21 May
2018

Fake press passes, ‘.sucks’ gun violence debate and the Annual Meeting heads to Singapore: INTA 2018 day one report

The great and the good of the trademark industry (as well as the rest of us) have descended on Seattle for INTA’s 2018 Annual Meeting. Over 10,000 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 World Trademark Review team is on the ground, and you can meet many of them at stand 213 in the exhibition hall. Meanwhile, our roving reporters – Trevor Little (TL), Tim Lince (TJL) and Adam Houldsworth – 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…

A targeted approach to law firm networking... – INTA provides in-house teams with a unique opportunity to meet their global counsel, share best practice with peers and colleagues, and top up their own knowledge on trademark issues and strategies. It also offers a chance to explore potential new law firm partners. What is clear is just how targeted some companies are in this regard and World Trademark Review is aware of one in-house team that is devoting its entire time in Seattle to meeting with Chinese firms. And only Chinese firms. For those able to get their foot in the door, a lucrative new client could result. After all, the spend being directed at just the search for Chinese counsel suggests that major brand investment in the country will soon follow. (TL)

… and a ‘scattergun approach to law firm marketing – A year down the line from the last Annual Meeting, it is easy to forget just how long the queues can get to pick up your delegate badge. One enterprising lawyer created opportunity out of the boredom of others by running up and down the queue handing out his business cards to those seeking “IP services”. Given the delegate profile, one would presume a fair few in the line would be seeking just that while in Seattle. Whether this particular approach to guerilla marketing will take off remains to be seen. Perhaps next year INTA could sell booths in the conference hall lobby. That is some prime real estate right there. (TL)

Fake news - or rather fake reporters – In past years, rumours circulated of registered delegates sharing their badges with colleagues in a bid to avoid paying multiple delegate fees. INTA rightly clamped down on that but, just like counterfeiters evolving their strategies to stay one step ahead, it appears that INTA ‘non-delegates’ are targeting a new way in. Specifically, posing as press. One member of the WTR editorial team was told his badge had already been picked up and was told that individuals trying to pose as media representatives in a bid to secure a press pass has happened before. Shout out, then, to INTA’s Charles Kim, who is tasked with ensuring that imposters are turned away. Members of the press salute you, Charles! (TL)

Saturday session snoozing – The first day of sessions at the INTA Annual Meeting was yesterday, and it coincides – for many – with the day they arrived in Seattle or a day of dealing with the inevitability of jetlag. For some, it’s a day that requires copious amounts of coffee. But for others, a sneaky nap was just the ticket – with World Trademark Review spotting at least five suited delegates taking a brief power nap before the final sessions of the day at 3pm. Perhaps INTA should consider ‘rest rooms’ at future Annual Meetings for delegates wanting a brief snooze between sessions… (TJL)

“We will happily take the blame”: insight into lobbying in China – While GDPR is the piece of legislation most on the minds of many trademark counsel right now, in China there is a development that is equally important to track. In fact, Jack Chang, chairman of The Quality Brands Protection Committee (QBPC) and special counsel to the Chairman of L Brands International, contends: “If you asked me what is most important in regards to IP legislation in China in the 21st century, I would have no hesitation saying the new ecommerce law.” That law is not specifically focused on IP but could have a major impact on rights holders seeking to protect their brands and fight counterfeits on e-commerce platforms. For instance, at present – he explained in today’s INTA and QBPC joint session on the upcoming legislation – currently if a brand owner complains about counterfeits on an online marketplace, the platform operator investigates and, if necessary, takes action. However, under the proposed law, if a counterfeiter files a declaration saying there is no infringement, the platform can’t take any action. The first draft of the legislation was filed in 2016 and, in the time since, QBPC has been campaigning for changes that are more brand owner friendly – despite foreign IP owners not being invited to comment on recent drafts. This led to criticism of the organisation, Chang explaining: “The National People’s Congress’ original plan was to pass the legislation at end of last year and they scalded QBPC for stalling the process. But we would happily take the blame. The problem was that, at an early stage, we couldn’t engage on the law. And if we wait until a Chinese agency releases a draft for public comment, it will be too late and we won’t be able to change anything.” The takeaway for those seeking to influence change in China? Get involved nearly and use your network to ensure that the message reaches legislators. (TL)

JPO withstands the pressure to wow the room – A live technical demonstration is nerve-wracking at the best of times. No matter how many run-throughs you’ve had, attempting to show off new technology in front of an audience often leads to technical hitches and breakdowns (the most famous example being Bill Gates getting the ‘blue screen of death’ while introducing a new Windows product back in 1998). Undeterred during today’s TM5 User Meeting, the Japan Patent Office’s trademark division director Sunao Sato offered to show off an early, unreleased version of a smartphone app to the audience. The app – currently under development by the JPO – allows users to take a photo of a logo and the app will, in theory, find a match in the JPO’s trademark register and allow users to look at trademark information related to the logo. Aided by a JPO representative, Sato connected his smartphone to the big screen and proceeded to take a photo of someone holding up paper with the JPO logo on it. The audience watched the app’s loading screen for over a minute – with some wondering whether the app had crashed. But eventually the app found a correct match and it was a momentous occasion. “An amazing result,” said one delegate, with the USPTO representative saying the app has “enormous promise” for both users and examiners. There’s obviously a lot of work still to do on the app, but it hinted at the next generation of trademark search. The JPO has a stand in the exhibition hall – we’d recommend asking for a live demonstration of the app. (TJL)

Madrid grows, but Brazil remains a question mark – At the Madrid Users Meeting this morning, WIPO gave a detailed update on the ongoing growth of the Madrid System. Today, the Protocol has 101 members, covering 117 countries in total. If all countries that are making “active preparations” to join the Madrid System actually join, it will comprise 123 members covering 140 countries, with those currently preparing including: Brazil, Canada, Jamaica, Trinidad & Tobago, Barbado, South Africa, Ethiopia, Seychelles, Mauritius, Malta, Saudi Arabia, Yemen, United Arab Emirates, Malaysia, Myanmar, and Papua New Guinea. But whether all those countries actually join any time soon is another matter. Masmin Pierre, director general of trademarks at the Canadian IP Office, spoke about how Canada is positive it will be contracted to Madrid by the end of 2018. “If we are not, I won’t be back here to explain why because I’ll be fired,” he quipped. Meanwhile, Schmuell Lopes Cantanhede, trademarks general-coordinator at the Brazilian IP Office (INPI) seemed less certain. He spoke about the significant challenges the office faces, spurred primarily by hundreds of thousands of pending trademark applications and rising demand (for example, the office received 35% more applications last month than April 2017). Things are getting better, he added, but it will take time for INPI to be ready for Madrid. For example in 2014 the office had 501,000 pending trademark applications – that number now standards at 305,000. Secondly, at the beginning of 2017 there was a startling 64-month average wait for a first office action with an opposition (and 28 months without opposition). Today that stands at 34 and 20 months respectively; a significant fall but still some way off the 18-month requirement of the Madrid System. “By the end of the year, we’ll be under 18 months,” Cantanhede predicted. But the message wasn’t quite as confident as Canada, primarily due to the mountain of applications the office still has to work through. We’ve heard on the grapevine that WIPO is confident Brazil will join the roster soon (with one local association telling us “early 2019” for when it will begin accepting international applications). So who knows, it could be sooner rather than later. (TJL)

Public health trumps brand rights, explain judges in plain packaging discussion – Judges from several jurisdictions, ranging from India and China, to Ireland, Germany and Panama, participated in a discussion this morning about the issues surrounding the imposition of plain packaging. The topic is one of great concern to brand owners; Iris Gunther, who chaired the session, kicked off by referring to the findings of a 2017 Brand Finance study which found that plain packaging policies would cost brands hundreds of billions of dollars if extended to the alcohol, confectionary, savoury snacks and sugary drink sectors. Most of the judges stated that significant restrictions had already been placed on tobacco advertising and branding in their countries. Several also explained that these restrictions have been upheld in the face of legal challenges; Justice Manmahon of India, and Justice Freyke Bus of the Netherlands described how courts in India and the EU have dismissed free speech-based challenges to plain packaging on the basis that public health rights were more important than free speech for commercial purposes. And Justice Fidelma Macken of the Republic of Ireland explained that in the UK Justice Green of the High Court of England and Wales had ruled against one affected brand owner, because he deemed IP rights to be entirely negative - ie. a right to prevent others from using, rather than to use oneself. Talk turned to the potential for tobacco-like branding rules to be extended to other products, with the majority of the judges agreeing that the same legal principles used to restrict tobacco branding could potentially be used to sectors were there was deemed to be a public health risk. And as the discussion came to a close, Justices Bus and Macken reminder the audience that the expansion of plain packing restrictions risks making it more difficult to establish likelihood of confusion, and therefore making it easier for counterfeiters to operate. (AH)

Lawyers brought up to speed on GDPR – With GDPR due to come into force on Friday, one of today’s more timely sessions highlighted what brands and their lawyers need to know about data privacy regulations in Europe and elsewhere. The new far-reaching European regulations give ‘data subjects’ the right to know what personal data a company has about them, and what it will be used for, to have access to that data, to correct it, to object to its use and to have it erased. A key message of the session was that compliance with GDPR cannot be left solely to IT and compliance departments, but will also require other groups – such as legal – to know, for example, how to process a subject access request. This was taken to heart by the audience, which queued up at the end of the session to ask questions about bringing data into the US for litigation purposes, when historic client data had to be deleted, and whether former colleagues could demand to have their personal data erased from documents for ongoing cases. (AH)

5 myths about GDPR – In the aforementioned discussion about data privacy regulations, one panellist, Randi Singer of Weil, highlighted five myths about GDPR and its applications that need to be dispelled ahead of the regulation’s implementation on Friday 25 May. Many companies, she argued, falsely believe that their company does not collect any personal information and therefore is not affected by GDPR. Singer was at pains to stress that the GDPR’s definition of personal data is extremely broad and that even the most basic information about clients and staff will be protected. The second myth she drew attention to is the view that there is no need to worry about GDPR if your company does not have a presence in Europe. Singer explained that all companies offering services in Europe, even if not based there, will fall under the law’s purview. She also emphasised that even companies which have got their data from a public source, contrary to what some believe, are not exempt from the new rules. The other common myths Singer underscored are that there is no need to worry about privacy if you have excellent cybersecurity, and that “GDPR does not apply to us, because we are not sharing personal information with anyone”. In other words, then, GDPR has a very broad ambit and delegates should be careful in assuming that it does not apply to your organisation. (AH)

‘.Sucks’ gun violence debate – For the past few years now, Vox Populi – the registrar behind the ‘.sucks’ new gTLD – has enjoyed stoking controversy at the INTA Annual Meeting. In 2015, the company hired a van to drive around San Diego with a sign declaring “INTA.sucks”. The following year, the INTA told the company it had to cover up a phallic image on a ‘viagra.sucks’ banner. For the past couple of years, it has allowed delegates to create their own ‘.sucks’ T-shirt in the exhibition hall, with piles of already-printed shirts often with humourous or political statements on them. This year is no different, with the T-shirt printing machine back and imagery around its exhibitor stand as provocative as ever before, with banners featuring Fox News, Starbucks, sexism and the NRA. However, one particular banner, which shows a fired gun with children in gunsmoke (with the text ‘gunviolence.sucks’) has stirred some debate. One delegate was overheard saying it was in “bad taste”, while IP lawyer Michael Peroff, an associate attorney at Wilson Keadjian Browndorf, responded to a question about the banner on Twitter by saying: “That is sick! Guns are NOT a damn marketing ploy!” On the flip-side, Price Benowitz IP attorney Heidi Tandy was more positive about it: “I’m glad they’re taking a stand against gun violence. Nobody is pro-gun violence. We all know it sucks.” For his part, Vox Populi CEO John Berard stated that the banners are designed to promote discussion – and admitted that unintended events close to (or even during) the Annual Meeting meant some become even more provocative than originally intended. For example, he said, there was an open-carry gun laws rally in northern Seattle earlier today which made the ‘NRA.sucks’ banner more relevant. Of course, Vox Populi may believe that all publicity is good publicity, and it has certainly worked for ‘.sucks’ in the past. But with gun laws being such an emotive topic (especially in relation to school shootings), some delegates may be wondering whether this is too provocative to use on marketing material at the Annual Meeting. (TJL)

Subscribe to WTR, win cases? World Trademark Review has a booth in the exhibition hall (213) and the team looks forward to seeing as many delegates as possible. While at the stand, you can demo our platform and pick up some of our latest hard copy publications (while stocks last), including issue 73 of the magazine. The edition contains a recap of our investigative reporting into the rampant trademark activity of multi-millionaire entrepreneur Michael Gleissner. His filing activities have had a significant impact on many rights holders, whether large international brands or smaller entities faced with conflicting marks. Over the past 18 months our subscribers have benefitted from a series of reports offering insight into his strategies, takeaways from related disputes and a searchable archive of every company name, trademark and domain name we have discovered that is associated with Gleissner. Our reporting has been cited as evidence in a number of oppositions (including at least four decisions in the past few weeks), with firms telling us that the articles have helped them win cases. If that alone isn’t enough to convince you to subscribe to WTR, then head to our stand, pick up a copy and check out our content. We can’t guarantee that a subscription will bring you success in trademark disputes, but it just might… (TL)

Seattle calls out INTA delegates – It was nice to see the official verified Twitter account of Seattle – which has over 40,000 followers – welcome delegates to the INTA Annual Meeting yesterday. “We’re thrilled to be your host city for INTA 2018,” the account noted. “If you have questions while in town, stop by our Visitor Information Center in the lobby of the Washington State Convention Center.” And, indeed, we’ve seen various people commenting on the great location, with one delegate telling us “it’s the perfect city for an Annual Meeting”. With some complaints in past years about the positioning of the convention center – with both Barcelona and Orlando requiring taxis to get from the convention center to the main city – this year should see less taxi expenses for attendees. (TJL)

INTA heads to Singapore – While attendees are enjoying Seattle, thoughts also turned to future meeting locations. During the opening ceremony (which we will have more detailed coverage of tomorrow), INTA CEO Etienne Sanz de Acedo finally revealed where the Annual Meeting will be heading in 2020. It’s been widely known that the selection had been narrowed down to three places beginning with S: Seoul, Singapore and Sydney. It was confirmed that Singapore had ultimately prevailed, with the 2020 Annual Meeting set to be held there from April 25 to 29. This will be the second INTA Annual Meeting in Asia following Hong Kong in 2014. “Singapore is a seminal location for the global trademark dialogue that will take place at INTA’s Annual Meeting in 2020,” said Sanz de Acedo in a press release sent shortly after the ceremony. “We are extremely pleased to go there and view this as an opportunity to further interact with and serve members globally.” Back in 2016, we reported that Singapore was expected to be the 2020 location, and that it was regarded internally as the “safe option” out of the three remaining picks. But it’s also a vibrant, technologically advanced place – with its IP office ranked as one of the most innovative in the world. So in that regard, it’s a perfect place for an INTA Annual Meeting. (TJL)

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

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Adam Houldsworth

Author | Life sciences reporter

[email protected]

Adam Houldsworth