One-minute read
Rhonda Steele says she wants to turn the world of IP on its head. As a non-lawyer who worked her way up the IP ladder through “on-the-job training” and INTA’s first president based in the southern hemisphere, she is well positioned to bring a fresh perspective to the Association. Steele met with Eileen McDermott at INTA’s New York office just a few days into her Presidency to discuss her goals for the 130th Annual Meeting and the coming year: areas she plans to focus on include emerging markets and fostering internal and external alliances. Steele also explains how Mars’s IP group is structured, and how trademark work is handled, and advises practitioners not to avoid asking stupid questions.
Rhonda Steele has been working to protect Mars Incorporated’s intellectual property in Asia-Pacific for over 16 years. As Marketing Properties Manager for the company’s Asia-Pacific region, Steele plays a key role in protecting its more than 80,000 brands worldwide. But despite her present passion for IP, Steele says she ended up in both trademarks and Australia “by accident.”
Born in England, Steele spontaneously accompanied a friend on a 12-month working holiday to Australia when she was not long out of university. Soon after arriving, Steele took a job with Baker & McKenzie, as a secretary for the partner in charge of the IP department, who first piqued her interest in the field and who also handled Steele’s present role for Mars on a part-time basis. “Back in 1983, which is when I first had anything to do with Mars, it was very small in Asia-Pacific,” says Steele. “Mars had some manufacturing in Australia and two multi-sales offices, one in Hong Kong and one in Singapore, but they didn’t really need someone on a full-time basis.”
After four years of working as a secretary, during which time her interest in trademarks continued to blossom, Steele took a position as a paralegal in Baker & McKenzie’s general trademark department, before moving on to a senior paralegal position working exclusively for Mars. “I did that for about five years and absolutely loved it,” says Steele. “I was helping to manage their trademark portfolio in the Asia-Pacific region, doing all of the establishment work, maintenance and enforcement and working with a network of lawyers.”
When Steele’s boss at Baker & McKenzie resigned, Mars asked Steele to join their team full time. It was also at that point that Steele was first introduced to INTA, since her new boss at Mars, Garo Partoyan, was serving as President of the Association: “My first Annual Meeting was in San Francisco in 1991. I was actually interviewed for my job there [by Partoyan] so it seemed quite fortuitous. I’ve only missed two Annual Meetings since then, and both of those coincided with the birth of my children.”
Such commitment reflects Steele’s general enthusiasm for trademark issues, and she has vowed to bring new light to some less-familiar areas this year.
A new view on emerging markets
As part one of her vision, Steele wants to place increased emphasis on engaging emerging markets in the IP discussion in culturally sensitive ways: “For me, being the first INTA president to come from the southern hemisphere, what I’ve been saying is that I want to turn the world upside down and look at things from a different angle,” says Steele. “I want to take some of the emerging markets like Latin America, Africa and the Middle East, India, and take a different look at them. We have such a huge amount of expertise in North America and Europe—we have highly developed legal and trademark systems, but is simply taking that experience and making it fit those southern hemisphere regions really the right way to go? I want to make sure that we have a dialogue about what’s most appropriate for those parts of the world, rather than what we think might be appropriate.”
Steele plans to attack this problem by revisiting some trademark issues that seem to have recieved less attention in recent years, such as possible reasons for the slow adoption of the Madrid Protocol. “INTA supports Madrid, and yet a lot of countries haven’t acceded. Why is that? Is it because the system itself isn’t working, or is it because there are some myths out there that need to be busted, in terms of the impact of Madrid on companies and even on the profession to some extent?”
Another key issue Steele would like to address is the practical impact of applying concepts, such as trademark dilution and non-traditional marks, to markets that may not be ready to cope with them.
Steele asks: “Dilution is a very familiar concept in the US, but is that really what the southern hemisphere needs at this point in time? Are we ready to embrace that concept, or is there something else that needs to happen first? We have a lot of experience with non-traditional trademarks in the US and in Europe, but with single color protection, for instance, even a lot of the developed markets are struggling with it. Is it really right and proper that we should try to introduce those concepts too early in the southern hemisphere countries and then we end up in more trouble than perhaps we are now?”
In addition to addressing these questions, Steele emphasizes that she will continue the work of 2007 INTA president Dee Ann Weldon-Wilson who made issues such as anti-counterfeiting and leadership development her priorities.
Team spirit
Steele’s second goal has to do with fostering both internal and external INTA alliances. “I want to generate a real team environment within INTA,” says Steele. “We have lots of volunteers from all over the world doing fantastic work. I think it would be a much more rewarding experience if we could generate a broader team environment for those people to work in.”
That team environment extends outside of INTA as well, to partnerships with other IP organizations. In March, INTA partnered for the first time with IP Australia, an event about which Steele seemed visibly excited. The new President also plans to continue strengthening INTA’s partnerships with organizations such as the Asociación Interamericana de la Propiedad Industrial (ASIPI) and the China Trademark Association.
“We need to look to the future and reach out to some of these parts of the world,” says Steele. “If we want to get things done, partnering is the way to go.”
Life on Mars(‘s IP team)
Steele is one of Mars’s five marketing properties managers worldwide (all of whom happen to be women, Steele notes). Each manager is supported by coordinating agents in their respective regions—Arent Fox in the US; Clifford Chance in Europe; Al Tamimi in Africa, India and the Middle East; Rouse & Co Hong Kong in North Asia; and Baker & McKenzie in Australia, New Zealand and South Asia. “These provide dedicated teams of people building relationships, participating in all the education programs and acting as a dedicated Mars group,” says Steele.
Two of the company’s most important markets are China and Japan, where infringers become more sophisticated each year, according to Steele. “They’re not just infringing your trademark anymore,” says Steele. “They’re copying your trade dress. For example, for Mars we have a cat food product called WHISKAS that has been uniquely packaged in a purple label. Now we’re finding—in China for example—that they don’t copy anything other than the purple color.” This presents significant problems, since laws on color protection are still vague almost worldwide.
Other concerns for Mars include tackling the uncharted territory of the Internet. Steele asks: “We haven’t suffered as much as others, but is that because we’re just not looking as much? You hear people talking about cybersquatting, typosquatting, phishing, kiting, domain name parking, and all those sorts of things. The Internet is a huge, gaping challenge. It’s the next frontier.”
Presidential words of wisdom
Asked to share her most important piece of advice for IP owners, Steele is characteristically humble. In addition to warning against ever attempting to get by without a registration, Steele urges IP owners and professionals to maintain a “constant thirst for knowledge”: “Educate yourself, because you may not necessarily always know best,” says Steele. “Continuously explore and learn—never think you know it all. I for one certainly don’t. Never be afraid to ask. There could be a good answer on the end of that stupid question.”
