INTA’s Role as ‘Friend of the Court’
The Association’s amicus submissions to courts around the world play an important role in guiding international law, finds Tom Phillips.
The hard work and notable successes of INTA’s International Amicus Committee were shared during a packed session yesterday, Saturday, April 30.
“If you’ve got an interesting case that raises a cutting-edge issue, the sooner you tell us about it, the sooner INTA will have an idea about whether it will participate,” urged David Bernstein, partner at Debevoise & Plimpton LLP (US).
Moderated by Adam Scoville, vice president, general counsel, and chief compliance officer at Re/max Holdings, Inc. (US) and the 2022-2023 chair of the International Amicus Committee, INTA’s Role as Friend of the Court—Review of Amicus Briefs Filed Since 2020 unpacked 12 amicus briefs INTA has filed in Europe, India, and the United States in the past two years.
Noemi Parrotta, partner at Spheriens (Italy), outlined the seven European amicus briefs INTA had filed over 2020-2022, under the leadership of the Committee’s vice chair, Marina Perraki, attorney at Tsibanoulis & Partners Law Firm (Greece).
These include Euromadi Iberica, S.A. v. Zorka Gerdzhikova, which was handed down by the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal on April 13, 2022.
In this case, which involved arguments on the approach of the courts toward similarity of goods (specifically alcoholic and non-alcoholic goods), INTA argued that a rigid approach to similarity “may no longer be consistent with the current market practice and the perception of the relevant public.”
“We’ve gotten to the point where Supreme Court cases have multiple advocates.”
David Bernstein, partner, Debevoise & Plimpton LLP (US)
The Grand Board of Appeal in its decision largely agreed with INTA’s position and “made ample reference” to the Association’s brief, explained Ms. Parrotta. “so we were very proud,” she added.
Other briefs include a rejected EU trademark application filed by the estate of the author George Orwell involving book covers for Animal Farm and 1984; and Acacia S.R.L v. BMW, a complex case dealing with Registered Community Designs in which the Court of Justice of the EU was substantially in line with INTA’s position.
Sharing the latest from India, Honorable Justice Prathiba M. Singh, High Court of Delhi (India), explained how amicus briefs have grown in importance for India’s courts over the past five or six years.
Justice Singh pointed to a Parliamentary Standing Committee Report, published in July 2021, which said India needed a panel of amicus curiae assisting the courts in dealing with intellectual property rights matters.
She believes INTA plays three roles as an amicus curie organization: providing expertise, bringing an “unbiased position to the table,” and offering an international perspective on the proper interpretation of the law.
“INTA’s experience can be very helpful,” said Justice Singh, who recounted two cases to which INTA had submitted briefs, in 2020, TATA SIA Airlines Limited v. Union of India, WP (C) 11642 of 2019, and, in 2013, Samsung Electronics Co. Ltd. & ANR v. Kapil Wadhwa & Ors.
Mr. Bernstein then outlined INTA’s submissions in the United States, a country that has what he called a “long tradition” of amicus briefs.
“It’s great to see that that position is now taking hold around the world,” he said.
“INTA’s experience can be very helpful.”
Honorable Justice Prathiba M. Singh, High Court of Delhi (India)
Mr. Bernstein emphasized the significance of amicus briefs, noting: “When we are playing the role of ‘friend of the court,’ we have an important role to play, and there’s a lot that we can do to help the development of the law in the United States.”
Traditionally, INTA always filed briefs with the Supreme Court of the United States. But a deluge in submissions being made to the Supreme Court by different parties has seen a change of strategy, with INTA instead now focusing more on the Courts of Appeals.
“We’ve gotten to the point where Supreme Court cases have multiple advocates. And you begin to wonder whether any of the justices are actually reading them,” said Mr. Bernstein.
“The prospect of really influencing the Supreme Court’s decision is more narrow at the Supreme Court level, because the parties are usually so well represented at that point.”
At the appeals courts, there are often only one or two advocates, and the Association can “play a much bigger role,” he said.
He then explained the background behind some of INTA’s U.S. briefs, including some important cases, in 2021, at the U.S. Supreme Court involving functionality: Sulzer Mixpac AG v. A&N Trading Co.; and the well-known “Pocky” chocolate sticks case, Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp.
In Sulzer, by the time INTA was told about the case it was going up for certiorari. INTA submitted its brief, but, because the Supreme Court denied the request for a hearing, INTA “has no way of knowing” whether its submission was read or not. “This shows how important it is for us to have the chance to intervene earlier in the case, if at all possible,” said Mr. Bernstein.
Mr. Scoville invited INTA members to submit requests for the Association to submit a brief, following the procedure posted on INTA’s website to request the Committee’s involvement.
“We desperately need your help in helping us become aware of these cases at an early stage so we’re not finding out too late, where our voice may be one of a cacophony or there will be too little time for us to participate effectively,” concluded Mr. Scoville.
Video courtesy of Envato Elements / Stockland
Sunday, May 1, 2022
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