MessagingToolkit Strategic Plan

Transcription

1 Why are trademarks important? Trademarks play an essential role in protecting consumers and in promoting global economic growth. Trademarks promote freedom of choice and enable consumers to make quick, confident and safe purchasing decisions. Trademarks and other IP encourage vibrant competition that benefits consumers, job holders, brand owners and society at large. Recent government reports published in Europe and the United States demonstrate how IP-intensive industries contribute an average of 37% to their respective GDPs (gross domestic product values). IP supports millions of jobs across multiple industries. These jobs have wages that are notably higher than in non-ip industries 40% higher in the EU and 42% higher in the United States. Of the IP-intensive industries, trademark-intensive industries account for the highest percentage of both total employment and GDP. Key studies: Brands Reputation and Image in the Global Marketplace (WIPO 2013) Intellectual property rights intensive industries: contribution to economic performance and employment in the European Union (EPO and OHIM 2013) Intellectual Property and the U.S. Economy: Industries in Focus (USPTO 2012) What is INTA? The International Trademark Association is a global association of trademark owners and professionals dedicated to supporting trademarks and related intellectual property in order to protect consumers and to promote fair and effective commerce. Membership: INTA s members are more than 6,500 organizations from 190 countries. INTA members collectively contribute almost US $12 trillion / 8.8 trillion / 73 trillion to global GDP annually. For comparison, the 2013 annual GDP of the top three markets was $9.2 trillion (China), $17.9 trillion (European Union) and $16.7 trillion (United States). INTA s member organizations represent some 30,000 trademark professionals and include brand owners from major corporations as well as small- and medium-sized enterprises, law firms and nonprofits. There are also government agency members as well as individual professor and student members. Global presence: INTA undertakes advocacy work throughout the world and offers educational programs and informational resources of global interest. The Association has headquarters in New York City, offices in Brussels, Shanghai and Washington, D.C., and representatives in Geneva and Mumbai Strategic Plan INTA s Strategic Plan has four directions: 1. Protection of Trademarks Promoting harmonization Protecting marks on the Internet 2. Communications Explaining benefits of trademarks and IP for consumers, national economies and society at large Stating INTA s policy positions to members and other stakeholders 3. International Expansion Allowing more targeted advocacy and expanding educational programs Creating stronger relations with IP offices and associations Fostering meaningful participation from international member volunteers 4. Member Satisfaction Promoting the value of volunteer participation to corporate and firm decision-makers Developing opportunities for volunteers to contribute to INTA and further their careers Volunteer Involvement: To implement the Strategic Plan, more than 3,000 talented and dedicated volunteers serve on INTA s 183 different committees, subcommittees and project teams. The Association s committees form three major groups: Education and Services Policy Development and Advocacy Law & Practice Resources Except for a few limited categories, INTA membership is not by individual but by organization. Every employee at a member organization s location can take advantage of member benefits and can volunteer for a committee, project team or other service opportunity. Presidential Task Forces: In March the three task forces created by 2014 INTA President Mei-lan Stark presented their final reports. They also This update: May 2015 Next update: August 2015

2 2 provided suggestions on how to incorporate their findings into the Association s structure in order to further the goals of INTA s current and future Strategic Plans. Their reports included the following recommendations: Committee Structure and Participation Task Force: 1. Implement new Committee Structure, Groups. 2. Create new opportunities for volunteers to participate within INTA. 3. Adopt enhanced Nominating Committee Guidelines and revise the Nominating Committee Timeline. Brands and Innovation Task Force: 1. Prioritize Brands and Innovation in future Strategic Plans. 2. Form a Brands and Innovation Committee under the new Committee Structure. 3. Sponsor, commission, and conduct additional research on the topic of Brands and Innovation to inform the Association s advocacy efforts, educational programming and communications strategy and initiatives. Building Bridges Task Force: 1. Prioritize Building Bridges in future Strategic Plans. 2. Form a Building-Bridges Committee under the new Committee Structure. 3. Develop a Bridge-Building Plan to identify target organizations, key messages, communications channels and measures of success President J. Scott Evans has created a fourth task force on Association Governance. Among other objectives, this task force will examine the Association s governance structure and by-laws. Global Advisory Councils: INTA s Global Advisory Councils focus on eight regions that are critical for advocacy efforts and membership growth: Africa, Asia, China, Europe, India, the Middle East, Latin America and North America. The councils meet quarterly, in person or via conference call, to share information and coordinate the Association s activities within and across regions. Policy Development and Advocacy Recent Achievements: January China Delegation: In January 2015, INTA leadership, staff and members undertook a delegation tour to Beijing, China. The delegation met with high-level officials from the CTA, National Leading Group, SAIC and the SPC. INTA also hosted two seminars for local members on online counterfeiting and brand-building for overseas markets. Draft Provisions of the Supreme People s Court (SPC) of China: In November 2014, INTA submitted comments to the SPC on several issues concerning the hearing of administrative cases involving the granting and confirmation of trademark rights, touching upon a number of key issues for Chinese and international brand owners, including bad-faith registrations and determination of well-known marks. February India Delegation: As part of INTA s annual delegation visit to India, 2015 INTA President J. Scott Evans (Adobe Systems Incorporated, USA) and INTA CEO Etienne Sanz de Acedo traveled to New Delhi in early February to meet with officials, engage with local media and participate in a one-day conference titled India Emerged: Protecting Your Brand in India s Evolving Economy. Draft of the National Intellectual Property Policy for India: In January 2015, INTA submitted comments to India s IPR Think Tank on the first draft of its National IP Policy for India. Included in the comments were comprehensive recommendations and enhancements aimed to serve users of the IP system and promote economic and social progress in India ASEAN Delegation: INTA 2015 President J. Scott Evans addressed the ASEAN IP Association general meeting in Bangkok in March marks the formation of the ASEAN Economic Community and President Evans remarked on the growing importance of harmonization of trademark laws within the region. MOU with Ministry of Science and Technology (MOST) Inspectorate of Vietnam: In March INTA signed an MOU with MOST. INTA is working with MOST Inspectorate on a research project looking into the protection of well-known marks in Vietnam. Madrid Protocol: In February 2015 INTA submitted comments to the Hong Kong SAR to show support for their proposed application of the Madrid Protocol. In late 2014 INTA welcomed the accession to the Madrid Protocol by Zimbabwe and the Organisation Africaine de la Propriété Intellectuelle (OAPI), which represents 17 nations across eastern and central Africa. United States Congressional Trademark Caucus: In September 2014, INTA announced with congressional leaders the formation of the first bicameral, bipartisan Congressional Trademark Caucus (CTC) in the U.S. Congress. The CTC is the result of INTA s successful outreach effort to Members of Congress about the negative impact trademark counterfeiting is having on economic growth, national security and the health and safety of all consumers. INTA is committed to ensuring that the newly formed CTC serves as an effective voice for trademark matters for years to come. European Trademark Reform Review of the Community Trade Mark Regulation (CTMR) and recast of the Trade Marks Directive (TMD): The

3 European Parliament, Council and Commission are now in the process of negotiating a final text on the CTMR and the TMD. The remaining issues requiring political compromise include use of the OHIM surplus, level of fees, trademark rights limitations, classification rules, administrative cancellation and invalidity procedures as well as some OHIM governance related-issues. A final text is expected in early summer. INTA continues to advocate for a more efficient and harmonized European trademark system. Canada s Bill C-31: The omnibus budget implementation bill, which includes substantial amendments to the Trade-marks Act, received Royal Assent in June The amendments will allow Canada to accede to the Madrid Protocol, the Singapore Treaty and the Nice Agreement and also make major revisions to the Canadian trademark system and practice. INTA s Canadian IP Office Subcommittee took the lead on analyzing the legislation and providing input to the government whenever possible and is now preparing comments on the public consultation regarding the implementing regulations. Once those regulations are promulgated, the new law is expected to go into effect sometime in INTA Positions on Selected Issues: New gtlds: INTA has worked to help secure the establishment of adequate rights protection mechanisms (RPMs) for trademark owners. INTA will continue to engage with ICANN as a founding member of the Intellectual Property Constituency to monitor and analyze these RPMs and to ensure that the ongoing innovation of the Internet is balanced with the need to address trademark infringement in the online environment. See INTA Board Resolution*: Creation of New gtlds and Trademark Protection. * INTA s Board of Directors adopts formal positions on key issues. These resolutions are based on in-depth analysis by specialized committees. Plain Packaging: INTA is monitoring this issue closely to determine how it will impact trademark owners and consumers. INTA is particularly concerned that plain packaging legislation affecting the tobacco industry could trigger additional regulations across all sectors of consumer goods. Overzealous Enforcement: The perception of over-reaching by trademark owners is often founded upon a lack of understanding of the legal issues involved in trademark law. Small businesses and consumers benefit from trademark laws as much as large corporations do. Trademark owners of all sizes must remain alert to threats to the integrity of their marks but must exercise a balanced restraint in enforcing their rights. The interests of brand owners large and small as well as consumers are served by the established practices and rules in litigation. INTA has not adopted a formal position. Amicus Briefs: In October, INTA submitted a brief to the U.S. Supreme Court in the case of Hana Financial, Inc. v. Hana Bank to support the Ninth Circuit s decision in favor of Hana Bank finding that it had priority use of the HANA trademark as a result of the doctrine of tacking, taking the position that continuing commercial impression is a question of fact. On January 21, 2015, as advocated by INTA in its amicus brief, the Court ruled that trademark tacking cases require a determination of whether two different iterations of the same mark create the same continuing commercial impression, and that the inquiry is therefore a question of fact to be decided by a jury. In B&B Hardware, Inc. v. Hargis Industries, Inc., INTA submitted a brief to the U.S. Supreme Court stating, although preclusion should not apply, district courts should be able to decide whether to give any deference to a prior determination of the Trademark Trial and Appeal Board on individual factors that might be considered in the broader analysis of whether confusion is likely. In March, the Court held that TTAB decisions regarding likelihood of confusion have preclusive effect in subsequent district court infringement actions [s]o long as the other ordinary elements of issue preclusion are met [and] when the uses adjudicated by the TTAB are materially the same as those before the district court. This decision has the potential to make TTAB proceedings more complex for brand owners. In Shammas v. Focarino, the Eastern District of Virginia held that trademark applicants seeking federal district court review of administrative determinations in ex parte proceedings must pay the trademark office attorney s fees regardless of the case s outcome. In June, INTA submitted a brief to the U.S. Court of Appeals for the Fourth Circuit stating that the district court incorrectly interpreted Section 21(B)(3) of the Lanham Act to include attorney s fees and that the district court s decision endangers trademark registrants rights to appeal in district courts and should be reversed. Education INTA s Annual Meeting is the world s largest meeting of trademark professionals. The next Annual Meetings are: San Diego, California, USA (May 2 6, 2015), San Diego Convention Center Orlando, Florida, USA (May 21 25, 2016), Orange County Convention Center Europe (May 2017) INTA holds two other yearly meetings: Trademark Administrators and Practitioners Meeting: Alicante, Spain (October 13 15, 2015). TMAP 2015 registration will launch on May 3. Leadership Meeting: Panama City, Panama (November 17 20, 2015). This is INTA s first major conference in Latin America and its first Leadership Meeting outside the United States. 3

4 Conferences: INTA hosts topical conferences for the IP and business community. The following conferences will take place in 2015: 4 3D Printing/Additive Manufacturing: Cutting Edge IP and Business Implications (New York, NY, USA March 10 11, 2015). Attendees learned about potential IP issues associated with increased accessibility of 3D printing. Trademarks in Japan (Tokyo, Japan March 26 27, 2015). INTA s first regional conference held in Tokyo, dealing with trademark law changes in Japan, ASEAN issues and sessions of great importance to in-house practitioners. The Interplay between Trademarks, Geographic Names and Geographical Indications (Rome, Italy December 10 11, 2015). A 1½ day conference on collective marks, certification marks, geographic names, enforcing GIs, GI and trade agreements, city trademarks and GIs/CTMs. INTA hosts roundtables throughout the world on topics relevant to IP and business communities and offers e-learning webcasts. For the academic community, at its Annual Meeting INTA presents Academic Day, a unique day of programming specifically designed for professors, and Career Development Day for students. INTA also holds two popular annual competitions: The Saul Lefkowitz Moot Court Competition for U.S.- based law students and the Ladas Memorial Award Competition, a writing competition on the subject of trademark law. Online Member Resources INTA membership gives everyone in a member office access to the INTA Bulletin, The Trademark Reporter, and multijurisdictional databases such as Country Guides. The value and convenience of INTA s global trademark resources easily justify the cost of membership. Six chapters of Trademark Administration have been posted already this year. This new online resource is designed for administrators or young practitioners and provides a thorough introduction to trademark practice and procedure. Additional chapters will be published during the course of The United States Annual Review was also published in February The Annual Review of EU Trademark Law is scheduled to follow in April. Both reviews will have accompanying sessions at the 2015 Annual Meeting. Committee Selection for the Term INTA s committee structure and application process has changed, effective for the committee term. To learn more, visit the INTA Bulletin (April 15 issue) and read Why INTA Is Reorganizing its Committees. Important Dates: June 3, 2015 Application system opens on INTA.org June 30, 2015 Application system closes September 21, 2015 (week of) Applicants are notified of their assignment status January 1, 2016 The Committee Term officially begins Remember, even if you are currently serving on a committee, you must reapply for the Committee Term. Unreal Campaign The Unreal Campaign aims to educate U.S. high school students about the dangers of counterfeiting and importance of trademarks. Looking ahead, INTA will expand the program internationally, starting with Canada and Latin America. In 2015 the Unreal Campaign plans to host student engagement sessions in: San Diego In conjunction with 137th Annual Meeting (May 5) Alexandria Exhibitor booth and student engagement session at USPTO Trademark Expo (October) Panama City In conjunction with the Leadership Meeting (November 17 20) Rome In conjunction with INTA s Interplay between Trademarks and Geographical Indications Conference (December 9) INTA Officers & Counsel President J. Scott Evans, Adobe Systems Incorporated President Elect Ronald Van Tuijl, JT International S.A. Vice President Joseph Ferretti, PepsiCo, Inc./Frito-Lay, Inc. Vice President Tish Berard, Hearts On Fire Company LLC Chief Executive Officer Etienne Sanz de Acedo Treasurer David Lossignol, Novartis Pharma AG Secretary Ayala Deutsch, NBA Properties Counsel David Fleming, Brinks Gilson & Lione New York Shanghai Brussels Washington, D.C.

5 2015 Annual Meeting With more than 9,500 IP professionals attending the 137th Annual Meeting in San Diego, California in May, this is officially the largest Annual Meeting in the Association s history. Regional Breakdown of Attendees: Comparison of Attendees to Past Years: 390 Africa and Middle East 1,128 Latin America and Caribbean 3,614 North America 1,816 Asia Pacific 2,560 Europe 2012 Washington, D.C.: 9, Dallas: 8, Hong Kong: 8, San Diego: 9,552* Government Representation: 49 national, regional and international IP offices, IP attachés and public authorities are represented in San Diego. The program also included a number of government-led educational sessions, including JPO, OHIM, USPTO and WIPO-led sessions as well as a presentation by the TM5 group of offices. Association Representation: Representatives from 14 national, regional and international IP associations attended. Educational Programming: The program includes almost 300 customized educational offerings, including 33 general educational sessions, more than 250 table topics, users group meetings with leaders from several national and regional trademark offices and industry exchanges for in-house practitioners, with sessions on Saturday and Sunday available to all registrants. More than 30 official networking events, including the INTA Gala, the Sunday evening Opening Ceremony and Welcome Reception and the Grand Finale, will be offered to expand your client and referral network. Business Meetings: This year, to accommodate (1) one-on-one meetings, (2) breakfast or luncheon sessions in private or semi-private areas, and (3) training sessions with theater-style seating, INTA is providing four different meeting spaces within the SDCC: 1. Reserved Hospitality; 2. Premium Hospitality; 3. Session Rooms; and 4. Exclusive Rooms for Corporations. San Diego: California is a significant intellectual property hub in the United States and is home to some of the fastest-growing companies in the world. 70,806 trademark applications and 77,273 patent applications were filed by residents of California in This represents the largest number of trademark and patent applications filed in any one U.S. state. San Diego is California s second largest city. It is part of the Tech Coast and is home to various industries, including: Clean technology Defense Information and communications Theme parks and tourism Sports and active lifestyle Universities and research institutes