A Chic Building Canada’s IP Approach to IP Bridges Commitment Antonio Borrelli on IP Sheila Francis on Mark Schaan discusses strategy at Marc Jacobs strategic partnerships trademark reform 11 16 18

140th Annual Meeting, Seattle daily news Tuesday May 22, 2018 The Yin and Yang of Licensing Licensing can achieve more for a company than mere financial gain, but balancing the requirements of licensor and licensee is a challenge, as Peter Scott reports.

hen a licensing agreement areas. From a licensor perspective, (L. to R.) Judy McCool and Viviana Mura W works well, both parties reap the she said that good licensing brings in rewards, but negotiating and executing revenue to the company, but also serves licensor. The company sells eyewear and makes sense when seen in its an effective agreement is a matter of “give other useful purposes. for brands such as Chanel S.A. (France) entirety,” Ms. Mura added. and take,” according to Judy McCool, “When there’s a lag between seasons and DKNY (USA) under license. Ms. McCool extended the Senior Vice President Legal Affairs at of a show, it’s about figuring out ways Licensing is a “powerful way to point, noting that from a licensor’s HBO (USA). She was speaking in Session to keep fans engaged with the show,” generate revenue” for both licensee and perspective, it’s important to choose CM01 The Yin and Yang of Licensing: she said. In the case of Game of Thrones, licensor, she said, but money should your licensing partners carefully. Deep Thoughts from a Licensee and that means everything from a live not be the only consideration. “Brand alignment is really important,” Licensor yesterday, along with Viviana concert experience drawing on the music While adding brands to companies she said. A deal may look like a great Mura, Assistant General Counsel at featured in the series to a set of postage through licensing deals can be a useful opportunity in terms of revenue, but if Luxottica Group (USA). stamps featuring characters from the way of diversifying your portfolio, “you the brand doesn’t align well with your At HBO, Ms. McCool works on show, produced by Royal Mail (UK). need to consider whether a certain values, you run the risk of damaging licensing deals for multiple properties, At eyewear company Luxottica brand mixes well with your other your brand if you license it. such as TV show Game of Thrones, across Group (Italy), Ms. Mura is usually in brands, and you have to be mindful of Ms. Mura said that as well 3 many different markets and product the position of licensee rather than having a portfolio that really blends as revenue, licenses are a way

161 Exhibitors! Disparaging Marks and Mascots The 2017 decision in Matal v. Tam captured the attention of the trademark community and had serious implications for another decades-long trademark case concerning disparagement. Sarah Morgan reports.

rock star and a social activist How the First Amendment Is Likely trademarks was unconstitutional, in Acaptivated the attention of to Impact Trademark Registrations a move that overturned more than 70 registrants yesterday with their Going Forward. years of legal practice. Come visit the Exhibition Hall, open stories during Session CM02 THE In June 2017, the Supreme Court The man who sparked this decision today from 10:00 am to 5:00 pm. REDSKINS and THE SLANTS: A of the United States held that the was Simon Tam, founding 2 Review of the Causes, the Cases, and U.S. government’s ban on disparaging member of Asian-American

Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 1 NEWS Tuesday May 22, 2018 Disparaging Marks and Mascots (continued)

1 rock band The Slants. His slant gesture” as evidence that THE journey began with a film SLANTS was disparaging. in 2004—Kill Bill, directed by Quentin “We thought we could appeal using Tarantino. traditional methods,” such as surveys, “It was the first time that I had legal declarations, and expert reports,” even seen an American-produced film said Mr. Tam, but these did not work. that showed Asians as cool, confident Mr. Tam changed tactics, submitting and sexy,” he explained in yesterday’s an ethnic-neutral application. In session. Mr. Tam set about launching a the first application, Mr. Tam had rock band to “sing about our perspective submitted band posters which featured … while reappropriating this slur.” Asian themes; his second application In 2009, a friend recommended that did not indicate the band’s Asian Stephen Baird Amanda Blackhorse Mr. Tam file an application to register descent at all. But his application was a trademark, claiming that it would again rejected, using the same evidence States and Canada has existed for more of Appeals for the Fourth Circuit, “cost a few hundred bucks and only that had previously been cited. than four decades. but the case was vacated because of take six months.” The case ended up at the U.S. The first significant case that dealt with Matal v. Tam,” Ms. Blackhorse said in This was not how thing transpired. Supreme Court. Mr. Tam said that it was initiated by Native American Suzan yesterday’s session. His application was rejected on the “if the government truly cared about Harjo, who was influential in starting the She went on to explain that the use grounds that it was disparaging to marginalized communities … then movement in the 1960s. She successfully of such mascots is important to Native persons of Asian descent. why didn’t they begin by canceling overturned a trademark registration Americans because there are more Mr. Tam explained that the trademark registrations for the Ku for National Football League team The than 560 recognized Native tribes in rejection from the United States Klux Klan or other hate groups?” Washington Redskins at the USPTO in the United States alone, with more in Patent and Trademark Office The case centered on Title 15 United 1999, but that decision was overturned Canada and Mexico, and these mascots (USPTO) quoted UrbanDictionary. States Code, Section 1052 (Section at the district court level and then appeals are the only image of them that the com and included photos of Miley 2(a) of the Lanham Act), under which were rejected under the doctrine of laches. public have in many cases. l Cyrus “pulling her eyes back in a trademarks that are likely to disparage Years later, Amanda Blackhorse, a people, institutions, or beliefs are social worker and activist (USA), who barred from registration. spoke on yesterday’s panel, took on the Joel MacMull, the Vice Chair WASHINGTON REDSKINS trademark. “The Supreme Court of Intellectual Property & Brand This lawsuit, Blackhorse v. Pro Football, of the United States held Management and Commercial and Inc., was filed by younger plaintiffs and that the U.S. government’s

Corporate Litigation Practice Groups at therefore not barred by laches. She won ban on disparaging

Mandelbaum Salsburg (USA), was part the case at the TTAB in 2014. trademarks was unconstitutional, in a move of Mr. Tam’s team at the Supreme Court. Pro Football appealed the decision “ Moderating the session’s panel, he in August 2014 but lost, with the court that overturned more than noted procedural shortcomings in the upholding the TTAB’s decision. 70 years of legal practice. rejection of the second application: “Each Again, Pro Football appealed, application must be evaluated separately, this time to the United States Court but that’s not what happened here.” Mr. MacMull added: “This should Simon Tam never have become a constitutional The Psychology of Mediation case. There was certainly enough evidence for the United States Court of aturday’s Session CSA24 The experience as they would a real Appeals for the Federal Circuit (Federal SPsychology of Mediation: mediation. Only the mediator saw Circuit) to reverse because there wasn’t Analyzing How Parties Negotiate, each side’s confidential mediation substantial evidence in support of the moderated by Kevin Hartley, a Partner statements and knew the parties’ Trademark Trial and Appeal Board’s at Trust Tree Legal (USA), involved settlement positions at the outset. (TTAB’S) decision.” a faux dispute between a family- As the mediation progressed from Following the Supreme Court’s owned, local craft brewery and a the mediator’s introduction through decision in December 2017, the multinational tequila conglomerate. a successful resolution of the dispute, Federal Circuit ruled that the Lanham Paul Havel, Partner at Miller Nash Ruth Corbin, Chair of CorbinPartners Act’s ban on “scandalous and immoral” Graham & Dunn LLP (USA), and Inc., Adjunct Professor at Osgoode trademarks was unconstitutional in Joel VandenBrink, Founder at Two Hall Law School, York University In Re: Erik Brunetti, overturning the Beers Brewing and Seattle Cider (Canada), and a psychologist well- TTAB’s decision to refuse a trademark Company (USA), represented the versed in mediation, analyzed the Joel MacMull registration for the word “Fuct.” interests of Viva Brewing Company, choices being made by each party, Stephen Baird, Chair of Winthrop & while Sarah Anne Keefe, a Partner at including the mediator. True to an Weinstine, P.A.’s Trademark and Brand Womble Bond Dickinson (USA), and actual mediation, the party caucuses Published by: World IP Review (Newton Media Limited) Management Group (USA), suggested Nathalia Mazzonetto, a Lawyer at remained confidential, with the ©Newton Media Limited 2018 that these cases mean the ban on Müller, Mazzonetto (Brazil), appeared other side stepping out of the room scandalous, immoral, and disparaging on behalf of La Fiesta, the Mexican at various times. While the audience DISCLAIMER Although every effort has been made to trademarks is “gone, at least for the time tequila company whose application could witness the exchanges, the verify the accuracy of items in the being.” to register its VIVA LA FIESTA mark unscripted private caucuses produced INTA Daily News, readers are urged to “It will be interesting to see whether for tequila was rejected in view of Viva some unexpected results for not only check independently on matters of specific the government will appeal to the Brewing’s trademark VIVA for beer. the audience but the panel members concern or interest. The views and opinions expressed in articles are those of the bylined Supreme Court. I predict that it will David Friedland, a Partner at Friedland themselves. Dr. Corbin’s insights added author and/or interviewee and do not but that the Supreme Court won’t hear Vining, P.A. (USA) and a member of the a worthwhile twist to this entertaining necessarily represent those of INTA or its it,” he said, at the session. INTA Panel of Trademark Mediators, presentation, which highlighted membership. Non-INTA advertisements in served as the mediator for the parties. the value of mediation, particularly the INTA Daily News in no way connote INTA’s endorsement of the products, services, A Decades-Old Debate In preparing for the session, through INTA’s Panel of Trademark or messages depicted therein. The movement to end Native American the participants tried to treat the Mediators, to INTA brand owners. l mascots for sports teams in the United

2 www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org Published by: Tuesday May 22, 2018 COVER STORY INTA DAILY NEWS ADVERTISING SPECS The Yin and Yang of Licensing (continued)

1 of “building the reputation on alcoholic beverages, for instance, and of your trademark,” and there are regulations in those industries therefore it’s vital to be confident in the that limit the control it can exercise over companies you partner with. certain elements of the use.

A Question of Balance A Question of Quality While both parties to a license should be Most licensing agreements will seeking the same fundamental outcome include provisions relating to quality of a successful, revenue-generating deal, control, and as Ms. Mura noted, some there are always likely to be competing jurisdictions require trademark owners concerns in a negotiation. to exercise quality control over products For example, Ms. Mura explained, made under license, or risk having the (L. to R.) Judy McCool and Viviana Mura the way royalties are structured is often trademark deemed abandoned. a source of tension between licensee However, the degree of control can for licensors the ability to cancel an common when agreements involve and licensor. As a licensee, she said, vary, and “as a licensee we want the agreement promptly in this scenario individual celebrities working with “we don’t like lump sum payments least control possible.” And if there is is vital, not least because there may be brands, and provide for cancellation up front, since you have to give over a quality control issue, “you want the public relations challenges to manage. in situations where one party’s moral money before you have an idea of how ability [in the licensing agreement] to Ms. Mura cautioned licensors to conduct does not reach the standards the deal is going to work out.” cure or mitigate” if possible, rather be wary of trying to exercise too much spelled out in the agreement. For Ms. McCool, the perspective than losing the license for any breach control over quality, because “the more “Mutuality is increasingly is different, and she prefers to have a of quality control. you control, the higher the likelihood important in these morality clauses,” “minimum guarantee” in licensing deals Though, as Ms. McCool noted, that consumers affected [by a quality Ms. McCool said, because “you never to provide a degree of security for the some quality control breaches, such breach] would come after the licensors know on which side of the transaction company. as the use of child labor in factories, as well as the licensee for any damages.” it’s going to be an issue.” Similarly, on the question of how cannot be cured or mitigated, and She added that taking too much Ms. Mura added that morality clauses the licensed assets are used, licensors control also raises the risk that “you shouldn’t “be limited only to criminal generally want to keep as much control will be deemed a franchisor rather than acts or a public statement,” because that as possible, but this can be difficult a licensor” in litigation. may mean you are unable to terminate in situations where you’re licensing There are always your agreement when you need to. “ “ into industries that you don’t know likely to be competing A Question of Morality “All scenarios that lead to well, Ms. McCool said, especially in concerns in a The session closed with a discussion termination should be spelled out regulated markets. negotiation. of morality clauses in licensing properly in the agreement,” she said. HBO licenses assets related to Game agreements. These may be used in all Ms. McCool added: “Peace of mind is of Thrones for use on slot machines and types of agreements, but are particularly the name of the game for both sides.” l We don’t just practice Mexican IP Law.

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In an uncertain legal environment, we are one law firm that is not content simply to accept the status quo. We work constantly to influence the evolving body of Mexico’s intellectual property laws, with the goal of ultimately bringing them in line with international standards. While we continue to make great strides in this regard, clients from all over the world rely on us to prosecute, manage, and defend their IP portfolios under the laws that exist today. In other words, we work effectively within the system, even as we seek to change it.

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Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 3 www.facebook.com/INTA #INTA2018 @INTA2018 web www.inta.org Published by: NEWS Tuesday May 22, 2018 Color Clarity in Court Practitioners are curious about the fate of color trademarks in Europe in light of Red Bull Gmbh v. EUIPO, as Aislinn Burton reports.

larity needs to be given to the at Hogan Lovells (Alicante) SL y Cia. C color trademarks regime in (Spain) explained that the impact of Europe. So said Jennifer Powers, IP the Red Bull GmbH decision could have Counsel at Red Bull GmbH (Austria), wide-ranging implications for owners (L. to R.) Jennifer Powers, Fidelma Macken, Andreas Renck, Carl Myers, when moderating the panel discussion of non-traditional trademarks, as well Roland Mallinson, and Dimitris Botis in Session CM21: The Fate of Color as for the EUIPO. Per Se Marks in Europe yesterday. As the registration of concrete and Carl Myers, Senior IP Counsel at Implementing Regulation 2017/1431). In November 2017, the European abstract color marks has historically been Stanley Black & Decker MEA (United Mr. Botis explained that under the Union’s General Court concurred permitted by the EUIPO, the reasoning Arab Emirates), said “we’re in a bit of new regulation it is no longer mandatory with the European Union Intellectual behind the Red Bull GmbH decision a ‘wait and see’ moment” in relation to to include a description of the trademark Property Office’s (EUIPO’s) decision that could be used to invalidate more than color marks in Europe.” when filing it at the EUIPO, although if Red Bull GmbH’s two European Union 85 percent of all registered EUTMs for He explained that in the early to an accompanying description is provided Trade marks (EUTM) for the brand’s blue color combination marks (without any mid-1990s, when “color marks became it will not be permitted for it to extend and silver color combination were invalid contours) if the General Court’s ruling is more popular,” Stanley Black & Decker the scope of the mark. because of overly-broad representations affirmed, Mr. Renck said. MEA made “huge efforts” to register If the description appears to extend and descriptions. Though the General Court and protect its signature black and the scope of the mark the trademark Practitioners in the trademark determined that Red Bull fell short of yellow colors in the United States. application will be rejected. In Mr. sphere have kept a close eye on the Red indicating the level of precision necessary Mr. Myers said the understanding Botis’ opinion, “filing a description is Bull GmbH color trademark dispute, when registering particular colors for was that companies should “replicate dangerous” as it merely adds to the risk which is currently on appeal to the specific uses, it did not provide guidance the same in Europe,” but, as the that the application will be rejected. Court of Justice of the European Union on what would have been sufficient. company quickly discovered “it doesn’t The other speaker on the panel was (CJEU). Ms. Powers said the CJEU’s Fidelma Macken, former judge at the quite work like that” in Europe. Roland Mallinson, Partner at Taylor ruling, which “we’re all very curious CJEU and retired judge at the Supreme Dimitris Botis, Deputy Director Wessing (UK). about,” is expected in Spring 2019. Court of Ireland (Ireland), said the court Legal Affairs at the EUIPO (Spain), Mr. Mallinson noted that while color “Hopefully there will be clarification does not determine what level of precision made note of the additional rules marks are “no different” from other marks as to whether our mark is valid or not— will suffice, as “that’s a question for the governing the registration of non- in legal status, in practice “the courts do and I hope it is,” Ms. Powers said. national court, or national trademark traditional trademarks in the have some difficulties” navigating the Andreas Renck, Managing Partner office, or for the EUIPO.” EU (Article 3 of EU Commission realm of non-traditional trademarks. l All Eyes on Brexit The highly complex matter of Brexit is a top priority for INTA’s work in Europe, as Hélène Nicora, INTA’s Chief Representative Officer, Europe, tells Aaron McDonald.

s INTA’s Chief Representative U.K.’s withdrawal agreement, the in many meetings with the European AOfficer, Europe, Hélène Nicora transition period, and the nature of the Commission’s top negotiating team, and her team are the Association’s eyes future relations between the European the U.K. IP Minister, and the U.K. and ears at EU institutions and other Union and the United Kingdom— Intellectual Property Office.” stakeholder organizations. Based in are lengthy and complex, and their Brussels, Belgium, Ms. Nicora works at outcome uncertain, says Ms. Nicora. Beyond Brexit the heart of the European Union. “Companies across all industries The European Representative Office The United Kingdom’s forthcoming and sectors, and of all shapes and works closely with INTA’s U.S. departure from the European sizes, will be affected in a variety of headquarters in New York City, New Union—Brexit—is keeping politicians, ways, including in areas related to York and with its other representative Hélène Nicora journalists, and many other groups, IP and corporate brand protection,” offices in Shanghai, China; Singapore; including businesses and lawyers, she says. Santiago, Chile; and Washington, D.C.. on their toes. Discussions in the INTA is calling for a solution that Aside from Brexit, the Office is mainstream press and in public may would ensure maximum retention of working to ensure that the final texts “ If IP issues are not have largely ignored IP, but INTA is IP rights along with minimum costs from the EU’s trademark reform properly addressed, it under no illusions about the scale of and burden, including the automatic package, agreed upon in 2015, are could have the potential to the problem. extension of existing EU trademarks to appropriately enforced. seriously derail trade. “ “Brexit is not only an unprecedented U.K. national trademarks. Work is also underway to address political situation for the European INTA has developed a dedicated the threat of a potential spread in plain Union, it is also unprecedented for Brexit webpage to keep members packaging laws from tobacco products businesses and citizens in Europe,” says informed, and a Brand Brexit Toolkit—a to food and drink products. Ms. Nicora. practical guide for companies to Noting that outside Europe such “If IP issues are not properly identify issues. laws have spread to these sectors, she overlooked trademark rights and their addressed, it could have the potential “Thanks to its global perspective,” says that the European Union may well value for the economy,” she says. to seriously derail trade and impact Ms. Nicora says, “INTA is able to decide to “follow the trend.” “INTA will continue its efforts to businesses and consumers,” Ms. Nicora advocate before both the European “By relying almost solely on brand advocate for strong brand protection declares. Union’s and the United Kingdom’s restrictions to address public health and to raise awareness on the negative The Brexit negotiations—on the negotiators. INTA has participated issues, governments have completely consequences of brand restrictions.” l

4 www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org Published by: Tuesday May 22, 2018 BRAND RESTRICTIONS INTA DAILY NEWS ADVERTISING SPECS Taking Brand Restrictions to the Top of Government INTA must work with non-IP authorities and organizations to influence the global debate on brand restrictions, stressing the economic impact of such policies, says Bruce MacPherson, INTA Chief Policy Officer, in an interview with Ed Conlon.

NTA has long been active in the

Iarea of brand restrictions, urging istockphoto / Lord Baileys legislators to respect IP owners’ legal right to display their trademarks on their products. But the Association’s views have fallen on deaf ears in some cases, perhaps most notably in Australia, which was the first jurisdiction to implement plain packaging for tobacco products in 2012. Since the 2017 Annual Meeting in Barcelona, Spain, the 2017 Brand Restrictions Response Presidential Task Force concluded its work (in November), finding that INTA should make the issue a higher priority across a range of Association activities, away of legal rights” have a negative Trade Organization (WTO) is due says “nobody except for the disputing including advocacy, education, and effect on the economy, jobs, income, to rule on a dispute resolution claim countries has seen an actual draft publications, says Bruce MacPherson, and the general ability of a country to that the Dominican Republic (later of this decision” and “everybody is INTA Chief Policy Officer. attract investment. joined by other nations) brought waiting to see what happens.” “The idea is that we will raise our This issue is not confined to against the Australian legislation for Based on leaked reports, he thinks visibility regarding brand restrictions,” tobacco products: other categories allegedly breaching the Agreement on the decision is likely to go in favor he explains. “We have a tremendous of goods including snack foods, Trade-Related Aspects of Intellectual of Australia. But even assuming it network of member companies and we sugary drinks, alcoholic beverages Property Rights. does, he says, “it will make the legal will try to leverage that network and and pharmaceuticals are also seen as In its last update, the WTO said arguments against brand restrictions our influence on the issue to protect IP at risk. For example, in Latin America, it expected to issue its final report only slightly more difficult, but it will rights.” pharmaceutical trademarks have been to the parties by the end of the third make the economic arguments much Mr. MacPherson says INTA is ordered to appear in a font three times quarter of 2017, but Mr. MacPherson more important.” l looking into conducting an Impact smaller than the generic name of the drug. Study on the topic, specifically the INTA has filed submissions on harm brand restrictions have on a brand restrictions with governments country’s economic well-being. in more than 23 jurisdictions to date. Underpinning this view is that “We will continue to do that, but the brand restrictions and the “chipping issue now is in the broader political realm, so we will put more emphasis on the impact on jobs,” says Mr. MacPherson.

Challenges Ahead There are two major challenges for INTA. The first is that it faces a hugely influential entity—the World Health Organization, which actively campaigns for more brand restrictions. The second challenge is that historically, IP authorities have not been very influential over health matters and the related regulatory authorities. This is something that needs addressing “at the top level of government,” Mr. MacPherson says. He believes that IP associations need to speak more in terms the general Bruce MacPherson public can understand if they are to get their point across more clearly and to put political pressure on decision makers. “ We have a On INTA’s influencing of tremendous network governments on brand restrictions, of member companies, Mr. MacPherson says, “We have to

and we will try to leverage build broad coalitions. That requires

that network and our working with lots of different types of influence on the issue to “ organizations outside the realm of IP.” protect IP rights. Although the Australian plain packaging legislation has been in place since 2012, its impact is still being watched closely. The World

Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 5 www.facebook.com/INTA #INTA2018 @INTA2018 web www.inta.org Published by: NEWS Tuesday May 22, 2018 INTA DAILY NEWS ADVERTISING SPECS INTA DAILY NEWS ADVERTISING SPECS More Games, More Trademarks While Seattle is famous for its coffee and fish throwing, it’s also home to many video game developers. Sarah Morgan reports on the trademark issues in the industry.

hy should INTA hold a focusing on the particular platform the W session on video games? That game is intended for, such as mobile question was answered thoroughly apps or consoles. by Christopher Parent, Director of She added that there’s an increasing Intellectual Property and Enforcement trend for reviving old games, so it’s at Nintendo of America (USA), in good practice to see if there are any yesterday’s Session IM20 Industry “dead” trademarks for old games that Breakout: Legal-Up! Implications of may be “brought back to life.” Video Games in the 21st Century. In the United States, the title of According to the Entertainment a single creative work is not eligible Software Association (USA), 64 percent for trademark protection, meaning of households in the United States own that the titles of books, movies, and at least one device for video games. TV shows can’t be registered. But this “Consumers interact with video (L. to R.) Ben Golant, Alexandre Rudoni, John Crittenden, Vineeta Gajwani, and Christopher Parent doesn’t apply to video games, which are game brands in a very different way viewed more as software products and than consumers in other industries. The competitive landscape has (USA), the first thing to keep in mind allowed trademark protection. They’re not passive observers of changed with the advent of the Internet when undertaking title clearance is Moving to the other side of the the products they use, but active and especially mobile apps, which have that “there’s really no one-size-fits-all Atlantic, Alexandre Rudoni, Partner participants,” Mr. Parent explained. lowered barriers to entry for young and approach.” at Allen & Overy LLP (France), inexperienced developers. “The range of different types of explained that, despite efforts toward “This means more games, more games you have in the industry is harmonization, there’s a disparity in trademarks, and a more crowded field,” vast; there’s everything from free the protection available for titles across

“ Video games he said, adding that this lowering of games on your phone to US $70 Europe. are viewed as software barriers has enhanced competition titles,” she said. To illustrate one of the potential products and allowed “ and consumer choice but also created There are approximately 30,000 quirks of video game litigation, Mr. trademark protection. a tension for attorneys in clearance and live U.S. trademarks for computer Rudoni pointed to the case of ZeniMax enforcement. game software, added Ms. Gajwani. Media vs. Mojang in Sweden. For Vineeta Gajwani, Managing To narrow the scope if you need to ZeniMax Media had sued Counsel of IP at Electronic Arts Inc. do a trademarkGRA_AD_108x148mm_Print.pdf search, she suggests 1 30/04/18Mojang over 7:42 the p.m. company’s 14

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I N D I A BANGLADESH SRI LANKA BHUTAN MYANMAR MALDIVES PAKISTAN NEPAL BRUNEI Mail us : [email protected] | Visit uswww:// : www.kankrishme.com | www.knkip.com SUSTAINABILITY Tuesday May 22, 2018 Placing Corporate Social Responsibility Until the beginning of the 20th at the Heart of the Company century, Ecuador was the world’s largest exporter of cacao. Now, while the country produces only a small proportion of the world’s cacao, Ecuador and Trinidad and Tobago are the major fine or flavor cacao producers, according to the International Cocoa Organization. Three-quarters of Ecuador’s exports are classified as fine or flavor cacao. There are two broad categories of beans: “fine or flavor” beans, which produce high-quality dark chocolate, and “bulk” beans, which are used in mass-produced chocolate. “When we began our project, the aim was not to start making chocolate. We were trying to improve the price of cacao for cacao farmers and have a sustainable enterprise,” Mr. Peralta explains. Instead of exporting the raw goods to traditional chocolate makers in Europe, Pacari Chocolate has moved the production in-house, making a “tree-to-bar” chocolate. According to Mr. Peralta, this The concepts of sustainability and corporate social responsibility ensures that over 50 percent of the wealth from the chocolate stays in the should be front and center of brand owners’ corporate philosophy, country of origin. as Sarah Morgan hears from two companies. He adds that by paying farmers more for the beans, Pacari Chocolate is iko Bode, Group Chief it tends to become a pure marketing for decision-making that takes helping to stop the felling of very old A Sustainability Officer at Fenix exercise, he adds. repercussions and side-effects into cacao trees, which are fantastic in flavor Outdoor International AG (Germany), “Every company will need to reflect the equation and may give another but don’t have a very big yield. says that the days are long gone when on what impact their business model impetus/emphasis to a decision taken,” “You can’t be environmentally companies could treat sustainability, has on the environment or societies Mr. Bode says. sustainable if you put chemicals into or corporate social responsibility and other stakeholders,” Mr. Bode The company has also included a the land,” cautions Mr. Peralta. (CSR), as a peripheral agenda item. says. “This is particularly true in code of conduct for employees and This is why Mr. Peralta speaks to the Today, sustainability must be a core Europe, where non-financial aspects are suppliers (to share values) on the farmers to make sure they understand tenet of a company, otherwise pursuing increasingly forming part of the legally- Fenix Way, so that it combines ethical the products being produced and the demanded annual reporting exercise.” and sustainability aspirations and quality of beans needed. This means Fenix Outdoor International AG, compliance. that the 5,000 small-scale farmers a company specializing in outdoor Mr. Bode adds: “We at Fenix believe Pacari Chocolate works with want to be equipment, owns the brand Fjällräven, that we depend on a planet that is part of the company’s drive for change. which means “Arctic Fox” in Swedish. worth living on and that has natural Matching Pacari Chocolate’s Featuring the logo of a red fox, the habitats and diverse cultures that call environmental sustainability aspirations brand’s rucksacks are commonly for adventures and exploration.” is its logo. Pacari means “nature” in spotted across Europe. Quechua, a native South American Fjällräven is not the only brand Making Sense for the Future language spoken primarily in the Andes, used at the company—others include For Santiago Peralta, the Founder and the company’s logo incorporates a outdoor footwear line HANWAG and of Pacari Chocolate (Ecuador), an graphic of a man and a tree that is 5,500 outdoor clothing brand TIERRA. organic chocolate manufacturer based years old, reflecting the long history of Recently, Fenix Outdoor acquired in Ecuador, “sustainability is the only cacao in the country. This, according Royal Robbins, a California based thing that makes sense” to ensure the to Mr. Peralta, represents a “symbiotic outdoor apparel company. long-term future for brands. relationship between nature and man.” “An outdoor company that does not Mr. Peralta launched the company Halfway across the world, a similar take care of nature, the environment, 16 years ago with the aim of “changing philosophy guides Fenix Outdoor and societies it deeply depends on is not the history of chocolate in Ecuador.” International AG’s efforts to protect Aiko Bode truly trustworthy,” Mr. Bode explains. wildlife. This is why sustainability stands at Ecuador and The Arctic fox (known as Fjällräven the core of the company. Trinidad and in Sweden), which the Fjällräven brand “Every company will In 2012, Fenix Outdoor Tobago are the major features, has been an endangered need to reflect on what International AG adopted the Fenix fine or flavor cacao species in Sweden since the 1930s. In

impact their business Way, the company’s “constitution”. producers, according 1928 there were more than 10,000

model has on the At the core of the document to the International Arctic foxes in Sweden but by 1930 environment or societies “ stands the compass, the four cardinal Cocoa Organization. there were only 150 left, and the and other directions of which are N = Nature; Three-quarters of population has never truly recovered, stakeholders. E = Economy; S = Society; and W = Ecuador’s exports are despite many preservation efforts. Wellbeing of man and nature. classified as fine or “We invest in research and support “A 360-degree view allows flavor cacao. to protect the fox and its habitats and

8 www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org Published by: Tuesday May 22, 2018 SUSTAINABILITY

we can see some signs of hope as the all of its products, although this is The importance of consumer trust population is slowly increasing again,” challenging as the alternatives are few cannot be overstated, but what happens says Mr. Bode. and far between and there are not many when that trust and confidence is lost? However, climate change has led to reliable PCF-free waterproof zips on The brand may suffer serious the intrusion of the red fox into Arctic the market. economic consequences, but also risks fox territory and the red fox considers Animal welfare is also high on the to its reputation. the Fjällräven as prey. agenda—animal welfare organization According to Mr. Bode, this is Industrial and recreational activities Four Paws has named Fenix Outdoor particularly an issue with brands that and infrastructure projects mean that International AG as the top performer touch upon essentials such as health, the Arctic fox’s original habitats have in its “Cruelty Free Down Challenge,” nutrition, and safety in their business changed a lot, making it even more which makes sure geese and ducks are models, as well as for those that sell challenging for the foxes to survive. not live-plucked or force-fed. to outdoor enthusiasts, as they are “But we are on it and will extend our The company’s promise says that “expected to not do any harm to nature.” activities beyond the foxes into ecosystem “when you buy a down product from Ultimately, a major reputational protection and preservation efforts in Fjällräven you can be 100 percent sure loss can lead to a brand’s disappearance the years to come,” Mr. Bode adds. that the down we use is the result of a from the market. Fenix Outdoor International AG’s process that takes the greatest possible Santiago Peralta “We think that honesty, open efforts in support of wider Swedish care of the bird’s well-being.” dialogue and transparency are the Government policies have helped to Only if you have a full understanding elements that help to ensure consumer drive an increase in the population of of the “ingredients” in your product trust and satisfaction (apart from the

Arctic foxes (according to Mr. Bode, and know where they come from will “ You can’t be obvious: to deliver quality products),” there are now 250). you be able to fully manage them and environmentally adds Mr. Bode.

their legacy, Mr. Bode explains. sustainable if you But consumers are now demanding Better Conditions “It is simply a part of responsible put chemicals “ more. They want to see what a company Fenix Outdoor International AG is purchasing and product development,” into the land. does in terms of positive contributions also attempting to change the textile he adds. to the community and nature. industry’s long legacy of poor working Fenix Outdoor International AG The advent of the Internet and conditions and pollution. has also established a control system on social media makes it that much “If you look at certain street names labor conditions in the supply chain; easier to make this clear to consumers. in Europe that come from the medieval the company’s social compliance setup, much higher price than the market rate Fenix Outdoor International AG has times, such as ‘blue creek road’ and which contributes to working and for the beans. published a set of YouTube videos ‘red river street”, they may sound nice living conditions, has been accredited “People start to take care of how explaining what it’s doing and why but they relate to water pollution that by non-profit organization the Fair they harvest the beans. Because they (along with an annual CSR report happened more than 1,000 years ago,” Labor Association. know and trust us, we get the crème for those who want to follow its says Mr. Bode. Mr. Bode states: “Topics which de la crème of the cacao beans,” Mr. progress). For the outdoor brand, it has been deal with social exploitation or the Peralta says. Taking it one step further, the important to improve this legacy. To destruction of nature stand at the He believes that the success of Pacari outdoor brand also invites various do so, Fenix Outdoor International AG core of our agenda and we continue to Chocolate is inspiring the local business groups (activists, customers, policy has incorporated into the Fenix Way a develop this further.” community to “go in the right direction” makers, and suppliers) to discuss rather broad but targeted set of goals. In Ecuador, Mr. Peralta is very and become sustainable and organic. the progress being made on the The reduction of chemicals is one aware that new generations will not sustainability journey and develop new of those goals, and the company is stay in the farming areas if there are no A Competitive Edge ideas for goals and paths to follow. consequently phasing out harmful opportunities to build a future. “The more honest the efforts we take to Mr. Bode adds: “We want to give substances—“a process that takes time “There will be no people in the fields improve our sustainability profile, the the Fenix Way and our sustainability but we can already see the first results,” in 20 years’ time if we don’t create jobs more our customers support us and agenda another level: we will update it says Mr. Bode. in a sustainable way,” he cautions. help us to remain competitive in our in light of what we have achieved and It is looking to remove Pacari Chocolate deals directly with markets. In turn, we can then become where we faced challenges and we want perfluorocarbons (PFCs), which the farmers, rather than middlemen, even more sustainable in various ways,” to incorporate and address ambitious make materials water repellent, from solidifying their loyalty and paying a Mr. Bode adds. goals.” l Hear The Latest on WHOIS From the IPC How will the European Union General Data Protection Regulation affect brand protection efforts by blocking access to website registration data (WHOIS)?

n Wednesday at 1:00 pm – without full access to domain name a founding member of the IPC and O 3:00 pm in Room 608-609, the registration data, the IPC has organized supports this effort. Intellectual Property Constituency two informative panels to explain The meeting is open to all Annual (IPC) of the Internet Corporation the political landscape and practical Meeting registrants. Per IPC policy, “As INTA members for Assigned Names and Numbers realities of a closed WHOIS system. remote access will be available for contemplate a world (ICANN) will host a session to help The featured topics are “Can We non-attendees. For remote access without full access to

brand owners understand and Save Access to WHOIS? How the information, please contact Chantelle domain name registration

navigate the challenges created by GDPR Will Cripple Brand Protection” Doerksen, Supporting Organizations/ data, the IPC has ICANN’s recently approved interim and “How Brand Owners Are Fighting Advisory Committees Collaboration organized two “ model for compliance with the Back” and “What Happens after Services, Senior Coordinator at ICANN informative panels. European Union General Data GDPR? What Will Brand Protection ([email protected]) or Protection Regulation (GDPR). As Efforts Look Like When WHOIS Matthew Johnson, INTA External Relations INTA members contemplate a world Data Becomes Inaccessible.” INTA is Coordinator ([email protected]). l

Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 9 INTA DAILY NEWS ADVERTISING SPECS NEWS Tuesday May 22, 2018 IP Enforcement in Asia Tackling counterfeiting in Asia can be a challenge, but with the right approach, brands can achieve effective results, as Sarah Morgan reports. ost of the IP enforcement in Asia, it’s not clear that other Ms. Sujintaya added: “A lot of M mechanisms used in Asia were mechanisms have been, he added. officials, through the efforts of devised in the early 1990s, and put into The advent of e-commerce platforms trademark owners and their lobbying, effect via The Agreement on Trade- and the fact that the brand protection have started taking ex officio actions.” Related Aspects of Intellectual Property industry has “grown up” from thinking She advised that when brands are Peter Fowler Rights (TRIPS). it should just conduct lots of raids, are looking at customs border enforcement Are these mechanisms still relevant two of the ways in which the perspective programs, the requirements of customs you should highlight some of them,” today? This was one of the questions has changed on enforcement. recordation should be top of the list. she said. posed in Session CM52 Enforcement Customs enforcement is “still However, if you haven’t registered Gen Yamaguchi, Trademark Attorney Strategies in Asia yesterday. probably the best remedy, where it your marks, customs may still intercept at TMI Associates (Japan), stated: “Are we using a set of remedies works, in terms of cost-effectiveness,” and seize goods, but the procedure “Customs are very effective in some that were built long ago for a bunch said Say Sujintaya, Partner, Baker becomes more “complicated and costly.” countries, but don’t forget civil actions.” of concepts that have long expired?” McKenzie Ltd. (Thailand). After registering your marks with He added that civil actions are often said Nick Redfearn, Deputy CEO and “Many years ago, most customs customs, maintaining a relationship avoided because many believe they are Partner at Rouse & Co. International enforcement was not effective because with customs by offering training is too high cost, but most people don’t LLP (Indonesia). officials wouldn’t intercept unless absolutely essential, added Ms. Sujintaya. have sufficient information about civil Over the past 20 years, there have you had specific information” such as “You don’t have to reveal every secret actions in Asian countries to come to been various deadlines set and missed the name of the ship transporting the about how to distinguish between this decision. for implementing TRIPS, but now counterfeit goods, she explained. genuine and counterfeit products, but Mr. Yamaguchi provided statistics “fatigue has set in,” according to Mr. on pendency, costs, and damages awards Redfearn. in countries including Singapore, He added that, while most Malaysia, and The Philippines. countries have “slowly crawled” “You need to get information from toward implementation, practice and local authorities—rely on them,” he enforcement are still lacking in some. advised. Mr. Redfearn said: “Corporations Peter Fowler, Senior Counsel, now have a lot more to think about Enforcement Team, Office of Policy than just building an enforcement and International Affairs at the United program and getting it to work.” States Patent and Trademark Office (L. to R.) Gen Yamaguchi, Say Sujintaya, and Nick Redfearn While customs can be very effective (USA) moderated the session. l

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www.facebook.com/INTA #INTA2018 @INTA2018web www.inta.org Published by: 10 www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org Published by: Tuesday May 22, 2018 IKEA INTERVIEW INTA DAILY NEWS ADVERTISING SPECS Retail Therapy The IKEA franchising system helps the brand to tackle challenges and boost consumer trust, says Cecilia Emanuelson, IP Counsel at the global franchisor, in an interview with Aislinn Burton.

ust under one billion visits were IKEA owns trademark registrations trademark department, but attempting J made to IKEA stores around the in approximately 80 jurisdictions, to find better and smarter ways to do world in 2017. and the disputes that arise are varied. things is important,” she adds. Cecilia Emanuelson, IP Counsel at Common challenges for the IKEA team Inter IKEA Systems BV (Netherlands), include trade dress infringements, Shared Values has worked for the worldwide IKEA unauthorized resellers using the IKEA IKEA’s franchising model helps the franchisor for more than 20 years—and marks, copycat stores, and online brand carry out its mission. it’s her job to ensure all marks and infringements across social media. “Living up to the IKEA vision of branding associated with the IKEA Ms. Emanuelson points out that the ‘creating a better everyday life for business are legitimate and reflective of IP landscape has undergone “massive” the many people’ cannot be achieved IKEA’s vision. Today, operating under changes over the course of her career, by working alone, so we work with a franchise model, Inter IKEA Systems noting, “The Internet and social media IKEA franchisees who are experts BV has franchise agreements with 11 have completely changed the way we at operating IKEA stores,” Ms. different groups of companies that work from the perspective of where Emanuelson explains. own and operate 415 IKEA stores in 49 the challenges appear and how we deal She adds that a franchise markets. with these challenges.” organization expands in a less Ms. Emanuelson is involved in Addressing how global brands can structured way than a fully owned all aspects of trademark work for secure adequate IP protection, Ms. business, which can be challenging, Cecilia Emanuelson the home furnishings organization, Emanuelson says “there is no such since the ownership and operation of including determining which marks to thing as being sufficiently protected.” the IKEA stores are not vested within file in which jurisdictions and liaising In any business there needs to be a one parent entity. with outside counsel on trademark balance between what the lawyers However, for IKEA, “this “Living up to the IKEA prosecution matters. Dealing with wish to protect and how much the contributes to the organic way we grow vision of ‘creating a better oppositions takes up a considerable organization is willing to spend, she and expand,” Ms. Emanuelson says. everyday life for the many amount of time for IKEA’s attorneys, explains—and having a trademark The people working under the IKEA people’ cannot be achieved “ too, due to the volume of matters filing strategy is central to managing trademark share certain values and by working alone. across so many countries. these perspectives. “by doing so we are all contributing to “We deal with all enforcement matters “For every brand owner there is a the creation of a brand that consumers worldwide,” Ms. Emanuelson adds. price tag on everything done in the can trust.” l

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Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 11 www.facebook.com/INTA #INTA2018 @INTA2018 web www.inta.org Published by: PARTNERSHIPS AND RESEARCH Tuesday May 22, 2018 Brand Value, Bridges, and a Body of Research INTA’s new Strategic Partnerships & Economic Research Department is conducting work across a range of topics and countries, with the Brand Value Special Task Force, Generation Z, and bridge building with non-legal associations as its top priorities for 2018 and beyond. Sheila Francis, INTA’s Director, Strategic Partnerships & Economic Research, tells Sarah Morgan more.

decisions to engage with counterfeit istockphoto / PeopleImages products could be shaped by complex needs, mindsets, and contexts that can make authenticity more or less relevant. Ultimately, the question is: “Who do Gen Zs perceive as being damaged by fake products, and how does this align with this generation’s overall interest to be more authentic?” “We see this as an important research gap that requires action,” says Ms. Francis, noting that the aim is to have the study results by the 2019 Annual Meeting. Beyond this, throughout 2018 and 2019, the Association has an ambitious research agenda which includes potential studies on artificial intelligence, brand restrictions, and other topics. To learn more about the n May 2017, the Association Garrahan, INTA’s Economic Research INTA’s research work and to request I introduced its 2018-2021 Strategic Intern. INTA to conduct a study, visit http://

Plan, which has three core strategic Its key initiative is to support We don’t want to www.inta.org/Committees/Pages/ directions: promoting the value of the Brand Value Special Task Force, “be reaching out to others ImpactStudiesCommittee.aspx trademarks and brands, reinforcing which was approved in March 2018 only when there is a consumer trust, and embracing by the INTA Board of Directors and is pressing issue. We need to “ Reaching Out to Non-Legal innovation and change. charged with delving into the complex build bridges before a crisis Constituencies It is the first and second strategic topic of brand value, brand equity, might occur. Research activities are only one aspect directions that have contributed to and brand valuation. Co-chaired by of the responsibilities of the Strategic INTA’s establishment of the Strategic Heather Steinmeyer, Managing Senior Partnerships & Economic Research Partnerships & Economic Research Associate General Counsel at Anthem, Department. As INTA seeks to be even Department. The new department Inc. (USA) and INTA Past President, depository. The Association’s Impact more outward-looking—developing includes Ms. Francis and Renee and Doug de Villiers, Vice Chairman at Studies Committee, now in its second additional ties with non-IP and non- Superunion AFrica (South Africa) and term, and INTA staff continue to legal constituents and associations— INTA Advisory Director, this Special conduct and commission research the team is also focusing on strategic Task Force brings together a small studies that help to communicate the partnerships. team of members and non-members positive contributions of brands to the “We don’t want to be reaching of diverse expertise, including brand economy and society. out to others only when there is a and IP valuation, finance, economics, In 2018, in what will mark the pressing issue. We need to build marketing, and tax, or a combination Association’s first attitudinal study, bridges before a crisis might occur,” thereof. INTA is set to initiate research says Ms. Francis. Over the next two years, the exploring whether young consumers The department works with three Task Force will engage in focused see an ethical problem in purchasing INTA committees to develop these research designed to provide a set of fake products. It will focus on ties: the Building Bridges Committee, recommendations and actions for Generation Z (born in 1995 to mid- to foster relationships with marketing INTA to pursue, including how to 2000s)—the largest proportion of associations, consumer groups, help clarify the complex concepts and young consumers by 2022. The study organizations that support small to definitions borne out of the different will cover ten countries in different medium-sized enterprises, associations brand valuation methodologies that parts of the world that develop and promote sustainability currently exist. Consumer relationships with and ethical standards, and retail and Sheila Francis “Intangible assets are recognized brands and counterfeits often live in manufacturing organizations; the as highly valued properties. The the grey area of their ethical spectrums. Brands and Innovation Committee, The most valuable most valuable but least understood It is critical for brand owners to better to build ties with technology-based “but least understood intangible assets are arguably understand how young consumers’ groups; and the Impact Studies intangible assets are brands. We are excited to have a Committee, to boost contacts with arguably brands. We multidisciplinary team of Task Force To learn more about other economic and research driven- are excited to have a members to help us demystify the INTA’s research associations.

multidisciplinary team business value of brands,” says Ms. work and to request The department’s work in

of Task Force members Francis. INTA to conduct a collaboration with various INTA to help us demystify the “ study, visit http:// committees will build on the www.inta.org/ business value Demystifying Generation Z and Association’s research foundation, Attitudes Toward Counterfeits Committees/Pages/ spread the word about IP, and help of brands. The department is also building ImpactStudies drive the 2018-2021 Strategic Plan into other aspects of INTA’s research Committee.aspx the future. . l

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WWW.TRADEMARKINFRINGEMENT.SUCKS 1 LUNCH AND LEARN Tuesday May 22, 2018 Advertising Campaigns Can Change the World Advertising campaigns have the ability to change the world and drive peace initiatives, as Francisco Samper told registrants at yesterday’s Lunch and Learn. reativity thrives in the face of This campaign clearly pulled at the “Cobstacles,” Francisco Samper, heartstrings of the target audience, Founder and President of MullenLowe as it was followed by 588 guerrillas SSP3 (Colombia) and Regional demobilizing and returning to their Director, MullenLowe Latin America, homes. told an audience at yesterday’s Lunch Other campaigns included putting and Learn—Changing the World illuminated balls containing more Through Advertising: Guerrillas, inspirational letters, and gifts to the Soccer, and Peace. guerrillas, into the Amazon river. Mr. Samper shared inspirational Throughout this campaign, there was a stories of how advertising campaigns demobilization every six hours. influenced the Colombian peace process. A key demographic that Starting in 2008, advertising MullenLowe SSP3 began to target campaigns created by MullenLowe was the female population within SSP3 assisted in demobilizing 18,000 the guerrilla groups. Mr. Samper said Colombia guerrillas and helped prevent that women in the groups couldn’t more than 3,800 deaths, according to get access to cosmetics and feminine Mr. Samper. hygiene products. To reach out to them, The Colombian conflict lasted 53 Francisco Samper the campaign launched advertisements years and left 260,000 dead, he said. for cosmetics with the caption “A New While he praised the efforts of the The final condition was identifying hearts instead of their minds,” said Mr. Life Awaits.” This was another success, national military in helping reach a the target audience and understanding Samper. since following the campaign more peace agreement, there was a “lesser- their fears, beliefs, thoughts, and But there was a problem. How could than half of the women in the groups known weapon that was instrumental feelings. In this instance the target this be achieved when the guerrillas were returned to their homes. in the demobilization of guerrillas.” audience was the guerrillas. rarely exposed to mainstream media? For the male guerrillas, another “I’m talking about the advertising Once this was established, Mr. The answer was to develop a series campaign targeted their relationships ideas that we developed as part of the Samper and his team set about of campaigns to tell emotive stories and with their mothers who they left military plan,” he said. establishing campaigns that would encourage the guerrillas to put down their behind when they joined the group. “How was this possible? It all started demobilize the guerrillas. weapons and return to their families. To tap into their emotions, “wanted” 10 years ago when one day out of the By this time, deep in the Amazon Christmas was chosen to launch the posters featuring the guerrillas as blue I received a phone call in my office rainforest, the guerrillas had been campaign because it was thought to children were posted throughout the from the Ministry of Defense.” surrounded by the Colombian be when the guerrillas would be most jungle. Because of these efforts, 218 During the conversation, Mr. military. “The guerrillas were hostages sensitive to the message. Out of this, mothers welcomed their sons home. Samper was asked whether he thought just as much as the people they had Operation Christmas was born. “What is truly relevant is that some advertising campaigns could help kidnapped,” he said. Essentials were The military decorated nine trees in of these ideas have been implemented demobilize the guerrillas. beginning to be cut off. different zones of the rainforest with to directly confront conflict in other “I immediately responded, ‘yes,’” “We decided to talk to the guerrillas’ Christmas lights. When somebody countries,” said Mr. Samper. he recalled. Mr. Samper took on the walked past the decorated tree, it lit up. While he acknowledged that there proposition but said there were three Mr. Samper and his team also is still work to be done, the campaigns conditions that needed to be met for identified soccer as something that was have been a resounding success. successful implementation of the “ important to the guerrillas. Overall, MullenLowe SSP3’s campaigns. What is truly relevant is “Our next big move was to drop more than 400 successful campaigns The first was continuity. “Every that some of these ideas soccer balls the way that bombs were resulted in close to 18,000 guerrillas advertising campaign needs time have been implemented to dropped before” from helicopters, he being convinced to leave their lives in to meet its goals, and this was a directly confront conflict in explained. the jungle in favor of their families. formidable task,” he said. other countries. “ Well-known athletes, politicians, “As long as there are ideas, there will The second condition was and members of the general public also be hope,” concluded Mr. Samper. coherence: knowing the product and wrote inspirational messages on the “Advertising can be instrumental in understanding how it will achieve its soccer balls encouraging the guerrillas helping the world become a better goals. to return to their homes. place.” l

More Games, More Trademarks (continued) While the real

card game “Scrolls.” In John Crittenden, Senior Counsel at impractical,” he said.

6 “world is generally response, Mojang said: Cooley LLP (USA), outlined relevant Fortunately, in the United States, available to be used as “Let’s settle this! I challenge Bethesda video game litigation in the United there’s case law outlining the position a virtual location for a “ [a subsidiary of ZeniMax Media] to a States. and robust First Amendment game, there are some game of Quake 3. If we win, you drop There’s a conflict when designing protections, added Mr. Crittenden. exceptions. the lawsuit. If you win, we will change video games, he said, because, while The video game industry pulls in the name Scrolls to something you’re the real world is generally available to US $100 billion in revenue annually, fine with.” be used as a virtual location for a game, added Ben Golant, Chief Counsel Mr. Rudoni added that this was there are some exceptions. for Intellectual Property Policy at the games and encourages them to think a “surprising way of making an offer “What happens if a movie character Entertainment Software Association. about IP. for settlement,” and that it’s of “huge works at Starbucks? Do you need a The association has set up Video “We’ve learned that to make people consequence if a game can’t use the title license? Do you have to do this for Juegos MX, a contest that allows respect IP we have to involve them in for which investment has been made.” every brand? This could make it very individual creators to make their own the IP marketplace,” he concluded. l

14 www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org Published by: Pakistan Office MARC JACOBS INTERVIEW Tuesday May 22, 2018 A Chic Approach to IP Fashion brand Marc Jacobs International, LLC adopts as creative an approach to IP registration and enforcement as it does to its designs, says Antonio Borrelli, the company’s Vice President, Associate General Counsel, in an interview with Ed Conlon.

s a creative brand itself, Marc istockphoto / mizoula A Jacobs International, LLC (USA) adopts a similarly creative approach to dealing with challenges around trademark registration and enforcement, says Antonio Borrelli, Vice President, Associate General Counsel at the fashion brand. He says the need for such innovation derives from some IP offices taking an approach that can favor “trademark pirates.” These jurisdictions are very strict in their interpretation and application of likelihood of confusion standards and, in many of these places, the “first to file” rule applies. “In such jurisdictions, pirates may be able to register trademarks that have only slight variations from a registered mark, because IP offices take the position that consumers are able to to recognized and established marks), International LLC is a global company counterfeit products are discovered, discern even small differences between Mr. Borrelli explains. and needs to maintain and enforce its according to Mr. Borrelli. marks and to understand that the It is vital in these situations to rights in key markets, manufacturing sources of the respective products are develop creative approaches in response, locations, and notorious piracy areas Combating “Creative” Counterfeits distinct,” says Mr. Borrelli. including filing a trademark in a throughout the world, he explains. Counterfeit products come in many “In those jurisdictions, it is different format or seeking alternative But because IP rights are essentially forms; most commonly, Mr. Borelli sees extremely important to have a forms of protection to trademarks. territorial, it can be a challenge to develop infringements of the company’s best- watching service in place in order to For example, he says, an alternative a unified strategy in many different selling products, such as handbags, monitor trademark applications filed can be filing copyright or design patent countries simultaneously, he adds. backpacks, and wallets, and accessories by third parties and to take action registrations where they are available. “In some countries it may including sunglasses and watches. against copycat trademark filings as “Instead of filing a word mark in be easier to register one IP right “Counterfeiters are very creative, necessary,” he adds. all jurisdictions, it may be advisable to over another—generally speaking, and we have seen ‘original’ counterfeit The consequences of these standards incorporate another element into the copyright registrations are easier and products that are not direct copies of can complicate registration and mark (such as another word element, cheaper to obtain than trademark or the company’s actual products. For enforcement strategies, in particular a house mark, or a design/logo)” to patent registrations due to the more example, a pirate will create a completely with new marks or designs (as opposed facilitate the registration process, Mr. streamlined examination conducted by new style of handbag or wallet that is not Borrelli says. copyright offices,” Mr. Borrelli explains. a direct copy of one of the company’s He adds: “When it comes to “In addition, the manner in which products and affix the MARC JACOBS registration of IP, there is no ‘one-size- an IP right is depicted in an application name to it,” he explains. fits-all’ approach—the strategy needs may need to be tailored based on local “We have also seen counterfeit to be carefully adapted to further the practice; for example, whether to include products in categories that are not registrant’s goals.” a logo or design element, color, local currently offered by our company,” he language translation/transliteration, or adds. One Strategy other details,” he says. Mr. Borrelli says the scale of Based in New York City, New York, Marc Another element that should be counterfeiting and the accuracy of Jacobs International, LLC is owned considered, he adds, is the level of local the counterfeits vary from product to by LVMH (France), the multinational law enforcement’s willingness to help product and from country to country. luxury goods conglomerate, and was brand owners enforce their rights. “In many cases we are able to quickly initially launched by the designer Marc Marc Jacobs International LLC confirm that a sample is counterfeit Jacobs in 1984. LVMH owns other is active in trying to raise awareness by viewing photos of key aspects of a fashion brands, including Céline, of its brands among authorities. product,” he says. Fendi, and Louis Vuitton. This includes partnering with and However, he adds, sometimes it is Antonio Borrelli Marc Jacobs International LLC’s training law enforcement and customs necessary to touch and feel the product IP portfolio includes more than 1,600 officials, and taking legal action when in person and carefully inspect its international trademark registrations, details in order to confirm whether a copyright, and design patent Marc Jacobs sample is counterfeit. “ Counterfeiters registrations. As Mr. Borrelli notes, International, LLC The availability of high-level are very creative, and the renowned house mark, MARC is owned by LVMH manufacturing has increased the quality

we have seen ‘original’ JACOBS, is the jewel in the portfolio’s (France), the of counterfeit products, so physical

counterfeit products that crown, “as it is our oldest trademark multinational inspection is now a more critical part of are not direct copies and has been used for over 30 years.” luxury goods the investigation, he says. of the company’s “ Asked about the major challenges conglomerate, “We very often need to be creative actual products. in the IP clearance and application and was initially with enforcement strategy,” he processes, Mr. Borrelli says it is launched by the concludes, showing that creativity is important to perform these tasks designer Marc firmly embedded within the fashion on a worldwide basis. Marc Jacobs Jacobs in 1984. company’s IP mindset too. l

16 www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org Published by: Tuesday May 22, 2018 NEWS INTA DAILY NEWS ADVERTISING SPECS Combating Counterfeit Sports Products The Internet can provide a plethora of opportunities for counterfeiters, so professional sports brands need to remain vigilant in protecting consumers. Aaron MacDonald reports.

erseys, shirts, socks, and balls. Scott Palmer, a Partner at Perkins somebody has gotten there before you,” J These are some of the most at-risk Coie LLP (China), spoke about how he warned. It’s important to act to gain Tanya Fickenscher branded sporting products targeted by to tackle counterfeiting issues in rights in China or it can be extremely counterfeiters, said Tanya Fickenscher, China. There was a time when people difficult to stop counterfeiters. These factors mean it is harder “to Vice President, Deputy General perceived counterfeiters in China as Helen Chen, Legal Director at the find a good lead and to capture useful Counsel at Major League Baseball “unwitting”, he said, but things have National Basketball Association China, evidence,” Ms. Chen said. Properties, Inc. (USA), who moderated definitely changed. added that the Internet is making it While the Internet provides yesterday’s Session IM01 Industry He described counterfeiters in China harder to identify who is engaging in counterfeiters with a means of hiding Breakout: Battling Counterfeit as some of the most sophisticated in counterfeit activity. their identity, some popular European Sports Merchandise—A Multi- the world, saying they are increasingly “They are trying every way to avoid cities, such as Barcelona, contend Jurisdictional Review. knowledgeable about the sports being found,” she said. “They either have with street vendors selling counterfeit Victoria Loughery, Assistant industry, know who to target, and little, a limited, or no inventory. They sporting products out in the open. Counsel at the National Football understand which products sell. will produce products on demand.” Although this is a problem, Anna League (USA), commented that it is “If brand owners don’t have The counterfeiters take advantage Guix, Intellectual Property Lawyer at important for sports brands to stay sufficient rights in China, the chances of the privacy provided by some social FC Barcelona (Spain), said there are up to date with the latest technologies are that when you look at the registry, media platforms to conduct business. ways to counter the threat. to help protect consumers from “For brand owners, one of the key counterfeit goods. tools you have to fight against this She highlighted a shift toward the phenomenon is to build really strong mobile and social media landscape relationships with authorities – mainly as providing opportunities for the police,” she said. counterfeiters, who can purchase Ms. Guix added that brands can advertisements that target particular collaborate with the authorities by consumers, and making monitoring training them to identify an authentic potential counterfeit sales online more product. difficult. “If they see the brand is really “This was really a game changer,” working together with them, then they said Ms. Loughery. (L. to R.) Anna Guix, Scott Palmer, Helen Chen, and Victoria Loughery will be collaborative,” said Ms. Guix. l

Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 17 www.facebook.com/INTA #INTA2018 @INTA2018 web www.inta.org Published by: CANADA Tuesday May 22, 2018 Canada’s Commitment to IP Canada’s new IP Strategy proposes some important reforms to the trademark system, as Mark Schaan, Director General, Marketplace Framework Policy Branch, Innovation, Science and Economic Development, tells Ed Conlon.

anada’s government has pledged

C to invest CA $85.3 million (US istockphoto / stevanovicigor $66.6 million) over the next five years to help businesses, creators, entrepreneurs, and innovators better understand, protect, and access their IP. The investment is part of a new Intellectual Property Strategy, which was released by Navdeep Singh Bains, the Minister of Innovation, Science and Economic Development, in April. Mark Schaan, Director General, Marketplace Framework Policy Branch, Innovation, Science and Economic Development, and his team of policymakers have spent the past two- and-a-half years getting the Strategy ready, and, he says, it shows that the government is more committed than ever to taking IP seriously. “It’s the first of its kind for Canada: the Canadian government is committed to reinforcing the importance of IP in It covers a range of issues across all system, that require use and the modern economy, ensuring the IP forms of IP, including some important submission of samples, but in terms of regime is balanced and supportive of legislative changes in the trademark being able to take trademarks off the The Canadian our goals,” says Mr. Schaan. field. However, just like any legislation, roll and provide tools to declutter, this “

government is committed The Strategy is divided into three these amendments still require is relatively novel.” to reinforcing the pillars: IP awareness, education, approval from lawmakers. Mr. Schaan adds that the reforms “ and advice; strategic IP tools for Mr. Schaan explains that the main provide two clear benefits for trademark importance of IP in the growth (including expedited dispute reforms to trademarks include new owners, the first being a “well-curated modern economy. resolution); and IP legislation. opposition and invalidation grounds and manicured trademark registry concerning bad-faith use. In addition, which improves the value and efficacy trademarks are required to be used for those rightfully holding trademarks within three years of registration in and who are not looking to exploit the exercise and leverage IP in a strategic order to enforce them. After three years, system.” Quite simply, “the value of a way in the service of innovation and the Canadian Intellectual Property Canadian trademark goes up,” he says. economic growth. In particular, Office will be able to remove marks Second, he says, the notion that a drawing on and responding to the more from the register based on lack of use. party “might be up against noxious than 200 Canadians who participated behavior of someone looking for a in the consultations that led to the Decluttering quick settlement by threatening an Strategy was a challenge. Four years ago, amendments to unused trademark can give trademarks Canada’s Trade-marks Act, which a bad rap,” so the changes improve the Next Steps will allow Canada to join the Madrid overall reputation of trademarks. With the Strategy now laid out, Mr. Protocol and the Singapore Treaty, Mr. Schaan says practitioners Schaan’s work on the project is only removed an administrative requirement should be aware of the Strategy as a halfway complete. He and his team will stipulating that parties must provide whole, “because it recognizes we have have to steward the implementation a written “declaration” of use before taken IP seriously and that Canada is a and “pass the baton” to those they can register a trademark. These good place to be practicing in the realm responsible for implementing the new amendments are expected to come into of IP.” The government is now trying to tools, as well as Canada’s lawmakers, force sometime next year. Canada’s IP raise awareness about the initiative. who will ultimately need to sign off on Strategy provides additional measures There have been challenges in the the legislative changes. to ensure that the trademark register process, he says, including trying to “As with all areas of policy, we will Mark Schaan does not end up being cluttered look at the myriad ways that one can also continue to monitor progress to by marks that are not being used ensure we stay current with trends,” he properly—a practice sometimes known Canada’s says. as “trademark squatting.” Intellectual Property As Mr. Schaan notes, the Strategy “ The way we are “The way we are dealing with this Strategy is divided has essentially made a commitment to

dealing with this issue of issue of trademark cluttering and into three pillars: legislation, but the specific timeline for

trademark cluttering and squatting is relatively novel in the IP awareness, that has not yet been released. squatting is relatively international space,” says Mr. Schaan. education, and However, Mr. Schaan emphasizes, novel in the international “ “I’m not aware, from an advice; strategic IP the government is “very committed space. international benchmarking position, tools for growth to aggressively moving forward with of others who have looked at it in this (including expedited implementation. We need to ensure way. There are other mechanisms, dispute resolution); the Strategy is implemented quickly such as the U.S. domestic application and IP legislation. and well.” l

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Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 19 www.facebook.com/INTA #INTA2018 @INTA2018 web www.inta.orgwww.facebook.com/INTA #INTA2018 Published@INTA2018 by: web www.inta.org Published by: BRAND RESTRICTIONS Tuesday May 22, 2018 Tobacco Plain Packaging: A Judge’s View from Germany Unlike some other EU member states, Germany has not implemented tobacco plain packaging legislation. Ed Conlon spoke to Judge Neugebauer of the Düsseldorf Higher Regional Court about the key questions in this area.

y prediction is that tobacco istockphoto / peepo “Mplain packaging will arrive in Germany only when the European Union prescribes it for the whole Union. I don’t think the German government will do anything that it doesn’t have to do,” says Ralf Neugebauer, a Judge at the Düsseldorf Higher Regional Court (Germany). Judge Neugebauer—an IP specialist who sits on a panel with two other judges at the appeals court—explains that tobacco plain packaging legislation is not mandatory for EU member states. In 2014, the European Union did adopt Directive 2014/40(EU), which places restrictions on the manufacture, presentation, and sale of tobacco and related products, but it does not require tobacco products to be placed in plain packets. Only a handful of member states have implemented plain packaging provisions in their national legislation, Asked why his home nation “But I’m not so confident for plain Judge Neugebauer believes “this including the United Kingdom and has chosen to steer clear of plain packaging because if you can’t use issue needs some more discussion, France. In 2012, Australia became the packaging laws, Judge Neugebauer, your trademark anymore, you could as there have been some decisions first country in the world to introduce who handles approximately 200 cases argue it’s an expropriation,” he says. (including from the Court of Justice such laws, sparking intense discussions on trademarks, designs, copyright and In Germany, expropriation without of the European Union) indicating about the legality and effectiveness unfair competition every year, says compensation to the brand owner that the trademark from registration of plain packaging. Germany has he assumes the German government is forbidden, including by national onwards transfers a right to the owner yet to follow suit, despite having thinks the measures provided by the law and free trade agreements, he to use it; on the other hand, some implemented Directive 2014/40/EU Directive are sufficient for protecting explains. decisions say it’s a negative right only, provisions on health warnings, which health. “As far as I know, there is The counter argument is that a by which you can keep others from appear on the front, back, and sides of no law in the making,” he says. He trademark does not give the proprietor registering it.” tobacco packets. admits, however, that “you can’t rule the right to use it per se; it merely allows Germany doesn’t have a jury system, it out—sometimes politics takes an the owner to prevent others from but Judge Neugebauer jokes that “the unpredictable path.” using the mark—which would mean jury’s still out” on this particular issue. While Germany has chosen not to the removal of the mark would not require plain packaging, the overall amount to expropriation. Non-Use tobacco advertising regime in the INTA adopted a Board Resolution One question that Judge Neugebauer country is about to become stricter. in 2015 stating that “plain and highly has been pondering concerns non-use Beginning in 2020, all tobacco standardized packaging measures being of a restricted trademark. If a rights advertising will be banned. Such considered or imposed by governments owner is prevented from displaying its advertising is already banned on media, should be rejected or repealed since trademark on its product, that might including TV, radio, print, and the they violate various international be a legitimate reason for non-use, Internet, so the restrictions kicking in treaties and national laws on trademark Judge Neugebauer says. “But for how in 2020 will apply to advertisements protection” and that “governments long?” he asks. appearing in other areas, including the should use less drastic alternatives to “Let’s say a company does not put a cinema and on street placards. address health and safety goals, such as trademark on its product for 20 years— This will mark a big change in public educational campaigns which do will it still be on the register and can Germany, since currently, “there not violate international and national the company still prevent others using are tobacco commercials in movie law and expropriate valuable trademark it, maybe for different products?” theaters and at every corner,” Judge rights.” The issue of non-use does not appear Neugebauer says. to have been addressed by courts in Judge Neugebauer One of the core legal issues in the Germany has yet to jurisdictions that have adopted plain tobacco plain packaging area is the implement plain packaging laws, Judge Neugebauer adds. amount of brand restriction necessary packaging provisions Even though Germany has yet to “ to constitute expropriation. He in their national implement plain packaging, and may If you can’t use your explains that courts in several countries legislation, despite be unlikely to do so, Judge Neugebauer

trademark anymore, have ruled that even when 80 percent of having implemented says “you never know when the law

you could argue it’s an the package has to be covered by health Directive 2014/40/EU may be changed, so I monitor what expropriation. “ warnings that does not count as an provisions on health other jurisdictions have done.” He expropriation. warnings, which admits he cannot speculate on how “I think that’s reasonable; you appear on the front, successful plain packaging laws have can still recognize the brands,” Judge back, and sides of been, noting that measuring success is Neugebauer says. tobacco packets. not an easy task. l

20 www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org Published by: Tuesday May 22, 2018 SPONSORED CONTENTSTRAP Top 10 Trademark Developments from China Time frame Item (months) Anna Mae Koo and Ann Xu of Vivien Chan & Co. (Hong Kong Filing receipt 4 to 6 SAR, China, and China) discuss the top 10 updates this year from Assignment 10 to 12 the China Trademark Office and the Trademark Review and TRAB Appeal Adjudication Board. Review on refusal 6 to 8 Non-use cancellation review 9 to 12 Invalidation application 11 to 14 1. Greater Transparency of TRAB 3. Stricter Requirements for Court important for brand owners who need Opposition review to 14 Decisions Formality Documents to have an application number earlier As of December 2017, all decisions In 2017, the Beijing IP Court adopted to enter e-commerce platforms such as 9. Consolidation of Administra- of the Trademark Review and a more stringent requirement on Tmall. tion and Enforcement of IP Rights Adjudication Board (TRAB) have been formality documents. Common issues However, e-filing is applicable only In March 2018, the National People’s put online and made searchable. The faced by companies include: to trademark filings or license recordals Congress approved the proposal to time lag is around one month from the l Difficulty in proving the person which use standard specifications of restructure agencies under the State date of the decision. signing the Certificate of Identity goods/services. Further, the e-filing Council, which includes: This provides greater transparency of Legal Representative (ICLR) has system does not apply to applications l The State Intellectual Property over the rulings of the TRAB and allows been duly authorized (Issue 1); and filed under the Madrid System. Office (SIPO) will take over the Board to adopt a more consistent l Company documents cannot registration of trademarks and approach. However, as the public be retrieved from the relevant 6. Importance of New Filings also registration of geographical will now have access to the relevant government registry (Issue 2). When filing oppositions/invalidations/ indications; and arguments put forward, appellants l Failure to abide by these non-use cancellations against a third l SIPO will be subordinate to a new should be more cautious in preparing requirements will lead to the party’s prior mark, brand owners State Administration for Market arguments to ensure they do not offer abandonment of the cases. Here are should always remember to file Supervision (SAMS), which will also inconsistent views in connected cases. a few solutions (see Table 1): their subject mark simultaneously; be responsible for enforcement of otherwise, their mark may be re-filed by patents and trademarks. 2. Greater Use of Precedent 4. Stricter Well-Known Status Re- a third party. This is a big structural change Judge Yang Jing of the Beijing IP Court quirements Also, the TRAB will not suspend the unifying the offices that administer provided guidelines regarding the use A high-profile anti-corruption case examination to wait for the outcome patents, trademarks, copyright, etc. of precedent in an article published in involving the inappropriate awarding of of any actions. New filings should be The restructuring is not yet completed, the People’s Court Daily in July 2017. She 10 trademarks with well-known status made to reserve rights. but has caused some confusion over pointed out that no more than three in Guangzhou was concluded last the responsible officers. We expect it to precedent cases, each with a summary year and widely reported in the media 7. Relying on Prior Right clear up in the next few months. of less than 800 words, should be used in March 2018. As such, the China Since well-known status is difficult and submitted in respect of each line of Trademark Office (CTMO) has become to obtain, brand owners may look 10. Fighting Bad Faith and Other argument. Cases should be exchanged extremely cautious and conservative to establish prior rights to bolster Dishonest Behavior between the parties seven days before in the granting of new well-known their actions. Copyright is especially The CTMO has announced potential the hearing. trademarks and re-recognizing old useful as it is a cost-effective defensive additional measures to stem trademark well-known trademarks. mechanism against other marks and is squatting behavior, including the Hence, brand owners should rely not class specific. development of a database of bad- on other grounds, such as bad faith faith trademark applicants. This may or prior right and/or establishing 8. Faster Examination Timeframe be used as evidence of bad faith in the a relationship with the trademark The CTMO and the TRAB have future. l squatter to obtain a favorable ruling. generally been able to abide by the regulatory requirements of the 5. Electronic Filing More Broadly law. In fact, the CTMO is looking Available to further speed up examinations. Through e-filing, brand owners are able New examination centers have been to obtain application numbers in one established in Guangzhou, Shanghai, working day and obtain filing receipts and Chengdu in the last few months. within one month, in contrast to three The current time frames of examination to six months for paper filing. This is are as below (see Table 2):

Jurisdiction of Solution Trademark Owner United States (Delaware, Issue 1: “Delegation of Authority” signed by the New York, California) managing director authorizing a person (usually another senior executive) to sign the ICLR. An ICLR Anna Mae Koo signed by an individual who is authorized by the by- laws to sign on behalf of the company may be accepted Ann Xu Issue 2: For listed companies, company documents may be retrieved from the U.S. Securities and “New examination centers Exchange Commission. Anna Mae Koo is a Partner and heads the

have been established in intellectual property practice at Vivien Chan

Guangzhou, Shanghai, and United Kingdom Issue 1: ICLR to be signed by director(s) together & Co. (Hong Kong SAR, China). Ann Xu is Chengdu in the last few “ with a copy of section 44 of the Companies Act a Trademark Attorney and heads the Beijing months. 2006, which states a document is validly executed office at Vivien Chan & Co. (China). by a company if it is signed by a director in the They can both be contacted at: vivchan@ presence of a witness. vcclawservices.com

Published by: www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org 21 AFFILIATE RECEPTIONS Tuesday May 22, 2018

1 2

3

4

5

6 7

8 9 10

1. Arnold & Siedsma, Greg Kucera Gallery 2. Alprin Law Offices, P.C., Safeco Field 3. Advance China I.P. Law Office, Fairmont Olympic Hotel 4. Perkins Coie LLP 5. Becerril, Coca & Becerril, S.C., Pop Culture 12 11 Museum 6. Brinks Gilson & Lione, Pike Pub 7. Wanhuida Peksung IP Group, AQUA by El Gaucho 8. H. K. Acharya & Co, The Renaissance Hotel 9. Bereskin & Parr LLP, Benaroya Hall 10. Appleyard Lees, Frolik, The Motif Hotel 11. Clarke, Modet & Co, Columbia Tower Hotel 12. Dumont Bergman Bider & Co., S.C., Union Station

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22 www.facebook.com/gointa #INTA2018 @intaglobalweb www.inta.org Published by: INTA DAILY NEWSdaily ADVERTISING SPECS news schedule 2 Tuesday May 22

START END NAME LOCATION* CONCURRENT SESSIONS 11:45AM 1:00PM CT20 Celebrities Everywhere! Analysis of the Use of Personal and Image Rights of a Celebrity in Different Jurisdictions Intermediate Level Room 6C 11:45AM 1:00PM CT21 3D Trademarks after Rubik’s Cube Advanced Level Room 6AB 11:45AM 1:00PM CT22 Protecting Unregistered Marks via Passing Off and Unfair Competition: Reputation Versus Goodwill (and Everything In-Between) Advanced Level Room 602 - 604 11:45AM 1:00PM RT20 Regional Update: Law and Practice in China, Korea, and Japan—Distinctiveness of Marks Intermediate Level Room 605 - 607 12:00PM 1:00PM SPEED NETWORKING Hall 4EF 12:15PM 1:30PM Working Towards the 21st Century IP Office Workshop Agenda Lunch Room 613 - 614 12:15PM 2:15PM Association Leaders Business Meeting- NGO Coordination Meeting (by invitation only) Room 617 COMMITTEE MEETINGS 1:15PM 2:15PM Right of Publicity Full Committee Room 303 1:15PM 2:45PM Internet Committee – Rights Protection Mechanisms Review Subcommittee Room 307 1:15PM 2:45PM Internet Committee – Whois/Registrant Directory Services Subcommittee Room 308 1:15PM 3:15PM Anticounterfeiting Committee – Customs Training Conference Center - Skagit 2 1:15PM 3:15PM Global Advisory Council – India Room 310 1:15PM 3:15PM Global Advisory Council- North America Room 302 1:15PM 3:15PM In-House Practitioners Committee Room 3B 1:15PM 3:15PM Managing Partner Meeting Room 620 1:15PM 3:15PM Publications Committee Room 3A 1:15PM 3:15PM Trademark Litigation Web Series Project Team Room 301 1:15PM 3:15PM Young Practitioners Committee Room 610 SESSIONS 1:15PM 3:15PM Lunch and Learn: Get Big Things Done: The Power of Connectional Intelligence Room 608 - 609 1:15PM 3:15PM LUNCHEON TABLE TOPICS Room 6E 1:30PM 2:30PM SPEED NETWORKING Hall 4EF COMMITTEE MEETINGS 2:15PM 3:15PM Right of Publicity Full Committee – Education & Awareness Subcomittee Room 303 2:15PM 3:15PM Right of Publicity Full Committee – Minimum Standards Subcommittee Room 303 2:15PM 3:15PM Right of Publicity Full Committee – Outreach/Collaboration Subcommittee Room 303 2:15PM 3:15PM Right of Publicity Full Committee – State of the Law/Fact Finding Subcommittee Room 303 SESSIONS 2:15PM 3:30PM Trademark Scholarship Symposium – Session III (Academic Series) Room 615 2:15PM 3:30PM Trademark Scholarship Symposium – Session III (Academic Series) Room 616 COMMITTEE MEETINGS 2:3OPM 3:30PM Latin America Associations Meeting Room 309 SESSIONS 1:30PM 2:45PM Adjunct Professor Panel: Crossing the Interdisciplinary Bridge Room 602 - 604 3:00PM 4:00PM SPEED NETWORKING Hall 4EF COMMITTEE MEETINGS 3:30PM 4:30PM Anticounterfeiting Project Team (Legal Resources) Room 306 3:30PM 4:00PM Famous and Well-Know Marks Committee – Full Committee Conference Center - Tahoma 4 CONCURRENT SESSIONS 3:30PM 4:45PM CT50 Bad Faith and Trademarks at the EUIPO: Beyond the Hercules Pillars Room 6C 3:30PM 4:45PM CT51 IP Checklist for Investments in Latin America Intermediated Level Room 605 - 607 3:30PM 4:45PM CT52 Planning for BREXIT Intermediate Level Room 602 - 604 3:30PM 4:45PM IT50 Industry Breakout: Food Revolution: Branding and Trademark Issues Arising in the Rapidly Changing Food Industry Intermediate Level Room 6AB SESSIONS 3:30PM 5:30PM INTA and CTA Joint Session on the New Practice of China Trademark Law Room 608 - 609 COMMITTEE MEETINGS 3:30PM 5:30PM Anticounterfeiting Committee – Brand Owners Meeting Room 3B 3:30PM 5:30PM Enforcement Committee – Opposition & Cancellation Standards and Procedures Subcommittee Room 303 3:30PM 5:30PM Enforcement Committee – Trademark Enforcement Policy Advocacy Subcommittee Conference Center - Skagit 2 3:30PM 5:30PM Leadership Development Committee Room 610 3:30PM 5:30PM Trademark Administrators Committee Room 3A 3:30PM 5:30PM Trademark Office Practice – TM5 Subcommittee Room 304 SESSIONS 4:00PM 5:00PM INTA PAC Open Informational Session Room 613 - 614 COMMITTEE MEETINGS 4:00PM 5:00PM Famous and Well-Known Marks Committee – Canada Subcommittee Conference Center - Tahoma 4 4:00PM 5:00PM Famous and Well-Known Marks Committee – East Asia & Pacific Subcommittee Conference Center - Skagit 3 4:00PM 5:00PM Famous and Well-Known Marks Committee – Europe & Central Asia Subcommittee Conference Center - Tahoma 4 4:00PM 5:00PM Famous and Well-Known Marks Committee – Latin America and Caribbean Subcommittee Conference Center - Yakima 2 4:00PM 5:00PM Famous and Well-Known Marks Committee – Middle East, Africa and South Asia Subcommittee Conference Center - Skagit 4 4:00PM 5:00PM Famous and Well-Known Marks Committee – United States Subcommittee Conference Center - Skagit 1 5:00PM 6:00PM Latin America and Caribbean Reception (By invitation only) Level 4 - Atrium Lobby 5:00PM 6:00PM China Reception (By invitation only) Skybridge Lobby 5:00PM 6:00PM Middle East Reception (By invitation only) 2AB Lobby 5:00PM 7:00PM Legal Resources Contributor Reception (By invitation only) Room 616 5:30PM 7:00PM Political Action Committee (PAC) Reception Sheraton Seattle - Presidential Suite 5:30PM 6:30PM Government Officials Reception Conference Center - Yakima 1 •All events are in the Washington State Convention Center (WSCC) unless otherwise noted

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START END NAME LOCATION* 7:30AM 5:00PM Registration Hall 4B 7:30AM 5:00PM Hospitality Hall 4C & EF 8:00AM 10:00AM Continental Breakfast Hall 4C & EF 8:00AM 10:00AM BREAKFAST TABLE TOPICS Room 6E COMMITTEE MEETINGS 8:00AM 9:00AM Geographical Indications Committee – Full Committee Room 3B 8:00AM 9:00AM Parallel Imports Committee – Full Committee Conference Center - Skagit 4 8:00AM 10:00AM 2018 Middle East and Africa Conference Project Team Meeting Room 3A 8:00AM 10:00AM Academic Committee Room 610 8:00AM 10:00AM Legislation & Regulation Committee – Model Law Guidelines Subcommittee Room 302 8:00AM 10:00AM Legislation & Regulation Committee – Asia-Pacific Subcommittee Room 305 8:00AM 10:00AM Public and Media Relations Committee Room 608 - 609 8:00AM 10:00AM Trademark Office Practices Committee – EUIPO Subcommittee Room 307 SESSIONS 9:00AM 4:30PM Working Towards the 21st Century IP Office Workshop Room 611 - 612 COMMITTEE MEETINGS 9:00AM 10:00AM Brands and Innovation Committee – Leadership Only Room 306 9:00AM 10:00AM Geographical Indications Committee – Enforcement Subcommittee Room 3B 9:00AM 10:00AM Geographical Indications Committee – Expansion Subcommittee Room 3B 9:00AM 10:00AM Geographical Indications Committee – International Agreements Subcommittee Room 3B 9:00AM 10:00AM International Amicus Committee – Leadership Only Room 620 9:00AM 10:00AM Parallel Imports Committee – Asia-Pacific and Africa Subcommittee Conference Center - Skagit 4 9:00AM 10:00AM Parallel Imports Committee – Europe & Central Asia Subcommittee Conference Center - Skagit 4 9:00AM 10:00AM Parallel Imports Committee – Latin America Subcommittee Conference Center - Skagit 4 9:00AM 10:00AM Parallel Imports Committee – North America Subcommittee Conference Center - Skagit 4 9:30AM 10:30AM Presidential Task Force Room 301 10:00AM 5:00PM Exhibition Hall Hall 4EF COMMITTEE MEETINGS 10:15AM 10:45PM Harmonization of Trademark Law and Practice Committee – Full Committee Room 608 - 609 10:15AM 11:15PM International Amicus Committee – Full Committee Room 3B 10:15AM 11:15PM Non-Traditional Marks Committee – Full Committee Conference Center - Tahoma 3 SESSIONS 10:15AM 11:30AM Trademark Scholarship Symposium – Session I (Academic Series) Room 615 10:15AM 11:30AM Trademark Scholarship Symposium – Session I (Academic Series) Room 616 CONCURRENT SESSIONS 10:15AM 11:30AM CT01 Annual Review of Leading Case Law in the European Union Advanced Level Room 6C 10:15AM 11:30AM CT02 The Messy Divorce Between New Zealand and Australian Non-Use Revocation/Cancellation Law Intermediate to Advanced Level Room 602 - 604 10:15AM 11:30AM CT03 Ethics at the Movies All Levels Room 6AB 10:15AM 11:30AM IT01 Industry Breakout: Sharing the Pain: Hot Topics, Cool Solutions, and New Trends in Travel and Leisure Trademark and IP Issues Advanced Level Room 605 - 607 COMMITTEE MEETINGS 10:15AM 12:15PM Brands and Innovation Committee – Full Committee Room 610 10:15AM 12:15PM Enforcement Committee – Judicial Administration and Trademark Litigation Subcommittee Room 303 10:15AM 12:15PM Law Firm Committee Conference Center - Skagit 5 10:15AM 12:15PM The Trademark Reporter Committee Room 3A 10:15AM 12:15PM Trademark Office Practices Committee – USPTO Subcommittee Room 304 10:30AM 11:30AM SPEED NETWORKING Hall 4EF COMMITTEE MEETINGS 10:45AM 12:15PM Harmonization of Trademark Law and Practice Committee – Free Trade Agreements Subcommittee Room 608 - 609 10:45AM 12:15PM Harmonization of Trademark Law and Practice Committee – International Classification Subcommittee Room 608 - 609 10:45AM 12:15PM Harmonization of Trademark Law and Practice Committee – International Cooperation Developments Subcommittee Room 608 - 609 11:15AM 12:15PM Brands and Innovation Committee – Programming and Communications Subcommittee Room 610 11:15AM 12:15PM Brands and Innovation Committee – Research and Policy Development Subcommittee Room 610 11:15AM 12:15PM Brands and Innovation Committee – Stakeholder Outreach Subcommittee Room 610 11:15AM 12:15PM Brands and Innovation Committee – Technology Impact Monitoring Subcommittee Room 610 11:15AM 12:15PM Brands and innovation Commitee – Consumer Impact Subcommittee Room 610 11:15AM 12:15PM International Amicus Committee – Asia-Pacific Amicus Subcommittee Room 3B 11:15AM 12:15PM International Amicus Committee – Canada Amicus Subcommittee Room 3B 11:15AM 12:15PM International Amicus Committee – Europe Amicus Subcommittee Room 3B 11:15AM 12:15PM International Amicus Committee – Latin America Subcommittee Room 3B 11:15AM 12:15PM International Amicus Committee – United States Subcommittee Room 3B 11:15AM 12:15PM Non-Traditional Marks Committee – Europe and Central Asia Subcommittee Conference Center - Tahoma 3 11:15AM 12:15PM Non-Traditional Marks Committee – Middle East, Africa and South Asia Subcommittee Conference Center - Tahoma 3 11:15AM 12:15PM Non-Traditional Marks Committee – Canada Subcommittee Conference Center - Tahoma 3 11:15AM 12:15PM Non-Traditional Marks Committee – East Asia & Pacific Subcommittee Conference Center - Skagit 1 11:15AM 12:15PM Non-Traditional Marks Committee – Latin America & Caribbean Subcommittee Conference Center - Yakima 2 11:15AM 12:15PM Non-Traditional Marks Committee – United States Subcommittee Conference Center - Yakima 1 SESSIONS 11:45AM 1:00PM Trademark Scholarship Symposium – Session II (Academic Series) Room 615 11:45AM 1:00PM Trademark Scholarship Symposium – Session II (Academic Series) Room 616 Continued overleaf

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