Entertainment and magic are bothguaranteed at this year’s INTAAnnual Meeting, which is beingheld in one of the world’s topvacation destinations. “Fromtonight’s opening concert by

Kool & the Gang, through the KeynoteAddress and ending with the Grand Finaleat Universal Studios, this is going to be a lotof fun,” says Peter Dernbach of WinklerPartners, one of this year’s Annual Meetingco-chairs.

His co-chair, Rick McMurtry of TurnerBroadcasting System, Inc., expands on the“exceptional” keynote speaker—DianeNelson, President of DC Entertainment;President of Warner Bros. ConsumerProducts; and President and Chief ContentOfficer of Warner Bros. InteractiveEntertainment. “She’s responsible for someiconic properties such as Batman andSuperman, among others. She was alsoresponsible for bringing Harry Potter fromthe page to the screen. I heard her speak atthe McCarthy Institute a few years ago andshe’s a phenomenal speaker. ”

Nelson will be speaking during theOpening Ceremonies, which start tomor-row at 4:00 pm.

Dernbach, McMurtry and theirProgram Team have spent about a year-and-a-half putting together the program-ming for this year’s Annual Meeting,

which features many familiar sessions onkey issues for trademark practitionersworldwide. There are also panels on someemerging topics, such as scandalous andculturally sensitive trademarks (sessionCW21 on Wednesday); the sharing econo-my (session IT20 on Tuesday); and brand-ing, marketing and regulatory issues forthe commercial marijuana industry (ses-sion IM50 on Monday). Dernbachdescribes the latter as “a cutting-edgeissue” given the recent legalization of marijuana in several U.S. states.

McMurtry says that personally he is alsolooking forward to panels on sports, anti-counterfeiting (“you have to keep on top ofthe changes in the law and the market-place”) and digital enforcement, whileDernbach points out that practitioners fromAsia-Pacific may be interested in sessionCT50 on plain packaging, which is animportant topic in many countries in theregion.

Dernbach also recommends sessionCM02 on IP attachés: “IP attachés are oftenoverlooked, but they can provide really use-ful resources for trademark owners andprofessionals. I’m looking forward to hear-ing what they have to say.” He adds that hejumped at the opportunity to be Co-Chairof the Meeting when it was offered, and islooking forward to “connecting with peo-ple I know well and rekindling friendships.”If you too are planning to meet colleaguesand clients at the Convention Center, notethat there are four meeting points this year(see the INTA Annual Meeting App or FinalProgram for details).

Everyone will be working hard thisweek, but there will also be plenty of oppor-tunity to have fun. Tonight there is a con-cert by Kool and the Gang, who McMurtrysays have “a diverse appeal across the gen-erations.” And the Meeting will end with abit of magic at Universal Studios—forwhich guest tickets are available. Says

McMurtry: “Orlando is a very family-friendly city—it’s a great venue and conven-ient to get to. My nine and five-year oldsons are coming in for the Grand Finale atThe Wizarding World of Harry Potter.”

At this year’s Annual Meeting,INTA is launching its first-everall-day anticounterfeiting pro-gram—the “AnticounterfeitingSolutions for Brand OwnersWorkshop.” The program is

solely for in-house practitioners and was sopopular that INTA increased the capacity to

150 from the original 120. It takes placetoday from 11:00 am to 5:00 pm.

Maysa Razavi, INTA’s anticounterfeitingmanager, says INTA is uniquely positionedto contribute to the anticounterfeitingdebate.

“What we really bring to the table is theglobal best practices,” she told the INTA

Daily News. “We can see what’s working inEurope and the U.S. and elsewhere and wecan share that with the different countriesand tell them what we think would workthere. INTA is building a network world-wide of government officials, of our mem-bers and all the people in the anticounter-feiting world and trying to share

information, work together and raiseawareness among the public.”

Today’s workshop is the latest of severalanticounterfeiting events INTA has beeninvolved with. Recent months have seenworkshops in India and Mexico and INTA iscoordinating with BASCAP in running a seriesof workshops on the roles and responsibilitiesof intermediaries in enforcing IP rights.

Read interviews with Maysa Razavi,Miguel Margáin of IMPI and JosephineRima Santiago of IPOPHL on pages 2-3.

Profile

Debbie Cohn onthe TrademarkCaucusPage 4

Feature

How to planyour stay inOrlandoPage 5

Interview

Rebecca Robyof Hard RockInternationalPage 6

News 2-3 | Quiz 7 | Exhibitors 10 | Map 11 | Schedule 12 | Weather 86°F

DailyNewsPublished by

www.inta.org www.managingip.com

Saturday, May 21, 2016 138th Annual Meeting, Orlando

Entertainment guaranteed

All-day anticounterfeiting program

INTA Annual Meeting co-chairs Peter Dernbach and Rick McMurtry tell the INTA Daily News what registrants can expect at this year’s Annual Meeting.

• Pace yourself – have a plan for thepanels you want to attend

• Take into account travel time ifyou’re meeting people

• If travelling far, give yourself time toadjust to the time change

• Go along to relevant networkingevents (such as the WelcomeReception)

• If a new registrant, don’t miss theFirst-Time Orientation and Receptiontoday

• Download the Annual Meeting appand use it to manage meetings

• If arranging to meet someone, makesure you are clear about which meet-ing point in the Convention Center

Top tips from the co-chairs

• Tickets for tonight’s Kool & the Gangconcert are $225

• Exclusive offer: Buy 4 tickets, get 1free; buy 8 tickets, get 2 free

• Guest tickets for tomorrow’sOpening Ceremonies and WelcomeReception are $125

• Tickets are available from OnsiteRegistration in West Hall E

Ticket information

Co-chairs Rick McMurtry andPeter Dernbach

Maysa Razavi has a big job asINTA’s anticounterfeitingmanager. She says the glob-al impact of counterfeitingand piracy has grown to$461 billion this year, more

than double the $200 billion in 2008. Thatrepresents about 2.5% of global trade.

“Counterfeiting is a problem that isgrowing and growing,” she says. “It is veryhard for brand owners to manage the issueon their own, especially now that the saleof counterfeits has become so prevalentonline. Counterfeiters can hide their iden-tity online. They ship directly to the con-sumer and process payments directly onthe Internet as well.”

Enforcing marks is difficult alsobecause laws vary internationally andcounterfeiting is often a multi-jurisdiction-al act. That is where associations such asINTA can help. Razavi works with anINTA committee of about 260 peopleworldwide, about 60 of which are brandowners.

“The way to tackle this issue is to buildrelationships with different organizationsand government officials,” she says. “A bigpart of that is sharing information. That issomething we have to do all together. Oncewe have all that information, somethingthe anticounterfeiting world does well istalk to each other. But I don’t think some-

thing we do well is talking to the public.That is a tactic we want to use more, andwe are looking at different partners to dothat.”

As part of this, INTA launched theUnreal Campaign in 2012. This publicawareness initiative educates teenagersaged 14 to 18 about the importance oftrademarks and intellectual property andthe dangers of counterfeit products. Thecampaign has reached more than 4,500students directly so far through initiativesin Africa, Asia, Europe, Latin America andNorth America. The campaign aims atchildren both through social media anddirectly in schools. It recently held its firstevent in Canada, in Ottawa.

INTA has also developed some tools formembers. In February it launched an SMEanticounterfeiting toolkit for expandingyour trademark into China. “While wewere in the middle of that project the lawschanged in China, so it was a labor of love

to finally get it done,” says Razavi. “So weare really proud of that.” INTA also devel-oped a series of webcasts training customsofficials about brands.

INTA is involved in many eventsaround anticounterfeiting. In FebruaryINTA participated in India’s Central Boardof Excise and Customs’ Anti-Counterfeiting Conference. It is also doinga series of workshops on the roles andresponsibilities of intermediaries in enforc-ing IP rights with the InternationalChamber of Commerce Business Action toStop Counterfeiting and Piracy (BASCAP),the first of which was held in Singapore inMarch.

In April, INTA co-sponsored a work-shop that took place in Tequila, Mexico,that brought together representatives of IPoffices across Latin America to brainstormways to improve IP enforcement in theregion. INTA will develop a repository toshare best practices.

“The relation between theprivate sector and thegovernment is essential,”says Miguel Margáin,Director General ofInstituto Mexicano de la

Propiedad Industrial (IMPI). “We havefound out that it is very, very important andwe have been working on these relations. Totackle counterfeiting you have to involveboth industry and government.”

Some of Mexico’s biggest challenges arecounterfeit products related to audio andvideo, much of which is domestic, and cloth-ing, footwear and accessories, most of whichcomes from Asia. “The main problem here isto make society aware that counterfeiting isnot a victimless crime,” says Margáin.

IMPI has strong enforcement powerscompared to its Latin American peers. ”Wehave been working closely with the cus-toms department. I have always said that

customs is an IP authority also,” he says. Mexico has implemented a recordation

system with customs. “So if the customs offi-cers find out some counterfeits are cominginto the country they will give a call both tothe rights holder and IMPI, and we will startthe paperwork,” explains Margáin. “Theywill allow us three working days to providethem with IMPI’s request to stop the free cir-culation of goods.” IMPI also holds trainingseminars with customs officers in the mainports of Mexico.

IMPI is active with authorities and groupsoutside its own borders. It has had joint

actions with the U.S. authorities as well aswith INTA. Last year, for example, INTAheld its first Unreal Campaign studentengagement session in Mexico as part of theprogram that aims to educate students aboutthe dangers of counterfeiting and importanceof trademarks. IMPI also had a programwith the Business Software Alliance (BSA) totarget software piracy. BSA found thatMexico had reduced its piracy rates from65% in 2005 to 54% in 2013.

In April, IMPI and the White HouseOffice of the U.S. Intellectual PropertyEnforcement Coordinator hosted a work-

shop, “Promoting IPR Enforcement Policy inLatin America: The Role of the IntellectualProperty Office,” in Tequila, Mexico. Theevent, co-sponsored by INTA, is the firstinteractive forum on enforcing IP rights inLatin America. It featured participants fromIP offices representing 12 countries.

“The key takeaways from the workshopwere to develop a working plan and to sharepoints,” says Margáin. “Also, to know thateven though most of the Latin Americanoffices don’t have enforcement powers, theyhave to push and they have an important rolein the anticounterfeiting actions.”

Among Latin American IP offices, onlyMexico, Peru and Paraguay have enforce-ment powers. “Some asked: ‘Well I don’thave powers so why should I attend?’ Well,even though you don’t have enforcementpowers like IMPI does there is an importantrole you can perform in your country,” saysMargáin.

News Anticounterfeiting

INTA Da i ly News Saturday, May 2 1 2016 www.manag ing ip .com2

Mexico setting an example Mexico is tackling anticounterfeiting on two fronts, IMPI Director General Miguel Margáin tells Michael Loney: first, by using the laws available to conduct raids, seizures and inspection visits and secondly through awareness campaigns.

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about-us.html

Tackling the growing counterfeitingproblem

CONTACT DETAILS

Maysa Razavi, Esq.Manager, Anticounterfeiting, New YorkTel: +1-212-642-1779mrazavi@inta.org

Workshop in Tequila

Interview Josephine Rima Santiago

www.manag ing ip .com INTA Da i ly News Saturday, May 2 1 2016 3

Josephine Rima Santiago wasappointed as the new DirectorGeneral of the IntellectualProperty Office of the Philippines(IPOPHL) seven months ago.Previously, she was the Deputy

Director General of IPOPHL and theDirector of Technology Application andPromotion at the Institute of the Departmentof Science and Technology.

Santiago recalled her first 100 days atIPOPHL were spent in orientation, whereshe had to absorb the nitty-gritty of all theprograms and projects as soon as possibleand address any urgent issues left unsolvedbefore she was on board. “During my firstfew days as the Director General, I lost notime meeting key officials of each of theIPOPHL bureaus while reacquainting myselfwith their core functions and operational sys-tems, as those have evolved since my previ-ous tenure as Deputy Director General from1999 to 2002,” she says.

In response to the promulgation of OfficeOrder No 13-170 in 2013, the IntellectualProperty Rights Enforcement Office wasestablished to receive complaints about IPviolations and to take action against counter-feiters. There has been positive feedbackabout its effective approach to filing com-plaints, coordinating among enforcementagencies, and reducing the possibilities forcorrupt officers to request bribes.

The IPOPHL has also been dedicated tofighting fake products in the country. Arecent campaign has seen the destruction ofcounterfeits worth PhP 9.3 billion (USD 200million) in Cabuyao, Laguna, initiated by ajoint effort of the Bureau of Customs,IPOPHL and the National Committee onIntellectual Property Rights.

The Director General is confident she canmaintain the progress made by the country inIP enforcement. “We will continue to culti-vate a culture of respect for IP in the country.We do our best to enable IPR owners to fully

enjoy the rewards and benefits of their IPassets, and to protect consumers from sub-standard products,” she says. “This hopeful-ly will serve as an incentive for inventors tocontinue creating high quality goods andservices.”

INTA’s new representative office inSingapore looks forward to working closelywith Santiago on issues in the region.

In addition to strengthening the enforce-ment capability, another priority for IPOPHLis to reduce backlogs and accelerate turn-around time. “One of our resolutions to is tomodernize the IT infrastructures and deployuser-friendly online platforms to make it eas-ier and more efficient to avail of our servic-es,” says Santiago. IPOPHL has more than340 staff, including 30 trademark examiners,63 invention examiners and a handful ofexaminers taking care of industrial designsand utility models.

Last month, the Office launched anenhanced version of the trademark online fil-

ing system which was deployed in 2005. Thenew system, eTMfile, introduces several newfeatures, including the online submission ofdocuments and payments, auto generation ofstatement of account and acknowledgementof receipt, and an auto assist in trademarkclassification.

“Next in the pipeline is the e-filing systemfor industrial designs and utility models,which is expected to be launched in the sec-ond half of this year. The e-filing system forinventions will be launched in 2017,” sheadds.

It is four years since the Philippines joinedthe Madrid Protocol, and the DirectorGeneral has observed an annual increase of20% to 30% in the number of overseas fil-ings with IPOPHL. New filers account for80% among the Madrid filers in the pastfour years. “The figures are likely to inferthat accession to the Madrid Protocol hashad a positive impact on Philippine business,” she says.

The view from the PhilippinesJosephine Rima Santiago, the new Director General of IPOPHL, spoke with Stephy Tang about enforcement and her attempts to reduce backlogs.

Interview Debbie Cohn

INTA Da i ly News Saturday, May 2 1 2016 www.manag ing ip .com4

Deborah Cohn has been busysince starting as INTA’s SeniorDirector of GovernmentRelations in March last year.“We are trying and succeedingin raising the visibility of trade-

mark issues and INTA on Capitol Hill,” theformer Commissioner for Trademarks forthe USPTO says of her role.

She particularly notes the progressmade with the Congressional TrademarkCaucus (CTC). The CTC was founded inthe 113th Congress in 2014 to educateMembers of Congress and the general pub-lic about the role of trademarks.

Last year, INTA joined Senator ChuckGrassley, Senator Chris Coons,Representative Suzan DelBene andRepresentative Randy Forbes in announc-ing the relaunch of the CTC in the 114thCongress. “At this time last year theCongressional Trademark Caucus was fair-ly new,” says Cohn. “It had four members,which were the four co-chairs. Now thereare 19 members. We are hoping to getmany more than that but that’s a significantincrease. These are members of Congress

who agree that trademarks are importantand that the public and Congress need tobe educated about them.”

In the past year there have been severalevents associated with the CTC. Three ofthose took place in April: a CTC briefingon the impact of top level domain expan-sion on trademark enforcement and con-sumer protection, participation in the pro-gram on the Hill around World IP Day,and a Senate Judiciary Committee hearingled by Senator Grassley focused on coun-terfeits. INTA also participated in a CTCbriefing on counterfeits in December. Thefirst CTC briefing took place last Octoberand offered an introductory session on theimportance of trademark protection. INTAplayed a prominent role as a presenter andcoordinator of that briefing.

Cohn notes the bicameral and bipartisannature of the CTC. She says counterfeiting isone of the most important issues theAssociation faces. “That’s not only the tradi-tional sort of counterfeits we see in brick andmortar shops, but also fighting counterfeitson the Internet. Internet transactions presentnew and increasingly difficult challenges to

trademark owners and others engaged in thefight against counterfeiters,” she says.

“Members of Congress have manycompeting issues to focus on,” adds Cohn.“However, they and staff are very receptiveto learning about trademarks and theissues we face. The main challenge is tomaintain their focus on trademarks oversome of the unrelated, but important,issues Congress must debate.”

INTA has been working closely withother federal agencies, such as the Office ofthe U.S. Intellectual Property EnforcementCoordinator and the National IntellectualProperty Rights Coordination Center. Bothare involved in trying to increase the abilityto fight counterfeits.

“We are also working very closely withUSPTO officials on a regular basis to pro-vide input on policy and operational issuesand comment on whatever we can formal-ly and also informally to try to maintain avery close relationship as stakeholders,”says Cohn.

Another challenge is to change the pub-lic’s opinion towards counterfeit goods.Cohn notes the dangers of counterfeiting,such as the health issues posed by fakepharmaceuticals, or even a watch madewith the wrong metal. “Counterfeitersdon’t care about how something is made,”she says. “They not only don’t care aboutthe brand owners, but they also don’t careabout the consumers.”

A year of progress for the Trademark Caucus CONTACT DETAILS

Deborah Cohn Senior Director of Government Relations, Washington DCTel: +1 202 261 6570Email: dcohn@inta.org

Feature Orlando

www.manag ing ip .com INTA Da i ly News Saturday, May 2 1 2016 5

INFORMATIONFind out what’s happening at Orlando’sOfficial Visitor Center. It is at 8723International Drive, Suite 101 and is openfrom 8:30 am to 6:30 pm daily.Multilingual staff are available to answeryour questions. Its online presence is at vis-itorlando.com. A Go Orlando Card offerspre-paid admission to many attractions.

CULTUREIf you are looking for something a littlebit more educational, consider visitingthe Cornell Fine Arts Museum at 1110Holt Avenue, the Orlando Museum ofArt at 2416 N Mills Av or the MennelloMuseum of American Art at 900 EPrinceton St. The Orlando ScienceCenter at 777 E Princeton St may be ofinterest for the technology minded, aswill Kennedy Space Center, which isabout an hour’s drive from theConvention Center.

FOODThere are dining options to suit every tasteand budget in Orlando, including excellentofferings in many of the hotels and themeparks. Head downtown for The RavenousPig (craft beers and cocktails), KabookiSushi (modern pan-Asian food) andScratch (recommended for tapas), orsplash out at the award-winning Norman’s

(run by chef Norman Van Aken) in theRitz-Carlton Orlando, Grande Lakes.

THEME PARKSOrlando is probably best known for itsfamily-friendly theme parks. Some of themost famous are Walt Disney World Resort,Universal Orlando Resort, SeaWorldOrlando, Gatorland, Wet ‘n Wild and

LEGOLAND Florida Resort. Many of theparks include several different attractions,so allow plenty of time if you plan to visit.Information and tickets are available online.

SHOPPINGIf you need to take some gifts back home,Orlando is a great place to go shopping.There are four large shopping malls, withhundreds of stores. Choose from the lat-est designer brands or visit the outlet cen-ters for discounted products. Sales tax inOrlando varies from 6% to 6.5%.

GETTING AROUNDTaxis are readily available around theConvention Center, hotels and majorattractions. Lynx buses serve Orlando andthe surrounding area: the standard one-way fare is $2. The first phase of thecity’s local rail service, SunRail, opened in2014 and runs from DeBary Station in thenorth to Sand Lake Road in the south.

Plan your stay in OrlandoIf you have any spare time during the Annual Meeting, or are planning to stay on afterwards, there is plenty to do inOrlando and the central Florida region. Here are a few tips.

When you’re as famous and iconic a brandas Hard Rock is, dealing with the threat ofcounterfeiting is a constant challenge. Thecopiers’ targets include the classic T-shirts,the distinctive lapel pins and even therestaurant itself.

The challenge is evolving. For example, Rebecca Roby,senior director of business affairs at Hard RockInternational, notes that, in the past couple of years, somemore sophisticated designs have been coming out ofMalaysia copying city-specific T-shirts that feature detailedartwork.

Combating this is a big task. Fortunately, while beingan iconic brand brings unwanted copying, it also bringsloyal fans. A lot of the company’s counterfeit trackingcomes from customers, tipping off the company aboutstreet vendors, for example.

“They often send emails either to our generic emailaddress for IP enforcement or customer care, so a lot ofour fans are a great resource,” says Roby. “Also, our fran-chisees give us a lot of information in their locations

around the globe. We also work with a third-party vendorto monitor online infringements in various key retail sitesor initial sales where people are just printing their own ver-sions directly.”

Unfair competition in GermanyIt is not only counterfeit clothing Roby must combat, butsometimes entire counterfeit cafés and hotels. The compa-ny has a long-running trademark and unfair competitiondispute with an unauthorized Hard Rock Cafe inHeidelberg, Germany, which has been open since 1978.The latest development in that case came last year whenthe regional court of Karlsruhe decided the use of theHARD ROCK CAFE logo for operation of a restaurantviolated the country’s unfair completion law, despite thatCafe operating in the area before Hard Rock enteredGermany.

“That one is sort of an exception in terms of the historythere and the length that case has been going on,” saysRoby. “We have others that pop up now and then, whetherit be full-on copying of the brand and the logo versus

maybe changing one word slightly or switching the wordsaround. We have actually seen more lately in the contextof our hotels brand.” Locations in Malaysia, Vietnam andIndia have been a problem recently.

Roby estimates that 80% of her time is brand focusedwith the other 20% spent on HR and employee-relatedmatters. Of the 80%, about 30%-40% is trademark pros-ecution/opposition strategy and domain name strategywork, and the rest is contractual support related to thebrand, such as license agreements and reviewing merchan-dise for IP approval.

The domain name challengeHard Rock has about 3,700 active trademarks. Its domainname size is roughly double that. “We are working onculling that,” says Roby of the domains. “With the con-stant launching of new gTLDs—when is it going tostop?—we are trying to revisit our domain strategy andcull some extensions that never really took off, or that wethought would be defensive but are very far down on thedefensive radar.”

Trademark’s rock starRebecca Roby, senior director of business affairs at Orlando-headquarteredHard Rock International, tells Michael Loney about combating counterfeitrestaurants, domain name considerations and what changes to thetrademark system she’d like to see.

Interview Hard Rock

INTA Da i ly News Saturday, May 2 1 2016 www.manag ing ip .com6

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: email@deepnfar.com.tw www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

Roby says Hard Rock looks at each new domain namewith a cost conscious mindset. “The pricing of some ofthe new ones, especially during sunrise periods, has justbeen so ridiculous that we have been passing and waitingfor general availability, if at all,” she says. “Every nowand then there have been ones in a price range duringsunrise that we would be interested. But the rule ofthumb is that we were setting a threshold of $500 totalor less, otherwise we are not that interested in any ofthem.”

Hard Rock took up some of the core domains to start,such as .menu and .hotel. Roby says some of the city onesmay be of interest where the company has a presence or isabout to have a presence. “But if we register any newgTLDs, it is still a defensive mechanism and approach,”she says. “Our marketing strategy isn’t to migrate any ofour existing pages.”

When asked about what changes she would like to seein the trademark system, Roby says: “It would be nice if auniform approach was chosen and subscribed to globally,”as opposed to the company having to weigh the benefits offirst-to-file countries versus first-to-use countries.

She would also like to see more consistent global treat-ment and effectiveness in battling trademark counterfeit-ing, such as what type of remedies or enforcement mecha-nisms are available.

“We get frustrated when in one country we are told

that raids/seizures are not a viable option, or we won’tever be able to get them to tell us the manufacturer orcough up that evidence,” she explains. “Or the fees forpursuing such matters are not worth the time. Thepenalties are not harsh enough to deter the counterfeiterfrom doing it again once we go away. We have hadsome good results in Paraguay, Malaysia, Vietnam,Thailand, and some others over the years. But effortselsewhere have been frustrating—while we get results,seizures made, it never seems to stop the problem or

cause action higher up the chain to manufacturers, andso on.”

She continues: “We seem to just continue to pourmoney into raids and seizures in some countries but theproblem never dries up. Then in other jurisdictions, ourefforts have not been effective at all. So I guess my wishwould be for all countries to take trademark counterfeitingseriously and adopt procedures and regulations that leadto effective results, in a timely manner, and in a cost effec-tive way for the brand owner.”

Interview Hard Rock

www.manag ing ip .com INTA Da i ly News Saturday, May 2 1 2016 7

QUIZ: Win INTAmerchandise!Answer today’s INTA Daily Newsquestion to be entered into a draw towin INTA merchandise.

Today’s question: In which year didOrlando get its name?

Send your answer to contest@inta.org by midnighttonight. Winners will be announced on Wednesday.

Sponsored discussion China

INTA Da i ly News Saturday, May 2 1 2016 www.manag ing ip .com8

Why it is controversial to tackle OEMinfringement in China?

Huang Hui: Many stakeholders who are in foreign coun-tries use original equipment manufacturer (OEM) factoriesto produce their products with their trademarks that theyown in their country (of destination). However, sometimesthey do not own the trademark in China. It is too late forthem to do it because the mark has already been filed oreven registered by a third party. Maybe the filing of suchprior mark was made in bad faith (pre-emptive registra-tion), but it is not always easy to eliminate such obstacles.Meanwhile, they want to continue using the facilities pro-vided by the OEM factory. And there is the risk: being suedby the prior trademark owner. So, they are in favour ofmaking an exception for OEM exports.

Paul Ranjard: This is perfectly understandable. But youalso have to take into account the legitimate owners of reg-istered trademarks who wish to be able to take actionagainst any unauthorized use of their trademarks in China.They want to be able to request the Customs to seize anyshipment of infringing products going out of the country.If there is such an exception in favour of OEM exports,how could they protect their rights?

What does the latest Trademark Law say aboutthis issue?

Huang Hui: The Trademark Law does not provide anythingin this regard (previous drafts had specified that OEM couldconstitute trademark infringement, but this has not been keptin the final text). However, a small change was introduced atthe end of Article 48, which defines the “use” of a trade-mark. The wording is exactly the same as in the previous law(to affix a trademark on goods etc.), but, in the end, thewords “…to indicate the source of the goods” are added.

Paul Ranjard: Actually, the Chinese Trademark Law followsthe same protection principles as the TRIPs Agreement andthe European Union Trade Mark system, but it does it a dif-ferent way. In TRIPs and the Community Trademark sys-tem, the first articles define what is a trademark and the nextarticles define what are the rights conferred to the owner ofa registered trademark (to prevent others from “using” inthe course of trade, without consent etc…). In the Chineselaw, the first articles define what is a trademark, then anoth-er article (48) defines what is the “use” of a trademark and

finally article 52 defines what is an act of infringement (to“use” an identical or similar trademark without consentetc…). This specific article 48 on the definition of “use”,might be the reason why a confusion was made in thefamous PRETUL case.

Please briefly summarize the Focker v Ya Huancase.

Paul Ranjard: The trademark PRETUL was registered onJanuary 17 2002 by a Chinese individual in class 6 for “fit-tings of metal for furniture, padlocks, locks of metal, otherthan electric”. It was then assigned to a Hong Kong com-pany, Focker Security Products International Limited.

In Mexico, a company Truper Herramientas, is theowner of two registered trademarks PRETUL and PRE-TUL & oval device in class 6.

In 2010, Truper signed an OEM contract with aChinese factory to manufacture padlocks bearing the PRE-TUL marks and export them to Mexico.

In December 2010 and January 2011, Focker applied tothe Ningbo Customs for the interception of two batches ofpadlocks exported by the OEM factory. Focker initiated alawsuit before the Ningbo Intermediate Court on theground of trademark infringement.

The Court of Ningbo ordered the OEM factory to imme-diately stop using the infringing PRETUL & oval devicetrademark and pay Focker a sum of ¥50,000 ($7,700).

Both Focker and the factory appealed to the ZhejiangHigh Court. The appeal court upheld the decision of thefirst instance court.

The OEM factory applied for retrial to the SupremePeople’s Court.

On November 26 2015, the Supreme People’s Courtrevoked the Zhejiang Court judgment. The Court rea-soned as follows: since the goods are not to be distributedin China, the trademark affixed on them does not fulfil itsfunction of distinguishing the source of the goods, andtherefore, is not used, in the sense of Article 48 of theTrademark law (which defines the act of use). In addition,the Court also took into account the fact that Truperowned the mark in the country of destination.

Why is the Supreme People’s Court’s judgementground-breaking?

Paul Ranjard: This judgment provoked lots of comments.Not everybody agreed. To base the ruling in an OEM case

on the last words added to Article 48 seemed artificial. Asmentioned above, these words “…to indicate the sourceof the goods” correspond to the TRIPs and EU wording“… in the course of trade”, nothing more. Indeed, a trade-mark can be used for another purpose than indicating thesource of goods, (for example, “fair use”, like using thetrademark of a product to designate the repair servicesrelated to such products). It is only the use defined inArticle 48 that is prohibited by article 52. And in thePRETUL case, it was obvious that the act of affixing themark on the products and exporting them had been donein order to indicate the source of the goods, and not foranother purpose. The fact that the goods were exporteddid not change anything to this reality. It would be easy todemonstrate how artificial the reasoning leading to thisnon-use finding is: what if the goods are exported andimmediately re-imported? Is the “not used” trademarkgoing to be automatically “used” because of this importa-tion? What if they are first sold in China and then export-ed, is the “used” trademark automatically becoming “notused” ? etc.

Huang Hui: Don’t forget that the Court also took intoaccount the fact that Truper was the legitimate owner ofthe trademark in Mexico. It seemed only fair to let himobtain his goods, considering that no harm could be doneto the Chinese trademark owner.

Paul Ranjard: This is true. And this judgment is proba-bly a fair decision, under the circumstances. However,since it is now considered as a “precedent” that willinevitably influence the future decisions of People’sCourts in future OEM cases, it is only fair to expect thatthe decision be based on solid legal grounds. You caneasily imagine that an infringer in China could registerthe trademark of another person in a remote andimprobable country of the third world and export itsinfringing goods to such country and then re-route themto anywhere it wishes. If the PRETUL doctrine were tobe systematically applied, this infringer would be totallyfree to do so.

What messages does the Supreme People’sCourt deliver and how will it affect thepractice?

Huang Hui: It is very unlikely that the Supreme People’sCourt intended to deliver a message allowing the freeexportation of infringing goods from China. It probablyintended to give a fair solution to a case where, for reasonsthat may not be precisely explained in the case, the plain-tiff was viewed as having acted in bad faith, with the soleintention of exploiting a pre-emptive registration. I agreethat letting the batch of goods be exported to Mexicoseemed a “fair” decision, in the circumstances. It remainsthat, if it was systematically followed, this case woulddeprive all legitimate trademark owners of the right to seekthe assistance of the Customs when infringing goods areexported.

Tackling OEM infringement in ChinaHuang Hui and Paul Ranjard of Wan Hui Da discuss the implications of the recent PRETUL decision of the SupremePeople’s Court in China.

It is very unlikely that the Supreme People’sCourt intended to deliver a messageallowing the free exportation of infringinggoods from China.

The sponsored discussion content in the INTA Daily News is the sole responsibility of the sponsor. It does not necessarily reflect the views or editorial style of INTA or Managing IP.

Sponsored discussion China

www.manag ing ip .com INTA Da i ly News Saturday, May 2 1 2016 9

What new messages can be obtained from therecent Shanghai Diesel v Jiangsu Changjia caseregarding the enforcement of OEM trade mark?

Huang Hui: This judgment made by the Jiangsu HighCourt (selected as one of the top 50 IPR cases of the year)follows the PRETUL case by a few weeks only. It is inter-esting to see that, even though it took the precaution ofdeclaring that, in principle, if the goods are exported,there should be no finding of infringement, the court didnot apply the reasoning of the Supreme People’s Court(about “use or “non use”). Instead, the court looked intothe background of the case. The foreign consignor wasconsidered as having acted in bad faith and the OEM fac-tory was liable for not having conducted a reasonableamount of due diligence. The reasoning of the court,which switched from a radical analysis of the “use” to afactual examination of the circumstances of the case, waswelcome.

Paul Ranjard: However, the reasoning was not withoutweakness. Indeed, infringement of a trademark is consti-tuted regardless of whether it is committed in bad or ingood faith. The related civil liability following an act ofinfringement may be affected by good faith, but not the actof infringement itself. Using the trademark of another

person without consent is an act of infringement… period.Good or bad intentions are irrelevant.

Huang Hui: However, the Jiangsu court showed the way:examine the good or bad faith background of the case. Itshould have focused on the trademark owner/plaintiffinstead rather than on the defendant. If the bad faith ofthe trademark owner/plaintiff is established, then the casecan be dismissed and the goods can be exported. If theplaintiff is not acting in bad faith, the goods must remainseized. The Supreme People’s Court in 2014 (the Ellassaycase) showed the way when it dismissed a trademarkinfringement claim on the ground of the bad faith appli-cation by the plaintiff (and before the trademark was eveninvalidated).

In general, what are the key issues to considerwhen undertaking OEM practice involving goodsmanufactured in China?

Huang Hui: The key issue is, obviously, to own the trade-mark in China. A risk only arises if the trademark isowned by another person. The case law discussed aboveis for the time being in favour of the OEM system user.But we cannot guarantee that this jurisprudence willremain stable. If it is impossible to oppose or invalidatethe prior registration, if no revocation for non-use can beconsidered, and no evidence of bad faith in the trademarkapplication can be argued, it seems safer to abstain andarrange if possible the products to be exported withouttrademark.

Huang Hui, JD in trademark law, is a Senior Partner atWAN HUI DA. Dr Huang is a multi-faceted intellectualproperty counsel with stellar academic credentials onChina’s trademark legislation and practice and a veteranlawyer who represents clients in all levels of courts up tothe Supreme People’s Court in a wide variety of litiga-tions, some of which have become landmark cases.Lauded as the first doctor in trademark law in China,

Dr Huang has been vigorously involved in the initialdrafting and subsequent amendments to China’s major

trademark-related laws, regulations, judicial interpretations, as well as regulatorydocuments on a frequent basis. He is also a prolific writer who has authored or co-authored a dozen IPR-related publications as well as scores of treatise published inChinese, English and French.Dr Huang served INTA in the capacity of subcommittee Chair of the

Association’s China Trademark Office Subcommittee of the Trademark OfficePractices Committee (TOPC) for the 2014/15 term. He now chairs the SpecialCommittee on Piracy and Counterfeiting of AIPPI Chinese National Group for the2015-2017 term.

Huang Hui

Paul Ranjard is a French lawyer based in China since1997. Since that date, he has been representing in Chinathe French association Union des Fabricants (Unifab) forthe protection of intellectual property, and since the cre-ation of the European Chamber of Commerce, he has co-chaired the IP Working Group. In this capacity, he hasbeen involved in the drafting of all the EUCCC IPPosition Papers and all the comments submitted by theChamber concerning drafts of IP legislation. Since 2008,Paul Ranjard is Of Counsel to WAN HUI DA Law Firm &Intellectual Property Agency.

Paul Ranjard

Using the trademark of another personwithout consent is an act of infringement…period. Good or bad intentions areirrelevant.

Exhibitors

INTA Da i ly News Saturday, May 2 1 2016 www.manag ing ip .com10

The Exhibition Hall is open Sunday from 12:00 pm to 4:00 pm, 10:00 amto 4:00 pm Monday and Tuesday and 10:00 am to 2:00 pm Wednesday.

Exhibitors/Booth Number

.CLUB Registry 525

101domain GRS Limited. 1310

Acumass 915

Adastra IP 215

Afilias 1208, 1210

African Regional IntellectualProperty Organization (ARIPO) 315

Agency Tria Robit 1421, 1423

AIPPI, International Association forthe Protection of IntellectualProperty 204, 206

ALIPO, Asia Liuh IntellectualProperty Office 523

Alt Legal 923

Alyafi IP Group 909

Anaqua 701

AppDetex 1405

Applied Marketing Science 1215

Arabian Anti-Piracy Alliance 522

Asia IP 831

Asia IP Exchange (AsiaIPEX) 1224

B&R Latin America IP LLC 1223

Beijing Lifang & Partners Law Firm 423

Beijing Saintbuild IntellectualProperty Agency Co., Ltd. 1221

Beijing Sanyou IntellectualProperty Agency Co., Ltd. 501

Beijing IPHouse NetworkTechnology Co.,Ltd 629, 631

Bloomberg Law 1301

Boss & Young Patent and Trademark Law Office 1204, 1206

Brand Institute, Inc. 1413

BrandShield Ltd. 201

Brazilian Intellectual PropertyAssociation 1427, 1429

Bufete Mejia & Asociados 216

BVI Finance 221

Caribbean Trademark Services -George C.J. Moore, P.A 1401

CheckMark Network 1201, 1203

China Intellectual PropertyMagazine 929

Christodoulos G. Vassiliades & Co. LLC 1305

Cislo & Thomas LLP 922

Clairvolex Inc. 728, 730

CommunityFeedback 1329

Computer Packages Inc. (CPI) 1100

CONSOR Intellectual AssetManagement 507, 509

Copyright Clearance Center 1410

Corsearch 601

CPA Global 715

CSC Digital Brand Services 1001

Darts-ip 611, 615

Dennemeyer & Associates 801

Dennemeyer Group 815

DexPatent 219

Domain Hub - Lexsynergy, fTLDRegistry Services and theTrademark Clearinghouse 529

Donuts Inc. 1024

Dot Trademark TLD HoldingCompany, Limited 1120, 1122

Dragon Intellectual Property Law Firm 1121

Duong & Tran Intellectual Property Law Firm 925

eMarkChina IP Services 1324

Envoy International 924

EUIPO (European Union Intellectual Property Office) 415

Federis 1217

Feel Good, Inc. 511

George Mason University School of Law 214

Getting the Deal Through 1309

Hengdu Law Offices 1123

HSM IP 707

INLEX AFRICA 1320

Innotrack Intellectual Property Law Firm 1407

Instra Corporation Pty Ltd 1026

Integra IP 1106

Intellectual Asset Management(IAM) 1415

Inter-American Association ofIntellectual Property (ASIPI) 1425

InterNetX 829

INVESTIP 827

IOLITE Softwares Private Limited 1125

IPPro The Internet 1304

IPzen 806

IRANTM.COM 622

Japan Patent Office (JPO) 515, 517, 519

Jiaquan IP Law 1205, 1207

JTI 931, 1030

Kessler International 1101, 1103

KIPO- Korean Intellectual Property Office 414

Latin American Telecom LLC 222

Leaders League Group 1225

LegalForce Trademarkia 1408

Lex Machina 200, 202

LexisNexis 1403

Lighthouse IP 220

Lung Tin International IntellectualProperty Agent Ltd. 208, 210

The Luzzatto Group 1114, 1116

Managing IP 207

Marcasur 217

Markify 1316

Marksmen 1021, 1023, 1025

Med-ERRS 1314

METIDA Law Firm Zaboliene and Partners 1028

Mikhailyuk, Sorokolat & Partners -Patent and Trademark Attorneys

1115, 1117

Mission Legal 1411

Morningside IP 318

National Intellectual PropertyCenter of Georgia 420, 422

Nevium Intellectual PropertySolutions 520

Nominet 822, 824

Novagraaf 406

O P Solutions 1400

OAPI 421

Oxford University Press 1311

Pacific Patent Multiglobal 1306

Page Vault Inc. 1029

Patrix IP Helpware 901

Pham & Associates 1303

Practice Insight 927

Quantify IP/Global IP Estimator 1300

Questel 1406

R K Dewan & Co 1126, 1128

Rajão & AthaydeTradutores/Translators 623, 625

RWS inovia 1209, 1211

S&O- Schmitt & Orlov 218

S.S. Rana & Co 928, 930

SafeBrands 1220

Safenames 1015, 1017

Sanchelima & Associates, P.A. 223

SBZL IP Law Firm 1022

ScienceIP-a CAS Solution 926

Shanghai Patent & Trademark Law Office, LLC 1229

SHIP Global Intellectual Property 723, 725

Singh & Associates, Founder-Manoj K Singh, Advocates andSolicitors 823, 825

Sinofaith IP Group 606, 608, 610

Sjiem Fat & Co. 1404

Sjiem Fat & Mahabir 1402

SMD Group- IP Services andProducts 1105

SUGIMURA International Patent & Trademark Attorneys 1315

Thomson Reuters 401

TM Cloud Inc. 614, 616, 618

TM TKO, LLC 1322

The Trademark Lawyer Magazine 1307

TRADEMARK.EU-Georg Pintz & Partners LLC 1124

TrademarkNow 1007

Trademarks & Brands Online (TBO) 323

TrademarkVision 1214, 1216

The Treadstone Group, Inc. 411

UL 722, 724

Uniregistry 314, 316

Unreal 729

VALIPAT 306

Vantage Asia 1027

VASH PATENT Ltd. 624

Verisign 1321

Vivanco & Vivanco – Latin America 1409

Vox Populi Registry 1129

Watson & Band Law Offices 1108, 1110

Webnames.ca Inc. 1222

WebTMS Ltd./Intellectual Property Online Ltd. 1200, 1202

Western Union Business Solutions 1308

World Intellectual PropertyOrganization (WIPO) 301

World Intellectual Property Review (WIPR) 321

World Trademark Review (WTR) 1417

Zuykov & Partners 307

ENTRANCEH

Premium Hospitality

Meeting Point 3Reserved Hospitality

Exhibitor Registration

Meeting Point 2

Exhibits

Speed Networking

Meeting Point 1Hospitality

Internet Station

Registration

On-Site Registration

Bag/Ribbon Pickup

Guest Ticket Pickup

Online platforms provide theopportunity for just aboutanyone to sell a product orservice, without the resourcesrequired for brick-and-mor-tar commerce. That provides

sellers of counterfeit and contrabandgoods with the perfect hiding place: inplain sight, among countless others, andisolated from the in-person scrutiny of apotential buyer.

Estimates suggest that 60% of allcounterfeit goods are sold online, andbrand owners essentially have two cours-es of action available to them: “Followthe protocols of the IP protection policiesthat all of the platforms have, or pursueand confront counterfeiters and startlegal actions,” according to VirginiaCervieri of Cervieri Monsuárez &Associates in Uruguay, who will moder-ate a panel, CT21, on online enforcementon Tuesday. Many brand owners choose“cooperation” with e-commerce plat-form providers over “confrontation,”Cervieri says.

Tuesday’s panel will feature speakersfrom Tommy Hilfiger, Adidas, Luxotticaand Levi Strauss, who will present threecases demonstrating their coordinationwith popular platforms—Facebook,Alibaba and MercadoLibre. Each of

these e-commerce platforms has policiesto prohibit the sale of counterfeit goodsand prevent IP infringement on theirsites (as do most), but infringers can anddo slip through. Once these counterfeitproducts are on the sites, “the brandowners, in my opinion, have all of thework,” Cervieri says.

“They have to monitor, notify theplatforms and then wait for removal,which can take sometimes almost aweek,” says Cervieri.

While the platforms do have policiesin place, they are not proactive andplace too much of the burden on brandowners, she adds. “The only otheroption available to brand owners is toconfront individual infringers them-selves and begin legal action. Neitheroption is efficient.”

The questions that will be addressedin the session, then, are: “Will the brandowners continue to cooperate, or will theplatforms have to become more coopera-tive, and what are the common problemsthat brand owners are facing with theseplatforms?” says Cervieri.

CT21 Online Enforcement: CounterfeitProducts, Contraband but GenuineProducts, Parallel Imports is on Tuesdayat 11:45

Monitoring onlineplatforms

Exhibitors

www.manag ing ip .com INTA Da i ly News Saturday, May 2 1 2016 1 1

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Today’s Schedule | Saturday, May 21, 2016All events take place at the Orange County Convention Center (OCCC) unless otherwise indicated.

TRAINING SESSIONS8:00 am – 5:00 pm Course on International Trademark Law and Practice - Day 1 W311 - FTRAINING SESSIONS8:00 am – 5:30 pm Advanced Mediation Training: Guiding the Parties to and Through an Effective Mediation - Day 1 W311 - E9:00 am – 11:00 am Continental Breakfast West Hall D9:00 am – 7:00 pm Networking Excursion Desk West Hall E Lobby9:00 am – 7:00 pm Information Desk West D Lobby9:00 am – 7:00 pm Housing Desk West Hall E Lobby9:00 am – 7:00 pm Exhibitor/Press Registration Desk West D Lobby9:00 am – 7:00 pm Registration West Hall E9:00 am – 7:00 pm Hospitality West Hall D9:00 am – 2:00 pm Active in Nature OffsiteCAREER DAY SESSIONS10:15 am – 11:45 am What They Didn’t Teach You in Law School about a Trademark Practice or Trademark Law: A Global Perspective

(Career Development Day for Students) W312 - A10:30 am – 3:30 pm Cooking at Wolfgang Puck - An Award-Winning Chef OffsiteSESSIONS11:00 am – 5:30 pm Anticounterfeiting Solutions for Brand Owners Workshop (By invitation only to in-house practitioners) W315 - ACAREER DAY SESSIONS12:00 pm – 12:30 pm Luncheon (Career Development Day for Students) W312 - A12:15 pm – 1:15 pm Course on International Trademark Law and Practice Lunch W311 - G12:30 pm – 1:30 pm Learning How to Network and Speed Networking 101 (Career Development Day for Students) W312 - C1:00 pm – 5:00 pm America’s Great Escape (Game #1) OffsiteSESSIONS1:00 pm – 2:15 pm CSA01 Experienced Trademark Administrators Idea Exchange and Best Practices (Advanced Level) Tangerine Ballroom West Hall F - 31:00 pm – 2:15 pm CSA02 For the Global Good: A How–to Guide for Pro Bono IP Work Around the World (Beginner to Intermediate Level) W230 - A-B1:00 pm – 2:15 pm CSA03 Tomorrowland: The Future Is Today in Big Data and Analytics for Law Firm Practitioners (Advanced Level) W2241:15 pm – 3:15 pm LUNCHEON TABLE TOPICS W240CAREER DAY SESSIONS1:45 pm – 3:15 pm Careers in Trademark Law: A Panel Discussion for Law Students (Career Development Day for Students) W312 - ASESSIONS2:30 pm – 3:45 pm CSA20 Cultural Intelligence for Trademark Lawyers Today—A Soft Skill Often Underestimated (Beginner to Intermediate Level) Tangerine Ballroom West Hall F - 22:30 pm – 3:45 pm CSA21 Running the Technologically Advanced Trademark Law Firm Practice (Advanced Level) W224CAREER DAY SESSIONS3:15 pm – 3:45 pm Getting Involved with INTA (Career Development Day for Students) W312 - ASESSIONS4:00 pm – 5:15 pm CSA50 The Global Associate Relationship: Choosing and Working with the Best Local Counsel Around the World

(Intermediate Level) W224SESSIONS4:00 pm – 5:00PM Annual Meeting Registrant First-Time Orientation and Reception (Orientation portion) Tangerine Ballroom West Hall F - 15:00 pm – 6:00PM Annual Meeting Registrant First-Time Orientation and Reception (Reception portion) Tangerine Ballroom West Hall F - 48:00 pm - 11:00 pm Get “INTA the Groove” with Kool & the Gang (House of Blues) House of Blues

bskb.com Metropolitan, D.C. 703.205.8000

Since 1976, BSKB has been providing a full range of intellectual property law services to clients in the areas of trademark and patent prosecution, post-grant review, litigation, ITC litigation, opinions and counseling, design patents and licensing.

• •

Protecting the product of your mind for 40 years

1976Birch, Stewart, Kolasch and Birch, LLP is founded with the merging of two firms: Birch and Birch, a firm focusing on electrical patents, and

Stewart and Kolasch, a firm focusing on chemical and mechanical patents

-also-

Apple computer was formed by Steve Jobs and Steve Wozniak