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141st Annual Meeting, Boston daily news Wednesday May 22, 2019 Practicing What You Preach Corporate social responsibility (CSR) has become an important issue for brands, but it’s vital to back up your good words with good actions, as Rory O’Neill reports.

limate change has the potential to however, do so at their own peril, Cbe the defining social and political and often at significant risk to their issue of our era. As calls increase for brand. This was the warning from governments to declare a climate the panel at yesterday’s session Natasha Reed highlights “green trademarks.” emergency, there has never been more CT03 Brand Protection and the scrutiny on what decision makers, Intersection of Trademarks, John F. Kennedy School of Government LLP (USA), described them. Companies whether in the political or corporate Advertising, and Corporate Social at Harvard University (USA): “CSR may choose a green trademark to sphere, are doing to tackle the problem. Responsibility, which discussed the encompasses not only what companies define not just a single product line as It is little surprise, then, that brands branding implications of corporate do with their profits, but also how they eco-friendly, but possibly their whole are increasingly attempting to define social responsibility (CSR). make them.” brand identity. themselves as “green” in an effort to As Gare Smith, Partner, Corporate The increased focus on CSR, both Failure to get it right, however, can make it known that they are part of the Social Responsibility Practice, Foley from consumers and in the media, has cause reputational damage, Ms. Reed solution, rather than the problem. Hoag (USA), noted: “People have very coincided with the filing of so-called said. Panelists highlighted examples Companies that exaggerate or different ideas of what CSR means.” He “green trademarks,” as moderator of brands that had faced 2 fail to live up to their own claims, pointed to a useful definition from The Natasha Reed, Counsel, Foley Hoag negative publicity after their

Grand Finale How IP Offices Use Artificial Intelligence Join us at the Museum of Science, While it’s still a novelty, some intellectual property (IP) offices have begun Boston for a night of fun—and to use artificial intelligence for a range of purposes related to trademark for your last chance to network during the 2019 Annual Meeting. applications, examinations, and analysis, as Peter Scott reports. rtificial intelligence (AI) has become a Just last month, the World previous iterations of AI-powered Shuttles will be available. Heavy Asource of intrigue, and its impact on Intellectual Property Organization image search, which mainly rely on hors d’oeuvres and drinks will be society much debated. While intellectual (WIPO) announced the launch of a new analysis of shape or color to determine provided. property offices around the world are image-search technology powered by similarity, the new tool is able to wrestling with how to handle AI-related, or AI. It will be implemented through 45 identify combinations of concepts to Badges or wristbands required. even AI-created, intellectual property (IP), trademark offices worldwide (covering do the same. Tonight: 7:00 pm—11:00 pm! many are beginning to use the technology almost 38 million marks) as part of Announcing the new to facilitate their own work. WIPO’s Global Brand Database. Unlike initiative, WIPO Director 4

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Practicing What You Preach(continued)

1 environmental claims were found to be overstated. “Green trademarks have gotten intense scrutiny from the Federal Trade Commission (FTC), the [U.S.] Patent and Trademark Office, consumers, and competitors for greenwashing,” Ms. Reed said. Greenwashing is the practice of making unsubstantiated or even misleading claims about a product or brand’s stance on environmental sustainability issues. “People don’t like to be hoodwinked,” said Mr. Smith. (L. to R.) Gare Smith, Lesley Fair, Mary Carragher, and Lena C. Saltos So what are the standards that brands must follow in order to (USA), said that brand owners need whereby a brand is perceived to have navigate the challenges of CSR-focused to be rigorous in the evidence they exploited a community’s cultural branding? To this end, Lesley Fair, provide when making claims about the assets or knowledge, typically that of an Senior Attorney, Bureau of Consumer social and environmental benefits of CSR encompasses not only indigenous people or minority group. Protection, Federal Trade Commission their products. what companies do with As Ms. Saltos noted, these scandals Speaking in her personal capacity, their profits, but also how “often play out in the media,” causing Ms. Fair said that companies would do they make them. significant harm to a brand’s image. #LoganLobster well to adhere to the FTC’s regulations How can these pitfalls be avoided? on false and deceptive advertising. The obvious answer, of course, is Logan Lobster, the 2019 Annual These require environmental claims simply not to engage in cultural Meeting’s mascot, had fun in Gare Smith in advertising to be demonstrably true appropriation. But that may be easier Boston! Where in the world will and backed up by science. said than done. Ms. Saltos offered Logan be next (Singapore?)? It is not enough, Ms. Fair said, to some practical advice to help prevent mask claims in ambiguous language Even if such conduct doesn’t result such missteps. such as “earth-friendly,” to obscure a in a lawsuit, “it can still end up in the “Luxury and fashion brands lack of objective evidence. court of public opinion,” Ms. Reed frequently get into trouble in this “It is a big mistake for companies to pointed out, and that can be just as area, especially when they overlook the think [that] if they don’t have science,” damaging to a brand. importance of having both CSR and IP they can just use ‘fluffy terms,’ she professionals in the same room as the added. “That’s not just puffery; it’s a Cultural Appropriation creative executives, product developers, lawsuit waiting to happen.” Of course, CSR encompasses much designers, and marketers,” she said. Mary Carragher, Chief Counsel, more than just environmental concerns. “They also often overlook the need Global Marketing and Media at Brands have to be conscious of the wider to clear new products and ads not just Mondelēz International (USA), echoed impact of all of their actions. from a legal perspective, but also from the point, noting that deceptive Lena Saltos, Associate General a general standards perspective,” she advertising is not just a marketing Counsel, Global Director of added. concern but, in the United States Intellectual Property at Urban At Urban Outfitters, Ms. Saltos at least, can open companies up to Outfitters, Inc. (USA), referenced the said, IP and legal professionals liability at both federal and state levels. practice of “cultural appropriation,” work as part of a “cross-functional” approach to ensure consistency in the company’s CSR statements and Take The Unreal Challenge! protect the brand. Driving home the point, Ms. Reed reiterated the best practice of having “everyone in the room before a new product or ad launch, including IP counsel and executives who can vet communications with an eye on standards and practices.” l

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2 www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org Published by: Wednesday May 22, 2019 NEWS Exploring Alternative Realities New technology is enabling consumers to experience the world around them differently, with implications for brands and intellectual property professionals. Sarah Morgan reports

rom the filmBlade Runner work with entertainment company The Fthat highlights a future where VOID to create VR experiences, where advertising is built into the landscape, participants walk through a Star Wars- to the book Buy Jupiter and Other Stories, themed environment (while, in reality, in which aliens purchase the planet they’re walking through a series of Jupiter for use as a giant billboard, the empty rooms). sci-fi genre has imagined a multitude of Looking to the future, Kimberly scenarios for advertising and branding. Culp, Director at Carr McClellan We’re still some time away from (USA), explained that VR activities seeing these extreme forms of could lead to litigation over sensory advertising become a reality. But (L. to R.) Kimberly Culp, Matt Stratton, and Deborah Davis experiences in this space. augmented reality (AR) and virtual Trademarks are being granted reality (VR) technologies are surging Brands are already interacting with “Many consumers can’t see well or for sensory experiences, such as a forward and taking branding along for the technology: HBO (USA) recently hear well. There’s a whole community particular scent. If a trademarked the ride. The future is now. sponsored a Game of Thrones-themed of consumers that may be underserved scent were to become associated with Speaking yesterday during CT02 lens. “They’re advertising, but they’re by a brand [that hyper-targets the smell of a virtual experience, and Reality Check: Adapting Brand fun,” commented Mr. Stratton. consumers],” she said. another brand then used the same Strategies for AR and VR, Matt “Brands can make branded user- VR, which creates simulated scent in a different VR experience, it Stratton, Associate General Counsel, generated content that ideally has a environments, is a totally different could lead to litigation, she said. IP at Snap Inc. (USA), explained that viral nature to it and will get the word tool. Ms. Davis noted that to use Litigation is also likely to arrive AR, where digital elements are blended out,” said Mr. Stratton. this technology effectively, brands in the AR context, panelists said, into the real world, is well-used already AR technology also allows users to need to “invest in building an entire especially in the context of so-called across its Snapchat platform and create lenses that interact with public consumer experience,” which takes “conquest ads”, where brands deploy others. spaces. For example, Snap has created a lot of computing power, time, and their own advertising over or next to “AR is a new form of user-generated a model of the Eiffel Tower, allowing development costs. their competitor’s advertising. content. It’s another way of visual users to interact with its structure. Mr. Stratton said: “As consumers communication; we‘re progressing from This is where the technology runs become more accustomed to depending texts, photos, and videos to [using] AR into difficulties, inviting questions on AR as a source of information, there within photos and videos,” he said. about brands and their relationships As consumers are more opportunities to disrupt that Four years ago, Snapchat launched with public and private spaces, and who become more accustomed process.” AR lenses, which apply AR to your face controls the digital space around the to depending on AR as a For example, an app could direct (think filters with bunny ears and multi- structures viewed through an AR lens. source of information, you to “replace” one brand’s ad on the colored hair) and world lenses, which there are more street with a rival brand’s ad in the AR project out into your field of view (think A Consumer Experience opportunities to disrupt space to win a prize or discount. of a mini-cartoon version of yourself While AR presents an opportunity to that process. “Is there a claim? In my view, it dancing across a table). Snapchat also target consumers with individualized depends on how consumers are doing offers Lens Studio, a free software that ads, Deborah Davis, Senior Advertising this. Is it genuinely confusing anybody? allows anybody to create AR lenses. Counsel at Electronic Arts Inc. (USA), Matt Stratton I don’t think anybody really is, but on “It’s not just something for big warned that targeting consumers too brand tarnishment maybe there’s a companies,” Mr. Stratton said. “Normal specifically may cause problems. claim,” he said. everyday people can make AR.” “If you over-target, you lose the “You may not be able to do as much Despite the complexity of the He showed session attendees how opportunity to create a national targeted marketing [as you could with issues, Mr. Stratton is optimistic that a poster for the filmThe Lion King could conversation around your brand and AR],” she said. ”It’s going to need to be a traditional trademark analysis for be transformed into an AR experience. do something unique,” she said. a little more uniform.” infringement and dilution will be used “A Snapchat lens can teach it to She pointed out that brands should The technology can be used as a way when such issues arise in the AR and recognize the poster and allow for a 3D keep in mind the concept of accessibility to extend your product line, she said, VR context—as they inevitably will, he experience,” he explained. when considering whether to use AR. citing The Walt Disney Company’s said. l

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How IP Offices Use Artificial Intelligence (continued)

1 General Francis Gurry called on IP offices not currently participating to consider joining, underlining that “a larger data pool means better AI results.” Communication plus collaboration between IP offices is likely to be crucial for AI-based solutions to be implemented effectively, says Christophe Mazenc, Director of the Global Databases Division at WIPO. He says current collaborations with national offices provide WIPO with “diverse data” that is compiled, prepared, and cleaned for building AI tools. “If these tools bring some benefits, they can be shared with collaborating offices to help improve their operations,” he explains. “We are also envisaging transferring knowledge about building, maintaining, and using AI tools.” As well as trademark search, WIPO uses AI to enhance other areas of its work, says Mr. Mazenc. The Madrid System has been using machine translation to speed up the work of translators for goods and services texts, reducing translation outsourcing costs. AI outputs still need to be validated are looking to off-the-shelf solutions. In Chile, the Instituto Nacional de As the AI technology is open source, by humans. In addition, people will The Norwegian Industrial Property Propiedad Industrial (INAPI) has been WIPO can build on and customize continue to have an important role to Office (NIPO) uses basic AI for its using AI in trademark examinations for it to fit the organization’s needs, Mr. play to ensure quality control. AI tools trademark search function, and over a year now. The technology allows Mazenc says. often suffer from a “black box” effect currently uses “lower degree AI” in INAPI to compare image trademarks Trademark administration procedures that leads to difficulties in their quality its digital case management system, with “incredible accuracy,” finding all involve a number of repetitive tasks. With assessment and in their adoption by according to Jens Petter Sollie, IPR relevant images within its database time, Mr. Mazenc points out, such tasks end-users, he adds. Systems Manager at NIPO. This lower- that contain some kind of similarity, will become more efficient due to advances degree AI involves pattern recognition explains Lorena Mansilla Inostroza, in AI technology—with more reliance on Around the World to assist with hit sorting for trademark INAPI’s Acting Deputy Director of the technology than on humans. While WIPO has certainly been a comparison. “It gives value,” Mr. Sollie Trademarks, Geographical Indications However, those who worry that AI pioneer in using AI for trademark says, “but just as a complement.” and Appellations of Origin. will supplant humans need not be too work, many national offices have also However, NIPO is currently The tool was developed in alarmed for now, at least when it comes begun using, or exploring the use of, exploring the next generation of AI- conjunction with the University of to IP. “AI has benefits, but it’s not the technology. based software, and hopes to upgrade Chile Physics and Mathematical perfect,” Mr. Mazenc suggests. In January, the Trademark soon. NIPO uses software called Sciences Faculty, which owns the Office of China’s National Institute Acsepto, produced by Sword Group associated IP rights. Ms. Mansilla of Intellectual Property (CNIPA) (United Kingdom); it is also used by Inostroza explains that although announced the launch of a new smart several IP offices worldwide (including INAPI has started rolling out the device search function. In line with a in Croatia, New Zealand, and South technology, it is still being tested and national reform goal to improve the Africa). The latest version of the refined. Once it is fully developed, efficiency and quality of trademark software employs image search and “I believe its possibilities will be very examination, and reflecting aclassification using “neural network broad,” she suggests. continuing acceleration in the number AI,” which is trained on previous What are the benefits? Among of trademark applications in the examiner activity to enable more the many advantages, Ms. Mansilla country, the new tool uses AI for image accurate results, according to Mr. Inostroza says AI allows INAPI to searches. Sollie. improve processing times and increase In a statement, CNIPA said that, He says that ultimately, the biggest the accuracy of searches. this has increased productivity and beneficiaries will be users of the system; “Specifically regarding image decreased the number of trademarks in time, they will be able to make free comparison, the great advantage is that that an application needs to be checked searches, which in turn should improve it makes it an objective, science-based against from the tens of thousands to the quality of filings. The aim is to roll exercise, diminishing our margin of around 5,000. In addition, CNIPA said out the software to cover trademarks error and giving us a solid ground for Christophe Mazenc it is looking to extend its use of AI—and initially, and then adapt it for designs refusal in certain cases. It also makes to become a standard setter in the field, and patents too. the process quick and reliable,” she enabling the Office to increase its voice “In time AI will improve the quality says. We are also in international cooperation.. of decisions, both by enhancing the Therefore, Ms. Mansilla Inostroza envisaging transferring While China’s solution was capacity of the Office and the quality adds, “Our expectations for the future knowledge about building, developed in partnership between of search results by officer,” Mr. Sollie are very high.” INAPI hopes to use maintaining, and using CNIPA and Beijing Huazhi Jingwei says, “but perhaps most importantly, AI in other stages of the trademark AI tools Company (China), Shanghai Yitu [it will improve] the quality of filings by examination process, particularly Company (China), and Tencent the customer and their understanding within formal examination of goods (China), IP offices in other countries of quality levels.” and services. “Being able to conduct

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this phase automatically would be very are capable of supporting figurative accurate, so there is still a need for useful in order to save time and speed up trademark examinations. It also began human input. Mr. Noguchi gives the the registration process,” she explains. conducting trials on AI-based image example of decisions on trademark Some of these benefits are searches by examiners, including registrability, a requirement that is appreciated by the Japan Patent Office the task of assigning search codes to based on consumer recognition. “As of (JPO), which has not yet implemented figurative elements of the filed mark, today, it is technologically difficult for AI in trademark examinations, but is Mr. Noguchi says. AI to make decisions about trademark exploring how it might do so in the The second phase of the JPO’s study registrability; instead, we think that future. Satoshi Noguchi, Director relates to the examination of similarity AI can become a means of supporting General, Trademark and Customer of goods and/or services. Throughout examiners’ work,” he suggests. Relations Department, says the Office fiscal years 2017 and 2018, the JPO While there’s certainly a long way to is expecting AI to relieve trademark studied the use of AI to support the go before AI can revolutionize the work examiners’ workloads and improve assignment of similar group codes, of IP offices, the speed of advancement examination quality and efficiency. which helps examiners to ascertain the suggests it would be foolhardy to “The number of trademark Satoshi Noguchi scope of similarity between goods and/ predict that it won’t. In the meantime, applications is increasing in recent years, or services, to designated goods and/or the technology is already enhancing so if we can use AI, we hope it can lead services, says Mr. Noguchi. IP offices’ work, and perhaps more to providing applicants earlier notices To conduct the study, the JPO significantly, is proving more beneficial about examination results,” he explains. We think that AI can developed AI that could learn the lists for users of the systems. become a means of of goods and services in its Examination That trend is likely to continue as Use Studies supporting examiners’ Guidelines for Similar Goods and more offices adopt the technology, and In a two-part study, the JPO is first work. Services, as well as past examination specifically as initiatives such as WIPO’s examining whether it can use AI for results.. The assignment of similar gain traction, since the strength of an AI image searches. Mr. Noguchi explains group codes is one of the most time- solution is predicated to a large degree that when searching for prior figurative consuming tasks for trademark on the quantity and quality of available marks, examiners “must make examiners, Mr. Noguchi explains. data. The extent to which IP offices significant efforts” to ensure that their In fiscal year 2017, the JPO verified “Therefore, the JPO believes that coordinate their efforts in this area is search queries cover a large number of the search accuracy of image searches if AI-based systems can be used to likely to have widespread ramifications databases and check all of the search through the use of AI and identified do this, it will improve examination for the future of the industry. In any results. Quite simply, this creates a vast issues that need to be resolved. In quality and speed up the examination event, the days of trademark examiners amount of work for examiners, he says, fiscal year 2018, the JPO continued its process,” he says. manually trawling through thousands so the ultimate goal is to reduce their work to increase search accuracy and One of the main limitations is that, of applications are, if not over, then on workloads. clarify the scope of image searches that as things stand, AI is not 100 percent the way out. l

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Published by: www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org 5 DIVERSITY AND INCLUSION Wednesday May 22, 2019 Making the Case for Diversity The importance of diversity at law firms remains a center of conversation. Sarah Morgan reviews the status.

019 is a landmark year for women and women were 29 percent less likely according to Mr. Winterfeldt. “The Unfortunately, a “lack of role 2in law—it marks the centenary since than men to reach the first level of increasingly global nature of business models, allies, and networks, and the the passing of the Sex Disqualification partnership. makes it important to have perspectives assumption that one must conform (Removal) Act in the United Kingdom, “We are making progress, but likely that are as broad and creative as to a presumed standard as you which allowed women to become still have decades of work ahead before possible,” he says. advance in your career, lead to diverse barristers and solicitors for the first time. achieving true equality in the legal Lynell Tuffery Huria, Principal at talent seeking opportunities at other Yet, while it’s been 100 years since profession,” says Brian Winterfeldt, AJ Park (New Zealand), agrees that a companies,” adds Mr. Schouten. women were given the right to practice Principal of Winderfeldt IP Group diverse team will better reflect its clients. “Networks make a huge difference. law, gender diversity as well as other (USA). “The world is becoming more You can be introduced to others who aspects of diversity remain hot topics and more diverse, and we need to have already ‘made it’ and you can learn today—not just in the UK but around Business Side of Diversity understand the ideas, values, and needs from it,” adds Ms. Henry. the world. Diversity is important: firms that of our clientele to ably assist and advise In 2014, Ms. Henry launched the While global statistics on diversity understand this and ensure it, are likely them,” she says. NEW Roundtable (USA), a nonprofit at law firms are not available, data on to benefit in the long run. Hilton Worldwide, Inc. (USA), organization. Through a mix of women and minority ethnic lawyers in “Growing research shows that which was named as the best workplace relationship-building, professional some countries show that numbers are improving diversity within companies for diversity by consultancy Great Place development initiatives, and increasing—but slowly. is not just about ‘doing the right to Work (USA) last year, is one example mentoring, the organization aims to For example, in the UK, women make thing,’ but actually helps businesses of diversity and inclusivity. drive the inclusion and advancement up just under half all lawyers at law and economies grow, providing a Christian Eriksen, Senior Counsel of African-American women attorneys. firms, but only 33 percent of partners, real business case for change,” says Brands and Intellectual Property at reports the Solicitors Regulation Martijn Schouten, Singapore People & Hilton Worldwide, Inc. (USA), says: Leading From the Top Authority (United Kingdom). In North Organisation Leader, PwC South East “From a big picture perspective, we What’s also important for law firms America, according to McKinsey & Asian Consulting (Singapore). believe an inclusive approach supports is not only to make a commitment Company (USA), while law firms are Along with bringing a variety of our hospitality culture, provides access to diversity, but also to effectively taking important steps to increase perspectives to the table, diversity to better and more diverse talent, and communicate that message to their gender equality, as of 2017, only 19 can help lawyers connect with clients gives Hilton distinct advantages in the employees. percent of equity partners were women, who themselves have diverse teams, marketplace.” Trish Mundy, Associate Dean at the If Hilton Worldwide, Inc. believes University of Wollongong, Australia a law firm is not committed to or (Australia), says: “I don’t think Giving Back to Boston operating in a way consistent with its leading a firm culture needs to look INTA volunteers helped inspect, sort, and package grocery items yesterday at values, he says, “They are not likely to a certain way, but it does need to be The Greater Boston Food Bank: in all, 4,196 meals for local families. be our counsel for long.” communicated to everyone.” Ms. Mundy and Nan Seuffert, Commitment Is Key Professor of Law at the University of Obviously, diversity makes sense, but Wollongong, Australia, conducted the how can the legal profession achieve Advancement of Women in Law Firms: parity? In recent years, law firms have Best Practice Pilot Research Project worked hard to employ diversity- in August 2017, which investigated focused professionals, and to make current best practices on gender equity diversity commitments, and have built criteria in four of the top-achieving up committees to improve hiring, national law firms in Australia. retention, and advancement prospects. Echoing the study findings, all “It’s not complicated. It’s very simple interviewees saw a commitment from in concept but very difficult for law firms the top as extremely important to to follow through,” suggests Chasity achieving diversity. Wilson Henry, Assistant General Counsel Mr. Eriksen says: “The responsibility of Corporate Affairs and Legal Strategy for advancing the culture of an at Kimberly-Clark Corporation (USA). organization lies with every individual

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within that organization. It is not be a part of creating this culture and large firm that had broken down the enough to hire a diverse team. Leaders modelling it.” traditional siloed approach to work, should work to ensure diverse voices During their research, Ms. Mundy where one lawyer only works on are heard and part of the decision- and Ms. Seuffert found two areas in certain issues/industries, into a team making.” which law firms appear to go beyond effort. While everyone is a “culture-carrier” the current best practice. “If a person only works in a certain in their own capacity, Mr. Schouten First, one of the firms had a series area they will become very proficient, notes, “Leaders cast long shadows of programs to ensure pay equity, but if that person wants to go part time and influence employees in the way including reviewing the performance or chooses flexible work, it can make it they behave and communicate, which appraisal process and lawyers’ salaries difficult to share the work,” says Ms. makes their role critical by embracing for gender bias. Seuffert. diversity and inclusion and role-model “This involves looking at pay Juan Acosta, Director of Litigation supporting behaviors.” raises and particularly at bonuses and Alternate Dispute Resolution Ms. Caboli suggests that ensuring and comparing them to performance at OlarteMoure (Colombia), notes that both men and women can take ratings to ensure that what lawyers are that most firms that have decided to advantage of these policies can benefit being paid reflects their performance invest in diversity in Colombia are self- all involved. without gender bias intervening,” said regulated. Many Colombian law firms “Our society stigmatizes men who Chasity Wilson Henry the research. have implemented different diversity decide to take time off from work to Mr. Winterfeldt adds: “Attorney practices, such as extended maternity spend time with their families. We need Networks make performance criteria should be applied and paternity leave and mentoring to have more men leading the way so a huge difference. You can fairly and transparently, particularly opportunities. we can all benefit, and women can see be introduced to others who so that diverse attorneys will have a “We are getting there,” says Mr. that it is acceptable,” she says. clear sense of what standards need to Acosta, “but we still believe there is a have already ‘made it’ Ms. Dean agrees: “It’s extremely be met for retention and advancement glass ceiling that has to be broken when important not to water down diversity and you can learn purposes.“ women face challenging positions in policies in anticipation of that from it. Second, the research found an which traditional views push them to resistance. We need men to actively example of a practice group in a decide between family and work.” l Better Business Development Many people dislike selling their skills, but business development is In today’s world we have to build relationships. an essential part of a good lawyer’s practice. Sarah Morgan reports. We have to sell. I know you don’t like that four-letter ou need to find your passion in “We tell ourselves a story that I’m While he said all lawyers should word but it’s true,” “Ylaw and be able to align your an introvert so I’m not very good at write articles and advertise, “being existing activities to what you want business development … and going to involved in public relations no longer to do,” said Mark Beese, President of a [meeting] like this is exhausting. But makes the phone ring.” Leadership for Lawyers, LLC (USA), that doesn’t mean you can’t be good at The distinction is that marketing told registrants yesterday during the business development,” he said. builds your reputation and business For the fifth and final mindset, Mr. Lunch and Learn session. Introverts have a particular set of development builds relationships. Beese emphasized the importance of Mr. Beese introduced registrants qualities that make for great business “In today’s world we have to build networks. “People hire people they to the basics of lawyer business development: they’re observant and relationships. We have to sell. I know trust, and they look for referrals from development, a concept that he said great listeners, they build relationships, you don’t like that four-letter word but other people,” he concluded. many lawyers seem to find challenging. and they’re often composed. it’s true,” he said. Beyond these tips, Mr. Beese “Do you think intellectual property Mr. Beese outlined “five mindsets” Second, stop thinking of business provided insight into necessary skills, (IP) lawyers are more introverted or required to improve a lawyer’s development as just selling to a client including using “verbal business cards” extroverted?” he asked the audience. No capabilities. First, realize there’s a but rather, think of it as helping them. (sometimes known as an “elevator response. “Since you’re so quiet, I’m going difference between marketing and This will make it easier to engage. pitch”), which he called a “powerful to assume introverted,” he continued. business development. Third, focus on your target market. tool” to help lawyers describe “Many of you are very skilled IP lawyers, themselves. and you can do it across the board,” Mr. “It doesn’t have to be pithy or cute. Beese said. But it’s rare that a client says, It has to work for you and be authentic ‘I’m looking for a generalist that can do and resonate with clients,” advised Mr. everything.’” Clients want someone who Beese, before asking audience members understands their specific needs, their to speak to each other and present their challenges, and their technologies. own verbal business cards. For the fourth mindset, Mr. Beese “Without saying ‘I’m a trademark presented an equation: attitude (a) plus lawyer,’ think about how you would behavior (b) plus capabilities (c) equals introduce yourself to somebody else in results (r). He said that most people the context of the problems you solve,” don’t have problems with “b” and “c”, he said. but sometimes get stuck with “attitude.” But why should lawyers undertake A bad attitude to business business development? development is exemplified in an First, it results directly in money. approach that relies on “a numbers Second, the more we do business game.” Some people think if you “just development, the more we have control tweet a lot” that will bring results, but over our careers, our lives, our practice,” Mark Beese outlines “five mindsets” to improve capabilities. that’s incorrect, he noted. Mr. Beese said. l

Published by: www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org 7 GDPR Wednesday May 22, 2019 GDPR’s First Anniversary of Implementation and WHOIS: Where Are Brand Owners Now? It’s been nearly a year since the European Union’s implementation of the General Directive on Privacy Regulation (GDPR). Lori Schulman, INTA’s Senior Director of Internet Policy, takes a look at where things stand today.

n a recent interview conducted at Ithe International Association of Privacy Professionals (IAPP) Global Privacy Summit in Washington, D.C., European Data Protection Board Chair Andrea Jelinek expressed that she is pleased with the first year of the GDPR because it has prompted a global discussion on privacy and “the sky has not fallen.” While it is true that GDPR compliance is becoming a norm for brand owners, it is equally true that access to critical brand enforcement information is still being masked industry studies have shown that these the right tools to combat cybercrime In the meantime, INTA continues without a reliable method of access. requests generally go unanswered and online infringement will be its advocacy outside of ICANN, The unforeseen consequences of GDPR or unresolved. An area in which provided in a timely manner. INTA meeting with EU Commission implementation in the domain name ICANN and INTA agree is that there representatives and participating in system continue to harm brand owners is a genuine need for a Uniform Access dialogues on Internet governance. and the consumers who they are tasked Model (UAM). ICANN has convened a INTA is preparing substantive with protecting. group of technical experts to explore comments in response to proposed Domain name registration data such automated solutions while the EPDP guidelines on the purposes of data as WHOIS has been masked worldwide is tasked with developing a reasonable collection for the performance of a by registries and registrars ever since and balanced policy. contract under GDPR. the Internet Corporation for Assigned The EPDP has been divided into two As INTA keeps a spotlight on this Names and Numbers (ICANN) put its phases. Phase 1 looked at the legitimate issue in the privacy realm as well Temporary Specification for WHOIS purposes and legal bases for collecting as in the domain name space, the data compliance with GDPR into effect and processing WHOIS data in relation Association’s strategic alliance with on May 25, 2018. As ICANN grapples to ICANN’s mission and contractual IAPP is helping to spread the word of with this issue as part of its Expedited relationship. Phase 2 will focus on Lori Schulman the unforeseen consequences of GDPR Policy Development Process (EPDP), access, and address any open questions implementation. IAPP leadership has law enforcement, brand owners, and from Phase 1. The open questions from been briefed on the importance of this cybersecurity experts are scrambling Phase 1 have caused great concern for GDPR compliance issue to brand owners. In addition, to find ways to obtain information INTA members as they do not fully is becoming a norm for INTA staff has been interviewed for on domain name registrants. To recognize enforcement of intellectual brand owners articles, and INTA volunteers presented help brand owners navigate the new property (IP) rights as a legitimate a panel at the IAPP Policy Conference landscape, INTA has prepared the purpose for data collection and in Brussels on this topic. WHOIS Toolkit, which provides direct processing. INTA encourages all of its members contact information for registrars. INTA’s full comments are available to follow the developments in WHOIS As of now, brand owners must on the advocacy section of inta.org. hopes that the direction of Phase 2 will and GDPR implementation, as these contact registrars directly with their INTA and IP stakeholders must now be made clearer when ICANN holds its policies will likely determine the way requests for WHOIS information. look to Phase 2 to provide greater clarity next meeting in Marrakech, Morocco brands enforce their rights on the While this may seem reasonable, several and certainty to the IP community that on June 24-27. Internet for many years to come. l

Stay Curious, Stay Tuned, and Stay Current! INTA’s first-of-its-kind podcast focuses on innovation and intellectual property. Listen on iTunes, Spotify, and Stitcher. www.inta.org/brandandnew

8 www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org Published by: World Trademark Review is pleased to announce the winners of the WTR Industry Awards 2019, revealed last night. Now in their 13th year, the awards shine a spotlight on the vital work performed by in-house counsel across the globe and identify the teams and individuals that deserve special recognition for their exceptional achievements over the past year.

WTR congratulates the award winners on their success and thanks its law firm partners for all their assistance in hosting such a memorable event. Winners revealed For more information about the awards visit Booth 918-920 in the exhibition hall or go to www.WTRIndustryAwards.com www.WTRIndustryAwards.com.

Asia-Pacific Team of the Year Healthcare and Life Sciences Team of the Year Sports, Entertainment and Media Team of the Year • Alibaba • Tencent • Novartis Pharmaceuticals • Specsavers • Discovery • Warner Bros • Louis Vuitton Malletier • Treasury Wine Estates • Pfizer • Zoetis • Home Box Office (HBO) Entertainment • Danone • Sandoz International • Nike Sponsored by Sponsored by • The Fédération Internationale Sponsored by de Football Association (FIFA) Winner Alibaba Winner Winner Zoetis The Fédération Internationale de Football Association (FIFA)

Europe, Middle East and Africa Team of the Year Household and Consumer Goods Team of the Year Technology and Consumer Electronics Team of the Year • Daniel Wellington • Sandoz International • The 3M Company • Spectrum Brands • Apple • Havells India • Jaguar Land Rover • The Swatch Group • Procter & Gamble • Unilever • Dell • Intel • Richemont • Reckitt Benckiser • Google Sponsored by Sponsored by Sponsored by

Winner Winner Winner Daniel Wellington Reckitt Benckiser Intel

Latin America Team of the Year Internet and Telecommunications Team of the Year Travel and Leisure Team of the Year • Enova Foods • Natura • Comcast • Sky International • American Airlines • InterContinental Hotels • Grupo Boticário • PepsiCo • Netflix • Verizon Communications • Caesars Entertainment Group • Grupo ZAP • RR Donnelley • EasyGroup • Uber Sponsored by Sponsored by Sponsored by

Winner Winner Winner PepsiCo Netflix Caesars Entertainment

North America Team of the Year Local Team of the Year Vehicles and Transport Team of the Year • Apple • Starbucks • Bose • ‘47 Brand • Audi • Toyota Motor Corporation • Home Box Office (HBO) • Under Armour • Dunkin’ Brands Group • Sage Therapeutics • BMW • The Volvo Group • Netflix • Harpoon Brewery • John Deere Sponsored by Sponsored by Sponsored by

Winner Winner Winner Home Box Office (HBO) Sage Therapeutics Toyota Motor Corporation

Fashion, Cosmetics and Luxury Goods Team of the Year Not-for-Profit Organisation Team of the Year In-house Leader of the Year • adidas • Christian Louboutin • Conservation International • The Scotch Whisky • Ali Buttars, Netflix • Judy McCool, HBO • Burberry • Louis Vuitton Malletier • Rotary International Association • Courtney Laginess, Mars • Daniel Zohny, Fédération • Chanel • The American Red Cross • The Wikimedia Foundation • Geoffrey Marr, Internationale de Football Sponsored by Canada Goose Association (FIFA) Sponsored by Sponsored by Winner Winner Winner adidas The Scotch Whisky Association Judy McCool, HBO

Financial and Professional Services Team of the Year Retail Team of the Year Lifetime • Mastercard • Nationwide Mutual • 7-Eleven • lululemon athletica Achievement • MetLife Insurance Company • Chewy • Target Corporation • NASDAQ • PayPal • Inter IKEA Holding Services Award Sponsored by Sponsored by Winner Jack Chang Winner Winner MetLife 7-Eleven

Food, Beverages and Tobacco Team of the Year Software and Online Services Team of the Year • Anheuser-Busch InBev • The Hershey Company • Airbnb • Honeywell International • Mars • Treasury Wine Estates • Amazon.com • Nintendo of America • PepsiCo • Groupon Sponsored by Sponsored by

Winner Winner Mars Nintendo of America

Visit booth 918-920 for more information about the awards. www.WorldTrademarkReview.com

STO-5323 WTR Industry Awards ad for INTA daily.indd 1 16/05/2019 17:31 SESSION PREVIEW Wednesday May 22, 2019 Africa: The Hot Ticket for Technology Brands operating in the field of cutting-edge technologies can no longer ignore Africa when it comes to protecting their intellectual property, as Sarah Morgan finds out

ith a moderator from South this intellectual property (IP) can be WAfrica and panelists from effectively enforced” in different African Kenya, Nigeria, and Zimbabwe, the countries, says Simonne Christina RW01 Regional Update: Protecting Moodie, Partner at Von Seidels (South Technology in Africa (Wednesday, Africa), who will moderate the panel. 10:15 am - 11:30 am) will evaluate how In addition, speakers will explore companies can protect technology how technology differs in how it is across the continent. used by people in Africa compared to Of interest to trademark practitioners those in the Western world, she says. and technology-based businesses Lorna Gathigia Mbatia, Partner at looking to branch out in Africa, the CFL Advocates (Kenya), will focus on panel will focus on “understanding East Africa and the unique IP rights what the leading and up-and-coming protection and enforcement issues in technologies are, how they can be the area. protected, and the extent to which She notes that a major enforcement issue in the region relates to the involvement of customs officials in IP protection. “Although the East African countries recognize and appreciate that the role of customs officials goes beyond collection of taxes, many do not have formal proceedings for customs official involvement in IP protection and as such, involvement of customs focus on Africa and its inspiring complex, and there are several legal, officials is usually reactive,” she says. proposition of Africa,” she says. “Far cultural, linguistic, jurisdictional, and Nancy Samuriwo, Partner, from the ‘Africa Rising’ theme of old, sometimes political issues that can Intellectual and Commercial Law at [this session will offer] a new view that arise from the implementation of an Samuriwo Attorneys (Zimbabwe), will suggests that not being in Africa is now IP strategy in Africa. It is advisable provide an “all-Africa” perspective, a material risk for tech clients.” for technology-based clients to invest Nancy Samuriwo discussing the nuances inherent in the Ms. Samuriwo will explain why in reputable local expertise in African two regional trademark registration proprietors need to have an Africa- jurisdictions for these clients to be best Far from the systems in Africa, which are provided specific strategy for trademark placed to navigate around potential ‘Africa Rising’ theme of through the African Regional protection, technology-based IP, the pitfalls.” old, [this session will offer] Intellectual Property Organization common challenges IP practitioners Okey Onyekanma, Founder and (ARIPO) and Organisation Africaine are likely to face, and how to overcome Managing Partner of Okey IP (Nigeria), a new view that suggests de la Propriété Intellectuelle (OAPI). them. will provide an overview of financial that not being in Africa is “While IP clients the world over One of these challenges is the lack of technology (FinTech) in West Africa — now a material risk for tech experience challenges in various investment in local counsel, according focusing on Ghana, Nigeria, and the larger clients. jurisdictions, the main difference with to Ms. Samuriwo. West African economies, and protecting this session is its special and authentic She adds: “African IP systems are and enforcing FinTech in West Africa. l

INTA and Kenya’s Anti Counterfeit Authority Sign Memorandum of Understanding

NTA and Kenya’s Anti Counterfeit combat counterfeiting; and coordinate IAuthority (ACA) signed a with national, regional, or international Memorandum of Understanding organizations involved in combating (MoU) on May 20, during the Annual counterfeiting. In order to support Meeting. The MoU is the culmination ACA’s efforts, INTA’s Anticounterfeiting of years of collaboration between Committee—Middle East and Africa the two organizations. It will guide Subcommittee has provided input on their future cooperation in areas that key documents and strategies. include trainings for customs and Prior to signing the MoU with ACA, enforcement officials, the promotion INTA President David Lossignol and of INTA’s Unreal Campaign, and the INTA CEO Etienne San de Acedo had organization of anticounterfeiting- a bilateral meeting with a high-level focused workshops and seminars. delegation from the Kenyan National ACA is the leading entity within Assembly, led by Honorable Justin the Kenyan government, established Muturi, a Member of Parliament and under the Anti-Counterfeit Act 2008 as Speaker of the National Assembly. a state corporation with the mandate During the meeting, Hon. Muturi to enlighten and inform the public announced the launch of Kenya’s on matters relating to counterfeiting; Intellectual Property/Trademark Caucus. combat counterfeiting, trade, and other The Caucus will be a tool to foster the dealings in counterfeit goods; devise promotion and protection of intellectual Elema Halake (L.), Executive Director of Kenya’s Anti Counterfeit Authority, and promote training programs to property rights. l and INTA President David Lossignol

10 www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org Published by: «Dreyfus is an award-winning IP law rm that delivers innovative, tailor-made solutions for the protection, valuation, and defense of IP rights. Dreyfus is also internationally recognised as an expert in the digital economy.» - WTR 2019 IN CASE YOU MISSED IT Wednesday May 22, 2019 Strengthening IP Rights in the ASEAN With new trademark laws and more countries acceding to the Madrid Protocol, the signs are there that intellectual property (IP) is in a stronger place than ever before in the ASEAN region and Australasia, as Rory O’Neill reports.

n Monday’s session RM50 Regional Protocol in the region. As Andrew Flagg IUpdate: Southeast Asia, Australia, Brinn Diamond, Foreign IP Consultant, New Zealand, panelists gave a positive Januar Jahja & Partners (Indonesia), assessment of the latest developments noted, Indonesia started accepting in trademark law across the region. international registrations under the As Catherine Su Yee Lee, Principal, agreement in January 2018, with a total Rodyk IP (Singapore), who moderated of 9,300 designations issued so far. the session, noted, “There has been On the other hand, uptake with recognition that IP plays a very respect to international registrations important role” in the achievement with Indonesia as the country of origin of the region’s social and economic has been limited. This is not for the want (L. to R.) Andrew Flagg Brin Diamond, Pauline Khor, and Joy Atacador development goals. of trying on the part of the Indonesian At present, 8 of the 10 countries authorities, Mr. Diamond noted. “Both however, nontraditional marks such as at Dentons Australia Pty Ltd (Australia), comprising the Association of Southeast Indonesia’s [Directorate General of 3D shapes still cannot be protected in said that in Australia there are improved Asian Nations (ASEAN) have acceded Intellectual Property] and its Creative Myanmar. procedures on the way “which will allow to the Madrid Protocol; Malaysia and Economy Agency have undertaken customs to seize goods even where a Myanmar are the exceptions. considerable efforts to educate and Enforcement Matters notice of objection hasn’t been filed by However, as Pauline Khor, Head of inform the public about this new While the trademark laws in force across a trademark owner.” Intellectual Property and Technology option,” he said, referring to registrations the ASEAN region may be improving, Perhaps the most significant at Rahmat Lim & Partners (Malaysia), with Indonesia as the country of origin how effectively are they enforced? development for brand owners in informed attendees, Malaysia is preparing “I think generally [Indonesian According to Mr. Diamond, Australia is the passage of the Intellectual to accede to the Protocol as part of a authorities have] done a pretty good job enforcement of trademark rights in Property Laws Amendment (Productivity number of milestone developments in in generating interest but to date that Indonesia is “still difficult, but it’s Commission Response Part 1 and Other Malaysian trademark law. interest hasn’t really led to a significant possible.” He noted that success largely Measures) Act 2018 into law last August. Noting that Malaysia last year number of filings,” he added. depends on a given brand owner’s Under the new law, “a parallel had its first change in its governing Darani Vachanavuttivong, Co- objectives. For example, the destruction importer will not be found to be political party since independence Managing Partner, IP Department, of infringing goods is “achievable,” but engaging in infringing conduct if, from the United Kingdom in 1957, Tilleke & Gibbins (Thailand), reported monetary damages or a public apology after making reasonable inquiries, it Ms. Khor said, “The way we are going similar success of the Madrid Protocol can be challenging to obtain. would be reasonable to conclude that about upgrading our trademark laws with respect to incoming international “The narrative which is fairly the trademark had been applied to is no different – we do nothing [for a registrations in Cambodia, Laos, true is that litigation in Indonesia is the product with the consent of the long time], and then we have massive, Myanmar, Vietnam, and Thailand, unpredictable, so it’s important to registered owner,” Ms. Atacador said. sweeping changes.” known as the CLMVT group of consider non-litigation options first,” The law also allows the parallel Among the changes currently countries. All of them except Myanmar Mr. Diamond said. He noted anecdotally, importation of goods under the making their way through the country’s have acceded to the Madrid Protocol that his firm has enjoyed a “significant reasonable assumption that the legislature is a new Trademarks Bill, since 2006. increase in success” with sending cease trademark had been applied to the which would update the 1967 legislation. and desist letters in recent months, product with the consent of either an If passed, according to Ms. Khor, it will which might be a good sign for brand “authorized user” of the mark; or a put Malaysia’s trademark statute “on Essentially what we owners with IP assets in the country. person permitted to use the mark by an par with the current laws in the UK” and are doing is lifting our In Malaysia, the forthcoming authorized user or the registered owner. enable accession to the Protocol. trademark laws up trademark reforms may make it easier Ms. Atacador also noted that an “Essentially what we are doing is lifting for brand owners to litigate their “express IP exemption” in Australian and complying with our trademark laws up and complying rights, Ms. Khor said. The bill includes competition legislation had been with international standards,” she said. international what, in her view, is a “lower threshold removed, and that similar changes were Under the proposed law, it would be standards. for infringement.” also being adopted in New Zealand. possible to file trademark applications Whereas brand owners at present can “If you have a client with an in different classes, as well as for non- sue for infringement only if there is a agreement with a licensee who would conventional registrations such as 3D, Incoming registrations have been “direct match with the goods and services otherwise be a potential competitor, it single color, and shape marks. continually increasing in each of for which [the mark] is registered,” under might be that those prior agreements Malaysia would be the latest in a these four countries. Thailand, for the new law, infringement suits could be need to be reviewed to check if they fall series of recent accessions to the Madrid example, recorded a record high of filed over merely “similar goods” as long foul of competition legislation,” she 6,625 international registrations in as the plaintiff can demonstrate genuine advised. l 2018, while, according to the latest confusion among consumers between data, there have already been 3,253 the marks. such registrations in 2019, Ms. Ms. Vachanavuttivong also provided INTA’s 2019 Asia Vachanavuttivong said. a positive update on enforcement in Conference: Brands in Just as Malaysia is debating sweeping the CLMVT countries, noting that Changing Times will take changes to its trademark system, Ms. the Cambodian Counter-Counterfeit place in Kuala Lumpur, Vachanavuttivong reported a major Committee is “now a very effective Malaysia, October 17–18; change to the law in Myanmar, which last organization,” while “the police in Laos and INTA’s 142nd Annual year adopted a new trademark statute. are quite effective and fast in handling Meeting will be in Singapore The law replaced older regulations enforcement actions.” dating back to 1908, she said, marking Echoing the positive report for brand April 25-29, 2020. Catherine Su Yee Lee (L.), significant progress in the country’s owners from the ASEAN jurisdictions, Visit www.inta.org and Darani Vachanavuttivong IP protection regime. Unlike Malaysia, Joy Atacador, Head of IP & Technology

12 www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org Published by: Wednesday May 22, 2019 NEWS There’s No Place Like Home Geographical indications can be powerful tools to maintain the quality and reputation of regional brands—but protecting them can take patience and persistence.

the rainfall, create an agro-climatic Some GIs Are Too Famous condition that has given rise to The Protection of Champagne Darjeeling’s famous muscatel flavor The Champagne GI is one of the since the tea was first planted in 1845. best-known in the world and, as with Darjeeling tea gardens are nearly 175 Darjeeling, a unique location and set of years old and the Indian Tea Board has circumstances give it a distinctiveness engaged in the protection of Darjeeling that permits GI protection. as a GI around the world since 1986. “As you know, the protection Yet, in general, Latha R. Nair, Partner of Champagne has an historical (L. to R.) Latha R. Nair, Fernando Triana, Enrique A. Diaz, and Luís Fernando Samper at K & S Partners (India), noted, “It background. It’s grown as a sparkling is very challenging to be born a ‘non- wine in a very particular region of t yesterday’s session CT20 The which they are produced,” he said. “The wine’, ‘non-spirit’ GI in a developing France,” said Mr. Triana. “The method AExperience Around Geographical use of a GI or AO also allows consumers country.” of producing Champagne implies the Indications and Appellations of to identify a product’s quality based on Both GIs and trademarks affect way the wine is poured into the bottle Origin for Champagne, Darjeeling the characteristics of the area in which brands, she explained. “However, and rotated over a period of years.” Tea, and Colombian Coffee, it’s produced.” protection of GIs is so very challenging While the method is not exclusive to panelists discussed how geographical But these protections are not always because there is no level playing field the Champagne region, only sparkling indications (GIs) and appellations of readily available. “In many countries, for GIs,” she said. “Unlike trademarks, wine that comes from that region may origin (AO) can help safeguard the AOs and GIs are not even protected,” the protection of which is streamlined legally be called “Champagne,” he said. distinctiveness of regional products. Mr. Triana said. around the world, GIs are protected in Since 1844, the GI for Champagne has Fernando Triana, Founding Partner different parts of the world through been strongly protected and heavily at Triana, Uribe & Michelsen Ltda Not all GIs Are Equal different systems.” litigated. (Colombia), who moderated the panel, The Story of Darjeeling “I want to say that while all GIs are “We’ve been successful in blocking laid the foundation for the discussion Darjeeling tea is grown in sloping equal, some GIs are more equal than infringements, but the problem in by defining the value of GIs and AOs. terrains in the Lesser Himalayas at others. It is not a complaint, but a the past three or four years is that “Geographical indications are a way altitudes ranging from 600 to 2,000 dispassionate reflection arising from many registrations were granted for to highlight specific qualities of goods meters above the sea level. This unique my representation of all kinds of GIs,” ‘Champagne,’” explained specific to the geographical area in climate, combined with the soil and Ms. Nair said. Enrique A. Diaz, Senior 14

Pakistan Office

Published by: www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org 13 IN CASE YOU MISSED IT Wednesday May 22, 2019 Choosing the Right Path to Protection When it comes to rights protection, intellectual property (IP) owners have a variety of options, each with advantages and disadvantages, as Saman Javed finds out.

n Monday’s session CM50 Interplay IBetween Designs, Copyright, and Trade Dress—Overlapping or Coexisting, which was moderated by Simon Brown, a Partner at Adams & Adams (USA), panelists discussed the challenges associated with different types of protection in their various jurisdictions. Imogen Fowler, a Partner at Hogan Lovells (Spain), said anybody who has filed a trademark with the European Intellectual Property Office (EUIPO) in (L. to R.) Diego Palacio, Ray Zhao, Imogen Fowler, and Simon Brown the last few years would have found it is becoming increasingly difficult to get One way in which brands are unregistered or registered community Nonetheless both copyright and design particular types of marks approved. protecting their marks is through trade designs are available. patents can provide alternatives to or “The first place we saw things dress. However, this can only be done Since there is no detailed supplement trademark protection. change was in the context of 3D marks. at a national level as an “unregistered examination required to obtain these In the United States, brand owners Effectively, the law now says that a shape right” because trade dress does not exist rights, Ms. Fowler said, it makes them can protect product packaging and has to depart significantly from the as a specific category for protection in “really quick to register.” product design in the form of trade norm in order to be registerable. That the European Union. In China, in contrast, design patents dress protection. bar is very high, it’s very hard to prove,” Ms. Fowler noted how this is further are available. Ray Zhao, Partner at Diego Palacio, Attorney at Palacio she noted. “So if you’re trying to file a 3D complicated by the fact that national Unitalen Attorneys At Law (China), & Asociados (Argentina), said trade mark based on inherent distinctiveness, laws differ from country to country. explained that in order to qualify for dress protection is a “source indicator I would say good luck to you.” “An unregistered right in Spain will not protection, design patents must be for consumers, which helps avoid the Ms. Fowler cited two examples in be the same as in Bulgaria,” she added. novel, fit for industrial application, and likelihood of confusion.” which the EUIPO rejected applications This means that there is no clear scope artistic. To qualify for trade dress protection, to register 3D shape marks for for the right across Europe. “There is no substantial examination the product packaging must be non- confectionary, noting: “These are There are no fees applicable for for design patents in China. Often functional, must not be essential to very well-known trademarks, which unregistered rights, but they can be companies file design patents, and the use or purpose of the product, and are quite unique shapes. I would have expensive to enforce because it is as long as you meet the formality must not affect the product’s cost or thought they would be inherently necessary to demonstrate “serious requirements, the applications will be quality. distinctive, but they didn’t meet the evidence of unfair competition approved,” he said. The packaging must be inherently threshold.” and actual confusion” to prove While this makes approval distinctive or acquire distinctiveness by She added that it has also become infringement, she said. extremely fast, the lack of substantial secondary meaning, while the design is more difficult to register 2D marks, A category for design patents also examination can result in disputes considered inherently non-distinctive with the EUIPO rejecting applications does not exist in the EU. Instead, when two companies file the same and must acquire distinctiveness by for marks that feature “non-distinctive design, he noted. secondary meaning. words and logo elements.” Copyright applications in China Mr. Palacio said that in the U.S., trade Mr. Brown said that “while a are also not subject to examination, dress protection lasts indefinitely, as long lot of lawyers are more focused on Registries don’t share meaning they can be issued in as little as it is being used. Additionally, brands trademarks than any other form of information, so it can as a month, Mr. Zhao said. can obtain protection after a product IP, given the difficulties of securing be difficult to find what However, copyright is registered on has been made available in public. This is trademark rights, certainly in the works are already a regional basis in the country but the important because, in some cases, public non-traditional sphere, it’s becoming protected. “registries don’t share information, so disclosure can be helpful to establish increasingly important to look at other it can be difficult to find what works acquired distinctiveness, which can be aspects of IP.” are already protected,” he added. difficult to prove. l

There’s No Place Like Home (continued)

13 Partner at Goodrich, Columbia in 2005, and subsequently important tool to protect collective Riquelme & Asociados became recognized in Peru, Ecuador, rights.” (Mexico). “We have had some cases and Bolivia. It was also the first non- Earning this status holds great involving Champagne in Mexico as well.” European protected GI in the European value for Colombian coffee makers and “While it may be easy to oppose Union in 2007 and the first protected the Colombian people. “Coffee is very While it may be easy to an infringement when it’s related to GI in Switzerland in 2013. important for Colombia, and has a lot of oppose an infringement goods, it’s not always a red line in how Since the emergence of highly social significance for many. In fact, half of when it’s related to goods, to oppose it when it comes to a service,” recognized global coffee chains, the the towns in Colombia produce coffee,” he it’s not always a red line in he said, noting that there are even some perception of quality coffee brands said, emphasizing the added “intangible” schools with the name “Champagne.” has shifted, and the Colombian coffee value GI protection brings to a product and how to oppose it when it strategy had to evolve. “We came out the perceived quality of a product. comes to a service. The Intangible Value of GIs with a protected GI as part of this “Once you have GI protection it can Promoting Colombian Coffee strategy,” explained Luís Fernando be very powerful,” he said. “It takes a Café de Colombia became recognized Samper, Founder and President at lot of effort – but once you get it, it can Enrique A. Diaz as a denomination of origin in 4.0 Brands SAS (Colombia). “[It] is an be very useful in legal terms.” l

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Asia Conference BRANDS IN CHANGING TIMES 2019 Innovate. Protect. Enforce. Grow. www.facebook.com/INTA #INTA2019 @INTA2019 web www.inta.orgRegistration opens June 5th. Published by: www.inta.org/kualalumpur2019 17–18 October 2019 BEIJING HONGKONG SHENZHEN SUZHOU W UHAN NINGBO Kuala Lumpur, Malaysia

Published by: www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org 15 DATA ANALYTICS Wednesday May 22, 2019

Mr. Shaprio spent eight years at eBay Inc. (USA), where he created The Data Holds the Answers the auction site’s first-ever brand protection team. Now at Red Points, Efforts to combat online counterfeits have made data analytics a he represents one of the many service providers in the competitive “brand brand’s best friend, while prompting innovative lawyers to transform intelligence” industry. their practices, says Tom Phillips. “Data is the foundation of every investigation. You need others to do that, but you need data to start the process,” Mr. Shapiro says. During the past decade or so, he has seen e-commerce take a bigger and bigger slice of brands’ overall revenue. “It used to be that 25 percent of a brand’s business came from brick and mortars. Today we have brands signing up to Red Points that are 100 percent e-commerce and don’t have any brick and mortar stores,” he said. “We’re seeing new marketplaces pop up every week. They may be transactional, like Alibaba, or peer-to-peer like Craigslist, but this changes the face of e-commerce.” he opportunities provided tracing online transactions, IP lawyers Alastair Rippon, IP & Brand The problem of counterfeiting has Tby e-commerce are obvious. are increasingly able to use data to fight Protection Director, Union-Swiss (Pty) been exacerbated by the growth of Online shopping habits vary between back against the counterfeiters. Ltd. (South Africa), relies on tried and social media platforms. Legitimate countries, but most statistics show that tested methods to manage the skin care selling spaces have teams dedicated businesses are experiencing a steady The Law Firm brand’s online protection. to removing illegitimate sellers. But it year-on-year increase in the percentage Aaron Newell, Partner in the Trade “We are very diligent at recording is the users, or those masquerading as of total revenue from a click on a screen Marks & Designs Group at JA Kemp relevant data that comes out of our users, that have turned social media or a tap on a phone. (United Kingdom), has been working various work streams. And then we counterfeiting into a trillion-dollar The data culled from these in trademark law for 12 years. ‘work’ the data as required,” explains industry. transactions are essential for all online Mr. Newell has developed a domain Mr. Rippon. Says Mr. Shapiro: “I’m talking about businesses to inform decisions about name dispute management system selling within posts on Facebook, their product lines, regional expansion, that receives alerts about new domain Instagram, Twitter, WeChat, Pinterest and customers’ buying habits. name registrations. Industries such … all these places where a user claims And the huge popularity of social as fashion, automotive, and software to have an ‘authentic Manchester media platforms has turned scrolling on in particular suffer high volumes of Data is the foundation of United jersey. Let me know if you’re a cell phone into a shopping experience, illegitimate domain registrations. every investigation. You interested.’” as Instagram, Facebook, and Pinterest Built in-house, the system is the need others to do that, but It’s no wonder that companies like grow their e-commerce activities. culmination of experience that grew you need data to start the Red Points use data search software. Also growing, at an alarming rate, is organically over his career, as he process. With billions of items for sale, the the volume of online counterfeits. gradually became the “go-to” guy for old method of brand protection— A U.S. International Chamber of online brand protection issues. people physically searching the web— Commerce 2017 report—The Economic “The online brand protection is simply not scalable to meet the Impacts of Counterfeiting and Piracy— platforms have real people—analysts— Dan Shapiro challenge. estimated the global economic value looking at the data. But the analysts “As a brand intelligence provider of counterfeiting and piracy will reach aren’t lawyers. They can’t always tell you need to use technology to solve a US $2.3 trillion by 2022. the client the best thing to do with that He notes that “odd as it may sound,” technological problem,” Mr. Shapiro The report predicts that by data. That’s the gap we’re trying to fill.” the brand just uses relatively simple MS emphasizes. But there is more to the 2021, counterfeit trade could drain Big brands could see as many as Excel databases to record data. “I’ve data hunt than understanding what is US $4.2 trillion from the global economy 5 to 50 domains for counterfeit names looked around for various systems, being counterfeited and where. annually, and put 5.4 million legitimate being registered per day, so there is but they seem expensive, and we find Other tasks are more complex, jobs at risk. plenty of work available in this vein. that working with Excel we’re forced to like combatting the issue of “price In many ways, an Internet sale The question is, do clients want it? understand the related processes,” Mr. compression.” In this scenario, is a two-way street. While there are “There’s always a profitability issue. If Rippon says. “It’s about the flexibility you which Mr. Shapiro has “seen 100 significant challenges associated with you’re lucky enough to have a big brand as have to evolve and improve your system.” times,” a counterfeit product is a client you’re going to get 20 [illegitimate] He admits he might try an “off-the- sold at a reduced price for so long domains daily. That can eat up an hour or shelf” service, but it would have to be that customers get used to it—and two of every day,” Mr. Newell explains. customized to his brand’s situation. then reject the original as being too Mr. Newell has even filed trademark “For us, the fun of working is expensive. applications and found domains using looking for a better way … or the best This results in a nasty surprise for We are very diligent at the same mark the very next day. “It way, for our specific needs,” he says. brand owners, when an expected uptick recording relevant data that just shows the people who do this in sales does not materialize. comes out of our various are keeping an eye not only on what’s The ‘Brand Intelligence’ Provider The methods used to crunch data work streams. happening in business but also on the One man who has been recording, across the intellectual property industry trademarks register,” he says. shifting, and analyzing e-commerce vary alongside the various different data since the early days of web approaches to brand protection. There The Brand marketplaces is Dan Shapiro, Director, is no one-size-fits-all approach. The Alastair Rippon Some prefer a more homegrown system Global Strategic Partnerships, Red only constant is the growing number of of data management. Points (USA). counterfeiters. l

16 www.facebook.com/gointa #INTA2019 @intaglobal web www.inta.org Published by: Wednesday May 22, 2019 NEWS Finding the Right Brand Balance The Internet has revolutionized the way brands reach their customers, but it’s also forced them to tackle new threats. Sarah Morgan reports. f you’re looking for practical tips on media landscape is “changing and Ihow to protect your brand online, becoming more open to IP protection, Session RW20 Regional Update: but at the same time making it more How Do Brand Owners Balance the difficult for brand owners to prove they Benefits versus Risks of Joining Social own their IP.” Media and E-commerce? (Wednesday, Session attendees will also gain 11:45 am–1:00 pm) is not to be missed. insight into recent trademark Presenters will specifically address infringement cases centered on trademark-related issues surrounding adwords and keywords in South Korea, e-commerce in China, Hong Kong SAR, including tax obligations for brand Japan, South Korea, and Taiwan. owners advertising via YouTube in The rise of social media and Taiwan. e-commerce presents myriad Hitomi Iwase, Partner at Nishimura opportunities for brand owners, creating & Asahi (Japan), will talk about the risk new markets, and opening new channels related to the use of social media in to access existing markets, says Benjamin marketing in Japan. Morris, Partner at PI IP LAW (LEE, PARK “The use of social media is a & MORRIS) (South Korea). powerful and effective marketing tool, However, along with these new but once an incident happens, it can opportunities comes an array of new Of particular concern to Mr. Morris values or beliefs, and aren’t afraid to affect a lot as well. Companies should dangers, as brands attempt to navigate is the potential for infringers to evade call them out on it. In fact, calling out be aware of the risks and be prepared an online environment. current controls. brands is now even easier—your brand for them,” he concluded. l “Many online platforms have can lose value overnight if it’s the target already put in place mechanisms for of a campaign on social media,” says taking down infringing contributors Ms. Chen. How you handle the crisis to their platforms,” he says. “In many can make or break your brand. cases, the take-down policies follow At the same time, she adds, if a very simple algorithm. It is easy to how you present your brand online see how such a system can be abused resonates with consumers, “then by third parties to potentially disrupt you are in a great position to attract legitimate operations by simply filing even more loyalty. But it has to be illegitimate complaints.” authentic,” she adds. The ease with which users can create At today’s session, Ms. Chen will anonymous accounts on social media share why it’s important for brands platforms only increases the risk of to take a serious look at e-commerce infringement. Mr. Morris adds that and social media opportunities in anonymous accounts can make it very Taiwan. Taiwan is “often overlooked challenging for intellectual property but boasts a well-developed economy Rosita Li (IP) owners to take legal action,“since it and recently ranked as the 17th richest Christine Chen may be very difficult or even impossible country in the world,” she notes. to determine the identity of an “Taiwan is an exciting place to connect Taiwan is an exciting place (The Chinese social media infringer.” with consumers as people are open to Christine Chen, Partner at Winkler products from both the East and West.” to connect with consumers landscape) is changing and Partners (Taiwan), cites the issue Rosita Li, Partner at Mayer Brown as people are open to becoming more open to of authenticity as both the biggest (Hong Kong SAR), and moderator of products from both the East IP protection opportunity and the biggest threat. the panel, will share best practices for and West. “Consumers are increasingly aware the Hong Kong and China markets. of those brands that stray from their She will discuss how the Chinese social Join us!

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For more information and to sign up for the Unreal Campaign Challenge, visit us at the Unreal Campaign Booth next to the Information Desk located at the NE Lobby A/B1 of the Boston Convention and Exhibition Center. www.inta.org/unrealcampaign

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Singapore | April 25–29, 2020

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iit www.inta.org/program to larn mor. daily news schedule Wednesday May 22, 2019

START END NAME LOCATION*

7:30AM 2:00PM Registration Hall B1

7:30AM 2:00PM Hospitality Hall A

8:00AM 9:00AM Sponsors Breakfast (By invitation only) 151 A

8:00AM 10:00AM Continental Breakfast Hall A

8:00AM 10:00AM BREAKFAST TABLE TOPICS 253 BC

COMMITTEE MEETINGS

8:00AM 10:00AM Resources Group 253 A

8:00AM 10:00AM Communications Group 252 A INTA DAILY NEWS ADVERTISING SPECS 8:00AM 10:00AM Advocacy Group Council 257 AB

8:30AM 10:00AM Financial Services Industry Group 151 B

9:00AM 10:00AM Canadian and Australian IPO Meeting 153 C DAY 4 INTA_Newsletter 2019_4.pdf 1 05/04/2019 16:48 9:30AM 10:30AM 2020 Europe Conference 153 B

10:00AM 2:00PM Exhibition Hall Hall A

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Y 10:15AM 11:15AM Global Advisory Councils Co-Chairs and Staff Liaisons 252 B

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MY CONCURRENT SESSIONS

CY Ballroom 10:15AM 11:30AM CW01 Annual Review of U.S. Federal Case Law and TTAB Developments East - West CMY CW02 Abolishing Graphical Requirement: Impact and Practical Examples of This New (Non) Requirement K 10:15AM 11:30AM 205 AB Before EUIPO and EU National Offices

10:15AM 11:30AM RW01 Regional Update: Protecting Technology in Africa 210 C

COMMITTEE MEETINGS

10:30AM 11:30AM DMTA/ODR Group 152

INTA_Newsletter 2019_5.pdf 1 05/04/2019 16:48 DAYContinued 5 overleaf

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www.facebook.com/INTA #INTA2019 @INTA2019 web www.inta.org Published by: daily news schedule Wednesday May 22, 2019

START END NAME LOCATION*

10:30AM 11:30AM SPEED NETWORKING Hall A

10:30AM 12:00PM In-House Practice of the Future Think Tank Expert Group 259 A

COMMITTEE MEETINGS

11:30AM 12:30PM Latin American Corporates 151 B

11:30AM 12:30PM Group Officers and Staff Liaisons 252 A

11:30AM 12:30PM Bad Faith Group 152

CONCURRENT SESSIONS

11:45AM 1:00PM CW20 Mastering the Protection of GUI 205 AB

11:45AM 1:00PM CW21 Advertising and Branding Restrictions (Interplay of Regulatory, Right of Publicity, and TM Issues) 210 AB

RW20 Regional Update: China–How Do Brand Owners Balance the Benefits versus Risks 11:45AM 1:00PM 210 C of Joining Social Media and E-commerce?

COMMITTEE MEETINGS

12:00PM 1:00PM Media, Music, Entertainment, Arts and News Industry Group 151 A

12:00PM 1:00PM SPEED NETWORKING Hall A

COMMITTEE MEETINGS

1:00PM 1:30PM Enforcement/Anticounterfeiting South Asia Meeting 152

1:00PM 2:30PM Intellectual Property Constituency (IPC) Meeting 205 C

1:00PM 3:00PM INTA Foundation Meeting 102 A

1:15PM 3:15PM LUNCHEON TABLE TOPICS 253 BC

Museum of 7:00PM 11:00PM Grand Finale - A Night of Experiments Science

Grand Finale shuttles will be provided and will be making roundtrips for the duration of the event beginning at 6:30 pm until 12:00 am, focusing on returns beginning at 9 pm. If you are in a hotel that is on the daily shuttle route, shuttles will pick up from the same location. Registrants at Westin Boston Waterfront, Aloft, and Element Hotels will take the shuttle from the D Street Entrance outside the Westin Waterfront Hotel. Guests at the Renaissance Waterfront will pick up the shuttle on Congress Street, and Yotel Guests will pick up on Seaport Blvd. This is Route #7 for the Grand Finale ONLY. Remember to bring your badge or Grand Finale wristband to board the shuttle and to enter the Grand Finale, as no registration will be available on the shuttle and you will not be allowed entrance without either.

The launch sequence of IPC Renew, by IP Centrum, marks the final few weeks of the renewals industry as we’ve all known it to date. After five years of development, we are proud to finally introduce to the world’s greatest IP formalities professionals, the future of renewals.

Follow the launch: @ipcentrum Sign up for early access: www.ipcentrum.com/renewals

LAUNCH SEQUENCE

START UP MIGRATION TEST OK PINST 1 P2 PARTNER ONBOARDING CINST 1 CAUTO 1 P2 CLIENT ONBOARDING EPV MIGRATION

PROD ENV P1 PARTNER ONBOARDING PAUTO 1 G2 PR SEPARATION P1 CLIENT ONBOARDING G2 CR SEPARATION G2 SHUT DOWN

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