2017 International Trademark conference wrap up

Every year the International Trademark Association (INTA) convenes for their annual general meeting. This year’s conference was held in Barcelona, with a record breaking 10,668 attendees ranging from the IP profession to brand managers, government officials, economists, academics and media from around the world.

Discussions at this year’s meeting focused on the impact of the digital age on trade mark protection and brand management, and the flow on effects for trade mark specialists. Brand owners increasingly need to manage cases of cybersquatting and counterfeiting, and need to develop sound strategies for managing their brand’s presence online, particularly on social media platforms. The role of technology in brand protection was a key theme across the three days, with a lot of attention given to the changing role of trade mark professionals from primarily legal to wider brand management. 

One of our highlights of the conference was co-hosting the IP Office Workshop with Spain and Colombia. The workshop gave us a great opportunity to explore and discuss issues such as unsolicited correspondence, trade mark cluttering, and bad faith and zombie trade marks.

Unsolicited correspondence is a growing problem for businesses. Once you apply for an IP right your details become publicly available and as a result you could receive billing scams and unsolicited invitations to pay for services at an inflated price. At the workshop, speakers from Spain, Sweden and the UK discussed strategies to counteract and reduce unsolicited mail. They also shared some success stories in prosecuting offenders and provided tips and practices on how to raise awareness among IP rights owners. We also learned that the majority of unsolicited correspondence originates from Eastern Europe and that joint efforts to prosecute offenders may significantly reduce this problem across multiple jurisdictions.

Trade mark cluttering occurs when trade mark registers become crowded with applications and registrations with broad, generalised claims for goods and/or services. This causes delays for other applicants and makes it hard for IP offices to find a balance between an accessible system or heavily regulated system. Speakers from the United States, Argentina and New Zealand discussed strategies to combat cluttering by reducing the time frame to respond to an examination report and by having more specific details of an applicant’s good and services. 

Bad faith or zombie filings, while not a significant problem in Australia, are not uncommon in the trade mark world. These type of applicants are trying to obtain a right dishonestly, usually with the intent to sell a mark back to the rightful owner, or trade on the goodwill of someone else’s mark. Speakers from the Columbian, Mexican and Chinese IP offices discussed their individual legal mechanisms to deal with zombie marks and bad faith registrations. They also offered their different perspectives on what is fair use of a trade mark and how it affects registration, enforcement and cancellation. There was discussion that these types of marks would be better identified at the examination stage under the deceptive or likely to cause confusion provisions of our Act. However our opposition provisions appear to be quite effective in dealing with such unscrupulous applications.

IP Australia also presented on Quality and Consistency from our National Office Perspective, participated in a Madrid System Users Meeting, presented at an Asia-Pacific Practice Committee Meeting and welcomed questions from registrants at the IP Attaché Open House session.

Overall the INTA meeting allowed us to discuss common issues and challenges facing trade mark owners internationally. These insights will help us shape the future strategic direction of the trade mark system in Australia.

The next INTA annual general meeting will be held in Seattle in May 2018.

Check out #INTA17 on Twitter for more conference highlights.

Published: 
15 June 2017

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