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Newly elected president of the International Trademark Association (INTA), Joseph Ferretti, leads the global organization in its adventures in 2017, as it transits to a new strategic plan and opens a new office in Chile, while simultaneously continuing to address some of the biggest challenges in the trademark field worldwide.
Leaders League. In what way does your work at INTAenrich your work at PepsiCo?
Joe Ferretti. I am extremely lucky and privileged to have both experiences. INTA connects me with top professionals from all around the world, and being involved in INTA allows me to see more quickly more global legal trends and to understand policies that affect trademark laws, so I can apply the new laws and trends to my work at PepsiCo strategically.
What are the strategic differences between brands and trademarks?
In the world we are living in, brands are taking on a much larger importance than they ever have before. As trademark professionals, we are increasingly working with brands, not just trademarks, and because of that we have to – or should – think holistically. Consumers understand the concept of brand, but a trademark is a little more challenging for someone outside of the legal community to understand. It’s important that we as trademark practitioners speak the same language as the person on the street. The concept of a brand includes the trademark – as its foundation – but it expands to all sorts of emotional and social attributes of a product and its company, so I think that there is a shift in the trademark industry, and we as practitioners need to adapt to that.
Would there be a risk of diluting the legal status of trademarks if we talk more about brands?
Quite the opposite, trademarks remain critical for us to protect brand rights and I am not at all suggesting diluting it. In some parts of the world, laws and trends are not helpful to trademark owners or consumers, and through INTA we can make sure that changes are heading in the right direction. It is important to keep in mind that trademarks are the foundation of brands and everything else should be built upon it, though we also have to have a broader understanding of the entirety of the brand, because that drives the purchasing decisions of today’s internet savvy and socially conscious consumers.
How does INTA plan to organize its task force on brand restrictions and what do you hope it will achieve?
It’s a very important task force, because we continue to see laws aimed at restricting brands, which is a big threat to brand owners. Importantly, it is also a threat to consumers, because it is harder for a consumer to identify and distinguish the product that they are looking for, as the brand has been restricted, whether it’s been made smaller, had aspects taken away, trade dress or colors not used, etc. The task force is a superstar group of trademark professionals, led by former president of INTA Kathryn Barrett Park, and Burkhart Goebel, a European attorney who is also an expert in this field. It’s also a wide group: some members are specific experts, others come from geographies that either have or are currently experiencing laws being passed that impact brands.
What we expect from the task force is to understand all the types of laws that exist, or are being offered to be passed or that are being interpreted in a way that impact brand, and this is not limited to plain or standardized packaging. The task force is also to look at the initiatives that INTA should take with regard to brand restrictions around the world. INTA has a great history of weighing in on legislation that has been passed or submitting briefs to courts in support of brand owners and consumer rights when restrictions are being passed, and we can also pair up with other legal or marketing organizations.
What are the highlights of INTA’s 2018-2021 strategic plan?
The new strategic plan will build upon the existing one in a very natural way, but there are also some new specifics that I’d like to highlight. When we were developing it, we reached out to INTA members, core stakeholders and related entities such as intellectual property offices, but also to new stakeholders such as marketing experts and company executives because we are looking to ensure that we are forward-thinking as we craft what we believe to be the next step. Secondly, we wanted to have more of a focus on the overall concept of brand, because of the reasons I mentioned previously.
How is INTA going to support the Latin American market in IP protection?
After opening an Asia Pacific Representative Office in Singapore last year, we are extremely excited to be able to open a Latin America Representative Office in Chile, this year. In February 2017, INTA released its impact study on counterfeiting and piracy and being in Latin America will help us take that directly to important stakeholders, which will help make our work more effective. Certain countries in Latin America, like other parts of the world, have long pendency times or backlogs at IP offices and being there will allow us more easily to talk about procedural processes regarding trademark rights. With a local presence, we will be able to connect with Latin American members, government officials, IP offices and trademark offices to talk about IP challenges like counterfeiting, which are not unique to Latin America in the end.
How about Africa?
To be a truly global organization, we certainly want to ensure that we have representative offices in all regions around the world. We will look at places where we can continue to grow and Africa is way up on the list.
To wrap up, what have been INTA’s most notable achievements over the past years and what goals do you hope are accomplished during your tenure?
That’s a broad question, so let me just hit a few of the highlights. In the last three years INTA participated in the European trademark reform, adopted in December 2015, and we also submitted comments to the Supreme People’s Court for China’s new trademark laws, which went into effect in May of 2014. The first bicameral, bipartisan congressional trademark caucus was formed in the US Congress and INTA has been very active in that. From a communications standpoint, we launched a quarterly global report which provides regional updates and resources for eight key jurisdictions, and we also expanded our policy, resources and communications activities and published two impact studies, one on counterfeiting and piracy, and the other on trademarks in Latin America. Regarding internationalization, we had our first annual meeting in Asia, in Hong Kong, hosted a leadership meeting in Panama, held our trademark administers and practitioners meeting in Alicante, and held the Building African Brands conference in Cape Town.
Looking ahead, we have our annual meeting coming up in Barcelona in May, which is good because we just celebrated the 10 year anniversary of our Europe representative office last September. The passing of our new strategic plan is exciting, and I am also looking forward to the report by our brand restrictions task force, hopefully presented before the board in September. Last but not least, last year’s task force on in-house professionals did a remarkable job, and we will certainly implement all the knowledge we gained from that task force this year.