The business of trademarks has become increasingly international. In this chapter the International Trademark Association (INTA) 2018 president, Tish Berard, reviews INTA’s recent activities and looks at the challenges.
INTA’s advocacy and engagement activities have continued to accelerate in response to the growing effect of the globalisation of trade, the emergence of the Internet and advances in communication technology. Today, INTA’s work – including the scope of membership, meeting and conference locations, as well as its focus on public policy initiatives – touches almost every part of the globe.
INTA has offices in Brussels, Shanghai, Singapore, Santiago, New York and Washington DC, as well as representatives in Geneva and New Delhi. To help navigate the complex and demanding issues specific to each part of the world, INTA has global advisory councils for Africa, Asia-Pacific, China, Europe, India, Latin America, the Middle East and North America. At INTA’s Annual Meeting held in Seattle, Washington in May 2018 there were nearly 11,000 brand owners, IP professionals, government officials and others registered from more than 150 countries.
The scope and substance of INTA’s work has also expanded, in recognition that the work of protecting brands today goes beyond trademarks and can involve design rights, copyrights, geographical indications and domain names. Moreover, it demands careful consideration of issues such as advertising rules and restrictions, indigenous rights, digital privacy, the proliferation of online counterfeiting, IP valuation and brand equity. By addressing these topics holistically INTA can best serve the needs and concerns of its members and the field as a whole.
A review of INTA’s activities over the past year illustrates how these priorities have been put into practice.
INTA’s work around the world spans many activities, from monitoring and making recommendations on legislative change at a national, regional or international level, to providing practical guidance in anti-counterfeiting efforts, promoting thought leadership and education about IP rights and facilitating connections among the global IP community. Over the past year alone, INTA has sent more than 100 letters and submissions to government officials and policy makers, and has taken part in 225 meetings and delegations with officials worldwide.
Thanks to the expertise of its global members, INTA is frequently called on to review and comment on proposed trademark laws and regulations. In the past year, INTA has been particularly active in Asia, submitting comments in countries including Bhutan, Cambodia, Hong Kong, Nepal, Sri Lanka and Vietnam. Some of these countries are introducing trademark regulations for the first time.
China is a large and important market for trademarks, and INTA is the only foreign IP association that is registered according to the new non-governmental organisation regulation. INTA’s role in advancing the law in China was acknowledged by the chief judge of the Supreme People’s Court at the end of 2017.
Two other important jurisdictions where there are significant developments are India and Canada. In India, INTA has made recommendations for amendments to Section 134 of the Trademarks Act; it has also offered recommendations on improving the new Trademarks Rules and will be meeting with the controller general in this regard. In March 2018 INTA sent its eighth annual delegation to India and hosted a workshop in New Delhi. In Canada, INTA is carefully monitoring the implementation of the new Trademarks Act and liaising with government officials.
The impact that legislation outside of the IP sphere has on trademarks should also be recognised. A pressing issue is the growth of brand restriction proposals around the world. INTA has made submissions in many countries, from China to Colombia, highlighting the role that trademarks play for companies and consumers and the threat posed by the spread of brand restrictions, particularly as they are applied to a greater number of goods and services. This work will continue to be a priority in the coming years.
In Europe, INTA is working hard alongside other associations to address the impact that Brexit will have on IP rights. As well as submitting recommendations, INTA attended a high-level delegation with the United Kingdom’s IP minister in 2017. INTA also frequently provides comments to the European Commission as trade agreements are negotiated with other parties, drawing on INTA members’ expertise from around the world.
One topic that has had a significant effect in Europe and beyond is the implementation of the General Data Protection Regulation (GDPR), which came into force in May 2018. INTA has been particularly focused on the impact of the GDPR on the WHOIS domain name system operated by the Internet Corporation for Assigned Names and Numbers (ICANN) and ICANN’s proposed Temporary Specification. In June 2018 INTA published WHOIS Challenges: A Toolkit for Intellectual Property Professionals, a collection of recommendations to help trademark professionals navigate the new realities of enforcement in the wake of the Temporary Specification. INTA has also been compiling anonymised data based on experiences shared by members and IP professionals, to inform INTA’s advocacy positions moving forward.
Anti-counterfeiting and enforcement
Counterfeiting remains a significant challenge for both brand owners and consumers in many parts of the world, and INTA is uniquely placed to help governments and law enforcement agencies in their efforts to tackle this growing threat. In the past year, INTA has led anti-counterfeiting initiatives in regions including Africa, Asia, Latin America and North America, and has also taken part in events organised by the European Commission and the Organisation for Economic Cooperation and Development.
It has been particularly active on anti-counterfeiting issues in China, working alongside government officials, among others, on a number of initiatives. INTA has held anti-counterfeiting workshops and is raising awareness about IP protection in the ‘one belt, one road’ initiative. INTA has also raised concerns with Chinese officials about bad-faith registrations in and outside China.
In Latin America, INTA recently held the third workshop with IP offices on anti-counterfeiting. This was attended by representatives of 15 offices in the region, including six heads of office, and culminated in the signing of a joint white paper on the role that IP offices should play in anti-counterfeiting and enforcement. In addition to this, INTA organised a workshop in Uruguay and participated in initiatives to tackle illicit trade with the Chilean, Argentinian and Peruvian governments. The Inter-American Development Bank has also asked for INTA’s views on IP rights in Latin America.
The impact of counterfeiting has been growing exponentially, mostly due to the proliferation of counterfeiting online. The Internet heightens the counterfeiting problem, as counterfeiters find simplified means and additional channels online to promote and sell counterfeits. INTA has updated its report Addressing the Sale of Counterfeits on the Internet, which includes key recommendations and best practices for trademark owners, online trading platforms and other companies involved in the online marketing realm.
Harmonisation and IP strategy
INTA has long supported the growth of the Madrid and Hague systems for protecting international trademarks and designs and welcomes the recently announced accessions to the Madrid Protocol by countries including Indonesia and Thailand. INTA works closely with other countries that are considering joining, to ensure that they have the knowledge and systems required and to promote awareness; for example, INTA recently took part in a workshop on this topic in Jordan.
However, INTA also recognises that it must tackle IP protection on other fronts as well. Many countries, particularly in Africa, are developing strategies and policies for intellectual property in general, or on specific issues such as geographical indications, and INTA is active in these discussions. In the past year, INTA has provided comments on initiatives in Ethiopia, Kenya, Qatar and South Africa and to the African Regional Intellectual Property Organisation.
Education and thought leadership
One of the big changes that INTA has seen in recent years is the increasing engagement of different stakeholder groups, as well as the public, in issues that affect trademarks. INTA has responded by providing education and thought leadership around IP issues to this wider audience through research studies and training programmes that address emerging issues worldwide.
A good example is INTA’s impact study, The Economic Contribution of Trademark-Intensive Industries in Indonesia, Malaysia, the Philippines, Singapore, and Thailand, published in August 2017. This was the first such study to assess the economic contribution of trademarks in Southeast Asia. It demonstrated how trademark-intensive activities directly contribute between 22% and 50% to gross domestic product (GDP) in the countries studied and account for between 13% and 29% of total employment.
The study was launched during IP Week in Singapore. Singapore was also the location of INTA’s first moot court to be held in the Asia-Pacific region, which took place in February 2018 with 27 law schools, 23 briefs and 78 students participating from eight countries. Moot courts are a great way to promote thinking about and understanding trademark issues among future generations of practitioners.
Other education initiatives focus on some of the officials who handle the day-to-day work of IP enforcement. In Latin America, for example, in the past year INTA held training sessions with trademark examiners in Guatemala, Paraguay and Argentina – with 90 judges in the Andean Community and Ecuador, and with 70 customs officials in Chile and Panama.
Spreading the message
Thanks in part to INTA’s efforts, trademark issues are being addressed at a high level in various countries. In the United States, the Congressional Trademark Caucus now has more than 30 members and has held five briefings and a number of district workshops in the past year.
INTA’s own meetings and conferences also provide a great opportunity to share knowledge and encourage understanding between IP practitioners, as well as to meet with policy makers and IP office representatives. The past three annual meetings – held in Orlando, Florida; Barcelona, Spain; and Seattle, Washington – have all set new attendance records, and INTA continues to explore new regions to host meetings and conferences. In October 2017, for example, INTA held the Changing Landscape of Latin America Conference in Cartagena de Indias – the first standalone conference in Latin America.
On a broader level, INTA has an important role to play in raising awareness about IP issues among the public. In this context, INTA is co-hosting with the USPTO and the National Inventors Hall of Fame the Power of Trademarks – an interactive exhibit to inform the public about counterfeit goods – which has been visited by 15,000 people in the past 12 months
Spreading the message to young people about the dangers of buying counterfeits is particularly important, and the Unreal Campaign, which targets teens aged 14 to 18 through social media, presentations at schools and attendance at youth-oriented events, has reached over 37,700 students in 32 countries since it was launched in 2012. Countries where Unreal Campaign activities took place in 2017 include Brazil, Canada, India, Kosovo, Nigeria, Peru, Thailand, the United Kingdom, the United States and Vietnam. In 2018 the Unreal Campaign also reached students in Ecuador, Turkey and Venezuela for the first.
It is clear that INTA must continue to work alongside its partners throughout the world to promote the benefits of trademarks for both businesses and consumers. It is inevitable that brand owners and IP practitioners will need to take a global perspective and find international solutions. It is also critical that IP practitioners begin to view their roles differently and embrace innovation, as brands and the way consumers interact with brands continue to evolve. While brand value is increasing, the value that consumers place on brands is being threatened, mostly as a result of misunderstanding the role that trademarks and other forms of IP serve. There is an opportunity for brand owners and IP professionals to make a greater impact on consumer audiences.
On a legislative front, Brexit will be one of INTA’s top priorities in 2019. The United Kingdom is set to leave the European Union on 29 March 2019, and there is likely to be a transition period until 31 December 2020.
Brand restrictions are a growing concern for trademark owners and something that INTA takes very seriously. The World Trade Organisation ruling on Australia’s plain packaging rules for tobacco products is disappointing, as there has been a notable increase in regulations and legislation to restrict brand use on various products in multiple countries. INTA has maintained that governments must take a well-informed and balanced approach in addressing brand restrictions, and in addition to health and safety concerns, consider a broad range of public policy matters, including the contribution of intellectual property to economic growth
Another key issue is the change to WHOIS prompted by the introduction of the GDPR. INTA has already been active in representing trademark owners’ concerns at ICANN and has taken steps to inform members about the Temporary Specification currently in place. INTA will now build up evidence of user experience in order to make further representations to ICANN to ensure that the WHOIS database is accessible, contactable and accurate.
With so many developments taking place in intellectual property, it is vital for practitioners to be able to cooperate across boundaries. INTA’s extensive programming offers opportunities throughout the year and in different parts of the world to discuss new opportunities and challenges and to educate brand owners and IP professionals about cutting-edge topics and trends in the field. These include INTA’s Annual Meeting, Leadership Meeting, and Trademark Administrators and Practitioners Meeting, as well as the regional conferences, which are held in countries around the world.
The need for education and information about the value and importance of trademarks continues to grow. One focus for INTA is small and medium-sized enterprises and entrepreneurs. INTA has established a presidential taskforce to identify their particular interests, needs and characteristics and will issue a report by the end of 2018. The association is also working with government officials and companies, such as e-commerce platforms, to tackle the sale of counterfeit goods online and across borders. Finally, there will be continued emphasis on educating consumer audiences on the most pressing issues impacting trademarks and brands, including the dangers of counterfeits.
What new challenges the next few years will bring for brand owners cannot be clearly predicted. But INTA’s considerable resources, staff, members and strategic partners will enable the association to meet those challenges and ensure that IP concerns are fully represented whenever and wherever appropriate.