As well as often being the busiest day for attendees, with proceedings having kicked off on Saturday, the Monday of the INTA Annual Meeting marks the halfway point of the event. Trying to keep up with the rapid pace of activities (and maintain energy levels), the World Trademark Review editorial team of Trevor Little (TL), Adam Houldsworth (AH) and Tim Lince (TJL) present some of their highlights from the second jam-packed day of the event.
In case you missed it, you can read our highlights from Sunday’s activities and sessions here, and don't forget you can get the inside track on World Trademark Review’s new intelligence offerings and navigation, as well as pick up the latest hard copy publications, at stand 213 in the exhibition hall.
The $20 million Annual Meeting – Kicking off yesterday’s opening ceremony, INTA CEO Etienne Sanz de Acedo took to the stage to give delegates some vital stats on this year’s Annual Meeting and to highlight the association’s key initiatives and achievements over the past year. In contrast to 2009, when the Annual Meeting attracted 7,590 attendees, he pointed out, this year’s convention has just shy of 11,000 registrants – a new record attendance, following on from the record-breaking turnouts of the past two years. One of the results is that the 2018 meeting is expected to contribute $20 million to Seattle’s economy. Turning to association achievements, over the past year INTA had made 100 submissions aimed at improving IP laws, and attended 225 meetings, delegations and conferences across the world as part of its efforts to protect brand owners and consumers. He further enumerated the association’s key initiatives around the globe, including campaigning for IP rights around the one-belt-one-road project in China, advocating against brand restrictions in Latin America, and running an IP awareness reaching 8,000 children in India. The association is clearly full of confidence, with dozens of positive developments that were raised. The big question now is whether Boston will maintain the multi-year combo of record-breaking attendance years. (AH)
Changing perceptions and the Butterfly Effect – One of the highlights from yesterday’s INTA Annual Meeting opening ceremony was the colourful, thoughtful and quirky address given by 2018 INTA president Tish Berard (whom I was fortunate enough to interview last week just before flying out to Seattle). After taking to the stage to play guitar on a Nirvana song cover, she gave a speech about the importance of perceptions (and of being able to change them) as well as of the Butterfly Effect: the ability for small causes to have large effects, or in this context, the ability of individual trademark practitioners acting to have a significant impact on brand rights issues. They could do this, she argued, by changing their perception of themselves from ‘trademark practitioners’ to ‘brand professionals’, and embrace a more holistic understanding of their role. As such, they ought to engage in efforts to tackle negative public perceptions of brands and trademarks, persuade consumers (especially young consumers) of the value created by brand rights, and demonstrate to senior management the contribution trademarks can make to broader business goals. Berard also called upon brand professionals to have a ‘glass half full’ perspective on change and innovations, and to become drivers of that change rather than products of it. (AH)
Amazon and the everyday heroes – As Annual Meeting keynote speaker, Neil Lindsay, vice president of global marketing, prime & engagement at Amazon.com, provided insight into how Amazon approaches both product naming and the creation of a brand character that relies on trust and transformative experiences. For instance, an oft-repeated phrase was the company’s obsession with “enabling the triumph of the everyday hero” (providing customers the means to access “magical moments”). As for product naming, he explained that this takes place late in the development cycle: “We want hands on experience with a product before we think about naming it. If you take something like Echo, there is a long development cycle and when we got our hands on the product, we realised there was more personality in Alexa than we first envisioned. That impacts the naming process a great deal.” From “enabling the everyday hero” to “amplifying the truth”, the speech was heavy on management buzzwords and phrases. As foundational values, though, they have clearly worked for the tech giant. When Lindsay asked the packed room who currently subscribed to Amazon Prime, an overwhelming majority of hands were raised. (TL)
How Tarantino sparked a decade-long trademark dispute – On World Trademark Review we have covered Simon Tam’s decade-long battle to secure trademark protection for the name of his band, The Slants, in some detail. Today Tam presented his perspective on the case to a rapt audience of trademark professionals and revealed that the genesis of the band’s name was rooted in an American martial arts film: “In 2004 the Quentin Tarantino movie Kill Bill came out. There was one scene where people walked into a room as music was playing – a Quentin Tarantino trademark – and that moment was incredibly powerful to me. I actually paused the film and asked myself why it was so powerful to me. And I realised it was the first time I had seen an American directed film that presented Asians as cool, powerful and sexy.” This drove the subsequent philosophy of The Slants and the decision to use the name in a bid to reclaim a racist slur. It also led to groundbreaking, lengthy trademark case. In some respects, then, Tarantino has indirectly helped bring some clarity to US trademark rules. (TL)
The Smurfs and Astro Boy make an appearance on the exhibition floor – Delegates may notice the appearance of two well-known animated characters on the exhibition floor this year. Japanese firm Gold IP is promoting its IP Samurai search platform with the use of iconic character Astro Boy, while European firm Gevers has a giant model from The Smurfs on display at its stand. Both demonstrate interesting ways for firms to differentiate themselves in an increasingly crowded market. Gold IP CEO and patent attorney Hajime Shirasaka confirmed to us that his firm has worked out a licensing deal with Tezuka Productions – the company behind Astro Boy – to be able to use the character on marketing materials. Meanwhile, Gevers head of anti-counterfeiting, Brigitte Hayen, explained the very different approach they took to use The Smurfs – namely through a close client/firm bond. “They’ve been a client with us for many years now and were happy to work with us on our INTA stand marketing,” Hayen explained. “They are also happy to show how active they are in the anti-counterfeiting area – so, overall, it’s a win/win situation. Feedback has been really positive, especially because everyone wants to have a photo taken with the Smurf. My only question is: why have law firms not thought about this before?” Indeed, a law firm collaborating with a client in such a way does appear to be a ‘no brainer’, especially if it allows that client to demonstrate its brand protection credentials. Will we see more client/firm collaborations in Boston next year? (TJL)
Motivating partners the Harley-Davidson way – Corporate counsel adopt very different approaches to INTA Annual Meeting networking. Some go incognito (we have seen one well-known brand disguise its company name on its official INTA official badges in a bid to step foot in the exhibition hall without being mobbed by providers seeking to market their wares). Others rent out private rooms and meet law firm partners on an ‘invite-only’ basis. Elsewhere, some take the opportunity to give public recognition to the firms that have gone above and beyond on their behalf. One example of the latter is provided by Harley-Davidson. A tweet from Paul Johns, head of dispute resolution at Baldwins Intellectual Property, showcases a ‘continuous improvement award’ presented to his firm by the brand. Bearing the Harley-Davidson logo, it highlights appreciation for the firm’s “support and outstanding accomplishments in trademark portfolio administration in 2018”. It’s a smart move. For the firm, receiving the award provides a high profile endorsement. For Harley-Davidson, it deepens the relationship with key legal partners and serves as a motivational tool for its network to keep upping their game. (TL)
To trademark a headshot – Trademark issues related to the video game industry was the topic of a jam-packed session earlier today. It was clear throughout how unique the industry is when it comes to IP protection. One example given was during a dispute between developers Bethesda Games and Mojang in 2011, with the name for the video game Scrolls being accused of infringing on the ELDER SCROLLS trademark. At one point during the dispute, Mojang owner Notch challenged representatives from Bethesda to a game of Quake 3 to settle the dispute: “Three of our best warriors against three of your best warriors," he wrote. "We select one level, your select the other, we randomise the order. 20-minute matches, highest total frag count per team across both levels wins. If we win, you drop the lawsuit. If you win, we will change the name of Scrolls to something you're fine with. I am serious, by the way.” As noted by one of the session’s speakers, Allen & Overy partner Alexandre Rudoni, such a challenge “could be construed that the case is not worth a meaningful legal fight”. Perhaps an even more outlandish example of how unique the video game industry is a recent mark filed at the EUIPO. The mark consists of a 20 second video, which Rudoni played to the audience – though he warned that some may want to close their eyes due to its graphic content (one attendee was overheard saying “that’s sick” as it played). The video (which can be viewed on YouTube) is a short montage of extremely gory slow-motion headshots taken from Sniper Elite 4 gameplay. “The mark has been pending at the EUIPO since October; raise your hands if you think it will reach registration,” Rudoni enquired – and exactly zero hands rose. The popularity of the session, though, suggests IP issues within the video game industry is of particular interest to attendees – and as we wrote last year, there’s significant opportunity for law firms in the sector. (TJL)
The why, who, what and how of trademark licensing – With holistic, value-creating brand management being a key theme at this year’s INTA annual meeting, it was of little surprise to see a great turnout for a detailed discussion of the ins and outs of trademark licensing. The talk, entitled ‘The Yin and Yang of Licensing’, featured opposing perspectives from Judy McCool, SVP Legal Affairs at entertainment giant HBO, and Viviana Mura, assistant general counsel and head of global IP at Luxxotica Group, a serial licensee of trademarks from brands such as Chanel, Burberry, Giorgio Armani and Prada. One recurring theme was the importance of having clear and precise stipulations in the contract. The question of whether a lump sum, upfront payment is included in a license was highlighted by both speakers as a significant question, as was the issue of how much quality control a licensor has over a licensee, and whether the licensor has the automatic right to terminate the contract if their partner falls short of a quality requirement. What rights either party has to adapt the licensed brand was also a question both parties thought should be made clear in the agreement, as was whether there are circumstances under which licensee or licensor can pull out of a deal, because the other side has tainted the brand by acting immorally, for example. The two speakers, from their very different perspectives, expressed different preferences on most of these matters, but also stressed the importance of understanding the other side’s priorities, constraints and risks; after all, it is in both the licensee and licensor’s interests for a deal to be successful. (AH)
Changing face of counterfeits in western Africa – The fresh challenges that brand owners are facing when attempting to stop counterfeits in western Africa took centre stage at the African Regional Update earlier today. Speaker Vanessa Halle from Nico Halle & Co revealed that in recent years, the way that fakes are being transported has changed rapidly. “We don’t have counterfeits coming in solely by the sea any more – we now see fakes coming in by air and land. In fact, in Cameroon, counterfeits don’t arrive via the sea any more, they tend to come in via air (in personal luggage) or through land transport. Nonetheless, we usually find that people focus their anti-counterfeit efforts on stopping them by sea, and that’s one of the problems we face: there’s not much awareness that counterfeits are just as like to be moved via other routes in west Africa.” There was also a detailed update on recent changes at OAPI, including the appointment of a new director general (something we reported on last year), anti-counterfeit training of judges and magistrates at OAPI, and the first recipients of the local protected geographical indication sign (with Penja pepper and Oku white honey being granted permission to use the logo earlier this month). There’s clear momentum in both OAPI countries and elsewhere around the region, and the positive vibe of the session reflected that. (TJL)
App typo does little to dissuade the crowds at Africa reception – Attendees looking for the Africa session – and, indeed, any events taking place at the Skybridge Lobby in the convention center – may have been confused thanks to the official INTA Annual Meeting app claiming it is on the second floor rather than the fourth floor. One worker for the Washington State Convention Center told World Trademark Review that they were aware of dozens of people who had become lost due to the mistake. Nonetheless, this afternoon’s Africa Reception was packed, and featured a short speech by INTA CEO Etienne Sanz de Acedo: “As you heard yesterday, we have 10,960 attendees to the Annual Meeting, which makes it a record attendance – and more importantly, we have around 2,600 newcomers, 1,250 corporate members and we have over 500 attendees from Africa, which is absolutely great,” he opened with, adding: “I’d like to stress how important your region is for INTA: [we] have become extremely active in the region, and thanks to your volunteer work we’ve been able to submit comments to ARIPO’s strategy on GIs, to the OAPI national IP strategy, and to Kenya’s IP strategy and new trademark regulation – in fact, we have a delegation from the national delegation from Kenya here today.” (TJL)
Companies team up to offer end-to-end ‘.brand’ service – For those offering services to the trademark community, the INTA Annual Meeting provides the perfect platform for the launch of new products and collaborations. Two organisations that have seized that opportunity are Valideus and Nominet. Today the two announced they are teaming up to offer companies eyeing a new gTLD application in the next round an end-to-end consultancy, application and management service. The partnership brings together Nominet’s registry capabilities with the brand consultancy tools of Valideus, with Oli Hope, director of registry services at the former, observing: “Brands that weren’t in the vanguard of round one are beginning to focus on how a dedicated registry will advance their digital strategy. If they don’t make their mark next time round, they risk waiting a decade to get up and running.” Last month we published an interview with Jeff Neuman, SVP for Com Laude (sister company to Valideus) for the USA, in which he predicted that ‘.brands’ would have a bigger presence in the second round (he told us: “In the next round, I think you will see applicants for generics being much more selective. As a result, I think you will see more ‘.brands’ than generics. Brands are not concerned with numbers and you are now seeing more brands use their TLDS. There haven’t been loud introductions but you are seeing them used and advertised”). The next round is expected to open from 2021. This latest team-up reflects confidence in the prediction that ‘.brands’ will be a key player when that window opens. (TL)
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