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Monday, 7 May 2012

Amicus briefs: have you met the A Team?

You may not see this A Team
at INTA, but you might spy

 the deadly Amicus hit-squad
As thousands of trade mark proprietors, practitioners and support services converge upon Washington DC for the annual International Trademark Association (INTA) Meeting, it is appropriate to remind readers that it's not all festive fun. Amid the frenzy of networking, business card-swapping, cocktails and buffets, INTA’s committees carry out some very important work on behalf of brand owners. To remind readers of this very serious side of the organisation's operations, the IPKat's friend Tom Scourfield (current chair of the European sub-committee of INTA’s International Amicus Committee) has penned the following observations about the work of his own committee:
"To my mind at least, few committees can be more important than the International Amicus Committee. INTA depends on everyone, not just its members, to alert the organisation to trade mark cases which may affect the interests of brand owners. Being an area of law which is heavily shaped and frequently amended by the (sometimes opaque) case law of the Court of Justice of the European Union (CJEU), not to mention national decisions, Europe is a key area of focus for the Committee.

The role of the International Amicus Committee is to consider and, where appropriate, file an amicus brief. Essentially, this is a document provided to the court by a “friend of the court” not directly involved in the proceedings, which outlines some of the ramifications of the issues under consideration from the perspective of that third party and the group that it represents. From INTA’s perspective, this means filing a brief in suitable cases dealing with issues which may affect the interests of its brand owner members.

INTA’s policies and procedures on submitting an Amicus Request can be found here. Requests can be made to INTA, highlighting a case of importance and providing brief details. Generally speaking, requests must be made at the appellate stage, rather than first instance. Such a request can be made by anyone regardless of whether they work for an INTA member or not. INTA’s International Amicus Committee will consider all requests on the basis of these criteria and, where appropriate, prepare an amicus brief for approval by the Executive Committee.

The decision on whether to recommend a filing is based on whether the matter involves, relates to, or may effect the law of trade marks, trade names, or trade dress, the law of unfair competition, or other related laws (e.g., right of publicity, false advertising, surveys, domain names), or procedural issues related to such matters (e.g., standing, jurisdiction, remedies), and whether a filing would advance the strategic goals and objectives of the Association.

The European subcommittee welcomes requests at appellate level, whether both national proceedings, or those pending before the CJEU. We also appreciate tip-offs on interesting cases to follow – they need not be formal requests.

There is a grand tradition of Amicus filings by INTA, stretching as far back as 1916. A review of the recent submissions filed by INTA will reveal not only a large number of US cases, as may be expected, but also a growing number of European cases, covering key issues in Europe such as Article 10bis of the Paris Convention (Richemont International SA v Russian Patent and Trademark Office, Arbitrazh Court of Moscow, see INTA brief here), goods in transit (Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs (HMRC) before the CJEU, see INTA submissions here and here), and dilution (Intel Corporation Inc. v CPM United Kingdom Ltd before the CJEU, see INTA brief here).
So, if you (or your clients) have a problem, if you would like help, maybe you should contact the A(micus) Team …"
You can send Tom your requests or information here or email Carla Schwartz, INTA’s staff liaison for the committee, here.

The IPKat is all in favour of amicus briefs, particularly to advise courts in jurisdictions in which there is no specialist judiciary and little IP expertise.  He counsels, however, that the role of the amicus can be a delicate one to discharge in the case of trade marks, where the question on which the court seeks guidance is not how trade marks should be protected but, rather, how to strike the right balance between the legitimate interests of trade mark owners, licensees, retailers and distributors, e-tailers and consumers.

Everyone needs an  amicus  
from time to time
Merpel reminds readers that the trade mark fraternity is fortunate to have not just INTA's Amicus Committee at its disposal but also that of INTA's European cousins in MARQUES.  The MARQUES Amicus Team page can be found here, with click-throughs to its members and submissions.  She doesn't know if otter trade mark bodies (here the Pharmaceutical Trade Marks Group and ECTA, the European Communities Trade Mark Association, spring to mind) have amicus teams, though she thinks that the International Association for the Protection of Intellectual Property (AIPPI) may submit amicus briefs from time to time. Can anyone enlighten her?

1 comment:

Anonymous said...

Excellent article. Just to clarify, the acronym for the International Trademark Association is INTA, not ITMA as you mentioned at the beginning.

Thanks for correcting it!

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