28 NOV 2016

Mariya Ortynska attended INTA Leadership Meeting in Miami

“The only constant is change” is a familiar saying, and it has never been more relevant than in 2016!” This is the motto of the INTA Leadership Meeting that took place on 15-18 November in Hollywood, Florida.

Traditionally, the representatives of INTA committees discussed effective trademark enforcement strategies. According to Mariya Ortynska, CEO, IPStyle Patent Law Firm, member of INTA Anticounterfeiting Committee (ACC), the ACC is currently dealing with two major issues: criminal sanctions for counterfeiting, and new regulations that would make it possible to file lawsuits against unknown infringers (John Doe lawsuits) in different countries throughout the world.

In addition, the issues regarding the global change have been on the agenda, including the eventual Brexit, and the growing influence of the social media towards businesses, and businesses actively using social media tools. Brexit has caused anxiety not only in the UK and the EU, but all over the world, since trademark owners from various countries, including Ukraine, have started wondering:

  • whether EU trademark protection is going to apply to the UK;

  • is it time to apply for extra trademark protection in the UK?

  • what if the territory of the license agreement is limited to the EU?

  • It is obvious that until the UK officially withdrawals from the European Union, EU trademarks will be valid throughout the European Union. There’s still no information concerning the post-Brexit regulation, but it is highly likely that EU trademark protection will not apply to the UK. That’s why numerous European and other companies register their trademarks in the UK along with the EU trademarks. Together with trademark registration, the companies, including those incorporated in Ukraine, have to review the territory clauses in all their license agreements, co-existence agreements, and distribution agreements. For example, if a license agreement applies to the EU, then after Brexit, it will no longer be valid in the UK.

    IP rights in social media was the next important issue that was discussed during the INTA Leadership Meeting. Since businesses are rapidly going into the social media, the question is, how can right in social media be protected and how can infringement of the rights of third parties be avoided. Any publication posted in social media can be copyright protected, and marketing, as well as content managers, should understand that if they use any other user’s publication, they may be accused of copyright infringement. In addition, one ought to bear in mind that:

  • when it comes the protection of rights in social media, content managers should be involved instead of lawyers, since this is much more effective. If someone posts a defamatory statement about any company, its content managers will immediately provide feedback and deal with the conflict;

  • it’s a good thing to remember about the right of publicity;

  • a company may also be charged in case it violates the rights of customers and uses deceptive business practices in social media.

  • And finally, the most interesting question. Is it possible to register hashtags as trademarks? For now, it is possible in the USA, Brazil, France, Italy, and Canada. And year on year, the number of applications has been increasing exponentially. For example, in Canada, there were zero applications in 2010, while in 2016, 39 applications were filed. In the USA, only 3 applications were filed in 2010, as compared to as many as 487 applications filed in 2016.

    According to the Ukrainian Journal of Business Law (link on the original material)