2020 Annual Meeting Offers Content with Focus on Asia - International Trademark Association

Rena Lee, Chief Executive/Registrar of the Intellectual Property Office of Singapore (IPOS)

This year’s Annual Meeting program offers 12 educational tracks—a new format this year—and one of them has been designed to deliver substantial content relevant and accessible to the trademark community in Asia.

All sessions of the Developing Issues in China educational track will be presented in Mandarin and will be offered in the China Standard Time (CST) Zone (GMT+8 hours; EST+12 hours), on Wednesday, November 18.

Just announced are the Keynote and Capsule Keynote speakers for this track. Having a deep understanding of intellectual property (IP) law in China, Chuntian Liu, Professor of Law and Academic Supervisor for LLD Candidates at Renmin University of China, will deliver the Keynote address. His presentation kicks off the day’s programming at 9:30 am (CST).

Then, later in the day, the Capsule Keynote speakers will provide further insights into the IP scene in China: Zhimin He, Vice Minister of the China National Intellectual Property Administration (CNIPA); and Zhe Zhuang, Senior Vice President of the CVTE, a high-tech company rooted in innovation and ranked as the global No. 1 LCD TV main board solution provider.

Throughout the day, sessions on this track will explore critical issues, such as bad-faith filings, trends in IP rights enforcement, artificial intelligence, big data, parallel imports, and the implementation of trademark and brand strategy following the amendment to the Trademark Law in 2019.

Addressing one of the most pertinent topics for brand owners looking to operate in the market is the Bad-Faith Workshop: From Defenses to Damages, at 7:00 pm to 9:30 pm (CST). The workshop, presented in Mandarin, will offer a unique opportunity to hear from leading figures in China’s IP system, including Zhiyu Zhuang, the CNIPA’s Deputy Divisional Director.

Trademark filing activity in China has surged over the past decade. Last year, more than 70 percent of world trademark filings originated there, with more than four million filed in the country in the first half of 2020. This reflects China’s growing influence and contribution to the world economy, but it has also raised concerns over China’s trademark registers being clogged with trademarks registered in bad faith. China operates on a first-to-file system.

As brand owners know, bad-faith trademarks can present a serious barrier to commercializing and protecting IP. Perhaps most notably, in 2012 Apple paid an estimated US $60 million to settle a dispute with a Chinese computer monitor manufacturer to ensure it could use the IPAD trademark in one of its most important markets.

The problem has not gone unnoticed by Chinese authorities, who have demonstrated a commitment to stop bad-faith applications and IP infringement. The workshop will offer attendees an opportunity to hear from leading figures in the Chinese legal system on how authorities are dealing with bad-faith applications. One question up for discussion will be whether bad-faith applicants should compensate victims with the costs incurred in pursuing oppositions and invalidation proceedings.

Just as important is the question of bad-faith infringement. The workshop will provide attendees with an update on reforms to the Civil Code, due to come into effect on January 1, 2021, which provide for punitive damages. Speakers will explore the role bad faith should play in calculating damages awards and assess how valuable a tool this could be in the hands of brand owners dealing with serious infringement.

The Meeting will feature another day of sessions offered in the China Standard Time Zone, but this time conducted in English. It takes place on Thursday, November 19, beginning at 9:30 am (CST).

An early Capsule Keynote highlight, Key Issues Affecting Brands: A View from the IPOS, will take place at 11:15 am (CST). Rena Lee, Chief Executive/Registrar of the Intellectual Property Office of Singapore (IPOS), will give her take on the key issues affecting brands, bringing her insight and experience from IPOS to bear in what’s sure to be a must-see presentation.

“IP offices play an important role in supporting innovation and enterprise growth through the effective use and commercialisation of IP and intangible assets. In such unprecedented times of challenge and crisis, it is all the more important that IP offices work with partners both in the public and private sector alike, to help businesses thrive through innovation and change,” Ms. Lee said.

“In this regard,” she added, “IPOS has introduced several new exciting initiatives, whilst leveraging on digital transformation and improved internal processes, and we look forward to sharing how these can help drive growth through IP.”

Indigenous Rights

Thursday’s programming also includes a Capsule Keynote address at 1:00 pm (CST), delivered by Wend Wendland, Director of the Traditional Knowledge Division at the World Intellectual Property Organization (WIPO) (Switzerland). Mr. Wendland will discuss international developments in indigenous rights, and what brand owners need to know to ensure they don’t infringe indigenous IP.

The past year has seen a number of key developments in advancing the level of protection offered by the IP system to indigenous people. These include what IP Australia described last November as a “ground-breaking” report on the economic value of indigenous knowledge. In response to this and other studies, the Australian government is weighing legislative reforms to enshrine protection of indigenous IP and knowledge.

“Indigenous and local communities often have designs, symbols, and other signs they would like to use and protect as brands, but they don’t always know how to leverage the benefits of the trademark system,” Mr. Wendland said.

In his role, Mr. Wendland regularly collaborates with INTA, which he describes as a “valuable partner,” to explore how the trademark system can better benefit indigenous communities.

He noted, for example, that a trademark attorney, an INTA member from the Philippines, recently provided training during a WIPO practical workshop for indigenous and local communities and government officials from six Asian countries. “It was a success and a good experience to build on,” Mr. Wendland said.

The session will be key for brand owners who want to develop stronger policies on respecting indigenous IP and avoiding infringement.

“Brand owners sometimes copy or draw on indigenous creativity when designing brands or marketing goods and services. This is risky if not done in an inclusive, respectful way,” Mr. Wendland said, warning of the risk of reputational damages to brands.

“Brand owners who wish to use indigenous materials should ensure prior and ongoing consultation with the community and engage with them in an inclusive, equitable, and respectful way,” he said. “This is the key to a mutually beneficial collaboration.”

Future Practice

Another session to watch for is the Town Hall on the IP Practice of the Future: A View from Intellectual Property Offices, In-House and Law Firm Leaders, from 9:30 am to 11:00 am (CST). It will draw together leading in-house counsel, law firm leaders, and IP office representatives. Leaders from INTA’s three think tanks involved in this initiative will present their findings on how IP practice is likely to evolve in the face of new challenges, and the emergence of new technologies. (A similar Town Hall will be held earlier in the week, on Tuesday, November 17, 9:30 am–11:00 am (EST).

Given China’s status as a leading player in regional and international e-commerce, another valuable session on Thursday’s agenda is Bringing Your Business Online in China at 11:45 am (CST).

Despite the importance of this market, “to date there has been almost no commentary on how to create a proper online branding strategy for China,” said George Chan, Simmons & Simmons BJIPA (China), an IP attorney based in Beijing who will moderate the panel.

“Consequently, we have seen many brands adopt an ‘If You Build It, They Will Come’ strategy for China’s online marketplace, with little to show from their efforts,” he suggested.

According to Mr. Chan, the panel consists of experts on online branding for China, who have guided hundreds of brands with successful online branding strategies, as well as trademark lawyers who were responsible for successfully creating trademark portfolios for hundreds of foreign brands entering the Chinese market.

At this year’s Meeting, INTA is making it easy for registrants in other time zones to take advantage of educational offerings. In addition to the sessions noted in CST, registrants who miss these live sessions or others throughout the week can capture them on demand. The Meeting’s presentations will be available in the on-demand format shortly after they are given in real time.

In addition, you’re invited to participate in a Watch Party where you can view a recorded version of select sessions and have live chat discussions with others in the same time zone. These hosted events are scheduled conveniently during business hours in several regions, including Asia.

This article first appeared in the pre-Meeting edition of the INTA Daily News, published on October 14. Read the entire issue here.

Updated: October 23, 2020

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.