This content is from: Trademarks

Ronald van Tuijl Interview: Presidential Task Force to examine in-house counsel role

INTA President Ronald van Tuijl says one of his priorities is the Presidential Task Force on the role of in-house IP professionals—something he takes a particular interest in as his entire career so far has been spent in-house

Ronald van Tuijl 350From his office window at JT International’s headquarters in Geneva, Switzerland, Ronald van Tuijl can see Mont Blanc. Since joining the company in 2012, as Intellectual Property Trade Marks Director, he says he has had little time to enjoy the surroundings. But he does enjoy running by Lake Geneva and has also been learning to ski. “I’m not a good skier,” he confesses. “But I have an overall drive to learn. It’s the same with being INTA President—you’re constantly pushing your own boundaries.

Pushing boundaries

Van Tuijl has been pushing at his boundaries in IP for more than 20 years, with roles at KPN, Unilever and Philips in the Netherlands before moving to JT International. (He jokes that, having worked for all the major Dutch multinationals, the obvious next step was to move overseas). But his initial interest in IP law came at university, where he studied copyright and wrote a thesis on the role of collecting societies on the internet.

Copyright law has been a recurring topic during his career. He worked at KPN when the company owned a number of internet service providers and had to address copyright liability issues. And, in 1999, he had to advise on a case involving depictions of Sinterklaas—the Dutch equivalent of Santa Claus, in which an actor who was the “official” Sinterklaas requested a preliminary injunction to stop the use of his image. “The interesting question was: does a fictitious person have image rights?” says van Tuijl, who describes the case as one of the most interesting he has been involved in. In the event, he says: “The court found the actor had a reasonable case to prevent the use of the image,” and the company was given 24 hours to remove all point-of-sale materials across the Netherlands. “It was a high-profile case, legally interesting and attracted a lot of publicity. Was he recognizable, was he popular? Yes and yes. But if we’d had any other Sinterklaas, it would not have been the same.”

A global portfolio

Today, at JT International, van Tuijl is more focused on trademark issues and manages a team of four managers and five assistants who are responsible for all the company’s tobacco brands globally—some 36,000 trademarks. “The managing part is an important part of my role, but also I handle litigation—that’s something I focus on a lot. The team is working with the brand groups and the agent network, while I work with other functions in the company, such as the taxation department,” he says.

Since January this year he has also been INTA President, and addressed the Annual Meeting in that capacity last night. He says one of his priorities is the Presidential Task Force on the role of in-house IP professionals—something he takes a particular interest in as his entire career so far has been spent in-house. “I’ve seen all sorts of changes to in-house teams, regarding who they report to, how work is handled, insourcing, outsourcing and so on,” he says. “I wanted to understand whether some of this is the result of the economic crisis of technological development, or whether there is a trend.” He says the Task Force will come up with a set of recommendations as to how INTA can support in-house practitioners in these areas, as well as how they can continue to be active in INTA committees and meetings, and whether INTA can develop its activities in this area.

This sort of participation is a key part of the in-house role, he argues: “As an in-house attorney, you are more than just a person answering questions. You should be the guardian of IP and go outside your organization to take part in seminars and discussions. Otherwise, are you contributing all that you can to your company?”

Having made a conscious decision to work in-house, van Tuijl denies that it is necessarily easier or less pressure than being in a law firm: “The good thing about being in-house is that you are involved from the initial ideas up to the development, launch and enforcement of the IP right. You’re part of a team and part of a company. You walk into a building in the morning, with 80 nationalities, and everybody is working hard to bring the best quality products and services to consumers and to be the most successful. That’s something you only really get when working in-house.”

The face of INTA

Van Tuijl says he feels privileged to be INTA President this year, and sees the role as being “the representative of the Association” adding: “That means it’s not about me but about the role of the President. There are many opportunities to communicate with members and others. My role is to support the Strategic Plan and the mission of INTA and to be the face of INTA on specific occasions.”

Among the issues he highlights are the recent review of the Association’s Bylaws, which resulted from the Governance Review Task Force Report last year, and the international activities of INTA: following last year’s Leadership Meeting in Panama and the recent opening of a representative office in Singapore, INTA is going to host its first conference in Africa for 20 years in September, and in the same month the Board will hold its first meeting in Beijing. “We are the International Trademark Association and if you want to be relevant you have to be present and act globally. Holding meetings around the world means there is an opportunity for advocacy and to meet officials to discuss issues relevant to different jurisdictions.”

In support of this, he cites just some of the policy issues that INTA has been and will be working on, including Internet governance and the IANA transition; the recently implemented trademark reforms in the EU, including the provisions on goods-in-transit; the growth of the Madrid System, notably in south-east Asia; and the impact of plain packaging rules on IP rights. On the latter point he notes: “This is a trademark and a brand issue with the potential to impact a number of industries. INTA passed a Board resolution last year on plain and highly standardized packaging. The Board represents a multitude of companies in ­different industries and so it is significant that they passed that Resolution.”

As a Dutchman based in Switzerland but spending much of his time traveling around the world or on international phone calls, van Tuijl brings a unique perspective to the challenges of globalization. He says that he expects to spend a lot of this year as INTA President traveling but adds that his job is made a lot easier by the work of the INTA staff. And, from a practical perspective, there is at least one advantage to being a Europe-based INTA President: “A lot of the INTA-related phone calls are at the end of my day, so I can do my business role during daytime and switch to INTA in the evening!”

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