What comes next
International Trademark Association (INTA) president Mei-lan Stark provides an update on what the association is doing to put its 2014-2017 Strategic Plan in to action
The arrival of spring in the Northern Hemisphere is a welcome change for so many of us who endured a long and particularly cold winter. It has been a productive first quarter for the International Trademark Association (INTA). We began this year by launching the 2014-2017 Strategic Plan, and I am both proud of and astonished by everything that the association has already accomplished in service of the plan. INTA has sent delegations to India and south-east Asia, hosted a conference in New York City and, of course, in May we will welcome more than 8500 trademark professionals from around the world to Hong Kong for the 136th Annual Meeting—our first in Asia.
The association has also been actively involved in a number of issues that have been growing in importance for several years and are now coming to fruition. In January, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that the number of new TLDs added to the domain name system had surpassed 100. In February, we saw major progress in the EU with its revisions to the EU trademark system. And on 1 May, China will implement revisions to its trademark law.
The 2014–2017 Strategic Plan
The 2014–2017 Strategic Plan sets out four strategic directions—(i) the protection of trademarks; (ii) communications; (iii) international expansion; and (iv) member satisfaction—and will guide the association’s activities and engagements for the next four years. Indeed, the new plan captures and expands the essence of what we have already accomplished in 2014 and will guide our course in the coming years.
The protection of trademarks
Progress in India
In early February, I led INTA’s delegation to India. The Indian government faces a number of challenges in granting and enforcing trademark rights yet, at the same time, demonstrates a genuine willingness to work with the association in seeking solutions to issues and responding to users. We have sustained a meaningful dialogue and built relationships with various government officials in India.
During just three days in India we held five separate government meetings that focused on pertinent policy issues facing local trademark owners, including India’s progress on accession to the Madrid Protocol, customs enforcement, and the continued modernisation and streamlining of the registration process. We also met with local brand owners to hear their point of view regarding the challenges they face and to ask how the association can become more involved in India.
Overall, they were pleased to see the level of engagement that INTA has with local government. At the same time, they are eager to see the association develop best practices for local brand owners in dealing with enforcement agencies; and to provide educational opportunities for local brand owners and trademark officials.
The European trademark system
The most welcome news to come out of Europe so far this year was the 25 February European Parliament vote in favour of more robust measures to combat the transit of counterfeit goods in the EU.
Since 2011 and the Philips/Nokia Ruling (C 446 and 495/09), European customs were permitted to seize counterfeit goods at the EU borders only if the illicit items were destined to be sold in the EU market, leaving them powerless with regards to counterfeit goods on route to a third country. These new provisions will allow customs to stop counterfeit goods even if destined to a country outside the EU.
The February vote covered a number of other legislative proposals for revisions to the European trademark system. Looking ahead, the EU Council (representing the interests of member states) must now adopt its own position on the legislative proposals. Following this, the two co-legislators (the European Parliament and EU Council) will need to work on a compromise text. The association will continue to represent the interests of trademark owners and consumers in this debate among the European Commission, Parliament and the EU Council of ministers to ensure that this legislation is enacted and lives up to the expectations of modernising and harmonising the European trademark systems.
China trademark law
Mark 1 May on your calendars, because that is when the Chinese government will implement the 2013 revisions to the China Trademark Law. INTA submitted comments on implementing regulations as well as on the rules for the Trademark Review and Adjudication Board. INTA also represented trademark owners’ views on the revisions, which include a substantial increase in the amount of damages that may be awarded for trademark infringement.
Dominating the news at the ICANN 49 meeting in Singapore this March was the announcement from the National Telecommunications & Information Administration that it intends to transition its role as steward of the Internet Assigned Numbers Authority (IANA) to the global internet community. As a first step in this process, ICANN will gather global stakeholders to develop a proposal for the transition, and INTA will closely monitor the progress.
Of course, the rollout of new TLDs continues to be a major focus of ours. The association has worked to help secure the establishment of adequate rights protection mechanisms (RPMs) for trademark owners. As the rollout of the new gTLD programme continues and expands in 2014, we will cultivate the association’s vital role to protect the interests of the trademark community by remaining an active and thoughtful participant in ICANN and the greater internet community.
While the increasingly important role that IP and trademarks play in society is understood among brand owners, it is sometimes misunderstood outside the IP community. This strategic direction provides guidance for how the association will engage with those outside the IP community, including the general public, and it will be the task of the entire IP community to communicate the enormous value that trademarks bring to commerce and how they foster innovation and support jobs.
Brands and innovation
To support the strategic plan, I have created three presidential task forces. The first task force will explore how brands stimulate innovation and how they pave the runway for innovation to take flight. IP has come under the spotlight in recent years and among some there is misperception about role of IP in society.
A key objective for INTA over the coming years—and (as envisioned in the atrategic plan) one that the association wishes to collaborate on with all stakeholders in IP—is to develop an energetic programme to explain the benefits of trademarks and IP for consumers, national economies and society at large.
Innovation has traditionally been associated with patents and technology, but there is a real nexus between brands and innovation: brands can stimulate innovation. The insights from this task force will help us to better understand the relationship between brands, innovation, the global economy and, importantly, consumers, and will also inform our messaging as we communicate these findings far and wide.
The association has also taken a number of steps to improve upon its regular communications activities as a way of reaching new audiences. In January, INTA officially launched a Chinese-language microsite. This is the first step in a new INTA initiative to offer materials in languages other than English. In addition to this, the strategic plan and 2013 Annual Report are now available in five languages at inta.org.
We’ve also made an important update to the homepage of inta.org, which now features important news from the association and trademark community. This is complimented by a new breaking news section in the INTA Bulletin.
For INTA to represent the interests of the global trademark community and, at the same time, represent the interests of individual members around the world, the association must further its international expansion. This will also enable INTA to develop stronger relations with local IP offices and associations and undertake more targeted advocacy on behalf of its members.
To support these efforts, the association has increased the number of its Global Advisory Councils in order to focus on additional regions that are critical for advocacy efforts and membership growth. There are now Global Advisory Councils for the following eight regions: Africa, Asia, China, Europe, India, Latin America, the Middle East, and North America. The councils will coordinate the association’s activities within and across these eight regions.
The 2014–2017 Strategic Plan envisions INTA working with organisations around the world, including trademark offices, non-governmental organisations and national and regional associations. The Building Bridges taskforce will explore how INTA can foster partnerships not just with governments and other IP associations, but with marketing associations, consumer protection groups, and trade unions and other groups.
We are taking every opportunity to build bridges and establish new relationships around the globe. In the lead up to the 2014 Annual Meeting, much of our attention is focused on Asia. A record number of attendees from the Asia Pacific will be joining in Hong Kong, among them many government representatives from across the region and beyond.
Spring delegation visit to Asia
With March now drawing to a close, I write from south-east Asia and an INTA delegation that takes us from Japan through China, Hong Kong and Myanmar.
Over the past two days, we’ve met with representatives from then Japan Patent Office, the Japan Patent Attorneys Association, Japan Customs, the Japan Trademark Association, and the Japan Intellectual Property Association. We also visited Japan’s IP courts.
As with our delegation visit to India, a key goal of this visit is to strengthen our relationship with these organisations and with the government. Our physical presence in Japan sent a welcome message that INTA is eager to collaborate with local organisations, support the government’s activities and represent the interests of brand owners in the region.
From here we leave for China. The delegation will then stop briefly in Myanmar before heading to Singapore for meetings with the Singapore IP Office, the World Intellectual Property Organization and the Asia-Pacific Economic Cooperation.
This year is the start of the new two-year committee term for INTA’s more than 2700 volunteers. Serving on INTA’s 183 different committees, subcommittees and project teams, it is the association’s talented and dedicated volunteers who ultimately implement the strategic plan.
Given the integral role that they play in INTA’s success, the third and final presidential task force will reexamine INTA’s committee structure and participation to align it more closely with the plan.
Our members are, after all, the backbone of the association. We want to provide our members as rich and robust an experience as we can and make INTA participation beneficial for both volunteers and their employers.
The confluence of all four strategic directions
Hong Kong and the 136th Annual Meeting
INTA’s first annual meeting in Asia is a pivotal event for the association and the entire trademark community. The 2014 Annual Meeting will also provide us with yet another platform to foster new relationships and to build upon existing ones, and to broaden our presence in this increasingly important region.
At last year’s annual meeting in Dallas, we had representatives from more than 30 governments. We expect this number to rise in Hong Kong, especially from governments in the surrounding south-east Asian jurisdictions.
This meeting’s educational programming will include a specialised track of eight sessions with a focus on Asia geared toward both Asian and international attendees.
The programming is designed to help international attendees: (i) learn how to access Asia’s booming consumer markets; (ii) acquire best practices for doing business in Asia; and (iii) learn how to protect their brands in these markets.
We expect more than 8500 attendees in Hong Kong. More than 2,000 attendees from China and surrounding countries have already registered—a new record for INTA. For those travelling from Africa, Europe, the Middle East and North and South America, this will be a unique opportunity to establish a professional network in the region.
Through meetings with their Asian counterparts in Hong Kong, and by using this trip to visit clients and colleagues on their home turf, international attendees will have a chance to learn first-hand about the potential business opportunities that the booming Asian markets have to offer.
Never before has INTA offered such excellent networking and business development opportunities all under one roof. We hope that you will be joining us in Hong Kong for this truly historic event.
Mei-lan Stark is the 2014 INTA president and chair of its board of directors. Stark is senior vice president of intellectual property for Fox Entertainment Group. In this role, she heads the IP legal group, which is responsible for all trademark, copyright, domain name and patent work for Fox Entertainment Group entities worldwide.