19 May
2019

Trademark pirates attack, sustainable freebies, parasite brands, and GIview in the works: INTA 2019 day one report

The great and the good of the trademark industry have descended on Boston for INTA’s 2019 Annual Meeting. Over 11,000 IP professionals are in town for this year’s event (plus all of the unregistered attendees holed up in hotels and meeting rooms) and there is a full programme of sessions, table topics and, to cap off each day, receptions for attendees to enjoy. The WTR team is on the ground, and you can meet many of them at stand 918-920 in the exhibition hall. Meanwhile, our roving reporters – Joff Wild (JW), Trevor Little (TL), Tim Lince (TJL) and Bridget Diakun (BD) – will present a daily round-up of event highlights and observations. Here’s what caught our attention yesterday and on today’s first full day of proceedings…

Attack of the trademark pirates – On Saturday, one of the first sessions of this year’s Annual Meeting focused on copyright and trademark protection for fictional entities. Entitled ‘Character Wars: Trademarks vs. Copyright Protection for Fictional Characters’, the discussion highlighted some of the significant challenges being faced by movie creators – with arguably the highest hurdles being found in China. Speaker Christopher William Smith, who works at Baker & McKenzie in Hong Kong, said that so-called ‘trademark pirates’ in China are rampant. “As well as in typical entertainment classes, companies in China must file defensive marks for classes often used by trademark pirates – any gaps in coverage will be exploited by these pirates,” Smith warned. “In fact, in cases when a movie is especially popular, it’s not unusual for a movie producer to file upwards of 100 oppositions. Therefore, it is important to file early on, and also important to file before or immediately when a movie name is announced or the trademark pirates will pounce.” It appears, then, that practitioners in the TV and movie space are faced with unique challenges when ensuring they are sufficiently protected in China. (TJL)

Partners not clients – Speaking during the “Marketers are from Mars, Lawyers are from Venus” session on Saturday afternoon, Johnson & Johnson head of trademarks David McDonald continuously referred to the J&J marketing executives he advises as business partners. When asked why he used that term instead of the more traditional “clients”, McDonald explained that it was a company-wide initiative that has its roots in the GC’s office. “When it comes down to it,” he stated, “business partners is what we are. I can’t give advice and then walk away because we all work in the same company and we are all affected by what happens.” It’s an important point: referring to someone as a client gives you a level of detachment from the issue being discussed. Partners, on the other hand, are in it together. That commitment to a common cause also underpins something else that McDonald said: J&J is the ultimate stakeholder in everything that is done inside the company. For McDonald that means that if he gives advice and it is ignored or discounted, and he feels that it is bad for the company, going higher up the chain of command can never be ruled out. It’s not something to do lightly – and it should not be done in a confrontational or aggressive manner – but rather than watch something potentially bad happen, it might be best to take the conversation up to the VP level to get a decision there. “Ultimately, I answer to J&J and not always to my business partner in marketing,” McDonald concluded. (JW)  

Breaking the barriers – The partnership theme underpinned the whole of the session in which McDonald was a panelist. Sitting alongside him were James McCarthy of Norvell IP, who moderated, and Jennifer Severns from the American Marketing Association. The Venus and Mars session title was adapted from the famous book about the profound differences in the ways that men and women see the world, and referenced what is often regarded as the tense relationship that can exist between corporate marketing and trademark departments. But, the panelists explained, it does not have to be that way. Instead, with some understanding, pro-active communication and mutual respect, the two sides can work together effectively and successfully. Severns stated that it is important for marketers to always assume the good intentions of the trademark professionals they team up with and for both sides to realise that they are experts, just in different fields. It’s not a case of getting approval from legal to do something, she continued, but working with the lawyers to get the right outcome. You could almost hear the heart strings of the assembled roomful of trademark experts playing! McDonald made the point that engagement from the legal side is vitally important. Early in his career, he admitted, he was too quick to push a trademark agenda; to focus, for example, on the need for strong, distinctive marks at all times, without considering that on occasions these may not be possible or even desirable. Now, he said, he realises his job is to support the business and to find a balance. “We want to be brought in early, but we have to be seen as a positive team member,” he stated. It’s sometimes the case, he continued, that trademark lawyers can convey a sense of superiority, a lack of empathy – and that does not help if you want to be a part of the team. So, if you are one of those trademark lawyers, be it private practice or in-house, who frets about being seen as the one who always says no, the solution could be a simple one: do not be that person! (JW)   

Queues, what queues? – Seasoned INTA veterans have long been accustomed to the inevitable long and winding registration desk queues, particularly on the first day of the Annual Meeting. Some have even sought to turn delegate boredom into opportunity – last year we reported that one quick-thinking attendee ran up and down the queue handing out his business cards to those seeking “IP services”. This year he will have been disappointed – the registration process was the slickest and quickest we have seen. One delegate told WTR that she came expecting a long wait yet was in and out in meer minutes. INTA event staff – we salute you! (TL)

Freebies take a sustainability turn – One of the lasting trends of the Annual Meeting is the variety of freebies being given out in the exhibition hall. This year is, of course, no different. When the hall opened today, there was dozens of different free items being given away by IP law firms, vendors and registries. Returning this year, as popular as ever, is the ‘.sucks’ customised T-shirt, with a queue already forming within an hour of opening. Elsewhere, delegates can pick up a free rucksack, seashells, stress balls (including one shaped like a gavel), frisbees, umbrellas (handy for today’s rainfall), and all of the chocolate and candy one could handle (our pick being the rice crispy treat). One trend we’ve noticed is of sustainability, with tote bags and reusable cups (for both water and coffee) appearing more than previous years. One sponsor told WTR that sustainability was a key factor in choosing their free item for this year’s Annual Meeting – both in terms of the environmentally friendly impression it gives delegates and how practical they are in an age when shops often charge for plastic bags or disposable coffee cups. (TJL)

Passion and politics – It’s not often that intellectual property makes the front pages of the British press, but it did last year when reports emerged that the US was demanding the UK rework the definition of Scotch Whisky and other well-known British products if it wanted to secure a post-Brexit trade deal. The outrage from Scotland and other parts of the UK with cherished geographical indications was immediate and angry – and also showed that GIs, above all other IP rights, inflame passions outside the bubble. It’s this that make them different, as was explored in the session on GIs on Saturday afternoon. Panelists representing different parts of the world updated the audience on recent developments, while Shawna Morris of the US-based Consortium for Common Food Names gave a perspective from a major lobbying group that believes, in some areas, GI protection has gone too far, that governments are allowing what have become little more than generic terms for types of food and drink special and unmerited protection. Morris mentioned no specific names, but did emphasise just how big a part GIs play in trade negotiations and how politically charged that makes them - something that the Brexit reports in the UK only serve to emphasise. Given that this is the INTA Annual Meeting, it was no surprise that session moderator James Tumbridge of law firm Venner Shipley turned out to be among a team of experts advising the British government on the GI aspects of the country’s withdrawal from the EU. He confirmed that a decision has been taken that in the short to medium term the UK will continue to follow the EU GI regime as part of its national law (if it should ever get round to departing), but that longer term it could well begin to diverge. The politics of that will be interesting. (JW)

A new Chinese regime – Among those presenting in the GI session was Guizeng Liu, senior partner of Beijing-based Yuanhe Partners and a guest professor at the School of Law of Beijing Foreign Studies University. He outlined the significant changes that have occured in the Chinese GI regime over recent years and emphasised that a country once seen as closed-off to non-domestic GIs is now much more welcoming. Liu explained that GIs could be protected as either collective or certification marks, and that the China National IP Agency (the recently-created entity that issues both Chinese patents and trademarks) is sympathetic to applications. Currently, though, it does not seem to be a message getting much traction outside the country: Liu shared data showing that while there are around 5,000 marks protecting domestic GIs in China, there are just 183 covering foreign ones, the top three countries of origin being France (125 marks), Italy (23) and the US (14). Those look like worryingly low numbers. If you do not apply, you do not get coverage, and at a time when a millions of Chinese citizens are becoming more affluent and more interested in the kinds of products that GIs protect, at the very least it seems as if there are significant opportunities being missed – and that is looking on the bright side. (JW)

GIview is coming? – Sticking to the topic of GIs, they are frequently in the news yet actually ascertaining what is a GI, and where, can be a tricky proposition. Today Christian Archambeau held his first press briefing as executive director of the EUIPO. One question WTR put to him was whether, given the ever-increasing importance of geographical indications, the office would look to create an online database akin to TMView. His response? “We would love to”. He expanded: “We want to improve the visibility of GIs and are looking at a GIview. We would like to create a database for GIs and are working with the DG Agriculture and Rural Development on that.” Crucially, such a database would include GIs that are hidden in bilateral agreements, potentially giving users access to the true global picture. Should GIview become a reality, it will be greatly welcomed by rights holders who – at present – are often left operating in the dark. (TL)

The brand implications of phishing – The issue of phishing has been an increasingly prevalent worry for brands of all sizes. On Saturday, there was a dedicated session on this matter, with the pun-tastic title “Holy Mackerel! Identifying and Addressing Phishing of Your Employees and Customers”, which revealed the ways that corporations and law firms can avoid being caught up by phishing schemes. According to speaker Michael H. Lashlee from Mastercard, phishing is “a precursor crime” and could lead to further issues, such as the theft of intellectual property, and could even cause problems related to the EU’s GDPR. On top of that, the scammers behind such campaigns will often read about the developments of major brands, especially if they launch in a different country or plan to go public, and will create targeted phishing emails about that – raising the chance of recipients falling for the scam and clicking on nefarious links. Later on, the speakers reminded attendees that if a phishing campaign is successful and a scammer gains access to sensitive internal files, it can quickly turn into a brand problem. “For trademark lawyers, you need to focus on the brand – people need to trust your brand, if you aren’t protecting yourself from phishing, people could lose confidence in your brand and stop using it altogether,” stated moderator Raphael Gutierrez from Uber. Indeed, with examples like Sony and Ashley Madison, there is clearly precedent on how data leaks can have a reputational issue for major brands. (TJL)

Parasite brands aren’t a laughing matter (even if Eddie Murphy says they are) – In today’s packed session on anti-counterfeiting in China, there were numerous insights that shocked and amused delegates. For example, speaker Daniel McKinnon from New Balance, spoke about a movie he has always been fond of, the 80s classic comedy Coming To America, and referenced one particular scene about a fast food restaurant called ‘McDowells’. In the scene (which can be viewed here), a restaurant owner character tells Eddie Murphy: “Look, me and the McDonald’s people have a little misunderstanding. You see, they’re ‘McDonald’s’ and I’m ‘McDowell’s’. They’ve got the ‘golden arches’, mine is the ‘golden arcs’. They’ve got the ‘Big Mac’, I’ve got the ‘Big Mic’ – we’ve both got two all-beef patties, lettuce, cheese, pickles, and onion, but they use a sesame seed bun, and my buns have no seeds.” McKinnon told delegates that he used to find that scene hilarious. “Fast forward 20 years and I’m living that McDonald’s life and don’t find it funny any more,” he admitted, and went on to describe the numerous difficulties that New Balance is having in China with similar parasite brands. Although, unlike McDowell’s one restaurant location, some of the parasite brands in China have thousands of stores. “Once you put the humour aside, we have to ask ourselves: why do these parasite brands emerge?” he said. “I think there are many reasons, with the number one being that it is a brilliant way to avoid various enforcement mechanisms. When we started, we had to really start banging on the doors of the law enforcement in China, but then they got really good and responsive and we were able to take down a lot of these counterfeiters quite quickly – within 24 hours sometimes. Then we began running into these parasite brands and we’d alert law enforcement and they would arrive for a raid, look at the goods, and tell us ‘yeah we understand why we are here, but the products don’t say ‘New Balance’, they say ‘New Bungren’ so it is above our authority’ and they inform us that we would need to sue this company for them to be able to return and enforce. That meant it went from a 24-hour enforcement period to a 4.5 year enforcement period.” For New Balance, and other brands in a similar situation, this causes quite a dilemma – and has led the footwear giant to take new methods, including trying “aggressive marketing tactics”, with McKinnon saying that strategy has one particular hurdle: “How can we inform consumers in China that they are getting a substandard product from these parasite brands that isn’t worth the lower cost, and also do it in a way that doesn’t feel like a big American company stealing Chinese money? It’s a very fine line, so I’ve been working with my counterparts in China and an outside advertising agency for the best way to tackle this problem.” Nonetheless, even if this marketing strategy proves effective, parasite brands will continue to be a headache for McKinnon and his team. “As you can imagine, I come back from China and have a lot less hair on my head because I’ve been pulling it out from not being able to quickly enforce these parasite brands.” Many major brands will no doubt be feeling the same. (TJL)

Secrets of a trademark ‘super team’ – Scott Thompson, head of IP at Mars, made it clear during the session on ‘Assembling the Super Team’ that non-traditional approaches, communication and adaptability are the keys to building, and leading, an efficient and successful trademark team. Thompson had the opportunity to oversee the creation of his own group and now runs a team of 55 in-house counsel who operate around the globe. Thompson decided to take a modern approach to hiring, relying on social media, networking companies, and his own employees to get the word out to a number of different communities. For example, he posted job ads on apps and social media in order to attract the attention of millennials, and used Facebook groups to draw interest from individuals of various backgrounds.  Importantly, Thompson recommended that companies steer clear of recruitment firms during the hiring process, particularly if it is an exclusive relationship, as it limits the talent pool. Keith Goudy, from Vantage Leadership Consulting, singled out ‘potential’ as the most important characteristic of interviewees (aside of course from possessing the necessary technical knowledge base), as those who are curious and are driven by purpose are likely to perform better. While assembling a team is important, it is only a small part of the process of creating a ‘super’ crew. Thompson reminded the audience that being a leader was an ongoing job and an important one to maximise a team’s talents. Not only does Thompson prioritise communication and adaptability, but he sees the role as one of a navigator. Thompson does not direct the team but works within it, collaborating to utilise all the powers of the group. (BD)

All you need is a little respect – A fundamental issue which brands struggle with is that of indigenous rights and trademarks. The most famous example of this is Disney’s trademark of ‘Hakuna Matata’, which has caused global backlash as consumers call for the company to drop the Swahili phrase. According to the ‘Clash of Branding with Traditional Knowledge and Cultural Expression’ panel earlier today, there is a simple answer to wipe out the risk of cultural appropriation: respect. Many indigenous groups are interested in working with other communities, and it may seem simple, but asking for the right to use phrases, trademarks and designs is the most effective and easiest way to avoid conflict and potential infringement. As consumers are increasingly monitoring the activities of companies, it is critical that brand owners are conscious to the indigenous groups and interact with them appropriately, as a wrong move could prove to be extremely detrimental to brand reputation. (BD)

The mind of the millennials – A recurring theme at this year’s INTA conference is how brands can engage with members of Gen Z and millenials, with a number of sessions addressing the various issues and opportunities associated with the younger generations. These younger generations have impacted the way that brands approach business, with Collette Parris from S’well saying that the company is prioritising the needs of its ‘community’. One such example was its introduction of a sports collection, which was introduced because of a demand from the consumers. The product was launched entirely through social media, with S’well hiring (vetted) influencers to promote the brand and product. The success of this targeted approach was reflected in the numbers, with the company seeing 115% lift in online sales compared to the previous period. With every generation, brand owners have been forced to adapt their business strategies to better engage with their consumers. No matter the new trends or changes which arise, it will continue to be critical for companies to be flexible and to focus on what the consumers really want. (BD)

Missed marketing opportunity for law firms? – INTA is all about connections: meeting old friends, networking with potential clients, and bringing together networks to discuss current and future trademark strategies. The social side is what makes the INTA Annual Meeting so unique – and why law firms see benefit and ROI in hosting receptions. However, there is one clear opportunity being missed by law firm event planners – claiming the early morning slot. As I woke in the early hours on Saturday morning and started in on my pile of ironing, I had a moment of inspiration akin to Doc Brown’s sudden vision of the flux capacitor. Surely a 3am networking reception would be a critical and commercial smash hit? Scattered across Boston there will be many INTA delegate like me – jetlagged, wide awake, hungry and at a bit of a loss about what to do. Faced with the choice of ironing, watching night-time TV or meeting fellow bleary-eyed trademark professionals, I know which one I would opt for. But then, on the plus side, I have at least finished my ironing for the week… (TL)

Stay tuned – Don’t forget you can keep up-to-date with the latest INTA Annual Meeting news and insights on our Twitter feed.

Bridget Diakun

Author | Data Reporter

[email protected]

Bridget Diakun