Gerhard Bauer discusses the opportunity for India’s brands to go global, the hurdles facing international IP owners and the challenges he encounters as head of the world’s largest trademark organization
On 14 May, around 8,500 delegates from more than 140 countries will converge in San Francisco for the 133rd annual meeting of the International Trademark Association (INTA). The Indian delegation looks set to be larger than ever before. Meanwhile, concerns over the management and protection of valuable brands in India will loom large among many of the attendees from other parts of the world.
INTA’s president Gerhard Bauer is no stranger to India. In his role as chief trademark counsel at Daimler, one of the 36,000 trademarks under his control is the newly created “Bharat Benz” marque, which will adorn commercial vehicles in South Asia from next year.
Bauer spoke exclusively to India Business Law Journal about the opportunities and challenges facing international trademark owners in India and Indian trademark owners in the rest of the world.
India Business Law Journal (IBLJ): You took over as the president of INTA on 1 January. What have been the greatest challenges you have faced in the role?
Bauer: INTA is a very exciting association with very many different tasks. There’s such a diversity of members and equally a diversity of issues and interesting topics to deal with. Being the president, of course, is very challenging. The biggest challenge has been the ever-changing environment in the trademark world – whether it’s new legislation or new issues created by society, like social media and the internet. All these issues make it very interesting.
IBLJ: INTA is a global organization. Which countries are of greatest concern to your members and what developments in these countries are they monitoring most closely?
Bauer: There is definitely a greater focus on the BRIC countries – Brazil, Russia, India and China. In India and China, IP laws have undergone major changes. Legislation has been amended and modernized, so you encounter new situations and have to find strategies for dealing with these situations.
But the changes aren’t confined to India and China. They also relate, for example, to the European Union, where we have new legislation coming up with respect to community trademarks. This will necessitate the further harmonization of legislation in member states as well as convergence in practices by the national offices. So, the interaction between national offices in the European Union and the community trademark office – the so-called Office for Harmonization in the Internal Market in Alicante – is of the utmost importance.
IBLJ: What impact did the global economic downturn have on companies’ IP protection strategies?
Bauer: There was, of course, an overall effect on all industries in all jurisdictions. However, there was not a big decline in the number of trademark applications, which indicates that the crisis did not diminish the importance that companies place on the protection of their IP portfolios. The need for continual protection was clearly recognized.
Admittedly, there were budget cuts at many companies and this meant that you had to come up with very smart solutions to handle IP problems with limited resources.
IBLJ: How did in-house counsel respond to this challenge?
Bauer: They had to change their mindsets to not only deal with legal issues, but to become effective managers. With budgetary constraints, you have to explain to your internal clients how to best use your financial resources to come up with the right solutions. So there’s a change from pure legal work to a focus on management. Changing your mindset is always a process; it’s not merely switching from one task to another. And at the same time, you still have to keep your legal expertise.
IBLJ: What are the emerging trends in trademark management?
Bauer: As I mentioned, it’s the more managerial aspect of handling trademark portfolios that is a new trend. It is not necessarily only a single trademark that’s being protected. Most companies have a huge trademark portfolio. My team and I have to handle more than 36,000 trademarks worldwide, so the managerial challenge is coming up with tactics on how to handle this. It’s not only the process of filing a trademark in this country and that country, but finding clever and smart strategies on how best to file and how to make use of the different systems for registering and protecting trademarks.
IBLJ: With in-house counsel playing a greater role in the management of trademark portfolios, how is the workload being divided between company lawyers and external advisers?
Bauer: It’s a complex approach. The decision-making process takes place inside the brand owner’s company, but of course you are relying on support from a number of different sources, like outside counsel in the different countries in which you are looking to register and external service providers for administrative matters to help create a space for internal counsel to work more freely.
IBLJ: How can in-house counsel ensure that their IP protection strategies are aligned with the commercial strategies of the business?
Bauer: This is our daily business. It’s our usual job to be aligned with commercial strategy and in very close contact with the product development side as well as the marketing and communications departments. We are in daily contact with these departments at our company and this, combined with the expertise of local counsel, helps us to identify problem areas and formulate practical solutions.
IBLJ: What advice would you offer to international trademark owners on countering the multitude of threats they face in India and other markets?
Bauer: The best course of action is for brand owners to act not only as individuals, but also through associations like INTA, where we have specialized committees working on these matters, where we come up with proposals, statements and position papers and where we can also monitor the development of situations. This monitoring, acting, making our voices available to the authorities, to the bodies which are involved in these issues, will deliver the most positive effect for brand owners.
IBLJ: One particular threat that has risen to prominence in recent years is the online trade in counterfeit goods. What can be done to tackle this problem?
Bauer: More and more counterfeit goods are being traded via the internet, so we have to come up with ways of identifying this trade and finding ways to stop it.
A major step forward is the Anti-Counterfeit Trade Agreement which promises greater harmonization among signatory countries. At the end of last year, I was very happy to see that the text of the agreement had been approved by the negotiating countries. This is a great success and not an easy task. It’s a global issue and negotiations on the agreement have so far included Australia, Canada, the European Union, Japan, Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland and the United States. I hope that more countries – including India – will join us. This is just the starting point.
IBLJ: In addition to your position as INTA president, you are the chief trademark counsel at Daimler. In this role, what have been your experiences of protecting trademarks in India?
Bauer: The Indian market is an evolving process. I’ve seen – and I very much appreciate – the efficiency of Indian authorities like the trademark offices. Their efficiency has increased a lot over the years and there have been noticeable procedural improvements. In the past, trademark registration in India was a lengthy process which took up a significant amount of time. It’s much quicker today, which gives brand owners the security and safety of knowing that their brands are protected.
Another major step forward will be India’s accession to the Madrid Protocol. This will provide greater protection for marks in India as well as assisting Indian trademark owners with the protection of their marks in other countries.
Of course, enforcement problems still exist. Counterfeit goods are everywhere, so there’s still a lot to be done. We are looking forward with great hope to further developments in this respect.
IBLJ: Do you have any specific advice for international trademark owners on protecting and enforcing their rights in India?
Bauer: I don’t think there is any specific advice I would give except to start with protecting your brand as early as possible. But that’s equally valid for all markets and nations.
IBLJ: What has been your experience of working with Indian law firms?
Bauer: I’ve worked with a few firms. They are good law firms. We have long-time relationships with law firms in India and we have very much appreciated their work and their advice. We’ve seen very skilled staff and leaders at these firms.
IBLJ: How do you see Indian brands developing in international markets?
Bauer: I’m convinced that Indian companies, including small companies, will succeed in building their brands in international markets. In India, the manufacturing industry is great and there is also a flourishing service industry. The country’s service providers are big and I’m looking forward to them becoming more visible by using their brands.
Brands are a communication tool. Europe has a very sophisticated market and very erudite consumers who know how to differentiate between products by using the brands as a sign of trust. Therefore, as Indian brands become better known in overseas markets, sales of Indian products are likely to increase.
There are already many well-known Indian brands. Take for example the travel industry. Some years ago, “Kingfisher” was not known in Europe. Now it’s a well-known airline. Then there’s the Tata brand, of course, in all its different versions. Those are just two examples.
India has its share in the global economy, so why not participate in this global brand world?
IBLJ: As more and more Indian brands go global, what advice do you have for the in-house counsel who are tasked with managing and protecting them?
Bauer: It’s going to be a challenging year with many changes. The best thing to do is be up to date with these changes. I would like to invite as many Indian brand owners as possible to work actively on these issues – to work in the committees of INTA, to bring their specific views as well as their specific needs to the table so that the global trademark community can benefit from their local experience.
Gerhard Bauer is the president of the International Trademark Association and the chief trademark counsel of Daimler.