• INTA board adopts resolution on brand restrictions, call for proportionate measures
  • INTA CEO expands on association’s position and plans for new research into issue
  • Urges future WIPO leadership to be more vocal on brand restrictions

This week the INTA board of directors passed a new resolution on brand restrictions. In an exclusive interview with WTR, CEO Etienne Sanz de Acedo expanded on the association’s newly adopted stance and how it will seek to ensure that governments act in a balanced and proportional manner.

The new resolution states that it is the position of INTA that trademarks “are intangible personal private property rights, not merely the right to exclude others from using confusingly similar marks, and should be protected to the same extent and degree as all other forms of personal private property”. Crucially, it adds that any brand restriction measure impacting how a brand symbol can be used on a product or in association with services should prima facie not be valid unless the relevant governmental authority can establish particular circumstances.

Specifically, it states that any brand restriction should be based upon “a compelling public interest”, one that outweighs the brand owner’s property right and economic investment in the brand – as well outweighing the benefits to the public associated with use of that right (such as fostering consumer choice, protecting fair competition, preventing counterfeiting and encouraging freedom of expression).

It adds that any measure should also be proportional to the alleged harm which use of the brand is alleged to cause, and “on a balance of probabilities and based on compelling and credible quantifiable evidence, no more restrictive… than is necessary for the relevant governmental authority to achieve its legitimate public health or safety objectives”.

In other words, governments should use “the least drastic alternatives” available to address public health and safety goals, rather than implement regulations which violate international and national law, curb freedom of expression, and expropriate personal private property rights.

In 2015, INTA adopted a resolution on plain and standardised packaging, which stated that such regimes should be rejected because they violate various international treaties and national laws on trademark protection. This week’s resolution is notable in two key respects – it broadens the focus beyond ‘plain packaging’ and also, while reiterating the legal arguments, stresses the need to consider whether brand restrictions are actually warranted and proportional.

Speaking to WTR, Sanz de Acedo reflected: “Since the INTA board approved the resolution in 2015 things have really evolved in a negative way. We have seen the slippery slope extend restrictions into alcoholic beverages, food, infant formula, etc. What is concerning to us is that, if you look at the rationale behind it, it isn’t always well justified and certainly isn’t proportionate. Let me be clear: INTA will always support public health and safety. But there are other ways to achieve that.”

The health and safety dimension is something Sanz de Acedo repeatedly stresses – that the association, which has ramped up its CSR activities over the past couple of years, appreciates the need to balance public health promotion policies and trademark rights. However, the question is whether brand restrictions actually are the most effective way to protect public health and the interests of consumers.

In a press release issued after this article was originally published, INTA president David Lossignol expanded on this, stating: “Restricting or eliminating trademarks and logos on packaging can actually increase the dangers to consumers because it eases the process of counterfeiting a product. Lives and livelihood are on the line.”

Sanz de Acedo contends that sometimes politicians are quick to back brand restrictions but don’t always appreciate the more nuanced picture, stating: “We have all been working to show how brands contribute to both GDP and social welfare. And that brands are critical to allowing consumers to make informed decisions. As soon as you remove the brand from a product you are not letting consumers make informed decisions.” He adds that, in this era of anti-IP sentiment, the positive impact of brands is often not fully recognised.

What is recognised in the trademark world is that the spread of brand restrictions – long warned about – is now underway. As we have noted before, when plain packaging was initially being implemented against tobacco products, the issue was largely seen as ‘tobacco industry issue’. Those in other sectors were often reluctant to vocally lobby or message over the regime, perhaps in part to not draw attention to the possibility of it extending to their products. To some degree this is still the case, with Sanz de Acedo opining: “With all due respect, that’s a mistake – thinking ‘if I remain silent it won‘t affect me’. Historically we have seen that that isn’t the case. Instead of hiding, you are better tackling the issue, providing data and suggesting other solutions. That’s our role as an organisation. Industry needs to become more vocal. It is difficult for a single company or individual, but an association such as INTA should be able to raise its voice.”

So, what next? First is the utilisation of the new resolution. Sanz de Acedo observes: “Over the past three years we have submitted 23 comments to governments around world on this issue. Now we will be able to add to our comments the resolution, stating the position of global industry.”

INTA will also be undertaking a new impact study, examining perceptions of brand restrictions amongst Generation Z consumers, similar to the association‘s Gen Z study on attitudes to counterfeiting. Sanz de Acedo explains: “Next year we will launch a major attitudinal study on how Generation Z view brand restrictions, and we want to combine all this information and explain to policy makers the issue from a legal perspective but also in terms of consumers… I am a firm believer in data. We are not just about providing legal arguments – we are also looking to present factual evidence. That is part of our shift as an organisation.”

That study is likely to be completed in 2020/2021, and in the meantime the association has also created a Brand Restrictions Committee, which kicks off its work in January. Sanz de Acedo explains: “It is, of course, up to the committee leadership team to come up with specific objectives. But to me, we need to monitor how brand restrictions are expanding to other industry sectors, and how they are expanding geographically. And we need to be able to react to legislative initiatives - and also anticipate potential studies that will help policy makers not to get caught into this trap.”

This is connected to the association’s own mission, Sanz de Acedo adding: “We want to position INTA as a forward-thinking organisation in terms of IP matters. To anticipate issues and provide informed positions and data that support getting better laws. This is all connected to our mission statement – to encourage better laws globally to equally protect consumers and brands.”

However, he is quick to stress that this should not only be an INTA issue. Earlier this week WTR reported on the current candidates for WIPO’s director general role, with a successor to Francis Gurry due to be announced next year. Sanz de Acedo concludes: “I think it is important that WIPO becomes more vocal on this issue and supports brand owners. Protecting consumers and public health is critical – of that there is no doubt. But, being a UN agency focused on IP, it is important that WIPO protects IP owners and consumers. We do expect to see that from the future leadership at WIPO.”

This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe