Scandalous marks, IACC fallout and future INTA host cities: INTA 2016 final day report 25 May 16
The final day of the 2016 INTA Annual Meeting has arrived and thousands of bleary-eyed lawyers will shortly be making their way back home. However, there are still many interesting insights to gather, and the World Trademark Review team has been on hand to take a look at some of them. The editorial team of Tim Lince (TL), Jacob Schindler (JS) and Cassie Lam (CL) report on their key Wednesday highlights below.
Taking issue with INTA – One of the best attended sessions of the entire meeting was on “Protection of immoral, vulgar scandalous, or simply culturally insensitive, trademarks”. One of the speakers, John Sommer, spoke at length about In re Tam (The Slants case) and a similar case he is working on himself, In re Brunetti, stemming from the USPTO’s refusal to register FUCT. In the former case, INTA submitted an amicus brief, but Sommer implied that he was not entirely pleased with its arguments. One slide, noting that Section 2(A) of the Lanham Act prohibits registration but not use of certain marks, read: “INTA amicus brief in Tam argued that prohibited marks may be protected by means of Section 43(A). However, if registration can be refused, then use could be prohibited.” Sommer also suggested that INTA should have sought more input from those who "know what's going on" in this area of law. (JS)
More IP office exhibitors in Barca? – There were a few IP Offices represented in the INTA exhibition hall this year, including regular fixtures from the Japanese, Korean and European IP communities. One new entry was a booth for the office of Eastern European nation Georgia. As well as promoting the culture and scenery of Georgia, it laid out key facts about the performance of the office in the last year. In 2015, for example, there was a 9% year-on-year increase in trademark applications received and an impressive 150% rise in “inventions from R&D institutions”. So there is obviously a positive story, by why did the office decide to go down the ‘INTA booth’ route to tell it? Talking to World Trademark Review, the office’s deputy chairperson, Sophio Mujiri, said they want to “encourage brand owners to protect their marks in Georgia because there are many trademarks represented in our market where the legitimate brand owner does not have a registration”. Mujiri concluded with a prediction for next year: “I know that we will definitely be back with a booth, and we have had delegates from other IP offices come to our booth and say they really like what we are doing, and that they plan on going back to their country and advising their office be represented in the same way. It adds prestige to your county to be represented at INTA like this, and I definitely think there will be more in the future.” (TL)
The true cost of false advertising – The practice of online paid search advertising garnered a lot of attention at the advertising law session, with China a particular focus. The panel noted that current advertising regulations do not cover paid search advertising. However, in response to a Chinese student’s tragic death after pursuing a bogus cancer treatment advertised on Baidu, moderator Katie Feng of Hogan Lovells said that while laws in China are not developed to respond to the issue, that could now change. Clearly deceptive advertising can have a very real cost. (CL)
Down the ‘.tube’ – The new gTLD string ‘.tube’ is currently in sunrise, with representatives in attendance at INTA at a dedicated booth. We heard a couple of attendees voice their surprise that Google did not own ‘.tube’, due to its ownership of YouTube (it is worth noting that Google bid for it, but an application backed by Latin American Telecom prevailed). Talking to World Trademark Review, ‘.tube’ co-founder and COO Jason Schaeffer said the company has “a good relationship” with Google and there has been “no issues” with the tech giant. In fact, he added that ‘.tube’ is “in talks” with Google about the ownership of ‘you.tube’ because, he claims, Google is not able to get ownership of it during the current sunrise. He also added that the company is in talks with Transport For London over the domain ‘london.tube’. Expanding on interest from other parties, Latin American Telecom CEO Rami Shwartz noted that there has been enthusiasm for one particular animal-related ‘.tube’ domain: “It isn't just YouTube that uses the word online - there are sites like tube.hk, kindertube.de, godtube.gr and cartube.com, plus some of the biggest adult entertainment websites use 'tube' in their brand names too. In fact, we noticed there were lots of enquiries to register 'elephant.tube' and we wondered why people wanted elephant over, say, horses or lions. Then we discovered that ElephantTube is a popular adult entertainment website, and it dawned on us why there was such interest.” The fundamental message that Shwartz wanted to convey is that he wants to work together with brand owners, not against them: “Trademark associations often seem to claim that gTLD registries are on the opposite side of the trademark community. But I disagree - we are on the same side because we offer the chance to expand brands, not restrict them.” (TL)
Frogans watching – We reported on the fledgling Frogans technology last year, with which a French company is adding a layer to the Internet - alongside email and the world wide web - in the form of ‘Frogans’ sites which can be accessed via a soon-to-be-officially-launched ‘Frogans Player’. It launched a priority registration window for trademark owners earlier this year, although it was criticised at the time for its “conservative approach to IP protection”. It was no surprise then, that representatives from OP3FT, the non-profit organisation setup to ‘promote, protect and progress’ Frogans Technology, were in attendance at INTA. Thomas Panau, OP3FT’s in-house lawyer, told World Trademark Review that his primary purpose at INTA is not to necessarily raise awareness or convince trademark owners about the importance to protect their brand in the Frogans layer, but to woo trademark watching services to add Frogans to its offering. “We already have six or seven trademark watching services on our database, but we would love to have more, especially the big name trademark watching services, as that will be reassuring for trademark owners.” Panau also gave a brief update on Frogans technology, and he advised trademark owners that the time to act is now because public registrations of Frogans addresses will occur in June, and the “grand opening” to the public of the Frogans Player will be in October - the first time Frogans will be available to all. (TL)
China data challenge – TrademarkNow, a provider of searching and watching software, this week launched a new platform called ExaMatch. Like the company’s other tools it’s premised on applying machine learning and artificial intelligence to time-consuming research tasks for trademark professionals; the new service is aimed specifically at helping attorneys prep for litigation. The team also told me they’ve added data from the China Trademark Office (CTMO) registry across all of its platforms within the last two months. Doing so would have been no small hurdle; as China-focused counsel will know, information from CTMO is not always up-to-date and its technical systems have caused headaches in recent years. More commercial databases providing resources for China search is certainly a welcome development. (JS)
Well known in Thailand – Is your trademark considered well-known in Thailand? In the past year it has gotten more difficult to answer that question with any degree of confidence. That’s because, according to Rouse’s Fabrice Mattei, the Department of Intellectual Property (DIP) abolished the country’s official registry of well-known marks in September last year. Recordation of well-known marks had begun ten years earlier, in 2005, but just 75 were added to the list out of 233 applications made by brand owners. The decision to ditch the register altogether came after a period in which applications were being accepted, but in practice, designating new marks as well-known had been suspended. Nevertheless, Mattei says the move came as a surprise to many trademark owners.
Differing opinions about what marks deserve special well-known status made the maintenance of the formal recordation system untenable. A dispute involving lighting company OSRAM put this disagreement in sharp relief; the multinational opposed the proposed mark OSROW based partly on its status as a DIP-recognised well-known trademark. But when that office action made its way to Thailand’s IP Court on appeal, the judges disagreed with the Board of Well-Known Marks about whether that extra protection should have been extended to OSRAM. The subsequent decision to abolish the registry of well-known marks suggests that these differences may take quite some time to resolve. To be sure, the Thai system still offers protections to well-known brands, but the companies that own those 75 recorded marks can no longer rest on their laurels. (JS)
‘Let the members have their say’: The IACC debate continues – The recent strife at the International Anticounterfeiting Coalition (IACC) has been a much discussed topic this week. Opinion remains split on whether a leadership shake-up is required. One solution that the IACC board must consider, claims Elisa Cooper, VP of marketing at brand protection company Lecorpio, is asking members what the next step should be. “The IACC should find out what its members want, and poll all members. [After all] The board should represent the members. If you look at what is happening with ICANN and the IANA transition, you quickly realise that board should be accountable to the membership and the wider community. Ultimately, there seems to be a dark cloud hanging over the IACC right now, and I hope they can get past it.” (TL)
Beyond Orlando, beyond Barcelona – Another hot topic that has been discussed throughout the week has been where INTA will pitch its Annual Meeting tent after Barcelona next year. One US city mentioned numerous times as a candidate for the 2018 meeting was Washington DC, and it is understood that the 2020 event - already announced as being held in the Asia-Pacific region - has come down to Seoul, Singapore and Sydney. One source, however, told World Trademark Review that the decision for the next three INTA Annual Meetings after Barcelona has already been decided and they are: Seattle, Boston and Singapore. Seattle and Boston have both played host to Annual Meetings, in 2009 and 2010 respectively, and Singapore has been labelled by many as the ‘safe choice’ for the second Asia-Pacific Meeting. Unfortunately, with no firm dates for 2018, 2019 or 2020, and absent official confirmation of the host cities, law firms cannot start snapping up the best reception venues just yet… (TL)
Lights out – That’s it for another year then. Don’t forget you can catch up on the latest INTA Annual Meeting news and insights on our Twitter page. You can also view photos from the receptions, sessions and booth visited by the World Trademark Review team on our Instagram page. See you in Barcelona!
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