INTA Staff Interview: In Search of Harmonization

23-05-2017

INTA Staff Interview: In Search of Harmonization

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INTA’s Regional Offices are working hard to promote trademark harmonization, but there are many challenges on the way. Sarah Morgan speaks to three INTA staff members working in this area.

In an ideal world, trademark rules would be harmonized across the globe. In reality, it’s not that simple.

INTA, however, sets its sights high when advocating for brand owners.

No Size Fits All in Asia-Pacific

Asia-Pacific is a diverse region, from developed countries with strong IP laws to developing nations with extremely little protection for IP.

“There’s a very justifiable reaction that no one size fits all here,” explains Seth Hays, Chief Representative Officer of INTA’s Asia-Pacific Office in Singapore.

“We have some jurisdictions with very top of the line IP protection, and others that don’t have anything. How do you link up the state of development with the need for investment? The right formula is going to be different for each.”

INTA representatives visit, and in partnership with the relevant INTA committees and often local INTA members, analyze each market and jurisdiction to tailor advocacy efforts to the local situation.

Over the years, the biggest facilitators of harmonization have been through various treaties such as the Singapore Treaty on Trademark Law and the Madrid Protocol, the accession to which are high on the list of INTA’s advocacy goals.

It’s been a major push by INTA, particularly in South East Asia where, over the last few years, some of the more reluctant and larger countries are now joining.

Indonesia and Thailand recently amended their laws to allow for Madrid applications. There are inklings that Malaysia will be working on amendments to its law as well.

More countries, however, need to join the Singapore Treaty, which harmonizes trademark office practice and procedures in order to streamline trademark registration and renewal.

The Trans-Pacific Partnership (TPP) also remains high on the agenda in the region, despite the United States’ decision not to join the agreement.  

Mr. Hays says: “It’s still viewed as a viable agreement in the region, although it will need some adjustments.”

He explains that free trade agreements such as the TPP, even when not put into force, play a role in harmonization.

The Regional Comprehensive Economic Partnership (RCEP) between the ten member states of ASEAN plus Japan, South Korea, China, India, Australia and New Zealand also provides hope for harmonization with an IP chapter under negotiation.

“It’s not too far-fetched to say that nontraditional trademarks provisions in recently revised trademark laws have been as a result of nontraditional marks being included in these free trade agreements around the world,” adds Mr. Hays.

Boots on the Ground: Latin America and the Caribbean

In Latin America and the Caribbean, an ongoing physical presence is key to increasing INTA’s influence on trademark issues as well as membership growth in the region, according to Gabrielle Doyle, INTA External Relations Senior Associate, Latin America.

That’s one of the key factors that led the Association to open its first Representative Office for Latin America and the Caribbean in Santiago, Chile, on May 2, 2017.

“This new office will allow closer interaction with our members in Latin America and the Caribbean, enhanced policy engagement, and increased educational programming in the region,” says Ms. Doyle.

That’s not all: on October 2 and 3, the Association is holding a Latin America and Caribbean-focused conference titled, the Changing Landscape of Latin America, which will take placein Cartagena, Colombia.

“The reason we chose to host this conference is because the region is rapidly progressing as a serious investment hub and contender to other emerging markets,” she explains, adding that she expects there will be more conferences in the pipeline.

The Changing Landscape of Latin America conference will focus on the vast economic, social, and political developments taking place throughout Latin America and the Caribbean, and their impact on IP.  

This conference will discuss investment opportunities, and the impact of IP and innovation on economic growth, among other topics. The broad range of topics offered will appeal to start-ups and established businesses, both small and large enterprises. And since our focus is on the vast socioeconomic and political changes in the region, it provides an opportunity for brand owners, business and economic experts, entrepreneurs and established businesses to network and learn from each other.

The new office and the conference both fit into the Association’s strategic plan of internationalization, as well as the objective of increasing awareness of IP and IPR enforcement as larger public policy issues in Latin America and the Caribbean.

Increasing the awareness of IP and IPR enforcement is key to alleviating the challenges posed from issues in the region that tend to be more socially accepted, such as buying counterfeit goods, explains Ms. Doyle.

INTA’s work also extends to encouraging the harmonization of efforts among government agencies, stakeholders, and specialized enforcement units. 

“It’s about developing public and private partnerships. We try to encourage harmonization of  trademark office practices through different activities such as informational workshops for examiners, organized by our members,” says Ms. Doyle.

Earlier in May, the second annual forum on Promoting IPR Enforcement Policy in Latin America was held in Santiago, Chile with the specific purpose of discussing best practices for promoting IP rights enforcement at a national and regional level and increasing the role of the IP offices in the enforcement of these rights.

“Increasing awareness of IP is one of our most important objectives, and through the activities we have planned, we hope to encourage governments throughout the region to recognize the importance of protecting IP and make it a larger conversation on a national level,” explains Ms. Doyle.

One way to demonstrate this point is the trademark economic impact study the Association completed this year—Trademarks in Latin America: A study of their economic impact in five countries in the region (Chile, Colombia, Mexico, Panama, and Peru).

Ms. Doyle adds that the statistical data from Impact Studies will provide quantitative proof of the value of IP, offering additional motivation for governments to increase investment in IP-related institutions in the region. 

Creating a Level Playing Field in Europe

The Europe Representative Office is also advocating for harmonization.

The Office aims to support and implement advocacy efforts in Europe, educational trainings and membership.

It also supports various advocacy committees covering trademark protection in Europe, as well as geographical indications (GIs), the relationship between brands and innovation, and designs across the world. 

For instance, the Designs Committee recently won INTA Board approval of a resolution supporting adherence to the Hague Agreement Concerning the International Registration of Industrial Designs, another way to foster the centralization of all requirements for international registered design applications. 

Hélène Nicora, INTA Representative Officer, Europe, says that the European Union (EU) “has heavily contributed to increased harmonization in the EU and its neighboring countries, particularly in the trademark arena.”

In March 2016, trademark reform came into effect, resulting in the rebranding of the Office for Harmonization in the Internal Market to the European Union Intellectual Property Office (EUIPO), a reduction in fees, and substantive and procedural changes to European Union and national trademarks.

INTA has been there every step of the way, to influence the outcome of the trademark reform. 

Although the European Union is not fully harmonized, the reform has definitely improved the trademark landscape, with the elimination of some major discrepancies across the 28 member states.

INTA is also involved as an Observer in the EUIPO Management Board and Budget Committee, and the EUIPO’s numerous convergence projects, aimed at bringing closer the practices of EUIPO with those of national offices. INTA is also very active in the EU Observatory for the Infringements of IPRs.

INTA’s Europe office recently celebrated its ten-year anniversary. In this period, it has managed to develop relationships with key stakeholders in Europe and central Asia, be it national offices, enforcement authorities, agencies like the World Customs Organization and Europol, and other associations.

The Office is busy monitoring and advocating on EU legislation impacting IPRs, such as the Customs Regulation and the upcoming review of the EU Directive on Enforcement of IPRs.

“Some IP rights, such as trademarks, are more harmonized than others, and the Association has played a big role in this,” explains Ms. Nicora. “But there are still improvements to be made—we’ve not reached global harmonization in any area.”

Much like Ms. Doyle, Ms. Nicora is concerned with the abundance of counterfeits, this time on a global scale.

“Counterfeiting is a global phenomenon, and to deal with this, we need a global answer. This is an issue where every region of the world should try to reach a common answer,” she says.

This is one of INTA’s core objectives: advocating for strong trademark protection laws and vigorous enforcement in order to provide the same experience to brand owners wherever they are in the world.

To make this happen, the Association ensures that any position it advocates in one jurisdiction is consistent with that in another, but taking into consideration regional and local differences.

“INTA has a global view, meaning it’s in a good position to make constructive recommendations that are consistent across regions,” says Ms. Nicora.

One set of trademark rules applying to the whole world is “the dream objective,” she says, adding that it’s key that the INTA committees and external offices all communicate.

But change can be a slow process for two reasons.

First, IP protection is not a priority for all governments, and INTA makes sure to provide education on this essential aspect.

Second, reaching consensus with such a large number of stakeholders is not easy. Some practices and laws governing IP have existed for a long time, so it’s difficult to change people’s minds, explains Ms. Nicora.

Despite such difficulties, INTA will continue working hard to achieve its harmonization aims.

INTA, trademark, harmonization, Latin America, , members, Asia-Pacific, stakeholders, Representative, Singapore, partnership, IPR

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