2012 in review: key developments for rights holders
The accession of Colombia and Mexico to the Madrid Protocol prompted renewed regional interest in the harmonised trademark registration system. The International Trademark Association (INTA) played a key role alongside the World Intellectual Property Organization (WIPO) in opening discussions with IP stakeholders and authorities in both countries. Subsequently, Brazil, Costa Rica and the Dominican Republic have initiated procedures that could lead to their participation in the Madrid system.
INTA was delighted to be an honoured guest at the commemoration of Colombia’s accession to the Madrid Protocol and has been invited by Mexico to celebrate its 2013 accession. Both governments have asked INTA to help build educational programmes on the value of the Madrid System, its implications, and the procedural requirements for filing an international application.
Turning to Asia, INTA was the first IP association to consult with the Myanmar government on its new draft trademark law. The law is very ambitious, establishing the country’s first IP office and IP courts. Myanmar officials requested INTA’s input as the representative of the new system’s future international users. Additionally, INTA took the opportunity to lobby alongside local associations for strong anti-counterfeiting provisions.
In Europe, the Office for Harmonization in the Internet Market (OHIM) took over responsibility from the European Commission for the European Observatory on Infringements of IP Rights. Bringing together public and private sector experts and stakeholders, the Observatory will promote discussion, research, training, the creation of advanced IT support tools and the spread of best practices on IP matters.
INTA contributed expert recommendations throughout the Observatory’s transformation process and will participate in all five of the newly established working groups (enforcement, statistics, legal, public awareness, and IP in the digital world). Working group members will represent their stakeholder organisations by sharing experience and expertise in each subject area, helping to deliver the Observatory’s work programme.
"INTA and Street Law have developed anti-counterfeiting lesson plans which will enable INTA members to conduct outreach in schools."
To support IP development in Africa, INTA focused on building strong relationships with the African Intellectual Property Organization (OAPI), based in Cameroon, and the African Regional IP Organization (ARIPO), headquartered in Zimbabwe. In 2012, INTA and OAPI director general Dr Paulin Edou Edou signed a cooperation agreement to increase information exchanges and enhance joint educational initiatives between the two organisations.
Through its trademark office practices committee’s OAPI/ARIPO subcommittee, INTA also launched a new ‘Africa Rising’ initiative to highlight the value of trademarks and their protection in this increasingly important global market.
Across the globe, anti-counterfeiting remained high on the agenda. The association’s most significant step was to launch its first public awareness initiative. The Unreal campaign educates teenagers about the serious harm posed by counterfeit goods and the benefits of trademarks, reaching out to them through social media and special events.
INTA volunteers are now bringing the Unreal campaign to schools via a partnership with a non-profit organisation, Street Law. Under this partnership, INTA and Street Law have developed anti-counterfeiting lesson plans which will enable INTA members to conduct outreach in schools, starting in the US and then expanding internationally.
New era for TLDs
Looking ahead to 2013, there will be some serious challenges for the trademark community online. The International Corporation for Assigned Names and Numbers (ICANN) will be releasing the initial batch of new generic domain name registries, beginning with top-level domains (TLDs) in non-Latin based scripts. These internationalised domain names (IDNs) are a first for the Internet.
In representing trademark owners, INTA has been a leading voice in the debate about ICANN’s administration of the domain name system and it participates in ICANN’s Intellectual Property Constituency. The association was a major critic of ICANN’s proposal for unlimited expansion of the number of generic top-level domains (gTLDs) and is now working to ensure that trademarks and the consumers who rely on them are fully protected in this new digital environment.
For example, when ICANN published a list of nearly 2,000 applications for new gTLDs in June, INTA’s Internet committee completed an extensive review of this list. The group gave ICANN detailed recommendations to ensure consumers would be adequately protected. ICANN responded by proposing to strengthen its rights protection mechanisms (RPMs), and exploring new mechanisms to help trademark owners protect their brands and to reduce costs imposed by new gTLDs.
The Internet committee also advised ICANN on improving the accuracy of the WhoIs system which provides contact information on registered domain names—a necessary mechanism for brand owners to enforce and protect their trademarks. To this end, ICANN has committed to beginning a comprehensive review of WhoIs.
Finally, in 2012 heated policy debates about the value of IP took place in Europe and the US. These debates were often fuelled by misconceptions, particularly concerning the user experience on the Internet. This played a significant role in the European Parliament’s rejection of the Anti-Counterfeiting Trade Agreement (ACTA).
In the year ahead, INTA will respond to such challenges by stepping up engagement with the public about IP, especially with respect to trademarks and the Internet. It is through meaningful engagement with all stakeholders, including the public, that we can dispel negative perceptions and develop balanced policy that protects the interests of consumers, trademark owners and Internet users.
Alan Drewsen is executive director of INTA. He can be contacted via Gillian Econopouly, INTA’s Communications Manager: geconopouly@inta.org
