As part of ongoing trademark industry engagement, Clarivate colleagues recently participated in the 2021 International Trademark Association (INTA) Annual Meeting Virtual+, with colleagues attending online and in person at all three live mini-conferences in Los Angeles, New York and Berlin. Please read on for a recap of conference highlights and key takeaways from Brian King, Head of Government and Industry Relations and Robert Reading, Head of Content Strategy of Clarivate.
Environmental, social and governance
Coming on the heels of the COP26 Climate Change Conference in Glasgow, the topic of environmental, social and governance (ESG) was the major theme of this year’s meeting, with many sessions focused on sustainability topics. We first heard from experts at Rodan & Fields, Virgin Group and the BBC about the positive impact that these brands and others can make on customers and on the world at large. Then, Tony West, Senior Vice President, Chief Legal Officer and Corporate Secretary at Uber, provided his perspective on corporate social responsibility (CSR) based on his real-world experience helping Uber turn around its brand image. At Clarivate, sustainability is at the heart of all that we do. We’re committed to maintaining the highest level of integrity and ethics, protecting our planet, empowering our colleagues to thrive and building collaborative global communities. Read more about our commitment.
Diversity, equity and inclusion
The topic of diversity, equity and inclusion (DEI) goes hand in hand with ESG and was another significant component of programming during the Annual Meeting. INTA hosted sessions on how brands can help to grow minority and women-owned businesses and how DEI differs across jurisdictions. Andraéa LaVant, impact producer of Netflix’s Oscar-nominated film, Crip Camp (executive produced by President Barack and Mrs. Michelle Obama), provided a riveting capsule keynote on the power of inclusion of people with disabilities. Later in the week, Kourtney Kang discussed making the show she always wanted to make, Doogie Kamealoha, M.D., a Doogie Howser reboot with a multiracial 16-year-old girl as the eponymous protagonist.
The TM5 group of Intellectual Property offices (U.S., China, Japan, European Union, South Korea) hosted a session discussing the key issues and projects that major IP offices are currently working on. 2021 has been a record year for trademark filing activity around the world and all the TM5 offices are focused on reducing examination delays by hiring new examiners and investing in new technologies. The TM5 offices are also collaborating to harmonize working practices and review trademark law as brands increasingly move online.
At several sessions during the meeting, presenters updated trademark practitioners on technology developments that may impact their practice. The EUIPO presented their IP Enforcement Portal (IPEP), and a panel of experts from Oracle, Caterpillar and Loeb & Loeb discussed technology developments in anticounterfeiting, including blockchain technology. Another panel covered brand protection in emerging industries like financial technology (FinTech), gaming and animation. A separate panel of experts from Electronic Arts, Facebook Reality Labs and Morrison Rothman discussed the future of IP in virtual marketplaces, i.e. “the metaverse.”
In a session on “What is Expected from a Leader,” previous and upcoming INTA presidents were joined by IP leaders from major corporations to recall the leaders and inspirational figures who helped shape their careers. They discussed mentorship, and reminded attendees that as important as it is to share knowledge, it is even more important to share opportunities (sponsorship).
Annual review of key European Union and United Kingdom case law
Tom Daniel Scourfield (CMS), Jordi Guell (Guell IP) and Martin Viefhues (JONAS) reviewed some of the key decisions from the last year in the European Union and United Kingdom.
- Saint Germain/St-Germain, where the CJEU found that even if a mark was revoked for non use, it was entitled to protection from infringement while it was active
- Difficulties that brand owners face when trying to enforce retired brands, such as Ferrari’s TESTAROSSA
- Needs surrounding defining unauthorized use of trademarks in advertising
- The burden of proof on an IP office to support a decision on potentially offensive marks, not on the applicant to prove that the mark is not offensive
- Protected symbols – such as the Red Cross – cannot be used by third party trademarks even as an element of a different mark
- 3-D trademarks should not specifically mention color unless they meet the rules that apply to color trademarks, i.e. the description should not be broader than the representation
Annual review of key United States case law
Among the most popular educational opportunities of each INTA Annual Meeting is the U.S. case law review, delivered this year as done previously by Ted Davis and John Welch. This session covered developments in U.S. federal case law, as well as at the USPTO Trademark Trial and Appeal Board (TTAB).
Highlights included an update on the Trademark Modernization Act (TMA) – for which the USPTO announced its implementation regulations last week – including the circuit split the TMA resolved by confirming the presumption of irreparable harm upon a violation of the Lanham Act. The U.S. case law review also noted a trend in Supreme Court jurisprudence in favor of flexible standards, rather than bright-line rules, in trademark cases, as well as an across-the-board trend in litigants invoking the First Amendment’s protection of free speech.
Even in a hybrid virtual/in-person environment, the INTA Annual Meeting remains the preeminent education and networking conference for trademark practitioners. We look forward to seeing many customers and industry colleagues in person at the 2022 Annual Meeting from April 30 – May 4, 2022 in Washington, D.C.
If you missed us at the Annual Meeting, Clarivate experts remain available to help with any questions you may have on technology, case law, trademark or brand protection, please contact us.
 Source: Clarivate data