Making a mark

Brands, attorneys and service providers stormed the Dallas Convention Center for an emotional 135th International Trademark Association (INTA) annual meeting

Alan Drewsen received a standing ovation from annual meeting attendees when he took to the stage to deliver his final speech as executive director of the International Trademark Association (INTA).

Drewsen, who is retiring in July after spending 15 years as executive director of INTA, called his time at the association “very productive”. He was speaking at the opening ceremony of INTA’s 135th Annual Meeting in Dallas, Texas.

He added: “It has often been the staff who have made my time at INTA a success.”

Drewsen revealed that the association’s staff of 65 have already begun work on the next INTA meeting, which is taking place in Hong Kong in 2014. “[It] will be a memorable experience and I have no doubt it will be INTA’s biggest meeting.”

He went on to underline the importance of his work with policymakers around the world to develop areas such as the protection of famous marks and the expansion of the TLD system. “I leave with the feeling that I’ve done a good job.”

Entienne Sanz de Acedo was confirmed as the new CEO of INTA in April. He will take over from Drewsen in July.

The Spanish-born trademarks expert joins the association from the EU Office for Harmonization for the Internal Market (OHIM), where he currently serves as a member of the cabinet of the president and head of communications.

New INTA president Toe Sue Aung, who is also general counsel for anti-illicit trade at BATMark, took the stage next. She said: “It’s hard to follow someone like Drewsen.”

INTA’s first Asian president thanked Drewsen for his work and said that the association has “blossomed” under his leadership. She confirmed that the INTA board passed a special resolution on 4 May to make Drewsen an honourary member of the association.

Aung welcomed Sanz de Acedo as the new CEO and said: “INTA is in special hands”.

Attendees later heard that the Internet Corporation for Assigned Names and Numbers (ICANN) was never going to meet its 23 April deadline for the initial delegation of new gTLDs.

The panel, which included Adam Scovill of real estate company RE/MAX and Nick Wood of Com Laude, gave attendees an overview of ICANN’s new gTLD programme and updated them on current issues.

The panel said that it was a common misconception that new gTLDs—if ICANN met its deadline of 23 April to delegate the first new gTLD into the domain name system—would be live and usable straight away.
A new gTLD must first be delegated and then comprehensively tested, and a registry has one full year from the signing of its contract to prepare a gTLD for launch.

But Scoville added that “once pre-testing is complete, ICANN will be able to delegate 20 gTLDs a week”.

The corporation received almost 2000 applications for new gTLDs in 2012. The panel revealed that 57 of those have been withdrawn.

Wood said: “Many have come from brands, but lots came from investor applicants looking to operate so-called open registries.”

One applicant looking to operate open gTLDs is Donuts. It applied for more than 300 gTLDs, including .credit, .repair and .football, after securing funding of more than $100 million from venture capital and private equity funds and a top-tier bank.

A panel member said that the Trademark Clearinghouse and the Sunrise registration periods “need to be a platform for which registries can build new protection mechanisms”.

Woods said that the Donuts Domain Protected Marks List is a good example of a private industry initiative to protect trademark owners and build on the measures that registries have to implement as a minimum.

He added that it is not clear how much the initiative will cost, but he is very interested in seeing how it develops.

In a panel on intellectual property and social media, brands were warned against using their rights to minimise damage to their reputations on platforms.

The well-attended session saw Judy Branzelle and Traci Berry of Goodwill Industries International, Christopher Chaudoir of Chevron Corporation, and Gina Durham of DLA Piper LLP, discuss the pitfalls of being too pushy with IP on social media platforms such as Facebook and Twitter.

Durham said that using IP rights to minimise damage to a reputation can be seen as aggressive, adding: “The question is—do you want to?”

Berry agreed, saying that “sometimes we forget ‘I’m sorry’ is a good way to go” when tackling negative publicity. Chaudoir said that oil and gas company Chevron will apologise if it makes a mistake, because it wants to do better for its customers.

In another well-attended session, in-house counsel said that innovation through collaboration is the way forward for cloud computing.

Dana Brown Northcott of Amazon, David Cho of AT&T Services, Alica Del Valle of and Sanjiv Sarwate of Dell told conference attendees that the cloud is a “delivery mechanism” that is constantly changing.

Partnerships are essential to sharing the burden of innovation, they said.

Cloud hosting provider operates a marketplace of almost 2000 apps that have been installed more than 1.7 million times.

Every app must be customised for different industries and partnerships are key to doing it effectively, said Del Valle.

She added: “You can’t convince yourself that you’re the only company that knows how best to leverage these revolutions.”

Co-branding is one way of collaborating, said Del Valle, but “contracts take a lot of skill”.

AT&T works with IBM, provides Microsoft Office to small business customers, and keeps its network open for developers. Cho added: “We don’t know everything, but collectively we can make changes.”

European countries “chip away” at legal certainty when they apply EU regulations differently, said an eBay IP counsel in a panel on jurisdiction issues and the internet.

Speaking about court jurisdiction in internet cases, eBay’s Tanja De Coster focused on the EU.

She said that while there have been “sensible solutions” to the issue, such as the EU Regulation on Jurisdiction, different applications have led to legal uncertainty in Europe.

In the EU, complaints should be brought in the defendant’s home state, or where the harmful event occurs.

De Coster said: “These issues are decided differently in various member states.”

French courts use two tests to decide whether they can rule on a case. Plaintiffs must show that the country’s consumers have been targeted and demonstrate a sufficient, substantial or significant link between the infringing act and the territory of France.

De Coster was in favour of the former test and critical of the latter, which “chips away at legal certainty”. She added that the use of both tests “is not ideal”.

The World Intellectual Property Organization’s Erik Wilbers also discussed UDRP and ABR proceedings as viable alternatives to litigation, while Rodrigo Azevedo of Silveiro Advogados spoke about new laws in Brazil.

Brands will be able to rely on the FIFA World Cup Brazil Act and the Rio 2016 Summer Olympics Act to enforce their rights against ambush marketers, who will not be allowed to unofficially associate themselves with the sporting events.
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