Joff Wild

The INTA 2017 Annual Meeting is coming to an end after five action-packed days in Barcelona. Here’s the final round-up of what has been going on from World Trademark Review reporters Trevor Little (TL) and Tim Lince (TJL), and me, Joff Wild (JW).  

Change management – In town to present CPA’s new IP Platform, CEO Simon Webster found time to comment on recent stories that the IP management and technology company is up for sale once more. This follows a previous change of hands in 2012, when current owners Cinven took the reins. While not confirming any specifics, Webster did acknowledge that after five years it makes sense for a private equity firm such as Cinven to start looking at its options. CPA is still in investment mode, Webster stated, and is likely to continue to be so for another six to 12 months, so that may mean another private equity player coming on board; however, the business is also at a stage when an IPO is beginning to make sense. With Thomson Reuters IP & Science (now Clarivate) recently sold for $3.55 billion and investors putting money into other service providers, it is clear that Cinven can be confident of making a healthy return. “There are still many unmet needs relating to operations and information in the IP space, and this represents a big opportunity,” Webster stated. Not least among these is the potential to build the business in China, where CPA is now growing at between 20% and 30% a year, albeit from a standing start in 2007 (by contrast, the firm’s growth in Europe is 2%-3% a year). Below a top echelon of Chinese companies, Webster and his colleagues detect the emergence of a serious set of mid-tier companies looking to develop IP and take it out of the country. If just 10% of them end up doing so, the returns for service providers such as CPA could be significant; something that will no doubt form a big part of any sales documentation Cinven may be preparing. Webster – who took the reins at the company in October 2015 – had nothing but praise for the support he has had from the current owners (“they have been superb and backed us unfailingly”) and was keen to stress that whatever the future brings for CPA he does not anticipate any impact on the day to day operations of the business. Webster and his team – which includes a recently appointed chief technology officer lured from the BBC – look set for a busy summer. A holiday, he confirmed, is off the table. (JW)

Part of the trademark family: the ‘.sucks’ experience – Two years ago, in San Diego, ‘.sucks’ made heads turn when it descended on the INTA Annual Meeting armed with branded condoms and roving billboards declaring ‘INTA.sucks’. We caught up with John Berard, CEO of the registry behind the TLD, who reflected: “In San Diego we needed to go big in terms of impact and we have subsequently been able to scale back, but the goal is to be relentless in our marketing. We believe we have a good service to offer and want to communicate it.” As to that service, he says that in terms of both community and political sites there has been an uptick in use of the TLD, and “companies continue to register names”. It is the latter that he is in town to promote, and he expands: “My mission has been to convince companies that there is a first mover advantage to owning their own ‘.sucks’ site.” The message is that, rather than registering for purely defensive purposes, companies should instead see a branded ‘.sucks’ site as an asset: “Think of brands you know and ask yourself whether they have the brand personality to do this? The answer in many cases is ‘yes, they do’.” Whether the space becomes a brand populated environment remains to be seen, but repeated attendance at the annual meeting suggests that there is an ROI when it comes to exhibiting to trademark owners. And two years on from San Diego, when we wrote that in some respects Berard was entering the lion’s den having introduced high sunrise fees, he states that he now feels embedded in the trademark community: “INTA has made us feel very much part of the trademark family – not just the organisation but the members who have visited the stand.” (TL)

Trademarks on the silver screen – Nordic firm Otmore hosted a seminar this morning which invited local small businesses to find out more about trademark rights. The highlight of the event was guest speaker Christopher Lees, owner of UK fashion business Bentley Clothing. He has been in a long-running and bitter legal battle with Bentley Motors, and spoke of his experience facing off in a ‘David versus Goliath’ legal dispute. His business – which has existed since the 1960s with a first registered trademark that dates back to 1982 – has fought attempts by Bentley Motors to register BENTLEY in classes related to fashion. We have written extensively about the repeated legal disputes between the two companies (with our latest article published just last month), but in the seminar Rees voiced frustration that the motor company is able to sell fashion merchandise with ‘Bentley’ emblazoned across it. Likening it to him selling goods bearing brands owned by others, he stated: ‘If I committed a similar offence, I’d be arrested and prosecuted by Trading Standards. But when we went to Trading Standards with evidence of our registered trademark and their use of our mark, they wrote back and said they won't take any legal action.” While the disputes are still ongoing, film producers recently approached Rees about turning their legal battles into a movie, a prospect Rees told World Trademark Review he feels could help finally end the dispute. “The film will be about our story, and I’m obviously very interested –  they’ve even asked us to keep a video diary, including for this event, so attendees today could be featured in the film,“ he said. “Ultimately, I hope the film, if it is made, will at least put Bentley Motors under some pressure.” Rees’ father Bob, who is in his 80s and is also a co-owner of Bentley Fashion, further told World Trademark Review that he is looking forward to being portrayed on the silver screen: “Chris said he thinks Woody Allen could play me, but I had George Clooney in mind!” (TJL)

Trade dress troubles – It’s no great secret that obtaining trade dress protection from the US Patent and Trademark Office is a tough task; but just how tough was made clear at the “Big Bang: When Trademarks Collide with Other IP Rights” session on Monday. Glenn Gundersen, a partner based in the Philadelphia office of Dechert, talked attendees through research the firm had done on registration activity at the PTO. It was sobering stuff. Looking at the 2017 status of applications filed in 2015, Gundersen stated, 28% had been allowed onto the principal register and a further 22% had been allowed onto the supplemental register; another 20% were still pending and 30% had been abandoned. Of those allowed onto the principal register, 85% had been in use for five or more years. Although overall numbers are hard to calculate, Gundersen continued, if you look at marks described as a “configuration” a total of 3,400 can be found on the principal register and a further 1,200 on the supplemental; that is out of a total number of 2,600,000 currently registered US trademarks. The classes in which most “configurations” are held are: food (classes 29 & 30) – 460; beverages (classes 32 & 33) – 440; and Electronics, optical (class 9) – 430. There is then a significant drop down to Toys, sporting goods (class 28) in which 300 are found. All in all, Gundersen stated, it’s expensive to get registered trade dress protection, the odds of success are low and failure is public. No wonder that litigating in order to establish a common law right seems to be such a popular option; while design patent protection – much easier and quicker to obtain, with a presumption of validity, as well as a clear and convincing rebuttal standard - is also becoming a favoured alternative. Whether that makes sense from a public policy perspective is open to question, Gundersen observed. It was hard to disagree. (JW)  

‘.africa’ rising as brands take strategic approach to new gTLD sunrises – Staying in the world of new gTLDS, another exhibitor is the Trademark Clearinghouse, which – as marketing manager Peter Van De Wielle told us – is here to meet with key agents as well as brands themselves (the agent channel accounting for around 85% of its volume). With the new gTLD programme now very much established, he notes that the submission strategies adopted by brands have evolved, explaining: “We received a lot of trademark submissions in the early stages of the programme, as big brands looked to enhance trademark protection across the many different TLDs. They were thinking long-term, and renewal rates have been good. However, what we are now seeing is trademark owners submitting marks for specific sunrises.” One such is the current sunrise for ‘.africa’, which he predicts will rank in the top 20 in terms of registration numbers. Crucially, he feels this is because “registrants and companies see real value in ‘.africa’”, rather than registrations being defensive in nature. (TL)

Dinner is served – The African regional update yesterday was a culinary affair, with KISCH IP’s Vanessa Ferguson (who admitted to have “INTA voice syndrome” due to her slightly croaky voice) offering a “dinner theatre experience” during her update on the latest trademark office developments across the continent: “So our menu today will be in the form of 54 dishes; although we have to remember that some of those ‘registration dishes’ can take a long time to prepare.” One of the big issue faced by business owners across the region is the implementation of the Madrid System, she further explained, with currently 37 out of 54 countries now signatories of the Protocol. The latest update suggests that the next country to join should be South Africa, with an estimated 12-18 month timeline given. She also highlighted the controversial implementation in OAPI, and the group of attorneys that formed to argue it was implemented illegally. “Yes, there may be a challenge on the validity of the marks in OAPI,” she concluded. “Time will test this, and that will shape where we stand going forward.” (TJL)

Have your say on China’s upcoming e-commerce law – In China, the upcoming new e-commerce law has been the subject of intense scrutiny. It is being drafted to encourage an expansion of the country’s e-commerce market and one organisation keeping a close eye on it is the Quality Brands Protection Committee. Chairman Jack Chang explains that there are troubling aspects in terms of IP protection. For instance, he notes: “If you are an IP owner you can currently complain to a platform operator if you find infringing goods or unauthorised use of copyrighted images. The platform then sends a notice to the store operator, and sometimes they will take down the infringing goods and materials. However, the platform operator can take action if they don’t. The second paragraph of article 54 of the draft law says that if the online store operator then submits a declaration to the e-commerce platform to state that no infringement exists, the platform shall timely revoke the actions taken. The brand owner then has to file litigation or administrative actions. This will increase the need for litigation and administrative enforcement actions. But often it is hard to locate where the infringer really resides in order to file litigation with the jurisdictional court or a complaint with the jurisdictional administrative enforcement agency.” Another concern relates to article 55, which “sets the threshold of unfair competition of unauthorised use of another party’s domain name, website name or web page too high, saying the act has to mislead the general public and thus cause market confusion”. The positive is that the government is willing to listen to concerns, as it has in the past. Chang explains: “When the first draft of the new trademark law was published in late 2012 for public comments, we expressed some concern about certain aspects. With coordination from the China Association of Enterprises with Foreign Investment, QBPC was the only group representing foreign industry that was invited, three times (in February, May and August in 2013), to meet the Legal Affairs Commission of the National People’s Congress (NPC) to discuss issues. When we met the second time, we saw that they had taken our concerns into account in the second draft amendment. We also met about the third draft just days before it was implemented. One more recommendation was accepted at that meeting. So the NPC and the government are very willing to listen. In China you just have to provide valid input and constructive recommendation with goodwill and respect.” The message for brands is simple – make your voices heard (in the right way). The new law could be in place by the end of this year, and Chang concludes: “Whether we will be able to influence the final version of the e-commerce law I don’t know, but the NPC and government are certainly open and willing to listen.” (TL)

Selling opportunities – The exhibition hall at this year’s meeting is a sight to behold – a huge space, packed full with service providers, trademark offices, law and attorney firms, and various publishers, all hoping to catch delegates’ eyes. The stands come in all shapes and sizes, the range of free gifts is mind-boggling and set-up design has clearly been given a great deal of thought. For those of us who can remember the days of nothing more than tables, chairs, pipe and drape the change is extraordinary. The number of companies offering software solutions has definitely rocketed and given the interest that investors are currently showing in IP service providers, if you were a VC or private equity professional you could do a lot worse than spend a day here checking out who is offering what, and which services are attracting most attention. It also strikes me that while INTA delegates are clearly the number one target of the software businesses, the smaller ones may also be half hoping that they excite the interest of some of the bigger boys. After all, the likes of CPA and Clarivate are not short of a bob or two – what is relatively small change for them has the potential to set up a developer for life. (JW)

Can big data bridge the legal-marketing divide? – As mentioned above, anyone that has walked around the exhibition hall will observe that the competition amongst service providers is intense. In the run-up to the event, the World Trademark Review team received a barrage of press releases announcing new offerings and partnerships. In the bid to differentiate products, the focus for a number of companies has turned to the use of artificial intelligence and the Internet of Things to drive search and monitoring tools. For Corsearch, the focus is big data and the company has spent the last few years on R&D in a bid to develop its upcoming Contour offering, which draws on big data algorithms to guide the naming process. Interestingly, the new offering is designed to connect the marketing and legal functions, in a bid to solve the age old ‘marketing-legal divide’. Tobi Hartmann, general manager at Wolters Kluwer, noted: “Marketing people come up with names, fall in love too soon, then lawyers feel they have to say no. The whole process is inefficient.” The new offering – which can be used by marketing as well as their legal counterparts – identifies the likelihood of clearance obstacles for a proposed name, while also suggesting alternative names that could be considered (based on preferences set up by the user). In summary, Hartmann describes it as “name creation on steroids”. The perception of lawyers as the stakeholder that says ‘no’ and halts the creative process is one many counsel struggle with. Therefore, tools that help guide marketing through the legal process and embed legal in the name creation process will generate interest. The challenge for Corsearch is to now convince potential users to take a new approach. And, of course, to ensure that marketing do want to buy into a legal name generation tool and collaborate more closely with legal – rather than maintain the frustrating status quo. (TL)

Personalities as properties – If there’s one thing a lawyer hates it is uncertainty. Not being able to give a client reliable advice and instead having to go out on a limb to make an informed guess is not a comfortable experience for someone trained to mitigate risk. But when it comes to identity rights (or the lack of them) all too often it can be a case of sticking a finger into the air to try to work out which way the wind is blowing. In a fascinating session on Tuesday morning – The Answer is Not Always “It Depends”: Fair Use and Freedom of Expression under Copyright and Identity Right Laws – panellists Jonathan Jennings, of law firm Patishall, and Anthony Falzone, deputy general counsel at Pinterest, talked delegates through the very slippery interaction between Fair Use and identity rights. While the latter are firmly established as property rights at state level in most of the US, there is no federal legislation, so different circuits may view things very differently. In Europe, meanwhile, there is even more confusion, as some countries, such as the UK, do not recognise identity rights at all (though may provide some protection via passing off laws), while others do – though the limits will vary from jurisdiction to jurisdiction. Try navigating all that. Jennings – who was the primary drafter of Illinois’ right of publicity legislation – explained during the session that he is leading an INTA effort to create minimum publicity rights standards. He and his colleagues on the relevant committee have one hell of a task in front of them – but if the exchanges between the panellists this morning are anything to go by it will be an intellectually stimulating one, too. (JW)

Trademark industry facing a ‘Kodak moment’? – During Sunday’s opening ceremony, INTA CEO Etienne Sanz de Acedo noted that there is little risk that AI will cause the loss of lawyer’s jobs. But during today’s Otmore seminar, this comment from INTA – and a perceived lack of focus from the association on how AI and automation will significantly affect the trademark industry – was criticised by Otmore founder and partner Jarno Hottinen. He told World Trademark Review: “What happens when advanced AI enters the legal space? It will completely transform the industry in a similar way that the internet did, and there is little doubt that many jobs will go. Right now the industry may be afraid to admit it, but ultimately it has two options: adapt or die. I think INTA needs to start adapting to how technology is going to significantly change the industry, and it needs to do this urgently because innovation is not slowing down. The industry, and INTA itself, need to take more control of how they can adapt to this inevitable change – if not, this is going to be another Kodak moment, where we look back in many years’ time and regret not making preparations now.” The seminar included a talk from David Wedebrant, director of business development at digital innovation agency AKQA. He has little doubt that AI is going to transform nearly all industries, and in a surprisingly short time-frame. “Will clients care if it is an AI rather than a lawyer that is filing or monitoring their trademarks? They will only see a cheaper price and just as effective results. There's no stopping it.” (TJL)

Winners – Last night World Trademark Review held its annual industry awards to honour the work done by in-house trademark teams in companies across the globe. Over 200 corporate trademark professionals, representing more than 50 organisations came along to the event at the Museum of Contemporary Art in the heart of Barcelona. The winners were:

Asia-Pacific Team of the Year

Burberry Asia

Europe, Middle East and Africa Team of the Year

Specsavers

Latin America Team of the Year

Sky International

North America Team of the Year

World Wrestling Entertainment

Fashion, Cosmetics & Luxury Goods Team of the Year

Maus Frères

Financial & Professional Services Team of the Year

American International Group

Food, Beverages & Tobacco Team of the Year

PepsiCo

Healthcare & Life Sciences Team of the Year

Novartis Pharma

Household & Consumer Goods Team of the Year

Inter IKEA Holding Services

Internet & Telecommunications Team of the Year

Intel

Not-for-Profit Organisation Team of the Year

The National Association of Realtors

Software & Online Services Team of the Year

Twitter

Sports, Entertainment & Media Team of the Year

Nike

Technology & Consumer Electronics Team of the Year

Western Digital

Travel & Leisure Team of the Year

Marriott International

Vehicles & Transport Team of the Year

BMW

In-house Counsel of the Year

J Scott Evans, Adobe Systems

Lifetime Achievement

Anne Gundelfinger