement is more narrowly drawn than for copyright infringement, but arises if a manufacturer or distributor continues to supply its product to one whom it knows or has reason to know is engaging in infringement. Thus, a party that creates or uploads a 3D printing file may be liable for contributory trademark or trade dress infringement if it is encouraging unlawful copying by others. Under utility patent law, direct infringement requires that an invention or component thereof be made, used, or sold, so persons or intermediaries who engage in such activity face liability for direct infringement, but mere distributors of digital files are unlikely to be held liable for direct infringement of a patent. Those who make, use, or sell a patented design are directly liable if an ordinary observer would view the challenged design as substantially similar to the patented one, such that it would be deceived into purchasing the challenged design supposing it to be the patented one. For secondary liability, a distributor is liable for statutory inducement only if it is shown subjectively to believe there is a high probability that a fact of infringement exists, and that it takes deliberate actions to avoid learning of that fact. Given the above law, commentators have suggested that patent law is the least useful at this time to deal with 3D printingrelated infringement on a large scale. The Designs Committee is chaired by David Stone (Allen & Overy LLP, UK) and the 3D Printing Task Force by John Froemming (Jones Day, USA). The task force worked collaboratively with other Advocacy Group committees, including the Brands and Innovation Committee, the Copyright Committee, the Famous and Well-Known Marks Committee, and the Emerging Issues Committee. The report can be found here.
In-House Practitioners Idea Exchange Elisa Valenzona, Abbott Laboratories, Abbott Park, Illinois Belinda Berman, United States Golf Association, Far Hills, New Jersey In-House Practitioners Committee
In September 2017, INTA’s In-House Practitioners Committee hosted two Idea Exchange sessions on International Licensing and Franchising. A diverse group of INTA corporate in-house members from various countries and industries participated in the teleconference. Susan Crane, Group Vice President Legal, Intellectual Property for Wyndham Worldwide Corporation; Allison McDade, Senior Trademark Counsel, 7-Eleven, Inc.; and Michelle Peterson, Trademark Administrator, 7-Eleven, Inc., were the moderators of these sessions. This article provides a general overview of the issues discussed and the experience encountered by participants in the session, but does not identify any individual or corporate views discussed. Internal Operations Do business colleagues interact directly with trademark counsel or the business unit/franchise lawyers? In many cases it is a team effort between trademark counsel and international franchise counsel working side by side with the international licensee or master franchise licensee. Who is responsible for developing the trademark/branding guidelines? Most participants indicated that it is usually the marketing/branding department that develops the guidelines and seeks input from others, including trademark counsel. Trademark counsel has an opportunity to make changes and clarify guidelines based on their experiences with other entities to avoid confusion and misuse of the brand. What factors are evaluated when considering whether license recordation is necessary? When recordation is necessary to validate the license, or permit royalties to leave the country, and/or for enforcement purposes, license recordation is pursued, and where possible, a short summary of the license is recorded as opposed to the full agreement. Tracking recordation of the license can become complicated as it is not always tied to the trademark renewal or other trademark filings necessary to maintain the mark, and it is important to have a system in place to ensure that recordation is tracked along with license renewals. For example, participants noted that in Brazil, the trademark office takes the position that the license is only valid for the period of latest expiring registration. This can create a lot of issues when there are multiple marks in the agreement and might require re-execution of agreements and amendments for each registration. Of interest, it was noted that in Thailand a license is invalid if not recorded and a franchisee can demand a refund of the royalties paid if the license is not recorded. Most participants agreed that license recordation is difficult due to the variation of recordation requirements in each jurisdiction. INTA’s Country Guides was identified as a useful resource that includes licensing and recordation requirements by jurisdiction. (INTA’s Country Guides: Essential Information on Trademark Protection Worldwide is available exclusively to INTA members and is a comprehensive searchable database of 120+ country profiles, offering basic, practical information on: trademark filing, prosecution, registration, maintenance, customs recordation and domain names.) Establishing Strategy What model of franchising is most often used? If the entity is new to the country and it doesn’t have boots on the ground, it will usually operate with a master franchisee and a local expert. If established in that country (or once established down the road), the entity might enter into a franchise agreement directly with the local, smaller entity. However, working with a master franchisee allows for it to handle the franchising directly with local entities and that can be more efficient when there is a significant volume in that country. What is the approach to local marks, variations from branding guidelines, and domain names? There was a consensus that when a corporate entity wants to transliterate or use a trademark in a local language/characters, it is addressed in the master agreement that prior approval must be obtained, and there must be adherence to specific guidelines. However, the corporate entity will manage the local trademark filing as opposed to the franchisee. Additionally, if permitting variations, it is done by formalizing the details with specific guidelines, and documenting that it is authorized as necessary due to local law. Franchise owner participants agreed it was challenging to manage the domains. Alternatives suggested were to acquire and license predefined, branded domains to the franchisees. What is the course of action when things go wrong? When a master franchisee defaults, and is unable to cure the default, entities have taken over the relationship, sometimes permanently and sometimes as part of a transition until a new master franchisee relationship is established. For that reason, master agreements have a provision that if terminated, then the underlying agreements with local and direct franchisees revert to the company and/or can be assigned to a new master franchisee. Also, if you own the real estate and you terminate, then it can be an easier transition if corporate takes control, but it helps to have boots on the ground and know the local government operations. The participants noted that they use checklists with very specific actions for a de-identification process when necessary. Participants all seemed to agree that certain jurisdictions—such as China, Pakistan, or Bangladesh—were often challenging for franchise disputes. For example, in China, AIC (Administration for Industry and Commerce, a national organization with local departments in every province and major city) will generally not get involved in a franchise dispute because it deems this to be a business dispute between two related parties. An additional difficulty that was discussed is timing needed for the former franchisee to cease all use of the brand when the branding is architecturally part of the building or there are design features that are unique to the brand, e.g., brand logo is a design feature in carpet throughout the premises.
Enforcement INTA Hosts Workshop for Andean Community Judges One of the projects of the 20162017 Enforcement Committee was to address the need for educational workshops for judges on IP and trademark matters. After a first workshop was rolled out in 2016 in Costa Rica, the respective task force, under the lead of Editha Hechanova (Hechanova Bugay Vilchez & AndayaRacadio, Philippines), established contact with the Court of Justice of the Andean Community to organize Judges Workshops for this highest level court for the community consisting of Bolivia, Colombia, Ecuador, and Peru. The first workshop, set at the seat of the Andean Community Court in Quito, Ecuador, on October 26, was predominantly organized by local member and INTA Board member Maria Cecilia Romoleroux (Corral Rosales, Ecuador), who was able to gain the support of Pablo Tinajero, Justice at the National Court of Justice of Ecuador. The event attracted more than 120 guests, consisting of the judges of the Andean Community Court as well as the Administrative Litigation Court of Ecuador and Examiners of the Trademark Office of Ecuador, IEPI. Ms. Romoleroux moderated the program and speakers included Dr. Tinajero, Christian Bittel from the Buenos Airesbased ASDIN (Asociación de Derechos Intelectuales), and José Luis Londoño, INTA’s Chief Representative Officer for Latin America. The workshop addressed several current topics of interest relating to the Andean Community Court and IP law, including the system and functioning of the Andean Community Court and the interpretation of its judgments by the local courts, the application and implementation of Andean Community rulings, patentability, and well-known marks and their treatment in the Andean Community. Interestingly, the vast majority of Andean Community Court rulings concern IP cases following the leading decision 486/2000, which updated Andean IP laws in order for Andean Community members to meet TRIPS Agreement protection standards. Some of the latest case law of the Andean Community Court concern the partial cancellation for non-use of a trademark and an interpretation of Decision 486 with regard to the evidentiary requirements on the trademark owner in these cancellation cases. With respect to the protection of well-known marks, the Andean Community Court distinguishes between trademarks registered in the Andean Community and those registered outside, with significant privilege attaching to the registration or use of a trademark within the Andean Community, where neither registration nor use in the country of application are required to obtain protection in the Andean Community as a whole. The same benefits do not apply for extracommunitarian well-known marks, for which use and registration need to be shown in order for the well-known status to apply. While the IP decisions of the Andean Community Court seem to be advancing trademark protection in the Andean Community, the judges and attendees of the event seemed to appreciate the lively discussions about the local law and INTA’s positions and policies. INTA welcomed the opportunity to interact with the judges and other attendees and engage in the exchange of knowledge and ideas in trademark matters with a view to increasing understanding and appreciation of trademark law and jurisprudence worldwide. The Association hopes to be invited to organize similar events in the other Andean Community states in 2018 to continue this important project. INTA and the Enforcement Committee wish to thank Ms. Romoleroux for her tireless work in organizing and hosting this event.
Europe Update INTA Outlines Priorities for Brexit Negotiations Recognizing the need to further advocate for strong intellectual property (IP) protection and harmonization as Brexit negotiations unfold, the International Trademark Association (INTA) Board of Directors approved a Brexit position paper (detailed below) at its meeting on November 7. The decision of the United Kingdom to leave the EU—commonly referred to as “Brexit”—following its referendum on June 23, 2016, is the single most important issue for the “unity of the EU,” according to EU Council President Donald Tusk, and the UK’s “future outside the EU,” according to Queen Elizabeth’s 2017 speech to the UK Parliament. Brexit triggered an era of uncertainty not only for government officials, but also for businesses and citizens in the EU and the UK as well as for their international partners. Only two things appear certain in the process of Brexit: its length (two years—until March 2019—or more) and its complexity (given the areas affected, from citizens to funding, from banks to farmers, from agencies to the judicial system, and more). The triggering of the formal Brexit negotiations in March 2017 and the sixth bilateral rounds of negotiations that ensued since June 2017 have so far failed to shed light as to what a post-Brexit world will look like for citizens and businesses. Moreover, while the EU and the UK are currently focusing negotiations on the fate of their respective citizens living in each other’s territory, the “bill” to be paid by the UK to exit, and the UK’s border with Northern Ireland, intellectual property has been completely left out of the list of priorities on both sides. Therefore, brand owners and practitioners are left in the dark as to what will happen to IP once Brexit actually happens. Efficient Mobilization, a Clear Position, and Effective Tools Are Essential Conscious of this state of play, and willing to address the uncertainties surrounding brand owners and their impact on consumers, INTA has been mobilized from the start. INTA held bilateral meetings with both the EU Commission’s negotiating team and the UK Intellectual Property Office to raise awareness of IP and brand protection and advocate making that a priority in the Brexit negotiations. Moreover, INTA sought to offer brand owners and IP practitioners concrete responses and tools to identify issues. INTA developed a short-term response by creating the Brexit Rapid Response Group (BRRG) to come up with swift, practical, and strategic proposals to prepare brand owners and IP practitioners to face the consequences of Brexit. In March 2017, for example, the start date of the concrete Brexit negotiations, the BRRG published the Brexit Brands Toolkit: Preparing Brand Owners for Brexit. This document serves as a guide for companies on key Brexit issues and on determining the allocation of sufficient resources to prepare a company’s brands for Brexit. On the other hand, in recognizing the mid- and long-term need to advocate for strong IP protection and harmonization, and making that a priority as the process of Brexit negotiations unfolds, INTA decided to form a Brexit Cross-Committee Task Force to make recommendations on issues of particular concern for brand owners. The Brexit Cross-Committee Task Force consists of volunteers from the Legislation and Regulation Committee/Europe and Central Asia Subcommittee, the European National Trademark Offices Subcommittee, EUIPO Subcommittee, and Madrid System Subcommittee of the Trademark Office Practices Committee, the Anticounterfeiting Committee/EU Subcommittee, the Parallel Imports Committee, the Designs Committee, and the Geographical Indications Committee. After a lengthy process to gather the different committees’ input, INTA’s taskforce finally came up with a position paper that was ultimately approved by INTA’s Board of Directors on November 7, 2017. In particular, INTA is advocating that both the EU and the UK support, promote, and safeguard the following core principles for brand owners and IP right holders during the negotiations as well as when Brexit becomes effective: Minimum disruption of trade; Minimum costs; Maximum retention of rights; Maximum transparency and legal clarity; and A transitional period in order to adapt to the new rules. With regard to specific issues, INTA is of the opinion that the following should be considered priority during the Brexit negotiations: Registered EU trade marks (EUTMs); EUTM applications; EUTM oppositions; Non-use vulnerabilities of registered trademarks; Trademark cancellation actions; Registered and unregistered Community designs; Geographical indications; Enforceability of court decisions, including preliminary and permanent injunctions; Exhaustion of rights; Territory, including agreements related to license, settlement, and coexistence; Enforcement, including border measures and anticounterfeiting actions; International systems, including Madrid and Hague; and EUTM database/EU designs database. The Way Forward This position paper is only a first step. Brexit negotiations continue between the EU and the UK with a possible seventh negotiation round to take place in early December before the EU27 Council meeting (27 heads of state and governments) on December 1415. This meeting is notably due to decide whether “sufficient progress” has been made on the current “divorce” phase of the negotiations to consider parallel negotiations on the future relationship between the EU and the UK. This should open new areas and sectors for negotiations (so far only limited mainly to the citizens, the “bill,” the border with Northern Ireland, and other separation issues). In that framework, INTA will now have to engage in outreach and promote its position paper as well as advocate for IP issues to be put on the agenda of the negotiations as a priority. This strategy will be directed towards both the EU and UK. While the deadline towards Brexit looms (March 2019, if the EU27 Council does not decide to extend it), INTA is fully prepared to advocate and support a balanced and sustainable Brexit agreement for both parties while maintaining strong protection for IP rights and brand owners in the UK as well as in the EU. See INTA’s dedicated Brexit portal for more information on Brexit and INTA’s actions on the subject.
Latin America Update INTA Active in IP Events Throughout Latin America October and November 2017 were busy and productive months for INTA’s Latin America and the Caribbean Representative Office, as it actively participated and hosted multiple IP enforcement and advocacy events throughout the region. INTA’s Position and Recommendations on Andean IP Law Following the Changing Landscape of Latin America Conference and the Free Trade Zone Workshop in Cartagena, Colombia, Chief Representative Officer José Luis Londoño participated in the 5th International ACPI (Colombian Association of IP Professionals) Congress, held in Bogotá on October 5. The conference focused chiefly on Decision 486 of the Andean Community, which established a regional IP regime, and its relationship to the domestic regulations of Andean countries, particularly Colombian law. INTA shared its views on Andean law from the perspective of trademark owners, and how a harmonized law or regime may benefit them and the economic growth and well-being of the region. Successful Anticounterfeiting and Border Control Seminar Held in Chile On October 2425, a two-day seminar titled “Methods for Detecting Counterfeit Goods and Border Control Challenges” was co-hosted by the National Customs Service of Chile (SNA) and INTA. On behalf of INTA, the main co-organizers were Francisco Carey (Carey Abogados, Chile), Chair of the Anticounterfeiting Committee’s Latin America and the Caribbean Subcommittee, and Mr. Londoño. On behalf of the SNA, the main co-organizers of the seminar were Javier Uribe, Deputy Director of Customs Inspection, and Mirta Letelier, National Director of the Intellectual Property and Public Health Integrated Inspection Program (PIF). More than 80 participants attended the seminar, as well as 15 speakers, including authorities and representatives of famous global brands. Most attendees were Chilean National Customs officers and authorities from all over Chile, as well as top-ranked police authorities (Carabineros and PDI), officials from the Chilean IPO (INAPI), and the National Consumer Protection Agency (SERNAC).
Day one of the seminar was divided into three industrial sector-related sessions, each presented by a famous global brand representative. The first session corresponded to cosmetics, perfumery, and luxury apparel; the second corresponded to sportswear and footwear; and the third corresponded to other products, such as sunglasses, outdoor gear, backpacks, pharmaceuticals, personal care products, and wristwatches. During his presentation on day two, Mr. Londoño presented INTA’s objectives and visions regarding Latin America, based on figures and graphs which demonstrate the growing importance of trademark-intensive industries in the region, in terms of GDP, employment rate, and international trade. Mr. Londoño also addressed the disturbing increase in illicit trade in Latin American economies, particularly of counterfeit goods, the second most profitable illicit trade activity after drug trafficking on the continent. Finally, Mr. Londoño shared some insights and recommendations to combat illicit trade activities affecting brands in the region, notably the strengthening of existing legal frameworks and mechanisms, e.g., TRIPS and the WCO Revised Kyoto Convention, etc., invigorating border control measures, and keeping up to date with the latest inspection mechanisms against the latest, most sophisticated types of counterfeiting and piracy trends. The seminar made front-page national headlines in El Mercurio—the oldest and largest newspaper by circulation in Chile—and primarily highlighted the amount and nature of counterfeits seized in Chile by the SNA during 2017, worth “more than US$ 28 million, double the amount seized five years ago.” INTA Hosts Judges Training Workshops in Ecuador and Paraguay On October 25, INTA hosted a Judges Training workshop in Quito, Ecuador. The event was attended by more than 120 government representatives from the Ecuadorian judicial branch and the Ecuadorian Institute of Intellectual Property (IEPI). The key topics discussed included evidence of use for cancellation actions, new criteria for both coexistence of trademarks and examination of marks written in foreign languages, as well as enhanced protection for famous and well-known marks, among others. In a similar fashion, INTA hosted a Judges Training workshop in Asunción, Paraguay, on November 2. The main topics discussed were the jurisdictional control of administrative decisions taken by the Paraguayan National Directorate of Intellectual Property (DINAPI); precautionary measures offered by Paraguayan legislation in relation to IP infringement; protection of famous and well-known marks and INTA’s position on the subject; DINAPI’s role in relation to copyright collection associations; and finally, further recommendations to strengthen DINAPI’s domestic institutional positioning. INTA Well-Represented by Active Members in Mid-November IP Events Finally, INTA’s efforts in the region were once again displayed in two mid-November IP events held in South America and the Caribbean. On November 910, an event titled “Ibero-American Workshop on the Observance of Rights of Distinctive Signs: Development of Harmonic Public Policies” took place in Lima, Peru, and was jointly organized by WIPO, the Ibero-American Program for Intellectual Property and Development Promotion (IBEPI), and the Peruvian National IP Office (INDECOPI). On behalf of INTA, 2016 2017 Global Advisory Council member Luis Alonso García (Estudio Echecopar - Baker & McKenzie International, Peru) participated on a panel about the role of IP agents in the enforcement of IP rights. On November 2023, INTA was once again represented in a regional event, this time by INTA member Jaime Angeles (AngelesPons, Dominican Republic). Mr. Angeles participated in the 5th Regional Meeting for Latin America and the Caribbean of the Container Control Program (CCP) of the United Nations Office on Drugs and Crime (UNODC), which took place in Santo Domingo, Dominican Republic. Mr. Angeles had the chance to share INTA’s positions on the region with senior UNODC-CCP officials, and stressed further cooperation opportunities with INTA in Latin America and the Caribbean. In sum, both October and November were very productive months for INTA in the region, in terms of countries visited, topics addressed, and collaborative efforts displayed. INTA’s Latin America & the Caribbean Representative Office looks forward to hosting and participating in several other events in December 2017 and the first part of 2018, many of which are being discussed and planned already.
Trademark Office Updates Myanmar Presents New Trademark Bill Denise Mirandah, Mirandah Asia (Singapore) pte ltd, Singapore INTA Bulletins Law & Practice—Asia Pacific Subcommittee
From August 810, 2017, the draft of Myanmar’s Trade Mark Law was published in newspapers for public comment. The bill is now being reviewed by the concerned Draft Law Committee of Parliament. This article serves to provide an overview of the existing system of trademark registration procedures and the proposed new laws. Current System of Trademark Laws In the absence of a dedicated IP office, registration procedures are presently administered by the Office of the Registration of Deeds. Applications must be filed using one Declaration of Ownership for each mark, pursuant to Section 18 of the Registration Act. Moreover, for foreign applicants, a notarized and legalized power of attorney (POA) in favor of a local trademark agent, with an address for service in Myanmar, is also required. Once the the legal procedures for trademark registration have been completed, the registered mark is then published in Myanmar newspapers as a “Cautionary Notice” to keep third parties on notice of the mark holder’s ownership. Subsequently, a trademark renewal may be declared with the submission of a Declaration of Renewal of Trademark and a further POA to the local agent. Nevertheless, if an applicant does not renew, there will be no invalidation of the applicant’s trademark since, upon registration, it is valid indefinitely. However, it is advisable to renew every three to five years and also to republish the “Cautionary Notice” every three years. New Trademark Bill First-to-File Ownership: The new registration system will recognize trademark owners on a first-to-file basis. This means that—irrespective of prior use —it is possible for someone else to validly register a mark and prevent anybody else from future use. Foreign businesses will be able to apply to register trademarks under the new rules; however, their application must still be made through local agents. IP Office: Under the new law, the Myanmar Intellectual Property Office (MIPO) will be established under the Ministry of Education (Science & Technology). Registrable Marks: Under the draft law, a more liberal definition of registrable marks—to include trademarks, service marks, collective marks, and certification marks—will be adopted. It will also protect geographical indications and well-known marks. Opposition and cancellation actions will become available, and trademark infringement will become a criminal offense under the new law. Validity: Registration of marks under the new law will be effective for ten years, with the option to renew indefinitely at the end of every ten-year term. Non-use of a mark for three consecutive years will be sufficient grounds for cancellation. Transition Measures: Persons holding marks under a Declaration of Ownership under the current system will need to re-file such declarations within three years of the new law’s commencement, and all existing marks will have to be re-examined for registration once the new law has come into force. Lastly, there have been preliminary discussions on introducing specialized IP courts covering trademark infringement. However, nothing has come to light in the draft law concerning conflicts between marks recorded under the current system. The bill’s approval is expected by the end of 2017 and it is hoped that its enforcement as an Act will follow in 2018.
The Qingdao Phenomenon: Madrid System Use Linked to Economic Growth Matthew Forno, Senior Counsellor, Madrid Registry, Brands and Designs Sector, WIPO Sally Khalil, Consultant, Madrid Registry, Brands and Designs Sector, WIPO WIPO and the Qingdao Municipal People’s Government announced in September the publication of a joint study on use of the Madrid System to promote economic development in Qingdao, China. The Qingdao Phenomenon In July 2011, WIPO and the Qingdao government signed a Memorandum of Understanding (MOU) to carry out a joint study on the use of the Madrid System in China to promote local economic development. As China’s emerging “brand capital” and a national base for innovative high-tech marine and port industries, Qingdao City provides an interesting case study on the most effective way to protect trademarks abroad. The study was carried out during China’s 12th Five-Year Plan (FYP) between 2011 and 2015. Qingdao’s total cumulative exports grew two percentage points higher than the national average (to USD 45.917 billion), despite regional economic downturns experienced during this period. By the end of 2015, international applications filed under the Madrid System in Qingdao experienced a remarkable increase, rising to 1,836 filings during the five-year study period (compared to just 59 filings between 2006 and 2011). Over 800 applications were filed in 2015 alone, representing nearly 35 percent of total filings from China and a staggering 88.15 percent of applications from Shandong Province. This notable increase in applications under the Madrid System alongside parallel growth in economic development was dubbed the “Qingdao Phenomenon.” The Study: Key Findings and Conclusions The study, which will be supplemented by a video highlighting the key lessons learned and a case study featuring local enterprises and individuals, identified three principal limitations affecting international trademark registration in Qingdao: Awareness of the importance of trademarks in international commerce; Breadth of government support for international trademark registration; and Level of expertise among trademark agencies. Results from the Qingdao case study demonstrate how a targeted promotional, educational, and incentive-based program can overcome these limitations, giving rise to remarkable growth in international trademark applications under the Madrid System alongside parallel economic expansion. An Executive Summary of the report, including a more in-depth look at the strategies used by the Qingdao government to overcome barriers to international trademark registration, can be found here. This article originally appeared on WIPO’s website on September 5, 2017.
Washington Update U.S. Representatives Ted Deutch and John Ratcliffe Address INTA Members at Leadership Meeting The following remarks were delivered by United States Representatives John Ratcliffe (R-TX-4th) and Ted Deutch (D-FL-22nd), Co-Chairs of the bicameral, bipartisan Congressional Trademark Caucus (CTC), during the opening ceremonies of INTA’s Leadership Meeting in Washington, D.C., on November 7. Representative John Ratcliffe I’m grateful for the opportunity to speak to such an esteemed group of leaders about our efforts in Congress to educate members on the importance of trademark matters on brand owners, manufacturing, jobs, economic growth, and everyday lives of consumers. We re-launched the Congressional Trademark Caucus in the House and Senate back on World IP Day in April and held a well-attended congressional briefing just last month. The Caucus is bipartisan and bicameral, which signals the huge support that these issues have on Capitol Hill. I want to take a moment right up front to give INTA credit for their invaluable role in supporting the Caucus and spreading the word to Congress members and Senators on both sides of the aisle. I don’t have to explain to this crowd what an important role trademarks play in protecting consumer health and safety. Some take it for granted here in America, but we rely on trademarks every single day as we shop for groceries, fill prescriptions, and even make big purchases like cars. Trusted brands in food, medicine, entertainment, and even airplane parts, for example, are critically important in our day-to-day lives. The diversity—and immense economic contributions—of the industries represented by our panelists today show us how far-reaching this issue truly is. Counterfeits are on the rise in America and around the world. Fake products can pose huge safety risks to families. They can also undermine the confidence that consumers have in certain brands, endangering those legitimate brand owners. As a former U.S. Attorney and terrorism prosecutor, though, one piece of this puzzle that I’m especially concerned about is the critical national security implications of counterfeiting. Yes, counterfeit medicines can seriously injure patients and significantly harm legitimate brand owners, but to compound the problem, counterfeiting also has well-established links to organized crime and terrorist organizations. That link is one that I hope to make more members of Congress aware of—particularly members who serve on national security committees. Some of these lawmakers may not feel that intellectual property issues fall within their wheelhouse. They may not be familiar with trademark issues, per se, but it’s my hope that we can spread the word about how these organizations that threaten our national security profit hugely from counterfeiting. Moving forward, I’m excited to work with my co-chairs, in partnership with many of you here, to (1) raise awareness about the importance of trademarks; and (2) help families learn about protecting themselves against dangerous counterfeit products. I’m honored to co-lead this effort and appreciate everyone in attendance today. Thanks so much! Representative Ted Deutch Good afternoon, everyone! Thank you for the kind introduction, Joe. Thank you to Etienne for your vision and hard work guiding INTA as CEO. I am honored to join you today to offer a few words of welcome to kick off the 2017 INTA leadership meeting. This is my first year as the House co-chair of the Trademarks Caucus, but I’ve been focusing on intellectual property throughout my career in Congress. As a member of the House Judiciary Committee I’ve had the opportunity to dig in on many of the important issues facing your businesses; protecting consumers, and protecting your businesses from piracy and counterfeiting, but for many of my colleagues intellectual property and the importance of trademarks isn’t something they are thinking about every day. No doubt, the American people are more familiar now with the power of brands than before 2016. Whether it’s towers, steaks, water, or big beautiful wineries; a brand is more than just the product; brands are statements of character. They are expressions of the guiding principles at the foundation of an enterprise, and brands are a tremendous source of value; IP-intensive industries account for roughly 40 percent of GDP in Europe and the United States. So, the answer to “what’s in a name” is: jobs, innovation, growth, and prosperity. There is a lot on the line for businesses large and small when it comes to trademarks. I will borrow from a recent story about a small craft brewery in my home district in South East Florida. One of the most vibrant areas for trademark law today is in craft beer. Colorful names, catchy logos, and so many puns. It’s a crowded marketplace. It’s difficult to stand out on the shelf. Yet, a small brewery in my district, Funky Buddha, developed a strong reputation. Sure their beer is excellent, but their brand is so much more than the beer they brew. This summer, Constellation Brands—the global beverage corporation that is probably best known for Corona and other beer imports in the U.S.— decided that Funky Buddha would be its next step into the craft beer market. Funky Buddha joined Ballast Point, a San Diegobased brewery that Constellation purchased last year, as part of their American craft beer portfolio. The purchase will bring new capital down to Oakland Park Florida, and there are already expansion plans in the works. The brewery jumped from producing 27,000 barrels in 2016 to 35,000 this year, and is looking to build beyond its current facility’s 45,000 barrel capacity. That’s good news for South Florida workers throughout the supply chain and our broader tourism industry, and it wouldn’t be possible without the ability to protect the tremendous value in the creativity and innovation happening at that little brewery just outside Fort Lauderdale. That’s why the relationships you build at this week’s conference are so important. The big, global issues that you are all dealing with on a daily basis ripple out to every community throughout the country—and why it’s important for you to share your own stories with members of Congress. I know this week will present some excellent opportunities to bring your own experiences forward to share the importance of strong trademark protections with policymakers. In my short time as co-chair, it has been a pleasure to work with INTA to bring these issues to the top of mind for my colleagues. I’m excited about working with my friend Rep. Ratcliffe, and our Senate counterparts Senator Coons and Senator Grassley, to ensure that our colleagues understand that piracy and counterfeiting is not a victimless crime. We need more of our friends in the House and Senate to understand that the safety and security of American consumers, businesses small and large, the American economy, and the global economy are all at stake. This summer I had the pleasure of working with INTA, my local chambers of commerce, and the U.S. Department of Commerce to host a trademarks 101 roundtable for local businesses. From the smallest tech startups with a few innovators launching their passion project to established corporations that employ thousands of my own constituents, it’s important that we bring both private and public sector leaders together to share resources and work toward an economy that promotes fairness and upholds our intellectual property laws. This year, a report by Frontier Economics estimated devastating global costs of counterfeiting and digital piracy between $923 billion and $1.13 trillion; and predicts these costs could double by 2022. While these costs should concern every member of Congress and every business leader, there was encouraging news in the Frontier report as well. Strong enforcement is a worthwhile investment. If we work together to achieve just one percentage point of prevention, we could get back between $30 billion and $54 billion in economic growth in 2017. As the administration moves forward with the renegotiation of NAFTA, Robert Lighthizer, the United States Trade Representative, noted increasing piracy and counterfeiting as a troubling trend in the 2017 Special 301 report. Our ability to engage in fair trade moving forward will depend on strengthening our ability to enforce intellectual property protections in these vital relationships. Strong protections and strong enforcement will protect jobs in the United States and other innovative economies around the globe. It’s clear that your work in protecting brands around the world is important to your own careers, your own companies, but the work you do this week in building connections throughout INTA and in Congress will benefit our world. Thank you all for taking the time to come to Washington. I look forward to meeting you and discussing how we can grow the work of the Trademarks Caucus together. Thank you.
Features Native Advertising: What You Need to Know Carol Anne Been, Dentons US LLP, Chicago, Illinois Kate Hart, Dentons US LLP, Kansas City, Missouri The phrase “native advertising” describes advertising designed to blend in and appear to be part of the surrounding content, so consumers may not realize they are being presented with paid advertising rather than editorial material. It is called “native” advertising because the advertising appears to be part of the natural content of the publication, with the look of a regular article or editorial. Historically, consumers have been able to identify the typical signs of paid advertising, such as the use of brands and logos, segregated placement away from regular content, or the addition of page or region borders, all employed to increase consumer understanding that the content they are reading constitutes claims by the advertiser about its own branded product or service. But native advertising does not carry those typical indicators, and so may not be recognized as paid content. As a result, consumers may be misled into believing that the advertising material comes from a neutral source. When misled, consumers cannot apply the usual skepticism or avoidance that they might apply to material that is branded and recognized as advertising. In fact, one of the key benefits advertisers see in native advertising is the ability to reach consumers when they are not expecting an advertisement, which may make the consumer less likely to block or skip the advertisement. A Long History Stealthy design of advertising by brand owners is nothing new. Before the Internet, native advertising took the form of advertising supplements, single-sponsor magazine issues, advertisements mimicking the style of a publication’s true editorial content, sponsored programming, program-length commercials, and product placement. With regard to product placement, companies could subtly influence consumers to consider or purchase their specific brand of products after seeing a brand of candy, cereal, or soda consumed in a movie or a television show. For example, consider the Reese’s Pieces candy used in the 1982 film E.T., or the futuristic Pepsi bottle design in the 1989 film Back to the Future II. Single-sponsor advertising has been, and continues to be, popular in print publications. As an example, Target Corporation purchased all of the advertising space available in the August 22, 2005, issue of The New Yorker (about 18 pages). Time, Life, Newsweek, and People magazines have also published single-sponsor issues for brands such as Kraft Foods, Ford Motor Company, and Apple Computers. In the Internet age, brand owners engage in native advertising typically by placing paid content links within editorial content in online publications. Consumers read posts or articles quickly and are enticed to click embedded links with bold or provocative headlines or images. These embedded links are sometimes referred to as “click bait,” because consumers are enticed to click on the links to learn more about the topics or products. The Internet also provides opportunities for native advertising in search engine results (targeting material to a user’s online search subjects), sponsored content, promoted social media links such as hashtags or Twitter handles, online quizzes and contests, and infographics. Addressing Deceptive Advertising in the United States In the United States, advertising by brand owners is regulated is several ways. The federal government regulates advertising through the United States Federal Trade Commission (FTC). The FTC helps enforce the Federal Trade Commission Act, which requires that that all advertisements (regardless of the media used to disseminate the advertising) be truthful, non-deceptive and fair. Advertising must tell the truth, and must not mislead consumers or cause consumer injury. An advertising claim can be misleading if relevant information (such as the identity of the advertiser) is omitted from the advertisement or if there are express or implied claims that are untrue or misleading. U.S. trademark law, known as the Lanham Act, also creates legal recourse for “any person who believes that he or she is likely to be damaged” against: any person who … uses in commerce any word [or] term, … or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.15 U.S.C. § 1125(a)(1). Individual states also have laws that are similar in scope and content to the Lanham Act. In addition, particular types of advertising, such as advertising for health care products or financial services, or advertising directed to children, are subject to additional requirements in the United States. Use of Disclaimers and Disclosures A key tool in avoiding misleading or false advertising claims can be the use by brand owners of disclaimers and disclosures that provide additional information to explain or limit advertising claims. Concerns about native advertising arise from the fact that material information—that the content is paid advertising—has not been revealed. Revealing the paid nature of the advertising through a disclaimer or disclosure that is not noticeable or that is itself misleading does not alleviate the underlying concerns associated with native advertising. Disclaimers and disclosures must be clear and conspicuous. A disclosure must be prominent and easy to understand so consumers will notice, read, or hear and understand the information. But a disclaimer or disclosure alone may not be sufficient to remedy a false or deceptive claim. With respect to online disclosures, the FTC will consider prominence, presentation, placement, proximity, and repetition of the disclosure or disclaimer. There are additional considerations when using a hyperlink to link to disclosures and disclaimers. See the FTC’s 53-page pamphlet on the subject of disclosures and the use of hyperlinks called .com Disclosures: How to Make Effective Disclosures in Digital Advertising, which was published in March 2013. FTC Policy on Native Advertising on the Internet In December 2015, the FTC issued an enforcement policy statement on deceptively formulated advertisements for brand owners on how to recognize and avoid creating deceptive advertising on the Internet. The policy statement explains that determining whether native advertising is deceptive focuses on a reasonable consumer’s perception of an advertisement, based on the consumer’s prior experience with the specific advertising medium (e.g., a news website or blog) and the overall impression created. If disguising the advertisement as editorial content is material to the consumer’s choice or conduct—possibly resulting in a purchase or click because the consumer believes he or she is interacting with independent or impartial content, the advertisement is considered a deceptively formulated advertisement. The FTC will look at the overall appearance of the advertisement, its formatting compared to surrounding content, the style of the advertisement, and whether specific consumer groups are targeted. The policy statement further states that deceptive advertising may occur either through affirmative but inaccurate claims, or through misleading omissions. The policy statement also guides brand owners to “redeem” native advertising in a news website or blog through qualifying disclosures, if the disclosures provide clear labels or cues to point out that the content is advertising. Disclosures should be sufficiently prominent and unambiguous to permit the consumer to come to the conclusion that the content is indeed an advertisement. Disclosures must be delivered with the advertisement itself, and should not be in the form of a click-through or pop-up screen. Strong disclosures include, but are not limited to, the following words or phrases: “advertisement,” “paid advertising,” “sponsored content,” and “promoted content,” displayed in a clear and conspicuous font and in a conspicuous location within the news website or blog. FTC Actions—Lord & Taylor Retail Clothing Store Chain In 2016, the FTC filed a complaint against the retail store chain Lord & Taylor for native advertising that appeared as a magazine article reviewing a clothing line, but was actually a paid advertisement written by the retail store chain. In re Lord & Taylor, LLC, No. C-4576, 2016 WL 1130013, at **14 (F.T.C., May 20, 2016). The complaint charged the retailer with deceptively formatted advertising (i.e., native advertising) based upon an article about its Design Lab clothing collection published in NYLON, a pop culture and fashion magazine and online publication. The article was paid advertising but could appear to consumers as editorial content created by the magazine. Id. In addition, Lord & Taylor paid “fashion influencers” up to $4,000 each to wear dresses from the collection and post photos of themselves in the dresses on Instagram. Id. The FTC concluded that the retailer’s advertising campaign involved both deceptively formatted advertising (i.e., native advertising) and undisclosed paid endorsements. Id. The undisclosed, paid endorsements contravened the FTC’s Guides Concerning the Use of Endorsements and Testimonials in Advertising. 16 C.F.R. Part 255. The FTC complaint was settled, and the settlement was confirmed by the FTC in a consent order. In re Lord & Taylor, LLC, No. C-4576, 2016 WL 2997854 (F.T.C., May 20, 2016). The consent order forbids Lord & Taylor from misrepresenting paid advertisements as coming from an independent source, saying that the disclosure related to the advertisement (explaining that it is paid content) must be unavoidable, not contradicted, and in close proximity in time and space to the advertisement at issue. Id. at *5. The consent order also requires that the retailer’s audiovisual advertisements must have audiovisual disclosures. Id. Further, the consent order requires that Lord & Taylor take steps to ensure that endorsers or fashion influencers disclose in their posts any compensation or other benefit that might materially affect the weight or credibility of the endorsement. Id. The consent order will remain in effect for 20 years, and any failure to comply with the consent order may result in a civil penalty of up to $16,000 per violation. Id. at **78.) The FTC did not issue a complaint against NYLON, the magazine publisher and media platform where the advertisement was published. The FTC also did not issue a complaint against the endorsers or fashion influencers for failing to follow Lord & Taylor’s instructions to include “#DesignLab” and “@lordandtaylor” in their posts. The FTC noted these additions would not have been enough to disclose that the posts were sponsored advertising. In re Lord & Taylor, No. C-4576, 2016 WL 1130013. Lumos Labs Brain Games Site The FTC brought another enforcement action in 2016 against Lumos Labs, Inc., the company that markets and advertises the Lumosity brain games website and other materials, for improper use of native advertising to promote the alleged benefits of its brain games website and programming. FTC v. Lumos Labs, Inc., No. 16-CV-00001-SK (N.D. Cal. Jan. 8, 2016), Doc. 1. Lumosity marketed its website and games extensively, through emails, blog posts, and social media, and it purchased hundreds of keywords related to memory, cognition, dementia, and Alzheimer’s disease through Google Adwords. Id., ¶ 17. The website and marketing materials featured native advertising in the form of user testimonials describing improved school, work, and athletic performances, delays in cognitive decline, and protection against Alzheimer’s disease. Id., ¶¶ 13, 1821. However, Lumosity failed to disclose that the testimonials had been solicited as part of contests in which consumers were awarded significant prizes, with instructions such as “Show how Lumosity has helped take your athletic abilities to the next level for a chance to win.” Id., ¶¶ 1921. The FTC determined that Lumosity preyed on consumers’ fears, encouraged positive testimonials about its games, and did not require disclosure of “material connections” under the Endorsements and Testimonials Guides. Id. The Lumosity complaint was settled; the settlement included Lumos Labs’ payment of $2 million in redress, which the FTC issued as refunds to Lumosity subscribers, and an obligation to notify subscribers of the FTC action and allow them to cancel ongoing subscriptions. Lumos Labs, Inc., No. 16-CV-00001-SK, Doc. 10, pp. 9, 1213. Non-Government Actions—The ASRC A non-governmental self-regulating body of national advertisers, the Advertising Self-Regulatory Council (ASRC), may also address unlawful native advertising. Under the policies and procedures established by the ASRC, the National Advertising Division (NAD) of the Better Business Bureau (BBB) reviews national advertisements for potentially misleading advertising claims. The NAD investigates complaints filed with the BBB by consumers or businesses, under a strict timetable, issuing a written decision within 60 business days. Many well-known brand owners avail themselves of this forum to seek relief in the advertising space. See Advertising Self-Regulatory Council, Procedures for the National Advertising Division (NAD), the Children’s Advertising Review Unit (CARU), and the National Advertising Review Board (NARB). Participation in NAD investigations and compliance with the resultant recommendations are voluntary, but the NAD may refer a case to the appropriate regulatory agency—usually the FTC—if a challenged advertiser refuses to participate or fails to comply. Id. A seminal NAD action concerning native advertising involved Taboola, a company that provides sponsored Internet stories for news and other websites. Taboola, Inc. (Online Advertising), Report #5708C, NAD/CARU Case Reports (Aug. 2014). Rather than advertisers going to websites directly to ask them to carry their advertisements, Taboola distributes advertising in the form of promoted stories on various websites, and shares the advertising revenue paid by the story sponsor (advertiser) with the hosting websites. See http://www.taboola.com for more information. The NAD investigated Taboola’s native advertising practices and then issued a report pointing out Taboola’s placement of millions of advertisements on publisher websites labeled as “Recommended Videos,” “More in the News,” or “You Might Like.” Taboola, Inc. (Online Advertising), Report #5708C. The websites included the statement “Promoted Content by Taboola” in smaller font and in lighter color. Only if clicked on by consumers, a pop-up disclosed that content was paid for by advertisers. Id. The NAD held these disclosures to be insufficient, and recommended several revisions to the size, color, and clarity of Taboola’s disclosures and links. Id. Another NAD proceeding in 2014 involved American Express OPEN Forum, a website hosted and maintained by American Express. American Express Co. (OPEN Forum), Report #5760 NAD/CARU Case Reports (Sept. 2014). OPEN Forum originated as an informational and networking website for American Express’s business cardholders, and evolved into a business-focused social media platform that incorporated extensive native advertising. American Express placed ad units (images with text, generally consisting of a small picture and title of a sponsored article) on various publishers’ websites, which included sponsored content provided by Taboola. American Express Co. (OPEN Forum), Report #5760. A small indication that the content was by OPEN Forum appeared in the form of a link to information about OPEN Forum. Id. The NAD concluded that the advertisements must identify American Express OPEN Forum as the source, to indicate the advertisements did not originate from the publisher and were not independent content. Id. American Express voluntarily complied. Id. American Express also created guidelines for its native advertising placements, emphasizing the importance of transparency and branding, without admitting its original disclosure was insufficient. Id. For Brand Owners—Be Proud and Disclose Native advertising in the United States can be lawful and lucrative, provided the brand owner does not confuse or mislead consumers into believing the content is editorial rather than advertising. Here are a few practice points to help keep companies within acceptable practices: Be proud of your brand, and be proud of your advertising. Vet any native advertising content or placement with the same level of scrutiny that you utilize in vetting traditional advertising to protect the goodwill in your brand; Disclosing your brand when placing an advertisement with a third party or advertising firm may protect your firm from fines and other civil penalties; Disclosing your brand gives your content credibility; Use and promote your brand in advertising; Whether a disclosure is deceptive is determined in the context of the surrounding content, considering a reasonable consumer’s experience and expectations, so be aware of the nature of the content in proximity to your advertisement and overall context; and In the event your advertisement content or marketing campaign are determined to be unlawful native advertising, voluntary correction is your best bet to maintain credibility with consumers and avoid steep fines.
Law & Practice FRANCE: Supreme Court Takes Cautious Approach to Resale of Products Issued by a Selective Distribution Network Contributor: Nathalie Dreyfus, Dreyfus, Paris, France Verifier: Sylvie Benoliel-Claux, Benoliel Avocats, Paris, France According to a recent French Supreme Court ruling, a service provider leading a selective distribution network could lawfully forbid any sale of its products in a marketplace. In a decision dated September 13, 2017, the Court held that if a lawful selective distribution network is in place, there is no reason to contest its right to forbid the sale of products on online platforms that have not been approved. Cass. Com., Sept. 13, 2017, No. 16-15.067. In this case, Caudalie, a manufacturer of cosmetic products under its trademark and distributing its products via a selective distribution network, was applying for interim measures by fast-track proceedings against eNova santé on the basis of Article L.442-6, I, 6 of the French Commercial Code. Caudalie was contesting eNova’s sale of Caudalie’s products on eNova’s online platform without eNova being part of the selective distribution network. Caudalie considered that the sale of its products via the online platform, thus outside of the selective distribution network, constituted a manifestly unlawful disturbance. The company argued that such behavior was against the prohibition of selling outside the scope of the selective distribution network to its selective vendors. In a ruling dated February 2, 2016, the Paris Court of Appeal ruled in favor of eNova santé and held that the restriction requested by Caudalie represented a restriction of competition. It referred to several decisions in which similar facts presented themselves and the restriction of competition was recognized: two decisions of the French Competition Authority (n°14-D-07, July 23, 2014 and n°15-D-11, June 24, 2015) regarding the selective distribution network of Samsung; a press release dated November 18, 2015, of the same French Competition Authority regarding a case involving adidas (Press releases 2015, 18 November 2015: Online sales, "The Autorité de la concurrence has closed an investigation against Adidas"); and a decision of the German Competition Authority regarding Asics and adidas (Bundeskartellamt, n° B2-98/11, August 26, 2015). Judges held that the interdiction imposed on Caudalie’s selective vendors to use an online platform, whatever the characteristics, could constitute a restriction of competition excluded from the benefice of any exemption. Therefore, no manifestly unlawful disturbance could be found. The Supreme Court overruled this decision and stated that the Paris Court of Appeal did not explain how the decisions it referred to were susceptible to exclude the existence of a manifestly unlawful disturbance resulting from the violation of the selective distribution network of Caudalie, which had been held lawful by decision No. 07-D-07, dated March 8, 2007, of the French Competition Council. The Court thus found the decision of the Paris Court of Appeal devoid of any legal basis and reversed it. As a consequence, the Supreme Court referred the case back to the Paris Court of Appeal with a different composition. For another recent case on selective distribution networks see the November 1 issue of the INTA Bulletin.
UKRAINE: High Intellectual Property Court to Be Established Contributor: Antonina Pakharenko-Anderson, Pakharenko & Partners, Kiev, Ukraine Verifier: Alona Sivcova, Agency Tria Robit, Riga, Latvia Ms. Pakharenko-Anderson and Ms. Sivcova are members of the INTA Bulletins Law & Practice—Europe Subcommittee.
On September 29, 2017, the President of Ukraine signed Decree No. 299/2017 titled “On establishment of the High Intellectual Property Court.” This specialized court, with a seat in Kiev, will be created as a part of the Ukrainian court system in accordance with the norms of the Law of Ukraine “On the Judiciary and the Status of Judges” as a part of the ongoing judicial reform initiated in 2016. The jurisdiction of the IP court will cover IP-related disputes, in particular disputes involving the rights to inventions, utility models, industrial design, trademarks, trade names, objects of copyright, and related rights. On September 30, 2017, the High Judicial Qualifications Commission of Ukraine announced a competition for filling 21 vacant positions for judges on the High Intellectual Property Court. Under the law, the position of a judge of such a court may be held not only by those who worked as judges, but also by patent and trademark attorneys and attorneys at law with work experience of not less than five years. The judges will be appointed solely on the basis of the results of the open competition. For the effective realization of the right to due process in Ukraine, there is a need for both institutional changes and changes to procedural laws. For this reason, a Draft Law of Ukraine of March 23, 2017, No. 6232 “On amending the Commercial Procedure Code of Ukraine, Civil Procedure Code of Ukraine, the Code of Administrative Procedure of Ukraine and other legislative acts” was introduced in the Verkhovna Rada (the Ukrainian Parliament) by the President of Ukraine, and a majority of the members of Parliament voted for the final adoption of this bill on October 3, 2017. The president is expected to sign this bill shortly. Under this draft law, the court shall consider IP rights–related cases by applying the same procedural rules as those which apply to commercial disputes. At the same time, criminal cases will continue to be considered by the courts of general jurisdiction. The IP community is anticipating that establishment of a specialized court will facilitate the protection of IP rights in the Ukraine and increase the attractiveness of the country for foreign investors.
UNITED STATES: TTAB Shreds Motion to Disqualify Board from Petition to Cancel TRUMP Registrations Contributor: Nina Osseiran, Cedar White Bradley, Washington, D.C. Verifier: Kevin Grierson, Culhane Meadows PLLC, Washington, D.C. Ms. Osseiran and Mr. Grierson are members of the INTA Bulletins Law & Practice—North America Subcommittee.
In Prospector Capital Partners, Inc. v. DTTM Operations LLC, the Trademark Trial and Appeal Board (TTAB or Board) denied the petitioner’s motion to disqualify the TTAB, transfer venue to U.S. District Court, vacate, and suspend proceedings. The Board also exercised its discretion not to enter default judgment on motion by the respondent. Cancellation No. 92063494 (TTAB Aug. 18, 2017) (precedential). The cancellation action is ongoing. The respondent, DTTM Operations LLC, is the owner of several registrations for the TRUMP mark for various goods and services in Classes 14, 21, 24, 25, 35, 36, 39, and 41. Prospector Capital Partners, Inc., petitioned to cancel the respondent’s registrations for the TRUMP mark on the ground of abandonment, also alleging rights to the TRUMP YOUR COMPETITION mark. Rather than answer the petition to cancel, the respondent filed a motion to dismiss, which the Board granted due to the petitioner’s failure to properly allege abandonment claim or standing. The Board gave the petitioner 20 days to amend its petition to cancel, but rather than amend its petition, the petitioner filed the motion to disqualify the TTAB, transfer venue to U.S. District Court, vacate, and suspend proceedings. The petitioner argued that the Board should be disqualified and is incapable of objectively ruling because U.S. President Donald J. Trump holds an interest in the TRUMP registrations subject of the cancellation proceeding, and the Board’s judges are appointed by the Secretary of Commerce serving under the president with the “authority to hire or fire.” The Board defended its ability to adjudicate in an unbiased, independent manner, noting that it is not a “court” under applicable statutes and that the judicial disqualification provision of 28 U.S.C. Section 451 was inapplicable to it. The Board further found that the petitioner had failed to provide any facts supporting its assertion that Board judges are unable to fulfill their statutory obligations merely because the registrations subject to the cancellation proceeding are connected to the President, noting that “the Board is not relieved of its statutory duty to determine rights to registration because a party is directly or indirectly connected with the United States government.” The motion was denied on the ground that the “petitioner has set forth no basis whatsoever for its assertion that the Board lacks the independence necessary to make unbiased decisions in this proceeding.” In denying the motion to transfer venue to U.S. District Court, the Board educated the petitioner on procedure and the Board’s inability to simply “transfer” a case to district court, noting that if the petitioner wanted to litigate in federal court, it should have filed in the appropriate venue. The petitioner’s request to suspend the proceeding pending transfer to court was therefore denied as moot. Lastly, in addressing the respondent’s cross motion for default judgment, the Board opted to exercise its discretion not to enter a default judgment and allow the petitioner another chance to file its amended petition to cancel, this time properly alleging the abandonment claim and standing. 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. © 2017 International Trademark Association
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