Joff Wild

Often the busiest day for attendees, the Monday of the INTA Annual Meeting usually features a full schedule of meetings, sessions, table topics and receptions reaching a crescendo that often goes into the early hours of Tuesday. Reporters from our sister publication World Trademark Review Trevor Little (TL) and Tim Lince (TJL), plus yours truly Joff Wild (JW), report on the action.

Highlights from Day One are here.

Chaos theory - Respect to delegates and speakers who made it into the conference venue on time this morning. The small matter of a strike on the Barcelona metro has made getting around the city even more of a challenge than usual today – with gridlock on the streets and taxis in short supply. Spare a thought, too, for those law firms and service providers who have hired out venues in the centre of town for receptions this afternoon and this evening. The truth is that a lot of delegates are going to struggle to get to them. Impressive locations, delicious food and free-flowing drinks come at a hell of a cost, but are a staple of every annual INTA meeting because of the client development opportunities and goodwill they create. However, an expensive reception that gets a lower turnout than expected through no fault of your own is not a happy prospect; though it’s one a fair few must be worrying about right now. There will be a lot of marketers and partners offering private prayers that their invited guests will decide not to let the prospect of an hour or more in a cab get in the way of the chance to network over a tasty tapas and a glass or two of wine. (JW)  

INTA looks boldly into the future – The opening ceremony of this year’s INTA Annual Meeting (or, as local media has reportedly been calling it, the “World Trademark Congress”) began with some traditional Spanish music, but CEO Etienne Sanz de Acedo’s speech will have also been music to attendee’s ears. While confirming that this year’s conference is the biggest ever (with over 8,000 repeat attendees), he also provided an update on the association’s current membership: 31,000 individual members across over 7,000 organisation in 190 countries. But it was a series of pledges for the future that were at the heart of Sanz de Acedo’s message. At the centre of it all was the 2018-2021 strategic plan (which was sent by email to all members during the opening ceremony, and is also available here). The plan is built on three key tenets: promoting the value of trademarks, reinforcing consumer trust and embracing innovation and change. Indeed, the latter point appears to already be in action, with Sanz de Acedo indicating a striking new direction in the association’s approach to combat the spread of plain packaging legislation. “This fight isn’t just about plain packaging, it goes well beyond that; it’s a concern for companies if they can’t use their rights, and for consumers who won’t be able to identify the origin of their products,” he stated. “This year, we put together a presidential task-force that is looking at building a new narrative around brand restrictions like plain packaging. We know the legal arguments, but the problem is the politicians and legislators need more than that. We need our CEOs to stand up on behalf of brand owners and speak up on the need to protect brands. What if your bottle couldn’t have your trademark on it? It would be a concern for you, your workers and society at large.” One feels that, in light of the recent (leaked) WTO decision, INTA’s task ahead could be a tough one. (TJL)

Call yourself a trademark lawyer? Time for a new mission (statement) – Opening the 2015 Annual Meeting, then president J Scott Evans implored trademark counsel to start seeing themselves first and foremost as brand ambassadors, even if that sometimes means making decisions that conflict with long-standing trademark practice. Fast forward two years and – in much the same way that brands themselves are evolving – 2017 president Joseph Ferretti stated that it was time for counsel to go even further. Ferretti provided attendees at the opening addresses a historical overview of brand evolution. From the early 1800s, when brands were a symbol of quality rather than ownership, through to the mid-1900s (when brands started telling stories, one example being Procter and Gamble’s development of sponsored media content, giving birth to the term ‘soap opera’) and up to the present social media age, in which authenticity is key. In the current paradigm, consumers want brands that speak to them, and interact in a meaningful way (at Pepsico, he explained, advertising campaigns have been devised by customers, who are also given the opportunity to vote for the new products they would like to see launched). Alongside this brand evolution, then, trademark counsel need to move with the times. Ferretti stated: “I repeat J Scott’s call but add to it – we should approach work not as technical trademark professionals and brand ambassadors – we should be brand stewards.” This shift, he argued, means that through a deeper understanding of “where brands are going”, counsel will be able to “see the challenges ahead and solve them holistically…” Thus he challenged the audience to “embrace the role of brand steward – someone who understand the values and voice of the brand. By doing so we can help navigate our brands to a successful future. The time has come for us to embrace our role – not just as technical trademark practitioners but more broadly as stewards of our brands.” For those playing INTA bingo, it was telling that ‘brand’ was the term repeatedly used rather than ‘trademark’. In recent years INTA has proactively positioned itself as an association that is brand-facing, rather than solely focused on trademark issues. And this joint focus is enshrined in its new mission statement, unveiled at the opening ceremony: The International Trademark Association is a global association of brand owners and professionals dedicated to supporting trademarks and related intellectual property to foster consumer trust, growth and innovation. (TL)

Hopeful about Trump – At the USPTO user meeting, trademark commissioner Mary Boney Denison gave an overview of the office’s previous year and key changes being lined up for the future. A key bugbear for Denison is the persistent use of paper filings, a subject she spoke to us about last year. “Despite raising fees significantly, the current $600 still doesn't cover our costs,” she complained; but went on to confirm that “by the end of the fiscal year” the office is hoping to make it mandatory to file electronically. While that sounds like a significant change, she added that paper filings are nearly phased out already, with only six paper applications submitted during the last week. But the main topic on everyone’s lips was how the new Trump administration will affect the running of the USPTO. In that sense, Denison remained calm and – while admitting that the hiring freeze could be a challenge if the office is unable to bring in more examiners – seemed to be hopeful that the major federal efficiency overhaul that Trump is moving forward with won’t have a significant effect on operations. “Ultimately, we don't take any taxpayer dollars,” she said. “So we hope to be able to hire in the next fiscal year to continue meeting our pendency goals.” (TJL)

How the other half live -  The clamour for convenient hotel rooms left many looking at alternative accommodation for their annual INTA excursion. This year it seems a growing number of firms have taken to renting out houses (and yesterday we noted that one had also invited clients to move in with them for the week). As well as making sense financially, this approach can serve a positive bonding purpose. However, not everyone is so keen on doing the dishes with their colleagues. A few law firm representatives have noted that senior management have plumped for hotels over shared accommodation with their team. One lawyer told us that being in shared accommodation, and the antics that ensue, is like being back at college. It looks like some senior professionals are missing out on the fun (and/or the opportunity to make sure that their fellow team members behave!). (TL)

A badge for the Brits – It is emerging as a dominant subject of conversation at this year’s INTA meeting. That means for British attendees, there really is no getting away from Brexit. Speaking from the UK IP Office stand in the exhibition hall (the office’s first since 2008), a representative from the agency told World Trademark Review: “We are not here because of Brexit; we are primarily attending this year to bring our attaches together and remind everyone that the UK is open for business. In fact even if the result had gone the other way last year, we would have had a stand here in Barcelona. But, overall, nearly every question has been about Brexit.” And what goes for the UKIPO goes for everyone else from the country in attendance here, too. The problem is that whatever the question the answer has to be the same: “I just don’t know.” Nobody does, not even the British government; just about everything is still up in the air. So, if you are from the UK and you are getting tired and not a little depressed about this subject, World Trademark Review has produced a downloadable card for you to display on your conference ID or somewhere else prominent about your person. Get your “I just don’t know” badge here. Wear it with pride, or not as the case may be. (JW)

Lanyard hunt – There are over 10,000 attendees at this year’s Annual Meeting, and nearly all of them have a lanyard around their neck adorned with the name of legal services provider (and sponsor) MarkMonitor. But at least one delegate is not happy about having that brand name around his neck as they are representing a rival legal services company in the exhibition hall. To that end, he has been looking for replacement lanyards to wear instead – and, to date, has not been successful in that endeavour. But the delegate admitted it was a canny move by his rival, and even went to their exhibition stand and said: “Well played.” (TJL)

Don’t read too much into the lack of ‘.brand’ registrations - As we inch closer to a second round of new gTLD applications, the question of first round success is often raised, particularly by brands mulling over potential applications. Compare the number of registrations in ‘.brands’ with other new gTLDs and the former are lagging way behind. But when it comes to assessing ‘.brands’, CSC Digital Brand Services’ Gretchen Olive argues that they should be viewed through a different prism. Crucially, she notes that ‘.brands’ are just not in a rush to launch. Nor are they subject to the same pressures to do so, in a bid to recoup their investment through registration sales: “Success is not measured by registrations or profit, but instead the unique strategic business goals of each individual brand.” The operators of branded online spaces, then, are marching to the beat of a different drum. One such is Accenture, with Kristen Poggensee, paralegal associate manager, joining Olive in the ‘‘.brands’ and you’ session. Poggensee is part of a cross-company team – drawing on legal, marketing and IT – that is driving the digital strategy behind ‘.accenture’, and she explained: “Right now we are not looking to just switch from ‘.com’ to ‘.accenture’. Instead we are taking a phased approach and testing the water. This is an evolving strategy.” Central to this are continued efforts to “build awareness – not only within the company but also the community”, engage in industry and competitor analysis, and ensure that senior management remains involved in the project as this evolution continues: “You have to keep interest levels high.” The takeaway? There may not be a big bang moment in terms of ‘.brand’ deployment but don’t regard that as indicating failure. Brand registries are instead working at their own pace, exploring and testing different options, and rolling out only when it is strategically advantageous to do so. (TL)

Attache action - To the centre of town for a Sunday afternoon reception organised by the UK IP Office and the country’s Chartered Institute of Trademark Attorneys. Unsurprisingly given what is coming down the line not two years from now, there was a strong turnout of INTA meeting delegates and plenty of Brexit-related discussion. For the UK’s network of four IP attaches, based in Singapore, China, India and Brazil, the lead-up to departure from the EU will be a particularly busy time. Not least because IP support currently available to British businesses via the European Commission and other European Union institutions, such as the EUIPO, will no longer be available after March 2019. In China, Latin America and South-East Asia, for example, SMEs from any member state are able to make use of the services offered by dedicated IPR helpdesks. There is a lot of free stuff on offer, including advice on dealing with counterfeiting and piracy, forging relationships with local enforcement agencies and general all-round local insight. When cash is tight and knowledge is short, having access to such on-the-ground expertise can be a lifesaver. But for British businesses it will not be a resource for much longer. So how does that get replaced? Indeed, can it be replaced? The UK’s IP attaches are already extremely busy and the IPO is not exactly a ceaseless golden fountain of funds (though the canapes were excellent at the reception), so some very smart thinking will be required, as well as – perhaps –the forging of deeper relationships with IP attaches from other countries; and, whisper it softly so Boris does not hear, even an on-going level of cooperation with those who provide the EU’s services. One of the reasons why the UK’s Brexiteers insisted the country had to leave the EU was so that it could deepen trade links with other parts of the world. A lot of that will be dependent on the ability to ensure strong IP protection; so what the UK cannot afford to do is to reduce the support its exporting SMEs receive as they seek to sell into the world’s emerging markets. The country’s IP attaches will therefore have to play a crucial role in the years to come. Let’s see what kind of financial support they are provided with in order to do this. It would be nice to think they will get what they need; but does anyone believe that they will? (JW)

Fake news comes to INTA – One of the most repeated phrases in media and political circles in the past 12 months has been the term “fake news”. What was once a term to describe fictional stories posing as legitimate news (often on websites posing as well-known news brands), is now being used in much more varied, arguably partisan ways. Often not considered are the IP elements involved in the creation of fake news. Today’s session on trademark issues in the publishing industry took a look at just that, with moderator Jeffrey D Parnass of News Corp saying that, surprisingly, the rise of ‘fake news’ has been a boon for major media companies. “News organisations are making money precisely because of fake news as people now want to know the source to ensure they are getting real news,” he said. “This wasn’t necessarily an issue a couple of years ago.”  Nonetheless, the enforcement of fake news by IP counsel at major media titles has really stepped up in the past 12 months. Kate Teh from the Telegraph Media Group gave countless examples of websites that she has dealt with that mimic the popular Telegraph.co.uk website. But, she added, she relies on infringers to respond to a cease-and-desist request because the next steps are often too costly to pursue. “It is a challenge in the newspaper industry because if we don’t get a response to a cease-and-desist letter, there’s not quite enough income generated to take further legal action – especially if the infringement is in another jurisdiction.” Teh revealed that 80% of infringers do respond – which is no doubt a relief for news organisations and people seeking real news. (TJL)