The International Trademark Association (INTA) has adopted a resolution that reinforces the association’s stance against increasing and more expansive government restrictions on how a brand symbol can be used or displayed on a product or in association with services, including prohibiting the use of the brand symbol and restrictions on its capitalization, font, size, location, and color of elements.

The resolution sets out the factors governments should consider when adopting or imposing any branding restrictions, which can erode brand value and personal private property rights, diminish consumer choice, and weaken fair competition among competing products.

The action by INTA’s board of directors updates its resolution on the Restrictions on Trademark Use through Plain and Standardized Product Packaging, adopted in May 2015. It reflects INTA’s growing concern that brand restrictions are “de facto becoming a much broader phenomenon” since the earlier resolution.

Specifically, the trend is expanding beyond tobacco products to other product categories, such as food and beverages, pediatric nutritional replacements, and pharmaceuticals – and now impacts or threatens to impact statutory and common law protection regarding the use of word marks, logos, packaging, product shape, colors, and other source-identifying mechanisms (including sounds, smells, three-dimensional marks, and other nontraditional marks) that constitute the totality of a brand’s image.

“INTA stands firm in our resistance to overly intrusive brand restrictive policies increasingly being adopted by governments across the world,” said INTA president David Lossignol. “This marks a slippery slope that poses a threat that extends beyond brand identity – to economic health and consumer choice and safety. We hope this resolution sends a clear message to policymakers about the implications of this alarming trend.”

The resolution affirms the association’s position that “trademarks are intangible personal private property rights (positive rights), not merely the right to exclude others from using confusingly similar marks (negative rights), and should be protected to the same extent and degree as all other forms of personal private property, both by law and treaty.” It points to several international treaties that have clear provisions against imposing restrictions on trademarks and any unjustified encroachment.

Further, it states that such prohibitions should “prima facie not be valid unless the relevant governmental authority can establish that each such measure is based upon a compelling public interest that outweighs the brand owner’s property right and economic investment in the brand symbol and the benefits to the public associated with exercise of that right, such as fostering consumer choice, protecting fair competition, preventing counterfeiting and other illegal activity, and encouraging freedom of expression; and is both (1) proportional to the alleged harm which exploitation of the owner’s intangible personal private property right is alleged to cause, and (2) on a balance of probabilities and based on compelling and credible quantifiable evidence, no more restrictive on economic value and use of the brand symbol than is necessary for the relevant governmental authority to achieve its legitimate public health or safety objectives.”

The association’s position on brand restrictions aligns with another one of INTA’s policy priorities – anticounterfeiting. “We’re really talking about a double threat,” Lossignol noted. “Restricting or eliminating trademarks and logos on packaging can actually increase the dangers to consumers because it eases the process of counterfeiting a product. Lives and livelihood are on the line.”

In recent years, INTA has weighed in on brand restrictions in 23 jurisdictions across Africa, Asia, Europe, and the Americas. In the past two years, it has filed submissions with governments in Canada, Chile, the Netherlands, South Africa, Singapore and Thailand, as well as with the Appellate Body of the World Trade Organization.

In its advocacy outreach to policymakers, INTA emphasizes the contribution of intellectual property to local and national economies, as evidenced by the findings of the impact studies it has conducted in Asia and Latin America. Most recently, in October, INTA and the Inter-American Association of Intellectual Property released a report showing the substantial benefit of trademarks to 10 Latin American and Caribbean economies, including an average contribution of 22% to the total gross domestic product and 18% to employment in the countries studied.

The board adopted the resolution at a meeting on November 19 during INTA’s 2019 Leadership Meeting in Austin, Texas. It also adopted three other resolutions: the Protection of Geographical Indications Resolution, stating INTA’s position on the protection of geographical indications as it relates to trademarks and to generic terms with geographical significance; revisions to the Model Design Law Guidelines, which serve as a baseline standard by which INTA could analyze or comment on national and regional design laws and regulations; and the Fair Use in Copyright Law Resolution, setting out INTA’s position on the principles and application of fair use in copyright in the United States.