29 Mar
2019

Change.org responds to The Independent Group new name, IPOS GI registry, and delays at IP Australia: news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at consumers being frustrated by “disjointed” brand experiences, an Oregon-based clothing retailer in a trademark fight against Under Armour, the Hong Kong and Australian IP offices pledging more cooperation, brands in an age of political division, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

Consumers “frustrated” by disjointed brand experiences – New research from Thunderhead has found that 39% of consumers would switch to another brand after two bad experiences. The study, which surveyed 4,000 people in the US and UK, looked at brand experiences in the auto, banking, energy, insurance, retail and telecommunications sectors. The survey, according to Martechseries, found that three-quarters of consumers have increased their expectations of what a brand should do in recent years, with only 31% of consumers regarding interactions with brands as “merely transactional”. It is clear, then, that brands need to adjust to multi-faceted consumer engagement – often through communications on web platforms and social media. One aspect of this approach is consistency. According to the research, 94% of consumers state that they get frustrated by a “disjointed” brand experience, confirming the need for seamless brand experiences. According to Thunderhead CMO Jason Hemingway, a consistent brand is key – and that remains true across trademark strategy too. “Brands need to make the transition to the new era of engagement-led marketing, based on nurturing relationships with customers and focusing on lifetime customer value.” (TJL)

Petition website takes issue with UK political party name – It was announced earlier today that a collective of anti-Brexit UK MPs who call themselves The Independent Group (TIG) were to launch a new political party called ‘Change UK’. During a debate in the UK Parliament, one of the group’s members, Anna Soubry, announced that the group is now called the ‘Change dot org’ party – which, commentators soon noticed, is the name of a leading petition website. Indeed, shortly afterwards, the Change.org website issued a statement about the new political party, confirming that it was looking at its next legal step. “Change.org UK or @UKChange as we are interchangeably known is totally independent of party policies, always has been and always will be,” the statement clarifies. “It is said that imitation is a form of flattery. But the movement that we have built in the UK to win campaigns for ordinary people is ours – all 17 million of us. We are seeking guidance on the proposed use of our brand name by those reported to be setting up a new political party.” Time will tell whether the Independent Group of MPs will backtrack on the name or stand firm amidst a possible legal battle. But as readers may be thinking, it’s a reminder of how important brand clearance searches are before announcing a new name – especially for something as high profile as a political party name. (TJL)

Brands in an age of political division – The UK population has been split into two camps – Leave and Remain – since the bitter EU referendum of 2016. As the UK government continues to debate on how, or if, the UK will leave the European Union, it has left locals exasperated and debate rages almost three years on. This division, according to new research, has explicit implications for how consumers interact with brands. “Remain voters are more loyal to brands, and are 43% more likely to give companies longer to fix bad customer service and rectify mistakes,” the study claims. “Leavers, on the other hand, are more likely to switch brands across eight categories of goods and services in the next 12 months, yet are 8% less likely to try a completely new brand.” The research is similar to another study from December 2018, published in Politico, which revealed the leading brand sectors that Democrats and Republicans in the United States differ in their preferences for. It shows that, in some instances, brands can attract a certain political following – even if they are ostensibly non-political – and should consider this during strategic decisions. (TJL)

Councilman aims to teach City Council a lesson about the importance of trademarks Keys Weekly has reported that Councilman Mark Senmartin in Marathon, Florida, has filed a state trademark application for the city seal of the state’s Division of Corporations out of frustration over the City Council’s unwillingness to adopt formal protections. Senmartin wanted to illustrate the risk of not having the seal registered as a mark, arguing that what he has done could have been done by any one else, and such an individual could demand a large sum of money for the mark or force a rebranding of the city. Senmartin says: “If the city and council wish to revisit [the seal issue] and come up with a better solution, I would be willing to sell my trademark to the city for one dollar plus costs.” The registration cost him $87.50, and he has given the council 30 days to make a decision. Senmartin sees this as an example of tough love, saying “My intention is to protect the seal”. (BD)

Legal radar:

Oregon-based clothing retailer fights back in trademark dispute with Under Armour – Cascade Armory, a small clothing company in Bend, Oregon, is one of many cases characterised as a ‘David v Goliath’ battle, the company pushing back against Under Armour, which has opposed a trademark for the retailer’s name. Under Armour sent a cease-and-desist order a year ago to the owners Diana and Alex Short, arguing that the use of ‘armour’ was too similar and would cause brand confusion. The Shorts had conducted a trademark search before filing for their name, and raise the fact that their company logo is an elk head with the words ‘Bend Oregon’ and ‘Peak to Streets’, whereas Under Armour’s logo is a U and A design. The pair have decided to fight the issue, launching a GoFundMe page last month to raise money for legal fees. Earlier in March the company also had a petition launched to “put an end to corporate bullying tactics by Under Armour”. (BD)

IPOS GI registry to go live – From Monday (1 April) the new Registry of Geographical Indications at the Intellectual Property Office of Singapore (IPOS) will commence operations. From launch the registry will be open to receive applications from anywhere in the world for the registration of GIs. The office states that applications will undergo a “fair and transparent” examination process and – once registered – producers and traders of GI products will enjoy an enhanced level of protection. Crucially, while GI protection is currently available for wines and spirits, the establishment of the registry will see GI protection extended to other agricultural products and foodstuff such as cheeses and cured meats. Additionally, producers and traders of registered GIs will be able to request for customs authorities to detain suspected infringing goods which are imported into or exported from Singapore.The establishment of the registry follows on from the European Parliament’s consent for the European Union-Singapore Free Trade Agreement (EUSFTA) on 13 February 2019 and the enhanced level of protection will be implemented in stages in accordance with the ratification of that agreement. (TL)

Office radar:

Hong Kong and Australian IP offices sign MOU – The Intellectual Property Department of Hong Kong (HKIPD) has announced that it has signed a Memorandum of Understanding (MOU) with IP Australia “to strengthen mutual cooperation in the field of IP”. Specifically, the offices will work together on projects including the operation of the international trademark registration system, promotion of dispute resolution to resolve IP disputes and the development of IT systems for management of examination and grant of IP rights. According to the director of the HKIPD, David Wong: “I am confident that this collaborative initiative would inspire and bring about more joint IP undertakings in future. We are taking steps to implement the Madrid Protocol in the coming years, IP Australia's rich experience in establishing an international trademark registration system under the Madrid Protocol would be invaluable to us. The signing of the MOU will strengthen the working relationship and foster the collaboration between us and IP Australia in various areas of common interest." (TJL)

JPO releases first case studies book focused on trademarks – The Japanese Patent Office has announced the impending release of its first collection of practical case studies focused on trademarks. According to the office, the guide will introduce the benefits of more effectively filing trademarks in Japan. It features case studies featuring 20 companies, including Casio and Rakuten. The book will be released in the summer, and will be distributed free-of-charge. (TJL)

IP Australia suffers delays due to upsurge in applications – IP Australia has announced that it is experiencing a “significant increase” in the number of trademark applications filed. For that reason, the registry has confirmed delays in the trademark examination process. The office added: “Delays will not change the date from which any rights granted take effect as these stem from the date of filing not the date of examination. We appreciate your patience and understanding and are committed to reducing any impact on customers. We apologise for any inconvenience this may cause.” Users concerned about timelines can check IP Australia’s status update and response times. (TJL)

Media watch:

LVMH plans authenticity blockchain – Specialist media outlet CoinDesk has reported that luxury goods conglomerate LVMH is preparing to launch a blockchain for proving the authenticity of high-priced goods, CoinDesk has learned. The outlet states that the platform, AURA, is expected to go live within months and will provide proof of authenticity of luxury items and trace their origins from raw materials to point of sale and beyond to used-goods markets. A source told Coindesk: “The next phase of the platform will explore protection of creative intellectual property, exclusive offers and events for each brands’ customers, as well as anti-ad fraud.” A lot has been written about the application of blockchain for IP creation and protection purposes. With LVMH set to be an early adopter in terms of rights holder platforms designed to track authenticity, the development will be one for brand owners to follow, whatever their industry of specialism. (TL)

Domain radar:

Five year ‘.uk’ right of reservation period nears end – UK domain registrants with a third-level domain (‘.co.uk’, ‘.org.uk’, ‘.me.uk’, ‘.net.uk’, ‘.plc.uk’ or ‘.ltd.uk’) have less than three months left to secure the shorter second level (‘.uk’) equivalent, before it is made available to the public. Five years ago, Nominet announced that it would open up domain registrations at the second level for the first time and launched a ‘right of registration’ period during which brands and registrant with third level domains could opt for the corresponding ‘.uk’ domain. That period ends on 25 June and, once the deadline closes, all previously reserved but unregistered domains will become generally available in July. Further details on the right of registration period can be found here. (TL)

On the move:

Drew & Napier P head appointed as IPOS IP adjudicator – Drew & Napier has announced that the Intellectual Property Office of Singapore (IPOS) has appointed Tony Yeo, managing director and head of the firm’s IP Practice, as an IP adjudicator. The role commences in April for a two year term. Yeo reflects: “The appointment of IP Adjudicators from private practice will bring commercial perspectives to the table. This will be very helpful to Singapore’s effort to maintain its lead as Asia’s IP hub as companies look to Singapore as an emerging venue for complex IP dispute resolution. This also shows considerable foresight on the part of IPOS.” (TL)

Scarinci Hollenbeck welcomes IP specialists Scarinci Hollenbeck has welcomed intellectual property attorney Kristin G Garris and patent attorney Libby Babu Varghese to its New York City office. Kristin G Garris provides counsel to clients on a broad range of IP matters including trademarks, copyrights, domain names, Internet enforcement, licensing and IP due diligence. She also experience with trademark and copyright litigation, and with trademark proceedings before the Trademark Trial and Appeal Board. Varghese is a registered patent attorney with years of experience handling matters related to trademark law, copyright law and corporate intellectual property. (TL)

Prokhorova joins Aequo – Ukrainian firm Aequo Law Firm has bolstered its IP practice through the appointment of Ganna Prokhorova as a senior associate. Focusing on litigation, Prokhorova provides strategic advice on trademark, design, unfair competition and copyright law. She focuses on protecting the clients’ intangible assets through a combination of monitoring and filing strategies, negotiation and creation of transfer agreements, licensing agreements and franchising, as well as the judicial and out-of-court defense of trademarks, designs and domains against infringement and dilution. (TJL)

Friday catch-up:

Every Friday in our news round-up we will provide a quick rundown of the latest news, analysis and intelligence posted on WTR. Over the past week we:

  • Conducted researched which found that few candidates for the 2020 US presidential election are seeking registered trademark protection for their campaign branding so far – although some are already being targeted by infringement;
  • Looked at a recent report which revealed that rights holders cannot rely on government authorities alone to combat counterfeiting and maintain brand growth. Instead, a perfect balance of legal action and anti-counterfeiting technology is required;
  • In Tuesday’s round-up, looked at a major new anti-counterfeiting player entering the market, the Hollywood Walk of Fame taking issue with Dubai Stars, results of a study on the health benefits of plain packaging, and more;
  • Spoke exclusively to Raj Abhyanker, founder of LegalForce RAPC, who has initiated legal action against a number of entities it alleges are “shadow scammers using publicly available trademark filer information to send targeted ‘solicitations’ to applicants”;
  • Focused on the European Parliament, which voted in favour of the new EU Copyright Directive – so we took a look at what it actually means for platforms and content creators;
  • Posted a guest post which explored the history of brand evolutions and predicts what the future of branding will look like;
  • Published an investigation from WTR which found that counterfeit sellers on online marketplaces are setting up so-called “secret stores” to avoid increasingly sophisticated takedown measures;
  • Looked at how Signify’s IP team undertook its global rebrand from Philips Lighting in an exclusive interview;
  • Exclusively revealed that in 2018, criminal investigations led by Alibaba and the member brands of its anti-counterfeiting alliance resulted in the arrest of 1,277 suspects and counterfeit seizures that totalled $536.2 million.

And finally…

Accessing litigation know-how WTR recently published the third edition of Trademark Litigation: A Global Guide 2019, which helps rights holders navigate the litigation regimes in key jurisdictions. The third edition of the guide serves as an invaluable reference guide to the litigation regimes in 15 key jurisdictions, each chapter examining critical issues such as the availability of alternative dispute resolution mechanisms, defences to trademark infringement or dilution, the use of survey evidence and expert witnesses, and the intricacies of the appeals process. The full publication is available and free to access here. (TL)

Adam Houldsworth

Life sciences reporter

[email protected]